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Federal Court Mows Down Bison Grass Vodka Trade-mark Application

In CEDC International v Underberg, Justice Barnes dismissed CEDC’s appeal of the Trade-marks Opposition Board’s decision that prevented CEDC from registering “Żubrówka” as a trade-mark in association with its vodka product.

Both CEDC and Underberg sell vodka that is flavoured with bison grass. Underberg opposed CEDC’s application to register the word “Żubrówka” in association with its product. Applying section 12(1)(c) of the Act, the TMOB concluded that CEDC had not established that “Żubrówka” is not a generic name for bison grass-flavoured vodka and refused the application. CEDC appealed.

On appeal, Justice Barnes reviewed the complete evidentiary record before the TMOB and characterized CEDC’s evidence as “very weak”. Justice Barnes preferred Underberg’s evidence, which showed that “Żubrówka” is a generic Polish word for bison grass-flavoured vodka that appears on labels of other similarly-flavoured vodkas. Justice Barnes also rejected CEDC’s arguments based upon the existence of foreign word-marks and Canadian design-marks:

A finding that word-mark protection for “Żubrówka” has been obtained by CEDC in some countries including Poland is, as the Board correctly observed, not incompatible with a finding that the word could not be monopolized in Canada by virtue of section 12(1)(c) of our Act. Similarly, the grant of trade-mark protection in Canada for a design-mark incorporating the word “Żubrówka” is not determinative of whether word-mark protection is available.

The appeal was therefore dismissed.

A copy of the decision may be found here. The TMOB’s decision can be found here.