On September 15, 2016, Justice Boswell dismissed Richtree’s appeal, pursuant to section 56 of the Trade-marks Act, from the decision of the Trade-marks Opposition Board that had rejected Richtree’s opposition to a trade-mark application filed by Mövenpick.
In 2005 Richtree purchased the assets of Richtree Markets Inc. after it became insolvent. Prior to its insolvency, Richtree Markets Inc. operated Marché and Marcheline free-flow “market” style restaurants in Canada under license and franchise agreements with Mövenpick. On July 29, 2008 Mövenpick filed a trade-mark application for a “Marché & Wave” design. Richtree opposed the application on several grounds including that the proposed mark was not distinctive within the meaning of section 2 of the Trade-marks Act. The Trade-marks Opposition Board rejected Richtree’s opposition in its entirety.
On appeal, Richtree only took issue with the Board’s rejection of its opposition based on non-distinctiveness. The first issue considered by Justice Boswell was the appropriate standard of review since Richtree had filed additional affidavit evidence pursuant to subsection 56(5) of the Trade-marks Act. Justice Boswell noted that the nature of the new evidence dictates the appropriate standard of review and that the questions is whether:
… the new evidence that was not before the Board would have materially affected its finding of fact or the exercise of its discretion: if so, the Court must make its own conclusion as to the correctness of the Board’s decision on the issue to which the additional evidence relates; but if not, the appropriate standard for review of the Board’s decision is that of reasonableness.
After reviewing the new evidence, Justice Boswell held that it would not have materially affected the Board’s finding of fact or the exercise of its discretion and therefore the appropriate standard of review to be applied was reasonableness.
Richtree argued that the Board’s decision was unreasonable because the evidence of multiple restaurants using Marché or market as part of their name means that the Mark could not reasonably be seen as distinctive. Justice Boswell stated that the Board’s decision was not whether Mövenpick had established the mark was distinctive but whether Richtree had met its initial evidentiary burden to adduce sufficient evidence to support its allegation of non-distinctiveness. In dismissing Richtree’s appeal, Justice Boswell held:
It was open to and reasonable for the Board to conclude that the evidence offered by Richtree was not sufficient to show that the Mark, comprised of the dominant word portion and the design element, lacked distinctiveness such that it was incapable of functioning as a source identifier for Mövenpick’s services.
A copy of Justice Boswell’s Judgment and Reasons can be found here.