“If I Can’t Have it, No One Can” Argument Raised Too Late

On October 14, 2014, Justice Mactavish of the Federal Court of Canada dismissed an application for judicial review of a Trademarks Opposition Board decision (see here) that refused an application to register the following trademark

The Trademark Opposition Board had dismissed the application for registration because of the likelihood of confusion between this mark and several unregistered marks using a four-letter word and variations thereof including– “F CANCER”, “F* CANCER”, and “F— CANCER” – that have been in use in Canada since as early as 2008.

Before the Court, the applicant submitted that the unregistered marks and any variation thereof were obscene and therefore prohibited pursuant to paragraph 9(1)(j) of the Trademarks Act. The applicant conceded that, if this argument was successful, her own mark could not be registered or enforced. However, the unregistered marks would also be unenforceable.

Following Alberta v Alberta Teachers’ Association, Justice Mactavish declined to consider the applicant’s argument for a number of reasons. First, the applicant had no valid reason for not raising the argument before the Opposition Board. Second, the applicant was no longer seeking to reverse the Opposition Board’s decision but was instead asking for the Opposition Board’s reasons to be rewritten. Third, the argument advanced by the applicant was flawed: even if the mark that explicitly included the four-letter word was not registrable, that did not mean that all of the unregistered marks were also unenforceable.

The application for judicial review was dismissed, and the court granted an elevated award of costs to the respondent.

A copy of Justice Mactavish’s judgement and reasons may be found here.