August 27, 2021
In Tokai of Canada Ltd v. Kingsford Products Company, LLC, 2021 FC 782, the Federal Court (the “Court”) dismissed Tokai of Canada Ltd.’s (“Tokai”) appeal of various Registrar of Trademarks’ (“the Registrar”) decisions, which refused Tokai’s trademark applications due to a likelihood of confusion.
Tokai sought to register the trademark KING for barbecue and fireplace lighters, along with cigarette lighters. These trademark applications were opposed by The Kingsford Products Company, LLC (“Kingsford LLC”) due to a likelihood of confusion with numerous registered trademarks involving KINGSFORD for products related to barbecuing and/or charcoal.
The Federal Court dismissed Tokai’s appeal, concluding that the new evidence presented by both Tokai and Kingsford LLC was either inadmissible or immaterial. Further, the Court found that the Registrar did not make any palpable and overriding errors in its decisions.
Applications, Oppositions, and Other Proceedings
In 2011, Tokai filed application No. 1,529,953 (“953 Application”) to register the mark KING for barbecue and fireplace lighters. Kingsford LLC opposed this application based on a number of grounds under the Trademarks Act (the “Act”), but the primary argument was that the mark was likely to cause confusion.
Ultimately, the Trademarks Opposition Board (“TMOB”) agreed that the trademark was confusing, contrary to paragraph 12(1)(d) of the Act, though it rejected the other grounds for opposition.
Similarly, in 2014, Tokai filed application No. 1,684,990 (“990 Application”) to register the mark KING for cigarette lighters. Kingsford LLC opposed the application on the same grounds cited in opposition to the 953 Application, and the TMOB issued the same ruling.
Although Tokai filed separate notices of application to appeal each individual TMOB decision, the court consolidated the matters under the current appeal.
The Parties’ New Evidence on Appeal
On appeal, both Tokai and Kingsford LLC filed new evidence.
Tokai filed new evidence in the form of an affidavit of the president of a company that helped design and implement a survey aimed at adults who planned to purchase a butane lighter. The affidavit included evidence detailing the survey’s findings and methodology. The survey concluded that there was no statistical evidence to indicate that there would be misapprehension as to the source of the “KING” butane lighter. Tokai also filed several third party trademark registrations, along with one allowed trademark application (together, the “Third Party Marks”).
Kingsford LLC’s new evidence consisted of the affidavit of a legal assistant, along with evidence relating to Tokai’s previous trademark applications.
The Court’s Decision in Tokai
Standard of Review
The Court confirmed that, where there is a statutory right of appeal, an appellate standard of review applies, and the court must determine whether the new evidence would have materially affected the TMOB’s decision.
To be material, evidence must be sufficiently substantial and significant, and of probative value. A finding of materiality would permit the Court to “exercise any discretion vested in the registrar”. If evidence is immaterial, the Court must adjust the standard of review, and apply the deferential standard of “palpable and overriding error” to questions of fact or mixed fact and law.
Lack of Materiality of Parties’ New Evidence
In respect of the new evidence filed by Tokai, the Court determined that the affidavit evidence was unreliable and invalid, which rendered it inadmissible. In particular, the Court noted that the survey was deficient in four ways: (i) lack of understanding around the term “butane lighters”; (ii) removal of surveys “completed too quickly”, (iii) inclusion of surveys “taking too long to complete”, and (iv) contextual and other gaps.
Regarding Tokai’s Third Party Marks, the Court noted that, although reliable, they did not have significant or probative value that would have materially affected the TMOB’s decisions.
Similarly, the Court found the affidavit filed by Kingsford LLC to be immaterial.
No Palpable and Overriding Errors
Given the Court’s determination that the new evidence presented by both parties was either immaterial or inadmissible, the TMOB’s decisions finding a likelihood of confusion were reviewed on the standard of palpable and overriding error.
In assessing the TMOB’s decisions, the Court articulated the test to be applied when assessing the likelihood of confusion. That is, whether a casual consumer would believe that the goods associated with KING and KINGSFORD were authorized, licensed, manufactured, or sold by the same being, that being Kingsford LLC. In addition, the Court noted the factors from subsection 6(5) of the Act that should be considered, including (a) the distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time the trademarks have been in use; (c) the nature of the goods, services or business (d) the nature of the trade; and (e) the degree of resemblance between the trademarks.
The Court discussed each of these factors for both decisions, but did not find that the TMOB committed any palpable or overriding errors in its assessments. Thus, the appeal was dismissed.
Authors: Meghan King and Farrah Kudus