The Federal Court dismissed an appeal of the Trademarks Opposition Board's ("Board's") refusal to register the mark TASTE OF B.C.
In the opposition decision, the Board found that it was reasonable in all circumstances for the Applicant to be satisfied of his entitlement to use the mark throughout Canada. The Respondent, Taste of BC Fine Foods Ltd, had entered into an agreement with the Applicant for a sale of assets, as well as a licence to use the mark TASTE OF BC and the store name for a period of six months. A second agreement was entered into by the parties, which allocated part of the purchase price for goodwill, but provided no definition of goodwill and no reference to a trademark licence. This was followed by a series of disputes between the parties. The Board's interpretation of the first agreement and its finding of ongoing disputes between the parties concerning the mark established that it was unreasonable for the Applicant to be satisfied of his entitlement to use the mark as of the filing date of the application. With respect to the issues of non-entitlement under paragraphs 16(3)(a) and (c) of the Trade-marks Act, the Board found that the Respondent had established the use of the TASTE OF BC trademark prior to the Applicant's filing date and that there was no abandonment as of the advertisement date. Given the near identical marks, the association of the goods with the Respondent's mark and the near identical channels of trade, the Board also concluded that the Applicant failed to show that there was no likelihood of confusion.
On appeal, the Court concluded that there was no new material evidence which justified reviewing this matter of trademark registration de novo. For the most part, the Applicant's "new evidence" was either given no weight, or failed to add anything material to the dispute. The Court also concluded that the Board's decision was reasonable.
On the issue of costs, the Court noted that the expense of this proceeding, and related proceedings, had long ago overshot the purchase price of the assets. The Court also pointed out that "[t]he Applicant has been dogged in his pursuit of this trade name, capitalizing on the gap created by the Respondent's failure to seek registered trademark protection". However, the Court refused to award costs on a solicitor-client basis, finding that the Respondent bore some of the responsibility for not protecting his trademark asset.