In Bojangles' International LCC v. Bojangles Café Ltd., the Federal Court dismissed an appeal launched by Bojangles' International LCC (Bojangles') with respect to the rejection of its opposition to an application for BOJANGLES CAFÉ.
Bojangles' is a regional fast food chain operating in the Eastern United States and specializes in fried chicken and biscuits. Bojangles Café Ltd. (Bojangles Café) operates cafés in Vancouver selling, among other things, coffee and baked goods. In January 1998, Bojangles Café applied to register its trade mark BOJANGLES CAFÉ in association with various restaurant goods and services. Subsequently, Bojangles' opposed the application asserting that its U.S. chain of restaurants is recognized in Canada as various Canadian visitors had attended its restaurants, visited its Web site, and viewed various billboards advertising its restaurants on major U.S. highways travelled by Canadians. In addition, Bojangles' had mistakenly received letters of complaint that were intended for Bojangles Café. While the Trade-marks Opposition Board (the Board) held there appeared to be some Canadian recognition of Bojangles', it was impossible to estimate the extent of such recognition in a meaningful manner. Interestingly, despite the high degree of inherent distinctiveness afforded Bojangles' and the similarity between the respective marks, wares, services and nature of trade, the Board concluded there was no likelihood of confusion.
Bojangles' appealed to the Federal Court. The primary issue was whether the Board erred in law in finding that, in order for Bojangles' mark to negate the distinctiveness of the Bojangles Café mark, Bojangles' mark must be "well known in at least one area of Canada or widely known [in Canada]." The Board had held that for a mark to become known sufficiently to negate the distinctiveness of another mark, the offended party's mark must have become well known in at least one area of Canada. The Court did not find Bojangles' advertisements and evidence of Canadian tourists visiting its restaurants in the U.S. to be persuasive, and dismissed the appeal.
A further appeal to the Federal Court of Appeal was filed, but subsequently discontinued.