KARL JURAK is primarily a surname, says Federal Court

In Matol Biotech Laboratories Ltd v Jurak Holdings Ltd (2008 FC 1082, September 29 2008), the Federal Court of Canada has refused to allow Matol Biotech Laboratories Ltd's appeal against a decision of the Opposition Board in a case involving the trademark KARL JURAK.
Matol is in the business of selling vitamin and mineral supplements. Matol's principal product is a mineral supplement in liquid form sold in Canada under the trademark MATOL. This mineral supplement was discovered by Dr Karl Jurak, who died in 1993. His son, Anthony Karl Jurak, was the original chairman of Matol, but is now the president of Jurak Holdings Ltd
Matol applied to register the trademark KARL JURAK in association with minerals and vitamins. Jurak Holdings opposed the application on the grounds that:
  • the mark was primarily a surname and hence not registrable under Section 12(1)(a) of the Trademarks Act; and
  • the trademark had not become distinctive under Subsection 12(2) of the act (acquired distinctiveness). 
The Opposition Board upheld the opposition and Matol appealed to the Federal Court.
First, the court concluded that despite the grant of a full right of appeal, the appropriate standard of review was reasonableness. A court will often be forced to accept that a decision is reasonable even if it is unlikely that the court would have reasoned or decided as the tribunal did. The question was whether the board's decision was supported by reasons that could withstand "a somewhat probing" examination and was not "clearly wrong". In judicial review, reasonableness is concerned mostly with the existence of justification, transparency and intelligibility within the decision-making process. It is also concerned with whether the decision falls within a range of possible, acceptable outcomes which are defensible in respect of the facts and law. Where questions of fact are involved, the tribunal enjoys on those questions considerable deference.
With regard to the Section 12(1)(a) claim, the court held that the words 'Karl Jurak' correspond to the name of an individual who died in 1993. No evidence was given by Matol relating to another likely connotation, nor was any evidence filed that would suggest an alternative meaning. The average consumer would view the mark as being primarily merely the surname of an individual who is living or has died in the past 30 years. The onus is on the trademark applicant to show otherwise and Matol failed to do so.
With regard to acquired distinctiveness, the court held that a trademark which is not registrable under Section 12(2) is registrable if it has been so used in Canada by the trademark applicant as to have become distinctive at the date of filing of the application. Matol had to adduce evidence that long use had caused the words 'Karl Jurak' to have become distinctive of its vitamin and mineral product. If such evidence was provided, it was to be assessed on a balance of probabilities.
The following additional evidence was filed by Matol on appeal to the court:
  • the affidavit of Robert Bolduc, dated March 16 2001, for the purpose of claiming the benefit of Section 12(2) of the act; 
  • an internet search of Canada 411 showing that the name Jurak is found only 22 times in Canadian telephone directories; and
  • a copy of a Google search report showing that 'jurak' is defined, according to Wikipedia, as "a shisha pipe, also known as hookah, water pipe or argileh; a smoking pipe". 
In the court's view, the additional evidence, with the exception of the Section 12(2) evidence, was not of sufficient materiality to affect the findings of fact made by the registrar and, consequently, was insufficient to displace the standard of reasonableness. The Section 12(2) evidence was unclear, at variance with prior evidence and did not always show use of the trademark. Hence, it was insufficient to show that the mark KARL JURAK had become distinctive of Matol's goods at the application date.
John Macera, Macera & Jarzyna - Moffat & Co, Ottawa

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