The 'F-bomb' and the nuclear option: raising new arguments on judicial review

The Federal Court has confirmed in Cohen v Susan Fielder Incorporated (2014 FC 967) that it has the discretion to refuse to consider an issue raised for the first time on judicial review where it would be inappropriate to do so. While this proposition is neither novel nor contentious, the circumstances of this case are considerably more colourful than they appear at first blush.

The applicant, Yael Cohen, sought to register the following trademark:

Most people would support the message conveyed (if not the choice of language used) by this trademark. Unsurprisingly, Cohen was not the first person to use this phrase.

Cohen’s application was opposed by the respondent, Susan Fielder Incorporated, based on its prior-used, unregistered trademark rights in the marks F CANCER, F* CANCER, F— CANCER and another unregistered trademark which conveys the same general idea in more direct language.

The Trademark Opposition Board (TMOB) found that Fielder’s trademarks were similar to Cohen’s applied-for trademark, and had been used in Canada prior to the date of first use claimed by Cohen in respect of her trademark. The TMOB held that Cohen had not demonstrated that there was no reasonable likelihood of confusion between the parties’ marks.

Cohen launched a judicial review of the decision by the TMOB refusing her application, but she did not contest these findings of the TMOB. Instead, Cohen challenged the TMOB’s decision on the basis that Fielder’s trademark rights could not be recognised pursuant to Section 9(1)(j) of the Trademarks Act. That section of the act states: “No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely mistaken for… any scandalous, obscene or immoral word or device.”

Cohen had not raised this argument before the TMOB.

The court declined to hear this new issue on review, as the issue could have been but was not raised before the TMOB. Citing the Supreme Court of Canada’s decision in Alberta (Information and Privacy Commissioner) v Alberta Teachers’ Association (2011 SCC 61) for the proposition that a party does not have the right to require the court to consider an argument raised for the first time on judicial review, the court noted that judicial review is, in essence, discretionary.

Refusal to review Cohen’s new argument was also the court’s way of deferring to the legislative choice to make the TMOB the decision maker of first instance. Such deference was noted as all the more important where the issue raised for the first time on review relates to the tribunal’s specialised function and area of expertise.

The court also provided guidance on the prohibition of trademarks that consist of scandalous, obscene or immoral words and devices, an area of Canadian law that remains underdeveloped. Cohen argued that, if the most explicit iteration of Fielder’s unregistered trademarks was not enforceable as a trademark pursuant to Section 9(1)(j) of the act, neither were variations of the mark which truncated or otherwise censored its offensive components, such as F— CANCER.

Instead, the court found that, even if Section 9(1)(j) of the act made the enforceability of one of Fielder’s trademarks questionable, it was not certain that the other trademarks containing variations of the offensive words were also unenforceable. In particular, the court came to this conclusion based on approval by the Trademarks Office of Cohen’s own trademark application.

Cohen’s argument is remarkable. It is the exercise of a “nuclear option”, in which both parties’ trademarks face mutually assured destruction if it were accepted by the court.

Cohen conceded at the hearing that the judicial review was sought for a collateral purpose: she wished the court to recognise that the trademarks F* CANCER and its other more colourful variations are prohibited trademarks. On that basis, the ownership of these trademarks could not give Fielder enforceable prior rights under the act to stop Cohen from continuing to use her trademark.

The court did not look kindly on this tactic, and found that Cohen’s conduct – taking the position that a trademark she herself tried to register was scandalous, obscene and/or immoral only after being unsuccessful in opposition – justified an elevated award of costs.

David Bowden and Sanjukta Tole, SIM. IP Practice, Toronto