The Applicant Tweak-D Inc. filed a trademark application for TRIBAL CHOCOLATE in connection with hair care products. The examiner objected to registration of the mark on the basis that it was confusing with the registered trademark TRIBAL for hair colourants and dyes. The Applicant commenced a section 45 proceeding seeking to expunge the TRIBAL mark, but discontinued the proceeding after reaching a co-existence agreement with the owner of the TRIBAL mark. The Applicant also agreed to amend the statement of goods in its application to restrict the channels of trade for its goods. The Applicant filed a revised application along with written submissions and a copy of the co-existence agreement, but the examiner maintained the objection and refused the application.

At the time the TRIBAL mark was registered, there were two other registered trademarks for personal care products that included the word TRIBE or TRIBAL: TRIBAL INDULGENCES and URBAN:TRIBE. On appeal, the Applicant argued that there was an apparent inconsistency in allowing registration of the TRIBAL mark given the previous registration of TRIBAL INDULGENCES, and on the other hand refusing the Applicant’s TRIBAL CHOCOLATE application in light of the TRIBAL registration.

As part of its confusion analysis, the examiner observed that the state of the register evidence did not reveal a “clear pattern of registrability” of marks similar to TRIBAL CHOCOLATE or TRIBAL. The Court inferred that the examiner was referring to cases which have found state of the register evidence particularly compelling, but have generally involved far more than three relevant registrations.

The Court found the examiner made no overriding and palpable error, and the appeal was dismissed.

Read the full decision here:

https://www.canlii.org/en/ca/fct/doc/2023/2023fc427/2023fc427.html