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There are numerous stages to the trademark application process. When applying to have a trademark registered, after a trademark examiner has reviewed the application and all of his or her concerns have been addressed, the trademark is advertised in the Trade-marks Journal and other people have the opportunity to object to the registration of the trademark.

If a trademark application is opposed and the person applying for the trademark succeeds in the opposition, the person who opposed the registration may decide there are grounds to appeal the Registrar’s decision to the Federal Court.

In a recent decision of the Federal Court, Viorganica Laboratories Inc. v. Société de Produits Nestlé, it was confirmed that a decision that has not been made yet cannot be challenged.

Viorganica Laboratories Inc. (“Viorganica”) brought an application to appeal the Registrar of Trademarks’ decision dated July 23, 2015 expunging Viorganica’s trademark, BELLA FLORA.  In the application, Viorganica also asked the Court to refuse Société de Produits Nestlé’s (“Nestlé”) application for registration of the trademark BELLA, which application was in pending opposition; Viorganica was in the process of opposing Nestlé’s application for registration of the trademark BELLA.

Viorganica submitted various reasons why not to allow Nestlé’s registration.

Nestlé took the position that, “because the question of whether BELLA [would] be registered [was] still before the Registrar, the Court [had] no jurisdiction to issue an order refusing [Nestlé’s] trademark registration application.”

Nestlé argued that the portion of Viorganica’s application to the Federal Court requesting Nestlé’s application for registration be refused should be struck.

The Court found that it did not have the jurisdiction to refuse Nestlé’s trademark registration application since original jurisdiction over trademark registration in Canada is bestowed by the Trade-marks Act on the Registrar of Trademarks, not the Federal Court.  Further, the Honourable Mr. Justice Annis writes, Viorganica (the “Applicant”)

[10]           […] is in effect attempting to challenge a decision over which the Court has no jurisdiction because the decision has not yet been made.

[11]           I further conclude that the Court’s jurisdiction could not somehow be implicitly based upon section 57 of the Act. It bestows jurisdiction on the Court “to order that any entry in the register be struck out.” Until Nestlé’s BELLA mark is registered, there is no mark for the Court to strike out.

[12]           Even if I am incorrect in respect of my conclusion that the Court does not have jurisdiction to hear the issue refusing the BELLA trademark, I would nevertheless strike the impugned paragraph of the application in the exercise of my discretion based on my conclusion that an adequate alternative remedy exists in the form of the ongoing opposition proceedings: Harelkin v University of Regina, 1979 CanLII 18 (SCC), [1979] 2 SCR 561; Fast v Canada (Minister of Citizenship and Immigration), 2001 FCA 368 (CanLII). Among other factors, it would be a waste of judicial resources to refuse a decision that may eventually turn out to be in the Applicant’s favour.

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