Backrack Inc. v STK, LLC

Backrack Inc. v STK, LLC

The Registrar's s.12(1)(b) finding was unreasonable because it dissected the mark and failed to assess acquired distinctiveness evidence; on de novo review the court found BACKRACK not clearly descriptive on first impression and that the applicant established acquired distinctiveness by the filing dates, therefore the marks are registrable and the appeals are allowed.

Citation
2013 FC 424
Parties
Applicant: BACKRACK INC.; Respondent: STK, LLC
Court
Federal Court
Jurisdiction
Canada
Judgment Date
26 April 2013
Procedural Posture
Trade Marks Act Appeal / Judgment
Outcome
Appeals allowed; both trade-mark applications approved for registration
Legal Topics
Distinctiveness, Descriptiveness (s.12(1)(b)), Acquired Distinctiveness (s.12(2)), Trademark Registration
Source Language
English
Trademark Law Intellectual Property Administrative Law Distinctiveness Descriptiveness (s.12(1)(b)) Acquired Distinctiveness (s.12(2)) Trademark Registration

Case Brief

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Parties

BACKRACK INC.

Applicant

STK, LLC

Respondent

Procedural Posture

Trade Marks Act Appeal / Judgment

Legal Issues

  1. 1 Whether BACKRACK is clearly descriptive of the wares under s.12(1)(b) of the Trade-marks Act
  2. 2 Whether the marks are registrable/distinctive under s.2 of the Trade-marks Act
  3. 3 Whether acquired distinctiveness under s.12(2) was proven as of the filing dates

Ratio Decidendi

The Registrar's s.12(1)(b) finding was unreasonable because it dissected the mark and failed to assess acquired distinctiveness evidence; on de novo review the court found BACKRACK not clearly descriptive on first impression and that the applicant established acquired distinctiveness by the filing dates, therefore the marks are registrable and the appeals are allowed.

Court Disposition

Appeals allowed; both trade-mark applications approved for registration

Orders

  • The appeals are allowed.
  • Canadian Trade-Mark Application No. 1,380,622 is approved for registration.