Federal Court Mows Down Bison Grass Vodka Trade-mark Application

In CEDC International v Underberg, Justice Barnes dismissed CEDC's appeal of the Trade-marks Opposition Board's decision that prevented CEDC from registering "Żubrówka" as a trade-mark in association with its vodka product.

Both CEDC and Underberg sell vodka that is flavoured with bison grass. Underberg opposed CEDC's application to register the word "Żubrówka" in association with its product. Applying section 12(1)(c) of the Act, the TMOB concluded that CEDC had not established that "Żubrówka" is not a generic name for bison grass-flavoured vodka and refused the application. CEDC appealed.

On appeal, Justice Barnes reviewed the complete evidentiary record before the TMOB and characterized CEDC's evidence as "very weak". Justice Barnes preferred Underberg's evidence, which showed that "Żubrówka" is a generic Polish word for bison grass-flavoured vodka that appears on labels of other similarly-flavoured vodkas. Justice Barnes also rejected CEDC's arguments based