In the recent decision of Sobeys Capital Incorporated v. CCP Productos, S.A.P.I. de C.V., the Trademarks Opposition Board (TMOB) allowed an opposition filed by Sobeys, finding that the applied-for trademark VUALA is confusingly similar to Sobeys’ VOILA marks.

The TMOB considered whether the VUALA mark, filed for use with bread, cookies, frozen confectionery, and pastries, created a likelihood of confusion with Sobeys’ VOILA marks, used in connection with online grocery ordering and delivery services. The TMOB found that even though the visual resemblance between the marks was only moderate, the phonetic and conceptual similarities were enough to raise confusion concerns, especially among average Canadian consumers with only an imperfect recollection of the VOILA marks.

Sobeys also established extensive use and acquired distinctiveness of the VOILA brand across Canada through significant marketing. In contrast, CCP Productos offered no evidence of use or reputation in Canada of the VUALA mark.

Given the overlapping nature of the parties’ goods and services, the TMOB concluded that the marks could reasonably be seen as originating from the same source. As a result, the application for VUALA was refused.

In its recent decision G6 Hospitality IP LLC v. Sandals Resorts International 2000 Inc., 2025 FC 1430, the Federal Court upheld a Trademarks Opposition Board (“TMOB”) decision rejecting G6 Hospitality IP LLC’s (“G6”) opposition to Sandals Resorts International 2000 Inc.’s (“Sandals”) trademark application for THE WORLD’S ONLY SIX STAR LUXURY INCLUDED VACATION & Design in association with travel- and hotel-related goods and services.

Before the TMOB, G6 had argued that Sandals’ mark was confusing with its own “family” of trademarks and trade names associated with its MOTEL 6 chain, which included a registration for the number “6”. The TMOB disagreed, finding that the words “SIX STAR” and the associated numeral six and star design were the most prominent and striking aspects of Sandals’ mark, which the TMOB  determined bore a fairly low degree of resemblance to G6’s marks. Consequently, the TMOB found that Sandals met its onus to show that confusion was not likely and rejected G6’s opposition.

On appeal, G6 alleged two errors:

1. The TMOB erred in treating “SIX STAR” as a dominant aspect of Sandals’ mark; and
2. The TMOB erred by failing to properly consider the G6 marks as a “family” of trademarks.

For the first ground, G6 argued that the supposed suggestive or laudatory connotation of “SIX STAR” meant that it could not be a dominant element of Sandals’ mark. For the second ground, G6 argued that by focusing the analysis on G6’s mark for 6, rather than each mark in G6’s “family” of marks, the TMOB failed to consider all surrounding circumstances as required by section 6(5) of the Trademarks Act.

The Court rejected both arguments. It held that the TMOB was not required to address whether “SIX STAR” was suggestive or laudatory since G6 had not raised this point during the TMOB proceedings, but instead merely asserted that “the trademarks of both parties comprise or are dominated by the numeral 6”. The Court also held that the TMOB had fully addressed the “family” of marks argument in making its findings by focusing on the common element 6 and effectively treating evidence about use of trademarks that included the number 6 as brand recognition of 6 alone.

G6’s appeal was therefore dismissed.

The Federal Court of Appeal has made it clear: Canada’s “due care” standard for reinstating patents and patent applications is applied very strictly. In two recent cases, reinstatement was refused even where maintenance fees were missed due to junk-email filters or data-migration errors. Patent applicants/patentees, Canadian patent agents, and foreign associates should all take care to ensure that maintenance fee deadlines are not inadvertently missed to avoid accidental loss of rights.

For more information, please see our publication on the recent Federal Court of Appeal decisions here, as well as our publication on the due care standard from last year here.

Parties engaged in the purchasing of trademarks received good news recently with the Federal Court of Appeal confirming that recent arms-length acquisitions of trademarks may excuse non-use of those trademarks.

The watchword of trademarks is “use it or lose it”. Ordinarily, if a trademark owner does not use its trademark for three years, any registration for that trademark is vulnerable to expungement. In expungement proceedings, a trademark owner who cannot show use of the mark within the previous three years can only preserve its registration if it is able to show “special circumstances” that excuse non-use of the trademark.

In Centric Brands Holding LLC v. Stikeman Elliott LLP (“Centric”), the Federal Court of Appeal made three holdings that may benefit buyers of trademarks:

1. When an arms-length acquisition of a trademark occurs during the three years before commencement of expungement proceedings, no special circumstances excusing non-use of the trademark need to be shown for the period of time before the acquisition.
2. Where the acquisition occurs several months before the commencement of expungement proceedings, the acquisition itself may excuse non-use of the trademark by the new owner, who may need some time to begin using the mark.
3. Where expungement proceedings are initiated between the signing date of an agreement (to acquire the trademark) and the closing date of the agreement, the circumstances excusing non-use of the trademark may be assessed from the signing date.

All together, Centric significantly increases certainty relating to the purchase of trademarks. This decision confirms that non-use of a mark by a previous owner cannot necessarily be used against the new owner, and that the acquisition itself may excuse a short period of non-use by the new owner. Additionally, the clarification of the material date for assessing the circumstances excusing non-use mitigates the possibility that expungement proceedings initiated between signing and closing of a transaction could expunge the registration of the trademark being acquired.

Prospective patent agents and trademark agents now have a new tool to assist in completion of their apprenticeships.

Patent agent trainees and trademark agent trainees are currently required to complete a 24-month apprenticeship with an agent supervisor and complete qualifying examinations to become a licensed agent. A consultation process last year identified the inability to secure this apprenticeship as the greatest barrier to licensure.

In response to this feedback, the College of Patent Agents and Trademark Agents (CPATA) has added new features to the Public Register of patent agents and trademark agents to assist in connecting trainees to supervisors. Trainees can now indicate on their Public Register profile that they are looking for a training supervisor, and agents can now indicate on their profile that they are open to supervising a trainee. Moreover, the Public Register can now be searched by agents open to supervising and by trainees looking for a supervisor. Full instructions for using the new features may be found here.

These new features should make it easier for trainees and supervisors to identify and contact each other.

A recent decision by the Trademarks Opposition Board serves as a reminder that use of protected professional designations such as “engineer” or “engineering” as a trademark or as part of a trademark must not mislead the public about the nature of the good and services or the qualifications of the professionals involved in providing those services.

Signify Holding B.V. sought to register the trademark FLUENCE BIOENGINEERING in association with a wide range of goods and services, including LED lighting systems, various engineering services, and agricultural research services. The application was opposed by Engineers Canada, the national organization representing twelve provincial and territorial associations responsible for regulating the practice of engineering in Canada.

In its decision, the Trademarks Opposition Board refused registration of the trademark on the basis that the mark was deceptively misdescriptive under the provisions of section 12(1)(b) of the Trademarks Act.

Engineers Canada argued that the term “Bioengineering” in the trademark falsely implied the involvement of licensed professional engineers, which could mislead the public, especially since the practice of engineering is a regulated profession in Canada. The evidence on record showed that Signify Holding B.V. “is not authorized by any of the Engineering Regulators to practice engineering in any jurisdiction in Canada”.

The Trademarks Opposition Board ultimately refused the application on the basis that the trademark was deceptively misdescriptive of the persons employed in the production of the applied-for goods or in the performance of the services.