The Federal Court recently allowed an appeal by Yat Sun Food Products Ltd. (“Yat Sun”) of a decision by the Trademarks Opposition Board (“TMOB”). The TMOB had rejected Yat Sun’s opposition to Griffith Foods International Inc.’s (“Griffith”) application for “CHEF’S OWN” in association with soup bases, sauces, and seasonings.

Yat Sun’s opposition relied on its nearly identical mark, “CHEFS-OWN”, registered in association with fresh bean sprouts. The TMOB had found that the goods, channels of trade, and target audiences of the respective marks were sufficiently different to make confusion unlikely.

The Court deemed that Yat Sun’s new affidavit on the appeal should be treated as filed on January 20, 2025, and thus before the April 1, 2025 coming-into-force date of Section 56(5) of the Trademarks Act, which now requires the Court’s leave to file new evidence on appeal. The Court also found part of that evidence to be material. In particular, that evidence indicated that Yat Sun was in the wholesale channel of trade and had overlapping customers with Griffith in that sphere. Although Yat Sun had not yet used the CHEFS-OWN mark specifically in the wholesale channel, the Court concluded it was entitled to do so.

After conducting a de novo review, the Court was not persuaded that the goods were sufficiently disparate. Both parties’ food products could travel through overlapping channels, including wholesale, and be used in the same recipes, increasing the risk of confusion. Accounting for the new evidence, the Court found that there was a likelihood of confusion.

The Court therefore allowed the appeal, set aside the TMOB decision, and refused Griffith’s application. The decision can be found here.