On July 2, 2025, the Federal Court of Canada (the Court) dismissed an appeal by the University of British Columbia (UBC) of a decision of the Trademarks Opposition Board (the TMOB) regarding UBC's opposition to a trademark registration by Sage Dining Services Inc. (Sage Dining), a food services company (the TMOB Decision).
UBC is the owner of the following Canadian registered trademark (the UBC Mark):
The UBC Mark has been registered in Canada since March 7, 2006, in association with restaurant services and catering services.
Between 2016 and 2018, Sage Dining applied to register the trademarks SIMPLY SAGE, SAGE DINING SERVICES, and SAGE (collectively, the Sage Dining Marks) in Canada. UBC opposed all of these trademark applications before the TMOB, relying on several grounds of opposition, including that the Sage DiningMarks were confusing with the UBC Mark and non-distinctive.
The TMOB rejected UBC's opposition on the non-distinctiveness ground, as it found that UBC had not met its evidentiary burden of demonstrating its own use and/or the reputation of the UBC Mark. The TMOB also rejected the opposition on the ground of confusion after undertaking a full confusion analysis pursuant to Section 6(5) of Canada's Trademarks Act,1 which included the following findings:
- As between the UBC Mark and the Sage Dining Marks, there is a considerable degree of resemblance in appearance and sound, though less resemblance in ideas suggested by the trademarks (overall, this factor was found to favour UBC);
- The Sage Dining Marks are inherently stronger than the UBC Mark, as the UBC Mark strongly suggests that UBC uses the depicted herb in association with the preparation of food for its dining services, and because the evidence suggested that the Sage Dining Marks had become known to some extent, while there was no such evidence in respect of the UBC Mark. In fact, the TMOB held that as of the material date of July 9, 2021 the UBC Mark had not been used or made known in Canada in over 8 years (this factor was found to favour Sage Dining);
- There is overlap in the nature of the goods, services or businesses and channels of trade between the UBC Mark and the Sage Dining Marks (this factor was found to favour UBC);
- Several other businesses in the food services industry used the word "sage" in their trademarks and therefore, consumers can distinguish between such marks based on features beyond the word "SAGE" (this factor was found to favour Sage Dining); and
- While owners of a registered mark do not have an automatic right to obtain further registrations, Sage Dining already owned several registered trademarks that include the word "sage" for similar goods and services (this factor was found to favour Sage Dining).
The TMOB also noted the lack of evidence of actual confusion, but as UBC was unable to demonstrate use of the UBC Mark in Canada, the TMOB was unable to draw any inferences from the lack of actual confusion.
The appeal
UBC abandoned its appeal with respect to the trademarks SIMPLY SAGE and SAGE DINING SERVICES, and continued to oppose only the two applications for the trademark SAGE (the SAGE Mark) in association with "dining services, namely catering and contract food service offered on-site to public and private businesses and institutions" and "downloadable mobile application for users to view and manage student meal plan accounts; downloadable mobile application for users to purchase and pay for food." Ultimately, the appeal came down to whether the TMOB errored in fact or in law by dismissing non-distinctiveness and confusion grounds of opposition.
New evidence
On appeal, both parties filed new evidence in addition to the evidence that was before the TMOB. The submission of new evidence required that the Court assess whether the new evidence would have materially affected the TMOB Decision, considering its nature, significance, probative value and reliability.
The new evidence submitted in support of UBC set out that UBC had been using the UBC Mark since 1999 in association with its on-campus restaurant, Sage Bistro. The evidence also set out that UBC began using the following "updated" logos in 2013, which no longer used the sage leaf design:
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UBC further updated its logo in 2021, where the sage leaf was re-introduced in the logo (the 2021 UBC Mark):
The 2021 UBC Mark was said to have appeared on the UBC website since at least February 25, 2021 and was used continuously in promotional materials since that date.
Standard of review
The Court found that none of the new evidence brought forth by the parties would have materially affected the TMOB's decision, and to the contrary, the new evidence actually proved that UBC was not using the UBC Mark between 2013 and 2021 and was instead using other design marks. As such, the questions of law on appeal were to be considered on the correctness standard, while questions of fact and mixed fact and law were to be considered on the standard of "palpable and overriding error."
Non-distinctiveness
An opponent to a trademark application has the initial evidentiary burden to establish the facts on which it bases its grounds of opposition. The evidence before the TMOB clearly established that the UBC Mark had not been used or made known in over eight years, while the SAGE Mark had become known to some extent, and so the Court ultimately found that the TMOB did not make any palpable and overriding error. Rather, the TMOB's findings were supported by the evidence submitted by Sage Dining (evidence which was not challenged by UBC in the TMOB). The Court held that UBC failed to meet its initial evidentiary burden to prove that the UBC Mark had acquired a reputation in Canada that would effect the distinctiveness of the SAGE Marks. UBC argued on appeal that the evidence established that the word SAGE had been adopted by multiple third parties in the food services industry as well and that the SAGE Marks (in the absence of any other word or design elements) cannot therefore serve as a unique source-identifier for Sage Dining's services. However, Mr. Justice Lafrenière commented that the Court does not have jurisdiction to entertain issues that were not raised before the TMOB. The non-distinctiveness ground of opposition was accordingly dismissed.
Confusion
The TMOB found that at all material dates, the UBC registrations were in good standing and, as such, Sage Dining was required to show that, on a balance of probabilities, there was no reasonable likelihood of confusion between the trademarks. UBC did not dispute that the TMOB applied the proper test for confusion, but instead raised questions of fact, including the following:
1) Strength of the UBC Mark. UBC argued that the UBC Mark is inherently stronger than the SAGE Mark. The Court concluded that it was not its role to reweigh the evidence before the TMOB and that "significant deference" should be given to the TMOB in its confusion analysis, as it possesses a greater level of expertise and performs such assessments day in and day out.
2) Continuous and extensive use. UBC argued that the UBC Mark had become known through continuous and extensive use from 1999 to 2021, and again from 2021 to the present, while the SAGE Mark had not. The Court found that this argument had no merit as it was not supported by the evidence.
3) Use of common word. UBC argued that confusion is more likely where a trader, such as Sage Dining, uses a word that is common to several other third party trademarks where nothing is added to distinguish it in the minds of consumers from those other trademarks. The Court came to the opposite conclusion, stating that common adoption in the marketplace actually allows for the inference that consumers are accustomed to seeing similar marks and are able to distinguish them from each other.
Decision
The Court made very clear in its decision that a fatal aspect of UBC's appeal was that, although UBC argued that there was a likelihood of confusion between the parties' trademarks, they failed to provide any evidence of actual or likely confusion. The Court found that UBC failed to show that the TMOB committed a reversible error and concluded that it was open to the TMOB, on the evidence submitted, to dismiss UBC's opposition on the grounds of non-distinctiveness and confusion.
Commentary
In comparing the UBC Mark and the SAGE Mark, it may appear that a consumer is likely to be confused between them. However, the failure by UBC to demonstrate its own use and/or reputation in the UBC Mark was detrimental to its opposition.
This decision should serve as a reminder to owners of trademarks that it is imperative to continuously use them with respect to the associated goods and services. It is also important for trademark owners to be vigilant in opposing the use of similar trademarks as soon as possible, because once a mark has been concurrently used in the marketplace, it may be more challenging to successfully argue that the consumers are likely to be confused by the marks, especially if there is no evidence of actual confusion.
Finally, when contemplating an appeal of a TMOB decision, applicants should consider the strength of their new evidence. Unless such new evidence would have materially affected the prior TMOB decision, the applicable standard of review will result in significant deference being given to the TMOB, meaning the likelihood of a successful appeal will be reduced.
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