L'Oréal v. Cosmética Cabinas, S.L, 2016 FC 680

In this case, L'Oreal appealed the decision of the Registrar of Trademarks allowing Cabinas' opposition to the mark INOA. L'Oreal filed further evidence on appeal. Cabinas did not respond to that further evidence. The Registrar held that Cabinas had met its burden of proving prior use of AINHOA and that L'Oreal had not met its burden of proving that there was no likelihood of confusion. The Federal Court dismissed the appeal.

The Court held that L'Oreal's new evidence on prior use would not have materially affected the Registrar's findings on that point. Furthermore, the Court held that it would only intervene on the question of prior use if the Registrar's decision was clearly wrong, as it was a question of mixed fact and law. The Court considered the case law, and held that the Registrar's decision was reasonable. Furthermore, reliance on concepts from passing off cases was held to be of no help to L'Oreal.

L'Oreal tried to argue that Cabinas' use of the trademark cannot be considered to be in the normal course of trade because the products were in violation of Canadian cosmetic regulations. However, the Court did not accept this argument, holding that in the absence of clear evidence, the Registrar does not have the jurisdiction to find the use of a trademark to be unlawful in an opposition proceeding, particularly where the matter was within the jurisdiction of another decision maker. There was no such evidence here.

With respect to the issue regarding likelihood of confusion, the Court also held that L'Oreal's new evidence would not have affected the Registrar's decision. Furthermore, L'Oreal reargued many of its positions from before the Registrar. In addition, the Court did not accept that the new evidence that INOA stands for "Innovation No Ammonia" is a coined word suggesting distinctiveness. The Court held that the Registrar's decision on confusion was reasonable. The Court also refused to draw an adverse inference due to Cabinas not filing evidence in response on this appeal. Cabinas had met its burden before the Registrar, and in this appeal, the onus was on L'Oreal.