The Registrar had rejected the Applicant's opposition to the registration of the word SAKURA and design. With respect to the s. 16(3)(a) ground of opposition, the Registrar found that the Applicant failed to prove that the alleged trademark SAKURA was used or made known in Canada by the Applicant or its distributor licensee prior to the material date. The Applicant was also unable to justify its allegation that mark SAKURA was not distinctive under s 2 of the Act.
On appeal to the Federal Court (FC), the Applicant did not dispute the Registrar's findings. Rather, the FC had to consider: (1) whether fresh evidence filed by the Applicant would have materially affected the Registrar's finding that a licensee's use of the SAKURA trademark did not accrue to the benefit of the Applicant; and if in the affirmative, (2) whether there was confusion between the parties' SAKURA trademarks.
The FC found that a verbal license agreement could be inferred from the new evidence. As a result, the Applicant established the use of the SAKURA trademark through a licensee in accordance with s. 50 of the Act. Having filled in gaps identified by the Registrar, the FC held that the new evidence would have materially affected the Registrar's determination with respect to s. 16(3)(a). The FC also concluded that the test for confusion favoured the Applicant, and accordingly, the appeal was allowed and the Registrar's decision was set aside. The FC did not need to consider the opposition ground under s 2 of the Act.