The Court allowed an appeal of the Trademark Opposition Board's decision rejecting Ms. McDowell's opposition to the registration of the HONEY MOMENTS trademark for use in relation to a number of personal care, pharmaceutical and cosmetic products. On appeal, Ms. McDowell filed a substantial amount of new evidence that primarily addressed the extent to which she has used her HONEY marks in Canada. The Court was satisfied that this new evidence would have materially affected the Board's findings of fact and considered the matter de novo , while still taking the Board's decision into account as a relevant consideration.
In applying the test for confusion, the Court found that the factors in subsection 6(5) of the Trademarks Act favoured a finding of confusion. For example, the fact that many of the goods identified in the Respondent's application appear to target similar consumers to those targeted by Ms. McDowell's products, and that the channels of trade for the two sets of products are likely identical or very similar. This, along with Ms. McDowell's affidavit demonstrating continuous use of her HONEY marks in Canada since 2003, weighed heavily in Ms. McDowell's favour.
Additionally, the Court found that Ms. McDowell's HONEY marks possess at least some level of distinctiveness. The Board had originally found that the marks were not inherently distinctive, in light of the laudatory meaning of the word "honey". The Court noted that while the Board is entitled to take judicial notice of dictionary definitions of words found in trademarks, it is not entitled to take judicial notice of a single meaning without evidence, of which there was none in this case.
The Court also noted that the Board erred in drawing a negative inference from the state of the Register, which showed that seven third parties had registered trademarks that contained the word “honey” in association with personal care products. There was no evidence to establish that the marks were currently in use, or that they were in use as at the relevant material dates, nor was there evidence to establish that the marks were used in relation to wares or services that are similar to those of the parties, or the extent of any such use.
Balancing all of the relevant factors and surrounding circumstances, the Court was satisfied that Ms. McDowell had established that there is a real likelihood of confusion between her HONEY marks and the Respondent's HONEY MOMENTS mark. Accordingly, the appeal was allowed.