Be Cautious When Using a Variant of a Registered Trademark

The Facts 

The University of British Columbia (UBC) is the registered owner of the trademark SAGE & Design Mark, as shown below:

for use in association with “restaurant services; catering services”. The registration does not include a colour claim.

Sage Dining Services Inc. (Sage Dining) filed two applications for the trademark SAGE for use in association with “Downloadable mobile application for users to view and manage student meal plan accounts; downloadable mobile application for users to purchase and pay for food” and “Dining services, namely catering and contract food service offered on-site to public and private businesses and institutions”. 

UBC opposed the Sage Dining applications primarily based on confusion with its registered mark. UBC filed no evidence of the use of its mark but filed a certified copy of its registration.

The Trademark Opposition Board- The University of British Columbia v. Sage Dining Services Inc. 2023 TMOB  185

The Hearing Officer rejected UBC’s opposition based on confusion. It found that:

1. As between the SAGE Marks and the SAGE & Design Mark, there was considerable resemblance in appearance and sound, but less resemblance in ideas suggested. This favoured UBC.

2. The SAGE marks were inherently stronger than the SAGE & Design Mark, because the latter mark “strongly suggests that UBC used this herb in association with the preparation of its food for its dining services.” There was also evidence that Sage Dining’s marks had become known, either to a “considerable extent” or “some extent,” while there was no such evidence on behalf of UBC regarding its SAGE & Design Mark. This factor was found to favour Sage Dining.

   
   

3. There is overlap in the nature of the goods, services or business and channels of trade, as between each of the applied-for trademarks and the SAGE & Design Mark. This factor therefore favoured UBC.

   
   

The Hearing Officer considered two additional surrounding circumstances that favoured Sage Dining. First, she inferred from the evidence that several other businesses in the food service industry that use the word SAGE as part of their trademarks and consumers who view restaurant services with a trademark that includes the word SAGE distinguish such marks based on features beyond the word SAGE. Second, while s. 19 of the Act does not give the owner of a registration an automatic right to obtain any further registrations, Sage Dining owned several registered trademarks that include the word SAGE, and the chosen goods and services for all the trademarks it applied for are identical or are closely related to those for which it has the previously registered trademarks.

The Hearing Officer noted the lack of evidence of actual confusion but found that, because UBC filed no evidence showing its use of the SAGE & Design Mark, she could not draw any inference from the lack of actual confusion.

The Appeal -The University of British Columbia v. Sage Dining Services Inc.2025 FC 1176

UBC appealed to the Federal Court and filed additional evidence. The evidence showed that UBC began using the SAGE & Design Mark in 1999 but that it used “updated” branding, depicted below, between 2013 and 2020 (which notably did not include the sage leaf design).

UBC stopped providing restaurant services in association with its mark in early 2020 but continued operating its catering business.  UBC refreshed the SAGE & Design Mark for the Sage Catering business “at or around the beginning of 2021.” The “refreshed” SAGE & Design Mark, as shown below, appeared on UBC’s website by February 25, 2021, and was used continuously in Sage Catering promotional materials ever since.

The Judge was not impressed with this evidence and found that from 2021 UBC was using another distinct mark. A consumer on viewing this presentation (the word Sage and the sage leaf, ensconced in a large bright orange circle) would perceive the registered mark as a separate trademark.

The Judge found this, and other new evidence filed by the parties would not have materially affected the Board’s decision.  Questions of law in the appeal were considered on the correctness standard, while questions of fact and mixed fact and law were subject to the standard of “palpable and overriding error”:

The Judge found that the new evidence unequivocally showed that, at the material date of July 9, 2021, the SAGE & Design Mark had not been used or made known in over eight years. The mere fact that services were being advertised does not constitute use in association with a service. Some aspect of the services must be performed or delivered in Canada.

The Hearing Officer had made no errors of law and there was no palpable or overriding error in the conclusion that the balance of the surrounding circumstances favoured Sage Dining.

Comment

This decision turned on whether UBC was using its SAGE & Design Mark. Generally, a trademark owner has the right to use its registered mark in association with any colour unless the registration was limited by a colour claim. The test concerning deviating use is that a variation can be made to a registered mark if the same dominant features are maintained and the differences are so unimportant that an unaware purchaser of the services would not be misled.  The variant maintained the dominant features, and the existence of a circular background seems rather minor. The existence of the colour does not seem relevant. 

If you have questions, please contact me at mckeown@gsnh.com 

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1700 

Toronto, Ontario MSG 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances.

A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.