Carefully Consider an Appeal from the T.M.O.B

The Federal Court has confirmed that in the absence of new material evidence a determination of the T.M.O.B. will frequently be reviewed in a deferential fashion.

The Facts

Sandals Resorts International 2000 Inc. (Sandals) filed a trademark application for THE WORLD’S ONLY SIX STAR LUXURY INCLUDED VACATION & Design (Mark) shown below.advice should be sought about your specific circumstances. 

G6 Hospitality IP LLC (G6) opposed the application. It owns trademarks and trade names that consist of or include the number 6. Its trademarks have been used in Canada in association with motel and hotel-related services, notably the MOTEL 6 chain of accommodations. All G6’s grounds for opposition were based on allegations that the Mark was confusing, with its own trademarks and trade names.

The Decision of the Trademark Opposition Board G6 Hospitality IP LLC and Sandals Resorts International 2000 Inc, 2024 TMOB 12.

The Hearing Officer said to assess whether confusion was likely consideration must be given to all the surrounding circumstances, including each factor listed in subsection 6(5) of the Trademarks Act. The factors are: (a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known; (b) the length of time the trademarks or trade names have been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trademarks or trade names in appearance or sound or in the ideas suggested by them.

The Hearing Officer found that the statutory factors in ss 6(5)(a) to (d) favoured G6. However, the Hearing Officer found there was a low degree of resemblance between the trademarks in terms of appearance, sound, and ideas suggested, so the s 6(5)(e) statutory factor favoured Sandals position.

The Hearing Officer agreed with Sandals that, “in terms of prominence and location, the words ‘SIX STAR’ and the numeral six and star design are the most prominent and striking aspect” of the opposed Mark. While this part includes 6, the Hearing Officer found that the addition of the word ‘STAR’ and the star design inside the circle of the 6 substantially changed the appearance and sound and caused the Mark to suggest the idea of six stars. The Hearing Officer found the idea of six stars to be “a substantial departure from the simple idea of the number 6” suggested by G6’s trademark. The differences between the trademarks were more pronounced when considering the Mark as a whole relative to the trademark 6, as the other elements of the Mark do not bear any resemblance to 6 in appearance, sound, or ideas suggested. The Hearing Officer considered the degree of resemblance between the trademarks to be low, although not absent entirely.

Even though degree of resemblance under s 6(5)(e) was the only statutory factor favouring Sandals’ position, it was the statutory factor with the greatest impact on the confusion analysis. The Hearing Officer concluded that the likelihood of confusion between the Mark and the trademark 6 was “somewhat less than even.”  Sandals met its onus to show that confusion was not likely, and the Hearing Officer rejected G6’s opposition.

The Appeal- G6 Hospitality IP LLC v. Sandals Resorts International 2000 Inc. 2025 FC 1430

G6 Hospitality appealed. They argued that the Hearing Officer committed an extricable error of law or a palpable and overriding error of mixed fact and law in assessing degree of resemblance under subsection 6(5)(e) by treating ‘SIX STAR’ as a dominant aspect of the Mark.

The Judge said that assessing the degree of resemblance under subsection 6(5)(e) is a question of mixed fact and law. The Hearing Officer’s determination must be reviewed for palpable and overriding error as G6 conceded that the Hearing Officer did not commit an error in characterizing the relevant legal principles. The question was whether the Hearing Officer made an extricable error of law in applying the principles to the facts. 

The Hearing Officer recognized that the test for confusion was about source confusion from the average consumer’s perspective and said so expressly. The test for confusion was not about confusion of the trademarks or trade names themselves; rather, it is about confusion as to the source of goods or services. The test is “a matter of first impression in the mind of a casual consumer somewhat in a hurry, who sees the applied-for trademark at a time when they have no more than an imperfect recollection of the opponent’s trademark.” The fact that the Hearing Officer stated the correct test is a strong indication that the correct test was applied, absent some clear sign that the Hearing Officer subsequently varied their approach. 

The Hearing Officer did not misdirect their focus. The Hearing Officer’s key findings on degree of resemblance were that the word ‘STAR’ and the star design substantially changed the appearance and sound of the Mark as well as the idea suggested by it, and the idea of six stars is “a substantial departure from the simple idea of the number 6” suggested by the G6 trademark 6. The Hearing Officer followed the law by considering whether aspects of the Mark served to distinguish it from G6’s trademark 6.

G6 did not establish that the Hearing Officer made an error of law or a palpable and overriding error of fact or mixed fact and law, and the appeal was dismissed.

Comment

This decision represents what can be expected on appeals from opposition decisions when new evidence is not filed and accepted by the court. When new evidence is accepted and considered by the court to be material, the court can review the issue to which it relates on a de novo basis.

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.