Opponent’s HONEY marks possessed at least some level of distinctiveness

Applicant applied to register trademark HONEY MOMENTS for use in relation to various personal care products. Opponent’s statement of opposition was rejected, on bases including that she had not established likelihood of confusion with her two HONEY trademarks used on goods including fashion accessories and cosmetics. Opponent appealed, filing substantial amount of new evidence addressing extent to which she had used her HONEY marks in Canada. Appeal allowed. As Board repeatedly noted that lack of evidence of opponent’s use of her marks played material role in its findings, new evidence would have materially affected its findings of fact and matter would be considered de novo. Based on Board’s findings that many of applied-for goods appeared to target similar consumers as opponent’s and that channels of trade were likely identical, and with evidence of opponent’s use of marks displacing Board’s assumption of de minimis use, these factors weighed heavily in opponent’s favour. Opponent’s HONEY marks possessed at least some level of distinctiveness, in absence of evidence that “honey” was descriptive of goods or services at issue or that it had inherently laudatory connotation and new evidence showed that marks were known to certain extent. Factor relating to length of trademarks’ use also now favoured opponent. Board’s rejection of opponent’s contention that use of word ‘MOMENT’ in conjunction with word ‘HONEY’ suggested time when HONEY brand product was used was based on absence of evidence as to use of HONEY marks, which had been addressed by new evidence. Board erred in drawing inference that opponent did not have monopoly of use of word “honey” in sector from existence of seven third party trademark registrations containing word “honey” in association with personal care products. Board had no evidence about current use of such marks or whether mark was used in relation to similar wares or products. Opponent established on balance of probabilities that there was real likelihood of confusion.

McDowell v. Laverana GmbH & Co. KG (2017), 2017 CarswellNat 8317, 2017 CarswellNat 888, 2017 FC 327, 2017 CF 327, Anne L. Mactavish J. (F.C.); reversed (2015), 2015 CarswellNat 2761, 2015 CarswellNat 2762, 2015 TMOB 56, 2015 COMC 56, Natalie de Paulsen Member (T.M. Opp. Bd.).