Executive Summary: Key Legal and Evidentiary Issues

• Central issue was whether nearly identical trademarks (CHEFS-OWN and CHEF’S OWN) for different food products could co-exist without causing confusion.

• The court considered if new evidence on wholesale sales and overlapping customers was material and admissible on appeal.

• Analysis included whether the Trademarks Opposition Board erred in its assessment of the nature of the goods, channels of trade, and likelihood of confusion.

• Standards of review for administrative decisions and the admissibility of expert evidence were key procedural points.

• The court examined the impact of recent amendments to the Trademarks Act regarding new evidence on appeal.

• Costs were awarded to the successful party, reflecting agreement between the parties on the quantum.

Facts and outcome of the case

Background and parties

Yat Sun Food Products Ltd. owned the registered trademark CHEFS-OWN for fresh bean sprouts and opposed the registration of the nearly identical trademark CHEF’S OWN by Griffith Foods International Inc., which sought to use the mark for sauces, seasonings, and related food products. Griffith’s application was based on international registration and covered goods in International Classes 29 and 30, including soup bases, seasonings, and dressings. During the trademark application process, Griffith amended its application to limit its goods to business-to-business sales in commercial sectors such as restaurants and food service chains.

Opposition and initial decision

Yat Sun opposed Griffith’s application on several grounds, including registrability, entitlement, and distinctiveness, arguing that the marks were confusingly similar and that Yat Sun had prior use and rights. Both parties submitted affidavits and participated in an oral hearing before the Trademarks Opposition Board. The Board rejected Yat Sun’s opposition, finding that the goods and channels of trade were sufficiently different to avoid confusion, and that the trademarks, while nearly identical, would not likely cause confusion among consumers.

Appeal and new evidence

Yat Sun appealed to the Federal Court, submitting new evidence that it had been selling bean sprouts through wholesale channels since 2017 and that its customers overlapped with Griffith’s, specifically naming Sysco and Gordon Food Service. The court determined that this new evidence was material and should be considered, as it addressed a gap in the record regarding the overlap in channels of trade and customers.

Legal analysis and outcome

The court conducted a de novo review of the relevant confusion factors, particularly the nature of the goods, businesses, and trade channels. It found that both parties operated in the wholesale food sector and had overlapping customers, undermining the Board’s conclusion that the channels of trade were distinct. The court also reaffirmed that the test for confusion is based on the first impression of the average consumer, not on subsequent research or the professional status of the purchaser.

Upon weighing all the factors, including the degree of resemblance between the marks and the new evidence of overlapping trade channels, the court concluded that there was a likelihood of confusion. The court set aside the Board’s decision, allowed Yat Sun’s opposition, and refused Griffith’s trademark application.

Costs awarded

Following the hearing, the parties agreed that the successful party should be awarded costs. The court awarded Yat Sun Food Products Ltd. costs in the amount of $4,500, payable by Griffith Foods International Inc.