Executive Summary: Key Legal and Evidentiary Issues

• Glen Raven, Inc. successfully defended a Trademarks Opposition Board decision refusing registration of Pharma Cosmetic Laboratories Ltd.'s SUNBRELLA mark for sun-protecting cosmetics.
   
• Questions of law were reviewed for correctness, while questions of mixed fact and law required a palpable and overriding error.
   
• Glen Raven's registered goods were found to expressly include fabrics for producing shade products, not just fabrics, yarns and threads.
   
• Evidence of hang tags displaying the SUNBRELLA Marks on third-party shade products, supported by licensing and audit arrangements, sustained the finding of use.
   
• Sunscreen and shade products such as beach umbrellas and canopies were treated as goods typically used together, supporting a finding that the parties' goods were related.
   
• Costs and disbursements of $9,095.56 were awarded to Glen Raven after the court rejected its request for elevated costs.
   

Facts of the case

Pharma Cosmetic Laboratories Ltd. (PCL) appealed to the Federal Court under subsection 56(1) of the Trademarks Act from a Trademarks Opposition Board (TMOB) decision dated November 27, 2025. That decision refused PCL's application to register the SUNBRELLA trademark for goods including "non-medicated cosmetic sun-protecting preparations; facial foundation make-up with sun-protecting compositions."

Glen Raven, Inc. had opposed the application, arguing that PCL's mark was confusing with its own SUNBRELLA word and design marks, registered for fabrics, yarns and threads for use in producing products such as sun and wind screens, canopies and beach umbrellas. It also argued that PCL's mark was unregistrable because it was not distinctive. The TMOB focused on one registration in particular, SUNBRELLA & Design (TMA781,838), which it considered Glen Raven's strongest case on confusion given the scope of the registered goods.

Refusing the application under paragraphs 38(2)(b) and 12(1)(d) of the Act, the TMOB found that the likelihood of confusion was, at best for PCL, approximately even. It reasoned that the marks were nearly identical and the goods had some degree of relationship, and that differences in channels of trade and PCL's slightly longer period of use were not enough to tip the balance. The TMOB also held that PCL had not shown its mark was distinctive as of the material date, finding that Glen Raven's SUNBRELLA Marks had become known in Canada to a substantial extent. The appeal was heard in Ottawa on September 22, 2026, and judgment was issued on October 2, 2026.

Policy and legislative provisions at issue

The appeal turned on the confusion analysis under paragraph 12(1)(d) of the Trademarks Act, particularly the subsection 6(5) factors, and on distinctiveness under section 2. PCL also invoked subsection 50(1), arguing that it limits consideration to licensed use of a trademark.

Glen Raven's registered statement of goods was central. It covers fabrics sold in the piece for use in producing awnings, sun and wind screens, tents, canopies, boat covers and tops, indoor and outdoor furniture, beach umbrellas, area rugs, draperies, sheers and window treatments. A second set of registered goods adds fabrics for producing bags, clothing, curtains, upholstery, wearing apparel, handbags and sportswear.

Costs were assessed under Tariff B, including subsection 1(4) on supporting disbursements.

Reasoning and analysis

Applying the appellate standard from Clorox Company of Canada, Ltd v Chloretec SEC, 2020 FCA 76, the court reviewed questions of law for correctness and questions of mixed fact and law for palpable and overriding error. Glen Raven objected that two of PCL's arguments were new issues not raised before the TMOB. Working from limited excerpts of PCL's submissions to the TMOB, which Glen Raven provided for the first time in a compendium at the hearing, the court could not find on a balance of probabilities that the issues were new. In any event, it considered both issues in the interests of justice, finding the evidentiary record sufficient.

PCL first argued that the TMOB erred in law by relying on evidence of umbrellas, sun screens, canopies and other finished products when Glen Raven's registration was limited to fabrics, yarns and threads. Treating this as a question of mixed fact and law, the court found the premise wrong: the registration expressly covers fabric for use in manufacturing various shade products. As in Arterra Wines Canada Inc v Sundial Growers Inc, 2021 TMOB 67, the statement of goods was essentially the same as the goods with which the SUNBRELLA Marks had actually been used.

On "branding through" to the consumer, the court rejected PCL's claim that the TMOB had treated the phrase as a legal test. Glen Raven's Chief Marketing Officer used it to describe how hang tags or sewn-in tags bearing the SUNBRELLA Marks are seen by end consumers on the fabrics used in third-party shade products. Contrary to PCL's submission, the evidence was not confined to unlicensed use. The officer's affidavit described licences granted to numerous entities, including Canadian manufacturers such as Hauser and retailers of SUNBRELLA fabric such as Trican Corp., strict enforcement of those agreements, and a licence provision allowing Glen Raven to audit and approve any use of the marks and products made from its fabrics. Photos also showed the 838 Mark hangtag on the fabric of an awning beside a hangtag from the awning's third-party manufacturer. Citing GNR Travel Centre Ltd v CWI, Inc, 2023 FC 2, the court held that permanently applying a trademark to goods made by a third party can constitute use under the Act.

PCL's further point was that Glen Raven's evidence purporting to depict the 838 Mark on third-party products showed pillows and cushions, not umbrellas. That point also failed. The TMOB had relied on the officer's statement that third-party manufacturers use the fabrics to produce shade products including beach and patio umbrellas, so PCL's objection went to weight, which is not a basis for intervention. As for the relevant consumer, the court held it is not the third-party manufacturer but a casual consumer of PCL's sunscreen with an imperfect recollection of the 838 Mark, citing Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23.

Turning to concurrent use, the court found that the TMOB had not treated the doctrine as a strict rule. The TMOB had accepted PCL's point that "offering protection from the sun" was on its own too tenuous a link, but found a deeper connection because sunscreen is typically used alongside shade products such as sun screens and beach umbrellas. That finding was open on the record and consistent with Vivo Mobile Communication Co, Ltd v Garmin Switzerland GmbH, 2022 FC 1410, which recognizes that confusion may be heightened where goods are often used together. PCL also contrasted its own sales, made directly to consumers and through dermatologists, estheticians and beauty salons, with Glen Raven's sales to manufacturers. That argument was directed at channels of trade, a factor the TMOB had already weighed in PCL's favour. Case law also allows a finding of concurrent use even where goods are intrinsically different or from different classes.

PCL also challenged the TMOB's reliance on Glen Raven's 2015 distribution of SUNBRELLA-branded sunscreen as promotional items in the United States. Relying on Beyond Restaurant Group LLC v Wang, 2020 FC 514, PCL argued that this evidence was generated by a "junior user" after Glen Raven became aware of PCL's use of its mark in Israel in 1997 and in Canada in 2010. The court found no evidence in the record of Glen Raven's knowledge of PCL's mark. If anything, the record pointed the other way, since the TMOB had found PCL's Canadian sales "fairly minimal" and its mark known in Canada to no more than a minimal extent.

On distinctiveness, PCL identified no separate error beyond its confusion arguments. Having found no reversible error in the confusion analysis, and with PCL not challenging the finding that Glen Raven's marks had become known in Canada to a substantial extent, the court saw no basis to intervene.

Ruling and overall outcome

The Federal Court dismissed the appeal with costs. Glen Raven, as the successful party, had submitted a Bill of Costs calculated at both the mid end of Tariff B, Table 3, Column 2 ($7,000.00) and the higher end of Column 3 ($12,000.00). It sought elevated costs on the grounds that PCL raised new issues and made statements in its written argument that lacked evidentiary foundation or ignored evidence. The court declined to award elevated costs, noting that it had been unable to conclude that new issues were raised and that PCL had not sought to mislead the court, describing the matter as a standard, hard-fought appeal. It did allow $2,095.56 in supported disbursements for travel and accommodation to attend the Ottawa hearing. Glen Raven was awarded costs and disbursements in the amount of $9,095.56.