Executive Summary: Key Legal and Evidentiary Issues

• The University of British Columbia (UBC) challenged Sage Dining’s trademark applications on grounds of confusion and non-distinctiveness.

• UBC failed to prove ongoing use or reputation of its “SAGE & Design” mark after 2012, weakening its opposition case.

• The Board found Sage Dining’s marks to be known in the market and not confusingly similar to UBC’s mark.

• New evidence submitted by UBC on appeal was deemed immaterial and did not alter the Board’s findings.

• The Court upheld the Board’s conclusion that UBC did not meet its evidentiary burden.

• Costs of $12,000 plus disbursements were awarded to Sage Dining as the successful party.

Facts and outcome of the case

The case involved an appeal by the University of British Columbia (UBC) from a decision of the Trademarks Opposition Board (the Board), which had rejected UBC’s opposition to two trademark applications filed by Sage Dining Services Inc. The dispute centered around the use of the word “SAGE” in trademarks related to food and dining services. UBC has owned a registered trademark for “restaurant services; catering services” under the “SAGE & Design” mark since 2006, primarily associated with its Sage Bistro and Sage Catering operations. Sage Dining, a company providing contract food services in North America, applied to register the word mark “SAGE” for use in dining services and a mobile application.

UBC opposed the registrations, arguing that the proposed marks were confusing with and not distinctive from its own registered mark. However, during proceedings before the Board, UBC failed to provide convincing evidence of continued use or reputation of its mark, particularly after 2012. Sage Dining submitted affidavits demonstrating its use and recognition of the SAGE mark in the marketplace. The Board ultimately dismissed all grounds of opposition, citing a lack of evidence from UBC and a reasonable likelihood that consumers could distinguish between the parties’ marks.

On appeal to the Federal Court, UBC submitted new affidavits attempting to address evidentiary gaps. The Court, however, found that the new evidence did not materially affect the Board’s findings. It reinforced that UBC had not demonstrated continued use or reputation of the SAGE & Design Mark at the relevant time. The Court also found no palpable and overriding errors in the Board’s assessment of confusion, distinctiveness, or state of the marketplace. As such, the Court dismissed the appeal.

Sage Dining Services Inc. was the successful party in the appeal and was awarded $12,000 in costs plus disbursements. The judgment confirmed the Board’s decision to allow the registration of Sage Dining’s marks to proceed, closing the matter in Sage Dining’s favor.