Executive Summary: Key Legal and Evidentiary Issues

• Trademark confusion centered on use of the number “6” and the phrase “SIX STAR” in competing marks.

• The court reviewed whether the Trademarks Opposition Board (TMOB) erred in assessing resemblance under section 6(5)(e) of the Trademarks Act.

• G6 Hospitality claimed rights in a “family” of trademarks incorporating the number 6 but provided limited supporting evidence.

• The TMOB's decision hinged primarily on the visual and conceptual differences between the marks.

• The court applied the standard of “palpable and overriding error” for factual findings and found no such error.

• Costs were awarded to the respondent at the upper end of Column III of the Federal Courts Tariff.

Facts and outcome of the case

Background and context

G6 Hospitality IP LLC, best known for its MOTEL 6 brand, appealed a decision by the Trademarks Opposition Board (TMOB) that dismissed its opposition to a trademark application filed by Sandals Resorts International 2000 Inc. Sandals sought to register the trademark “THE WORLD’S ONLY SIX STAR LUXURY INCLUDED VACATION” for use in Canada in connection with hotel and travel-related services.

G6 Hospitality opposed the application on the grounds that the mark was confusingly similar to its own trademarks and trade names that feature the number “6,” including the trademark for the numeral “6” alone and various forms of the MOTEL 6 mark. G6 argued that the public would associate Sandals’ use of the number 6 with its own brand, resulting in confusion.

The TMOB’s findings

The TMOB’s decision turned primarily on the analysis of confusion under section 6(5) of the Trademarks Act, focusing especially on factor (e): the degree of resemblance. While the Board acknowledged that G6's trademarks had some inherent and acquired distinctiveness and had been in use for some time, it concluded that the resemblance between the two marks was low.

The TMOB emphasized that while Sandals’ mark included the numeral 6, it was part of a more complex phrase “SIX STAR” and incorporated a visual star design, which collectively altered the overall impression of the mark. It found that these elements significantly differentiated the Sandals mark from G6’s simple “6” trademark.

Legal issues on appeal

On appeal, G6 Hospitality argued that the TMOB erred by failing to properly identify the dominant distinctive element of the Sandals mark and by neglecting to assess the impact of G6’s “family” of trademarks featuring the number 6. G6 also contended that the term “SIX STAR” is merely laudatory or suggestive and therefore not capable of distinguishing Sandals’ services from those of G6.

The court reviewed these issues under the standard of “palpable and overriding error” for factual determinations, and “correctness” for legal errors.

Court’s analysis and conclusion

The court held that the TMOB did not commit any reviewable error. It found that the TMOB correctly understood and applied the confusion test from the perspective of the average consumer. The Board properly considered the trademarks as a whole and reasonably concluded that the addition of the word “STAR” and the accompanying visual design changed the character of the mark enough to avoid likely confusion.

The court also rejected the argument that the TMOB failed to consider the existence of a “family” of G6 trademarks. It noted that while the TMOB did not use the word “family,” it acknowledged and evaluated the shared numeric component across G6’s various marks. Given the limited evidence on record regarding the family of trademarks and the relatively low distinctiveness of the number 6, the court concluded that the TMOB had adequately addressed the issue.

Outcome and costs

The appeal was dismissed. Sandals Resorts International 2000 Inc. was awarded costs, to be calculated at the upper end of Column III of the Federal Courts Tariff. If the parties could not agree on the amount, the costs would be assessed by an assessment officer. No damages were awarded, as the matter solely concerned the review of a trademark opposition decision.