Citation: 2017 FC 581
Ottawa, Ontario, June 13, 2017
PRESENT: The Honourable Mr. Justice Manson
HEATHER RUTH MCDOWELL
THE BODY SHOP INTERNATIONAL PLC
JUDGMENT AND REASONS
 This is an appeal of a decision of the Trade-marks Opposition Board (“TMOB”), dated September 6, 2016 (2016 TMOB 150, the “Decision”), in which the TMOB rejected the opposition of Heather Ruth McDowell (the “Applicant”) to Application No. 1,600,908, filed by The Body Shop International Plc (the “Respondent”), registering the trademark HONEYMANIA (the “HONEYMANIA Mark”).
 The Applicant owns two trademarks: TMA767,075 for the word mark HONEY and TMA 767,134 for HONEY & DESIGN (the “HONEY Marks”). The goods covered by the HONEY Marks include clothing, footwear, jewellery, fashion accessories, watches, hair accessories and cosmetics. The overlap of goods that are relevant to this appeal are cosmetics: namely, foundation made of liquid or power, face creams, blush, eye shadow, eye liner, mascara, lipstick, lip gloss, lip liner, make-up bags sold empty (the “HONEY Goods”). The HONEY Marks are licenced to corporations that operate HONEY branded retail outlets, though which HONEY branded goods are sold, bearing the HONEY Marks.
 On November 2, 2012, the Respondent filed Application No. 1,600,908, to register the HONEYMANIA Mark (the “HONEYMANIA Application”). The goods contained in the HONEYMANIA Application as filed include:
cosmetics, lip, skin and hair care preparations, face cream and lotion, soaps for personal care and soap bags, bath and shower gel, oils, beads, cream and effervescent powders and bubble bath, deodorants, suntanning preparations, shaving preparations, perfumes, eau de toilette, essential oils and perfume oils for personal use, for aromatherapy, for the manufacture of perfumes, for cosmetic purposes and for the care of skin and body, and perfume oils, nail care preparations, cotton sticks and cotton and wool swabs for personal use, powdered cosmetic tissues, scented room fragrances, incense sticks, potpourri and sachets, kits and gift sets containing cosmetics, lip, skin, hair and nail care preparations (the “HONEYMANIA Goods”).
 The HONEYMANIA Application was advertised on June 26, 2013, and the Applicant filed a Statement of Opposition on November 26, 2013.
II. The TMOB Decision
 The TMOB rejected the opposition on the following grounds:
1) The Applicant failed to meet the initial evidentiary burden with respect to sections 16(3)(a) and 16(3)(c) of the Trade-marks Act, as there was no evidence of use of the HONEY Marks as of the date of advertisement of the HONEYMANIA Mark.
2) The Applicant failed to meet the initial evidentiary burden with respect to section 2 of the Trade-marks Act, as the evidence failed to show that any of the HONEY Marks were in use or known in Canada as of the applicable date.
3) Considering the factors in section 6(5) of the Trade-marks Act, on a balance of probabilities, there is no reasonable likelihood of confusion under section 12(1)(d):
a. None of the marks possess a particularly high degree of distinctiveness because the word HONEY has common meanings.
b. The Applicant failed to file evidence to show that the HONEY Marks had acquired any reputation in Canada.
c. It is reasonable to infer, based upon the number of registered marks containing the word HONEY, that consumers would be accustomed to some extent to seeing marks incorporating the word HONEY within the context of cosmetics, personal care, and beauty related goods and services.
d. The addition of the element MANIA results in sufficient differences in appearance, sound, and suggested idea to conclude that there is no likelihood of confusion.
 The following issues are to be resolved in the present appeal:
1) What is the applicable standard of review?
2) Did the TMOB err in finding that:
a. the HONEYMANIA Mark is not confusing with the HONEY Marks?
b. the non-entitlement and non-distinctiveness grounds of opposition ought to be rejected?
A. Standard of Review
 Section 56(5) of the Trade-marks Act provides that on an appeal, under section 56(1), evidence in addition to that adduced before the Registrar may be filed and the Federal Court may exercise any discretion vested in the Registrar:
(1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
56 (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l’avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l’expiration des deux mois.
(5) Lors de l’appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi.
 In Mattel USA Inc v 3894207 Canada Inc, 2006 SCC 22 at paragraph 35 [Mattel], the Supreme Court of Canada stated that, if new evidence is admitted, this review is a reconsideration of both fact and law:
Where fresh evidence is admitted, it may, depending on its nature, put quite a different light on the record that was before the Board, and thus require the applications judge to proceed more by way of a fresh hearing on an extended record than a simple appeal. Section 56 suggests a legislative intent that there be a full reconsideration not only of legal points but also of issues of fact and mixed fact and law, including the likelihood of confusion. See generally Molson Breweries v John Labatt Ltd.
 The Federal Court of Appeal, in Molson Breweries v John Labatt Ltd Molson Breweries,  FCJ No 159 at paragraph 51, stated:
Where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.
 However, if the additional evidence would not have materially affected the TMOB’s findings of fact or exercise of discretion, the standard of review is reasonableness (Spirits International BV v BCF SENCRL, 2012 FCA 131 at para 10).
 In order to determine whether the new evidence would have materially affected the TMOB’s decision, the Court must assess the quality, not the quantity, of the evidence—considering its nature, significance, probative value, and reliability—to determine whether the evidence adds something of significance (Illico Communication Inc v Norton Rose SENCRL, 2015 FC 165 at para 26).
 The Applicant filed new evidence on appeal, consisting of an affidavit sworn by Ms. McDowell on November 20, 2016 (the “McDowell Affidavit”), which includes:
1) evidence regarding the Applicant’s operation of HONEY retail store locations in Canada, which sell clothing, footwear, headwear, jewelry, fashion accessories, watches, hair accessories, and cosmetics;
2) evidence regarding the length of time the HONEY Marks have been in use;
3) evidence of the annual sales of HONEY branded goods in Canada, and the breakdown of sales of specific goods, including the HONEY Goods; and
4) evidence of quality control for HONEY branded goods.
 The Applicant argues that this new evidence would have materially affected the TMOB’s decision because the evidence goes to the level of reputation and goodwill associated with the HONEY Marks in Canada, which would have been material to the TMOB’s assessment of confusion.
 The Respondent contends that, regarding the issue of confusion, the new evidence has no probative significance because the Applicant failed to show that the HONEY Marks were known to any extent, or had achieved any reputation, in Canada, in connection with the HONEY Goods. Further, the Respondent asserts that the new evidence does not address the relevant third party marks, which the TMOB held supported the finding that the word HONEY would be perceived as having some significance with the cosmetic/personal care/beauty industry, and the finding that the HONEY Marks do not possess a high degree of inherent distinctiveness.
 I find that the new evidence would have materially affected the decision of the TMOB. Although most of the new evidence shows the HONEY Marks associated with goods that are not the HONEY Goods, the McDowell Affidavit evinces that cosmetics/personal care/beauty products (i.e., the HONEY Goods) comprise about 1% of the Applicant’s annual sales, and attaches sales slips showing sales of cosmetic products and make-up bags.
 Moreover, the key issue underpinning all three of the TMOB’s findings is confusion. The new evidence shows that the Applicant sold a variety of goods, using the HONEY Marks at the relevant dates for registrability, entitlement, and non-distinctiveness. Despite the fact that the images of goods attached to the McDowell Affidavit relate primarily to clothing and accessories and do not show use of the HONEY Marks in relation to the HONEY Goods at the relevant dates, the new evidence does show sales slips with HONEY Marks used with HONEY Goods, albeit very few. As listed in the Applicant’s written submissions at paragraph 14, the new McDowell Affidavit includes:
a) evidence regarding the Applicant’s operations of HONEY retail store locations in Canada;
b) evidence regarding the Applicant’s control over the quality and character of the goods and services provided in association with the HONEY Marks;
c) figures for annual sales of HONEY branded goods in Canada and breakdown of sales of specific goods as percentage of total sales;
d) figures for annual promotional expenditures for HONEY branded goods and services in Canada; and
e) representative evidence of the use of the HONEY Marks, including:
i. on advertising and store signage in the HONEY retail stores in Canada;
ii. on the HONEY branded goods themselves;
iii. on sales receipts of HONEY branded goods and HONEY Goods sold in Canada;
iv. on adhesive stickers which are affixed to tissue paper or other packaging material used to wrap HONEY Goods purchased in Canada;
v. on bar code stickers attached to the HONEY Goods;
vi. promotional cards, postcards, business cards, for the promotion of the HONEY branded goods and services;
vii. on gift cards and gift certificates and on promotional materials promoting the Loyalty Card program offered in the HONEY retail stores; and
viii. on shopping bags, garment bags and boxes provided to customers purchasing the HONEY Goods.
 According to the McDowell Affidavit, in addition to being affixed to the goods in her stores, the HONEY Marks are prominently displayed on in-store and outdoor signage and the HONEY Marks are also used in advertising and promotion, for example on stickers, business cards, postcards, gift certificates and cards, shopping bags and boxes and garment bags.
 The new evidence is material to the appeal and addresses the gaps in evidence criticized by the TMOB: the Applicant failed to show any use at the applicable dates and failed to show that the HONEY Marks had acquired any reputation in Canada. This finding is consistent with a decision of Justice Anne Mactavish in a trademark opposition appeal involving the Applicant, the HONEY Marks, and essentially the same evidence as is in the McDowell Affidavit (Heather Ruth McDowell v Laverana GmbH & Co. KG, 2017 FC 327 [McDowell]).
 I find that the appropriate standard of review is correctness.
B. Relevant dates
 The material date for determining compliance with section 30 of the Trade-marks Act is the date the application was filed.
 The material date for considering confusion under section 12(1)(d) of the Trade-marks Act is the date of the Opposition Board decision. However, where additional evidence is filed that is significant and probative, such that the standard is the Court should consider the appeal as a fresh hearing, the material date is the date of the appeal judgment.
 The material date for considering distinctiveness is the date of filing the Opposition.
C. Onus on the Parties
 While the initial evidentiary burden for the opposition is on the opponent (in this case, the Applicant), the legal burden or onus that the trademark is registrable remains on the applicant (in this case, the Respondent), on a balance of probabilities (John Labatt Ltd v Molson Co,  FCJ No 533, aff’d  FCJ No 525 (FCA)).
D. Confusion Analysis
 In opposition proceedings, the trademark applicant (in this case, the Respondent) has the onus to show, on a balance of probabilities, that there is no likelihood of confusion (Mattel at para 54). Section 6 of the Trade-marks Act outlines the statutory scheme for when two trademarks are confusing with one another—section 6(5) is particularly important:
6 (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.
(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the goods, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trademarks or trade-names in appearance or sound or in the ideas suggested by them.
6 (1) Pour l’application de la présente loi, une marque de commerce ou un nom commercial crée de la confusion avec une autre marque de commerce ou un autre nom commercial si l’emploi de la marque de commerce ou du nom commercial en premier lieu mentionnés cause de la confusion avec la marque de commerce ou le nom commercial en dernier lieu mentionnés, de la manière et dans les circonstances décrites au présent article.
(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l’espèce, y compris :
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de produits, services ou entreprises;
d) la nature du commerce;
e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
 In Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at paragraph 20 [Veuve Clicquot], the Supreme Court laid out the test for confusion, as follows:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOT trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.
 The casual consumer—an average person who goes into the market, not one skilled in semantics—does not tease out and analyse each portion of a mark alone, but rather considers the mark as a whole, and as a matter of first impression (Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 83 [Masterpiece]). However, when a casual consumer looks at a mark as a whole, some aspect of the mark may be particularly striking, because that aspect is the most distinctive part of the whole trademark, and will be the dominant component which will affect the casual consumer’s overall impression (Masterpiece, above, at para 84).
 When applying the test in Veuve Clicquot, above, the factors enumerated in section 6(5) of the Trade-marks Act are to be considered. This is not an exhaustive list and different factors will be given different weight in a context-specific assessment (Mattel at para 54).
(1) Inherent distinctiveness of the trademarks or trade-names and the extent to which they have become known.
 The inherent distinctiveness of a word must be assessed in the context of the goods and services to which the trademark applies. Honey is not an ingredient found in the goods of either Party, and there is no evidence that “honey” has any inherently descriptive or suggestive connotations in the context of the HONEY Goods. The TMOB nevertheless found that the HONEY Marks were not inherently distinctive, in light of the laudatory meaning of the word “honey”, which weakened the strength of the marks.
 In the absence of any evidence that “honey” is descriptive of the HONEY Goods, or that it is an ingredient found in the goods of either Party, or evidence to support the conclusion that “honey” has an inherently laudatory connotation, I disagree with the TMOB and am satisfied that the HONEY Marks possess at least some level of distinctiveness.
 Moreover, the Respondent’s trademark application is based upon proposed use in Canada, and there is thus no evidence that the HONEYMANIA Mark has become known in this country. In contrast, although the HONEY Goods only make up approximately 1% of the Applicant’s annual sales, the HONEY Marks have been in continuous use since 2003 and the McDowell Affidavit demonstrates that the HONEY Marks would be known to a certain extent, at least in the Toronto area. This factor thus favours the Applicant.
(2) Length of time the trademarks or trade-names have been in use
 The Applicant’s evidence shows continuous use of the HONEY Marks since 2003, while the Respondent has yet to use the HONEYMANIA Mark. The Respondent argues that this evidence of use is merely a bald statement; however, they chose not to cross-examine Ms. McDowell. Absent any evidence to the contrary, I accept that the Applicant has been using the HONEY Marks in association with the HONEY Goods since 2003. This factor also favours the Applicant.
(3) Nature of the goods, services or business
 The TMOB found that there was direct and indirect overlap between the HONEY Goods and the HONEYMANIA Goods. The Respondent argues that the Applicant has furnished very limited evidence of use of the HONEY Marks in relation to the HONEY Goods, and no evidence showing actual use. Based on the new evidence provided in the McDowell Affidavit, I find that there is overlap between the Applicant’s HONEY Goods and the nature of the Respondent’s HONEYMANIA Goods. This factor also favours the Applicant.
(4) Nature of the trade
 There was no evidence tendered by the Respondent showing that the nature of the trade between the Applicant and Respondent differ. This factor also favours the Applicant as there is a potential for overlap in the channels of trade.
(5) Degree of resemblance between the trademarks or trade-names in appearance or sound or in the ideas suggested by them, and inherent distinctiveness.
 In Masterpiece, the Supreme Court opined, at paragraphs 64 to 66, when discussing the degree of resemblance between the trademarks in issue in that case:
The term “degree of resemblance” in s. 6(5)(e) of the Act implies that likelihood of confusion does not arise solely from identical trade-marks. “[D]egree of resemblance” recognizes that marks with some differences may still result in likely confusion.
The first word in both Alavida’s and Masterpiece Inc.’s trade-marks is the identical word “Masterpiece”. It has been held that for purposes of distinctiveness, the first word is important.
While the first word may, for purposes of distinctiveness, be the most important in some cases, I think that the preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique…
 The TMOB found that no one aspect of either of the Parties’ marks (HONEY or HONEYMANIA) was particularly striking or unique. The TMOB also found that the word “honey” is somewhat laudatory and/or suggestive in nature, while the coined word HONEYMANIA is comprised of two words that do not typically appear together. While the TMOB properly focussed on the Parties’ marks as a whole and recognized the principle that the first word or syllable of a trademark is often the most important or dominant element in a trademark, she did not apply that latter principle in her decision.
 The TMOB concluded there was some degree of resemblance between the Parties’ marks, given that they both contained the word HONEY as the dominant first portion of the Parties’ trademarks. However, the TMOB concluded that the Parties’ trademarks do not substantially resemble one another, because the suffix MANIA reduced the degree of resemblance in sound and appearance, and also resulted in differences in terms of ideas suggested. The Respondent, not surprisingly, adopts the TMOB’s decision on this front.
 The Respondent’s HONEYMANIA Mark has incorporated the Applicant’s HONEY word mark in its entirety, as the first portion of the mark. Given that the first portion of a mark is recognized as a dominant portion of a mark in terms of distinctiveness, and that the confusion assessment is based on the first impression of the average casual consumer, who is somewhat in a hurry and who has an imperfect recollection of the HONEY Marks, the first portion of the Parties’ respective marks (i.e. HONEY) would generally be considered to be the more striking and distinctive portion of the Parties’ marks.
 Moreover, there is no evidence to suggest that the secondary element of the HONEYMANIA Mark (i.e. MANIA) possesses any superior distinctiveness or dominance over the HONEY portion of the mark. As noted by the TMOB, the HONEYMANIA Mark suggests the idea of extreme desire or enthusiasm relating to or for HONEY.
 Since there is no one meaning of the word “honey” that is inherently attributable to the Parties’ marks, I agree with the Applicant that the core meaning of the HONEYMANIA Mark still relates to the dominant word “honey”. Accordingly, the core ideas suggested by the HONEY Marks and the HONEYMANIA Mark are similar.
 The TMOB also rejected the notion that the MANIA portion of the HONEYMANIA Mark is a modifier of the word HONEY and that HONEYMANIA would be perceived by consumers as being suggestive of the Applicant’s HONEY brand. The TMOB rejected the notion that HONEYMANIA was suggestive of HONEY, on the basis that there was insufficient evidence of the use of the HONEY Marks to draw any meaningful conclusions regarding the extent to which the HONEY Marks have become known in Canada.
 The new evidence in the McDowell Affidavit shows that the HONEY Marks, through use and promotion by the Applicant dating back as far as 2003, have acquired some degree of reputation and distinctiveness in Canada. This finding is consistent with the decision of Justice Mactavish in McDowell, above, at paragraph 37, where she held that such a reputation was established on essentially the same evidence as in filed in this case.
E. Surrounding Circumstances
 The decision of Justice Mactavish concerning state of the Register evidence deals aptly with the submissions made by the Parties in this case, based on a review of essentially the same evidence:
41 The Board also had regard to the state of the Register as one of the surrounding circumstances informing its confusion analysis. It found that the existence of 10 trade-mark registrations that contained the word "honey" owned by seven third parties supported the inference that Ms. McDowell does not have a monopoly over the use of "honey" in the personal care products sector. Ms. McDowell submits that the Board was not entitled to draw this inference without supporting evidence regarding the use of the word "honey" in the Canadian marketplace, and without evidence of a significant number of relevant third party registrations on the Register and in use.
42 State of the Register evidence is relevant insofar as one can draw inferences from it regarding the state of the marketplace. However, such inferences may only be drawn when there are a large number of relevant registrations. The theory is that the presence of a common element in marks causes purchasers to pay more attention to the other features of the marks, and to distinguish between them by those other features: Kellogg Salada Canada Inc. v. Canada (Registrar of Trade Marks),  3 F.C. 442, ,  F.C.J. No. 562.
43 In Kellogg, there were at least 47 trade mark registrations and 43 trade names, plus a further 18 trademark registrations after the filing date that contained the word "Nutri" as part of the mark. In these circumstances, the Federal Court of Appeal concluded that it could be inferred that consumers of the products in question "are accustomed to making fine distinctions between the various "Nutri" trade marks in the marketplace, by paying more attention to any small differences between marks": at para. 15.
44 However, evidence of third party trade-mark registrations with a common element is only significant where the registered marks are commonly used in the market in question: Cie Gervais Danone v. Astro Dairy Products Ltd., 160 F.T.R. 27 at para. 17,  F.C.J. No. 408 (F.C.T.D.). For an inference to be drawn that a word or element is common to the trade, there must therefore be evidence of common use in the marketplace by third parties: Cie Gervais, above at paras. 17-18; Kellogg, above at para. 14.
45 The evidence before the Board was that seven third parties had registered trade-marks that contained the word "honey" in association with personal care products. The Board correctly noted that this was not a large number of relevant registrations, but went on to find that the existence of these registrations supported the inference that Ms. McDowell did not have a monopoly over the use of the word "honey" in the personal care products sector.
46 However, as Justice de Montigny noted in Hawke & Company Outfitters LLC v. Retail Royalty Co., 2012 FC 1539 at para. 40,  F.C.J. No. 1622, the fact that a mark appears on the Register does not establish that it is currently in use, or that it was in use as at the relevant material dates. Nor does it establish that the mark is used in relation to wares or services that are similar to those of the parties, or the extent of any such use. In the absence of any such evidence, the Board thus erred in drawing an negative inference from the state of the Register.
 I also find that the state of the Register does not justify the TMOB drawing a negative inference.
F. Non-Entitlement and Non-Distinctiveness
 Based on my finding above, there is evidence of use of the HONEY Marks in association with the HONEY Goods, and HONEY branded goods and services in Canada as early as 2003. Therefore, the TMOB’s decision regarding non-entitlement and non-distinctiveness cannot stand.
 Balancing the relevant confusion factors and having regard to the surrounding circumstances, I find that the Applicant has established, on a balance of probabilities, that there is a likelihood of confusion between the HONEY Marks and the Respondent’s HONEYMANIA Mark.
 The appeal is allowed and the TMOB’s decision is set aside. The Registrar of Trade-marks is directed to refuse the registration of the HONEYMANIA Application.
 The Applicant is entitled to her costs, assessed at Column III of Tariff B.
JUDGMENT in file T-1886-16
THIS COURT’S JUDGMENT is that:
1. The appeal is allowed and the TMOB’s decision refusing the Applicant’s opposition to Application No. 1,600,908 for HONEYMANIA is set aside;
2. The Registrar of Trade-marks is directed to refuse Application No. 1,600,9058 for HONEYMANIA; and
3. Costs to the Applicant, assessed at Column III of Tariff B.
"Michael D. Manson"
SOLICITORS OF RECORD
STYLE OF CAUSE:
HEATHER RUTH MCDOWELL v THE BODY SHOP INTERNATIONAL PLC
PLACE OF HEARING:
DATE OF HEARING:
June 7, 2017
JUDGMENT AND reasons:
june 13, 2017
Kenneth D. McKay
For The Applicant
For The Respondent
SOLICITORS OF RECORD:
SIM ASHTON & MCKAY LLP
For The Applicant
BERESKIN & PARR LLO
For The Respondent