Trademark Opposition Board Decisions

Decision Information

Decision Content

A maple leaf on graph paper

Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2025 TMOB 110

Date of Decision: 2025-05-15

IN THE MATTER OF AN OPPOSITION

Opponent : Nasri International Inc.

Applicant: HAVE&BE CO., LTD.

Application : 2075947 for Every Sun Day

Introduction

[1] Nasri International Inc. (the Opponent) opposes the registration of the trademark Every Sun Day (the Mark), which is the subject of application No. 2,075,947 (the Application), filed by HAVE&BE CO., LTD. (the Applicant).

[2] The Mark is applied for in association with a variety of cosmetics and personal hygiene products as follows:

(1) Cosmetics; cake flavorings being essential oils; nail polish; bleaching preparations for cosmetic purposes; hair gel; all-purpose cleaning preparations; shampoos; dentifrices; make-up; perfume; eye liner; cosmetic preparations for skin care; cosmetic soaps; bath gels and bath foams for cosmetic purposes; lavender oil; false eyelashes; deodorant for personal use; lipsticks; non-medicated pet shampoo; mask pack for cosmetic purposes; tissues impregnated with cosmetic lotions; beauty masks; beauty balm creams; cosmetic serums; after sun creams.

[3] The opposition is primarily based on an allegation that the Mark is confusing with the Opponent’s registered EVERYDAY SUNDAY trademarks, previously used in Canada in association with a variety of clothing items and the online sale of clothing and clothing accessories. Particulars of the Opponent’s relied-upon trademarks are attached as Schedule A.

[4] For the reasons that follow, the opposition is rejected.

The Record

[5] The Application was filed on November 18, 2020, and was advertised for opposition purposes on October 5, 2022.

[6] On October 25, 2022, the Opponent opposed the Application by filing a statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T 13 (the Act).

[7] The grounds of opposition relate to registrability under section 12(1)(d), entitlement to register under section 16(1)(a), distinctiveness under section 2, and non-compliance with sections 38(2)(a)/30(2)(a), and 38(2)(f) of the Act.

[8] The Applicant filed a counter statement denying the grounds of opposition.

[9] In support of its opposition, the Opponent filed the affidavit of Nathalie Nasri, sworn on April 20, 2023, together with Exhibits 1 through 9.

[10] In support of its Application, the Applicant filed the affidavit of Tara Mamalis, sworn on February 16, 2024, together with Exhibits A through C.

[11] In reply, the Opponent filed the affidavit of Michele Bartolini, sworn on May 16, 2024.

[12] Only Ms. Nasri was cross-examined on her affidavit.

[13] Both parties filed written representations and attended an oral hearing on the matter.

Onus

[14] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its Application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could be reasonably concluded that the facts alleged to support each ground of opposition exist [John Labatt Ltd v Molson Companies Ltd, 1990 CanLII 11059 (FC)].

Overview of the Evidence

The Opponent’s Evidence in Chief - The Nasri Affidavit

[15] Ms. Nasri is the managing director of the Opponent. She explains that, since its incorporation in 1993, the Opponent has acted as a manufacturer, creator, importer, distributor and seller across Canada, at wholesale and more recently at retail and online, of clothing, clothing accessories and related products in association with its EVERYDAY SUNDAY trademarks [para 3].

[16] Ms. Nasri attests that the concept of EVERYDAY SUNDAY was created and adopted for use by the Opponent in 2013. She attaches copies of the Canadian trademark registrations for the Opponent’s EVERYDAY SUNDAY trademarks [Exhibits 1 and 2].

[17] Ms. Nasri explains that the Opponent’s EVERYDAY SUNDAY collection, since its inception, has focused on bathing suits, beachwear and clothing and accessories for outdoor activities. She states that the Opponent’s “EVERYDAY SUNDAY design and EVERYDAY SUNDAY wares have been continuously used and extensively promoted and marketed throughout Canada since at least 2014” in association with all of the goods specified in the Opponent’s relied upon registrations [para 15]. She explains that this extensive marketing and promotion was done through trade and fashion shows and events, magazine advertisements, annual catalogues and posters, and social media including through influencers [para 14]. In support, she provides significant advertising expenditure figures for the years 2013 until 2022 [paras 23 and 24], as well as a series of documents relating to the activities, marketing and promotion by the Opponent of its EVERYDAY SUNDAY trademarks for the years 2019 to 2023 [Exhibit 8]. The Exhibit 8 documents include screenshots from social media accounts of various influencers, pictures from tradeshows, and magazine excerpts featuring the Opponent’s goods, all advertising/promoting the Opponent’s EVERYDAY SUNDAY goods. In addition, Exhibit 8 includes advertising expenditure figures [which correlate to those in para 24], a selection of invoices, as well as significant sales figures including by product for the years 2019 to 2023.

[18] As Exhibit 5 to her affidavit, Ms. Nasri also attaches an affidavit sworn by her sister, Rayna Nasri, on March 29, 2018, that was filed on behalf of the Opponent in previous opposition proceedings against trademark application No. 1,798,853 for the trademark BEACHDAYEVERYDAY [see Nasri International Inc v Prime Capital Investments Inc, 2022 TMOB 66]. She states that this affidavit included evidence showing, up until that date, how the Opponent promoted its EVERYDAY SUNDAY clothing and accessories, which she states established a strong foundation for the marketing and promotion of the Opponent’s EVERYDAY SUNDAY program since that date.

[19] Lastly, with respect to use of the Opponent’s trademarks, Ms. Nasri attests that all of the garments sold in Canada and elsewhere in association with the Opponent’s EVERYDAY SUNDAY trademarks have had either a label affixed and/or a hangtag attached bearing the marks. In support, she attaches randomly selected copies of such labels and hangtags under Exhibit 6, randomly selected invoices under Exhibit 7, and a document showing the Opponent’s online sales on Shopify for the years 2019 to 2023 under Exhibit 9.

[20] As held in the BEACHDAYEVERYDAY decision, I find that the use of the Opponent’s EVERYDAY SUNDAY & Design trademark is also a use of its EVERYDAY SUNDAY word mark, which remains recognizable and stands out from the composite mark’s graphic features [for the principles related to the use of a trademark with additional elements and a stylistic variation, see Nightingale Interloc Ltd v Prodesign Ltd, (1984), 2 CPR (3d) 535 (TMOB)].

[21] I will note here that any relevant portions of the cross-examination of Ms. Nasri will be discussed in the analysis of the grounds of opposition as applicable.

The Applicant’s Evidence – The Mamalis Affidavit

[22] Ms. Mamalis is a trademark law clerk employed by the agent for the Applicant. She states that, on February 16, 2024, she visited the Canadian Trademarks Database and obtained the particulars of a number of trademark registrations, a list of which she provides at paragraph 4 of her affidavit with attached particulars under Exhibit B. The list includes 37 entries for trademarks, 25 of which include the term EVERYDAY, and 12 of which include the term SUNDAY, all in association with, among other goods, various clothing/apparel items, accessories, and related services.

[23] Ms. Mamalis states that, also on February 16, 2024, she visited a number of websites, and she attaches screenshots from these websites, including archived copies of some of those websites, under Exhibit C to her affidavit. The websites include articles discussing the beauty industry, including the differences between the fashion/apparel and beauty retail industries, as well as screenshots from various clothing/apparel and accessories retailers that sell beachwear and swimwear among other clothing/apparel and accessories goods.

The Opponent’s Reply Evidence – The Bartolini Affidavit

[24] Ms. Bartolini holds degrees in Commerce and Business Administration and has 28 years of experience working in marketing strategies including as a marketing executive throughout North America [paras 1 to 3]. She describes her activities related to marketing as including analyzing marketplace trends and strategies and planning and implementing these strategies to identify businesses most likely to be interested in acquiring specific products [para 4].

[25] Ms. Bartolini explains that she was requested by the agent for the Opponent to use her experience to suggest and determine the type of businesses where the goods of the Opponent are most likely to be sold and how to generate an increasing demand by these businesses for the Opponent’s goods. To do so, she attests that she physically visited many retail clothing and accessories outlets and the websites of such businesses as well as the retail outlets and websites of other businesses which she asserts are increasingly tending to expand their product lines to include clothing and accessories [para 7].

[26] Ms. Bartolini states at paragraph 8:

I have noted particularly during the last fifteen (15) years that the retail landscape in Canada is rapidly evolving and transcending traditional categorizations to encompass a diverse and broader range of products, including clothing, clothing accessories, footwear, beauty products, health care products, and other types of general merchandise across various outlets including department stores, pharmacies, giant retail box stores, variety stores and convenience stores.

[27] In specific, she identifies examples of such retailers including Walmart, Costco, The Bay, Giant Tiger, Jean Coutu, and Pharmaprix. She states that both recently and during the past five years, she has personally visited Walmart, The Bay, and Giant Tiger and confirms that these retailers sell both clothing and accessories items as well as health and beauty products [paras 13, 15 and 17]. Further to this, she states that, within the last ten days immediately prior to the swearing of her affidavit, she reviewed the websites of retailers such as Giant Tiger, Zara, and Shein and notes that these stores offer a diverse range of products including, among other goods, clothing as well as health and beauty products [paras 32 to 34].

[28] Ms. Bartolini states that “it has become obvious to me that as retailers of every type seek ways of increasing their sales”, they increasingly have expanded and diversified from clothing and accessories to health and beauty products and vice versa. She further states that, in particular, the Opponent’s retail customers are increasingly no longer selling only clothing and clothing accessories [para 22].

[29] The remainder of Ms. Bartolini’s affidavit is devoted to discussing her opinion of the elevated risk of confusion between the Mark and the Opponent’s EVERYDAY SUNDAY trademarks. In her view, this opinion is formed in light of the similarity between the parties’ trademarks and the diversification and expansion trend of Canadian retailers to offer a broader range of products including both clothing and beauty-related goods. In particular, she states “I firmly believe that the naming similarity between Everyday Sunday and Every Sun Day, despite their different offerings, but yet leveraging the same selling channels is substantial enough to cause consumer confusion…” [para 30].

Assessment of the Grounds of Opposition

Section 38(2)(a) Ground

[30] The Opponent pleads that the Application does not conform to the requirements of section 30(2) of the Act. In particular, the Opponent alleges that the Application does not contain a statement in ordinary commercial terms of the following goods:

Cosmetics, cake flavorings being essential oils, nail polish, all-purpose cleaning preparations, dentifrices, make-up, false eyelashes, mask pack for cosmetic purposes, tissues impregnated with cosmetic lotions, beauty masks, cosmetic serums.

[31] The Applicant submits that, as the Opponent has not submitted any evidence on this issue, the Opponent has not met its initial evidentiary burden. Further, the Applicant submits that the majority of the goods listed in the Application are acceptable terms per the Canadian Goods and Services Manual.

[32] I agree with the Applicant that the Opponent has failed to meet its initial evidential burden. Not only has the Opponent provided no evidence in support of this ground, but the Opponent has made no representations in support of its allegations.

[33] Accordingly, this ground of opposition is rejected.

Section 12(1)(d) Ground

[34] The Opponent pleads that the Mark is not registrable because it is confusing with the Opponent’s registered trademarks TMA897,948 (EVERYDAY SUNDAY Design), and TMA970,615 (EVERYDAY SUNDAY). The Opponent’s pleading alleges that it has been using these trademarks in Canada since at least February 2015, as well as exporting its associated goods from Canada to the United States.

[35] As of the date of this decision, the Opponent’s relied-upon registrations are in good standing. Accordingly, the Opponent has met its initial evidential burden and the Applicant now bears the onus of demonstrating that the Mark is not confusing with either of the Opponent’s EVERYDAY SUNDAY trademarks (collectively, the Opponent’s Marks).

Test for Confusion

[36] In determining whether two trademarks are confusing, all the surrounding circumstances should be considered, including those listed in section 6(5) of the Act, namely: the inherent distinctiveness of the trademarks and the extent to which they have become known; the length of time the trademarks have been in use; the nature of the goods, services or business; the nature of the trade; and the degree of resemblance between the trademarks including in appearance or sound or in the ideas suggested by them. These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [see Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at para 54; and Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23, 49 CPR (4th) 401]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 49, where the Supreme Court of Canada states that section 6(5)(e), the degree of resemblance between the trademarks, will often have the greatest effect on the confusion analysis.

[37] The test for confusion is assessed as a matter of first impression in the mind of a casual consumer somewhat in a hurry, who sees the applicant’s trademark at a time when they have no more than an imperfect recollection of the opponent’s trademark. This casual, hurried consumer does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the trademarks [Veuve Clicquot, supra, at para 20].

[38] Having previously found that the Opponent’s evidence of use and promotion of its EVERYDAY SUNDAY & Design trademark, also constitutes evidence of use and promotion of its EVERYDAY SUNDAY word mark, I will focus my analysis on the likelihood of confusion between the Mark and the EVERYDAY SUNDAY word mark (registration No. TMA970,615).

[39] As also with the decision in BEACHDAYEVERYDAY, supra, I find it appropriate, per Masterpiece, supra, to begin the analysis by examining the degree of resemblance between the Mark and the Opponent’s EVERYDAY SUNDAY word mark.

Section 6(5)(e) – the degree of resemblance

[40] When considering the degree of resemblance, the law is clear that the trademarks must be considered in their totality. The appropriate test is not a side by side comparison but an imperfect recollection in the mind of a consumer of an opponent’s goods [Veuve Clicquot, supra].

[41] The Applicant submits that when the parties’ trademarks are considered in their entireties, there are sufficient differences in terms of the degree of resemblance.

[42] In this regard, the Applicant submits that the Opponent’s trademark consists of the phrase EVERYDAY SUNDAY, which is a combination of two words with the repeated element “DAY”. The Applicant submits that this repetition creates a unique combination and alters the impression of the Opponent’s trademark in terms of appearance and sound. The Applicant submits that, in contrast, its Mark consists of three different words, without repetition and does not create the same impression as the Opponent’s trademark in terms of appearance and sound.

[43] The Applicant submits that the differences are more apparent when considering the ideas suggested in the context of the specific goods at issue. The Applicant submits that in the case of its Mark in the context of cosmetics products or after sun creams, the Mark creates the impression that its associated products would allow users to go out and enjoy a sunny day by using its products. The Applicant submits that, on the other hand, in the context of the Opponent’s goods, the Opponent’s trademark generates the impression that “everyday is a Sunday” – that is, it suggests the idea of a holiday, as opposed to referring to the sun.

[44] The Applicant submits, in view of the above, that the parties’ trademarks bear little resemblance and therefore, this factor, when considered in combination with the remaining confusion factors, would likely lead to the conclusion that there is no likelihood of confusion.

[45] The Opponent submits that the parties’ trademarks are clearly visually and phonetically similar, as well as similar in ideas conveyed. Further, the Opponent submits that the Courts have held that the first word is often most frequently focused on, and in both parties’ trademarks, the first portion is “EVERY”. The Opponent submits that, taking into account that there is a tendency to slur speech, the parties’ trademarks are phonetically very close. Additionally, the Opponent submits that the concept or the idea of SUNDAY is also rather strong in the Mark, such that taking the parties’ trademarks in their entireties and on a first impression basis, while not identical, the parties’ trademarks are strikingly close in resemblance.

[46] In considering the degree of resemblance, it is preferable to start by considering whether there is an aspect of the trademark that is particularly striking or unique [Masterpiece, supra at paragraph 64]. In this case, both parties’ trademarks are made up of ordinary dictionary words, and there is no one aspect of either trademark that is particularly striking. Rather, the most striking or unique element of both parties’ trademarks is simply the totality of the respective marks.

[47] In any event, I agree with the Opponent that there is a fair degree of resemblance between the parties’ trademarks, when considering the marks in their entireties and as a matter of first impression and imperfect recollection. Furthermore, not only are the marks as a whole similar, both marks begin with “EVERY”, and the first portion of a trademark is often the most relevant for the purposes of distinction [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD)]

[48] Accordingly, I find this factor favours the Opponent.

[49] The Opponent submits that Masterpiece, supra indicated that when there is real similarity/resemblance between trademarks, that it is this criteria that should prevail over the other section 6(5) factors that could give rise to confusion. The Opponent submits that once the Registrar determines that there is resemblance (which need not be identical), the prospect of being able to overcome or deal with registrability or distinctiveness becomes extremely difficult to overturn [per para 49 of Masterpiece]. However, the Supreme Court wrote the following at paragraph 49 of Masterpiece;

… As Professor Vaver points out, if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar (Vaver, at p. 532). As a result, it has been suggested that a consideration of resemblance is where most confusion analysis should start (ibid).

[50] Moreover, I agree with the Applicant’s submission that, while the degree of resemblance factor may be the most significant, it does not trump all other factors. Indeed, the Applicant submits that there are many cases illustrative in this regard, largely based on differences in the nature of the goods and services involved [e.g. Mattel, supra].

[51] It is with this in mind that I will now consider the remaining factors.

Section 6(5)(a) – inherent distinctiveness and extent known

[52] The overall consideration of the section 6(5)(a) factor involves a combination of inherent and acquired distinctiveness of the parties’ trademarks.

[53] The Applicant submits that the Opponent’s Marks possess little inherent distinctiveness. The Applicant refers to the BEACHDAYEVERYDAY decision, supra - a case involving the same Opponent, relying on the same trademarks as in the present case. The Applicant submits that, in that case, the Registrar found that the Opponent’s Marks consist of a combination of common dictionary words, to which their originality lies in the combination of those words.

[54] The Applicant notes that both parties’ trademarks are regular English words. However, the Applicant submits that its Mark consists of a unique combination of three English words and that there is no evidence that these words or their combination are common in cosmetics products in Nice Class 3. Thus, the Applicant submits that its Mark is slightly more distinctive or is at least as equally distinctive as the Opponent’s trademark.

[55] I consider both parties’ trademarks to share a similar level of inherent distinctiveness. Both are made up of ordinary dictionary words with no clear meaning in association with their respective goods.

[56] The Opponent made no specific submissions with respect to inherent distinctiveness, other than to say that the Registrar has acknowledged the distinctiveness of its EVERYDAY SUNDAY trademarks by virtue of their registration. Rather, the Opponent’s submissions on this factor appear to address acquired distinctiveness, as the Opponent submits the following:

The extent of the sale and promotion of the wares of NASRI marketed and promoted in Canada in association with EVERYDAY SUNDAY design and/or EVERYDAY SUNDAY is such that the average Canadian consumer, especially one that may be acting in a hurried manner is surely likely to cause confusion in the minds of Canadian consumers.

[57] I accept that Ms. Nasri’s evidence shows that the Opponent’s trademark has been used and promoted to a fair extent in association with bathing suits, beachwear, and clothing and accessories for outdoor activities. In this regard, Ms. Nasri has provided evidence of extensive advertising and promotion dating to 2013 [Nasri affidavit, paras 23, 24 and Exhibit 8], invoices and online sales figures [Exhibits 7 and 9], and representative depictions of goods as sold bearing the EVERYDAY SUNDAY trademark [Exhibit 6]. This aforementioned evidence is consistent with Ms. Nasri’s sworn statement that the Opponent’s “EVERYDAY SUNDAY collection since its inception focused on bathing suits, beachwear and clothing and accessories for outdoor activities…” [para 18, confirmed on cross-examination, pages 12-15].

[58] In view of the foregoing, I accept that the Opponent’s trademark has acquired some level of distinctiveness in Canada. Accordingly, notwithstanding the shared and lower level of inherent distinctiveness of the parties’ trademarks, as there is no evidence of use or extent known of the Mark, overall, this factor favours the Opponent.

[59] Otherwise, the Applicant’s submissions regarding the distinctiveness of the Opponent’s trademark in view of the state of the register evidence will be addressed as an additional surrounding circumstance below.

Section 6(5)(b) – the length of time of use

[60] As noted above, the Applicant has not filed any evidence of use of its Mark, whereas the evidence shows that the Opponent’s trademark has been used in Canada for several years.

[61] Accordingly, this factor favours the Opponent.

Sections 6(5)(c) and (d) – the nature of the goods, services, business, and trade

[62] It is the Applicant’s statement of goods as defined in the Application versus the Opponent’s registered goods and services that governs my determination of these factors [Henkel Kommanditgesellschaft auf Aktein v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)]. However, those statements must be read with a view to determining the probable types of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. The evidence of the parties’ actual trades is useful in this respect [McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA)].

[63] The Applicant submits that there is no overlap whatsoever between the parties’ goods or business, as the goods listed in the Application and those of the Opponent are entirely different and trade in distinct channels [citing Movenpick Holding AG v Exxon Mobil Corporation, 2011 FC 1397]. The Applicant submits that there are significant and clear differences in the respective parties’ goods – i.e., clothing versus cosmetics, which are considered to be in different industries, sold in different stores or different sections of a department store [noting as support, the archived third-party website printouts in Exhibit C of the Mamalis affidavit]. Thus, the Applicant submits that the factors related to the nature of the goods and the nature of the trade should be given significant weight in the confusion analysis.

[64] The Applicant submits that it is well established that the same or similar trademarks should be allowed to co-exist if the goods and/or services are sufficiently different to avoid confusion [per Mattel, supra]. The Applicant cites several cases in this regard [e.g., Yardley v American Girl, LLC, 2015 TMOB 218; Wiz-Art Creative Toys Inc v K Fisher Enterprises Ltd (1990), 30 CPR (3d) 413 (TMOB)].

[65] The Applicant submits that such differences are more apparent in view of the context that the Opponent is in the business of swimwear or beachwear. The Applicant submits that it is highly unlikely that relevant Canadian consumers would be misled into believing that a swimwear company is involved in offering cosmetics products. Further, the Applicant submits that, in order to establish that one type of product represents a natural extension of another product, such allegations must be proven with supporting facts. Further, the Applicant submits that the Opponent’s arguments with respect to expanding into cosmetics products are speculative.

[66] A significant portion of the Opponent’s submissions are devoted to attempting to establish a connection between the parties’ respective goods and an overlap in the parties’ channels of trade.

[67] To begin, the Opponent submits that both parties’ goods are related to fashion, and that consumers of cosmetics and health and beauty aids are purchasers who also buy clothing and accessories.

[68] At the oral hearing, the Opponent explained that the average female who is buying certain garments in order to obtain a certain fashion or style for herself is also likely to look for and buy health and beauty aids to maintain or compliment the clothing products that they are interested in buying. Moreover, the Opponent submits, the Opponent is entitled to sell its goods through exactly the same channels of the trade as the Applicant – there are no restrictions in this regard in the Applicant’s application or the Opponent’s registrations.

[69] With respect to the nature of the trade, the Opponent submits that the archived webpage printouts attached under Exhibit C to the Mamalis affidavit are hearsay and ought to be struck from the record, or at the very least must be totally ignored. I agree that the Exhibit C news articles are hearsay. Further, to the extent that the archived webpages of third-party retailers could be considered, this evidence at best only shows that there were some retailers who may not have diversified beyond clothing into the cosmetics and beauty care fields.

[70] In its efforts to further establish a link or overlap between the parties’ goods and channels of trade, the Opponent relies heavily on Ms. Bartolini’s sworn testimony; the Opponent submits that, in view of her education and experience, her affidavit should be accepted as evidence from a person with considerable expertise in the area. In this regard, the Opponent submits that Ms. Bartolini has personally noted during her decades of work in the fields of marketing and marketing trends in Canada, that many businesses have increasingly added classes of wares different to the type of wares that were the principal thrust of the business. The Opponent notes several industry examples brought forth by Ms. Bartolini of such product diversification. The Opponent submits that Ms. Bartolini has established that this diversification trend amongst Canadian retailers is more than sufficient to cause the average Canadian consumer to accept such broad product offerings as normal, including goods that fall under different Nice classes. The Opponent submits that the affidavit of Ms. Bartolini is evidence that Canadian retailers that are likely to market the type of wares specified in the subject application also market the type of wares specified in the Opponent’s registrations.

[71] The Applicant submits that Ms. Bartolini’s affidavit was not properly introduced as expert evidence, is comprised of unsupported personal opinions, and should be given little to no weight. I find it unnecessary, however, to make any findings in this regard. While I accept that Ms. Bartolini’s evidence shows that there are several Canadian retail establishments that offer diverse products (including both clothing and cosmetics), Ms. Bartolini provides no evidence of clothing and clothing accessories products branded with the same trademark as that associated with cosmetics and beauty aid products. Furthermore, there is no evidence to support that consumers are accustomed to seeing such diverse goods branded with the same trademark, or any evidence to support that consumers would perceive a natural extension of the Opponent’s clothing to include cosmetics. I would add that Ms. Nasri’s affidavit shows that the Opponent focuses on beachwear and clothing and accessories for outdoor activities, with no mention of operating in the cosmetics arena. The assertion that both parties’ products are related to fashion and style can be considered at best to be a loose affiliation, and in my view does not support findings that consumers would conclude that there is an overlap between the parties’ goods; that cosmetics are a natural extension of the Opponent’s clothing goods; or that the parties’ goods emanate from the same source.

[72] Accordingly, while it is possible for the parties’ goods to be sold through the same channels of trade, the nature of the parties’ goods and businesses are sufficiently different, such that, overall, I find these factors strongly favour the Applicant.

Additional Surrounding Circumstance – State of the Register

[73] The Applicant submits that, as the Opponent’s Marks co-exist with a number of third-party trademarks in association with identical or very similar goods in class 25, it further supports that the Opponent’s Marks possess a low level of distinctiveness. The Applicant submits that these third-party marks are particularly relevant considering that they all share either the EVERYDAY or SUNDAY element for use in association with identical or very similar goods as those listed in the Opponent’s registrations. The Applicant submits that this position is consistent with the findings in the BEACHDAYEVERYDAY case.

[74] The Applicant submits that while use of the Opponent’s trademarks may somewhat “improve” their distinctiveness, it does not remove the weak nature of the Opponent’s Marks and the third-party co-existence discussed above. As such, the Applicant submits that the distinctiveness of the Opponent’s Marks remains low.

[75] The Opponent makes a number of submissions with respect to the Applicant’s state of the register evidence. In brief, the Opponent submits that the Registrar “clearly found” the Opponent’s trademarks to be distinctive and registrable, notwithstanding previous entries in the Register. Further, the Opponent submits that any entries in the Register after the registration of the Opponent’s trademarks must have been allowed because the Registrar did not perceive that the trademarks in issue would likely be confusing with the Opponent’s trademarks. Thus, the Opponent submits that reference in the Mamalis affidavit to 37 entries in the Register is irrelevant.

[76] I do not find the Opponent’s submissions persuasive but, rather, I agree with the Applicant that this evidence has been furnished to speak to the ambit or scope of protection for the Opponent’s trademarks.

[77] State of the register evidence favours an applicant when it can be shown that the presence of a common element in trademarks would cause consumers to pay more attention to the other features of the trademarks, and to distinguish between them by those other features [McDowell v Laverana GmbH Co KG, 2017 FC 327 at para 42]. Further, I note that evidence concerning state of the register is relevant only to the extent that inferences may be drawn concerning the state of the marketplace, and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located [Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB)]. In the present case, the Mamalis affidavit provides evidence of 23 active marks on the register that incorporate the terms EVERYDAY or EVERY DAY, and 12 marks that incorporate the word SUNDAY – but no marks that include all of these elements.

[78] While there are not as many relevant marks as in the BEACHDAYEVERYDAY case, I find that the evidence is nonetheless sufficient to infer that trademarks containing the element “EVERYDAY” or “EVERY DAY” are commonly used in association with clothing items. Thus, I accept that consumers are accustomed to distinguishing among such trademarks by relying on their other components. However, in the present case – unlike the marks evidenced in the state of the register, the other component(s) of the parties’ marks (SUN DAY, SUNDAY) are very similar, such that relying on these other components to distinguish is not particularly helpful.

[79] Furthermore, the evidence is insufficient to draw any such inferences with respect to the word SUNDAY, and certainly there is no evidence of marks that contain all such elements.

[80] That being said, the evidence shows co-existence of trademarks containing the element EVERYDAY or EVERY DAY, and that such co-existence exists even insofar as identical or overlapping goods are concerned. Thus, at the very least, it can be said that this component lacks distinctiveness and it is, at best, not clear why the ambit of protection for the Opponent’s trademark would extend to encompass other goods. Accordingly, I find this to be a surrounding circumstance in favour of the Applicant.

Conclusion

[81] Having considered all of the surrounding circumstances, I find that the Applicant has satisfied its legal burden to show that there is no reasonable likelihood of confusion between the parties’ trademarks. While there is a fair degree of resemblance between the parties’ trademarks, I find that the difference in the nature of the parties’ goods is sufficient to outweigh this factor, particularly given the low degree of distinctiveness of the Opponent’s trademark, in particular in view of the state of the register evidence. In so finding, I am mindful that the Opponent has some degree of acquired distinctiveness of its trademark – but that this is with respect to beachwear and clothing goods. There is simply no clear evidence to suggest that the Opponent’s trademark has become so well known to the extent that its trademark is capable of transcending into an association with the Applicant’s goods, nor is there any evidence to suggest that the Applicant’s goods would be viewed as a natural extension to the Opponent’s line of business.

[82] Accordingly, the section 12(1)(d) ground of opposition is rejected.

Section 16(1)(a) Ground

[83] The Opponent pleads that the Applicant is not the person entitled to registration of the Application pursuant to section 16(1)(a) of the Act, because at the filing date of the Application, the Mark was confusing with the Opponent’s Marks, which had been previously used in Canada.

[84] The Opponent has met its initial evidential burden by way of showing use of its EVERYDAY SUNDAY trademarks since prior to the material date for this ground of opposition, namely, November 18, 2020.

[85] In my view, the earlier material date for this ground of opposition does not alter to any meaningful degree the confusion analysis for the section 12(1)(d) ground of opposition set out above. Accordingly, for reasons similar to those set out in the section 12(1)(d) ground of opposition, this ground is also rejected.

Section 2 Ground

[86] The Opponent pleads that the Mark is not distinctive because “it cannot serve to distinguish the wares with which it is presumably used or to be used from the wares of the Opponent sold and distributed across Canada since at least February 2015”.

[87] The material date for a section 2 ground of opposition is the date of filing of the statement of opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185].

[88] Even if I were to find that the Opponent has met is initial burden in respect of this ground, ultimately, this ground would turn on a likelihood of confusion between the Mark and the Opponent’s EVERYDAY SUNDAY trademarks. In this case, the date at which the issue of confusion is assessed does not change the results of my analysis. Accordingly, at a minimum, this ground also fails for reasons similar to those set out in the section 12(1)(d) ground of opposition.

Section 38(2)(f) Ground

[89] The Opponent pleads that at all times relevant, the Applicant was not entitled to use the Mark in Canada, since the Mark is likely to be confused by the average Canadian consumer with the Opponent’s registered trademarks EVERYDAY SUNDAY design and EVERYDAY SUNDAY.

[90] However, section 38(2)(f) of the Act addresses an applicant’s lawful entitlement to use an applied-for trademark as opposed to that applicant’s entitlement to register the trademark. As such, the Registrar has held that likely confusion with an opponent’s trademark is not a fact that can alone support a non-entitlement to use ground of opposition [see Magna International Inc v Magnacharge Battery Corporation, 2024 TMOB 202, which cites for e.g., Methanex Corporation v Suez International, société par actions simplifiée, 2022 TMOB 155 at paras 82-83; see also Catherine Sidonio and Chanel Limited, 2023 TMOB 166 and Oasis Fashions Online Limited and RH US, LLC, 2023 TMOB 124]. Indeed, the Applicant submits, and I agree, the Opponent has made no submissions nor filed any evidence with respect to this ground.

[91] Accordingly, the section 38(2)(f) ground of opposition is rejected.

Disposition

[92] Having regard to the aforementioned, pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(12) of the Act.

 

Kathryn Barnett

Member

Trademarks Opposition Board

Canadian Intellectual Property Office


Schedule A

The Opponent’s relied-upon trademarks:

 

Trademark

Registration No./ Application No.

Goods/Services

EVERYDAY SUNDAY

TMA970,615

 

1,740,390

Goods:

  • (1)Pants, jackets, shorts, board shorts, clothing tops, namely halter tops, sweat tops, tank tops and crop tops; shirts, t-shirts, camisoles, jumpers, tunics, kimonos, sweat pants, athletic tops, athletic shorts, athletic pants, swimsuits, bikinis, swim trunks, beach cover-ups, beach rompers.

Services:

  • (1)Online sales of clothing, clothing accessories namely hats, bags.

EVERYDAY SUNDAY

TMA897,948

 

 

Goods:

  • (1)Pants, jackets, shorts, board shorts, clothing tops namely halter tops, sweat tops, tank tops and crop tops; shirts, t-shirts, camisoles, jumpers, tunics, kimonos, sweat pants, athletic tops, athletic shorts, athletic pants, swimsuits, bikinis, swim trunks, beach cover-ups, beach rompers.

 


Appearances and Agents of Record

HEARING DATE: 2025-03-03

APPEARANCES

For the Opponent : Harold W. Ashenmil

For the Applicant: No one appearing

AGENTS OF RECORD

For the Opponent : Harold W. Ashenmil

For the Applicant: Borden Ladner Gervais LLP

 

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