Trademark Opposition Board Decisions

Decision Information

Sobeys Capital Incorporated v CCP Productos, S.A.P.I. de C.V.

Collection	Trademark Opposition Board Decisions
Date	2025-09-23
Neutral citation	2025 TMOB 190
Member/Hearing officer	Annie Robitaille
Application number/Registration number	2144339
Trademark	VUALA

Decision Content

Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2025 TMOB 190

Date of Decision: 2025-09-23

IN THE MATTER OF AN OPPOSITION

Opponent: Sobeys Capital Incorporated

Applicant: CCP Productos, S.A.P.I. de C.V.

Application: 2144339 for VUALA

Introduction

[1] Sobeys Capital Incorporated (the Opponent) opposes registration of the trademark VUALA (the Mark), which is the subject of application No. 2144339 (the Application), standing in the name of CCP Productos, S.A.P.I. de C.V. (the Applicant), in association with the following goods:

Bread; Cookies; Frozen confectionery; Pastries.

(Collectively, the Goods)

[2] The main issue in this proceeding is whether there is a likelihood of confusion between the Mark and one or more of the Opponent’s registered trademarks VOILA, allegedly previously used in Canada in association with, inter alia, an online grocery ordering and delivery service. The full particulars of the Opponent’s pleaded registrations are set out in Schedule A to this decision.

[3] For the reasons that follow, the opposition succeeds.

The record

[4] The Application was filed on November 1, 2021 and was advertised for opposition purposes in the Trademarks Journal on October 18, 2023.

[5] On February 16, 2024, the Opponent filed a statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T‑13 (the Act).

[6] The grounds of opposition currently raised by the Opponent are based on non-registrability of the Mark pursuant to sections 38(2)(b) and 12(1)(d) of the Act; non-entitlement to registration pursuant to sections 38(2)(c) and section 16(1)(a) of the Act; non-distinctiveness of the Mark pursuant to sections 38(2)(d) and 2 of the Act; and non-entitlement to use the Mark pursuant to section 38(2)(f) of the Act [per interlocutory ruling by the Registrar on April 26, 2024, as corrected on May 1, 2024].

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

[8] Only the Opponent submitted evidence and written representations, and only the Opponent was represented at an oral hearing.

The parties’ respective burden or onus

[9] The Opponent has the initial evidential burden to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once that burden is met, the Applicant bears the legal onus of establishing, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [John Labatt Ltd v Molson Companies Ltd, 1990 CanLII 11059 (FC), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155].

Overview of the evidence

[10] In support of the opposition, the Opponent filed three affidavits, which are briefly summarized below. The affiants were not cross-examined on their affidavits.

The affidavit of Emily Demeo sworn August 23, 2024 (the Demeo Affidavit)

[11] Emily Demeo is the Director of E-commerce, Marketing & Digital Experience, for the Opponent. The Demeo Affidavit provides background information on the history and business of the Opponent, including with respect to the adoption, use and promotion of the VOILA online grocery ordering and delivery service in Canada.

The affidavit of Sharon Chernyak sworn August 28, 2024 (the Chernyak Affidavit)

[12] Ms. Chernyak is an articling student employed by the Opponent’s trademark agents. The Chernyak Affidavit provides dictionary definitions for the term VUALA, captures of webpages (in Spanish) from the Applicant’s website (www.vuala.mx), copies of videos (in Spanish) found on the Applicant’s social media pages, and copies of videos (in Spanish, except for two in English) posted by unidentified consumers on the YouTube platform regarding the Applicant’s Goods sold in association with the Mark.

The affidavit of Angelica Sales sworn August 16, 2024 (the Sales Affidavit)

[13] Ms. Sales is a trademark searcher employed by the Opponent’s trademark agents. The Sales Affidavit provides particulars of the Opponent’s registered VOILA trademarks listed in Schedule A.

Analysis of the grounds of opposition

Non-registrability of the Mark under section 12(1)(d) of the Act

[14] The Opponent has pleaded that the Mark is not registrable because it is confusing with one or more of its VOILA registered trademarks.

[15] I have exercised the Registrar’s discretion and confirm that each of the Opponent’s pleaded registrations is in good standing as of the date of this decision, which is the material date for assessing a section 12(1)(d) ground of opposition [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)].

[16] As the Opponent has met its evidential burden, the Applicant must therefore establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Mark and either of the Opponent’s pleaded registrations.

The test for confusion

[17] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification. Thus, section 6(2) of the Act does not concern the confusion of the trademarks themselves, but of the goods or services from one source as being from another.

[18] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those factors enumerated specifically in section 6(5) of the Act. The weight to be given to each factor may vary, depending on the circumstances [see Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 for a thorough discussion of the general principles that govern the test for confusion]. These factors are considered below.

[19] In Masterpiece, supra, at paragraph 49, the Supreme Court of Canada discussed the importance of the section 6(5)(e) factor in conducting an analysis of the likelihood of confusion between the parties’ trademarks in accordance with section 6 of the Act:

[…] the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatest effect on the confusion analysis […] 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 […] As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start.

[20] Unless otherwise indicated, I will, like the Opponent in its representations, focus my analysis below on registration No. TMA1132518 for the VOILA word trademark, as it represents the best chance of success for the Opponent with respect to the issue of confusion.

The degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them

[21] In its representations, the Opponent submits that:

68. In this case, based both on common sense, and based on the available evidence showing how the Applicant itself and English speaking consumers sound the VUALA trademark, the VUALA trademark is pronounced VWAA-LAA (which phonetically very similar or identical to the French/English terms VOILA / VOILÀ).

69. This necessarily results in a high degree of overall resemblance in that the marks are phonetically very similar if not identical. Similarly, the parties’ marks are very similar in appearance as a matter of first impression and imperfect recollection. Indeed, both parties’ marks begin with the letter “V”, end with the letter “A”, and only differ in terms of the two letter vowel combination in their middle section (“UA” in the applied-for mark vs. “OI” in [the Opponent’s] VOILA Trademark). The parties’ marks are otherwise identical in composition, each comprising five letters and two syllables.

70. The parties’ marks are also highly similar by virtue of the fact that they suggest the same or similar ideas. Specifically, the applied-for mark is a Spanish word that translates to [the Opponent’s] VOILA mark, an English and French interjection meaning “behold!”: Chernyak Affidavit at para 3 and Ex 1-4.

71. Accordingly, by way of example, both parties’ trademarks could suggest a sudden appearance of the parties’ goods and services.

72. Regardless of what particular meaning might be ascribed by a given Canadian consumer, any ideas suggested by both parties’ marks considered in association with the parties’ respective grocery goods and services are ultimately the same or highly similar given that they would be sounded the same, and consumers would even if they are not familiar with the Spanish term “VUALA” perceive that term to be a derivation or fanciful spelling of the well-known English and French term VOILA / VOILÀ.

[22] I agree in part with the Opponent’s submissions.

[23] When considering the degree of resemblance between trademarks, they must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the trademarks [Veuve Clicquot, supra at para 20].

[24] In Masterpiece, supra at paragraph 64, the Court further advised that, while in some cases, the first word or syllable of a trademark will be the more important for the purpose of distinction, the preferable approach to considering resemblance “is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique”.

[25] In the present case, I consider each of the words VOILA and VUALA to be the single dominant aspect of the parties’ respective trademarks.

[26] Absent evidence or representations to the contrary, I agree that the Opponent’s trademark VOILA and the Mark are phonetically similar, if not identical, especially from the perspective of a unilingual anglophone or bilingual consumer.

[27] However, there is no evidence that the average Canadian consumer would understand that the Mark is a Spanish word that translates into English and French as “voila”/“voilà”. Thus, I find it difficult to determine with certainty how the Mark would be perceived in terms of the idea suggested by the average consumer. Would it be, like the Opponent submits, as a derivation or fanciful spelling of the English and French dictionary word “voila”/”voilà”, or, rather, as a coined term having no readily apparent meaning in relation to the Applicant’s Goods?

[28] Finally, as the parties’ trademarks both consist of a single two-syllables word beginning with the letter “V” and ending with the letters “LA”, I am prepared to accept that they arguably share some similarities in appearance.

[29] Overall, when all three aspects of resemblance are considered together, I find the parties’ trademarks are arguably slightly more similar than dissimilar.

The inherent distinctiveness of the trademarks and the extent to which they have become known

[30] In its representations, the Opponent submits that:

75. As noted above with respect to the degree of resemblance factor, the phonetically identical trademarks necessarily share a strong degree of overall resemblance in appearance and convey the same ideas, whatever that may be. Neither party’s trademark is descriptive of the associated goods or services, and so the inherent distinctiveness factor is relatively neutral in the confusion analysis.

76. In any event, as discussed below, the registered VOILA Trademarks have become much stronger trademarks overall as a result of their extensive use and promotion over time and resulting acquired distinctiveness in Canada, which must be reflected in the ambit of protection they are to be afforded: Mattel U.S.A. Inc. v 3894207 Canada Inc., 2006 SCC 22; GSW Ltd. v Great West Steel Industries Ltd. (1975), 22 CPR (2d) 154 (FCTD) at para 51; Gemological Institute of America v Gemology Headquarters International, 2014 FC 1153 at paras 126-127.

77. As a result, this is not a case where two marks of equal strength (based on inherent and acquired distinctiveness) are being compared. The VOILA Trademarks have inherent distinctiveness as well as significant acquired distinctiveness and are therefore entitled to a wide ambit of protection – particularly as it concerns phonetically identical marks in association with overlapping or at least closely related goods and services […].

[31] I am in general agreement with the Opponent.

[32] The Applicant has not established any use or reputation of the Mark in Canada. By contrast, the Demeo Affidavit establishes extensive use of the Opponent’s VOILA online grocery ordering and delivery service, as outlined below.

The Demeo Affidavit

[33] As summarized for the most part by the Opponent in its written representations, Ms. Demeo attests to the following in her affidavit:

·the Opponent is one of Canada’s largest food retailers, which operates grocery stores across Canada under a number of well-known banners including FreshCo, Sobeys, Safeway, IGA, Rachelle Béry, Marché Bonichoix, and Les Marchés Tradition [para 4];
·one of the Opponent’s most popular brands is its VOILA online grocery ordering and delivery service. The VOILA platform allows customers to shop online for a full range of grocery products, bakery products, confectionery, household goods and drug store/personal care products and have those products delivered to their homes at a contracted time [para 8];
·throughout the entire customer experience, the VOILA trademark is consistently present and prominent. The brand appears prominently at the top of the webpage on the VOILA site and remains present while customers are shopping, examining products and product ingredients, while ordering from the bakery section of the VOILA site, looking for recipes, or while shopping for seasonal confectionery. The VOILA brand appears prominently on the email confirmation a customer receives on completion of the order and on VOILA delivery trucks driven by delivery assistants wearing VOILA branded apparel who deliver VOILA branded grocery bags to the customer’s door [para 34];
·the VOILA platform has operated in association with a family of registered and unregistered VOILA trademarks (the “VOILA Trademarks”) [para 27];
·in addition to being prominently featured and presented to the Opponent’s customers at every step of their experience using the VOILA platform, the VOILA Trademarks are prominently featured on in-store signage at retail locations operated under the Opponent’s various retail banners, and through a wide range of other advertising and promotional activities including radio, television, print and digital advertising, flyers, e-mail blasts, online advertising, websites and social media accounts, and out-of-home advertising, all for the purpose of advertising, promoting, and selling the Opponent’s goods and services in association with the VOILA Trademarks [paras 35 and 39];
·the VOILA mobile app has been downloaded over 117,000 times from the Apple Store and over 99,000 times from the Google Play store since its launch in June 2020 [para 52];
·sales revenues in Canada derived from orders placed through the VOILA platform in each year since its launch have been very significant. While precise sales revenues are treated as confidential information by the Opponent, Ms. Demeo confirms that such sales revenues have totalled in the hundreds of millions of dollars in the period from the launch of the VOILA platform in 2020 to the time of her affidavit, with no particulars provided as to sales in any particular timeframe within that period [para 56];
·the number of orders placed through the VOILA website and VOILA app in Canada over the years has also been very significant. While precise figures are treated as confidential information by the Opponent, Ms. Demeo confirms that millions of orders were placed through the VOILA website and VOILA app in the period from the launch of the VOILA platform in 2020 to the time of her affidavit, representing hundreds of thousands to more than a million orders in certain of those years [para 57];
·the large number of individual orders placed through the VOILA website and VOILA app correspond to a significant number of unique customers. While precise figures are treated as confidential information by the Opponent, Ms. Demeo confirms that over half a million unique customers have created an account to use the VOILA website or VOILA app and have placed at least one order through the VOILA platform from the launch of the VOILA platform in 2020 to the time of her affidavit [para 58];
·as with sales revenues, the Opponent’s actual expenditures on Canadian advertising, promotional, and marketing efforts with respect to the VOILA platform and VOILA Trademarks are confidential. However, Ms. Demeo confirms that these marketing expenditures ranged between $8-10 million CAD annually in each year from the launch of the VOILA brand in 2020 to the time of her affidavit, representing marketing expenditures in each of the markets across Canada where the Opponent has offered the VOILA platform and related services during those times [para 59];
·while precise website traffic metrics for the VOILA website are treated as confidential information by the Opponent, Ms. Demeo confirms that in the period between 2020 – 2024 alone, Canadians internet users engaged in an excess of 53.2 million sessions with the VOILA website (unique connections between a user’s device and the VOILA website) [para 64];
·since the announcement of the VOILA platform in 2019, the Opponent’s VOILA platform has also been the subject of significant coverage in Canadian newspapers and other mainstream media in Canada [para 68]; and
·the Opponent and the VOILA platform have also received various consumer and industry awards and recognition over the years [para 69].

[34] In support of her assertions of use and advertising of the VOILA Trademarks, Ms. Demeo provides numerous representative specimens showing how the VOILA Trademarks are prominently featured on the VOILA website, VOILA app, VOILA delivery trucks, delivery personnel, and shopping bags, as well as on marketing campaign materials distributed throughout Canada. Ms. Demeo also provides a representative sampling of media coverage, including articles from The Globe and Mail, Toronto Star, and Financial Post, as well as details of some of the awards and recognition received by the Opponent and the VOILA platform.

[35] Upon review of these exhibits, I note that the vast majority of them display the following design version of the VOILA trademark (additional examples are reproduced in Schedule B attached to this decision):

[36] I have no difficulty concluding that such use amounts to use of the VOILA word trademark, which, in my view, preserves its identity and overall remains recognizable in the context of its use [according to the Registrar of Trade-marks v Compagnie Internationale pour l’informatique CII Honeywell Bull, 1985 CanLII 5537 (FCA), 4 CPR (3d) 523; and Nightingale Interloc v Prodesign (1984), 1984 CanLII 5914 (CA TMOB), 2 CPR (3d) 535 (TMOB)].

[37] To sum up, I find the overall assessment of the section 6(5)(a) factor, which is a combination of inherent and acquired distinctiveness, unequivocally favours the Opponent, at least insofar as the word trademark VOILA is concerned.

The length of time the trademarks have been in use

[38] In view of my comments above, this factor also favours the Opponent, at least insofar as the word trademark VOILA is concerned.

The nature of the goods, services or business; and the nature of the trade

[39] When considering the nature of the goods, services or business and the nature of the trade, I must compare the Applicant’s statement of goods with the statement of services in the registrations relied upon by the Opponent [Henkel Kommanditgesellschaft auf Aktien 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 type of business or trade intended by the parties’ trades rather than all possible trades that might be encompassed by the wording. Evidence of the parties’ actual trade is useful in this regard [McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (CFA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); and American Optional Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[40] In its representations, the Opponent submits that:

89. The goods with which the Applicant seeks to register the VUALA trademark are food and grocery products, namely, “Bread; Cookies; Frozen confectionery; Pastries”, all of which one would expect to be sold through channels of trade including retail grocery stores (such as those operated by [the Opponent]).

90. For its part, [the Opponent’s] VOILA Trademarks are registered for use in association with the operation of retail grocery stores and related services. More particularly, [the Opponent’s] Reg. No. TMA1132518 is registered in association with the services:

[See Schedule A]

91. With respect to [the Opponent’s] registered grocery store services, in prior cases, the Opposition Board has recognized that grocery store services on one hand, and food products and grocery products on the other hand, are “closely related if not identical”: see e.g. Tops Markets, LLC v G. D. Foods Manufacturing (India) Pvt. Ltd., 2021 TMOB 54 at para 48.

92. Even if [the Opponent’s] registered grocery store services were found to be not directly overlapping with the applied-for goods, they are nonetheless very similar and closely related in that the Applicant’s VUALA branded Goods would be expected to be sold through the type of retail grocery delivery services operated by [the Opponent] under its VOILA Trademarks.

93. In such cases, where the goods or services at issue are of such a nature that they are often used together, are in some way complementary, or there is otherwise a strong connection between them, this will favour a likelihood of confusion: Tokai of Canada Ltd. v Kingsford Products Company, LLC, 2021 FC 782 at para 87; Garmin Switzerland GmbH v VIVO MOBILE COMMUNICATION CO., LTD., 2021 TMOB 34 at para 20, aff’d 2022 FC 1410 at paras 56-58; Garmin Switzerland GmbH and Vivo Mobile Communications Ltd., 2023 TMOB 172 at para 38.

94. Indeed, s. 6(2) of the Act contemplates a likelihood of confusion even if the parties’ goods or services are not identical nor even of the same general class: Mattel U.S.A. Inc. v 3894207 Canada Inc., 2006 SCC 22 at para 65.

95. In this case the parties’ respective goods and services are therefore complementary or strongly connected to one another, all of which weighs in favour of a likelihood of confusion.

96. In terms of channels of trade, there is no restriction in the Application with respect to channels of trade for the Applicant’s goods. It is probable, given the nature of the Applicant’s goods, that they would be sold through the exact same type of retail grocery channels operated by [the Opponent] in association with its VOILA Trademarks. There is no evidence to demonstrate that the parties’ channels of trade in Canada would be different or distinct.

97. The relevant customer base is part of the “nature of the trade” analysis, taking into account where the goods or services circulate and the class of customers targeted by the parties: Loblaws Inc. v Columbia Insurance Company, 2021 FCA 29 at para 13.

98. Here, the customers likely to shop through [the Opponent’s] VOILA grocery delivery services would be the same persons likely to buy the Applicant’s various VUALA branded grocery food products.

99. Therefore it is clear that the likely channels of trade and customers of the parties’ goods and services would overlap.

[41] I am in general agreement with the Opponent.

[42] In the absence of any submissions from the Applicant, I find that these factors favour the Opponent.

Conclusion – likelihood of confusion

[43] 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 Mark in association with the Goods at a time when he or she has no more than an imperfect recollection of the Opponent’s word trademark VOILA and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot, supra at para 20].

[44] Having considered all of the relevant circumstances, I am left in a state of doubt as to whether a consumer encountering the Mark for the first time would be able to distinguish between the Mark and the Opponent’s word trademark VOILA. I find that, at best for the Applicant, the probability of confusion between the Mark and the Opponent’s word trademark VOILA is evenly balanced between a finding of confusion and no confusion. As the onus is on the Applicant to show on a balance of probabilities that there is no reasonable likelihood of confusion between the Mark and the Opponent’s word trademark VOILA, I must find against the Applicant.

[45] In reaching this conclusion, I have had regard to the extent known and length of time of use of the Opponent’s VOILA trademark and the fact that there is some connection or relationship between the parties’ respective goods/services and a potential for overlap in their channels of trade. While I acknowledge that the degree of resemblance between the parties’ trademarks is not high, I do not consider the differences existing between them sufficient to tip the balance of probabilities in favour of the Applicant.

[46] Accordingly, the section 12(1)(d) ground succeeds, at least insofar as the Opponent’s word trademark VOILA is concerned.

Remaining grounds of opposition

[47] Since the ground of opposition based on section 12(1)(d) of the Act has already succeeded, I find that it is not necessary to address the other grounds of opposition.

Disposition

[48] In view of all the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the Application pursuant to section 38(12) of the Act.

_______________________________

Annie Robitaille

Member

Trademarks Opposition Board

Canadian Intellectual Property Office