Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2026 TMOB 16
Date of Decision: 2026-01-30
Requesting Party: 88766 Canada inc.
Registered Owner: Simply Nailogical Inc.
Introduction
[1] At the request of 88766 Canada inc. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act), on June 6, 2024, to Simply Nailogical Inc. (the Owner), the registered owner of registration No. TMA1,089,082 for the trademark TACO (the Mark).
[2] Following a voluntary amendment that deleted certain goods from the registration on November 6, 2024, the Mark is currently registered for use in association with the following goods and services (grouped by their assigned Nice class):
Goods:
3 Nail polish, nail lacquer, nail varnish; nail vinyls, nail stencils, nail stickers, nail decals; nail polish kits; nail polish base coat; nail polish top coat; nail hardener, nail strengthener; nail polish remover; cuticle oil; cuticle cream; hand cream; nail wraps; nail art decorations; nail glitter; nail polish pens; makeup, eye shadow, eyeliner, mascara, face compacts, blush, highlighter, lipstick; nail art pens.
8 Nail art tools, namely, nail art stamping plates, nail files; nail buffers; nail clippers; cuticle pushers.
9 Sunglasses; cell phone cases, fridge magnets.
14 Jewelry.
16 Posters, stickers.
18: Back packs, bags, namely, leather bags, tote bags and purses, wallets.
21: Mugs; nail art brushes; nail art sponges.
25: Clothing, namely, t-shirts, sweatshirts, long sleeve shirts, tank tops, sweat pants, pants, leggings, jackets, socks; gloves, hats, scarves, ear muffs, head bands; shoes
Services:
35: Online sale of cosmetics, clothing; online sale of accessories namely, nail care accessories, nail art tools, makeup brushes and sponges, makeup bags and pouches, cell phone cases.
41 Nail art tutorials and instructions and training in fingernail and toenail polish; providing online content, namely video tutorials, comedic videos, blog posts, news, photos, and tips on social media for the nail polish and beauty community.
[3] The notice required the Owner to show whether the Mark was used in Canada in association with each of the registered goods and services at any time within the three-year period immediately preceding the date of the notice. If the Mark was not so used, the Owner was required to provide the date when the Mark was last in use and the reasons for the absence of use since that date. In this case, the relevant period for showing use is June 6, 2021, to June 6, 2024.
[4] The relevant definitions of “use” are set out in sections 4(1) and 4(2) of the Act as follows:
4(1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
4(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[5] With respect to services, the display of a trademark in advertising suffices to meet the requirements of section 4(2) of the Act as long as the owner is able and prepared to perform the services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)].
[6] Where a registered owner does not show use of the trademark, the registration is liable to be expunged or amended pursuant to section 45(3) of the Act, unless the absence of use was due to special circumstances that excuse it.
[7] In response to the Registrar’s notice, the Owner furnished the affidavit of its vice president, Ben Mazowita, sworn on January 6, 2025. Neither party filed written representations. While both parties requested an oral hearing, only the Requesting Party’s agent attended. After a 30-minute adjournment, during which the hearing coordinator attempted to contact the Owner’s agent scheduled to appear, the hearing proceeded in that agent’s absence. As of the date of this decision, no further communication has been received from the Owner.
[8] For the reasons that follow, I conclude that the registration ought to be amended, so as to maintain only certain goods and services relating to nail polish top coats in the registration.
The Owner’s evidence
[9] In his affidavit, Mr. Mazowita describes the Owner as a company headquartered in Ottawa that (i) develops, markets, and sells a line of nail polish, accessories, and merchandise and (ii) produces and publishes online videos and content for the nail polish and beauty community.
[10] Mr. Mazowita states that the Owner sells the registered goods and provides the registered sales services through its website at www.holotaco.com. He attests that over $7,000,000 of such goods were sold and delivered to consumers in Canada during the relevant period. To show how the Mark was displayed in association with the goods and sales services, he attaches screenshots from this website as Exhibit A to his affidavit. He confirms that the screenshots, while taken outside the relevant period, are representative of how the goods and website appeared throughout the relevant period.
[11] With respect to the remaining registered services, Mr. Mazowita states that the Owner provided the following on its YouTube channel and other social media platforms and websites during the relevant period: “nail art tutorials, instruction and training videos in fingernail and toenail polish and other online content featuring the Mark, including comedic videos, blog posts, news, photos, and tips on social media for the nail polish and beauty community”. He attests that the Owner’s online videos and other content featuring the Mark received over 10,000,000 views in Canada during the relevant period.
[12] To show how the Mark was displayed on these platforms, Mr. Mazowita attaches, as Exhibit B to his affidavit, screenshots from YouTube, X, Instagram, Facebook, and TikTok, featuring predominantly various categories of videos in the field of fingernail art—including a tutorial, “how to” videos, a “Nail Tips & Tricks” section, and videos with news on the products and on nail art trends—as well as photographs of different nail polish effects and posts regarding developments in the product line. He confirms that the screenshots, while taken outside the relevant period, are representative of the manner in which the Mark was displayed in association with the services listed above throughout the relevant period.
The Owner’s website (Exhibit A)
[13] The Mark is displayed in the header and footer of the exhibited webpages as part of a logo, consisting of the word HOLO above the word TACO in simple capital letters, but with each “O” in HOLO stylized to resemble a shiny disc, reminiscent of the holographic-like side of a compact disc, as reproduced below (the HOLO TACO Logo):
[14] This logo is displayed on most of the products advertised on the website, or on their packaging. The featured products include various types of nail polish (including base coats, manicure sealant top coats, and artistic “topper” top coats), nail art tools and accessories, nail care products (including nail files, cuticle pushers, and cuticle oil), hand cream, and some promotional stationery and apparel items, including stickers. Other advertised products, including nail art brushes, baseball caps, and the “HOLO TACO GRADIENT HOODIE”, are only shown to display a pictorial representation of the HOLO TACO trademark, consisting of a circle whose left half features the shiny disc motif from the word HOLO while the right half resembles a stylized taco, as reproduced below (the Circle Logo):
[15] The website provides an “ADD TO BAG” button on the product pages for making purchases and advertises shipping to Canada, with some of the exhibited pages showing prices in Canadian dollars and some showing customer reviews that include a review from Canada. In addition, the product pages provide photographs of the product in use and directions for the product’s use and storage. Some of the pages also offer instructional videos on how to use the product, and other promotional videos.
[16] With respect to the top coat products, many of them are identified by the Mark preceded by an adjective referencing the top coat’s colour, finish, or special effect. This combination is displayed as a product name and page heading on the pages from which purchases can be made, and on or under thumbnail images on other pages. Such names include Glossy Taco™, Matte Taco™, Glow in the Dark Taco, Cracked Taco Shell (produces a crackled coating), Fallen Flake Taco (contains foil flakes in autumn hues), Red Flake Taco, Black Flake Taco, Rose Gold Flake Taco, Silver Flake Taco, Gold Flake Taco, Reflective Taco, Disco Dust Taco (contains scattered multi-coloured, reflective glitters), Flakie Holo Taco™ (contains “holographic flakes”), Linear Holo Taco™ (produces a linear rainbow effect with “tiny holographic pigments”), Scattered Holo Taco™ (contains scattered “holographic glitters”), and Everything Taco (blends multiple effects). I note a customer review from Canada dated December 15, 2024, on the page for Glow in the Dark Taco, a seasonal product for Hallowe’en.
[17] Additionally, some of the videos reference these top coat names in the title or in a caption superimposed on the thumbnail image, for example, “Watch & learn how to use Cracked Taco Shell!” (the directions for use on the product’s web page link to this video) [Exhibit A, p 21]; “Extra Disco Dust on this taco please…” (caption: “DISCO DUST TACO SPONGED ON”) [pp 63, 70]; “Glossy Taco is the best 10-free quick…” [pp 10‑11]; “Battle of the Tacos … Which fi[nish]” (caption: “Matte Taco”) [pp 13‑14]; “Glossy or Matte Taco? What’…” (caption: “Glossy Taco”) [pp 10‑14]; “Which finish are you wearing: Fallen…” (caption: “Glossy vs Matte Fallen Flake Taco”) [pp 13‑14]; and “Team Matte or Team Glossy” (caption: “Matte Taco”) [pp 13‑14]. I note that the last five of these videos are offered on the product pages that display the heading “Glossy Taco™” or “Matte Taco™”.
[18] Otherwise, the Mark appears on the website predominantly in the combination HOLO TACO. Notably, the site’s “About” page explains,
The phrase ‘holo taco’ comes from [the founder’s] nail tutorials on YouTube. … when [she] would say ‘top coat’ in her voiceovers people thought she was saying ‘taco’. Not one to let a little humour pass her by, [she] ran with it, adding a holographic ‘taco’ (or holo taco) in every video. [p 77]
The Owner’s social media pages (Exhibit B)
[19] As regards social media, the Mark is displayed in the header of the YouTube site as the phrase “HOLO TACO” in simple capitals below the Circle Logo, as reproduced below:
[20] The phrase “Holo Taco” is also displayed on the various social media sites as a user name; within the posted website addresses “www.holotaco.com” and “holota.co”; within various headings and video titles; and as the HOLO TACO Logo on depicted products and video thumbnails. The Circle Logo is also displayed on most of the social media sites, predominantly as a profile picture.
[21] Again, product names based on the Mark are featured in some of the posted video titles, such as “Cracked Taco Shell Holo Taco Crackle Nail Polish”, which appears to have been posted on YouTube in 2023 (being dated “1 year ago”, like other 2023 videos) [Exhibit B, p 84]; “Glow In The Dark Taco Tips & Tricks” (from “2 years ago”) [pp 82, 85]; and “Turn Any Nail Polish Matte with Matte Taco” (among the earliest videos from “3 years ago”) [p 86]. I also note a September 27, 2019, post with photographs on the X platform, announcing “Super Glossy Taco” and “Glossy Taco” top coats being added to the Owner’s product line [p 97].
[22] Finally, a variation of the Mark (the plural form) is featured in the title of the video “Holo Taco Declassified Tacos [001] [rejected prototypes]”, which appears to have been posted in 2023 [p 84, square brackets in original]. The video “Holo Taco Declassified Tacos [002]”, whose description invites viewers to “Shop the NEW Declassified Tacos Set [002]”, is for a set “Launched on December 7, 2024” [p 81], which is outside the relevant period. The exhibited screen captures do not indicate whether the “Declassified Tacos” sets are limited to top coats or, being the only rejected prototype offerings, include other forms of nail polish as well.
Analysis
[23] The purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for removing “deadwood” from the register [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448]. Nevertheless, it is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. A registered owner must not merely state but actually show use of the trademark in association with each of the goods and services “by describing facts from which the Registrar or the Court can form an opinion or can logically infer use within the meaning of section 4” [Guido Berlucchi & C Srl v Brouillette Kosie Prince, 2007 FC 245 at para 18]. In other words, the Registrar must be able to “rely on an inference from proven facts rather than on speculation” to satisfy every element required by the Act [Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184 at para 11; Smart & Biggar v Curb, 2009 FC 47].
[24] However, the test to be met in this respect is not a heavy one: a registered owner need only establish a prima facie case of use within the meaning of sections 4 and 45 of the Act [Diamant, supra; see also Cinnabon, Inc v Yoo-Hoo of Florida Corp (1998), 82 CPR (3d) 513 (FCA)]. The evidence need not be perfect and the Registrar may draw reasonable inferences from the facts provided [Spirits International BV v BCF SENCRL, 2012 FCA 131; Eclipse International Fashions Canada Inc v Shapiro Cohen, 2005 FCA 64].
Use in association with goods
[25] Mr. Mazowita asserts that individuals in Canada purchased over $7,000,000 of registered goods displaying the Mark through the Owner’s website during the relevant period. However, the exhibits to his affidavit show that these goods displayed either the HOLO TACO Logo or the Circle Logo, and not the Mark on its own.
[26] In considering whether a trademark has been used as registered, the question to be asked is whether it was used in such a way that it did not lose its identity and remained recognizable, in spite of the differences between the form in which it was registered and the form in which it was used [Canada (Registrar of Trade Marks) v Cie internationale pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA)].
[27] Generally, use of a word mark in combination with additional words or design features qualifies as use of the word mark if the public, as a matter of first impression, would perceive the word mark per se as being used. The issue is a question of fact, dependent upon such factors as whether the word mark stands out from the additional material, for example, by the use of different lettering or sizing, or whether the additional material would be perceived as purely descriptive matter or as a separate trademark or trade name [Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)]. The placement of a trademark symbol may be a relevant factor to consider in this respect, but is not necessarily determinative [see Rogers, Bereskin & Parr v Keds Corp (1986), 9 CPR (3d) 260 (FCTD)].
[28] Applying the foregoing principles to the present case, I am not satisfied that the public, as a matter of first impression, would perceive the Mark per se as being used when the trademark HOLO TACO is displayed.
[29] I find a dominant feature of the Mark to be that it is the short, standalone word TACO. This feature is not preserved in the phrase HOLO TACO, which, in my view, gives the impression of being a unitary expression. Especially when sounded, the words HOLO TACO work together, suggesting perhaps the fanciful idea of a hollow tortilla shell. Customers familiar with the origin of the phrase would also recognize a reference to holographic top coats. However, the coined word HOLO is not purely descriptive, and I do not find that understanding the origin of the expression leads to also viewing the TACO portion as a separate trademark. Indeed, I find a dominant feature of the phrase HOLO TACO to be the rhythmic, rhyming sound created by this particular sequence of short, similar words. In my view, this aural feature contributes significantly to the impression that the phrase is a single, indivisible trademark. Thus, the Mark loses its identity in this combination, and is no longer recognizable as a separate trademark.
[30] As regards the HOLO TACO Logo, I find that the equal word length, combined with the common lettering size and style, and generally rectangular shape overall, unifies the words HOLO and TACO into a single design, thus reinforcing the impression of a single trademark, despite the words being on separate lines and the Os in the top word being stylized. The Mark, on the bottom line, does not stand out from this combination.
[31] Accordingly, I find that the Mark does not maintain its identity or remain recognizable as a distinct trademark within either the word mark HOLO TACO or the HOLO TACO Logo.
[32] However, I reach a different conclusion with respect to some of the top coat names, formed by preceding the Mark with a reference to the top coat’s colour, finish, or special effect, most notably Glossy Taco™, Matte Taco™, Glow in the Dark Taco, Reflective Taco, Red Flake Taco, Black Flake Taco, Rose Gold Flake Taco, Silver Flake Taco, and Gold Flake Taco. I am satisfied that purchasers would, as a matter of first impression, perceive the word TACO in these product names as a trademark for the Owner’s top coat nail polish preceded by a description of that specific top coat’s visual effect. While some of the descriptions are more direct than others, I am satisfied that at least the above qualifiers, such as “Glossy”, “Matte”, “Glow in the Dark” etc., are purely descriptive. With respect to the trademark symbol (™) after certain product names, although not determinative, I find its placement to be ambiguous, such that a consumer might perceive either the entire product name or simply the Mark, or both, as trademarks being used.
[33] Furthermore, I am satisfied that display of such a product name next to the product image on the product webpage provides the requisite notice of association between the Mark and the goods at the time of transfer whenever a purchase is made from the webpage [see Fraser Milner Casgrain sencrl v LG Electronics Inc, 2014 TMOB 232, regarding notice of association on the Internet]. At the hearing, the Requesting Party argued that the trademark associated with the goods is the HOLO TACO Logo displayed on the depicted bottles. However, nothing prevents the use of two trademarks at the same time, so long as they are not combined in a way that renders the individual trademarks indistinguishable [AW Allen Ltd v Warner-Lambert Canada Inc (1985), 6 CPR (3d) 270 (FCTD)].
[34] Mr. Mazowita does not specify whether the over $7,000,000 of registered goods individuals in Canada purchased during the relevant period included any top coats—let alone ones whose product name features the Mark. The Glow in the Dark Taco customer review that appears to come from Canada is not helpful in this respect, because it does not specify when the product was purchased (indeed, a sale of this seasonal Hallowe’en item in the autumn before the review would post-date the relevant period).
[35] Nevertheless, the evidence shows that top coats are a key aspect of the Owner’s nail art product line and at least the Glossy Taco™ and Matte Taco™ versions appear to be flagship products, available since around the beginning of the relevant period. In the circumstances, I find it reasonable to infer that the over $7,000,000 of goods sold in Canada during the relevant period included at least some Glossy Taco™, Matte Taco™, or other Taco top coats, sold in the normal course of trade [for similar conclusions, see Riches, McKenzie & Herbert LLP v Park Pontiac Buick GMC Ltd, 2005 CarswellNat 4408 (TMOB); Feltmate/Delibato/Heagle LLP v In Publications Inc, 2017 TMOB 70; and Joia Calcado, SA v Vella Shoes Canada Ltd, 2020 TMOB 10].
[36] At the hearing, the Requesting Party cited several cases where, owing to a lack of specificity and supporting evidence, assertions regarding sales under a trademark fell short of demonstrating its use in association with particular registered goods. However, I find these cases to be distinguishable.
[37] In Lutron Electronics Co, Inc v Limbic Media Corporation, 2024 TMOB 32, the assertion that goods “were sold by the registered owner under that trademark” during the relevant period was unaccompanied by any factual particulars demonstrating when, where, and how the goods were sold and how the trademark was associated with them at the time of transfer. In the present case, Mr. Mazowita specifies that sales were made repeatedly (reaching over $7,000,000) during the relevant period, in Canada, through the Owner’s e-commerce website, and he provides screen captures showing how the Mark was associated with the goods at the time of sale.
[38] In Sherzady v Norton Rose Fullbright Canada LLP/sencrl, srl, 2022 FC 1712, the evidence established that a notice of association between the trademark and the goods at issue (jewellery) was given online, but not necessarily in store, and it was impossible to tell from the evidence whether any of the asserted sales of those goods were made online. In the present case, only one sales channel is asserted.
[39] In Shapiro Cohen v JMAX Global Distributors Inc, 2012 TMOB 35, the assertion of sales of certain clothing items “in 2009 and 2010” included an eight-month interval after the relevant period, and the Registrar was unable to determine which of those items had been sold before the cut-off. However, the case appears to have involved only limited sales, with a real possibility that one or more of the corresponding registered goods had only been sold outside the relevant period. Similarly, in Ever Young Dermatology v Faces Cosmetics Inc, 2022 TMOB 103, only 500 units of skin care products were stated to have been sold during the relevant period (with a retail value in the order of only $21,000), and which of the four registered goods would have been included in that sales figure was found to be unclear. In the present case, I find that the high volume of sales combined with the demonstrated importance of the Taco-branded top coats—especially Glossy Taco™ and Matte Taco™—to the Owner’s product line makes it reasonable to infer that top coats associated with the Mark would have been among the over $7,000,000 of goods sold during the relevant period.
[40] In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in Canada during the relevant period in association with the good “nail polish top coat”.
[41] It may be that some of the depicted “topper” products associated with the Mark would also correlate to other registered goods, such as “nail polish”, “nail lacquer”, “nail varnish”, or “nail glitter”. However, having distinguished these goods in the registration, the Owner must produce evidence of use in respect of each of them [see John Labatt Ltd v Rainer Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. In the absence of any correlations by Mr. Mazowita between the specific products sold in Canada during the relevant period and the other registered goods, I am not prepared to speculate in that regard—or to address whether the evidence is sufficient to permit an inference of transfers of any such additional registered goods during the relevant period.
[42] As there is no evidence before me of special circumstances excusing the absence of use of the Mark in association with the remaining registered goods, they will be deleted from the registration.
Use in association with services
[43] I find that display of the Mark within the top coat product names used as headings on the webpages from which purchases can be made constitutes use of the Mark in the performance and advertisement of the service “online sale of cosmetics”. In this respect, it has been held that the use of a trademark in association with goods can also constitute its use in association with ancillary services such as the sale of those goods [see Anderson Instrument Co v 3402983 Canada Inc 2015 TMOB 98; and LIDL Stiftung & Co KG v Thornbury Grandview Farms Ltd. (2005), 48 CPR (4th) 147 (TMOB)]. Nothing in section 4(2) of the Act restricts services to those that are independently offered to the public or that are not connected to goods [Gesco Industries Inc v Sim & McBurney (2000), 9 CPR (4th) 480 (FCA)]. For the reasons set out in the preceding section, I am satisfied that this sales service was advertised and performed during the relevant period.
[44] However, given my conclusion that use of the HOLO TACO word mark or HOLO TACO Logo does not constitute use of the Mark as registered, I am unable to find that the Mark has been used in association with any of the remaining “online sale” services.
[45] With respect to the instructional and other online content, I am satisfied that display of the Mark within the titles of YouTube videos such as “Turn Any Nail Polish Matte with Matte Taco” and “Glow In the Dark Taco Tips & Tricks” [Exhibit B, pp 85–86] and in social media announcements such as those for “Super Glossy Taco” and “Glossy Taco” on the X platform [Exhibit B, p 97] constitutes use of the Mark in Canada. In particular, I find that the examples in evidence amount to use in advertising the services “nail art tutorials and instructions and training in fingernail polish” and “providing online content, namely video tutorials, news, photos, and tips on social media for the nail polish and beauty community”. I make this determination bearing in mind that statements of services may contain “overlapping and redundant terms in the sense that the performance of one service would necessarily imply the performance of another” [Gowling Lafleur Henderson LLP v Key Publishers Co, 2010 TMOB 7 at para 15]. Considering the dates and seasonal information occasionally provided in the screenshots, I am satisfied that the TACO videos and posts in question were available in Canada during the relevant period.
[46] However, in the absence of additional information on the nature of the videos and other postings or of any correlations by Mr. Mazowita, I am unable to conclude that the available videos and posts included comedic videos, blog posts, or any content relating to toenail polish. Although certain thumbnail titles might lend themselves to comedic or blog content, I am not prepared to speculate on the actual content of the underlying videos. Furthermore, although the Owner’s products could presumably be used on toenails, the exhibited tutorial, instructional, and training content appears to be restricted to the products’ use on fingernails.
[47] As there is no evidence before me of special circumstances excusing the absence of use of the Mark in association with the remaining registered services, they will be deleted from the registration.
Disposition
[48] In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, and in compliance with the provisions of section 45 of the Act, the registration will be amended to delete (i) all of the goods except “nail polish top coat”; (ii) all of the Class 35 services except “Online sale of cosmetics”; and (iii) the following from the Class 41 services:
41 … and toenail … comedic videos, blog posts, …
[49] The amended statement of goods and services will read as follows:
Goods:
3 Nail polish top coat.
Services:
35 Online sale of cosmetics.
41 Nail art tutorials and instructions and training in fingernail […] polish; providing online content, namely video tutorials, […] news, photos, and tips on social media for the nail polish and beauty community.
Oksana Osadchuk
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2025-10-14
APPEARANCES
For the Requesting Party: Camille Aubin and Lucie Tornier
For the Registered Owner: No one appearing
AGENTS OF RECORD
For the Requesting Party: Robic Agence PI S.E.C./ Robic IP Agency LP
For the Registered Owner: Marks & Clerk