KABUSHIKI KAISHA MITSUKAN GROUP HONSHA Applicant v. SAKURA-NAKAYA, 2016 FC 20

Date: 20160107 Dockets: T-382-15 T-383-15 Citation: 2016 FC 20 Ottawa, Ontario, January 7, 2016 PRESENT: The Honourable Mr. Justice LeBlanc Docket: T-382-15 BETWEEN: KABUSHIKI KAISHA MITSUKAN GROUP HONSHA Applicant and SAKURA-NAKAYA ALIMENTOS LTDA. Respondent Docket: T-383-15 AND BETWEEN: KABUSHIKI KAISHA MITSUKAN GROUP HONSHA Applicant and SAKURA-NAKAYA ALIMENTOS LTDA. Respondent AMENDED JUDGMENT AND REASONS I.

Introduction [ 1 ] These are appeals of two decisions of the Registrar of the Trade-marks - Trade-marks Opposition Board - (the Registrar), dated December 30, 2014, rejecting the opposition of Kabushiki Kaisha Mitsukan Group Honsha (the Applicant) to the registration of the word mark SAKURA (application no. 1, 520, 586) and the design mark SAKURA AND DESIGN (application no. 1, 520, 821) by Sakura-Nakaya Alimentos Ltda (the Respondent). As the same facts pertain to both applications, both appeals will be dealt with together in this decision. These appeals are made pursuant to

section 56 of the Trade-marks Act , RSC 1985, c T-13 (the Act). [ 2 ] While the Respondent filed a letter informing the Court that it intended to participate in these appeals , it did not file a record nor attend the hearing. By letter dated November 20, 2015 (three days prior to the hearing), the Respondent advised that the parties were engaged in settlement negotiations and requested the Court consider such in the timing of the issuance of the Judgment in these matters.

At the end of the hearing held ex-parte on November 23, 2015, the Court, being satisfied that the Applicant was not opposed to the Respondent’s request, informed the parties that no decision would be released in this matter before December 23, 2015. [ 3 ] The Court has received no further communications from the parties regarding these negotiations and is therefore ready to render judgment in both appeals. II.

Background [ 4 ] On March 24 and 25, 2011, the Respondent filed registration applications for, respectively, the proposed use of the word mark SAKURA and of the design mark SAKURA AND DESIGN (the trade-marks) in association with sauces and condiments namely soy sauce, pepper sauce, teriyaki (oriental sauce derived from soy sauce), barbecue sauce, worcestershire sauce, sweet and sour sauce, and garlic sauce. [ 5 ] On June 19, 2012, the Applicant, a Japanese company, filed a statement of opposition against the registration of both trade- marks.

The Applicant claimed that at the date of filing the opposed applications and at any relevant date, the trade-mark SAKURA filed by the Respondent was confusing with a trade-mark, namely SAKURA, that had been used in Canada or made known in Canada by the Applicant or its distributor licensee for the North American market, Mizkan Americas Inc (Mizkan), for vinegar and/or products of the same nature as those covered by the opposed applications. Accordingly, the Applicant contended that the opposed applications should be refused pursuant to subsections 38(2) (

c) and 16(3) (

a) of the Act . The Applicant further alleged that the trade-mark SAKURA filed by the Respondent was not distinctive under

section 2 of the Act. [ 6 ] The Applicant’s opposition to the registration of the trade-marks was rejected by the Registrar on the ground that the Applicant had failed to satisfy its initial burden to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition existed. [ 7 ] In relation to the subsection 16(3) (

a) ground of opposition, the Registrar found that the Applicant failed to prove that the alleged trade-mark SAKURA was used or made known in Canada prior to March 25, 2011 (the Material date). The Registrar noted in this regard from the dozens of copies of orders and sample invoices filed by the Applicant in support of this ground of opposition, that only three were dated prior to the Material date and that all three were issued by Mizkan to companies with Canadian addresses for sales

of “4.2% Sakura Rice Vgr Label: Mitsukan”. While the Registrar found that the sample invoices supported the Applicant’s assertions ofsales of its vinegar in Canada prior to the Material date, the Registrar found that there was no evidence that the invoices were associatedwith the goods at the time of the transfer of property or possession. Therefore, the Registrar found that the only evidence that coulddemonstrate the Applicant’s use of the SAKURA trade-mark in association with the Applicant’s vinegar within the meaning of section4(1) of the Act were the labels affixed on the boxes containing the SAKURA vinegar.

Since the labels did not identify the Applicant asthe owner of the SAKURA trade-mark, the Registrar had to determine whether a licensing agreement within the meaning of subsection50(1) of the Act existed between the Applicant and Mizkan. [8] In support of its assertions that a licensing agreement did exist between the Applicant and Mizkan, the Applicant submitted adocument entitled “Confirmatory License.” In analyzing the “Confirmatory License,” the Registrar found that since the licenseagreement was only executed on December 13, 2011, with no reference to past events or prior agreements, the use of the SAKURAtrade-mark by Mizkan prior to December 13, 2011 did not accrue to the benefit of the Applicant. [9] As a result, the Registrar found that the Applicant did not satisfy its initial burden of proving that its SAKURA trade-markwas used or made known in Canada prior to the Material date pursuant to subsection 16(3)(

a) of the Act. [10] With respect to the

section 2 ground of opposition, the Registrar found that the only evidence of use that would enure to thebenefit of the Applicant was that of Mizkan between the effective date of the license agreement, December 13, 2011, and the Materialdate for this ground of opposition, which it held to be the filing date of the statement of opposition, namely June 19, 2012. [11] In view of the small volume of sales to a single customer in Canada and the relatively short period of use within the meaningof

section 50 of the Act, the Registrar was not satisfied that the alleged trade-mark, SAKURA, had become known sufficiently to negatethe distinctiveness of the Respondent’s proposed SAKURA trade-mark in Canada as of June 19, 2012. [12] The Applicant does not dispute the Registrar’s findings. However, through evidence it filed before the Court, the Applicantclaims that it has remedied the deficiencies identified by the Registrar and that this additional evidence would therefore have materiallyaffected the Registrar’s findings.

In particular, the Applicant submits that this evidence, namely, the Solemn Declaration of KojiNozawa, Mizkan’s marketing director, demonstrates that its use of the SAKURA trade-mark was carried out in accordance with section50 of the Act at all times since 1998, that is, well before the filing date of the Respondent’s registration applications on March 24 and25, 2011. [13] The Applicant contends that this Court should consider its fresh evidence since Mr. Nozawa’s Solemn Declarationdemonstrates that Mizkan is a subsidiary of the Applicant and acts as distributor of the Applicant’s products in North America.

Hefurther explains that the “Confirmatory License” signed between the Applicant and Mizkan was written to confirm an earlier verballicense agreement between the two companies, which was in force since at least as early as 1998 and up until December 13, 2011. [14] The Applicant alleges that Mr. Nozawa’s testimony demonstrates that it has satisfied its onus of establishing use of theSAKURA trade-mark in Canada through a licensee in accordance with

section 50 of the Act prior to March 25, 2011 and thereafter. As aresult, the Applicant asks this Court to refuse the Respondent’s trade-marks since the fresh evidence demonstrates that the Applicantmade prior use of the SAKURA trade-mark and that there is confusion between its SAKURA trade-mark and the Respondent’s trade-marks. [15] As indicated previously, the evidence filed by the Applicant in support of its appeals of the Registrar’s decisions has not beenchallenged by the Respondent. III. Issues and Standard of Review [16] In my view, this matter raises the following two issues: i.

Whether the fresh evidence adduced by the Applicant before this Court would have materially affected the Registrar’s finding thatMizkan’s use of the SAKURA trade-mark did not accrue to the benefit of the Applicant prior to December 11, 2012 and if in theaffirmative;ii. Whether there is confusion between the parties’ SAKURA trade-marks. [17] Generally, questions of fact or law that are within the Registrar’s expertise are reviewable against the reasonablenessstandard.

In other words, this Court will only intervene if the Registrar’s decision is clearly wrong (Producteurs Laitiers du Canada vCyprus (Commerce and Industry), 2010 FC 719, at para 28, 393 FTR 1[Producteurs Laitiers du Canada]; Restaurants La Pizzaiolle Incv Pizzaiolo Restaurants Inc, 2015 FC 240, at para 40). [18] As contemplated by subsection 56(5) of the Act, the reasonableness standard of review may give way to the correctnessstandard where additional evidence is filed with the Court. In such instances, the Court may exercise any discretion vested in theRegistrar and come to its own conclusion.

However, as explained by Justice Yves de Montigny, now a judge of the Federal Court ofAppeal, in Producteurs Laitiers du Canada, this will only occur where the fresh evidence is relevant insofar as it fills a gap or remediesdeficiencies identified by the Registrar or substantially adds to what has already been submitted.

On the other hand, where the freshevidence is repetitive and does not enhance the probative value of the evidence already adduced, the standard of reasonableness willcontinue to apply (Producteurs Laitiers du Canada, at para 28; see also Molson Breweries v John Labatt Ltd, (FCA),[2000] 3 FC 145 (CA), at para 51). [19] This Court’s case law is clear that fresh evidence can only displace the deferential standard of reasonableness where it can beshown to have materially affected the Registrar's findings of fact or the exercise of his discretion (Retail Royalty Co v Hawke & CoOutfitters LLC, 2012 FC 1539, at para 31, 424 FTR 164) [Retail Royalty Co].

In other words, evidence that “merely supplements orconfirms earlier findings, or which pertains to facts posterior to the relevant material date” is not sufficient to displace the burden.

Moreover, the test is “one of quality, not quantity” (Canadian Council of Professional Engineers v Apa - The Engineered Wood Assn, (FC), [2000] 184 FTR 55, at para 36, 7 CPR (4th) 239; Timberland Co v Wrangler Apparel Corp, 2005 FC 722, atpara 7, 272 FTR 270). [20] If fresh evidence adduced by the Applicant is found to be material, then the Court’s role is to “decide the issue on its merits”based on the evidence before it (Maison Cousin

(1980) Inc v Cousins Submarines Inc, 2006 FCA 409, at para 4 [Maison Cousin];Accessoires d'Autos Nordiques Inc v Canadian Tire Corp, 2007 FCA 367, at para 30). While the Court is usually hesitant to substitute itsown decision for that of the Registrar, where there is evidence before the Court that the Registrar did not consider “the Court willgenerally consider the case as it if were a trial de novo and may reverse the Registrar’s decision if the new evidence so requires”(Cordon Bleu International Ltd v Renaud Cointreau & Cie (FC), [2000] 10 CPR (4th) 367, at para 23, 102 ACWS(3d) 1150).

In this respect, the Court is not obliged to defer to the delegate's decision. Instead, the Court must decide the issue on thebasis of the evidence before it and the applicable legal principles (Maison Cousin, above at paragraph 7). [21] The Federal Court of Appeal recently confirmed this principle in Cathay Pacific Airways Limited v Air Miles InternationalTrading BV, 2015 FCA 253 at paragraph 15: [15] The effect of

section 56 was described as follows by the Supreme Court in Mattel U.S.A. Inc. v. 3894207 Canada Inc., 2006 SCC22, [2006] 1 S.C.R. 772 (S.C.C.), at paragraph 35: Where fresh evidence is admitted, it may, depending on its nature, put quite a different light on the record that was before the Board, andthus require the applications judge to proceed more by way of a fresh hearing on an extended record than a simple appeal (Philip MorrisInc. v. Imperial Tobacco Ltd. (No. 1) (1987), 17 C.P.R. (3d) 289 (F.C.A.)).

Section 56 suggests a legislative intent that there be a fullreconsideration not only of legal points but also of issues of fact and mixed fact and law, including the likelihood of confusion. IV. Analysis A.

Would the fresh evidence adduced by the Applicant before this Court havematerially affected the Registrar’s findings? [22] As stated above, the key issue in the present appeals is whether the Applicant’s fresh evidence demonstrates that a licensingagreement between the Applicant and Mizkan existed prior to the Material date and that the Applicant exerts direct or indirect controlover the character or quality of the products distributed by Mizkan which are sold in association with the SAKURA trade-mark. For thereasons that follow, I believe that the Applicant has met this burden. [23] The relevant portion of

section 50 of the Act reads as follows: 50.

(1) For the purposes of this Act, if anentity is licensed by or with the authority ofthe owner of a trade-mark to use the trade-mark in a country and the owner has, underthe licence, direct or indirect control of thecharacter or quality of the goods or services,then the use, advertisement or display of thetrade-mark in that country as or in a trade-mark, trade-name or otherwise by that entityhas, and is deemed always to have had, thesame effect as such a use, advertisement ordisplay of the trade-mark in that country bythe owner. 50.

(1) Pour l’application de la présente loi, siune licence d’emploi d’une marque decommerce est octroyée, pour un pays, à uneentité par le propriétaire de la marque, ouavec son autorisation, et que celui-ci, auxtermes de la licence, contrôle, directement ouindirectement, les caractéristiques ou laqualité des produits et services, l’emploi, lapublicité ou l’exposition de la marque, dansce pays, par cette entité comme marque decommerce, nom commercial — ou

partie deceux-ci — ou autrement ont le même effet etsont réputés avoir toujours eu le même effetque s’il s’agissait de ceux du propriétaire. [24] It is well-established that for an applicant to meet the requirements of section 50(1) of the Act, it must demonstrate that alicensing agreement existed between itself and the licensee prior to the relevant date and that the licensor has “direct or indirect control ofthe character of quality of the goods” (Fairweather Ltd v Registrar of Trade-marks, 2006 FC 1248, at paras 51 and 52, 301 FTR 263aff’d 2007 FCA 376; Wells' Dairy, Inc v U L Canada Inc, (FC), [2000] 7 CPR (4th) 77, at para 42, 98 ACWS (3d)189 [Wells’ Dairy]).

Moreover, evidence of a formal licensing agreement is not necessary to establish the existence of a licensingagreement under

section 50 of the Act (3082833 Nova Scotia Co v Lang Michener LLP, 2009 FC 928 [Nova Scotia]; Wells' Dairy, aboveat para 38; TGI Friday's of Minnesota Inc v Canada (Registrar of Trade Marks), [1999] 241 NR 362, sub nom Lindy v Canada(Registrar of Trade Marks), at para 9, 88 ACWS (3d) 201) As stated by Justice Kelen in Nova Scotia at paragraph 32: [32] […] A licensing agreement may be inferred from the facts [and] […] need not be in writing [Wakefield Realty Corp. v. Cushman &Wakefield Inc., 2004 FC 210, 247 F.T.R. 180 (F.C.), at para. 56].

However, the mere fact that there is some common control betweenthe applicant's companies is not sufficient to establish that the use of the trade-mark was controlled and therefore infer a licensingagreement [Cheung Kong (Holdings) Ltd. v. Living Realty Inc. (1999), (FC), [2000] 2 F.C. 501, 179 F.T.R. 161 (Fed.T.D.), at paras. 44-45].

Evidence of control has to be adduced. [25] In Empresa Cubana del Tabaco v Shapiro Cohen, 2011 FC 102, 383 FTR 164, Justice Kelen explained at paragraph 84, thethree manners in which control can be demonstrated: [84] There are three main methods by which registered owners of trade-marks can demonstrate the control required to benefit from thedeeming provision in section 50(1) of the Act:

1. they can clearly swear to the fact that they exert the requisite control: see, for example, Mantha & Associés/Associates v. CentralTransport Inc. (1995), 64 C.P.R. (3d) 354 (Fed. C.A.), at paragraph 3; 2. they can provide evidence that demonstrates that they exert the requisite control: see, for example, Eclipse International FashionsCanada Inc. c. Shapiro Cohen, 2005 FCA 64 (F.C.A.), at paragraphs 3-6; or 3. they can provide a copy of a license agreement that explicitly provides for the requisite control. [26] In my view, the affidavit of Mr.

Nozawa submitted before this Court falls under the first category listed above as Mr. Nozawaswears that: Under the verbal license concerning the trade-mark SAKURA that was in force from at least as early as 1998 until December 13, 2011and that also covered Canada […] [the Applicant] handled the quality control of all the goods produced by [Mizkan] that were sold inCanada under the trade-mark SAKURA during that period. [27] In my view and in the absence of any rebuttal evidence or arguments from the Respondent, Mr.

Nozawa’s affidavit constitutesuncontradicted evidence that the Applicant exerts control over the quality of the rice vinegars distributed by Mizkan whose boxes areaffixed with the SAKURA trade-mark. I am also of the view that given Mr.

Nozawa’s uncontradicted testimony and based on the recordbefore the Court, a verbal license agreement can be inferred between the Applicant and Mizkan and that the “Confirmatory License”agreement between them was signed to confirm the existence of their verbal license agreement. [28] Thus, the fresh evidence submitted by the Applicant fills in gaps identified by the Registrar, namely, Mr.

Nozawa’s testimonydemonstrates that Mizkan’s use of the SAKURA trade-mark accrued in favour of the Applicant since at least 1998 and would havematerially affected the Registrar’s determination that the Applicant did not satisfy its initial evidentiary burden under subsection 16(3) ofthe Act. [29] As explained by the Registrar, the Applicant has an initial evidentiary burden to demonstrate that its SAKURA trade-markwas used or made known in Canada prior to the material date and has not been abandoned at the date of advertisement of each of theapplications (Joseph Seagram & Sons Ltd v Seagram Real Estate Ltd, [1984] 3 CPR (3d) 325, at para 5, TMOB No 69; John Labatt Ltd vMolson Companies Limited, (FC), [1990] 30 CPR (3d) 293, at para 36, 36 FTR 70). [30] To demonstrate prior use, the Applicant submitted copies of documents purporting to show orders of SAKURA markedvinegar dated between 1999 and 2012 and a number of sample invoices.

While the orders indicate that sales of SAKURA markedvinegar have been made in Canada since at least December 21, 1999, in my view, the orders are not convincing evidence that theApplicant was selling SAKURA vinegar in Canada through its verbal license agreement with Mizkan since neither Mizkan nor theApplicant’s name appears on the order documents. [31] On the other hand, the Registrar made a finding of fact that the sample invoices support Mr. Nozawa’s assertions of sales ofthe Applicant’s vinegar in Canada prior to the Material date.

Of the sample invoices provided, only the first three are relevant forestablishing prior use as the other invoices post-date the Material date. These three invoices indicate that Mizkan sold 240 cases of theApplicant’s vinegar in Canada bearing the SAKURA label since July 19, 2010 which totaled $4, 172.00 in sales.

Given the evidence ofsales and the Applicant’s demonstration that the SAKURA trade-mark was affixed on boxes carrying the Applicant`s wares at the timeof the transfer of wares in accordance with section 4(1) of the Act, I am satisfied the Applicant has met its initial evidentiary burden ofdemonstrating prior use of the SAKURA trade-mark (Aerosol Fillers Inc (1980) v Plough (Canada) Ltd, (FCA),[1981] 1 FC 679, at para 11, 5 ACWS (2d) 317; Playboy Enterprises Inc v Germain, (FC), [1988] 1 FC 163, at para13, 13 FTR 178). [32] Moreover, the evidence accepted by the Registrar demonstrates that the Applicant did not abandon the SAKURA trade-markbefore the material date of June 19, 2012.

On this point, the Registrar found that between the signing of the confirmatory licensingagreement on December 13, 2011 and June 19, 2012, Mizkan sold 120 cases of SAKURA vinegar representing approximately $2,300.00in sales. [33] Since I find that the Applicant has met its initial evidentiary burden under section 16(3)(

a) of the Act and that the mark has notbeen abandoned, I must determine whether there is confusion between the Applicant’s SAKURA trade-mark and the Respondent’s trade-marks. B. Is there confusion between the parties’ SAKURA trade-marks? [34] The test for confusion is set out in subsection 6(5) of the Act, which reads as follows: 6.

(1) For the purposes of this Act, a trade-mark or trade-name is confusing with anothertrade-mark or trade-name if the use of thefirst mentioned trade-mark or trade-namewould cause confusion with the lastmentioned trade-mark or trade-name in themanner and circumstances described in thissection. 6.

(1) Pour l’application de la présente loi,une marque de commerce ou un nomcommercial crée de la confusion avec uneautre marque de commerce ou un autre nomcommercial si l’emploi de la marque decommerce ou du nom commercial en premierlieu mentionnés cause de la confusion avec lamarque de commerce ou le nom commercialen dernier lieu mentionnés, de la manière etdans les circonstances décrites au présentarticle.[…] […]

(5) In determining whether trade-marks ortrade-names are confusing, the court or theRegistrar, as the case may be, shall haveregard to all the surrounding circumstancesincluding

(5) En décidant si des marques de commerceou des noms commerciaux créent de laconfusion, le tribunal ou le registraire, selonle cas, tient compte de toutes lescirconstances de l’espèce, y compris :(

a) the inherent distinctiveness of the trade-marks or trade-names and the extent to whichthey have become known;

a) le caractère distinctif inhérent des marquesde commerce ou noms commerciaux, et lamesure dans laquelle ils sont devenus connus;(

b) the length of time the trade-marks ortrade-names have been in use;

b) la période pendant laquelle les marques decommerce ou noms commerciaux ont été enusage;(

c) the nature of the goods, services orbusiness;

c) le genre de produits, services ouentreprises;(

d) the nature of the trade; and

d) la nature du commerce;(

e) the degree of resemblance between thetrade-marks or trade-names in appearance orsound or in the ideas suggested by them.

e) le degré de ressemblance entre les marquesde commerce ou les noms commerciaux dansla présentation ou le son, ou dans les idéesqu’ils suggèrent. [35] As I explained in Pizzaiolle, above, the test for confusion is applied from the point of view of the average consumer.

As Istated in that case at paragraph 54: [54] […] in order to determine whether there is confusion between two trade-marks, one for which registration is sought and the otheralready registered or previously in use, one must ask oneself whether, as a first impression in the mind of a casual consumer somewhat ina hurry, the sight of the mark for which registration is being sought is likely to give the impression, at a time when he or she has no morethan an imperfect impression of the mark already registered and previously in use, and does not pause to give the matter any detailedconsideration or scrutiny, or to examine closely the similarities and differences between the two marks, that the wares or servicesassociated with these marks were produced, sold or provided, as the case may be, by the same person (Veuve Clicquot Ponsardin c.Boutiques Cliquot Ltée, 2006 SCC 23 , [2006] 1 S.C.R. 824 (S.C.C.) [Veuve Clicquot Ponsardin] at para 20; Masterpiece,above, at para 40; and Miss Universe Inc. v.

Bohna (1994), (FCA), [1995] 1 F.C. 614 (Fed. C.A.) [Miss Universe] atparas 10-11). [36] Generally, the Respondent has the burden of demonstrating that there is no confusion between the marks (Pizzaiolle, at para57). In this case, as the Respondent did not submit any materials before the Court, I reviewed the arguments it submitted before theRegistrar. [37] Regarding the inherent distinctiveness of the SAKURA mark, I agree with the Applicant that both parties’ marks arecomposed of the same foreign word and have approximately the same amount of inherent distinctiveness.

Therefore, this factor isneutral. [38] With respect to the length of time each mark has been in use, since the Respondent’s mark is a proposed use trade-mark, it hasnever been used in Canada. As I stated above, the evidence suggests that the Applicant’s trade-mark has been in use in Canada since atleast July 19, 2010. This factor favours the Applicant. [39] Regarding the nature of the wares, the Applicant contends that there is an overlap between the parties’ activities since theyboth sell food products belonging to the same category, namely, condiments that enhance the taste of food.

The Respondent howeverargued before the Registrar that while the wares fall within the food category, the descriptions are clearly different especially since theRespondent does not list vinegar as one of its wares.

In my view, this factor favours the Applicant since despite the fact that theRespondent does not sell vinegar, vinegars and sauces fall under the same type of food category and it is therefore possible for the waresof both parties to be sold through the same channels of trade and potentially the same retailers (Beavertails Brands Inc v 465708 OntarioInc, 2014 TMOB 90, at para 36). [40] With respect to the nature of the trade, the Supreme Court of Canada has taken the view that the Court must consider “whatthe respondent was doing, but also what it could do, considering the lack of restrictions in the registration of its trade-mark”(Masterpiece, above at para 53; see also Maison Cousin, above at para 15).

Since there are no restrictions to the Respondent’s trade-mark applications in this case, its SAKURA marked products could be sold in the same retail establishments where the Applicant’sproducts are sold. Therefore, I agree that this factor favours the Applicant. [41] In my view, the degree of resemblance is strong since both marks share the word SAKURA. As the Supreme Court stated inMasterpiece at paragraph 49: [49] [...] the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatesteffect on the confusion analysis (K. Gill and R. S.

Jolliffe, Fox on Canadian Law of Trade-marks and Unfair Competition (4th ed. (loose-leaf)), at p. 8-54; R. T. Hughes and T. P. Ashton, Hughes on Trade Marks (2nd ed. (loose-leaf)), at §74, p. 939). As Professor Vaverpoints out, if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors wouldlead 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 analyses should start(Vaver, at p. 532). [42] Given the strong degree of resemblance between the marks and since the other factors favour the Applicant save the neutralfactor, I am of the view that the test for confusion favours the Applicant. [43] Accordingly, the appeal is allowed and the Registrar’s decision is set aside. The Respondent is not entitled to register its

trade-marks bearing the applications nos. 1, 520, 586 and 1, 520, 821. [44] Since the Applicant met its initial evidentiary burden under subsection 16(3)(

a) of the Act, there is no need for me to considerthe grounds of opposition under

section 2 of the Act as the applicant need only raise one substantial issue for decision pursuant tosubsection 38(4) and 38(4) of the Act (see also Shell Canada Ltd v PT Sari Incofood Corp, (CA TMOB), 32 CPR(4th) 180, at para 4, rev’d on other grounds 2008 FCA 279). [45] Given that these appeals were brought to remedy deficiencies identified by the Registrar in the evidence submitted by theApplicant in support of its opposition to the Respondent’s registration applications, and not to overturn any error that would have beencommitted by the Registrar, the Applicant will bear it costs in these appeals.

JUDGMENT THIS COURT’S JUDGMENT is that: 1. The appeals in both Court Docket T-382-15 and T-383-15 are allowed; 2. The decisions of the Registrar of Trade-marks, dated December 30, 2014, rejecting the Applicant’s opposition againsttrade-mark applications bearing numbers 1, 520, 586 and 1, 520, 821 for the registration of the trade-marks SAKURA and SAKURA &DESIGN, respectively, are set aside; 3. The trade-mark applications numbers 1, 520, 586 and 1, 520, 821 for the registration of the trade-marks SAKURA andSAKURA & DESIGN, respectively, are refused; 4.

The Registrar of Trade-marks shall carry out the present order; and 5. No costs.

"René LeBlanc" Judge FEDERAL COURT SOLICITORS OF RECORD Dockets: T-382-15 AND T-383-15 DOCKET: T-382-15STYLE OF CAUSE: KABUSHIKI KAISHA MITSUKAN GROUP HONSHA v SAKURA-NAKAYAALIMENTOS LTDA.AND DOCKET: T-383-15STYLE OF CAUSE: KABUSHIKI KAISHA MITSUKAN GROUP HONSHA v SAKURA-NAKAYAALIMENTOS LTDA.PLACE OF HEARING: Montréal, QuebecDATE OF HEARING: November 23, 2015JUDGMENT AND REASONS: LEBLANC J.DATED: January 7, 2016AMENDED: JANUARY 13, 2016 APPEARANCES: Me Barry Gamache For The ApplicantNo appearance For The Respondent SOLICITORS OF RECORD: Robic, LLP Barristers and Solicitors Montréal, Québec For The Applicant Gowling Lafleur Henderson, LLP Barristers and Solicitors Ottawa, Ontario For The Respondent