In Hello Nori Inc. v. Sushi Nozawa, LLC, 2025 TMOB 95, the Trademarks Opposition Board (the "TMOB") refused an application to register a design mark featuring the words THE ORIGINAL HAND ROLL BAR in association with restaurant services.
Notably, a registration owned by the Applicant for the word mark THE ORIGINAL HAND ROLL BAR had been expunged for non-use just before this opposition decision (in Miller Thomson LLP v Sushi Nozawa, LLC, 2024 TMOB 179).
The Opponent opposed the application on the basis that, inter alia, the applied-for trademark was clearly descriptive or deceptively misdescriptive, and that the Applicant had not used and did not propose to use the mark in Canada.
Regarding the descriptiveness ground, the TMOB found that "the words of the Mark are its dominant portion, due to the relatively simple, basic nature of its design elements... I accept that one could reasonably conclude that the words of the Mark plainly, self-evidently describe ... an "original hand roll bar" founded in 2014 in Los Angeles, either in a laudatory sense or in the sense that it is the first of its kind".
Regarding the non-use ground, the TMOB concluded that "considering the fact that over five years have passed since the application was filed ... and the fact that the Applicant's word mark has been expunged for non-use, the evidence also calls into question whether the Applicant ever genuinely proposed to use the Mark in Canada".
As a consequence of both the descriptiveness and non-use grounds being successful, the TMOB refused the application.
This decision from the TMOB is a reminder of the clearly descriptive/deceptively misdescriptive analysis in the context of composite trademarks, as well as the vulnerability of trademark applications to being opposed on non-use grounds.
A copy of the TMOB's decision is available here: https://canlii.ca/t/kbvnn
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