LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 209
Date of Decision: 2012-11-01
IN THE MATTER OF AN OPPOSITION by Canada Bread Company, Limited to application No. 1,433,286 for the trade-mark SWEET OBSESSION in the name of Sorbee International LLC.
File Record
[1] On April 2, 2009, SI Acquisition LLC, who subsequently changed its corporate name to Sorbee International LLC (the Applicant), filed application No. 1,433,286 to register the trade-mark SWEET OBSESSION (the Mark) based on proposed use in association with chocolate bars (the Wares). The Applicant claims a priority date of November 3, 2008 based on an application filed in the United States of America on that date under serial No. 77/606,270.
[2] The application was advertised on January 13, 2010 in the Trade-marks Journal for opposition purposes.
[3] Canada Bread Company, Limited (the Opponent) filed a statement of opposition on April 12, 2010 which was forwarded by the Registrar on April 29, 2010 to the Applicant.
[4] The Applicant denied all grounds of opposition in a counter statement filed on June 15, 2010.
[5] The Opponent filed as its evidence the affidavits of Jean-Pierre Galardo, Natasha Gangai, Boris Panov and Estelle M. Barette while the Applicant chose not to file any evidence.
[6] Only the Opponent filed a written argument and attended the hearing.
The Statement of Opposition
[7] The grounds of opposition raised by the Opponent are:
1. The Application does not comply with the requirements of section 30(e) of the Trade-marks Act RSC 1985, c T-13, (the Act) in that the Applicant, by itself or through a licensee, or by itself and through a licensee, never intended to use the Mark in Canada;
2. The Application does not comply with the requirements of section 30(i) of the Act in that the Applicant could not have been satisfied of its entitlement to use the Mark in Canada in association with the Wares having regard to the Opponent’s Trade-marks as defined herein below ;
3. The Mark is not registrable in view of section 12(1)(d) of the Act since the Mark is confusing with the Opponent’s registered trade-marks: SWEET MOMENT, certificate of registration TMA651,460 and OBSESSION certificate of registration TMA573,900 (collectively referred to as the Opponent’s Trade-marks);
4. The Applicant is not the person entitled to the registration of the Mark pursuant to section 16(3)(a) of the Act in that at the filing date of the application the Mark was confusing with the Opponent’s Trade-marks which had been previously used by the Opponent in Canada;
5. Pursuant to section 38(2)(d) of the Act, the Mark is not distinctive within the meaning of section 2 in that it does not distinguish nor is it adapted to distinguish the Wares of the Applicant from the wares of the Opponent because of the previous continuous use and advertisement in Canada by the Opponent of the Opponent’s Trade-marks.
Legal Onus and Burden of Proof in Trade-marks Opposition Proceedings
[8] The legal onus is upon the Applicant to show that the application complies with the provisions of the Act, but there is however an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once this initial burden is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E Seagram & Sons Ltd et al v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) and Wrangler Apparel Corp v The Timberland Company [2005] FC 722].
Grounds of Opposition Summarily Dismissed
[9] The Opponent has not filed any evidence to support the section 30(e) ground of opposition. It is therefore dismissed for failure by the Opponent to meet its initial burden.
[10] Section 30(i) of the Act only requires the Applicant to declare itself satisfied that it is entitled to the registration of the Mark. Such a statement is included in the application. One may rely on section 30(i) in specific cases such as where fraud by the Applicant is alleged [see Sapodilla Co Ltd v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB)]. There is no allegation of that nature in the statement of opposition or any evidence in the record to that effect.
[11] Under these circumstances, the section 30(i) ground of opposition is dismissed.
Registrability of the Mark under section 12(1)(d) of the Act
[12] Ms. Barette has been a trade-mark paralegal with the Opponent’s agent firm. She filed a certified copy of the following registrations:
TMA651,460 for SWEET MOMENT in association with bakery products including amongst other cakes, pastries and cookies;
TMA573,900 for OBSESSION in association with biscuits and cookies;
and for application No. 1,456,602 for the trade-mark CHEVALIER OBSESSION.
[13] I checked the register and both registrations are extant. Therefore the Opponent has met its initial burden with respect to this ground of opposition. Only the registrations listed above are identified in the statement of opposition and thus can form the basis of this ground of opposition. There is no reference to application No. 1,456,602 for the trade-mark CHEVALIER OBSESSION in the statement of opposition.
[14] The relevant date for this ground of opposition is the date of the Registrar’s decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 at 424 (FCA)].
[15] The test to determine if there is a likelihood of confusion between two trade-marks is outlined in section 6(2) of the Act. Some of the surrounding circumstances to be taken into consideration are described in section 6(5) of the Act: the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; the length of time the trade-marks or trade-names have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks or trade-names in appearance, or sound or any ideas suggested by them. Those criteria are not exhaustive and it is not necessary to give each one of them equal weight [See Clorox Co v Sears Canada Inc (1992), 41 CPR (3d) 483 (FCTD) and Gainers Inc v Marchildon (1996), 66 CPR (3d) 308 (FCTD)]. I also refer to the judgments of the Supreme Court of Canada in Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al (2006), 49 CPR (4th) 401 and Mattel Inc v 3894207 Canada inc (2006), 49 CPR (4th) 321 where Mr. Justice Binnie commented on the assessment of the criteria enumerated under section 6(5) of the Act.
[16] For the purpose of this ground of opposition I will limit my analysis of the relevant factors to the Opponent’s trade-mark OBSESSION as I consider such trade-mark to be the closest to the Mark and thus represents the best case scenario for the Opponent.
Inherent distinctiveness of the trade-marks and the extent to which they have become known
[17] The Opponent’s trade-mark OBSESSION is a common English word that suggests that the consumption of the Opponent’s products may lead to an obsession. The Mark is not inherently distinctive. It is the combination of two common English words: “sweet” and “obsession”. The word “sweet” represents a character of the Wares.
[18] The distinctiveness of a trade-mark can be enhanced through its use or promotion. The Opponent has provided evidence of use of its trade-mark OBSESSION in Canada. I shall now summarize that portion of the evidence.
[19] Mr. Galardo is describing himself as the person responsible for the Opponent’s trade-marks. He has been working for the Opponent and its predecessors in title since 1991.
[20] Mr. Galardo alleges that the Opponent and its predecessors in title, which include N.V. Biscuits Delacre S.A., POM Bakery Limited and Multi-Marques Inc, have been using the Opponent’s Trade-marks since at least as early as 1995 in Canada. They have been selling in Canada in the ordinary course of business products bearing the Opponent’s Trade-marks including chocolate snack cakes.
[21] In order to illustrate the use of the Opponent’s Trade-marks he filed samples of packaging bearing the trade-mark OBSESSION. The packaging samples are for cream slices and cakes, which include chocolate cakes. He provides the annual sales figures of the products sold in association with the trade-mark OBSESSION for the years 2008, 2009 and up to September 2010, which vary from over 1.7 million dollars to close to 2.7 million dollars. He also furnishes the number of units sold on a yearly basis during the same period. He then states that the Opponent’s products bearing the Opponent’s trade-mark OBSESSION are sold in convenient stores, grocery stores, supermarkets as well as in restaurants, bars, fast food counters, cafeteria, hospitals, day care centres and schools. The Opponent’s products bearing the trade-mark OBSESSSION are promoted in various media across Canada such as on radio, national television networks, printed and virtual media.
[22] From this evidence I conclude that the Opponent’s trade-mark OBSESSION is known in Canada to some extent while I have no evidence of use of the Mark by the Applicant in Canada. This factor favours the Opponent.
The length of time the trade-marks or trade-names have been in use
[23] The evidence described above shows use of the Opponent’s trade-mark OBSESSION since at least 1995 while we have no evidence of use of the Mark by the Applicant. This factor favours the Opponent.
The nature of the wares, services, or business; the nature of the trade
[24] As appears from registration TMA573,900 it covers biscuits and cookies. The Wares are chocolate bars. Both parties’ wares can be described as snack food. In fact in order to demonstrate that the nature of the parties’ wares overlaps, the Opponent filed the affidavit of Mr. Panov. He has been employed as an audio-visual technician with the Opponent’s agent firm. On October 14, 2010 he visited the grocery retail store Maxi & Cie located in Dorval, Quebec and photographed the location and display of chocolate bars, snack bars and cakes in the grocery store. On October 15, 2010 he visited a grocery retail store Provigo located in Montreal, Quebec and did the same investigation. The pictures attached to his affidavit show that chocolate bars, biscuits and cookies are located in close proximity in those grocery stores.
[25] These factors favor the Opponent.
The degree of resemblance
[26] In its judgment in Masterpiece Inc v Alavida Lifestyles Inc et al 2011 SCC 27, the Supreme Court of Canada has clearly indicated that the most important factor amongst those listed under section 6(5) of the Act is often the degree of resemblance between the marks. The marks in issue must be looked at in their totalities and should not be dissected into their components. The test is really: would a consumer with an imperfect recollection of the Opponent’s trade-mark OBSESSION, who is in contact with the Wares offered in association with the Mark, likely think that those Wares originate from the Opponent.
[27] There is some resemblance in appearance, sound and ideas suggested by the marks in issue in view of the presence of the word “obsession” in both trade-marks. The addition of the adjective “sweet” to the Opponent’s trade-mark OBSESSION simply adds emphasis on the word “obsession”. It does not serve to distinguish the Mark from the Opponent’s trade-mark OBSESSION.
[28] This factor does also favour the Opponent.
Conclusion
[29] From this analysis of the relevant criteria, I conclude that the Applicant has failed to demonstrate, on a balance of probabilities, that the Mark would not likely cause confusion with the Opponent’s trade-mark OBSESSION when used in association with the Wares. All the relevant factors favour the Opponent.
[30] The third ground of opposition is maintained.
Entitlement under Section 16(3) of the Act
[31] The Opponent has the initial burden to prove that it has used or made known its trade-mark OBSESSION in Canada before the priority date claimed by the Applicant in its application (November 3, 2008) and that it has not abandoned such use at the advertising date of the application [see sections 16(3) and (5) of the Act]. From the Opponent’s evidence described above, I conclude that the Opponent has met its initial burden.
[32] Therefore I have to determine if on November 3, 2008 the Mark was likely to cause confusion with the Opponent’s trade-mark OBSESSION. The difference in the relevant dates associated with the registrability of the Mark under section 12(1)(d) and the entitlement to its registration under section 16(3) would not be a factor in the analysis of the same criteria listed under section 6(5) of the Act. Such analysis at an earlier date would generate the same results.
[33] Consequently the fourth ground of opposition is maintained for the same reasons outlined under the registrability ground of opposition.
Disposition
[34] Having been delegated authority by the Registrar of Trade-marks by virtue of section 63(3) of the Act, I refuse application No. 1,433,286 pursuant to section 38(8) of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office