LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 200
Date of Decision: 2014-09-24
IN THE MATTER OF AN OPPOSITION by Bedessee Imports Ltd. to application No. 1,526,653 for the trade-mark TOPO CHICO in the name of Compania Topo Chico, S.A. de C.V.
Introduction
[1] Compania Topo Chico, S.A. de C.V. (the Applicant) has applied to register the trade-mark TOPO CHICO (the Mark) in association with flavoured non-alcoholic beverages, concentrates and flavoured mineral water. Bedessee Imports Ltd. (the Opponent) has opposed the application primarily on the basis that there is a reasonable likelihood of confusion between this trade-mark and the Opponent’s previous use and making known of its registered mark CHICO in association with various food wares including aerated soft drinks. The Opponent also alleges that the Mark has not been used in the United States.
[2] For the reasons that follow, I find that this application should be refused.
File Record
[3] On May 6, 2011, the Applicant filed application No. 1,526,653 for the registration of the applied-for Mark, based on use and registration of the Mark in the United States and proposed use in Canada in association with the following wares: “flavored non-alcoholic beverages, namely, flavored carbonated soft drinks; concentrates, namely syrups and powders used in the preparation of soft drinks and carbonated mineral water”.
[4] The application was advertised on April 4, 2012, and the Opponent filed a statement of opposition on June 1, 2012, based on sections 30(d), 12(1)(d), 16(2)(a), 16(3)(a) and 38(2)(d) of the Trade-marks Act, RSC 1985, c T‑13 (the Act).
[5] In support of its opposition, the Opponent filed the affidavit of Rayman Bedessee, Vice-President of the Opponent and a certified copy of registration No. 307,076 for the trade-mark CHICO. The Applicant requested to cross-examine Mr. Bedessee but later withdrew its request.
[6] As its evidence, the Applicant filed the affidavit of Lisa Saltzman and three affidavits of Jose Miguel Garcia Ruiz. In view of the Applicant’s failure to present both Ms. Saltzman and Mr. Ruiz for cross-examination, these affidavits were returned to the Applicant pursuant to section 44(5) of the Trade-mark Regulations, SOR/96-195 (the Regulations).
[7] Both parties filed a written argument. An oral hearing was held at which both parties were represented.
Onus and Material Dates
[8] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is however an initial 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 [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298; Dion Neckwear Ltd v Christian Dior, SA (2002), 20 CPR (4th) 155 (FCA)].
[9] The material dates that apply to the grounds of opposition are as follows:
• Section 38(2)(a)/Section 30 - the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];
• Section 38(2)(b)/Section 12(1)(d) - the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)];
• Section 38(2)(c)/Sections 16(2) and 16(3) – the filing date of the application; and
• Section 38(2)(d)/non-distinctiveness - the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].
Non-compliance – Section 30(d)
[10] The Opponent pleads that the application does not comply with section 30(d) in that the Mark has not been used in the United States with the applied for wares.
[11] While the legal onus is upon an applicant to show that its application complies with section 30(d) of the Act, there is an initial evidential burden on the opponent in respect of this ground [Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB)]. To the extent that the applicant has easier access to the facts, the burden of proof on the opponent in regard to the ground of opposition based on the failure to respect section 30(d) is less onerous [Tune Masters v Mr P's Mastertune Ignition Services Ltd. (1986), 10 CPR (3d) 84 (TMOB)].
[12] The only evidence put forward by the Opponent in support of this ground is Mr. Bedessee’s statement that he regularly travels to the United States and attends the Private Label Manufacturer Association conferences but he has no knowledge of the Mark being used in the United States in association with the applied for wares.
[13] I am not satisfied that the Opponent in the present case has provided sufficient evidence to support an allegation that the Applicant has not used the Mark in association with the above noted wares in the United States as of the material date. In this regard, the fact that Mr. Bedessee was not aware of the Mark being used in association with the applied for wares despite the fact that he regularly travels to the United States and regularly attends Private Label Manufacturer Association conferences does not, by itself, lead to an inference that the Applicant has not used the Mark in association with all of the applied for wares in the United States.
[14] This ground of opposition is therefore unsuccessful.
Non-entitlement-Section 16(3)(a)
[15] The second ground of opposition is based on section 16(3)(a) of the Act, with the Opponent alleging that the Mark is confusing with its mark CHICO that had been used in Canada by the Opponent prior to the Applicant’s date of filing. With respect to this ground of opposition, there is an initial burden on the Opponent to evidence use of its trade-mark prior to the Applicant's filing date (i.e. May 6, 2011). In addition, sections 16(5) and 17(1) of the Act place a burden on the Opponent to establish non-abandonment of its mark as of the date of advertisement of the Applicant's application (i.e. April 4, 2012).
[16] As discussed further below, I am satisfied that the Opponent has met its evidential burden with respect to several of its food wares. What is particularly relevant to this case, however, is whether the Opponent has met its burden in association with its aerated soft drinks. The evidence of Mr. Bedessee with respect to these wares is as follows:
• Sales figures for aerated soft drinks sold in association with the mark CHICO have been between $12,000 and $24,000 for each of the years between 2008 and 2012 (but with no breakdown by month);
• Three invoices that relate to sales of CHICO branded soft drinks by the Opponent which are dated May 11, 2009, November 13, 2010 and September 4, 2011;
• Mr. Bedessee’s statement that aerated soft drinks using the trade-mark CHICO have been temporarily out of stock since August 2012 but the Opponent expects to recommence selling those wares in January 2013; and
• Proofs for the labels used for aerated soft drinks to be sold by the Opponent in Canada in 2013 in association with the trade-mark CHICO.
[17] I am satisfied from the evidence of Mr. Bedessee as a whole that the Opponent has also met its burden under this ground with respect to aerated soft drinks. In this regard, the Opponent has shown use of its mark in association with aerated soft drinks prior to the Applicant’s filing date and has established non-abandonment of its mark in association with soft drinks as of the date of advertisement of the Applicant’s application. While Mr. Bedessee admits that the Opponent had been out of stock of the CHICO aerated soft drinks as of August 2012, this is after the date of advertisement. Further, his uncontradicted testimony is that the Opponent expects to recommence selling them in January, 2013, and he has provided a copy of a proof for a label displaying the Opponent’s mark for aerated soft drinks to be used with aerated soft drinks in 2013.
[18] As the Opponent’s evidentiary burden has been satisfied, the Applicant must therefore establish on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark.
test for confusion
[19] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time each has been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.
[20] These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [Mattel, Inc v 3894207 Canada Inc, [2006] 1 SCR 772 (SCC) at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc [2011] 2 SCR 387 at paragraph 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.
[21] 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 when he or she has no more than an imperfect recollection of the Opponent’s CHICO trade-mark and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée [2006] 1 SCR 824 at para 20]. Furthermore, this consumer is either Anglophone, Francophone or bilingual in English and French [Pierre Fabre Médicament v SmithKline Beecham Corp (2001), 11 CPR (4th) 1 at para 15 (FCA)].
section 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which each trade-mark has become known
[22] As both marks are made up of Spanish words I find that they both possess a fair degree of inherent distinctiveness as they would each be perceived by the public as words in a foreign language [Thai Agri Foods Public Co v Choy Foong Int’l Trading Co Inc, 2012 TMOB 61 at para 11].
[23] With respect to the extent to which each trade-mark has become known, there is no evidence from the Applicant regarding whether use of the Mark has commenced. On the other hand, in addition to the evidence regarding its aerated soft drinks set out above, Mr. Bedessee provides the following information about the Opponent’s other wares:
• the Opponent sells its wares in association with the CHICO mark to retailers in West Indian, Caribbean, Latin American and Oriental specialty stores as well as traditional grocery stores and supermarkets in Canada who in turn sell the wares to the general public;
• customers have been able to purchase the Opponent’s wares through its website www.bedessee.com since 1999;
• the Opponent has sold cassava sauce, peas, chow mein noodles, frozen vegetables, canned fish (sardines), curry powder, pepper sauce (crushed pepper), mustard oil (vegetable oil), beans and canned meat in association with the CHICO trade-mark since 1985;
• examples of labels and bags used since 2002 for the above noted wares have been attached as Exhibits B, D-H; and
• sales of the Opponent’s other wares range between $2,000 and $40,000 annually per product for various years between 2006 and 2012.
[24] In view of the above, I conclude that the Opponent’s marks have become known to some extent in Canada and this factor therefore favours the Opponent.
section 6(5)(b) - the length of time each trade-mark has been in use
[25] As set out above, the Opponent has been using its mark for several years while the Applicant has not yet commenced use of its Mark. This factor therefore also favours the Opponent.
sections 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade
[26] It is the Applicant’s statement of wares as defined in its application versus the Opponent’s registered wares that govern my determination of this factor [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); Miss Universe Inc v Bohna (1994), 58 CPR (3d) 381 (FCA)].
[27] The Applicant’s wares overlap with the Opponent’s aerated soft drinks.
[28] With respect to the parties’ channels of trade, Mr. Bedessee states in paragraph 2 of his affidavit that the Opponent sells its wares to retailers in West Indian, Caribbean, Latin American and Oriental specialties stores as well as traditional grocery stores and supermarkets in Canada. The invoices attached to Mr. Bedessee’s affidavit, however, show that the vast majority of the Opponent’s sales are to specialty African, Caribbean, Latin and West Indian food stores in the Greater Toronto Area. I therefore find that while it is possible that the parties’ channels of trade could overlap (since neither the Applicant’s application nor the Opponent’s registration is restricted in any particular way), it does not appear likely that they will do so.
section 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[29] Relying on the decision in Pernod Ricard v Molson Breweries (1992), 44 CPR (3d) 359 at 370 (FCTD), the Applicant submits that the first portion of a mark is the most important for the purpose of distinguishing. More recently, however, the Supreme Court in Masterpiece advised that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trade-mark that is particularly striking or unique [Masterpiece, supra, at para. 640].
[30] In the present case, I have found the Opponent’s mark CHICO to be inherently distinctive and the Applicant’s Mark incorporates this mark in its entirety. While the Mark also includes the component TOPO as its first component, I do not consider this component of the Mark to be more striking or unique than the word CHICO as they would both be viewed or considered by the average Canadian as words in a foreign language. I therefore find there to be a considerable degree of resemblance between the marks in appearance and sound.
[31] With respect to the ideas suggested by the marks, the Applicant made the following submissions:
• the Mark is in Spanish and translates as “small mole” which has no meaning in association with the wares claimed in the application;
• the term CHICO used alone in the Opponent’s mark would more likely be considered to be the noun “chico” which, according to the website http://translate.google.com translates from Spanish into English as “boy” rather than the adjective “chico” which means small;
• the product labels for the CHICO branded products attached as Exhibits A-J and L-M to the Bedessee affidavit show the word mark used in conjunction with a depiction of a seated boy in a sombrero and this evidence further supports the Applicant’s position of the idea suggested by the Opponent’s mark; and
• the average consumer in the Opponent’s specialized channels of trade is likely to know Spanish.
[32] While the Registrar can take judicial notice of dictionary definitions, I do not find that this power extends to translations of various words that are not English or French as I do not consider translations to be the type of facts that I can take judicial notice of. Further, as noted by the Opponent, there is no evidence that the average Canadian would know the English meaning of either TOPO CHICO or CHICO. While it is possible that the average consumer in the Opponent’s specialized channels of trade may know Spanish, the Opponent’s registered wares are not restricted to these channels of trade. Further, Mr. Bedessee states that the Opponent’s wares are also sold in traditional grocery stores and supermarkets.
[33] While I acknowledge that the get up or way a product is packaged may be an important factor in determining whether confusion is likely [United Artists Corp v Pink Panther Beauty Corp (1998), 80 CPR (3d) 246 (FCA)], in view that the average Canadian would not know that the Opponent’s mark suggests the idea of a boy, the fact that the Opponent uses a boy design on its packaging would not decrease a finding if a likelihood of confusion in this case. I further note that the present case is distinguishable from the decision in Pink Panther because in that case the fame attributed to the respondent’s mark stemmed not only from the word THE PINK PANTHER but also from the associate music and cartoon images. In the present case, there is no evidence that the Opponent’s mark has been made known in association with the image of a boy to the same extent.
[34] Therefore, even if the evidence had shown that the marks when translated would suggest different ideas, the average Canadian who is not familiar with Spanish would not find any difference between the ideas suggested.
Other surrounding circumstances
Use of the Opponent’s mark in association with aerated soft drinks
[35] The Applicant submits that the question of whether the Opponent’s mark is in active use for the only overlapping wares should be considered a crucial element of the Opponent’s case for all of the opposition grounds raised on the basis of confusion. For ease of reference, I will summarize again the evidence of the Opponent regarding its aerated soft drinks:
• total sales of aerated soft drinks in association with the CHICO mark have been between $12,000 and $24,000 for each of the years between 2008 and 2012;
• representative invoices relating to the sales of CHICO branded soft drinks were dated May 11, 2009, November 13, 2010 and September 4, 2011 for a total value of $153.50;
• at the date of Mr. Bedessee’s affidavit (November 27, 2012), soft drinks had been temporarily out of stock since August 2012; and
• the Opponent expected to recommence selling soft drinks in January 2013.
[36] The Applicant submits that the Opponent does not explain why the Opponent’s soft drinks were out of stock for such an extended period of time or the reasons why the Opponent only expected to resume use in January 2013. Further, the Applicant notes that there is no evidence of use or advertising of the CHICO mark with soft drinks in the 6 month period prior to the advertisement of the applicant’s application on April 4, 2012. Finally, the Applicant submits that the Opponent could have either requested to extend its deadline for filing evidence past the expected date of the resumption of use or requested leave to file additional evidence pursuant to section 44 of the Trade-mark Regulations once evidence of the resumed use became available. In view that neither of these options was exercised by the Opponent the Applicant submits that a negative inference should be drawn.
[37] I do not find that the question about whether the Opponent’s mark was still in active use after August 2012 in association with aerated soft drinks to be a relevant surrounding circumstance for this ground because the Opponent’s mark was still in active use in association with aerated soft drinks at the material date for this ground (i.e. May 6, 2011). I will re-visit this issue, however, under the section 12(1)(d) ground of opposition.
State of the register evidence
[38] The Applicant also submits that I should exercise my discretion to examine the state of the register in relation to the term CHICO. As noted by the Opponent, however, state of the register evidence cannot be considered where it is adduced through the written argument and without filing certified copies of the registrations or at least an affidavit affixing particulars of the relevant registrations [Ex Hacienda Los Camichines, SA de CV v Centenario Internacional, SA 2010 TMOB 215; Unitron Industries Ltd v Miller Electronics Ltd (1983), 78 CPR (2d) 244 (TMOB); John Labatt Ltd/John Labatt Ltee v WCW Western Canada Water Enterprises Inc (1991), 39 CPR (3d) 442 (TMOB) and Frank T Ross & Sons (1962) Ltd v Hello Cosmetics Inc (1994), 53 CPR (3d) 124 (TMOB)]. I will therefore not have regard to the state of the register evidence adduced through the Applicant’s written argument.
Conclusion
[39] The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees TOPO CHICO on the Applicant’s wares at a time when he or she has no more than an imperfect recollection of the Opponent’s CHICO trade-mark and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot].
[40] In view of my findings above, and in particular the resemblance between the marks and the overlapping wares, it seems to me that such a consumer would, as a matter of first impression, be likely to believe that the wares associated with CHICO and TOPO CHICO were manufactured, sold or performed by the same person. This ground of opposition is therefore successful.
Section 12(1)(d) and Non-Distinctiveness Grounds of Opposition
[41] The remaining grounds of opposition also turn on a determination of the issue of the likelihood of confusion between the Mark and the Opponent’s marks. The material dates for assessing the likelihood of confusion in respect of the non-distinctiveness and non-registrability grounds are, respectively, the date of opposition and the date of my decision.
[42] I am satisfied from the evidence furnished that the Opponent has met its evidential burden under the distinctiveness ground. While the material date for this ground (i.e. June 1, 2012) is later than the material date for the section 16(3)(a) ground, I do not find that the differences in material dates have any significant impact on the determination of the issue of confusion between the trade-marks of the parties. Thus, my finding above that the trade-marks are likely to be confused applies to the distinctiveness ground of opposition which also succeeds.
[43] With respect to the section 12(1)(d) ground, the main difference in the circumstances regarding the likelihood of confusion is the fact that there is no evidence of active use of the Opponent’s mark as of the later material date (i.e. the date of my decision). I acknowledge that non-use of a registered mark for a lengthy period of time prior to the material date may be considered a relevant surrounding circumstance in some cases as the fact that the a mark was no longer known to a significant degree at the relevant date may have an effect on the determination of the issue of confusion [Nefco Furniture Ltd v Brick Warehouse Corp (2003), 26 CPR (4th) 348 (FC)]. In the present case, although the Opponent was under no obligation to file evidence of its resumption of use of its mark in association with aerated soft drinks, I find it curious that the Opponent chose not to do so. However, in view of the relatively short period of non-use of the Opponent’s mark with aerated soft drinks, combined with evidence of an intention to resume use of the mark with these wares, I do not consider this factor by itself enough to decrease the finding of a likelihood of confusion in this case.
[44] In view that the rest of my findings under the section 16(3)(a) ground also apply to this ground, this ground also succeeds.
Section 16(2)(a) Ground of Opposition
[45] In view that the Opponent has succeeded on three grounds of opposition, I do not find it necessary to consider the section 16(2)(a) ground.
Disposition
[46] In view of the above and pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.
______________________________
Cindy R. Folz
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office