IN THE MATTER OF AN OPPOSITION by Kellogg Canada Inc. to application No. 771,626 for the trade-mark NUTRI- FRUIT filed by Biscuits Leclerc Ltée
On December 22, 1994, the applicant, Biscuits Leclerc Ltée, filed an application to register the trade-mark NUTRI-FRUIT based upon proposed use of the trade-mark in Canada in association with “Biscuits, barres tendres, galettes” [Translation: Biscuits, soft cereal bars, cookies].
The present application was advertised for opposition purposes in the Trade-marks Journal of April 17, 1996 and the opponent, Kellogg Canada Inc., filed a statement of opposition on September 17, 1996, a copy of which was forwarded to the applicant on October 2, 1996. The applicant served and filed a counter statement on October 23, 1996. The opponent filed as its evidence the affidavit of Stan Jacot while the applicant submitted as its evidence the affidavit of Jean Leclerc. The opponent alone filed a written argument and neither party requested an oral hearing.
The opponent has alleged that the applicant’s trade-mark NUTRI-FRUIT is not registrable and not distinctive, and that the applicant is not the person entitled to its registration, in that the applicant’s mark is confusing with its registered trade-mark NUTRI-GRAIN, registration No. 201,374, which had previously been used and made known in Canada by the opponent in association with the wares covered in its registration, and in association with fruit-flavoured cereal bars. The wares covered in registration No. 201,374 are the following:
“Cereal and vegetable derived food products to be used as a breakfast food and snack food. Food products, namely waffles. Fruit‑filled and fruit‑flavoured cereal bars.”
Each of the opponent’s grounds of opposition is based on allegations of confusion between the applicant’s trade-mark NUTRI-FRUIT and the opponent’s trade-mark NUTRI-GRAIN. Accordingly, the determination of the issue of confusion will resolve all of the grounds in this proceeding. In assessing whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the material date(s). With respect to the ground of opposition based on Paragraph 12(1)(d) of the Trade-marks Act, the material date is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)]. Further, the material date in respect of the non-entitlement ground of opposition is the applicant’s filing date [December 22, 1994] while the material date for considering the non-distinctiveness issue is the date of opposition [September 17, 1996].
Paragraph 6(5)(a) of the Act requires that the Registrar consider the inherent distinctiveness of the trade-marks at issue. In this regard, both the applicant’s trade-mark NUTRI-FRUIT and the opponent’s trade-mark NUTRI-GRAIN possess relatively little inherent distinctiveness in that the element NUTRI suggests that the wares of the parties are nutritional while the words GRAIN and FRUIT are descriptive of the composition of the wares. As for the extent to which the trade-marks have become known [Para. 6(5)(a)], this surrounding circumstance clearly weighs in the opponent’s favour in that the Jacot affidavit establishes that the opponent’s trade-mark NUTRI-GRAIN is fairly well known in Canada in association with its fruit‑filled and fruit‑flavoured cereal bars. In this regard, the Jacot affidavit attests to wholesale sales of the opponent’s NUTRI-GRAIN cereal bars exceeding $147,000,000 from May 1994 to the end of 1997 and advertising and promotional expenditures from May 1994 to 1996 exceeding $22,000,000. Further, according to Mr. Jacot, the opponent’s NUTRI-GRAIN fruit‑flavoured cereal bars are the leader in sales of cereal bars in Canada. While the evidence of record points to the applicant having commenced sales of its NUTRI-FRUIT cereal bars in Canada, no evidence has been furnished by the applicant relating to the volume or the dollar value of its sales of NUTRI-FRUIT cereal bars in this country.
The Registrar must also have regard to the length of time the trade-marks at issue have been in use [Para. 6(5)(b)]. The Jacot affidavit establishes that the opponent has used its NUTRI-GRAIN trade-mark in Canada since August of 1974 in association with breakfast cereal, since May of 1988 in association with waffles, and since May 1994 in association with cereal bars. While the applicant filed its application on December 22, 1994 on a proposed use basis, it would appear from paragraph 9 of the Jacot affidavit that the applicant commenced selling its NUTRI-FRUIT cereal bars in or around May of 1995. Thus, the length of time the trade-marks at issue have been in use is a further factor favouring the opponent.
Considering next the nature of the wares [Para. 6(5)(c)] and the nature of the trade [Para. 6(5)(d)] associated with the wares of the parties, the applicant’s soft cereal bars appear to be identical to the opponent’s cereal bars while the applicant’s biscuits and cookies are related to the opponent’s wares. Further, and in the absence of any evidence to the contrary, I would expect there to be an overlap in the channels of trade of the parties.
As for the degree of resemblance between the trade-marks of the parties [Para. 6(5)(e)], I consider there to be a fair degree of similarity in appearance, sounding and in the ideas suggested between the applicant’s trade-mark NUTRI-FRUIT and the opponent’s trade-mark NUTRI-GRAIN.
As a further surrounding circumstance in respect of the issue of confusion, the opponent submitted evidence relating to the manner in which the applicant has, to date, used its trade-mark NUTRI-FRUIT in Canada. Annexed as Exhibit H to the Jacot affidavit are colour photocopies of the packaging for the applicant’s individual NUTRI-FRUIT cereal bars placed adjacent to the opponent’s packaging while Exhibit I comprises colour photocopies of cardboard outer packaging used by both parties in association with their cereal bars. I agree with the opponent’s analysis set out in paragraph 20 of its written argument relating to the points of similarity between the inner and outer packaging used by the parties for their respective products. In my view, this further increases the likelihood of confusion between the trade-marks at issue.
Having regard to the foregoing and, in particular, to the degree of resemblance between the trade-marks at issue as applied to identical wares which could travel through the same channels of trade, and bearing in mind that the opponent’s evidence establishes that its trade-mark NUTRI-GRAIN is fairly well known in Canada, I find that the applicant has failed to meet the legal burden upon it of showing that there would be no reasonable likelihood of confusion between the trade-marks at issue. As a result, the applicant’s trade-mark NUTRI-FRUIT is not registrable and not distinctive, and the applicant is not the person entitled to its registration.
Having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I refuse the applicant’s application pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 24th DAY OF AUGUST, 1999.
G.W.Partington,
Chairperson,
Trade-marks Opposition Board.