LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2015 TMOB 86
Date of Decision: 2015-05-13
IN THE MATTER OF AN OPPOSITION by Advance Magazine Publishers, Inc. to application No. 1,519,424 for the trade-mark BON APPÉTIT BANFF in the name of Banff Lake Louise Tourism Bureau
File Record
[1] On March 16, 2011, Banff Lake Louise Tourism Bureau filed an application to register the mark BON APPÉTIT BANFF, based on proposed use in Canada, in association with the following services:
promoting events to visitors through radio and television advertising and by distributing printed advertising materials and e-mail newsletters; promoting the goods and services of members, namely lodging, restaurants, shops, touristic tours and arts and sports centres through radio and television advertising and by distributing printed advertising materials and email newsletters; operation of a website promoting events and goods and services of others; providing information about events via email, by phone or in person.
[2] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated December 7, 2011 and was opposed by Advance Magazine Publishers, Inc. on January 7, 2012. The Registrar forwarded a copy of the statement of opposition to the applicant on February 21, 2012, as required by section 38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition. The opponent subsequently sought leave to file an amended statement of opposition. The Board granted leave to the opponent in a ruling dated July 24, 2013, which ruling also granted leave to the applicant to file an amended counter statement.
[3] The opponent’s evidence consists of the affidavit of Elenita Anastacio. The applicant’s evidence consists of the affidavits of Isabelle Gagné and Stuart Back. The applicant subsequently requested and was granted leave to file a second affidavit of Stuart Back as additional evidence: see the Board ruling dated March 21, 2014. The affiants Gagné and Back were cross-examined on their affidavits. The transcripts of their cross-examinations form part of the evidence of record. Only the applicant submitted a written argument, however, both parties were represented at an oral hearing held on January 8, 2014.
Statement of Opposition
[4] The applicant pleads that it is the owner of the word mark BON APPÉTIT (registration No. TMA576328) and BON APPÉTIT & Design (registration No. TMA221520), shown below:
For the purposes of this proceeding I will treat the design form, above, to be a minor variation of the word mark and essentially identical to the word mark.
[5] The services covered by the opponent’s registrations are shown below:
registration No. TMA576328
online magazines and publications distributed in electronic format via the internet; operating an internet website which allows consumers to subscribe to consumer magazines and allows advertisers to promote their goods and services via the internet
registration No. TMA221520
publications, namely a magazine.
[6] The opponent’s pleadings in the statement of opposition concerning its registered marks are shown below:
The BON APPÉTIT Registrations of the Opponent, have been used by the Opponent continuously and extensively in Canada since at least the dates of first use alleged in the registrations and to date, and are very well known and famous in Canada in association with the wares and services for which they are registered and on related wares and services. These dates of use and the application filing dates are well prior to the application date of the Applicant. In the case of the BON APPÉTIT mark, per se, there has been continuous and extensive use for far in excess of 40 years in Canada and elsewhere . . .
[7] The opponent also pleads that it has applied for the marks BON APPÉTIT (application No. 1521530) and BON APPÉTIT (application No. 1419418) covering the following services and goods:
application No. 1521530
educational services, namely, conducting classes, seminars, conferences and workshops, both on-line and in person, in the field of food and beverage preparation, culinary arts and distribution of training material in connection therewith.
application No. 1419418
stationery and stationery products, namely, notepaper, diaries, calendars, note cards, . . . envelopes, note cards and notepaper all containing custom imprints
[8] Various grounds of opposition are alleged, namely, that
(1) the applied-for mark is not registrable, pursuant to section 12(1)(d), because it is confusing with the opponent’s registered marks;
(2) the applicant is not entitled to registration, pursuant to sections 16(3)(a) and 16(3)(b), because the applied-for mark is confusing with the opponent’s registered marks, and with the opponent’s aforementioned applications, respectively;
(3) the applied-for mark is not distinctive (presumably pursuant to section 2);
(4) the applicant could not have been satisfied that it was entitled to use the applied-for mark, pursuant to section 30(i), because the applicant knew of the opponent’s marks when the application was filed; and lastly,
(5) “the opposed trade-mark is contrary to Sections 22, 30 and 50 of the Trade-marks Act.”
[9] As I understand it, in (5) above, the opponent is alleging that the applicant is offending section 30(i) because the applicant’s use of the applied-for mark would depreciate the value of the opponent’s registered marks (prohibited by section 22). Further, by invoking section 50, I assume that the opponent believes that there may be issues relating to the licensing of the applied-for mark, although those issues are not addressed in the pleadings.
[10] Before assessing the grounds of opposition, I will first review the evidence of record.
Opponent’s Evidence
Elenita Anastacio
[11] Ms. Anastacio identifies herself as a trade-mark information searcher employed by the firm representing the opponent. Her affidavit serves to introduce into evidence exhibit materials namely, particulars of the trade-marks that the opponent is relying on in this proceeding, and a copy of the logo shown below (BON APPÉTIT BANFF logo) appearing on the applicant’s website:
It may not be apparent in the above image that the word BANFF appears under the word portion “pétit” in the above logo.
Applicant’s Evidence
Stuart Back
[12] Mr. Back identifies himself as the Director, Resort Services, for the applicant. The applicant was formed in 1992 as a private non-profit cooperative marketing organization for the Town of Banff, Lake Louise and Banff National Park. The applicant’s primary focus is to attract year round visitors. The applicant is comprised of about 800 member companies representing various business sectors from the Town of Banff, the Banff National Park and some members outside the Park. The applicant’s mandate is described in para. 4 of Mr. Back’s affidavit:
BLLT's [the applicant’s] mission is to engage in marketing activities that encourage visitation to the Town of Banff, the community of Lake Louise and Banff National Park, including repeat visitation, that generate revenue for its members. The mandate of BLLT is to operate as a destination marketing organization for the purpose of promoting the places, services, products and attractions of the Town of Banff, the community of Lake Louise, and Banff National Park; to establish and maintain a central, member based tourism organization to enhance the position of Banff, Lake Louise and Banff National Park as a preferred year-round mountain destination resort; to coordinate the efforts of private firms, public sector agencies, and community groups which have an interest in the marketing and development of tourism within Banff, Lake Louise and Banff National Park; to enhance and improve the experience of visitors to Banff, Lake Louise and Banff National Park; to support the interests of the tourism industry in Banff, Lake Louise and Banff National Park; and, to encourage the adoption of heritage tourism values by the tourism industry in Banff, Lake Louise and Banff National Park.
[13] The applicant owns the registered word mark CLASSICAL BANFF as well as the registered word and design marks shown below:
The applicant’s above mentioned registered marks cover essentially the same services as those specified in the subject application.
[14] Mr. Back is responsible for organizing and promoting a specific event known as BON APPÉTIT BANFF. Details of the event are provided in para. 10 of his affidavit as well as at pages 5 and 6 of the transcript of his cross-examination:
para. 10
The BON APPÉTIT BANFF event occurs annually and began in November 2011. It involves around 20 local Banff restaurants offering special 3-course prix-fixe menus to visitors to the destination. The event is intended to generate incremental business at a period when visitor volumes are lower in Banff. Participants utilise regionally sourced cuisine and try to offer and[sic] unique or different experience to other times of the year. The event is held on approximately 15-25 November each year and mainly attracts patrons from BLLT's regional market (within around a two hour drive from Banff). In 2011 over 3,000 customers took part in this event . . .
Cross-examination
The -- each restaurant taking part, to provide a sort of a simply understood experience for the consumers, each restaurant taking part produces a three course menu at one of a number of price -- price points; and so as a diner, you would simply go and you would have a three course meal and -- and you would know what price you were paying for it. The menus that are produced are special for the festival, but other than that, you're -- you're simply going and eating three courses at a restaurant.
[15] Members of the applicant who participate in the BON APPÉTIT BANFF event are required to follow guidelines (attached as Exhibit A to Mr. Back’s supplementary affidavit) set by the applicant. Members are required to agree to the criteria and guidelines when completing their membership registration (attached as Exhibit B). Some of the criteria stipulated in Exhibit A are shown below:
Dates:
• Thursday November 14th — Sunday November 24th
Price Points:
• $25, $35 or $45
• Flexible options for mid-week and weekend pricing.
Format:
• Offer unique menu items or menu selections not currently offered.
• Fixed price structure, based on the above.
• Three course menu, including three options per course.
Criteria & Guidelines:
• Members to offer a three (3) course menu, including three (3) options per course, at a fixed price point of either $25, $35 or $45*.
*Flexible options between these prices are available for mid-week and weekend pricing. **Drink and gratuities in addition to the above price.
• Each course to have at least one unique menu item not currently offered.
• Menu items to offer and profile locally/regionally sourced products.
• Members agree to actively promote the Festival and special menus to restaurant patrons. The specific use of "Bon Appétit Banff" name and logo in promotions must be agreed with BLLT in advance of use.
• Members will agree to utilize "Bon Appétit Banff" promotional materials and branded pageantry supplied by BLLT within their establishment, in particular on menus and bill folds.
• Members agree to offer "Bon Appétit Banff" menus during the entire 10 day Festival period.
• Members agree to provide BLLT with content for the Festival web site, including Festival menus at least three weeks in advance of the event.
• Both online and walk-up sales will be available.
• Members agree to provide BLLT with post event reporting.
[16] In my
view the above requirements placed on participating members suffice to
establish that the applicant controls the character of the services known as BON
APPÉTIT BANFF.
[17] The marketing campaign for BON APPÉTIT BANFF is conducted almost exclusively in Alberta by means of online, print, radio, TV, direct mail and outdoor advertising, examples of which are attached as Exhibits G, H and I of Mr. Back’s affidavit.
Isabelle Gagné
[18] Ms. Gagné identifies herself as a paralegal with the firm representing the applicant. In late 2012 she conducted a computer search of the trade-marks register to locate active trade-marks comprised of the term “Bon Appétit.” It was a broad search not limited to any particular class of goods or services. The search results, attached as Exhibit A to her affidavit, indicate 12 marks for use in association with goods and/or services related to food products, kitchen ware, publications and spices.
[19] Of the 12 marks located, 4 belong to the opponent and one is the subject application. Of the 7 remaining marks, I consider that 3 are substantially different from the word mark BON APPÉTIT. The remaining 4 marks are held by different third parties. Presumably, Ms. Gagné’s affidavit was intended to provide evidence that the mark BON APPÉTIT is in common use by a variety of traders in association with goods and/or services related to food products, kitchen ware, publications and spices. However, Ms. Gagné’s evidence does not fulfill that purpose because too few third party marks were located on the register of trade-marks.
[20] Exhibit B attached to Ms. Gagné’s affidavit presents online dictionary definitions for the term “bon appétit.” The literal meaning is “good appetite,” however, the connotation is “enjoy your meal.”
Assessing the Grounds of Opposition
Section 30(i) and Knowledge of the Opponent’s Marks
[21] The ground of opposition pursuant to Section 30(i) is based on the allegation that the applicant knew of the opponent’s marks. This ground is not well founded and is therefore rejected. In this regard, a ground of opposition based on s.30(i) is established by showing that the applicant has acted in bad faith or fraudulently or is in non-compliance with a Federal statute: see, for example, Sapodilla Co. Ltd. v. Bristol‑Myers Co. (1974), 15 CPR (2d) 152 (TMOB) at 155 and Canada Post Corporation v. Registrar of Trade‑marks (1991), 40 CPR (3d) 221 (FCTD).
[22] Even if the applicant was, or should have been, aware of the opponent's marks that does not, by itself, preclude the applicant from genuinely and accurately making the statement required by section 30(i) that the applicant was satisfied that it was entitled to use the mark: see Lorillard, Inc. v. Fabriques de Tabac Reunies S.A. (1990), 30 CPR(3d) 406 at p. 408 (TMOB); Taverniti S.A.R.L. v. D.G.G.M. Britton Holdings Inc. (1986), 8 CPR(3d) 400 at pp. 404-405 (TMOB). In the instant case, the opponent has not pleaded sufficient facts to raise a ground of opposition pursuant to s.30(i).
Section 30(i) and Depreciation of the Opponent’s Marks
[23] With respect to the opponent’s allegation that the applied-for mark “is contrary to Sections 22, 30 . . .,” neither the Registrar, this Board nor the Federal Court has ruled on whether a s.30(i) ground of opposition based on the violation of s. 22 is a valid ground of opposition. Even if I found this to be a valid ground of opposition, the opponent has failed to adduce any evidence supporting a likelihood of depreciation of goodwill which would support a violation of s. 22: see Euromed Restaurant Limited v Trilogy Properties Corporation, 2012 TMOB 19 (CanLII) at paras. 9-13. The ground of opposition based on Sections 30(i) and 22 is therefore rejected.
Section 50
[24] The allegation that the applied-for mark “is contrary to” Section 50
is somewhat vague. Presumably, the opponent is alleging that the
distinctiveness of the applied-for mark has been negatively impacted by
improper licensing. While issues arising under section 50 may support other
grounds of opposition, section 50 cannot be pleaded as a ground of opposition.
Remaining Grounds
[25] The determinative issue with respect to the remaining grounds is whether the applied-for mark BON APPÉTIT BANFF is confusing with one or more of the opponent’s BON APPÉTIT marks. The material times to assess the issue of confusion are (i) the date of filing of the application (March 16, 2011) with respect to grounds of opposition based on section 16; the date of opposition (January 7, 2012) with respect to the allegation of non-distinctiveness; and the date of my decision with respect to the ground of opposition based on section 12(1)(d): for a review of case law concerning material dates in opposition proceedings see American Retired Persons v. Canadian Retired Persons (1998), 84 CPR(3d) 198 at 206 - 209 (FCTD).
[26] Before considering whether the applied-for mark BON APPÉTIT BANFF is confusing with the opponent’s mark BON APPÉTIT, I will review the evidential burden on the opponent, the legal onus on the applicant and the meaning of confusion within the context of the Trade-marks Act.
Evidential Burden and Legal Onus
[27] Analogous to other civil proceedings, there is (i) an evidential burden on the opponent to support the allegations in the statement of opposition and (ii) a legal onus on the applicant to prove its case.
[28] With respect to (i) above, in accordance with the usual rules of evidence, there is an evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition: see John Labatt Limited v. The Molson Companies Limited, 30 CPR (3d) 293 at 298 (FCTD). The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. With respect to (ii) above, the legal onus is on the applicant to show that the application does not contravene the provisions of the Trade‑marks Act as alleged by the opponent in the statement of opposition (for those allegations for which the opponent has met its evidential burden). The presence of a legal onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant.
Meaning of Confusion
[29] Trade-marks are confusing when there is a reasonable likelihood of confusion within the meaning of section 6(2) of the Trade-marks Act, shown below:
The 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 goods or services . . . associated with those trade-marks are manufactured . . . or performed by the same person, whether or not the goods or services . . . are of the same general class.
[30] Thus, section 6(2) does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by section 6(2) is whether purchasers of the applicant’s services (i.e., a fixed price restaurant meal), provided under the mark BON APPÉTIT BANFF, would believe that those services were being provided by the opponent, or that the applicant was authorized or licensed by the opponent who offers publications under the mark BON APPÉTIT. The legal onus is on the applicant to show, on the usual civil balance of probabilities standard, that there would be no reasonable likelihood of confusion.
Test for Confusion
[31] The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are “ all the surrounding circumstances including” those specifically mentioned in s.6(5)(a) to s.6(5)(e) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive and all relevant factors are to be considered. Further, all factors do not necessarily have equal weight as the weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 CPR(3d) 308 (FCTD). However, as noted by Mr. Justice Rothstein in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 CPR(4th) 361 (SCC), although the degree of resemblance is the last factor cited in s.6(5), it is the statutory factor that is often likely to have the greatest effect in deciding the issue of confusion.
Consideration of Section 6(5) Factors
Factors 1& 2 - Inherent and Acquired Distinctiveness; Length of Time in Use
[32] The opponent’s mark BON APPÉTIT possesses a fairly low degree of inherent distinctiveness as it is a common phrase comprised of two French words. The applied-for mark also possesses a fairly low degree of inherent distinctiveness as the last component BANFF is a well-known geographical location in Canada and therefore adds little distinctiveness to the mark as a whole. Further, the applied-for mark is suggestive of the restaurant promotion service provided by the applicant. The opponent has not provided any evidence of use of its mark and therefore has not established any acquired distinctiveness for its mark. For its part, the applicant has provided evidence of use of the applied-for mark, albeit for short time periods (ten consecutive days) on an annual basis. On the basis of Mr. Back’s evidence I am prepared to find that the applied-for mark has acquired some reputation, limited to the area of Banff, in spite of the absence of quantitative indicators of the extent of use of the applied-for mark. The first factor, which is a combination of the inherent and acquired distinctiveness of the marks in issue, therefore favours the applicant to at least some extent owing to the acquired distinctiveness of the appled-for mark.
[33] Similarly, as the opponent has not evidenced any use of its mark BON APPÉTIT, and the applicant has evidenced limited use of its mark since 2011, the second factor also favours the applicant to at least some extent.
[34] The opponent argued at the oral hearing that I should find that its mark had acquired a high degree of inherent distinctiveness because the applicant, through its counsel, did not permit the affiants Gagné and Back to answer certain questions put to them at cross-examination:
Gagné
Have you ever read the Bon Appétit magazine of the opponent? How long have you known of the magazine, the Bon Appétit magazine of the opponent, if you do know about it. Are you aware of others that read it? Have you ever subscribed to it? And have you ever purchased it?
Back
Are you aware of the Bon Appétit magazine published by Advance Magazine Publishing Inc.? If you are aware of it, how long have you been aware of it, and have you seen it on newsstands? Are you aware of others who read Bon Appétit magazine? And the same series of questions with regard to the Bon Appétit website that Advance Magazine Publishers runs.
[35] At cross-examination, applicant’s counsel took the position that the affiants Gagné and Back would answer questions relating to the evidence of record, but not to matters unrelated to their affidavit testimony. As neither affiant had made any reference to the opponent’s mark, counsel for the applicant objected to the above questions. Thus, no responses were given.
[36] At the oral hearing, counsel for the opponent argued that a “negative inference” should be drawn against the applicant because the applicant did not permit its affiants to respond to the above questions. Presumably, the intention at cross-examination was to establish that the opponent’s mark had acquired a high degree of inherent distinctiveness if it was known to the affiants Gagné and Back.
[37] I agree with the position taken by applicant’s counsel at cross-examination. While opposing counsel was not confined to cross-examination on the area within the four corners of the Gagné and Back affidavits, opposing counsel was confined to matters relevant to the determination of the issues in respect of which the affidavits were filed: see Weight Watchers International Inc. v. Weight Watchers of Ontario Ltd. (No. 2) (1972), 6 CPR (2d) 169 (FCTD) at pp. 171-172. In the instant case, neither affidavit referenced the opponent’s mark.
[38] Even if I was prepared to draw the inference that the affiants Gagné and Back knew of the opponent’s mark, I would not be prepared to extrapolate such a finding to the further inference that the opponent’s mark was well known. Given the limited scope of the evidence adduced by the affiants Gagné and Back, it was the responsibility of the opponent to provide its own evidence pertaining to the acquired distinctiveness of the opponent’s mark rather than to attempt to elicit such evidence through cross-examination: see Ottawa Athletic Club Inc. v. Athletic Club Group Inc., 2014 FC 672 (CanLII) at para. 160.
Factors 3 & 4 - Nature of the Parties’ Services and Trades
[39] The natures of the parties’ services and trades differ. In this regard, the opponent publishes a magazine while the applicant promotes tourism for the area of Banff. The third and fourth factors therefore favour the applicant.
Factor 5 - Degree of Resemblance
[40] Although marks are to be considered in their entireties for determining their degree of resemblance, the first component of a mark is often considered more important for the purpose of distinction: see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD). Further, the applicant has incorporated the whole of the opponent’s mark BON APPÉTIT as the first part of the applied-for mark. Accordingly, I find that the marks in issue are more alike than different despite the component BANFF which comprises the suffix portion of the applied-for mark. However, there are other considerations which mitigate the advantage to the opponent owing to the same first portions of the marks in issue. One circumstance is that comparatively small differences may suffice to distinguish between “ weak” marks, that is, between marks of low inherent distinctiveness (see GSW Ltd. v. Great West Steel Industries Ltd. (1975), 22 CPR(2d) 154 (FCTD)) particularly where the opponent has not presented any evidence of acquired distinctiveness. In this regard, a showing of acquired distinctiveness is required to entitle the opponent’s mark to a broadened scope of protection, i.e., outside the specific goods or services offered by the opponent under its mark.
Jurisprudence
[41] I have also taken guidance from a recently issued decision of this Board, Breville Pty Limited v Keuring Green Mountain, Inc, 2014 TMOB 248 (CanLII). In Breville, the owner of the marks YOUBREW and BREW IQ opposed the applied-for mark MYBREW intended for use in association with electric brewing machines. The Board noted as follows:
[27] In considering the degree of resemblance, the Supreme Court of Canada in Masterpiece, supra, sets out that resemblance is defined as the quality of being either like or similar (para 62) and that the approach to assessing resemblance should involve a consideration of whether there is an aspect of a trade-mark that is particularly striking or unique (para 64). In this case, there is nothing striking or unique about the word BREW given that the goods of each party relate to brewers and products to be used with them [see, for example, Molson Companies Ltd v John Labatt Ltd (1994), 58 CPR (3d) 527 (FCA)]. Similarly, the prefix component of the parties’ marks (a personal pronoun) is not particularly striking or unique given that consumers often use brewing machines to make beverages for themselves.
[28] The parties’ trade-marks therefore resemble each other to some extent in appearance and as sounded since they both share the suffix component BREW. While the parties’ trade-marks YOUBREW and MYBREW suggest the same idea, a brewer which allows for customizing of an individual’s beverages, there can be no monopoly in this type of idea [American Assn of Retired Persons v Canadian Assn. of Retired Persons/Assoc Canadienne des Individus Retraites (1998), 84 CPR (3d) 198 at para 34 (FCTD)]. (emphasis added)
[42] Similarly, in the instant case, the parties’ marks resemble each other in appearance, sounding and ideas suggested since they share the phrase BON APPÉTIT. However, there is nothing particularly striking or unique in the phrase BON APPÉTIT and there can be no monopoly in the idea of enjoying a meal. Further, while the first part of a mark is the more important, nevertheless, the suffix portion of the applied-for mark, that is, the component BANFF, contributes to the applied-for mark being different from the opponent’s mark visually, in sounding and in ideas suggested.
[43] Having regard to the above discussion of the section 6(5) factors, and the above jurisprudence, I find that that the balance of probabilities with respect to the issue of confusion weighs slightly in favour of the applicant notwithstanding the resemblance between the parties’ marks.
Disposition
[44] In view of the foregoing, the opposition to the mark BON APPÉTIT BANFF is rejected. This decision has been made pursuant to a delegation of authority by the Registrar of Trade-marks under section 63(3) of the Trade-marks Act.
[45] I would add that had the opponent provided evidence to support the pleadings in the statement of opposition (see para. 6, above), that is, evidence establishing that its magazine had acquired a substantial reputation (and further, that the magazine focused on food and dining), then the outcome of this proceeding would likely have favoured the opponent.
______________________________
Myer Herzig, Member,
Trade-marks Opposition Board
Canadian Intellectual Property Office