Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by

Islamic Society of North America - Canada to

application No. 1,052,639

for the trade-mark HALAL

filed by Bank of Montreal

                                                        

 

On March 28, 2000, the applicant, Bank of Montreal, filed an application to register the trade-mark HALAL. The application is based upon proposed use of the trade-mark in Canada in association with “mutual fund services, namely, mutual fund brokerage, mutual fund distribution, and the administration and management of mutual funds including receiving, investing and paying out of monies”.

 

The application was advertised for opposition purposes in the Trade-marks Journal of March 20, 2002. The opponent, Islamic Society of North America - Canada, filed a statement of opposition on August 20, 2002. The grounds of opposition are summarized below:

 

1.                  The application does not comply with subsection 30(i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) in that the applicant could not have been satisfied that it is entitled to use the trade-mark in Canada in association with the services described in the application since at the date of filing of the application, the applicant was or should have been aware that the word “Halal” is used by Muslims in Canada to mean “permissible” or “allowed” according to Allah in association with, among other things, financial services.

 

2.                  The trade-mark is not registrable as a trade-mark, other than as a certification mark, having regard to s. 12(1)(e) of the Act, on the ground that the trade-mark is a mark of which the adoption is prohibited by section 10 in that it is a mark that has by ordinary and commercial usage become recognized in Canada as designating the kind or quality of any wares or services.

 

3.                  The trade-mark is not registrable having regard to s. 12(1)(b) of the Act, on the ground that the trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of the services in association with which it is proposed to be used.

 

4.                  The applicant is not the person entitled to registration having regard to s. 16(3)(a) of the Act, on the ground that the trade-mark as at the date of filing of the application was confusing with the unregistered certification mark HALAL used by the opponent to certify that the wares of others meet certain standards.

 

5.   The trade-mark is not distinctive, within the meaning of s. 2 of the Act, because it does not actually distinguish the services in association with which it is proposed to be used by the applicant from the wares and services of others, namely the use by the opponent and/or individual Muslims of “Halal” in association with goods and services to indicate that they are permissible pursuant to the teachings of the Quran.

 

The applicant filed and served a counter statement. The applicant subsequently requested, and obtained, leave to amend its counter statement. In addition to denying the opponent’s allegations, the applicant asserted that the opponent does not own an “unregistered certification mark”.

 

The opponent filed as its evidence the affidavits of Dr. Mohammad Ashraf, John Beaudoin, Theresa Leung and Paul Singh.

 

As its evidence, the applicant filed the affidavit of Ziad Katul.

 

Neither party filed a written argument and an oral hearing was not requested.

 

Opponent’s Evidence

Ashraf Affidavit

Dr. Ashraf, a devout Muslim, is the opponent’s Secretary General. He explains that the opponent is a non-profit, community-based, umbrella organization that has affiliations with a large number of Islamic organizations in Canada. The opponent is “dedicated to assisting Canadian Muslims in conducting their affairs in a manner which complies with Islamic law”.

 

Dr. Ashraf states:

•  “Halal is an Arabic term used in the Qur’an [a scripture holy to Muslims, sometimes referred to by non-Muslims as the ‘Koran’] which signifies lawful or permissible according to Allah.”

 

•  “The concept of ‘halal’ is broadly used to designate permitted activities in all areas of Muslim life… ‘Halal’ is often used in connection with foods to indicate that it complies with the strict dietary restrictions imposed by Islamic law…. However.., the concept of ‘halal’ is not restricted to dietary prescriptions.”

 

•  “In the context of economic activities, there is a clear distinction between what is ‘halal’ (permissible) and what is ‘haram’ (forbidden). Islamic law prohibits any dealings which involve usury and interest-generating activities and forbids investment in business sectors which deal with … socially destructive and Islamically objectionable products and services.”

 

•  “The term ‘halal’ is frequently used as an adjective to describe Islamically acceptable commercial practices, financial services, banking and investments. By way of example, I am aware of the following usages of the terms: ‘halal investments’, ‘halal mutual funds’, ‘halal funds’, and the like.”

 

Dr. Ashraf explains that the opponent, through an affiliate, has offered Islamically acceptable alternatives to conventional financing and investing to Canadian Muslims since 1980. He says that the affiliate “provides ‘halal’ financing or ‘halal’ mortgages to Muslims seeking to purchase a home without contravening the prohibition on interest.” As Exhibit “4”, he provides a copy of a brochure which provides the general highlights of this financing program. I do not however see the word “halal” anywhere on this brochure.

 

Dr. Ashraf states that affiliates of the opponent also provide other financial services such as RRSP eligible investments, business financing and car and equipment leasing and purchasing that are Islamically acceptable.

 

Dr. Ashraf also discusses how the opponent has been active in certifying meats as ‘halal’ in Canada since 1990.

 

Dr. Ashraf concludes by expressing his belief “that most Canadian Muslims seeing the word ‘halal’ used in association with a product or service would understand that such product or service is compliant with Islamic law.”

 

Beaudoin Affidavit

Mr. Beaudoin, at the time of his affidavit, was a student-at-law in the offices of the opponent’s lawyers.

 

Mr. Beaudoin presents materials that he obtained from the Internet which contain the term “halal”, “Islamic investment”, “Islamic mutual funds”, “Islamic banking”, “Islamic finance” and other like terms. I summarize below those items that I consider to be the most relevant:

 

•  The American Heritage ® Dictionary of the English Language, Fourth Edition, published in 2000 defines “halal” as “n. Meat that has been slaughtered in the manner prescribed by the shari’a.”; “adj. 1. Of or being meat slaughtered in the prescribed way: a halal butcher; a halal label. 2. In accordance with or permitted under the shari’a.” [emphasis added]

 

•  A 2003 version of www.dar-al-talaba.net provides “A Guide to Halal Food Selection” that states, “Seeking to consume Halal Food is not only restricted to the items alone. It means also to earn of one’s living from Halal avenues and allowed methods, by staying away from consuming of something not attained lawfully, as the above hadith taught.” [emphasis added]

 

•  Pages obtained in 2003 from www.islamia.com include the following statements: “Halal and Haram: Earnings Islamic Shari’ah enjoins upon us the duty to earn our living in Halal way. Islamic Shari’ah teaches both what are Halal and Haram ways of earnings. A business is Halal unless it deals in Haram products or uses Haram methods.”

 

•  An article entitled “Basic Commitments of Muslims”, dated January 4, 2002 and found at www.islamicsociety.ca, reads in part, “Money should be earned in Halal ways and it should be spent in the right manner.”

 

•  An article entitled “Islamic Funds – The New Religious Investment Era” found in 2003 at www.expatsite.com, reads in part: “The salient features of an Islamic economic system are the distinction between what is ‘halal’ and what is ‘haram’ in pursuit of economic well-being.”

 

•  Excerpts from Frequently Asked Questions that appeared on the 2003 edition of www.amanahfinance.hsbc.com, namely: “The Shariah (Islamic law) does not require that the seller of a product be Muslim or that his/her own income be halal (permitted).”; When you open an account or invest your money, your funds must be segregated from interest-based funds so that your returns are halal (permitted).”; “As we discussed in FAQ B6, charging to compensate the bank for money lent out would not be halal (permissible).”

 

•  An article entitled “When Interest is Forbidden by Religion”, published in The Wall Street Journal and dated 2003, found at http://ptg.djnr.com, reads in part: “The lenders make loans ‘halal’, or permitted in Arabic, by charging a rent or ‘fee’, which is their profit in the transaction.”

 

•  An article entitled “Spiritual Principle and No Interest”, dated September 2001, found at www.sutton.com, reads in part: “This group of Canadian Muslims adapted a form of ‘halal’ financing, which allows an individual to purchase a house with one or more other shareholders/investors, and then buy back the property over several years utilizing a lease/purchase agreement. … Within a short time, a housing cooperative was established in Toronto, and the ‘Halal Mortgage’ so far been used to finance more than 200 homes.”

 

•  Excerpts concerning Islamic investments from the 2003 version of www.ihilal.com: “There is almost a consensus of opinion among contemporary scholars that it is halal to invest in the stock markets provided the company invested in is not engaged in a business not permitted by Shari’ah. … Halal Investment Products … Qualitative screens are part of the general rules followed by Shari’ah scholars in determining what is halal and what is haram for investment.”

 

•  Excerpts concerning investments that adhere to Sharia from the 2003 version of www.miraj.com: “The issue of whether or not it is permissible (‘halal’) to trade in the shares of international companies has been carefully addressed by contemporary Sharia scholars…. Since it is hardly possible to find pure halal investments in the contemporary economic orders, most Sharia scholars are of the opinion that Muslims cannot be denied investment opportunities in the international markets if the haram element is strictly controllable… To maximize investors’ halal return it is, hence, essential to focus on company shares that reflect minimal ‘haram’ element.”

 

•  The 2003 version of www.amanafunds.com includes a reference to “Halal Investing”.

 

•  A magazine article entitled “Overcoming the Cost of Being Muslim”, dated September 2000, found at www.forbes.com, reads in part: “To keep the funds halal – ‘acceptable’ according to Islamic law – the fund managers meet quarterly with the Fiqh Council of North America… Crafting a halal portfolio involves compromise.”

 

•  Excerpts concerning halal investing from the 2003 version of www.azzadfund.com: “Halal investing (sometimes referred to as Shari’ah-based investing… A halal mutual fund is a faith-based mutual fund that… Halal funds strive to adhere to the prohibition against interest… Most halal investors want their investments to… Is a halal fund right for me? Halal funds share most of the conventional features… A halal fund’s holdings are screened…a halal fund may not borrow money… A halal fund invests only in common stocks… A halal fund may not invest in interest-bearing…”

 

•  An article entitled “Finally! A Mutual Fund for (Canadian) Muslim Investors”, posted February 2002, found at http://tyo.ca/islambank.community, discusses a fund called the StrategicNova SAMI Fund and reads in part: “Investments must be halal…”

 

Mr. Beaudoin also provides excerpts from books and printed publications that he located in Toronto, as follows:

 

•  From “Economic Concepts of Ibn Taimiyah” by Abdul Azim Isalhi, published in 1988: “one of the characteristics of Islamic economics is that it is governed by the concept of halāl and harām (legitimate and illegitimate).”

 

•  From “Islamic Business Ethics” by Rafik Issa Beekun, published in 1997: “…The Qur’an and the Sunnah complement these axioms by specifying the degree of lawfulness of key types of behaviours as well as the harām and halāl business areas for Muslim businessmen.” “Halāl and Harām Business Areas … [W]hat is harām may be presumed to correlate with business areas that are themselves harām and thence unethical. Similarly, what is halāl may be presumed to correlate with business areas that are themselves halāl and ethical.”

 

•  From “Islamic Banking” by Mervyn Lewis and Latifa Algaoud, published in 2001: “…Investments can be made in the stock market provided that the companies involved trade only in halal commodities. This is similar to the modern Western idea of ethical investment.”

 

Mr. Beaudoin concludes by stating that the most recent information that he could obtain from Statistics Canada indicated that there were approximately 253,300 Canadians who identified themselves as Muslims in the 1991 Census.

 

Leung Affidavit

Ms. Leung, a trade-mark agent, conducted a search in 2003 to locate all Canadian registrations for trade-marks that contain the word “halal”. She found 8 and the details of these registrations have been provided.

 

Singh Affidavit

Mr. Singh, at the time of his affidavit, was a student-at-law in the offices of the opponent’s lawyers. He obtained a chart from Statistics Canada’s web site, which states that there were approximately 579,640 Canadians who identified themselves as Muslims in the 2001 Census.

 

Applicant’s Evidence

Katul Affidavit

Mr. Katul, a lawyer employed by the firm that represents the applicant, conducted numerous Internet searches in 2003, which I will summarize below:

 

1.                       A Google search for “halal” returned 254,000 hits. Mr. Katul reviewed the first 40 webpages returned in the search and reported that the vast majority of these referred to “halal” in relation to food and dietary issues. I agree with that but I see no basis for Mr. Katul’s statement that these search results demonstrate the most common usage of “halal” as of March 2000.

 

2.                       Numerous other Google searches were conducted directed to the word “halal” in combination with other words, such as “food”, “diet”, “store”, “product”,  “ingredient”, etc.  I see no need to comment on the search results other than to state that there were many hits.

 

3.                       A Google search was also done to find the word “halal” without any of the food-related words used in the searches discussed as 2 above. 26,700 webpages were located. Mr. Katul estimates that this number is approximately 10% of the number of English-language webpages that contain the word “halal”. He goes on to state, “Of these 26,7000 webpages, many may in fact refer to food, food products or food services because an exhaustive exclusion of all food-related terminology is precluded due to the search limitations inherent in the Google search engine, which limit the number of search terms to a maximum of 10. An individual assessment of each of the 26,700 webpages was precluded due to time constraints.” I note that of the 10 summaries provided in his exhibit C-23, 2 appear to clearly relate to food, 2 possibly relate in part to dietary issues, and 1 clearly relates to financial issues (Halal Financial Alternatives).

 

4.                       Mr. Katul also conducted Google searches for the word “halal” on French-language webpages.

 

5.                       Mr. Katul visited the Statistics Canada website at www.statcan.ca and accessed information concerning the breakdown of the Canadian population by religion. He states, “This is publicly available information gathered by the Government of Canada, which I believe to be true and accurate.” The 2001 Census data indicates, inter alia, that Muslim Canadians numbered 579,645 and represented 1.68% of the total population of Canada at that time. Mr. Katul points out that the same Census showed there to be 329,995 Jewish Canadians in Canada. Mr. Katul also confirms Mr. Beaudoin’s evidence concerning the number of Muslim Canadians according to the 1991 Census.

 

6.                       Mr. Katul conducted searches on the websites of 5 major Canadian newspapers, directed to the word “halal”. No hits were found on three of the websites. The majority of the hits that did occur related to food, with none being obviously related to financial matters.

 

7.                       A search of the Canadian Trade-marks Office’s on-line database located 15 active applications/registrations for marks containing the word “halal”. All of these, other than the applicant’s present application, relate to food and 9 of them contain a disclaimer for the word “halal”. Mr. Katul concludes that the fact that registrations issued after 1997 typically contained a disclaimer reflects the near doubling of the number of Canadian Muslims between 1991 and 2001.

 

8.                       Searches conducted on November 26, 2003 indicated that the applicant is the only party to own a Canadian trade-mark application or registration for the word “halal” in association with “financial services” or “mutual funds”. Mr. Katul also determined that as of such date there were no applications or registrations for the word “kosher” in association with “financial services” or “mutual funds”. (Similar results were found with respect to the U.S. Trademark Register.)

 

9.                       At paragraph 55 of his affidavit, Mr. Katul states his personal opinion, based upon the searches that he has conducted, as to what the terms “kosher” and “halal” mean to the general public. I have disregarded these opinions, as there is no basis on which to conclude that Mr. Katul is an expert in the field of public perceptions.

 

10.                   Mr. Katul also did trade-mark searches directed to the words “sustainable development”, “green” and “ethical”, but I do not perceive the relevancy of these searches.

 

11.                   Searches for “halal” were conducted on-line of 13 websites in the nature of encyclopedias and dictionaries. Nine of the searches defined “halal” as being food-related; the remaining 4 searches produced no results.

 

12.                   At paragraph 73 of his affidavit, Mr. Katul lists nine statements concerning the applicant’s use of HALAL that he makes based on his belief of information provided to him by the Chief Compliance Officer of a subsidiary of the applicant. These statements, which include conclusions of law directed exactly to the issues at hand, are clearly inadmissible.

 

Analysis of Grounds of Opposition

Of course, the applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act, but there is 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. [see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)] I find that the opponent has met its initial burden by showing that the word HALAL is used to describe wares and services that are permitted under Islamic law.

 

The question then becomes whether the applicant’s evidence satisfies me that, on a balance of probabilities, HALAL is capable of distinguishing the applicant’s mutual fund services from the services of others. I find that the applicant has not met this onus.  While it is true that the descriptive word HALAL seems to be most used in the food industry, this does not mean that it could be successfully used to distinguish a single source in another field. Given that there is evidence that the meaning of HALAL extends to all wares and services, not just food, I do not see how an observant Muslim would interpret HALAL mutual funds, prima facie, as indicating a particular source as opposed to indicating that the services offered comply with Shari’ah law. The descriptive meaning of HALAL makes it incapable of distinguishing the applicant’s proposed services. Although additional evidence that others use HALAL to describe their financial services would further assist my conclusion that such word cannot be distinctive of the applicant’s services, the paucity of evidence of such third party use does not serve to satisfy the applicant’s onus. The fact remains that HALAL is a suitable descriptor for financial services and that suffices to make HALAL non-distinctive.

 

For the foregoing reasons, the distinctiveness ground of opposition succeeds.

 

With respect to the descriptiveness ground of opposition, I find that the opponent has met its initial burden by showing that as of March 28, 2000, the word “halal” would be understood by certain Canadians to mean that the services are in accordance with the teachings of Islam.

 

 

I question the admissibility of the type of evidence presented by the parties concerning the number of Canadians that are Muslim. However, given that both parties have relied upon the same source of information, it appears that they agree that this sort of evidence should be treated as admissible and I will treat it that way. In any event, I could probably take judicial notice that there are a number of Canadians who practice the Islamic faith. As to the issue of the significance of this number, although it is no doubt quite small compared to the number of non-Muslim Canadians, it is important to bear in mind who would be the average consumer of the services at issue. Although the financial services are clearly not restricted to members of the Islamic faith, it is self-evident that the adoption of a word that is best known to Muslims would have been done in order to appeal to that target clientele. Even though the applicant’s evidence suggests that it considers “halal” to be an adjective that is primarily used with respect to food, the applicant does not deny that it is a word that is most significant to practitioners of the Islamic faith. 

 

I do not think that the size of the Muslim community in Canada precludes a conclusion that HALAL is clearly descriptive of the applied for services. The mere fact that the Canadian government has chosen to keep statistics on this population could be interpreted as indicating that it is a noteworthy component of our society.

 

For the above reasons, I have concluded that the applied for mark is not registrable pursuant to s. 12(1)(b). If the applicant’s services comply with Islamic law, then the mark is clearly descriptive. If they do not comply with Islamic law, then the mark would be deceptively misdescriptive.

 

As I have already found in favour of the opponent with respect to two of the grounds of opposition, I do not propose to address the remaining grounds.

 

Disposition

Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.

 

 

DATED AT TORONTO, ONTARIO, THIS 10^th  DAY OF NOVEMBER 2005.

 

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board