IN THE MATTER OF AN OPPOSITION by Ralston Purina Canada Inc. and Ralston Purina Company to application No. 632,942 for the trade-mark THE BITS THAT TASTE THE BEST! filed by The Quaker Oats Company of Canada Limited/La Compagnie Quaker Oats du Canada Limitée
On May 26,1989, The Quaker Oats Company of Canada Limited/La Compagnie Quaker Oats du Canada Limitée filed an application to register the trade-mark THE BITS THAT TASTE THE BEST! based upon proposed use of the trade-mark in Canada in association with "dog food". At the examination stage, the applicant amended its application to include a disclaimer of the right to the exclusive use of the words TASTE and BEST apart from its trade-mark.
The present application was advertised for opposition purposes in the Trade-marks Journal on May 16, 1990 and the opponent, Ralston Purina Canada Inc., requested and was accorded an extension of time to oppose the present application. A statement of opposition filed on September 14, 1990 identifying Ralston Purina Company as opponent was subsequently replaced by an amended statement of opposition filed on October 2, 1990 identifying Ralston Purina Company and Ralston Purina Canada Inc. as co-opponents. In their statement of opposition, the opponents alleged the following grounds of opposition:
(a) The applicant's trade-mark is not registrable in view of the provisions of Section 12(1)(b) of the Trade-marks Act in that the trade-mark THE BITS THAT TASTE THE BEST! is either clearly descriptive or deceptively misdescriptive in the English language of the character or quality of the dog food in association with which it is proposed to be used;
(b) The applicant's trade-mark is not distinctive in that it is not adapted to distinguish the dog food in association with which it is proposed to be used from pet food of others including the opponents herein.
The applicant served and filed a counter statement in which it asserted that its trade-mark is registrable and distinctive.
The opponents filed as their evidence the affidavits of Debbie L. Valois and Alexis J. Hanna while the applicant submitted the affidavits of Lynda Doxsee and Lawrence A. MacFarlane.
Both parties filed a written argument and both were represented at an oral hearing.
While the applicant submitted in its written argument that the opponents' grounds of opposition are contrary to Section 38(3)(a) of the Trade-marks Act, no such assertion was set forth in the applicant's counter statement. Further, it is clear from the applicant's evidence and its submissions at the oral hearing that it was fully aware of the case it had to meet in this proceeding. I would note, however, that no facts have been alleged in support of the non-distinctiveness ground. Accordingly, that ground must be taken as being limited to the allegations that the applicant's trade-mark is either clearly descriptive or deceptively misdescriptive of the character or quality of the applicant's wares.
The first ground of opposition is based on Section 12(1)(b) of the Trade-marks Act, the opponents alleging that the applicant's trade-mark is not registrable in that the trade-mark THE BITS THAT TASTE THE BEST! is either clearly descriptive or deceptively misdescriptive of the character or quality of dog food. As the non-distinctiveness ground is limited to the allegations of fact as set forth in the first ground, the determination as to whether the applicant's trade-mark is clearly descriptive of the character or quality of the applicant's wares will effectively decide both grounds of opposition.
The material date for considering a ground of opposition based on Section 12(1)(b) of the Act is as of the date of decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)] and, while the legal burden is upon the applicant to show that its trade-mark THE BITS THAT TASTE THE BEST! is registrable, there is an initial evidential burden upon the opponents in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of its allegations that the trade-mark THE BITS THAT TASTE THE BEST! is clearly descriptive or deceptively misdescriptive of the character or quality of dog food. The issue as to whether the applicant's trade-mark is clearly descriptive of the character or quality of dog food must be considered from the point of view of the average purchaser of those wares. Further, in determining whether the trade-mark THE BITS THAT TASTE THE BEST! is clearly descriptive of the character or quality of dog food, the trade-mark must not be dissected into its component elements and carefully analyzed, but rather must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pp. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at p. 186)].
In the present case, the applicant has disclaimed the right to the exclusive use of the words TASTE and BEST apart from its trade-mark. In my view, such a disclaimer is arguably to be taken as an admission by the applicant that the words TASTE and BEST are not independently registrable in relation to dog food and therefore may constitute an admission that the words are either clearly descriptive of the character or quality of dog food, or otherwise are common to the trade or are the name of such wares [see Andres Wines Ltd. v. Les Vins La Salle Inc., 3 C.P.R. (3d) 272, at page 275]. Additionally, the opponents have filed the Valois and Hanna affidavits which introduce into evidence various dictionary definitions for the word "bit". These definitions establish that the word "bit" in relation to dog food would mean "a morsel" or "a small piece". Also, in Webster's Third New International Dictionary, the word "bit" includes as one of its definitions the following: "a small quantity of food".
Apart from the above, the applicant uses the words "bit" and "bits" in a descriptive manner in referring to its dog food, as evidenced by the specimen bags comprising Exhibits "A" and "B" to the MacFarlane affidavit. In particular, both exhibits include the following paragraphs:
"More tasty bits in every bite!
Kibbles 'n Bits 'n Bits 'n Bits has lots of tasty bits - crunchy ones, chewy ones. Each extra bit gives your dog more of the great taste he loves. In fact, Kibbles 'n Bits 'n Bits 'n Bits offers, through its unique blend of components, the best tasting dry dog food. We think your dog will want nothing else!
Plus all the nutrition your dog needs!
Kibbles 'n Bits 'n Bits 'n Bits balances all the wholesome nutrition naturally found in grains with nutritious meat meal. Crunchy chunks of kibble provide a sensible diet for clean teeth and healthy gums. And, chewy, flavourful bits add taste and variety without messy mixing."
These paragraphs also point to the use by the applicant of numerous descriptive phrases or slogans in referring to its dog food, including the following:
"More tasty bits in every bite!"
"Each extra bit gives your dog more of the great taste he loves."
"...the best tasting dog food."
"We think your dog will want nothing else!"
"And chewy, flavourful bits add taste and variety without messy mixing."
In their written argument and at the oral hearing, the opponents referred to a letter filed by the applicant in response to a Section 12(1)(b) objection raised at the examination stage. In reply to the examiner's objection that the trade-mark THE BITS THAT TASTE THE BEST! is a laudatory expression in praise of the applicant's wares, the applicant argued as follows:
The trade-mark claimed in the present application does, without doubt, have a laudatory connotation. However, for as long as trade-marks have been in existence and certainly as long as manufacturers have sought to publicize their goods, trade-marks having favourable, pleading, laudatory and complimentary connotations have been sought, slogans have been adopted which called out the goods in a favourable light and, in general, efforts have been made to present the goods to the purchasing public in a manner which will make them attactive.
Trade-mark law has long recognized that this is inoffensive and that it does not disentitle an applicant to registration. The Trade-marks Act does not make any reference to marks of a laudatory nature and certainly does not say that such marks are not entitled to registration. The situation is covered by the Trade-marks Act which prohibits registration to marks which are either "clearly descriptive" or "deceptively misdescriptive".
In the present case, the trade-mark consists of six words which form a catchy, memorable and highly distinctive trade-mark which, although it has a laudatory connotation, cannot, in any way, be said to be either clearly descriptive or deceptively misdescriptive.
There are a number of decisions in which the Federal Court has concluded or commented on the fact that words or prefixes having a laudatory connotation are prima facie descriptive terms [see, for example, Mitel Corporation v. Registrar of Trade Marks, 79 C.P.R. (2d) 202, at pg. 206; Molson Companies Ltd. v. John Labatt Ltd., 58 C.P.R. (2d) 157, at page 160; Imperial Tobacco Ltd. v. Benson & Hedges (Canada) Inc., 75 C.P.R. (2d) 115, at pg. 118; and Cafe Supreme F et P Ltée v. Registrar of Trade Marks, 4 C.P.R. (3d) 529, at pg. 532]. Having regad to these decisions, it is clear that a trade-mark having a laudatory connotation offends the provisions of Section 12(1)(b) of the Trade-marks Act.
In the present case, and while the word "best" is a laudatory epithet, the issue is whether the trade-mark THE BITS THAT TASTE THE BEST! when considered in its entirety possesses a laudatory connotation. In my opinion, the applicant's trade-mark does possess a laudatory connotation in that it describes the applicant's dog food as comprising the best tasting bits or morsels of dog food. As a result, I have concluded that the opponents have met the evidential burden upon them in respect of the Section 12(1)(b) ground of opposition. Accordingly, the legal burden is upon the applicant to establish that its trade-mark is registrable.
To determine whether the applicant has met the legal burden upon it in respect of the first ground of opposition, it is necessary to consider the evidence filed in support of its application. The first affidavit is that of Lynda Doxsee which introduces into evidence certified copies of ten registrations for trade-marks which include the word BITS as applied to various food products or pet food products. As pointed out by the opponents' agent at the oral hearing, the decision of the Opposition Board in Proctor & Gamble Inc. v. Morlee Corp., 48 C.P.R. (3d) 377, at pages 386-387, is authority for the proposition that the Registrar cannot comment on previous registrations which he has granted where such comments could reflect upon the validity of such registrations. However, I do not consider that the comments I intend to make concerning the registrations disclosed by the Doxsee search should reflect in any way upon their validity. For example, five of the registrations, including the applicant's registered trade-mark DES BITS...OU RIEN!, include a disclaimer of the word BITS apart from the respective trade-marks. Also, two of the registrations for the trade-marks ALPHA-BITS and TASTI-BITS are hyphenated marks while the registered trade-marks SPUD BITS and BITS 'O FRUIT are applied respectively to "restaurant services..." and "sherbet, yogurt, ice cream novelties". This would appear to explain why the Registrar did not require a disclaimer of the word BITS apart from these trade-marks. As a result, I do not consider that this evidence is of any assistance insofar as the applicant meeting the legal burden upon it.
In addition to the above, the applicant submitted the affidavit of Lawrence A. MacFarlane, Assistant Secretary of the applicant. In his affidavit, Mr. MacFarlane has provided evidence of sales of the applicant's dog food in association with the trade-mark THE BITS THAT TASTE THE BEST!. However, the applicant's application is based upon proposed use of the trade-mark THE BITS THAT TASTE THE BEST! in Canada and the applicant is effectively precluded from relying upon the provisions of Section 12(2) of the Trade-marks Act. Thus, the applicant's trade-mark is not registrable in view of the provisions of Section 12(1)(b) of the Trade-marks Act.
In view of the above, I refuse the applicant's application pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 31st DAY OF MARCH,1995.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.