IN THE MATTER OF AN OPPOSITION
by Glenn Vernon McLeod
to application No. 626,938
for the trade-mark BUZZARDS filed by
Buzzards Food and Wine Bar Ltd.
On March 7, 1989, the applicant, Buzzards Food and Wine Bar Ltd., filed an application to register the mark BUZZARDS, based on use in Canada since at least as early as August 15, 1980. The application was amended, at the examination stage, to cover "food and beverage services namely the provision of banquet and catering services to the general public, food delivery services, the provision of food and beverages both alcoholic and non-alcoholic to the general public." The subject application was advertised for opposition purposes on January 17, 1990. The opponent, Glenn Vernon McLeod, filed a statement of opposition on August 10, 1990, and an amended statement on September 28, 1990.
The first (amended) ground of opposition is that the subject application is not in compliance with subsection 30(b) of the Trade-marks Act because the application "does not . . . contain the correct date from which the Applicant first used or made known the trade-mark BUZZARDS in Canada . . ." The opponent alleges that (i) the applicant was incorporated on November 23, 1981 and therefore was not in existence at the date of use claimed in the subject application namely, August 15, 1980, and that (ii) the applicant has not claimed the benefit of any earlier use by a predecessor in title.
The second (amended) ground of opposition pleads that the applied for mark BUZZARDS is not distinctive of the applicant's services in view of the opponent's use of its mark BUZZARDS PIZZA & Design (which is the subject of trade-mark application No. 628,067) since about December 1986, "and continues to so use his trade-mark to the present date", for, among other things, prepared food take-out services and restaurant services. The opponent has not evidenced his application, nor does the statement of opposition identify the design components of the opponent's mark other than by reference to application No. 628,067. I have therefore exercised my discretion to check records in the Registrar's care to confirm that the opponent Glenn Vernon McLeod is the applicant for the mark BUZZARDS PIZZA & Design, illustrated below: see Royal Appliance Mfg. Co. v Iona Appliance Inc. (1990), 32 C.P.R.(3d) 525 at 529 (TMOB) in regard to exercising the Registrar's discretion in this way. I have also noted that application No.628,067 was filed on February 8, 1989.
The applicant served and filed a counter statement generally denying the grounds of opposition. The opponent's evidence consists of the affidavit of Glen Vernon McLeod. The applicant did not file any evidence in support of its application. Both parties filed a written argument, however, neither party requested an oral hearing.
With respect to the first ground of opposition, the opponent has not filed any evidence to support its allegation that the applicant was not in existence on August 15, 1980. The first ground is therefore rejected because the opponent has not met the evidential burden on it to bring the first ground of opposition into issue.
With respect to the second ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Inc. v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (TMOB). The presence of a legal burden means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant. The material time for considering the circumstances respecting the issue of distinctiveness is as of the filing of the opposition, in this case August 10, 1990: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.). Further, I am permitted to take into account evidence of all the surrounding circumstances including, for example, the parties' sales and advertising under their respective marks and trade-names, up to the material date: see Castle & Cooke, Inc. v. Popsicle Industries Ltd. (1990), 30 C.P.R.(3d) 158 (TMOB).
Mr. McLeod's evidence is that he operated a take-out food establishment, under the trade-name and trade-mark BUZZARDS PIZZA, as a sole proprietorship from about December 1986 until August 23, 1988, on which date a numbered company was incorporated to carry on the business. As might be expected, Mr. McLeod is the President of that numbered company, namely 775496 Ontario Limited. The evidence is silent as to whether the numbered company is a licensee of the mark BUZZARDS PIZZA & Design, or whether the numbered company assumed ownership of the marks previously used by Mr. McLeod in association with his business. Given that it is Mr. McLeod who filed the statement of opposition (on April 10, 1990) and filed trade-mark application No. 628,067 (on February 8, 1989), it is logical to infer that Mr. McLeod retained ownership of his marks. Presumably, Mr. McLeod would also have me infer that (i) the numbered company is licensed to use his marks, and that (ii) the licensed use is in Mr. McLeod's direct or indirect control by virtue of his position as President of the numbered company. However, there is an evidential burden on the opponent to substantiate all the particulars that underlie its case, and that burden is not met by relying on this Board to make inferences necessary to tie the opponent's case together. Accordingly, I find that the opponent has not met its evidential burden to establish that the numbered company is licensed to use Mr. McLeod's marks. It follows that use of the mark BUZZARDS PIZZA & Design by the numbered company after August 23, 1988 does not have the same effect as use by Mr. McLeod. As the statement of opposition pleads use of Mr. McLeod's marks by Mr. McLeod, the opponent cannot rely on any third party use of its marks to further the opponent's case.
Mr. McLeod's evidence shows use of the mark BUZZARDS PIZZA & Design, as well as use of the mark shown below, or variations of it, in association with a take-out pizza business.
The evidence establishes use of the above marks in Smithville, Ontario by Mr. McLeod during the period December 1986 to August 23, 1988, and use thereafter by 775496 Ontario Limited. The extent of sales, first by Mr. McLeod and later by the numbered company, is about 8,000 pizzas per year, and advertising expenditures are about $2,500 per year. As discussed above, there is no evidence that Mr. McLeod used his marks in the two year interval between August 23, 1988 and the material date August 10, 1990, nor does the evidence support deemed use by Mr. McLeod pursuant to subsection 50(1) of the Act.. As Mr. McLeod's sales and advertising were not particularly large, and as use of the marks by the numbered company after August 23, 1988 diminished the distinctiveness of Mr. McLeod's marks, I cannot infer that Mr. McLeod's marks retained a residual distinctiveness as of the material date. It is more likely that the two BUZZARDS PIZZA & Design marks, illustrated earlier, were distinctive of the numbered company's services at the material date rather than distinctive of Mr. McLeod's defunct sole proprietorship. Thus, the second ground of opposition is rejected because, on the balance of probabilities, I am satisfied that the opponent's activities, as disclosed by the evidence, did not render the applied for mark non-distinctive. In so deciding, I have not had regard to the numbered company's activities, which were not pleaded in the statement of opposition, in so far as its activities
would advance the opponent's case.
In view of the above, the opponent's opposition is rejected.
It may be that Mr. McLeod in fact transferred his rights in the above marks to the numbered company on or about August 23, 1988. If that is the case, then the statement of opposition should have pleaded so, the evidence should have alluded to the transfer of rights, and 775496 Ontario Limited should have been identified as the opponent. Had this been done, the result of this
proceeding would likely have favoured the numbered company.
DATED AT HULL, QUEBEC, THIS 31st DAY OF AUGUST , 1994.
Myer Herzig,
Member,
Trade-marks Opposition Board