IN THE MATTER OF AN OPPOSITION by Loblaws Inc. to application No. 803,509 for the trade-mark SUNSPUD filed by Premium Label Foods Limited____________________ __
On February 6, 1996, the applicant, Premium Label Foods Limited, filed an application to register the trade-mark SUNSPUD based upon proposed use of the trade-mark in Canada in association with potato chips. The application was advertised for opposition purposes on August 7, 1996.
The opponent, Loblaws Inc., filed a statement of opposition on November 21, 1996. The applicant filed and served a counter statement.
The opponent filed as its evidence the affidavit of J. Robert Chapman. As its evidence, the applicant filed the affidavits of Herbert McPhail, Philip J. Lanzarotta, Anna Mongillo and George Tidona. Orders for the cross-examination of Mr. Lanzarotta, Ms. Mongillo and Mr. Tidona on their affidavits were requested and issued. However, only the cross-examination of Mr. Lanzarotta was conducted . A transcript of that cross-examination and answers to certain questions taken under advisement were filed and form part of the record.
Only the opponent filed a written argument. An oral hearing was not requested.
All of the grounds of opposition are based on the likelihood of confusion between the trade-marks SUNSPUD and SUNSPUN.
The first ground of opposition is based on Paragraph 12(1)(d) of the Trade-marks Act, the opponent alleging that SUNSPUD is not registrable in that it is confusing with the registered trade-mark SUNSPUN registered under No. UCA3,166 in association with various food products, including snack food products, namely popping corn, cookies and soda crackers. The material date with respect to the Paragraph 12(1)(d) ground of opposition 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 (FCA)].
The second ground of opposition is based on Paragraph 16(3)(a) of the Act, the opponent alleging that the applicant is not entitled to register the trade-mark SUNSPUD in that, as of the date of filing the application, SUNSPUD was confusing with the trade-mark SUNSPUN previously used and made known in Canada by the opponent, its predecessors in title and its authorized licensees, in association with various food products, including snack food products, including french fries, popping corn, popcorn and soda crackers. With respect to this ground of opposition, there is an initial burden on the opponent to evidence use of the trade-mark SUNSPUN prior to the applicant’s filing date by it or a licensee whose use satisfies the requirements of Section 50 of the Act. I find that the opponent has failed to evidence any use of the SUNSPUN mark that would qualify as its use for the following reasons.
The evidence of use of the SUNSPUN trade-mark is provided by Mr. Chapman, Senior Vice President, Merchandising of Westfair Foods Ltd. He states that Loblaws Inc., Westfair Foods Ltd. (“Westfair”), Sunfresh Foods Ltd. (“Sunfresh Foods”) and Sunfresh Limited (“Sunfresh”) are all closely related companies and that SUNSPUN food products are prepared for Sunfresh Foods and Sunfresh and distributed by Westfair. At paragraph 8 of his affidavit, he states:
“Sunfresh and Sunfresh Foods are, and continuously have been, since they began having SUNSPUN products prepared for them, licensed by and with the authority of Loblaws Inc. to use the SUNSPUN trade mark in Canada and Loblaws Inc. has, and has always had, under those licences whether oral or written at least indirect control of the character and quality of the wares prepared for Sunfresh Foods and for Sunfresh, as distributed by Westfair, in association with the SUNSPUN trade mark. Sunfresh Foods, Sunfresh and Westfair are wholly-owned subsidiaries of Loblaws Inc.”
As Exhibit B, Mr. Chapman provides a representative sample of packaging typically used for products bearing the SUNSPUN trade-mark. That packaging bears the following message: Prepared for/préparé pour Sunfresh Foods Ltd.
Mr. Chapman states that the SUNSPUN products are sold in a number of “Loblaws-associated stores” including the Sunspun Food Service division of Westfair. As Exhibits C-1 through C-6, Mr. Chapman provides representative samples of one type of advertising that has taken place since about the late 1970’s. These brochures display the SUNSPUN trade-mark, both as a heading (followed by the words FOOD SERVICE in smaller lettering) and as the brand of certain food items being offered for sale. At the end of the brochures, the following appears:
Although Mr. Chapman has evidenced significant use of the SUNSPUN trade-mark, he has not evidenced any use that enures to the benefit of the opponent. Evidence similar to that of Mr. Chapman’s has been considered by this Board in several opposition proceedings, in particular the oppositions by Loblaws Inc. to application No. 707,366 for TASTEFUL MEMORIES (decision issued September 8, 1999), application No. 797,836 for TREASURES OF BOLOGNA (decision issued January 31, 2000) and application No. 797,833 for TREASURES OF TUSCANY (decision issued March 9, 2000). In the two latter decisions, Chairperson Partington stated:
“… the product packaging … would lead consumers to assume that the source of the goods is Sunfresh. For the opponent to rely on the use of the trade-mark … by Sunfresh, Loblaws Inc. must establish that such use has been under license from it in accordance with the provisions of Subsection 50(1) of the Act. Scott Lindsay asserts that Sunfresh has been licensed by Loblaws, Inc. and that, under the license, the latter has at least indirect control of the character and quality of the wares sold by Sunfresh in association with the … trade-mark. In view of the clear message conveyed by the product packages, Mr. Lindsay’s evidence which merely restates the wording of Subsection 50(1) is insufficient for me to conclude that the licensed use by Sunfresh enures to the benefit of the opponent. Rather, the opponent must evidence facts from which the Registrar could determine the nature and the extent of the direct or indirect control which Loblaws Inc. has over the character or quality of the wares provided pursuant to that licensing arrangement.”
The foregoing comments are equally applicable to the evidence in the present proceedings. I also note that in the present case, in addition to the confusing message provided by the packaging, we also have the confusing message provided by some of the advertising brochures. Moreover, there is not even a statement that Westfair has been licensed to use SUNSPUN.
As the opponent has failed to show any use of SUNSPUN that enures to its benefit, the second ground of opposition is unsuccessful.
The third ground of opposition is that the applicant’s trade-mark SUNSPUD is not distinctive in that it does not, and is not adapted to, distinguish the wares of the applicant from wares of others, including the wares of the opponent, its predecessors in title and its authorized licensees, namely various food products, including snack food products, including french fries, popping corn, popcorn and soda crackers, which have been advertised and sold in Canada in association with the trade-mark SUNSPUN since prior to the applicant’s filing date. 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 Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (T.M.O.B.)]. Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition [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 Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 at 424 (F.C.A.)].
There is an evidential burden on the opponent to prove the allegations of fact in support of its non-distinctiveness ground. Although I have held that the opponent has not proved use of SUNSPUN by the opponent, it has proved use by the opponent’s authorized licensee, Sunfresh Foods Ltd. While Sunfresh’s use does not enure to the benefit of the opponent, it can be relied on to prove non-distinctiveness of the applicant’s mark given that the opponent specifically relied on use by the opponent’s authorized licensees in its pleading of its non-distinctiveness ground. This is not unlike relying on a third party’s use to prove non-distinctiveness.
The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set forth in Subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Act. Those factors specifically set out in Subsection 6(5) are: 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; and the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. The weight to be given to each relevant factor may vary, depending on the circumstances [see Clorox Co. v. Sears Canada Inc. 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)].
There is a legal burden on the applicant to establish that there would be no reasonable likelihood of confusion between the marks in issue. This means that if a determinate conclusion cannot be reached, the issue must be decided against the applicant [see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293].
Inherent Distinctiveness
Both marks have a considerable degree of inherent distinctiveness but the applicant’s mark is slightly less distinctive as a result of its inclusion of the word “spud”.
Extent to Which Marks have Become Known
There is no evidence that the applicant has advertised its mark but its mark would have become known as of March 30, 1998 as a result of the sale of approximately $250,000 worth of SUNSPUD potato chips in the preceding year [Lanzarotta affidavit, paragraph 4].
The SUNSPUN mark has been advertised through various media including special advertising brochures and in various retail stores’ advertising flyers continuously since the late 1970’s [Chapman affidavit, paragraphs 18-20]. Although examples of such ads have been provided, advertising expenditures have not been provided.
Sales of the broad line of SUNSPUN food products were at least 30 million dollars in each of the years 1995, 1996, and 1997 [Chapman affidavit, paragraph 13]. Although we do not know what extent of these sales were attributable to snack food products, we have been told that SUNSPUN popping corn, cookies, soda crackers, french fries and hash browns have been sold continuously since about the late 1970’s [Chapman affidavit, paragraph 7].
Length of Time the Marks Have Been in Use
This factor favours the opponent, use of the SUNSPUN mark having commenced in the late 1970’s while use of SUNSPUD commenced in 1996.
Nature of the Wares, Services, Business and Trade
The SUNSPUD wares, potato chips, are related to some of the SUNSPUN wares, namely the snack food and potato products (in particular popping corn, french fries and hash browns).
Both the SUNSPUD products and the SUNSPUN products are sold through retail grocery stores [Chapman affidavit, paragraphs 16 and 17; Lanzarotta cross-examination, question 126].
Degree of Resemblance Between the Marks
There is a very high degree of resemblance between SUNSPUD and SUNSPUN both visually and when sounded. The idea suggested by each mark differs somewhat as a result of the differences between the meanings of the words SPUD and SPUN. However, the first word or portion of a trade-mark is traditionally considered to be the more important [Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 at 188 (F.C.T.D.)].
State of the Register and State of the Marketplace
Another surrounding circumstance to be considered is the evidence of the
state of the register and state of the marketplace. The Mongillo and Tidona affidavits introduce evidence of products available at grocery stores bearing trade-marks containing the word SUN. This evidence speaks only to the state of the marketplace as of June 1998 but in any event I do not consider any of the marks evidenced to be sufficiently similar to SUNSPUD/SUNSPUN to be of consequence.
State of the marketplace evidence has also been provided in Mr. Chapman’s affidavit. The opponent’s evidence shows that there has been substantial use of the SUNSPUN trade-mark that does not enure to the opponent’s benefit. With respect to the Paragraph 12(1)(d) ground of opposition, such use undermines the distinctiveness of the opponent’s mark.
The McPhail affidavit introduces various marks on the Trade-marks Register that include the word SUN. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.)]. Inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located [see Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)].
Although the state of the register evidence may support the conclusion that it is common to adopt trade-marks that incorporate the word SUN, it does not support a conclusion that SUNSPU… marks are commonly adopted.
Conclusion
I conclude that the Paragraph 12(1)(d) ground of opposition fails as there is not a reasonable likelihood of confusion between the opponent’s registered trade-mark SUNSPUN and the applicant’s trade-mark SUNSPUD as of today’s date. My conclusion is based primarily on the fact that the evidence shows extensive use of SUNSPUN by one or more parties’ whose use has not been shown to enure to the benefit of the opponent. Such use severely affects the distinctiveness of the registered mark. If such use had been shown to enure to the opponent’s benefit, the outcome of this ground of opposition would have been different.
With respect to the ground of non-distinctiveness, I conclude that the applicant has failed to satisfy the burden on it to show that confusion is not reasonably likely between its SUNSPUD potato chips and the various SUNSPUN food products, including popping corn, sold by the opponent’s licensees as of the filing of the opposition. I note that with respect to this ground of opposition, each of the surrounding circumstances considered pursuant to Paragraph 6(5)(a) weighs against the applicant. The third ground of opposition therefore succeeds.
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 Act.
DATED AT TORONTO, ONTARIO, THIS 14th DAY OF JULY, 2000.
Jill W. Bradbury
Hearing Officer
Trade-marks Opposition Board