LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 47
Date of Decision: 2014-03-05
IN THE MATTER OF AN OPPOSITION by Corporation de Développement du Commensal II to application No. 1,485,751 for the trade-mark COMENSOLI GLUTEN FREE PASTA & Design in the name of Comensoli Holdings Inc.
[1] Corporation de Développement du Commensal II (the Opponent) opposes registration of the trade-mark COMENSOLI GLUTEN FREE PASTA & Design (shown below)(the Mark) that is the subject of application No. 1,485,751 by Comensoli Holdings Inc. (the Applicant).
[2] The application was filed on June 18, 2010 and is based on proposed use of the Mark in Canada in association with the wares “pasta”. The application includes the following color claim:
Colour is claimed as a feature of the trade-mark. The horizontal band extending across the central portion of an oval is in the colour black. The word COMENSOLI on the horizontal black band is in the colour white. The words GLUTEN FREE on the upper band of the oval are in the colour white. The upper band of the oval is in the colour red. The central part of the oval which is divided into two parts by the horizontal black band is in the colour white. The word PASTA on the lower band of the oval is in the colour white. The lower band of the oval is in the colour green. The oval is encircled by a narrow band of white colour broken by the black broad band at the edge of the oval.
[3] The Opponent alleges that the Mark is not registrable under section 12(1)(d) of the Trade-marks Act, RSC 1985, c T-13 (the Act) and not distinctive under section 2 of the Act and that the Applicant is not the person entitled to registration of the Mark under section 16(3) of the Act because the Mark is confusing with, among others, the Opponent’s registered trade-mark COMMENSAL that has been previously used in Canada by the Opponent in association with various food products and restaurant services. The Opponent further alleges that the application for the Mark does not comply with the requirements of section 30 of the Act for a number of reasons, one of which being that the Applicant did not have the intention to use the Mark in Canada at the time of filing the application.
[4] I find the determinative issue in this proceeding is whether the Mark is confusing with the Opponent’s trade-mark COMMENSAL as registered or used.
[5] For the reasons explained below, I find that the opposition ought to be rejected.
The Record
[6] The statement of opposition was filed by the Opponent on March 25, 2011 and was denied by the Applicant by counter statement.
[7] As its evidence, the Opponent filed the affidavit of Pierre-Marc Tremblay, president and managing director of Gestion Commensal S.E.C. (Gestion), sworn November 4, 2011. Gestion is a general partner (“commandité”) that represents and acts on behalf of the limited partnership Commensal S.E.C., which is a licensee of the Opponent. The Opponent also filed certified copies of trade-mark registration Nos. 552036, 737835, 737834 and 352949 and pending application No. 1371242 alleged in the statement of opposition. The detail of these registrations and application are annexed to my decision.
[8] In support of its application, the applicant filed the affidavit of Valentina Jiew, legal assistant in the firm representing the Applicant, sworn May 22, 2012.
[9] None of the affiants was cross-examined.
[10] Only the Applicant filed a written argument. Both parties originally requested a hearing but later withdrew their request and the hearing was cancelled.
The parties’ respective burden or onus
[11] The Opponent has the initial evidentiary burden to establish the facts alleged to support each ground of opposition. Once that burden is met, the legal burden or onus that the Mark is registrable remains on the Applicant, on a balance of probabilities [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); and Dion Neckwear Ltd v Christian Dior, SA et al (2002), 20 CPR (4th) 155 (FCA)].
Analysis of the grounds of opposition
The non-registrability ground of opposition
[12] The Opponent has pleaded that the Mark is not registrable having regard to the provisions of section 12(1)(d) of the Act in that it is confusing with the Opponent’s word and/or design mark COMMENSAL that is the subject of the four registrations referred to above.
[13] I have exercised the Registrar’s discretion to confirm that these registrations are in good standing as of today’s date, which is the material date for assessing a section 12(1)(d) ground of opposition [see Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)].
[14] As the Opponent’s evidentiary burden has been satisfied, the Applicant must therefore establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Mark and the Opponent’s registered trade-marks.
[15] Unless indicated otherwise, I will focus my analysis on the Opponent’s registration No. 737,834, which presents the Opponent’s strongest case. If the Opponent is not successful with this cited mark, it would not achieve a more favourable result with the other cited marks.
The test for confusion
[16] Section 6(2) of the Act provides that:
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 wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[17] Thus, this section does not concern the confusion of the trade-marks themselves, but confusion of wares or services from one source as being from another source.
[18] The test for confusion is one of first impression and imperfect recollection. As noted by Mr. Justice Denault in Pernod Ricard v Molson Breweries (1992), 44 CPR (3d) 359 at 369:
The trade marks should be examined from the point of view of the average consumer having a general and not a precise recollection of the earlier mark. Consequently, the marks should not be dissected or subjected to a microscopic analysis with a view to assessing their similarities and differences. Rather, they should be looked at in their totality and assessed for their effect on the average consumer as a whole.
[19] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time the trade-marks have been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. This list is not exhaustive and all relevant factors are to be considered. Further, all factors are not necessarily attributed equal weight as the weight to be given to each depends on the circumstances [see Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée (2006), 49 CPR (4th) 401 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) for a thorough discussion of the general principles that govern the test for confusion].
Consideration of the section 6(5) factors
The inherent distinctiveness of the trade-marks and the extent to which they have become known
[20] The trade-marks at issue are both inherently distinctive, although arguably less so for the Opponent’s trade-mark in the context of its associated restaurant services. Indeed, the Opponent’s trade-mark is made up of the French word COMMENSAL, which is defined as a literary word describing a table companion: “Personne qui mange habituellement à la même table qu’une autre” [see Multidictionnaire de la langue française]. By comparison, the word COMENSOLI that constitutes the dominant element of the Mark has no specific meaning in the English or French languages.
[21] The strength of a trade-mark may be increased by making it known through promotion or use. There is no evidence that the Applicant’s proposed use Mark has been used in Canada or that it has become known to any extent in Canada in association with the applied-for wares. While the Applicant indicates in its written argument that sales of its pasta wares began “in approximately September of 2012”, the Jiew affidavit by no means evidences use of the Mark pursuant to section 4 of the Act in association with these wares.
[22] In contrast, the Tremblay affidavit evidences that the Opponent’s trade-mark COMMENSAL has been used in Canada by the Opponent and become known to some extent at least, as per my review below of the salient points of the Tremblay affidavit.
The Tremblay affidavit
[23] Mr. Tremblay first provides a background of the Opponent’s activities. He states that the Opponent is a pioneer in the province of Quebec in the field of vegetarian restaurant services and prepared dishes. He explains that the first COMMENSAL restaurant was established in 1977 and that the Opponent has, ever since, continued to evolve combining avant-gardism with the culinary arts.
[24] Mr. Tremblay states that the Opponent currently has nine COMMENSAL restaurants: eight in the province of Quebec and one in Ontario. I note that the Applicant apparently puts into issue the correctness of that statement. In her affidavit, Ms. Jiew states that on or about May 18, 2012, she visited the Opponent’s website www.commensal.com. She attaches as Exhibit VJ-6 screen prints from that website showing the addresses of seven restaurant locations in Quebec and one in Ontario. I consider the discrepancy in the number of restaurant locations in Quebec to be of no consequence.
[25] Based on its considerable experience and success with its restaurant services, the Opponent launched a line of prepared dishes under the COMMENSAL trade-mark in 1991. Mr. Tremblay states that the Opponent’s food products are sold to different food services. He further states that there are close to 41 prepared dishes sold under the COMMENSAL trade-mark in some 990 points of sale in Quebec and 130 points of sale in Ontario. I will return to the categories of food products and prepared dishes sold by the Opponent as well as its channels of trade later when considering the nature of the wares and/or services and the nature of the trade under the section 6(5)(c) and (d) factors.
[26] Mr. Tremblay then turns specifically to the licensed use of the word mark COMMENSAL and its variants as depicted in the registrations referred to above (collectively referred the COMMENSAL Marks), by the Opponent’s licensees, including Commensal S.E.C. He asserts, among other things, that the Opponent has granted a license to Commensal S.E.C. for the production, commercialisation and distribution of food products and prepared dishes intended for catering (“restauration”) and retail sale. By virtue of this license, Commensal S.E.C. has the right to use the COMMENSAL Marks in association with the wares and services described in the registrations referred to above in the normal course of trade. Mr. Tremblay asserts that the Opponent controls the nature and the quality of the wares and services associated with the COMMENSAL Marks as well as the manner by which these marks are used and advertised in Canada. Contrary to the Applicant’s submissions contained in its written argument, these statements of Mr. Tremblay are sufficient for the purposes of section 50 of the Act.
[27] Indeed, what is required by section 50 of the Act is that “the owner has, under the license, direct or indirect control of the character or quality of the wares and services”. In the present case, there is no evidence establishing that the Opponent did not exercise, either directly or indirectly, control over the character or quality of the wares and services. To the contrary, Mr. Tremblay has expressly attested to the fact that the Opponent has direct and indirect control of the character and quality of the wares and services sold or offered for sale by Commensal S.E.C. under the license, which testimony has not been challenged by cross-examination. I have no reason not to accept Mr. Tremblay’s statements at face value. As a result, I find that use of the Mark by Commensal S.E.C. inures to the benefit of the Opponent pursuant to section 50 of the Act.
[28] Mr. Tremblay then provides the sales figures for the Opponent’s wares and services under the COMMENSAL Marks for the years 2001 to 2011. These amount to over 118 million dollars. However, no breakdown is provided.
[29] Mr. Tremblay also provides the marketing figures for the Opponent’s wares and services under the COMMENSAL Marks for the same years, which amount to over 16 million dollars. However, no breakdown is provided.
[30] In support of his assertions of use and advertising of the COMMENSAL Marks, Mr. Tremblay attaches the following exhibits:
- Exhibit PMT-2: photographs of the exterior signage of one of the Opponent’s COMMENSAL restaurants, which Mr. Tremblay states is representative of the type of signage used by the Opponent;
- Exhibit PMT-3: photographs of representative packaging for some of the Opponent’s food products. Mr. Tremblay states that the packaging for all of the Opponent’s food products always displays the trade-mark COMMENSAL;
- Exhibit PMT-4: a small poster displayed in grocery stores promoting the vinaigrettes COMMENSAL;
- Exhibit PMT-5: representative posters promoting the same vinaigrettes and other COMMENSAL food products that have been distributed at various points of sale including photographs of packaging for these products;
- Exhibit PMT-6: examples of advertising made in 2009 in the Canadian magazine COUP DE POUCE including photographs of packaging for some of the Opponent’s prepared dishes; and
- Exhibit PMT-7: excerpts from the Opponent’s website www.commensal.com providing information on the Opponent’s wares and services.
[31] Upon review of these various exhibits, I note that some of them display a variant of the COMMENSAL & Design trade-mark covered by registration No. 552036. More particularly, the words NATURALLY BON – NATURALLY GOOD have been deleted. Others display the COMMENSAL Design mark covered by registration No. 737835 together with the words GOUTEZ LA VIE appearing either above or below in much smaller characters, and the design of a stylized stick figure. For the purposes of my analysis, I find it is not necessary to determine whether use of these variants amounts to use of the registered trade-marks COMMENSAL & Design and COMMENSAL Design respectively. Indeed, I am satisfied that use of each of these variants amounts to use of the word mark COMMENSAL, which constitutes the dominant element of the marks, and presents, as indicated above, the Opponent’s strongest case.
[32] To conclude on this first factor, I am satisfied from a fair reading of the Tremblay affidavit and accompanying exhibits that the Opponent’s trade-mark COMMENSAL has been used and become known in Canada to some extent at least, particularly in the provinces of Quebec and Ontario. While no breakdown of annual sales and marketing figures for each of the Opponent’s wares and services is provided by Mr. Tremblay, the photographs of packaging reproduced under Exhibits PMT-3, 5 and 6 together with the other specimens of advertising filed by Mr. Tremblay do evidence that various types of prepared dishes and vinaigrettes are marketed and sold in Canada under the mark. The photographs of exterior signage reproduced under Exhibit PMT-2 further illustrate the Opponent’s restaurant services. As a result, I find that the strength of the Opponent’s trade-mark COMMENSAL is reinforced.
[33] To sum up, the overall consideration of this first factor, which is a combination of inherent distinctiveness and acquired distinctiveness, favours the Opponent.
the length of time the trade-marks have been in use
[34] As per my comments above, this factor also favours the Opponent. While the Tremblay affidavit does not necessarily evidence use of each of the COMMENSAL Marks dating back to the dates of first use indicated in their corresponding registrations, I am satisfied, from a fair reading of the affidavit and accompanying exhibits that it can reasonably be concluded that the COMMENSAL word mark has been used, generally speaking, with the Opponent’s wares and services for a considerable length of time.
the nature of the wares, services or business; and the nature of the trade
[35] When considering the nature of the wares and the nature of the trade, I must compare the Applicant’s statement of wares with the statement of wares in the registrations referred to by the Opponent [see Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); and Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)]. However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. The evidence of the parties’ actual trades is useful in this respect [see McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); and American Optional Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].
[36] The Applicant’s application covers “pasta” whereas the Opponent’s registrations cover, among other wares and services, “pastas” and “frozen, prepared and packaged meals and entrees consisting primarily of pasta, rice, meat, fish, poultry or vegetables”.
[37] Mr. Tremblay explains in his affidavit that the Opponent’s food products and prepared dishes include, among others, the following categories of products:
• meal solutions (including seitan and tofu mixes);
• main courses (including lasagna and chili);
• individual frozen meals;
• soups;
• spreads;
• pizzas;
• vinaigrettes; and
• desserts.
[38] Mr. Tremblay further explains that these food products are offered for sale in its restaurants as well as in fruit and vegetable stores, natural food stores, and major grocery store chains such as IGA, METRO, and LOBLAWS. I note that the Applicant apparently puts into issue the correctness of that statement. In her affidavit, Ms. Jiew states that on or about January 17, 2012, she visited the websites of these latter three grocery store chains and obtained no search results for COMMENSAL products [see Exhibits VJ-4, VJ-5 and VJ-7]. I am not prepared to discredit Mr. Tremblay’s statement based on these mere search results. Suffice it to say that there is no indication that any of the websites consulted by Ms. Jiew enables the user to search for each and every single product offered for sale by these grocery stores.
[39] The Applicant, relying on the evidence introduced through the Jiew affidavit, submits that:
85. Nearly all of [the Opponent’s] wares are not remotely similar to the Applicant’s wares, namely, gluten-free pasta. The closest is of course frozen, prepared and packaged meals and entries consisting primarily of pasta, rice, meat, fish, poultry or vegetables, and food products namely pasta. The Opponent does not purport to sell gluten-free pasta, and their pasta products, if in fact sold, appear to be in the form of pre-packaged meals, unlike the wholesale gluten-free only pasta of the Applicant.
[…]
87. […] The respective natures of the wares or business as between the Applicant and the Opponent are so dissimilar as to make confusion between the two parties’ trade-marks entirely unlikely. Pre-packaged, pre-cooked vegetarian meals are starkly different from exclusively gluten-free dry pasta manufactured in a gluten-free facility. […] Although the Applicant’s wares and the Opponent’s wares fall within the same general class of “food”, there are clear differences between exclusively gluten-free dry pasta that is manufactured in an exclusively gluten-free facility and pre-packaged, pre-prepared vegetarian meals.
[40] While these submissions of the Applicant are not without merit, the fact remains that the Applicant’s applied-for wares are not restricted to “exclusively gluten-free dry pasta”. In other words, nothing would prevent the Applicant from manufacturing and selling in the future other pasta wares falling under the category of wares “pasta” contemplated by its application.
[41] It is worth noting on this point that both the Applicant’s and the Opponent’s evidence apparently purport to evidence that the Applicant is already manufacturing and selling other food products under the Mark, such as muffin mix, waffle mix, pancake mix, pizza shells, etc. [See the excerpts printed from the Applicant’s website www.comensolifoods.com attached as Exhibit PMT-8 to the Tremblay affidavit; and Ms. Jiew’s bald and unsubstantiated statement made upon information and belief that “the Applicant is an enterprise based in […] British Columbia that specializes in the manufacture and sale of specialty gluten-free foods, including but not limited to muffins, muffin mix, pancake waffle mix, pizza shells, breads, brownies, baking mixes, and pasta.”]
[42] Also, while the Applicant puts much emphasis on the fact that its pasta wares are gluten-free and intended for “the gluten-free food community who may suffer from celiac disease or are gluten sensitive or intolerant”, this does not serve to distinguish the applied-for wares “pasta” from those of the Opponent. Again, the Applicant’s statement of wares contains no such limitation. The same holds true for the Opponent’s wares that could happen to be gluten-free. The mere fact that Ms. Jiew indicates in her affidavit that she reviewed the Opponent’s website and that none of its products “appear to be gluten-free or tailored to the gluten-free community” does not necessarily lead to the conclusion that none of the Opponent’s products are gluten-free or could be gluten-free in the future. Furthermore, the Applicant’s evidence on this gluten-free niche market is far from being convincing.
[43] Indeed, Ms. Jiew’s testimony is based for the most part, on information and belief, and constitutes, as such, hearsay. As indicated above, Ms. Jiew works as a legal assistant with the firm representing the Applicant. She briefly describes the Applicant’s business upon information and belief, without referring to any supporting exhibits. Ms. Jiew then files a series of articles printed from the Internet purporting to describe celiac disease and gluten sensitivity. However, none of these printouts establish the truth of their content. Ms. Jiew goes on and attaches under Exhibit VJ-8 a photograph of a “Real Canadian Superstore” market located in British Columbia that she visited on or about January 21, 2012. The photograph purports to show the gluten-free section of the store. However, the fact that this section is separate and distinct from the rest of the store and purports to contain only gluten-free products does not necessarily imply that no gluten-free product can be found elsewhere in the store. More importantly, Ms. Jiew’s testimony on that point rather illustrates that the parties’ wares could be sold through the same or similar channels of trade, namely grocery stores, and as such be directed to the same clientele.
[44] To sum up, I find that the overall consideration of the nature of the parties’ wares and/or services and their corresponding trades favours the Opponent owing to the overlap existing between same.
The degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[45] As noted by the Supreme Court in Masterpiece, above, at paragraph 49, “the degree of resemblance, although the last factor listed in [section] 6(5) [of the Act], is the statutory factor that is often likely to have the greatest effect on the confusion analysis […] if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion”.
[46] Moreover, as previously mentioned, it is well-established in the case law that likelihood of confusion is a matter of first impression and imperfect recollection. In this regard, “[w]hile the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public’s perception of it” [see Pink Panther Beauty Corp v United Artists Corp (1998), 80 CPR (3d) 247 (FCA), at para 34]. The preferable approach is to first consider whether any aspect of the trade-mark is particularly striking or unique [see Masterpiece, above, at paragraph 64].
[47] Applying those principles to this case, I agree with the Applicant that there are significant differences between the parties’ marks and that it is easy to distinguish them. The parties’ marks are different words spelled completely differently from one another.
[48] As noted earlier, the word COMENSOLI that constitutes the dominant element of the Mark has no specific meaning in the English or French languages. The Mark as a whole possesses an Italian connotation, especially when viewed owing to the inclusion of the colors of the Italian flag, red, white and green in the Mark. The word COMENSOLI is a four-syllable word pronounced with the stress or accent on the penultimate syllable.
[49] In contrast, and as noted earlier, the Opponent’s trade-mark consists of the French word COMMENSAL that describes the idea of people dining together at the same table. It is a three-syllable word pronounced with the stress or accent on the last syllable.
[50] To sum up, the overall consideration of this fifth factor favours the Applicant.
Conclusion regarding the likelihood of confusion
[51] As noted by the Federal Court of Appeal in Dion Neckwear, above, at page 163, the Registrar “need not be satisfied beyond doubt that confusion is unlikely. Should the ‘beyond doubt’ standard be applied, applicants would, in most cases, face an insurmountable burden because certainty in matters of likelihood of confusion is a rare commodity. At best, it is only where the probabilities are equal that a form of doubt may be said to arise, which is to be resolved in favour of the opponent. But the concept of doubt is a treacherous and confusing one in civil proceedings and a Registrar should avoid resorting to it.” [See also John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FC)]
[52] Given my analysis above, I find that the Applicant has established, according to the balance of probabilities, that a consumer having an imperfect recollection of the Opponent’s trade-mark COMMENSAL would be unlikely to conclude that the Applicant’s wares originate from the same source or are otherwise related or associated with the Opponent’s wares and services.
[53] Indeed, I find that the differences existing between the parties’ marks are, in this case, determinant in themselves and more than sufficient to outweigh the factors favouring the Opponent.
[54] The section 12(1)(d) ground of opposition is accordingly dismissed insofar as it is based on registration No. 737834. In addition, as registration No. 737834 presented the Opponent’s strongest case, the Opponent necessarily also does not succeed under section 12(1)(d) based on either of the other pleaded registrations.
The non-entitlement ground of opposition
[55] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark in view of the fact that:
- pursuant to section 16(3)(a) of the Act, at the date of filing of the application, the Mark was confusing with the COMMENSAL Marks, which had been previously used in Canada by the Opponent;
- pursuant to section 16(3)(b) of the Act, at the date of filing of the application, the Mark was confusing with the trade-mark COMMENSAL VÉGÉ CUISINE, in respect of which an application for registration had been previously filed in Canada by the Opponent; and
- pursuant to sections 16(3)(c) of the Act, at the date of filing of the application, the Mark was confusing with the trade-names COMMENSAL, LE COMMENSAL, CORPORATION DE DÉVELOPPEMENT DU COMMENSAL, and CORPORATION DE DÉVELOPPEMENT DU COMMENSAL II, which had been previously used in Canada by the Opponent.
[56] I will assess these grounds in turn.
The section 16(3)(a) ground of opposition
[57] An opponent meets its evidentiary burden with respect to a section 16(3)(a) ground if it shows that as of the date of filing of the applicant’s application, its trade-mark had been previously used in Canada and had not been abandoned as of the date of advertisement of the applicant’s application [section 16(5) of the Act]. As per my review above of the Tremblay affidavit, the Opponent has met its evidentiary burden at least with respect to use of the word mark COMMENSAL in association with prepared dishes and vinaigrettes, as well as restaurant services.
[58] The difference in relevant dates does not substantially affect my analysis above under the section 12(1)(d) ground of opposition. Accordingly, the section 16(3)(a) ground of opposition is dismissed insofar as it is based on the COMMENSAL word mark.
[59] As the COMMENSAL word mark presented the Opponent’s strongest case, I find it is not necessary to determine whether the Opponent has met its evidentiary burden with respect to the other pleaded marks. Indeed, assuming the Opponent had met its evidentiary burden with respect to these other marks, the Opponent necessarily also does not succeed under section 16(3)(a) based on either of the other pleaded marks.
The section 16(3)(b) ground of opposition
[60] An opponent meets its evidentiary burden with respect to a section 16(3)(b) ground if it shows that its application was filed prior to the date of filing of the applicant’s application and was pending when the applicant’s application was advertised [section 16(4) of the Act]. As the Opponent’s COMMENSAL VÉGÉ CUISINE application was still pending when the Applicant’s application was advertised, the Opponent has satisfied its evidentiary burden in respect thereof. The fact that this application has since been abandoned by the Opponent is of no consequence.
[61] That said, a detailed analysis of the section 6(5) factors is not necessary in this case. Indeed, the differences existing between the Mark and the Opponent’s trade-mark COMMENSAL VÉGÉ CUISINE are even more pronounced than with respect to the Opponent’s word mark COMMENSAL, which presented the Opponent’s strongest case.
[62] Accordingly, the section 16(3)(b) ground of opposition is dismissed.
The section 16(3)(c) ground of opposition
[63] An opponent meets its evidentiary burden with respect to a section 16(3)(c) ground if it shows that as of the date of filing of the applicant’s application, its trade-name had been previously used in Canada and had not been abandoned as of the date of advertisement of the applicant’s application [section 16(5) of the Act]. While the Tremblay affidavit does establish use of the word mark COMMENSAL, it fails to establish use of that word as a trade-name. In fact, the Tremblay affidavit fails to evidence use of any of the trade-names pleaded by the Opponent in support of that ground of opposition. That being so, the Opponent has failed to satisfy its evidentiary burden. Accordingly, the section 16(3)(c) ground of opposition is dismissed.
The non-distinctiveness ground of opposition
[64] The Opponent has pleaded that the Mark is not distinctive within the meaning of section 2 of the Act in that it does not distinguish and is not adapted to distinguish the Applicant’s applied-for wares from the wares and services of the Opponent in view of what has been alleged in the preceding grounds of opposition.
[65] An opponent meets its evidential burden with respect to a distinctiveness ground if it shows that as of the filing of the opposition its trade-mark had become known to some extent at least to negate the distinctiveness of the applied-for mark [see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D)]. As per my review above of the Tremblay affidavit, the Opponent has met its evidentiary burden at least with respect to use of the word mark COMMENSAL in association with prepared dishes and vinaigrettes, as well as restaurant services.
[66] The difference in relevant dates does not substantially affect my analysis above under the section 12(1)(d) ground of opposition. Accordingly, the non-distinctiveness ground of opposition is dismissed insofar as it is based on the COMMENSAL word mark.
[67] As the COMMENSAL word mark presented the Opponent’s strongest case, I find it is not necessary to determine whether the Opponent has met its evidentiary burden with respect to the other pleaded marks. Indeed, assuming the Opponent had met its evidentiary burden with respect to these other marks, the Opponent necessarily also does not succeed under section 2 based on either of the other pleaded marks.
The section 30 grounds of opposition
[68] The Opponent has pleaded various grounds of opposition under section 30 of the Act, namely that:
- the application does not conform to the requirements of section 30(e) of the Act in that the Applicant had already commenced using the Mark prior to the filing date of the application;
- the application does not conform to the requirements of sections 30(e) and (h) of the Act in that the trade-mark that the Applicant intends to use differs from the Mark;
- alternatively or cumulatively, the application does not conform to the requirements of section 30(e) of the Act in that the Applicant never intended to use the Mark in Canada in association with the applied-for wares; and
- the application does not conform to the requirements of section 30(i) of the Act in that at the filing date of the application, the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the applied-for wares in view of the Applicant unfairly competing with the Opponent by expressly and intentionally creating confusion with the COMMENSAL Marks of the Opponent, the whole contrary to sections 7(b) and 22 of the Act.
[69] Each of these grounds can be summarily dismissed as follows:
The sections 30(e) and (h) grounds of opposition
[70] The Opponent has failed to satisfy its initial evidentiary burden to put into issue the correctness of the claims set forth in the Applicant’s proposed use application. There is no evidence indicating that the Applicant did not comply with section 30(e) of the Act at the filing date of the application. The application further complies with section 30(h) of the Act in that at the filing date of the application, the Applicant provided a copy of the drawing of the Mark concurrently with the application.
The section 30(i) ground of opposition
[71] This ground, as pleaded, revolves around the likelihood of confusion between each of the COMMENSAL Marks and the Mark. I find it is unnecessary to determine whether or not the Opponent’s section 30(i) ground, as pleaded, raises a proper ground of opposition or, if the Opponent has satisfied its initial evidentiary burden with respect thereto. Indeed, even if it is found that the ground of opposition is properly pleaded and that the Opponent has satisfied its evidentiary burden, such ground ought to be dismissed since my findings made above under the non-registrability, non-entitlement, and non-distinctiveness grounds of opposition concerning the absence of likelihood of confusion remain applicable as of the filing date the application.
Disposition
[72] In view of the foregoing and pursuant to the authority delegated to me under
section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Annie Robitaille
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
Schedule
|
Trade-mark |
Registration or application No. |
Wares/Services Claims |
|
COLOR CLAIM : Le mot COMMENSAL est écrit en blanc sur fond vert foncé avec un contour blanc et contour additionnel vert foncé, avec un lettrage vert foncé sur fond blanc se terminant avec un contour vert foncé. Les couleurs décrites sont aussi revendiquées comme caractéristiques de la marque de commerce
DISCLAIMER : The right to the exclusive use of the words NATURELLEMENT, NATURALLY, BON et GOOD is disclaimed apart from the trade-mark. |
552036 |
WARES : (1) Boissons non alcoolisées, nommément […]; produits alimentaires, nommément salades de légumes, oeufs, pâté végétal, algues, olives, fromage, trempettes au fromage, trempettes aux légumes, taboule, aspic aux tomates, luzerne, mayonnaise, pizza, tacos, gelée de légumes, quiches, feuilletés aux légumes, soupes, tourtière de légumes, pâtes alimentaires, sauces, légumes, tofu, seitan, purée de légumes; grains, couscous, fèves, pois chiches, riz, millet, semoule, yogourt, salade de fruits, purée de fruits, tofu glacé, pâtisseries, biscuits, gâteaux, pain, tartes, compotes, carrés: aux dattes, au caroube, au chocolat, au sucre à la crème, croissants, muffins, brioches, fruits, crème fouettée, dattes, noix, burritos, nachos, tacos, vinaigrettes, graisse de rôti (végétale), humus, gélatine aux tomates, croque-monsieur, moussaka, lasagne; lentilles, orge, ragoûts, chili, germination, pâté, tartinades, salades variées, plats de légumineuses.
SERVICES : (1) Exploitation de restaurants, service de traiteur, exploitation de boutiques pour la vente, la distribution et la fabrication de produits alimentaires. Vente à des distributeurs, à des commerces de détail, à des institutions publiques et privées des marchandises décrites à l'article 4.
CLAIM : Declaration of use filed on September 28, 2001. |
|
|
737835 |
WARES : (1) Food energy bars, meal-replacement bars, snack food bars consisting of […]; frozen, prepared and packaged meals and entrees consisting primarily of pasta, rice, meat, fish, poultry or vegetables; food products, namely vegetable salads, eggs, algae, olives, cheese, snack food dips, vegetable and fruit-based spreads, taboule, alfalfa, mayonnaise, pizza, vegetable jelly, quiches, vegetable puff pastries, soups, vegetable pies, pastas; sauces, namely apple sauce, cheese sauce, chocolate sauce, gravy sauce, hot sauce, soy sauce, pizza sauce, spaghetti sauce, tartar sauce, tomato sauce, marinara sauce and vinaigrettes; vegetables, tofu, seitan, vegetable puree; processed grains, couscous, beans, chickpeas, lentils, rice, millet, semolina, yogurt, fruit salad, fruit puree, tofu; pastries, cookies, cakes, bread, pies, compotes, carob squares, chocolate, fudge squares, date squares, croissants, muffins, brioches, fruits, whipped cream, dates, edible nuts, burritos, nachos, tacos, roast fat (vegetable), hummus, tomato gelatin, moussaka, lasagna; lentils, barley, stews, chili, pasta salads, sandwiches. Non-alcoholic drinks, namely […].
SERVICES : (1) Operation of restaurants, catering services, operation of retail sales food shops, distribution and manufacture of food products; Operation of food counters selling vegetarian meals for take-out or to eat on the spot.
CLAIM : Used in Canada since at least as early as January 2008. |
|
COMMENSAL |
737834 |
Idem registration No. 737835 |
|
LE COMMENSAL |
352949 |
WARES & SERVICES : Almost identical to the ones covered by registration No. 552036.
CLAIM : Used in Canada since at least as early as August 15, 1979. |
|
COMMENSAL VÉGÉ CUISINE |
1371242 |
WARES & SERVICES : Almost identical to the ones covered by registration No. 737835.
CLAIM : Proposed use in CANADA. |