IN THE MATTER OF AN OPPOSITION by Ajinomoto Co., Inc. to application No. 1277162 for the trade-mark UMAMI filed by Blissful Centany International Limited____________ ___ _
[1] On October 26, 2005, Blissful Centany International Limited (the “Applicant”) filed an application to register the trade-mark UMAMI based upon proposed use. The statement of wares currently reads:
cooking spices, flavoring spices, powdered coffee, tea, cocoa, sugar, rice, substitute coffee, bread flour, consumption ice, yeast, baking powder, spices, powder for making bread, salt, mustard, pepper, vinegar, sauce, spicy sauce, aroma for cake, tapioca, sago, cake, soy bean sauce, fermented bean paste, fermented shrimp or small fish, chips made of flour flavoured with fish or shrimp, chips made from the fruit of belinjo, rice flour, glutinous rice flour, cornmeal flour, transparent bean flour vermicelli, thin rice noodles, noodles, instant noodles, egg noodles, gelatin made from mung bean flour, corn flour, flour for frying chicken and fish, candy, cookies, taffy made of sticky rice with coconut milk and palm sugar, deep-fried, boiled or steamed cake, honey, vanilla, biscuit, small rice and egg noodles.
[2] The application was advertised for opposition purposes in the Trade-marks Journal of October 25, 2006.
[3] On December 27, 2006, Ajinomoto Co., Inc. (the “Opponent”) filed a statement of opposition. The Opponent has pleaded grounds of opposition under s. 38(2)(b) and (d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”).
[4] The Applicant filed and served a counter statement in which it denied the Opponent’s allegations. It also submitted that sufficient factual matters had not been set out in support of some of the grounds. However, in the absence of a request for an interlocutory ruling prior to the filing of evidence, the pleadings are to be read in conjunction with the evidence [see Novopharm Ltd. v. AstraZeneca AB et al. (2002), 21 C.P.R. (4th) 289 (F.C.A.); Novopharm Ltd. v. Ciba-Geigy Canada Ltd.; Novopharm Ltd. v. Astra Aktiebolag (2001), 15 C.P.R. (4th) 327 (F.C.A.)].
[5] In support of its opposition, the Opponent filed the affidavit of George Chan. The Applicant did not seek to cross-examine Mr. Chan and elected not to file any evidence in support of its application.
[6] Only the Opponent filed a written argument. An oral hearing was not requested.
Onus
[7] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential 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 (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298].
Section 38(2)(b)/Section 12(1)(b) Ground of Opposition
[8] The Opponent has pleaded that the Mark is not registrable because “‘umami’ is one of the five basic tastes sensed by specialized receptor cells present on the human tongue”, which makes UMAMI either clearly descriptive or deceptively misdescriptive in the English language of the character of the wares in association with which the Mark is proposed to be used.
[9] The material date with respect to s. 12(1)(b) is the date of filing of the application [Havana Club Holdings S. A. v. Bacardi & Company Limited (2004), 35 C.P.R. (4th) 541 (T.M.O.B.); Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)].
[10] The issue as to whether the Applicant’s Mark is clearly descriptive must be considered from the point of view of the average purchaser of those wares. Furthermore, the Mark must not be dissected into its component elements and carefully analyzed but 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 (F.C.T.D.) at 27-8; Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183 (F.C.T.D.) at 186]. Character means a feature, trait or characteristic of the product and “clearly” means “easy to understand, self-evident or plain” [Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 (Ex. Ct.) at 34].
[11] The evidence in support of this ground of opposition is from George Chan, an articling student employed by the Opponent’s agents. His affidavit consists of 1) copies of pages obtained from the Internet pursuant to a Google search conducted on April 17, 2007, 2) copies of various articles that he located at the Main Branch of the Ottawa Public Library on April 20, 2007 and 3) “copies of additional printed publications and printouts from web sites that discuss the significance of UMAMI.” Despite the dates of the searches, various materials provided by Mr. Chan predate the filing of the present application.
[12] In addition, in its written argument the Opponent has provided various dictionary definitions for “umami”. These were not introduced by Mr. Chan but I am entitled to take judicial notice of dictionary definitions, including those on the Internet. [Aladdin Industries, Inc. v. Canadian Thermos Products Ltd. (1969), 57 C.P.R. 230 (Ex. Ct.), affirmed (1974), 6 C.P.R. (2d) 1 (S.C.C.); Envirodrive Inc. v. 836442 Canada Inc. 2005 ABQB 446]
[13] I am satisfied, based on the foregoing evidence, that the word “umami” was clearly descriptive or deceptively misdescriptive of the character or quality of the applied for wares at the date of filing of the application. The 2003 edition of the Oxford Dictionary sums up the evidence well with its statement that “umami” is “a category of taste in foods (beside sweet, sour, salt and bitter)”. Just as “sweet” would be unregistrable for food under s. 12(1)(b), “umami” should be unregistrable.
[14] The first ground of opposition therefore succeeds.
Section 38(2)(d)/Non-distinctiveness Ground of Opposition
[15] The Opponent has pleaded that the Mark is not distinctive because 1) it is clearly descriptive or deceptively misdescriptive and 2) it has been used by third parties in association with food.
[16] The material date for assessing distinctiveness is the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
[17] As stated by Mr. Justice O'Keefe in Canadian Council of Professional Engineers v. APA - The Engineered Wood Association (2000), 7 C.P.R. (4th) 239 (F.C.T.D.) at 253, "a purely descriptive or a deceptively misdescriptive trade-mark is necessarily not distinctive”. Thus, having found that the Mark is unregistrable under s. 12(1)(b), I necessarily also find that it is not distinctive.
[18] The second ground of opposition accordingly also succeeds.
Disposition
[19] 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 26th DAY OF JUNE 2009.
Jill W. Bradbury
Member
Trade-marks Opposition Board