LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 96
Date of Decision: 2012-05-03
IN THE MATTER OF AN OPPOSITION by MM Meyer Markenverwaltung & Co to application No. 1,382,666 for the trade-mark TCHO in the name of Tcho Ventures, Inc.
[1] On February 8, 2008, Tcho Ventures, Inc. (the Applicant) filed an application to register the trade-mark TCHO (the Mark) based on proposed use of the Mark in Canada, claiming a convention priority filing date of October 18, 2007. The application was advertised for opposition purposes in the Trade-marks Journal of March 11, 2009.
[2] On May 11, 2009, MM Meyer Markenverwaltung & Co (the Opponent) filed a statement of opposition against the application. The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
[3] In support of its opposition, the Opponent filed an affidavit of Nick Mattiace, the Brand Manager of Husky Food Importers & Distributors Ltd., which is the exclusive importer and distributor of TCHIBO branded products in Canada. In support of its application, the Applicant filed an affidavit of Lindsay E. Lanthier, an administrative assistant employed by the Applicant’s agent. No cross-examinations were conducted.
[4] Both parties filed a written argument. An oral hearing was not held.
Onus
[5] 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 CPR. (3d) 293 (FCTD) at 298].
Preliminary Comment re Admissibility of Certain Evidence
[6] The Opponent has submitted that the contents of Exhibit C to the Lanthier affidavit are inadmissible hearsay. I agree. Exhibit C comprises pages that Ms. Lanthier printed from the Applicant’s website. These pages can at most be relied upon only as proof of the existence of the website pages, not as proof of the truth of their contents [see Kocsis Transport Ltd v. “K” Line America Inc, 2008 TMOB 37].
Section 12(1)(d) Ground of Opposition
[7] The Opponent has pleaded that the Mark is not registrable pursuant to section 12(1)(d) of the Trade-marks Act, RSC 1985, c T-13 (the Act) as it is confusing with the trade-mark TCHIBO registered by the Opponent under No. TMA273,122 for coffee.
[8] The material date for assessing confusion under this ground of opposition is the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)]. The Opponent has met its initial burden with respect to this ground because the pleaded registration is extant.
[9] Section 6(2) of the Act indicates that 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. The test for confusion is one of first impression and imperfect recollection.
[10] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in 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 each has 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. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC).]
inherent distinctiveness of the marks
[11] Both marks are inherently distinctive since they consist of unusual strings of letters, with no obvious meaning. The Opponent has evidenced that its mark was created from the first four letters of one of its founder’s surname (Carl Tchiling) and the first two letters of the German word for beans (“bohnen”), while the Applicant submits that its mark is the phonetic equivalent of the first three letters of the word “chocolate”. However, I see no reason to accept that the average purchaser/consumer would be aware of the derivations of TCHIBO and TCHO, in the absence of being so informed.
[12] A consideration of the inherent distinctiveness of the marks does not favour either party.
the extent to which each mark has become known
[13] A mark’s distinctiveness can be enhanced through use and promotion and I will therefore now summarize the evidence regarding use and promotion.
[14] The Applicant has not provided any evidence that its Mark has been used or promoted in Canada to date.
[15] In contrast, the Opponent has evidenced that its mark has been used in Canada since at least 1981. It has provided Canadian wholesale figures for each of the years 1996 through September 2009, which total in excess of ten million dollars. Mr. Mattiace has attested that TCHIBO coffee has been advertised in Canada by means of print advertising, radio, television, outdoor billboards, sponsorships, and cooperative advertising, and that the amount expended on advertising TCHIBO coffee in Canada since 1995 has been approximately four million dollars. As Exhibits G through L, he provides “reproductions of advertisements of TCHIBO brand products which have been advertised in Canada at various events such as at the Good Food Festival, the Wine and Cheese Show (2004) , the National Woman’s Show (2004) all held in Toronto”. Exhibit M provides copies of outdoor billboard advertising. Exhibit N is a CD containing representative television and radio specimens of advertisements. Exhibit O is copies of print advertisements and articles. Exhibit S is “a copy of a document containing information on the advertising of TCHIBO coffee on CHUM T.V.” Mr. Mattiace attests that in the period from March 15, 2004 to April 30, 2004, $80,250 was expended with respect to television promotion of the TCHIBO brand product.
[16] Clearly the extent to which the marks have become known favours the Opponent.
the length of time the marks have been in use
[17] This factor also favours the Opponent.
the nature of the wares, services, business and trade
[18] When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties’ trade-mark application and registration that govern in respect of the issue of confusion arising under section 12(1)(d) [see Mr. Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); Miss Universe, Inc v Dale Bohna (1984), 58 CPR (3d) 381 (FCA)].
[19] The statement of wares and services in the Applicant’s application currently reads:
wares:
(1) cocoa products, namely baking chocolate, cocoa mixes; cocoa powder, and
chocolate bars; powdered chocolate and vanilla; flavoring syrups to add to
alcoholic and non-alcoholic beverages; chocolate food beverages not being
dairy-based or vegetable based; hot chocolate; alcoholic and non-alcoholic
cocoa beverages with milk; prepared cocoa and cocoa-based alcoholic and
non-alcoholic beverages; preparations for making chocolate or cocoa based
drinks, namely, liquid and powdered hot chocolate mix and liquid and powdered
hot cocoa mix; chocolate and candy, namely, chocolates, chocolate bars,
chocolate-covered coffee beans, chocolate truffles, chocolate-covered fruits,
chocolate-covered nuts, chocolate-covered dried fruits, chocolate-covered
crackers and chocolate toppings; chocolate ganache; chocolate sauce; chocolate
topping; coffee; ground coffee; coffee beans; prepared coffee and coffee-based
alcoholic and non-alcoholic beverages; prepared espresso and espresso-based
alcoholic and non-alcoholic beverages; liqueurs.
services:
(1) retail store services, mail order catalog services, and internet catalog
services, all featuring chocolates, confections, baked goods, coffee, cutlery,
kitchen gadgets, kitchen appliances, kitchen utensils, tableware, glassware,
barware, books, pre-recorded music, and clothing; cafés.
[20] There is a direct overlap between the parties’ wares insofar as coffee and coffee-based beverages are concerned. In addition, the remaining wares of the Applicant are related to the Opponent’s coffee to the extent that all of the Applicant’s wares are food or beverages. The Applicant’s services are also related to the Opponent’s wares in that the Applicant’s services all relate in some way to coffee.
[21] Mr. Mattiace attests that TCHIBO coffee is sold in all provinces in Canada through various retail outlets such as grocery stores and independently owned food stores. Retailers include Loblaws, Metro, Sobeys, Calgary Coop, No Frills, Real Canadian Superstore, Zehrs, Overwaitea and Urban Fare. Historically, TCHIBO coffee was first sold by mail order in Germany. It has been sold over the Internet since 1997, but there is no evidence that it is available in Canada through the Internet. In Europe, the Opponent operates about 1300 coffee bars where TCHIBO coffee is sold (as well as hot chocolate and teas), but there is no evidence of such coffee bars in Canada.
[22] There is no evidence regarding the Applicant’s channels of trade but it is reasonable to accept that the Applicant’s wares could be sold in the grocery and food stores that sell the Opponent’s wares.
degree of resemblance between the marks
[23] It is a well accepted principle that the first portion of a trade-mark is the most relevant for the purposes of distinction and both marks begin with TCH [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD) at 188]. It is not clear to me how exactly either mark would be pronounced. No specific idea seems to be suggested by either mark, although perhaps both TCHIBO and TCHO, not being English or French words, suggest exoticness.
[24] The Applicant has pointed out the differences between the marks, such as in the number of syllables, but I find that overall there is a fairly high degree of resemblance between the marks.
other surrounding circumstances
[25] I note that there is no evidence that others use similar marks, or even marks that begin with TCH.
[26] Mr. Mattiace has evidenced that TCHIBO chocolate bars and sticks were sold in Canada in 2005-2006. The Applicant has submitted that such use has since been abandoned. Presumably such sales have not continued and there is no reason to assume that the Opponent has any current reputation in Canada in association with chocolate bars/sticks. However, the evidence is of some interest to the extent that it shows that a party who sells coffee might sell chocolate bars under the same brand.
[27] Ms. Lanthier has provided a certified English translation of a decision of the Swiss Trademark Office with respect to an opposition filed by the Opponent against the Applicant’s extension of protection of its international registration for TCHO to the territory of Switzerland. Of course, foreign decisions are not binding on this Board, but they may be persuasive in some circumstances. In the present case, I find that the Swiss decision does not assist the Applicant. A quick review of the decision makes it clear that there are significant differences between the law applied there and that applied in Canada, for example the discussion entitled “comparison of the marks” sets out approaches that differ from ours.
conclusion re section 12(1)(d) ground
[28] Having considered all the surrounding circumstances, I find that the Applicant has not met its legal burden. The Opponent has a unique mark that it has used and promoted to a substantial degree in Canada for a number of years. The Applicant’s Mark resembles the Opponent’s mark to a fair degree. The Applicant has not established any reputation in association with its Mark but proposes to use it in fields that overlap with or are related to the field in which the Opponent’s mark has been established. The issue is whether a consumer who has a general and not precise recollection of the Opponent’s mark, will, upon seeing the Applicant’s Mark, be likely to think that the wares/services share a common source. I cannot answer that question in the negative. The fact that both parties’ marks are related to the food/beverage industry plus the fact that there is no evidence that anyone else uses the prefix TCH in that field supports a conclusion that confusion as to source is reasonably likely.
[29] The section 12(1)(d) ground of opposition therefore succeeds.
Distinctiveness Ground of Opposition
[30] The Opponent has pleaded that the Mark is not distinctive because it does not, and cannot, actually distinguish the wares and services of the Applicant from the wares of the Opponent. The material date for assessing distinctiveness is the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].
[31] In respect of this ground of opposition, the Opponent has the initial evidential burden to prove that its trade-mark had become sufficiently known as of May 11, 2009 to negate the distinctiveness of the Mark [Motel 6, Inc v No. 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD) and Bojangles’ International LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC)]. Once this burden is met, the Applicant has a legal onus to show, on a balance of probabilities, that the Mark was not likely to create confusion with the Opponent’s trade-mark [Muffin Houses Incorporated v The Muffin House Bakery Ltd (1985), 4 CPR (3d) 272 (TMOB)].
[32] The Opponent’s evidence satisfies its initial burden. In the circumstances of this case, nothing turns on the date at which the issue of confusion is determined. Therefore, for reasons similar to those set out under my discussion of the section 12(1)(d) ground of opposition, I find that the Applicant has not satisfied its legal burden.
[33] Accordingly, the distinctiveness ground of opposition is also successful.
Disposition
[34] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.
______________________________
Jill W. Bradbury
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office