IN THE MATTER OF AN OPPOSITION
by Interprovincial Cooperative Limited
to application No. 536,739
for the mark COFFEE DELIGHT
standing in the name of Wayne S.J. Habbib
(successor in title to Wayne S.J. Habbib and Oliver Cumberbatch doing business as Coffee Delight)
On February 18, 1985, the original applicant namely, Wayne S.J. Habbib and Oliver Cumberbatch doing business as Coffee Delight, filed an application to register the mark COFFEE DELIGHT based on use of the mark in Canada since at least as early as February, 1982. The application was subsequently amended, first on July 19, 1985 to disclaim the right to the exclusive use of the word COFFEE, and again on February 3, 1987 to specify the services as follows:
"catering services, namely, the services of
supplying coffee-making equipment,
tea-making equipment, prepackaged coffee
and tea, sugar, cups, and stirrers."
The above mentioned amendments in July, 1985 and in February, 1987 were effected in the name of the original applicant namely, Wayne S.J. Habbib and Oliver Cumberbatch doing business as Coffee Delight.
The subject application was advertised for opposition purposes on August 31, 1988 and opposed by Interprovincial Cooperative Limited ("IPCO") on September 28, 1988. A revised statement of opposition was filed on November 10, 1988 to identify the opponent's agents. The grounds of opposition are summarized below:
(1) the application is not in compliance with Section 30 of the Trade-marks Act because
(a) the applicant did not use the mark COFFEE DELIGHT since as early as February 1982,
(b) the applicant could not have been satisfied that it was entitled to use the mark having regard to the opponent's prior use of the mark COFFEE DELIGHT for a coffee creamer,
(2) the applicant is not the person entitled to register the applied for mark, pursuant to subsection 16(1), because at the date of alleged first use of the mark it was confusing with
(a) the opponent's mark COFFEE DELIGHT previously used in Canada, (b) the "opponent's trade mark COFFEE DELIGHT in respect of which an application had been previously filed for a coffee or tea creamer under Serial No. 608,862,"
(3) the applied for mark is not distinctive of the applicant's services because
(a) it is confusing with the opponent's mark COFFEE DELIGHT previously used and promoted in Canada,
(b) the applicant did not use the mark COFFEE DELIGHT for the purposes of distinguishing its services.
The applicant served and filed a counter statement (on December 29, 1988) generally denying the allegations in the statement of opposition.
The opponent requested leave to amend its statement of opposition to include an allegation that the applied for mark is not distinctive because of use of the mark by a licensee who was not a registered user; however, the opponent's request was denied: see the Office letters dated March 18 and July 9, 1991. In any event, the proposed amendment, as pleaded, no longer supports a ground of opposition in view of the repeal of the registered user provisions of the Act and its replacement with provisions permitting controlled licensing.
On September 24, 1990, the Office recorded Wayne S.J. Habbib as the owner of the subject application, effective as of May 1, 1985, on the basis of a confirmatory assignment document, dated April 5, 1990, executed by the original applicant in favour of Mr. Habbib. In recording Mr. Habbib as the owner of record, the Office did not question the discrepancy between his ownership of the mark since May, 1985 and the above mentioned amendments to the application effected after May, 1985 in the name of the original applicant.
The opponent's evidence consists of the affidavits of Don Ludgate and Kevin Krug, employees of the opponent company IPCO, of G. Raymond Ingram, Executive Vice-President of Sandra Tea & Coffee Limited and of Generosa Castiglione, occupation unknown. Messrs. Ludgate, Krug, and Ingram were cross-examined on their affidavits and the transcripts of their cross-examinations, and exhibits thereto, form part of the evidence in this proceeding. The Castiglione affidavit merely serves to introduce into evidence copies of extracts taken from Office files concerning the subject application, as well as from application file Nos. 549,016; 608,862. I note that the Castiglione affidavit of record was executed by the affiant but that the jurat stating where, when, and before whom the affidavit was sworn has been left blank. It appears, however, that the applicant received a copy of duly sworn version dated June 27, 1989. I also note that the exhibits to the Castiglione have been duly identified and have been signed by a commissioner for taking oaths. In the circumstances, I have had regard to the exhibit material attached to the Castiglione affidavit.
The applicant's evidence consists of the affidavit of Wayne S.J. Habbib. Mr. Habbib was not cross-examined on his affidavit.
Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
Mr. Habbib's affidavit evidence, sworn September 11, 1990 is as follows. He is the owner of the subject mark, and President of 674834 Ontario Limited ("the Corporation"). From February, 1982 to May 1, 1985, Mr. Habbib was a general partner in a partnership that traded as COFFEE DELIGHT, that is, the original applicant. From May 1, 1985 to July 15, 1986, Mr. Habbib carried on business as a sole proprietor under the name COFFEE DELIGHT. Attached as exhibit A to his affidavit is a copy of the confirmatory assignment document referred to earlier. I am satisfied that the document in its terms confirms an assignment of the subject mark effective as of May 1, 1985. On July 15, 1986, a licence to use the mark was granted to the Corporation. That licence was subsequently recorded in a registered user application, a copy of which is attached as exhibit B to Mr. Habbib's affidavit. I am satisfied that the licence in its terms gives Mr. Habbib direct or indirect control of the quality of the services as required by subsection 50(1) of the Act.
The applicant provides tea and coffee catering services (as well as supplying juices, soft drinks, soups, cookies, and hot chocolate) to businesses and firms who provide coffee and other beverages to their own staff. The applicant delivers bulk quantities of prepackaged coffee, tea, sugar, stirrers and cups, together with related equipment, as well as beverage vending machines. The above mentioned supplies bear other companies trade-marks, for example, CARNATION, NEILSON, RED ROSE, LANTIC, DEL MONTE, LIPTON and others: see paragraph 5 of Mr. Habbib's affidavit and exhibit E thereto. It appears that at least some of the prepackaged coffee and sugar supplied by the applicant are double marked, that is, with the manufacturer's mark as well as with a design version (or, arguably, a fanciful script version) of the subject mark COFFEE DELIGHT: see exhibit L. The applied for mark COFFEE DELIGHT appears, inter alia, on the applicant's business cards, stationery, employee uniforms, promotional material, invoices, and on vehicles used for deliveries to customers. Sales under the subject mark were $5,000 in the first year of operation (1982), steadily increasing to about $1 million for the period July 1989 - June 1990. Advertising expenditures were about 8 percent of sales and in the three year period from July 1987 - June 1990 totalled about $200,000.
The opponent's affidavit evidence with respect to its business is somewhat sketchy, however, Mr. Krug's and Mr. Ludgate's transcripts of cross-examination fill in many of the details. I have doubts as to the reliability of Mr. Ingram's affidavit evidence where it appears from his cross-examination that he was relying on information provided by third parties. I have therefore not placed much reliance on Mr. Ingram's affidavit evidence other than for the purpose of identifying packaging showing the manner of use of the opponent's mark COFFEE DELIGHT. I am however satisfied that Mr. Ludgate's and Mr. Krug's affidavit evidence is reliable, even though their affidavits were prepared for them by third parties. In this regard, Mr. Krug and Mr. Ludgate have on cross-examination or on re-direct affirmed from their own personal knowledge the accuracy of the statements in their affidavits and the authenticity of the exhibit material attached thereto.
The opponent IPCO is a Canadian co-operative owned by a number of co-operative wholesales and wheat pools. Among the member organizations are Federated Cooperatives Limited ("Federated"), Cooperatives Federee de Quebec, Manitoba Wheat Pool, Alberta Wheat Pool, Saskatchewan Wheat Pool, United Cooperatives of Ontario, and Co-op Atlantic ("Atlantic"). Among other activities, IPCO coordinates many of the purchases for its member-owners.
IPCO's member organizations in turn have their own member-owners. There are about three hundred and thirty conventional retailing operations in western Canada who are such member-owners.
As mentioned above, IPCO operates as a buying operation to procure products for its members. In about 1970 IPCO was requested to procure a coffee creamer. IPCO then became responsible for locating a supplier, for pricing the product and for setting the quality level that the supplier would have to meet. IPCO operates its own laboratory to ensure that suppliers maintain quality levels. Federated and Atlantic place orders for the opponent's coffee creamer directly with the supplier namely, Sandra Tea & Coffee Limited. The supplier invoices, and is paid by, Federated and Atlantic. Federated and Atlantic distribute the product to their member-owners.
All of the opponent's COFFEE DELIGHT creamer products are private-labelled, that is, the supplier Sandra Tea & Coffee Limited packages the product in containers displaying the opponent's mark. The opponent's mark COFFEE DELIGHT appears together with the opponent's mark "CO-OP", as shown below:
Invoices from Federated to its members refer to the product as "COOP COFFEE DELIGHT." The opponent's coffee creamer is sold only through member stores and not through other types of retail operations, such as national grocery chains.
The annual unit volumes (consisting of 6, 11, and 16 oz. jars) of sales of the opponent's coffee creamer sold under its mark COFFEE DELIGHT averaged about 208,000 units in the years 1978 and 1979. The average value of sales from Sandra Tea & Coffee Limited to Federated and Atlantic was about $375,000 per year for the years 1980-1895 inclusive, decreasing to about $225,000 per year for the years 1986-1988 inclusive.
With respect to the ground of opposition pursuant to 1(a) above, the opponent's argument, as I understand it, is that Mr. Habbib's affidavit testimony is equivocal as to whether Mr. Habbib, or the original applicant, or both, were using the applied for mark from the date of first use claimed in the subject application namely February, 1982. The opponent relies on the above mentioned amended applications filed on July 15, 1985 and on February 3, 1987 to support its submission that it is not clear who owned or used the mark between February, 1982 and May 1, 1985. The opponent also points to a statement of opposition filed on April 27, 1987, in the name of Mr. Habbib, against application serial No. 549,016 for the mark COFFEE-DELIGHT filed by Research Foods Limited. That statement of opposition relies on Mr. Habbib's use of the mark COFFEE DELIGHT but does not refer to either the original applicant herein or the Corporation. As mentioned earlier, Mr. Habbib's testimony in the present proceeding is that the Corporation was using the mark as of July 15, 1986. I will be making further reference to Mr. Habbib's opposition to application No. 549,016 later.
I recognize that Mr. Habbib's affidavit evidence is not as precise or as informative as it might be, and I also recognize that legitimate questions arise by virtue of Mr. Habbib's imprecision and by virtue of the Office file records evidenced by the applicant. However, there are no patent contradictions in Mr. Habbib's affidavit evidence. Further, the applicant chose not to cross-examine Mr. Habbib to obtain answers to those questions which it now raises concerning ownership and use of the applied for mark. I agree with the applicant's submission that, in the circumstances of this case, the opponent is attempting to impeach indirectly Mr. Habbib's credibility and that what the opponent should have done is to cross-examine Mr. Habbib to give him an opportunity to explain inconsistencies between his testimony and documents evidenced by the applicant. Although the opponent's evidential burden respecting non-compliance with subsection 30(b) is a light one (see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 at 297-300 (F.C.T.D.)), I am nevertheless not satisfied that the opponent has met that burden with respect to its allegation that the original applicant did not use or own the mark at the date of first use claimed in the subject application. The ground of opposition denoted by 1(a) above is therefore rejected.
The opponent's second ground of opposition (denoted by 1(b) above), as pleaded, does not raise sufficient allegations of fact to raise a ground of non-compliance with subsection 30(i) of the Act. Accordingly, the ground of opposition denoted by 1(b) above is rejected.
With respect to the ground of opposition denoted by 2(b) above, the opponent IPCO did not file evidence establishing the filing date of application No. 608,862. I have therefore exercised my discretion to inspect records in the Registrar's care (see Royal Appliance Mfg. Co. v. Iona Appliance Inc. (1990), 32 C.P.R.(3d) 525 at 529 (TMOB)) to determine that application No. 608,862 was filed on June 9, 1988. The ground of opposition denoted by 2(b) above is therefore rejected because the opponent has not met the statutory condition set out in subsection 16(1)(b), that is, IPCO's application was not filed prior to the date of first use of the subject mark namely, February 28, 1982.
With respect to the ground of opposition denoted by 2(a) above, the evidence filed by the opponent meets the statutory conditions set out in subsections 16(5) and 17(1), that is, IPCO has shown use of its mark COFFEE DELIGHT prior to the date of first use claimed by the applicant, and IPCO has shown non-abandonment of its mark COFFEE DELIGHT as of the date that the applied for mark was advertised for opposition purposes (on August 31, 1988). The relevant date to determine the issue of confusion pursuant to subsection 16(1)(a) is the date of first use claimed in the subject application, that is, February 28, 1982.
The legal burden is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2), between the applied for mark COFFEE DELIGHT for coffee and tea catering services and the opponent's mark COFFEE DELIGHT for a coffee creamer. The presence of a legal burden on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant: see Labatt, above. In determining whether there would be a reasonable likelihood of confusion, I am to have regard to all the surrounding circumstances, including those enumerated in subsection 6(5).
With respect to subsection 6(5)(a), the parties' marks possess little inherent distinctiveness. The mark COFFEE DELIGHT is highly suggestive of the applicant's catering services, although perhaps somewhat less so in relation to the opponent's wares namely, a coffee creamer. The marks also have a laudatory connotation, owing to the component DELIGHT, which further diminishes the inherent distinctiveness of the marks. The opponent's mark COFFEE DELIGHT would have acquired some reputation in Canada as a result of sales through the opponent's co-operative retail outlets during the period 1972 to the material date. The applied for mark would not have acquired any reputation at the material date.
With respect to subsection 6(5)(b), the length of time that the marks have been in use favours the opponent, its mark having been in use for about 10 years prior to the material date.
With respect to subsection 6(5)(c), the nature of the parties' wares and services overlap to the extent there is potential for the opponent's coffee creamer product to be purchased by the applicant and delivered by the applicant to its customers as part of the applicant's coffee and tea catering service.
With respect to subsection 6(5)(d), the nature of the parties' trades are quite distinct. The opponent sells its coffee creamer product through a restricted co-operative retail system, while the applicant supplies bulk quantities of various goods through its catering service. As for the degree of resemblance between the marks in issue, they are identical.
As a surrounding circumstance, I have taken into consideration that the opponent's mark COFFEE DELIGHT appears together with the mark CO-OP, and is sold only through co-operative member outlets. I infer from this, as well as from frequent references by Mr. Krug and Mr. Ludgate to "CO OP COFFEE DELIGHT" on cross-examination, that there would be a fairly significant identification between the opponent's mark COFFEE DELIGHT and the nature of the business concern that supplies the product namely, a co-operative retail outlet.
Although there has been significant concurrent use of the parties' marks after 1982, I have not given any weight to the absence of evidence of actual confusion in determining the likelihood of confusion because the evidence is not clear whether the parties provide their wares and services in the same geographical area(s).
Considering the above, and keeping in mind that the test for confusion is one of first impression and imperfect recollection, I find that there would not be a reasonable likelihood of confusion between the applied for mark COFFEE DELIGHT for coffee and tea catering services and the opponent's mark COFFEE DELIGHT for a coffee creamer. Accordingly, the ground of opposition pursuant to 2(a) above is rejected. The ground of opposition denoted by 3(a) is also rejected in view of my finding that the parties' marks are not confusing. With respect to the ground of opposition denoted by 3(b) above, the opponent has not made out its case that the applicant did not use the mark COFFEE DELIGHT for the purposes of distinguishing its services.
In view of the above, the opponent's opposition is rejected.
There is one further matter. The opponent pointed to Mr. Habbib's opposition to application No. 549,016, filed by Research Foods Limited, for the mark COFFEE-DELIGHT (with a hyphen) covering
"non-dairy powdered creamer for coffee or tea." One of the grounds of opposition therein is that, at the material date January, 1980, Research Foods' mark was confusing with Mr. Habbib's mark. The opponent herein argues that it is inconsistent for Mr. Habbib to assert that Research Foods' mark COFFEE-DELIGHT is confusing with Mr. Habbib's mark COFFEE DELIGHT, yet to maintain in the instant case that his mark is not confusing with the IPCO's mark COFFEE DELIGHT. The opponent is advancing a type of estoppel argument. However, the opponent has not cited authority directly on point and I am not sure that estoppel applies in the instant case. Firstly, it appears that application No. 549,016 was deemed abandoned; thus, the opposition proceeding concerning application No. 549,016 was never adjudicated. Secondly, Mr. Habbib opposed application No. 549,016 only after an examiner rejected Mr. Habbib's arguments that the marks were not confusing when Research Foods' mark was cited against the subject mark at the examination stage. Further, Mr. Habbib might have withdrawn all allegations of confusion between his mark and Research Foods' mark and still might have successfully opposed Research Foods' mark on other grounds that were pleaded. For the above reasons, I am not satisfied that Mr. Habbib's pleadings in his opposition to application No. 549,016 is a bar to Mr. Habbib's pleading in the instant case that his mark is not confusing with IPCO's mark.
DATED AT HULL, QUEBEC, THIS 31st DAY OF MARCH , 1994.
Myer Herzig,
Member,
Trade-marks Opposition Board