Trademark Opposition Board Decisions

 

 

 

On September 10, 2003, Aulcorp Food Marketers & Distributors Inc. (the “Applicant”) filed an application for the registration of the trade-mark PACHINO (the “Mark”) based on proposed use of the Mark in Canada in association with the following wares: “Food and food products, namely, pizza, pasta, vegetables, fruits, pasta mixes, rice, rice mixes, noodles, noodles and sauces, olive oil, pizza sauces, olives, cookies, cakes, bread sticks, breadcrumbs, produce glazes, croutons, fruit juices, fruit nectars” (the “Wares”).

 

The application was advertised for opposition purposes in the Trade-marks Journal of September 1, 2004.

 

On October 15, 2004, Les Restaurants P & P Inc. (the predecessor in title of Restaurants Pacini Inc. (the “Opponent”)) filed a statement of opposition against the application, which statement was amended on December 22, 2004.

 

The grounds of opposition in the amended statement of opposition of record can be summarized as follows:

 

1. The application does not comply with the requirements of s. 30 of the Trade-marks Act (R.C.S. 1985, c.T-13, as amended) (the “Act”) since the description of wares in the application, in particular, “produce glazes, vegetables, fruits” does not constitute a description in ordinary commercial terms, nor is it possible to discern the use of such products, nor what their channels of trade may be;
2. The application does not comply with the requirements of s. 30 of the Act, as the Applicant did not, by itself, have an intention of using the Mark in Canada in association with all of the wares set forth in its application;
3. The Mark is not registrable pursuant to s. 12(1)(d) of the Act because it is confusing with the following trade-marks of the Opponent:

 

Trade-mark	Reg. No / Reg. Date	Wares/Services
PACINI	TMA312,775 March 28, 1986	Pastas, sauces, pizzas, condiments, confections, namely, chocolate candies, pastries, spreads, bread, soups and prepared meals, chocolate cherries, as well as the services relating to the operation of bars and restaurants.
	TMA318,885 September 26, 1986	Services relating to the operation of bars and restaurants.
	TMA463,305 September 13, 1996	Services relating to the operation of bars and restaurants; food take-out and delivery counters.
	TMA466,662 November 29, 1996	Pastas, sauces, pizzas, condiments, confections, namely, chocolate, candies, pastries, spreads, bread, soups and prepared meals, chocolate cherries.
	TMA585,702 July 22, 2003	Services relating to the operation of bars and restaurants; food take-out and delivery counters.
	TMA582,005 May 21, 2003	Ready-to-cook foods, namely confections comprising cherries and chocolate, pastries, and restaurant services.
	TMA588,156 August 26, 2003	Restaurant services.

 

4. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(a) of the Act in that as of the filing date of the application, the Mark was confusing with the Opponent’s trade-marks listed above which have been previously used or made known in Canada by the Opponent;
5. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(c) of the Act in that as of the filing date of the application, the Mark was confusing with the Opponent’s trade names Pacini and Restaurants Pacini previously used in Canada by the Opponent; and
6. The Mark is not distinctive of the Applicant pursuant to s. 38(2) of the Act in that the Mark neither distinguishes nor is adapted to distinguish the products of the Applicant from those of the Opponent, nor the services performed by the Opponent, nor the business operated by the Opponent.

 

By counter statement dated December 3, 2004 and amended on February 25, 2005, the Applicant denied each and every one of the allegations made in the amended statement of opposition.

 

In support of its opposition, the Opponent filed the declarations of Pierre-Marc Tremblay (who identifies himself as President and Chief Director of the Opponent) and Marylène Gendron (who identifies herself as a secretary employed in the trade-marks department of the trade-mark agents for the Opponent) (hereinafter referred to as the “first Tremblay declaration” and the “first Gendron declaration” respectively) as evidence pursuant to r. 41 of the Trade-marks Regulations (the “Regulations”). The Opponent also filed as evidence pursuant to r. 43 of the Regulations, a second declaration of Marylène Gendron. The Opponent further requested leave to file a second declaration of Pierre-Marc Tremblay (hereinafter referred to as the “second Tremblay declaration”) as evidence pursuant to r. 44 of the Regulations, which request was objected to by the Applicant. As the said request was made only a few days before the holding of the oral hearing, I advised the parties that I would address the Opponent’s request at the same time as rendering the present decision. The ruling is included below.

 

In support of its application, the Applicant filed the affidavit of Frank Aulino (who identifies himself as President of the Applicant) as evidence pursuant to r. 42 of the Regulations. No cross-examinations were conducted.

 

Each party filed a written argument. In its written argument, the Opponent annexed a printout from http://fr.wikipedia.org as well as a printout from Le Robert & Collins French-Italian Dictionary. The Applicant objected to the filing of the said printouts at the written argument stage. I will deal with the Applicant’s objection hereinafter in my decision when addressing the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them.

 

Only the Opponent attended at an oral hearing.

 

Onus and material dates

 

The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is, however, an initial 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 Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)].

 

The relevant dates for considering the circumstances in regard to each of the grounds of opposition in the present proceeding are the following:

 

• Grounds based on s. 30 of the Act: the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.)];
• Ground based on s. 12(1)(d) of the Act: the date of my decision [see Park Avenue Furniture Corp. v. Wickers/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)];
• Grounds based on s. 16(3) of the Act: the filing date of the application; and
• Ground based on non-distinctiveness of the Mark: generally accepted as being the filing date of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].

 

I will now analyze the grounds of opposition in regard to the evidence filed in the record, without necessarily respecting the order in which they were raised in the statement of opposition.

 

Section 12(1)(d) ground of opposition

 

The Opponent has provided through the first Tremblay declaration, certified copies for each of the above-cited trade-mark registrations. The Opponent’s initial burden with respect to this ground of opposition has been satisfied because each of these registrations is in good standing.

 

Because of this evidence by the Opponent, the Applicant must establish on a balance of probabilities that there is no reasonable likelihood of confusion between the Mark and the Opponent’s marks.

The test for confusion is one of first impression and imperfect recollection. 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.

 

In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at s. 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 different weight will be attributed to different factors according to the context [see Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (C.S.C.); and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée (2006), 49 C.P.R. (4th) 401, [2006] 1 S.C.R. 824 (C.S.C.) for a thorough discussion of the general principles that govern the test for confusion].

 

(a) the inherent distinctiveness of the trade-marks and the extent to which they have become known

The strength of a trade-mark may be increased by means of it becoming known through promotion or use. There is however no evidence that the Applicant has used its proposed use Mark in Canada to date. The Aulino affidavit merely states that the Applicant is “an import/product developer dealing exclusively in customer private label and branded products, and deals with logistics such as factory to customer and has an intention to use the trade-mark PACHINO in association with the goods recited in the application”.

 

Serial No. 1231398

Serial No. 1231393

(b) the length of time the trade-marks have been in use

 

As there is no evidence that the Applicant has used its proposed use Mark in Canada to date, and given the reasons above, this factor also favours the Opponent.

 

(c) the nature of the wares, services or business; and (d) the nature of the trade

 

Considering the type of wares and services and the nature of the trade, I must compare the Applicant’s statement of wares and services with the statement of wares and services in the registration referred to by the Opponent [see Henkel Kommanditgesellschaft auf Aktien v. Super Dragon Import Export Inc. (1986), 12 C.P.R. (3d) 110 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.)]. 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.

 

As indicated above, the Opponent’s registrations cover a variety of wares and services including, restaurant services, that may offer bar services and take-away counter services, as well as wares such as pastas, sauces, pizzas, condiments, confections, namely, candies and chocolate, pastries, spreads, bread, soups and prepared meals, chocolate cherries. There is a clear overlap between the Opponent’s wares and those of the Applicant. In the absence of evidence to the contrary, there are no reasons to believe that the nature of the trade would differ, especially given the fact that at least some of the Opponent’s wares are sold not only in its restaurants but also at the retail level, in supermarkets and grocery stores. I wish to add that nothing prevents the Opponent to extend further this latter niche, not only in Québec but throughout Canada.

 

Accordingly, these third and fourth factors also favour the Opponent.

 

(e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

 

It is well-established by the jurisprudence that the likelihood of confusion is a matter of first impression and imperfect recollection. This principle has been reiterated by the Supreme Court in Veuve Clicquot [supra] as follows:

 

“20      The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the name Cliquot on the respondents’ storefront or invoice, at a time when he or she has no more than an imperfect recollection of the VEUVE CLICQUOT trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. As stated by Pigeon J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), [1969] S.C.R. 192 (S.C.C.), at p. 202:

It is no doubt true that if one examines both marks carefully, he will readily distinguish them. However, this is not the basis on which one should decide whether there is any likelihood of confusion.

 

…the marks will not normally be seen side by side and [the Court must] guard against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the former mark. (Citing in part Halsbury’s Laws of England, 3^rd ed., vol. 38, para. 989, at p. 590.)”

 

Furthermore, it is a generally accepted principle in trade-mark law that the first portion or first syllable of a trade-mark is more important for the purposes of distinction [see Conde Nast Publications Inc. v. Union des Éditions Modernes (1979) 46, C.P.R. (2d) 183 (F.C.)].

 

Applying these principles to the instant case, there is a relatively fair degree of resemblance between the marks PACHINO and PACINI. While the word PACHINO does not appear to have any meaning known to the Canadian average consumer, it possesses, like PACINI, an Italian connotation when associated with Italian-type cuisine. Both marks share the same first syllable and have the same number of syllables. The addition of the letter “H” has no impact on pronunciation, and little if any, in appearance. Except for the “O” and “I” final vowel, both marks sound identical.

 

In its written argument, the Opponent submits that the Italian grammar provides that masculine nouns or adjectives ending with the final vowel “O” will, in the plural form, replace the final vowel “O” by “I”. In support of that argument, the Opponent has annexed to its written argument, a printout from http://fr.wikipedia.org as well as a printout from Le Robert & Collins French-Italian Dictionary. As indicated above, the Applicant objected to the filing of the said printouts at the written argument stage. The Opponent submits that I can take judicial notice of these dictionary excerpts. The Opponent further submits that I can take judicial notice of the fact that Canada has an important Italian community. The Opponent submits that members of the Italian community will accordingly perceive the PACHINO and PACINI marks as being identical. While I am prepared to take judicial notice of the fact that there are a number of Canadians who are fluent in the Italian language, I do not know what percentage of the Canadian population that number represents. In the absence of evidence in this opposition, I am not prepared to infer that a significant number of Italian-speaking Canadians would perceive the PACHINO and PACINI marks as being identical [Roc International v. Rocbel Holdings Inc. (1994), 53 C.P.R. (3d) 109 (T.M.O.B.)]. In any event, this does not change the finding made above that there is a relatively fair degree of resemblance between the marks PACHINO and PACINI. Accordingly, this fifth factor tends to favour the Opponent.

 

In concluding this fifth factor, I wish to address the Applicant’s contention that where the Opponent uses the trade-mark PACINI on its own, the mark is shown in script form, underlined and/or outlined and that such use reduces the likelihood of confusion between the said mark and the Applicant’s mark. As indicated above, the Opponent owns various trade-mark registrations for the trade-mark PACINI be it in stylized versions or for the word mark PACINI alone. The existence of this latter registration renders the Applicant’s contention irrelevant.

 

Surrounding circumstances

 

The Applicant has filed, through the Aulino affidavit, a certified copy of registration No. 452275 for the trade-mark PACHINO’S DESIGN in the name of Pachino’s Pizza Limited. In its written argument, the Applicant points out that this mark, registered on December 29, 1995, issued to registration after the Opponent’s marks PACINI, under registration No. 312775, registered on March 28, 1986, and registration No. 318885 for the trade-mark PACINI DESIGN, registered in September 1986.

 

The Applicant, relying on Exhibits MG-2 attached to the first Gendron affidavit, further points out that the Opponent’s applications 1231398 and 1231393, both filed on September 23, 2004 for the trade-marks PACINI & DESIGN, have been allowed to registration on July 22, 2005. The Applicant points out that the instant application for the Mark PACHINO was filed on September 10, 2003, a full year earlier than applications 1231398 and 1231393. The Applicant contends in paragraph 8.25 of its written argument that:

 

“8.25 [I]t stands to reason that, even if the [A]pplicant’s application was cited by the examiner during examination of the [O]pponent’s two trade mark applications, the examiner found the [A]pplicant’s mark to not be confusing with the [O]pponent’s applied-for marks under applications 1,231,393 and 1,231,398. Accordingly, it stands to reason that the [A]pplicant’s mark PACHINO, filed under application 1,190,318, is also not confusing with the [O]pponent’s family of PACINI trade marks.”

 

Considering the Applicant’s first argument, and as noted by the Opponent, registration No. 452275 for the trade-mark PACHINO’S & DESIGN was expunged for failure to renew on June 18, 2004. The fact that this registration may have coexisted for some time with the Opponent’s PACINI marks on the register of trade-marks is not by itself binding on this Board in the instant case. Not only is the PACHINO’S & DESIGN mark more different from the Opponent’s PACINI marks than is the Applicant’s Mark, but each case must be decided on its own merits and in accordance with the evidence tendered. In this regard, I note that a decision was rendered by this Board in respect of an opposition filed by the predecessor in title of the Opponent against the application for registration of the said PACHINO’S & DESIGN mark, which opposition was rejected by this Board on October 30, 1992. As interesting as this decision may be, it can be distinguished from the instant case, if only because the applied-for mark in that case was not the same as in the instant case and there was no evidence filed by the opponent.

 

The same reasoning applies to the Applicant’s second argument. The printouts attached as Exhibits MG-2 to the first Gendron affidavit simply indicate that an examiner’s report was issued on February 2, 2005 in each of the Opponent’s PACINI & DESIGN applications. The Applicant failed to file evidence on that point. In any event, a decision by the examination section of the Trade-marks Office is not binding on this Board and does not have a precedential value for this Board given that the examination section does not have before it evidence that is filed by the parties in an opposition proceeding. Furthermore, the burden on an applicant differs whether the application is at the examination stage or at the opposition stage. [See Now Communications Inc. v. CHUM Ltd. (2003) 32 C.P.R. (4th) 68 (T.M.O.B.); Interdoc Corporation v. Xerox Corporation, unreported decision of the Trade-marks Opposition Board dated November 25, 1998 re application s.n. 786,491; Thomas J. Lipton Inc. v. Boyd Coffee Co. (1991), 40 C.P.R. (3d) 272 at 277; Procter & Gamble Inc. v. Morlee Corp. (1993), 48 C.P.R. (3d) 377 at 386]

 

In light of the foregoing, I am not prepared to accord any significant weight to the additional circumstances put forward by the Applicant in the instant case.

 

Conclusion re likelihood of confusion

 

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my findings above, I find that the Applicant has not met its legal onus to show, on a balance of probabilities, that there is no reasonable likelihood of confusion as to the source of the parties' wares and/or services in the consumer's mind. Accordingly, the issue of confusion must be decided against the Applicant and the s. 12(1)(d) ground of opposition succeeds.

 

Section 16(3)(a) and (c) grounds of opposition

 

As for the s. 16(3)(a) ground of opposition, the Opponent has met its initial burden by evidencing use of the PACINI mark in association with at least part of the wares and services specified in its aforementioned registrations (e.g. pizzas, breads, chocolate cherries and restaurant services), prior to the Applicant's filing date and showing non-abandonment of its mark as of the Applicant's advertisement date. The ground therefore remains to be decided on the issue of confusion between the marks as of the Applicant's filing date. My conclusions respecting the s. 12(1)(d) are equally applicable here. Thus, the s. 16(3)(a) ground is successful.

 

The same conclusions apply in respect of the s. 16(3)(c) ground of opposition; the Opponent having met its initial burden by evidencing use of its trade names Pacini and Restaurants Pacini prior to the Applicant’s filing date and showing non-abandonment of those names as of the Applicant’s advertisement date. Thus, the s. 16(3)(c) ground is also successful.

 

Non-distinctiveness ground of opposition

 

“26     In Skipper's Inc. v. Skipper's Fish & Chips Ltd., [1980] F.C.J. No. 705 (Fed. T.D.), at para. 49, in obiter, Justice Cattanach stated that if a trade-mark is sufficiently well known in a specific area of Canada, this will negate another trade-mark's distinctiveness:

As I appreciate the decision of Thurlow, J. (as he then was) in E. & J. Gallo Winery v. Andres Wines Limited ([1976] 2 F.C. 3) it was, amongst other things, that it was not essential that a trade mark must become "well known in Canada" within section 5 but that if it is well known in an area of Canada that is sufficient to preclude a rival trader in that area from appropriating that trade mark because it could not be "adapted to so distinguish" that trader's wares or services [my emphasis].

This statement, in my view, is in line with the Motel 6, above, case. In Motel 6, above, the evidence presented was to the effect that the reputation of the trade-mark was essentially confined to British Columbia.”

 

As the analysis of the likelihood of confusion under this ground does not differ significantly from that under the s. 12(1)(d) ground of opposition, its outcome is accordingly the same, namely the distinctiveness ground of opposition also succeeds.

 

Remaining Grounds of Opposition

 

As I have already found in favour of the Opponent under more than one ground, I will not address the remaining grounds of opposition.

 

Disposition

 

Annie Robitaille

Member, Trade-marks Opposition Board