LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 228
Date of Decision: 2011-11-17
IN THE MATTER OF AN OPPOSITION by Mondo Foods Co. Ltd. to application No. 1,339,801 for the trade-mark NuMondo in the name of Saverio Coppola
[1] On March 19, 2007, Saverio Coppola (the Applicant) filed an application to register the trade-mark NuMondo (the Mark) based on proposed use in Canada in association with the wares “wine” and the services “winemaking, vineyard, winery”, as amended (the Wares and Services).
[2] The application was advertised for opposition purposes in the Trade-marks Journal of July 2, 2008.
[3] On July 11, 2008, Mondo Foods Co. Ltd. (the Opponent) filed a statement of opposition. In its statement of opposition the Opponent claims ownership of a “family” of trade-marks, as follows (hereinafter referred to as the Opponent’s MONDO Marks):
|
Trade-mark |
Registration No. |
Wares/Services |
Claims |
|
|
TMA490,664 |
Wares: Flour, wine grapes and canola oil sold at wholesale. Services: Importing, packaging and distributing foods and beverages. |
Use in Canada since 1991 |
|
MONDO FOODS |
TMA452,101 |
Wares: (1) Fruits juices; (2) Candies. Services: Importing, packaging and distributing foods and beverages. |
Use in Canada since October 1989 with Wares (1). Use in Canada since December 1989 with Wares (2). Use in Canada since August 1981 on Services |
|
BEL’MONDO |
TNA462,081 |
Wares: (1) Food products, canned and/or otherwise, namely,
vegetables, namely, tomatoes and fruits, namely pineapples; olive oil; (2)
Anchovies and vegetable oils. |
Used in CANADA since at least August 1987 on wares (1). Declaration of Use filed July 10, 1996 on wares (2). |
|
MONDO |
TMA466,497 |
Wares: (1) Food products, canned and/or
otherwise, namely, fruits and vegetables, namely, tomatoes, tomato puree/sauce,
tomato paste and olives; (2) Vegetable oils, dried pasta and cheeses; (3)
Flour; (4) Alcohol-based food flavourings/ extracts; |
Used in CANADA since at least August 1981 on wares (1). Used in CANADA since at least March 1989 on wares (2). Used in CANADA since at least July 1991 on wares (3). Used in CANADA since December 1991 on wares (4). Declaration of Use filed August 09, 1996 on wares (5). |
|
BEL’MONDO |
TMA318,653 |
Wares: Canned goods, namely tomatoes, tomato sauce, tomato paste,
pineapple, olives, beans, and artichoke paste; vegetable oil and olive oil;
fruit nectars and juices; and dried pasta. |
Declaration of Use filed July 09, 1986 |
|
MONDO |
TMA317,799 |
Wares: (1) Canned goods, namely tomatoes, tomato sauce, tomato paste
and olives; (2) Canned beans, canned pineapple, canned artichoke paste,
vegetable oil, olive oil, fruit nectars and juices, and dried pasta. |
Used in CANADA since at least as early as August 1981 on wares (1). Declaration of Use filed June 23, 1986 on wares (2). |
[4] The application for the Mark as originally filed claimed use in Canada for some wares and services. By way of a revised application filed December 16, 2008, the Applicant deleted these wares and services but the statement of opposition was never amended to reflect this change. The amended application was accepted on January 6, 2009. In light of the deletion of these wares and services, I will not be discussing the grounds of opposition relating to the use-based wares and services (i.e. s. 30(b), 16(1)(a) and (c) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act)) as these have become moot and are dismissed summarily.
[5] The remaining grounds of opposition can be summarized as follows:
• non-compliance with s. 30(i) of the Act on the basis that the Applicant could not have been satisfied at the date of filing the application for the Mark as to its entitlement to use the Mark in association with the Wares and Services, having regard to the Opponent’s registrations and prior use of the Opponent’s MONDO Marks.
• the Mark is not registrable pursuant to s. 38(2)(b) and 12(1)(d) of the Act because it is confusing with the Opponent’s MONDO Marks.
• the Applicant is not entitled to registration of the Mark pursuant to s. 38(2)(c) and 16(3)(a) of the Act since at the date of filing the application for the Mark, it was confusing with the Opponent’s MONDO Marks which had been previously used in Canada by the Opponent in association with the wares/services set out in the statement of opposition.
• the Applicant is not entitled to registration of the Mark pursuant to s. 38(2)(c) and 16(3)(c) of the Act since at the date of filing the application for the Mark, it was confusing with the Opponent’s trade-names, MONDO FOODS and MONDO FOODS CO. LTD. (hereinafter referred to as the Opponent’s Trade-names), which had been previously used in Canada by the Opponent in association with the wares/services set out in the statement of opposition.
• the Mark is not distinctive in that it is not adapted to distinguish and does not actually distinguish the Wares and Services from those of others, including the wares and services in association with which the Opponent has used the Opponent’s Trade-names and the Opponent’s MONDO Marks.
[6] The Applicant served and filed a counter statement in which it denied the Opponent’s allegations and put the Opponent to the strict proof thereof.
[7] In support of its opposition, the Opponent filed an affidavit of Tom De Nardi, sworn April 13, 2009 with Exhibits A – L as its evidence pursuant to r. 41 of the Trade-marks Regulations SOR/96-195 (the Regulations). Mr. De Nardi is the Director of Sales & Marketing for the Opponent.
[8] In support of its application, the Applicant filed the following affidavits:
a. Saverio Coppola, sworn August 14, 2009 with Exhibits 1 – 18. Mr. Coppola is the Applicant.
b. Two affidavits of Vanessa Mulhern, both sworn August 12, 2009 one with Exhibits A – G and one with Exhibit A. Ms. Mulhern is an associate lawyer employed by Taylor McCaffrey LLP, a law firm in Winnipeg, Manitoba.
c. Diane Huguenin, sworn August 7, 2009 with Exhibit 1. Ms. Huguenin is a legal assistant with the Applicant’s agent.
d. Nicole Graniero, sworn August 13, 2009 with Exhibits 1 – 2. Ms. Graniero is a legal assistant with the Applicant’s agent.
e. Angelina Di Palma, sworn August 13, 2009 with Exhibits 1 – 2. Ms. Di Palma is a legal assistant with the Applicant’s agent.
[9] No affiants were cross-examined.
[10] Both parties filed written arguments and were represented at an oral hearing.
Onus and Material Dates
[11] 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].
[12] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(a)/30(i) - the date of filing the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 at 475 (T.M.O.B.) and Tower Conference Management Co. v. Canadian Exhibition Management Inc. (1990), 28 C.P.R. (3d) 428 at 432 (T.M.O.B.)].
• s. 38(2)(b)/12(1)(d) - the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)].
• s. 38(2)(c)/16(3) - the date of filing the application [see s. 16(3) of the Act].
• s. 38(2)(d)/2 - 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.)].
Non-compliance with s. 30(i) of the Act
[13] Where an applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155]. The Applicant has provided the necessary statement and this is not an exceptional case; the s. 30(i) ground is accordingly dismissed.
Non-registrability Ground of Opposition – s. 12(1)(d) of the Act
[14] An opponent’s initial onus is met with respect to a s. 12(1)(d) ground of opposition if the registrations relied upon are in good standing as of the date of the opposition decision. The Registrar has discretion to check the register in order to confirm the existence of the registrations relied upon by an opponent [see Quaker Oats of Canada Ltd./La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd. (1986), 11 C.P.R. (3d) 410 (T.M.O.B.)]. I have exercised that discretion and confirm that the registrations for the Opponent’s MONDO Marks remain valid.
[15] 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.
[16] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in 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 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 C.P.R. (4th) 321 (S.C.C.). and Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 96 C.P.R. (4th) 361 (S.C.C.).]
[17] Throughout my discussion of the evidence as it applies to the analysis of the grounds of opposition, I will not refer to or place any weight on any statements made by any of the affiants which constitute opinions on issues that go to the merit of the opposition [see British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48 at 53 and Les Marchands Deco Inc. v. Société Chimique Laurentide Inc. (1984), 2 C.P.R. (3d) 25 (T.M.O.B.)].
Section 6(5)(a) – inherent distinctiveness and the extent to which the marks have become known
[18] The Mark is a coined word without any meaning in English, French or any other language (Coppola affidavit) and is thus inherently distinctive. The Opponent’s MONDO Marks all share the word “mondo”.
[19] Both parties rely on definitions from online dictionaries in support of submissions that the word “mondo” is the Italian word for “world”. The Applicant also relies on evidence adduced through the Coppola affidavit. In his affidavit Mr. Coppola states that there are a substantial number of Italian speakers in Canada. Mr. Coppola supports this statement with statistics from the 2006 Canadian Census regarding ethnic origin, as well as two Internet articles. I am not satisfied that this hearsay evidence is sufficient to support Mr. Coppola’s statement made on information and belief. Furthermore, there is no evidence to support a finding that individuals of Italian ethnic origin would be able to speak, read or understand the Italian language, in any event.
[20] As a result, there is no admissible evidence of record to support a finding that a substantial portion of the Canadian population understands and speaks Italian. Since such an allegation is not something that I feel at liberty to take judicial notice of, I am proceeding based on the assumption that the average Canadian does not understand “mondo” to mean “world”. However, even if the average Canadian were to associate the word “mondo” with “world” (either because of its meaning in Italian or because of its similarity to the French word “monde”), this would not change the outcome of my decision since “world” is not descriptive of the parties’ wares or services.
[21] Based on the foregoing, I find that the word MONDO is an inherently distinctive mark with respect to the Opponent’s wares and services since it has no meaning in common parlance with respect to the Opponent’s wares and services.
[22] Ultimately I assess the inherent distinctiveness of the parties’ marks as being the same.
[23] A mark may acquire distinctiveness through use or promotion. I will now summarize the parties’ evidence in this regard.
[24] The application for the Mark is based on proposed use. In his affidavit, Mr. Coppola states that he has been leasing and operating a small vineyard in Lavaltrie, Quebec since April 2006 and that he has registered a number of business names in Quebec for the operation of a vineyard, including: Numondo Wines, Vignoble Xavier Coppola and Xavier Coppola Winery (Exhibit 1). Mr. Coppola attaches to his affidavit a proposed label mock-up displaying the Mark which he states will be used in association with wine (Exhibit 2.2). While I accept this evidence as supporting the Applicant’s intention to use the Mark in Canada, the Applicant did not file any evidence directed to the use of the Mark subsequent to the filing of the application and as a result I can only conclude that the Mark has not become known to any extent.
[25] The Opponent has been in business since 1975, importing and distributing foods and beverages and also operating retail outlets. The Opponent claims use of MONDO as a trade-mark and trade name since that date. In his affidavit, Mr. De Nardi states that the Opponent imports and distributes a large variety of food and beverage products, including wine, grapes for making wine and grape juice for making wine. Mr. De Nardi states that these products are manufactured by or for the Opponent and bear the trade-marks of the Opponent (for products indicated in the registrations for the MONDO Marks) or those of third party food and beverage suppliers (including wineries).
[26] In his affidavit, Mr. De Nardi states that the Opponent’s MONDO Marks prominently appear on labels attached to the Opponent’s wares and on cartons containing the Opponent’s wares when they are shipped to customers. Mr. De Nardi attaches to his affidavit samples of such labels and cartons, all of which have been and continue to be used by the Opponent in association with the sale of the Opponent’s wares (Exhibits H1 and H2).
[27] The evidence establishes that sales of wares associated with the Opponent’s MONDO Marks have exceeded $1 million/year since 1990-1991 and $2 million annually since 2004-2005. Approximately 95% of these sales are attributable to sales in association with the MONDO mark (5% for the BEL’MONDO mark).
[28] The Opponent promotes its wares and services by distributing leaflets (samples attached as Exhibit I1), attending and hosting industry trade shows, operating a website, and advertising in trade publications (samples attached as Exhibits J1-J4), newspapers and magazines (samples attached as Exhibit K). Mr. De Nardi attests that for the years 1999-2009, the Opponent expended in excess of $100,000 to promote its wares and services.
[29] Mr. De Nardi states that sales in Canada by the Opponent of the Opponent’s services in association with the Opponent’s Marks (excluding BEL’MONDO) and Trade-names were in excess of $10 million annually for the years 1990-2004 and in the range of $13-14 million annually for the years 2004-2009. Mr. De Nardi states that these figures include at least $125,000/year for grapes for making wine and at least $125,000/year for grape juice for making wine. Mr. De Nardi states that approximately 10% of such grapes/juice was branded with the MONDO trade-mark, the remaining 90% being third-party branded grapes/juices.
[30] In light of the substantial reputation established by the Opponent in the MONDO Marks, this factor favours the Opponent.
Section 6(5)(b) – the length of time each has been in use
[31] As discussed further above in the analysis of the s. 6(5)(a) factor, the application for the Mark was filed based on proposed use, and no evidence of use subsequent to the filing date was filed. By contrast, the Opponent has evidenced significant use of the Opponent’s MONDO Marks prior to the filing date of the application for the Mark such that this factor also favours the Opponent.
Section 6(5)(c) – the nature of wares, services or business
[32] It is the Applicant’s statement of wares as defined in its application versus the Opponent’s registered wares and services that govern my determination of this factor [see Esprit International v. Alcohol Countermeasure Systems Corp. (1997), 84 C.P.R. (3d) 89 (T.M.O.B.)].
[33] The Applicant has applied for registration for the Mark in association with the wares “wine” and the services “winemaking, vineyard, winery”. In his affidavit, Mr. Coppola states that his winery intends to produce and market red, white and dessert wines under the Mark.
[34] While none of the Opponent’s MONDO Marks are registered for use in association with wine specifically, at least one registration covers grape juice and/or grapes for making wine. Specifically, registration No. TMA490,664 for MONDO FOODS COMPANY LTD. & Design claims “wine grapes sold at wholesale” and registration Nos. TMA452,101 and TMA317,799 for MONDO cover fruit juices, which in light of the Opponent’s evidence could constitute grape juice used for making wine. In his affidavit, Mr. De Nardi states that the Opponent has sold MONDO branded grapes and grape juice for making wine. Finally, both TMA452,101 for MONDO FOODS and TMA490,664 for MONDO FOODS COMPANY LTD. & Design cover the services of “importing, packaging and distributing food and beverages” which could on its face encompass the importation, packaging and distribution of wine.
[35] The Opponent has also provided evidence regarding the operation of its wine store La Boutique del Vino, however, I note that these operations are not in association with the Opponent’s MONDO Marks. The Opponent’s wine operations will be discussed in greater detail below as an additional surrounding circumstance.
[36] Based on the foregoing, I find that there is no direct overlap in the nature of the parties’ wares, however, there is some relationship between the parties’ wares and services as both parties operate in the food and beverage industry and the Opponent has shown use of its MONDO Marks with wine-related wares such as wine grapes and juices used for making wine.
Section 6(5)(d) – the nature of the trade
[37] At the oral hearing the Applicant submitted that the Wares are expensive and the average purchaser, sophisticated. The Applicant submitted that the average consumer of the Wares would thus make careful distinctions when shopping for wine and would not make their purchasing decisions solely on the brand name or label. Firstly, I note that there is no evidence of record regarding the price of the Wares or the nature of the target consumer. More importantly, however, I note that the Supreme Court of Canada recently commented on the issue of the sophisticated consumer in Masterpiece where Justice Rothstein stated that the fact that wares are expensive is not a relevant factor and not something that should limit trade-mark protection. The test for confusion is one of first impression [Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51 (F.C.A.)]. Any subsequent steps taken by sophisticated consumers in an attempt to remedy any such first instance confusion are irrelevant [by analogy see paragraphs 68-74 of Masterpiece, supra]. Based on the foregoing, I am not placing any weight on the Applicant’s submissions on this point.
[38] In terms of the nature of the Applicant’s trade, in his affidavit, Mr. Coppola states that the Applicant will be producing its wine under an artisanal winery permit which places restrictions on the Applicant’s trade. Under the permit, the Applicant may only produce 10,000 bottles of wine which may only be sold in the province of Quebec and in specific venues (i.e. at the vineyard, to licensed Quebec restaurants and at the SAQ). The Applicant will not be permitted to sell its wine at grocery stores. I note, however, that the specification for the Wares does not contain any restriction on the channels of trade. In situations where the application does not include a restriction on the channels of trade, one is not to look into where a mark is actually used since an application for registration by its very nature seeks national protection, unless specifically restricted [see Masterpiece, supra]. Based on the foregoing, I am not placing any weight on the Applicant’s submissions regarding the alleged restrictions on the Applicant’s trade imposed by the artisanal permit.
[39] With respect to the nature of the Opponent’s trade, Mr. De Nardi states that the Opponent’s customers for its services are retail food and grocery stores, food distributors and restaurants and for its wares are individual Canadians who purchase the Opponent’s wares from either the Opponent’s stores or third party retail food and grocery stores.
[40] Given the absence of restriction on the Applicant’s channels of trade and in light of the relationship between the parties’ wares, I am satisfied that the parties’ channels of trade could overlap.
Section 6(5)(e) – the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them
[41] The parties’ marks share the MONDO element. As discussed further above in the analysis of the s. 6(5)(a) factor, the word MONDO has no meaning in the English or French language.
[42] The Opponent submits that “nu” is likely to be interpreted as an adjective, likely as “new”, as in “new and improved”, as a descriptor for MONDO. The Opponent submits that as a result, it is likely to be interpreted by those familiar with the Opponent’s products and services as indicating another product of the Opponent. By contrast, the Applicant submits that even if the “nu” element was seen to have the connotation of “new”, once combined with MONDO, the Mark is a coined word with no meaning in English or French.
[43] Based on the foregoing, I find that the parties’ marks share similarities in sound, appearance and ideas suggested by virtue of the common inclusion of the MONDO element.
Additional Surrounding Circumstance – the Opponent’s Wine and Retail Operations
[44] While the Opponent’s MONDO Marks are not registered specifically for wine or wine-making services, Mr. De Nardi provides evidence of the Opponent’s business operations relating to the wine industry. Specifically, Mr. De Nardi states that the Opponent also owns other non-Mondo marks, most importantly, La Boutique del Vino & Design and CUVEE D’OR which are used in association with the sale of wine. Mr. De Nardi attaches to his affidavit particulars of these registrations (Exhibit C). I note that these marks have not been pleaded in the statement of opposition and thus do not form the basis for any grounds of opposition. The Opponent’s operations in the wine industry could, however, function as an additional surrounding circumstance.
[45] In its written argument and at the oral hearing the Applicant objected to the Opponent’s evidence regarding the La Boutique del Vino store and the CUVEE D’OR wine on the basis that these services and wares are not offered in association with the Opponent’s MONDO Marks. In fact, the first Mulhern affidavit filed by the Applicant attempts to establish that the Opponent does not use its MONDO Marks in association with its stores. I need not address these submissions for the reasons that follow. At the oral hearing, the Opponent made it clear that in adducing this evidence it was not attempting to suggest that the Opponent had sold wine or operated a wine store under the MONDO Marks, but rather merely that the Opponent had sold wine. The Opponent submitted that its sale of third-party branded wine served as a surrounding circumstance supporting a finding that wine was in the natural zone of expansion for the products and services already offered by the Opponent in association with the MONDO Marks.
[46] Mr. De Nardi states that the Opponent operates four retail outlets in the Winnipeg area, each in association with one of the following trade-marks/names:
a. Piazza De Nardi
b. La Boutique Del Vino
c. La Grotta Mediterranean Market
d. La Grotta Del Fromaggio
[47] Mr. De Nardi attaches to his affidavit photographs of these retail locations (Exhibit D).
[48] Mr. De Nardi states that sales by the Opponent’s stores were in the range of $6 million for the year 1999-2000, approximately $7.5-8 million annually for the years 2004-2009 and approximately $3.5 million/year for the years 2007 and 2008.
[49] Mr. De Nardi attests that for the years 1999-2009, the Opponent expended in excess of $750,000 to promote its stores.
[50] Mr. De Nardi states that the Opponent operates a website at www.laboutique.ca in order to advertise and promote the wares sold at the Opponent’s La Boutique del Vino retail location (Exhibit E). Mr. De Nardi states that the website printouts demonstrate the way in which the Opponent has sold wine since 1994 and how it continues to sell wine to individuals at its La Boutique del Vino retail location. Mr. De Nardi states that annual sales of wine at the Opponent’s La Boutique del Vino store are in the range of $2.5 to 3 million per year and have been so since at least 2000.
[51] Mr. De Nardi makes a statement based on information and belief that Canadians familiar with the Opponent’s stores know that they are operated by the Opponent. In support of this statement, which is prima facie hearsay (see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.)), Mr. De Nardi attaches the following documents:
a. media articles referring to the Opponent and one or more of the Opponent’s stores (Exhibit F1);
b. photographs depicting a Mondo Foods sign atop the La Grotta del Fromaggio store. A substantially similar sign has been on display at this location since at least 1975. From 1994-1999 the Opponent’s store La Boutique Del Vino was housed inside the La Grotta del Fromaggio store (Exhibit F2); and
c. the Opponent’s Marks and Trade-names are frequently promoted side by side with the Opponent’s stores (Exhibit F3).
[52] While I am not willing to rely on hearsay documents as evidence of the truth of their contents, I am satisfied that the Opponent’s customers would associate the Opponent with the Opponent’s stores.
[53] The Applicant also filed a second affidavit of Ms. Mulhern in which she states that the Opponent would be prevented from operating its own vineyard or winery by virtue of its interest in the La Boutique del Vino store. Ms. Mulhern bases this opinion on her knowledge of Manitoba law, specifically the Liquor Control Act (Manitoba), Specialty Wine Store Regulations which she attaches to her affidavit (Exhibit A). I am satisfied that Ms. Mulhern is qualified as an expert in Manitoba law. Ms. Mulhern expresses her opinion that it would be contrary to Manitoba law for the Opponent to own a winery (i.e. be a manufacturer of wine) while also directly or indirectly owning or operating a private specialty wine store. The Applicant submits, based on Ms. Mulhern’s opinion evidence, that the Opponent could thus not engage in the same activities as the Applicant and that this reduces the likelihood of confusion. In response to this submission, the Opponent relies on Masterpiece in support of the proposition that where the registration does not include a restriction on the nature of the trade, any such restrictions in practice should not be considered. I agree with the Opponent’s submission and refuse to accept the Applicant’s submission on this point.
Additional Surrounding Circumstance – State of the Register and Marketplace Evidence
[54] The Applicant filed substantial state of the register and marketplace evidence.
[55] Mr. Coppola states that the word “mondo” is used by many persons and companies in a variety of industries, with a variety of wares and services, including wine and grape juices. Mr. Coppola states that there are 39 Canadian registered trade-marks which include the word “mondo” (Exhibit 8) belonging to third parties other than the Opponent. I note that, as submitted by the Opponent, only three of these (TMA635,520, TMA634,505 and TMA699,457) are for relevant wares (i.e. wine related wares or, more generally, food and beverage wares). The Applicant disagreed with the Opponent’s interpretation of the state of the register evidence, submitting that the clothing and accessory registrations are also relevant as such products could also be purchased in grocery stores. I do not agree with the Applicant’s interpretation of the state of the register evidence.
[56] When analyzing the relevance of state of the register evidence, it must be noted that such evidence will only be relevant insofar as one can make inferences from it about the state of the marketplace. Inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.); Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]. I am not satisfied that three relevant registrations are sufficient to enable me to draw such an inference. As a result, I am not willing to place any weight on this state of the register evidence filed by the Applicant.
[57] The Applicant also filed state of the marketplace evidence with respect to the word “mondo”. Specifically, in his affidavit Mr. Coppola states that the word “mondo” is used extensively and it is overwhelmingly present in the Canadian and international trade in association with wine, vineyards and establishments serving or selling wine. Mr. Coppola attaches to his affidavit printouts from websites referring to third parties employing “mondo” in association with food and beverage related wares and services (Exhibit 11).
[58] Mr. Coppola also states that the expressions “mondo”, “mondo wine” and “mondo vino” are some of the most commonly used expressions on the Internet. In support of this statement Mr. Coppola attaches to his affidavit printouts from the results of his search for these terms (Exhibit 12).
[59] The Applicant makes substantial submissions attempting to rely on the state of the marketplace evidence for the truth of its contents. In the absence of information regarding the necessity and reliability of such evidence, I am not willing to rely on the Internet state of the marketplace evidence filed by Mr. Coppola for the truth of its contents [see Candrug Health Solutions Inc. v. Thorkelson (2007), 60 C.P.R. (4th) 35 (F.C.), reversed (2008), 64 C.P.R. (4th) 431 (F.C.A.)].
[60] The remainder of the state of the register and state of the marketplace evidence adduced by the Applicant through the Coppola, Huguenin, Graniero and Di Palma affidavits relates to the alleged coexistence of other marks on the register or in the marketplace (i.e. “nu” and “non-nu” marks; “new” and “non-new” marks and “world” and “new/nu world” marks). The fact that third party “nu” marks are able to coexist with other third-party “non-nu” marks is not relevant to a determination of the likelihood of confusion between the Mark and the Opponent’s MONDO Marks. Each case must be determined based on the facts of the particular case. As a result, I am not placing any weight on this additional state of the register and state of the marketplace evidence.
[61] With respect to the Mark, Mr. Coppola states that the expression NuMondo is a very distinct and uncommon term. In support of this statement Mr. Coppola attaches the results from his Google search for this term which he states indicates only 557 hits worldwide with only seven pages from Canada, all except one referring to the Applicant (Exhibit 13). I am not willing to rely on these websites as evidence of the truth of the contents of the statements made thereon [see Candrug, supra].
[62] Based on the foregoing, I find that the state of the register and marketplace evidence filed by the Applicant does not form a relevant surrounding circumstance upon which the Applicant may rely.
Additional Surrounding Circumstance – Opponent’s Family of MONDO Marks
[63] The Opponent cited the alleged family of MONDO trade-marks as serving as an additional surrounding circumstance supporting the Opponent’s position.
[64] The Opponent’s main submission is that by virtue of its use of the MONDO Marks in association with a wide variety of food products, the use of another mark incorporating the MONDO element in association with another type of beverage product would result in confusion as members of the public have become accustomed to seeing the Opponent’s MONDO Marks in association with many different food products. The Opponent submits that it has used the MONDO family of marks in association with a wide range of food products and in association with the distribution of an even wider range of products, including grapes and grape juice for making wine, over a lengthy period of time. The Opponent thus submits that by virtue of this, consumers familiar with the Opponent’s family of MONDO Marks will conclude that the Mark is somehow associated with the Opponent.
[65] In order to rely on a family of marks, the party must evidence use of those marks in the marketplace [see McDonald’s Corp. v. Yogi Yogurt (1982), 66 C.P.R. (3d) 101 (F.C.T.D.)]. The Opponent submits that the evidence sufficiently breaks down the sales figures to meet the threshold of proof for establishing a family of marks. I am satisfied that the Opponent has provided evidence of use of four MONDO trade-marks, and two BEL’MONDO trade-marks.
[66] Based on the foregoing, I find that the Opponent’s family of MONDO Marks is a surrounding circumstance that favours the Opponent.
Conclusion
[67] Having considered all of the surrounding circumstances, in particular the extent to which the Opponent’s MONDO Marks have become known and the length of time that they have been in use and the existence of a family of MONDO Marks belonging to the Opponent, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and each of the Opponent’s MONDO Marks.
[68] Having regard to the foregoing, the ground of opposition based on s. 12(1)(d) is successful.
Non-entitlement Grounds – Section 16(3) of the Act
[69] Despite the onus of proof on the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s MONDO Marks and Trade-names, the Opponent has the initial onus of proving that one or more of the trade-marks or trade-names alleged in support of its ground of opposition based on s. 16(3) of the Act was used in Canada prior to the filing date for the Applicant’s application (March 19, 2007) and had not been abandoned at the date of advertisement of the application for the Mark (July 2, 2008) [s. 16(5) of the Act].
[70] In addition to the evidence discussed above in the analysis of the s. 12(1)(d) ground of opposition, the Opponent also provides evidence of its operations in the wine industry allegedly in association with the MONDO Marks. Specifically, in his affidavit, Mr. De Nardi states that in the past and presently the Opponent has dealt in wine and winemaking products, including wine-making equipment. Mr. De Nardi states that in addition to selling grapes/juices for making wine, the Opponent’s Grape Division also sells wine-making equipment, including wine presses, wine crushers, bottling equipment and fermentation equipment. Mr. De Nardi states that sales of wine making equipment by the Opponent’s Grape Division have generated thousands of dollars of revenue since 1975. I note that the Opponent has not provided any evidence of use of the Opponent’s MONDO Marks in association with wine-making equipment beyond these sworn statements.
[71] The Applicant objects to the Opponent’s allegations regarding the sale of wine-related products by relying on the results of Mr. Coppola’s July 8, 2009 review of the Opponent’s website (www.mondofoods.com) wherein he noted that despite the home page making reference to “Wine Distributor”, he was unable to find any reference to product listings for wine with the exception of the page “Our Products: Oils and Condiments” where reference was made to cooking wine (Exhibit 3). The Opponent admitted that the cooking wine sold by the Opponent is not branded with the Opponent’s MONDO Marks.
[72] As discussed more fully above in the analysis of the s. 12(1)(d) ground of opposition, I am satisfied that the Opponent has evidenced use of the Opponent’s MONDO Marks and Trade-names at the material dates and thus has met its evidential burden.
[73] The difference in material dates is not significant and as a result my findings under the ground of opposition based on s. 12(1)(d) of the Act are equally applicable here. As a result, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and each of the Opponent’s MONDO Marks and Trade-names.
[74] Based on the foregoing, the non-entitlement grounds of opposition are also successful.
Non-distinctiveness Ground – s. 38(2)(d) of the Act
[75] While there is a legal onus on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its Wares from those of others throughout Canada [see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (T.M.O.B.)], there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the ground of non-distinctiveness.
[76] Pursuant to its evidential burden, the Opponent is under an obligation to show that, as of the filing of the statement of opposition, one or more of the Opponent’s MONDO Marks and Trade-names had become known sufficiently to negate the distinctiveness of the Mark [see Bojangles’ International, LLC v. Bojangles Café Ltd. (2004), 40 C.P.R. (4th) 553, affirmed (2006), 48 C.P.R. (4th) 427 (F.C.T.D.)].
[77] As discussed more fully in the analysis of the s. 12(1)(d) ground of opposition, the Opponent was successful in establishing that the Opponent’s MONDO Marks and Trade Names had become known to some extent as of the date of filing the statement of opposition and as a result the Opponent has met its evidential burden.
[78] The difference in material dates is not significant and as a result my findings under the ground of opposition based on s. 12(1)(d) of the Act are equally applicable here. As a result, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and each of the Opponent’s MONDO Marks and Trade-names and thus, the non-distinctiveness ground is also successful.
Disposition
[79] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office