SECTION 45 PROCEEDINGS
TRADE-MARK: NIFTY NUTS-THE NIFTY SNACK
REGISTRATION NO.: TMA 373,076
On May 21, 1998, at the request of Messrs. Riches, McKenzie & Herbert, the Registrar forwarded a Section 45 notice to 783234 Ontario Limited, the registered owner of the above-referenced trade-mark registration.
The trade-mark NIFTY NUTS-THE NIFTY SNACK is registered for use in association with the following wares: Snack food products namely nuts, peanuts, potato chips and crackers.
In response to the notice, the affidavit of Gary Biesenthal together with exhibits was furnished. Each party filed a written argument and was represented at the oral hearing.
In his affidavit, Mr. Biesenthal states that he is Executive Vice President of The New York Food Company Limited (“New York Food”) a licensee of the registrant and that he has personal knowledge of the facts he deposes to unless stated to be on information and belief. He mentions that the registrant has licensed D’Angelo Food Ontario Ltd. (“D’Angelo Food”) and his company to distribute various food products in association with all the trade-marks of the registrant. He specifies that D’Angelo Food, New York Food and the registrant are all companies of which Frank D’Angelo is the President and the controlling shareholder, officer and director. He specifies that the registrant has, under its licences, direct and indirect control of the character and quality of the food products manufactured for and distributed by D’Angelo Food and New York Food under the trade-marks owned by the registrant. He submits that his company has, in the three-year relevant period and continuously since, been selling snack foods namely dry roasted peanuts in association with the trade-mark to grocery retailers in Canada. He attaches a photograph of the wares as well as a copy of the label associated with the dry roasted peanuts and he indicates that annual sales of the products in association with the trade-mark were about $500,000 in 1997. He also furnishes copies of representative invoices of New York Food with respect to peanuts sold in Canada during the relevant period. He mentions that the “Nifty Dry Roasted Peanuts” have been advertised and promoted extensively in print, radio and television advertising and he provides a copy of photographs of the company’s trucks and trailers which display the trade-mark.
The requesting party raised several arguments. It argues that the registered owner has not shown use of the trade-mark for the following reasons:
(a) there is absolutely no evidence whatsoever to show any use of “nuts”, “potato chips” and “crackers”;
(b) with respect to dry roasted peanuts, the markings which appear on the label of Exhibit “4" to the Biesenthal affidavit (and which represents the only purported “use” of the mark) are significantly different than the mark as shown as being registered in the Registration, and therefore, such markings do not constitute the mark as registered; and
(c) if the markings on the label of Exhibit 4 are found to be the “mark” as registered, there is no “use” inuring to the benefit of the Registered Owner, in that the source of the dry roasted peanuts as perceived by customers who purchase the product as shown in Exhibit “4" to the Biesenthal affidavit is a third party, namely D’Angelo Food Ont. Ltd., which is not an entity falling within the scope of Section 50 of the Trade Marks Act.
Concerning the requesting party’s first point, I totally agree that the evidence fails to show any use in association with “nuts, potato chips and crackers” and that these wares ought to be deleted from the trade-mark registration.
Concerning the wares “peanuts” the evidence clearly shows sales of such wares during the relevant period. The issues are whether the trade-mark shown to be in use with such wares constitutes use of the registered trade-mark NIFTY NUTS-THE NIFTY SNACK and whether the use accrues to the registered owner.
I reproduce below, for convenience, the manner the trade-mark appears on the label submitted as Exhibit 4:
It is true that the words NIFTY NUTS and the words THE NIFTY SNACK appear on the label. However, as properly argued by the requesting party they do not appear together as one trade-mark. The words NIFTY NUTS appear on the upper portion of the label while the words THE NIFTY SNACK appear on the bottom portion of the label and the two expressions are separated from one another by the words DRY ROASTED PEANUTS.
At the hearing, counsel for the registrant submitted that the trade-mark is being used with additional matter and that the test when there is additional matter is “does the additional matter prevent the trade-mark from being used”. Relying on the first principle set out in the case Nightingale Interloc Ltd. v. Prodesign Ltd., 2 C.P.R. (3d) 535, he argued that as the additional matter is descriptive, the trade-mark “per se” is being used. He also relied on the case Johann Becker Ohg Likörfabrik v. Registrar of Trade-marks et al, 71 C.P.R. (3d) 461, and submitted that in the case of additional matter that is merely descriptive, the trade-mark is not considered to have been significantly changed from the trade-mark as registered. He then concluded that as the additional matter in this case is of the type described in Nightingale, (Principle 1), supra, as being purely descriptive material, such additional matter does not prevent the mark “per se” from being used.
The requesting party on the other hand argued that the fact that the additional words “Dry Roasted Peanuts” are descriptive is a factor to consider, but it is not the only factor. I agree. In the present case there are several factors such as the location of each phrase on the label i.e. the words NIFTY NUTS appearing on the top portion in the colour red and followed by the ® symbol, while the words THE NIFTY SNACK are in white and appear on the bottom portion of the label and after the words Dry Roasted Peanuts. Also, the top portion of the label is a gold color while the bottom portion is blue. Further, two horizontal red lines underneath the words NIFTY NUTS also serve to separate the words NIFTY NUTS from the other reading matter on the label.
Consequently, as a matter of first impression, the public would probably not perceive the trade-mark NIFTY NUTS-THE NIFTY SNACK “per se” as a single trade-mark but would perceive the words NIFTY NUTS as one trade-mark and the words THE NIFTY SNACK as another trade-mark or slogan.
Therefore, I conclude that the trade-mark appearing on the label does not constitute use of the registered trade-mark.
Concerning the fact that the trade-mark as registered is displayed on the registrant’s or licensees’ trucks and trailers, I am not satisfied that such display consists of use of the trade-mark in association with wares in the manner required by Section 4(l) of the Act.
The trade-mark is displayed thereon with several other trade-marks and, in my view, unless there is evidence that would show otherwise, such display consists of mere advertising of these trade-marks. At the hearing, counsel for the registrant submitted that the appearance of the trade-mark on the trucks at the time of delivery of the wares to customers would provide the required notice between the trade-mark and the wares. I disagree. Without any evidence showing that at the time of delivery the present trade-mark is brought to the attention of the purchaser of the wares in a way that the purchaser (receiver) would thereby get notice of association, I find that the presence of the trade-mark and other trade-marks on the trucks and trailers is not use of the trade-mark in association with wares pursuant to Section 4(l) ; consequently, as there is no convincing evidence to the contrary, I conclude that the display of the trade-mark on the trucks and trailers is mere advertising.
The requesting party also argued that any use shown was not use accruing to the registered owner. Because of my conclusion above, I need not consider the matter. However, I would add that the evidence is somewhat ambiguous on such matter. In this regard, I have noted that the packaging for the peanuts bear the mention “prepared for D’Angelo Food Ontario Ltd” which I take to mean manufactured for D’Angelo Food. Concerning such company, Mr. Bisenthal (an officer of New York Food) has stated that it is a licensed user of the trade-mark. However, such statement appears to be inadmissible hearsay. I also note that in the license agreement between the registrant and New York Food, it is indicated at paragraph 2 thereof, that New York Food has been granted the exclusive right and license in the Territory (i.e. Canada and the United States), to promote, advertise, manufacture, have manufactured, distribute and sell the licensed products in conjunction with the trade-mark. I find the reference therein to an exclusive license raises doubt as to whether D’Angelo Food was a licensed user. Consequently, I would have had to conclude that the evidence was insufficient to permit me to conclude that the use of the trade-mark by D’Angelo Food accrued to the registered owner.
In view of the above, I conclude that the trade-mark registration ought to be expunged.
Registration No. TMA 373,076 will be expunged in compliance with the provisions of Section 45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 25th DAY OF APRIL, 2000.
D. Savard
Senior Hearing Officer
Section 45