Section 45 Proceedings

Trade-mark: CARIBREW COFFEE

Registration No: TMA 526,304

At the request of Bereskin & Parr the Registrar forwarded a notice under section 45 of the Trade-marks Act on August 30, 2004 to Red Carpet Food Systems Inc., the registered owner (at that time) of the above referenced trade-mark. 

The trade-mark CARIBREW COFFEE is registered for use in association with: 

WARES: Coffee machines and ground coffee namely, hand-operated coffee grinders, electric coffee grinders for commercial use, power-operated coffee grinders for commercial use, electric coffee grinders for domestic use, electric coffee makers for commercial use, electric coffee makers for domestic use, electric coffee percolators, non-electric coffee percolators, electric coffee pots, coffee pots, coffee roasting ovens, non-electric coffee servers.

SERVICES: Office coffee supply services.

Section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13, requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and/or services listed on the registration at any time within the three year period immediately preceding the date of the notice, and if not, the date when it was last in use and the reason for the absence of use since that date.  In this case the relevant period for showing use is any time between August 30, 2001 and August 30, 2004.

Use in association with wares is set out in subsection 4(1) of the Trade-marks Act:

A trade-mark is deemed to have been used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.

Special provisions relating to the export of wares are contained in subsection 4(3) of the Act; this subsection is not relevant in the present proceedings.

In response to the Registrar’s notice, the registrant furnished the affidavit of Jean-Yves Monette, President and Chief Executive Officer of Van Houtte Inc., the current owner of the subject trade-mark registration (as of April 26, 2006). Both parties filed written submissions and attended the oral hearing.

Mr. Monette states that Van Houtte acquired Red Carpet Food Systems Inc. in 1994, and that since then Red Carpet has operated as a division of Van Houtte. However, the trade-mark register indicates that the subject trade-mark was assigned on April 26, 2006 from Red Carpet Food Systems Inc., to Van Houtte Inc. I agree with the requesting party that the date of the assignment implies that Red Carpet maintained its status as a separate company after it was purchased in 1994. I further agree that it would have been preferable to have more detail regarding the corporate relationship between the two companies; however, I find no ambiguity in the facts as presented as they relate to Mr. Monette’s knowledge and access to relevant records. In my view either relationship, subsidiary or division, implies control over Red Carpet by Van Houtte.

Merriam-Webster’s Online Dictionary defines “subsidiary” as: “one that is subsidiary; especially: a company wholly controlled by another”.

Merriam-Webster’s Online Dictionary defines “division” as: “an administrative or operating unit of a governmental, business, or educational organization”.

In other words, whether Red Carpet is a division or a subsidiary, I am prepared to accept that as Van Houtte’s CEO, Mr. Monette would be in a good position to have knowledge of the facts and access to the relevant records relating to Red Carpet.

In paragraph 2 Mr. Monette describes the registrant’s business as a full coffee service provided to businesses or offices. Coffee and related equipment and supplies, such as coffee machines, coffee pots, coffee cups, coffee stir sticks, are delivered directly to customers on a regular basis; service of the coffee equipment is also provided as needed. Attached as Exhibit A is a photograph of a sign stated to be the signage at the registrant’s Williams Lake facility. The requesting party pointed out that no statement is made that this sign or similar sign was in use during the relevant period.

In paragraph 3 Mr. Monette states that the subject trade-mark has been used continuously in association with the coffee supply service business in Canada since at least as early as January 1988, and that the trade-mark continues to be so used. Mr. Monette states that the trade-mark appears on the invoices and the equipment supplied to the customers. Exhibit B consists of photographs of representative samples of the coffee machines and coffee pots supplied as part of the service. The trade-mark CARibrew Coffee appears on the coffee machines; the coffee pots shown in the pictures are marked with the word CARIBREW and a coffee cup design identical to the design on the sign in Exhibit A. I note that there is no indication anywhere in the affidavit that there were actual sales of coffee machines and coffee pots; rather these were supplied as part of the office coffee supply services.

With respect to the use of the word CARIBREW alone on the coffee pots, as set out in Canada (Registrar of Trade-marks) v. Cie International pour l’informatique CII Honeywell Bull (1985), 4 C.P.R. (3d) 523 at 525 (F.C.A.), where the mark as used deviates from the mark as registered, the question to be asked is whether the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used. In deciding this issue, one must look to see if the “dominant features” have been preserved (Promafil Canada Ltée v. Munsingwear Inc., 44 C.P.R. (3d) at 59 (FCA)).

The decision as to which elements are the dominant features and whether the deviation is minor so as to permit a finding of use is a question of fact to be determined on a case-by-case basis. I am in agreement with the registrant that the dominant feature of the subject-mark is the word CARIBREW. The absence of the word COFFEE from the mark as used is not significant in that COFFEE is descriptive and therefore not a dominant feature of the trade-mark. Further, the addition of the smaller coffee pot/cup and line design in close association with the word mark, does not alter CARIBREW as the dominant feature.

In view of all of the foregoing, I find that the dominant feature of the trade-mark as registered has been preserved in the trade-mark as it appears on the signage and on the coffee pots supplied as part of the services.  The overall impression created by the registered trade-mark is not lost and I therefore conclude that the public as a matter of first impression would perceive the mark used as being the trade-mark per se (Nightingale Interloc Ltd.v. Prodesign Ltd. 2 C.P.R. (3d) 535).

In paragraph 4 Mr. Monette attaches sample invoices as Exhibit C that are dated during the relevant period. These contain references to “dark house blend”, “mellow house” “decaf” ‘house blend”, as well as “stir stks”, “carn. coffeemate”, and “sugar cubes”. At the top of each invoice is CARIBREW COFFEE SRV underneath which appears an address and telephone number. With respect to wares, I am in agreement with the requesting party that the appearance of CARIBREW COFFEE SRV at the top of the invoice is not use of the subject trade-mark registration on wares listed therein (Boutiques Progolf Inc. v. Canada (Registraire des Marques de Commerce (1989) CarswellNat 562, 27 C.I.P.R. 3, 35  F.T.R. 66; Tint King of California Inc. v. Canada (Registrar of Trade-marks), [2006] F.C.J. No.1808). In fact, as mentioned earlier, I find no indication, on the invoices or anywhere in the affidavit of sales of wares marked with the subject trade-mark in accordance with section 4(1) of the Act. In any event, the registrant indicated that it was not advancing an argument for use of the trade-mark on wares but did submit that these invoices demonstrated use of CARIBREW COFFEE in association with coffee supply services.

The requesting party argued that the appearance of CARIBREW COFFEE SRV on the invoices could not support a conclusion of use of the trade-mark on the services of supplying the goods listed therein, since this was use of a trade-name and not a trade-mark. I do not agree. Although CARIBREW COFFEE SRV appears at the top of the invoices above an address and telephone number, it appears in much larger print than the other information, and I note that the full word “service” does not appear on the invoice. That is to say, while the registrant may have been doing business under that name, (as suggested by Exhibit D-copies of letters addressed to CARIBREW COFFEE SERVICES), I find that the abbreviation of service to SRV on the invoices creates the impression that CARIBREW COFFEE is being used as a trade-mark to distinguish the owner’s coffee supply services from those of others. This is unlike the decision of the Hearing Officer in Bull, Houser & Tupper v. Bulldog Bag Ltd. 40 C.P.R. (3d) 157 1991, since in that case the use of the letters ‘tm” after the abbreviation of Pkg in MARATHON PKG was found to create the impression that the trade-mark was MARATHON PKG and not MARATHON as registered. Further, CARIBREW COFFEE SRV is much larger and more legible than the address and phone number and, as was the case in Road Runner Trailer Mfg. Ltd. v. Road Runner Trailer Co. Ltd. et al (1984), 1 C.P.R. (3d) 443 (F.C.T.D.), this adds to the impression of CARIBREW COFFEE as a trade-mark.

In any event, I find that the appearance of CARIBREW COFFEE and of CARIBREW on the coffee machines and pots supplied as part of the services, supports the conclusion that the subject trade-mark was in use in association with coffee supply services during the relevant period. In this regard the requesting party objected to the fact that there was no statement that these photos were taken during the relevant period. However from the statement in paragraph 3 that the trade-mark has been used continuously in association with the said services in Canada since at least as early as January 1988, and that Exhibit B photographs of coffee machines and coffee pots are attached by way of example, I am willing to conclude that these photographs represent the manner in which the equipment supplied as part of the “office coffee supply services” was marked with the trade-mark during the relevant period.

The requesting party argued that the invoices demonstrate sales to businesses and not to offices (i.e. this is not use of the services as registered). This submission was supported by reference to Mr. Monette’s statement in paragraph 2 that the services are supplied to “businesses or offices”. In my view this is an overly technical argument; clearly on a common sense understanding of the word “office”, an office is a place of business, and most businesses, regardless of their nature, have some kind of office. In any event, while it is true that some of the invoices indicate sales to restaurants that might not qualify as an “office”, there are invoices relating to sales to a community skills centre, and to a company called “United Concrete”, both of which must contain some offices. 

In view of all of the foregoing I have concluded that use has been shown of the subject trade-mark on services of “office coffee supply services”; use has not been shown on the wares. TMA No. 526,304 will therefore be amended to delete the wares:

“Coffee machines and ground coffee namely, hand-operated coffee grinders, electric coffee grinders for commercial use, power-operated coffee grinders for commercial use, electric coffee grinders for domestic use, electric coffee makers for commercial use, electric coffee makers for domestic use, electric coffee percolators, non-electric coffee percolators, electric coffee pots, coffee pots, coffee roasting ovens, non-electric coffee servers”,

for failure to show use pursuant to Section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13.

DATED AT GATINEAU, QUEBEC, THIS 17th DAY OF OCTOBER 2007.

P. Heidi Sprung

Member, Trade-marks Opposition Board