Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Maya Overseas Foods, Inc. to application No. 1,200,096 for the trade-mark MAYA’S CREATION filed by Multicuisine Foods Ltd._________________

                                                        

 

On December 22, 2003, Multicuisine Foods Ltd. (the “Applicant”) filed an application to register the trade-mark MAYA’S CREATION (the “Mark”) based on proposed use in association with food products comprising: sauce, samosa, roti, croquette.

 

The application was advertised for opposition purposes in the Trade-marks Journal of August 11, 2004. On September 1, 2004, Maya Overseas Foods, Inc. (the “Opponent”) filed a statement of opposition against the application. The statement of opposition pleaded grounds of opposition under s. 38(2)(b), (c), and (d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”). The Applicant filed and served a counter statement in which it denied the Opponent’s allegations. I have disregarded those portions of the counter statement that comprise evidence. Evidence must be filed in accordance with rule 41 or 42 of the Trade-marks Regulations (1996) in order to be considered.

 

As rule 41 evidence, the Opponent filed the affidavit of Umesh Mody, the Opponent’s President. The Applicant elected to not file any evidence.

 

Both parties filed a written argument. I have disregarded the Applicant’s written argument to the extent that it refers to matters that have not been properly introduced as evidence.

 

An oral hearing was not requested.

 

Onus

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 Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.).]

 

Section 38(2)(b) Ground of Opposition

The ground of opposition pleaded under s. 38(2)(b) alleges that the Applicant’s Mark is not registrable because it is confusing with the Opponent’s trade-mark MAYA, as registered under No. TMA558,107. The statement of wares and services in that registration reads as follows:

WARES:
East Asian food products, namely ghees, namely liquid butters, oils, namely almond, coconut, corn, mustard and sesame; processed peppers, processed edible seeds; lentils, dried beans, dried chick peas, pickles, snack foods, namely processed beans and processed nuts; prepared entrees and snack foods consisting primarily of lentils, dried beans and dried chick peas; chana and daliya consisting primarily of roasted, fried and cooked chick peas; dabla, katki, chhunda consisting primarily of pickles, oil, unripened mango, sugar and spices; mogo chips consisting primarily of fried vegetables; chori and moth consisting primarily of roasted, fried and cooked dried beans; mukhvas consisting primarily of processed nuts and processed seeds; urad consisting primarily of dried beans and lentils; rajbhog mix consisting of processed nuts, chick peas, lentils, rice and spices; spices, alimentary pastes, tea, condiments, namely mustard, salt and ketchup; pepper, flour, rice, sauces, namely ketchup and chutney, prepared entrees and snack foods consisting primarily of rice and flour; chutneys, garam masala consisting primarily of powdered mixed spices; kalonji consisting primarily of spices; rooh afza consisting primarily of a rose flavouring syrup; saunt consisting primarily of powdered dried ginger; sooji; consisting primarily of flour; bhavanagri gathiya, bikaneri sev, bundi, phulwadi, papdi, sev, chevdo, namely snacks consisting primarily of chick pea flavour, spices, raisins and oil; flavouring syrup, namely citric acid used for food purposes, all excluding bottled drinking water of any type.

SERVICES:
Retail grocery store services featuring groceries for consumers of East Asian food; wholesale distributorship in the field of groceries for consumers of East Asian origin, all excluding bottled drinking water of any type.

 

As the registration is in good standing, the Opponent has satisfied its evidential burden.

 

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 specifically enumerated in s. 6(5) of the Act, namely: the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; and the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

 

In Polo Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9 C.P.R. (4^th) 51 (F.C.A.) at 58-59, Malone J.A. summarized the guidelines to be applied when assessing the likelihood of confusion as follows:

 

A review of some of the leading cases also establishes some practical guidelines. For example, the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it; the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier. With respect to the degree of resemblance in appearance, sound or ideas under subparagraph 6(5)(e), the trade‑marks at issue must be considered in their totality. As well, since it is the combination of elements that constitutes a trade‑mark and gives distinctiveness to it, it is not correct to lay the trade‑marks side by side and compare and observe similarities or differences among the elements or components of the marks when applying the test for confusion. In addition, trade‑marks must not be considered in isolation but in association with the wares or services with which they are used. When dealing with famous or well‑known marks, it may be more difficult to demonstrate that there is no likelihood of confusion, especially if the nature of the wares are similar. Lastly, the enumerated factors in subsection 6(5) need not be attributed equal weight. Each particular case of confusion might justify greater emphasis being given to one criterion than to others.

 

The material date for assessing the likelihood of confusion under this ground of opposition is the date of my decision. [See Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.).]

 

inherent distinctiveness of the trade-marks

The parties’ marks share a similar degree of inherent distinctiveness. Webster’s New World Dictionary, Second College Edition, defines Maya as both “any member of a tribe of Indians found in Yucatan, British Honduras, and N. Guatemala” and “the [Hindu] goddess Devi”. Accordingly, some Canadians may react to the marks as suggesting that the associated foods are Mexican or Indian in origin. The word “creation” does not add much to the distinctiveness of a mark that is used in association with food dishes.  

 

the extent to which each trade-mark has become known

There is no evidence that the Applicant’s proposed-use Mark has been used or promoted.

 

With respect to the Opponent’s mark, we have only been provided with two invoices, one dated October 10, 2001 and the other April 22, 2003. Mr. Mody states that these are representative and show sales of Maya Food Products to a distributor located in Ontario. The first invoice identifies a number of food items in its body as being MAYA. Both invoices display the MAYA trade-mark at the top, after the words “distributors of”. There is no evidence of any promotion of the Opponent’s mark.

 

Based on the evidence, I conclude that the extent to which the Opponent’s mark has been made known in Canada is, at best, minimal.

 

the length of time each trade-mark has been in use

The length of time that each mark has been in use favours the Opponent.

 

the nature of the wares, services or business; the nature of the trade

Both parties are in the food industry.

 

Mr. Mody informs us that the Opponent operates as a retailer and distributor of grocery products for consumers of East Asian food, selling a wide variety of East Asian food products in association with the MAYA trade-mark. The Opponent, which is located in New York, sells its MAYA products in Canada through distributors who distribute the products to stores.

 

There is no reason to assume that the Applicant’s products could not be sold through the same channels of trade as the Opponent’s.  

 

In its written argument, the Applicant argued that confusion between the marks is not likely because the Opponent’s food products are East Asian while its products are not. It also submitted that the Opponent’s wares are both processed and unprocessed, whereas its wares are all processed. Although the Applicant appears to believe that these differences serve to distinguish its wares from those of the Opponent, I find that they are insufficient to make confusion unlikely.

 

I also note that the Opponent has pointed out that each parties’ list of wares includes sauces and that the Applicant has referred to its samosa wares as being East Indian, which would qualify them as being East Asian. 

 

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

There is an extremely high degree of resemblance between MAYA’S CREATION and MAYA. The Applicant has taken the Opponent’s mark in its entirety and the addition of ’S CREATION does not effectively diminish the resemblance. [See Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) at 188.]

 

conclusion re likelihood of confusion

The legal onus is on the Applicant to show that there is not a reasonable likelihood of confusion between the marks. Given the high degree of resemblance between the two marks, the fact that they are both used in association with food products, and the absence of evidence from the Applicant, I find that the Applicant has not met its onus.

 

The s. 38(2)(b) ground of opposition therefore succeeds.

 

Disposition

 

 

DATED AT TORONTO, ONTARIO, THIS 7th DAY OF SEPTEMBER 2006.

 

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board