Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2011 TMOB 223

Date of Decision: 2011-11-16

IN THE MATTER OF AN OPPOSITION by Nissin Foods Holdings Co., Ltd. to application No. 1,078,721 for the trade-mark NISSHIN FOODS INC. in the name of Nisshin Seifun Group Inc. 

 

[1]               On October 16, 2000, Nisshin Flour Milling Co., Ltd. filed an application to register the trade-mark NISSHIN FOODS INC. (the Mark). On July 2, 2001, Nisshin Flour Milling Co., Ltd. changed its name to Nisshin Seifun Group Inc. I shall use the term Applicant to refer to Nisshin Flour Milling Co., Ltd. or Nisshin Seifun Group Inc. as the case may be.

[2]               The application was advertised for opposition purposes in the Trade-marks Journal of November 29, 2006.

[3]               The application is based upon proposed use of the Mark in Canada in association with the following wares:

(1) curry; preparations for stew, namely, prepared sauces in foil pouches; prepared savoury heat and serve sauces;
(2) flour for food; processed grains; pre-cooked frozen foods, namely, frozen entrees; preparations for making instant cakes or cookies; powdered preparations for ice creams and sherbets

(the Wares).
                                      

[4]               The Applicant has disclaimed the right to the exclusive use of the word FOODS apart from the Mark.

[5]               On April 27, 2007, Nissin Shokuhin Kabushiki Kaisha (Nissin Food Products Co., Ltd.) (the Opponent) filed a statement of opposition against the application. The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.

[6]               In support of its opposition, the Opponent filed an affidavit of Masaki Kato (the General Manager of its Legal Division), plus certified copies of four Canadian trade-mark registrations (TMA459,838, TMA462,967, TMA685,716 and TMA462,170). In support of its application, the Applicant filed affidavits of Kisaburo Suzuki (the General Manager in the Intellectual Property Department of its General Administration Division) and Lisa Saltzman (director of the trade-mark searching department with Onscope™ a division of Marque d’or Inc.), plus certified copies of two Canadian trade-mark registrations (TMA448,619 and TMA510,205). None of the affiants was cross-examined.

[7]               Both parties filed written arguments.

[8]               The Opponent has changed its name to Nissin Foods Holdings Co., Ltd.

[9]               An oral hearing was held in which both parties participated.

Grounds of Opposition

[10]           The Opponent initially pleaded grounds of opposition pursuant to s. 38(2)(b), (c) and (d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act). However, at the oral hearing, the Opponent restricted its grounds to the following:  

1.      The Mark is not registrable pursuant to s. 12(1)(d) of the Act as it is confusing with the following registered marks of the Opponent:

(a)    NISSIN, registration No. TMA459,838;

(b)   NISSIN & Design, registration No. TMA462,967;

(c)    NISSIN & Design, registration No. TMA685,716.

2.      The Mark is not distinctive within the meaning of s. 2 of the Act because the Mark does not actually distinguish the Applicant’s wares from the wares of the Opponent, and is not adapted to distinguish them as use of the Mark is likely to cause confusion with the Opponent’s NISSIN and NISSIN & Design trade-marks, all previously used and registered in Canada.

Onus

[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].

Section 12(1)(d) Grounds of Opposition

[12]           The material date for assessing the likelihood of confusion under s. 12(1)(d) is today’s date [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.)].

[13]           The Opponent’s initial onus has been met because the three pleaded registrations are extant.

[14]           The NISSIN & Design marks that are the subject of registration Nos. i) TMA462,967 and ii) TMA685,716 are very similar; they are shown below:

i)ii)

[15]           The statement of wares in each of the Opponent’s registrations TMA459,838 and TMA462,967 reads “noodle soup mixture consisting primarily of noodles and soup base.” The statement of wares in the Opponent’s registration No. TMA685,716 reads “noodle soups; instant noodle soups; noodle soups consisting primarily of dried noodles and a soup mix sold in a disposable container; noodles; dried noodles.”  

[16]           I consider the Opponent’s NISSIN word mark to present the Opponent’s strongest case; I will therefore address the s. 12(1)(d) ground by focusing on the likelihood of confusion between NISSIN and the Mark. Before proceeding, I note that the use or promotion of either of the Opponent’s NISSIN & Design marks also qualifies as use and promotion of the Opponent’s NISSIN word mark.

[17]           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.

[18]           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), 92 C.P.R. (4th) 361 (S.C.C.).]

[19]           The test for confusion is one of first impression and imperfect recollection. Mr. Justice Binnie expressed the approach to be taken as follows in Veuve Cliquot Ponsardin v. Boutiques Cliquot Ltée (2006), 49 C.P.R. (4th) 401 (S.C.C.) at para. 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 [mark] at a time when he or she has no more than an imperfect recollection of the [prior] 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. , [1969] S.C.R. 192 at p. 202, 57 C.P.R. 1 , 1 D.L.R. (3d) 462:

    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, 3rd ed., vol. 38, para. 989, at p. 590.)

 

inherent distinctiveness of the marks, the extent to which each mark has become known, and the length of time the marks have been in use

[20]           Both marks have some inherent distinctiveness. Only the Opponent’s mark has been used or promoted in Canada. Use of the Opponent’s NISSIN mark began in Canada as early as February 2, 1981. Canadian sales of the Opponent’s NISSIN products exceeded $12 million US between 2002 and 2007. Although the Applicant has pointed out that Mr. Kato’s evidence concerning sales does not identify the specific products that were sold, it is reasonable to accept that a significant portion of the sales is attributable to the Opponent’s main product, namely instant noodle soups. Even if I accord reduced weight to the sales figures provided by Mr. Kato, it is nevertheless clear that the Opponent’s mark has become more known than the Applicant’s unused Mark.

the nature of the wares, services, business and trade

[21]           When considering the wares, services and trades of the parties, it is the statement of wares or services in the parties’ trade-mark application and registration that govern in respect of the issue of confusion arising under s. 12(1)(d) [see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Dale Bohna (1984), 58 C.P.R. (3d) 381 (F.C.A.)]. 

[22]           Although the parties do not sell identical wares, the marks at issue are both associated with food products (including prepared food products) that would likely be sold through grocery stores. 

[23]           Insofar as the Opponent is concerned, Mr. Kato has attested that although the primary business is the manufacture, processing and sale of instant cooking noodles and other instant foodstuffs, the Opponent has expanded its product lines from noodles to items such as frozen foods, soups and desserts. Insofar as the Applicant is concerned, Mr. Suzuki has attested that the primary business areas include the manufacture and sale of pasta, pasta sauces, premixes, flour for consumer use, heat-n-serve products, dried noodles, chilled and frozen food products.

[24]           The parties are in the same industry and it is reasonable to assume that their food products could travel through the same channels of trade.  

degree of resemblance between the marks

[25]           NISSIN and NISSHIN FOODS INC. resemble each other in appearance and sound. The Supreme Court in Masterpiece advised that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trade-mark that is particularly striking or unique. Clearly it is the word NISSHIN that is the particularly striking aspect of the Mark (FOODS and INC. being descriptive and non-distinctive), and NISSHIN is remarkably similar to NISSIN. Although there is some indication in Ms. Saltzman’s evidence that NISSHIN is the name of a city in Japan, there is no evidence that this would be known to the average Canadian purchaser of food products. Also, as pointed out by the Opponent, the Applicant informed the Registrar in its registration No. TMA510,205 that “the word NISSHIN has no meaning coined word.”

[26]           As NISSHIN and NISSIN are not words in the French or English language, it seems likely that the average Canadian consumer would respond to both words as being either invented or of a foreign origin – in either case, the idea suggested by such words cannot be relied upon to distinguish the marks.

other surrounding circumstances

[27]           Ms. Saltzman has provided the results of searches that she conducted directed to NISSHIN and NISSIN. However, she located only one third party trade-mark registration that covers food (TMA447,214) and that clearly is insufficient to draw any conclusion about the state of the marketplace [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.)]. The common law search results also do not assist the Applicant’s case as the third party business names located that incorporate NISSIN, NISSHIN, or a similar word have not been shown to be active in Canada in the food industry [see Consumers Distributing Co. Ltd. v. United Consumers Club, Inc. (1991), 35 C.P.R. (3d) 259 (F.C.T.D.) at 268].

[28]           The Applicant submits that it is significant that it has registered NISSHIN marks in many countries of the world and has co-existed with the Opponent’s NISSIN marks abroad, with no evidence being presented of confusion abroad. However, the Opponent points out that the foreign registrations of the Applicant are primarily not for the Mark that is the subject of the present proceeding, but instead combine NISSHIN with other words such as SEIFUN which might serve to better distinguish the Applicant’s mark. Moreover, the Opponent directs me to Haw Par Brothers International Ltd. v. Canada (Registrar of Trade Marks) (1979), 48 C.P.R. (2d) 65 (F.C.T.D.) where Mr. Justice Marceau determined that little can be drawn from the fact that trade-marks coexist in other jurisdictions, for the Registrar's decision must be based on Canadian standards, having regard to the situation in Canada [see also Vivat Holdings Ltd. v. Levi Strauss & Co. (2005), 41 C.P.R. (4th) 8 (F.C.)].

[29]           The Applicant has evidenced that it owns Canadian trade-mark registration No. TMA448,619 for the following mark for tempura batter mix, breader mix and flour:

conclusion

[30]           Having considered all of the surrounding circumstances, I find that the Applicant has not established, on a balance of probabilities, that confusion is not likely between NISSHIN FOODS INC. and NISSIN. I reach this conclusion primarily because there is a high degree of resemblance between the marks, the marks are associated with similar wares, and only the Opponent’s mark has acquired a reputation in Canada. As alluded to earlier, the test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees or hears the mark NISSHIN FOODS INC. at a time when he or she has no more than an imperfect recollection of the prior mark NISSIN, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.

[31]           The s. 12(1)(d) ground of opposition therefore succeeds based on registration No. TMA459,838.

Distinctiveness Ground of Opposition

[32]           There is an initial burden on the Opponent to establish that, as of April 27, 2007, one or more of the pleaded trade-marks was known to an extent that could negate the distinctiveness of the Mark; the trade-mark’s reputation should be substantial, significant or sufficient [see Bojangles’ International LLC v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.)]. Mr. Kato’s evidence satisfies this initial burden.

[33]           The evidence as of April 27, 2007 does not favour the Applicant anymore than it does as of today’s date. I therefore find that there was a reasonable likelihood of confusion between NISSIN and the Mark as of April 27, 2007 for reasons similar to those set out under my discussion of the s. 12(1)(d) ground. Thus the Mark was not distinctive as of April 27, 2007.

[34]            Accordingly, the distinctiveness ground of opposition also succeeds.

Disposition

[35]            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.

______________________________

Jill W. Bradbury

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office