IN THE MATTER OF AN OPPOSITION by Nach-o Fast Corporation to application No. 868,471 for the trade-mark NACHOEXPRESS filed by LP International Inc. (and now standing in the name of NX Enterprises LLC)
On February 6, 1998, the applicant, LP International Inc., filed an application to register the trade-mark NACHOEXPRESS for use in association with the following wares:
“Pre-packaged nacho chips, nacho cheese sauce and salsa dip.”
The application was based on proposed use in Canada. The application was subsequently assigned to NX Enterprises LLC. The application was advertised for opposition purposes on September 9, 1998.
The opponent, Nach-o Fast Corporation, filed a statement of opposition on February 9, 1999. The first ground of opposition is that the applicant is not the person entitled to registration of the trade-mark by virtue of s.16(3)(b) of the Act since on the date of filing of the application, the applicant’s NACHOEXPRESS mark was confusing with the opponent’s previously filed application for the mark NACH-O FAST for use in association with nachos, quesadillas, sopapillas, fresh fruit smoothie drinks, and restaurant services namely, snack shops in malls, stadiums, arenas, airports and convenience stores. The opponent’s second ground is that the applied for trade-mark is not distinctive within the meaning of s.2 of the Act since by reason of the foregoing it neither distinguishes nor is adapted to distinguish the applicant’s wares from those of the opponent.
The applicant filed and served a counter statement on April 5, 1999, in which it generally denied the allegations asserted by the opponent in its statement of opposition. As its Rule 41 evidence, the opponent submitted the affidavit of Lisa Cronsberry, Trade-Marks Co-ordinator of the opponent’s agent. The applicant did not file any evidence. Neither party filed a written argument and an oral hearing was conducted at which only the opponent was represented.
As its first ground, the opponent alleged that the applicant is not the person entitled to registration in that, as of the applicant’s filing date, the applied for trade-mark NACHOEXPRESS was confusing with the opponent’s mark NACH-O FAST in respect of which an application for registration had been previously filed under No. 868,471, which was pending at the date of advertisement of the present application. As the opponent has met the initial burden upon it under s.16(4) of the Act, this ground remains to be decided on the basis of the issue of confusion. The material date for assessing the likelihood of confusion in respect of this ground is the filing date of the applicant’s application.
In assessing whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances including those specifically enumerated in s.6(5) of the Act. The Registrar must also bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the material date.
Considering initially the inherent distinctiveness of the trade-marks at issue, neither the applicant’s nor the opponent’s mark possess a high degree of inherent distinctiveness as they are each suggestive of the wares in association with which they are used. The applicant’s mark possesses a slightly higher degree of inherent distinctiveness than the opponent’s mark, however, because it is a coined word As neither party has filed any evidence of use of their mark, the extent to which the trade-marks have become known and the length of time the trade-marks have been in use does not favour either party.
As for the wares and trades of the parties, it is the applicant’s statement of wares and the opponent’s statement of wares and services in its application that govern: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 at 10-11 (F.C.A.); Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R. (3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Dale Bohna (1994), 58 C.P.R. (3d) 381 at 390-392 (F.C.A.). However, these statements must be read with a view to determining the probably type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful: see the decision in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R. (3d) 168 at 169 (F.C.A.).
In the present case, the applied for wares comprise a pre-packaged nacho chips, nacho cheese sauce and salsa dip product. Although I do not find these wares to be identical to the opponent’s various types of Mexican foods including nachos, I do consider the parties’ wares to be quite similar. With respect to the parties’ channels of trade, although the opponent’s mark covers various types of restaurant services, its wares are not restricted to being sold in such channels. As both parties’ wares could be sold in grocery stores and other retail outlets which sell grocery-type items, I find that the parties’ channels of trade would likely overlap.
As for the degree of resemblance between the marks at issue, the marks are somewhat similar in appearance and in sound as both marks begin with the word or component “nacho”. Although the latter components of both marks are quite different in appearance and sound, the ideas suggested by the marks in their entirety are almost identical, as both marks suggest the ideas of quick nachos.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Having regard to my conclusions above, and particularly in view of the resemblance between the marks, the wares and trades of the parties, and the applicant’s apparent lack of interest in this proceeding, I find that the applicant has failed to satisfy the onus on it to show that its applied for mark is not confusing with the opponent’s applied for mark. Thus, the first ground of opposition is successful.
The second ground of opposition also turns on the issue of the likelihood of confusion between the parties’ marks. In view of my comments above regarding this issue, I am satisfied that this ground would also have been found successful even though the material date for considering this ground (i.e. the date of opposition), differs from the material date for assessing the likelihood of confusion in relation to the s.16(3)(b) ground.
Accordingly, and with the authority delegated to me under s. 63(3) of the Act, I refuse the applicant’s application pursuant to s.38(8) of the Act.
DATED AT HULL, QUEBEC, THIS 15th DAY OF February , 2002.
C.R. Folz
Member,
Trade-Marks Opposition Board