IN THE MATTER OF AN OPPOSITION
by Société des Produits Nestlé S.A. and Nestlé
Canada Inc. to application No. 713,555 for the
trade-mark FRAPPE filed by Marek Pacanowski
On September 24, 1992, the applicant, Marek Pacanowski, filed an application to register the trade-mark FRAPPE based on proposed use in Canada with the following wares:
food products, namely: iced coffee mix and iced coffee made from this mix
and with the following services:
operation of a business dealing in the distribution and sale of iced coffee mix and iced coffee made from this mix.
The application was advertised for opposition purposes on July 4, 1993.
The opponents, Société des Produits Nestlé S.A. and Nestlé Canada Inc., filed a statement of opposition on September 14, 1993 and a revised statement of opposition on December 30, 1993. A copy of the revised statement was forwarded to the applicant on February 8, 1994. The first ground of opposition is that the applicant’s application does not comply with the provisions of Section 30(e) of the Trade-marks Act because the applicant did not intend to use the applied for mark either by itself or through a licensee.
The second ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(b) of the Act because it is clearly descriptive or deceptively misdescriptive in the French language of the character or quality of the applied for wares and services. The third ground is that the applied for trade-mark is not adapted to distinguish the applicant’s wares and services from other traders in the same field.
The applicant filed and served a counter statement. As their evidence, the opponents filed the affidavits of Robert H. Nakano, Marie Amiot, Sylvie Paulhus and Carole Henry. As his evidence, the applicant submitted the affidavits of Rosemary Winkler, Claudine Remond and Marek Pacanowski. As evidence in reply, the opponents filed the affidavits of Mark Douglas Penner, Anne-Marie Brousseau and Philippe Martin. Both parties filed a written argument but no oral hearing was conducted.
As for the first ground of opposition, the opponents admitted at page ten of their written argument that they had not advanced any evidence in support of that ground and did not intend to pursue it. Thus, the first ground is unsuccessful.
As for the opponents’ second ground of opposition, the material time for considering the circumstances respecting the issue arising pursuant to Section 12(1)(b) of the Act is the date of my decision: see the decision in Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers (1992), 41 C.P.R.(3d) 243 (F.C.A.). Furthermore, the issue is to be determined from the point of view of an everyday user of the wares and services. Finally, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d) 183 at 186.
The opponents have met their evidential burden respecting the second ground. The Amiot, Paulhus, Henry, Brousseau and Martin affidavits support the contention that francophones viewing the word “frappé” with coffee products would immediately assume that the coffee product was iced or chilled. That contention is supported by the dictionary definition appended to the Penner affidavit which defines the word “frappé” when used with “café” as iced. The Nakano affidavit provides further support for the opponents’ position, Mr. Nakano having been able to purchase a coffee drink identified as a “frappé” in two Toronto restaurants. The opponents’ position is also supported by one of the applicant’s affiants (Ms. Remond) who states that the expression “café frappé” makes her think of a cold coffee. Finally, the appearance of the phrase “Iced Coffee Frappé mix” on the applicant’s product label (see Exhibit B to the Pacanowski affidavit) might be viewed as a bilingual description of the product.
The applicant contends that iced or chilled coffee would be referred to in the French language as “café glacé” and not as “café frappé.” Although it is apparent that the former phrase is used (see paragraph three of the Amiot and Paulhus affidavits), it is apparent that the latter phrase is also used.
The applicant further contends that even if the word “frappé” when used with coffee products means iced or chilled to the average francophone, the word does not describe any intrinsic character or quality of coffee. In this regard, the applicant relied on the decision in Registrar of Trade Marks v. Provenzano (1978), 40 C.P.R.(2d) 288 (F.C.A.); affg. (1977), 37 C.P.R.(2d) 189 (F.C.T.D.) wherein the Federal Court of Appeal upheld the Trial Division’s reversal of the Registrar’s decision pursuant to Section 12(1)(b) of the Act to refuse registration to the trade-mark KOLD ONE for beer. As stated by Mr. Justice Heald for the Court of Appeal:
We agree with the statement of the learned trial Judge that the adjective “cold”, when applied to beer is not in any way descriptive of the intrinsic character or quality of the product. The temperature at which beer may be used is unrelated to the character or quality of the beer itself. Accordingly, the word “kold” as used in this mark refers only to the condition in which the beer may or may not be used and not to any intrinsic quality or character of the product.
I agree with Mr. Justice Heald’s finding and, if the present application had been for “coffee”, a similar finding could have been made in the present case. However, the present application is not for coffee but instead covers “iced coffee” and “iced coffee mix” such that the word “frappé” does point to an intrinsic character of the product itself in the case of “iced coffee” and to the sole product intended to be produced in the case of “iced coffee mix.” As stated by Mr. Justice Addy at page 190 of the Trial Division decision:
The adjective “cold”, when applied to a “beer” is not in any way descriptive of the intrinsic character or quality of the product. Unlike such food products as ice cream, frozen foods, ices or juices or appliances such as refrigerators, stoves or toasters, the temperature at which it might or might not be delivered, sold or used has nothing to do with the character or quality of the product itself.
In the present case, an essential characteristic of iced coffee is its iced state. Thus, the word “frappé” does clearly describe a character of the applicant’s wares in the French language. (From a review of the Nakano affidavit and an English dictionary definition for the word “frappé”, I would have thought it possible to have made out a case that the applicant’s mark is clearly descriptive of the applied for wares in the English language as well but no such ground was pleaded.)
Similarly, the word “frappé” is clearly descriptive of the applicant’s services which involve the sale and distribution of iced coffee and iced coffee mix since the word “frappé” points to an intrinsic character of the only goods carried by the business. In fact, the descriptiveness of the applicant’s mark FRAPPE for services is underscored by the manner in which the applicant uses that mark as part of its trade-name Café-Frappé (see Exhibit B to the Pacanowski affidavit). Thus, the second ground is successful in respect of both wares and services.
As for the third ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares and services from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - September 14, 1993): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).
In view of my finding respecting the second ground of opposition, it follows that the applicant’s trade-mark FRAPPE is not distinctive because it is clearly descriptive of the character of the applicant’s wares and services in the French language. Furthermore, the Nakano affidavit points to third party uses of the word “frappé” for iced coffee in the restaurant trade. Thus, the third ground is also successful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse the applicant’s application.
DATED AT HULL, QUEBEC, THIS 21st DAY OF MAY, 1997.
David J. Martin,
Member,
Trade Marks Opposition Board.