IN THE MATTER OF AN OPPOSITION
by Wing Wah Food Manufactory Limited
to application No. 896,710 for the trade-mark
PEONY BRAND & Design filed by
China Brands Food Products Inc.
On November 19, 1998, the applicant, China Brands Food Products Inc., filed an application to register the trade-mark PEONY BRAND & Design (shown below) for “food colour solutions (orange red, red orange, yolkline, chinese red, lemon yellow, tomato red, cherry red)” based on use of the mark in Canada since 1979. The application was advertised for opposition purposes on September 22, 1999. A revised application was filed on May 8, 2001 to amend the claim to use of the mark to include use by the applicant and its predecessor-in-title China Brands Foods Co. The revised application was accepted by the Registrar on May 22, 2001.
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The opponent, Wing Wah Food Manufactory Limited, filed a statement of opposition on January 24, 2000, a copy of which was forwarded to the applicant on February 1, 2000. The first ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(b) of the Trade-marks Act because the applicant has not used the applied for trade-mark since 1979 as claimed. The second ground is that the applicant’s application does not conform to the requirements of Section 30(i) of the Act. In this regard, the opponent states that the applicant could not have been satisfied that it was entitled to use the applied for mark because it was confusing with two registered trade-marks.
The third ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with (1) the trade-mark WING WAH MOON CAKES & Design (shown below) registered under No. 322,505 for “Chinese pastry made of lotus seed paste” and (2) the trade-mark TAI WING WAH FLOWER & Design (shown below) registered under No. 469,584 for “baked goods namely cakes and pastries.”
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Reg. No. 322,505 Reg. No. 469,584
The fourth ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(1)(a) of the Act because, as of the applicant’s claimed date of first use, the applied for trade-mark was confusing with the two registered trade-marks shown above which had previously been used in Canada by the opponent and/or its predecessors. The fifth ground is that the applied for trade-mark is not distinctive because it is confusing with the two registered and previously used trade-marks.
The applicant filed and served a counter statement. As its evidence, the opponent submitted an affidavit of Elenita Anastacio. As its evidence, the applicant submitted an affidavit of Sy Taur Lee. Mr. Lee was cross-examined on his affidavit and the transcript of that cross-examination and the replies to undertakings form part of the record of this opposition. As evidence in reply, the opponent submitted an affidavit of A. Louise McLean. Only the applicant filed a written argument and an oral hearing was conducted at which both parties were represented.
The Evidence
The Anastacio affidavit serves simply to introduce into evidence particulars of the two trade-mark registrations relied on. The applicant’s agent noted that the exhibits to that affidavit show the two registrations standing in the name of a third party. However, a review of the trade-marks register reveals that the opponent became the registered owner of the marks shortly after the commencement of this proceeding.
In his affidavit, Mr. Lee identifies himself as the President of the applicant. He states that the applicant was incorporated on July 24, 1986 and is the successor to the business originally begun by China Brands Food Co. in 1978. Mr. Lee was a partner in the China Brands Food Co. together with Shiu-Chung Kong. The partnership apparently ceased when the business was transferred to the applicant and Mr. Kong retired (see pages 7 and 31 of the Lee transcript).
Mr. Lee states that the applied for trade-mark was designed in 1978. Exhibit C to his affidavit is a photocopy of an invoice dated September 11, 1979 for food coloring product which Mr. Lee says bore the applicant’s mark. According to him, annual sales of food coloring in association with the trade-mark were in excess of $200,000 for the period 1991 to 2000.
Mr. Lee states that the applicant sells its food color solutions only to restaurants or to wholesalers who resell to restaurants. The product is sold in four-litre containers and the applicant makes no direct sales to the public.
A review of the transcript of the Lee cross-examination reveals that Mr. Lee has some difficulty with the English language. It is apparent that, in a number of instances, Mr. Lee did not understand the questions being asked. When he was asked about an assignment from the partnership to the applicant (see questions 201 to 204) and said there was no document, it appears that he did not understand the question. Since Mr. Lee was a partner in the predecessor partnership and the President of the applicant, it seems likely that there was a transfer of the partnership’s business to the applicant in 1986 either orally or in written form.
During the cross-examination, Mr. Lee was asked about the corporate history of the applicant at pages 40-41 of the transcript as follows:
246. Q. Between when your company, China Brands Food Products Inc., between when it was incorporated in 1986 ...
A. Mm-hmm.
247. Q. ... and today ...
A. Yes.
248. Q. ... did it ever stop doing business?
A. No. We keep going.
249. Q. Okay. Again, on the corporate documents that I found,
because it talks about your company being incorporated in 1986 and it talks about a revival of the company in 1995, do you know what that means?
A. I forgot. Maybe I didn’t do the paperwork. Too busy to take ... take care everything.
From the above, it is apparent that the opponent was in possession of corporate documentation concerning the applicant prior to the cross-examination.
The McLean affidavit filed by the opponent as evidence in reply introduces into evidence photocopies of certain corporate documents filed for the applicant with the Companies Branch of the Ontario Ministry of Consumer and Commercial Relations. Those documents indicate that the applicant is an Ontario corporation and that it was cancelled for failure to file certain documentation. Exhibit B to the McLean affidavit is a photocopy of the Articles of Revival for the applicant dated June 6, 1995 which include a dissolution date of June 11, 1994.
The McLean affidavit does not qualify as proper reply evidence. It is not strictly confined to matters in reply to the applicant’s evidence and is therefore inadmissible in this proceeding. It is apparent that the opponent was aware of the applicant’s corporate history prior to the Lee cross-examination. Furthermore, neither the applicant’s evidence nor Mr. Lee’s testimony on cross-examination deny that the applicant was dissolved and subsequently revived. On the contrary, Mr. Lee admits to that fact on cross-examination. Thus, if the opponent wished to rely on the McLean affidavit, it should have submitted it as part of its evidence in chief or sought leave to file it as additional evidence pursuant to Rule 44(1) of the Trade-marks Regulations.
The Grounds of Opposition
As for the opponent's first ground of opposition, the onus or legal burden is on the applicant to show that its application conforms with the requirements of Section 30(b) of the Act: see the opposition decision in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and the decision in John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponent respecting its allegations of fact in support of that ground. That burden is lighter respecting the issue of non-conformance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89. Furthermore, Section 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed: see Labatt Brewing Company Limited v. Benson & Hedges (Canada) Limited and Molson Breweries, a Partnership (1996), 67 C.P.R.(3d) 258 at 262 (F.C.T.D.). Finally, the opponent’s evidential burden can be met by reference to the applicant’s own evidence: see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R.(3d) 216 at 230 (F.C.T.D.).
There are two aspects to the opponent’s first ground. The first aspect is the opponent’s contention that the applicant cannot claim a date of first use since 1979 since there is no evidence that the applied for trade-mark was transferred to the applicant when it was incorporated in 1986.
The opponent has relied on Mr. Lee’s negative answer on cross-examination regarding the existence of an assignment document. However, as discussed, it is apparent that Mr. Lee did not understand all of the questions posed to him. More importantly, the evidence establishes that China Brands Food Products Inc. was incorporated to take over the business of the partnership China Brands Food Co. I find, on a balance of probabilities, that a transfer of the business (including the applied for trade-mark) did, in fact, take place. Thus, the first aspect of the first ground is unsuccessful.
The second aspect of the first ground is the opponent’s submission that the applicant cannot claim continuous use of its mark since 1979 since it ceased to exist for a period of time. As noted, the opponent failed to file admissible evidence on point. There is a suggestion in the cross-examination transcript that the applicant may have been dissolved at one time and later revived. However, that suggestion, by itself, is insufficient to meet the opponent’s initial evidential burden. Thus, the second aspect of the first ground of opposition is also unsuccessful.
Even if the McLean affidavit had been held to be admissible, the second aspect of the first ground would still not have succeeded. Although the McLean exhibits show that the applicant was apparently dissolved for almost one year, Mr. Lee’s evidence indicates that there has been continuous use of the applied for mark throughout. Furthermore, Section 317(10) of the Ontario Corporations Act reads as follows:
317.(10) Where a corporation has been dissolved under subsection (9) or any predecessor thereof, the Lieutenant Governor, on the application of any interested person, may in his or her discretion by order, on such terms and conditions as he or she sees fit to impose, revive the corporation, and thereupon the corporation shall, subject to the terms and conditions of the order and to any rights acquired by any person after its dissolution, be restored to its legal position, including all its property, rights, privileges and franchises, and be subject to all its liabilities, contracts, disabilities and debts, as at the date of its dissolution, in the same manner and to the same extent as if it had not been dissolved.
317.(10) Si une personne morale a été dissoute en vertu du paragraphe (9) ou de toute disposition législative que celui-ci remplace, le lieutenant-gouverneur a le pouvoir discrétionnaire de la reconstituer, par décret et aux conditions qu'il juge convenables, à la requête de toute personne intéressée. Sous réserve des conditions prévues dans le décret et des droits acquis par toute personne après sa dissolution, la personne morale est réintégrée dans tous ses droits, y compris ses biens, ses privilèges et ses droits de concession et est assujettie à toutes ses incapacités, obligations et dettes et à tous ses contrats, tels qu'ils existaient à la date de sa dissolution, de la même manière et dans la même mesure que si elle n'avait jamais été dissoute.
The above provision indicates that the revival of an Ontario corporation rectifies any deficiencies regarding property rights that might otherwise have arisen due to its dissolution.
The second ground fails to raise a proper ground of opposition. The opponent did not allege that the applicant adopted its mark knowing it to be confusing with the opponent’s marks. Thus, the second ground is unsuccessful.
As for the third ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
As for Section 6(5)(a) of the Act, the applicant’s mark and the opponent’s two registered marks are not suggestive of the related wares and are therefore all inherently distinctive. Given that the opponent’s first registered mark includes the minor descriptive wording MOON CAKES, it is not as inherently strong as the other two marks. There being no evidence of use of the opponent’s two marks, I must conclude that they have not become known at all in Canada. While there has been continuous use of the applicant’s mark, it has been minor. Thus, I am only able to conclude that the applicant’s mark has become known to a limited extent within the community of Chinese food wholesalers and operators of Chinese restaurants.
The length of time the marks have been in use favors the applicant. As for the wares and trades of the parties, it is the applicant’s statement of wares and the opponent’s statements of wares in registrations Nos. 322,505 and 469,584 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, those statements must be read with a view to determining the probable 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, particularly where there is an ambiguity as to the wares or services covered in the application or registrations at issue : see the decision in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 at 169 (F.C.A.).
As evidenced by Mr. Lee, the applicant’s wares are food color solutions that are sold to restaurants and food wholesalers. The opponent’s wares, on the other hand, comprise cakes and pastries which are presumably sold at retail directly to consumers. Thus, the wares of the parties are different and the trades also differ.
As for Section 6(5)(e) of the Act, I find that there is little resemblance between the marks of the parties in any respect. Although all three marks include a representation of one or more flowers, that component possesses limited inherent distinctiveness and is not the dominant portion of the applicant’s mark. The applicant’s mark is dominated by the phrase PEONY BRAND which is completely different from the minor wording WING WAH MOON CAKES and TAI WING WAH FLOWER which appear in the opponent’s two registered marks.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the differences between the wares, trades and marks of the parties, I find that the applied for trade-mark is not confusing with either of the opponent’s two registered trade-marks. The third ground of opposition is therefore also unsucessful.
As for the fourth ground of opposition based on Section 16(1)(a) of the Act, there was an initial burden on the opponent to evidence use of one or both of its two marks prior to the applicant’s claimed date of first use. Since the opponent failed to evidence any use of its two marks, the fourth ground is also unsuccessful.
As for the fifth ground of opposition, there was an initial burden on the opponent to evidence some use or reputation for its marks in Canada. Since the opponent failed to file evidence on point, the fifth ground is also unsuccessful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT GATINEAU, QUEBEC, THIS 13th DAY OF DECEMBER, 2004.
David J. Martin,
Member,
Trade Marks Opposition Board.