LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 17
Date of Decision: 2011-01-31
IN THE MATTER OF AN OPPOSITION by Lakeside Produce Inc. to application No. 1,214,164 for the trade-mark STRAWBERRY TOMATOES in the name of Imagine IP, LLC
[1] On April 21, 2004, BC Vegetable Greenhouse I, LP filed an application to register the trade-mark STRAWBERRY TOMATOES (the Mark) based on proposed use in Canada in association with “vegetables, namely, tomatoes” (the Wares). The application for the Mark has undergone a number of transfers of ownership since it was filed, all of which have been duly recorded by the Canadian Intellectual Property Office (CIPO) such that the application for the Mark currently stands in the name of Imagine IP, LLC (the Applicant). Any reference to the Applicant throughout the decision should be understood to be a reference to the owner of the Mark at the relevant time.
[2] The Applicant voluntarily disclaimed the right to the exclusive use of the word TOMATOES apart from the Mark.
[3] The application was advertised for opposition purposes in the Trade-marks Journal of December 6, 2006.
[4] On May 7, 2007, Lakeside Produce Inc. (the Opponent) filed a statement of opposition. The grounds of opposition can be summarized as follows:
• The Mark is not registrable because it has by ordinary and bona fide commercial usage become recognized in Canada as designating a kind or quality of tomato. Accordingly the application for the Mark should be refused pursuant to s. 38(2)(b) and 10 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act).
• The Mark is not registrable as it is the name of a type of tomato or related plant. Accordingly, the application for the Mark should be refused pursuant to s. 38(2)(b) and 12(1)(c) of the Act.
• The Mark is not registrable as it is clearly descriptive or deceptively misdescriptive of the character or quality of the Applicant’s tomatoes. Accordingly, the application for the Mark should be refused pursuant to s. 38(2)(b) and 12(1)(b) of the Act.
• The Mark is not distinctive in that it does not distinguish nor is it adapted to distinguish the tomatoes in association with which it is proposed to be used from the tomatoes of others having regard to the use of the term STRAWBERRY TOMATOES by the Opponent and others in association with tomatoes and the fact that the Mark clearly describes the character or quality of the Applicant’s tomatoes. Accordingly, the application for the Mark should be refused pursuant to s. 38(2)(d) of the Act.
• The Mark is not distinctive in view of improper assignments which took place on September 22, 2006 and November 30, 2005. Accordingly, the application for the Mark should be refused pursuant to s. 38(2)(d) of the Act.
[5] The Applicant served and filed a counter statement on September 19, 2007 in which it denied the Opponent’s allegations and put the Opponent to the strict proof thereof.
[6] In support of its opposition, the Opponent filed the affidavit of Kathlyn Fraser Kinnaird sworn April 16, 2008 with Exhibits A and B.
[7] In support of its application, the Applicant filed the affidavit of Robert Toews, sworn November 17, 2008 with Exhibits A through P.
[8] Both parties filed written arguments. Neither party requested an oral hearing.
Opponent’s Evidence
Affidavit of Kathlyn Fraser Kinnaird
[9] Ms. Kinnaird is a Senior Paralegal with the firm Butzel Long, which I understand to be a U.S. law firm located in the State of Michigan. Ms. Kinnaird’s affidavit provides the results of Internet research which she states she conducted in an attempt to find generic references to “strawberry tomato”. Ms. Kinnaird attaches to her affidavit a printout of the first page of her search of the google.com (Exhibit A) search engine and materials printed from a variety of web pages arising from her search (Exhibit B) all of which were printed on August 2, 7 and 8, 2007.
[10] Ms. Kinnaird’s evidence will be discussed in greater detail below in the analysis of the s. 12(1)(b), (c) and (e) grounds of opposition.
Applicant’s Evidence
Affidavit of Robert Toews
[11] As a preliminary matter, I wish to point out that in his affidavit, Mr. Toews makes statements regarding alleged “infringement” of the Mark by third parties, including by the Opponent. Obviously, given the absence of a registration for the Mark, there can be no infringement thereof. As a result, I will be treating these allegations as referring to instances of alleged unauthorized use of the Mark.
[12] Mr. Toews is the President of the Applicant, Imagine IP, LLC. Mr. Toews is also the President of a number of other corporate entities, all of which are predecessors-in-title to the Applicant, namely, BC Vegetable Greenhouse I, Inc. (the General Partner of BC Vegetable Greenhouse I, L.P.), Greenhouse Gourmet Foods, Inc. (the General Partner of Greenhouse Foods, LP), Greenhouse Gourmet Foods, LLC and Imagine Intellectual Properties, Inc..
[13] Mr. Toews states that the Applicant uses the Mark in association with a specific type of tomatoes called “Sunstream Tomatoes”. Mr. Toews describes these tomatoes as being “small, cocktail, mini-plum shaped tomatoes, that are proprietary to a Dutch seed company called Enza Zaden, B.V.” (Enza). Mr. Toews states that the Applicant began producing Sunstream Tomatoes in the fall of 2003 in the context of a research trial. Mr. Toews states that the Applicant became engaged in a commercial trial for the production and marketing of Sunstream Tomatoes in 2004. Mr. Toews states that Enza granted the Applicant distribution rights for Sunstream Tomatoes “through the calendar year of 2005” (Exhibit B).
[14] Mr. Toews provides sales figures for Sunstream Tomatoes “marketed under” the Mark. The sales figures in Mr. Toews’ affidavit cover the years 2005 through 2007. Mr. Toews states that in 2005 sales amounted to in excess of $5 million, in 2006 in excess of $12 million and in 2007 in excess of $7.7 million. The Opponent submits that Mr. Toews has not specified whether the sales figures relate to Canada. While this is true, I note that Mr. Toews has not specified that they relate to any particular country. Based on a review of the affidavit as a whole, I find that there is nothing to suggest that the alleged sales figures do not encompass Canada. However, even if I were to infer that the sales figures relate to Canada specifically, I note that this inference can only be made for the year 2005 as Mr. Toews states that the Applicant was granted rights to the Sunstream Tomatoes “through” 2005. Mr. Toews makes no mention of the Applicant’s rights to the production of Sunstream Tomatoes for years subsequent to 2005.
[15] Mr. Toews states that Enza, the seed producer for Sunstream Tomatoes, does not generically classify or categorize any of its tomato varieties as “strawberry” or “strawberry tomatoes”. Mr. Toews’ statements regarding the actions of Enza are clearly hearsay. In support of these hearsay statements, Mr. Toews attaches a seed catalogue from Enza which includes references to Sunstream Tomatoes but not to “strawberry tomatoes” (Exhibit A) as well as materials printed from Enza’s website which he states suggest that Enza does not refer to “strawberry tomatoes” on its website (Exhibits C, D). These documents are not sufficient to support Mr. Toews’ hearsay statements. Based on the foregoing, I cannot place much weight on Mr. Toews’ statements that Enza does not classify any of its tomatoes as “strawberry tomatoes”.
[16] Mr. Toews attaches to his affidavit an advertisement for Enza’s tomatoes from Fresh Americas magazine from Spring 2007 (Exhibit E). The advertisement makes reference to “Campari Tomatoes” and “Strawberry Tomatoes”. I note in passing that the existence of this advertisement appears to contradict Mr. Toews’ earlier statement that Enza does not use the term “strawberry tomatoes”. Mr. Toews attaches to his affidavit a letter from Mr. Roland Peerenboom, the Managing Director of Enza dated July 20, 2007 (Exhibit F), which Mr. Toews states evidences Enza’s agreement to refrain from unauthorized use of the Mark. Reviewing the affidavit as a whole, I suspect that the advertisement attached as Exhibit E may have been an instance of the unauthorized use the Applicant was seeking to prevent. However, I note that the comments in Mr. Peerenboom’s letter (Exhibit F) are hearsay and thus the mere introduction of the letter does not serve as evidence of the truth of the contents thereof. At most, Mr. Peeremboom’s letter evidences the fact that the Applicant received the letter. As a result, I cannot place any weight on the contents of Mr. Peerenboom’s letter.
[17] Mr. Toews attaches to his affidavit a copy of a BC Vegetable Marketing Commission Tomato Shipment Report from 2007 which he states makes generic reference to “grape tomatoes” and “cherry tomatoes” but not to “strawberry tomatoes” (Exhibit N). I note that Mr. Toews does not provide any information regarding the BC Vegetable Marketing Commission and as a result the significance of the report has not been established. Even if I were to consider the report attached as Exhibit N, I note that the absence of a reference to “strawberry tomatoes” therein is not necessarily determinative of the issue of whether “strawberry tomatoes” is the name of a category of tomatoes. It is possible that this particular report merely did not capture statistics for this category. For example, I note that the report attached as Exhibit N does not include an entry for “cocktail tomatoes” which are referred to in other documents adduced in evidence as well as by the Applicant in its written argument as being an accepted category of tomato.
[18] Mr. Toews attaches to his affidavit emails from individuals employed by third parties (Exhibits L, M). Mr. Toews states that these individuals refer to the Applicant’s tomatoes as being marketed under the Mark. While Mr. Toews has not provided an explanation as to the significance of these emails, I understand that they were likely filed in support of the Applicant’s contention that it has used the Mark as a trade-mark. That said, I am unable to place any weight on these third party emails as they are hearsay and cannot be adduced as evidence of the truth of their contents. In any event, mere statements such as the ones found in these third party emails would not constitute evidence of trade-mark use pursuant to s. 4(1) of the Act.
[19] Mr. Toews provides what he states is evidence of the Opponent’s unauthorized use of the Mark. First, Mr. Toews attaches a cease and desist letter sent to the Opponent regarding the Opponent’s alleged unauthorized use of the Mark (Exhibit G). Mr. Toews also attaches a copy of an email from the Opponent which he states acknowledges the Mark but questions the ownership thereof (Exhibit I). The most that can be inferred from this letter and email is that the parties have previously exchanged communications. The letter and email cannot be adduced as evidence of the truth of their contents as they are hearsay.
[20] Mr. Toews attaches to his affidavit what he states are examples of unauthorized use of the Mark (Exhibit H) by the Opponent. Exhibit H features printouts from third party websites which make reference to the Opponent and the Mark as well as photographs of the Opponent’s products. I have not been provided with any evidence as to whether Canadians have had access to these websites. Furthermore, the websites cannot be relied upon as evidence of the truth of the statements made thereon [see Candrug Health Solutions Inc. v. Thorkelson (2007), 60 C.P.R. (4th) 35 (F.C.), reversed (2008), 64 C.P.R. (4th) 431 (F.C.A.), (Candrug)].
[21] Mr. Toews attaches to his affidavit a copy of a Declaration of Use executed by the Applicant on April 23, 2008 (Exhibit J). The Declaration of Use does not qualify as evidence of use of the Mark in compliance with s. 4(1) of the Act.
[22] Based on a review of the affidavit as a whole, I find that the Applicant has not provided any evidence of use of the Mark in association with the Wares in accordance with s. 4(1) of the Act.
[23] Mr. Toews attaches to his affidavit copies of assignments relating to the application for the Mark which have been filed and recorded with CIPO (Exhibit K).
[24] As a final point on Mr. Toews’ affidavit, I note that he attaches as exhibits to his affidavit copies of the affidavits of Dr. Roberta Cook and Dr. J. Derek Bewley filed in the co-pending opposition proceeding between the Applicant and David Oppenheimer Company, LLC. I acknowledge that the Registrar has accepted certified copies or photocopies of affidavits filed in other opposition proceedings where the circumstances justify such a course of action [see Beachcombers Restaurant Ltd. v. Vita-Park Citrus Products Co. (1976), 26 C.P.R. (2d) 282 (T.M.O.B.)]. In this regard, I note that (a) whether or not the parties to the proceedings are the same; (b) whether or not the trade-mark applied for is the same in both proceedings; (c) the availability of the affiant for cross-examination; and (d) whether or not all, or most of the issues in both proceedings are the same, are amongst the circumstances that must be considered [see Springwall Sleep Products Ltd. v. Ther-a-Pedic Associates, Inc. (1984), 79 C.P.R. (2d) 227 (T.M.O.B.)]. In the present case I note that the affidavits in question do not satisfy the first consideration. While the co-pending opposition proceeding relates to the application for the Mark, the parties thereto are not identical to those in the present proceeding. As a result, I am not satisfied, that the circumstances justify accepting the Cook and Bewley affidavits as evidence in this proceeding. Mr. Toews’ statements introducing these affidavits are at best merely evidence that the Cook and Bewley affidavits were filed in a co-pending opposition proceeding [see Scarabelli v. Jack Spratt Mfg. Inc. (1985), 6 C.P.R. (3d) 573 (T.M.O.B.); Innovations Pour l’Elegance Masculine v. Promo-Wear Ltd. (1985), 2 C.P.R. (3d) 480 (T.M.O.B.)]. Hence, I will not be placing any weight on the copies of the Cook and Bewley affidavits, attached to Mr. Toews’ affidavit as Exhibits O and P, respectively.
Onus and Material Dates
[25] 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].
[26] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(b)/12(1)(b) - the filing date of the application [see Fiesta Barbeques Ltd. v. General Housewares Corp. (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)];
• s. 38(2)(b)/12(1)(c) - the date of my decision [see Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)];
• s. 38(2)(b)/12(1)(e) – the date of my decision [see Canadian Council of Professional Engineers v. Groupegénie Inc. (2009), 78 C.P.R. (4th) 126 (T.M.O.B.) and Canadian Olympic Assn. v. Olympus Optical Co. (1991), 38 C.P.R. (3d) 1 (F.C.A.)]; and
• s. 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Analysis of the Grounds of Opposition
[27] I will analyze the grounds of opposition in regard to the evidence of record, although not necessarily in the order they were raised in the statement of opposition.
Non-registrability Grounds of Opposition
Section 12(1)(b) of the Act
[28] The issue as to whether the Mark is clearly descriptive or deceptively misdescriptive of the character or quality of the Wares must be considered from the point of view of the average purchaser of the Wares. Further, “character” means a feature, trait or characteristic of the Services and “clearly” means “easy to understand, self-evident or plain” [see Drackett Co. of Canada Ltd v. American Home Products Corp. (1968), 55 C.P.R. 29 (Ex. Ct.) at 34]. Finally, the Mark must not be dissected into its component elements and carefully analyzed but must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 (F.C.T.D.) at 27-8; Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R. (3d) 183 (F.C.T.D.) at 186].
[29] The Opponent submits that as a matter of immediate impression the Mark will be perceived by the ordinary consumer of the Wares as clearly describing that the Wares “relate to ‘strawberry tomatoes’, namely a specific type of tomato commonly referred to under this name.”
[30] By contrast, the Applicant submits that the Toews affidavit supports a finding that at the material date, the average consumer would not have had any knowledge or impression of the term “strawberry tomatoes” prior to the Applicant’s adoption of the term as a trade-mark, and as a result, the Mark could not be clearly descriptive or deceptively misdescriptive of the Wares. The Applicant further submits that there is no likelihood that consumers might purchase the Wares under the mistaken belief that they are strawberries.
[31] With respect to this ground, the legal onus is upon the Applicant to show that its Mark is registrable. However, there is an initial evidential burden on the Opponent to adduce sufficient evidence which would support its allegation that the Mark is clearly descriptive or deceptively misdescriptive of the character or quality of the Wares. The Opponent relies on the Kinnaird affidavit as evidence in support of its allegation that the Mark is clearly descriptive or deceptively misdescriptive of the character or quality of the Wares. More particularly, the Opponent submits that the Kinnaird affidavit provides evidence of common usage by third parties of the words “strawberry tomatoes” in relation to gardening, seeds and recipes.
[32] I note that the contents of the Kinnaird affidavit, both the Google search results (Exhibit A) and the selection of materials printed from websites resulting from the Google search (Exhibit B), are all dated after the material date. The Opponent acknowledges this fact but submits that there is sufficient evidence present which would have been relevant as of the material date to shift the burden to the Applicant. I do not agree with the Opponent’s submission. As the contents of the Kinnaird affidavit postdate the material date by a significant length of time, I am not prepared to infer that the websites therein were in existence at the material date [see Shell Canada Ltd. v. P.T. Sari Incofood Corp. (2008), 68 C.P.R. (4th) 390 (F.C.A.)]. Accordingly, this evidence will not be afforded any weight.
[33] Under the circumstances I consider it appropriate to exercise my discretion and look into the meaning of the words making up the Mark. Specifically, I may refer myself to a dictionary to determine the meaning of words [see Insurance Co. of Prince Edward Island v. Prince Edward Island Insurance Co. (1999), 2 C.P.R. (4th) 103 (T.M.O.B.); Yahoo! Inc. v. audible.ca inc. (2009), 76 C.P.R. (4th) 222 (T.M.O.B.)]. I note that the Canadian Oxford Dictionary does not include a definition for the term “strawberry tomato”. However, the fact that a particular combination of words does not appear in any dictionary does not prevent a trade-mark from being found to be clearly descriptive or deceptively misdescriptive. If each portion of a mark has a well-known meaning in English or French, it may be that the resultant combination would be contrary to s. 12(1)(b) of the Act.
[34] I have thus looked into the Canadian Oxford Dictionary for the words “strawberry” and “tomato” and found the following definitions:
• Strawberry: (a) any plant of the genus Fragaria, esp. any of various cultivated varieties, with white flowers, trifoliate leaves, and runners.’ (b) the pulpy red edible fruit of this, having a seed-studded surface.
• Tomato: Fruit plant native to the Americas. The plant was cultivated in Europe as early as 1544. It was not eaten until the 16th century because it was believed to be poisonous. Species Lycopersicum esculentum. The small, cherry tomato is a variety (L.e. cerasiforme).
[35] The Mark consists solely of the above two ordinary dictionary words. The Applicant has acknowledged the clearly descriptive nature of the word “tomatoes” by disclaiming the right to the exclusive use of it apart from the Mark in the application. The question therefore becomes whether the addition of the word “strawberry” renders the Mark as a whole not clearly descriptive.
[36] The Applicant submits that the Mark “slyly alludes that the wares are sweet” and that the use of the word “strawberry” merely alludes to the sweetness of the Applicant’s wares. The Applicant further submits that “[t]he Applicant’s wares do not really look like strawberries. They are rounder in shape and have a smooth skin.” I accept the Applicant’s submission that in the context of the Wares the word “strawberry” could allude to the fact that the Wares are sweet. However, without supporting evidence, I am not willing to accept the Applicant’s submission that the Wares do not look like strawberries.
[37] I find that the word “strawberry”, being a noun and the name of another type of fruit, does not clearly describe the character or quality of the Applicant’s tomatoes. It is not immediately obvious that the word “strawberry” operates as a qualifier for the word “tomatoes” rendering the Mark clearly descriptive of the character or quality of the Wares. While it is possible that the word “strawberry” is being used to suggest that the Applicant’s tomatoes are sweet or shaped like strawberries, to come to such a conclusion requires additional steps of reasoning and inferences must be drawn. As a result, I find that the Mark as a whole is not clearly descriptive of the character or quality of the Wares as a matter of immediate impression.
[38] Based on the foregoing, I find that the Opponent has not met its evidential burden and the ground of opposition based on s. 12(1)(b) of the Act is dismissed accordingly.
Section 12(1)(c) of the Act
[39] The Opponent has not made any submissions regarding this ground of opposition.
[40] With respect to this ground, the legal burden is upon the Applicant to show that its Mark is registrable. However, there is an initial evidential burden on the Opponent to adduce sufficient evidence which would support the truth of its allegation that the Mark is the name of “a type of tomato or related plant”.
[41] With respect to the pleading that the Mark is the name of a “related plant” the Applicant submits that s. 12(1)(c) of the Act does not include the concept of related wares and thus this portion of the ground of opposition should be ignored. I agree. Furthermore, I find this statement to be vague and ambiguous. Based on the foregoing, the portion of the s. 12(1)(c) ground of opposition relating to a “related plant” is dismissed for having been improperly pleaded.
[42] The only evidence filed by the Opponent is the Kinnaird affidavit which provides the results of Ms. Kinnaird’s search of the Google search engine for references to the term “strawberry tomato”. The Kinnaird affidavit is relevant for the s. 12(1)(c) ground of opposition as it predates the material date for this ground. The documents found in Ms. Kinnaird’s affidavit include excerpts from seed catalogues describing seeds for tomato varieties, including a “German Red Strawberry Tomato”; blogs written by gardeners discussing their gardens and “strawberry tomato” plants; an excerpt from the book “75 Exciting Vegetables For Your Garden” by Jack Staub referring to a “German Red Strawberry Tomato”; recipes including “strawberry tomatoes” as ingredients; a Polish vegetable producer referring to “strawberry tomatoes” available for sale in Poland; news articles; etc..
[43] In its written argument the Applicant makes significant submissions attempting to draw favourable conclusions from the content of the materials attached to the Kinnaird affidavit. For example, the Applicant submits that comments found in one of the documents attached as Exhibit B likely refer to the Wares. Specifically, the Applicant submits the following:
Produce Pete is likely referencing the Applicant’s wares. This is supported by Produce Pete’s statement that, ‘strawberry tomatoes are [a] brand-new item to the marketplace.’ This statement contradicts the Opponent’s assertion that the Applicant is trying to obtain rights to a descriptive term that has existed for some time.
These submissions rely upon the websites as evidence of the truth of the contents thereon, which is not permissible [see Candrug, supra]. As a result, I will not discuss the Applicant’s submissions relating to the exhibits attached to the Kinnaird affidavit as they are not properly supported by the evidence of record.
[44] In the present case, in view that some of the Internet evidence appears to have been tendered to show that certain information was known to the public [i.e. that “strawberry tomatoes” may be used in a generic sense to refer to a type of tomato], and not for the truth of its contents, I consider it relevant. However, absent information about the number of Canadians who may have accessed these websites, there is no evidence that the information from these websites has been brought to the attention of any consumers in the marketplace in Canada [see Candrug, supra]. Furthermore, I note that Ms. Kinnaird being resident in Michigan, U.S.A. would have conducted this search on the google.com search engine as opposed to the google.ca search engine and thus I have no indication as to whether any of the websites attached to her affidavit would even be accessible in Canada. The Opponent has not produced any evidence to support a finding that the materials attached to Ms. Kinnaird’s affidavit emanate from or relate to Canada. In fact, as mentioned above, one of the websites relates to Poland. As a result, very little weight can be placed on Ms. Kinnaird’s affidavit evidence.
[45] It has been held previously that an opponent can meet its evidential burden under s. 12(1)(c) of the Act by adducing copies of reference works in which the mark can be shown to have a definition [see Brûlerie Des Monts Inc. v. 3002462 Canada Inc. (1997), 75 C.P.R. (3d) 445 (F.C.T.D.); Jordan & Ste-Michelle Cellars Ltd. v. Andres Wines Ltd. (1986), 11 C.P.R. (3d) 252 (T.M.O.B.)]. In the present case, I note that while the Opponent has not provided such evidence, as discussed above in the s. 12(1)(b) ground I have exercised my discretion to check the Oxford English Dictionary and noted that there is no definition for “strawberry tomato” therein.
[46] It was incumbent on the Opponent to evidence that the term “strawberry tomatoes” has been accepted in the English language for the wares “tomatoes” [see Boyer Candy Co. v. Hershey Canada Inc. (2001), 21 C.P.R. (4th) 257 (T.M.O.B.); Airos Systems Ltd. v. Windsurfing International, Inc. (1983), 75 C.P.R. (2d) 74 (T.M.O.B.)]. Furthermore, given that the word “tomatoes” is descriptive of the character of the Applicant’s Wares, I would have expected the Opponent to have provided evidence that the term “strawberry” has some recognizable meaning in association with tomatoes. As set out above in the s. 12(1)(b) ground of opposition, the definition for “strawberry” has no clear application to the Wares in the present case. The Kinnaird affidavit which includes only evidence of websites printed from the Internet in the U.S. is of little value by itself as the Opponent has not provided evidence as to whether these websites have been brought to the attention of Canadian consumers and it cannot be relied on as evidence of the truth of its contents [see Candrug, supra]. I would have expected that the Opponent could have shown generic reference to the term “strawberry” or “strawberry tomatoes” in at least several widely circulated Canadian articles or reference documents about tomatoes specifically or vegetables generally. Instead, the Opponent has provided printouts from a variety of websites some of which, as the Applicant has rightfully pointed out do not appear to emanate from Canada.
[47] Ultimately, I find that the Opponent has failed to meet its burden under the ground of opposition based on s. 12(1)(c) of the Act and I dismiss this ground of opposition accordingly.
Section 12(1)(e) and 10 of the Act
[48] On the issue of the scope of s. 10 of the Act, I wish to reproduce the following passage from Joliffe and Gill, Fox on Canadian Law of Trade-marks and Unfair Competition, 4th ed., Carswell, at pp. 5-66.6:
This section is obviously designed, as was its predecessor, to prohibit the adoption of such marks as the hall mark for silver and such other well-known marks indicative of quality or origin. (emphasis is mine)
[49] As will be further discussed below, I find that the evidence of record is not sufficient to establish that the term “strawberry tomatoes” is a “well-known [mark] indicative of quality or origin”.
[50] The Opponent submits that the Kinnaird affidavit establishes that the term “strawberry tomatoes” was in commercial usage by third parties as of the relevant date. However, I note that, as held previously, the Kinnaird affidavit consists exclusively of materials printed from the Internet with no evidence as to Canadians’ access to such materials. Furthermore, it is not clear from a review of the Kinnaird affidavit whether the website pages adduced therein emanate from, relate to, or could be accessed from, Canada. Based on the foregoing, the most that could be inferred from the website printouts attached to Ms. Kinnaird’s affidavit is that the website pages existed on the dates that they were printed, as set out above. While the evidence suggests that the term “strawberry tomatoes” is present on multiple Internet sites, which may or may not be accessible in Canada, this does not satisfy the Opponent’s burden that the term has become recognized in Canada as designating the kind or quality of the Wares.
[51] Ultimately, I am not satisfied that the Opponent has put forth any evidence to show that the term “strawberry tomatoes” has by bona fide and ordinary commercial usage, become recognized in Canada as designating the kind or quality of tomatoes pursuant to s. 10 and 12(1)(e) of the Act. Thus the ground of opposition based on s. 12(1)(e) is unsuccessful as the Opponent has not met its evidential burden.
Section 38(2)(d) Ground of Opposition
[52] While there is a legal onus on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its Wares 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.)], there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the ground of non-distinctiveness.
[53] I note that in its written argument, the Opponent wrongfully submits that the relevant date for analysis of this ground of opposition is the date of my decision.
[54] The Opponent has pleaded its non-distinctiveness ground of opposition as a three-pronged ground of opposition with the first prong based on alleged concurrent use of the Mark by the Opponent and other third parties; the second prong based on the alleged clearly descriptive nature of the Mark; and the third prong based on allegedly improper assignments of the Mark.
[55] With respect to the first prong, the Opponent submits that it has provided sufficient information to indicate that at the relevant date there was common usage by third parties of the term “strawberry tomatoes” in respect of seeds for growing tomatoes and recipes using these tomatoes.
[56] With respect to the second prong, the Opponent relies on the Kinnaird affidavit to support its allegation that the Mark is clearly descriptive of the character or quality of the Wares.
[57] Both the first and second prongs of the non-distinctiveness ground of opposition rely on the Kinnaird affidavit which, having been sworn April 16, 2008 and attaching materials printed from the Internet on August 2, 7 and 8, 2007, is dated after the material date. Even if I was to consider the Kinnaird affidavit as it postdates the material date by only a few months, I note that, as set out above, the Kinnaird affidavit is flawed, in particular due to the fact that it is not clear that the websites adduced therein have been accessed by Canadian consumers, or whether the websites emanate from, relate to, or could be accessed from Canada. Furthermore, the materials attached to the Kinnaird affidavit cannot be relied upon as evidence of the truth of their contents [see Candrug, supra]. Based on the foregoing, I find that the Opponent has not met its evidential burden for the first and second prongs of the non-distinctiveness ground of opposition.
[58] Finally, I agree with the Applicant that the Opponent has failed to meet its burden to evidence the third prong of the ground of opposition alleging that the Mark is not distinctive as a result of improper assignments.
[59] I note that in its written argument, the Applicant has attempted to adduce state of the register evidence by stating that “a recent search” of the CIPO Database “revealed eight marks that contain ‘strawberry’ and ‘tomatoes’, all of which are owned by the Applicant”. The Applicant submits that this supports a finding of distinctiveness for the Mark. In addition to the fact that the other applications or registrations have not been properly adduced as evidence in this proceeding, I note that the fact that the Applicant owns other applications or registrations does not give it the automatic right to the registration of the Mark [see Mister Coffee & Services Inc. v. Mr. Coffee, Inc. (1999), 3 C.P.R. (4th) 405 (T.M.O.B.) at 416 and American Cyanamid Co. v. Stanley Pharmaceuticals Ltd. (1996), 74 C.P.R. (3d) 572 (T.M.O.B.) at 576].
[60] Having regard to the foregoing, I find that the entire ground of opposition based on s. 38(2)(d) and 2 is dismissed.
Disposition
[61] Pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office