IN THE MATTER OF OPPOSITIONS by
National Dry Company Limited to application
Nos. 483,008; 483,009; 483,010 for the marks
BOTTLE DESIGN filed by Nestle Sources
International S.A.
On February 26, 1982, the original applicant namely, Source Perrier (Société anonyme), filed application No. 483,008 to register as a trade-mark a distinguishing guise namely, "a sea-green Indian-club shaped bottle with or without a gold and green cap", as shown below.
The application was based on use of the distinguishing guise (hereinafter "the applied for mark" or "the applicant's mark") in Canada since at least as early as June 1976 in association with "naturally sparkling mineral/spring waters." The file record shows that the applicant subsequently changed its name to Nestle Sources International S.A.
The application met with several objections at the examination stage. One objection was that the applied for mark was not registrable because it was confusing with trade-mark regn. No. 181,602 (also a distinguishing guise) standing in the name of Pure Springs (Canada) Limited and covering the wares "carbonated and non-carbonated beverages known as soft drinks." A second objection was that the phrase "with or without a gold or green cap" should be deleted from the description of the mark. A third objection required the applicant to establish the extent to which and the time during which the applied for mark had been used in Canada: in this regard see present Section 32(1) of the Trade-marks Act.
The first objection was overcome when regn. No. 181,602 was expunged from the register pursuant to a proceeding under Section 44 [now 45] on October 21, 1983. The second objection was overcome when the applicant filed an amended application (dated May 14, 1986) deleting the phrase "with or without a gold or green cap." The applicant satisfied the third objection by filing the affidavit of Guy Gibelin, dated July 9, 1984. The applicant also relied on the Gibelin affidavit to amend its date of first use of the mark to "since at least as early as October 1956": in this regard, see Rule 36(c) of the Trade-marks Regulations.
Consequently, the application of record is for the distinguishing guise illustrated earlier with the colour sea green claimed as a feature of the mark and is based on use of the mark in Canada since at least as early as October 1956.
The application was advertised for opposition purposes in the Trade-marks Journal issue dated September 24, 1986 and opposed by National Dry Company Limited on February 24, 1987. A copy of the statement of opposition was forwarded to the applicant on March 13, 1987. The applicant responded by filing and serving a counter statement.
The first ground of opposition is that the applicant is not entitled to register the applied for mark because the same or a confusing bottle design has been used by the opponent and its predecessors and related companies and their franchisees in association with bottled soft drinks since at least as early as 1955, i.e. prior to the date of first use referred to in the subject.
The second ground of opposition is that the applied for mark is not distinctive of the applicant's wares because at the date of filing it was confusing with bottle designs used by the opponent and related companies and by others in association with soft drinks, carbonated water and mineral water.
The third and fourth grounds of opposition, based on present Section 30 of the Trade-marks Act, are reproduced below:
It is apparent that the fourth ground of opposition is based on present subsection 30(a) of the Trade-marks Act since the language of the pleading tracks the subsection. It is not entirely clear that the third ground of opposition is also based on subsection 30(a), however, I have treated this as a technical deficiency. In this regard, the applicant has not raised any objections to the third ground as pleaded and the opponent makes its reliance on subsection 30(a) clear on page 20 of its written argument.
The opponent's evidence consists of the affidavits of Elio Madonia, President of the opponent company, and Eleanor Parr. The applicant's evidence consists of the affidavits of Frank de Vries, President of a company that has been the exclusive importer (into Canada) of the applicant's water product; Ren G. Dunn, a marketing consultant in the soft drink and mineral water industry; Céline Tremblay, trade-mark agent; and Robin Dodokin, law student.
As its evidence in reply the opponent filed the affidavits of Heather Chockley, law clerk; Jane Sarjeant; and Mirvin Mirsky. At the oral hearing, the applicant objected that the opponent's reply evidence is not admissible since it is not confined to matters strictly in reply as required by Rule 45 of the Trade-marks Regulations. I agree with the applicant's submission insofar as Mr. Mirsky's evidence is concerned. However, I find the Chockley and Sarjeant affidavits admissible for reasons that I will discuss later.
Mr. de Vries and Elio Madonia were cross-examined on their affidavits. The transcripts of their cross-examinations, as well as responses to undertakings given at Mr. Madonia's cross-examination, form part of the evidence herein. Both parties filed a written argument, however, the opponent was not represented at the oral hearing. The applicant was ably represented by its agent at the oral hearing.
I will first consider the third and fourth grounds of opposition based on subsection 30(a). The subsection reads as follows:
An applicant for the registration of a trade-mark shall file with the Registrar an application containing
(a) a statement in ordinary commercial terms of the specific wares . . . in association with which the mark has been . . . used;
(emphasis added)
As noted earlier, the wares as specified in the subject application are "naturally sparkling mineral/spring waters." The third and fourth grounds of opposition raise the issue of whether the terms "naturally sparkling" and "mineral/spring" are ordinary commercial terms used to describe the applicant's water product. The test to be applied under subsection 30(a) is that an applicant in its application must clearly set forth wares or services as they are customarily referred to in the trade: in this regard see the Opposition Board decision in Decra-Loc Canada Ltd. v. Pave Tech, Inc., April 28, 1995 (yet unreported, concerning application. No. 648,563 for the trade-mark PAVE EDGE).
The material time for considering the circumstances respecting the third and forth grounds of opposition is as of the applicant's filing date: see the opposition decision in Style-Kraft Sportswear Ltd. v. One Step Beyond Ltd. (1993), 51 C.P.R.(3d) 271 at 274. The onus or legal burden is on the applicant to show its compliance with the provisions of Section 30(a) of the Act: see the opposition decision in Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (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.). However, to the extent that the opponent relies on allegations of fact in support its grounds of opposition, there is an evidential burden on the opponent to prove those allegations.
To meet the evidential burden upon it in relation to a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. At page 298 of the John Labatt decision, above, Mr. Justice McNair characterises the evidential burden on an opponent as follows:
The evidential burden is the burden of adducing sufficient evidence to persuade the trier of fact that the alleged facts are true: see Sopinka and Lederman, The Law of Evidence in Civil Cases [Butterworths], 6th ed., pp. 107-08; Phipson On Evidence, 13th ed., para. 44-03; McCormick On Evidence [Hornbook Series, West Publishing Co.], 3rd. ed., pp. 946-48; and Thayer, Preliminary Treatise On Evidence at the Common Law (1898), ch. 9.
I find that the opponent has not met the evidential burden on it respecting the fourth ground of opposition. In this regard, Mr. de Vries' evidence on cross-examination indicates that the term mineral/spring water refers to spring water with a mineral content. There is no evidence to the contrary which supports the opponent's allegation that the term is vague or unclear.
However, I do find that the evidence of record, particularly Mr. de Vries' testimony on cross-examination, together with the negative inference that I have drawn from the applicant's refusal to permit Mr. de Vries to answer some questions on cross-examination, are sufficient to meet the opponent's evidential burden with respect to the third ground of opposition. Relevant portions of Mr. De Vries affidavit evidence are reproduced below:
(emphasis added)
Mr. de Vries' testimony at cross-examination (see pages 11-12 of the transcript) is that the applicant's water product is not potable when it is drawn from an underground spring at the applicant's plant in France. Carbonated water that comes up from the spring has impurities in the carbon dioxide gas that must be filtered out. To accomplish this, the carbon dioxide gas is removed from the water at the surface (i.e. above ground level), the gas is purified, and the purified gas is then reinjected into the water. The applicant's agent refused to permit a further line of questioning concerning the use of the phrase "naturally carbonated" or "naturally sparkling" on the applicant's product labels in Canada and in other jurisdictions namely, France and the United States of America (see pages 15-22 of the transcript). The applicant's position is that such questions are not relevant and extend to matters not covered in Mr. de Vries' affidavit. I do not agree with the applicant's position. Mr. de Vries' affidavit explicitly refers to the law of France as it pertains to sparkling water, to the popularity of the applicant's product in North America, and explicitly differentiates between "naturally sparkling" water as opposed to artificially carbonated water. Further, the overall impression given by Mr. de Vries in his testimony is that the bottled water industry is an international one. It would therefore not be surprising if the mineral/spring water industries of different jurisdictions employed like terms to describe their products. Once such topics were either explicitly or implicitly addressed in Mr. de Vries' affidavit, it was open to the opponent to ask relevant questions relating to the labelling of the applicant's product in different jurisdictions.
If I am wrong in my interpretation of Mr. de Vries' affidavit, then I consider that the opponent's questions are relevant in any event given the scope of inquiry permitted in opposition proceeding: in this regard see Coca-Cola Ltd. v. Compagnie Français de Commerce (1991), 35 C.P.R.(3d) 406 at 412-413 (TMOB). Accordingly, I have drawn a negative inference from the applicant's refusal to permit Mr. de Vries to answer questions put to him at cross-examination. The inference that I have drawn is that the applicant's product would not customarily be referred to as "naturally sparkling" in the mineral/spring water industry.
The only probative evidence filed by the opponent in support of the third ground of opposition are exhibits attached to the Sarjeant and Chockley affidavits. Exhibit A of the Sarjeant affidavit is a certified copy of a Notice of Adverse Findings, dated March 14, 1990, from the Food and Drug Administration of the Department of Health and Human Services of the United States of America to Perrier/Great Waters of France, Inc. located in Greenwich, CT. The same exhibit, but uncertified, is attached to the Chockley affidavit. The relevant part of the Notice is reproduced below:
The contents of the Notice as introduced into evidence by Heather Chockley and Jane Sarjeant are hearsay and therefore of doubtful reliability concerning the issue of commercial terms in the mineral\spring water industry. It is unlikely that the Notice by itself would satisfy the evidential burden on the opponent to put the third ground of opposition is issue. However, the Notice is consistent with the opponent's contention that the applicant's water product would not customarily be referred to in the trade as "naturally sparkling." Although the probative value of the Notice is low, it is nevertheless relevant and in my view within the scope of reply to Mr. de Vries' testimony.
In view of the above, I find that the opponent has met the relatively light evidential burden on it to put the third ground of opposition based on Section 30(a) of the Act in issue. On the other hand, the applicant has not done anything to establish that, on the balance of probabilities, its product would customarily be referred to in the industry as a "naturally sparkling" spring water. Rather, the evidence suggests that the applicant's product would be referred to in some other way to differentiate it from an unprocessed carbonated spring/mineral water potable in its natural state. My finding is not based on whether or not the applicant's labelling of its products meets with the regulatory approval of Canada or of foreign jurisdictions. Rather, my finding may be viewed as a technical one resulting from the applicant's failure to overcome an allegation that has been put into issue by the opponent satisfying a relatively light evidential onus. The opponent therefore succeeds on the third ground of opposition and it is not necessary for me to consider the remaining grounds.
In view of the above, application No. 483,008 is refused.
Application Nos. 483,009 and 483,010 are for similar distinguishing guises also covering "naturally sparkling mineral /spring waters." The issues and evidence relating to application Nos. 483,009 and 483,010 are the same as those discussed above. The latter two applications are therefore also refused on the same basis that application No. 483,008 has been refused namely, for the reason that the applicant has not met the legal onus on it to show compliance with Section 30(a) of the Act.
DATED AT HULL, QUEBEC, THIS 18th DAY OF DECEMBER, 1995.
Myer Herzig,
Member,
Trade-marks Opposition Board