IN THE MATTER OF AN OPPOSITION by Unilever Canada Inc. to application No. 1,116,050 for the trade-mark BETTER THAN BOUILLON filed by Superior Quality Foods, Inc._____________________
On September 19, 2001, Superior Quality Foods, Inc. (the “Applicant”) filed an application to register the trade-mark BETTER THAN BOUILLON (the “Mark”) for use in association with soups and soup bases (the “Wares”). The application is based upon both use of the Mark in Canada since at least as early as January 15, 1997 and use and registration of the Mark in the United States of America. The Applicant has disclaimed the right to the exclusive use of the word BOUILLON apart from the Mark as a whole.
The application was advertised for opposition purposes in the Trade-marks Journal of May 7, 2003. On October 2, 2003, Unilever Canada Inc. (the “Opponent”) filed a statement of opposition against the application, which focused on the issue of the descriptiveness of the Mark.
The Applicant filed and served a counter statement, which denied the allegations made in the statement of opposition.
The Opponent filed the affidavit of Scott Cooper in support of its opposition. Mr. Cooper, one of the Opponent’s directors, provides dictionary definitions for “bouillon” and “better”. I have not accorded any weight to Mr. Cooper’s personal conclusion that the Mark is clearly descriptive or deceptively misdescriptive.
The Applicant filed the affidavit of Paul Smalley in support of its application. Mr. Smalley, the Applicant’s National Retail Sales Manager, describes the Applicant’s business and provides details concerning its use and promotion of the Mark in Canada and elsewhere.
Neither affiant was cross-examined.
Each party filed a written argument. The Opponent’s argument includes references to various facts that have not been introduced as evidence, such as other marks on the Trade-marks Register, and I am disregarding those sections of the argument.
Both parties participated in an oral hearing.
Although the Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), there is an initial 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, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)]
Grounds of Opposition
The key question to be decided in these proceedings is whether the Mark is either clearly or deceptively misdescriptive of the character or quality of soups and soup bases. This issue forms the basis of grounds of opposition pleaded under s. 38(2)(a), (b) and (d) of the Act. I will begin by addressing the s. 38(2)(b) ground, namely that the Mark is not registrable under s. 12(1)(b).
Section 38(2)(b)/Section 12(1)(b)
The Opposition Board considers the material date with respect to s. 12(1)(b) to be the date of filing of the application. [see Havana Club Holdings S. A. v. Bacardi & Company Limited (2004), 35 C.P.R. (4th) 541 (T.M.O.B.); Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)] I note that although the Applicant’s affiant has submitted sales and advertising figures concerning its Mark, they have been submitted as a lump sum, making it impossible for me to know what portion predates September 19, 2001.
The issue as to whether the Applicant’s Mark is clearly descriptive must be considered from the point of view of the average purchaser of those wares. Furthermore, 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, 40 C.P.R. (2d) 25 at 27-8; Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183 at 186] Character means a feature, trait or characteristic of the wares 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 at 34]
The reference to the word “quality” in s. 12(1)(b) means that words that describe a degree of excellence are not registrable. “Better” is clearly such a word, as confirmed by its definition as “of a more excellent or outstanding or desirable kind”. [See second edition of the Oxford Canadian Dictionary and ninth edition of The Concise Oxford Dictionary.] The Applicant argued that “better” is a comparative word, not a laudatory word, and expressed the view that the laudatory version of “better” would be “best”. However, the Oxford Canadian Dictionary definition of “laudatory” is “expressing praise” and I agree with the Opponent’s position that “better” is a laudatory word, with “best” simply being the superlative laudatory form.
“Bouillon” is defined as “a clear broth made by cooking meat or fish in water” in the Oxford Canadian Dictionary and as “thin soup; broth” in The Concise Oxford Dictionary.
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. In the present case, although I have reproduced the dictionary definitions of the Mark’s key words above, I consider the meaning of each to be well known.
The Applicant concedes that its Mark may be suggestive of its wares, but submits that it is not clearly descriptive. It argues, at paragraph 34 of its written argument, that “the term ‘better than’ is not laudatory in the traditional sense, in that it does not state that it is superior in quality or nature, only that it is of a more desirable kind as compared to something else… ‘better than’, as a relative term, cannot be clearly descriptive in nature”. It concludes in paragraph 35 that “the phrase BETTER THAN BOUILLON in no way clearly describes an intrinsic character or quality of the Wares.” Then it states in paragraph 37, “It is not an essential characteristic or quality of the Wares that they are of higher quality than a traditional bouillon, or that a consumer would in fact enjoy the Wares more than a bouillon.” It also classifies its Mark as mere puffery and submits that that there is no clear link between the Mark and the Wares.
I do not find these arguments to be persuasive. Instead, I find that the Mark does clearly describe as a matter of first impression that the Applicant’s soups and soup bases are “better than bouillon”, a laudatory description that is contrary to s. 12(1)(b). I note also that the Mark comprises an ordinary, grammatical phrase that others in the industry should be allowed to use to fairly describe their products.
The Applicant has not established, on a balance of probabilities, that its Mark is not clearly descriptive of the character or quality of its Wares. The s. 12(1)(b) ground accordingly succeeds.
Before proceeding, I will mention that it is of course possible to register a mark that is prohibited by s. 12(1)(b) through reliance on s. 12(2) or s. 14. However, the Applicant did not claim the benefit of either of these sections and, if it had, it is uncertain if it would have succeeded.
I will also mention that I see no need to address the Opponent’s submissions with respect to the Mark being deceptively misdescriptive.
Section 38(2)(d)/Distinctiveness
Mr. Justice Denault stated in Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 (F.C.T.D.) at 428:
While distinctiveness is quite often determined as part of an evaluation of whether the proposed trade mark is confusing with another trade mark within the meaning of s. 6 of the Act, it is possible to refuse an application for registration on the basis of non-distinctiveness independent of the issue of confusion, provided the ground is raised in opposition... The quality of distinctiveness is a fundamental and essential requirement of a trade mark and the ground of lack of distinctiveness may be raised in opposition by any person and may be based on a failure to distinguish or to adapt to distinguish the proposed trade mark from the wares of any others.
In the present case, the Opponent has pleaded that the Applicant’s Mark is not distinctive because the Mark is clearly descriptive of the character or quality of the Applicant’s Wares.
The material date with respect to distinctiveness is the date of filing the opposition. [see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.) at 130 and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 (F.C.A.) at 424]
In Canadian Council of Professional Engineers v. APA - The Engineered Wood Association (2000), 7 C.P.R. (4th) 239 at 253, Mr. Justice O'Keefe stated, “a purely descriptive or a deceptively misdescriptive trade-mark is necessarily not distinctive”. Therefore, based on my earlier finding that the Mark is clearly descriptive, I conclude that the Mark is also not inherently adapted to distinguish the Wares of the Applicant from similar wares of others.
In addition, as the Applicant’s sales and advertising figures have been submitted as a lump sum, it is impossible for me to know what portion predates October 2, 2003, with the result that there is no basis on which to conclude that as of October 2, 2003 the Mark had acquired sufficient distinctiveness in Canada as to result in it actually distinguishing the Applicant’s Wares.
Accordingly, this ground of opposition succeeds.
Section 38(2)(a) – Section 30(i)
As I have already found in favour of the Opponent under two grounds, there is no need for me to address the remaining s. 30(i) ground.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 27TH DAY OF APRIL 2007.
Jill W. Bradbury
Member
Trade-marks Opposition Board