Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Essex Cottage Farms Ltd. to application No. 1,171,728 for the trade-mark THE URBAN CARNIVORE filed by  Riveriene Farm Ltd.     ___                                                     

 

On March 20, 2003, Riveriene Farm Ltd. (the “Applicant”) filed an application to register the trade-mark THE URBAN CARNIVORE (the “Mark”) based upon proposed use of the Mark in Canada in association with dog food and cat food.

 

The application was advertised for opposition purposes in the Trade-marks Journal of February 11, 2004. On July 9, 2004, Essex Cottage Farms Ltd. (the “Opponent”) filed a statement of opposition.

 

The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.

 

In support of its opposition, the Opponent filed the affidavits of M. Catherine Woodliffe (the Opponent’s President), Laura Kelsch (the owner of a dog boarding and retailer outlet) and Linda Villeneuve (an administrative assistant with the Opponent’s law firm).

 

In support of its application, the Applicant filed the affidavits of Dennis Hagel (the Applicant’s President) and various pet food retailers: Doug Whitaker, Dave Prevost, Leslie Charlton, Doris Hammermeister, Brent Hauberg, Becky McIntosh and Lee Drescher.

 

As reply evidence, the Opponent filed a further affidavit of Ms. Woodliffe and an affidavit of Taiji Yoshino (a technical consultant with the Opponent’s law firm).

 

The Applicant obtained an order to cross-examine Ms. Woodliffe on her two affidavits and the transcript of the cross-examination, as well as answers to certain undertakings, have been filed.

 

Each party filed a written argument and participated in an oral hearing.

 

Onus

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”). 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]. 

 

The grounds pleaded in the statement of opposition as 2(a) and (b) are based on s. 30 of the Act. In its written argument, the Opponent advised that it was withdrawing ground 2(a).

 

Ground 2(b) reads as follows:

Pursuant to Section 38(2)(a) of the Act, Application Serial No. 1,171,728 does not comply with the requirements of Section 30, particularly Subsection 30(e) and (i). The Applicant had and has no true intention to use the trade-mark THE URBAN CARNIVORE in Canada and could not have been satisfied that it was entitled to use that mark since at the date of filing the application the Applicant was or should have been aware of the Opponent’s trade-mark as described below.

 

The Applicant responded to this pleading in its counter statement as follows:

At the date of filing of the Trademark Application the Applicant genuinely intended to use the trademark in Canada and in fact has begun using it without any confusion with the Opponent’s trademark URBAN WOLF & Design, Registration No. 1,167,569. At the time of the filing of its Trademark Application the Applicant was unaware of the Opponent’s trademark. The Applicant has therefore met the requirements of subsections 30(e) and (i) of the Act.

 

I will first address the s. 30(e) ground of opposition.

 

There is a line of case decisions wherein the Registrar of Trade-marks has refused proposed use applications where actual use of the trade-mark was evidenced prior to the filing date [see e.g. Nabisco Brands Ltd. v. Cuda Consolidated Inc. (1997), 81 C.P.R. (3d) 537 at 540 and Canada Post Corporation v. IBAX Inc. (2001), 12 C.P.R. (4th) 562 (T.M.O.B.)]. The Opponent submits that this is such a case. It points to paragraph 4 of the affidavit of the Applicant’s President, Mr. Hagel, which reads:

While Riveriene Farm’s trademark application for THE URBAN CARNIVORE was filed on March 20^th, 2003 based on proposed use, the first use of the trademark actually took place as early as February 21^st, 2003. Annexed hereto and marked as Exhibit “B” to this my affidavit are true copy [sic] of sales invoices dated February 21^st and 29^th, 2003 for the sale of pet food showing the use of the mark. Annexed hereto and marked as Exhibit “C” to this my affidavit is a true copy of THE URBAN CARNIVORE label affixed to pet food sold by Riveriene Farm.

 

However, the Applicant’s position is that the Opponent’s s. 30(e) ground did not plead that the Applicant had used its Mark prior to filing its intent-to-use application. It submits that it would be unfair to refuse the application on such basis given that it was not apparent from the pleadings that the Opponent would rely on such basis.

 

In the event that the s. 30(e) ground can be interpreted as argued by the Opponent, the Applicant submits that its evidence does not show use of the Mark prior to the filing of the proposed use application, despite Mr. Hagel’s statement. This alternative argument of the Applicant succeeds for the following reasons.

 

Section 4 of the Act deems there to be use of a trade-mark in the following situations:

    (3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.

 

Therefore, although Mr. Hagel states that use occurred when the February 2003 invoices issued, this is not correct from a legal standpoint. The invoices that predated the filing of the application both indicate that the wares were to be shipped on a date that postdated the filing of the application. In accordance with s. 4(1), use of the Mark occurred when the wares bearing THE URBAN CARNIVORE label were shipped, not invoiced. Accordingly, although on first blush it appears that Mr. Hagel’s evidence contradicts the claim in the application that as of March 20, 2003 the Applicant intended to use the Mark, a complete analysis of the evidence indicates that it does not. The evidence instead confirms that the Applicant followed through with its intent to use the Mark.

 

I am therefore dismissing the s. 30(e) ground.

 

Turning to the s. 30(i) ground, there is no evidence that the Applicant was aware of the Opponent’s mark when it filed the present application. In any event, where an applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant, which is not the case here. [Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155] I am therefore dismissing the s. 30(i) ground.

 

Section 16(3)(b) ground of opposition

The Opponent has pleaded that the Applicant is not the person entitled to registration because, as of the date of filing of the application, the trade-mark THE URBAN CARNIVORE was confusing with the trade-mark URBAN WOLF & Design in respect of which an application for registration had been previously filed in Canada by the Opponent. Such application is No. 1,167,569. It was filed on February 10, 2003 and its statement of wares reads as follows:

Pet food, livestock feed, dietary supplement for pets, livestock and horses, namely grain, whole food, herb, dry blended food powder, dried ground fruit, dried milk, dried ground vegetables, dog food, cat food, clothing, namely T-shirts and sweat shirts, fashion accessories, namely handbags; note paper, pet leashes, mugs, cups, plates, kitchen utensils, prints, pictures.

 

The trade-mark URBAN WOLF & Design is shown below:

                                                                               

The Opponent has met its initial burden with respect to this ground as its application was pending when the Applicant’s application was advertised, as required by s. 16(4).

 

test for confusion

The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.

 

In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time each has been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).]

 

 s. 6(5)(a) - inherent distinctiveness of the marks and the extent to which each has become known

Each of the marks is inherently distinctive since neither relates directly to the associated wares.

 

As of March 20, 2003, the Applicant’s proposed use Mark had only become known to the extent that two invoices had issued for the future delivery of wares. The Opponent’s mark had perhaps become more known, but overall the Opponent’s mark had only become known to a very limited extent and for a very short time prior to March 20, 2003.

 

Accordingly, the s. 6(5)(a) factors do not particularly favour either party.

 

s. 6(5)(b) - the length of time each mark has been in use

The Opponent claims use of its mark since February 2003 whereas the earliest use evidenced by the Applicant is of a shipment made on March 31, 2003 (Hagel affidavit; Exhibit “B”). Accordingly, as of March 20, 2003, the length of time that each mark had been in use favours the Opponent, but only slightly.

 

s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade

Both parties’ marks are associated with pet food, in particular dog food and cat food, and both parties’ pet food is sold through pet food retailers.

 

The Applicant has directed considerable evidence to the fact that its pet food is sold in the form of frozen raw food patties whereas the Opponent’s pet food is sold in dry form and is intended to be mixed with ground meat. The Applicant therefor submits that there are considerable differences between the parties’ wares and that they would be sold in different parts of pet food stores, since the Applicant’s wares would be in a freezer. The Opponent responds in part that its wares may be sold right beside a freezer, especially since it is intended to be mixed with ground meat located in a freezer. More importantly, the Opponent notes that the statement of wares in the Applicant’s application does not restrict the pet food to any particular form or type. Accordingly, if the present application were to issue to registration, such registration would give the Applicant the exclusive right to use the Mark with any type of dog or cat food. Similarly, the Opponent’s application does not restrict the nature or style of its pet food, dog food or cat food. 

 

s. 6(5)(e) - the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them

The marks resemble one another because the first significant word of each mark is identical and the second word of each mark suggests a similar idea. The first component of a mark is often considered more important for the purpose of distinction [Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.)]. Moreover, the word “urban” is not an obvious choice for a pet food trade-mark.

 

The marks therefore resemble each other to a fair degree, especially when sounded.

 

other surrounding circumstances

i) The state of the register evidence does not show that the word “urban” has been commonly adopted in the pet food industry; whether or not it has been commonly adopted in the clothing industry is not relevant to the issues at hand.

 

ii) Considerable evidence and argument was directed to the issue of whether various pet food retailers were “confused” by the two marks. I am not according any significant weight to this evidence for the following reasons:

1. the evidence postdates the material date;
2. it is possible that confusion has not occurred due to the differences in the nature of the two parties’ wares as they exist in the marketplace – differences that I have already explained are not pertinent given the description of the parties’ wares in each of their applications;
3. the individual affiants use the word “confusion” but it is not clear that they understand what the word “confusion” means under trade-mark law.

 

conclusion regarding likelihood of confusion

Having considered all of the surrounding circumstances, I find that, on a balance of probabilities, there was a reasonable likelihood of confusion between THE URBAN CARNIVORE dog food and cat food and URBAN WOLF & Design dog food and cat food as of March 20, 2003. It seems reasonable to conclude that an ordinary purchaser of pet food, as a matter of first impression and imperfect recollection, is likely to conclude that the two products share a common source.

 

Section 16(3)(a) ground of opposition

The Opponent has pleaded that the Applicant is not the person entitled to registration because THE URBAN CARNIVORE was confusing as of the date of filing of the application with the trade-mark URBAN WOLF & Design which had been previously used and made known in Canada by the Opponent

 

The material date for determining the likelihood of confusion under s. 16(3)(a) is the filing date of the Applicant’s application.

 

The evidential burden on the Opponent under this entitlement ground of opposition is two-fold: 1.  the Opponent must demonstrate prior use or making known of its mark;

2. the Opponent must establish non-abandonment of its mark as of the date of advertisement of the Applicant’s application (s. 16(5)).

The evidence of Catherine Woodliffe satisfies the Opponent’s initial burden insofar as dog food is concerned. Although the Applicant has pointed out various exaggerations and failings in Ms. Woodliffe’s evidence, I am not prepared to dismiss her evidence in its entirety. I note that the Applicant has not submitted that the Opponent’s evidence fails to show that its mark was in use prior to March 20, 2003 or that its mark had not been abandoned as of February 11, 2004.

Remaining grounds of opposition

As I have already refused the application under two grounds, I will not address the remaining grounds.

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 20th DAY OF APRIL 2009.

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board