LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 4
Date of Decision: 2011-01-17
IN THE MATTER OF AN OPPOSITION by MSLO Shared IP Sub LLC to application No. 1,256,130 for the trade-mark BAM! BULLY! in the name of Shady Glen Enterprises Limited.
AND
IN THE MATTER OF AN OPPOSITION by MSLO Shared IP Sub LLC to application No. 1,256,131 for the trade- BAM! BOOZLED! in the name of Shady Glen Enterprises Limited.
The Pleadings
[1] On May 2, 2005 Shady Glen Enterprises Limited (the Applicant) filed application No. 1,256,130 to register the trade-mark BAM! BULLY! (the Mark) and application No. 1,256,131 to register the trade-mark BAM! BOOZLED!.
[2] Both applications are based on proposed use and cover: food products namely vinegar; salad dressings namely marinades and dipping sauces (the Wares).
[3] The applications were advertised on December 21, 2005 in the Trade-marks Journal for opposition purposes. Emeril’s Food of Love Productions, LLC (Emeril) filed a statement of opposition on September 21, 2006 to each of these applications which were amended twice: once on August 24, 2007 and subsequently on June 9, 2009. The latest amendment was made to reflect the assignment from Emeril to MSLO Shared IP Sub LLC (MSLO) in the rights of the trade-marks mentioned in the statement of opposition. I shall refer hereinafter to Emeril and/or MSLO as the Opponent.
[4] The Applicant filed a counter statement on February 12, 2007 in each of those files wherein it denied the grounds of opposition pleaded by the Opponent and added that it was relying on its associated trade-mark BAM!, certificate of registration TMA612,000 covering food products namely vinegar; salad dressings namely marinades and dipping sauces.
[5] The Opponent filed the affidavits of Anthony Cruz and Hélène Doré while the Applicant filed the affidavit of Wanda Dixon as their evidence in both files.
[6] Both parties filed a written argument and only the Opponent was represented at an oral hearing.
[7] I shall first deal with application No. 1,256,130 for the MArk.
The Grounds of Opposition
[8] The grounds of opposition as they appear in the final amended statement of opposition can be summarized as follows:
1. The application does not comply with the provisions of s. 30(i) the Trade-marks Act, R.C.S. 1985, c. T-13 (the Act) in that the Applicant could not state that it was satisfied that it was entitled to use the Mark in association with the Wares in light of the facts set out below;
2. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(a) of the Act because at the filing date of the application, the Mark was confusing with the Opponent’s trade-mark BAM! previously used and made known in Canada in association with “food, including but not limited to food seasoning; apparel; footwear; cookware, cooking utensils and accessories; printed matter; books; television shows; cooking demonstrations, wine and/or food tastings”;
3. The Mark is not distinctive of the Applicant’s Wares, in that it does not distinguish nor is it capable of distinguishing the Applicant’s Wares from the wares and services of others, and more particularly from the said wares and services in association with which the BAM! trade-mark of the Opponent has been used and/or made known, and continues to be used and/or made known in Canada by the Opponent as well as other wares and services offered and performed by the Opponent.
Legal Onus and Burden of Proof in Trade-marks Opposition Proceedings
[9] The legal onus is upon the Applicant to show that its application complies with the provisions of the Act, but there is however 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. Once this initial burden is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325; John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company [2005] F.C. 722].
Relevant dates
[10] The relevant date for the analysis of each ground of opposition varies depending on the ground of opposition to be assessed:
➢ Non-compliance with the requirements of s. 30 of the Act: The filing date of the application (May 2, 2005);
➢ Entitlement to the registration of the Mark, where the application is based on proposed use: The filing date of the application (May 2, 2005) [see s. 16(3) of the Act];
➢ Distinctiveness of the Mark: The filing date of the statement of opposition (September 21, 2006) is generally accepted to be the relevant date [see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
Ground of Opposition Based on s. 16(3)(a) of the Act
[11] The Opponent must show either prior use of its trade-mark BAM! as of the Applicant’s filing date and that such use was not abandoned at the advertisement date of the present application (December 21, 2005) [see s. 16(5) of the Act]; or that its trade-mark was known in Canada at the relevant date.
[12] Mr. Cruz is the Chef Financial Officer of Emeril’s Homebase, an affiliate entity of Emeril’s Food of Love Productions, LLC, a Louisiana limited liability company, having its principal place of business located in New Orleans, Louisiana, United States of America.
[13] He explains that he has been associated with chef Emeril Lagasse since 1990 to the present. He alleges that the trade-mark BAM! originates from an expression used by chef Emeril Lagasse, while appearing on television programs, to denote his addition of spices or other ingredients to dishes he prepares. He filed samples of 249 articles published in various Canadian newspapers since May 1994 wherein there is a reference to Emeril Lagasse and the trade-mark BAM!.
[14] He provides information on the various television shows on which Emeril Lagasse has appeared over the years. Some of these programs were produced by or with the authorization of the Opponent or its predecessor-in-title. It includes programs broadcasted on the Food Network and on the ABC Network. The television shows have been broadcasted in Canada since at least as early as October 2000.
[15] To evidence the broadcasting of these various television shows in Canada Ms. Doré, the Corporate Vice President of Agence d’Investigation Condor Inc. did some searches on the Internet and at La Grande Bibliothèque de Bibliothèque et Archives nationales du Québec. She filed the Annual Report of Alliance Atlantis, for the years 1999 to 2005 inclusive, the owner of the broadcasting rights of the television shows featuring chef Emeril Lagasse. Reference is made in those reports to the broadcast of those television shows in Canada. She also filed extracts of The Gazette and TV Times, published in The Gazette, between 1996 and 2007 wherein reference is made to these television programs. She filed samples of articles published in The Toronto Star reporting on television appearances of Emeril Lagasse.
[16] Mr. Cruz alleges that Emeril Lagasse has traveled to Canada for promotional purposes such as in Toronto in December 1998.
[17] Mr. Cruz alleges that Emeril Lagasse and the trade-mark BAM! are also known in Canada as the result of the offer for sale and sale of a variety of products and/or the performance of services by or with the authorization of the Opponent or its predecessor-in-title.
[18] Mr. Cruz filed a copy of various cookbooks of Emeril Lagasse that have been distributed since 1993 in Canada. He provides the year of publication and the number of copies sold for each book published. I note that in at least two of them (tabs 4 and 5 to Exhibit AC-3) the expression BAM! is either used in the text of the cookbook or appears on a T-shirt or on an illustration.
[19] He alleges that salad seasonings and assorted rubs have been offered for sale and sold in Canada since at least as early as February 2002 in association with the trade-mark BAM! and has filed photographs of samples of these products. He also filed samples of labels of assorted rubs and salad seasonings sold in Canada by or with the authorization of the Opponent or its predecessor-in-title bearing the trade-mark BAM!.
[20] I have voluntary disregarded some of the evidence filed by Mr. Cruz. In the case of promotional items such as a chef coat, baseball cap, golf towel and baby bib, there is no reference to the trade-mark BAM! and we have no information on their distribution in Canada.
[21] Mr. Cruz filed samples of advertisements placed by or with the authorization of the Opponent or its predecessor-in-title relating to products bearing the trade-mark BAM!. Those ads were placed in Redbook magazine in November 2004 and in Good Housekeeping magazine in November 2003; but we have no information on their circulation in Canada.
[22] Mr. Cruz provides a list of restaurants operated with the authorization of the Opponent or its predecessor-in-title, the earliest one in 1990 located in New Orleans, Louisiana, U.S.A but there is no restaurant located in Canada and none listed bears the trade-mark BAM!.
[23] Despite the evidentiary limitations of some of the Opponent’s evidence identified in the preceding three paragraphs, I conclude that the Opponent has met its initial burden to prove that its trade-mark BAM! has been used in Canada prior to May 2, 2005 and was not abandoned as of December 21, 2005 [see s. 16(5) of the Act]. Should I be wrong in reaching such conclusion, the evidence described above does establish at least that the Opponent’s trade-mark BAM! was known in Canada at the relevant date.
[24] Consequently, the Applicant must prove, on a balance of probabilities, that the Mark is not likely to cause confusion with the Opponent’s trade-mark BAM!. The test to determine this issue is set out in s. 6(2) of the Act and I must take into consideration all the relevant surrounding circumstances, including those listed in s. 6(5): the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or in the ideas suggested by them.
[25] Those criteria are not exhaustive and it is not necessary to give each one of them equal weight [see Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.) and Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)].
[26] I do not need to go through an in-depth analysis of the relevant criteria as the Applicant admits in its written argument that the parties’ trade-marks are confusing and I quote from the Applicant’s written argument:
While we agree that confusion with the Opponent’s alleged trade-mark would exist, it is the Applicant who has established its priority over the Opponent’s alleged trade-mark BAM!, by virtue of its registered trade-mark and prior use. Regardless of whether the determining date is the filing date or the date of first use, the Applicant’s associated trade-mark registration for BAM! was filed on February 2001. The date predates any alleged “well-known” claimed or alleged date of first use of the Opponent’s alleged trade-mark (page 13-14 of the Applicant’s written argument).
Before addressing the Applicant’s submissions, some comments need to be made with respect to the Applicant’s evidence.
[27] Ms. Dixon has been the Applicant’s Secretary since 1998. She states that the Applicant was incorporated on January 15, 1998 and specializes in the manufacture of a variety of gourmet flavoured vinegars.
[28] She explains how the trade-mark BAM! was derived from by referring to comic strip characters who used that word, such as Johnny Hart in the late 1950s and 1960s; Elmer Fuddin in the cartoon television show Bugs Bunny; and also the use of BAM BAM by characters in the “Flinstones”.
[29] She states in paragraph 9 of her affidavit:
The individual names for the Applicant’s “LOVE BERRIES” were creatively chosen to relate well with one another and to work as a family. The slang term “BAM” was derived specifically for the Applicant’s blackberry vinegar because it is known to be an exclamatory word and the blackberry flavour “packs a punch”.
[30] She then lists the trade-mark registrations owned by the Applicant, including certificate of registration TMA612,000 for the trade-mark BAM!.
[31] She states that the Applicant’s trade-marks, including BAM!, appear on the Applicant’s website and within recipes made available on the website. She files an extract of the Applicant’s website wherein the trade-mark BAM! appears in association with blackberry vinegar. She states that that the trade-mark BAM! has been continuously used in Canada in association with vinegars since 2002 to the present.
[32] Then in May 2005 Ms. Dixon instructed the Applicant’s trade-mark agent to file an application to register the trade-marks BAM! BULLY! and BAM! BOOZLED! based on proposed use. She states that they were specifically adopted for a blackberry flavoured non-alcoholic beef marinade in the case of the first trade-mark and for a marinade containing alcohol for the latter mark.
[33] It is not necessary to describe in details the remainder of the Applicant’s evidence. Suffice to say that Ms. Dixon provides examples of the use of the Applicant’s trade-mark BAM! since at least 2002. She provides no evidence of use of the applied for trade-marks.
[34] The fact that the Applicant obtained the registration of a trade-mark, prior to the relevant date (the filing date of the present application) does not necessarily give it the right to obtain the registration of a similar trade-mark [see Groupe Lavo Inc. v. Proter & Gamble Inc. (1990), 32 C.P.R. (3d) 533 (T.M.O.B)]. Any use of a similar trade-mark to the Mark by the Applicant is not a relevant factor in this case.
[35] This conclusion of law is sufficient to dispose of the argument advanced by the Applicant to defeat any of its grounds of opposition based on the likelihood of confusion with the Opponent’s trade-mark BAM!. The trade-marks to be compared and to which the relevant factors are assessed are the Opponent’s trade-mark BAM! and the Mark. As stated above, the Applicant admits the likelihood of confusion between those marks. The fact that the Applicant has been using the trade-mark BAM! in Canada since 2002 is not a relevant factor to determine if the Applicant is entitled to the registration of the Mark under s. 16(3) of the Act.
[36] The Applicant argues that most of the Opponent’s evidence refers to the trade-mark EMERIL or to Emeril Lagasse as a television personality and does not refer to the Opponent’s trade-mark BAM!. I already described what I consider to be evidence of use of the trade-mark BAM!. I may add that Mr. Cruz has alleged throughout his affidavit that any use of the trade-mark BAM! by Emeril Lagasse is made with the Opponent’s consent and approval. There has been no evidence filed to contradict such assertion.
[37] Finally the Applicant argues that the word BAM! is used as an oral expression. The Applicant does not take into consideration the evidence of printed labels, photographs of products bearing the trade-mark BAM!.
[38] Consequently the second ground of opposition is maintained.
Distinctiveness of the Mark
[39] To meet its initial onus the Opponent had to prove that its trade-mark BAM! had become sufficiently known in Canada at that relevant date (September 21, 2006) to negate any distinctiveness of the Mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58]. Once this burden is met, the Applicant has a legal onus to show, on a balance of probabilities, that the Mark was not likely to create confusion with the Opponent’s trade-mark BAM! such that it was adapted to distinguish or actually distinguishes throughout Canada the Wares from the Opponent’s wares and services [see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272].
[40] The Opponent has met its initial burden by proving that its trade-mark BAM! was sufficiently known in Canada prior to the filing date of its statement of opposition. I refer to the summary of the Opponent’s evidence described under the previous ground of opposition.
[41] The issue to be decided remains the likelihood of confusion between the Mark and the Opponent’s trade-mark. The Applicant’s argument again is based on its prior use of the trade-mark BAM!. I reproduce the following extract of its written argument:
The Applicant has established current and past use of its associated, registered trade-mark BAM!. The Applicant’s trade-mark was and is distinctive within the meaning of s. 2 of the Act [page 14 of the Applicant’s written argument].
[42] For the same reasons detailed under the ground of entitlement I maintain this ground of opposition.
Ground of Opposition Based on s. 30(i) of the Act
[43] The Opponent having been successful under two separate grounds of opposition, it is not necessary for me to discuss this ground of opposition.
Application No. 1,256,131 for the Trade-mark BAM! BUZZLED!
[44] Except for the file number and the trade-mark applied for, the grounds of opposition, the evidence filed and the arguments raised by both parties are identical to what has been described with respect to application No. 1,256,130. The same conclusions reached in the latter application apply equally to application No.1,256,131.
Disposition
[45] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse applications No. 1,256,130 and No.1,256,131 pursuant to s. 38(8) of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office