IN THE MATTER OF AN OPPOSITION
by Popsicle Industries Ltd. to
application No. 579,907 for the
trade-mark POPLICKS filed by
Ault Foods Limited / Les
Aliments Ault Limitee
On March 13, 1987, the applicant, Ault Foods Limited / Les Aliments Ault Limitee, filed an application to register the trade-mark POPLICKS for "frozen confections" based on proposed use in Canada. The application was advertised for opposition purposes on August 24, 1988.
The opponent, Popsicle Industries Ltd., filed a statement of opposition on September 16, 1988, a copy of which was forwarded to the applicant on October 14, 1988. The first ground of opposition is that the applicant's application does not comply with the provisions of Section 30(a) of the Trade-marks Act because the applicant's statement of wares is not a specific description in ordinary commercial terms of the applicant's proposed wares. The second ground of opposition is that the applicant's application does not comply with the provisions of Section 30(i) of the Act. The opponent contends that since the applicant was a registered user of certain of the opponent's registered trade-marks, the applicant could not have been satisfied that it was entitled to use the applied for trade-mark.
The third ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Act because it is confusing with a large number of registered trade-marks owned by the opponent including registration No. TMDA 33876 for the trade-mark POPSICLE for "frozen confections on a stick." The fourth ground of opposition is that the applicant is not the person entitled to registration of the applied for trade-mark pursuant to the provisions of Section 16(3) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with a large number of trade-marks of the opponent which had been previously used in Canada or for which applications had previously been filed. The fifth ground of opposition is that the applied for trade-mark is not distinctive in view of the above and in view of the fact that the applicant was enjoined from manufacturing, selling or distributing ice confections on a stick under the name POPSTICK (Popsicle Industries Ltd. v. Ault Foods Ltd. (1987), 17 C.P.R.(3d) 1 (F.C.T.D.)).
The applicant filed and served a counter statement. As its evidence, the opponent filed the affidavits of Margaret A. Hullin and Dave Dotson. As its evidence, the applicant filed the affidavits of Herb McPhail, Brian Isaac and Cam Emmons. Mr. Emmons was cross-examined on his affidavit and the transcript of that cross-examination and the replies to undertakings form part of the record of this proceeding. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
As a preliminary matter, I have considered the opponent's objections to the Isaac affidavit. The Isaac affidavit seeks to introduce into evidence (1) a photocopy of a certified copy of the transcript of the cross-examination of Andrew McNaughton from the Federal Court action (Court No. T-1730-87) between the parties and (2) photocopies of the exhibits from that cross-examination which he compared with the exhibits on file with the Federal Court. The opponent submitted that the materials appended to the Isaac affidavit serve only to establish that Mr. McNaughton was cross-examined in the Federal Court proceeding and nothing more.
The general rule is that such materials constitute inadmissible hearsay evidence. However, there is an exception to that rule, namely, that such evidence is admissible where it would not otherwise be available to the party submitting it and it was previously filed in proceedings involving the same parties and substantially the same issues: see Speedo Knitting Mills Pty. Ltd. v. Christina Canada Inc. (1986), 11 C.P.R.(3d) 529 at 535 (T.M.O.B.).
Although the applicant and the opponent are the two parties involved in the Federal Court action, I am not convinced that the evidence in question was otherwise not available to the applicant nor am I convinced that the issues were substantially the same as in the present case. The opponent filed the affidavit of its Director of Business Development, Dave Dotson, in the present case and presumably the applicant could have obtained the evidence it wished to make of record by cross-examining Mr. Dotson on his affidavit. Furthermore, the Federal Court action was an action for infringement and passing off in view of the applicant's use of a product label incorporating a different trade-mark from the applied for mark POPLICKS. Thus, the issues are not substantially the same. The materials sought to be admitted by the applicant therefore do not qualify under the exception noted above. They are therefore inadmissible in the present proceeding insofar as the applicant seeks to rely on them as proof of the truth of their contents except perhaps to the extent that they advance the opponent's case.
The evidence in this case reveals the following:
(1) For many years, the opponent has made extensive sales of POPSICLE brand frozen confections throughout Canada. Total sales of POPSICLE brand products for the period 1967 to 1987 were in excess of $600 million. Fairly significant sales have also been made by the opponent of similar products in association with the trade-marks FUDGSICLE, CREAMSICLE and DREAMSICLE. (Dotson affidavit)
(2) The opponent licenses major dairies throughout Canada to manufacture and sell its products under its various trade-marks including POPSICLE. These licensees are recorded as registered users of one or more of the opponent's registered trade-marks. (Dotson affidavit)
(3) The applicant is a licensee of the opponent and is a registered user of the trade-mark POPSICLE. The applicant's sales of POPSICLE branded products in the provinces of Manitoba, Ontario and Quebec for the period 1987 to 1990 were about $35 million. (Emmons affidavit and the answer to undertaking No. R6 from the Emmons cross-examination)
(4) In 1986, the applicant considered entering the business of frozen confections independently of the opponent to maximize its profit margin. The applicant examined various possibilities for its own trade-marks and narrowed the field to four, namely, POPSTIK, POPSTICK, FROST POPS and POPLICKS. In early 1987, the applicant decided to use the mark POPSTIK and commenced test marketing in Manitoba in June of 1987 by replacing its POPSICLE 12-pack with its new POPSTIK 12-pack. (Emmons affidavit, pages 23, 29 and 43 of the Emmons transcript and answers to undertakings Nos. R16 and R19)
(5) On August 14, 1987, the opponent commenced an action for trade-mark infringement and passing off in the Federal Court and sought an interlocutory injunction to stop the applicant from using the trade-mark POPSTIK. On September 16, 1987, Mr. Justice Martin issued an interim injunction enjoining the applicant from "...marketing its Popstick [sic] ice pops..." (see page 8 of the Popsicle Industries decision referred to above). The injunction covered the applicant's packaging forming Schedule 3 to the statement of claim and the packaging prominently features the trade-mark POPSTIK rather than POPSTICK.
As for the first ground of opposition, the legal burden is on the applicant to show its compliance with the provisions of Section 30(a) of the Act. However, there was an evidential burden on the opponent to file at least some evidence in support of the allegations of fact underlying its first ground. The opponent failed to satisfy that burden. In fact, the opponent's own affiant, Mr. Dotson, refers to the opponent's products as frozen confections throughout his affidavit and there are a number of third party registrations which include that description in their statements of wares. This constitutes at least some evidence that the applicant's statement of wares may be acceptable. Consequently, the first ground is unsuccessful.
The second ground of opposition is that the applicant's application does not comply with the provisions of Section 30(i) of the Act because the applicant is a licensee of some of the opponent's trade-marks. However, that fact alone does not, in my view, preclude the applicant from being satisfied that it is entitled to use its own trade-marks. Thus, the opponent did not raise sufficient allegations of fact to raise a ground of non-compliance with Section 30(i) of the Act. It may be that the opponent intended to also allege that the applicant could not have been satisfied that it was entitled to use its mark because it was confusing with one or more of the opponent's marks. However, even if such an allegation had been included, the success or failure of the second ground would simply have been contingent on the outcome of the third ground of opposition.
As for the third ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
The most relevant of the opponent's many registrations is No. TMDA 33876 for the trade-mark POPSICLE for "frozen confections on a stick." Thus, a consideration of the issue of confusion between that mark and the applicant's mark POPLICKS will effectively decide the outcome of the third ground.
The applicant's trade-mark POPLICKS is inherently distinctive in relation to frozen confections although it is not an inherently strong mark. The evidence shows that one fairly common trade term for frozen confections is "pops" or "ice pops." (The opponent itself uses the terms "ice pop", "ice pops" and "cream pops.") The component LICKS is suggestive of how one might eat such a product. Thus, the applicant's proposed mark is somewhat suggestive of frozen confections. There being no evidence of use of the applicant's mark, I must conclude that it has not become known at all in Canada.
The opponent's mark POPSICLE is also inherently distinctive in relation to the opponent's wares although the component POPS is the name of the wares. Thus, the opponent's mark is not inherently strong although it does possess a greater degree of inherent distinctiveness than the applicant's mark. On cross-examination, Mr. Emmons agreed that the trade-mark POPSICLE is well known to consumers in Canada. In fact, given the extensive sales evidenced by the opponent, I am able to conclude that the mark is extremely well known throughout Canada.
The length of time the marks have been in use clearly favors the opponent. The wares of the parties overlap since "frozen confections" would clearly include "frozen confections on a stick." In fact, the evidence shows that the applicant has already attempted to market a product essentially identical to the opponent's product in connection with the trade-mark POPSTIK. The evidence also shows that it was the applicant's intention to do likewise with its trade-mark POPLICKS. Also of note is the fact that the wares of the parties are very inexpensive such that purchasers would not likely take great care in purchasing such goods. In addition, some of the exhibits to the Dotson affidavit suggest that one segment of the opponent's market of puchasers comprises children who would likely take even less care in purchasing such goods.
The trades of the parties would clearly overlap. In fact, the evidence shows that the applicant substituted its POPSTIK product for the POPSICLE product during its Manitoba test marketing. Presumably, it intended, and still intends, to do likewise with its proposed POPLICKS product.
As for Section 6(5)(e) of the Act, the marks at issue bear a fair degree of visual and phonetic resemblance. Both marks are eight letter words commencing with the component POP followed by similar sounding syllables. Insofar as both marks include the component POP or POPS, there may be some resemblance in the ideas suggested although neither mark suggests any particular idea in the abstract.
The applicant has relied on state of the register evidence to mitigate the effect of the resemblance between the marks at issue. The McPhail affidavit evidences thirty registrations for trade-marks which include the component POP or POPS. However, only three of those registrations are for trade-marks having POP as the first syllable and two of those are for the trade-mark THE POP SHOPPE & Design for different wares. Most of the remaining registrations are for trade-marks ending with the word POP or POPS and registered for the same or similar wares as those of the opponent.
State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the recent decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
In the present case, the relatively large number of registrations for trade-marks having the word POP or POPS as the final component for frozen confections and the like supports my previous observation that the word POP or POPS is the name of a frozen confection. However, there is only one relevant third party registration for a trade-mark commencing with the word POP for similar wares. Thus, I am able to conclude that consumers have become accustomed to seeing trade-marks using the word POP or POPS as a suffix and functioning as the name of the wares. However, I am unable to conclude that consumers have become used to seeing trade-marks for frozen confections that commence with the word POP or POPS such that they would be inclined to center on other components of such marks to differentiate them.
The opponent has submitted that its family of trade-marks commencing with the word POP or POPS increases the likelihood of confusion occurring in the present case. However, although the opponent owns a few registrations for such marks, it did not evidence any use of them. Thus, in accordance with the decision in McDonald's Corp. v. Yogi Yogurt Ltd. (1982), 66 C.P.R.(2d) 101 at 114 (F.C.T.D.), the opponent has failed to establish its alleged family or series of marks.
An additional surrounding circumstance that is of note in the present case is the evidence of record illustrating the manner of use of the trade-mark POPSICLE by different licensees of the opponent. The evidence shows that at least some of the opponent's licensees are likely to use their own trade-marks in conjunction with the trade-mark POPSICLE on the product packaging and in advertising. Examples from the evidence include NEILSON POPSICLE, QUEBON POPSICLE, GOOD HUMOUR POPSICLE and, in the case of the applicant, SEALTEST POPSICLE. Given the significant sales effected by the applicant as a licensee of the opponent, it is likely that many consumers have come to associate the trade-marks SEALTEST and POPSICLE to some extent.
The applicant's own evidence shows that when it introduced its POPSTIK product in Manitoba in 1987, the packaging included references both to POPSTIK and to SEALTEST. Presumably, it was (and is) the applicant's intention to do likewise with its POPLICKS product. This, in my view, would enhance the likelihood that consumers viewing the applicant's POPLICKS product would assume that it came from the same source as the opponent's POPSICLE product.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the similarities between the wares, trades and marks of the parties, the reputation associated with the opponent's mark and the absence of evidence of other traders using similar marks commencing with the word POP or POPS, I find that the applicant has failed to satisfy the burden on it to show that its proposed mark POPLICKS is not confusing with the opponent's registered mark POPSICLE. The third ground of opposition is therefore successful and the remaining grounds need not be considered.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 31st DAY OF March , 1993.
David J. Martin,
Member,
Trade Marks Opposition Board.