IN THE MATTER OF AN OPPOSITION
by Mardi Gras Funry Ltd. to application No.
677,326 for the trade-mark A CELEBRATION
OF FOOD filed by Chi-Chi’s, Inc.
On March 5, 1991, the applicant, Chi-Chi’s, Inc., filed an application to register the trade-mark A CELEBRATION OF FOOD for “restaurant services” based on use in Canada since June 6, 1988. The application was amended to include a disclaimer to the word FOOD and was subsequently advertised for opposition purposes on July 8, 1992.
The opponent, Mardi Gras Funry Ltd., filed a statement of opposition on September 4, 1992, a copy of which was forwarded to the applicant on October 19, 1992. The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with the opponent’s trade-mark CELEBRATIONS registered under No. 400,766 for the following services:
(1) dining rooms, cocktail lounges, nightclubs, cabarets, restaurants (2) theatres.
The second ground is that the applicant is not the person entitled to registration pursuant to Section 16(1)(a) of the Act because, as of the applicant’s claimed date of first use, the applied for mark was confusing with the trade-mark CELEBRATIONS previously used in Canada by the opponent. The third ground is that the applicant is not the person entitled to registration pursuant to Section 16(1)(c) of the Act because, as of the applicant’s claimed date of first use, the applied for mark was confusing with the trade-name Celebrations previously used in Canada by the opponent. The fourth ground is that the applied for trade-mark is not distinctive in view of the foregoing.
The applicant filed and served a counter statement. The opponent did not file evidence. As its evidence, the applicant filed an affidavit of its Senior Vice President, Michael J. Guerra. Only the applicant filed a written argument and an oral hearing was conducted at which only the applicant was represented.
As for the second and third grounds of opposition, there was an evidential burden on the opponent to evidence use of its trade-mark or trade-name prior to the applicant’s claimed date of first use. Since the opponent did not file evidence, those two grounds of opposition are unsuccessful. Similarly, there was an evidential burden on the opponent respecting its fourth ground of opposition to evidence some reputation for its trade-mark or its trade-name. Again, since the opponent did not file evidence, the fourth ground is also unsuccessful.
As for the first ground of opposition, the applicant noted that the opponent did not evidence a copy of its trade-mark registration. However, in view of the decision in Quaker Oats Co. of Canada Ltd. v. Menu Foods Ltd. (1986), 11 C.P.R.(3d) 410 at 411 (T.M.O.B.), I have checked the trade-marks register and confirmed that the opponent’s registration is in good standing. 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.
As for Section 6(5)(a) of the Act, the opponent’s registered mark CELEBRATIONS is an inherently weak mark since the word “celebrations” suggests the type of activity that customers might wish to carry out at the opponent’s establishments. Since the opponent failed to file evidence, I must conclude that the registered mark has not become known at all in Canada.
The applicant’s mark, too, is inherently weak since it consists of a laudatory phrase when used in association with restaurant services. Although the Guerra affidavit establishes that the applicant has been active in Canada in the restaurant trade, Mr. Guerra did not clearly evidence the acquired reputation in Canada for the trade-mark A CELEBRATION OF FOOD. In paragraph 10 of his affidavit, Mr. Guerra attests to significant advertising expenditures for the applied for mark for the years 1990 to 1992. However, given the relatively low total advertising expenditures in Canada for those years as set out in paragraph 5 of his affidavit, I must conclude that most of the advertising activities for the mark A CELEBRATION OF FOOD were restricted to the United States. On the other hand, Mr. Guerra does state that the applied for mark is used in advertising associated with all of the applicant’s restaurants including those in Canada and he provided samples of such advertising (see Exhibits A1 to A5). Thus, I am able to conclude that the applicant’s mark has become known in Canada but only to a limited extent.
The length of time the marks have been in use is not a significant circumstance in the present case. As for the services of the parties, the agent for the applicant submitted at the oral hearing that the fact that the opponent’s statement of services includes cocktail lounges, cabarets and theaters suggests that the opponent’s restaurants are directed to an adult clientele. By way of contrast, she pointed to the applicant’s evidence which suggests that the applicant’s restaurants are of a different type, namely family restaurants. While I agree with those observations, the fact remains that the present application is for “restaurant services” unrestricted as to type. Thus, I must conclude that the services of the parties as claimed could overlap. Presumably the trades of the parties could also overlap.
As for Section 6(5)(e) of the Act, there is some visual and phonetic resemblance between the marks since the opponent’s mark is the word CELEBRATIONS and the applicant’s mark includes the word CELEBRATION. There is less resemblance between the marks in the ideas suggested by them. The opponent’s mark suggests parties or gatherings held for notable occasions such as birthdays, anniversaries and the like. The applicant’s mark, on the other hand, suggests a feast.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Although there is some resemblance between the marks at issue and the services and trades of the parties are potentially similar, the marks are inherently weak and the opponent has failed to evidence any use or reputation for its mark in Canada. In fact, it would appear that the opponent has lost interest in this proceeding since it has done nothing since filing its statement of opposition. Thus, I find that the applicant has satisfied the onus on it to show that its mark is not confusing with the opponent’s registered mark. Had the opponent filed evidence establishing a reputation for its mark, my conclusion might well have been different.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT HULL, QUEBEC, THIS 17th DAY OF SEPTEMBER, 1996.
David J. Martin,
Member,
Trade Marks Opposition Board.