Citation: 2018 TMOB 23

Date of Decision: 2018-02-28

IN THE MATTER OF A SECTION 45 PROCEEDING

	Monster Energy Company	Requesting Party
and
	Moca Loca Coffee Co. Inc./ Moca Loca Café Co. Inc.	Registered Owner
	TMA710,003 for MOCA LOCA	Registration

[1]  At the request of Monster Energy Company (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act, RSC 1985, c T-13 (the Act) on January 12, 2015 to Moca Loca Coffee Co. Inc./Moca Loca Café Co. Inc. (the Owner), the registered owner of registration No. TMA710,003 for the trade-mark MOCA LOCA (the Mark).

[2]  The Mark is registered for use in association with the following goods:

(1) Non-alcoholic beverages, namely, carbonated and non-carbonated beverages; juice; mineral water; iced beverages, namely, smoothies; coffee, tea; hot-chocolate; flavouring syrups; liquid and powdered beverage mixes; food products, namely baked goods and assorted desserts, namely cakes, pies, biscuits, croissants, bread, strudels, danishes, dessert squares, muffins, scones, bagels, waffles, biscotti, tarts, sandwich spreads; honey; salad dressings; soups; chilies; salads; fruits and vegetables; deli products, namely sandwiches, wraps; prepared meat, cheese and/or vegetable platters; deli meats; coffee filters; cups; cup carriers and caddies.

(2) Gift baskets containing flowers, gift items and/or food and beverage items.

(3) Insulated vacuum bottles; portfolios.

(4) Paper products, namely paper food bags.

(5) Clothing, namely, casual wear, sportswear, hats; appliances, namely coffee makers, coffee grinders; recordings, namely pre-recorded musical and/or video CD’s, tapes and DVD’s (not containing computer software); toys, namely figurines, plush toys, dolls; printed publications and materials, namely magazines; paper products, namely napkins; promotional materials and novelty items, namely pens, mugs, thermoses; bags namely sport bags, backpacks, grocery sacks; candy, chocolates, frittatas, quiches; coasters; mugs; glassware, namely beverage glassware; dishes; trivets; canisters; purses, briefcases and valises; non-dairy creamers and toppings.

[3]  The Mark is also registered in association with the following services:

(1) Restaurant and coffee house services; wholesale and retail services for food, beverages, clothing, kitchenware, kitchen appliances, beverage ware, dishware and gifts; gift registry service.

(2) Business services, namely restaurant management consultation services.

(3) Mail order services for food, beverages, clothing, kitchenware, kitchen appliances, beverage ware, dishware and gifts; designing of coffee houses, restaurants, establishments and facilities; franchising services.

(4) Business services, namely equipment training and consultation services.

[4]  Section 45 of the Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the goods and services specified in the registration at any time within the three-year period immediately preceding the date of the notice and, if not, the date when the trade-mark was last used and the reason for the absence of such use since that date. In this case, the relevant period for showing use is January 12, 2012 to January 12, 2015.

[5]  The relevant definitions of “use” are set out in sections 4(1) and 4(2) of the Act as follows:

4(1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.

4(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

[6]  It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in section 45 proceedings is quite low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the goods and services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].

[7]  In response to the Registrar’s notice, the Owner furnished the affidavit of its founder and President, Sami Chakie, sworn on November 26, 2015, in Gatineau, Quebec. Neither party filed written representations and only the Requesting Party was represented at an oral hearing.

The Owner’s Evidence

[8]  In his affidavit, Mr. Chakie states that the Owner operates a chain of MOCA LOCA cafés in the National Capital Region, the first of which opened in August 2000. He states that there are currently nine MOCA LOCA café locations; some are owned by the Owner while others are franchise operated.  Mr. Chakie attests that the Owner has “[a]t all times” had and continues to have control over the character and quality of the franchisees’ goods and services in association with the Mark.

[9]  The Owner’s cafés are described in the Chakie affidavit as “upscale European style café bistros” offering a variety of food and beverages that customers can enjoy on-site, as take-out, or through the Owner’s catering services.

[10]  Mr. Chakie attests that, although the Owner “offers a limited selection of third party beverage and food products”, it has sold all of the registered food and beverage goods under the Mark during the relevant period. In particular, he states that “[b]everages and drinks” are “typically sold to consumers in paper cups or glass mugs that bear [the Mark]”. He further states that food sold for consumption off-site is “typically sold in take-out containers and catering containers bearing [the Mark]”.  Mr. Chakie adds that customers are also “typically” provided with paper napkins bearing the Mark.

[11]  With respect to transfers of the goods in the normal course of trade, Mr. Chakie provides—at paragraph 15 of his affidavit— sales figures for the six-month period from July 2013 to December 2013. Specifically, he states that, during this period, the total gross sales revenues at each of the Owner’s nine locations ranged “on average” from over $100,000 at the location on Rue de Valcourt in Gatineau to nearly $500,000 at the “flagship” location on Boulevard de la Gappe. He further divides the sales figures for these two locations into the general categories “Coffees”, “Iced coffees and smoothies”, “Beverages”, “Teas and tisanes”, “Meals”, “Breakfast”, and “Viennoiseries, cakes and confections”.  Mr.Chakie gives examples of registered goods in each category, but notes that the Owner does not track sales of such individual goods.

[12]  Mr. Chakie also states that the Owner sold various ancillary “products and gift items” branded with the Mark during the relevant period, including insulated vacuum bottles, mugs, clothing and hats. He notes that sales of these products are tracked as “accessory items” and, in the aforementioned six-month period, totaled over $2,800 at the Valcourt location and over $10,000 at the La Gappe location.

[13]  In addition, Mr. Chakie states that the Owner sold gift cards during the relevant period. In this respect, he states that, in the aforementioned six-month period, the combined value of such gift cards exceeded $600 at the Valcourt café and $3,600 at the La Gappe café.

[14]  With respect to the registered services, Mr. Chakie attests that the La Gappe café location is franchise operated and was in operation during the relevant period. He explains that the Owner provides all franchisees with “management consultation services which includes the designing of individual café locations and facilities”. Furthermore, he states that franchisees are required to purchase “the MOCA LOCA branded goods which are shown in this affidavit”. He explains that “[b]ulk items such as coffee beans are delivered to the franchisees in packaging bearing the MOCA LOCA trademark for resale to customers either in the form of coffee beans or as brewed beverages.”

[15]  The following supporting exhibits are attached to the Chakie affidavit:

• Exhibit A contains a photograph of a MOCA LOCA storefront with a wall sign, window signs, and parking signs, all displaying the Mark. The window signs promote various beverages; for example, one sign features unbranded mugs of “Matcha”, “Cidre de Pommes” (apple cider) and “Chaï Latté” above the Mark.Mr. Chakie attests that the store signage in the photograph appeared at the MOCA LOCA café on Rue de Valcourt during the relevant period and is “representative of the store signage that has been used at the other locations”.
• Exhibit A also contains printouts from the Owner’s website at mocalocacafe.com. Each webpage is titled “Moca Loca Cafe” and displays the Mark on a promotional image near the top of the page. As noted by the affiant, the webpages show “interior views of various MOCA LOCA café locations”, including food and beverage counters and seating areas. The Mark is displayed in some of the images, for example, above menu boards and on a window. I also note a link for “Moca Loca” gift cards.
• Exhibit B contains (i) a photograph of menu boards above a food preparation counter and (ii) a printout of an electronic menu.Mr. Chakie attests that the menu boards were displayed behind the food counter at the Valcourt MOCA LOCA café during the relevant period; however, the cropping of the photograph is such that not all of the menu listings are fully visible. The Mark is displayed on the first board.Mr. Chakie attests that the electronic menu—the header of which displays the Mark—was printed from the Owner’s website and is “representative of the goods that are typically sold to customers at [the Owner’s] MOCA LOCA café locations and which have been sold during the relevant time period.” Each menu lists various food and beverage items, a number of which can be correlated with the registered goods, as will be discussed below.
• Exhibit C contains photographs of a food counter display that Mr. Chakie attests is from the MOCA LOCA café on Rue de Valcourt and “representative of the display that has been shown to consumers during the relevant time at [that] location.” Mr. Chakie identifies the depicted food items as “various cupcakes, croissants, pies, biscotti and dessert squares for sale, in addition to sandwiches, salads and wraps.” I note that the Mark is partially visible in a small notice on one of the displays.
• Exhibit D is a photograph of a bottle of water illustrating the “bottled mineral water” sold by the Owner; Mr. Chakie states the photograph is “representative of the bottled water sold by [the Owner] during the relevant period.” He explains that, at the Valcourt location, such “MOCA LOCA brand water” is sold in a refrigerated counter next to the food display counter, as are various third-party beverages. The branding on this bottle will be further discussed below.
• Exhibit E consists of photographs of a paper cup, a glass mug with a tea strainer, and a glass mug containing a carbonated beverage, all of which bear the Mark. Mr. Chakie identifies these articles as “cups that are representative of the types of cups and mugs that have been used by [the Owner] during the relevant time period”.
• Exhibit F consists of photographs of take-out containers, catering containers, and paper napkins, all of which bear the Mark, and which Mr. Chakie attests are “representative of the types of containers and napkins that have been used by [the Owner] during the relevant time period”.
• Exhibit G contains additional printouts from the Owner’s website, again titled “Moca Loca Café” and displaying the Mark. The printouts give a brief description of the Owner’s catering service and provide a catering menu.Mr. Chakie attests that the foods and beverages listed on the menu are “representative of the goods that are typically sold to customers at [the Owner’s] MOCA LOCA café locations and which have been sold during the relevant time period”.
• Exhibit H contains merchant’s copies of 31 sales receipts, 23 of which are dated during the relevant period, and appear to come from four of the café locations in Gatineau. The receipts cover various food and beverages items, as well as one accessory item, as will be discussed below. One of the receipts includes a delivery charge.
• Exhibit I consists of photographs of a tuque, a baseball cap, two types of bottles, a covered mug, a T-shirt, and a pen, all of which bear the Mark.Mr. Chakie attests that these items are “representative of the products that have been sold by [the Owner] during the relevant time period”.
• Exhibit J is a photograph of a gift card bearing the Mark, which Mr. Chakie attests is “representative of the gift cards that have been sold by [the Owner] during the relevant time”.
• Exhibit K is a printout titled “Moca Loca Cafe” from the Owner’s website, promoting franchise opportunities.Mr. Chakie attests that it is “representative of the information that has been available to interested Canadians via [the Owner’s] website during the relevant time period”. The webpage briefly describes the requirements for becoming a franchisee, as well as various services provided to franchisees. For example, the text states that franchise fees include training fees, access to operating manuals, and assistance at launch. The text specifies, “Vous démarrez avec un café clé en main, tout équipé et opérationnel.” (You start with a turnkey café, fully equipped and operational.) Other services mentioned include “aide et conseils” (help and advice); training for “l’apprentissage de notre gamme de produits, de nos normes hygiène et sécurité et de notre outil informatique” (learning our product range, health and safety standards, and information technology tools); and assistance with “politique de recrutement et de suivi RH” (human resources recruitment and tracking policy). The Mark is printed on a promotional image near the top of the webpage.
• Exhibit L contains photographs relating to the bulk sale of coffee beans to franchisees. The photographs depict a large cardboard box with the inscription “FRESH ROASTED COFEE BEANS”; a clear plastic bag containing the coffee beans “as shipped to the franchisees”; and a paper bag “for resale of coffee beans to customers”. The Mark is displayed on each box or bag.

[16]  In most of these exhibits, the Mark is displayed in large stylized letters (the MOCA LOCA Design). This design is displayed occasionally on its own, but more often above or before “CAFÉ CO.” or “CAFE.COM”. In such cases, “CAFÉ CO.” or “CAFE.COM” appears significantly smaller than the Mark and in a relatively plain font. I also note that a slight variation of the MOCA LOCA Design appears in larger stylized characters above “CAFÉ • LOUNGE” in a list of café locations on the webpages at Exhibit A.

[17]  A more significant variation of the Mark is displayed on the bottled water depicted at Exhibit D: its label features only part of the stylized letters MO and LOC from the MOCA LOCA Design. The Owner’s website address, “MOCALOCACAFE.COM”, is displayed in a smaller, uniform font underneath this design.

Analysis

[18]  The Requesting Party submits that the evidence does not show display of the Mark as registered during the relevant period, but rather, at most, display of trade names such as Moca Loca Café Co. and of the website address mocalocacafe.com.

[19]  Generally, use of a word mark in combination with additional words or design elements qualifies as use of the word mark if the public, as a matter of first impression, would perceive the word mark per se as being used [Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)]. Moreover, a registration for a word mark can be supported by use of that mark in any stylized form and in any colour [see Stikeman, Elliott v Wm Wrigley Jr Co (2001), 14 CPR (4th) 393 (TMOB)].

[20]  In the present case, the furnished exhibits show that the MOCA LOCA Design is typically displayed above or before either “CAFÉ CO.” or “CAFE.COM”. However, by virtue of its size and stylized font, the Mark stands out from these surrounding word elements. Furthermore, I am of the view that, in this context, CAFÉ CO. and CAFE.COM would be perceived as additional, descriptive matter, indicating the nature of the Owner’s business and the existence of a related website.

[21]  Furthermore, to the extent that a trade name would also be perceived, I note that “[t]rade-mark and trade name usage are not necessarily mutually exclusive” [see Consumers Distributing Co/Cie Distribution aux Consommateurs v Toy World Ltd, 1990 CarswellNat 1398 (TMOB) at para 14]. Similarly, the Registrar has previously found that adding “www.”, “.ca”, “.com” or the like to a trade-mark to form a website address constitutes a minor deviation where the additional elements are descriptive [see 4358376 Canada Inc v 770879 Ontario Ltd, 2012 TMOB 213, 2012 CarswellNat 5263; and Star Island Entertainment LLC v Provent Holdings Ltd, 2013 TMOB 84, 112 CPR (4th) 321]. In any event, the MOCA LOCA Design stands out from the surrounding corporate and website indicia in the present case. Thus, the Mark as registered retains its separate identity and remains recognizable.

[22]  It remains to be determined whether use of the Mark during the relevant period has been demonstrated within the meaning of section 4(1) of the Act in association with each of the registered goods and services. I will address the food, beverage, tableware, and accessory goods, and the services, in turn.

Food Products

[23]  Mr. Chakie states that “all of the Goods that are foods and beverages and which are listed in the trade-mark registration have been offered for sale and sold during the relevant time period by [the Owner] under the MOCA LOCA trade-mark.”

[24]  The affiant does not specifically correlate each of the registered goods with a particular item shown or referenced in the exhibits. Nevertheless, upon reviewing the evidence as a whole, I accept that the following registered “food products” are represented in one or more of the menu and food counter images at Exhibits B, C and G: “cakes”, “biscuits”, “croissants”, “bread”, “dessert squares”, “muffins”, “scones”, “bagels”, “waffles”, “biscotti”, “tarts”, “soups”, “salads”, “fruits and vegetables”, “sandwiches”, “wraps”, and “prepared meat, cheese and/or vegetable platters”.

[25]  With respect to the registered goods “strudels” and “pies”, although I did not find a clear image or a specific menu listing for these particular goods, they appear to be represented in the Valcourt café’s receipts from the relevant period. Accordingly, I am prepared to infer that these two registered goods were included in the display counters depicted at Exhibit C and sold to consumers for at least part of the relevant period.

[26]  Furthermore, the Registrar has previously found that, in a restaurant context, display of a trade-mark on signage is generally sufficient to establish use of the trade-mark in association with foods and beverages prepared on the premises [see Oyen Wiggs Green & Mutala v Aimers (1998), 86 CPR (3d) 89 (TMOB); Featherstonhaugh & Co v Hon’s Wun-Tun House (2011) Ltd, 2014 TMOB 233, 130 CPR (4th) 348]. In the present case, the foods referenced in the menus and displayed in the depicted counters appear to be the types of items that a café could prepare in-house. Considering that a MOCA LOCA café customer would use the menu boards displaying the Mark to order and purchase such food goods—which are themselves displayed at counters next to the boards—I am satisfied that the notice of association required by section 4(1) of the Act was given to customers at the time of transfer of the goods in the normal course of trade.

[27]  Similarly, I consider display of the Mark on the exhibited online menus to be sufficient to establish use of the Mark in association with foods prepared in MOCA LOCA cafés. In this respect, display of a trade-mark in catalogues and similar documents used for ordering purposes can provide the required notice of association [see, for example, Dart Industries Inc v Baker & McKenzie LLP, 2013 FC 97, 2013 CarswellNat 188; and Swabey Ogilvy Renault v Mary Maxim Ltd (2003), 28 CPR (4th) 543 (TMOB)]. In the present case, the catering menu in particular invites customers to place an order by telephone. I am prepared to infer that at least some customers would have used the menus available online to place their orders and that such customers would perceive the Mark on these menus as identifying the line of food goods prepared at the café. Furthermore, given the evidence that the food goods are delivered in catering and take-out containers bearing the Mark, the notice of association would continue when the goods are transferred to the purchaser. Indeed, display of the Mark on such containers also constitutes display of the Mark directly on the packages in which the goods are distributed.

[28]  Most of the foods represented in the exhibited menus and photographs also appear in the exhibited sales receipts from the relevant period. For those that do not, the evidence as a whole must be considered [per Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD); see also Hudson’s Bay Co v PDM Royalties Limited Partnership, 2012 TMOB 259, 2012 CarswellNat 5589]. In the present case, the evidence indicates that nine MOCA LOCA café locations were operating and had substantial sales during the relevant period. When the affiant’s statements regarding sales are considered in this light and given the nature of the Owner’s business, I find it reasonable to infer that the Owner’s sales during the relevant period included the remaining food goods from the representative menus and counter displays. The invoices dated after the relevant period tend to corroborate this conclusion, to the extent that they show a continuity of sales for such goods [for a similar finding, see Rosenstein v Elegance Rolf Offergelt GmbH (2005), 47 CPR (4th) 196 (TMOB)].

[29]  However, as it appears that the Owner does not track sales of individual goods, I am not prepared to infer that all of the specific goods listed at paragraph 15 of the Chakie affidavit were necessarily sold during the relevant period. In particular, although the affiant lists “danishes”, “chocolates”, “spreads”, “honey”, “salad dressings”, “chilies” and “deli meats” as examples of “Viennoiseries, cakes and confections” and “Meals”, there is no other specific reference to these goods in the evidence.

[30]  With respect to “chocolates”, I note that “fondant au chocolat” is listed under the heading “Desserts” in the online menu at Exhibit B. However, no further information is provided as to the nature of this product, and I was unable to find a depiction of it among the images in the furnished exhibits. It is therefore unclear whether this product is “chocolates”, “candy”, or some other confection. Moreover, there is no indication as to whether “fondant au chocolat” is prepared in-house or sold as a third-party good in association with a different trade-mark.

[31]  Furthermore, although “sandwich spreads”, “salad dressings” and “deli meats” appear to be components of other registered goods, there is no indication that these components were also branded and sold as distinct goods.

[32]  As for the registered goods “frittatas” and “quiches”, there is no specific reference to these goods in the Chakie affidavit.

[33]  In the circumstances, for the goods not represented in the exhibited menus, counter displays and sales receipts, the affiant’s statement that all of the registered food and beverage goods were offered for sale and sold under the Mark during the relevant period amounts to a bare assertion of use, which is insufficient to meet the requirements of section 45 of the Act.

[34]  In summary, as regards the registered food goods, I am satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4 and 45 of the Act only in association with the following goods: “food products, namely baked goods and assorted desserts, namely cakes, pies, biscuits, croissants, bread, strudels, … dessert squares, muffins, scones, bagels, waffles, biscotti, tarts[;] … soups; … salads; fruits and vegetables; deli products, namely sandwiches, wraps; prepared meat, cheese and/or vegetable platters”.

Beverage Goods

[35]  At the hearing, the Requesting Party submitted that some of the beverage goods represented in the exhibited menus and counter displays appear to be manufactured by third parties and sold under those third parties’ trade-marks. The Requesting Party argues that the display of the Mark on restaurant menus and signage is insufficient to provide a notice of association between the Mark and such third-party goods. Similarly, the Requesting Party argues that serving such third-party goods in cups or mugs displaying the Mark is insufficient to provide the required notice of association.

[36]  Indeed, as noted by the Requesting Party, specific fruit and vegetable juices, mineral water beverages, and tea beverages are listed in the exhibited catering menu and sales receipts in association with different trade-marks, for example, “Minute Maid”, “V8”, “Perrier” and “Arizona”. In addition, the catering menu indicates that carbonated beverages are sold in cans, which suggests that they would be associated at the time of sale with the trade-marks on the cans. The evidence provides no indication that the Mark was displayed on such cans.

[37]  However, the menus at Exhibit B also contain various entries for beverages that do not appear to be associated with other trade-marks, and I am satisfied that some of these beverages correspond to registered goods that would be prepared on the premises. For example, under the “Spécialités” (Specialties) menu headings, I am prepared to accept the “Matcha” and “Chaï Latté” as corresponding to the registered good “tea” and the “Cidre de pommes” (apple cider) as corresponding to the registered good “juice”. The Mark is also displayed by images of such goods on window signage as shown in the photograph at Exhibit A, which further contributes to the notice of association.

[38]  Similarly, I accept that the Specialty “Chocolat chaud” (hot chocolate), as well as various specialty coffees and teas listed in the exhibited menus, would be prepared on the premises and associated with the Mark through the café’s menus and related signage.

[39]  Furthermore, under the menu heading “Breuvages froids” (Cold Beverages), I accept that “Smoothies au fruits” (fruit smoothies) corresponds to the registered good “iced beverages, namely, smoothies” and that “Frappés au chocolat” refers to chocolate milkshakes or other iced chocolate drinks falling under the registered good “non-alcoholic beverages, namely, non-carbonated beverages”.

[40]   Conversely, I am not satisfied that any “carbonated beverages” were prepared on café premises during the relevant period. In this respect, although the online menu at Exhibit B lists “Soda italien” (Italian soda) under Cold Beverages, I note that the exhibited catering menu lists the Sanpellegrino beverages “Oranciata” and “Limonata”, and it may be that those are the Italian sodas to which the Exhibit B menu refers. The corresponding entry on the physical menu boards is only partially visible and provides no further clarification in this respect. In the circumstances, in the absence of further particulars on how the Owner’s carbonated beverages are prepared, branded and served, a finding that they are associated with the Mark at the time of sale would be speculative.

[41]  In addition, if any of the bottles or containers depicted in the exhibited images of café interiors contain “flavouring syrups”, “liquid and powdered beverage mixes”, or “non-dairy creamers and toppings” branded with the Mark and sold to customers, then this is not indicated in the evidence.

[42]  Finally, with respect to “mineral water”, the label on the water bottle depicted at Exhibit D displays only part of the stylized letters MO and LOC. In applying the principles set out by the Federal Court of Appeal in Canada (Registrar of Trade Marks) v Cie International pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523, and Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59, I find that the dominant features of the Mark as registered—the words MOCA LOCA—have not been preserved in this label design. Although customers might perceive the trade-mark displayed on the label as being derived from the Mark, the Mark’s identity has not been maintained and the registered Mark is not recognizable as such.

[43]  However, the Mark is displayed as registered on the exhibited catering menu, which includes an entry for “Eau Moca Loca 500ml” (Moca Loca water 500 mL). I accept that this menu entry creates a notice of association between the Mark and the Owner’s bottled water.

[44]  With respect to continuation of such notice as the goods are transferred to the purchaser, the Mark is displayed in the entry “Eau Moca Loca” on one of the exhibited sales receipts. However, as observed by the Requesting Party, this receipt post-dates the relevant period. While the affiant identifies certain exhibits as being representative of the relevant period, no such indication is given with respect to the exhibited sales receipts. Moreover, as one of the receipts from the relevant period shows a partial entry for “water”—which the affiant does not explain—I am not prepared to make any inferences in this respect.

[45]  Nevertheless, the Registrar has previously found that the requisite notice of association may be continued by means other than the display of the trade-mark on invoices or packaging. For example, it has been held that invoices displaying style numbers or product codes that correspond to the catalogue entries used for ordering can suffice to continue the notice of association [see Rosenstein v Elegance Rolf Offergelt GmbH (2005), 47 CPR (4th) 196 (TMOB); and Plastibec Inc v Newell Window Furnishings Inc, 2011 TMOB 106, 2011 CarswellNat 2653].

[46]  In the present case, I am satisfied that the notice of association provided by the catering menu continues when the bottled water is delivered, by virtue of its labelling. In this respect, I consider the variations of the Mark displayed on the label to function in the same manner as a product number or style code. Customers can compare the indicia on the product label—such as MOCALOCACAFE.COM—to the entries on the catering menu, thus associating the product with “Eau Moca Loca” (as opposed to “Eau Perrier”, for example).

[47]  Concerning evidence that beverage goods were sold in the normal course of trade during the relevant period, again, the receipts at Exhibit H to the Chakie affidavit show such sales for a number of the registered beverage goods. Furthermore, in light of the affiant’s statements regarding sales, and given the nature of the Owner’s business and the number of MOCA LOCA cafés then in operation, I am satisfied that the beverage goods appearing in the exhibited menus and counter displays were sold in Canada during the relevant period.

[48]  In summary, as concerns the registered beverage goods, I am satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4 and 45 of the Act only in association with the following: “Non-alcoholic beverages, namely, … non-carbonated beverages; juice; mineral water; iced beverages, namely, smoothies; coffee, tea; hot-chocolate”.

Tableware Goods

[49]  Although Mr. Chakie states that beverages and drinks are typically sold to consumers in paper cups or glass mugs bearing the Mark and that customers are also typically provided with paper napkins bearing the Mark, there is no evidence that the cups, mugs or napkins themselves were being sold or otherwise transferred to patrons in the normal course of trade.

[50]  In Renaud Cointreau & Cie v Cordon Bleu International Ltd (1993), 52 CPR (3d) 284 (TMOB) at para 11, aff’d (2000), 188 FTR 29 (FCTD), the Registrar stated that the word “trade” in section 4(1) of the Act “contemplates some payment or exchange for the wares supplied or at least that the transfer of the wares be a part of a dealing in the wares for the purpose of acquiring goodwill and profits from the marked goods”. However, in the present case, there is no evidence of a dealing in napkins or evidence that cups were sold to patrons as an object of trade in themselves, independently from their intended contents.

[51]  In this respect, I note that the exhibited catering menu indicates that an order of coffee in multiple-serving containers includes disposable cups. However, the sale of goods with their containers only constitutes a sale of the container in the normal course of trade if the evidence establishes that customers would attribute value to the containers such that they would be perceived as a separate good in their own right [see, for example, Brett v Coors Global Properties, Inc (2008), 68 CPR (4th) 58 (TMOB) (beer cans not providing added value); contrast Impenco Ltd v Kabushiki Kaisha Hattori Seiko (1999), 4 CPR (4th) 374 (FCTD) (watch cases providing added value); and Doctor’s Associates Inc v American Multi-Cinema Inc, 2012 TMOB 77 (TMOB) (specialized meal containers providing added value)]. In the present case, although the disposable cups would appear to be delivered empty, the evidence does not establish that customers attribute value to the cups apart from their value as a container for the purchased coffee. In the absence of such evidence, I am not prepared to conclude that the inclusion of MOCA LOCA cups with a delivery of catered coffee constitutes a sale of the registered good “cups” in association with the Mark in the normal course of trade.

[52]  Furthermore, although Mr. Chakie states that franchisees are “required to purchase the MOCA LOCA branded goods which are shown in this affidavit”, in the absence of further details, I am not prepared to accept that the paper cups, glass mugs and paper napkins depicted in the exhibits were among the items sold to franchisees during the relevant period. In this respect, the affiant does not refer to paper cups, glass serving mugs or paper napkins as “products” or “goods”, but rather, as items “used” by the Owner. It is therefore not clear whether these items are included in the affiant’s subsequent reference to branded “goods”. Moreover, the affiant provides no sales figures for sales to franchisees, which might have clarified what they purchase and what they receive free of charge. In this respect, it has been held that distribution of promotional items to franchisees free of charge—unlike a sale to franchisees—does not constitute a transfer of goods in the normal course of trade [see SMK Speedy International Inc v Petro-Canada, 2006 CarswellNat 2125 (TMOB)].

[53]  In addition, although the affiant provides, at Exhibit L, an image of “a paper bag for resale of coffee beans to customers”, the affiant does not specify whether such bags are the registered good “food bags” or whether such bags were sold or otherwise transferred to franchisees during the relevant period.

[54]  Accordingly, I am not satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4(1) and 45 of the Act in association with any tableware goods, namely, “cups”, “glassware, namely beverage glassware”, “paper products, namely napkins”, or “paper products, namely paper food bags”.

Accessory Goods

[55]  Mr. Chakie states that the Owner sold various “accessory items” branded with the Mark during the relevant period, “including insulated vacuum bottles, mugs, clothing and hats”. He provides total sales figures for this product category from two MOCA LOCA café locations, as well as representative images of how such goods were branded during the relevant period.

[56]  Although only one sales receipt is provided with respect to such products—for a “Thermo plastique Moca Loca” (Moca Loca plastic vacuum bottle)—once again, it is the evidence as a whole that must be considered. In this case, in light of the affiant’s sworn statements regarding the types of accessory items actually sold during the relevant period, and the representative images of branding on such products, I accept that the Owner’s sales of “accessory items” during the relevant period included such products.

[57]  I am therefore satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4(1) and 45 of the Act in association with the registered goods “insulated vacuum bottles”; “mugs”; “clothing, namely, casual wear, sportswear, hats”; and “promotional materials and novelty items, namely pens, mugs, thermoses”.

[58]  With respect to the remaining goods listed in the registration, the affiant does not refer specifically to any of them, apart from reproducing the text of the registration. I was also unable to locate any references to or depictions of such goods in the furnished exhibits. In the circumstances, I am not prepared to infer that any of these remaining goods were included in the sales of “accessory items” tracked by the Owner during the relevant period, or that such goods were branded with the Mark as registered.

The Services

[59]   The Chakie affidavit provides evidence that the Mark was displayed in the performance and advertising of “restaurant services and coffee house services” as well as “retail services for food, beverages, clothing, beverage ware, gifts” during the relevant period. Specifically, the Mark was displayed on signage and menu boards at the “café bistros” operated by the Owner and its franchisees (Exhibits A, B and C); on the Owner’s website, including on take-out and catering menus (Exhibits A, B and G); and on food and beverage containers and napkins provided to customers for use in the café and for take-out (Exhibits E and F). The evidence shows that, in addition to selling food and beverages, the cafés also sold clothing, beverage ware, and gifts during the relevant period, including T-shirts, covered mugs, and gift cards.

[60]  However, there is no evidence that the goods sold by the Owner or its franchisees during the relevant period included “kitchenware”, “kitchen appliances” or “dishware”.

[61]  With respect to “retail services for … gifts”, notwithstanding the Requesting Party’s submissions at the hearing, I do not consider the evidence in this respect to be ambiguous. On a plain reading of the statement of services, I am satisfied that the sale of “gift cards” constitutes “retail services for … gifts”. However, the affiant provides no indication that the Owner or any of its franchisees has provided a service in connection with a “gift registry”.

[62]   In contrast to the affiant’s evidence with respect to the aforementioned “retail services”, the only evidence with respect to “wholesale services” appears to be the affiant’s statement that franchisees are required to purchase the “MOCA LOCA branded goods” shown in the affidavit and the evidence that “[b]ulk items such as coffee beans are delivered to the franchisees in packaging bearing [the Mark]”.

[63]  However, as discussed above, the affiant does not provide any sales figures or other particulars to indicate what is meant by “MOCA LOCA branded goods”. Moreover, although images of the Owner’s current bulk packaging are included among the furnished exhibits, the affiant does not indicate whether such packaging is representative of the packaging that was used during the relevant period. Nor does the affiant indicate how the Mark was displayed in connection with the wholesale of items other than “[b]ulk items such as coffee beans”, and in particular, of the items set out in the registered statement of services.

[64]  Similarly, there is no indication as to whether franchisees’ purchases were or could be made by “mail order” during the relevant period. Nor is there any indication that the Owner or its franchisees sold consumer goods to the public via mail order.

[65]  With respect to the Owner’s business and franchising services, as noted above, the Mark is displayed on the Owner’s webpage advertising its services to franchisees (Exhibit I). Notwithstanding the Requesting Party’s submissions at the hearing, again, I do not consider the evidence as to the nature the Owner’s services in this respect to be ambiguous. On a fair reading of the exhibited webpage, I accept that assistance to franchisees at launch and with respect to human resources includes “restaurant management consultation services”. I also accept that training in the Owner’s products, safety standards and information technology tools includes “equipment training and consultation services”—particularly when franchisees start with a fully equipped café.

[66]  Furthermore, I accept at face value the affiant’s sworn statement that the Owner’s management consultation service “includes the designing of individual café locations and facilities”. Indeed, the statement on the Owner’s website to the effect that franchisees start with a fully equipped turnkey café is consistent with the Owner providing the design of the cafés and their facilities.

[67]  In summary, as regards the registered services, I am satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4(1) and 45 of the Act in association with the following services only: “restaurant and coffee house services”; “retail services for food, beverages, clothing, … beverage ware, … and gifts”; “business services, namely restaurant management consultation services”; “designing of coffee houses, restaurants, establishments and facilities”; “franchising services”; and “business services, namely equipment training and consultation services”.

Disposition

[68]  As the Owner furnished no evidence of special circumstances excusing non-use of the Mark within the meaning of section 45(3) of the Act, the registration will be amended to delete the goods and services for which use of the Mark has not been demonstrated.

[69]  In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with section 45 of the Act, the registration will be amended to delete the following from the statement of goods:

(1) … carbonated [… beverages]; … flavouring syrups; liquid and powdered beverage mixes;  … danishes,…sandwich spreads; honey; salad dressings; … chilies; …deli meats; coffee filters; cups; cup carriers and caddies.

(2) Gift baskets containing flowers, gift items and/or food and beverage items.

(3) … portfolios.

(4) Paper products, namely paper food bags.

(5) … appliances, namely coffee makers, coffee grinders; recordings, namely pre-recorded musical and/or video CD’s, tapes and DVD’s (not containing computer software); toys, namely figurines, plush toys, dolls; printed publications and materials, namely magazines; paper products, namely napkins; … bags namely sport bags, backpacks, grocery sacks; candy, chocolates, frittatas, quiches; coasters; … glassware, namely beverage glassware; dishes; trivets; canisters; purses, briefcases and valises; non-dairy creamers and toppings.

and the following from the statement of services (1) and (3):

(1) …wholesale [… services for food, beverages, clothing, kitchenware, kitchen appliances, beverage ware, dishware and gifts];

… [and retail services for] … kitchenware, kitchen appliances, … dishware …;

gift registry service.

(3) Mail order services for food, beverages, clothing, kitchenware, kitchen appliances, beverage ware, dishware and gifts ….

[70]  The amended statement of goods and services will be as follows:

GOODS

(1) Non-alcoholic beverages, namely, non-carbonated beverages; juice; mineral water; iced beverages, namely, smoothies; coffee, tea; hot-chocolate; food products, namely baked goods and assorted desserts, namely cakes, pies, biscuits, croissants, bread, strudels, dessert squares, muffins, scones, bagels, waffles, biscotti, tarts; soups; salads; fruits and vegetables; deli products, namely sandwiches, wraps; prepared meat, cheese and/or vegetable platters.

(3) Insulated vacuum bottles.

(5) Clothing, namely, casual wear, sportswear, hats; promotional materials and novelty items, namely pens, mugs, thermoses; mugs.

SERVICES

(1) Restaurant and coffee house services; retail services for food, beverages, clothing, beverage ware, and gifts.

(2) Business services, namely restaurant management consultation services.

(3) Designing of coffee houses, restaurants, establishments and facilities; franchising services.

(4) Business services, namely equipment training and consultation services.

 

Oksana Osadchuk

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2017-10-26

APPEARANCES

No one appearing	FOR THE REGISTERED OWNER
Gabriel St-Laurent	FOR THE REQUESTING PARTY

AGENTS OF RECORD

Shapiro Cohen LLP	FOR THE REGISTERED OWNER
ROBIC	FOR THE REQUESTING PARTY