Citation: 2018 TMOB 117

Date of Decision: 2018-10-17

IN THE MATTER OF AN OPPOSITION

	McDonald’s Corporation and McDonald’s Restaurants of Canada Limited	Opponents
and
	Champibec inc	Applicant
	1,728,461 for Mcdelivery	Application

Introduction

[1]  McDonald’s Corporation and McDonald’s Restaurants of Canada Limited (collectively referred to as the Opponent) oppose registration of the trade-mark Mcdelivery (the Mark) filed by Champibec inc (the Applicant).

[2]  For the reasons that follow, I refuse this application.

The Record

[3]  On May 15, 2015 the Applicant filed the application bearing serial No. 1,728,461 to register the Mark. This application has been amended and now covers: fresh food delivery (the Services).

[4]  The application is based on use of the Mark in Canada since May 15, 2015.

[5]  The application was published on June 15, 2016 in the Trade-marks Journal for the purposes of opposition.

[6]  On August 15, 2016 the Opponent filed a statement of opposition which was forwarded to the Applicant by the Registrar on August 26, 2016. The grounds of opposition pleaded are based on sections 12(1)(d) (registrability); 16(3) (entitlement); 30 (a) and (b) (compliance); 30(i), 30(i) combined with sections 7(b) and (c); 30(i) combined with section 22 ; and 2 (distinctiveness) of the Trade-marks Act, RSC 1985, c T-13 (the Act). The Opponent also pleads that the application violates Rule 31(e) of the Trade-marks Regulations because the Applicant amended its statement of services such that it is now broader than what was described in the original application.

[7]  The Applicant filed a counter statement on December 28, 2016.

[8]  The Opponent filed the affidavits of Hope Bagozzi, Gay Owens and Michael Duschesneau as well as a certified copy of the file history of application No. 1,728,461.

[9]  The Applicant chose not to file any evidence.

[10]  Only the opponent filed a written argument and no hearing was held.

Preliminary Remarks

[11]  In reaching my decision I have considered all the evidence in the file. However, I shall refer only to those portions of the evidence which are directly relevant to the issues discussed in the body of my decision. In fact, I do not intend to summarize the content of the affidavit of Hope Bagozzi, Senior Director, National Marketing for McDonald’s Restaurants of Canada Limited. She provides detailed information on the Opponent’s activities worldwide, including Canada in association with a family of trade-marks listed in Schedule A to the statement of opposition. There is no issue on the notoriety of the Opponent’s trade-mark McDonald’s. In fact, in its counter statement, the Applicant admitted that the Opponent owns many trade-marks beginning with the prefix Mc or Mac. As it will appear from a reading of my decision, there is no need to refer to the content of her affidavit.

[12]  The Applicant’s counter statement contains some allegations that have not been proven. As mentioned above, the Applicant did not file evidence.

[13]  Since the Applicant had not filed evidence and a written argument, and did not request a hearing, the Registrar, as she does in similar situations, wrote to the Applicant on February 12, 2018 to inquire whether it was still interested in a decision. By letter dated March 23, 2018, the Applicant informed the Registrar that it was still interested in a decision. Moreover, the Applicant submitted arguments to support its application.

[14]  I do not intend to refer to those arguments as I do not exercise my discretion to grant leave to the Applicant to file them [see section 46(2) of the Regulations]. In any event, the Applicant did not request leave to do so and none of the allegations contained in its letter are either relevant to the issue to be determined or are supported by the evidence in the record.

[15]  Given the absence of evidence and a written argument on the part of the Applicant, and that the parties did not request a hearing, I intend to discuss only the ground of opposition based on section 30(b) of the Act, as it will be sufficient to dispose of the matter.

Section 30(b) Ground of Opposition

[16]  The Opponent has pleaded that the application does not comply with section 30(b) of the Act, as the Applicant has not used the Mark in Canada since the date claimed in the application, namely, since May 15, 2015.

[17]  As argued by the Opponent, if an applicant claims a date of first use that is earlier than the actual date of first use of the mark in Canada, the application must be refused pursuant to Section 30(b) of the Act [see Canadian Occidental Petroleum Ltd v Oxychem Canada Inc (1990), 33 CPR (3d) 345 at 349].

[18]  While the legal burden is upon an applicant to show that its application complies with section 30 of the Act, there is an initial evidential burden on an opponent to establish the facts relied upon by it in support of its section 30 ground [see Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 at 329 (TMOB); and John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD)].

[19]  With respect to section 30(b) of the Act in particular, an opponent’s initial burden has been characterized as light due to an opponent’s limited access to information regarding use relative to the applicant [see Tune Master v Mr P’s Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB) at 89]. If an opponent succeeds in discharging its initial evidential burden, the applicant must then, in response, substantiate its claim of use. However, while an opponent is entitled to rely on the applicant’s evidence to meet its evidential burden, the applicant is under no obligation to evidence its claimed date of first use if this date is not first put into issue by an opponent meeting its evidential burden [see Kingsley v Ironclad Games Corporation, 2016 TMOB 19 (CanLII), at para 63].

[20]  Mr. Duchesneau is a law clerk employed by the Opponent’s agent firm. He states that he conducted a search for the entity “Champibec Inc.” on the Quebec Business Names database, Registraire des entreprises Québec at <www.registreentreprises.gouv.qc.ca> and obtained a printout from this website which he attached as Exhibit A to his affidavit. Such document shows that the principal place of business of the Applicant is the same address as the home address of its principal shareholder Mr. Maxime Fullum, namely, “86 rue des Roses, Saint Jean-sur-Richelieu, Quebec, J2W 1R5”. It also shows that it does not have any employees.

[21]  Mr. Duschesneau also conducted a Google Street View search for “86 rue des Roses, Saint Jean-sur-Richelieu, Quebec, J2W 1R5” and obtained a screenshot from this website filed as Exhibit B. The image shows a house in a residential area.

[22]  Mr. Duschesneau then visited the website at <www.champibec.com> and obtained a screen shot from this website filed as Exhibit C. It shows that there is no website at this address. He also conducted a Whois Record search for the domain name <champibec.com> and he filed a printout of the result as Exhibit D. It shows that Maxime Fullum, residing at 94 Joseph-Crevier, St-Jean-sur-Richelieu, Quebec, J2W 1X7, is the registrant for the domain <www.champibec.com>.

[23]  Mr. Duschesneau conducted another Google Street View search for “94 Joseph-Crevier, St-Jean-sur-Richelieu, Quebec, J2W 1X7” and filed the result as Exhibit E. The picture shows a private residence, located in a residential area.

[24]  Mr. Duschesneau conducted an online search using the Google search engine using the term ““champibec inc” mcdelivery”” and filed the result as Exhibit F. It refers to the present application only. No other references of use of the Mark by the Applicant were located.

[25]  Finally, Mr. Duschesneau conducted a business telephone number search for “champibec” in Quebec using the Yellow Pages website and he filed the results as Exhibit G. It shows that it could not find any business listings matching such name.

[26]  The Opponent submits that it has met its burden by virtue of the Duschesneau affidavit. In this regard, the Opponent submits that the Duschesneau affidavit shows that there has been no use whatsoever by the Applicant of the Mark at any time in association with any services. In fact, a corporate search, Whois domain search, and additional online searches for the Applicant, revealed no indication of any business being operated or services being offered by the Applicant at any physical address or online in association with the Mark.

[27]  As previously indicated, the Opponent’s burden under a ground of opposition based upon section 30(b) of the Act is less onerous; the Opponent need not conclusively prove non-use, but rather, just raise sufficient doubt as to the veracity of the Applicant’s claimed date of first use.

[28]   I agree with the Opponent that it has provided sufficient evidence to satisfy its initial evidential burden to show that the section 30(b) ground is supported. In fact, for the purpose of meeting the Opponent’s light burden under section 30(b) of the Act, I find the foregoing evidence sufficient to raise a doubt concerning the correctness of the Applicant’s claimed date of first use [see Royal Canadian Gold Assn v ORCGA (2009), 2009 CanLII 90300 (CA TMOB), 2009 CanLII 90300 (TMOB), 72 CPR (4th) 59 (TMOB), at pages 64-65 with respect to Wayback Machine evidence in support of a section 30(b) ground;  Effigi Inc v HBI Branded Apparel Limited, Inc 2010 TMOB 160 (CanLII) regarding the admissibility of Internet searches and section 30(b); and Littlewoods Limited v Allyson Grabish, 2013 TMOB 34 (CanLII) and Home Hardware Stores Limited v 1104559 Ontario Ltd, 2013 TMOB 210 (CanLII) regarding the absence of registered domains, active websites and evidence concerning the absence of any use of an applicant’s trade-mark on a website at the relevant date with respect to a section 30(b) ground].

[29]  Based on the foregoing, I am satisfied that the Opponent has met its evidential burden.

[30]  The onus now shifts to the Applicant to establish that it had been using the Mark in association with the Services since the claimed date of first use, namely, since May 15, 2015. Given that the Applicant has filed no evidence, it has not met its onus and thus the ground of opposition based on section 30(b) of the Act is successful.

Disposition

[31]  Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

Jean Carrière

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENT(S) OF RECORD

Smart & Biggar	FOR THE OPPONENTS
No Agent Appointed	FOR THE APPLICANT