Citation: 2019 TMOB 12

Date of Decision: 2019-01-31

IN THE MATTER OF AN OPPOSITION

	MLT DWN Grill Inc.	Opponent
and
	The Mixing Bowl Inc.	Applicant
	1,704,443 for CULINARY MELTDOWN	Application

Introduction

[1]  MLT DWN Grill Inc. (the Opponent) opposes registration of the trade-mark CULINARY MELTDOWN (the Mark), which is the subject of application No. 1,704,443 by The Mixing Bowl Inc. (the Applicant).

[2]  The application for the Mark is in association with “food truck services and catering” (the Services). The application is based on use in Canada since at least as early as November 1, 2014.

[3]  A key issue in this proceeding is the likelihood of confusion with the Opponent’s trade-mark MLT DWN in association with goods and services including “restaurant services and take-out restaurant services; catering services”.

[4]  For the reasons that follow, I find that the application should be refused.

The Record

[5]  The application for the Mark was filed on November 25, 2014, and was advertised for opposition purposes in the Trade-marks Journal of August 26, 2015.

[6]  On January 18, 2016, the Opponent filed a statement of opposition under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act). The grounds of opposition pleaded are summarized below:

• a) Contrary to section 30(a) of the Act, the application fails to contain a statement in ordinary commercial terms of the specific services in association with which the Mark has been used since “food truck services” fails to identify a particular area of use in commerce, and absent further specification the statement could relate to one of many different areas of commerce;

 

• b) Contrary to section 30(b) of the Act, the Applicant or its predecessors in title (or for their benefit by licensees) had not used the Mark in Canada in association with “food truck services and catering” at the alleged date of first use, namely November 1, 2014;

 

• c) Contrary to section 30(i) of the Act, the Applicant could not have been satisfied of its entitlement to use the Mark in association with the Services, since at the material date the Applicant was aware of, or ought to have been aware of, the prior rights of the Opponent in the trade-mark and trade-name MLT DWN;

 

• d) Contrary to section 16(1)(a) of the Act, the Applicant is not the person entitled to registration of the Mark because at the alleged date of first use of the Mark and any relevant date, the Mark was confusing with the trade-mark MLT DWN that had been previously used in Canada or made known in Canada by the Opponent, for goods and services such as clothing, namely T-shirts and hats; restaurant services and take-out services; catering services.

 

• e) Contrary to section 16(1)(b) of the Act, the Applicant is not the person entitled to registration of the Mark because at the alleged date of first use of the Mark and at any relevant date, the Mark was confusing with a trade-mark in respect of which an application for registration had been previously filed in Canada by the Opponent or its predecessors in title (or for their benefit by licensees), namely MLT DWN, for goods and services such as clothing, namely T-shirts and hats; restaurant services and take-out services; catering services;

 

• f) Contrary to section 16(1)(c) of the Act, the Applicant is not the person entitled to registration of the Mark because at the alleged date of first use of the Mark and at any relevant date, the Mark was confusing with the trade-name MLT DWN that had been previously used in Canada by the Opponent or its predecessors in title (or for their benefit by licensees), for its business of design, manufacture and sale of goods such as clothing, namely T-shirts and hats; as well as its business of restaurant services and take-out services; catering services; and

 

• g) Contrary to section 2 of the Act, the Mark is not distinctive of the Services since the Mark does not actually distinguish the Services in association with which the Mark is allegedly used by the Applicant from the goods and services of others, including those of the Opponent, nor is it adapted to so distinguish them.

[7]  The Applicant filed a counter statement on February 23, 2016.

[8]  In support of its opposition, the Opponent filed the affidavits of Rahim Moloo (sworn June 20, 2016), a co-founder, director, co-owner and co-operator of the Opponent, and Roxana Monemdjou (sworn June 22, 2016), an associate lawyer and patent and trade-mark agent trainee employed with the agent for the Opponent. Neither was cross-examined on their affidavit.

[9]  The Opponent subsequently requested and was granted leave to file as additional evidence a certified copy of the application file history for application No. 1,663,308 for the trade-mark MLT DWN.

[10]  In support of its application, the Applicant filed the affidavits of Corinne Carroll (sworn November 18, 2016), the owner of the Applicant, and Jo-Anne McConnery (sworn November 22, 2016), a legal assistant employed with the agent for the Applicant. Neither was cross-examined on their affidavit.

[11]  Neither of the parties filed a written argument, and only the Applicant attended a hearing.

Onus and Material Dates

[12]  The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is 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 [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298].

[13]  The material dates that apply to the grounds of opposition pleaded are:

• Sections 38(2)(a)/30 – the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984) 3 CPR (3d) 469 (TMOB) at 475];

• Section 38(2)(c)/16(1) – the date of first use claimed in the application [section 16(1) of the Act]; and

• Sections 38(2)(d)/2 – the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 2004 FC 1185 (CanLII), 34 CPR (4th) 317 (FC)].

 

Analysis of the grounds of opposition

Section 30(a) ground

[14]  Section 30(a) requires an application to contain “a statement in ordinary commercial terms of the specific goods or services” that the applicant provides or intends to provide. The Opponent alleges that the application fails to contain such a statement since “food truck services” fails to identify a particular area of use in commerce, and absent further specification the statement could relate to one of many different areas of commerce.

[15]  While the Opponent has made no written or oral submissions in support of this allegation, I note that the Monemdjou affidavit includes the results of various web searches for the phrase “food truck”. Pertinent portions of this affidavit are discussed below.

Affidavit of Roxana Monemdjou

[16]  On June 14, 2016, Ms. Monemdjou conducted a search of the Canadian Intellectual Property Office (CIPO) electronic Goods and Services Manual using CIPO’s Goods and Services Manual system for services containing the phrase “food truck” in the keyword field. The search yielded no results (para 4, Exhibit 2).

[17]  On June 14, 2016, Ms. Monemdjou conducted a Google keyword search using the search string “food truck services Canada” and visited the following four webpages appearing in the search results: http://www.silverstarmetal.com; http://venturefoodtrucks.com; http://www.dunlevyfoodequipment.com; and http://uniquefoodtruck.com (para 5).  

[18]  Ms. Monemdjou states that the four Canadian businesses at the above-referenced webpages offer the following food truck services: “sale of food trucks and food truck equipment, custom manufacturing of food trucks, and food truck repair and maintenance” (para 6). Attached as Exhibit 3 are printouts of the homepages corresponding to each of these webpages.

Analysis

[19]  Although some degree of specificity is required, it has been recognized that statements of services may be more difficult to specifically define in comparison to statements of goods [Sentinel Aluminium Products Co Ltd v Sentinel Pacific Equities Ltd (1983), 80 CPR (2d) 201]. Further, CIPO’s Trade-marks Examination Manual states that in reading the entire statement of services, “context may serve to specify an otherwise unacceptable identification of services”.

[20]  In the instant case, while I agree that “food truck services” are stated broadly, I am of the view that when the entire statement of services, namely “food truck services and catering”, is considered, this provides sufficient context to specify that the “food truck services” being provided would not relate the sale, manufacture, or repair of these vehicles, but to the sale of food via the food truck. 

[21]  In view of the above, I therefore find the services to be stated in sufficiently specific and ordinary terms. Accordingly, this ground of opposition is rejected.

Section 30(b) ground

[22]  The section 30(b) ground of opposition alleges that the Applicant had not used the Mark in association with the Services since at least as early as November 1, 2014 (the date of first use claimed in the application).

[23]  With respect to an opponent’s initial burden for a ground of opposition under section 30(b) of the Act, to the extent that the relevant facts are more readily available to the applicant, the evidentiary burden on the opponent with respect to such a ground of opposition is less onerous [Tune Master v Mr P’s Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB)]. Further, this burden can be met by reference not only to the opponent’s evidence but also to the applicant’s evidence [Labatt Brewing Company Limited v Molson Breweries, a Partnership (1996), 68 CPR (3d) (FCTD) 216]. However, the opponent may only successfully rely on the applicant’s evidence to meet its initial burden if the opponent shows that the applicant’s evidence puts into issue the claims set forth in the applicant’s application [Corporativo de Marcas GJB, SA de CV v Bacardi & Company Ltd 2014 FC 323 at paras 30-38 (CanLII)].

[24]  In this case, no evidence has been filed nor submissions made by the Opponent which support its allegation that the Applicant has not used the Mark in association with the Services since the date of first use claimed in the application.  Further, the Applicant’s evidence (discussed below at paragraph 40) does not call into issue the claimed date of first use. Accordingly, this ground of opposition is rejected as the Opponent has not met its evidential burden.

Section 30(i) ground

[25]  Where an applicant has provided the statement required by section 30(i) of the Act, a section 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155].

[26]  The Opponent alleges that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the Services since the Applicant was aware of, or ought to have been aware of, the prior rights of the Opponent in the trade-mark and trade-name MLT DWN.

[27]  Assuming the Applicant was aware of the Opponent’s trade-mark and trade-name MLT DWN (as there is evidence the Opponent sent a cease and desist letter to the Applicant before the application was filed (Moloo affidavit, para 34; exhibit 27)), the mere knowledge of the existence of the Opponent’s trade-mark and trade-name does not in and of itself support an allegation that the Applicant could not have been satisfied of its entitlement to use the Mark [Woot, Inc v WootRestaurants Inc Les Restaurants Woot Inc 2012 TMOB 197 (CanLII)]. Knowledge of this trade-mark or trade-name would not preclude the Applicant from truthfully making the statement required by section 30(i) inter alia on the basis that it believed the Mark was not confusing with it.

[28]  In the present case, the Applicant has provided the necessary statement and this is not an exceptional case. Accordingly, the section 30(i) ground is rejected.

Section 16(1)(b) ground

[29]  With respect to the section 16(1)(b) ground of opposition, the Opponent has an initial burden of establishing that the application set out in the statement of opposition was filed prior to the date of first use alleged in the subject application (since at least as early as November 1, 2014), and that it was pending as of the Applicant’s date of advertisement (August 26, 2015) [section 16(4) of the Act].

[30]  I note that the Opponent in its pleading did not identify the application for the trade-mark by number, but instead referenced only the name of the trade-mark (MLT DWN) and the associated goods and services. At the decision stage, when assessing whether the Applicant knew the case it had to meet, I am required to read the pleading in conjunction with the evidence [Novapharm Ltd v AstraZeneca AB, 2002 FCA 387 (CanLII), 21 CPR (4th) 289]. In this case, I consider that the Applicant did know the case it had to meet given that the Opponent subsequently identified the application by number in the Moloo affidavit (Moloo affidavit, 7), and submitted a certified copy of the file history for application No. 1,663,308 for MLT DWN. I further note that the Applicant, in its counter statement, referred to the Opponent’s application for the trade-mark MLT DWN by its application number.

[31]  A review of the certified copy of the file history for the Opponent’s application No. 1,663,308 for MLT DWN confirms that this application was filed prior to the date of first use claimed in the Applicant’s application and was pending as of the advertisement of the Applicant’s application. The Opponent has therefore met its burden under this ground of opposition. While I note the application is currently in default, this is not a relevant surrounding circumstance [ConAgra, Inc v McCain Foods Ltd (2001), 2001 FCT 963 (CanLII), 14 CPR (4th) 288 (FCTD); Corporativo de Marcas GJB v Bacardi & Company Limited, 2015 TMOB 51 (CanLII); Starbucks (HK) Limited v Rogers Broadcasting Limited, 2013 TMOB 114 (CanLII); Jarrow Formulas, Inc v Canada Bread Company, Limited, 2015 TMOB 67; section 16(4) of the Act].

[32]  As the Opponent has satisfied its initial burden, the Applicant must therefore establish, on a balance of probabilities, that as of the date of first use in the Applicant’s application, namely November 1, 2014, there was not a reasonable likelihood of confusion between its trade-mark CULINARY MELTDOWN and the Opponent’s trade-mark MLT DWN. I note that the Opponent’s application for the trade-mark MLT DWN covers “clothing, namely T-shirts and hats” and “restaurant services and take-out restaurant services; catering services”.

[33]  The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

[34]  In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely:

(a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.

[35]  These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 (CanLII), [2006] 1 SCR 772 (SCC) at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc (2011), 2011 SCC 27 (CanLII), 92 CPR (4th) 361 (SCC) (Masterpiece) at para 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.

Inherent distinctiveness and extent known

[36]  The Opponent’s trade-mark is comprised of the elements MLT and DWN. Contrary to the Applicant’s submissions at the hearing that these elements would be viewed as two separate acronyms (discussed below in the analysis of the degree of resemblance at paragraph 50 of this decision), I consider that when read together, these elements would likely be pronounced and interpreted as the words “melt down”. I note that Board Member Robitaille, in another proceeding between the parties involving the Opponent’s application No. 1,633,308 for the trade-mark MLT DWN, made a similar finding [Mixing Bowl Inc v MLT DWN Grill Inc, 2018 TMOB 2 at paras 30 and 36]. Although the Opponent’s mark may be somewhat suggestive in relation to its services in view that “melt down” may suggest that the Opponent serves melted down fare at its restaurant (discussed below in the analysis of the degree of resemblance at paragraph 52), I still consider the mark to possess a fair degree of inherent distinctiveness, particularly because of its unique spelling.

[37]  The Mark consists of the English words “culinary” and meltdown”. Given the suggestive nature of the word “culinary” - defined as meaning “of or relating to the kitchen or cookery” - I consider the Mark as a whole to be more suggestive of the associated Services than the Opponent’s mark. [see Tradall SA v Devil’s Martini Inc. (2011), 2011 TMOB 65 (CanLII), 92 CPR (4th) 408 (TMOB) para 29 on taking judicial notice of dictionary definitions; definition of “culinary” from Merriam Webster online dictionary].  

[38]  The strength of a trade-mark may be increased by means of it becoming known through promotion or use. The Opponent has introduced evidence, through the affidavit of Mr. Moloo, showing use of the Opponent’s trade-mark, most notably in association with “restaurant and take-out restaurant services; catering services”. Pertinent portions of Mr. Moloo’s affidavit are summarized below:

·  The Opponent opened the doors of its first MLT DWN restaurant in Kingston, Ontario on August 22, 2012. From August 22, 2012, and continuing to this day, the Opponent has operated this restaurant, selling and continuing to sell gourmet grilled cheese sandwiches and other food and drink items for consumption at the restaurant, or as take-out or delivery or catering (para 4);

·  Since the opening of its first restaurant in Kingston, the Opponent has opened three more MLT DWN restaurant locations, namely one in Ottawa, Ontario and two in Quebec (Laval and Montreal) (para 5);

·  Since at least as early as August 22, 2012, the Opponent has used the MLT DWN trade-mark in Canada in association with restaurant and take-out services. The Opponent has used the trade-mark on exterior signage, invoices, and sales receipts (paras 9-14; exhibits 1, 3, 4, 5). Further, the Opponent has advertised and promoted its services in association with the trade-mark MLT DWN through various marketing channels, including in: magazines distributed to Queen’s University, Royal Military College and St. Lawrence College students, a student run newspaper at Queen’s University, Queen’s University student agendas, coupons, gift certificates (from its Kingston location), business cards, and pamphlets (paras 19-22; exhibits 11-17). The Opponent has also advertised the services using the social media platforms Twitter (joined April 2012) and Facebook (since 2012) (paras 19, 26, 30; exhibits 21, 25). I note there is no information on the number of Canadians exposed to these advertisements (for instance, circulation or distribution data for the magazines, student agendas, or number of gift certificates). I further note that the Opponent has not disclosed any information on advertising expenditures related to the promotion of its mark. 

·  Also included are copies of third party references to the trade-mark MLT DWN in news articles (including in the Ottawa Citizen), in an online community newspaper (for Kingston, Ontario), restaurant review websites, as well as a reference to the Opponent’s MLT DWN restaurant featured on the June 27, 2014 episode of the Food Network nationally-televised television show “You Gotta Eat Here!” (paras 23-25, 28, 29, 31; exhibits 18-20,  23-24, 26). I note that no circulation figures, readership or viewership information providing an indication of the number of Canadians accessing these references is provided.

·  Since at least as early as August 22, 2012, the Opponent has offered and continues to offer and perform catering services where it cooks the food sold at the customer’s location (para 15, Exhibit 6).

[39]  While I am satisfied from a fair reading of the Moloo affidavit that the Opponent’s trade-mark MLT DWN has been used in Canada since at least as early as August 22, 2012, no annual sales figures, information on the number of customer visits to its restaurants each year (or at any time), or advertising expenditures are provided. Accordingly, I can only conclude that the MLT DWN mark has become known to some extent in Canada, primarily in the Kingston, Ontario area.

[40]  With respect to the applied for Mark, which is based on use in Canada since at least as early as November 1, 2014, the Applicant, through the affidavit of Corinne Carroll, provides evidence showing use of the Mark. Pertinent portions of Ms. Carroll’s affidavit are summarized below:   

·  Since at least as early as November 1, 2014, the Applicant has operated a food truck under the trade-mark CULINARY MELTDOWN which has offered, and continues to offer, food and drinks at various locations in Ontario and Quebec (paras 2 - 5). A photograph of the food truck, which prominently displays the Mark, is attached as Exhibit A. Exhibit B is described as photographs of representative receipts showing that the food truck provided services on October 17 and 18, 2014.

·  The food truck typically serves customers at its home/primary location, and from time to time, it moves to other locations (para 5). From approximately October 2014 to April 2015, the food truck’s home location was at the Tanger Outlet shopping mall in Kanata, Ontario. Since May 2015, the food truck’s home location moved to Stittsville, Ontario (para 6).  

·  The food truck has also provided services at a number of events in Ontario and Quebec in 2015-2016, including Ottawa Winterlude (2016) and the Ottawa Bluesfest (2015) (paras 7-8, Exhibit D). While Ms. Carroll states that attendance for these events is “in the range of thousands to hundreds of thousands”, I note that no information is provided as to the number of event attendees who visited the Applicant’s food truck.

·  Since at least as early as November 1, 2014, the Applicant has advertised, and continues to advertise, its food truck and catering services with the Mark online, including on the website www.culinarymeltdown.com. However, there is no information on the number of Canadian visitors to the website. The Applicant also advertises its food truck and catering services on its Facebook page at https://www.facebook.com/culinarymeltdownottawa/ (para 9; exhibits E, F).  

·  Since October 17, 2014, the food truck has prominently displayed the Mark as shown in Exhibit A. The words CULINARY MELTDOWN appear at the top menu on the side of the food truck (para 10; exhibit A).

[41]  The Applicant has provided no sales figures or information pertaining to the number of customer visits it has received. Further, as of the material date for this ground it appears that the Applicant’s food truck had only been in operation for about two weeks. I am therefore only able to find that the Mark had become known to a very limited extent in Canada by the material date for this ground.

[42]  In view of the above, I find that the overall assessment of the section 6(5)(a) factor, which is a combination of the inherent distinctiveness of the parties’ marks and the extent to which they have become known favours the Opponent, as I consider the MLT DWN trade-mark to be more inherently distinctive than the Applicant’s Mark and because its evidence of promotion and use is more substantial than that of the Applicant.

Length of time in use

[43]  In view of the above, it follows that the length of time the trade-marks have been in use also favours the Opponent, albeit slightly, given the Opponent’s use predates the Applicant’s by a period of approximately two years.  

Nature of the goods, services or business; the nature of the trade

[44]  The Opponent’s application covers the goods “clothing, namely T-shirts and hats”, as well as “restaurant services and take-out restaurant services; catering services”. The Opponent’s evidence shows that it sells, through its MLT DWN restaurants, gourmet grilled cheese sandwiches and other food and drink items for consumption at the restaurant, or as take-out or delivery or catering” (Moloo affidavit, para 4). 

[45]  The Applicant’s application covers the services “food truck services and catering”, and according to its evidence, “as a popular food truck, The Mixing Bowl Inc provides good quality take-out food using the CULINARY MELTDOWN name…” (Carroll affidavit, para 11). I note that the Applicant’s menu also features gourmet grilled cheese sandwiches, as well as macaroni and cheese (Carroll affidavit, exhibit E). 

[46]  In view of the Applicant’s evidence, including the nature of the Applicant’s business as described in the Carroll affidavit, I find the Applicant’s food truck services to be very similar to the provision of take-out restaurant services, in that both essentially provide cooked food to be consumed elsewhere (ie, not eat-in dining). There is also direct overlap in respect of the parties’ catering services. With respect to the nature of the trade of the parties, the Applicant takes the position that they are different in that the Applicant is providing a mobile food service while the Opponent provides ‘brick and mortar’ restaurant services. I disagree. While it may be that the Opponent’s kitchens are at a fixed address, compared with the Applicant’s food truck kitchen which moves around (typically resting in a primary home location but moving to other locations from time to time), customers still must go to the parties’ respective establishments (whether based in a building or truck) to purchase their food.

[47]  Accordingly, these factors favour the Opponent.

Degree of resemblance

[48]  When considering the degree of resemblance between trade-marks, they must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the marks [Veuve Clicquot, supra at para 20].

[49]  The preferable approach when comparing trade-marks is to begin by determining whether there is an aspect of the marks that is particularly striking or unique [Masterpiece, supra at para 64].

[50]  At the hearing, the Applicant submitted that the average consumer would not view the Opponent’s trade-mark MLT DWN as a misspelling of the words “melt down”, but that it would instead be seen as two separate acronyms, neither of which holds a defined meaning. In support of this assertion, the Applicant referred to the affidavit of Joanne McConnery, in particular the results of various searches Ms. McConnery conducted for the individual elements MLT and DWN on the NUANS (Corporate Names) Database Preliminary Search System and the Canadian Trade-marks Database (Exhibits 1-19). I do not consider these searches to be of particular assistance since the elements of the Opponent’s mark are not to be parsed and examined separately but should instead be considered in their totality. Ms. McConnery also conducted searches of these databases for the elements “MTL” and “MELTDOWN” which I do not consider to be relevant since MTL is not even an element of the Opponent’s trade-mark. 

[51]   The Applicant also submitted that the trade-mark MLT DWN cannot be sounded, and while one can guess what it sounds like there is no actual way to pronounce it. Regarding the ideas suggested, the Applicant submitted that MLT DWN might be contemplated to be the initials of the owner or that it might have some other unknown meaning as it relates to the Opponent’s restaurant.

[52]  Contrary to the Applicant’s assertion, I am of the view that the Opponent’s trade-mark would be readily considered as an intentional misspelling of the words “melt down”, and would thus be seen, heard, and interpreted as these words. Regarding the ideas suggested, considering the Opponent’s evidence that its MLT DWN restaurant specializes in grilled cheese sandwiches, I consider it to evoke the idea of melted down fare. I would expect that the average consumer, when faced with the mark in association with the Opponent’s services, would likely make the same connection.

[53]  With respect to the Mark, the Applicant submitted that in contrast to the Opponent’s mark, the trade-mark CULINARY MELTDOWN consists of two conventional words, and that the dominant element of the Mark is the word CULINARY. However, given the suggestive nature of the word ‘culinary’, I disagree and consider the word MELTDOWN to be the striking element of the Mark. With respect to the ideas suggested, as with the Opponent’s mark, I am of the view that the average consumer, when faced with the Mark in association with the Services, would likely consider the word to evoke the idea of melted down fare.

[54]  In view of the above, I find that there are considerable similarities between the parties’ trade-marks in sound and in the ideas suggested given that CULINARY MELTDOWN incorporates the entirety of the Opponent’s mark, which would be heard and understood as meaning “MELT DOWN”. However, I find that the parties’ trade-marks only visually resemble each other to a limited degree, given the unusual misspelling of ‘melt down’, and to a lesser extent given the inclusion of the word ‘culinary’ in the Applicant’s Mark.

Additional surrounding circumstance - evidence of actual confusion

[55]  The Applicant states that it has not had any customers ask if it is associated with MLT DWN Grill Inc., or any other food truck or restaurant (Carroll affidavit, para 12). However, the Opponent’s position is that there have been “many instances of actual confusion”. These instances are detailed in the following paragraphs reproduced from the Moloo affidavit:

33. As of November 20, 2014, there had already been at least fifteen occasions where MLT DWN customers had assumed a connection between the business of MLT DWN and the Applicant’s services offered in association with the Mark. In some of these occasions, I had directly spoken with the confused customer. In other occasions, my co-owner, Aly Moloo, had spoken with the confused customer and relayed this information to me. In yet other occasions, the confused customer spoke with members of the Opponent’s staff, who then relayed this information to me. In many of these occasions, these confused customers tried to use a loyalty punch card of the Applicant at our 50 Rideau Street location.

…

37. On June 22, 2015, the Opponent received an email from Dustin Paquette of the Medical Council of Canada, who was inquiring about the Opponent’s catering services upon seeing the Applicant’s food truck in Ottawa. The Opponent does not have a food truck operation in Ottawa. I understood the Applicant to have operated a food truck trailer at the Tanger Outlet Mall in Ottawa at that time. The basis for this understanding is the conversations I have had with customers at our 50 Rideau Street location who have assumed a connection between our business and the food truck trailer bearing the Mark. Marked as Exhibit 28 is a printout of the email received from Dustin Paquette on June 22, 2015.

[56]   The above-referenced email from Mr. Paquette appears to have been sent to the Opponent from a contact form on the Opponent’s MLT DWN website and makes the following request: “I wanted to see if you guys do catering. I saw that you had a mobile unit at the outlet in Ottawa. Let me know if this [is] something you could do…” (Moloo affidavit, Exhibit 28).

[57]  I do not consider the instances of alleged confusion referenced at paragraph 33 of Mr. Moloo’s affidavit to be of particular assistance given the statements are hearsay (those allegations communicated to Mr. Moloo by his co-owner or staff members of the Opponent) and lack specificity (in that the details of each alleged instance of confusion are not provided). While I would have considered the email referenced in paragraph 37 and attached as Exhibit 28 to the Moloo affidavit to have constituted evidence of actual confusion, given that this evidence post-dates the material date for this ground of opposition, I cannot consider it as a relevant surrounding circumstance supporting the Opponent’s case [Servicemaster Co v 385229 Ontario Ltd 2015 FCA 114 (CanLII) at paras 21-22].  

Conclusion on the likelihood of confusion

[58]  In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. Having considered all of the surrounding circumstances, in particular the inherent distinctiveness of the parties’ marks, the clear overlap in the nature of the services, as well as the similarities of the parties’ marks particularly in sound and ideas suggested, I find that the balance of probabilities is evenly balanced between a finding of confusion between the Applicant’s Mark and the Opponent’s MLT DWN trade-mark, and a finding of no confusion.

[59]  As the onus is on the Applicant to establish on a balance of probabilities that there is no reasonable likelihood of confusion with the Opponent’s trade-mark MLT DWN, I must decide against the Applicant.

[60]  Accordingly, the ground of opposition based on section 16(1)(b) is successful.

Section 16(1)(a) ground of opposition

[61]  The evidence of use of the MLT DWN trade-mark discussed with respect to the section 16(1)(b) ground of opposition is sufficient to meet the Opponent’s burden of proving that this trade-mark was being used as of the Applicant’s claimed date of first use and had not been abandoned at the date of advertisement of the application [section 16(5) of the Act]. For the reasons set out with respect to the section 16(1)(b) ground of opposition, the Applicant has failed to meet its legal onus of proving that there is no likelihood of confusion between the Mark and the MLT DWN trade-mark. Accordingly, this ground of opposition is successful.

Remaining grounds of opposition

[62]  Having already refused the application under two grounds, I will not discuss the remaining grounds of opposition with respect to this application.

Disposition

[63]  Accordingly, 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.

Jennifer Galeano

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2018-09-13

APPEARANCES

No one appearing	FOR THE OPPONENT
Heidi Jensen	FOR THE APPLICANT

AGENT OF RECORD

No Agent Appointed	FOR THE OPPONENT
Jensen & Company	FOR THE APPLICANT