Citation: 2019 TMOB 17

Date of Decision: 2019-02-28

IN THE MATTER OF AN OPPOSITION

	Joey Tomato’s (Canada) Inc.	Opponent
And
	1786328 Ontario Ltd.	Applicant
	1,692,586 for LOCALE & Design	Application

Introduction

[1]  Joey Tomato’s (Canada) Inc. (the Opponent) opposes registration of the trade-mark LOCALE and Design (shown below) (the Mark) that is the subject of application No. 1,692,586 filed by 1786328 Ontario Ltd. (the Applicant):

 

[2]  The application was filed on September 5, 2014, in association with the following goods and services, as revised by the Applicant on June 22, 2015:

Goods

Promotional items, namely shirts, t-shirts, sweatshirts, drinking glasses and hats, namely baseball caps and toques.

Services:

Restaurant services, namely the preparation and service of foods and beverages in restaurant establishments, and the provision of entertainment namely, live musical performances and recorded background music;

Restaurant services, namely the preparation and service of foods and beverages for takeout from restaurant establishments;

Catering services; food ordering services from Internet website or by telephone; restaurant services and delivery services, namely, delivery of prepared foods and beverages; off-site catering services; operation of a website relating to food, drink and catering services; providing an online site featuring text, images, and ordering services in the field of food, drink and catering.

[3]  The application is based on use of the Mark in Canada since at least as early as November 20, 2011. 

[4]  The statement of opposition brought under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act) alleges grounds of opposition under section 30(b), section 30(i), section 12(1)(d), section 16(1)(a), section 16(1)(c) and section 2 of the Act. I consider the determinative issue in this case to be whether the Mark is confusing with either one or both of the Opponent’s registered trade-marks: LOCAL (registration No. TMA851,068) for beverageware (the Local Goods) and restaurant, bar and lounge services, food take-out services and catering services (the Local Services); or LOCAL PUBLIC EATERY (registration No. TMA819,471), for restaurant bar and lounge services; food take-out services; and catering services (the Local Public Eatery Services).

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

The Record

[6]  The statement of opposition was filed on February 5, 2016. The Applicant denied all of the Opponent’s allegations in a counter statement filed on July 15, 2016.

[7]  As its evidence, the Opponent filed the affidavits of Vilayphet (Sarah) Gallvitz and Britt Innes. The Applicant filed the affidavit of George A. Seaby. The Opponent did not file any evidence in reply.

[8]  None of the affiants were cross-examined.

[9]  Only the Opponent filed a written argument. A hearing was not requested.

Onus and Material Dates

[10]  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 Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].

[11]  The material dates that apply to the grounds of opposition are as follows:

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

·  sections 38(2)(b)/12(1)(d) -  the date of the Registrar’s decision [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)];

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

·  sections 38(2)(d)/2 - the filing date of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].

Section 30(i) ground of opposition

[12]  The Opponent alleges that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada because it was aware of the previous use in Canada by the Opponent of its LOCAL and LOCAL PUBLIC EATERY trade-marks.

[13]  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 an applicant [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. 

[14]  There is no evidence of bad faith or exceptional circumstances in this case. Further, mere knowledge of the existence of the Opponent’s trade-mark or 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]. 

[15]  This ground of opposition is accordingly dismissed.

Section 12(1)(d) Ground of Opposition

[16]  The Opponent has pleaded that the Mark is not registrable because it is confusing with at least one of the Opponent’s trade-marks. I consider the Opponent’s best case is registration No. TMA851,068 for the trade-mark LOCAL and I will concentrate my analysis on it.  If the Opponent is not successful based on this mark, it will not be successful based on its LOCAL PUBLIC EATERY mark.

[17]  I have exercised the Registrar’s discretion to check the register to confirm the status of the Opponent’s LOCAL registration. As it is extant, the Opponent’s evidentiary burden has been satisfied. The Applicant must therefore establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Opponent’s LOCAL mark and its LOCALE & Design Mark.

The test for confusion

[18]  Section 6(2) of the Act provides the following:

The 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.

[19]  Thus, this section does not concern the confusion of the trade-marks themselves, but confusion of goods or services from one source as being from another source.

[20]  The test for confusion is one of first impression and imperfect recollection. As noted by Mr. Justice Denault in Pernod Ricard v Molson Breweries (1992), 44 CPR (3d) 359 at 369:

The trade-marks should be examined from the point of view of the average consumer having a general and not a precise recollection of the earlier mark. Consequently, the marks should not be dissected or subjected to a microscopic analysis with a view to assessing their similarities and differences. Rather, they should be looked at in their totality and assessed for their effect on the average consumer as a whole.

[21]  In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at 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 the trade-marks have 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. This list is not exhaustive and all relevant factors are to be considered. Further, all factors are not necessarily attributed equal weight as the weight to be given to each depends on the circumstances [see Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée (2006), 49 CPR (4th) 401 (SCC)]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) 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.

Consideration of the section 6(5) factors

a) the inherent distinctiveness of the trade-marks and the extent to which they have become known

[22]  Neither of the marks are inherently strong as both are composed of an ordinary dictionary word, LOCAL in English or LOCALE in French. I do consider the Mark to be inherently stronger than the Opponent’s Mark, however, in view of its distinctive silhouette of a rooster design.

[23]  With respect to the extent the marks have become known, the Opponent’s evidence of use of the Opponent’s LOCAL mark is extensive.  I highlight the following from the affidavit of Ms. Innes:

·  the Opponent’s first LOCAL restaurant was opened on November 20, 2009 in Vancouver, B.C. [Innes, para. 3];

·  since 2009, the Opponent has operated seven other LOCAL restaurants in three provinces in which the Local Goods and Local Services have been provided under the LOCAL marks [Innes, para. 3];

·  between November 2009 and November 6, 2016, the Opponent has provided Local Services under the LOCAL marks to over 7,220,000 customers in Canada [Innes, para.8]; and

·  the Opponent’s LOCAL marks have been clearly displayed both in the performance, advertising and promotion of the Opponent’s businesses as shown though representative samples of the photos of the signage outside each of the Opponent’s eight LOCAL restaurants; print-outs from the websites for the LOCAL restaurants; copies of over 95 articles written about the LOCAL restaurants; print advertisements for LOCAL restaurants; and information about the Opponent’s sponsorships of teams and community events [Innes, Exhibits A1-19, B1-B8, C, D, E, F1-F97; H, I].

[24]  Circulation figures for the various newspapers and magazines in which articles about or advertisements for the LOCAL restaurants have appeared were also provided by the Opponent through the evidence of Ms. Gallvitz [Gallvitz, para. 2-5].

[25]  The Applicant, on the other hand, did not provide any evidence of use of its Mark.

[26]  I conclude that the overall consideration of this first factor, which is a combination of inherent distinctiveness and acquired distinctiveness, favours the Opponent.  

b) the length of time the trade-marks have been in use

[27]  The Opponent has shown use of its mark since November 20, 2009, while the Applicant has not provided any evidence of use of its Mark. This factor therefore also favours the Opponent.

c) the nature of the goods, services or business; and d) the nature of the trade

[28]  There is a clear overlap between the parties’ goods and services. In the absence of evidence to the contrary, I assume the parties’ channels of trade would also overlap.

e) The degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

[29]  As stated earlier, the degree of resemblance between the marks will often have the greatest effect on the confusion analysis.  When considering the degree of resemblance, the law is clear that the marks must be considered in their entirety. The appropriate test is not a side by side comparison but an imperfect recollection in the mind of a consumer of an opponent’s mark [Veuve Cliquot Ponsardin v Boutiques Cliquot Ltee, supra, at para 20]. The preferable approach when comparing trade-marks is to begin by determining whether there is an aspect of the trade-mark that is particularly striking unique [see Masterpiece at para 64].

[30]  Overall, I find there to be a fair degree of resemblance between the marks.  In this regard, when sounded, there is a high degree of resemblance between the marks because the Applicant has incorporated the whole of the Opponent’s mark into its Mark (with the addition of the silent letter “e” at the end).  I also find that the marks suggest similar ideas, i.e. restaurant food that uses local and/or organic ingredients. There is less resemblance between the marks in appearance, however, as the dominant feature of the Mark is the silhouette of a rooster.

Surrounding Circumstance: State of the Register and State of the Marketplace

[31]  The Applicant has filed the affidavit of George A. Seaby, a registered trade-mark agent and the owner of the intellectual property search firm NA Search Inc. On January 10, 2017, Mr. Seaby was asked by Mr. Bruce D. Margles, the trade-mark agent for the Applicant, to conduct two searches: 1) a search of the Canadian Trade-marks Office database for trade-marks containing the word LOCAL or LOCALE for use in association with restaurant or similar services; and 2) a Google search for restaurants in Canada, the names of which contain the word LOCAL or LOCALE. Particulars of his searches are attached as Exhibit A and B to his affidavit.

[32]  State of the register evidence is introduced to show the commonality or distinctiveness of a mark or portion of a mark in relation to the register as a whole. It has been held that state of the register evidence is only relevant insofar as inferences may be made on it concerning the state of the marketplace, and inferences about the state of the marketplace can only be drawn when a significant number of pertinent registrations are located [see Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432, (TM Opp Bd); Welch Foods In v Del Monte Corp. (1992), 44 C.P.R. (3d) 205 , (Fed TD); and Maximum Nutrition Ltd v Kellogg Salada Canada Inc. (1992), 43 CPR (3d) 349, 145 N.R. 131, (FCA)].  Relevant trade-marks include those that (i) are registered or are allowed and based on use; (ii) are for similar goods and services as the marks at issue and (iii) those that include the component at issue in a material way.

[33]  The Opponent submits that the eight trade-mark registrations held by third parties as identified in the Seaby affidavit are insufficient for the Registrar to draw the inference that the casual consumer somewhat in a hurry is accustomed to distinguishing small differences between trade-marks that incorporate the word LOCAL for restaurant and related services. I agree.

[34]  Further, the excerpts from the results of Mr. Seaby’s Google search, including Google restaurant reviews for five third party restaurants with Canadian addresses whose names include the word LOCAL or LOCALE, do not assist the Applicant in demonstrating that there has been widespread use of the word LOCAL or LOCALE as a trade-mark in the restaurant sphere. In this regard, these GOOGLE searches and website print-outs can at most be relied upon only as proof of the existence of the search results and website pages, not as proof of the truth of their contents [Kocsis Transport Ltd v "K" Line America Inc  [2008] TMOB No 37, (TM Opp Bd)].  They are therefore not sufficient to permit me to make the inference that Canadian customers are accustomed to seeing numerous trade-marks consisting of or including LOCAL or LOCALE in the restaurant sector such that they can distinguish them.

[35]  I therefore do not find the Applicant’s state of the register nor state of the marketplace evidence to be a significant surrounding circumstance.

Conclusion

[36]  The question is whether the typical Canadian consumer who has an imperfect recollection of the Opponent’s LOCAL mark, would, upon seeing the Applicant’s LOCALE & Design mark, assume as a matter of immediate impression, that the parties’ restaurant goods and services share a common source.

[37]  The evidence shows that the Opponent’s mark, although inherently weak, has acquired a substantial reputation in association with restaurant services.  In my view, the Applicant has not adopted a mark that is sufficiently different from the Opponent’s mark to be used in association with the same services. The presence of the onus on the Applicant means that if a determinate conclusion cannot be reached, then the issue must be decided against the Applicant [see John Labatt, supra]. Having considered all of the relevant factors, I conclude that the probabilities regarding confusion are equally balanced. The section 12(1)(d) ground therefore succeeds.

Section 16(1) and 2 Grounds of Opposition

[38]  The evidence of use of the Opponent’s LOCAL trade-mark discussed with respect to the section 12(1)(d) ground of opposition is sufficient to meet the Opponent’s burden with respect to the section 16(1)(a) and 2 grounds of opposition. My conclusions above under the section 12(1)(d) ground, for the most part, also apply to these grounds of opposition. The section 16(1)(a) and section 2 grounds accordingly also succeed.

Remaining Grounds of Opposition

[39]  As I have already found in favour of the Opponent with respect to the section 12(1)(d), 16(1)(a) and section 2 grounds of opposition, I do not consider it necessary to discuss the remaining grounds of opposition.

Disposition

[40]  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.

Cindy R. Folz

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE No Hearing Held

AGENT(S) OF RECORD

McCarthy Tetrault	FOR THE OPPONENT
Bruce D. Margles	FOR THE APPLICANT