Citation: 2020 TMOB 43

Date of Decision: 2020-05-11

IN THE MATTER OF AN OPPOSITION

	The Buddha Brands Company	Opponent
and
	Buda Juice, LLC	Applicant
	1,723,429 for BUDA JUICE	Application

Introduction

[1]  The Buddha Brands Company (the Opponent) opposes registration of the trademark BUDA JUICE (the Mark), which is the subject of application No. 1,723,429 by Buda Juice, LLC (the Applicant).

[2]  The Mark is applied for in association with the following goods and services:

GOODS
(1) Beverages, namely fruit-based, vegetable-based, herbal-based non-alcoholic beverages.

(2) Beverages, namely almond milk-based non-alcoholic beverages; Soups and preparations for making soups, namely fruit-based, vegetable-based soups and herbal-based soups; fruit-based preparations in the form of non-alcoholic beverages and soups for cleansing, energizing and detoxifying the body; vegetable-based preparations in the form of non-alcoholic beverages and soups for cleansing, energizing and detoxifying the body; Herbal-based preparations in the form of non-alcoholic beverages and soups for cleansing, energizing and detoxifying the body.

(3) Fruit juices; herbal juices; and vegetable juices.

SERVICES
Operation of a restaurant; retail sale of beverages and food products; restaurant, cafe, cafeteria, snack bar, juice bar and juice house, carry out restaurant, and take out restaurant services; catering services; contract food services, namely food concession services, provision of food and beverages for restaurants, hotels and cafeterias; preparation and sale of carry out foods and beverages.

[3]  The opposition is primarily based on an allegation that the Mark is confusing with the registered trademarks Thirsty Buddha and HUNGRY BUDDHA in association with similar or related goods and services.

The Record

[4]  The application for the Mark was filed on April 1, 2015 on the basis of use and registration in the United States for goods (3) and on the basis of proposed use in Canada for the remaining goods and services.

[5]  The application was advertised for opposition purposes on September 28, 2016. Numerous amendments to the Trademarks Act, RSC 1985, c T-13 (the Act) came into force on June 17, 2019.  In the context of opposition proceedings, the date for identifying which version of the Act applies is the date on which the application being opposed was advertised.  As the application was advertised prior to June 17, 2019, pursuant to section 70 of the Act, the grounds of opposition will be assessed based on the Act as it read immediately before June 17, 2019, an exception being that, with respect to confusion, sections 6(2) to (4) of the Act as it currently reads will be applied.

[6]  On November 25, 2016, Temple Lifestyle Inc. opposed the application by filing a statement of opposition under section 38 of the Act. The grounds of opposition were based on sections 30(a), 30(b), 30(d), 30(e), 30(i), 12(1)(b), 12(1)(d), 16(2)(a), 16(2)(b), 16(3)(a), 16(3)(b) and 2 of the Act. 

[7]  On February 8, 2017, the Applicant requested an interlocutory ruling on the sufficiency of the pleadings, and then filed a counter statement on February 16, 2017, denying each of the grounds of opposition. 

[8]  On May 11, 2017, the Registrar issued an interlocutory ruling striking some of the grounds of opposition.  Subsequently, the Opponent requested leave to amend the statement of opposition to amend or remove the struck grounds and to voluntarily change the name of the opponent from Temple Lifestyle Inc. to that of the Opponent.  By way of an interlocutory ruling dated October 6, 2017, the Opponent was granted leave to amend the statement of opposition in part, such that the grounds of opposition based on sections 30(e), 30(i) and 12(1)(b) of the Act were deleted or struck.  The remaining grounds of opposition are addressed below. 

[9]  In support of its opposition, the Opponent filed certified copies.

[10]  In support of its application, the Applicant filed the affidavit of Horatio Lonsdale-Hands, sworn February 13, 2018 [the Affidavit].  Mr. Lonsdale-Hands was not cross-examined.

[11]  Only the Applicant submitted written representations; an oral hearing was not requested.

[12]  Before assessing the grounds of opposition, I will first provide an overview of the parties’ evidence, the evidential burden on the Opponent, and the legal onus on the Applicant.

Overview of the Opponent’s Evidence

[13]  The Opponent filed certified copies of the trademark registrations for Thirsty Buddha (TMA888,104) and HUNGRY BUDDHA (TMA923,392) (the Opponent’s Trademarks), particulars for which are set out in Schedule A to this decision.

[14]  The Opponent also filed a certified copy of the Confirmation of Change in Title issued by the Registrar on January 27, 2017 in respect of these registrations in favour of the Opponent.

Overview of the Applicant’s Evidence

[15]  The Affidavit provides an overview of the Applicant’s business and its use of the Mark worldwide and in Canada.  It can be summarized as follows:

·  Mr. Lonsdale-Hands is Chairman and CEO of the Applicant [para 1].

·  The Applicant is in the business of “producing organic, glass-bottled, GMO-free, pesticide-free, chemical free veggies and fruits juiced to perfection, other vegetable-based and almond-based foods and beverages, cleansing and detoxifying foods, retail services, restaurant services, catering services, contract food and beverage services, food and beverage preparation services, and carry out food and beverage services”.  The company provides its products through and “engages in services relating to” supermarkets, grocery delivery services, and membership clubs (including Costco) [para 3].

·  The Applicant has a registration for the Mark in the U.S., in association with “Fruit juices; herbal juices; vegetable juices” [para 6 and 7, Exhibit C].

·  Mr. Lonsdale-Hands asserts that the Applicant’s BUDA JUICE-branded products and services are available in Canada online and through retail locations [para 8, Exhibit D].

·  The Mark is displayed on signage and menus at locations where BUDA JUICE-branded products are sold, such as at Canadian supermarket chains [para 11, Exhibit E].

·  The Applicant has operated a Canadian website at www.budajuice.ca since April 14, 2016, which advertises BUDA JUICE products [para 12, Exhibits F and I].

·  Since November 2015, the Applicant has had a social media presence through which it advertises the BUDA JUICE brand [para 13, Exhibit G].

·  Sales of BUDA JUICE “products and services in Canada” have increased from over $129,000 in 2015 to over $336,000 in the fourth quarter of 2017 (primarily through sales at Longo’s and Whole Foods supermarket chains) [para 15].

·  Examples of Canadian advertising displaying the Mark is attached at Exhibit H to the Affidavit.

·  I note that the Applicant’s evidence relates primarily to the registered “beverage” and “juice” goods and the sale thereof online and through supermarket chains.  For example, the registered “soup” goods are not specifically referenced in the evidence, nor are most of the registered services, such as “operation of a restaurant”.

Evidential Burden and Legal Onus

[16]  Before considering the grounds of opposition, it is necessary to review the basic requirements with regard to (i) the evidential burden on an opponent to support the allegations in the statement of opposition and (ii) the legal onus on an applicant to prove its case.

[17]  With respect to (i), in accordance with the usual rules of evidence, there is an evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition [John Labatt Ltd v Molson Companies Ltd, 1990 CarswellNat 1053, 30 CPR (3d) 293 (FCTD) at para 11]. The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.

[18]  With respect to (ii), the legal onus is on the applicant to show that the application does not contravene the provisions of the Act as alleged by an opponent in the statement of opposition (for those allegations for which the opponent has met its evidential burden). The presence of a legal onus on an applicant means that, if a determinate conclusion cannot be reached once all the evidence has been considered, then the issue must be decided against the applicant.

Section 30 Grounds of Opposition - Application Requirements

[19]  As the Opponent made no representations and submitted no evidence in support of its grounds of opposition related to compliance with section 30 of the Act, the Opponent has not met its evidential burden with respect to such grounds.

[20]  Accordingly, the grounds of opposition based on sections 30(a), 30(b) and 30(d) are rejected.

Section 16 Grounds of Opposition – Non-Entitlement re: Opponent’s Trademarks

[21]  Similarly, as the Opponent submitted no evidence in support of its grounds of opposition related to non-entitlement, the Opponent has not met its evidential burden with respect to such grounds.  In this respect, the mere filing of certified copies of the Thirsty Buddha and HUNGRY BUDDHA registrations can establish no more than de minimis use of such trademarks [Entre Computer Centers, Inc v Global Upholstery Co (1992), 40 CPR (3d) 427 (TMOB)]. Such use does not meet the requirements of section 16 of the Act [Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) 265 (TMOB)].

[22]  Accordingly, the grounds of opposition based on sections 16(2)(a), 16(2)(b), 16(3)(a) and 16(3)(b) are rejected.

Section 2 Ground of Opposition – Non-Distinctiveness

[23]  The Opponent pleads that the Mark is not distinctive within the meaning of section 2 of the Act having regard to the Opponent’s Trademarks, used in association the same or similar goods and services. 

[24]  The material date for this ground of opposition is the filing date of the opposition, namely, November 25, 2016 [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185, 34 CPR (4th) 317 at para 25].

[25]  An opponent meets its evidentiary burden with respect to a non-distinctiveness ground if it shows that as of the filing of the opposition its trademark had become known to some extent at least to negate the distinctiveness of the applied-for mark [see Motel 6, Inc v No. 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD)]. As the Opponent has not filed any evidence demonstrating the extent to which the Opponent’s Trademarks have become known in Canada, the Opponent has not met its evidential burden with respect to this ground.

[26]  Accordingly, the ground of opposition based on non-distinctiveness is rejected.

Section 12(1)(d) – Confusing with a Registered Trademark

[27]  In its statement of opposition, the Opponent pleads that, pursuant to sections 38(2)(b) and 12(1)(d) of the Act, the Mark is not registrable because it is confusing with the Opponent’s Trademarks, namely registration Nos. TMA888,104 (Thirsty Buddha) and TMA923,392 (HUNGRY BUDDHA).  

[28]  I have exercised my discretion and have checked the Register to confirm that these registrations are extant [per Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. I note that these registrations are currently owned by Temple Lifestyle Brands Inc., pursuant to a further a change in title for both registrations recorded in 2019. However, an opponent is permitted to rely on the registration of another party for purposes of a section 12(1)(d) ground of opposition [see USV Pharmaceuticals of Canada Ltd v Sherman and Ulster Ltd (1974), 15 CPR (2d) 79 (TMOB)]. As such, these subsequent changes of title have no substantive impact on this proceeding and, for ease of reference, I will continue to refer to these registered marks relied upon by the Opponent as the Opponent’s Trademarks below.

[29]  The material date with respect to confusion with a registered trademark is the date of this decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd et al, 1991 CarswellNat 1119, 37 CPR (3d) 413 (FCA) at para 18].

[30]  As the Opponent has met its evidentiary burden in respect of this ground of opposition, the Applicant must establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Mark and one or both of the Opponent’s Trademarks.

[31]  I will begin my analysis by focusing on the Thirsty Buddha trademark and then comment briefly on the HUNGRY BUDDHA trademark.

Test to determine confusion

[32]  The test to determine the issue of confusion is set out in section 6(2) of the Act which provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

[33]  In making such an assessment, I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5) of the Act: the inherent distinctiveness of the trademarks and the extent to which they have become known; the length of time the trademarks have been in use; the nature of the goods, services or business; the nature of the trade; and the degree of resemblance between the trademarks in appearance, or sound or in the ideas suggested by them.

[34]  The criteria in section 6(5) of the Act 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, 1 SCR 772 at para 54]. In Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 (SCC), the Supreme Court of Canada stated that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis [at para 49] and that, while the first word in the mark may be the most important in some cases, the preferable approach is to first consider whether there is an aspect of the trademark that is particularly “striking or unique” [at para 66].  In view of its importance, I will begin my discussion by considering the degree of resemblance between the Mark and Thirsty Buddha, noting that the Applicant’s submissions generally address the Opponent’s Trademarks together.

Degree of Resemblance

[35]  In its written representations, the Applicant submits that the Mark has a low degree of resemblance with the Opponent’s Trademarks.  It notes that the first portion of each of the Opponent’s Trademarks is an adjective, “followed by the name of the deity Buddha” [para 36]. In contrast, the Applicant submits that the dominant portion of the Mark is the word BUDA, “which is not a defined word in an English dictionary … and it was the name of the former capital of the Kingdom of Hungary, but only up until 1873”, followed by the noun JUICE [para 37].  As such, the Applicant submits that the Mark differs in appearance and sound from the Opponent’s Trademarks.  With respect to the ideas suggested, the Applicant submits that the marks have a low degree of resemblance, if any, as the Opponent’s Trademarks “suggest the idea of a deity wanting or requiring sustenance”, whereas the Mark “suggests a place that no longer exists and a name for a type of food” [para 38].

[36]  As noted above, the Opponent made no representations.

[37]  Notwithstanding the Applicant’s submissions, I find that there is some resemblance between the Mark and Thirsty Buddha, at least in appearance and when sounded.  In this respect, while “Thirsty” is the first portion of the Opponent’s mark, I consider the second portion, “Buddha” to be the more striking aspect, especially in association with beverage-related goods and services.  Given that the striking portion of the Mark is clearly the first component, BUDA, this results in some resemblance when sounded.  Furthermore, although spelled differently, there is also some resemblance in the striking aspects of each mark in appearance.  This resemblance is diminished somewhat by the JUICE and “Thirsty” components, but nonetheless is relevant.

[38]  With respect to the ideas suggested, I find that both parties’ marks are broadly indicative of beverage products due to the JUICE and “Thirsty” components. Furthermore, it is not clear that consumers would distinguish between the ideas of the deity Buddha and the city of Buda, given that these components sound identical and there is no evidence regarding the extent that consumers are aware of the meanings of these words.

[39]  In any event, in particular with respect to appearance and when sounded, I consider the degree of resemblance to somewhat favour the Opponent. 

Inherent Distinctiveness and the Extent Known

[40]  In its written representations, the Applicant submits that the Mark has “gained recognition in Canada”, referencing Mr. Lonsdale-Hands assertions that the Mark has a “prominent market position in Canada” and that the Mark “is distinctive in Canada” [para 45, referencing the Affidavit at paras 9 and 10].  Indeed, while JUICE is descriptive, as BUDA has no clear or suggestive meaning in association with the applied-for goods and services, I accept that the Mark as a whole has some degree of inherent distinctiveness.  Furthermore, there is some evidence that the Mark has become known in Canada since April 2015 with respect to juice products through retail store sales [paras 11 and 15, Exhibits D and E], an online presence [paras 12, 13 and 17, Exhibits F, G and I] and general advertising otherwise [para 17, Exhibit I].

[41]  With respect to Thirsty Buddha, while the “Thirsty” element has a suggestive connotation in association with beverage-related products and services, I find that the mark as a whole has at least an equal level of inherent distinctiveness as the Mark.  However, there is no evidence before me as to the extent it has become known in Canada. 

[42]  As such, this factor nominally favours the Applicant.

Length of Time in Use

[43]  As noted above, there is some evidence of use of the Mark in Canada in association with juice products, whereas the Opponent merely filed a certified copy of the Thirsty Buddha registration.  Accordingly, this factor favours the Applicant.

Nature of the Goods, Services or Business / Nature of the Trade

[44]  In its written representations, the Applicant submits that “there is a low degree of similarity based on the goods and services listed in the Application and [the Opponent’s Trademarks]” [para 40] and that “the Mark and [the Opponent’s Trademarks] are used in different market niches” [para 44].  While it acknowledges that both the Mark and the Thirsty Budhha mark are used in association with “beverages”, the Applicant submits that “the goods that the THIRSTY BUDDHA Mark is used with in Canada are particularly in the specialty beverage market niche for coconut water and aloe vera water” whereas the goods that the Mark is used with in Canada “are not in the same market niche” [para 44].  In this respect, the Applicant highlights the Affidavit evidence regarding “the types of businesses and channels of trade wherein the Mark is used, including retail locations (as set out in Paragraph 8 and Exhibit “D”), grocery stores (as set out in Paragraph 15), public spaces (as set out in Paragraph 11 and Exhibit “E”), [and] online mediums (as set out in Paragraph 12 and Exhibit “F”).” 

[45]  When considering the nature of the goods and services of the parties in respect of the issue of confusion, it is the statements of goods and services in the subject application and registration(s) that govern [Mr Submarine Ltd v Amandista Investments Ltd, 1987 CarswellNat 749, 19 CPR (3d) 3 (FCA); Miss Universe Inc v Bohna (1994), 58 CPR (3d) 381 (FCA) at paras 24-25].

[46]  In this case, even if I were to accept that the Thirsty Buddha goods should be regarded as “niche” products, it is difficult to say that there is no overlap between, for example, the Opponent’s “Non alcoholic beverages, namely, … coconut water with other fruits” and the Applicant’s “Beverages, namely, fruit-based … non-alcoholic beverages”. 

[47]  Similarly, neither the application nor the evidence indicates any limit on the potential channels of trade for the Applicant’s goods and services.  As such, it is not clear how there would not be at least some overlap of the Opponent’s goods and services with the Applicant’s channels  of trade when the latter includes “retail locations”, “public spaces” and “online mediums”.

[48]  Accordingly, I find that these factors favour the Opponent, in particular with respect to the Applicant’s applied-for goods and services directly related to beverages.

Conclusion – Confusion with the registered trademark Thirsty Buddha

[49]  The test to be applied is a matter of first impression in the mind of a casual consumer “somewhat in a hurry” who sees the Mark in association with the applied-for goods or services at a time when they have no more than an imperfect recollection of the Opponent’s Thirsty Buddha trademark and does not pause to give the matter any detailed consideration or scrutiny [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 20].

[50]  As mentioned above, the degree of resemblance between the parties’ marks is the statutory factor that is often likely to have the greatest effect in deciding the issue of confusion.  This is particularly the case where the parties’ goods and the parties’ channels of trade are the same or overlapping [see Reynolds Consumer Products Inc v PRS Mediterranean Ltd, 2013 FCA 119, 111 CPR (4th) 155 at paras 26-30]. 

[51]  Having considered all of the surrounding circumstances, I find that the Applicant has not met its legal burden with respect to goods (1) and (3) as well as the “beverage” portions of goods (2).

[52]  On a balance of probabilities, I find that there is a reasonable likelihood of confusion between the Thirsty Buddha trademark and the Mark with respect to such beverage goods. I reach this conclusion due to the resemblance between the trademarks, especially in view of the overlap in the nature of the parties’ goods and the potential for overlap in their channels of trade, notwithstanding the absence of evidence of use of the Thirsty Buddha trademark. 

[53]  Similarly, given the resemblance of the marks, the Opponent’s registered “Manufacture, import and wholesale and distribution of beverages…”, and the potential for overlap with the applied-for services, I find that the Applicant has not met its legal burden with respect to the following services primarily related to the sale of beverages: retail sale of beverages; juice bar and juice house; provision of beverages (for restaurants, hotels and cafeterias); preparation and sale of beverages. 

[54]  At best for the Applicant, I find the balance of probabilities regarding the likelihood of confusion to be evenly balanced for such beverage-related services.  I reach this conclusion due to the resemblance between the trademarks, in view of the overlap in the nature of the parties’ services and the potential for overlap in their channels of trade, and notwithstanding the absence of evidence of use of the Thirsty Buddha trademark.  As the onus is on the Applicant to show, on a balance of probabilities, that there is no reasonable likelihood of confusion, I must find against the Applicant with respect to such services. 

[55]  In view of the foregoing, the section 12(1)(d) ground of opposition based on confusion with the registered trademark Thirsty Buddha is successful with respect to such beverage-related goods and services.

[56]  However, the differences in the nature of the remaining “soup” goods and the remaining services (that do not primarily involve the sale and distribution of particular types of beverages) shifts the balance of probabilities in the Applicant’s favour such that there is no reasonable likelihood of confusion based on the evidence before me.  In this respect, noting that the Thirsty Buddha goods and services are limited to certain types of beverages, I do not consider there to be overlap with the applied-for “soup” goods, notwithstanding that beverages, juices and soups may all be characterized as liquid consumables.  Similarly, I do not consider there to be overlap with the remaining applied-for services, as follows: operation of a restaurant; retail sale of food products; restaurant, cafe, cafeteria, snack bar, carry out restaurant, and take out restaurant services; catering services; contract food services, namely food concession services, provision of food for restaurants, hotels and cafeterias; preparation and sale of carry out foods.

[57]  In view of the foregoing, the section 12(1)(d) ground of opposition based on confusion with the registered trademark Thirsty Buddha is rejected with respect to such “soup” goods and the remaining services.

Conclusion – confusion with the registered trademark HUNGRY BUDDHA

[58]  With respect to the Opponent’s HUNGRY BUDDHA trademark, I note that its registration is limited to various types of snacks and coconut oil and does not include any services.  Given that my conclusion above turned on the nature of the goods and that the other factors otherwise largely remain the same, I find that the Applicant has met its legal burden with respect to the applied-for goods and services. 

[59]  Accordingly, the section 12(1)(d) ground of opposition based on confusion with the Opponent’s registered trademark HUNGRY BUDDHA is rejected.

Disposition

[60]  In view of all of the foregoing and pursuant to section 38(12) of the Act and the authority delegated to me under section 63(3) of the Act, I refuse the application with respect to the goods and services set out in strike out below, and reject the opposition with respect to the remaining goods and services:

GOODS
(1) Beverages, namely fruit-based, vegetable-based, herbal-based non-alcoholic beverages.

(2) Beverages, namely almond milk-based non-alcoholic beverages; Soups and preparations for making soups, namely fruit-based, vegetable-based soups and herbal-based soups; fruit-based preparations in the form of non-alcoholic beverages and soups for cleansing, energizing and detoxifying the body; vegetable-based preparations in the form of non-alcoholic beverages and soups for cleansing, energizing and detoxifying the body; Herbal-based preparations in the form of non-alcoholic beverages and soups for cleansing, energizing and detoxifying the body.

(3) Fruit juices; herbal juices; and vegetable juices.

SERVICES
Operation of a restaurant; retail sale of beverages and food products; restaurant, cafe, cafeteria, snack bar, juice bar and juice house, carry out restaurant, and take out restaurant services; catering services; contract food services, namely food concession services, provision of food and beverages for restaurants, hotels and cafeterias; preparation and sale of carry out foods and beverages.

Andrew Bene

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

 

Schedule A – Opponent’s Trademarks

 

Trademark	Reg. No. & Reg. Date	Goods and Services
Thirsty Buddha	TMA888,104 Oct 15, 2014	Goods Non alcoholic beverages, namely, coconut water, coconut water with pulp, coconut water with coffee, coconut water with other fruits, aloe vera juice, aloe vera juice with other fruits, almond water and coconut milk, excluding alcoholic beverages. Services Manufacture, import and wholesale and distribution of beverages, namely, coconut water, coconut water with pulp, coconut water with coffee, coconut water with other fruits, aloe vera juice, aloe vera juice with other fruits, almond water and coconut milk, excluding alcoholic beverages.
HUNGRY BUDDHA	TMA923,392 Dec 14, 2015	Goods Kale chips, seaweed snacks, healthy chips, namely, potato chips, corn chips, tortilla chips, coconut chips, coconut oil, excluding alcoholic beverages.

 

 

 

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: No hearing held

AGENTS OF RECORD

LDALEGAL Inc.	For the Opponent
Miller Thomson LLP	For the Applicant