Citation: 2021 TMOB 141

Date of Decision: 2021-06-30

IN THE MATTER OF AN OPPOSITION

	Saputo Produits Laitiers Canada S.E.N.C. / Saputo Dairy Products Canada G.P.	Opponent
	and
	A. Bosa & Co. Ltd.	Applicant
	1,729,326 for BLUE BRIE BLEU	Application

[1] A. Bosa & Co. Ltd. (the Applicant) has applied to register the trademark BLUE BRIE BLEU (the Mark) for use in association with cheese and cheese products.

[2] Saputo Produits Laitiers Canada S.E.N.C. / Saputo Dairy Products Canada G.P. (the Opponent) opposes registration of the Mark, based primarily on an allegation that it is confusing with the Opponent’s trademark BLEUBRY (the Opponent’s Trademark), used in association with a type of soft, surface-ripened, blue-veined cheese.

[3] For the reasons that follow, the opposition is rejected.

The record

[4] The application to register the Mark (the Application) was filed by the Applicant on May 21, 2015 and accorded serial number 1,729,326. It is based on proposed use of the Mark in Canada in association with the following goods:

Cheese and cheese products namely, cheese bread, cheese sticks, cheese muffins, quiche, breadsticks, crackers, flatbreads and confectioneries made of cheese namely cannoli, brownies, cakes, dessert bars, cookies, custards, cupcakes, loaf cakes, scones, tarts, pastries, pudding, confetti, candies, cantuccini, tea cookies, panettone. (the Goods)

[5] The Application was advertised in the Trademarks Journal on June 8, 2016, and opposed on July 14, 2016, when the Opponent filed a statement of opposition pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). The grounds of opposition plead noncompliance with two sections of the Act: 30(i) (contents of application) and 16(3)(a) (entitlement to registration). The Applicant filed a counter statement on August 29, 2016, denying both grounds of opposition.

[6] Numerous amendments to the Act came into force on June 17, 2019. Pursuant to the transitional provisions in section 70 of the Act for applications advertised before that date, the grounds of opposition will be assessed based on the Act as it read immediately before amendment, an exception being that the definition of confusion in sections 6(2) to (4) of the Act as it currently reads will be applied.

[7] The Opponent filed as its evidence the statutory declaration of its Vice-President of Business Development for fine and imported specialty cheeses, Pamela Nalewajek, dated January 25, 2017. Ms. Nalewjek explains how the Opponent’s Trademark has been used and promoted in Canada.

[8] The Applicant filed as its evidence three affidavits:

• The affidavit of its President, Bruno Benedet Jr., dated December 4, 2017.Mr. Benedet, who is also the president of the Applicant’s affiliate Italissima Foods Ltd., explains how the Mark was adopted and has been used in Canada in conjunction with the ITALISSIMA brand.
• The affidavit of Hélène Deslauriers, dated November 22, 2017. Ms. Deslauriers is a trademark analyst employed by the research firm CompuMark, a division of Clarivate Analytics. She searched various registers and databases for trademarks, trade names, and domain names containing the word BLUE or BLEU for use in association with food products and her affidavit provides the results of this research.
• The affidavit of Thomas James, dated August 22, 2017. Mr. James, a trademark research analyst employed by CompuMark, used the Google Internet search engine to look for use of the word BLUE or BLEU in association with food products and his affidavit provides the results of his research.

[9] None of the witnesses was cross-examined.

[10] Regarding Mr. James’ affidavit, I note that there appears to be a discrepancy in the jurat and in the endorsement of the sole exhibit: both are dated August 22, 2017, whereas the body of the affidavit describes a search conducted at a later date, November 22, 2017. The exhibited search results are undated; however, they appear to be taken from a larger report, the remainder of which is attached to Ms. Deslauriers’ affidavit, and this larger report confirms that the searches were completed November 22, 2017. As the Deslauriers and James affidavits both concern the same search report, are similarly worded, were sworn before the same commissioner, and were filed with the Registrar together on November 27, 2017, it seems likely that Mr. James’ affidavit was sworn on the same day as Ms. Deslauriers’, November 22, 2017, and that the reference to “August” instead of “November” in his affidavit is a typographical error. In the absence of any objection from the Opponent, I do not consider this technical deficiency to affect the validity of Mr. James’ affidavit. I would note, however, that disregarding the affidavit would not have affected my ultimate decision in this case, for the reasons set out below.

[11] Both parties filed written arguments and were represented at an oral hearing.

[12] Following the oral hearing, the Opponent corresponded with the Registrar in an attempt to provide further written representations in response to an issue raised at the hearing, concerning the need for an opponent relying on prior use of a descriptive trademark to show there has been some recognition of it as a trademark [for a discussion of this requirement, see Merrill Lynch & Co v Bank of Montreal (1996), 66 CPR (3d) 150 (FCTD)]. Since the written representations stage of the proceeding was already closed at the time the further representations were submitted, they do not form part of the record and will not be considered. I would note, however, that the proposed further representations essentially reiterate the Opponent’s submissions at the oral hearing, to the effect that its trademark has not been shown to be descriptive and would be recognized as a trademark by the public; the only new aspect is the Opponent’s citation of a previous decision of the Trademarks Opposition Board in support of its position. However, it is not necessary to refer to additional jurisprudence to find that the Opponent’s Trademark would be recognized by the public as a trademark—which is what I have found in this case, for the reasons set out in my analysis below.

Evidentiary burden and legal onus

[13] In an opposition proceeding, the legal onus is on the applicant to show that its application complies with the provisions of the Act. However, for each ground of opposition, 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 that ground of opposition exist. If this initial burden is met, then the applicant must satisfy the Registrar, on a balance of probabilities, that the ground of opposition should not prevent registration of the trademark at issue [Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD)].

Ground of opposition based on section 30(i)—Did the applicant properly state that it is satisfied it is entitled to use the mark?

[14] The Opponent pleads that the Application does not conform to the requirements of section 30(i) of the Act because the Applicant made a false statement that it is satisfied it is entitled to use the Mark in Canada in association with the Goods, having regard to what is alleged in the statement of opposition.

[15] The only other allegation in the statement of opposition is that that the Mark is confusing with the Opponent’s Trademark contrary to section 16(3)(a) of the Act. However, the existence of an allegedly confusing trademark would not in itself make the Applicant’s statement under section 30(i) false, because the Applicant may nevertheless be satisfied of its own entitlement to use the mark it seeks to register. In any event, a section 30(i) ground that merely reiterates the pleadings from the section 16 ground does not contain sufficient material facts to constitute a separate ground of opposition. Such duplicative grounds are improper [see Standard Products Inc v TRUMPF GmbH + Co. KG, 2015 TMOB 199].

[16] For these reasons, the section 30(i) ground of opposition is dismissed.

Ground of opposition based on section 16(3)(a)—Was the applicant entitled to register the mark?

[17] The Opponent pleads that the Applicant is not the person entitled to registration of the Mark under section 16(3)(a) of the Act because, at the Application’s filing date and at all material times, the Mark was confusing with the Opponent’s Trademark, used by the Opponent or its predecessors in title in Canada in association with cheeses since at least as early as 1998.

The Opponent’s evidential burden

[18] To meet its initial burden, the Opponent must evidence use of its trademark prior to the Application’s filing date, May 21, 2015, in accordance with section 16(3)(a) of the Act, and also that its trademark had not been abandoned at the date of advertisement of the Application, June 8, 2016, as stipulated in section 16(5) of the Act.

[19] In the case of a trademark which is not inherently adapted to distinguish, such as one consisting of descriptive or laudatory words, an opponent must also establish that there has been some recognition of the mark as a trademark, i.e. that it has actually functioned as such [Merrill Lynch, supra at para 35].

[20] To meet its initial burden, the Opponent relies on the statutory declaration of Ms. Nalewjek. She explains that the Opponent develops, produces, markets and distributes a broad range of dairy products, including a soft, surface-ripened, blue-veined cheese, for which the Opponent’s Trademark was developed [paras 56]. Ms. Nalewjek states that the Opponent, itself or through its predecessors in title, has marketed this cheese under the Opponent’s Trademark since “1988” [para 7]. In support, she attaches the following exhibits to her declaration:

• A table showing the Opponent’s annual sales of BLEUBRY cheese to retailers in Canada for fiscal years 2003 to 2017 [Exhibit PN1].
• The following representative sampling of invoices showing sales of BLEUBRY cheese to resellers throughout Canada [Exhibit PN2]:

• o A 1998 invoice and related documents addressed from Cayer to a specialty foods store in Alberta.

• o Dozens of invoices from 2011 to 2017, addressed from the Opponent to various grocery and food stores throughout Canada.

• o A serif font with initial capital (the Printed Logo). The trademark is displayed beneath a drawing of a shield on clusters of dark round berries (the images are too dark to make out the type of berry). The packages are co-branded with a CAYER logo and one of the packages also bears the notation “SAPUTO Cheese Division Fromage (Canada)”. The relevance of this co-branding will be discussed below.

• o A cursive lettering style with initial capital (the Cursive Logo). The trademark is displayed with a crest against a shield-shaped background. The depicted packages are co-branded either with an ALEXIS DE PORTNEUF logo (containing the name La Fromagerie Alexis de Portneuf Fine Cheese Makers) or with the name SAINT-HONORÉ. Close-ups of two package undersides display best before dates in 2014 and 2016 respectively.

• o A specification sheet from 2003, which bears the notices “Saputo Cheese Division (Canada)”, “SAPUTO cheese Limited”, and “SAPUTO Foods Limited”.

• o Artwork for a 2010 shelf talker co-branded with the ALEXIS DE PORTNEUF logo; the design information identifies the client as “Saputo”.

• o A promotional sheet referencing awards received up to 201415, co-branded with the ALEXIS DE PORTNEUF logo and bearing the notation “Saputo specialty cheese group dairy products division (canada)”.

• o From two competitions held in 2004, certificates given to “Saputo” and “Saputo inc.” respectively.

• o From competitions held in 2008 and 2009, awards given to “La Fromagerie Alexis de Portneuf” and “La Maison Alexis de Portneuf inc.” respectively.

• Photographs showing a sampling of the packaging materials the Opponent used to market its BLEUBRY cheese in Canada [Exhibit PN3]. The Opponent’s Trademark is displayed on each depicted package in one of two forms:

• A sampling of sheets containing label artwork and design information, dated from 2009 to 2015 [Exhibit PN3]. The label designs feature the Cursive Logo and generally resemble those on the packages depicted in the exhibit. On the sheets that identify the client for the project, the client is listed as “Saputo” or “Saputo Inc.”
• A sampling of promotional materials—some featuring the Printed Logo and some featuring the Cursive Logo—which the Opponent used to market its BLEUBRY cheese in Canada [Exhibit PN4]. Although display of a trademark on advertising does not constitute use in association with goods (see section 4 of the Act), the following materials are relevant to the extent that they provide information on the source of the product:

• Images of the following certificates and trophies awarded to BLEUBRY cheese in Canadian competitions [Exhibit PN4]:

[21] At the oral hearing, the Applicant noted that the Exhibit PN1 sales figure column for fiscal 2017 specifies a date range ending on April 1, 2017, which is after the swearing of the affidavit on January, 2017. However, I do not interpret this to be a discrepancy. In my view, it is reasonable to interpret the date range as defining the fiscal year and the sales figure as representing sales up to the date of the affidavit. Moreover, Ms. Nalewjek specifies that, for reasons of confidentiality, the sales figures in the table represent only minima [para 8].

[22] The Applicant also argues that the references to Cayer, Alexis de Portneuf, and Saint-Honoré on the exhibited packaging and promotional materials suggest that the Opponent’s Trademark is not owned exclusively by the Owner.

[23] However, I do not consider such cobranding to detract from Ms. Nalewjek’s explicit statement that the Opponent marketed BLEUBRY cheese either itself or through its predecessors in title. The evidence of product labels being ordered or commissioned by “Saputo” appears consistent with this statement and, indeed, the exhibited invoices from 2011 onward show sales by the Opponent. Referencing Alexis de Portneuf on the labels as the cheesemaker is not necessarily inconsistent with use by the Opponent, given that Alexis de Portneuf could be one of the Opponent’s trade names, as was argued during the oral hearing. As for Cayer being referenced on labels and issuing the 1998 invoice, there is no reason to doubt that Cayer is either an earlier trade name or one of the Opponent’s predecessors in title, as suggested by Ms. Nalewjek’s statement that the Opponent marketed BLEUBRY cheese either by itself or through its predecessors in title. In any event, reliance on the materials referencing Cayer is not necessary for the Opponent to meet its evidential burden.

[24] If the Applicant had concerns that Alexis de Portneuf (or Cayer) may be a separate entity with competing claims to ownership of the Opponent’s Trademark or that the evidence otherwise casts doubt on which entity was using the trademark, then it was open to the Applicant to cross-examine Ms. Nalewjek to address any such concerns. The Applicant chose not to do so. In the circumstances, I am not prepared to discount Ms. Nalewjek’s sworn statement on the basis of the Applicant’s unsupported allegations.

[25] Regarding SAINT-HONORÉ, the artwork for the label displaying that brand makes it clear that the corresponding package contains two different types of cheese: a round of BLEUBRY soft, surface-ripened, blue-veined cheese and a round of SAINT-HONORÉ triple cream brie cheese. Thus the SAINT-HONORÉ brand does not apply to the cheese sold under the Opponent’s Trademark.

[26] In view of the foregoing, I see no basis on which to disregard Ms. Nalewjek’s evidence of use of the Opponent’s Trademark.

[27] Although I find that the Opponent’s Trademark may be considered descriptive when sounded—as will be discussed in more detail below—it is presented on packages and labels as a coined compound word with fanciful spelling in a size and style that stands out from the rest of the text. As such, I am satisfied that it would be recognized by the average consumer as a trademark, used for the purpose of distinguishing the Opponent’s goods from the goods of others [per the definition of a trademark in section 2 of the Act]. Given that I also accept the Opponent’s evidence of sales of BLEUBRY cheese since prior to 2015 and that such sales continued to 2017, I am satisfied that the Opponent has met its initial burden. Accordingly, the onus is now on the Applicant to satisfy the Registrar, on a balance of probabilities, that the Mark is not likely to cause confusion with the Opponent’s Trademark.

The test for confusion

[28] 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 (an international classification of goods and services for trademark registrations) [section 6(2) of the Act].

[29] This test does not concern confusion of the trademarks themselves, but rather confusion as to whether the goods and services associated with each of the trademarks come from the same source. It is to be applied as a matter of first impression in the mind of a casual consumer somewhat in a hurry, who sees the applicant’s mark at a time when he or she has no more than an imperfect recollection of the opponent’s trademark and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 20].

[30] In applying the test for confusion, regard must be had to all the surrounding circumstances, including those set out in section 6(5) of the Act: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time the trademarks 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 trademarks in appearance or sound or in the ideas suggested by them. These criteria are not exhaustive and the weight given to each will vary in a context-specific analysis [see Veuve Clicquot, supra; Mattel USA Inc v 3894207 Canada Inc, 2006 SCC 22; Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27].

Degree of resemblance between the trademarks

[31] As indicated by the Supreme Court of Canada in Masterpiece, the degree of resemblance between the trademarks is generally the most important factor in assessing the likelihood of confusion. It is not the proper approach to set the trademarks side by side and carefully examine them to find similarities and differences; rather, each trademark must be considered as a whole and assessed for its effect on the average consumer [see Veuve Clicquot, supra; and Masterpiece, supra]. However, it is still possible to focus on particular features of each trademark that may have a determinative influence on the public’s perception of it [United Artists Pictures Inc v Pink Panther Beauty Corp (1998), 80 CPR (3d) 247 (FCA)]. The preferable approach is to begin by determining whether there is an aspect of each trademark that is “particularly striking or unique” [Masterpiece, supra, at para 64].

[32] In the present case, I consider the most striking and unique aspect of the Opponent’s Trademark to be the fact that it is a fusion of the French word for “blue” with the phonetic equivalent of the bilingual word “brie” to create a single word somewhat resembling the English word “blueberry”. The dominant impression created by the trademark is that of a coined word derived from a description of the associated product.

[33] I find the most striking aspect of the Mark to be that it is a truncated combination of the English descriptive phrase “blue brie” and the French equivalent “brie bleu”, to form an alliterative, monosyllabic, nearly symmetrical triplet. The dominant impression created by the Mark is that of equivalent English and French product descriptions being presented with the space-saving technique of sandwiching their common element (for unrelated examples of this overlap technique, see the Opponent’s specification sheet with the product description “FROMAGE Bleubry CHEESE” and the certificate titled “canadian cheese GRAND PRIX des fromages canadiens” [Nalewjek declaration, Exhibit PN4 at pages 8 and 5]).

[34] There is a significant degree of conceptual resemblance between the two trademarks to the extent that they both describe a particular style of blue cheese: a blue brie. They also both have a bilingual quality. However, there are also conceptual differences in that the Opponent’s Trademark is presented as a single word with fanciful spelling whereas the Mark is a triplet of ordinary dictionary words. The overall impression created by each trademark differs in that the Opponent’s Trademark creates the impression of a coined word somewhat resembling the word “blueberry” whereas the Mark creates the impression of an alliterating standard product description.

[35] The foregoing differences in presentation also result in there being significant visual differences between the marks. Moreover, phonetically, the Mark is longer and features a degree of symmetry that the Opponent’s Trademark lacks.

[36] I note that, phonetically, the first two thirds of the Mark strongly resemble the Opponent’s Trademark. The first portion of a trademark is generally considered to be more important for the purpose of distinction [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD)]. However, when a portion of a trademark is a common descriptive or suggestive word, its importance diminishes [see Merial LLC v Novartis Animal Health Canada Inc. (2001), 11 CPR (4th) 191 (FCTD)]. Thus, in the present case, there would be a tendency to discount the importance of the phonetic and conceptual similarity between the Opponent’s Trademark and the first portion of the Mark to the extent that the phrase “blue brie” describes a blue cheese made in the style of a brie. The tendency would be to rely instead on the other, non-descriptive features of the marks to distinguish them. Thus, in my view, the focus would be more on the manner in which the “blue brie” concept is presented, i.e. as a single word resembling “blueberry” in the case of the Opponent’s Trademark or as an alliterating monosyllabic triplet in the case of the Mark.

[37] In its written argument, the Opponent submits that, “phonetically, one can argue that the Applicant has appropriated the Opponent’s mark in its entirety” and that the Applicant has “simply exchanged ‘BLEU’ for ‘BLUE’, added the term ‘BLEU’ as a suffix and slightly modified the spelling of ‘BRY’ ” [para 58]. In the Opponent’s submission, it would be a mistake to consider these modifications “in isolation” as creating a significant difference between the marks [para 59]. However, the Opponent’s submissions appear to involve a side-by-side comparison of the type warned against by the courts. Although I agree with the Opponent that it is not a correct approach to focus on small spelling variations in isolation, the present case is one in which a number of visual, aural, and conceptual features act in concert, with the result that the overall impression created by each trademark is different.

[38] I would also note that, in my view, considering the question of resemblance from the perspective of a unilingual as opposed to bilingual consumer would not significantly alter the analysis. From an anglophone perspective, I do not consider the difference in spelling and pronunciation between “bleu” and “blue” (if noticed) or between “bry” and “brie” to be so great that BLEUBRY would not suggest the idea of a “blue brie” to a unilingual anglophone consumer of cheese. Likewise, I do not consider that the inversion and misspelling of the words in the French phrase “brie bleu” would obscure their meaning to a unilingual francophone consumer encountering the coined word BLEUBRY in association with cheese.

[39] As regards the Mark, although a unilingual consumer may not perceive three ordinary dictionary words or a bilingual product description, I consider it likely that the word BLEU would be perceived as a variation of BLUE and vice versa. Thus the Mark would still convey the idea of the word BRIE sandwiched between variations of the word BLUE or BLEU.

[40] In sum, as the points of similarity between the parties’ trademarks are in their descriptive aspects, I consider the more striking presentation features to be more likely to have a determinative influence on the public’s perception of each trademark, as a matter of first impression and imperfect recollection. On balance, although it is a close case, I find that the degree of resemblance factor favours the Applicant.

Inherent distinctiveness of the trademarks and the extent to which they have become known

[41] It is well established that trademarks comprised of descriptive or suggestive words have little inherent distinctiveness [see Prince Edward Island Mutual Insurance Co v Insurance Co of Prince Edward Island (1999), 86 CPR (3d) 342 (FCTD); Kellogg Canada Inc v Weetabix of Canada Ltd, 2002 FCT 724].

[42] The Opponent’s Trademark is made up of (i) the ordinary French dictionary word BLEU, which closely resembles its English equivalent BLUE, followed immediately by (ii) the suffix BRY, which is the phonetic equivalent of the ordinary word BRIE, a term that in both French and English denotes a type of soft, surface-ripened cheese. As such, the Opponent’s Trademark as a whole is highly suggestive if not descriptive of blue-veined, brie-style cheese. Moreover, as discussed above, I do not consider the difference between “blue” and “bleu” to significantly alter the impression created by the Opponent’s Trademark on a unilingual anglophone consumer; nor do I consider the difference between “brie bleu” and “bleu brie” (the phonetic equivalent of “BLEUBRY”) to obscure the descriptive connotation of the Opponent’s Trademark for a unilingual francophone consumer.

[43] The Mark is similarly descriptive of blue-veined, brie-style cheese, given that it contains both the English phrase BLUE BRIE and the French phrase BRIE BLEU. I do not consider the addition of BLEU following the English phrase or the addition of BLUE before the French phrase to detract significantly from the Mark’s descriptive character. I also find the Mark to be descriptive of the Applicant’s other cheese products in that it describes products made with and/or flavoured like blue-veined brie cheese.

[44] However, the Opponent’s Trademark is presented as a coined word and features non-traditional spelling. Conversely, although the features of alliteration and symmetry lend some interest to the Mark, it is comprised solely of ordinary dictionary words spelled in their usual manner. I find that this difference raises the level of inherent distinctiveness of the Opponent’s Trademark slightly above that of the Mark.

[45] The degree of distinctiveness of a trademark can be enhanced through use and promotion in Canada [see Sarah Coventry Inc v Abrahamian (1984), 1 CPR (3d) 238 (FCTD); GSW Ltd v Great West Steel Industries Ltd (1975), 22 CPR (2d) 154 (FCTD)]. The Opponent’s evidence in this respect includes the following particulars from Ms. Nalewjek’s declaration:

• The table of sales figures at Exhibit PN1, which shows that BLEUBRY products were sold to retailers in every province (but primarily in Quebec) over the course of the fiscal years 2003 to 2017, with total Canadian sales ranging from $200,000 to almost $500,000 every year from fiscal 2004 onward.
• The sampling of promotional material the Opponent used to market its BLEUBRY products in Canada [Exhibit PN4]. However, Ms. Nalewjek does not specify where, when, to whom, or to what extent the materials were distributed. At best, the following materials suggest that there was likely at least some promotion of the Opponent’s Trademark in association with BLEUBRY cheese between 2003 and 2015:
• a recipe sheet referencing an award received in 2004;
• artwork for a shelf talker with a creation date in 2010;
• a Fall 2013 magazine-style booklet showing BLEUBRY cheese in an article on cheese platters; and
• various product specification pages, ranging from a set dated November 2003 to a specimen referencing awards won in 2009, 2010, and 201415.
• The images of certificates and trophies awarded to BLEUBRY cheese in the 2004 Canadian Cheese Grand Prix competition and in the 2004, 2008, and 2009 Selection Caseus Quebec specialty cheese competitions [Exhibit PN4].
• Ms. Nalewjek’s statement that the Opponent’s advertising budget for specialty cheeses was in the order of $80,000 in 2002 and $1 million in 2017 [para 11]. However, as she does not specify what portion of the budget was for BLEUBRY products in particular, or what the size of the advertising budget was in the years immediately leading up to the relevant date, the advertising budget figures are not particularly probative.

[46] The Applicant provides some evidence of use as well: Mr. Benedet states that the Applicant has sold Goods under the Mark to the general public in Canada and, in support, he provides artwork with design information for three cheese labels [paras 78, Exhibit C]. However, Mr. Benedet does not specify when such use of the Mark took place and, presumably, it would not have been before filing the Application based on proposed use. Although the design information for two of the labels shows a revision date in 2008, Mr. Benedet attests that the Mark was adopted “on or about May 2015” [para 3].

[47] In view of the foregoing, I find that the Opponent’s Trademark had become known to at least a limited extent throughout Canada by the material date, and to a moderate extent in Quebec, whereas the evidence does not lead to a conclusion of the Mark being known in Canada to any extent.

[48] Overall, this factor weighs slightly in favour of the Opponent.

Length of time the trademarks have been in use

[49] Although Ms. Nalewjek states that the Opponent, itself or through its predecessors in title, has marketed cheese under the Opponent’s Trademark since 1988, there are no particulars regarding sales from that era (indeed, the statement of opposition pleads use only since 1998). Furthermore, only the single 1998 invoice is presented as evidence of sales prior to 2003. Nevertheless, the evidence demonstrates continual use and promotion of the Opponent’s Trademark since 2003, whereas the Application is based on proposed use and, indeed, there is no evidence of the Mark’s use prior to filing. Accordingly, this factor favours the Opponent.

Nature of the parties’ goods

[50] Under a section 16(3)(a) ground of opposition, it is the statement of goods as defined in the applicant’s application versus the goods for which the opponent has shown actual use that governs the analysis of the sections 6(5)(c) and (d) factors. Where it is likely to be assumed that the applicant’s goods either come from the opponent or are approved, licensed, or sponsored by the opponent, it follows that the trademarks are confusing [see Glen-Warren Productions Ltd v Gertex Hosiery Ltd (1990), 29 CPR (3d) 7 (FCTD)].

[51] In the present case, the Goods comprise cheese and various cheese products (for example, cheese bread, quiche, and confectioneries). I note that the sample label artwork attached to Mr. Benedet’s affidavit is for a 300 g round, a 500 g block, and 1 kg wedge of “Soft Ripened Blue-veined Cheese”, with the added description “Double Cream” [Exhibit C].

[52] Similarly, the Opponent’s Trademark is shown to have been used in association with cheese characterized on the product labels as soft, surface-ripened, and blue-veined, sold as both rounds and blocks in package sizes ranging from 200 gram to 1.5 kilograms [Exhibits PN2 and PN3]. Moreover, images of the product in promotional materials show that it resembles a brie cheese but with blue veins, and product descriptions in such materials characterize it variously as “[a] smooth version of the blue cheeses”; “product of the marriage between soft and blue cheeses”; “[a]n innovative product in the blue cheese category”; “[t]this soft, creamy, surface-ripened cheese is rich with blue veins”; and “an adaptation of the French Bleu de Bresse Cheese” [Exhibit PN4]. I would also note that the exhibited certificates and awards place the Opponent’s cheese in one of two categories: blue cheese (“Fromage bleu”) or soft cow’s milk cheese (“Fromage de lait de vache, à pâte molle”) [Exhibit PN4].

[53] Thus it appears that the nature of the parties’ goods (i) is the same as regards the Applicant’s cheese and (ii) would be closely related as regards the Applicant’s cheese products, in that a cheese product bearing a cheese brand might feature, or at least be made with, that brand of cheese.

[54] Therefore, the nature of the parties’ goods is a factor favouring the Opponent.

Nature of the parties’ trades

[55] The statement of goods must be assessed having regard to the channels of trade that would normally be associated with such goods [see Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); and Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export (1986), 12 CPR (3d) 110 (FCA)]. The statement must be read with a view to determining the probable type of business or trade intended, rather than all possible trades that might be encompassed by the wording; evidence of the applicant’s actual trade is useful in this respect [see McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd, 1999 CarswellNat 3465 (TMOB)].

[56] Mr. Benedet explains that the Applicant is the owner and operator of the sole proprietorship “Bosa Foods”, which operates a grocery store under that name in Vancouver, British Columbia, and that the Applicant is also affiliated with the company Italissima Foods Ltd. [para 7]. He states that the Applicant sells Goods under the Mark to the general public in Canada “under an implied licence with the ITALISSIMA brand” [para 7]. Indeed, the cheese label artwork attached to his affidavit features both the Mark and an ITALISSIMA trademark [Exhibit C]. As noted above, the Application also covers other cheese products, but there is no indication that their trade channels or branding would be any different.

[57] As for the Opponent’s BLEUBRY cheese, Ms. Nalewjek states that it is sold through retailers and resellers [paras 89]. The invoices attached to her declaration show sales to various grocery and food stores [Exhibit PN2].

[58] It is not clear from Mr. Benedet’s affidavit whether the Goods are sold outside the Applicant’s own Bosa Foods store. Regardless, the statement of goods in the Application does not restrict the Goods to this single channel. Given the similarity between the parties’ respective goods, and in the absence of evidence to the contrary, I find that the channels of trade for such goods would normally be the same or similar and that there is considerable potential for overlap should the Applicant choose to market its products outside its own grocery store.

[59] Therefore, the nature of the parties’ trades also favours the Opponent.

Additional surrounding circumstances

[60] In its written argument and at the oral hearing, the Applicant raised several additional surrounding circumstances, as follows.

Scope of protection afforded to trademarks containing descriptive terms

[61] It is well established that trademarks comprised of descriptive or suggestive words are only entitled to a narrow ambit of protection [Prince Edward Island, supra; Kellogg Canada, supra]. A greater degree of discrimination may fairly be expected from the public where a trademark consists wholly or in part of words describing the articles to be sold, such that even relatively small differences may suffice to avert confusion [General Motors Corp v Bellows, [1949] SCR 678, citing Office Cleaning Services Ltd v Westminster Window & General Cleaners, Ltd (1946), 63 RPC 39 at 41 (HL)].

[62] At the oral hearing, the Applicant submitted that finding a likelihood of confusion in the present case would grant the Opponent’s Trademark a greater ambit of protection than is warranted for a compound word formed by a misspelling of two descriptive words. In the Applicant’s submission, greater evidence of recognition in the marketplace would be required to establish common law rights in such a highly suggestive and possibly descriptive trademark.

[63] However, the Opponent submits that the evidence does not establish that “blue brie” or even “blue-veined brie cheese” is a common description. In the Opponent’s submission, a finding that its trademark is descriptive would involve a logical leap that goes beyond merely applying common sense to the question in the manner prescribed by the Federal Court [see Neptune SA v Attorney General of Canada, 2003 FCT 715, wherein it was held that the Registrar’s assessment of whether a trademark is clearly descriptive must not only consider the evidence but also apply common sense].

[64] Regardless of whether the precise description “blue brie” is a common one, I agree with the Applicant that the Opponent’s Trademark when sounded is highly suggestive if not descriptive of the associated product, namely a blue-veined, brie-style cheese.

[65] In Neptune, the Federal Court held that, while dictionaries may be useful to discover the sense of a word, an invented word is not barred from being clearly descriptive. Although that case dealt with the assessment of clear descriptiveness under section 12(1)(b) of the Act, I consider the same principles to apply when assessing descriptiveness to determine a trademark’s ambit of protection in the context of a confusion analysis. Accordingly, I note the definition of “Brie” as “a kind of soft cheese” in the excerpt from the Oxford Encyclopedic English Dictionary (New York: Oxford University Press, 1996) attached as Exhibit A to Mr. Benedet’s affidavit. In addition, although no further definitions were cited by either party, I note the following more detailed definitions in the Concise Canadian Oxford Dictionary (Toronto: Oxford University Press, 2005) [see Tradall SA v Devil’s Martini Inc, 2011 TMOB 645, re the Registrar’s discretion to take judicial notice of dictionary definitions]:

blue cheese: any of several strong cheeses produced with veins of blue mould, e.g. Gorgonzola or roquefort.

brie: a kind of ripened soft cheese with a white mould skin. [Brie, a former province in N France]

[66] I also note that the packaging for the twin pack of SAINT-HONORÉ and BLEUBRY cheeses depicted at Exhibit PN3 to Ms. Nalewjek’s declaration describes the BLUEBRY cheese as “SOFT, SURFACE-RIPENED, BLUE-VEINED CHEESE” and the SAINT-HONORÉ cheese as “TRIPLE CREAM BRIE CHEESE” (my emphasis). Equivalent descriptions are displayed in French: “FROMAGE À PÂTE MOLLE AFFINÉ EN SURFACE, PERSILLÉ DE BLEU” and “FROMAGE BRIE TRIPLE CRÈME” (my emphasis). Moreover, in the sample advertising at Exhibit PN4, terms such as “marriage between soft and blue cheeses” (or in French, “mariage entre pâte molle et semences de bleus” and “adaptation of the French Bleu de Bresse Cheese” are used. Thus it appears that the Opponent itself uses the terms “blue-”, “Bleu”, and “brie” in a descriptive sense in labelling and promoting its cheeses.

[67] On the basis of this evidence and applying common sense, I find that an average consumer would perceive the Opponent’s Trademark as a whole to be highly suggestive if not descriptive of a blue-veined, brie-style cheese. I find there to be only a slight increase in distinctiveness resulting from (i) the misspelling of “brie” as “bry”; (ii) the spelling of “blue” as “bleu” (or, from a francophone perspective, the inversion of the description “brie bleu”); and (iii) the presentation of this two-word description as a single word—the description of a blue-veined, brie-style cheese is still readily conveyed.

[68] Furthermore, I find that the evidenced use and promotion of the Opponent’s Trademark is not so extensive as to significantly increase its scope of protection. Although the evidence of use is sufficient to meet the Opponent’s evidential burden, the evidence of use and promotion does not rise to the level of demonstrating that the Opponent’s Trademark had become known to any great extent at the material date

[69] In view of the foregoing, I find that the Opponent’s Trademark is not entitled to a particularly wide ambit of protection, and that relatively small differences may suffice to avert confusion. Accordingly, this factor favours the Applicant.

State of the register and state of the marketplace

[70] The Applicant also furnished evidence on the state of the register and the state of the marketplace in an effort to establish that trademarks including the word “BLUE” or “BLEU” are common in the food trade. The common occurrence of a certain element tends to cause purchasers to pay more attention to the other features of the trademarks and to distinguish between them by those other features [see Polo Ralph Lauren Corp v United States Polo Assn (2000), 9 CPR (4th) 51 (FCA); and Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)]. However, I find that the furnished evidence is insufficient to allow any meaningful inferences to be made regarding consumer perceptions.

[71] The Applicant’s evidence is derived from various searches requested through its trademark agent and is presented through the affidavits of Mr. Benedet, Ms. Deslauriers, and Mr. James.

[72] Mr. Benedet’s affidavit contains results from a May 6, 2015 search in the NUANS Name Search System in Nice classes 29 (meats and processed foods), 30 (staple foods), 31 (fresh foods), and 32 (beer and non-alcoholic beverages) [Exhibit B]. The search returned only the following four trademarks containing the word BLUE or BLEU or a phonetic equivalent registered in association with cheese goods:

Mark	Registration Number	Owner
BLUEDINO	TMA592612	Lidl Stiftung & Co. KG
MIDNIGHT BLUE	TMA543128	Valio Ltd.
ROSENBORG & BELLABLU	TMA671968	Arla Foods Amba
DANABLU	TMA685051	not indicated

[73] Ms. Deslauriers’s affidavit contains the results of three searches she conducted online on November 22, 2017, for the word BLUE or BLEU in Nice classes 29 and 30 [Exhibit HD1]:

• A search of the Canadian Trademarks Register. The Applicant’s written argument draws attention to the following 10 hits for marks registered prior to the material date in association with cheese goods:

Mark	Registration Number	Owner
BLEU VILLE	TMA599391	Lidl Stiftung & Co. KG
BLUE BUNNY	TMA443503	Wells Enterprises, Inc.
LE BLEU FOLLET et dessin	TMA886525	Fromagerie l’Oiseau Bleu Inc.
FLEUR DE BLEU	TMA615328	Savencia SA
CORDON BLEU	UCA015209	Cordon Bleu International Ltée
CORDON BLEU Design	TMA239600
CORDON BLEU Design	TMA199966
BRESSE BLEU	TMA299592	Bressor Alliance, société anonyme
BRESSE BLEU; Dessin	TMA300128
BRESSE BLEU (& Dessin)	TMA659694
BLEU DE CAMPAGNE	TMA619060
BLANC BLEU	TMA902879	9023-1952 Québec Inc. d/b/a Les Dépendances
GRIS-BLEU	TMA714777
GEAI BLEU	TMA581473
L’AMI BLEU	TMA715189

• A search for trade names in selected “Canadian Common Law sources” and Canadian official business name registers. The Applicant does not draw attention to any of the hits; however, I note the following entities whose “Company Name” or “Line of Business” field includes a reference to cheese:

Company Name (Secondary Company Name)	Creation Date	Line of Business	Annual Sales ($)
Blue Harbour Cheese	2013	Cheese, natural and processed	not indicated
Fromagerie Ruban Bleu Inc	2005	Sheep and goats	65,665
Les Fromages Latino Inc. (Fromagerie l’Oiseau Bleu)	2004	Diary products, except dried or canned	277,200

• A search for domain names via CompuMark’s database, with printouts of the corresponding homepages. Many domain names containing the word BLUE or BLEU were located, but none of the corresponding websites are shown to relate to cheese goods. (The particulars for lebleu.shop include a “Description” field that reads, “Welcome to lebleu.shop. The leading site on the web for Food – Cheese”; however, the printout from the corresponding website indicates that the domain is for sale.)

[74] Mr. James’ affidavit contains the results of a search he conducted using the Google Internet search engine on November 22, 2017, in Nice Classes 29 and 30 [Exhibit TJ1]. The search results contain printouts or extracts of the webpages located wherein the word BLUE or BLEU either figures in the webpage title or forms part of a trademark or trade name featured on the webpage. The results include the following:

• A webpage for cheeses including “Bleu bénédictin”, “Bleu extra-fort”, and “Bleu fumé”.
• A Canadian webpage selling “daiya” brand “Blue Cheeze Dairy-Free Dressing”.
• Listings from a website on Quebec food products for a “Fauxmage Bleu” nut-based cheese substitute, as well as a “Bleu d’Élizabeth” sausage and a “Beurre bleu et porto” product, advertising where to purchase each product.
• A .ca “Cordon Bleu” webpage that is under construction (as well as a .ca webpage for “Pantry Cordon Bleu” sauce).
• Over a dozen webpages relating to food products and services, some of which are advertised as being available in Canada; however, none of the references to goods or services mentions cheese.

[75] The Federal Court has ruled that, unless a large number of trademarks is identified in the state of the register evidence, use of the trademarks cited must be established [see Maximum Nutrition, supra; McDowell v Laverana GmbH & Co. KG, 2017 FC 327; and Canada Bread Company, Limited v Dr. Smood APS, 2019 FC 306]. Where a large number of registered trademarks is identified, the Registrar can infer that the element they all have in common is used in the marketplace; where the number of trademarks identified is not large, evidence of such use needs to be furnished.

[76] The Applicant seeks to draw an analogy between the present case and that in Assurant, Inc v Assurancia Inc, 2018 FC 121, wherein it was held that small differences sufficed to distinguish between the parties’ trademarks, ASSURANT and ASSURANCIA, both for use in association with insurance services, because the shared element “ASSURAN” was highly suggestive and commonly used in the insurance industry. In that case, searches revealed 69 marks containing “ASSUR” in association with insurance as well as 130 brokers and 37 insurers using “ASSURAN” in their business or company names. The large number of relevant hits supported the inference that the shared element was common in the industry.

[77] In the present case, however, even when Mr. Benedet’s evidence is combined with that of Ms. Deslauriers, there are only 18 registered trademarks, in the names of only nine or ten different owners (the owner of one of the marks is not identified). Moreover, three of the hits are for essentially the same trademark (CORDON BLEU in word and design forms) and another three of the hits are also for essentially the same trademark (BLEU BRESSE in word and design forms). Only 11 of the registrations (standing in the names of only three different owners) contain claims of use in Canada.

[78] It is difficult to draw meaningful conclusions about the state of the marketplace and consumer perceptions from such a limited number of registrations. This is particularly the case given that none of the trade name, domain name, or common law searches found any of these 18 trademarks in the marketplace. At best, there is evidence that a CORDON BLEU webpage for unspecified goods or services is under construction. (If a wider market would also be relevant—for example, that for dairy products in general—then this has not been established by the Applicant. On the contrary, the relevant references identified by the Applicant are those relating specifically to cheese products.)

[79] As for evidence of use of unregistered trademarks, the searches found only three occurrences of BLUE or BLEU in connection with cheese (“Bleu bénédictin”, “Bleu extra-fort”, and “Bleu fumé”)—and two more if you factor in references to cheese flavours or substitutes (“Blue Cheeze Dairy-Free Dressing” and “Fauxmage Bleu” nut-based cheese substitute). However, without more information, it is difficult to tell whether these phrases are trademarks or product descriptions. Additionally, there is no evidence of the corresponding webpages being visited by Canadians other than Mr. James and no evidence of the extent to which any of the products may have been promoted or distributed in Canada by the material date.

[80] Likewise, there is no evidence of the extent to which any of the three BLUE or BLEU trade names with a connection to cheese may have been used in Canada at the material date.

[81] It is also important to note that the resemblance between the parties’ trademarks in this case goes beyond the “BLUE”/”BLEU” element to include also the “BRIE”/“BRY” element. Yet none of the trademarks, trade names, or domain names located in the various above-mentioned searches contain the word BLUE or BLEU (or a phonetic equivalent) in combination with the word BRIE (or a phonetic equivalent)—for use in association with cheese goods or otherwise.

[82] Thus the evidence does not support a conclusion that Canadian consumers of food products were at any time used to distinguishing between trademarks and/or trade names suggestive of a “blue brie” or even that they were accustomed to encountering the word BLUE or BLEU in trademarks or trade names in the parties’ field. Accordingly, the state of the register and marketplace is not a significant surrounding circumstance in the present case.

The manner in which the Mark is used

[83] The Applicant argues that the word BRIE is emphasized when the Mark is displayed on product labels [written argument at paragraph 6.2]. Indeed, the exhibited label artwork displays the Mark, in plain font capital letters, with the word BRIE significantly larger than the words BLUE and BLEU [Exhibit C]. In addition, Goods branded with the Mark also display the trademark ITALISSIMA somewhere on the label [Exhibit C].

[84] I would first note that, when assessing the likelihood of confusion, it is the effect of the mark applied for itself that must be considered, not the effect of other indicia that may appear together with the trademark in actual use [see Reno-Dépôt Inc v Homer TLC Inc, 2010 TMOB 11; Groupe Fruits & Passion Inc, 2007 CarswellNat 2319 (TMOB)]. Such contextual factors do not form part of the trademark the applicant seeks to register. Accordingly, the cobranding with ITALISSIMA does not strengthen the Applicant’s case.

[85] Moreover, it would be incorrect to find a reduced likelihood of confusion based on the particular way the Mark is presented in evidence. The Application being for a word mark, registration would permit its use it in any size or style of lettering, color or design. Thus nothing would prevent the Applicant from altering its labelling to present the Mark in a script font with only one initial cap or with BLUE and BRIE closer together and considerably more prominent than BLEU. Actual use is not irrelevant, but it should not be considered to the exclusion of potential uses that would be within the scope of the registration [Masterpiece, supra].

[86] That being said, the assessment of resemblance in this case remains between BLEUBRY and BLUE BRIE BLEU, not between BLEUBRY and BLUE BRIE. The Application is for a three-word trademark and the likelihood of confusion must be assessed on that basis.

[87] Accordingly, this factor does not assist either the Applicant or the Opponent.

No instances of actual confusion

[88] Mr. Benedet states in his affidavit that he is not aware of any confusion between the Opponent’s Trademark and the Mark at any time [para 9]. An adverse inference may be drawn from a lack of evidence of actual confusion, where such evidence would readily be available if the allegation of a likelihood of confusion were justified [Mattel, supra]. Thus, although not a determining factor, if the evidence shows extensive concurrent use of both trademarks in the same area over many years, a lack of evidence of actual confusion may support a conclusion that confusion is not likely. However, in the present case, the evidence does not show the extent of the Mark’s use in Canada. As such, it does not permit me to draw any meaningful conclusion from an absence of actual confusion. Consequently, I do not consider the absence of evidence of actual confusion in this case to be a relevant factor.

Conclusion with respect to confusion

[89] For the Applicant to meet its legal burden, the Registrar must be reasonably satisfied that, on a balance of probabilities, the registration sought is unlikely to create confusion; the Registrar need not be satisfied beyond doubt that confusion is unlikely [see Christian Dior SA v Dion Neckwear Ltd, 2002 FCA 29].

[90] Following my analysis of all the relevant factors, I am satisfied that, on a balance of probabilities, the Mark is not likely to create confusion with the Opponent’s Trademark. Although it is a close case, I find that the differences between the two trademarks are sufficient to avoid a likelihood of confusion as to the source of the parties’ respective goods, as a matter of first impression and imperfect recollection, despite the prior use and promotion of the Opponent’s Trademark and the significant overlap in the nature of the goods and trades.

[91] I reach this conclusion bearing in mind that the Opponent’s Trademark is highly suggestive if not descriptive of the associated goods and that the evidence of its use and promotion falls short of establishing a significant degree of acquired distinctiveness. As such, the Opponent’s Trademark is not entitled to a particularly wide ambit of protection. The inherent distinctiveness it does have is derived primarily from its presentation as a coined word with fanciful spelling—features absent from the Mark.

[92] In the circumstances of this case, a conclusion that the trademarks at issue are confusing based on the descriptive shared element would fail to take into account the totalities of the marks. Although there is some degree of resemblance between the marks, it is because both the Opponent’s Trademark and the first two thirds of the Mark sound like the phrase “blue brie”, which is highly suggestive if not descriptive of the associated goods. The non-descriptive aspects of each trademark create visual, aural, and conceptual differences between the marks. Ultimately, the impression created by each trademark is different, the Opponent’s Trademark being a single coined word resembling the word “blueberry” and the Mark being three distinct words in an alliterating triplet. Given the descriptiveness of the shared element, I am satisfied that these differences suffice for the average consumer to distinguish the marks.

[93] Consequently, this ground of opposition is rejected.

Disposition

[94] In view of all the foregoing and pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(12) of the Act.

Oksana Osadchuk

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2020-11-10

APPEARANCES

Kevin Graham	FOR THE OPPONENT
Kirsten Severson	FOR THE APPLICANT

AGENTS OF RECORD

Stikeman Elliott S.E.N.C.R.L., SRL/LLP	FOR THE OPPONENT
KLS Trademark Services	FOR THE APPLICANT