LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADEMARKS

Citation: 2021 TMOB 130

Date of Decision: 2021-06-26

IN THE MATTER OF AN OPPOSITION

 

	Weston Foods (Canada) Inc.	Opponent
and
	Bimbo Bakeries USA, Inc.	Applicant
	1,770,856 for LITTLE BITES	Application

 

[1] Weston Foods (Canada) Inc. (the Opponent) opposes registration of the trademark LITTLE BITES (the Mark) filed by Bimbo Bakeries USA, Inc. (the Applicant). Filed on March 4, 2016, the application is based on use and registration in the United States and the Applicant’s proposed use in Canada with bakery products, namely, muffins, brownies and snack cakes (the Goods).

[2] The Opponent alleges in its statement of opposition that: (i) the application does not conform to the requirements of sections 30(d), 30(e) and 30(i) of the Trademarks Act, RSC 1985, c T-13 (the Act); (ii) the Mark is not registrable pursuant to section 12(1)(b) of the Act; and (iii) the Mark is not distinctive under section 2 of the Act.

[3] For the reasons that follow, I refuse the application on the basis that the Mark is not registrable pursuant to section 12(1)(b) of the Act as I am not satisfied that the Applicant meets its legal onus to prove on a balance of probabilities that the Mark is registrable pursuant to this section of the Act. The section 2 ground of opposition also succeeds.

The Record

[4] The Opponent filed a statement of opposition on March 27, 2017. The Act was amended on June 17, 2019. All references in this decision are to the Act as amended, with the exception of references to the grounds of opposition which refer to the Act before it was amended [section 70 of the Act]. The Applicant filed and served a counter statement. The Opponent filed the affidavit of Biserka Horvat, an intellectual property law clerk employed by its agent. The Applicant filed the affidavit of Daniella Geraci-Samlal, a trademark paralegal employed by its agent. Both parties submitted written representations and attended a hearing.

Evidential Burden and Legal Onus

[5] The Applicant bears the legal onus of establishing that, on a balance of probabilities, its application complies with the requirements of the Act. There is, however, 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].

Preliminary Issue: Opponent’s Evidence of Third Party Websites

[6] The Opponent’s evidence of Ms. Horvat includes printouts from 20 websites which include reference to “LITTLE BITES”. In the present case, while I am satisfied that the websites existed at the time they were accessed by Ms. Horvat, very little information is provided to establish that the websites contain reliable information or are official websites [ITV Technologies, Inc v WIC Television Ltd (2003), 29 CPR (4th) 182 at 192 (FCTD)]. Given the limited number of references, that very few reference Canada, and all were printed after the material date, this evidence does not show that LITTLE BITES is common to the trade.

Grounds of Opposition

Section 12(1)(b) Ground of Opposition

[7] I will first consider the ground of opposition based on section 12(1)(b) of the Act. The material date for this ground of opposition is the date of filing the application [Fiesta Barbeques Ltd v General Housewares Corp, 2003 FC 1021].

[8] The Opponent pleads that the Mark is not registrable under section 12(1)(b) of the Act in that it is clearly descriptive and/or deceptively misdescriptive of the character or quality of the Goods:

… the [Mark] is not registrable having regard to the provisions of section 12(1)(b) because the [Mark] is clearly descriptive and/or deceptively misdescriptive of the Applicant’s advertised goods. More specifically, the [Mark] is not registrable, because it is, whether depicted, written or sounded, clearly descriptive and/or deceptively misdescriptive in the English language of the character as well as the quality of the Applicant’s goods … The [Mark] in association with the Applicant’s bakery products, namely, muffins, brownies, and snack cakes, clearly describes a feature and an intrinsic characteristic of the goods, namely that the Applicant’s bakery products are/will be available in sizes that comprise “little bites”. In the alternative, if the Applicant is not providing/will not provide its bakery products, namely, muffins, brownies and snack cakes, in sizes that comprise “little bites”, then the [Mark] is deceptively misdescriptive of the goods.

[9] In deciding the issue as to whether a mark is clearly descriptive, it must be considered as a matter of first impression within the context of the goods [Ontario Teachers' Pension Plan Board v Canada (Attorney General), 2012 FCA 60 (Teachers) at para 29]. “Character” means a feature, trait or characteristic of the goods and “clearly” means “easy to understand, self-evident or plain” [Drackett Co of Canada Ltd v American Home Products Corp (1968), 55 CPR 29 (Ex Ct) at 34].

[10] Finally, in determining whether a trademark is registrable under section 12(1)(b) of the Act, the Registrar must not only consider the evidence but also apply common sense [Neptune SA v Attorney General of Canada (2003) 29 CPR (4th) 497 (FCTD)]. One of the most important purposes of section 12(1)(b) is to protect the right of all traders to use apt descriptive language. The courts have recognized that descriptive words are the property of all and cannot be appropriated by one person for their exclusive use [General Motors Corp v Bellows (1949), 10 CPR 101 (SCC) at 112-113].

The Opponent Meets its Evidential Burden

[11] An opponent’s initial burden with respect to a section 12(1)(b) ground of opposition may be met simply by reference to the ordinary meaning of words in an applicant’s mark [Flowers Canada/Fleurs Canada Inc v Maple Ridge Florist Ltd (1998), 86 CPR (3d) 110 (TMOB); McIntosh v La-Co Industries Inc, 1998 CanLII 18596 (TMOB)].

[12] The Opponent’s evidence includes the definitions for LITTLE and BITE from The Canadian Oxford Dictionary. These definitions include small in size, amount, degree, etc. and not large, great, or big for the word “little” and a mouthful of food, a snack or light meal for the word “bite”. Considering the Mark within the context of the Goods, I find that the definitions of LITTLE and BITE support the Opponent’s allegations that the trademark is clearly descriptive and describes that the Goods are in small (i.e. “bite” sized) portions. The Opponent therefore meet its evidential burden.

The Applicant Fails to Meet Its Legal Onus

[13] The Applicant’s submissions in support of meeting its legal onus include the following:

· that the trademark LITTLE BITES does not clearly describe an intrinsic characteristic of the Goods;

· that the trademark LITTLE BITES is merely suggestive of any number of characteristics;

· that no single, self-evident meaning of LITTLE BITES is readily discernible;

• that the trademark LITTLE BITES is not commonly used in a descriptive sense by others;

· that the state of the register supports the registrability of the trademark LITTLE BITES;

· that the trademark LITTLE BITES was examined and approved in the United States and Canada; and

• that the mark is not deceptively misdescriptive.

The LITTLE BITES Trademark Describes an Intrinsic Characteristic of the Goods

[14] The Applicant submits it is the goods themselves that a trademark must be held to clearly describe, and not the way in or purpose for which those goods are used, or the persons who may use those goods (Applicant’s Written Submissions, para 56). In Ontario Teachers' Pension Plan Board v Canada (Attorney General), 2011 FC 58 at para 46, the Federal Court confirms that the word “character” does not necessarily completely describe the goods or services rather it may describe a distinguishing or prominent feature of the goods or services [citing Café Suprême F et P Ltée v Canada (Register of Trade Marks), (1984), 4 CPR (3d) 529 (FCTD)].  In ITV Technologies at para 67, the Federal Court held that the descriptive character must go to the material composition of the goods or services or refer to an obvious intrinsic quality of the goods or services which are the subject of the trademark, such as a feature, trait or characteristic belonging to the product in itself [citing Provenzano v Registrar of Trade-Marks (1977), 37 CPR (2d) 189 (FCTD)]. Other cases have confirmed that an intrinsic characteristic includes the effect or function [Sharp Kabushiki v Dahlberg Electronics, Inc (1983), 80 CPR (2d) 47 (TMOB) at 55] or potential customers [Ontario Teachers’ Pension Plan Board v Editorial Projects In Education, Inc, 2012 TMOB 218].

The LITTLE BITES Trademark is Clearly Descriptive as Opposed to Suggestive

[15] The Applicant’s position is that the Mark is not clearly descriptive because multiple meanings can be attributed to the phrase LITTLE BITES as little and bite each have many different meanings as set out by the Applicant:

(pg 5) …“Little” has eleven possible meanings as an adjective, two as a noun, and three as an adverb: sixteen meanings total. “Bite” has nine meanings as a verb, and nine other meanings as a noun: eighteen meanings total.

…

(pg 19) These meanings can be combined in any number of ways and would suggest a completely different characteristic of the Applicant’s bakery products. For instance, LITTLE BITES might describe the user of the Relevant Goods, suggesting “bites” for “little” people (i.e. children). LITTLE BITES might suggest to the consumer that the bakery products are a “snack” or “light meal” that is “small in amount” of calories, fat, or otherwise considered healthy. LITTLE BITES might indicate that the Applicant’s muffins, brownies, and snack cakes are “small-sized” “mouthfuls of food.” LITTLE BITES might suggest that the consumer should eat the bakery product by making bites with his or her teeth that are “small in size.”

[16] When determining whether a trademark is clearly descriptive one must consider the trademark within the context of the particular goods with which it is associated. In addition, the trademark must be considered as a matter of immediate impression in the mind of a normal or reasonable person. As set out in Teachers’, one should not arrive at a determination of the issue by critically analyzing the words of the trademark but rather by attempting to ascertain the immediate impression created by the trademark (para 29). Given the goods, the immediate impression of the Mark appears to be that the Applicant’s bakery products, namely, muffins, brownies and snack cakes are in small (i.e. “bite” sized) portions.

[17] The Applicant further submits that what a little bite is to an adult, infant and child and whether the Applicant’s products are devoured in “one bite, or nibbled in one hundred bites, is a “completely subjective matter”” (Applicant’s written submissions, para 60). I do not find this makes the Mark registrable. There are many cases where a trademark has been found to be clearly descriptive but still had some measure of subjectivity including:

• COLD CERTIFIED for beer that “was designed and manufactured to be served at a cold temperature” but with no indication of how cold [Anheuser-Busch, Incorporated v Molson Canada 2005, 2012 TMOB 112].

· MONEY SAVING VALUE SIZE for pet food sold in “a larger size which results in a saving of money to the purchaser” but with no indication of the money saved or size of the pet food sold [Ralston Purina Canada Inc v Effem Foods Ltd (1989), 24 CPR (3d) 125 (FCTD)].

· BONELESS BITES which was found to indicate “that the Applicant’s goods consist of boned or boneless seafood, fish, poultry, beef, veal, and pork in small or bite-sized portions” but with no indication of the size of the bites [Maple Leaf Foods Inc v Sofina Foods Inc, 2016 TMOB 50].

• BOLOGNA BITES which was found to indicate “the immediate impression created by [BOLOGNA] BITES, would be that the “Applicant’s “sausages”, “frankfurters” and “prepared and frozen meals, entrees and appetizers consisting primarily of meat” are made up, in whole or in part, of bologna, in small (i.e. “bite” sized) portions” but with no indication of the precise size of the bites [Maple Leaf Foods Inc v Pinnacle Foods Group LLC, 2015 TMOB 137].

State of the Register for Third Party BITES Trademarks Does Not Prove the Mark is Registrable

[18] The Applicant submits that there are over 37 third party registered marks including BITES which indicates that such marks are not clearly descriptive. The Applicant also submits that the rejection of the application would result in an unexplained and inequitable inconsistency and would be contrary to the validity of the other registered trademarks [citing Reed Stenhouse Co v Canada (Registrar of Trademarks) (1993), 45 CPR (3d) 79 at 82 (FCTD); Canadian Parking Equipment Ltd v Canada (Registrar of Trademarks) (1990), 34 CPR (3d) 154 at 161 (FCTD); RJ Reynolds Tobacco Co v Rothmans, Benson & Hedges Inc (1993), 47 CPR (3d) 439 at 442-43 (FCTD); Imperial Tobacco Ltd v Rothmans, Benson & Hedges Inc (1996), 69 CPR (3d) 483 at para 20 (FCTD)].

[19] I do not agree that an inference may be drawn that the trademark LITTLE BITES is registrable based on these 37 trademarks. The cases relied upon by the Applicant in support of its submission that to deny registration of the trademark LITTLE BITES would be inconsistent can be distinguished. The Reed Stenhouse and Canadian Parking Equipment cases are appeals of decisions rendered during examination. In Simmons I.P. Inc. v Park Avenue Furniture Corp. (1994), 56 CPR (3d) 284 at 288, the Federal Court explains why a decision to reject a trademark after opposition in the face of existence of similar trademarks is different than at examination:

In the Reed Stenhouse decision [(1992), 45 C.P.R. (3d) 79, 57 F.T.R. 317, 36 A.C.W.S. (3d) 119 (T.D.)], Jerome A.C.J. pointed out that it was incumbent on the Registrar in refusing an application at the examination stage to reconcile his refusal “to some extent” in view of the existence on the trade marks register of somewhat similar marks. However, I do not consider that the Associate Chief Justice’s comments apply to opposition proceedings: see the opposition decisions in Thomas J. Lipton Inc. v Boyd Coffee Co. (1991), 40 C.P.R. (3d) 272 (T.M. Opp. Bd.) at p. 277, and Procter & Gamble Inc. v Morlee Corp. (1993), 48 C.P.R. (3d) 377 (T.M. Opp. Bd.) at p. 386. The Opposition Board is not in a position to explain why a particular mark was permitted to proceed to registration by the examination section of the Trade Marks Office. Such a decision may have resulted because the examiner did not have the benefit of the type of evidence filed in an opposition proceeding or because the onus or legal burden is different at the examination stage. (emphasis added)

[20] With respect to the two remaining cases relied upon by the Applicant, one of them was decided before Simmons IP Inc v Park Avenue Corp and the remining case Imperial Tobacco Limited, supra considered over 300 registrations that included the mark at issue (CLASSIC and CLASSIQUE) which is a far greater number than those at issue in the current case.

[21] With respect to the Applicant’s submission that a company owned by the Opponent uses the registered trademark TWO-BITE BROWNIES at para 83 of its written submissions set out below, I do not find that the use of this trademark results in the inference that the Mark is registrable.

The term “TWO-BITE BROWNIES” is arguably even more descriptive than the applied-for trademark, since it provides the consumer with (1) the specific type of food (i.e. brownies), and (2) the exact number of bites (i.e. two). Accordingly, by the Opponent’s own reasoning, it is using a trademark that is clearly descriptive and therefore invalid.

 

Regardless of the use of TWO-BITE BROWNIES by the Opponent, I must come to a determination as to the descriptiveness of the Mark that is in accordance with the law and relevant jurisprudence [see, for example, Molson Breweries v Labatt Brewing Co. (1996), 68 CPR (3d) 202 (FCTD)].

The Approval of the Mark in the United States and Canada is of Limited Significance

[22] The fact that this application passed examination and was approved for advertisement in Canada is of limited significance. In general, such decisions by the examination section have no precedential value with respect to opposition proceedings [Constellation Brands Québec Inc v Julia Wine Inc, 2015 TMOB 93 at para 15]. Importantly, the burden of proof which an applicant must meet at the examination stage is different than the one required to prevail in an opposition proceeding [Matusalem v Espiritu de Chile Ltd, 2011 TMOB 137]. Finally, I am not prepared to accord the registration of the LITTLE BITES trademark in the United States any significant weight. There is no evidence that the law on descriptiveness in the United States is similar to that in Canada.

A Trademark Does Not Have to be Used By Others to Be Clearly Descriptive

[23] It is not necessary for the Opponent to evidence that it or others have used LITTLE BITES to describe their own goods or that this phrase is commonly used [Molson Canada 2005 v Drummond Brewing Company Ltd, 2011 TMOB 43 at para 40; Alberta Government Telephones v Cantel Inc, 1994 CanLII 10102]. T

This Ground of Opposition Succeeds

[24] The legal onus is on the Applicant to establish, on a balance of probabilities, that the Mark as of March 4, 2016 did not clearly describe an intrinsic characteristic of the Goods. I find that the Applicant has not met its legal onus. In the best case scenario for the Applicant, I would find that the probabilities are evenly balanced that the immediate impression created by LITTLE BITES, would be that the Applicant’s bakery products, namely, muffins, brownies and snack cakes are in small (i.e. “bite” sized) portions and that a reasonable person would not require any effort or imagination to come to this conclusion. As such, this ground of opposition succeeds. Having found this ground of opposition succeeds with respect to the pleading that the trademark is clearly descriptive, it is unnecessary for me to consider whether it deceptively misdescriptive.

Section 2 Ground of Opposition

[25] The ground of opposition pursuant to section 2 is set out below:

… the Mark is not distinctive within the meaning of section 2 by reason of the fact that the [Mark] does not actually distinguish the goods in association with which it is proposed to be used by the Applicant in Canada, or registered and used in the United States, from the goods of other manufacturers and retailers of food items, nor is the [Mark] adapted so as to distinguish the Applicant’s goods. The [Mark] is a descriptive and/or generic term which cannot be distinctive of the Applicant in relation to a food product.

[26] I find that this ground of opposition has two prongs. The first is that the trademark LITTLE BITES is not inherently distinctive and is not adapted to distinguish the Applicant’s Goods from the goods of other manufacturers and retailers of food items given its clear descriptiveness. Given the wording of the pleading, in particular the part “nor is the [Mark] adapted so as to distinguish the Applicant’s goods”, I do not find that the Opponent is required to evidence use of LITTLE BITES by other parties to succeed with respect to this prong of the distinctiveness ground of opposition. The second is that the trademark LITTLE BITES is generic or descriptive of the Goods and is common to the trade.

[27] The material date to assess a non-distinctiveness ground of opposition is the filing date of the statement of opposition, in this case, March 27, 2017 [Metro-Goldwyn-Mayer Inc. v Stargate Connections Inc. (2004), 34 CPR (4th) 317 (FC)]. In deciding this issue, I am guided by the comments of Mr. Justice O’Keefe in Canadian Council of Professional Engineers v APA- The Engineered Wood Assn. (2002), 7 CPR (4th) 239 (FCTD) at para 49 that “a purely descriptive or a deceptively misdescriptive trademark is necessarily not distinctive”.

[28] Having regard to my earlier finding that the Mark is clearly descriptive, the difference in material date has no effect on this issue, and I conclude that at the material date the Mark was not adapted to distinguish the goods of the Applicant from those of others within the meaning of section 2 of the Act. As there is no evidence that the Mark had acquired any distinctiveness at any material time, this ground of opposition succeeds. As such, it is unnecessary to address the second prong of the Opponent’s pleading that the words in the Mark are generic and common to the trade. Accordingly, the non-distinctiveness ground of opposition succeeds.

Section 30(e) Ground of Opposition

[29] The Opponent pleads that the application does not comply with section 30(e) of the Act because the Mark is not intended to be used as a trademark but will instead function to be clearly descriptive of an intrinsic characteristic of the Goods. As no evidence was submitted by the Opponent on this point, and the Opponent has not pointed to any evidence of the Applicant to support its allegation, the Opponent has failed to meet its evidential burden and this ground of opposition is rejected.

Section 30(d) Ground of Opposition

[30] The Opponent pleads that the application does not comply with section 30(d) because the Applicant has not used the Mark in the United States with each of the goods in the application. As no evidence was submitted by the Opponent on this point, and the Opponent has not pointed to any evidence of the Applicant to support its allegation, the Opponent has failed to meet its evidential burden and this ground of opposition is rejected.

Section 30(i) Ground of Opposition

[31] The Applicant pleads that the application does not comply with the requirements of section 30(i) of the Act because the Applicant could not have been satisfied that it is entitled to use the trademark LITTLE BITES with the Goods given the clearly descriptive/deceptively misdescriptive nature of the goods.

[32] The requirement under section 30(i) of the Act is to include, in the application, a statement that the applicant is satisfied that it is entitled to use the mark in Canada in association with the goods and services. Where, as here, the required statement is provided, an opponent may only rely on section 30(i) in specific circumstances, such as where bad faith or fraud on the part of the applicant is alleged or where federal legislation arguably prevents the registration of the mark [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB); Interprovincial Lottery Corp v Western Gaming Systems Inc (2002), 25 CPR (4th) 572 (TMOB)]. In the present case, there are no allegations of that nature in the statement of opposition. Even though the section 12(1)(b) and 2 grounds of opposition have succeeded, such a finding would not necessarily have precluded the Applicant from being satisfied that it was entitled to use the Mark in Canada. This ground of opposition is therefore rejected.

Disposition

[33] Having regard to the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(12) of the Act.

 

______________________________

Natalie de Paulsen

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

 

Hearing Date: 2021-04-19

 

Appearances

Michelle Nelles For the Opponent

 

Mark Evans For the Applicant

 

 

Agents of Record

Torys LLP For the Opponent

Smart & Biggar LLP For the Applicant