Citation: 2022 TMOB 004

Date of Decision: 2022-01-24

IN THE MATTER OF A SECTION 45 PROCEEDING

	Marks & Clerk	Requesting Party
and
	PB Brands, LLC	Registered Owner
	TMA781,818 for PATEL’S	Registration

Introduction

[1] At the request of Marks & Clerk (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) on October 23, 2018 to PB Brands, LLC (the Owner), the owner of registration No. TMA781,818 for the trademark PATEL’S (the Mark).

[2] The Mark is registered in association with the following goods:

(1) Flour, spices, popped rice, rice products, namely, rice pilaf and rice flour, tea, coffee, candy, bread and cakes.

(2) Cooking oil, butter ghee, pickles, lentils and canned vegetables.

(3) MREs (ready to eat meals), curry paste and vegetable paste.

[3] The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between October 23, 2015 and October 23, 2018 (the Relevant Period), in association with the goods specified in the registration. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last in use and the reasons for the absence of use since that date.

[4] The relevant definition of use is set out in section 4(1) of the Act as follows:

4(1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.

[5] It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trademark in association with each of the goods specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. It is open to the Registrar, as the finder of fact, to draw reasonable inferences from the facts stated in the affidavit or statutory declaration [BCF SENCRL v Spirits International BV, 2012 FCA 131 at para 8].

[6] In response to the Registrar’s notice, the Owner furnished the affidavit of Rakesh Patel, sworn January 18, 2019 (the Patel Affidavit).

[7] I note that after the Owner was served with the Requesting Party’s written representations, the Owner on October 11, 2019 requested a retroactive extension of time under section 47(2) of the Act in which to file a supplemental affidavit also in the name of Rakesh Patel sworn October 9, 2019 (the Supplemental Patel Affidavit). By ruling of the Registrar dated November 7, 2019, that request for a retroactive extension of time was denied. Consequently, the Supplemental Patel Affidavit is not of record in this proceeding and was not considered in the analysis below. The only evidence considered is the Patel Affidavit.

[8] Both parties submitted written representations. A hearing was held in which only the Owner participated.

Overview of the Owner’s Evidence

[9] The Patel Affidavit can be summarized as follows:

a) Mr. Patel is the Managing Member of the Owner. In paragraph 1 of his affidavit, I note that Mr. Patel introduces the trademark at issue as PATEL BROTHERS (registration TMA567,764) rather than the Mark. Registration TMA567,764 for the trademark PATEL BROTHERS in association with retail and wholesale grocery store services is the subject of another section 45 proceeding involving the same parties, and is addressed in a separate decision. I am satisfied that the reference to TMA567,764 in paragraph 1 of the Patel Affidavit was an inadvertent error on the part of the affiant, given that Mr. Patel attaches as Exhibit “A” to his affidavit a printout of the particulars for registration No. TMA781,818 for the Mark and identifies in paragraph 2 of his affidavit the goods with which the Mark is registered.

b) Mr. Patel states that the Owner is incorporated in the state of New York and describes the Owner as an industry leader in the Indian grocery store and food business, operating directly and through several licensees, a chain of Indian grocery stores. He states that the Owner also has its own line of products that are sold in its own grocery stores as well as in third-party stores.

c) Exhibit “B” to the Patel Affidavit is described as representative examples of food product packaging prominently displaying the Mark. The front and back sides of packaging for six products, listed below, are included. The front of each package prominently displays the Mark, the Indian name for the product, along with an English and French description, as follows:

i. Baingan Bharta – Roasted Eggplant / Aubergine Rôtie

ii. Channa Masala – Chickpea Curry / Cari de Pois Chiches

iii. Aloo Mutter – Potato & Green Pea Curry / Cari de Pommes de Terre et Petit Pois

iv. Dal Tadka – Lentil Curry / Cari de Lentilles

v. Dal Makhani – Lentils in Cream Sauce / Lentilles à la Crème

vi. Peas Pulav – Basmati Rice with Green Peas / Riz Basmati aux Petits Pois

d) The front and back of each package in Exhibit “B” contains bilingual English / French content for information such as ingredients and preparation instructions. At the lower left of the back of each package, there is a statement that the product is “DISTRIBUTED BY: RAJA FOODS”.

e) Exhibit “C” to the Patel Affidavit is described as representative invoices for products sold during the Relevant Period listing Vancouver, Canada as the final place of delivery. The invoices are each from an entity named Capital Foods Private Limited with an address in Mumbai, India and the buyer is listed as Raja Foods LLC with an address in Chicago, U.S.A. An entity with an address in Surrey, British Columbia, Canada is identified in each invoice as the “Consignee”, and the final place of delivery is listed as Vancouver, Canada.

f) Mr. Patel explains that Raja Foods LLC, a separate entity to the Owner, is listed as the “Buyer” in these invoices, and that Raja Foods LLC acts as the distributor of the Owner’s products in Canada pursuant to a distribution agreement in place between the two parties. Mr. Patel states that Raja Foods LLC purchases the products from the Owner’s licensee in India and provides them to retail outlets in Canada, who are named as the “Consignee”.

g) I note that the first three invoices in Exhibit “C” appear to pre-date the Relevant Period; however the remaining eleven invoices are dated within the Relevant Period. The food product names (both the Indian name and the English/French description) in the invoices correspond to the food product names on the packaging in Exhibit “B”. One or more of each of the food products identified in Exhibit “B” are included in the invoices in Exhibit “C” that are dated within the Relevant period. In the body of the invoices, the various food products are listed under the title “PATEL’S CANADA BRAND RTE”.

Analysis

[10] At paragraph 5 of its written representations, the Owner acknowledges that it has not used the Mark in association with all of the goods listed in the registration during the Relevant Period. In particular, the Owner acknowledges that the goods indicated in strikethrough, below, should be deleted from the registration:

(1) Flour, spices, popped rice, rice products, namely, rice pilaf and rice flour, tea, coffee, candy, bread and cakes.

(2) Cooking oil, butter ghee, pickles, lentils and canned vegetables.

(3) MREs (ready to eat meals), curry paste and vegetable paste.

[11] Therefore, the analysis which follows addresses whether the Owner has demonstrated use of the Mark in association with the remaining items set out above (the Remaining Goods).

[12] The Requesting Party’s arguments fall into two general categories: (1) the Requesting Party argues that the Owner has not demonstrated use of the Mark in association with the specific goods identified in the registration, and (2) even if such use was demonstrated, it was not use which enured to the Owner pursuant to section 50(1) of the Act. I will address these arguments in turn.

Use in association with the specific goods in the registration

[13] The Requesting Party argues that the goods identified in the product packaging and invoices in the Patel Affidavit (Exhibits “B” and “C” respectively) do not correspond to the goods identified in the registration. For example, the Requesting Party points out that the registration does not include any reference to channa masala, dal makhani, dal tadka, aloo mutter, baingan bharta, palak paneer or peas lulav. The Requesting Party argues that some of the goods listed in the registration are at best ingredients in the products shown in Exhibits “B” and “C” of the Patel Affidavit.

[14] However, based on the packaging examples in Exhibit “B”, which include on the front of the package the Mark, the Indian name of the product, along with an English and French translation, I am satisfied that the Mark has been used in association with the Remaining Goods. In particular, I agree with the submissions of the Owner at paragraphs 18 to 21 of its written representations, which I summarize below:

· “Peas Pulav” (“Basmati Rice with Green Peas” / “Riz Basmati aux Petits Pois”) packaging demonstrates use of the Mark in association with rice pilaf. I note that “pilaf” is defined in the Canadian Oxford Dictionary, 2nd Ed. as “a Middle Eastern or Indian dish of spiced rice or wheat with meat, fish, vegetables, etc.” [see Tradall SA v Devil's Martini Inc, 2011 TMOB 65 at para 29 which provides that the Registrar can take judicial notice of dictionary definitions].

· “Dal Makhani” (“Lentils in Cream Sauce” / Lentilles à la Crème”) packaging demonstrates use of the Mark in association with lentils.

· “Channa Masala” (“Chickpea Curry” / “Cari de Pois Chiches) and “Aloo Mutter” (“Potato & Green Pea Curry” / “Cari de Pommes de Terre et Petits Pois”) packaging demonstrate use of the Mark in association with MREs (ready to eat meals).

[15] With respect to the goods “MREs (ready to eat meals)”, the Requesting Party argues in its written representations that none of the meals are in fact “ready to eat” because the product packaging indicates that they require heating. However, I agree with the Owner on this point that these items nevertheless qualify as “ready to eat”. In my view, the fact that the items are intended to be briefly heated (each package in Exhibit “B” indicates the product can be heated by microwaving for 2 mins) does not disqualify them as being ready to eat. In this regard, I note that in Aird & Berlis LLP v Levi Strauss & Co, 2006 FC 654, 51 CPR (4th) 434 at paras 17-18, the Federal Court indicated that in section 45 proceedings one is not to be astutely meticulous when dealing with the language used in the statement of goods.

[16] Finally, the invoices in Exhibit “C” to the Patel Affidavit demonstrate sales of each of the Remaining Goods in Canada during the Relevant Period.

[17] In view of the above, I am satisfied that the Mark was used in Canada during the Relevant Period in association with the Remaining Goods, in accordance with section 4(1) of the Act. The question of whether that use constituted use of the Mark by the Owner is addressed below.

Use which enures to the Owner

[18] The Patel Affidavit references the purchase of the Owner’s products by the distributor Raja Foods LLC from the Owner’s “licensee in India”. As noted by the Requesting Party, the affidavit does not include a discussion of specific licensing terms, a copy of any written license or distribution agreement, nor is there an express statement in the affidavit that the Owner has direct or indirect control of over the character and quality of the goods bearing the Mark. The Requesting Party argues that this gives rise to an ambiguity in the evidence which must be interpreted against the Owner, namely, the Requesting Party submits that the Owner has not demonstrated the requisite control over the character and quality of the goods for any use of the Mark to enure to the Owner pursuant to section 50(1) of the Act.

[19] While the Patel Affidavit certainly lacks detail on this issue, when the affidavit is considered as a whole, I am not persuaded that it contains an ambiguity that must be read against the Owner with respect to section 50(1) of the Act. In particular, I do not consider there to be any evidence in the Patel Affidavit which suggests an absence of the requisite control, and I agree with the Owner that a reasonable inference that such control exists can be drawn from the facts in the affidavit [see Valhalla Pure Outfitters Inc v Pure Licensing Limited, 2017 TMOB 86, 149 CPR (4th) 326 at paras 24-29 and GMAX World Realty Inc v RE/MAX, LLC, 2015 TMOB 169 at paras 25-28, where the Registrar found section 50(1) satisfied despite the absence of express statements of control]. For example, in the present case, the goods at issue are repeatedly referred to in the evidence as the Owner’s own products. At paragraph 3 of the Patel Affidavit, Mr. Patel states “[the Owner] also has its own line of products that are sold in its own grocery stores, as well as in third party stores.” At paragraph 6, Mr. Patel states that “[the Owner] has extensively used the Trademark during the Relevant Period in Canada for the brand name of its products.” In paragraph 7, Mr. Patel states that “Raja Foods LLC acts as the distributor of [the Owner’s] products in Canada”. In addition, in the invoices in Exhibit “C” from the entity in India, the relevant goods appear in the body of the invoice under the title “PATEL’S CANADA BRAND RTE”. I consider all of these facts to be consistent with a circumstance in which the Owner had control over the character and quality of the goods.

[20] The packaging for the products themselves shown in Exhibit “B” states that the products are distributed by Raja Foods, and this is consistent with Mr. Patel’s description of Raja Foods LLC as the distributor of the Owner’s products in Canada. I note that use of a trademark by a distributor is generally considered to be use of the mark by the owner such that section 50(1) is not relevant, at least vis-à-vis the entity that acts as the distributor [see Advance Magazine Publishers Inc v Vogue Sculptured Nail Systems Inc, 2010 TMOB 129 at para 28; and BCF SENCRL v Anton Riemerschmid Weinbrennerei und Likörfabrick GmbH & Co KG (2008), 72 CPR (4th) 226 (TMOB) at para 10].

[21] In view of the above, the Owner has satisfied me that the use of the Mark in association with the Remaining Goods, as set out in the Patel Affidavit, is use of the Mark which enures to the Owner in accordance with section 50(1) of the Act.

Disposition

[22] Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended to delete the following goods in compliance with the provisions of section 45 of the Act: Flour, spices, popped rice, ... rice flour, tea, coffee, candy, bread and cakes; Cooking oil, butter ghee, pickles, ... canned vegetables; ... curry paste and vegetable paste.

[23] The amended statement of goods will be as follows: “(1) rice products, namely, rice pilaf; (2) lentils; (3) MREs (ready to eat meals).”

Timothy Stevenson

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-09-23

APPEARANCES

Madeleine Hodgson	For the Registered Owner
No one appearing	For the Requesting Party

AGENTS OF RECORD

Norton Rose Fulbright Canada LLP	For the Registered Owner
Marks & Clerk	For the Requesting Party