Citation: 2022 TMOB 199

Date of Decision: 2022-10-12

IN THE MATTER OF AN OPPOSITION

	Arterra Wines Canada, Division Québec, Inc.	Opponent
and
	Lidl Stiftung & Co. KG	Applicant
	1,855,539 for LIBERTARIO	Application

Overview

[1] Lidl Stiftung & Co. KG (the Applicant) has applied to register the trademark LIBERTARIO (the Mark), which is the subject of application No. 1,855,539 (the Application) in association with the following goods:

Alcoholic beverages except beers, namely wines, sparkling wines (the Goods).

[2] The Application includes the following foreign translation for the Mark:

The term LIBERTARIO can be translated as ANARCHIC.

[3] The Applicant did not indicate the origin of the word LIBERTARIO for which the English translation was provided.

[4] Arterra Wines Canada, Division Québec, Inc. (the Opponent) opposes the Application based, inter alia, on alleged confusion with its trademark LIBERADO, which has been previously registered and used in Canada by the Opponent in association with “alcoholic beverages, namely wine”.

[5] For the reasons that follow, the Application is refused.

The record

[6] The Application was filed on September 1, 2017 on the basis of proposed use of the Mark in Canada and use and registration of the Mark abroad, and was advertised for opposition purposes in the Trademarks Journal on October 24, 2018.

[7] On March 14, 2019, the Opponent filed a statement of opposition against the Application pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). I note that the Act was amended on June 17, 2019. All references herein 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 (see section 70 of the Act which provides that section 38(2) of the Act, as it read prior to June 17, 2019, applies to applications advertised before that date).

[8] The statement of opposition originally raised eight grounds of opposition. However, following the Applicant’s request for an interlocutory ruling on the sufficiency of certain paragraphs of the statement of opposition, the Registrar ultimately struck three of these grounds on May 28, 2019. The remaining grounds of opposition are based on the following sections of the Act: 2 (non-distinctiveness of the Mark); 12(1)(d) (non-registrability of the Mark); 16(2)(a) and (3)(a) (non-entitlement of the Applicant); and 30(i) (non-compliance of the Application).

[9] The Applicant filed a counter statement denying the grounds of opposition.

[10] In support of its opposition, the Opponent filed the affidavit of Andrea Hunt, who identified herself as Senior Vice-President of Marketing for both the Opponent and its mother company Arterra Wines Canada, Inc. (Arterra Canada) at the time of swearing her affidavit on November 20, 2019 (the Hunt affidavit); and the affidavit of Laura Pietrantonio, who identified herself as a lawyer employed by the Opponent’s trademark agent at the time of swearing her affidavit on November 25, 2019 (the Pietrantonio affidavit). The Hunt affidavit speaks to the issue of use and promotion of the LIBERADO trademark by the Opponent in Canada. The Pietrantonio affidavit encloses a certified copy of registration No. TMA1,008,747 for the LIBERADO trademark. Mss. Hunt and Pietrantonio were not cross-examined on their affidavits.

[11] In support of its Application, the Applicant ultimately filed two affidavits of Alexia Dion, who identified herself as a paralegal employed by the Applicant’s trademark agent at the time of swearing her affidavits on June 16, 2020 (the Dion affidavit (1) and the Dion affidavit (2)); and the affidavit of Rosalie Jetté, who identified herself as an articling student employed by the Applicant’s trademark agent at the time of swearing her affidavit on June 16, 2020. The Dion affidavits (1) and (2) purport to introduce into evidence the particulars of about twenty third party applications and registrations of trademarks printed from the Canadian Intellectual Property Office (CIPO)’s Trademarks database, and a copy of the “file wrapper” pertaining to the prosecution of the Opponent’s above-described LIBERADO registered trademark, respectively. The Jetté affidavit purports to introduce into evidence state of the marketplace evidence with respect to alcoholic beverages bearing the terms “LIBER” or “LIBRE” as a mark or as a prefix or suffix of a mark in Canada. Mss. Dion and Jetté were cross-examined on their affidavits and were re-examined by the Applicant’s trademark agent at the end of their cross-examinations, and the transcripts of their cross-examinations and re-examinations and replies to undertakings form part of the record, as will be discussed further below.

[12] Only the Opponent filed written representations and was represented at an oral hearing.

Analysis

The parties’ respective burden or onus

[13] The Opponent has the initial evidential burden to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once that burden is met, the Applicant bears the legal onus of establishing, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155].

Non-registrability of the Mark under section 12(1)(d) of the Act

[14] The Opponent has pleaded that the Mark is not registrable because it is confusing with the Opponent’s above-described LIBERADO registered trademark.

[15] I have exercised the Registrar’s discretion to confirm that the Opponent’s registration is in good standing as of today’s date, which is the material date for assessing a section 12(1)(d) ground of opposition [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)].

[16] Hence, the Opponent has met its evidential burden in respect of this ground of opposition. The Applicant must therefore establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Mark and the Opponent’s LIBERADO trademark.

The test for confusion

[17] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

[18] Thus, section 6(2) of the Act does not concern the confusion of the trademarks themselves, but of the goods or services from one source as being from another. In the present case, the question is essentially whether a consumer, with an imperfect recollection of the Opponent’s LIBERADO trademark, who sees the Applicant’s Goods in association with the Mark, would think that they emanate from, are sponsored by, or are approved by the Opponent.

[19] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at section 6(5) of the Act, namely: (a) the inherent distinctiveness of the 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, including in appearance or sound or in the ideas suggested by them. This list is not exhaustive, and all relevant factors are to be considered. Further, all factors are not necessarily attributed equal weight as the weight to be given to each depends on the circumstances [see Mattel, Inc v 3894207 Canada Inc 2006 SCC 22, 49 CPR (4th) 321; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée 2006 SCC 23, 49 CPR (4th) 401; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 for a thorough discussion of the general principles that govern the test for confusion].

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

[20] The parties’ trademarks are both inherently distinctive as they are not common words found in English or French dictionaries.

[21] While the Applicant indicates in its Application that the English translation for the word LIBERTARIO is ANARCHIC, there is no evidence that the average consumer of the Applicant’s Goods would understand the Mark to refer to this particular meaning. Likewise, while the Opponent’s registration indicates that the English translation for the word LIBERADO is FREED or LIBERATED, there is no evidence that the average consumer would understand the Opponent’s trademark to refer to this particular meaning. I will return to this point when assessing the degree of resemblance between the parties’ marks in appearance, sound and ideas suggested by them.

[22] The degree of distinctiveness of a trademark may be increased by means of it becoming known through promotion or use.

[23] There is no evidence that the Mark has been used or has become known in Canada in association with the Goods to any extent.

[24] In contrast, the evidence of use of the LIBERADO trademark filed through the Hunt affidavit establishes quite extensive use of this mark by the Opponent in association with wines, as per my review below of the Hunt affidavit.

The Hunt affidavit:

[25] I summarize below those portions of the Hunt affidavit that I consider to be the most pertinent regarding the extent of use and promotion of the LIBERADO trademark.

[26] Ms. Hunt essentially attests to the following:

· the Opponent (known as Constellation Brands Québec, before 2017) is a wine manufacturer, producer and bottler incorporated pursuant to the laws of Quebec with a principle place of business in the City of Rougemont, Quebec [paras 5 and 6; Exhibit AH-2: copy of the registration of the Opponent with the Enterprise Registrar of Quebec];

· the wine products under the LIBERADO trademark were launched on the Canadian market as early as May 2017. They originate from Spain and are available in all major wine retailers throughout Canada in different formats (namely, bottles of 750 ml and boxes of 3 litres) and in different varietals (namely, a red wine composed of Cabernet Sauvignon and Tempranillo and a white wine composed Verdejo and Sauvignon Blanc) (hereinafter collectively referred to as the LIBERADO Wines) [paras 7 and 8];

· the LIBERADO Wines prominently display the LIBERADO trademark on the labels of the bottles and on the packaging of the boxes [para 9; Exhibit AH-3: images of the LIBERADO Wines which are representative examples of the products sold to Canadian consumers in the normal course of trade since the launch of the products];

· since the launch of the liberado Wines, the products have enjoyed “large commercial success” in Canada. A table of sales, detailed by year, by each format and by each varietal of the LIBERADO Wines is included at paragraph 11 of the Hunt affidavit. In a period of little more than two years between fiscal years 2018 and 2019, the Opponent has sold more than 300,000 bottles and 9,000 boxes of the LIBERADO Wines, which represents close to 1.5 million dollars in gross sales. According to Ms. Hunt, “[t]hese numbers represent a great commercial success for such a short period of time” [paras 11 to 14; Exhibit AH-4: sample of invoices dated between May 18, 2017 and October 9, 2019 evidencing sales made by the Opponent (through Arterra Canada’s central structure for all invoicing) to different provincial liquor boards in Canada, who in turn sell the products to the final consumers; Exhibits AH-5 to AH-9: photos illustrating the way the LIBERADO Wines have been displayed in-store in the retail stores operated by these liquor control boards];

· between the lunch of the LIBERADO Wines and the date of the Hunt affidavit, “significant amount of money were invested in order to promote the LIBERADO Wines throughout Canada”. For example:

o more than $172,000 was invested during fiscal year 2018 and more than $539,000 in fiscal year 2019 in various marketing campaigns, including on billboards alongside major roads in Canada, giant posters and storefronts of some of retailers, and a wine truck conducting tasting outside of retailers;

o more than $131,000 was invested during fiscal year 2018 and more than $282,000 in fiscal year 2019 in various promotional campaigns, including various in-store tastings, consumer reward incentives and in-store special displays; and

o the LIBERADO Wines are vastly advertised on social media and through the website www.liberadowines.ca which is accessible to Canadian consumers.

[paras 15 to 23; Exhibit AH-10: photos of some of these marketing/promotional campaigns; Exhibit AH-11: images of some of these in-store promotions; Exhibit AH-12: a table of some of the advertisements conducted on the platform Instagram in 2019; and Exhibit AH-13: extracts from the website www.liberadowines.ca]

Conclusion on this first factor

[27] Taking into account the combination of inherent and acquired distinctiveness of the parties’ trademarks, I find that this factor favours the Opponent.

The length of time the trademarks have been in use

[28] In view of my findings made above, this factor also favours the Opponent.

The nature of the goods, services or business; and the nature of the trade

[29] The Goods and the LIBERADO Wines are the same or clearly overlapping. In the absence of evidence to the contrary, I agree with the Opponent that the Goods would be sold in the exact same retail stores, and possibly side by side, should the Applicant commence selling the Goods in Canada. Accordingly, these factors also favour the Opponent.

The degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them

[30] When considering the degree of resemblance between trademarks, they must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the trademarks [Veuve Clicquot, supra, at para 20].

[31] In Masterpiece, supra at paragraph 64, the Court further advised that, while in some cases, the first word or syllable of a trademark will be the more important for the purpose of distinction, the preferable approach to considering resemblance “is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique”.

[32] In the present case, the Mark and the Opponent’s LIBERADO trademark both consist of a four-syllable coined word, with no striking or dominant feature.

[33] As the Mark and the LIBERADO trademark both have the same beginning “LIBER” and end with the letter “O”, there is therefore a considerable degree of resemblance between them in appearance and sound. Conceptually, I agree with the Opponent that both parties’ trademarks “evoke the idea of a Spanish word, notably considering that the words are not defined in French or English dictionary and they end with the letter “O”, which provide a Spanish feel to the word.”

[34] As a matter of fact, and as noted by the Opponent both in its written representations and at the hearing, the words LIBERTARIO and LIBERADO are Spanish words [see Tradall SA v Devil’s Martini Inc, 2011 TMOB 65 (CanLII) at para 29, which provides that the Registrar can take judicial notice of dictionary definitions]. More particularly, I note that the word LIBERTARIO is translated in English (and French) by “libertarian” (libertaire) and the word LIBERADO is translated in English (and French) as “liberated, freed” (libéré) [per Collins English-Spanish Dictionary and Dictionnaire Larousse Français-Espagnol].

[35] That said, there is no evidence that the average consumer of the parties’ goods (or that a substantial portion of the parties’ customers) would be able to read and understand Spanish. Still, I tend to agree with the Opponent’s position that to persons not familiar with the Spanish language, the parties’ marks may arguably evoke the same idea of liberty given the beginning of both marks, which is the same for their translation in French (LIBERté) and in English (LIBERty).

[36] In support of its position that the resemblance criteria clearly favours the Opponent, the Opponent points out various decisions either from the Opposition Division of the European Union Office for Harmonization in the Internal Market or from the appeal board of the said organization where the trademarks at issue incorporated the prefix “LIBER” and were found to be similar.

[37] However, as acknowledged by the Opponent both in its written representations and at the hearing, these foreign decisions have no precedential binding authority upon the Registrar. Neither do I find any of them to have significant persuasive value because of their completely different sets of facts. In any event, I do not need to resort to these decisions to find that there is, overall, a significant degree of resemblance between the parties’ trademarks when all three aspects of resemblance are considered. Accordingly, this factor also favours the Opponent.

Additional surrounding circumstances

State of the register and marketplace evidence

[38] As a preliminary matter, I note that both in its written representations and at the hearing, the Opponent, relying, inter alia, on the decision Cross-Canada Auto Body Supply (Windsor) Ltd v Hyundai Auto Canada (2006), 2006 FCA 133, 53 CPR (4th) 286, has objected to the admissibility of the Dion and Jetté affidavits and submitted that they “should be struck from the record considering that they were made by employees of the law firm representing the Applicant and that they provide testimony on issues at the heart of the litigation that go beyond non-controversial issues.”

[39] Transposing the comments of the Registrar in Bacardi & Company Limited v Distribuidora Glasgow C.A., 2010 TMOB 55 at paragraph 11 (CanLII) to the present case, I agree with the reasoning in Cross Canada that it is not good practice for a law firm to cause its employees to act as investigators for the purpose of having them later give controversial evidence on the most crucial issues in the case. However, I do not think it is reasonable nor necessary to always expect law firms to hire third parties to investigate the state of the register and provide evidence of their results.

[40] In the present case, and as further explained in the cross-examination transcript and replies to undertakings, the Dion affidavit (1) essentially attaches the particulars of about twenty third party applications or registrations of trademarks containing the term “LIBER*” (“des marques de commerce qui incluaient des mots de type “LIBER”” [cross-examination transcript, pp 11 and 13]) in association with alcoholic beverages, using CIPO Trademarks database. I do not see how the fact that this evidence was introduced by an employee of the Applicant rather than by an outside trademark searcher renders the Dion (1) affidavit inadmissible. While there may be a subjective element to how the state of the register evidence is compiled, the information presented in Exhibit ADI-1 is essentially a reflection of existing Trademark Office records within the parameters of Ms. Dion’s search. Based on the foregoing, I refuse to strike the Dion (1) affidavit from the record. That said, and as will be discussed further below, there are limitations to the weight to be given to the Dion (1) affidavit.

[41] In the same vein, I refuse to strike the Jetté affidavit from the record. As outlined above, the Jetté affidavit purports to introduce into evidence state of the marketplace evidence with respect to alcoholic beverages bearing the terms “LIBER” or “LIBRE” as a mark or as a prefix or suffix of a mark in Canada. More particularly, and as further explained in the cross-examination transcript and reply to undertaking, Ms. Jetté essentially reproduces in her affidavit, the results of her search carried out through the “websites of the Crown corporations responsible for the trade in alcohol products in most Canadian provinces” that are identified at paragraph 3 of her affidavit together with their respective URL addresses. That said, and as will be discussed further below, there are limitations to the weight to be given to the Jetté affidavit.

[42] Turning to the Dion (2) affidavit that purports to introduce into evidence a copy of the “file wrapper” [Exhibit ADI-2] pertaining to the prosecution of the Opponent’s registered trademark LIBERADO, I agree with the Opponent that it suffers from serious admissibility issues because Ms. Dion admitted in cross-examination that: (i) she did not personally order the alleged file wrapper [transcript, p 18]; (ii) she states that Exhibit ADI-2 is not a certified copy [transcript, p 18]; (iii) she only consulted the first page of the document of what was filed as Exhibit ADI-2 and she did not verify if the document represents a complete document [transcript, p 19]; (iv) she cannot confirm that the document ADI-2 represents the correct file wrapper [transcript, p 21]; (v) she did not personally receive the documents from CIPO and does not know how the document ADI-2 was received [transcript, p 24]; and (vi) she does not know who wrote the handwritten inscriptions on the document [transcript, p 36-37]. Furthermore, in the absence of written or verbal representations from the Applicant, I do not see how Exhibit ADI-2 assists the Applicant in the context of the present proceeding. I will therefore not have regard to the Dion (2) affidavit.

[43] Now, reverting to the state of the register evidence introduced through the Dion (1) affidavit, I am reproducing under Schedule A hereto, the table of trademark applications and registrations revealed by Ms. Dion’s search as presented at paragraph 3 of her affidavit.

[44] As set out by the Registrar in Next retail Limited v Connected Apparel Company, LLC, 2022 TMOB 116:

[31] State of the register evidence favours an applicant when it can be shown that the presence of a common element in marks would cause consumers to pay more attention to the other features of the marks, and to distinguish between them by those other features [McDowell v Laverana GmbH & Co KG, 2017 FC 327 at para 42]. Inferences regarding the state of the marketplace may be drawn from such evidence in two situations: where a large number of relevant registrations are located; and/or where there is evidence of common use in the marketplace of relevant third party marks [Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA); McDowell v Laverana GmbH & Co KG, 2017 FC 327 at paras 41-46; and Cie Gervais Danone v Astro Dairy Products Ltd, (1999), 87 CPR (3d) 262 (FC)]. Relevant trademarks include those that (i) are registered or are allowed and based on use; (ii) are for similar goods and services as the marks at issue; and (iii) are those that include the component at issue in a material way [Sobeys West Inc v Schwan’s IP, LLC, 2015 TMOB 197].

[32] In Hawke & Company Outfitters LLC v Retail Royalty Company, 2012 FC 1539], the Court noted that the exact number of similar marks necessary to establish that an element of a mark was commonly adopted as a component of trademark used in association with the relevant goods or services at the material date likely depends on the facts of a given case. The Court also noted the difficulty of state of the register evidence as follows: “…a search of the Trade-marks Office Register is not the best way to establish the state of the marketplace or the actual use of a mark. The fact that a mark appears on the register does not show that it is currently in use, was in use as of the relevant material dates, is used in relation to wares or services similar to those of the parties, or the extent of any such use...” [para 40].

[33] In Canada Bread Company, Limited v Dr Smood ApS, 2010 FC 306, the Court, in its discussion of state of the register evidence, confirmed the Court’s comments in Hawke, above. The Court noted that “it remains very much unclear what inference may legitimately be drawn without evidence of the use made by third parties in the marketplace of a common element.” [para 61].

[45] In its written representations and at the hearing, the Opponent pointed out that certain of the applications and registrations listed under Schedule A are no longer active or their status is challenged, awaiting a determination pursuant to an opposition, notably the following:

· AMRUT LIBERTY (application No. 1,887,307) was abandoned following the applicant’s failure to file a counterstatement of opposition;

· AD SINCE 1948 AMRUT LIBERTY (application No. 1,887,312) was also abandoned following the applicant’s failure to file a counterstatement of opposition;

· LIBERTÉ (application No. 1,641,790), filed by the Applicant in the present case is currently under an opposition proceeding and no evidence has been filed by the Applicant;

· And LIBERTARIO (TMA887,709) was expunged by the Registrar pursuant to a section 45 proceeding.

[46] After removing those trademarks as well as the Mark and the Opponent’s trademark from Schedule A, I am of the view that none of the trademarks that incorporate the English word LIBERTY or the French word LIBERTÉ is as “close” to the Mark as the Opponent’s trademark as neither of them may be perceived as a coined word or a word of a foreign language and because of their very different sounding. This leaves us with the following trademarks that I consider to be the most pertinent as they may be viewed or considered by the average consumer as words in a foreign language arguably somewhat evoking the idea of liberty:

· CHATEAU LIBERTAS

· LIBER PATER

· LIBERTA’DEI COLLAZI

· LIBERTAD

· LIEBERSTEIN

· MANOS LIBRE

· OUDE LIBERTAS

· VINO LIBERO and Design

[47] Still, each of them has a very different sounding than the parties’ trademarks. Furthermore, I do not consider these eight applications or registrations to represent a number significant enough for inferences about the state of the marketplace to be drawn.

[48] This brings me to consider the Jetté affidavit.

[49] Ms. Jetté provides at paragraph 3 of her affidavit the print screens of her search conducted on the websites of the following provincial liquor boards: Société des alcools du Québec; Liquor Control Board of Ontario; New Brunswick Liquor; British Columbia Liquor Stores; Saskatchewan Liquor; LiquorMarts Manitoba; Nova Scotia Liquor Corporation; and Prince Edward Island Liquor Control Commission. The results are represented in tables that include in the left column, the following items listed (some of which are redundant):

· UNION LIBRE

· FIGURE LIBRE FREESTYLE Domaine Gayda

· BODEGAS LIBERALIA LIBER (2014)

· LIBER PATER CIRO’GAGLIOPPO (2015)

· LIBER FARM AND WINERY

· LIBERTY SCHOOL

· GRAPPA LIBERA DA PONTE (18 years)

· LIBERATED Rosehall Run;

· CHÂTEAU HAUT-BAGES LIBÉRAL (2015 and 2016)

· MAS DE CAMBRES LIBRES PENSÉES (2015)

· THE DUBLIN LIBERTIES OAK DEVIL

· LIBERTY VILLAGE DRY CIDER

· RICHIBUCTO RIVER COUNTRY LIBERTY

· FLYING BOAT LIBERATOR APA

· LIBERADO (owned by the Opponent)

· COLLAZI LIBERTA

· CAHORS CHÂTEAU DU CÈDRE EXTRA LIBRE

· ANCHOR LIBERTY ALE

· MANOS LIBRE ORGANIC

· ICED LIBERTY BLOSSOM

[50] Both in its written representations and at the hearing, the Opponent stressed that Ms. Jetté acknowledged in cross-examination that: (i) she cannot confirm that the print screens reproduced at paragraph 3 of her affidavit are representative of the labels affixed to the products sold to the consumer [transcript, pp 39 and 72]; (ii) she did not personally buy any of the alleged products [transcript, p 42]; (iii) she did not make any verification concerning the said products or their availability [transcript, p 42]; (iv) the “product” names which appear in the affidavit’s left column tables (and reproduced above) were chosen by the affiant and do not necessarily reflect what appears on the products allegedly in stores [transcript, pp 59 to 61]; and (v) she did not verify the stock of the alleged products [transcript, pp 62 to 66].

[51] I agree with the Opponent that there are reliability issues with respect to the information as presented in the Jetté affidavit. For example, I note that in many of the images of products reproduced in the print screens at paragraph 3 of the affidavit, the label text in the bottles images is illegible. That said, I note the products names listed in the affidavit’s left column tables essentially match the ones displayed on the presentation page of each such product featured on the exhibited print screens. Considering the official nature of the exhibited provincial liquor boards websites, I am prepared to accept that the print screens reproduced at paragraph 3 of the Jetté affidavit can not only be relied upon as proof of the existence these websites, but also as proof of the truth of their content.

[52] However, the fact remains that there is no indication as to the extent of the sales of the products revealed by Ms. Jetté’s search and that there is no evidence establishing since when these products have been sold. Furthermore, I find again that none of these marks is as “close” to the Mark as the Opponent’s trademark.

[53] In view of the above, I find that this surrounding circumstance favours the Applicant but only to a limited extent.

Conclusion regarding the likelihood of confusion

[54] Having considered all of the surrounding circumstances, and in particular the high degree of resemblance in the parties’ marks, the fact that the parties’ goods and channels of trade are the same or clearly overlapping, and the extent to which the Opponent’s trademark has become known, I find that at best for the Applicant, the probability of confusion between the Mark and the Opponent’s trademark LIBERADO is evenly balanced between a finding of confusion and no confusion. In my view, the state of the register evidence is not sufficient to outweigh the factors favouring the Opponent and avoid a likelihood of confusion.

[55] As the onus is on the Applicant to demonstrate on a balance of probabilities that there is no reasonable likelihood of confusion between the marks, I find against the Applicant.

[56] Accordingly, the section 12(1)(d) ground of opposition is successful.

Section 16(3)(a) ground of opposition

[57] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark because at the date of filing of the Application based on proposed use, the Mark was confusing with the Opponent’s LIBERADO trademark, previously used in Canada by the Opponent.

[58] In order to meet its initial burden under section 16(3)(a) of the Act, the Opponent must show that as of the date of filing of the Application, its trademark had been previously used in Canada and had not been abandoned as of the date of advertisement of the Application [section 16(5) of the Act]. In this regard, and as noted by the Registrar in Olive Me Inc,et al v 1887150 Ontario Inc, 2020 TMOB 26, section 16 of the Act does not require that an opponent prove a certain level of use or reputation. If the opponent demonstrates that its use meets the requirements of section 4 of the Act, that such use occurred prior to the filing date, and that its trademark was not abandoned at the date of advertisement of the applicant’s application, the opponent will have met its burden of demonstrating prior use for the purposes of an opposition under section 16 of the Act, even if that proof is limited to a single sale or single event, to the extent that such is in the normal course of trade [7666705 Canada Inc v 9301-7671 Québec Inc, 2015 TMOB 150].

[59] As per my review above of the Hunt affidavit, I am satisfied that the Opponent has met its initial evidential burden.

[60] In my view, the Applicant’s position is not stronger as of the earlier date of September 1, 2017 than it is of today’s date. Indeed, while the sections 6(5)(a) and (b) factors do not favour the Opponent as much as under the section 12(1)(d) ground of opposition, the state of the marketplace evidence introduced through the Jetté affidavit cannot be considered as it postdates the material date to assess the present ground of opposition.

[61] Accordingly, I reach the same conclusion regarding the likelihood of confusion as under the section 12(1)(d) ground of opposition and this ground of opposition is successful.

Remaining grounds of opposition

[62] As the Opponent has already succeeded under two grounds of opposition, it is not necessary to address the remaining grounds of opposition.

Disposition

[63] 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.

Annie Robitaille

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Schedule A

TRADEMARK	OWNER	APPLICATION NO. / DATE	REGISTRATION NO. / DATE	GOODS/SERVICES
AD SINCE 1948 AMRUT LIBERTY	Amrut Distilleries PVT Ltd	1887312 2018-03-09		(Int'l Class: 33) Goods: Vodka; Brandy; Gin; Rum; Whisky
AMRUT LIBERTY	Amrut Distilleries PVT Ltd	1887307 2018-03-09		(Int'l Class: 33) Goods: Vodka; Brandy; Gin; Rum; Whisky
CHATEAU LIBERTAS	Stellenbosch Farmer's Winery Limited	0288107 1965-03-16	142735 1965-11-19	Goods: Light red wine.
CUBA LIBRE ORIGINAL FORMULA and Design	Cuba Libre Products Inc.	1101254 2001-05-07	623220 2004-10-22	Goods: Distilled alcoholic rum and soft drink beverage.
LIBER PATER	Loïc Pasquet	1529483 2011-05-27	883347 2014-08-04	Goods: Vins.
LIBERADO	Vins Arterra Canada, Division Québec, Inc.	1799365 2016-09-08	1008747 2018-11-13	(Int'l Class: 33) Goods: Alcoholic beverages, namely wine.
LIBERTÉ	Lidl Stiftung & Co. KG	1641790 2013-09-03		(Int'l Class: 33) Goods: Distilled spirits, namely rum; rum based alcoholic beverages not containing ale, beer and any other malt containing beverages
LIBERTA' DEI COLLAZZI	Fattoria I Collazzi Societa' Agricola	1521313 2011-03-29	820505 2012-03-22	Goods: Wines.
LIBERTAD	Bodega Argento S.A.	1906556 2018-06-27		(Int'l Class: 33) Goods: Wine.
LIBERTARIO	Lidl Stiftung & Co. KG	1590683 2012-08-20	887709 2014-10-08	(Int'l Class: 33) Goods: Alcoholic beverages except beers, namely wines, sparkling wines

TRADEMARK	OWNER	APPLICATION NO. / DATE	REGISTRATION NO. / DATE	GOODS/SERVICES
LIBERTARIO	Lidl Stiftung & Co. KG	1855539 2017-09-01		Goods: Alcoholic beverages except beers, namely wines, sparkling wines.
LIBERTY	Liberty Merchant Company Inc. also doing business as The Liberty Distillery Company	1475345 2010-03-31	949967 2016-09-21	Goods: Distilled spirits namely, vodka, gin, whiskey; Services: Operation of a distillery; manufacturing, sale, importation and bottling of distilled spirits; Providing the service of distilled spirit tastings.
LIBERTY	Liberty Merchant Company Inc.	1161635 2002-12-06	605283 2004-03-16	Services: Retail store services featuring alcoholic beverages excluding all types and styles of beer and beer-based beverages.
LIBERTY CREEK and Design	E. & J. Gallo Winery	1722862 2015-04-08	934883 2016-04-14	Goods: Alcoholic beverages, namely wines
LIBERTY SCHOOL	Treana Winery LLC	1329405 2006-12-22	701553 2007-11-23	(Int'l Class: 33) Goods: Wine.
LIEBERSTEIN	Stellenbosch Farmer's Winery Limited	0288109 1965-03-16	142737 1965-11-19	Goods: Wines.
LIME LIBERTINE	Aquilini Brands	1971275 2019-06-17		(Int'l Class: 33) Goods: Alcoholic beverages, namely, vodka based coolers and malt based coolers.
MANOS LIBRE	Hammeken Cellars	1865176 2017-10-30	1024769 2019-06-11	(Int'l Class: 33) Goods : Wines
OUDE LIBERTAS	Stellenbosch Farmers' Winery Limited	0369169 1973-10-24	201049 1974-08-09	Goods: Wines, spirits and liqueurs.

TRADEMARK	OWNER	APPLICATION NO. / DATE	REGISTRATION NO. / DATE	GOODS/SERVICES
SINCE 2012 LIBERTY VILLAGE	Liberty Village Brewing Company Ltd.	1890986 2018-03-29		(Int'l Class: 05) Goods: Hemp, marijuana, and cannabis; cannabis extracts and preparations (Int'l Class: 30) Goods: Food products containing cannabiniods; coffee; tea (Int'l Class: 32) Goods: Beer Goods: Flavoured beer, malt and beer based coolers, non- alcoholic beer, non- alcoholic flavoured beer, non-alcoholic beverages, beverages infused with cannabiniods; non- alcoholic health beverages (Int'l Class: 33) Goods: Cider, hard cider, flavoured cider, cider based coolers, vodka, gin, rum, rye, tequila, alcoholic coolers, vodka-based coolers, gin-based coolers, rum-based coolers, rye- based coolers, tequila- based coolers (Int'l Class: 43) Services: Operation of a brewery, cidery and distillery; bar and restaurant services
THE DUBLIN LIBERTIES	The Dublin Liberties Whiskey Company Limited	1690674 2014-08-21	979279 2017-08-24	Goods : Irish whiskey
VINO LIBERO and Design	Casa E. Di Mirafiore & Fontanafredda S.r.l.	674675 2014-04-29	942552 2016-07-06	Goods: Wines Services: Retail services of foodstuffs, alcoholic and non-alcoholic beverages; Organization and conducting wine exhibitions; Organization and conducting of shows and conventions regarding wine industry; Services for providing food and drink, namely restaurant services, wine shops, wine bar services.

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2022-09-14

APPEARANCES

Bruno Barrette	For the Opponent
No one appearing	For the Applicant

AGENTS OF RECORD

Barrette Legal Inc.	For the Opponent
Robic	For the Applicant