Citation: 2022 TMOB 202

Date of Decision: 2022-10-24

IN THE MATTER OF AN OPPOSITION

	Shanxi Valley Tribute Grain Trading Co., Ltd.	Opponent
And
	Shanxi Qinzhouhuang Millet (Group) Co. Ltd.	Applicant
	1,816,569	Application

Overview

[1] Shanxi Qinzhouhuang Millet (Group) Co. Ltd. (the Applicant) has filed application No. 1,816,569 (the Application) to register the trademark entitled Chinese characters Design (the Mark), depicted below, in association with: Yeast powder; processed millet for food; flour for food; semolina; groats for human food; cereal-based snack food; instant rice; rice-based snack food; edible flour; rice; rice flour; soya flour; corn chips; hominy grits; flour; Chinese rice noodles [bifun, uncooked]; nut flours; burritos (the Goods).

[2] Shanxi Valley Tribute Grain Trading Co., Ltd. (the Opponent) has opposed the Application primarily on the basis of an alleged likelihood of confusion with its registration No. TMA982,155 for QINZHOUHUANG Design, shown below, registered in association with: (1) processed grains, processed grains for eating; (2) unprocessed grain, unprocessed grains for eating.

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

The Record

[4] The Application was filed on January 4, 2017, and is based on proposed use of the Mark in Canada in association with the Goods.

[5] I note that the Applicant included the following foreign character transliteration and translation as part of its Application: “The Applicant confirms that the Latin transliteration of the foreign characters contained in the subject mark is QIN; ZHOU; HUANG. The Applicant confirms that the English translation of the foreign characters contained in the subject mark is TO SEEP; PREFECTURE; YELLOW.”

[6] The Application was advertised for opposition purposes in the Trademarks Journal on January 30, 2019. On June 11, 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, and pursuant to section 70 of the Act, the grounds of opposition in this proceeding will be assessed based on the Act as it read prior to June 17, 2019.

[7] The Opponent raises grounds of opposition based on registrability under section 12(1)(d), entitlement under section 16(3)(a), and distinctiveness under section 2.

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

[9] The Opponent filed as its evidence the affidavits of Jing LI, Operations Manager of Hua Men Trading Co., Ltd. (Hua Men), a distributor and licensee of the Opponent’s mark in Canada, and Wei Chen, President of the Opponent. The Applicant filed the affidavit of YawoWu SHI, Chairman of the Board of the Applicant as well as certified copies of Chinese trademark registrations. As its evidence in reply, the Opponent filed a second affidavit of Jing LI. None of the affiants were cross-examined. Only the Opponent filed written representations and a hearing was not requested.

Onus

[10] The legal onus is on the Applicant to show that the Application complies with the provisions of the Act. However, 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 each ground of opposition exist. Once this initial burden is met, the Applicant must satisfy the Registrar, on a balance of probabilities, that the grounds of opposition pleaded should not prevent the registration of the Mark [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298; Dion Neckwear Ltd v Christian Dior, SA (2002), 20 CPR (4th) 155 (FCA)].

Preliminary Issues

[11] The Opponent submits that most of the YaoWu SHI affidavit is inadmissible for the following reasons:

• its irrelevance to the Canadian market and the Canadian application

• the presentation of much of the evidence solely in a foreign language with no translation

• the misrepresentation in the limited English description provided for certain foreign language documents and

• for not providing the evidence as a sworn affidavit

[12] I will focus this part of my decision on the Opponent’s technical objections to the Applicant’s evidence. I do not find that the relevance of the Applicant’s evidence is an issue that needs to be addressed at this point in my decision.

Not an Affidavit

[13] The Opponent submits that the SHI document is not a proper affidavit for several reasons. For one, the certificate issued by China Counsel for the Promotion of International Trade (China Chamber of International Commerce) (the “Certificate”) clearly stated that “THIS IS TO CERTIFY THAT : the signature of SHI YAOWU of SHANXI QINZHOUHUANG MILLET (GROUP) CO., LTD. and the seal of the said company on the annexed DOCUMENT are genuine.” The Opponent submits that this confirms that the document is merely a signed document, not an affidavit sworn before a notary public.

[14] Further, the Certificate signed by the China Counsel for the Promotion of International Trade (China Chamber of International Commerce) (CCIT) is dated March 17, 2021, which is 12 days after the document was signed by Mr. SHI. The Opponent submits that this further confirms that the document was not even signed or sworn before the CCIT.

[15] Finally, none of the exhibits have been signed by Mr. SHI or sworn before the CCIT counsel.

[16] Generally, the Registrar will accept affidavits (or declarations) sworn (or declared) in foreign jurisdictions as long as they meet the requirements of that jurisdiction [88766 Canada Inc v Kabushiki Bandai Namco Entertainment (also trading as Bandai Namco Entertainment Inc) 2016 TMOB 74; Orion Corporation v Cross Vetpharm Group Limited, 2018 TMOB 8; Dubuc v Montana (1991), 38 CPR (3d) 88 (TMOB)].

[17] In this case however, there is nothing in the record to suggest that the affidavit was sworn or notarized at all. Further, the Opponent raised its objections to this evidence almost immediately after it was filed, through its reply evidence. The Applicant therefore was alerted to the deficiencies and could have taken steps to address them.

[18] Finally, as will be discussed below, although exhibits A through J to the SHI affidavit match the description provided in the affidavit by Mr. SHI to some extent, many of these exhibits are either entirely or partially in Chinese. Any English translations provided are deficient in several respects.

[19] In view of the above, I consider the SHI evidence to be inadmissible. I note here that even if I were to treat these documents as admissible and consider them as part of the Applicant’s evidence, they would not have any impact on the outcome of the analysis of the grounds of opposition, as will be discussed below

Foreign Language Documents

[20] Most of the attachments to the SHI affidavit comprise untranslated documents in a foreign language (either entirely or partially) or English text that was either incomplete or modified in some way. In this regard, the certified English translation provided by the Opponent’s affiant clearly demonstrates that the English texts provided by the Applicant were not accurate translations of the Chinese text [LI affidavit #2, para. 19-20].

[21] I agree with the Opponent that the exhibits which are in languages other than English or French and not accompanied by a certified translation are inadmissible. This is consistent with section 68(1) of the Federal Court Rules¸ SOR/ 98-106, which states that, “…all documents required under these Rules to be filed in a proceeding shall be in English or French or be accompanied by a translation in English or French and an affidavit attesting to the accuracy of the translation”.

[22] In this case, while some English translations of some texts were provided, in view that the Opponent’s evidence shows that these English translations were not reliable, I am not prepared to afford any weight to them. In any case, as noted above, I have already considered the entire SHI affidavit and exhibits to be inadmissible.

Grounds of Opposition

Section 12(1)(d) - Registrability

[23] The Opponent pleads that the Mark is not registrable because it is confusing with its registration No. TMA982,155 for QINZHOUHUANG Design, shown above. The Opponent’s mark is registered in association with the following goods: (1) Processed grains, processed grains for eating; (2) Unprocessed grain, unprocessed grains for eating. The transliteration of the Chinese characters as shown on the registration is QINZHOUHUANG. The foreign character translation is the following: “The first two characters QINZHOU is a county name in Shanxi province, China. The third character Huang means yellow. The three words in combination do not have any particular meaning in English or French.”

[24] The material date for the section 12(1)(d) ground of opposition is the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)]. I have exercised my discretion to check the Register and confirm that the registration relied on by the Opponent remains extant [see Quaker Oats Co Ltd of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. The Opponent has therefore met its initial evidential burden with respect to this ground of opposition. As a result, the Applicant bears the legal burden of demonstrating, on a balance of probabilities, that there is no likelihood of confusion between the Mark and the Opponent’s registered trademark.

Test for confusion

[25] The test for confusion is set out in section 6(2) of the Act which provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would likely lead to the inference that the goods and services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods and services are of the same general class or appear in the same class of the Nice Classification. In making such an assessment, I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5) of the Act: the inherent distinctiveness of the trademarks and the extent to which they have become known; the length of time the trademarks have been in use; the nature of the goods and services or business; the nature of the trade; and the degree of resemblance between the trademarks in appearance, or sound or in the ideas suggested by them.

[26] These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23, 49 CPR (4th) 401; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR 772 at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 at para 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.

[27] The test for confusion is assessed 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 they have no more than an imperfect recollection of the opponent’s trademark, and do not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks [Veuve Clicquot, supra, at para 20].

Average Consumer

[28] It has been established that the average consumer is generally Anglophone, Francophone, or bilingual in English and French [Pierre Fabre Médicament v SmithKline Beecham Corp (2001), 2001 FCA 13, 11 CPR (4th) 1 at para 15].

[29] In its written representations, the Opponent submits the following:

…In addition, both marks are in Chinese, with no other text. Both marks are for the Chinese population, a niche market in Canada. Because the only prominent, unique, pronounceable part in the Proposed Mark is identical to the Opponent’s Registered Mark, they would be pronounced and referred to in the same way by a Chinese consumer.

Thus, it is clear that the channels of the trade would overlap…. As the goods are also directed to a niche market, namely, Chinese speaking retail consumers in Canada and Chinese supermarkets, it is highly likely that the channels of trade would overlap, for this reason as well. This factor also favors the Opponent.

[30] I note that in the present case, there is no evidence showing that either the Applicant or the Opponent has targeted the Chinese community anywhere in Canada. There is also no evidence to support a finding that a substantial portion of the Applicant or the Opponent’s customers would be able to read and understand Chinese.

[31] Accordingly, while I acknowledge that in some cases it is appropriate to consider the average consumer to be a person able to read and understand Chinese characters, based on the evidence of record, I do not consider this to be such a case [see Baycliff Company, Inc v CHENG, Wai Tao, 2018 TMOB 66].

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

[32] This factor involves a consideration of both the inherent and acquired distinctiveness of the parties’ respective trademarks. I find that both parties’ trademarks are inherently distinctive because they have no meaning in English or French in relation to their goods. The stylization of the Mark, including the ornamental motifs as well as the circle containing the image of a what appears to be a soldier, adds to the overall distinctiveness of the Mark, making it slightly inherently stronger than the Opponent’s mark.

[33] With respect to the extent known of the Opponent’s mark, the LI Affidavit demonstrates the Opponent’s use of the trademark through Hua Men. Sales of products branded with the Opponent’s trademark from Hua Men to retailers and supermarket chain stores have ranged from $111,000 to $156,000 between 2016 and 2019. He also attaches as Exhibit H to his affidavit examples of Hua Men’s invoices for purchases made by Hua Men’s customers in Canada between 2015 and 2019. Mr. LI further states that the Opponent’s goods are sold in around 90 stores in Canada, and that all of the products sold feature the Opponent’s mark on the packaging. Over $135,000 has been spent promoting the Opponent’s mark in Canada, including on in store displays of the Opponent’s products as well as in weekly advertisement flyers. I am satisfied from this evidence that the Opponent’s mark is known to at least some extent in Canada.

[34] For the Applicant’s Mark, admissibility issues aside, the SHI affidavit shows that the Applicant began exporting its millet products in association with the Mark to various distributors in Canada in 2015. Attached as Exhibit G and I to his affidavit are images representative of the Applicant’s product distributed in Canada by MDF Export Ltd. or AFOD Ltd. in 2015 and 2018. Copies of sales contracts and purchase orders between the Applicant and its Canadian distributor MDF Export Ltd., since as early as 2015, are attached as Schedule J to Mr. SHI’s affidavit. Mr. SHI also states that approximate annual revenues of the Applicant’s millet products bearing the Mark in Canada per year since 2018 have been approximately $11,400.

[35] However, all the sales contract and purchase orders attached to Mr. SHI’s affidavit show is a foreign sale, where the distributor in Canada is the purchaser of the Goods from the Applicant’s company in China. In my view, the mere export of goods in association with the Mark from China to Canada, without any evidence of subsequent sales or distribution of the goods in Canada, is not sufficient to show that the Mark has become made known to any extent in Canada. Therefore, in the absence of any corroborating evidence of sales or making known of the Applicant’s product in association with the Mark in Canada, I am unable to find that the Mark has acquired any acquired distinctiveness in Canada.

[36] In these circumstances, while the Applicant’s Mark may possess a slightly higher degree of inherent distinctiveness, given that the Opponent’s mark has become known to a greater extent in Canada than the Mark, on balance I find that this factor favours the Opponent.

Length of time the trademarks have been in use

[37] As noted above, the Opponent’s evidence indicates that it has used its trademark in Canada since 2016. While the Applicant’s evidence purports to show that it has used its trademark in Canada since 2015, in view of the evidentiary deficiencies of the Applicant’s evidence, I find that factor favours the Opponent.

 

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

[38] The Opponent’s goods and the applied for Goods include grain and food products and as such either overlap or are closely related. The Opponent’s evidence also shows that the parties’ products would be promoted and shelved together.

[39] With respect to the parties’ channels of trade, the Opponent’s evidence shows that both parties’ products are sold in supermarkets and retail grocery stores. In the absence of evidence to the contrary from the Applicant, I find that the parties’ channels of trade would also overlap.

Degree of resemblance

[40] The Opponent submits that because the only prominent, unique, pronounceable part in the Proposed Mark is identical to the Opponent’s Registered Mark, they would be pronounced and referred to in the same way by a Chinese consumer.

[41] The Opponent further submits the following:

The marks are highly similar to each other. In fact, the Proposed Mark is in essence the Opponent’s Registered Mark with some added surrounding decorative designs. The only unique, prominent and pronounceable part of the Proposed Mark consists of three Chinese characters, which are identical to the Registered Mark and have the same visual appearance. They are therefore pronounced the same way and have identically the same meaning, to a Chinese speaking consumer. LI, para. 23.

[42] However, as noted above, there is no evidence in this case that the average consumer of the parties’ goods can read and/or speak Chinese. I have therefore disregarded the Opponent’s arguments regarding the similarity of the marks in sound or idea suggested to the average Chinese speaking consumer.

[43] Having said that, the Applicant’s Mark does incorporate the Opponent’s trademark in its entirety. While the Mark also includes an additional design element around the Chinese characters, this design element, in my view, this does not assist the Applicant in this case. The Applicant’s Mark depicts characters in a font which is noticeably similar in appearance to the font used by the Opponent to depict its trademark. I therefore find that there is a meaningful degree of resemblance between the parties’ trademarks in appearance. As there is no evidence that the average Canadian consumer would be aware of the meaning of the Chinese characters in the parties’ marks, both marks would likely be viewed as simply being suggestive of Asian influences [see Shanghai Tobacco (Group) Corporation v Duobaoli Tobacco (HK) Co, Ltd, 2014 TMOB 242 at para 26].

Conclusion regarding the section 12(1)(d) ground

[44] Having considered all of the surrounding circumstances, I conclude that the Applicant has not satisfied its legal burden to show that there is no reasonable likelihood of confusion between the parties’ trademarks. I reach this conclusion considering that each of the statutory factors favour the Opponent, including the degree of resemblance between the parties’ trademarks, the use of the Opponent’s trademark and the extent to which it has become known, and the overlap in the parties’ goods and channels of trade.

[45] Consequently, the section 12(1)(d) ground of opposition succeeds.

Section 16(3)(a) – Non-entitlement to registration

[46] With this ground of opposition, the Opponent pleads that the Applicant is not the person entitled to register the Mark because, as of the Application filing date, it was confusing with the Opponent’s QINZHOUHUANG Design trademark, previously used in Canada in association with processed grains, processed grains for eating, unprocessed grain and unprocessed grains for eating.

[47] The Opponent has readily met its initial evidential burden for this ground of opposition, as it has demonstrated use of its QINZHOUHUANG Design trademark in Canada since prior to the Application filing date, namely January 4, 2017. The legal burden is therefore on the Applicant to demonstrate that there was no likelihood of confusion between the marks as of the this date.

[48] In my view, the earlier material date for the non-entitlement ground of opposition does not alter the confusion analysis set out above for the section 12(1)(d) ground of opposition. Thus, the Applicant has not met its legal burden to demonstrate no likelihood of confusion as of the material date for the non-entitlement ground, and the section 16(3)(a) ground of opposition is also successful.

Remaining grounds of opposition

[49] As I have already found in the Opponent’s favour in respect of the section 12(1)(d) and section 16(3)(a) grounds of opposition, I will refrain from addressing the section 2 ground of opposition.

Disposition

[50] 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.

Cindy Folz

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No hearing held.

AGENTS OF RECORD

Dale & Lessman LLP	For the Opponent
Borden Ladner Gervais LLP	For the Applicant