Canadian Intellectual Property Office
Citation: 2023 TMOB 030
Date of Decision: 2023-02-20
IN THE MATTER OF OPPOSITION
Opponent: East India Company Ltd.
Applicant: East India Company (Pub & Eatery)
Applications: 1,878,502 for EAST INDIA COMPANY & Design
Introduction
[1] East India Company (Pub & Eatery) (the Applicant), is the owner and operator of one restaurant in Winnipeg, Manitoba, and two restaurants in Ottawa, Ontario, all of which trade under the trademark EAST INDIA COMPANY. The Applicant has applied to register the trademark EAST INDIA COMPANY & Design (the Mark), shown below, in association with a variety of food items including seasonings, spices, sauces, and meal kits, as well as catering services and catering equipment rentals.
[2] East India Company Ltd. (the Opponent) is a family business which began in Canada in 1972 as a wholesale business that focused on spices and food products from South Asia. The Opponent’s business has since evolved into a multi generational family run business with an expanded scope of products and services, including importing, distributing, and wholesaling food, beauty and health care products from around the world, with a specialization in spices and dry ingredients. The Opponent has allegedly been using the trademarks EAST INDIA COMPANY, and EAST INDIA COMPANY LTD. & Design (the Opponent’s EAST INDIA COMPANY trademarks) in association with its goods and services since 1982. It opposes the Mark primarily on the basis of confusion with its trademarks, as well as on an allegation of bad faith based on a previous agreement entered into by the parties.
[3] For the reasons that follow, the opposition is rejected.
Background
[4] The Applicant filed its application for the Mark on January 19, 2018. The Mark was advertised in the Trademarks Journal on November 25, 2020 in association with the following goods and services:
Goods
(1) Pickles
(2) Seasonings; spices; tea
(3) Tomato chutney, mango chutney, tikka masala spicy hot sauce; Sweets, namely, ladoo, namely graham flour balls; gulab jamuns, namely milk flour balls in rose water; fudge
(4) Vegetarian meal kits consisting of vegetables, rice, yoghurt and naan bread, including rice as the predominant ingredient; Non-Vegetarian meal kits consisting of chicken, beef, pork, cheese, vegetables, rice and naan bread, wherein rice is the predominant ingredient
(5) Butter chicken sauce, spicy butter chicken sauce, coconut korma sauce, mother curry sauce, tikka masala sauce, vindaloo curry sauce
Services
(1) Catering services
(2) Catering equipment rentals
[5] The application includes claims of use of the Mark in Canada since at least as early as May 1, 2011, on goods (2) and (5); use since at least as early as May 1, 2012, on goods (3); use since at least as early as April 18, 1994, on services; and proposed use in Canada on goods (1) and (4).
[6] On May 21, 2021, the Opponent filed a statement of opposition alleging grounds of opposition under section 38(2)(a.1), section 16(1)(a), section 38(2)(d) and section 38(2)(f) of the Trademarks Act, RSC 1985, c T-13 (the Act). All references in this decision to the Act are to the Act as amended June 17, 2019, unless otherwise noted.
[7] The Applicant filed and served its counter statement on July 22, 2021.
[8] As its evidence, the Opponent filed the Affidavit of Sapna Jain, Director and Co-owner of the Opponent. Mr. Jain was not cross-examined.
[9] The Applicant filed as its evidence the affidavit of Sudha Mehra, owner, chef and Co-General Manager of the Applicant, as well the affidavit of Sachit Mehra, owner and Co-General Manager of the Applicant. The Applicant was later granted leave to file a second affidavit of Sachit Mehra as additional evidence. Neither of the Applicant’s affiants were cross-examined.
[10] Only the Applicant filed written representations. A hearing was not held.
[11] I will first summarize the parties’ conflicting views of the alleged agreement between them and then assess the grounds of opposition.
Alleged Agreement Between the Parties
[12] The evidence of Mr. Jain and the second affidavit of Sachit Mehra contradict each other with respect to an alleged verbal agreement between the parties.
[13] According to Mr. Jain, the Opponent became aware of the Applicant on or about 2016. The Opponent advised the Applicant that it did not take issue with the Applicant’s use of the trademark EAST INDIA COMPANY as it related to restaurant services. However, the Opponent, through an individual by the name of Ravi Jain, advised the Applicant that it strongly objected to the Applicant’s use of EAST INDIA COMPANY as a trademark in association with mass market consumer food products, including spices, herbs and sauces. Mr. Jain explains that the parties then entered into a verbal agreement sometime in 2016, whereby the Applicant agreed not to use EAST INDIA COMPANY, or anything confusingly similar thereto, in association with mass market consumer food products, such as spices and herbs. In the “spirit of cooperation”, Mr. Jain further states that the Opponent consented to the Applicant’s use of EAST INDIA COMPANY in association with sauces. Mr. Jain notes that this was a “gentleman’s handshake” deal. However, contrary to the agreement, the Applicant continued to use a near identical trademark to those trademarks of the Opponent in an expanded product line.
[14] The Applicant’s version of the story is somewhat different. In this regard, Mr. Mehra states the following at paragraphs 3 and 4 of his second affidavit:
ln paragraph 10 of the Opponent's Evidence, the Opponent alleged that a verbal agreement or "gentlemen's handshake" deal was entered into between the Opponent and Applicant whereby the Applicant allegedly agreed not to use the trademark EAST INDIA COMPANY, or any confusingly similar trademark, in association with mass market consumer food products, such as spices or herbs, with the exception of sauces.
I was the representative of the Applicant that spoke with Ravi Jain and deny all of the allegations of a settlement in paragraph 10 of the Opponent's Evidence. No verbal agreement or "gentlemen's handshake" deal (or otherwise) was ever entered into between the Opponent and the Applicant.
[15] The Applicant’s agent also submits the following at paragraph 40 of its written representations:
In paragraph 10 of the Affidavit of Sapna Jain, the Opponent alleges that a verbal agreement or a gentlemen’s handshake deal was entered into with the Applicant, whereby the Applicant allegedly agreed to restrict the use the Applicant’s Mark, or any confusingly similar trademark, in association with mass market consumer food products, including, spices and herbs, but not sauces. The Applicant denies all allegations of any such settlement, gentlemen’s handshake deal, or verbal agreement. Sachit Mehra, the representative of the Applicant that spoke with Ravi Jain, directly and specifically denied all such allegations of a settlement and was not cross examined on his evidence. The Applicant notes that the Opponent has offered no documentary evidence in support of this allegation. Further, the alleged verbal agreement was made between the Applicant and Ravi Jain, not the affiant. Again, evidence by third parties is inadmissible hearsay. Notwithstanding that this alleged verbal agreement never took place and does not exist, the Applicant submits that any reference to the alleged verbal agreement by the Opponent must be considered inadmissible hearsay and disregarded by the Registrar.
Grounds of Opposition
Section 38(2)(a.1): The Application was filed in bad faith
[16] The Opponent pleads the following under the section 38(2)(a.1) ground of opposition:
The applicant was aware of the Opponent's trademark portfolio and brand, which has significantly pre-existed that of the applicant. The Opponent's trademark rights significantly precede those of the Applicant. The Opponent commenced use of its trademarks in association with, inter alia, spices and food products and the wholesale importation and distribution of spices and food products in 1982. The Applicant was aware of the Opponent and the Opponent's trademark rights and nonetheless sought to formalize trademark protection for a confusingly similar trademark in an identical industry as the Opponent. In fact, the parties entered into a verbal agreement whereby the Applicant would not expand its product line into food products that were similar to the Opponent's.
[17] Section 38(2)(a.1) of the Act was introduced in Bill C-86 as part of the Budget Implementation Act No. 2, SC 2018, c 27. This new ground of opposition is reproduced as follows:
(2) A statement of opposition may be based on any of the following grounds:
…
(a.1) that the application was filed in bad faith;
[18] As noted by the Applicant, a definition of “bad faith” was not introduced along with the provision. The purpose of section 18(1)(e), along with its corresponding ground of opposition, was described in the Legislative Summary Publication No 42-1-C86-E as aiming to “hinder the registration of a trademark for the sole purpose of extracting value from preventing others from using it.” [see Legislative Summary Publication No 42-1-C86-E, 14 December 2018, at section 2.5.7.2, Subdivision B]. Although “bad faith” under the Act has only been considered to a limited extent in Canadian jurisprudence, the Federal Court has stated the concept of “bad faith” must be interpreted in light of the context in which it is used. To date, the cases where the FC has been before the FC have involved egregious conduct. For example, if the applicant was aware of the opponent’s trademark and had no commercial intention of using its trademark, but instead sought to obtain the registration solely to benefit from the opponent’s reputation and goodwill [see Beijing Judian Restaurant Co Ltd v Meng, 2022 FC 743 at paras 30-42].
[19] More recently, in Blossman Gas, Inc v Alliance Autopropane Inc, the Federal Court discussed jurisprudence from the UK/EU which suggests that the standard for determining what is necessary to find bad faith is objective as opposed to subjective. In this regard, the Court referred to the following six principles governing bad faith in the EU and the UK:
(1) good faith is presumed unless the contrary is proved on a balance of probabilities;
(2) bad faith includes not only dishonesty but also “some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced people in the particular area being examined”;
(3) the purpose of bad faith as a ground of invalidity is to prevent abuse of the trademark system, either vis-à-vis the trademarks office or third parties;
(4) the determination of bad faith is an overall assessment taking into account all factors relevant to the particular case;
(5) the court or tribunal must ascertain what the applicant knew and then decide whether, in light of that knowledge, their conduct was dishonest or otherwise falls short of the standards of acceptable commercial behaviour, judged by ordinary standards of honest people and not the applicant’s own standards; and
(6) consideration must be given to the applicant’s intention: Walton International Ltd v Verweij Fashion BV, [2018] EWHC 1608 (Ch) at para 186, citing Red Bull GmbH v Sun Mark Ltd, [2012] EWHC 1929 (Ch) at paras 130–138.
[20] In my view, the present case is a case of “she said, he said” and it is difficult for me to assess the credibility of the witnesses given that all evidence is by way of affidavit and was not challenged by cross-examination. As noted in Mougey v Janzen, 2007 CanLII 80878, “Gentlemen’s agreements” are difficult to prove. I do find it unusual, however, that there was no documentary proof of the agreement. For example, I think it is reasonable to expect that in this day and age the Opponent would have at the very least followed up with the Applicant by way of an email confirming their agreement.
[21] In any event, when I consider the evidence overall, I am not satisfied that the Opponent has met its evidential burden under this ground for the following reasons. First, the Opponent’s evidence about the alleged verbal agreement is hearsay and there is no evidence to the necessity or reliability of it. In this regard, as shown in the second affidavit of Mr. Sachit Mehra, the Opponent’s evidence is that the alleged agreement was between the Applicant and Ravi Jain, not the Applicant and the Opponent’s affiant, Sapna Jain. This evidence is therefore inadmissible.
[22] Further, the evidence shows that the parties co-existed in the marketplace with similar marks (albeit for somewhat different goods and services) for many years. In this regard, the Opponent alleges to have used its trademarks in association with its family run business since the 1980s. Meanwhile, the Applicant’s evidence, as will be discussed further below, shows that the Applicant has registered and used an almost identical trademark in association with its restaurant services since the 1990s. The fact that the Applicant applied for a trademark almost identical to the one it had already registered and been using for its restaurant services for years, in my view, appears to be a legitimate basis to obtain another trademark, and is not outside the “standards of acceptable commercial behaviour”. It is therefore reasonable to find that the intention of the Applicant in applying for this Mark was to expand its business – not trade on the reputation and goodwill of the Opponent.
[23] In view of the above, the section 38(2)(a.1) ground is not successful.
Section 16(1)(a) – Entitlement to Registration
[24] The Opponent pleads that the Applicant is not the person entitled to registration of the Mark under section 16(1)(a) of the Act in view of the Opponent’s prior use of its EAST INDIA COMPANY trademarks in Canada in association with the Opponent’s spices and food products.
[25] Section 16(1)(a) of the Act as revised states as follows:
16 (1) Any applicant who has filed an application in accordance with subsection 30(2) for the registration of a registrable trademark is entitled, subject to section 38, to secure its registration in respect of the goods or services specified in the application, unless at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with
(a) a trademark that had been previously used in Canada or made known in Canada by any other person;
[26] While the statutory wording of this section as revised suggests that there is only one material date for this ground, i.e., the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, in a situation such as the present where there are different basis for the applied for goods and services, including claims of different dates of first use as well as proposed use claims, there can be more than one material date to apply depending on the evidence furnished. In my view, this means that there can be up to 4 different material dates to apply in this case: April 18, 1994 (for services (1) and (2)); May 1, 2011 (for goods (2) and (5)); May 1, 2012 for goods (3); and January 19, 2018 (i.e., the filing date of the application) for goods (1) and (4), assuming the evidence supports use as of the dates claimed prior to the filing of the application.
[27] I will therefore begin my analysis under this ground by reviewing the Applicant’s evidence in order to determine which if any of its claimed dates of first use are supported by the Applicant’s evidence.
[28] The content of the first affidavits of Sachit Mehra and the affidavit of Sudha Mehra are almost identical, the most pertinent contents of which may be summarized as follows:
· The Applicant is the owner and operator of one restaurant in Winnipeg, Manitoba, and two restaurants in Ottawa, Ontario, all of which trade under the mark EAST INDIA COMPANY.
· In addition to the Mark, the Applicant is the owner of EAST INDIA COMPANY PUB & EATERY, EAST INDIA PUB & EATERY & Design (Registration TMA546,656, and TMA853,014) and EAST INDIA COMPANY, and EAST INDIA COMPANY and EAST INDIA COMPANY & Design (Registration TMA853,013 and TMA853,010) and (Registration No. TMA853,010).
· The Applicant has consistently and continuously featured the Mark on its menus since its inception in 1994.
· The Applicant's Mark has been prominently featured on the Applicant's website since the Applicant registered the domain name for www.eastindiaco.com in 1996; copies of screen shots from the Applicant’s website dated between February 10, 2005, and July 30, 2019, are provided as exhibits.
· The affiant states that the Applicant’s goods are available in the form of prepared meals for delivery, and in the form of prepared takeout meals. Attached as Exhibit H are copies of a photograph of the Applicant’s takeout or delivery bag which prominently features the Mark; the Applicant has consistently used the Mark on its packaging since its inception in 1994.
· When customers request catering services or catering equipment rental services from the Applicant, they are required to fill out a catering request form, which prominently features the Applicant's Mark; Screenshots of the request form dated between January 29, 2012 and September 16, 2016 are provided as exhibits.
· The Applicant has consistently and continuously used the Applicant's Mark on its napkin holders, salt and pepper shakers, bowls, plates and napkins since its inception in 1994, when providing catering services to venues away from its restaurants or hosting events at any of its restaurant locations.
· Since 2011, the Applicant has consistently and continuously sold certain goods through national and local grocery retail chains, including, Save-On-Foods, Co-op Food Store, Farm Boy, Metro Marquis Quebec, and countless other small independent retailers and farmer's markets; attached as Exhibit "O" are true copies of images of the Applicant's retail products bearing the Applicant's Mark.
· The Mark is visible to consumers of its direct-to-consumer goods in all packaging and documentation they receive from the Applicant. Attached as Exhibit "P" is a true copy of a promotional photograph of the Applicant's garam masala and seasoning salt spice blends taken on December 18, 2012. The Mark has been consistently and continuously displayed on the packaging of these products since May 1, 2011.
· Attached as Exhibit "Q" is a true copy of a photograph of the Applicant's garam masala spice blend, chai tea masala spice blend, and butter chicken sauce taken on December 18, 2012. The Mark has been consistently and continuously displayed on the packaging of these products since May 1, 2011.
· Attached hereto as Exhibit "R" is a true copy of a photograph of the Applicant's spice blend and sauce goods taken on or around July 18, 2014. The Applicant's Mark is visible on the packaging of these products. The Applicant's Marks have been consistently and continuously displayed on the packaging of these products since May 1, 2011.
· Attached as Exhibits S, T and U, are copies of photographs of signage of the Mark outside of the Applicant’s restaurants in Winnipeg, and two locations in Ottawa, dated between September 2007 and October 2018.
· Attached as Exhibit "Z" is a true copy of a sample invoice dated March 3, 2022, representing a customer's purchase of the Applicant's restaurant buffet lunch special. This invoice prominently displays the Applicant's Marks. The Applicant's invoices have consistently and continuously featured the Applicant's Marks since its inception in 1994.
[29] While the Applicant’s evidence offers few details regarding sales of the Applicant’s goods and services under the Mark as of its claimed dates of first use, I find that the Applicant has met its evidential burden of proving use since at least as early as 1994 for its services (1) and (2), and since May 1, 2011, for its goods (2) and (5). I am able to make this finding based on the unchallenged and uncontradicted sworn statements of the Applicant’s affiants [Louis Varoutsos v Hebrew Strength-Power Corporation, 2020 TMOB 86 at para 31]. The material date for these goods is therefore 1994 and May 1, 2011 respectively.
[30] However, as the Applicant has not shown prior use of its Mark in association with the goods (3) as of the claimed date of first use of May 1, 2012, the material date for this ground of opposition with respect to these goods and goods (1) and (4), which are based on proposed use, will be the filing date of the application, i.e., January 19, 2018.
[31] I will now determine if the Opponent has met its initial onus to prove that its trademark was in use or made known prior to each of the respective material dates.
Has the Opponent met its evidential burden?
[32] According to the Opponent’s affiant Mr. Sapna Jain, the Opponent is an inter-generational family owned business launched as a wholesale business that focused on spices and food products from South Asia in 1972. The Opponent commenced use of its trademarks EAST INDIA COMPANY, EAST INDIA COMPANY LTD & Design and EAST INDIA COMPANY & Circle Design in 1982. Mr. Jain further explains that since he and his brother inherited the family business from their parents, the business has grown to about 657 recurring customers across Canada, which does not include walk in cash and carry customers who purchase products from their retail location on an adhoc basis or a growing customer base outside of Canada.
[33] While Mr. Jain has attached numerous exhibits to his affidavit to corroborate this assertion, many of these exhibits, including a letter from one of the Opponent’s competitors confirming that the Opponent was operating in Canada in the early 1980’s, a bank statement, a letter from the Opponent’s customs broker for the importation, distribution, wholesale and retail of bulk dry goods, and a letter from one of the Opponent’s suppliers, are third party testimonials and are therefore inadmissible hearsay.
[34] I consider the most relevant evidence of Mr. Jain to be as follows:
· undated images of sample packaging for Kashmiri chili, cardamom, pink bathing salt, roasted Channa, and various spices where either one or more of the Opponent’s trademarks or the Opponent’s trade name are displayed on the products (Exhibit E);
· a copy of a vendor permit dated October 18, 1994, showing the Opponent’s EAST INDIA COMPANY business name and address in Mississauga, Ontario (Exhibit G); and
· sample invoices displaying the Opponent’s trademarks dated June 26, 2017, for black pepper; April 23, 2019 for curry powder, Hungarian paprika, hot chili powder, coriander, fired onions, ancho chilies, and quinoa; and August 4, 2021, for whole cumin (Exhibit H).
[35] I am not satisfied from the Opponent’s evidence that it has shown use of any of its trademarks as of the earliest material date of 1994. While the Opponent claims to have started using its trademarks in 1982, the third party testimonials as well as a copy of a vendor permit showing the Opponent’s business name and address are simply not sufficient to demonstrate use of any of the Opponent’s trademarks in association with goods pursuant to section 4(1) of the Act. As I am not satisfied that the Opponent has met its burden with respect to the applied for services, this ground is accordingly dismissed with respect to those services.
[36] While Mr. Jain has also attached images of sample packaging of some of the Opponent’s products displaying the Opponent’s trademarks, he has not indicated if these photos are representative of those previously used and these photos are not dated. Further, the sample invoices attached as Exhibit H, are dated between 2017 and 2021, which is after the material date for this ground for goods (2) and (5). I am therefore not satisfied that the Opponent has met its evidential burden under this ground with respect to the goods (2) and (5). This ground is accordingly dismissed with respect to the goods (2) and (5).
[37] The material date with respect to the remaining applied for goods (1) and (4) is the filing date of the application, i.e., January 19, 2018. I am satisfied that the Opponent has met its burden to show use of its trademarks in association with black pepper prior to this material date. In this regard, the sample invoice dated June 16, 2017, for black pepper, displays the Opponent’s EAST INDIA COMPANY LTD & Design mark, shown below. I am satisfied that the use of this trademark also qualifies use of the word mark EAST INDIA COMPANY, as these words constitute the dominant element of the Opponent’s design trademark. The focus of the confusion analysis will therefore be with respect to these trademarks in association with the goods pepper.
Confusion
[38] As the Opponent has met its initial evidential burden under this ground with respect to pepper, I must now determine whether the Mark is confusing with the Opponent’s EAST INDIA COMPANY LTD trademarks, as defined by section 6 of the Act.
[39] Trademarks are confusing when there is a reasonable likelihood of confusion within the meaning of section 6(2) of the Act:
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.
[40] Confusion occurs when consumers confuse goods or services from one source as being from another source. In this case, I must determine whether the Applicant’s use of the Mark is likely to cause consumers to believe that the Applicant’s goods (1) and (4) were produced or authorized or licensed by the Opponent.
[41] The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are “all the surrounding circumstances including” those specifically mentioned in sections 6(5)(a) to 6(5)(e) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the goods, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them.
[42] The criteria in section 6(5) are not exhaustive and different weight will be given to each one in a context-specific assessment [Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 (CanLII), 92 CPR (4th) 361 (SCC) at paragraph 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the trademarks, will often have the greatest effect on the confusion analysis.
Degree of Resemblance
[43] 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 marks [Veuve Clicquot, supra, at paragraph 20].
[44] There is necessarily a fair degree of resemblance between the parties’ trademarks in this case as both marks are comprised of basically the same words in the same order, i.e., EAST INDIA COMPANY v EAST INDIA COMPANY or EAST INDIA COMPANY LTD. The ideas suggested by both marks is also very high as both marks suggest that the associated goods and services come from a company associated with East India.
[45] The overall visual impression created by the parties’ trademarks however is somewhat different. In this regard, the Mark is comprised of the design of lion within a circle design while the Opponent’s word trademark does not contain any design and its design mark is comprised of the words EAST INDIA COMPANY LTD. written in a bold font with the design of three differently sized and coloured leaves.
[46] Overall, I find that this factor favours the Opponent.
Inherent distinctiveness and extent known
[47] Both marks are suggestive of the place of origin of their associated goods and services. Generally speaking, geographic designations are not inherently distinctive [California Fashion Industries Inc v Reitmans (Canada) Ltd (1991), 38 CPR (3d) 439 (FCTD) at para 13; Multi-Marques Inc v Nat’s Ah Pizza Ltd, 2009 CanLII 82138 (TMOB) at para 27]. However, the design aspects of each party’s trademarks, namely the lion design in the Mark and the leaf design in the Opponent’s design trademark, add some degree of inherent distinctiveness to these trademarks.
[48] With respect to the extent to which the trademarks have become known, as noted above, the Opponent claims to have used its trademarks in association with its business since 1982. The only evidence in support of the Opponent’s reputation in the food industry, however, are letters from various third parties willing to confirm that they have been doing business with the Opponent since the 1980’s. While I can understand the necessity of a small business like the Opponent’s having to include such hearsay evidence, the fact remains that there is no reason for me to consider this evidence reliable. Further, as noted by the Applicant, the inconvenience of obtaining direct evidence does not obviate the need to show use in accordance with the Act [Carbon Trust v Pacific Carob Trust, 2013 FC 946 at para 20].
[49] The Opponent’s affiant also attests that through the extensive use and advertisement of the Opponent’s brand, the Opponent’s trademarks have acquired a very strong reputation and goodwill. However, the only evidence filed in support of this statement are undated images of sample packaging displaying the Opponent’s trademarks, a copy of a lease agreement, a copy of a vendor permit and three sample invoices displaying the Opponent’s trademarks. In my view, this evidence is far from sufficient to establish that the Opponent’s trademarks have become known more than to a minimal extent in Canada. I would have expected that after having been in business for over 30 years, the Opponent would have been able to provide more documentary evidence of the promotion and advertising of its business.
[50] In view of the above, I can only find that the Opponent’s trademarks have become known to a limited extent in Canada.
[51] The Applicant, on the other hand, has not shown any use of the Mark in association with goods (1) or (4) as of the filing date of the application. As noted above, the use shown of the Mark has been in association with its seasonings, spices and teas since at least as early as May 1, 2011.
[52] I therefore do not find that this factor favours either party.
Length of time the trademarks have been in use
[53] With respect to the extent to which they have become known, while the Opponent claims to have been using its trademarks in association with its goods since as early as 1982, the Opponent’s evidence only supports a date of first use of 2017. The Applicant, on the other hand, has not shown any use of its goods (1) and (4) as of the filing date of its application. This factor therefore favours the Opponent.
Nature of the goods, services, or business, and trade
[54] As noted above, the only applied for goods and services that are at issue at this later material date are goods (1) – pickles, and goods (4) – vegetarian and non- vegetarian meal kits. The only good for which the Opponent has met its burden of showing use for is pepper. In my view, the parties’ goods are therefore only related insofar as both are in the general category of food products.
[55] As for the parties’ channels of trade, the Opponent’s evidence is that it sells its goods from its retail location. The Applicant’s evidence, on the other hand, is that it sells its goods to a number of different grocery stores and offers its services out of its restaurant locations. In my view, while the parties’ goods could travel through the same channels of trade, in view that there is no connection between the pickles and meal kits of the Applicant and the Opponent’s pepper, I see no reason to assume that they would be sold in close proximity to each other in such channels, e.g., they would not appear on the same shelf in grocery stores.
[56] In view of the above, I find that this factor favours the Opponent, but only to a limited extent.
Surrounding circumstance – Applicant’s prior registrations
[57] As noted previously, the Applicant is also the owner of the following additional trademarks, referred to collectively by the Applicant as “the Applicant’s Marks”:
Trademark
|
Application/Registration No.
|
Goods
|
Services
|
TMA853,014 |
(1) Food seasonings. |
(1) Restaurant, banquet, catering, pub and eatery services. |
|
TMA853,010 |
(1) Food seasonings. |
||
EAST INDIA COMPANY |
TMA853,013 |
(1) Food seasonings. |
(1) Restaurant, banquet, catering, pub and eatery services |
EAST INDIA COMPANY PUB & EATERY |
TMA546,656 |
(1) Restaurant, banquet and catering services and the sale at the retail and wholesale levels of foods, beverages and spices. |
|
EAST INDIA COMPANY |
Application No. 1,878,428 |
Same goods as the Mark |
Same Services as the Mark |
[58] The Applicant’s affiants state that the Applicant’s trademarks have been used extensively in advertising materials including print advertising, direct mail advertising and promotional items. The Applicant also provides photographs of signage outside the Applicant’s Ottawa restaurant location at 219 Somerset Street West dated September 2007 and April 2009, which is representative of signage use at this location since its inception in 2000. Attached as Exhibit Z is a copy of a sample invoice dated March 3, 2022, representing a customer’s purchase of the applicant’s restaurant buffet lunch special prominently displaying some of the Applicant’s trademarks. The affiants state that these invoices have consistently and continuously featured the Applicant’s trademarks since the Applicant’s first restaurant opened in 1994.
[59] I will begin by noting that section 19 of the Act does not give the owner of a registration the automatic right to obtain any further registrations no matter how closely they may be related to the original registration [Coronet-Werke Heinrich Schlerf GmbH v Produits Menagers Coronet Inc (1984), 4 CPR (3d) 108 at 115 (TMOB); Groupe Lavo Inc v Proctor & Gamble Inc (1990), 32 CPR (3d) 533 at 538 (TMOB)].
[60] Having said that, use of a prior registered trademark in Canada may be a relevant surrounding circumstance that decreases the likelihood of confusion [Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SPA, 2016 FC 895]. In this case, the Applicant’s registered word trademark registration No. TMA853,013, and its associated goods, is more similar to the Opponent’s trademark than is the Mark and the applied for goods being considered under this ground.
[61] Accordingly, while I do not consider this to be dispositive of the issue of confusion, I find that it is a surrounding circumstance which favours the Applicant.
Surrounding circumstance – instances of actual confusion
[62] The Opponent’s affiant submits that on the following occasions, the Opponent was notified by real and potential consumers of instances of actual confusion in the marketplace, including the following:
• an email from a potential customer who viewed a curated chef’s box prepared by the Opponent on September 21, 2018, which stated as follows: “I kind of thought this company looked like your company – the butter chicken sauce I mean” (Exhibit J)
• on October 26, 2016, the Opponent erroneously received an email from Metro to meet when Metro had actually scheduled to meet with the Applicant as a potential buyer of the Applicant’s products not the Opponent (Exhibit I)
• on October 2, 2021, the Opponent received an invoice from FedEx which was issued to the Applicant (Exhibit L).
[63] Only one of the examples provided by the Opponent was dated prior to the material date for this ground of opposition. In that example, the Opponent erroneously received an email that was intended for the Applicant. I do not consider this to be an example of actual confusion. In this regard, it is more likely that this incident was a mistake and not the result of a consumer, as a matter of first impression, inferring that the source of the Applicant’s goods or services was the Opponent. I therefore do not find that this evidence assists the Opponent.
Surrounding circumstance – weak marks
[64] I consider that the jurisprudence concerning weak trademarks favours the Applicant. It is well established that a weak trademark (i.e., a mark possessing a low degree of inherent distinctiveness) is not entitled to a wide ambit of protection [General Motors Corp v Bellows (1949), 10 CPR 101 at pp. 115-6 (SCC)], and that comparatively small differences will be sufficient to distinguish between them [Prince Edward Island Mutual Insurance Co v Insurance Co of Prince Edward Island (1999), 86 CPR (3d) 342 (FCTD) at paras 32-34]. In Provigo Distribution Inc v Max Mara Fashion Group SRL (2005), 46 CPR (4th) 112 at para 31 (FCTD), de Montigny J. explained:
The two marks being inherently weak, it is fair to say that even small differences will be sufficient to distinguish among them. Were it otherwise, first user of words in common use would be unfairly allowed to monopolize these words. A further justification given by courts in coming to this conclusion is that the public expected to be more on its guard when such weak trade names are used…
[65] While it is possible for the degree of distinctiveness attributable to a weak mark to be enhanced through extensive use [Sarah Coventry Inc v Abrahamian (1984), 1 CPR (3d) 238 at para 6 (FCTD)], I do not find this to be the case for the Opponent’s EAST INDIA COMPANY trademarks.
Conclusion on the likelihood of confusion
[66] Having regard to section 6(5), I find the Applicant has met the legal onus on it to show that, on a balance of probabilities, there is no reasonable likelihood of confusion between the Mark and either of the Opponent’s EAST INDIA COMPANY trademarks. In so finding, I have had particular regard to the fact that the Opponent’s trademarks possess limited inherent distinctiveness, the Opponent has not established a significant reputation for its trademarks, there is very little connection between the goods at issue under this ground and that there are visual differences between the trademarks which mitigate their resemblance. Accordingly, this ground of opposition is rejected.
Section 2 – non-distinctiveness
[67] The Opponent pleads that the Mark is not distinctive pursuant to section 38(2)(d) and 2 of the Act, in that it does not distinguish and is not adapted to distinguish the applied for goods and services from the Opponent’s goods in association with which the Opponent’s trademarks have been used and made known.
[68] To meet its evidential burden with respect to this ground, the Opponent must show that as of the date of filing of the opposition (i.e., May 21, 2021), one or more of the Opponent’s trademarks had become known in Canada sufficiently to negate the distinctiveness of the Mark [Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD) at 58].
[69] In view of the Opponent’s evidence summarized above, I am not satisfied that the Opponent has met its initial burden. Accordingly, this ground of opposition is rejected.
Section 38(2)(f) – Entitlement to Use
[70] The Opponent pleads that the Applicant was not entitled to use the Mark in Canada at the filing date of the application in that the Mark was confusing with the Opponent’s trademarks which the Applicant should have been aware of and had verbally agreed to a co-existence agreement whereby the Applicant would not use its trademark with, inter alia, food products.
[71] Section 38(2)(f) of the Act provides as follows:
(f) that, at the filing date of the application in Canada, determined without taking into account subsection 34(1) [of the Act, which concerns priority dates], the applicant was not entitled to use the trademark in Canada in association with those goods or services
This section addresses the Applicant’s lawful entitlement to use the trademark (i.e., in compliance with relevant federal legislation and other legal obligations) as opposed to the Applicant’s entitlement to register the mark (relative to another person’s trademark, pursuant to section 16 of the Act) [see Methanex Corporation v Suez International, société par actions simplifiée, 2022 TMOB 155].
[72] Only pleading that an applied for Mark was confusing with a previously used (as opposed to a previously registered trademark) is therefore not a fact that alone can support a section 38(2)(f) ground of opposition. Further, as noted above, the Opponent’s evidence about the alleged verbal agreement is hearsay and therefore inadmissible.
[73] This ground is accordingly rejected.
Disposition
[74] In view of the above, and pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(12) of the Act.
_______________________________
Cindy R. Folz
Member
Trademarks Opposition Board
Appearances and Agents of Record
No hearing held
AGENTS OF RECORD
For the Opponent: Froese Law
For the Applicant: Fillmore Riley LLP