Canadian Intellectual Property Office
Citation: 2023 TMOB 203
Date of Decision: 2023-12-05
IN THE MATTER OF AN OPPOSITION
Opponent: ElleBoxCo Incorporated
Applicant: Blume Supply Inc.
Application: 1,921,892 for IT’S BLUME
Introduction
[1] Blume Supply Inc. has applied to register the trademark IT’S BLUME (the Mark). At the date that this application was opposed, the Mark was applied for in association with the following goods and services:
3 (1) Skin care preparations; Hair care preparations; Skin soap; Perfume.
5 (2) Nutritional supplements for general health and well-being; Vitamin and mineral supplements; Protein powders for use as a dietary supplement.
30 (3) Tea and non-alcoholic tea-based beverages; Spices and seasonings
32 (4) Fruit-based and vegetable-based beverage mixes.
32 (5) Meal replacement drinks.
Services (Nice class & Statement)
35 (1) Advertising services for promoting public awareness of the health benefits of drinking beverages high in anti-oxidants and essential nutrients, and of the health benefits of using drinking beverages mixes that are designed to provide an energy and alertness boost without resorting to the use of caffeine and refined sugars, which can be detrimental to one's health; Wholesale and retail sale of fruit-based and vegetable based beverage mixes
35 (2) Wholesale and retail sale of meal replacement drinks.
[2] ElleBoxCo Incorporated (the Opponent) opposes registration of the Mark, primarily with respect to goods (1), “Skin care preparations; Hair care preparations; Skin soap; Perfume” (defined by the Opponent as the Opposed Goods). The opposition is based primarily on allegations that Mark is confusing with four trademarks used and applied for by the Opponent, namely, BLUME (application no. 2023166), MEET BLUME (application no. 2042390), BLUME COLLECTIVE (application no. 2047786), and BLUME SELF CARE (application no. 2042392; collectively, the Opponent’s Marks).
The record
[3] The application was filed on September 25, 2018, based on use in Canada since September 1, 2017, in association with goods (3), (4), and services (1), and based on proposed use in association with the remaining goods and services, including the Opposed Goods. The application was advertised for opposition purposes in the Trademarks Journal on July 7, 2021. On September 3, 2021, the Opponent opposed the application by filing a statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T‐13 (the Act). I note that the Act was amended on June 17, 2019. As the application in this case was advertised after June 17, 2019, the Act as amended applies (see section 69.1 of the Act).
[4] The grounds of opposition are summarized below:
Contrary to sections 38(2)(a.1) of the Act, the application was filed in bad faith.
Contrary to sections 38(2)(c) and 16(1)(a) of the Act, the Applicant is not entitled to registration of the Mark in association with the Opposed Goods because, at the time of the filing date of the application, the Mark was confusing with the Opponent’s Marks which had been previously used and/or made known in Canada.
Contrary to sections 38(2)(c) and 16(1)(c) of the Act, the Applicant is not entitled to registration of the Mark in association with the Opposed Goods because, at the time of the filing date of the application, the Mark was confusing with the Opponent’s trade name BLUME, which had been previously used in Canada by the Opponent.
Contrary to sections 38(2)(d) and 2 of the Act, the Mark is not distinctive of the Applicant when used in association with the Opposed Goods because it does not distinguish, nor is it adapted to distinguish, the Opposed Goods from the Opponent’s Goods.
Contrary to section 38(2)(e) of the Act, at the filing date of the application in Canada, the Applicant was not using and did not propose to use the Mark in Canada in association with the Opposed Goods.
Contrary to section 38(2)(f) of the Act, at the filing date of the application, the Applicant was not the person entitled to use the Mark in Canada in association with the Opposed Goods because of the prior adoption and use by the Opponent of the Opponent’s Marks in association with the Opponent’s goods.
[5] On October 4, 2021, the Applicant served and filed a counter statement denying each of the grounds of opposition. The parties filed evidence in the form of affidavits of Taran Ghatrora, CEO and Co-Founder of the Opponent, and Karen Danudjaja, CEO and Co-Founder of the Applicant. No cross examinations were conducted with respect to any evidence filed in this proceeding. Both parties filed written representations; only the Applicant was represented at an oral hearing.
[6] I note that as its reply evidence in this proceeding, the Opponent filed a second affidavit of Taran Ghatrora which attaches an email between Ms. Danudjaja and Taran and Bunny Ghatrora. The Applicant submits that this second Ghatrora affidavit does not constitute proper reply evidence as it does not respond to anything in Ms. Danudjaja’s affidavit, and because it purports to put Ms. Danudjaja’s credibility into question without giving her a chance to respond. The Opponent’s written representations do not discuss or refer to its reply evidence in any detail.
[7] Proper reply evidence responds directly to points raised in an applicant's evidence which are unanticipated. It should not include evidence which could have been filed as part of the opponent's evidence in chief [see Lemon Hart Rum Co v Bacardi & Co, 2015 TMOB 75 at para 22; and Halford v Seed Hawk Inc, 2003 FCT 141 (FCTD) (Seed Hawk) at paras 14-15]. In this case, I concur with the Applicant that the second Ghatrora affidavit does not constitute reply evidence. In the absence of submissions from the Opponent, the purpose of the affidavit and attached email is not clear, and it is not evident that it is intended to respond to any unanticipated point raised in the Applicant’s evidence. In any event, even if I were to find the second Ghatrora affidavit to be admissible, it would not have any impact on my decision.
[8] On November 22, 2023, the Applicant applied to amend its application to remove goods (1), constituting the entirety of the Opposed Goods. The Applicant’s request was granted and the application was amended to delete the Opposed Goods on November 23, 2023. No comment was received from the Opponent with respect to this amendment.
[9] It has been established that an opponent’s grounds of opposition may be in respect of a restricted subset of the full list of goods and services in an application [see Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SPA, 2016 FC 895]. In this case, given that all of the grounds of opposition, with the exception of the section 38(2)(a.1) ground, are in respect of the Opposed Goods only, each of those grounds of opposition are now moot. Accordingly, the grounds of opposition based on 38(2)(c) and 16(1)(a) and (c), sections 38(2)(d) and 2, and sections 38(2)(e) and (f) are rejected.
[10] The section 38(2)(a.1) ground of opposition does not refer specifically to the Opposed Goods; instead, the Opponent alleges that the Mark is not registrable and was filed in bad faith because the Applicant had knowledge of the Opponent’s use of the Opponent’s Marks. I note that this ground of opposition is not referenced in the Opponent’s written representations. In the absence of evidence that the Applicant acted in bad faith in filing its application, or of submissions with respect to this ground of opposition, the Opponent has not met its initial burden. As such, this ground of opposition is rejected.
Disposition
[11] In view of the above, 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
___________________________
G.M. Melchin
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2023-12-01
APPEARANCES
For the Opponent: No one appearing
For the Applicant: R. Nelson Godfrey
AGENTS OF RECORD
For the Opponent: Osler, Hoskin & Harcourt LLP
For the Applicant: Gowling WLG (Canada) LLP