Date: 20060905
Docket: T-2109-05
Citation: 2006 FC 1063
Toronto, Ontario, September 5,
2006
PRESENT: The Honourable Madam Justice Mactavish
BETWEEN:
CAFE'
DO BRASIL, S.p.A
Applicant
and
WALONG
MARKETING INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
By
this application, Cafe’ Do Brasil S.p.A. seeks to expunge a registered trade-mark
currently owned by the Respondent, Walong Marketing Inc. The application will
be granted as I am satisfied that Walong’s predecessor in title was not
entitled to register the mark in question.
Background
[2]
Cafe’
Do Brasil is an Italian company, whose principal place of business is in Naples. Its food
products are sold in Canada through distributors, who in turn sell the
products to wholesalers and retail outlets, including specialty food stores,
chain food stores, bakeries, drug stores and restaurants located across Canada.
[3]
On
December 14, 1990, Cafe’ Do Brasil obtained registration in Canada for the
“KIMBO” trade-mark, for use in association with the following products:
Coffee, tea, cocoa, sugar, rice, tapioca,
sago, coffee substitutes, flour, and preparations made from cereal; bread,
biscuits, cakes, pastry and confectionary icing; honey, treacle, yeast, baking
powder; salt, mustard; pepper, vinegar, sauces, spices; and ice.
[4]
Cafe’
Do Brasil is also the owner of Caffé KIMBO and Caffé KIMBO Design trade-marks,
for use in association with “coffee, coffee beans and ground coffee, ground
espresso, espresso beans and artificial coffee”.
[5]
The
KIMBO design is depicted as:
[6]
Cafe’
Do Brasil has sold coffee products to its Canadian distributors since 1992.
These products are sold in containers and packaging bearing the company’s name,
and prominently displaying the KIMBO, Caffé KIMBO and Caffé KIMBO Design
trade-marks.
[7]
There
is no indication in the evidence that Cafe’ Do Brasil has ever abandoned its
use of the KIMBO marks in Canada. Indeed, the evidence demonstrates
regular sales of Cafe’ Do Brasil products in Canada between 1992
and 2005, which products bore the KIMBO marks.
[8]
On
October 17, 2003, Cafe’ Do Brasil filed an application to expand the
registration of the trade-mark that the company understood that it had in Canada, to register
the KIMBO mark for use in association with the following additional wares and
services:
Electric coffee makers, electric coffee
percolators, electric coffee pots, their parts and accessories; non-electric
coffee makers, non-electric coffee percolators, non-electric coffee pots, their
parts and accessories; coffee, tea, cocoa, sugar, rice, tapioca, sago,
artificial coffee; flour and preparations made from cereals, bread, pastry and
confectionary, ices; honey, treacle; yeast, baking-powder; salt, mustard;
vinegar, sauces (condiments); spices; ice; beers; mineral and aerated waters
and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other
preparations for making beverages
Services for
providing food and drink; temporary accommodation
[9]
This
application was subsequently amended in November of 2005 to correct some of the
information in the original application. In particular, Cafe’ Do Brasil asked
its trade-mark agent to correct the phrase indicating that it “intended to use”
the trade-mark in Canada, as it had actually been using its KIMBO marks
continuously in Canada since at least as early as April of 1992.
[10]
In
the meantime, in May of 2004, Cafe’ Do Brasil was informed by its current
Italian trade-mark agents that the Canadian Trade-marks Office objected to the
registration of its KIMBO mark in relation to the additional wares on the basis
that it was confusing with a KIMBO trade-mark owned by the Respondent Walong.
Cafe’ Do Brasil could not understand how this could be, given its belief that
it owned the KIMBO mark. As a result, Cafe’ Do Brasil caused inquiries to be
made and subsequently determined that Walong was the current owner of Canadian
trade-mark No. TMA537,914 for the “KIMBO” trade-mark & Design (the “Walong
trade-mark”), which is depicted as:
KIMBO
Registration No. TMA537,914.
[11]
The
Walong trade-mark is registered for use in association with the following
wares:
Meats; processed and staple foods, namely
beans, black pudding, baking powder, baking soda, biscuits, breads, bubble gum,
cakes and cake mixes, candy, caramel popcorn, caramels, cereal, chips, namely
shrimp chips, chilli, chilli powders, chop suey, chow mein, coconuts, coconut
oil, coffee, cookies, cooking oil, cooking wine, crackers, cracker and cheese
combinations, dates, dumplings, egg rolls, eggs, fish and chips, flavored ices,
french fried potatoes, fruit preserves, fruits, non-alcoholic and
non-carbonated fruit drinks, flour, garlic, ginger, gluten, herbs, ice cream,
ice cream cones, juices namely fruit juices and vegetable juices, ketchup,
noodles, oatmeal, oats, onion rings, pancakes, pancake mixes, pickle relish,
pies, pasta, pasta meals, puddings, raisins, rice, soy-based beverages, sake,
salt, sauces namely pasta sauce and bean sauce, seeds, salad oil, seafood,
seaweed, shellfish, snack foods namely rice-based, wheat-based, seaweed and
preserved seafood, sodas, soybean oil, soybeans, spices and seasonings, sugar,
sushi, syrups namely pancake syrup, tea, tofu, vegetables, vegetable oils,
vinegar, wafers, waffles, waters, wheat, won tons and won ton wrappers, yeast,
yogurt.
[12]
It
appears that the application for registration of what would later become the
Walong trade-mark was initially filed by TAWA SUPERMARKET, INC. on June 29,
1998. The claimed date of first use of the mark by TAWA in association with
wares identified as “meats and processed foods; staple foods” was January of
1995.
[13]
TAWA’s
application was subsequently amended to cover the wares identified above.
There is no indication in the record that there was any use of the TAWA mark in
Canada in
association with any of the wares in question prior to January of 1995.
[14]
The
record does disclose that, by letter dated December 15, 1998, Cafe’ Do
Brasil’s KIMBO trade-mark was cited by the Trade-marks Office against TAWA’s
application to register its KIMBO mark. The Registrar took the position that
TAWA’s trade-mark was not registrable because it was confusing with Cafe’ Do
Brasil’s mark.
[15]
TAWA’s
agents then filed a request for a section 45 notice on April 28, 1999. As a
result, an expungement proceeding was initiated by the Registrar of
Trade-marks, which resulted in the expungement of Cafe’ Do Brasil’s KIMBO
mark. TAWA’s application then proceeded to registration on November 28, 2000.
TAWA subsequently assigned title to its KIMBO mark to Walong in January of
2002.
[16]
Although
the record indicates that the Trade-marks Office provided notice of the section
45 proceedings to Cafe’ Do Brasil and its Italian agents, the evidence before
the Court from Cafe’ Do Brasil is that no such notice was actually received by
the company, and that it was not aware that expungement proceedings had been
initiated. As a consequence, no evidence was provided to the Registrar by
Cafe’ Do Brasil with respect to its use of its KIMBO mark in Canada in
association with the wares specified in the registration.
[17]
By
this application, Cafe’ Do Brasil seeks an order striking the entry on the
Register of Trade-marks relating to Registration No. TMA537,914 for the “KIMBO”
trade-mark & Design. Cafe’ Do Brasil also asks that the Court’s decision
be forwarded to the Registrar of Trade-marks, in order that the appropriate
entries can be made on the Register.
[18]
Walong
did not file any material in response to Cafe’ Do Brasil’s application, nor did
it appear at the hearing.
Issues
[19]
Cafe’
Do Brasil’s application raises the following issues:
1. Is Cafe’ Do Brasil
entitled to bring this application?
2. If
so, was TAWA entitled to secure the registration of the KIMBO trade-mark &
Design in Canada, having regard to the provisions of subsection 18(1), section
17 and paragraph 16(1)(a) of the Trade-marks Act?
3. Is
the Walong trade-mark distinctive, having regard to the provisions of paragraph
18(1)(b) and section 2 of the Trade-marks Act?
Analysis
[20]
The
first issue is whether Cafe’ Do Brasil is entitled to bring this application.
[21]
The
application is brought pursuant to the provisions of sections 57 and 58 of the Trade-marks
Act, which provide that:
|
57. (1) The Federal Court has
exclusive original jurisdiction, on the application of the Registrar or of
any person interested, to order that any entry in the register be struck out
or amended on the ground that at the date of the application the entry as it
appears on the register does not accurately express or define the existing
rights of the person appearing to be the registered owner of the mark.
(2) No person
is entitled to institute under this section any proceeding calling into
question any decision given by the Registrar of which that person had express
notice and from which he had a right to appeal.
58. An
application under section 57 shall be made either by the filing of an
originating notice of motion, by counter-claim in an action for the
infringement of the trade-mark, or by statement of claim in an action
claiming additional relief under this Act.
|
57. (1) La Cour fédérale a une compétence initiale exclusive, sur
demande du registraire ou de toute personne intéressée, pour ordonner qu’une
inscription dans le registre soit biffée ou modifiée, parce que, à la date de
cette demande, l’inscription figurant au registre n’exprime ou ne définit pas
exactement les droits existants de la personne paraissant être le
propriétaire inscrit de la marque.
(2)
Personne n’a le droit d’intenter, en vertu du présent article, des procédures
mettant en question une décision rendue par le registraire, de laquelle cette
personne avait reçu un avis formel et dont elle avait le droit d’interjeter
appel.
58. Une demande prévue à
l’article 57 est faite par la production d’un avis de requête, par une
demande reconventionnelle dans une action pour usurpation de la marque de
commerce ou par un exposé de réclamation dans une action demandant un
redressement additionnel en vertu de la présente loi.
|
[22]
It
is clear that Cafe’ Do Brasil is a “person interested” within the meaning of
subsection 57(1), as Walong’s KIMBO trade-mark has been cited by the Trade-marks
Office against Cafe’ Do Brasil’s pending application. Moreover, Cafe’ Do
Brasil is the owner of several foreign registrations and two international
registrations for the KIMBO trade-mark as applied to coffee. In my view, this
is sufficient to make Cafe’ Do Brasil a “person interested” within the meaning
of the Trade-marks Act.
[23]
The
next question is whether Cafe’ Do Brasil had express notice of the expungement
proceedings, such that it would be precluded from bringing this application by
operation of subsection 57(2) of the Trade-marks Act.
[24]
Having
carefully considered all of the evidence, I am satisfied that through no fault
on the part of the Registrar of Trade-marks, Cafe’ Do Brasil did not have
actual notice of the expungement proceedings prior to May of 2004.
[25]
Not
only is Cafe’ Do Brasil’s evidence as to its lack of knowledge completely unchallenged,
the evidence before this Court also clearly demonstrates the continued use of
the KIMBO mark in Canada by Cafe’ Do Brasil during the three year period
immediately preceding the section 45 notice. Presumably, this evidence would
have been readily available to Cafe’ Do Brasil at the time that the expungement
proceedings were initiated. Given its continuing interest in the mark, it
simply does not make sense that Cafe’ Do Brasil would have allowed its mark to
be expunged, had it been aware of the expungement proceedings.
[26]
Having
found as a fact that Cafe’ Do Brasil is an interested person, and did not have
express notice of the expungement proceedings, I am therefore satisfied that
this application is properly before the Court.
[27]
Before
turning to the merits of Cafe’ Do Brasil’s application, it should be observed
that as this application is not a judicial review of either the Registrar’s
decision to expunge Cafe’ Do Brasil’s KIMBO mark, or the decision to allow the
registration of the Walong trade-mark, the issue of standard of review does not
arise in this case.
[28]
The
next question, then, is whether TAWA was entitled to secure the registration of
the KIMBO trade-mark & Design in Canada, having regard to the provisions of subsection
18(1), section 17 and paragraph 16(1)(a) of the Trade-marks Act.
[29]
I
will first consider the question of TAWA’s entitlement to registration, having
regard to the provisions of paragraph 16(1)(a) of the Trade-marks Act,
which provides that:
|
16. (1) Any applicant who has filed an application in
accordance with section 30 for registration of a trade-mark that is registrable
and that he or his predecessor in title has used in Canada or made known in
Canada in association with wares or services is entitled, subject to section
38, to secure its registration in respect of those wares or services, unless
at the date on which he or his predecessor in title first so used it or made
it known it was confusing with
(a) a
trade-mark that had been previously used in Canada or made known in Canada by any other person;
|
16. (1) Tout requérant qui a
produit une demande selon l’article 30 en vue de l’enregistrement d’une
marque de commerce qui est enregistrable et que le requérant ou son
prédécesseur en titre a employée ou fait connaître au Canada en liaison avec
des marchandises ou services, a droit, sous réserve de l’article 38, d’en obtenir
l’enregistrement à l’égard de ces marchandises ou services, à moins que, à la
date où le requérant ou son prédécesseur en titre l’a en premier lieu ainsi
employée ou révélée, elle n’ait créé de la confusion :
a)
soit avec une marque de commerce antérieurement employée ou révélée au Canada
par une autre personne;
|
[30]
Cafe’
Do Brasil contends that TAWA was not entitled to secure the registration of the
KIMBO trade-mark & Design in Canada. This is because as of January of 1995, that
is,.TAWA’s claimed date of first use, TAWA’s KIMBO mark was confusing with one
or more of Cafe’ Do Brasil’s KIMBO trade-marks. These marks had been
previously used in Canada by Cafe’ Do Brasil in
association with its coffee products, at least as early as 1992.
[31]
The
test for confusion is that of “first impression and imperfect recollection”: Polo
Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9
C.P.R. (4th) 51. In applying this test, the question for the Court is whether
consumers would believe that the wares or services in issue came from a common
source.
[32]
It
is not necessary to show that confusion has actually occurred. It is
sufficient if it can be demonstrated that confusion is likely to occur.
[33]
Subsection
6(5) of the Trade-marks Act provides that, in determining whether
trade-marks are confusing, the Court shall have regard to all of the
surrounding circumstances, including the inherent distinctiveness of the
trade-marks in question, and the extent to which they have become known; the
length of time each has been in use; the nature of the wares; the nature of the
trade; and the degree of resemblance between the trade-marks in appearance,
sound or the ideas suggested by them.
[34]
Dealing
first with the inherent distinctiveness of the trade-marks in question, the
word “KIMBO” does not have a recognizable descriptive or suggestive
connotation, as applied to food products, including coffee products. As a
consequence, I am satisfied that KIMBO has some measure of inherent
distinctiveness. Walong’s KIMBO design also has some degree of
distinctiveness, having regard to the design element and Chinese characters
which form part of the mark.
[35]
There
is considerable evidence before the Court with respect to the extent to which
Cafe’ Do Brasil’s KIMBO marks have become known in Canada, through the sales,
advertising and marketing in Canada of products bearing Café do Brasil’s KIMBO mark, dating
back to at least 1996. Although the product packaging for Cafe’ Do Brasil’s
KIMBO Coffee Products has changed somewhat in colour and design over the years,
the KIMBO mark has always been prominently displayed.
[36]
In
contrast, there is no evidence regarding the extent to which the Walong mark
has become known. This factor therefore clearly favours Cafe’ Do Brasil.
[37]
Similarly,
the evidence is clear that Cafe’ Do Brasil’s use of its KIMBO mark pre-dates
that of either TAWA or Walong by some three years, again favouring Cafe’ Do
Brasil.
[38]
Cafe’
Do Brasil sells coffee products. These wares appear to be identical to the
“coffee” included in the registration of the Walong mark. Moreover, a number
of the other types of processed foods covered by the Walong mark were also the
subject of the Cafe’ Do Brasil marks. Amongst others, these include tea, rice,
vinegar, sugar, salt and flour.
[39]
No
evidence has been filed by Walong with respect to the channels of trade
associated with its wares. However, the burden is on Cafe’ Do Brasil to
demonstrate confusion, and thus, while there is no basis on which to find that
this factor favours Walong, it cannot be said that it favours Cafe’ Do Brasil
either.
[40]
Finally,
there is a significant degree of resemblance between the KIMBO marks at issue
in this proceeding, having regard to the degree of resemblance between the
marks in appearance, sound and the ideas suggested by them.
[41]
Taking
all of these factors into account, I am satisfied that, at the time of TAWA’s
claimed first use of its KIMBO mark in January of 1995, there was a reasonable
likelihood of confusion between Walong’s trade-mark and Café do Brasil’s KIMBO
trade-mark, as applied to food products, including coffee products. As a
consequence, TAWA was not entitled to register its mark, and the mark is
invalid.
[42]
Given
my conclusion that TAWA was precluded from registering its KIMBO mark by
operation of paragraph 16(1)(a) of the Trade-marks Act, it is
unnecessary to consider the applicability of the other sections of the Trade-marks
Act relied upon by Cafe’ Do Brasil.
Conclusion
[43]
For
these reasons, Cafe’ Do Brasil’s application is allowed, with costs. An order
will go directing that Canadian trade-mark registration No. TMA537,914 for the
KIMBO trade-mark & design be expunged from the Trade-mark Register.
JUDGMENT
THIS COURT ORDERS AND
ADJUDGES THAT
the application is allowed, with costs. Canadian trade-mark registration No.
TMA537,914 for Walong’s KIMBO & trade-mark and design is expunged from the
Trade-mark Register.
“Anne
Mactavish”
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