Docket: T-974-13
Citation:
2015 FC 1419
Toronto, Ontario, December 24, 2015
PRESENT: The
Honourable Mr. Justice Diner
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BETWEEN:
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AMIRA FOODS
(INDIA) LIMITED
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Applicant
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and
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LES ENTREPRISES
AMIRA INC
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Respondent
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JUDGMENT AND REASONS
I.
Nature of the Matter
[1]
This is an appeal by Amira Foods (India) Limited
[the Applicant], pursuant to section 56 of the Trade-marks Act, RSC
1985, c T-13 [the Act] of a March 28, 2013 decision by the Trade-marks
Opposition Board [the Board], Entreprises Amira Inc v Amira Foods (India)
Limited, 2013 TMOB 54 [Decision]. The Board refused to register the
Applicant’s trade-mark [Mark], the word “AMIRA”
and an accompanying design, on two grounds:
i.
Prior Use
– namely, that contrary to subsection 30(e) of the Act, the Applicant had used
the Mark in Canada prior to the filing date of the application, and
ii.
Confusion
– namely, that contrary to paragraph 12(1)(d) of the Act, the Mark is confusing
with a registered trade-mark belonging to Les Entreprises Amira Inc. [the
Respondent].
II.
Facts
[2]
The Applicant is an Indian corporation that produces,
markets, and exports rice and other food products. Its rice is sold in Canada
through an importer.
[3]
The Respondent is a Canadian corporation that
sells food products in Canada, particularly Middle Eastern and imported
specialities. The Respondent owns two registered trade-marks, “Amira”, Can No TMA410723 (9 April 1994), and “El Amira”, Can No TMA390629 (22 November 1991).
[4]
On May 9, 2006, the Applicant, Amira Foods
(India) Limited, filed an application to register the Mark (Application No
1300873), shown below:
[5]
The Mark is composed of the word mark, AMIRA, as
well as the design, a woman sitting next to a bowl of rice.
[6]
On February 9, 2009, the Respondent filed a
statement of opposition against the application, arguing that the:
a.
application did not conform to subsections
30(e), 30(h), and 30(i) of the Act;
b.
Mark is not registrable pursuant to paragraph
12(1)(d) of the Act;
c.
Applicant is not entitled to registration
pursuant to paragraphs 16(3)(a) and 16(3)(c) of the Act; and
d.
Mark is not distinctive.
III.
The Decision
A.
Section 30 Grounds of Opposition (Prior Use)
[7]
The Board dismissed both the Respondent’s
subsection 30(h) and subsection 30(i) oppositions for a lack of evidence. It
then turned to the subsection 30(e) ground of opposition, where the Respondent
advanced two arguments:
1)
the Applicant did not intend to use the Mark in
association with all the wares it had listed; and
2)
the Applicant had used the Mark in Canada prior
to the filing date of the application.
[8]
During a trade-mark opposition, “[t]he Applicant bears the legal onus of establishing, on a
balance of probabilities, that its application complies with the requirements
of the Act. However, there is an initial evidentiary burden on the Opponent (the
Respondent in this forum) to adduce sufficient admissible evidence from which
it could reasonably be concluded that the facts alleged to support each ground
of opposition exist” (Laura Ashley Limited v Ashley Furniture
Industries, Inc, 2010 TMOB 89 at para 20 [Laura Ashley]; see also John
Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293
(FCTD) at 298).
[9]
Under subsection 30(e) of the Act, if the
opponent to a trade-mark application can demonstrate that there is sufficient
evidence that the trade-mark had been in use prior to the material date May 9,
2006, the Applicant’s filing date, and if the applicant cannot subsequently
demonstrate otherwise on a balance of probabilities, the application must be
refused (BlackIce by Design Inc v Molson Canada 2005, 2010 TMOB 111 at
paras 10-11).
[10]
The Board’s decision on this ground hinged on
the testimony of Anita Daing, the Applicant’s Finance Director. The Board found
that her testimony under cross-examination conflicted with her Affidavit: while
she initially stated that there were no sales in Canada using the trade-mark and/or
the design before January 2009, under cross-examination she stated that goods
bearing the Amira brand were sold in Canada at least as early as 2002.
Furthermore, at another point, she stated that there had been sales totalling
$108,000 since 2005 in association with both the word mark and the design mark.
These contradictions were enough for the Board to conclude that the Applicant
had not met its burden to demonstrate compliance with subsection 30(e) of the
Act and that this ground of the Respondent’s opposition was successful (Amira
at paras 14-17).
B.
Paragraph 12(1)(d) Ground of Opposition
(Confusion)
[11]
The Board first decided that, since the
Respondent’s remaining grounds of opposition all involved the likelihood of
confusion between the Respondent’s registered trade-marks and/or trade-name, it
would focus on what it felt was the Respondent’s strongest argument: confusion
between the Mark and the Respondent’s registered trade-mark, “AMIRA”. Per paragraph 12(1)(d) of the Act, a
trade-mark is not registrable if it is confusing with a registered trade-mark.
Subsection 6(2) states that confusion results “if the use of both trade-marks in the same
area would be likely to lead to the inference that the goods or services
associated with those trade-marks are manufactured, sold, leased, hired or
performed by the same person, whether or not the goods or services are of the
same general class”. The Board must, when
assessing the likelihood of confusion, consider all surrounding circumstances, and
in particular, those enumerated in subsection 6(5), namely the:
(a)
inherent
distinctiveness of the trademarks or trade-names and the extent to which they
have become known;
(b)
length of time the
trade-marks or trade-names have been in use;
(c)
nature of the goods,
services or business;
(d)
nature of the trade;
and
(e)
degree of resemblance
between the trade-marks or trade-names in appearance or sound or in the ideas
suggested by them.
[12]
The Board found for the Respondent with respect
to each of these subsection 6(5) circumstances. Specifically, it found:
(a)
the Respondent’s registered trade-mark had both
inherent distinctiveness and acquired distinctiveness in association
with food products;
(b)
the Respondent’s mark had been in use for some
time;
(c)
both parties’ wares included rice;
(d)
both parties sell rice and so their channels of
trade would overlap;
(e)
there is a high degree of resemblance between
the marks since AMIRA is the most striking and unique aspect of both.
[13]
So finding, the Board applied the test for
confusion as established by the Supreme Court in Veuve Cliquot Ponsardin v
Boutiques Cliquot Ltée, 2006 SCC 23 at para 20 [Veuve Clicquot]: “a matter of first impression in the mind of a casual
consumer somewhat in a hurry . . . at a time when he or she has no more than an
imperfect recollection . . . and does not pause to give the matter any detailed
consideration or scrutiny, nor to examine closely the similarities and
differences between the marks”. Placing specific weight on the high
degree of resemblance between the marks and the fact that the parties’ wares (rice)
overlapped, the Board concluded that the Mark would be confusing and thus that
this ground of opposition was successful.
C.
The Additional Grounds
[14]
The Board did not consider it necessary to
assess the arguments on paragraphs 16(3)(a) and 16(3)(c) of the Act or on
distinctiveness, because the Respondent had succeeded on the two above noted
grounds of opposition (prior use and confusion).
IV.
Issues
[15]
Three material issues are raised by the
Applicant in this judicial review:
1)
new evidence and resulting standard of review;
2)
the Board’s finding of prior use; and
3)
the Board’s finding of confusion.
A.
Issue 1: Standard of Review and New Evidence
1.
Standard of Review
[16]
In Board appeals before this Court, parties may
adduce additional evidence (subsection 56(5) of the Act). As a result, two
standards of review may apply. If the Board erred in law or new evidence is
adduced that would have materially affected the Board’s decision, the standard
is correctness; otherwise, the standard is reasonableness (Wrangler Apparel
Corp v Timberland Co, 2005 FC 722 at para 4 [Wrangler]; Molson
Breweries v John Labatt Ltd (2000), 5 CPR 4th 180 at 196 (FCA)).
[17]
Therefore, if any new evidence is filed on
appeal before this Court, it “must be assessed to
determine if it would have materially affected the [Board’s] decision” (Servicemaster
Company v 385229 Ontario Ltd (Masterclean Service Company), 2014 FC 440 at
para 5). To trigger a correctness review, that evidence must have an impact: “[e]vidence that
merely supplements or confirms earlier findings, or which pertains to facts
posterior to the relevant material date, will be insufficient to displace the
deferential standard of reasonableness”
(Hawke & Company Outfitters LLC v Retail Royalty Company,
2012 FC 1539 at para 31 [Hawke]).
[18]
The Applicant has submitted two new pieces of
evidence: a new affidavit from Anita Daing, the Applicant’s Director of Finance
[Daing Affidavit], and an affidavit from Pamela Christoforakis, a law clerk at
the firm of the Applicant’s counsel [Christoforakis Affidavit].
2.
New Evidence: The Daing Affidavit
[19]
The Daing Affidavit seeks to address the finding
by the Board that the Mark had been in use prior to the application. It states
that the Board misunderstood Ms. Daing’s previous evidence on the issue of
first use: what she had intended to say was that only the brand name AMIRA, not
the design mark, had been in use in Canada before 2009:
I have read the decision of Member Folz. In
it she expresses confusion concerning my evidence of first use of the
Trade-mark which is the subject of this application. Just to be clear, what was
intended and what I thought I had expressed in paragraph 5 of my December 14,
2009 affidavit was that the Trade-mark that is the subject of this application
had been used since in or about January 2009. The evidence from the cross
examination referenced in the decision was intended, and I thought that I was
clear, to respond to the matter of the use of “Amira”, not the design mark that
is the subject of the trade-mark application. (Application Record, pp 69-70
[AR])
[20]
The Applicant claims that this is evidence that
would have materially affected the Board’s decision since it clarifies what Ms.
Daing said and would have led to a different conclusion on the question of when
the Mark was first used.
[21]
The Respondent counters that the Daing Affidavit
is purely duplicative of evidence already adduced and has no probative
significance: it contains the bald assertion reproduced above, without
supporting documentation, and does not specify what “the
evidence from the cross examination referenced in the decision” is. The
Respondent also notes that the Daing Affidavit does not address the
inconsistency identified by the Board that “that there
have been sales since 2005 in association with both the word mark and the
design mark” (Decision at para 17).
[22]
I agree with the Respondent that the Daing Affidavit
would not have materially affected the Decision. The Affidavit amounts to an
assertion by the affiant that the Board erred in its interpretation of her
testimony, a claim that requires additional evidentiary support. Furthermore, the
Daing Affidavit does not address the Board’s finding of sales since 2005. Had this
“new evidence” been before the Board at the time of the Decision, it would simply
have added to the uncertainty created by Ms. Daing’s testimony overall, because
it conflicts with Ms. Daing’s statements on cross-examination.
3.
New Evidence: The Christoforakis Affidavit
[23]
The Christoforakis Affidavit purports to adduce
two new pieces of evidence. First, Ms. Christoforakis states that she was “struck by [the Board’s] observation that ‘Amira’ was not a
common name” (AR, p 23). In response, she performed a Google search of
the word “Amira”, geographically biased to
Canada, concluding that “there are a number of
professionals with the name ‘Amira’ and their related businesses” (AR, p
24). The results of Ms. Christoforakis’ search are attached to her Affidavit.
[24]
Second, Ms. Christoforakis states that, in
regard to the Board’s finding on Ms. Daing’s testimony on prior use, she “believe[s] that the evidence was that the word ‘Amira’ was
used prior to the filing date, not the trade-mark which is the subject of this
application” and that her “own independent
search does not disclose use of the trade-mark that is the subject of the
application before the application date” (AR, p 24). A Yahoo Canada
Finance printout on “Amira (Nature Foods Ltd.)” –
the product of this search – is also attached to her Affidavit.
[25]
The Respondent takes the position that the
searches could not have materially affected the Board’s assessment of
distinctiveness because:
•
most of the results do not show whether the
individuals or the entity had a presence in Canada at the date of the Decision
(in this case, that was March 28, 2013 – the material date that applies to
non-registrability under paragraph 12(1)(d) of the Act (Alticor Inc v
Nutravite Pharmaceuticals Inc, 2005 FCA 269 at para 11));
•
for those that do, the dates come after the date
of the Decision; and
•
there are too few results (17) to lead to a
different conclusion than the Board reached on the issue of whether the average
Canadian would consider “AMIRA” to be a coined
word.
[26]
Additionally, the Respondent argues that the
affiant’s beliefs are not material and that her statements on what Ms. Daing
intended to say amount to hearsay. As for the “independent
search”, the Affidavit does not disclose any search methods, nor is it
clear that the affiant has attached all of the results of the search.
[27]
I once again agree with
the Respondent that the evidence contained in the Christoforakis Affidavit
would not have had a material effect on the Board’s decision.
[28]
The Board never concluded that Amira was a “coined word” – merely that,
to the average Canadian, it would be more likely than not to be interpreted as
coined. While it is certainly possible that the average Canadian would
recognize Amira as a proper name, evidence of 17 individuals across Canada –
even assuming they were present in Canada at the material time – is too limited
a sample size to draw any relevant conclusion.
[29]
Second, the search
post-dates the Decision. Post-dated evidence cannot be material to a Board’s
decision (see Wrangler at para 10; Hawke at para 31). This is
especially true in the case at hand, where there is no way to assess whether
the individuals the affiant identified were present in Canada at the relevant time.
[30]
In short, neither of the new pieces of evidence
adduced by the Applicant would have had a material effect on the Decision.
Furthermore, the Applicant’s arguments on appeal relate entirely to the Board’s
interpretation of the facts and the application of the law to those facts, and
no error of law has been alleged.
[31]
As a result, this Court must review the Decision
on a reasonableness standard. In reasonableness review, “[t]he question is whether the Board’s decision is supported
by reasons that can withstand ‘a somewhat probing’ examination and is not
‘clearly wrong’” (Mattel Inc v 3894207 Canada Inc, 2006 SCC 22 at
para 40, citing Canada (Director of Investigation and Research) v Southam
Inc, [1997] 1 S.C.R. 48, at paras 56 and 60). A reasonableness review “is concerned mostly with the existence of justification,
transparency and intelligibility within the decision-making process. But it is
also concerned with whether the decision falls within a range of possible,
acceptable outcomes which are defensible in respect of the facts and law”
(Dunsmuir v New Brunswick, 2008 SCC 9 at para 47).
B.
Issue 2: Prior Use (Subsection 30(e))
[32]
The Applicant’s argument on this point depends
heavily on the Daing and Christoforakis Affidavits. The Applicant claims that
the Board reached an unreasonable conclusion in interpreting Ms. Daing’s
statements. The only reasonable interpretation of the contradictions in her
testimony and her original affidavit, the Applicant asserts, is that she meant
that the name “Amira” had been in use in Canada
prior to 2009, not the Mark (which is composed of the word “Amira” and
the design).
[33]
The Respondent takes the position that the Decision
was reasonable in that the Applicant had not met the legal burden of
establishing that it was, in light of the Respondent’s opposition, in
compliance with subsection 30(e) – in other words, demonstrating that the Mark
was not in use prior to the filing date of the application. The Respondent
further argues that neither of the new affidavits bring the Applicant any
closer to meeting that burden.
[34]
Having already determined that neither Affidavit
would have had a material effect on the Board’s decision, the Court does not
afford either any substantial weight in this analysis. Both consist of bare
assertions that the Board’s interpretation of Ms. Daing’s earlier statements
was incorrect without any evidence to support this point. The Christoforakis
Affidavit does disclose that Ms. Christoforakis conducted an “independent search” that found no evidence of use of
the Mark before the application date, but nothing is said on the scope or
methodology of this search. As a result, both the Daing Affidavit and the
Christoforakis Affidavit serve less as evidence than as reiterations of the
Applicant’s current position on the Board’s original findings.
[35]
As for those original findings, they disclose no
reviewable error. The task of this Court is not to conduct its own analysis of
Ms. Daing’s statements. Instead, it must be asked whether it was open to the
Board to determine from the conflicting testimony – the only evidence available
on the issue – that the Applicant had not proven on a balance of probabilities
that the application was in compliance with subsection 30(e) of the Act (Prior
Use). Looking to paragraphs 14 to 17 of the Decision, it is clear that the
Board considered the available evidence, noted the contradictions in Ms. Daing’s
testimony, considered both the Applicant’s and the Respondent’s arguments on
the issue, and reached a justifiable, and thus reasonable, conclusion.
C.
Issue 3: Confusion (Paragraph 12(1)(d))
[36]
The Applicant argues that the Board made a
number of errors, including that:
(i)
“Amira” was a coined term and is thus inherently
distinctive;
(ii)
the Respondent’s
trade-mark was distinctive in relation to rice, or even used by the Respondent
in relation to rice; and
(iii)
there was a high degree
of resemblance between its Mark and the Respondent’s trade-mark.
[37]
As Justice Evans noted in Garbo Group Inc v
Harriet Brown & Co (1999), 3 CPR (4th) 224 at para 34, in revisiting
the Board’s finding on confusion, this Court must be respectful of its
findings:
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[D]espite the
inclusion in the Trade-marks Act of an untrammelled right of appeal and the
right to adduce additional evidence, a considerable degree of deference is
called for on the part of the appellate Court when reviewing the Registrar’s
finding of confusion, provided at least that no significant new evidence has
been adduced on a factual issue and it is not alleged that an error of law
has been committed.
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[A]près avoir
évalué ces facteurs, que, malgré l'ajout dans la Loi sur les marques de
commerce d'un droit d'appel non restreint et du droit de présenter des
éléments de preuve additionnels, la cour d'appel doit faire preuve d'un degré
considérable de retenue envers les conclusions de fait tirées par le
registraire, à la condition du moins qu'aucun nouvel élément de preuve de
poids n'ait été fourni relativement à une question de fait et qu'aucune
erreur de droit n'ait été invoquée.
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(i) Inherent
Distinctiveness of the word “Amira”
[38]
The Applicant argues that the Board erred in erroneously assuming without any evidence that ‘Amira’ was a
coined term: Amira is Arabic for ‘princess’
and also a common name for both businesses and individuals in Canada. Since
there is Board jurisprudence to the effect that proper names lack inherent
distinctiveness (see, for example, Laura Ashley at para 26), and the new
evidence demonstrates that Amira is a common name in Canada, the Board erred in
concluding that the Respondent’s trade-mark was distinctive.
[39]
The Board did not, however, conclude that ‘Amira’ was a coined word. Instead, the Board found
that “the average Canadian would be more likely to
interpret the word AMIRA as a coined word” (Decision, at para 25). This
conclusion was based on an absence of evidence “to
support a finding that the average Canadian would be aware of the Arabic
meaning of the word AMIRA” (Decision at para 24).
[40]
The Applicant submitted the Christoforakis Affidavit
to address this absence, but, as discussed above, it is insufficient to ground
a finding that, on a balance of probabilities, the average Canadian would
recognize Amira as a proper name. That Affidavit only identified 17 individuals
across Canada named Amira, far from enough to reasonably conclude that the
average Canadian would know of a person with that name.
[41]
It was thus open to the Board, on the evidence
before it, to conclude that the average Canadian would be likely to think Amira
was a coined word and thus that the Respondent’s registered trade-mark was
inherently distinctive. Even if it were not, the subsection 6(5) analysis looks
at both inherent distinctiveness and acquired distinctiveness (i.e. “the
extent to which they have become known”), and
the Board found that it was clear from the evidence – including media
attention, sales figures, and invoices – that the Respondent’s trade-mark “has acquired distinctiveness with respect to the operation of an
import and export business specializing in middle east food and non-food
products, and in association with various other food products” (Decision at para 33).
(ii) Distinctiveness
and use in relation to rice
[42]
On this point, the Applicant first argues that
the Board erred in concluding that the Respondent’s registered trade-mark was
distinctive in relation to rice. The Applicant notes that, until at least 2011,
the Respondent sold or advertised rice labelled by Shivnath Rai Harnarain
[SRH], the original source of that rice. A trade-mark, the Applicant argues,
cannot be distinctive if it refers consumers to a multitude of sources. If
another party was benefitting from the goodwill associated with the mark, then
the mark was not distinctive.
[43]
It is essential, however, that the Board’s
finding on this point be understood in its larger context. Specifically, the
Board found that, while the Respondent was selling basmati rice under
the SRH label until at least 2011, it was also selling other types of rice: “[the Respondent’s] evidence also shows that it has used its
AMIRA mark in association with other rice products, such as Egyptian rice”
(Decision at para 33). The Board concluded that the Respondent’s trade-mark
remained distinctive in relation to rice in spite of the SRH labels because
those labels were only associated with one of the rice products it sold.
[44]
I find it was reasonable for the Board to look
at this broader context, rather than confining its analysis purely to the realm
of basmati rice: the consumer in a hurry, with imperfect recollection, cannot
be expected to distinguish between types of rice when distinguishing two
potentially confusing trade-marks (see Veuve Clicquot at para 20).
[45]
The Applicant also argues that there was no
evidence before the Board that the Opponent was using the registered trade-mark
in the sense of the Act:
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4(1) A trade-mark
is deemed to be used in association with goods if, at the time of the
transfer of the property in or possession of the goods, in the normal course
of trade, it is marked on the goods themselves or on the packages in which
they are distributed or it is in any other manner so associated with the
goods that notice of the association is then given to the person to whom the
property or possession is transferred.
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4(1) Une marque de
commerce est réputée employée en liaison avec des produits si, lors du
transfert de la propriété ou de la possession de ces produits, dans la
pratique normale du commerce, elle est apposée sur les produits mêmes ou sur
les emballages dans lesquels ces produits sont distribués, ou si elle est, de
toute autre manière, liée aux produits à tel point qu’avis de liaison est
alors donné à la personne à qui la propriété ou possession est transférée.
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[46]
However, evidence was indeed submitted to the
Board of use, including “a sample of the [Respondent’s]
rice sold across Canada for several years under the AMIRA trade-mark” (Decision
at para 27). It was therefore reasonable for the Board to find that this, along
with the rest of the Respondent’s exhibits, provided sufficient evidence to
conclude that the facts alleged to support this ground of opposition existed
(see Laura Ashley at para 20).
(iii) Resemblance
between the marks in question
[47]
Finally, the Applicant argues that the Board
erred in finding a there is a high degree of resemblance between the Mark and
the Respondent’s registered trade-mark, “Amira”.
One is a design mark while the other is a word mark. Furthermore, “[t]he ideas suggested by the trade-marks are very different”
– the Applicant’s Mark suggests “wealth and premium
quality of Indian origin”, while the Opponent’s trade-mark “is a reference to
an employee at Les Entreprises Amira”, the owner’s sister (AR, p 1364).
Along the same lines, the Applicant submits that the Mark is, in contrast to
the Respondent’s trade-mark, highly distinctive, since the design in the Mark,
and not the word, is dominant.
[48]
In light of the Board’s finding on the
distinctiveness of the term “Amira”, there is no
readily identifiable error in the Board’s analysis on this ground. Both involve
the prominent display of “Amira”. As the Supreme Court noted in Masterpiece Inc v
Alavida Lifestyles Inc, 2011 SCC 27 at para 64, when considering the
degree of resemblance between marks, the “striking or
unique” aspect of any mark should drive the analysis. Since the
Board reasonably found that the word Amira would be more likely than not to be
understood as a coined term, the word itself would be most striking to a
consumer and thus the degree of resemblance would be high.
[49]
The jurisprudence is clear that in a
reasonableness review of a confusion analysis conducted by the Board, this
Court must act with a considerable degree of deference. There are no
identifiable errors in the Applicant’s submissions regarding the outcome that
suggest this Court should set aside the Board’s findings.
V.
Conclusion
[50]
Neither the Applicant’s new evidence, which
would not have had a material effect on the Decision, nor the Applicant’s
arguments on its unreasonableness, have persuaded me that the Board made a reviewable
error refusing registration of the Applicant’s mark. This appeal will,
accordingly, be dismissed, with costs to the Respondent.
[51]
The parties agreed to provide a joint submission
on fixed costs after having reviewed this decision. They have 15 days to
present that quantum to the Court (i.e., by January 20, 2016).
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