Date: 20000707
Docket: T-756-99
IN THE MATTER of Section 56 of the
Trade Marks Act (R.S.C. 1985, c. T-13)
and a decision of the Registrar of trade marks
issued the 2nd day of March 1999 concerning
trade mark application 755,658 for the trade mark
GOUT DE BEURRE COMME AU CINÉMA
filed by Hunt-Wesson, Inc.
BETWEEN:
DAIRY FARMERS OF CANADA/
LES PRODUCTEURS LAITIERS DU CANADA
Appellant
AND:
HUNT-WESSON, INC.
Respondent
REASONS FOR JUDGMENT
NADON J.
[1] The Appellant, Dairy Farmers of Canada, appeals a decision rendered by the Registrar of Trade Marks on March 2, 1999, which dismissed its opposition to an application made by the Respondent, Hunt-Wesson, for the trade mark "Goût de Beurre Comme au Cinéma." The appeal, made pursuant to s.56 of the Trade Marks Act , R.S.C. 1985, c. T-13 ("the Act"), is for an order reversing the Registrar"s decision and maintaining the Appellant"s opposition to the registration of the trade mark. The Appellant also asks for the filing of this Court"s decision with the Registrar of Trade Marks, and for costs.
[2] On May 25, 1994, the Respondent made a trade mark application which reads as follows:
| Goût de Beurre Comme au Cinéma |
| The right to the exclusive use of the words GOUT DE BEURRE is disclaimed apart from the trade mark. |
| WARES: (1) Popping corn, namely, unpopped popcorn. (2) Popping corn, namely, popped popcorn. Used in Canada since at least as early as October 1993 on wares marked (01). Proposed use in Canada on wares marked (02). |
[3] On January 16, 1996, the Appellant opposed the Respondent"s application on the following grounds: paragraphs 38(2)(a), (b),(c) and (d) of the Act.1 On behalf of the Registrar of Trade Marks, Mr. Myer Herzig of the Trade Marks Opposition Board, dismissed the Appellant"s opposition on March 2, 1999.
Registrar"s Decision
[4] The Registrar"s decision held that the mark was not clearly descriptive or deceptively misdescriptive insofar as the mark was not simply "goût de beurre" but "goût de beurre comme au cinéma". In the Registrar"s view, consumers were accustomed to seeing the word "butter" with food products which contained no butter; for instance, "I can"t believe it"s not butter"and "Souvenirs de beurre". Therefore, according the Registrar, although consumers would expect some form of buttery flavour, they would not be misled into thinking that the product contained dairy butter.
[5] The Registrar also rejected the Appellant"s ground of opposition to the effect that the mark was not distinctive because a transfer had caused two or more persons to concurrently use the mark. The Registrar found that there was no evidence to support the Appellant"s allegation of a transfer of the mark to another party, and consequently, did not consider this submission.
[6] Further, the Registrar dismissed the Appellant"s argument that the mark was not distinctive because the Respondent had allowed third parties to use the mark outside the licensing provisions. The Registrar held that this did not set out the ground of opposition in sufficient detail to enable the Respondent to reply, as paragraph 38(3)(a)2 requires, because the Appellant had not identified the third parties in its pleadings or described the particular use of the mark by the third party. There was also no evidence, according to the Registrar, that the Respondent did not have control over its wares.
[7] Finally, the Registrar dismissed the Appellant"s final ground of opposition pursuant to which the mark was non distinctive due to improper licensing. The Registrar found that the Respondent"s license was for marketing and selling popcorn rather than for producing popcorn.
Parties" Submissions
[8] In its Notice of Appeal pursuant to section 56 of the Act, the Appellant submits that the Registrar erred in the following ways: in dismissing its subsection 38(2) argument that the trade mark is not registrable; in concluding that the Respondent had established that its mark was not clearly descriptive or deceptively misdescriptive; in concluding that the Respondent"s use of the trade mark did not refer to the butter or cream in a food product; in concluding that the trade mark was not clearly descriptive or deceptively misdescriptive of the popcorn butter content and of the character or quality of popcorn; in concluding that the trade mark simply suggested that the product had some type of butter flavour but that consumers would not believe that dairy butter is a component of the wares; and finally, in concluding that consumers were accustomed to seeing the word "beurre" used in association with products that did not contain butter.
[9] In support of its appeal, the Appellant adduced in evidence an opinion poll done by the Research Management Group with respect to the trade mark "Goût de Beurre Comme au Cinéma". A sample of consumers3 were surveyed with respect to their perception of the trade mark. The consumers were first asked to examine a package of Reden Budders popcorn containing the trade mark "Goût de Beurre Comme au Cinéma". They were then asked a series of questions on their impressions of the product; for example, they were asked whether they believed the product contained butter when they saw the words on the package. Fifty-nine percent of the questionnaire"s respondents believed that the product contained butter and that it was the manufacturer"s intention to create this impression.
[10] The Appellant raises the following three issues in its Memorandum. First, did the Registrar err on his conclusion about the use of the word butter? Second, did he err when he concluded that the trade mark was not clearly descriptive of the wares? Third, given the Appellant"s additional evidence (i.e., the survey), should this Court exercise its discretion and substitute its decision for that of the Registrar?
[11] The Appellant submits that this case meets the onus set out in George Weston4 " namely, that this Court can reverse a decision by the Registrar if it is satisfied that the Registrar"s conclusion is erroneous, or if new and substantial evidence is brought to the Court"s attention showing that the Registrar erred. As Teitelbaum J. observed at page 267 of this decision:
| It is not the function of the court, in hearing an appeal from a registrar to set aside the registrar"s decision because the court may have come to a different conclusion than the registrar. |
| Only if the appellant can show and the appellant has the burden to do so, that the registrar has failed to properly interpret the facts before him or has failed to consider the facts before him, should the court interfere in the registrar"s decision. |
| The court may interfere in the registrar"s decision if new evidence, of a substantial nature and by way of affidavit or statutory declaration, is placed before the court to show that the evidence is such that the registrar came to a wrong conclusion. |
[12] In this regard, the Appellant submits that the additional evidence it is bringing forward (ie., the surveys which found that consumers would believe that the product contains butter) constitutes significant and substantial evidence. Accordingly, the Appellant argues that the Registrar erred in concluding that the product was not clearly descriptive or deceptively misdescriptive. In this respect, the Appellant refers to guidelines by Industry Canada which, subject to certain exceptions, prohibit the use of the term "butter" even if the product is partially composed of butter.5 The Appellant further submits that the Respondent"s intention was to indicate to consumers that its product contained butter. Since, in the Appellant"s view, the product is clearly descriptive or deceptively misdescriptive, it submits that the trade mark was not registrable.
[13] In addition, the Appellant submits that the Registrar erred in concluding that the Respondent met the terms of subsection 30(i) of the Act, namely, that it was satisfied it was entitled to use the trade mark
[14] The Respondent points out that the Appellant has a high onus in this type of case and that this Court cannot simply substitute its decision for that of the Registrar"s unless the Registrar made an error or failed to properly interpret the facts before him (Imperial Tobacco ,6 George Weston, supra). In addition, the Court may interfere where new and substantial evidence shows that the Registrar came to the wrong conclusion (George Weston). In the Respondent"s submission, the new evidence presented by the Appellant (i.e., the surveys )is not of a substantial nature because it does not address the real issue on appeal (i.e., registrability). In this regard, the Respondent filed the affidavit of an experienced market researcher, Mr. David Thexton, who criticizes the survey and claims that it cannot be relied upon because it is premised on a biased questionnaire which asked questions about the words on the package, rather than asking questions about the words of the trade mark itself.
[15] The Respondent also reminded me that the guidelines were not mandatory, but were simply recommendations or suggestions and that they indicated that "When it is clear that the terms "butter", "cream" or "creamy" refer to texture, form, colour and the like and not to the butter or cream content of a food, their use would be acceptable." Accordingly, the Respondent submits that Canadian consumers are accustomed to seeing food products that use the word "butter" but contain no butter (or very little) and that simply describe the taste. Also, the Respondent notes that there is no evidence that consumers have been deceived or misled by the trade mark "Goût de beurre comme au cinéma." In the Respondent"s submission, one must examine the trade mark in its entirety and not simply focus on the word "butter"; for the Respondent, the mere use of the word "butter" does not in itself render the whole trade mark non-registrable.
[16] With respect to the question arising from subsection 30(i), namely, the statement that the Respondent is satisfied it is entitled to use the trade mark, the Respondent submits that it adhered to the Act since it filed the required statement which it believed to be true. The Respondent submits that the Appellant"s argument on this issue is based on the proposition that the Respondent could not have possibly believed that it was entitled to use the trade mark given the guidelines. However, as the Respondent already pointed out, the guidelines are not mandatory and even if they were, the Respondent submits that the word "beurre" in the trade mark does not refer to butter content.
[17] The Respondent also submits that the ordinary consumer would not associate any particular butter flavour with a cinema and that there is no evidence as to what that flavour might be. It therefore submits that the trade mark "Goût de beurre comme au cinéma" taken in its entirety is not clearly descriptive or deceptively midescriptive. In effect, the Respondent submits that the Registrar"s conclusions are correct.
Analysis
[18] In United States Polo Association v. Polo Ralph Lauren Corp., (1999) 163 F.T.R. 59, I discussed the approach to be taken by a judge of this Court in determining an appeal taken under s.56(1) of the Act, in the following terms:
| These appeals have been brought pursuant to subsection 56(1) of the Act. Subsection 56(5) of the Act provides that parties to such an appeal may, in addition to the evidence adduced before the Board, adduce further evidence before the Court and, as a result, the Court may exercise "any discretion vested in the registrar". In McDonald's Corp. v. Silcorp. Ltd. (1989), 24 C.P.R. (3d) 207 at 210, Strayer J. (as he then was) explained as follows the role of the Court on appeals in opposition proceedings: |
| It seems clear that in opposition proceedings where the issue is essentially one of fact concerning confusion or distinctiveness the decision of the registrar or the Board represents a finding of fact and not the exercise of discretion. Therefore the court should not impose upon itself the same degree of restraint, in reviewing that decision, as it would if the decision were essentially an exercise of discretion. It is thus free to review the facts to determine whether the decision of the registrar or Board was correct, but that decision should not be set aside lightly considering the expertise of those who regularly make such determinations: see Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), 57 C.P.R. 1 at p.8, 1 D.L.R. (3d) 462, [1969] S.C.R. 192">[1969] S.C.R. 192 at pp. 199-200 (S.C.C.). While different panels of the Federal Court of Appeal have variously expressed the duty of this court on appeal to be to determine whether the registrar has "clearly erred", or whether he has simply "gone wrong", it appears that it is the duty of a judge sitting on an appeal such as this to come to his own conclusion as to the correctness of the finding of the registrar. In doing that he must, however, take into account the special experience and knowledge of the registrar or the Board, and more importantly have regard to whether new evidence has been put before him that was not before the Board. ... |
| Mr. Justice Strayer's decision was appealed to the Federal Court of Appeal which dismissed the appeal. Stone J.A., for the Court, in McDonald's Corp. v. Silcorp. Ltd.(1992), 41 C.P.R. (3d) 67, at page 68, recognized the duty of the trial judge to determine the issues before him but also recognized that decisions of the Board should not be lightly disturbed. |
| We are not persuaded that Mr. Justice Strayer erred in any respect relative to the issues which were before him and which, in all material respects, upheld the decision of the board. In the circumstances, we are of the view that the principle laid down by the Supreme Court of Canada in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), 57 C.P.R. 1 at pp. 8-9, 1 D.L.R. (3d) 462, [1969] S.C.R. 192">[1969] S.C.R. 192, per Ritchie J., is |
| particularly germane. He stated: |
| In my view the Registrar's decision on the question of whether or not a trade mark is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly ... |
| While, as that case also indicates, the learned judge was not thereby relieved of the responsibility of determining the issues with regard to the circumstances of the case, in our view he properly discharged that responsibility. |
| In the present matters, the parties have adduced evidence which was not before the Board when it rendered the decisions now under appeal. I agree entirely with the |
| comments made by Mr. Justice Strayer in McDonald's that I must come to my own conclusion with regard to the correctness of the Board's findings. In reaching my own conclusions, I must, however, bear in mind "the special experience and knowledge of the registrar or the Board", and consider, as I must, the new evidence which has been put before me. Consequently, it is my view that the appellant must show, in the light of all the evidence, that the Board's decisions are not "correct". |
[19] In light of these principles, the Appellants have not satisfied me that the Registrar"s conclusion is erroneous. I am of the view that his decision was reasonable primarily because, as he pointed out, the trade mark must be considered as a whole and in this case, the trade mark is not simply "goût de beurre" but "goût de beurre comme au cinéma." His decision is based on the premise that most consumers would not expect the product to contain butter or a significant amount thereof. In this regard, the Registrar referred to other products which contain the word "butter" without containing actual butter, in order to conclude that most consumers would similarly not be misled into thinking that the Respondent"s product contained butter. As the Respondent pointed out at paragraph 67 of its Memorandum, many registered trade marks contain the word butter (e.g., Molly McButter) and these trade marks have been considered registrable by the Trade Mark Opposition Board.7
[20] Moreover, taken as a whole, the only thing the product presumes to reflect is not butter itself, but the taste of butter one gets at the movie theatres. It is important to emphasize that the trade mark is not solely "Goût du Beurre" but "Goût du Beurre Comme au Cinéma." In this respect, I agree with the following observation made by the Registrar:
| In the instant case, I conclude that the applied for mark, considered in its entirety, has too imprecise a meaning to be clearly descriptive or deceptively misdescriptive of popcorn; rather, the mark as a whole merely suggests that the applicant"s wares have some type of butter flavour and consumers would not be misled into thinking that dairy butter is a component of the wares. |
[21] Further, I wish to point out that the Registrar did engage in quite a thorough analysis of the trade mark and as to how the word "butter" has been used in other products before arriving at his conclusion. In my view, the Registrar"s analysis is entirely reasonable on the evidence and I see no basis on which to reverse his decision.
[22] In this regard, I find that the Appellant"s survey is, as the Respondent submits, unreliable. Clearly, the issue is whether the trade mark per se " i.e., the words comprising the trade mark " is clearly descriptive or deceptively misdescriptive, not whether the trade mark as it appears on a particular label or package is so.8 In this respect, the survey submitted by the Appellant specifically refers to the package, and indeed, the questions mandate a consideration of the package. For example, Question 5 asks:
| When you see these words [Goût du Beurre Comme au Cinéma"] on this package, which of the following phrases most accurately describes the impression that you, yourself, have about this product? |
| [ ] That this product contains butter as an ingredient. |
| [ ] That this product does not contain butter as an ingredient. |
[23] By providing the consumers with an image of the package showing butter, such questions distort the real focus of the issue to be decided " namely, do the words of the trade mark themselves convey the impression that the product contains butter. Since, in my view, the questions are not truly directed towards the heart of the matter, it cannot be said that the consumers" answers accurately reflect their perception of the trade mark per se. Indeed, a sample of the verbatim answers shows that the consumers were visually-oriented towards the package: e.g., "It looks like there is lots of butter"; "I like the packaging. It catches attention"; "The popcorn is diving into the butter"; "It"s eye-catching, the drawing, the way it is done, is representative of the product"; "Nice emblem".
[24] Consequently, I agree entirely with Mr. Thexton who was of the view that the survey was flawed and biased because the package was used to interpret the trade mark. As a result, the answers of the survey must be disregarded.
[25] Without this additional evidence, the appeal before me cannot succeed because there is no evidence showing that the Registrar erred in law or in fact when he concluded that the Respondent"s trade mark was not clearly descriptive or deceptively misdescriptive. Accordingly, this appeal shall be dismissed with costs in favor of the respondent.
MARC NADON
JUDGE
Q U E B E C, Quebec
July 7, 2000.
FEDERAL COURT OF CANADA - TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
| BETWEEN: DAIRY FARMERS OF CANADA/ |
LES PRODUCTEURS LAITIERS DU CANADA
Appellant
AND:
HUNT-WESSON, INC.
Respondent
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: April 10, 2000
REASONS FOR ORDER: The Honourable Mr. Justice Nadon
APPEARANCES: Mr. François M. Grenier Appellant
Mr. Dan Hitchock Respondent
| SOLICITORS OF RECORD: Léger, Robic & Richard |
Montreal, Quebec Appellant
Riches, McKenzie & Herbert
Toronto, Ontario Respondent
FEDERAL COURT OF TRIAL
Date: 20000707
Docket: T-756-99
Between :
DAIRY FARMERS OF CANADA/
LES PRODUCTEURS LAITIERS DU CANADA
Appellant
- AND -
HUNT-WESSON, INC.
Respondent
REASONS FOR JUDGMENT
__________________
1 Subsection 38(2) of the Trade Marks Act reads as follows: A statement of opposition may be based on any of the following grounds: (a) that the application does not conform to the requirements of section 30*; (b) that the trade-mark is not registrable; (c) that the applicant is not the person entitled to registration of the trade-mark; or (d) that the trade-mark is not distinctive. *Section 30 deals with the contents of the application (e.g., statement of wares, applicant"s address).
2 38(3)(a) of the Act provides as follows: "A statement of opposition shall set out the grounds of opposition in sufficient detail to enable the applicant to reply thereto."
3 307 consumers, to be exact.
4 88766 Canada Inc. v. George Weston Ltd. (1987) 15 C.P.R. (3d) 260.
5 Actually, what the Guidelines prohibit is the use of the word "butter" to describe a product that is partially composed of butter, unless there is a sufficient quantity in the ingredients to justify characterising the product as such: "C"est avec prudence que l"on doit employer les mots "beurre" ou "crème" dans le nom ou la description d"un aliment. Il est interdit de se servir de ces terms pour qualifier un aliment composé ou partiellement composé de crème ou de beurre, à moins qu"il contienne une quantité suffisante de ces ingrédients pour en être caracterisé."
6 Imperial Tobacco Ltd. v. Rothmans, Benson & Hedges Inc. (1992), 45 C.P.R. (3d) 354 (F.C.T.D.).
7 Please see: Bureau Laitier du Canada v. Alberto-Culver Co. (1995), 64 C.P.R. (3d) 542, Dairy Bureau of Canada v. Swift Co. (1988), 22 C.P.R. (3d) 144.
8 Dairy Farmers, supra, at page 155.
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