Date: 19990119
Docket: T-527-97
IN THE MATTER OF Sections 38, 56 and 59 of the Trade-
marks Act 1993 Ch. 15 AND AN APPEAL FROM THE
REGISTRAR OF TRADE-MARKS IN AN OPPOSITION by
Kraft General Foods Canada Inc. (now Kraft Canada Inc.) to
Application No. 684,130 for the Trade-Mark MAGIC WHIP
filed by Tritap Food Broker, a Division of 676,166 Ontario
Limited
BETWEEN:
TRITAP FOOD BROKER, a division of 676166 Ontario Limited
Appellant
- and -
KRAFT GENERAL FOODS CANADA
now KRAFT CANADA INC.
- and -
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER
RICHARD A.C.J.:
Nature of the Proceeding
[1] This is an appeal by Tritap Food Broker (Tritap) from a decision dated January 22, 1997 of the Trade Marks Opposition Board, refusing registration of Tritap"s trade mark MAGIC WHIP for use in association with "dessert topping".
[2] The Board concluded:
| Having regard to the above, I have concluded that the applicant has failed to meet the legal burden upon it of establishing that there would be no reasonable likelihood of confusion between its trade-mark MAGIC WHIP as applied to a dessert topping and the opponent"s trade-mark DREAM WHIP as applied to a dessert topping mix. In addition to there being some degree of resemblance between these trade-marks, the opponent has established that there has been significant use of the trade-mark DREAM WHIP as applied to dessert toppings, that it is the largest seller in the marketplace in its product category, and that it would be sold side-by-side with the applicant"s MAGIC WHIP dessert topping in the marketplace. Moreover, the opponent has demonstrated that it has made significant use of its trade-marks COOL WHIP and WHIP "N CHILL as applied to dessert related products, as well as MIRACLE WHIP in association with a salad dressing; and this evidence far outweighs any significance which could be accorded to either the state of the register evidence or marketplace evidence which has been adduced in this opposition. |
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Background
[3] On June 17, 1991, Tritap applied to register the mark MAGIC WHIP under the Trade-marks Act, R.S.C. 1985, c. T-13, as amended (the Act), based on proposed use in association with "dessert topping".
[4] At the Registrar"s request, Tritap disclaimed any right to exclusive use of the word WHIP apart from the trade mark.
[5] The application was advertised on August 26, 1992. On October 15, 1992, Kraft General Foods Canada Inc. (Kraft) opposed.
[6] Kraft opposed on the following grounds:
| (ii) Subparagraph 30(i) - Tritap could not have been satisfied that it was entitled to use the mark MAGIC WHIP in Canada because it was aware of Kraft"s prior use and registration of confusingly similar trade marks (identified below); and |
| (iii) Paragraph 12(1)(d) - MAGIC WHIP is confusing with the registered trade marks of Kraft listed below: |
| Trade Mark
COOL WHIP
DREAM WHIP
MIRACLE WHIP
WHIPPED & DESIGN
WHIP"N CHILL
WHIP
MOMENTS MAGIQUES
MAGIC MOMENTS
MAGIC MOMENTS
MAGICQUES DESIGN
MAGIC MOMENTS
DESIGN
MIRACLE WHIP
& DESIGN
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| 340,181
373,119
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| powdered preparations for making dessert toppings, puddings, pie fillings; desert toppings |
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| puddings, yoghurt jams, compotes, mousse and custard |
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| puddings, yoghurt, jams, compotes, mousse and custard |
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| puddings, yoghurt, jams, compotes, mousse and custard |
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[7] The Opposition Board found that Tritap failed to establish that there would be no reasonable likelihood of confusion between MAGIC WHIP, for dessert topping, and Kraft"s registered trade mark DREAM WHIP for a dessert topping mix.
[8] On March 24, 1997, the appellant filed a notice of appeal from the decision of the Registrar. The basis of appeal is as follows:
| The Registrar"s decision effectively accorded to the Respondent a right it had disclaimed, a right contradicted by both the state of the register and the usage in the market, namely, a right to prevent others from using the word "WHIP" in trade-marks for dessert toppings. |
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[9] No new evidence was filed on the appeal.
[10] The Registrar came to the following conclusions upon consideration of the factors to be considered as set out in subsection 6(5) of the Act:
| a. the Respondent"s trade-marks COOL WHIP, DREAM WHIP and WHIP "N CHILL have become well known in Canada and the Respondent"s MIRACLE WHIP trade-mark has become very well known in Canada; |
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| b. the appellant"s mark MAGIC WHIP has only become known in Canada to a limited extent; |
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| c. the extent and length of time to which the trade-marks MIRACLE WHIP, COOL WHIP, DREAM WHIP and WHIP "N CHILL have been used by the respondent weighs in the Respondent"s favour to a significant extent; |
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| d. the wares associated with the Appellant"s MAGIC WHIP are identical to those covered in the registration of the Respondent"s trade-marks COOL WHIP and are closely related to the wares associated with the Respondent"s registered trade-marks DREAM WHIP and WHIP "N CHILL and could be considered somewhat related to the wares associated with the Respondent"s MAGIC MOMENTS; |
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| e. the Appellant"s MAGIC WHIP product is directly competitive with the Respondent"s DREAM WHIP product; |
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| f. while the Appellant"s dessert topping differs from the Respondent"s salad dressing associated with the MIRACLE WHIP and WHIP trade-marks, there is an overlap in that the Respondent"s salad dressing has been promoted as an ingredient for dessert recipes for cakes, muffins, mousses and sauces; |
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| g. wares associated with the trade-marks MAGIC WHIP and MIRACLE WHIP would be sold in the same stores (grocery stores, supermarkets or the like) albeit different Sections; |
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| h. there is a fairly high degree of resemblance between the Appellant"s proposed trade-mark MAGIC WHIP and the Respondent"s registered trade-mark WHIP and there is also a fair degree of similarity in appearance and sounding between the applicant"s mark and the opponent"s registered trade-mark MAGIC MOMENTS; |
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| i. The degree of resemblance is less pronounced between Tritap"s MAGIC WHIP and Kraft"s COOL WHIP, DREAM WHIP, WHIP "N CHILL and MIRACLE WHIP than between MAGIC WHIP and Kraft"s WHIP and MAGIC MOMENTS marks; |
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| j. The mark MAGIC has been adopted by many traders, thus diminishing the likelihood of confusion between MAGIC WHIP and Kraft"s MAGIC MOMENTS; |
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| k. The word WHIP has been adopted as a common component of trade-marks applied to dessert toppings. |
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[11] Exclusive use of the word WHIP is disclaimed for dessert products in Kraft"s registrations for DREAM WHIP and COOL WHIP. The word WHIPPED is disclaimed in the registration of WHIPPED & DESIGN.
[12] The Trade-marks Office did not designate DREAM WHIP, COOL WHIP or MIRACLE WHIP to be associated marks under subsection 15(2) of the Act.
[13] Kraft"s evidence does not allege any instances of actual confusion between any of its marks and MAGIC WHIP.
Issue
[14] Has Tritap established that there is no reasonable likelihood of confusion between its trade mark MAGIC WHIP for dessert toppings and the trade marks cited in Kraft"s Statement of Opposition, having regard to all of the evidence and the relevant circumstances?
Onus
[15] The legal burden on the applicant is to establish that there would be no reasonable likelihood of confusion between the trade marks of the parties as at the relevant date. It is well established that the relevant date for assessing confusion under paragraph 12(1)(d) of the Act is the date of the Registrar"s decision.
Standard of Review
[16] Section 56 of the Trade-marks Act reads in part as follows:
| Appeal
56.(1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
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Appel
56.(1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l"avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l"expiration des deux mois.
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[...]
| Additional evidence
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar. R.S., c. T-10, s. 56; R.S., c. 10(2nd Supp.), s. 64.
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Preuve additionnelle
(5) Lors de l"appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi. S.R., ch. T-10, art. 56; S.R., ch. 10(2e suppl.), art. 64.
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[17] Section 56 of the Act provides for an unfettered statutory right of appeal from decisions of the Board.
[18] The appellant submits that the appropriate standard of review is that of correctness, while the respondent, relying on Canada (Director of Investigation and Research) v. Southam Inc.1, submits that the appropriate standard of review is reasonableness.
[19] In my view, the appropriate standard of review is set out by Mr. Justice Heald in Labatt Brewing Co. v. Molson Breweries (1996), 68 C.P.R. (3d) 216 (F.C.T.D) at p. 220-221. Mr. Justice Heald examined the role of the Court on appeal :
| The role of the Court on an appeal pursuant to section 56 of the Act was aptly stated by Justice Strayer in McDonald"s Corp. v. Silcorp Ltd. (1989), 24 C.P.R. (3d) 207 (F.C.T.D.) at page 210; affirmed 139 N.R. 319, 41 C.P.R. (3d) 67 (F.C.A.): |
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| 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. |
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| See also Clorox Co. v. E.I. Du Pont Nemours and Co. (1995), 64 C.P.R. (3d) 79 (F.C.T.D.). |
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| Accordingly, in determining this appeal I shall be guided by the principles enunciated above. That is I must come to my own conclusion as to the correctness of the Registrar"s decision, however I must take into account the special experience and knowledge of the Registrar and the fact that no new evidence was adduced on this appeal that was not before the Registrar. |
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Analysis
[20] Subsection 6(2) of the Trade-marks Act provides that a trade mark is confusing with another trade mark, if the use of both, in the same area, would be likely to lead to the inference that the wares associated with them are sold by the same person whether or not such wares are of the same general class.
[21] In determining the likelihood of confusion, regard is to be had to all the surrounding circumstances, including the specific matters set out in subsection 6(5) of the Act:
| (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; |
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| (b) the length of time the marks have been in use; |
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| (c) the nature of the wares; |
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| (d) the nature of the trade; and |
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| (e) the degree of resemblance between the marks in appearance or sound or in the idea suggested by them. |
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Inherent Distinctiveness - Paragraph 6(5)(a)
[22] The word WHIP is descriptive of the wares. It was disclaimed, in each of Kraft"s trade mark registrations for DREAM WHIP and COOL WHIP. It was disclaimed in Tritap"s application for MAGIC WHIP.
[23] The word COOL is also descriptive in Kraft"s COOL WHIP mark. The words DREAM and MIRACLE are laudatory of Kraft"s DREAM WHIP and MIRACLE WHIP products.
Length of Use - Paragraph 6(5)(b)
[24] The Registrar found, and Tritap admits, that Kraft"s COOL WHIP, DREAM WHIP, MIRACLE WHIP, and WHIP "N CHILL trade marks have been in use for a longer period of time and are more widely known than Tritap"s mark MAGIC WHIP.
[25] Kraft has adduced no evidence that any of its other cited trade marks have become known.
Nature of the Wares - Paragraph 6(5)(c)
[26] Tritap"s MAGIC WHIP dessert product is similar to Kraft"s DREAM WHIP, COOL WHIP and WHIP "N CHILL dessert products.
[27] However, Tritap"s MAGIC WHIP product is not similar to Kraft"s MIRACLE WHIP and WHIP salad dressing products.
[28] Kraft introduced evidence of magazine advertisements with dessert-related recipes using MIRACLE WHIP as an ingredient. This evidence is not probative. The inclusion of phrases in these advertisements such as "WHO"D A THUNKIT!" and "GET YOUR IMAGINATION COOKING" shows that the average consumer does not associate MIRACLE WHIP salad dressing with dessert and even less with a dessert topping.
Nature of Trade - Paragraph 6(5)(d)
[29] The Registrar found that MAGIC WHIP and DREAM WHIP products are sold side-by-side. However, Tritap"s evidence shows that products such as NUTRIWHIP, NUTRIWHIP LITE-LÉGER, WHIP IT, NO NAME DESSERT WHIP, RICH"S RICH WHIP are also sold side-by-side with DREAM WHIP.
[30] The Registrar found that Kraft"s MIRACLE WHIP product is sold in a different section of grocery stores than MAGIC WHIP.
Degree of Resemblance - Paragraph 6(5)(e)
[31] The dominant feature of the MAGIC WHIP mark is the word MAGIC. It is the first word, and the remainder of the mark is descriptive and therefore does not serve to distinguish. For the same reason, the dominant feature of Kraft"s COOL WHIP and DREAM WHIP marks are the words COOL and DREAM.
[32] The word MAGIC is different in appearance and sound from DREAM and COOL. Different ideas are suggested by each word.
[33] Undue weight should not be given to descriptive, and therefore non-distinctive, matter in a trade mark because descriptive matter does not serve to distinguish one trader"s wares over another"s.
[34] The only common element between all marks is the descriptive, non-distinctive word WHIP, to which Kraft has disclaimed any exclusive right.
[35] The Board found that the degree of resemblance in less pronounced between MAGIC WHIP and the respondent"s COOL WHIP, DREAM WHIP, WHIP "N CHILL and MIRACLE WHIP than between MAGIC WHIP and the respondent"s WHIP and MAGIC MOMENTS marks.
Further Surrounding Circumstances
[36] As a surrounding circumstance not covered by the enumerated factors in subsection 6(5), the appellant relied on the assertion by its witness, Mr. Usher, that he is unaware of any instances of actual confusion between the trade marks at issue. The Registrar found this evidence irrelevant based on the relatively modest sales of the appellant. Evidence of actual confusion is not necessary in order to find a reasonable likelihood of confusion to exist. The test is what inference would likely be drawn if the appellant and respondent both used the conflicting trade marks in the same area.
[37] The Registrar placed little value on the state of the Register evidence, submitted by the appellant as a further surrounding circumstance in respect of the issue of confusion.
[38] State of the register evidence should be considered in assessing confusion in an opposition.
[39] If marks having a common element are registered to different owners, it can be presumed that the element is a common feature to the trade. The fact that the marks are owned by different entities tends to negative any proprietorial significance of the common element.
[40] In assessing confusion, where two marks contain a common element, the presence of that common element in a number of other trade marks on the register in the market causes purchasers to pay more attention to other features of the respective marks to distinguish between them.
[41] Where a trade mark having an element common to the trade has acquired distinctiveness, the distinctiveness must reside in the remainder of the mark. To hold otherwise would give the owner virtually an exclusive proprietary right in relation to the common element.
[42] The word WHIP has been adopted by at least 29 traders as a component of their trade marks as applied to food products. Of these, 13 relate directly to dessert food products.
[43] Accordingly, WHIP is a common element of trade marks used in association with food products. To the extent Kraft"s DREAM WHIP, COOL WHIP and MIRACLE WHIP trade marks have acquired distinctiveness, such distinctiveness cannot be attributed to the word WHIP alone.
[44] The word MAGIC has been adopted by at least 77 traders as a component of trade marks applied to food products.
Conclusion
[45] As was stated by Mr. Justice Thorson, then President of the Exchequer Court, in Freed & Freed Ltd. v. Registrar of Trade Marks, [1950] Ex. C.R. 431.
| ... reliance on the Registrar"s decision that two marks are confusingly similar must not go to the extent of relieving the Judge hearing an appeal from the Registrar"s decision of the responsibility of determining the issue with due regard to the circumstances of the case. |
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[46] I conclude therefore that the appellant has met the legal burden on it of establishing that there would be no reasonable likelihood of confusion between its trade mark MAGIC WHIP as applied to a dessert topping and the respondent"s trade mark DREAM WHIP as applied to a dessert topping mix. Nor is there a reasonable likelihood of confusion with any of the other trade marks relied on by the respondent and, in particular COOL WHIP and WHIP "N CHILL as applied to dessert related products, as well as MIRACLE WHIP in association with a salad dressing.
[47] The appeal is allowed with costs to the appellant.
____________________________
Associate Chief Justice
Ottawa, Ontario
January 19, 1999
__________________
1 [1997] 1 S.C.R. 748.
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