Date: 20090610
Docket: T-1299-08
Citation: 2009 FC 627
Ottawa, Ontario, June 10,
2009
PRESENT: The Honourable Mr. Justice Lemieux
BETWEEN:
KAMSUT, INC.
Applicant
and
JAYMEI ENTERPRISES INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
1) Introduction and Background
[1]
Pursuant
to section 57 of the Trade-marks Act, R.S.C. 1985, c. T-13, (the Act),
Kamsut, Inc. (Kamsut), a California corporation established in 1969, by
application to this Court dated August 19, 2008, seeks to expunge from
the Trade-marks Register the trade-mark KAMA SUTRA, Registration No. TMA:587,731
(the 731 Registration) which Jaymei Enterprises Inc., a British Colombia
corporation with its place of business located in North Vancouver, obtained on August
21, 2003 upon application filed February 19, 2002 based on use in
association with (1) chocolates, candies, chocolate truffles and candied fruit,
since 1994 and (2) cookies, waffles, coffee and packaged hot chocolate
since July 2003. The evidence shows this case does not involve the wares
described in group 2, nor candies or candied fruits in group 1 in Jaymei’s 731
Registration.
[2]
Jaymei’s
731 Registration under the heading “Foreign Character Translation” states: “As
provided by the Applicant, KAMA translates into English as “love” or
“desire” and the word SUTRA translates into English as “manual”.”
[3]
Kamsut
says it carries on the business of manufacturing, distributing and selling romantic
giftware, body, skin and personal care items including body lotions,
massage oils, cosmetics, perfumery, bath gels, aromatic balms, personal
lubricants and clothing in association with its trade-mark KAMA SUTRA (the
Kamsut products) in Canada since 1973. It asserts amongst these products
are a number of edible chocolate flavoured KAMA SUTRA products including
chocolate-flavoured body soufflé, chocolate body paints and chocolate body oil
(Kamsut’s chocolate products) which it has used in Canada, in association with
the KAMA SUTRA trade-mark since at least as early as 1988 and, as an
example, says it has exported continuously since 1988 its
chocolate-flavoured body lotions and oils to its Canadian distributor, Telford Investments Inc.
(Telford).
[4]
Kamsut
claims the 731 Registration is invalid for two reasons:
1) Pursuant to subsections
18.(1) and 16.(1) of the Act, Jaymei was not entitled to secure its 731 Registration
because at the date of its application for registration (February 19, 2002) and
on the date of Jaymei’s first use in association with chocolates or chocolate truffles
in 1994, its KAMA SUTRA mark was confusing with Kamsut’s KAMA SUTRA trade-mark
which had been previously used in association with its KAMA SUTRA products and
specifically with its KAMA SUTRA Chocolate Products prior to the alleged date
of first use or prior to the date of Jaymei’s application for registration. For
its Chocolate Mint Oil of Love product, Kamsut says the evidence show use as
early as 1988.
2) At the date
of the commencement of its expungement proceedings (August 19, 2008), Jaymei’s
KAMA SUTRA trade-mark was not distinctive of its wares.
[5]
Jaymei
did not put in issue Kamsut’s capacity, as an “interested person” under
subsection 57(1) of the Act, to bring this expungement proceeding nor
did it suggest Kamsut was barred under subsection 57(2) of the Act.
[6]
Jaymei’s
defence to the expungement proceeding is twofold:
1)
First,
Kamsut had the burden of proving it had used or made known its KAMA SUTRA mark
prior to Jaymei’s first use in 1994 or previous use before the date of Jaymei’s
application for registration on February of 2002 (previous use) and, if so,
Jaymei’s use at that time of its KAMA SUTRA mark would likely be confusing with
Kamsut’s mark. Jaymei says Kamsut did not discharge its burden of proof in making
out prior use or knowledge of or reputation of its mark in Canada. Relying on
the decision in Auld
Phillips Ltd. v. Suzanne's Inc.,
[2005] F.C.J. No. 70 (Auld
Phillips), Jaymei argues the Court does not have to deal with the issue of
confusion.
2) Jaymei
submits, in any event, its KAMA SUTRA mark was not confusing with Kamsut’s KAMA
SUTRA mark having regard to Jaymei’s wares and this for a number of reasons:
Kamsut’s wares bearing the mark KAMA SUTRA are different and separate from its
wares identified in its 731 registration. Consumers will not be confused inferring
its wares in question emanate from the same source, i.e. Kamsut. Jaymei’s
chocolates are not romantic giftware. Its application for registration shows they
are listed as edible food products. On the other hand, Kamsut’s wares are cosmetics
or sexual aids.
3) Finally,
Jaymei argues its KAMA SUTRA mark actually distinguish its wares from those of
others because its trade-mark is known to its customers and is associated with
its products as being manufactured by it and known as such in its channels of
trade. Moreover, Jaymei adds its mark does not lack distinctiveness because of
the isolated use by the infringing Kamsut. Kamsut has not proven such
substantive, significant or sufficient use so as to render its registered mark
non distinctive. Jaymei argues its mark has acquired local distinctiveness.
2) Relevant legislative provisions
[7]
The
emphasis being mine, the relevant provisions of the Act, for the
determination of this case, are:
1) Subsection 57(1)
of the Act which authorizes this Court: “… on the application of …
“any person interested”, to order that any entry in the register “be struck
out” …. 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) Subsection
18(1) of the Act which provides: “The registration of a
trade-mark is invalid if … (b) the trade-mark is not distinctive at the time
proceedings bringing the validity of the registration into question are
commenced”, or … “subject to section 17, it is invalid if the applicant
for registration was not the person entitled to secure the registration.””
3) Section 16 of the Act which indicates an applicant who “… has used in Canada or
made known in Canada in association with wares or services is
entitled … to secure its registration in respect of those wares or
services, unless at the date on which he … 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; …”. [Emphasis
mine.]
4)
Certain
key concepts flow from the statutory scheme described above:
(1) “distinctive” is
defined in section 2 of the Act as follows:
|
"distinctive",
in relation to a trade-mark, means a trade-mark that actually
distinguishes the wares or services in association with which it is used by
its owner from the wares or services of others or is adapted so to
distinguish them.
|
|
«distinctive
» Relativement à une marque de commerce, celle qui distingue véritablement
les marchandises ou services en liaison avec lesquels elle est employée par
son propriétaire, des marchandises ou services d’autres propriétaires, ou qui
est adaptée à les distinguer ainsi.
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(2) “use” is also
defined there:
|
"use",
in relation to a trade-mark, means any use that by section 4 is deemed to
be a use in association with wares or services.
|
|
«emploi
» ou «usage » À l’égard d’une marque de commerce, tout emploi qui, selon
l’article 4, est réputé un emploi en liaison avec des marchandises ou
services.
|
5) Section
4 of the Act referred to in the definition of “use” reads:
|
When
deemed to be used
4. (1)
A trade-mark is deemed to be used in association with wares if, at the
time of the transfer of the property in or possession of the wares, in the
normal course of trade, it is marked on the wares themselves or on the
packages in which they are distributed or it is in any other manner so
associated with the wares that notice of the association is then given to the
person to whom the property or possession is transferred.
Idem
(2) A
trade-mark is deemed to be used in association with services if it is used
or displayed in the performance or advertising of those services.
Use by export
(3) A
trade-mark that is marked in Canada on wares or on the packages in which they
are contained is, when the wares are exported from Canada, deemed to be used
in Canada in association with those wares.
|
|
Quand
une marque de commerce est réputée employée
4.
(1) Une marque de commerce est réputée employée en liaison avec des
marchandises si, lors du transfert de la propriété ou de la possession de ces
marchandises, dans la pratique normale du commerce, elle est apposée sur les
marchandises mêmes ou sur les colis dans lesquels ces marchandises sont
distribuées, ou si elle est, de toute autre manière, liée aux marchandises à
tel point qu’avis de liaison est alors donné à la personne à qui la propriété
ou possession est transférée.
Idem
(2)
Une marque de commerce est réputée employée en liaison avec des services
si elle est employée ou montrée dans l’exécution ou l’annonce de ces
services.
Emploi
pour exportation
(3)
Une marque de commerce mise au Canada sur des marchandises ou sur les
colis qui les contiennent est réputée, quand ces marchandises sont exportées
du Canada, être employée dans ce pays en liaison avec ces marchandises.
|
i.
Section
6 of the Act is headed: “When mark or name confusing”. Subsection 6(2) of
the Act reads:
|
When
mark or name confusing
…
Idem
6. (2) The
use of a trade-mark causes confusion with another trade-mark if the use of
both trade-marks in the same area would be likely to lead to the inference
that the wares or services associated with those trade-marks are
manufactured, sold, leased, hired or performed by the same person,
whether or not the wares or services are of the same general class.
….
|
|
Quand
une marque ou un nom crée de la confusion
…
Idem
6.
(2) L’emploi d’une marque de commerce crée de la confusion avec une autre
marque de commerce lorsque l’emploi des deux marques de commerce dans la même
région serait susceptible de faire conclure que les marchandises liées à ces
marques de commerce sont fabriquées, vendues, données à bail ou louées, ou
que les services liés à ces marques sont loués ou exécutés, par la même
personne, que ces marchandises ou ces services soient ou non de la même
catégorie générale.
…
|
7) Subsection
6(5) of the Act spells out, in determining whether trade-marks or
trade-names are confusing, the Court or the Registrar, as the case may be,
shall have regard to all the surrounding circumstances including certain listed
ones. It reads:
|
When mark
or name confusing
…
What to be
considered
6. (5) In
determining whether trade-marks or trade-names are confusing, the court or
the Registrar, as the case may be, shall have regard to all the surrounding
circumstances including
(a) the
inherent distinctiveness of the trade-marks or trade-names and the extent to
which they have become known;
(b) the length
of time the trade-marks or trade-names have been in use;
(c) the nature
of the wares, services or business;
(d) the nature
of the trade; and
(e) the degree
of resemblance between the trade-marks or trade-names in appearance or sound
or in the ideas suggested by them.
|
|
Quand
une marque ou un nom crée de la confusion
…
Éléments
d’appréciation
6. (5)
En décidant si des marques de commerce ou des noms commerciaux créent de
la confusion, le tribunal ou le registraire, selon le cas, tient compte de
toutes les circonstances de l’espèce, y compris :
a)
le caractère distinctif inhérent des marques de commerce ou noms commerciaux,
et la mesure dans laquelle ils sont devenus connus;
b)
la période pendant laquelle les marques de commerce ou noms commerciaux ont
été en usage;
c)
le genre de marchandises, services ou entreprises;
d)
la nature du commerce;
e)
le degré de ressemblance entre les marques de commerce ou les noms
commerciaux dans la présentation ou le son, ou dans les idées qu’ils
suggèrent.
|
8) Section
5 of the Act speaks to making known in Canada. It reads:
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When
deemed to be made known
5. A trade-mark is deemed to be made
known in Canada by a person only if it is used by that person in a country
of the Union, other than Canada, in association with wares or
services, and
(a) the
wares are distributed in association with it in Canada, or
(b) the
wares or services are advertised in association with it in
(i)
any printed publication circulated in Canada in the ordinary course of commerce
among potential dealers in or users of the wares or services, or
(ii)
radio broadcasts ordinarily received in Canada by potential dealers in or
users of the wares or services, and it has become well known in Canada by reason of the distribution or advertising.
R.S., c. T-10,
s. 5.
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|
Quand
une marque de commerce est réputée révélée
5. Une
personne est réputée faire connaître une marque de commerce au Canada
seulement si elle l’emploie dans un pays de l’Union, autre que le
Canada, en liaison avec des marchandises ou services, si, selon le
cas :
a) ces
marchandises sont distribuées en liaison avec cette marque au Canada;
b) ces
marchandises ou services sont annoncés en liaison avec cette marque :
(i) soit dans toute publication
imprimée et mise en circulation au Canada dans la pratique ordinaire du
commerce parmi les marchands ou usagers éventuels de ces marchandises ou
services,
(ii) soit dans des émissions de radio
ordinairement captées au Canada par des marchands ou usagers éventuels de ces
marchandises ou services, et si la marque est bien connue au Canada par suite
de cette distribution ou annonce.
S.R.,
ch. T-10, art. 5.
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3) The Evidence
[8]
Kamsut
manufactures, distributes and sells certain wares in association with its mark
KAMA SUTRA. It has a Canadian trade-mark registered on March 11, 1983, Registration
No. TMA277,435 for its trade-mark KAMA SUTRA used in association with “Cosmetics,
namely face and body creams, bath salts and oils, cleansing lotions and creams,
body powders, perfumery, toiletries, emulsions, namely, lipstick; nail
polish, lotion and body oils, shampoos, bath and beauty soap, beauty aids, namely,
face and eye make-up, mascara, rouge” used in Canada since at least as early
as April 1973.
[9]
Kamsut
is currently seeking, in an application filed on September 29, 2004, with the
Canadian Intellectual Property Office (CIPO) for registration of its trade-mark
KAMA SUTRA and design in association with: (1) body oil, body cream,
body powder, body massage cream, body soap, non-medicated bath salts, massage
oils; massage creams; pleasure heightening balm used in Canada since as early
as June 30, 1995; (2) personal lubricants and balms; and (3) clothing,
namely lingerie, loungewear, underwear and sleepwear for proposed use. Its application for
registration is being opposed by Jaymei. When the Court heard this matter it
was informed Kamsut’s application was at the opposition state.
[10]
Kamsut’s
application to expunge Jaymei’s 731 Registration was supported by the affidavit
of Joseph C. Bolstad, who has been in its employ as President since 1969.
Its expungement application was also supported by the affidavit of Darrell
Gibbs, who is the buyer for Telford Investments, Inc. (Telford) in its employ since
1990.
[11]
Jaymei’s
defense to Kamsut’s expungement application was supported by the affidavit of Fu
Mei Leonard. He states he has been the Director and sole shareholder as well as
its Chocolate Maker since July 18, 1994.
[12]
None
of the affiants were cross-examined on their affidavits. I add, however, in the
context of opposition proceedings currently underway, namely, Kamsut’s
application filed on September 29, 2004 and Kamsut’s opposition to Jaymei’s
application, dated June 2, 2004, to register the trade-mark KAMA SUTRA in
association with the proposed use of a variety of wares, both Messrs.
Bolstad and Leonard were cross-examined on their affidavits deposed in those
respective opposition proceedings, with transcript extracts found in the
parties’ records before this Court.
[13]
Mr.
Bolstad, in his affidavit, states that: “Kamsut manufactures, distributes, and
sells romantic giftware, body, skin and personal care items, including
body lotions, massage oils, cosmetics, perfumery, bath gels, aromatic balms,
personal lubricants and clothing, in association with the trade-marks KAMA
SUTRA and KAMA SUTRA & Design (Kamsut products) in Canada since as early
as 1973.”
[14]
Fu
Mei Leonard states in his affidavit: “Jaymei manufactures, distributes and
sells chocolates, candies, chocolate truffles, and candied fruit, and has done
so since as early as 1994.” He says: “These products are sold under the
trade-mark KAMA SUTRA.”
[15]
After
identifying Jaymei as being the owner of its Mark, Mr. Leonard mentions: “Jaymei
is the registered owner of Canadian trade-mark Registration No. TMA479920 (the
920 Registration) registered on August 8, 1997, for the trade-mark
FORBIDDEN PLEASURES/KAMA SUTRA & DESIGN, registered in use association with
chocolates.” Fu Mei Leonard says all of Jaymei’s KAMA SUTRA Chocolate Products
are hand-made by him. The registration has the same English translation of KAMA
and SUTRA as noted in paragraph 1 of these reasons.
Kamsut’s evidence – the
Bolstad affidavit
[16]
I
summarize the Bolstad affidavit and its exhibits:
1.
Evidence of export and sale to Canada
a) Exhibits
“D”, “E” and “F” speak to this point. Mr. Bolstad says Exibit “D” “are true copies of
representative Kamsut’s products, showing the use of the trade-mark KAMA SUTRA
on chocolate flavoured products [defined as chocolate body soufflé, chocolate
body paint and chocolate body oil] as it has been used since at least as early as
1988.” What is displayed in Exhibit “D” are photographs of the packaging and
the label of the following wares: (1) a bottle of Oil of Love – KAMA SUTRA and Design
– chocolate mint; as well as the bottle’s packaging with the following script:
“A kissable silky smooth water based oil that gently warms the skin”; (2) a box
labelled with the KAMA SUTRA mark called “Lover’s Paintbox” (on top of which
are seen three jars labelled “chocolate body paint – KAMA SUTRA and Design with
paint brush”) containing the following typed script: “Three Rich and Decadent
Chocolate Body Paints with supple body brush for romantic body art.”; and, 3) a
box labelled “KAMA SUTRA chocolate body paint – milk chocolate with supple
paintbrush”. The photograph also shows the brush and a jar with the KAMA SUTRA
mark and the words Chocolate Body Paint – Milk Chocolate.
b) Exhibit “E”
is a photocopy of a circular letter which Mr. Bolstad asserts: “was sent by Kamsut
to its distributors including its Canadian distributor Telford Investments
Inc., dated January 10, 1989”. That letter, without letterhead, is dated 1/10/89
addressed to “Dear
Friends” and states the Company was forced to raise its wholesale price on some
of their listed products, one of which is: “Oil of Love – The Original,
Chocolate Mint, and Cherry Almond”. The letter closes with the words the Kama
Sutra Company and is unsigned. Mr. Gibbs, in his affidavit, says this exhibit
has a receipt stamp dated “01/17/89” and was located in Telford’s files.
c) Exhibit “F”: is a copy
of an order card which Mr. Bolstad says “its Canadian distributor provided us
from its files and which was used by our company with its distributors in
1988”. It is a photocopy of the card entitled: “KAMA SUTRA ORDER CARD”,
identifying the products which may be ordered. They include: “Oil of Love – The
Original, Oil of Love – Chocolate Mint and Oil of Love – Cherry Almond”. Mr.
Gibbs in his affidavit says of this Exhibit that it is dated 6/88 and was
located in the Telford’s files and used to order the KAMA SUTRA products.
2. The
nature of Kamsut’s trade-mark
Under the heading
“Nature of Trade”, Mr. Bolstad asserts at paragraphs 13, 14, 15 and 16 of his
affidavit: “The KAMA SUTRA Products are generally referred to as romantic
giftware and aim at providing consumers a joyful experience of intimacy and
tenderness, to promote physically and emotionally healthier human beings. The
KAMA SUTRA Products are sold in Canada through specialty retail stores such as Love
Boutique, direct sales, department stores and drug stores and Internet sales on
Kamsut’s online store (the Website)”. In the next paragraph he writes: “In
particular, the KAMA SUTRA Chocolate Products are sold in Canada through
more than 1000 retail outlets, including through Shoppers Drug Mart outlet in
Canada and through the Website, and KAMA SUTRA Products have been sold through
The Bay and Zellers. The KAMA SUTRA Chocolate Products are available in the
mini-bar areas of rooms, gift stores, spas and romance packages in major hotel
chains across Canada including, but not
limited to, The Pan Pacific, Executive Hotel, Sutton Place, Hotel Le Soleil.”
3.
Sales, Marketing and Use
a) In his affidavit, he says:
“Kamsut spends at least as much as $75,000 (US) each year from 2001 to 2008 on advertising the
KAMA SUTRA Products using the KAMA SUTRA trade-mark in Canada. Kamsut advertises the
KAMA SUTRA Products by print, magazine, radio, television, Internet, direct
mailing, sponsorships, promotional contests, trade shows and in-store
promotions.” He attaches, as Exhibit “G”, print advertising materials of the
KAMA SUTRA Products in a number of listed publications which he submits: “have
an enormous circulation and many are circulated in Canada or available as a
subscription magazine to Canadians, including a copy of two advertisements
distributed in the Canadian publication Corps et Âme for KAMA SUTRA
Chocolate Products, all of which uses the KAMA SUTRA Marks.” Mr. Bolstad’s
listing of publications cover certain months in 2005, 2006 and one publication
called “Intimate Apparel Business (May – June 2007)”.
b) As Exhibit “H”, he
attaches a copy of a sample brochure promoting the KAMA SUTRA Products and
using the KAMA SUTRA Marks. The brochure is quite comprehensive displaying all
Kamsut’s products. It is written in four languages: English, French, Spanish
and German. Its products display a range from Oil of Love in nine flavors, body
powders, lubricants, creams and body chocolate paints. As Exhibit “I”, he
appends as copies of representative printouts from the Kamsut Website
“showing the use of the mark in Kamsut’s promotion of the KAMA SUTRA Products,
including the KAMA SUTRA Chocolate Products, from 1997 to 2004, and 2007 and
2008”.
c) At paragraph 21, he writes:
“Kamsut’s retail sales in Canada total in excess of $15 million US from 2001 to
2008 based on the average markup of at least 2.5 times from the KAMA SUTRA sale
price to the Canadian distribution network for the following: 2001:
$600,000.00(est); 2002: $840,351.82; 2003: $778,420.21; 2004:
$783,901.64; 2005: $681,977.56; 2006: $655,851.65; 2007: $911,058.54;
2008 (Year-to-Date): $980,382.31.”
d) He next advances:
“Kamsut retains documents for seven (7) years, therefore, documentation
relating to transactions occurring more than 7 years ago has been destroyed.” He
attached as Exhibit “J” a number of invoices said to be representative transaction
/ sales of shipments to Canada from 2002. The
representative invoices are:
i) Several invoices,
dated in 2002, 2003, 2004 and 2005, to Ultra Love, in Vancouver,
the
purchase of various products including Oil of Love – Chocolate Mint;
ii) Three
invoices, dated in 2002, 2003 and 2008, to B.M.S. Enterprises in Mississauga,
Ontario for a
variety of products including Oil of Love – Chocolate Mint;
iii) One
invoice, dated in 2002, to Lanco Import Canada Inc. in Laval, Quebec for a
variety of products including Oil of Love Chocolate Mint and Lover’s paint box;
iv) An
invoice, dated 2004, to Stag Shop in Waterloo, Ontario including
Oil of Love –
Chocolate
mint;
v) Telford
Investments in Edmonton with 2 separate invoices, dated in 2006 and 2007
for a variety of wares including Oil of Love chocolate and Lover’s paint box;
vi) An
invoice, dated 2007, to Sexy Living Enterprises in Vancouver, for several
items including Lover’s paint boxes;
vii) Shoppers
Drug Mart several purchase orders to be shipped to warehouses. (Three purchase
orders on July 23, 2008 for delivery on December 1, 2008 and the rest in August
27, 2008.) Amongst the items are Lover’s paint boxes.
e) At paragraph 23, Mr.
Bolstad comments: “Kamsut has a significant presence on the
Internet. A search on
the Internet indicates that chocolate products associated with the trade-mark
KAMA SUTRA points to KAMA SUTRA Chocolate Products.” He attaches as Exhibit
“K”: “a true printout of the search results using www.google.com for “KAMA
SUTRA chocolate” showing that four of the top five search results point to KAMA
SUTRA Chocolate Products.”
4. On Jaymei’s
products
a) He
characterizes Jaymei’s products in the following manner:
“The
Wares are natural extensions of the area of “romantic giftware”. From my
experience with the sales of our products I believe customers familiar with
Kamsut’s romantic giftware products would assume that the Respondent’s products
sold under the KAMA SUTRA brand originate from Kamsut.” [My emphasis.]
5. Kamsut’s
opposition to Jaymei’s second application for registration
a) As Exhibit “M”, he attaches
a copy of the Canadian Intellectual Property Office (CIPO) data base showing
Application No. 1218942, filed by Jaymei on June 2, 2004 and opposed by
Kamsut. This application by Jaymei is for the proposed use of the KAMA SUTRA
mark on a wide variety of mainly non edible products. He states on or about
April 29, 2008, he was cross-examined in Vancouver on his affidavit filed in the opposition
proceeding. He appends, as Exhibit “N”, a copy of the transcript of the
Cross-Examination. He concludes his affidavit by attaching, as Exhibit “O”, a
copy of a without prejudice letter from counsel for Jaymei, dated November 29,
2007, to Kamsut’s Canadian counsel. I ruled this letter to be inadmissible.
Kamsut’s evidence – The
Gibbs affidavit
[17]
As
noted, Kamsut’s expungement application was also supported by the affidavit of
Darrell Gibbs, Telford’s buyer since 1990. At
paragraph 2, he states:
“When I started with Telford in 1990, Telford
was a distributor in Canada of the products of Kamsut, Inc. bearing the
trade-mark KAMA SUTRA, and it has been a distributor in Canada of the products of Kamsut, Inc. bearing the trade-mark KAMA
SUTRA ever since. Kamsut, Inc. is known to Telford as The Kama Sutra
Company.” [My emphasis.]
[18]
At
paragraph 3, he deposes:
“One
of Kamsut, Inc.’s products which Telford was distributing in Canada when I started
in 1990 was a chocolate-flavoured body oil bearing the trade-mark KAMA SUTRA called Chocolate Mint Oil of Love.” [My emphasis.]
[19]
At
paragraph 4, he attaches as Exhibit “A”, a true copy of the letter which is appended
to Mr. Boldstad’s affidavit as Exhibit “E”. Mr. Gibbs states his: “is a true
copy of a letter from The Kama Sutra Company dated January 10, 1989 and date
stamped by Telford on January 17, 1989, advising its distributors of a number
of price increases, including a price increase for the Chocolate Mint Oil of
Love product”. He located this letter in Telford’s files. He also attached, as Exhibit “B” to
his affidavit, the Kama Sutra Order Card dated 6/88 which he states: “I also
located in the files of Telford which was used to order the KAMA SUTRA
products.”
[20]
At
paragraph 6, Mr. Gibbs says: “Sales of the KAMA SUTRA Chocolate Mint Oil of
Love product in Canada were made by Telford since at least as early as 1990 and
have continued ever since.” As noted, he was not cross-examined. [My
emphasis.]
Jaymei’s Evidence - The affidavit of Mr. Leonard
[21]
As
noted, Jaymei’s evidence was provided through the affidavit of Fu Mei Leonard,
some elements of which have previously been described in these reasons.
[22]
At
paragraph 10, he attaches, as Exhibit “D”, a list of Jaymei’s invoices for the
sale of Jaymei’s KAMA SUTRA Chocolates. The invoices are from 1994 to 2008. They
include sales to individuals at Dorset College and other individuals, Tesco Canada Investment
Corporation, Seregeti Investments Inc., DBA Garnier Hardware, Pearsons
Hardware, individuals at Bayshore Hotel, Coastal Mountain College of Arts,
Inc., Street Smart Tracing, Coastal Trademark Services, XTOPER’S Hair Design,
WSI Consulting & Education, Rosemary Cooks & Associates, Prime Seeds
International Inc., Zaz-WSI Consulting & Education and KAMA SUTRA Essensuals
in 1999 and 2000. He adds: “Jaymei continues to sell their KAMA SUTRA Chocolate
Products.” A review of the invoices shows, overwhelming, its sales are made in
the Vancouver area with very few
outside that area and they are generally for small quantities. They also show
for most of them the product described in the invoice being Kama Sutra “Forbidden
Pleasures Chocolates”.
[23]
As
Exhibit “E”, he appends photocopies of representative labels, pictures of such
products both as currently sold in Canada and pictures of Jaymei’s packaging for their
KAMA SUTRA Chocolate Products. He states: “This packaging has been used since
as early as 1994.” I note for the most part, the packaging consists of the
words “Forbidden Pleasures”, then a picture of a rose, the mark KAMA SUTRA and
some script emphasizing Love.
[24]
The
balance of his affidavit reads as follows:
1.
Jaymei sells their
KAMA SUTRA Chocolate Products throughout Vancouver, British Columbia through direct sales
to individuals, and other companies, some of which are listed in paragraph 10
of this my affidavit.
2.
Jaymei promotes and
advertises their KAMA SUTRA Chocolate Products primarily by word of mouth.
I have also been interviewed on the Rock 101 Radio station regarding Jaymei’s
KAMA SUTRA Chocolate Products.
3.
I believe that
Jaymei’s KAMA SUTRA Chocolate Products are distinctive and that this is evident
from the communications that I have with the customers that I deal with. I
believe that Jaymei’s customers know when they buy the Jaymei KAMA SUTRA
Chocolate Products that the products come from Jaymei, and that the products
are made in Canada. [My emphasis.]
Jaymei’s position on Kamsut’s
evidence
[25]
Counsel
for Jaymei attacks the quality of Kamsut’s evidence. He makes these points in
his written representations in an effort to show Kamsut has not met its burden,
noting that the law is clear that Jaymei’s registration enjoys a presumption of
validity:
·
Kamsut
has provided no evidence of manufacturing in Canada;
·
Its
packaging and labels have no date on them;
·
Kamsut
refers to a number of products which are chocolate flavoured but does not say
when the products were first sold in Canada or that they are currently being
sold in this country;
·
Kamsut
asserts that its chocolate flavoured body lotions, bearing the KAMA SUTRA
trade-mark, have been exported to Canada since 1988 yet its pending application
for registration, dated September 29, 2004, does not list them and its evidence
contains no volume of sales;
·
Exhibit
“D” does not have any labels in French;
·
Exhibit
“E” does not have any addresses on it. There is no evidence the letter was sent
let alone sent to anyone in Canada and does not show what trade-mark the sales
were sold under;
·
Paragraphs
13 to 16 of the Bolstad affidavit do not contain any sales information; no
contracts work orders or invoices were provided;
·
Advertising
of a trade-mark does not constitute use;
·
There
is no evidence that the magazines listed circulate in Canada or what the
circulation numbers are;
·
Exhibit
“H” the brochure does not have a reference date;
·
The
sales figures are not backed up by any supporting documentation and they do not
go back to the relevant dates to its expungement application. The sales figures
have no product breakdown;
·
There
is no explanation why documents are kept for seven years only and why there is
no information going back to 2001. The earliest invoice provided is dated
November 7, 2002 after the relevant dates of 1994 and February 19, 2002; and,
·
Kamsut
appears to have thrown out materials when it had constructive notice of the 731
registration. There is no material provided for the 1990s.
4) Analysis
a) Principles
[26]
It
is useful, I believe, to set out at the beginning of this analysis certain
applicable principles derived from the jurisprudence.
(i) Presumption
of validity and onus
[27]
It
is settled law an Applicant, who seeks to expunge a trade-mark registration,
has the onus of proof (i.e. must establish by evidence) on a balance of
probabilities the grounds of invalidity he asserts in respect of a trade-mark
registration and that registration, by virtue of section 19 of the Act,
is presumed to be valid at law. As Justice Binnie put it at paragraph 5 of his
reasons in Veuve Clicquot
Ponsardin v. Boutiques Cliquot Ltée,
[2006] 1 S.C.R. 824 (Veuve Clicquot): “Under s. 19 of the Act,
the respondents' marks are presumptively valid, and entitles them to use the
marks …” At paragraph 15, speaking of the likelihood of depreciation, he said that
“was for the appellant to prove, not for the respondents to disprove or for the
Court to presume”. (See also Tubeco Inc. v. Association québecoise des
fabricants de tuyau de béton, Inc., (1980) 49 C.P.R. (2d) 228) (Tubeco) at paragraph
3 and Omega Engineering,
Inc. v. Omega SA, 2006
FC 1472, at paragraph 12 (Omega)).
[28]
In Emall.ca Inc.
(c.o.b. Cheaptickets.ca) v. Cheap Tickets and Travel Inc., 2008 FCA 50,
Justice Sharlow, on behalf of the Federal Court of Appeal, wrote the following
at paragraph 12:
12
The presumption of validity established by section 19 of the Trade-Mark Act
is analogous to the presumption of validity of a patent in section 45 of the Patent
Act, R.S.C. 1985, c. P-4. In Apotex Inc v. Wellcome Foundation Ltd.,
[2002] 4 S.C.R. 153, Justice Binnie characterized that presumption as weakly
worded, and he explained (at paragraph 43) that the presumption adds little to
the onus already resting, in the usual way, on the attacking party. What that
means, in my view, is that an application for expungement will succeed only if
an examination of all of the evidence presented to the Federal Court
establishes that the trade-mark was not registrable at the relevant time. There
is nothing more to be made of the presumption of validity.
(ii)
The purpose of trade-marks
[29]
In
Veuve Clicquot, at paragraph 18, Justice Binnie wrote:
“… the purpose of trade-marks is to function as a symbol of the source and
quality of wares and services, to distinguish those of the merchant
from those of another, and thereby to prevent "confusion" in the
marketplace.” He went on to explain, based on section 6(2) of the Act,
confusion under the Act occurs if the use of a trade-mark is likely
to lead to the inference that the wares associated with the trade-marks are
manufactured, sold or performed by the same person.
(iii)
Likelihood of confusion and actual confusion
[30]
As
explained in Mattel, Inc.
v. 3894207 Canada Inc.,
[2006] 1 S.C.R. 772 (Mattel), the statutory test for confusion is the
likelihood of confusion, that is, is it likely, in all of the surrounding
circumstances, a prospective purchaser will be led to the mistaken inference
the wares associated with the trade-marks were made or sold by the same person.
Evidence of actual confusion is not necessary. At paragraphs 55 and 89 of Mattel,
Justice Binnie wrote the following in respect of the lack of evidence of actual
confusion:
55 Evidence of actual confusion would be a
relevant "surrounding circumstance" but is not necessary (Christian
Dior, at para. 19) even where trade-marks are shown to have operated in the
same market area for ten years: Mr. Submarine Ltd. v. Amandista Investments
Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.). Nevertheless, as discussed below, an
adverse inference may be drawn from the lack of such evidence in circumstances
where it would readily be available if the allegation of likely confusion was
justified. [My emphasis.]
…
89 No
doubt, as an abstract proposition, the appellant's mark is "famous"
whereas the respondent's applied-for mark is not. The question, however, is
whether there will likely be (or has been) [page819] confusion in the
marketplace where both may operate. In that respect, evidence of actual
confusion, though not necessary, would have been helpful (ConAgra, Inc.
v. McCain Foods Ltd. (2001), 14 C.P.R. (4th) 288, 2001 FCT 963; Panavision,
Inc. v. Matsushita Electric Industrial Co. (1992), 40 C.P.R. (3d) 486
(F.C.T.D.), but it was not forthcoming. Décary J.A. commented in Christian
Dior, at para. 19:
While
the relevant issue is "likelihood of confusion" and not "actual
confusion", the lack of "actual confusion" is a factor which
the courts have found of significance when determining the "likelihood of
confusion". An adverse inference may be drawn when concurrent use on the
evidence is extensive, yet no evidence of confusion has been given by the
opponent.
I agree.
The lack of any evidence of actual confusion (i.e. that prospective consumers
are drawing the mistaken inference) is another of the "surrounding
circumstances" to be thrown into the hopper: Pepsi-Cola Co. of
Canada, Ltd. v. Coca-Cola Co. of Canada, Ltd., [1940] S.C.R. 17, at p. 30; General
Motors Corp. v. Bellows, [1947] Ex. C.R. 568, at p. 577, aff'd [1949]
S.C.R. 678; Freed & Freed Ltd. v. Registrar of Trade Marks, [1950]
Ex. C.R. 431; Monsport Inc. v. Vêtements de Sport Bonnie (1978) Ltée (1988),
22 C.P.R. (3d) 356 (F.C.T.D.), at p. 360; Multiplicant Inc. v. Petit Bateau
Valton S.A. (1994), 55 C.P.R. (3d) 372 (F.C.T.D.), at p. 379. [My
emphasis.]
[31]
In
Mr. Submarine Ltd.
v. Amandista Investments Ltd.,
[1988] 3 F.C. 91 (C.A.), Chief Justice Thurlow considered, as “a very weighty
fact”, that in ten years of operation of both business in the Dartmouth area
prior to the trial, no instance of any actual confusion had come to light. For
the reasons he expressed, however, the lack of evidence of actual confusion did
not prevent him from finding likelihood of confusion between the two marks.
(iv) The first impression test
[32]
At
paragraph 20 of Veuve
Clicquot, Justice Binnie
wrote the following :
20 The
test to be applied is a matter of first impression in the mind of a casual
consumer somewhat in a hurry who sees the name Cliquot on the
respondents' storefront or invoice, at a time when he or she has no more than
an imperfect recollection of the VEUVE CLICQUOT trade-marks, and does not pause
to give the matter any detailed consideration or scrutiny, nor to examine
closely the similarities and differences between the marks. As stated by Pigeon
J. in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp.,
[1969] S.C.R. 192, at p. 202:
It
is no doubt true that if one examines both marks carefully, he will readily
distinguish them. However, this is not the basis on which one should decide
whether there is any likelihood of confusion.
...
the marks will not normally be seen side by side and [the Court must] guard
against the danger that a person seeing the new mark may think that it is the
same as one he has seen before, or even that it [page841] is a new or
associated mark of the proprietor of the former mark.
(Citing
in part Halsbury's Laws of England, 3rd ed., vol. 38, para. 989, at p.
590.)
(v) The
“in all of the surrounding circumstances” test
[33]
At
paragraph 21 of Veuve
Clicquot, Justice Binnie
wrote:
21 In every case, the factors to be
considered when making a determination as to whether or not a trade-mark is
confusing to the somewhat-hurried consumer "in all the surrounding
circumstances" include, but are not limited to, those enumerated in
s. 6(5) of the Act. These are: "(a) the inherent
distinctiveness of the trade-marks or trade-names and the extent to which they
have become known; (b) the length of time the trade-marks or trade-names
have been in use; (c) the nature of the wares, services or business; (d)
the nature of the trade; and (e) the degree of resemblance between
the trade-marks or trade-names in appearance or sound or in the ideas suggested
by them". The list of circumstances is not exhaustive and different
circumstances will be given different weight in a context-specific assessment,
as discussed in Mattel. [Emphasis mine.]
(vi)
How is the evidentiary burden satisfied?
[34]
The
law on this point is clear. It was not sufficient for Kamsut in the Bolstad and
Gibbs affidavits to
simply assert that sales of its KAMA SUTRA chocolate products took place in Canada at least
since 1990 or before Jaymei’s first use in 1994.
[35]
Kamsut’s
obligation was to establish or prove such sales by detailed and specific
evidence of use meeting the requirement of section 4 of the Act or that
its mark was well known in Canada prior to the relevant date. (See: (1) Redsand, Inc. v. Dylex Ltd., [1997] F.C.J. No. 792 (F.C.T.D.), at
paragraphs 31 and 44 (Redsand); (2) J.C. Penney Co. v. Gaberdine
Clothing Co., 2001 FCT 1333, at paragraphs 74, 75 and 82 (J.C. Penney);
and, (3) Auld Phillips Ltd., at paragraph 16.)
[36]
The
need for direct evidence to prove assertions of prior use or knowledge of the
mark flow from the requirements of section 4 of the Act as to
what constitutes use and distinctiveness (see J.C. Penney,
at paragraphs 80, 83, 84 and 86).
b) Application to this case
[37]
The
essence of this case is that it pits the chocolates made by Jaymei with the
“chocolate products” made by Kamsut. Specifically, in terms of prior use, the
most relevant product is Kamsut’s chocolate flavoured body lotion.
[38]
The
burden which Kamsut has on the first branch of his invalidity attack on
Jaymei’s registration is to establish by cogent evidence, on the balance of
probabilities, Jaymei was not entitled to register its KAMA SUTRA mark because,
when Jaymei first used or at the time of its application to register the mark
it was seeking to register, that mark was confusing with Kamsut’s KAMA SUTRA
mark in Canada which enjoyed prior or previous use or was well known in Canada.
[39]
Section
16(1) of the Act sets up a two part test which Kamsut must fulfill: (1) establish
prior or previous use or being well known in Canada; and (2)
establish confusion. I agree with counsel for Jaymei if Kamsut does not
establish prior or previous use or reputation in Canada, consideration
of confusion is not necessary. Auld Phillips is on point. From a
statutory interpretation point of view, this proposition flows from the nature
of the two part test established under section 16 of the Act.
1) Prior use
[40]
As
noted, Exhibits “D”, “E” and “F” are offered by Kamsut as evidence of prior use
of the KAMA SUTRA trade-mark by Kamsut. None of these documents are evidence of
the use by Kamsut of its trade-mark KAMA SUTRA in Canada, i.e.
associated with a transfer of the property or possession of the wares: 1) one
exhibit is a blank order form; and, 2) the other is a notice of price increase.
[41]
Exhibit
“D” is undated and reflects the current packaging and labels which have been
updated from the original packaging and labels used on Kamsut’s products.
Moreover, Mr. Bolstad, in his affidavit, does not tell us when the updated labels
were introduced (Compare Exhibit “D” with the advertisement in Nylon (August
2005) in Exhibit “H”). Moreover, Exhibit E – the order card does not list
Lover’s paint box as a product which could be ordered in 1988. For these
reasons, I accord Exhibit “D” to the Bolstad affidavit little weight to
establish prior use of Kamsut’s chocolate products.
[42]
Exhibit
“A” to Mr. Bolstad’s affidavit which is said to be representative packaging and
labels of KAMA SUTRA products is of no assistance in establishing Kamsut’s
prior use because are representative of KAMA SUTRA’s products currently
being sold in Canada. For the same reason, Exhibit “J” cannot establish prior or
previous use because the first invoice shown is dated October 23, 2002.
[43]
The
Gibbs affidavit is insufficient to repair the deficiencies in the Bolstad
affidavit. Mr. Gibbs tells us that when he started working for Telford in 1990,
Telford was a distributor of Kamsut Inc. products but he does not tell us what
kind of distributor Telford was: he does not say Telford purchased for resale
Kamsut Inc. products; he appends no purchase orders from Telford to Kamsut, nor
any invoices from Kamsut to Telford nor invoices from Telford to its customers
who are unknown to us. He provides no evidence of when, how and at what point
property or possession passed between Kamsut and Telford.
2) Was Kamsut’s trade-mark made known in
Canada?
[44]
In
oral argument, counsel for Kamsut acknowledged there was no sufficient evidence
to establish Kamsut’s mark was well known in Canada at the time
of Jaymei’s first use in 1994. No further consideration of the point is
necessary. However, as will be seen, Kamsut argues its trade-mark is now well
known in 2008.
Confusion
[45]
It
is prudent to deal with the issue of confusion should I be wrong on my
determination Kamsut has not led sufficient evidence to establish prior or
previous use of its chocolate flavoured products before 1994 or February 2002.
[46]
Mattel
provides
us with the roadmap for the required analysis of the likelihood of confusion
taking into account the factors set out in section 6 of the Act. Mattel
involved the trade-mark BARBIE in association with dolls and doll
accessories and BARBIE for registration in Canada by the Respondent numbered
company who operated a small chain of Montreal suburban BARBIE’S restaurants.
[47]
The
first prescribed factor is the inherent distinctiveness of the trade-marks and
the extent to which they have been known. Justice Binnie, at paragraph 75,
stated: “Distinctiveness
is of the very essence and is the cardinal requirement of a trade-mark”. The
words KAMA SUTRA are found in the New Shorter Oxford dictionary. Those words
are in Sanskrit, an ancient Indo-Aryan language of the Indian subcontinent.
Kama means love, desire. The Shorter Oxford says Kama Sutra is the title of
ancient Sanskrit treaties in the art of love and sexual technique, a sex
manual. “Sutra” is also found in that dictionary and means in Sanskrit literature
a rule, a set of these rules.
[48]
Inherent
distinctiveness must be distinguished from acquired distinctiveness, for
example, through publicity or use. In my view, the mark KAMA SUTRA is not
inherently distinctive. It is not a coined word, or a purely invented word.
Although derived from an ancient language, it is found in the Shorter Oxford dictionary;
its meaning in the English language is associated with romance, pleasure and
sex; in that sense it may be said to be descriptive.
[49]
The
evidence in the record does not permit me to conclude KAMA SUTRA is a known
trade-mark in Canada associated with
Kamsut’s chocolate products. The traditional badges to discover whether a mark
is known to be linked or associated with wares are: sales, publicity and use.
The evidence tendered by Kamsut is deficient in that its sales figures in Canada cover all of its
products and not only its chocolate products and, more particularly, its Oil of
Love chocolate mint. The publicity found in the several magazines are largely
distributed in the United
States
with perhaps unspecified leakage in Canada except for the French language Corps et Ame. In terms of use, it
would appear that Oil of Love – Chocolate mint was available for sale in Canada in 1988 but there is no
evidence of the quantities sold from that time on. The evidence suggests that
Kamsut’s other chocolate products were not marketed before 1994.
Nature of the wares and nature of the trade
[50]
I do
not agree with the submission of counsel for Kamsut that its chocolate
products, specifically its chocolate flavoured body oil and chocolate body
paint are edible products in the same class as Jaymei’s chocolates. Kamsut’s
chocolate products are oils or paints which contain a chocolate flavour which are
not eaten. Cleary, Kamsut’s chocolate flavoured oils and paints are not
chocolates. Kamsut’s chocolate flavoured body oils, paint soufflés are sexual
aids. This is obvious when Exhibits “G” and “H” to the Bolstad affidavit are
reviewed. The evidence does not suggest Jaymei’s chocolates are sexual aids
except perhaps remotely in one case (see Respondent’s Record, page 95).
[51]
Kamsut
claims its chocolate products are distributed in the same channel of trade as
Jaymei’s. Apart from that bald statement, Kamsut offers no evidence that the
channels of trade are the same. The evidence suggests Jaymei’s chocolates are
sold directly to corporations and individuals and not to distributors or
retailers for resale to consumers, which is Kamsut’s case. Kamsut has not
produced any substantial direct evidence where Jaymei’s product was marketed
for resale to consumers. Apart from Shopper’s Drug Mart, little is known to
whom Kamsut’s distributors sell to. There is evidence of Kamut sales in Canada
to sex shops (see “Corps et Ames” back cover).
[52]
Jaymei’s
market is a local market, whereas Kamsut’s market is widespread across Canada and the United
States.
Kamsut has produced no evidence it sells directly to consumers.
[53]
In
my view, there is no likelihood of confusion between the Kamsut’s chocolate
flavoured products and Jaymei’s chocolates. Kamsut has not produced any
evidence of actual confusion when one would expect such evidence to be
available in the Vancouver market where Jaymei’s activities are
substantially concentrated. I draw a negative inference on the lack of such
evidence.
Degree of resemblance
[54]
KAMA
SUTRA is a component in both marks. Kamsut is correct in arguing that these
identical words suggest a significant degree of resemblance in sound,
appearance and ideas suggested by them.
The lack of
distinctiveness
[55]
The
question raised by Kamsut on this ground for expungement is whether on August
18, 2008, when it took its expungement action, Jaymei’s KAMA SUTRA mark
actually distinguished Jaymei’s chocolates or chocolate truffles from Kamsut’s
chocolate flavoured products or is adapted so to distinguish them.
[56]
Kamsut’s
counsel frames this issue as whether on the date of the commencement of the
expungement proceedings (August 18, 2009) the mark KAMA SUTRA was incapable of
actually distinguishing Jaymei’s wares from Kamsut’s wares.
[57]
He
argues that distinctiveness is a question of fact and to be distinctive, Jaymei
must show that a clear message has been given to the consumers that its
chocolates with which its trade-mark is associated and used are the chocolates
produced by Jaymei.
[58]
Kamsut
argues Jaymei has not provided any evidence to show that its message to the
consumers is that Jaymei is the source of the chocolate bearing its mark, whereas
Kamsut has given a clear message to the public that its wares originate from it
and not those of another party including Jaymei.
[59]
Kamsut
argues, as of August 19, 2008, its KAMA SUTRA mark had become known in Canada and had
acquired distinctiveness. Kamsut points to its advertising and promotion in Canada and
specifically that its KAMA SUTRA chocolate products have been posted on its
website since at least 1997. It points to the level of its retail sales and its
presence on the Internet.
[60]
Kamsut
further argues Jaymei’s evidence fails to show that the KAMA SUTRA mark had
acquired any distinctiveness. It points to the fact Jaymei has provided no
sales figures either in volume or in dollar terms. Kamsut recognizes, however,
Jaymei’s sales are mostly in Vancouver.
[61]
Finally,
Kamsut argues Jaymei’s KAMA SUTRA mark is not distinctive in the light of
Kamsut’s previous and extensive use of its KAMA SUTRA mark which actually links
its mark with Kamsut being the source of its wares.
[62]
As
I understand, Kamsut’s oral and written submissions the crux of its case in
respect of Jaymei’s lack of distinctiveness is not based on infringing
use of the KAMA SUTRA trade-mark by Kamsut, but rather lack of evidence by
Jaymei that its product was distinctive and extensive and valid use by Kamsut
of its mark in association, in particular, with its chocolate products.
[63]
On
the other hand, Jaymei argued isolated infringement by Kamsut citing the Auld
case.
[64]
In
the circumstances of this case, I need not deal with the infringing use issue
as a means of establishing non distinctiveness. The evidence before me
establishes Jaymei’s market for its chocolates is a local market, the Vancouver area. The
nature of Jaymei’s business is a local business such as a restaurant, a
boulangerie or a pastry shop serving mainly customers residing in an area.
[65]
It
is well accepted in trade-mark law that in order to be distinctive it is not
necessary for the mark to distinguish the wares throughout Canada. The mark
will remain distinctive so long as people within a particular area of Canada recognize
the mark as representing the owner of the wares. In addition, it is not
necessary for the owner of the trade-mark to show itself to be the sole user of
the mark to demonstrate distinctiveness (see ITV Technologies, Inc. v. WIC Television Ltd.,
[2003]
F.C.J. No. 1335, 29 C.P.R. (4th) 182, at paragraphs 98 and 99 and Alibi
Roadhouse Inc. v. Grandma Lee's International Holdings Ltd., [1997] F.C.J.
No. 1329) for the proposition that a trade-mark registration may be maintained
if it had local distinctiveness. Furthermore, Bojangles' International, LLC
v. Bojangles Café Ltd., 2006 FC 657 is authority for the proposition
that to negate distinctiveness of a trade-mark, another mark must be known in Canada to a substantive extent.
[66]
Applying
these principles to this case, I conclude that Jaymei’s KAMA SUTRA mark acquired
local distinctiveness in respect of chocolate through use and in particular
through the very nature of the type of business Jaymei was conducting in the Vancouver area. Jaymei
sells its chocolates directly to its customers. Distinctiveness is the
association of the mark with the owner of the mark as the source of the
product. Individualized service such as direct sale to customers is a
significant indicia that KAMA SUTRA chocolates it sells will be associated with
Jaymei, its producer of the product. Moreover, Mr. Leonard’s affidavit speaks
to distinctiveness through word of mouth and reputation. Word of mouth evidence
is a relevant consideration. See Bojangles', at paragraph 29.
[67]
On
the other hand, the evidence produced by Kamsut to negate Jaymei’s local
distinctiveness is lacking in specificity. Kamsut’s evidence on lack of
distinctiveness through its use or reputation fails for reasons previously
identified in these reasons. Its advertisements in publications are mainly U.S. publications
with small Canadian circulation. The Kamsut’s sales figures are for all of its
products. Kamsut did try to segregate its sales of chocolate products amounting
to small dollar value for its body oils from November 11, 2002 to May 29, 2008.
In terms of body paints, the figure is substantially higher but any purchases
from Shopper’s Drug Mart have to be discounted after August 19, 2008. In any
event, no sales figures are provided by Kamsut for sales of its chocolate
products in the Vancouver area. I stress again my finding that Kamsut’s chocolate
body oils or paints, which it labels as its chocolate products is a misnomer
because they are not edible products. The wares are not similar. The factor of
similar wares is a relevant one in assessing negation of distinctiveness
through competitive use. In sum, I am not satisfied for the reasons above,
Kamsut met its burden to establish lack of distinctiveness in Jaymei’s mark
linking to Jaymei as the source of its product.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that the Applicant’s
application, to expunge from the Trade-marks Register the Respondent’s
registration TMA:587,731, is dismissed with costs, fixed at the upper level of
the units in column IV of the Tariff in the Federal Courts Rules.
“François Lemieux” ____________________________
Judge
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