Date:
20130409
Docket:
T-1503-12
Citation:
2013 FC 358
Vancouver, British Columbia,
April 9, 2013
PRESENT: The
Honourable Mr. Justice Campbell
BETWEEN:
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TCHO VENTURES, INC.
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Applicant
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and
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MM MEYER MARKENVERWALTUNG &
CO.
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Respondent
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REASONS FOR
ORDER AND ORDER
[1]
In
the present Application pursuant
to s. 56 of the Trade-marks
Act (the
"Act"),
the
Applicant Tcho Ventures, Inc. ("Tcho") appeals a decision of the
Registrar of Trade-marks (the "Registrar”) rejecting Tcho's application
to register the trade-mark TCHO, Application No. 1,382,666 (the “Mark”).
[2]
The
Registrar rejected the Application on the basis that the trade-mark TCHO is
confusing with the Respondent MM Meyer Markenverwaltung & Co.'s ("MM
Meyer") registered trade-mark TCHIBO. The Registrar also rejected the
Application on the basis that TCHO is not distinctive.
[3]
The
following rendition of the facts stated by Counsel for MM Meyer is not in
dispute.
[4]
MM
Meyer has extensively used the trade-mark TCHIBO in association with coffee in Canada since 1981. TCHIBO brand coffee is sold all across Canada in grocery stores and
independently owned food stores. Between 1996 and 2009, wholesale sales of
TCHIBO brand coffee exceeded $11 million. MM Meyer has also made significant investments
in the advertising and promotion of the TCHIBO brand in Canada. The TCHIBO trade-mark is
registered
under Canadian Trade-mark Registration No. TMA273, 122.
[5]
On
February 8, 2008, Tcho filed the Application to register the trade-mark TCHO
based on proposed use in Canada in association with the following wares
and services: Cocoa
products, namely baking chocolate, cocoa mixes; cocoa powder, and chocolate
bars; powdered chocolate and vanilla; flavoring syrups to add to alcoholic and
non-alcoholic beverages; chocolate food beverages not being dairy-based or
vegetable based; hot chocolate; alcoholic and non-alcoholic cocoa beverages
with milk; prepared cocoa and cocoabased alcoholic and non-alcoholic
beverages; preparations for making chocolate or cocoa based drinks, namely,
liquid and powdered hot chocolate mix and liquid and powdered hot cocoa mix;
chocolate and candy, namely, chocolates, chocolate bars, chocolate-covered
coffee beans, chocolate truffles, chocolate-covered fruits, chocolate-covered nuts,
chocolate-covered dried fruits, chocolate-covered crackers and chocolate
toppings; chocolate ganache; chocolate sauce; chocolate topping; coffee; ground
coffee; coffee beans; prepared coffee and coffee-based alcoholic and
non-alcoholic beverages; prepared espresso and espresso-based alcoholic and
non-alcoholic beverages; liqueurs. Retail store services, mail order
catalog services, and internet catalog services, all featuring chocolates,
confections, baked goods, coffee, cutlery, kitchen gadgets, kitchen appliances,
kitchen utensils, tableware, glassware, barware, books, pre-recorded music, and
clothing; cafes.
[6]
The
Registrar found that there was direct overlap in some of the wares covered in
the Application with MM Meyer's coffee wares. The Registrar also found that the
Tcho's wares and services that did not directly overlap were related to MM
Meyer's coffee wares to the extent that they were all food and beverages or
related in some way to coffee. The Registrar found that the marks bore a fairly
high degree of resemblance, that there was no evidence that others use similar
marks or even marks that begin with TCH, and that MM Meyer's mark had become
better known than the Tcho's Mark. For all of these reasons, the Registrar
rejected the Application on the basis that the Mark was confusing with MM
Meyer's registered mark TCHIBO. The Registrar also concluded that the Mark was
not distinctive of the Applicant.
[7]
In
the present Application with respect to the key issue of confusion, Counsel for
Tcho makes the following primary argument.
[8]
Tcho
argues that the Registrar’s decision is unreasonable on two grounds. The first
ground relates to paragraph 20 of the decision, where the Registrar makes the
following finding:
[20] There is a
direct overlap between the parties’ wares insofar as coffee and coffee-based
beverages are concerned. In addition, the remaining wares of the Applicant are
related to the Opponent’s coffee to the extent that all of the Applicant’s
wares are food or beverages. The Applicant’s services are also related to the
Opponent’s wares in that the Applicant’s services all relate in some way to
coffee.
Counsel for Tcho argues that the
Registrar made an erroneous finding of fact: services listed in its statement
of services do not all relate to coffee in some way.
[9]
As
already set out above, the Applicant’s statement of services provided as
follows:
Retail store services, mail order
catalog services, and internet catalog services, all featuring
chocolates, confections, baked goods, coffee, cutlery, kitchen gadgets, kitchen
appliances, kitchen utensils, tableware, glassware, barware, books,
pre-recorded music, and clothing; cafes [Emphasis added].
It is apparent that the Registrar
was of the view that all of the services related to coffee because coffee is
named as one of the features of all of the services. Within this context, I
find that the Registrar was entitled to reach this conclusion and I find that
the conclusion is reasonable.
[10]
Tcho
also argues that the Registrar failed to separately consider the
non-overlapping wares and services, or in the alternative, if they were
considered, the grouping of coffee-related wares and non-coffee related wares
together as “food and beverages” is unreasonable. I accept Counsel for MM Meyer's
argument that the Registrar did not fail to separately
consider the non-overlapping wares and services:
It was reasonable and correct for
the Registrar to find that the wares in the Application are all part of the
general class of food and beverages. It is clear on the face of the Application
that these items are all properly considered as "food and beverages"
and the Applicant has not provided any evidence which would support a different
finding.
Also,
the Registrar was aware of her ability to issue a "split decision"
and allow the Application in respect of a portion of the wares and services
found to be confusing and to allow only non-confusing items to proceed to
registration. Despite having the ability to allow a portion of the Application,
the Registrar elected against this approach and instead found that the
Application as a whole was confusing. She stated:
Having considered all the
surrounding circumstances, I find that the Applicant has not met its legal
burden. The Opponent has a unique mark that it has used and promoted to a
substantial degree in Canada for a number of years. The Applicant's Mark
resembles the Opponent's mark to a fair degree. The Applicant has not
established any reputation in association with its Mark but proposes to use it
in fields that overlap with or are related to the field in which the Opponent's
mark has been established. The issue is whether a consumer who has a general
and not precise recollection of the Opponent's mark, will, upon seeing the
Applicant's Mark, be likely to think that the wares/services share a common
source. I cannot answer that question in the negative. The fact that both
parties' marks are related to the food/beverage industry plus the fact that
there is no evidence that anyone else uses the prefix TCH in that field supports
a conclusion that confusion as to source is reasonably likely.
(Respondent’s Memorandum of Fact and Law, paras. 45
- 46)
In my opinion, the Registrar’s findings
as quoted above are well within the realm of reasonableness.
[11]
The
Applicant also takes a second approach to this case. Counsel for Tcho argues
that I am able to decide the issue of confusion de novo on the basis of
an “additional evidence” argument. Counsel for MM Meyer submits that no
such basis exists in the present case because Tcho has not produced any
additional evidence. MM Meyer argues that an argument not before the Registrar
does not constitute “new evidence” and does not entitle the Applicant to a de
novo hearing. I agree with this submission. The law on allowing the Court
to replace its discretion for that of the Registrar is clear:
Having regard to the Registrar's
expertise, in the absence of additional evidence adduced in the Trial Division,
I am of the opinion that decisions of
the Registrar
whether of fact, law or discretion, within his area of expertise, are to be
reviewed on a standard of reasonableness simpliciter.
However, where
additional evidence is adduced in the Trial Division that would have
materially affected the Registrar's findings of fact or the exercise of his
discretion, the Trial Division judge must come to his or her own conclusion as
to the correctness of the Registrar's decision (Molson Breweries, A Partnership v. John Labatt Ltd. (2000), 5 CPR (4th) 180 at para 29 (FCA)).
(Respondent’s
Memorandum of Fact and Law, para. 21)
[Emphasis added].
Because Counsel for Tcho has not
met the test of producing additional evidence that would have materially
affected the Registrar’s decision, I reject Tcho’s second approach to this
case.
[12]
Accordingly
the present appeal is dismissed.
ORDER
THIS
COURT ORDERS that:
1. The
present Appeal is dismissed.
2. I
award costs to the Respondent.
“Douglas R. Campbell”
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