Toronto, Ontario, September 5, 2006
PRESENT: The Honourable Madam Justice Mactavish
BETWEEN:
and
REASONS FOR JUDGMENT AND JUDGMENT
[1] By this application, Cafe’ Do Brasil S.p.A. seeks to expunge a registered trade-mark currently owned by the Respondent, Walong Marketing Inc. The application will be granted as I am satisfied that Walong’s predecessor in title was not entitled to register the mark in question.
Background
[2] Cafe’ Do Brasil is an Italian company, whose principal place of business is in Naples. Its food products are sold in Canada through distributors, who in turn sell the products to wholesalers and retail outlets, including specialty food stores, chain food stores, bakeries, drug stores and restaurants located across Canada.
[3] On December 14, 1990, Cafe’ Do Brasil obtained registration in Canada for the “KIMBO” trade-mark, for use in association with the following products:
Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour, and preparations made from cereal; bread, biscuits, cakes, pastry and confectionary icing; honey, treacle, yeast, baking powder; salt, mustard; pepper, vinegar, sauces, spices; and ice.
[4] Cafe’ Do Brasil is also the owner of Caffé KIMBO and Caffé KIMBO Design trade-marks, for use in association with “coffee, coffee beans and ground coffee, ground espresso, espresso beans and artificial coffee”.
[5] The KIMBO design is depicted as:
[6] Cafe’ Do Brasil has sold coffee products to its Canadian distributors since 1992. These products are sold in containers and packaging bearing the company’s name, and prominently displaying the KIMBO, Caffé KIMBO and Caffé KIMBO Design trade-marks.
[7] There is no indication in the evidence that Cafe’ Do Brasil has ever abandoned its use of the KIMBO marks in Canada. Indeed, the evidence demonstrates regular sales of Cafe’ Do Brasil products in Canada between 1992 and 2005, which products bore the KIMBO marks.
[8] On October 17, 2003, Cafe’ Do Brasil filed an application to expand the registration of the trade-mark that the company understood that it had in Canada, to register the KIMBO mark for use in association with the following additional wares and services:
Electric coffee makers, electric coffee percolators, electric coffee pots, their parts and accessories; non-electric coffee makers, non-electric coffee percolators, non-electric coffee pots, their parts and accessories; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Services for providing food and drink; temporary accommodation
[9] This application was subsequently amended in November of 2005 to correct some of the information in the original application. In particular, Cafe’ Do Brasil asked its trade-mark agent to correct the phrase indicating that it “intended to use” the trade-mark in Canada, as it had actually been using its KIMBO marks continuously in Canada since at least as early as April of 1992.
[10] In the meantime, in May of 2004, Cafe’ Do Brasil was informed by its current Italian trade-mark agents that the Canadian Trade-marks Office objected to the registration of its KIMBO mark in relation to the additional wares on the basis that it was confusing with a KIMBO trade-mark owned by the Respondent Walong. Cafe’ Do Brasil could not understand how this could be, given its belief that it owned the KIMBO mark. As a result, Cafe’ Do Brasil caused inquiries to be made and subsequently determined that Walong was the current owner of Canadian trade-mark No. TMA537,914 for the “KIMBO” trade-mark & Design (the “Walong trade-mark”), which is depicted as:
KIMBO
Registration No. TMA537,914.
[11] The Walong trade-mark is registered for use in association with the following wares:
Meats; processed and staple foods, namely beans, black pudding, baking powder, baking soda, biscuits, breads, bubble gum, cakes and cake mixes, candy, caramel popcorn, caramels, cereal, chips, namely shrimp chips, chilli, chilli powders, chop suey, chow mein, coconuts, coconut oil, coffee, cookies, cooking oil, cooking wine, crackers, cracker and cheese combinations, dates, dumplings, egg rolls, eggs, fish and chips, flavored ices, french fried potatoes, fruit preserves, fruits, non-alcoholic and non-carbonated fruit drinks, flour, garlic, ginger, gluten, herbs, ice cream, ice cream cones, juices namely fruit juices and vegetable juices, ketchup, noodles, oatmeal, oats, onion rings, pancakes, pancake mixes, pickle relish, pies, pasta, pasta meals, puddings, raisins, rice, soy-based beverages, sake, salt, sauces namely pasta sauce and bean sauce, seeds, salad oil, seafood, seaweed, shellfish, snack foods namely rice-based, wheat-based, seaweed and preserved seafood, sodas, soybean oil, soybeans, spices and seasonings, sugar, sushi, syrups namely pancake syrup, tea, tofu, vegetables, vegetable oils, vinegar, wafers, waffles, waters, wheat, won tons and won ton wrappers, yeast, yogurt.
[12] It appears that the application for registration of what would later become the Walong trade-mark was initially filed by TAWA SUPERMARKET, INC. on June 29, 1998. The claimed date of first use of the mark by TAWA in association with wares identified as “meats and processed foods; staple foods” was January of 1995.
[13] TAWA’s application was subsequently amended to cover the wares identified above. There is no indication in the record that there was any use of the TAWA mark in Canada in association with any of the wares in question prior to January of 1995.
[14] The record does disclose that, by letter dated December 15, 1998, Cafe’ Do Brasil’s KIMBO trade-mark was cited by the Trade-marks Office against TAWA’s application to register its KIMBO mark. The Registrar took the position that TAWA’s trade-mark was not registrable because it was confusing with Cafe’ Do Brasil’s mark.
[15] TAWA’s agents then filed a request for a section 45 notice on April 28, 1999. As a result, an expungement proceeding was initiated by the Registrar of Trade-marks, which resulted in the expungement of Cafe’ Do Brasil’s KIMBO mark. TAWA’s application then proceeded to registration on November 28, 2000. TAWA subsequently assigned title to its KIMBO mark to Walong in January of 2002.
[16] Although the record indicates that the Trade-marks Office provided notice of the section 45 proceedings to Cafe’ Do Brasil and its Italian agents, the evidence before the Court from Cafe’ Do Brasil is that no such notice was actually received by the company, and that it was not aware that expungement proceedings had been initiated. As a consequence, no evidence was provided to the Registrar by Cafe’ Do Brasil with respect to its use of its KIMBO mark in Canada in association with the wares specified in the registration.
[17] By this application, Cafe’ Do Brasil seeks an order striking the entry on the Register of Trade-marks relating to Registration No. TMA537,914 for the “KIMBO” trade-mark & Design. Cafe’ Do Brasil also asks that the Court’s decision be forwarded to the Registrar of Trade-marks, in order that the appropriate entries can be made on the Register.
[18] Walong did not file any material in response to Cafe’ Do Brasil’s application, nor did it appear at the hearing.
Issues
[19] Cafe’ Do Brasil’s application raises the following issues:
1. Is Cafe’ Do Brasil entitled to bring this application?
2. If so, was TAWA entitled to secure the registration of the KIMBO trade-mark & Design in Canada, having regard to the provisions of subsection 18(1), section 17 and paragraph 16(1)(a) of the Trade-marks Act?
3. Is the Walong trade-mark distinctive, having regard to the provisions of paragraph 18(1)(b) and section 2 of the Trade-marks Act?
Analysis
[20] The first issue is whether Cafe’ Do Brasil is entitled to bring this application.
[21] The application is brought pursuant to the provisions of sections 57 and 58 of the Trade-marks Act, which provide that:
|
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended 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) No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.
58. An application under section 57 shall be made either by the filing of an originating notice of motion, by counter-claim in an action for the infringement of the trade-mark, or by statement of claim in an action claiming additional relief under this Act.
|
57. (1) La Cour fédérale a une compétence initiale exclusive, sur demande du registraire ou de toute personne intéressée, pour ordonner qu’une inscription dans le registre soit biffée ou modifiée, parce que, à la date de cette demande, l’inscription figurant au registre n’exprime ou ne définit pas exactement les droits existants de la personne paraissant être le propriétaire inscrit de la marque. (2) Personne n’a le droit d’intenter, en vertu du présent article, des procédures mettant en question une décision rendue par le registraire, de laquelle cette personne avait reçu un avis formel et dont elle avait le droit d’interjeter appel.
58. Une demande prévue à l’article 57 est faite par la production d’un avis de requête, par une demande reconventionnelle dans une action pour usurpation de la marque de commerce ou par un exposé de réclamation dans une action demandant un redressement additionnel en vertu de la présente loi. |
[22] It is clear that Cafe’ Do Brasil is a “person interested” within the meaning of subsection 57(1), as Walong’s KIMBO trade-mark has been cited by the Trade-marks Office against Cafe’ Do Brasil’s pending application. Moreover, Cafe’ Do Brasil is the owner of several foreign registrations and two international registrations for the KIMBO trade-mark as applied to coffee. In my view, this is sufficient to make Cafe’ Do Brasil a “person interested” within the meaning of the Trade-marks Act.
[23] The next question is whether Cafe’ Do Brasil had express notice of the expungement proceedings, such that it would be precluded from bringing this application by operation of subsection 57(2) of the Trade-marks Act.
[24] Having carefully considered all of the evidence, I am satisfied that through no fault on the part of the Registrar of Trade-marks, Cafe’ Do Brasil did not have actual notice of the expungement proceedings prior to May of 2004.
[25] Not only is Cafe’ Do Brasil’s evidence as to its lack of knowledge completely unchallenged, the evidence before this Court also clearly demonstrates the continued use of the KIMBO mark in Canada by Cafe’ Do Brasil during the three year period immediately preceding the section 45 notice. Presumably, this evidence would have been readily available to Cafe’ Do Brasil at the time that the expungement proceedings were initiated. Given its continuing interest in the mark, it simply does not make sense that Cafe’ Do Brasil would have allowed its mark to be expunged, had it been aware of the expungement proceedings.
[26] Having found as a fact that Cafe’ Do Brasil is an interested person, and did not have express notice of the expungement proceedings, I am therefore satisfied that this application is properly before the Court.
[27] Before turning to the merits of Cafe’ Do Brasil’s application, it should be observed that as this application is not a judicial review of either the Registrar’s decision to expunge Cafe’ Do Brasil’s KIMBO mark, or the decision to allow the registration of the Walong trade-mark, the issue of standard of review does not arise in this case.
[28] The next question, then, is whether TAWA was entitled to secure the registration of the KIMBO trade-mark & Design in Canada, having regard to the provisions of subsection 18(1), section 17 and paragraph 16(1)(a) of the Trade-marks Act.
[29] I will first consider the question of TAWA’s entitlement to registration, having regard to the provisions of paragraph 16(1)(a) of the Trade-marks Act, which provides that:
|
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title 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;
|
16. (1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des marchandises ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces marchandises ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l’a en premier lieu ainsi employée ou révélée, elle n’ait créé de la confusion : a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne; |
[30] Cafe’ Do Brasil contends that TAWA was not entitled to secure the registration of the KIMBO trade-mark & Design in Canada. This is because as of January of 1995, that is,.TAWA’s claimed date of first use, TAWA’s KIMBO mark was confusing with one or more of Cafe’ Do Brasil’s KIMBO trade-marks. These marks had been previously used in Canada by Cafe’ Do Brasil in association with its coffee products, at least as early as 1992.
[31] The test for confusion is that of “first impression and imperfect recollection”: Polo Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9 C.P.R. (4th) 51. In applying this test, the question for the Court is whether consumers would believe that the wares or services in issue came from a common source.
[32] It is not necessary to show that confusion has actually occurred. It is sufficient if it can be demonstrated that confusion is likely to occur.
[33] Subsection 6(5) of the Trade-marks Act provides that, in determining whether trade-marks are confusing, the Court shall have regard to all of the surrounding circumstances, including the inherent distinctiveness of the trade-marks in question, and the extent to which they have become known; the length of time each has been in use; the nature of the wares; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, sound or the ideas suggested by them.
[34] Dealing first with the inherent distinctiveness of the trade-marks in question, the word “KIMBO” does not have a recognizable descriptive or suggestive connotation, as applied to food products, including coffee products. As a consequence, I am satisfied that KIMBO has some measure of inherent distinctiveness. Walong’s KIMBO design also has some degree of distinctiveness, having regard to the design element and Chinese characters which form part of the mark.
[35] There is considerable evidence before the Court with respect to the extent to which Cafe’ Do Brasil’s KIMBO marks have become known in Canada, through the sales, advertising and marketing in Canada of products bearing Café do Brasil’s KIMBO mark, dating back to at least 1996. Although the product packaging for Cafe’ Do Brasil’s KIMBO Coffee Products has changed somewhat in colour and design over the years, the KIMBO mark has always been prominently displayed.
[36] In contrast, there is no evidence regarding the extent to which the Walong mark has become known. This factor therefore clearly favours Cafe’ Do Brasil.
[37] Similarly, the evidence is clear that Cafe’ Do Brasil’s use of its KIMBO mark pre-dates that of either TAWA or Walong by some three years, again favouring Cafe’ Do Brasil.
[38] Cafe’ Do Brasil sells coffee products. These wares appear to be identical to the “coffee” included in the registration of the Walong mark. Moreover, a number of the other types of processed foods covered by the Walong mark were also the subject of the Cafe’ Do Brasil marks. Amongst others, these include tea, rice, vinegar, sugar, salt and flour.
[39] No evidence has been filed by Walong with respect to the channels of trade associated with its wares. However, the burden is on Cafe’ Do Brasil to demonstrate confusion, and thus, while there is no basis on which to find that this factor favours Walong, it cannot be said that it favours Cafe’ Do Brasil either.
[40] Finally, there is a significant degree of resemblance between the KIMBO marks at issue in this proceeding, having regard to the degree of resemblance between the marks in appearance, sound and the ideas suggested by them.
[41] Taking all of these factors into account, I am satisfied that, at the time of TAWA’s claimed first use of its KIMBO mark in January of 1995, there was a reasonable likelihood of confusion between Walong’s trade-mark and Café do Brasil’s KIMBO trade-mark, as applied to food products, including coffee products. As a consequence, TAWA was not entitled to register its mark, and the mark is invalid.
[42] Given my conclusion that TAWA was precluded from registering its KIMBO mark by operation of paragraph 16(1)(a) of the Trade-marks Act, it is unnecessary to consider the applicability of the other sections of the Trade-marks Act relied upon by Cafe’ Do Brasil.
Conclusion
[43] For these reasons, Cafe’ Do Brasil’s application is allowed, with costs. An order will go directing that Canadian trade-mark registration No. TMA537,914 for the KIMBO trade-mark & design be expunged from the Trade-mark Register.
JUDGMENT
THIS COURT ORDERS AND ADJUDGES THAT the application is allowed, with costs. Canadian trade-mark registration No. TMA537,914 for Walong’s KIMBO & trade-mark and design is expunged from the Trade-mark Register.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2109-05
STYLE OF CAUSE: CAFÉ’ DO BRASIL S.p.A. v.
WALONG MARKETING INC.
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: June 21, 2006
APPEARANCES:
|
Mr. Gary Partington
|
|
|
No appearance
|
SOLICITORS OF RECORD:
|
Mr. Gary Partington Ottawa, Ontario
|
|
|
Sim, Lowman, Ashton & McKay LLP Toronto, Ontario |