Date: 20000210
Docket: T-1940-98
Ottawa, Ontario, this 10th day of February 2000
PRESENT: THE HONOURABLE MR. JUSTICE PELLETIER
BETWEEN:
VAN MELLE NEDERLAND B.V.
Applicant
- and -
MAPLE LEAF MEATS INC.
Respondent
REASONS FOR ORDER AND ORDER
PELLETIER J.
[1] The applicant, Van Melle Nederland B.V. ("Van Melle"), appeals from the decision of the Trade Marks Opposition Board, rejecting Van Melle"s opposition to the registration of the Respondent Maple Leaf Meats Inc."s (Maple Leaf) proposed trade-mark FRUIT-ELLY on the ground that it is confusing with Van Melle"s registered trade-mark FRUITTELLA. The latter is registered with respect to wares consisting of :
| confectionery viz. bonbons, dragees, drops chewing gum, peppermint toffees, medicated bonbons and dragees and licorice articles, all the stated goods not containing cocoa or chocolate. |
[2] FRUIT-ELLY is proposed to be registered in association with "puddings, parfaits and gelatin desserts". FRUITTELLA has been registered in Canada since November 15, 1968 whereas the application for registration of FRUIT-ELLY is made on the basis of proposed use.
[3] Van Melle"s Statement of Opposition referred to many grounds but the common element was the allegation of confusion with Van Melle"s registered trade-mark. Mr. David Martin, the member of the Trade Marks Opposition Board who decided the claim as the Registrar"s delegate found that there was no basis of a finding of no likelihood of confusion.
[4] The evidence before the Board in support of the Opposition was the affidavits of Ronald Korenhof and Alex Moore. The former is the Associate Director of International Marketing Services for Van Melle while the latter was (at the time) a student-at-law with Van Melle"s solicitors, Blake Cassels & Graydon. The evidence filed in support of registration consisted of the affidavit of Geoff Silva, Director of Marketing for Principal Marques Inc. (the predecessor in title to Maple Leaf ), and the Affidavit of Andrew Currier, student-at-law with Maple Leaf"s solicitors, Gowling Strathy & Henderson. Van Melle filed two additional affidavits on the appeal; that of Shelley L. Cunningham, Canadian Business Manager for Van Melle Canada Ltd., as well as the affidavit of Susan A. Woodward, a senior accountant with Van Melle"s Ontario distributor. Following the cross-examination of Ms. Cunningham on her affidavit, Maple Leaf filed a second affidavit of Geoff Silva.
[5] The Opposition Board found that there was no likelihood of confusion and rejected the Opposition. It began by noting that while the material times varied with specific grounds of opposition, in the end the question of material time did not make a difference. For purposes of determining confusion, the Board held that the material time was the date of the Board"s decision. It also found that the onus of disproving confusion was on the applicant, Maple Leaf. The Board then considered the factors enumerated at s. 6(5) of the Trade-Marks Act (the "Act"), R.S.C. 1985 c. T-13. Its findings are summarized below:
| - distinctiveness: both FRUITTELLA and FRUIT-ELLY are coined words and are thus inherently distinctive but neither is inherently strong due to the use of the word fruit in both, which is suggestive of the wares sold (or to be sold) in association with the marks. |
| - use in Canada: there was no evidence of use of the mark FRUIT-ELLY. The mark FRUITTELLA has become known in Canada. |
| - length of time in use: this factor favours the opponent Van Melle since FRUIT-ELLY"s use was at the time of application, prospective. |
| - nature of the wares/nature of the trade: the wares associated with both products fall into the general classification of food products, which is so broad as to be of little assistance. When FRUITTELLA is sold in supermarkets, the two products are likely sold in different areas of the store but the evidence showed that FRUITTELLA products tended to be sold more through convenience stores, discount stores and newstands than supermarkets, where the FRUIT-ELLY products would be sold. The Board found no evidence to support the notion of the extension of a trade-mark from one type of food product to another. While there was evidence of four trade-marks being used on two different food products, there was no evidence of use of the marks in conjunction with those products. |
| - degree of resemblance and idea suggested: there is a high degree of resemblance, largely due to the use of the word "fruit" in both marks. |
| - first impression and imperfect recollection: due to the differences between the wares and the trades of the parties as well as the inherent weaknesses of the marks, the Board found that the onus of showing no likelihood of confusion had been satisfied. |
[6] The affidavit of Ms. Cunningham was submitted to support the Board"s finding that Van Melle"s products were sold primarily in convenience stores, newstands and discount stores. The exhibits to the affidavits show lists of customers for the years 1996 to 1998. However, the type of retailer cannot be discerned from the name. Ms. Cunningham sets out the various types of retailers to whom FRUITTELLA products are sold but there is no volume or percentage breakdown between the various types. The affidavit of Susan Woodward also contains sales information but suffers from the same deficiency as does the affidavit of Shelley Cunningham. It does not breakdown sales by category of retailer. Since the Board"s conclusion was that Van Melle"s products were sold primarily in newstands, discount stores and supermarkets, that conclusion is not displaced by showing that the products were sometimes sold in supermarkets. This issue is not whether the wares were sold in supermarkets, it is whether they were primarily sold in supermarkets. I find that this additional evidence is not particularly significant.
[7] The second Affidavit of Geoff Silva confirms that Maple Leaf has commenced selling goods under the FRUIT-ELLY trademark and notes that they require refrigeration and are therefore sold in the refrigerated food section of grocery stores.
[8] In spite of the fact that there is an unfettered right of appeal from the decision of the Opposition Board, as well as a right to submit new evidence, the decision of the Board is entitled to some deference on the part of the Court to the point where, in the absence of significant new evidence, it ought not to be disturbed unless it is unreasonable or clearly wrong.1 The onus of showing that the decision is clearly wrong is on the applicant, which is the opposite of the onus before the Opposition Board.
[9] Van Melle makes a number of submissions with respect to the findings of the Opposition Board. It argues that if the Board found that Van Melle"s marks were distinctive, it should not have found that Maple Leaf"s were also distinctive because of their similarity to Van Melle"s marks. The elements of distinctiveness were set out in Philip Morris Inc. v. Imperial Tobacco Ltd. (1985), 7 C.P.R. (3d) 254 at 269-270 (F.C. T.D.), a decision of Rouleau J.,:
| One can also see that distinctiveness requires that three conditions be met: (1) that a mark and a product (or ware) be associated; (2) that the "owner" uses this association between the mark and his product and is manufacturing and selling his product; and, (3) that this association enables the owner of the mark to distinguish his product from that of others. |
[10] However, the Board"s comments were in relation to "inherent distinctiveness" which is analogous to but distinct from "distinctiveness"2 . Since both FRUITTELLA and FRUIT-ELLY are coined words, they are inherently distinctive in the sense of not being descriptive. The juxtaposition of the two may lead to confusion due to their similarity in which case the newer mark will be found to lack distinctiveness.
[11] Maple Leaf also argues that the Board was in error in finding that FRUIT-ELLY was suggestive of gelatin desserts or jelly since there was no evidence to that effect. To the extent that this finding reflects the Board"s assessment of the effect of the mark upon the public, I would not be inclined to interfere with it in the absence of evidence showing that it is wrong. This is the heart of the Board"s expertise. It reflects the Board"s accumulated experience on the public"s reaction to certain language. The conclusion reached by the Board could have been shown to be wrong through the use of survey evidence but until it is, I am prepared to accept it at face value.
[12] Van Melle argues that its marks should be afforded greater protection because they have been in use for almost forty years. It also argues that since the wares are smaller, inexpensive goods, the risk of confusion is higher, and so warrants greater protection. These are issues of the weight to be given to the various factors set out in the Act. The Board found that these factors were subordinate to other factors. This is also a matter within its competence which I am not inclined to disturb.
[13] Van Melle argues that the nature of the trade is that both type of wares will be sold in grocery stores and therefore the possibility of confusion is greater. The Board found that FRUITTELLA products were primarily sold in retain outlets other than grocery stores. The additional evidence submitted by Van Melle has not displaced this conclusion. The Board also found that the wares would be sold in different areas of the store. That conclusion has been supported by the second affidavit of Geoff Silva which shows that the FRUIT-ELLY products are sold only in the refrigerated foods section of supermarkets.
[14] In my view, Van Melle"s strongest argument is that based upon the degree of resemblance in appearance, sound and idea suggested as set out at paragraph 6(5)e ) of the Act. The Board acknowledged a fairly high degree of resemblance in all respects but discounted this because of the common use of the word fruit as the first component of each mark. Given that both marks are used in relation to food products, the word fruit is not distinctive (and is in fact probably descriptive). The Board ruled that neither party was entitled to the exclusive use of the word.
[15] In my view, the Board erred in parsing the marks too finely. It found that the resemblance between the two marks was due to the word fruit as the first component of each mark. In fact, the resemblance arises because of the word fruit and the syllable "ell" which follows it. The distinguishing feature is the relatively minor difference, at the last syllable, between "lee" and "lah"(pronunciation) or "ly" and "la" (visual). In both cases, the distinguishing elements are weak and easily overlooked. When the marks are taken as a whole, the degree of resemblance is such as to be misleading.
[16] This approach to the analysis of similarity has been repeatedly endorsed by the Courts. See British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48, [1944] Ex. C.R. 239, Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. et al. (1991), 37 C.P.R. (3d) 413, [1991] F.C.J. No. 546 for two examples.
[17] Even if the Board erred on this point, has it come to a conclusion which is clearly wrong? After all, not all factors are to be given the same weight. The weight to be given to a particular factor is a matter within the Board"s expertise. The Board purported to base its decision on the differences between the wares and the inherent weakness of both marks. No issue can be taken with the Board"s assessment of the nature of the wares. The question of the weakness of both marks in effect raises the issue of the degree of protection to be given to Van Melle"s use of the word fruit in its mark. As pointed out above, the similarity between the marks goes beyond the use of the word fruit. The Board"s conclusion that the use of the word fruit is entitled to limited protection is correct but has limited application on these facts where the new mark incorporates further elements of the original mark and uses a weak distinguishing feature. This is not a matter of weight to be given to a factor but rather of the correct application of a principle. As a result of this error in principle, I find that the Board"s decision is clearly wrong.
ORDER
For the reasons set out above, the appeal is allowed and the decision of the Trade Marks Opposition Board dated August 1, 1998 is set aside. The applicant shall have its costs to be assessed.
"J.D. Denis Pelletier"
Judge
__________________1 Garbo Group Inc. v. Harriet Brown & Co. [1999] F.C.J. No. 1763 (F.C.T.D.)
2 Inherent distinctiveness is not to be confused with the requirement previously considered that a trade-mark is to be maintained as distinctive of the wares or services of its owners"- Hughes on Trademarks Butterworths 1999 release (CD-ROM) Art. 62