LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 177
Date of Decision: 2012-09-17
IN THE MATTER OF AN OPPOSITION by Tapatio Foods, LLC to application No. 1,328,997 for the trade-mark LA TAPATIA filed by 2091399 Ontario Inc.
File Record
[1] On December 20, 2006, 2091399 Ontario Inc. (the Applicant) filed application No. 1,328,997 to register the trade-mark LA TAPATIA (the Mark). It is based on use in Canada since December 1, 2002. In response to an office action the wares covered by the application are now described as: Food products namely: flour tortillas, corn tortillas, nacho chips, tortilla chips, corn chips, corn flour, flour chips, taco shells, taquitos, quesadillas, tostadas (fried tortillas), corn dough for tortillas and tamales, tamales, mexican breads (the Wares). Also the Applicant indicated that the Mark means “from the city of Guadalajara (feminine)”.
[2] The application was advertised on March 4, 2009 in the Trade-marks Journal for opposition purposes.
[3] By letter dated April 29, 2009 Jose Luis Saaverdra, d.b.a. Empacadora Tapatio requested an extension of time to file a statement of opposition which was granted. Tapatio Foods, LLC (the Opponent) filed a statement of opposition on August 3, 2009 which was forwarded by the Registrar on October 22, 2009 to the Applicant.
[4] By letter dated October 26, 2009 the Opponent informed the Registrar:
We have been copied on your office action dated October 22, 2009 and note that the opponent is still referred to as Jose Luis Saaverdra, d.b.a. Empacadora Tapatio.
Please note for the purposes of this opposition that the opponent has changed in title over to Tapatio Foods, LLC and which assignment has been noted in the CIPO files as of July 20, 2009.
[5] I note a discrepancy between the entity which filed a request for an extension of time and the Opponent’s identity. The Applicant did not raise this issue. As it will appear from my decision I do not need to address it.
[6] The Applicant denied all grounds of opposition in a counter statement filed on February 17, 2010 which was subsequently amended on February 19, 2010 to correct a clerical error. Additionally, the Applicant pleaded in its counterstatement that the application filed was based on use and thus section 16(3)(a) of the Act is not applicable. The Opponent has not sought leave to amend its statement of opposition accordingly.
[7] The Opponent filed a statement informing the Registrar that it would not submit evidence in accordance with section 41 of the Trade-marks Regulations (Regulations). The Applicant filed the affidavit of Fernando Massalin. Thereafter the Opponent filed the affidavit of Jose-Luis Saavedra Jr as its reply evidence under section 43 of the Regulations. The Applicant objected to the filing of Mr. Saavedra’s affidavit on the basis that it does not constitute proper reply evidence within the meaning of section 43 of the Regulations. I will address this issue later on.
[8] Only the Opponent filled written arguments and no hearing was requested.
The Statement of Opposition
[9] It is important to reproduce verbatim the grounds of opposition pleaded:
1. The trade-mark applied for is not registrable in view of section 38(2)(a) of the Trade-marks Act (the Act) in that the Application does not comply with the requirements of section 30. In particular, under section 30(i) of the Act, the Applicant could not have been satisfied on the day it applied for the trade-mark that the Applicant was entitled to use the trade-mark applied for in Canada in association with the wares set out in the Application in light of the Opponent’s prior extensive use in Canada of its family of TAPATIO trade-marks, which family includes the trade-marks TAPATIO (REG No. 479,750) and the TAPATIO and Design (REG No. 477,763)
2. The trade-mark applied for is not registrable in view of section 16(3)(a) and section 38(2)(c) of the Act, in that the Applicant is not the person entitled to registration of the trade-mark. In particular, as of the date on which the Application was filed and at all material times, the trade-mark was confusing with, or likely to be confusing with, the Opponent’s family of TAPATIO trade-marks (TAPATIO and the TAPATIO and Design) which have been previously used in Canada by the Opponent.
3. The trade-mark applied for is not registrable, in view of section 38(2)(d) of the Act in that the trade-mark is not, and at all material times has not been and could not be, distinctive of the wares of the Applicant. In particular, having regard to section 2 of the Act, the trade-mark- being confusing with, or likely to be confusing with, the opponent’s family of TAPATIO trade-marks (TAPATIO and the TAPATIO and Design) which trade-marks have enjoyed widespread and extensive use in Canada, including use in association with a red pepper based condiment, namely meatless hot sauces therewith- is not adapted to and does not distinguish the proposed wares of the Applicant from the wares, services and business of the Opponent.
[10] It appears from the language used by the Opponent that it intended to plead non-conformity of the application as the first ground of opposition; entitlement to the registration of the Mark as the second ground of opposition; and finally distinctiveness of the Mark as the third ground of opposition. Any ambiguities in the wording used by the Opponent to describe its grounds of opposition shall be interpreted against it. In fact even though the Opponent has used the words “not registrable” in all three grounds of opposition none of them makes reference to section 12(1)(d) of the Act which forms the basis of the ground of opposition known as the “registrability” of a trade-mark applied for. I do not interpret any of those grounds to mean that the Opponent has pleaded that the Mark was not registrable because it was confusing with any registered trade-marks despite the fact that the Opponent has made representations in its written argument with respect to such a ground of opposition.
Legal Onus and Burden of Proof in Trade-marks Opposition Proceedings
[11] The legal onus is upon the Applicant to show that the application complies with the provisions of the Act, but there is however an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once this initial burden is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E Seagram & Sons Ltd et al v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) and Wrangler Apparel Corp v The Timberland Company [2005] FC 722].
Grounds of Opposition Summarily Dismissed
[12] Section 30(i) of the Act only requires the Applicant to declare itself satisfied that it is entitled to the registration of the Mark. Such a statement is included in the application. The allegation that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in light of the Opponent’s prior extensive use in Canada of its trade-marks cannot form the basis of a ground of opposition under section 30(i) of the Act. One may rely on section 30(i) in specific cases such as where fraud by the Applicant is alleged [see Sapodilla Co Ltd v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB)]. There is no allegation of that nature in the statement of opposition or any evidence in the record to that effect.
[13] Under these circumstances, the ground of opposition based on section 30(i) of the Act is dismissed.
[14] The second ground of opposition is also dismissed. The application was filed on the basis of use and section 16(3) of the Act is not applicable under these circumstances [see Canada Bread Co v Beverages Brands (UK) Ltd (2012), 99 CPR (4th) 459 (TMOB)]. This issue was raised by the Applicant in its counter statement and the Opponent failed to amend its statement of opposition. In any event as it will appear from the content of the next section, even if I were to consider the ground of entitlement under section 16(1) of the Act, it would fail because the Opponent would not have met its initial burden of proof.
The Opponent’s evidence
[15] Should Mr. Saavedra Jr’s affidavit be struck from the record, then the ground of opposition based on distinctiveness would be dismissed because the Opponent would not have met its initial burden of proof.
[16] In order to decide on this issue I must first review the content of Mr. Massakin’s affidavit, the Applicant’s President, filed as the Applicant’s evidence. The affidavit is quite succinct and can be summarized as follows:
• The Wares are distributed by the Applicant’s related company Latinamerican Foods Inc, its licensee, for retail sale to independent retailers as well as major Canadian food chains such as Loblaws, Metro and Sobeys;
• A photocopy of a bag of tortilla bearing the Mark currently used has been filed;
• The Applicant’s annual sales to its Canadian retailers average about $200,000 per year. However we have no information as to since when the Applicant and/or its licensee started selling the Wares in association with the Mark in Canada. Therefore we cannot determine over what period of time this average has been calculated.
• He has not been made aware of any instances of confusion with any of the products sold in Canada by the Opponent.
[17] The main points of Mr. Saavedra Jr.’s affidavit are:
• He has been the Opponent’s Vice-President since its inception, namely January 2, 2006;
• The Opponent owns two registered trade-marks, TAPATIO & Design registered on June 13, 1997 under TMA477,763 and TAPATIO registered on August 7, 1997 under TMA479,750 which have been used in Canada since at least as early as January 1994 in association with red pepper based condiment, namely, meatless hot sauce;
• The Mark is merely the gender opposite of TAPATIO;
• The Opponent’s wares bearing its marks TAPATIO and TAPATIO & Design have been sold in Canada since January 1994 in specialty shops, ethnic stores and independent Canadian food chain retailers such as Sobeys;
• He provides a copy of the Opponent’s invoice register covering the period of April 11, 2001 to April 15, 2009. However I note that the Opponent was only incorporated in January 2006;
• A photocopy of different labels used bearing the Opponent’s trade-marks TAPATIO and TAPATIO & Design is attached to his affidavit;
• The Applicant uses a design trade-mark comprising the representation of a Hispanic woman with a sombrero in conjunction with the words LA TAPATIA, while the Opponent’s TAPATIO & Design trade-mark comprises the representation of a Hispanic man with a sombrero in conjunction with the words TAPATIO;
• There is a similarity in the channels of trade and the wares of the parties;
• There are some similarities between the parties’ trade-marks when they are put side by side for comparison.
[18] I agree with the Applicant. The content of Mr. Saavedra Jr.’s affidavit is not proper reply evidence to the content of Mr. Massalin’s affidavit. Mr. Saavedra Jr.’s affidavit should have been filed as evidence in chief under section 41 of the Regulations but the Opponent chose not to do so. It decided to wait and see what type of evidence the Applicant would file and then filed similar evidence as “reply” evidence. A party is not entitled to split its case [see Halford v Seed Hawk Inc (2003), 24 CPR (4th) 220 (FCTD)]. As such Mr. Saavedra Jr.’s affidavit shall not form part of the record.
[19] I note that the Opponent, in a letter dated March 9, 2011, in response to the Applicant’s submissions that the content of Mr. Saavedra Jr.’s affidavit should be struck for the reasons discussed above, sought leave “to file supplementary evidence in reply or otherwise”. No such supplementary evidence was attached to that letter. Presuming that I should interpret this letter to be an outstanding request to file Mr. Saavedra Jr.’s affidavit as additional evidence under section 44 of the Regulations, I note that the Opponent has not mentioned why such evidence was not filed earlier (at the Opponent’s evidential stage) as required by the Practice in Trade-mark Opposition Proceedings, effective March 31, 2009. I refuse at this late junction permission to file Mr. Saavedra Jr.’s affidavit as additional evidence under section 44 of the Regulations.
[20] Having determined that Mr. Saavedra Jr.’s affidavit is not part of the record, the Opponent has not discharged its initial burden. The Opponent failed to prove that its trade-marks TAPATIO and TAPATIO & Design were known in Canada to some extent at the filing date of the statement of opposition (the relevant date) such that the Mark could not have been distinctive or apt to distinguish the Wares from the Opponent’s products bearing its aforesaid trade-marks.
[21] Consequently the third ground of opposition is also dismissed for failure by the Opponent to meet its initial burden.
Additional comment
[22] As I ruled that Mr. Saavedra Jr.’s affidavit is not part of the record, even if I were to consider the second ground of opposition on the basis of section 16(1) of the Act, such ground would still be dismissed for failure by the Opponent to prove that it had previously used its trade-marks TAPATIO and TAPATIO & Design.
Disposition
[23] Having been delegated authority by the Registrar of Trade-marks by virtue of section 63(3) of the Act, I reject the opposition in accordance with section 38(8) of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office