LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 6
Date of Decision: 2011-01-13
IN THE MATTER OF AN OPPOSITION by 474749 Alberta Limited to application No. 1,288,760 for the trade-mark MY DONAIR & Design in the name of Uncle Moe’s Donair Chicken, Falafel Inc.
The Pleadings
[1] On January 25, 2006 Uncle Moe’s Donair Chicken, Falafel Inc. (the Applicant) filed application number 1,288,760 to register the trade-mark MY DONAIR & Design (the Mark) as illustrated hereinafter:
[2] The application is based on proposed use and covers fast food, namely, donairs and falafels (the Wares). The Applicant disclaimed the right to the exclusive use of the word DONAIR apart from the trade-mark as a whole.
[3] The application was advertised on November 6, 2006 in the Trade-marks Journal for opposition purposes. 474749 Alberta Limited (the Opponent) filed a statement of opposition on May 25, 2007. The Applicant filed a counter statement on December 3, 2007 wherein the Applicant admitted none of the allegations contained in the statement of opposition.
[4] The Opponent filed the affidavit of Richard Nogas while the Applicant filed two affidavits of Bassil Sleiman. None of the deponents were crossed-examined.
[5] Both parties filed written arguments and no oral hearing was held.
The Grounds of Opposition
[6] The grounds of opposition pleaded in the statement of opposition are:
1. The application does not comply with the provisions of s. 30(e) of the Trade-marks Act, R.C.S. 1985, c. T-13 (the Act) in that the Applicant, by itself or through a licensee, or by itself and through a licensee, never intended to use the Mark in Canada in association with all of the wares listed in the application;
2. The application does not comply with the provisions of s. 30(i) the Act in that the Applicant was not, and could not have been satisfied that it was entitled to register the Mark in Canada in view of the Applicant’s knowledge of the lack of distinctiveness of the Mark and of the existence and use of prior rights of the Opponent;
3. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(a) of the Act because prior to and at the date on which the Applicant filed the application, the Mark was confusing with the Opponent’s trade-mark MY DONAIR & Design, that had been previously used in Canada;
4. The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(b) of the Act because prior to and at the date on which the Applicant filed the application, the Mark was confusing with the Opponent’s trade-mark MY DONAIR & Design, for which an application had been previously filed in Canada by the Opponent;
5. The Mark is not distinctive since the Mark is not capable of distinguishing the Wares from the wares and services of others, nor is it adapted to so distinguish them, because the Mark is confusing with the Opponent’s trade-mark MY DONAIR & Design.
Legal Onus and Burden of Proof in Trade-marks Opposition Proceedings
[7] The legal onus is upon the Applicant to show that its 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 C.P.R. (3d) 325; John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company [2005] F.C. 722].
Relevant dates
[8] The relevant date for the analysis of each ground of opposition varies depending on the ground of opposition to be assessed:
➢ Non-compliance with the requirements of s. 30 of the Act: The filing date of the application (January 25, 2006);
➢ Entitlement to the registration of the Mark, where the application is based on proposed use: The filing date of the application (January 25, 2006) [see s. 16(3) of the Act];
➢ Distinctiveness of the Mark: The filing date of the statement of opposition (May 25, 2007) is generally accepted to be the relevant date [see Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
Ground of Opposition based on s. 30(e) of the Act
[9] The Opponent’s evidential burden under this ground of opposition is light as the evidence is mainly to the Applicant’s knowledge [see Tune Masters v. Mr. P’s Mastertune Ignition Services Ltd. (1986)10 C.P.R. (3d) 84]. The Opponent may succeed under this ground of opposition if the Applicant’s evidence is clearly inconsistent with the statements made in the application [see York Barbell Holdings Ltd. v. ICON Health & Fitness, Inc. (2001), 13 C.P.R. (4th) 156 (T.M.O.B.)]. The Opponent has adduced no evidence to support such ground of opposition. Moreover there are no elements in the Applicant’s evidence that would serve the Opponent to meet its evidential burden. Consequently, I dismiss the first ground of opposition.
Ground of Opposition Based on s. 16(3)(b) of the Act
[10] There is no reference in the statement of opposition to a specific application that would have been filed by the Opponent prior to the filing of the present application. However, at the decision stage, the statement of opposition must be read in conjunction with the evidence filed [see AstraZeneca AB v. Novopharm Ltd. (2001), 15 C.P.R. (4th) 327 (F.C.A.)].
[11] Mr. Nogas has been at all material time the Opponent’s President and its sole shareholder. He has been also the President and major shareholder of Righton Holdings Ltd. (Righton). He states that on April 30, 1982 Righton filed application number 486282 to register the trade-mark MY DONAIR & Design, identical to the Mark as illustrated above. Such application matured to registration on August 10, 1984 under number TMA294035. I used my discretion and checked the register and confirm that such information is accurate. Moreover, as alleged in Mr. Nogas’ affidavit, registration TMA294035 has since been expunged on April 4, 2000 for failure to renew the registration.
[12] In order to succeed under s. 16(3)(b) the cited application needs to be pending at the advertisement date of the present application [see s. 16(4) of the Act]. Obviously this condition is not met. Therefore the fourth ground of opposition is also dismissed.
Ground of Opposition Based on s. 16(3)(a) of the Act
[13] Mr. Nogas states that in March 1980 he incorporated Righton which operated the first MY DONAIR location in the Malborough Mall, in Calgary, a restaurant offering donairs and other Middle Eastern food for dine-in and take-out. He alleges that he personally developed and designed the logo for MY DONAIR & Design in conjunction with Righton’s efforts to establish a franchise operation for MY DONAIR outlets in Alberta. Righton obtained on August 10, 1984 the registration of the trade-mark MY DONAIR & Design.
[14] In 1986, Mr. Nogas changed residence and he claims that despite the fact he requested that Canada Post forward his mail to his new address he never received the Registrar’s notice of renewal for the trade-mark MY DONAIR & Design. Consequently registration TMA294035 was expunged in April 2000.
[15] In 1982, Righton decided to expand MY DONAIR restaurants to multiple locations in Calgary through a series of license agreements. In November 1990 the Opponent was incorporated. Mr. Nogas alleges that the assets and property of Righton were assigned to the Opponent including the registered trade-mark MY DONAIR & Design.
[16] To illustrate the fact that the Opponent was acting as a licensor Mr. Nogas filed as Exhibit A to his affidavit a license agreement concluded between the Opponent and Rezk Hassanin and dated June 2, 2003. The trade-mark MY DONAIR & Design appears on the first page of the agreement.
[17] As a second example of a license agreement by which the Opponent licensed rights into the trade-mark MY DONAIR & Design, Mr Nogas refers to an agreement concluded in the mid 1990s with Mr. Mohamoud Sleiman (M. Sleiman) pursuant to which the latter agreed to operate a MY DONAIR location in the TransCanada Mall in Calgary. Mr. Nogas goes on further and states that M. Sleiman opened a second My Donair location at the corner of Edmonton Trail and 16th Avenue N.W. in Calgary. Unfortunately Mr. Nogas did not file any documents to substantiate those allegations. Therefore it is impossible to determine from his testimony which entity(ies) was(were) operating those locations. As it will appear later on, M. Sleiman’s name appears on a business permit issued by the City of Calgary for the years 2003 and 2004 for the business located on Edmonton Trail and operated under the name MY DONAIR.
[18] Mr. Nogas alleges that in May 2004, approximately at the same time the Sleiman family incorporated the Applicant, M. Sleiman informed the Opponent that he wanted to terminate the agreement with the Opponent so that he could operate a competing business offering Middle Eastern cuisine. According to Mr. Nogas the agreement with M. Sleiman was terminated and he informed him that neither he nor the Applicant would be entitled to use the trade-mark MY DONAIR & Design.
[19] In late 2006 Mr. Nogas was informed by Mr. Hassanin, an Opponent’s existing licensee, that an application to register the Mark had been filed by M. Sleiman or a member of his family through the Applicant. It was under these circumstances that the Opponent filed a statement of opposition.
[20] As additional relevant facts Mr. Nogas asserts that at the peak of operations, there were ten locations operating under the trade-mark MY DONAIR & Design in Calgary. Unfortunately Mr. Nogas does not state when that situation was in effect and if all those locations were operated by Opponent’s licensees. He states that, as of January 28, 2009 (the date of execution of his affidavit), there were eight MY DONAIR locations licensed to operate in Calgary.
[21] Mr. Nogas filed a photograph of a billboard advertisement on which appears a slight variation of the trade-mark MY DONAIR & Design in that the cow’s head appears at the beginning and the end of the word portion of the mark. I do consider the use of that trade-mark to be use of the trade-mark MY DONAIR & Design [see Canada (Registrar of Trade-marks) v. Cie. Internationale pour l’informatique CII Honeywell Bull, S.A. (1985), C.P.R. (3d) 523]. Finally, attached to his affidavit are extracts of the Calgary Yellow Pages directory for the following years: 1982 listing 1 location under the name MY DONAIR; 3 locations in the directory for the year 1985; 1 location in the directory for the year 1988; 3 locations in the directory for the year 1993; and 4 locations in the directory for the year 1996.
[22] B. Sleiman is the Applicant’s managing partner and a signing director. He alleges in his statutory declaration that the Applicant does operate two locations under the Mark, one located at 232, 1440-52nd Street NE operated since June 1995 and another location operated since January 15, 2003 at 4524 Edmonton Trail NE in Calgary. This information corroborates the allegations made by Mr. Nogas and described in paragraph 17 above.
[23] B. Sleiman admits that it was after learning sometime in 2004 that the registration for the trade-mark MY DONAIR & Design had been expunged that a decision was made to file an application to register the Mark. Such decision led to the filing of the present application by the Applicant.
[24] In paragraph 7 of his statutory declaration B. Sleiman uses the term “franchise(s)” on 4 different occasions and says that he has been involved with the “franchise” MY DONAIR on a continuous basis since 1995. He filed yearly business licenses issued by the City of Calgary for the business operated under the trade-mark MY DONAIR and located at 1440-52nd Street NE in Calgary for the period of 1995 to 2004 and the business licenses for the other location on Edmonton Trail issued for the years 2004 and 2005. I note that those business licenses are issued to Samair Sleiman for the first location and to Mahmoud Sleiman for the second location. I should point out that the mere filing of business licenses does not constitute evidence of use of a trade-mark. [Pharmx Rexall Drug Stores Inc. v. Vitabrin Investments Inc. (1995), 62 C.P.R. (3d) 108 (T.M.O.B.)].
[25] B. Sleiman filed additional documents to support his contention that two locations were operating under the trade-mark MY DONAIR such as inspection reports from the Fire Fighting Division of the City of Calgary for the years 2002 to 2004 inclusive for the business located on 52nd Street and two other reports issued in 2003 and 2004 for the location on Edmonton Trail. Those reports do not refer to the entity operating those businesses but refer to MY DONAIR as the name of the business. Finally there are business tax bills issued by the City of Calgary but again no information is provided as to the identity of the entity operating the businesses for which those tax bills were issued.
[26] In his second statutory declaration B. Sleiman alleges that the Applicant has owned and operated restaurants under the trade-mark MY DONAIR since 1995. He further asserts that the Applicant “also owned and operated a MY DONAIR franchise from 1983-1985”. To support such contention he filed a fax received from the license enforcement division of the City of Calgary. Such document constitutes inadmissible hearsay evidence. In any event B.Sleiman, in this allegation, again admits that the Applicant was operating as a franchisee. I should point out at this stage that I did not take into consideration any allegations made by the Opponent on the date of incorporation of the Applicant. Those allegations are contained in the Opponent’s written argument and no evidence is in the record to support such contention. Obviously had the evidence been in the record it would have had a serious impact on the analysis of the allegations made by B. Sleiman on the Applicant’s activities in association with the Mark. It would have supported the allegation that the Applicant could not have operated MY DONAIR locations prior to such date of incorporation.
[27] B. Sleiman alleges that since 2000 the original registrant of the trade-mark MY DONAIR & Design has not had ongoing and continuous involvement with such trade-mark since the registration has been expunged.
[28] It is difficult to reconstruct the chain of events that occurred since 1983 involving the use of the trade-mark MY DONAIR & Design as the evidence described above refers to different entities, locations and individuals.
[29] One thing that is certain: the Opponent’s predecessor in title, Righton, once was the registered owner of the trade-mark applied for and that such registration was expunged in April 2000 for failure to renew the registration.
[30] There has been a lot of documentation filed by the Applicant to establish that it operated, at different locations, businesses under the name MY DONAIR since at least 1995 and perhaps even earlier. As stated previously, a business permit does not prove use of a trade-mark in association with services as defined in s. 4(2) of the Act. A similar conclusion applies with respect to the tax bills and fire inspection reports filed. In any event none of those documents refer to the Applicant. They all mentioned a name of an individual and when reference is made to MY DONAIR it is as a trade-name and not as a trade-mark. Examples of evidence of use of a trade-mark in association with services include: business card, letterhead, advertisement, invoice, menu or outdoor sign. In any event the application covers wares and not services. Finally and more importantly, it is filed on the basis of proposed use of the Mark by the Applicant.
[31] In order to meet its initial burden of proof under this ground of opposition the Opponent had to demonstrate that it has used the trade-mark MY DONAIR & Design prior to January 25, 2006 and that it had not abandoned such use at the date of advertisement of the present application (November 6, 2006)[see s. 16(5) of the Act].
[32] The first part of that test has been met. The Opponent and its predecessor in title did use the Mark prior to January 25, 2006 and this fact is even admitted by the Applicant. The issue is whether or not the Opponent had abandoned such use on November 6, 2006. One must not associate non-use of a trade-mark with abandonment of that trade-mark. Abandonment implies a notion of intention [see Labatt Brewing Co. v. Formosa Spring Brewery Ltd. (1992), 42 C.P.R. (3d) 481(FCTD) and Marineland Inc. v. Marine Wonderland & Animal Park Ltd., (1974), 16 C.P.R. (2d) 97 (FCTD)].
[33] The fact that the Opponent’s registered trade-mark had been expunged in 2000 does not equate necessarily to the abandonment of that trade-mark. In fact Mr. Nogas did explain the circumstances that lead to such expungement. Moreover he does state that in June 2003 the Opponent entered into an agreement with Rezk Hassanin for the operation of dine-in and take-out food services under the trade-mark MY DONAIR and filed a copy of that agreement on which appears the trade-mark MY DONAIR & Design. He filed a picture of a billboard on which appears the trade-mark MY DONAIR & Design, as described above and similar to the Mark, which has been displayed since January 2004 to January 2009. I consider such evidence sufficient to prove that the Opponent had not abandoned the use of the trade-mark MY DONAIR & Design on November 6, 2006.
[34] Te Opponent having met its initial burden of proof, I have to determine, on a balance of probabilities, if the Mark is likely to cause confusion with the Opponent’s trade-mark MY DONAIR & Design. The test to determine this issue is set out in s. 6(2) of the Act and I must take into consideration all the relevant surrounding circumstances, including those listed in s. 6(5): the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or in the ideas suggested by them.
[35] There is no need to go through an in-depth analysis of the criteria listed under s. 6(5) of the Act as the parties’ trade-marks are identical. The application covers Wares but the trade-mark MY DONAIR & Design has been used by the Opponent in association with restaurant services offering donairs and other Middle Eastern food for dine-in and take-out. There is clearly an overlap between those services and the Wares and the parties’ respective channels of trade.
[36] I conclude that the Applicant failed to prove, on a balance of probabilities that the Mark was not likely to cause confusion with the Opponent’s trade-mark MY DONAIR & Design at the filing date of the application. Consequently the third ground of opposition is maintained.
Distinctiveness of the Mark
[37] To meet its initial burden under this ground of opposition the Opponent had to prove that its trade-mark MY DONAIR & Design had become sufficiently known on May 25, 2007, the filing date of the statement of opposition, to negate any distinctiveness of the Mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58]. Once this burden is met, the Applicant has a legal onus to show, on a balance of probabilities, that the Mark was not likely to create confusion with the Opponent’s aforesaid trade-mark such that it was adapted at the relevant date to distinguish or actually distinguished throughout Canada the Wares from the Opponent’s services [see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272].
[38] The evidence described under the ground of opposition based on s. 16(3)(a) of the Act enables me to conclude that the Opponent’s trade-mark MY DONAIR & Design was sufficiently known on May 25, 2007 such that the Opponent has met its initial evidentiary burden.
[39] This ground of opposition essentially turns on the issue of the likelihood of confusion between the parties’ trade-marks as of the filing date of the statement of opposition. The difference in the relevant dates with the entitlement ground of opposition based on s. 16(3)(a) of the Act is not a determining factor. Most of the evidence filed relates to the use of the Opponent’s trade-mark MY DONAIR & Design prior to the filing date of the statement of opposition.
[40] My analysis of the relevant circumstances at the filing date of the statement of opposition would generate the same results as those obtained under the entitlement ground of opposition based on s. 16(3)(a) of the Act. Under these circumstances I find that the Applicant’s Mark did not distinguish the Applicant’s Wares and was not apt to distinguish them from the services of the Opponent sold in association with the trade-mark MY DONAIR & Design at the relevant date. Thus, the last ground of opposition is also maintained.
Compliance with s. 30(i) of the Act
[41] The Opponent having already succeeded under two different grounds of opposition it is not necessary for me to rule on this ground of opposition. However I may make the following comments.
[42] The case law is quite clear that a licensee should not be allowed to usurp the rights of its licensor [see McCabe v. Yamamoto & Co. (America) (1989), 23 C.P.R. (3d) 498 (F.C.T.D.)]. Had there been clear documentary evidence establishing that the Applicant’s principals were former licensee(s) of the Opponent for the trade-mark MY DONAIR & Design I would have had no difficulty in maintaining the second ground of opposition.
[43] Finally, the Opponent did raise in its written argument that Mr. Nogas created the design portion of the Mark as alleged in his affidavit. Therefore he would be the copyright owner of that design. It could have been an interesting issue. However the Opponent is not Mr. Nogas and in the absence of evidence of an assignment in the copyright of that design from Mr. Nogas to the Opponent, I fail to see how the Opponent could have succeeded along that line, leaving aside the fact that such ground of opposition was not clearly stated in the statement of opposition.
Disposition
[44] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office