IN THE MATTER OF AN OPPOSITION by A. Lassonde Inc. to Application No. 682237

for the Trade-mark FLORIDA’S NATURAL filed by Citrus World, Inc.

 

 

 

On May 17, 1991, Citrus World, Inc. (the «Applicant»), filed an application, based on proposed use, to register the trade-mark FLORIDA’S NATURAL (the «Mark») in association with fruit juices (the “Wares”). The Applicant claimed priority under Section 34 of the Trade-Marks Act (the “Act”) based on an application filed on May 3, 1991, in the United States of America bearing serial number 74/163,384.

 

On November 15, 1991, an examiner issued an office action taking the position that the Mark did not appear to be registrable in view of the provisions of Section 12(1)(b) of the Act. The Applicant did request numerous extensions of time to respond to such office action. It finally responded to it on June 20, 1996, by way of an amended application in which it took the position that the Mark was registrable pursuant to Section 14 of the Act on the basis of the issuance on January 12, 1993, of a certificate of registration in the United States No. 1,745,985 for the same trade-mark and filed an affidavit dated June 6, 1996 executed by Mr. Walter M. Lincer to establish that the Mark was not without distinctive character in Canada.

 

The application subsequently received preliminary approval and was advertised in the November 27, 1996, issue of the Trade-marks Journal. On April 28, 1997, A. Lassonde Inc. (the “Opponent”) filed a statement of opposition wherein the grounds of opposition can be summarized as follow:

 

1)                  The application does not contain, as required under Section 30(a) of the Act, a statement in ordinary commercial terms of the wares in association with which the Mark has been used or is proposed to be used;

2)                  The application does not contain, as required under Section 30(d) of the Act, the name of the country of the Union where the Applicant or its predecessors-in-title used the Mark as the Opponent is contesting the Applicant’s allegation that the Applicant would have used the Mark in the United States in association with the Wares before the filing or priority date of this application;

3)                  The Mark is not registrable as:

a)      Per the provisions of Section 14(1)(a) of the Act, it is confusing with the certification mark FLORIDA bearing number TMA178314;

b)       Per the provisions of Section 14(1)(b) of the Act, it is without distinctive character as defined in Section 2 of the Act;

c)      It is of such a nature as to deceive the public, the whole contrary to the provisions of Section 14(1)(c) of the Act;

d)     Per the provisions of Section 14(1)(d) of the Act, its adoption is prohibited by Section 10 of the Act;

e)      The Mark differs from the mark registered in the United States the whole contrary to the provisions of Section 14(2) of the Act;

 

4)                  The Applicant is not the person entitled to registration of the Mark as at the date of filing of the Application the Mark was confusing with the trade-mark FLORIDA registration No. TMA178314, for which an application had been previously filed in Canada by a third party (Section 16(2)(b) of the Act);

5)                  The Mark is not distinctive within the meaning of the provisions of Section 2 of the Act;

6)                  The Mark is not registrable as it is without distinctive character within the meaning of the provisions of Section 14(1)(b) and 12(1)(b) of the Act as it is either clearly descriptive or deceptively misdescriptive, in the English or French language, of the character or quality of the Wares or of the conditions of or the persons employed in their production or of their place of origin.

 

The Applicant filed on June 16, 1997, a counter statement denying the grounds of opposition described above and alleging that the trade-mark FLORIDA, certificate of registration TMA178314, was expunged on November 7, 1986; the second ground of opposition should be dismissed as the present application was filed on the basis of proposed use and finally the ground of opposition based on Section 16(2)(b) of the Act was improperly pleaded as the application was filed on a proposed use basis.

 

The Opponent filed a request to amend its Statement of Opposition to replace certificate of registration TMA 178314 by TMA276642 and to allege that the application should have been filed on the basis of use as opposed to proposed use. By a decision rendered on March 23, 1998, the Registrar refused such amendments.

 

The Opponent filed the affidavits of Jean Gattuso, Micheline Tellier and the Applicant filed the affidavit of Walter M. Lincer. Mr Gattuso and Mr. Lincer were cross-examined on their affidavits but only Mr. Lancer’s transcript of his cross-examination was filed in the record. The Opponent, as reply evidence, filed a second affidavit of Ms. Tellier. Both parties filed written submissions and were represented at an oral hearing.

 

The evidence

 

Mr. Gattuso has been the executive vice-president and general manager of the Opponent and has been employed since July 1987 by such company. He states that because of his experience in the field of fruit juices, experience that is not described in his affidavit, that the Mark is not registrable as the word FLORIDA indicates that the Wares originate from the State of Florida. Moreover the word NATURAL adds to the generic character of the term FLORIDA as it would mean that the juice is a natural juice of Florida and not made from concentrated juice. He alleges that the Applicant cannot obtain the registration of the Mark without desisting from the exclusivity of the words FLORIDA and NATURAL apart from the Mark as a whole. He has not seen on the Canadian market or listed as an available product fruit juices bearing the Mark. Finally he is alleging that the description “fruit juices” is not a description of the Wares in the ordinary terms of commerce. He states that the description of the Wares should include that the juices originate from the State of Florida, as the Mark included the word FLORIDA, otherwise the Mark is false and misleading. All of these statements are argumentation or conclusions in law and I shall disregard them except for the allegation that he has not seen on the Canadian market fruit juices bearing the Mark.

Ms. Tellier has been working with the Opponent’s agents firm as a paralegal. She filed various pertinent extracts of French and English dictionaries with respect to the definition of the words “Floride”, “Florida” and “natural”.

 

Mr. Lincer has been the Applicant’s vice-president, sales and marketing. He filed as Exhibit A to his affidavit an earlier affidavit dated June 7, 1996, filed into the record to support the ground of registrability of the Mark, at the examination stage, under Section 14 of the Act. He is adopting the content of such affidavit as still being true and correct and within his personal knowledge. He further states that the following sales of fruit juices bearing the Mark were made in Canada:

PERIOD                     NUMBER OF CASES                                   DOLLARS VALUE

 

Jan. to Dec. 1996                    2240                                                   18000

Jan. to Dec. 1997                         10                                                       120

Jan. to Jul. 1998                      10184                                                  92000

 

He filed a bundle of invoices issued by the Applicant to its Canadian distributor for the period ranging from October 1997 to July 1998.

 

He alleges that the Applicant advertised through television the Mark in commercials aired in the United States commencing in the spring of 1996 and were viewed in Canadian border towns and through cable networks. This evidence constitutes hearsay, as we have no information on the identity of the Canadian cities and the TV channels on which these commercial were aired, at what time, at which frequency and through which cable companies Canadians viewed these commercials and how many Canadians saw those commercials. I shall disregard such evidence. [See John Labatt Ltd. v. Miller Brewing Co (1996) 70 C.P.R. (3d) 351]

 

In his June 7, 1996 affidavit he alleged that the Mark was first used on May 28, 1991, in the United States, in association with fruit juices. He filed a certified copy of U.S. registration No.1,745,985. The total sales of fruit juices bearing the Mark from 1991 through April 1996 have been in excess of $700,000,000. The Applicant has spent over $22,000,000 in advertising expenditures in the United States. The first sales of the Wares bearing the Mark in Canada were made in May 1991 and sales have been continuous since January 1996. He filed (three) 3 invoices issued by the Applicant to its Canadian distributor representing sales of the Wares bearing the Mark in Canada during the period of January through March 1996. Finally samples of various packaging were filed to illustrate the use of the Mark.

 

During his cross-examination, Mr. Lincer testified that the Wares are manufactured in plants located in California and Florida but none of the Wares sold in Canada are made from juices originating from California. The Wares were not sold by the Applicant in Canada between 1991 and 1996. Then the Applicant found, in 1996, a Canadian distributor. In June 1997 the Opponent contacted the Applicant as it was trying to obtain a license in exchange for the withdrawal of its present opposition. Obviously no agreement was reached between the parties. He did confirm that the total sales of $700,000,000 mentioned above, of the Wares bearing the Mark represent the sales made by the Opponent in 15 countries.

 

The reply evidence consisting of a second Tellier affidavit contains additional definitions found on web sites and other dictionaries. She also filed extracts of web pages where a combination of the words “jus”, “nature”, “juice”, “natural”, “Florida” and “Floride” were used.

The Applicant objected to the filing of such affidavit on the basis that its content did not constitute proper reply evidence as contemplated by the provisions of Rule 43 of the Trade-Marks Regulations, 1996.

 

The Law

 

I will first deal with the objection made by the Applicant on the filing of the second Tellier’s affidavit. I agree with the Applicant. The content of such affidavit does not constitute proper reply evidence. It does not respond to the issues raised in the affidavit of Mr. Lincer. [See Société Générale d’Avant Produits de Pâtisserie “Sograp” v. A. Lassonde & Fils Inc. (1991), 37 C.P.R. (3d) 362] The additional information contained in such affidavit could have easily been part of her first affidavit as evidence to support the Opponent’s grounds of opposition. As such I shall disregard the content of Ms. Tellier’s second affidavit.

 

The Opponent has not adduced any evidence to confirm the existence of certificate of registration TMA178314 at the date of filing of the present application. The Applicant has not filed any evidence either to support its contention that such registration has been expunged prior to the priority date claimed in its application. Under such circumstances I have no alternative but to use the Registrar’s discretion to verify the status of such registration. [See Quaker Oats of Canada Ltd./La Compagnie Quaker Oats Ltée .v. Manu Foods Ltd., 11C.P.R. (3d) 410]. I confirm after verification of the Register that on November 7, 1986 such registration was expunged. Therefore grounds of opposition described in paragraphs 3(a) and 4 above are dismissed.

 

The legal burden is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial evidential burden on the Opponent to establish the facts relied upon by it in support of its grounds of opposition. Once this initial burden is met, it shifts to the Applicant who then must prove that the particular grounds of opposition should not prevent registration of the Mark [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., (1984) 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., (1990) 30 C.P.R. (3d) 293].

 

The material time for considering the issues of non-compliance with Section 30 of the Act is the filing date of the application (May 17, 1991). [See Georgia-Pacific Corp. v. Scott Paper Ltd., (1984) 3 C.P.R. (3d) 469, at p. 475]

 

The Opponent failed to present any evidence that would enable me to conclude that the Wares are not described in ordinary commercial terms. Therefore I also dismiss this ground of opposition (paragraph 1 described above).

 

The Opponent, in its written submissions, argues that according to the provisions of Section 30(d) of the Act if the Applicant is seeking priority in view of an earlier registration or filing of an application in a country of the Union and that the Canadian application is based on proposed use, the Applicant must state the name of the country where the Mark was used in association with the Wares. The application clearly claims priority on the basis of an application filed in the United States of America. The Opponent takes the position that the affidavit of Mr. Lincer dated June 7, 1996 does not establish use of the Mark in the United States prior to the filing date of the Canadian application. As stated above, this application is based on proposed use and not on foreign application or registration. The Applicant has relied on its corresponding United States application to claim the benefit of an earlier priority date as contemplated by Section 34 of the Act. The Applicant subsequently referred to a United States registration in order to argue around an office action raising an objection on the registrability of the Mark based on the provisions of Section 12(1)(b) of the Act. The Applicant did not base its application on use and registration abroad. Therefore the second ground of opposition is also dismissed.

 

The Opponent failed to discharge its initial burden with respect to ground of opposition 3(e) describe above and as such it is dismissed.

 

The material date for assessing the issue of distinctiveness is generally accepted to be the date of filing of the opposition (April 28, 1997). [See American Assn. of Retired Persons v. Canadian Assn. Of Retired Persons (1998), 84 C.P.R. (3d) 198, Andres Wines Ltd. and E&J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A) ].

 

To overcome an objection under Section 12(1)(b) of the Act, an applicant may allege that its trade-mark is registrable as it was distinctive at the date of filing of the application (Section 12(2) of the Act). The critical date to assess this issue is therefore the date of filing of the application as per the wording of Section 12(2). The other alternative available to an applicant is to rely on Section 14 of the Act and I shall discuss hereinafter the criteria that must be met when one relies on such provision.

 

The issue of the relevant date with respect to grounds of opposition based on Sections 12(1)(b) and 14 has been discussed in recent decisions. Since the Federal Court decision in Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4^th) 60, the Board has adopted, as the relevant date for considering the issue of descriptiveness under Section 12(1)(b) of the Act, the date of filing of the application [see Zorti Investments Inc. v. Party City Corporation re application No. 766,534, January 12, 2004; Havana Club Holdings S.A. v. Bacardi & Company Limited re application No. 795,803, January 12, 2004 and Eloyalty Corporation v. Loyalty Management Group Canada Inc re application No. 860,274, May 28, 2004]

 

With respect to the registrability of the Mark under Section 14, the Board has also adopted the date of filing of the application as the relevant date. In Zorti supra, Board member D. J. Martin addressed the issue in the following terms:

“Section 14 provides a mechanism analogous to that of Section 12(2) to allow the registration of a trade-mark otherwise unregistrable pursuant to Section 12(1)(b) where the applicant owns a corresponding foreign registration.  Section 14(1) provides an exception to Section 12(1)(b) in the same way that Section 12(2) does:  see Molson Breweries supra.   It would therefore seem to follow that the material time for considering the circumstances respecting Section 14(1) of the Act should be the same as that for Sections 12(1)(b) and 12(2) - i.e. - the filing date of the applicant’s application as discussed above.  In fact, prior to the Lubrication Engineers decision, that was the position taken by the Opposition Board (see, for example, Holiday Juice Ltd. v. Sundor Brand Inc. (1990), 33 C.P.R.(3d) 509 at 512-513 (T.M.O.B.)).   To use a later material date for Section 14(1) would be not only logically inconsistent but would also appear to unfairly advantage a foreign applicant over a domestic applicant who must evidence that his clearly descriptive mark has become distinctive as of the filing date of the application.

 

It is therefore necessary for the applicant to evidence the existence of its corresponding foreign registration and to show that the applied for mark was not without distinctive character in Canada pursuant to Section 14(1)(b) of the Act as of the filing date of the application.”

 

Board member Mr. M. Herzig in Caplan Industries Inc. v. Unicorn Abrasives Limited, re application No. 726,630, April 1^st, 1994 also adopted this position.

 

During the hearing the Applicant’s agent raised the issue that it would be virtually intellectually impossible to assess distinctiveness at two different material dates, as distinctiveness is also in issue under Section 14. Under such section however, an applicant must show that its mark is not without distinctive character, which is a lesser burden than to prove that a mark has become distinctive when an applicant relies on Section 12(2) to overcome an objection based on Section 12(1)(b) of the Act. Each ground of opposition must be assessed at its relevant date and the onus may vary from one ground of opposition to another. The Federal Court of Appeal dealt with a similar argument in Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. 180. In that particular case the opponent raised as two separate grounds of opposition: non-registrability of the mark based on the provisions of Section 12(1)(b) and lack of distinctiveness of the mark. The applicant responded by filing an amended application and claimed the benefit of Section 12(2). Addressing the issue of possible different relevant dates to assess the distinctiveness of the mark Mr. Justice Rothstein stated:

 

“I am of the opinion that once it is advertised, there is not a two-stage approach in respect of applications under subsection 12(2). The opposition under paragraph 38(2)(d) and the question of whether a mark has acquired distinctiveness under subsection 12(2) involve the same determination. Indeed, the question of registrability is also part of the same determination because if the mark is found to be registrable by reason of subsection 12(2), such finding will have displaced non-registrability by reason of paragraphs 12(1)(a) or (b). Throughout, the onus is on the applicant to prove distinctiveness. Where an application is based on subsection 12(2), the decision as to whether the mark has become distinctive of the applicant's wares is as of the date of the filing of the application for registration of a mark.”

 

By analogy, I adopt this reasoning and shall use the same relevant date for grounds of opposition described in paragraphs 3, 5 and 6 above.

 

I am also of the opinion that the date of the application is the relevant date with respect to the ground of opposition based on Section 14. The two options available to an applicant to overcome an objection based on Section 12(1)(b) should be assess as of the same relevant date. As it will be discuss hereinafter one of the differences between these two options is the threshold for establishing distinctiveness. I do not see such difference as a justification to adopt different relevant dates. Moreover, as stated in Zorti supra, to adopt either the date of filing of the statement of opposition or the date of the decision would unfairly advantage a foreign applicant over a domestic applicant. Finally as in this case, to adopt the later date of the filing of the statement of opposition would be tantamount to approve the voluntary delay of the prosecution of the application (in our case, a period of more than 5 years) in order to subsequently take advantage of such delay, the whole without any possible action on the part of the opponent as it can only file its statement of opposition once the application is advertised in the Trade-marks Journal, which would then become the critical date used by the Applicant.

 

As quoted above from Zorti, the Applicant must prove that, at the date of filing of its Canadian application, the Mark was registered in the foreign jurisdiction and it is not without distinctive character. In the present file, clearly the first condition is not met and as such the Opponent is successful under such ground of opposition. I will however analyse the evidence filed by the Applicant as of the date of my decision, the most favourable date for the Applicant , in case I would be wrong in concluding that the relevant date is the date of filing of the application, when assessing the registrability of the Mark under Section 14.

 

The Mark is clearly descriptive or deceptively misdescriptive in the English language of the character of the Wares and of their place of origin. The combination of the words “Florida” and “natural” clearly indicates that the fruit juices sold in association with the Mark originate from the State of Florida and are natural. It should be pointed out that, by filing an amended application in which it relies on Section 14 to overcome an objection based on Section 12 (1)(b) of the Act, one could argue that the Applicant has admitted that the Mark is clearly descriptive or deceptively misdescriptive in the English language of the character of the Wares and of their place of origin. [See for example York Barbell Holdings Ltd. v. Icon Health & Fitness Inc. (2001) 13 C.P.R. (4^th) 156]

 

In Supershuttle International, Inc. v. Registrar of Trade-marks (2002), 19 C.P.R. (4^th) 34 Mr. Justice McKeown dealt with the Applicant’s evidential burden to demonstrate that the Mark is not without distinctive character in Canada. He stated:

“The threshold for establishing distinctiveness is somewhat lower for s. 14 than for s. 12. In my view by including the phrase "not without distinctive character" in para. 14(1)(b) Parliament set a lower distinctiveness threshold for s. 14 than for s. 12. Urie J. in W.R. Grace & Co. v. Union Carbide Corp. (1987), 14 C.P.R. (3d) 337 (F.C.A.) at p. 346, reviewed the meaning of the phrase "distinctive character":

     The word "distinctive" is defined in s. 2 of the Act as follows:

"'distinctive'" in relation to a trade mark means a trade mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them."

     The word "character" is defined in its most relevant sense in the Shorter Oxford Dictionary, 3rd ed., under the heading of figurative senses as: 1. a feature, trait, characteristic; 2. essential peculiarity, nature, sort.

     Thus, I think that it can be said that in reference to trade marks, the term "distinctive character" means those trade marks which have the traits or characteristics of distinctive trade marks. To revert to the definition, set forth above, the characteristic of distinctive trade marks in Canada is that they actually distinguish the wares or services of the owner from the wares or services of others or are adapted to distinguish them. To put it another way, if a mark to some extent in fact distinguishes the wares or services of the owners from those of others, the mark is not without distinctive character. In the context of this case, the trade mark being descriptive, it may not be sufficiently distinctive to have acquired a secondary meaning in Canada to satisfy the definition of distinctive. None the less, it may have some distinctiveness. If that is so, it is not without distinctive character in Canada. [Emphasis in original.]

[21] However the onus on the applicant remains a heavy one. Urie J. went on at p. 347 to state:

     The onus resting on such a claimant was succinctly put by Cattanach J. in Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. and Registrar of Trade Marks (1971), 1 C.P.R. (2d) 155, [1971] F.C. 106, when he said at p. 172:

"It remains for me to assess the probative value of such evidence. In so doing I am conscious that the onus on a person contending that a trade mark which is descriptive or laudatory of his wares has come to actually distinguish those wares is a heavy one and that onus is increased by the adoption of a work which lacks inherent distinctiveness."

     I recognize that that case as well as Carling Breweries Ltd. v. Molson Cos. Ltd. et al. (1984), 1 C.P.R. (3d) 191 at pp. 196-8 inclusive, dealt with the issue of "distinctiveness" per se and not that of "distinctive character" but I am of the opinion that the onus is no less stringent in the latter instance.

[22] I am satisfied in the matter before me that the applicant has established that the trade-mark in Canada is not without distinctive character having regard to all the circumstances of the case, including the 20 years that it has been used in the United States.

 [23] In this case the applicant submitted there was no need for the mark to be have been used or made known in Canada under this section. However, I disagree, since the language of the provision explicitly uses the words "in Canada", stating that a trade-mark is registrable if "in Canada . . . it is not without distinctive character". In my view, this language suggests a requirement of at least some knowledge of the mark in Canada. Knowledge or use exclusively in another country would be insufficient.

[24] In this case, however, the applicants have introduced evidence of spillover advertising into Canada. They have given numerous examples of advertising which would have been seen in Canada, including advertising on flights to and from Vancouver, radio advertising heard in Canada, and newspaper inserts in Vancouver and Toronto newspapers. Further, it seems that this advertising has reached Canadians, given the volume of customer inquiries the company has received from Canada. I find that all the evidence presented by the applicant meets the onus that the mark is not without distinctive character in Canada.”

 

There are no set parameters to determine if the evidence filed is sufficient to support the contention that a mark is not without distinctive character. An analysis on a case-by-case basis seems to be the right approach. Case law can be instructive where the details of the evidence were provided and the conclusion reached was that such evidence fell short of meeting the requirements of Section 14(1)(b). Using this comparative analysis approach, I shall refer to the following extracts of Board’s Member Mr. D. J. Martin in Holiday Juice Ltd. v. Sundor Brand Inc. (1990) 33 C.P.R. (3d) 509:

“The W.R. Grace decision is also noteworthy for its clarification of the onus or burden on the applicant respecting the s. 14 issue. At p. 347 of the reported decision, Mr. Justice Urie states as follows:

          The affidavit evidence of various users of the heat shrinkable, thermoplastic bags in the food industry in Canada, to some extent supports this usage but falls short, in my opinion, of establishing the use of the trade mark for a period of time which would discharge the heavy burden resting on the user of a descriptive mark from not only establishing that his mark has become distinctive in association with his wares, but has acquired even a distinctive character sufficient to support a claim under para. 14(1)(b).

He went on to refer to another court decision and stated as follows:

          I recognize that that case as well as Carling Breweries Ltd. v. Molson Cos. Ltd. et al. (1984), 1 C.P.R. (3d) 191 at pp. 196-8 inclusive, dealt with the issue of "distinctiveness" per se and not that of "distinctive character" but I am of the opinion that the onus is no less stringent in the latter instance.

In light of the above, I find that the Leete affidavit is far from sufficient to meet the requirements of s. 14(1)(b) of the Act. Mr. Leete attests to sales figures for the applicant's product totalling approximately $500,000 to $600,000 for the three or four-year period prior to the applicant's filing date. Sales of this magnitude would appear to be far from sufficient to satisfy the "heavy burden" on the applicant.”

 

The Applicant’s evidence summarized above falls short of these parameters that were judged to be insufficient by the Registrar to establish that a mark was not without distinctive character in Canada. As such I have no alternative but to conclude that the Applicant did not discharge its onus to prove that the Mark was not without distinctive character at either the date of filing of the application or at the date of my decision.

 

Having already ruled that the Mark is descriptive, it is therefore not adapted to distinguish the Wares of the Applicant. [See General Foods Inc. v. Hills Bros. Coffee, Inc. (1984) 2 C.P.R. (3d) 352 and Novopharm Ltd. v. Wellcome Foundation Ltd.(1997) 81C.P.R. (3d)567]

 

I wish to point out that an argument could be made that by filing an amended application wherein the Applicant wishes to rely for the first time on Section 14 of the Act, such later date (in our case June 20, 1996) should be used as the relevant date to determine if the Mark is not without distinctive character. I do not need to address this issue as I already concluded that as of the date of my decision, which is a later date, the Applicant failed to discharge its onus under Section 14.

 

Therefore I maintain grounds of opposition 3(b), 5 and 6 described above and even though it would be sufficient to dispose of this matter I will however address summarily the remaining grounds of opposition.

 

The Opponent failed to adduce any evidence to support the ground of opposition described in paragraph 3(d) above and as such I dismiss this ground of opposition for failure by the Opponent to meet its initial onus of proof.

 

The Opponent argues in its written submissions that the evidence filed through the second affidavit of Ms. Tellier shows that the Mark is of a nature to deceive the public as the Mark is known in Canada, in the normal course of trade, to identify the quality and the place of origin of the Wares and as such cannot be adopted as a trade-mark in association with fruit juices. I did reject this evidence from the record and as such the ground of opposition described in paragraph 3(c) above is also dismissed.

 

Conclusion

 

Therefore, having been delegated authority by the Registrar of Trade-marks by virtue of Section 63(3) of the Act, I refuse the application to register the Mark, the whole pursuant to Subsection 38(8) of the Act.

 

 

DATED, IN MONTREAL, QUEBEC, THIS 21st DAY OF SEPTEMBER 2004.

 

 

 

Jean Carrière,

Member,

Trade-marks Opposition Board