IN THE MATTER OF AN OPPOSITION by National Cheese Company Limited to application No. 661,316 for the trade-mark PICCOLO’S PASTA filed by VS Services Ltd.
On July 4, 1990, the applicant, VS Services Ltd., filed an application to register the trade-mark PICCOLO’S PASTA based on use in Canada since as early as 1989 for the ware: “pasta”.
The application was advertised for opposition purposes in the Trade-Marks Journal of May 29, 1991, and the opponent, National Cheese Company Limited, filed a statement of opposition on June 27, 1991, a copy of which was forwarded to the applicant on July 30, 1991.
The first ground of opposition is that the trade-mark is not registrable pursuant to s.38(2)(b) and s. 12(1)(d) of the Trade-Marks Act, R.S.C. 1985 c. T-13 (hereinafter the Act) as it is confusing within the meaning of s.6 of the Act with the opponent’s trade-mark PICCOLO registered under No. 151,309 for use with cheese. As its second ground of opposition, the opponent maintains that the applicant is not the person entitled to the registration of the trade-mark because the trade-mark applied for, at its alleged date of first use, was confusing with the opponent’s trade-mark within the meaning of s.6 of the Act. The opponent alleges as its third ground of opposition that the trade-mark PICCOLO’S PASTA is neither distinctive of the wares of the applicant nor can it serve to distinguish the wares of the applicant from those of the opponent pursuant to s.38(2)(d) and s.2 of the Act.
The applicant filed and served a counterstatement on August 30, 1991, in which it denied the allegations asserted by the opponent in its statement of opposition. As its evidence, the opponent filed the affidavits of Salvatore Lettieri and Jennifer N. Garrett. The affidavits of Robert E. Boone, Marie Burrell, Philip Lapin, and Maureen Helt were submitted as the applicant’s evidence. Both the opponent and the applicant filed written arguments and both were represented at an oral hearing.
In its written submissions, the opponent argues that the applicant’s evidence is not admissible. It argues that the failure of the applicant to have requested an extension of time to file evidence before the issuance of the Office letter of March 31, 1993, was reasonably avoidable and therefore ought not to have been granted pursuant to s.47(2) of the Act. However, that extension was granted on the basis of the applicant’s submission that the opponent had consented to the extension request. In any event, as the applicant pointed out at the oral hearing, the decision to grant an extension of time to file evidence has been made and there is no authority in law for the Registrar to review the exercise of his discretionary powers unless there is a clear error of fact or law on the face of the record. In the present case, there is no clear error in my view to justify a reconsideration of the Registrar’s decision.
Regarding the first ground of opposition, the material date to consider the issue of confusion with a registered trade-mark pursuant to s. 12(1)(d) of the Act is the date of my decision (see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.)). The onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. In applying the test for confusion set forth in s.6(2) of the Act, consideration is to be given to all of the surrounding circumstances, including the following specifically set forth in s.6(5) of the Act: a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; b) the length of time the trade-marks have been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. I will review the evidence in light of these criteria, and any other surrounding circumstances.
A) The inherent distinctiveness of the trade-marks and the extent to which they have become known
I am not satisfied that the opponent’s trade-mark PICCOLO possesses any apparent significance in relation to cheese or pasta. I therefore conclude that the opponent’s mark PICCOLO does possess some measure of inherent distinctiveness as does the applicant’s trade-mark PICCOLO’S PASTA.
.
The extent to which the trade-marks have become known in Canada appears to favour the opponent. Mr. Lettieri states that the sales of the cheese in association with the opponent’s PICCOLO trade-mark across Canada in the years preceding the date of the affidavit were approximately $500,000 per annum. The applicant’s evidence, on the other hand, shows sales for pasta meals sold in association with the trade-mark PICCOLO’S PASTA to be approximately $200,000 for the fiscal years 1990 and 1991.
B) Length of time trade-marks have been in use
The Lettieri affidavit further asserts that the opponent has used its PICCOLO trade-mark in association with cheese for over 20 years preceding the date of the affidavit. It has therefore
been in use for a longer period of time than the applicant’s mark which is alleged to have only been in use since July, 1989.
C) The nature of the wares
In examining the likelihood of confusion between the trade-marks at issue, the proper test to be applied is whether there is a real likelihood that the average consumer of cheese and pasta would believe the wares associated with the trade-marks in issue were manufactured or sold by the same person. The applicant submits that it uses the trade-mark in association with ready-to-eat pasta dishes commonly sold at cafeterias. It argues that its wares are of the type which are prepared for consumption on the same day they are made, and as such, they are sufficiently different than the “packaged/processed cheese” of the opponent. Further, it submits that the opponent does not sell pasta under the trade-mark PICCOLO.
In assessing the issue of confusion under s.12(1)(d), that which is relevant is the statement of wares covered in the application and not the actual wares sold to date in association with the applicant’s trade-mark in the marketplace (see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987) 19 C.P.R. (3d) 3 (F.C.A.) (hereinafter “Mr. Submarine”); Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R. (3d) 110 (F.C.A.) (hereinafter Henkel); and Miss Universe Inc. v. Bohna, 58 C.P.R. (3d) 381 (F.C.A.) (hereinafter Miss Universe). In the present case, the applicant’s application is filed only for the ware “pasta”. The applicant has not restricted its statement of wares to “ready to eat pasta sold in cafeterias”. Further, the opponent’s registration is not limited with respect to cheese. In my view, the average consumer may consider cheese as being for use in connection with pasta. Consequently, I conclude that the applicant’s and the opponent’s wares are related.
D) Nature of trade
With respect to the channels of trade one would normally associate with the wares of the parties, I consider there to be considerable overlapping between the opponent’s cheese products and the applicant’s pasta products. As the Garrett affidavit submitted on behalf of the opponent has illustrated, cheese and cooked pasta dishes are commonly sold and advertised side by side in supermarkets, delicatessens, hospital canteens and food vending machines. The average consumer would therefore normally expect pasta of any kind to be sold in stores or locations where cheese is sold as well. If such were not the case, the burden was on the applicant to adduce evidence to support that conclusion.
While the applicant’s evidence points to the fact that its current use of its trade-mark in association with its wares differs from the manner of use by the opponent of its trade-mark, it is not the actual use by the parties of their respective trade-marks in the marketplace as of the material date which is of relevance to the determination of the nature of the trade when considering the issue of confusion in opposition proceedings in respect of a s.12(1)(d) ground. Rather, as decided by the Federal Court of Appeal in Mr. Submarine, supra, Henkel, supra, and Miss Universe, supra, it is the statement of wares covered in the applicant’s application and those in the opponent’s registration which determine the nature of the trades to be considered when assessing the issue of confusion. The courts have further held that in attempting to establish a likelihood of confusion, it is not necessary to prove that the wares of both parties are sold in the same outlets, as long as the parties are entitled to do so (see Cartier Men’s Shops Ltd. v. Cartier Inc. (1981), 58 C.P.R. (2d) 68) .
In the present case, the wares of both parties are products of the food industry and neither the applicant’s application nor the opponent’s registration restricts the nature of trade for the wares listed. As such, there exists the possibility that these wares would be made available to consumers in many of the same outlets. Further, as the opponent’s evidence shows, there is a real potential that these wares would be sold side by side. In my view, if the wares of both parties were sold in the same types of establishments under similar but competing trade-marks, the average consumer may be confused as to the source or origin of the wares.
E) Degree of resemblance
When examining the degree of resemblance between two marks, the marks should be looked at in their totality and assessed for their effect on the average consumer as a whole.
Although the marks are not to be dissected when determining matters of confusion, it has been held that the first portion of a trade-mark is most relevant for purposes of distinction (see Molson Companies Ltd. v. John Labatt Ltd. (1990), 28 C.P.R. (3d) 457). It has also been established that where the first and most important word in the mark which the applicant seeks to register is identical to the mark registered by the opponent, and there is doubt whether the registration of a trade-mark would cause confusion with an existing mark, the doubt must be resolved against the
newcomer (see Conde Nast Publications v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 at 187 (F.C.T.D.), (hereinafter Conde Nast)).
In the present case, the applicant’s mark PICCOLO’S PASTA contains the word PICCOLO’S which is almost identical to the opponent’s mark PICCOLO. Further, as the word PASTA in the applicant’s trade-mark also represents the applicant’s wares, the average consumer would be more inclined to focus on the only distinctive element of the mark, i.e. the word PICCOLO’S. In my view, the average consumer would therefore not likely distinguish between the opponent’s mark and the applicant’s mark. Consequently, I conclude that there is a significant degree of similarity in the sounding and the appearance of the trade-marks of the parties.
Additional surrounding circumstances
The applicant submits that a further surrounding circumstance for the Registrar to consider in the present case is the common use of the word PICCOLO in the restaurant trade. It introduces into evidence affidavits referring to use of the mark PICCOLO in association with restaurant services including: Piccolo Ristorante Italiano, Piccolo Grande and Piccolo’s Pizza and Pasta House. In my opinion, the existence of three restaurants carrying on business under the name PICCOLO is insufficient to allow me to conclude that there has been a widespread use of the mark PICCOLO in association with cheese or pasta in the food industry.
The applicant also submits that the Registrar should have regard to the fact that its mark has co-existed with the opponent’s mark for over six years with no evidence of confusion. However, it has not shown that the wares of the parties have actually been sold in the same outlets to any extent. In any event, the issue in this case is not whether there has been confusion but whether confusion is likely to occur. As stated in Conde Nast, supra, “the absence of proof of actual confusion having arisen is not necessarily conclusive of the issue that confusion is likely to arise”. Consequently, I do not conclude that the absence of actual confusion is a relevant circumstance and I find the length of time the marks have been in use favours the opponent.
In view of the reasons stated above, I am not satisfied that the applicant has met the legal burden upon it to show that there would be no reasonable likelihood of confusion between the trade-marks at issue, within the meaning of s.6 of the Act. Since it appears from an examination of all surrounding circumstances that the two marks are confusing, I view it unnecessary to
consider the opponent’s other grounds of opposition. Accordingly, and with the authority delegated to me under s. 63(3) of the Act, I refuse the applicant’s application pursuant to s.38(8) of the Act
DATED AT HULL, QUEBEC, THIS 28th DAY OF MAY, 1996.
Cindy R. Vandenakker
Hearing Officer
Trade-Marks Opposition Board