LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 156
Date of Decision: 2012-08-29
IN THE MATTER OF AN OPPOSITION by Thai President Foods Public Company Limited to application No. 0807217 for the trade-mark MA·MA in the name of Nisshin Seifun Group Inc.
[1] On February 9, 2007, Nisshin Seifun Group Inc. (the Applicant) filed an application, based on use and registration in the United States of America, to extend the statement of wares covered by registration No. TMA677,617 for the trade-mark MA·MA (the Mark) to “pasta”. Such registration presently covers “pasta sauce”.
[2] The application was advertised for opposition purposes in the Trade-marks Journal of May 27, 2009.
[3] On July 27, 2009, Thai President Foods Public Company Limited (the Opponent) filed a statement of opposition. The Applicant thereafter filed a counter statement in which it denied the Opponent’s allegations. The Applicant concurrently requested that the Registrar make an interlocutory ruling on the sufficiency of certain paragraphs of the statement of opposition. By letter dated February 5, 2010, paragraph 2(d) of the statement of opposition was struck by the Registrar. The remaining grounds of opposition can be summarized as follows:
1. the application for the Mark does not comply with the requirements of section 30(d) of the Trade-marks Act, RSC 1985, c T-13 (the Act) since at the date of filing, the Applicant had not used the Mark in the United States in association with the wares “pasta” as claimed in the application;
2. the application for the Mark does not comply with the requirements of section 30(d) of the Act since at the date of filing, the United States was not a “country of origin” of the Applicant as claimed in the application;
3. the application for the Mark does not comply with the requirements of section 30(e) of the Act since the Applicant had not used and indeed has no genuine intention to use the Mark in Canada with the wares “pasta” claimed in the application;
4. the Mark is not registrable pursuant to section 12(1)(d) of the Act since it is confusing with the trade-mark MAMA & Design (shown below) registered under No. TMA557,343, which is owned by the Opponent and used by the Opponent and/or its Canadian licensee(s):
The Canadian Trade-marks database indicates that:
The translation as provided by the [Opponent] of the Chinese and Thai characters is Mama and the transliteration as provided by the [Opponent] of these characters is Ma-Ma
Such registration further claims use of the mark since at least as early as April 10, 1991 in association with the following wares:
Flavoured instant noodles, flavoured rice, vermicelli, instant boiled rice, milled rice, macaroni, spaghetti and biscuits
5. the Applicant is not the person entitled to registration of the Mark pursuant to section 16(2)(a) of the Act since at the date of filing of the application, the Mark was confusing with the trade-marks MAMA; MAMA BRAND and MAMA & Design which had been previously used and made known in Canada by the Opponent and/or its Canadian licensee(s) in association with food products including the wares listed in the aforementioned registration;
6. the Mark is not distinctive of the wares “pasta” of the Applicant since it is not adapted to distinguish the Applicant’s wares from the wares of the Opponent, in view of the Opponent’s prior use of the trade-marks MAMA, MAMA BRAND and MAMA & Design.
[4] In support of its opposition, the Opponent filed the affidavit of Saran Na Songkhla, a legal counsel employed by the Opponent, sworn January 8, 2010. The Opponent also filed two “accompanying statements from Canadian distributors” purporting to confirm that the Opponent’s MAMA Brand Instant Noodle product line has been marketed and sold in Canada. However, as objected to by the Applicant and conceded by the Opponent at the oral hearing held in this matter, such “statements” do not comply with the provisions of section 41 of the Trade-marks Regulations, SOR/96-195 (the Regulations), which provides that the Opponent’s evidence must be submitted by way of affidavit or statutory declaration. Accordingly, I will disregard them. In any event, my disregarding of those two documents has no impact on my decision.
[5] In support of its application, the Applicant filed the affidavit of Thelma Thibodeau, a self-employed trade-mark agent, sworn October 12, 2010. The Applicant also filed in accordance with section 54 of the Act, a certified copy of aforementioned registration No. TMA677,617 for the Mark.
[6] Both parties filed written arguments and were represented by counsel at an oral hearing.
Onus
[7] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidentiary 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 [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); and Dion Neckwear Ltd v Christian Dior, SA et al (2002), 20 CPR (4th) 155 (FCA)].
[8] Applying these principles to the instant case, the section 30 grounds of opposition can be summarily dismissed as follows:
• the section 30(d) grounds of opposition fail on the basis that the Opponent has not met its initial evidentiary burden in respect thereof. There is no evidence that puts into issue the correctness of the use and registration abroad basis claimed in the Applicant’s application. I further note that the Opponent made no representation with respect to these particular grounds of opposition either in its written argument or at the hearing; and
• the section 30(e) ground of opposition, as pleaded, does not raise a proper ground of opposition since the Applicant’s application is not based on proposed use of the Mark in Canada. Rather, the application is based solely on the use and registration abroad basis (covered by section 30(d) of the Act). I further note that the Opponent made no representation with respect to this particular ground of opposition either in its written argument or at the hearing.
[9] I shall now turn to the remaining grounds of opposition.
Section 12(1)(d) ground of opposition
[10] The Opponent has pleaded that the Mark is not registrable having regard to the provisions of section 12(1)(d) of the Act in that it is confusing with the trade-mark MAMA & Design registered under No. TMA557,343.
[11] I have exercised the Registrar’s discretion to confirm that this registration is in good standing as of today’s date, which date is the material date to assess a section 12(1)(d) ground of opposition [see Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)].
[12] As the Opponent’s evidentiary burden has been satisfied, the Applicant must therefore establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Mark and the Opponent’s MAMA & Design mark.
[13] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[14] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks 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. This list is not exhaustive; all relevant factors are to be considered, and are not necessarily attributed equal weight [see Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée (2006), 49 CPR (4th) 401 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) for a thorough discussion of the general principles that govern the test for confusion].
6(5)(a) – the inherent distinctiveness of the trade-marks and the extent to which they have become known
[15] The Applicant’s Mark and the Opponent’s MAMA & Design mark are both inherently distinctive as they are not descriptive or suggestive of their associated wares.
[16] The strength of a trade-mark may be increased by means of it becoming known through promotion or use. However, there is no evidence that the Applicant’s Mark has been used in Canada pursuant to section 4 of the Act or that it has become known to any extent whatsoever in Canada. Turning to the Opponent’s MAMA & Design mark, the Songkhla affidavit establishes the following.
[17] Mr. Songkhla first briefly goes over the history of the Opponent. He states that the Opponent was founded on April 18, 1972 in Thailand and that since that date it has continuously sold packaged noodles and food products “under the MAMA brand name(s)” [paragraphs 2 and 3 of his affidavit; Exhibits “A” and “B”]. The Applicant pointed out at the oral hearing that the copies of Certificate of Incorporation (presumably in Thai characters) and English translation thereof attached to Mr. Songkhla’s affidavit as Exhibit “A” indicate that the Opponent was registered as “a public company limited on May 16, 1994”, which date would apparently contradict the aforementioned incorporation date. I disagree. The printout from the Opponent’s website (www.mama.co.th) attached as Exhibit “B” supports Mr. Songkhla’s statement as to the Opponent’s incorporation date in that it indicates that the Opponent was established in 1972 and that it “unveiled its new status as a Public Company on May 16, 1994”.
[18] Mr. Songkhla explains that the Opponent manufactures and sells a wide variety of instant noodle products, rice soup, fried rice, pre-cooked rice porridge, fruit juice, biscuits, cookies, crackers and wafer products. The Opponent has over 3 000 employees in one office and three factories in Thailand. The Opponent is further at the head of a group of companies, as more fully described in another printout from the Opponent’s website attached as Exhibit “C” to Mr. Songkhla’s affidavit [paragraph 4 of his affidavit].
[19] Mr. Songkhla attaches as Exhibit “E” to his affidavit a photocopy of a printout from the Opponent’s Annual Report 2005-2008 showing total sales for fiscal years 2005-2008. He further provides the Opponent’s worldwide sales and Canadian Export sales for the same years, the total of which exceeds 133 million dollars (CAD) and 6 million dollars (CAD) respectively [paragraph 5 of his affidavit]. However, no breakdown of annual sales for each of the Opponent’s products is provided.
[20] Concerning more particularly the Opponent’s sales in Canada, Mr. Songkhla states that besides instant noodle products, the Opponent also sells fruit juice, instant fried rice, instant rice porridge cup (Jok Cup) and instant rice noodles in Canada. He further states that all of the Opponent’s products “prominently bear the MAMA trade-mark as does the packaging in which they are sold” [paragraphs 4 and 6 of his affidavit]. However, upon review of the various exhibits attached to Mr. Songkhla’s affidavit, I note that the “MAMA Brand” appears to relate only to the Opponent’s instant noodle product line. I further note that the Opponent appears to use different variants of the “MAMA Brand” (including Chinese and/or Thai / Latin / Arabic characters, etc.), depending on the countries wherein the “MAMA Brand” instant noodle product line is distributed and sold, as illustrated by the list of trade-mark registrations secured by the Opponent worldwide provided by Mr. Songkhla [paragraph 7 of his affidavit] - the MAMA & Design trade-mark, as shown in registration No. TMA557,343, corresponding to the variant generally registered by the Opponent in the Western world wherein the Latin alphabet is the main writing system in use. I shall mention at this point of my review of Mr. Songkhla’s affidavit that instant noodles are described by the Opponent as its main products. The Opponent would apparently be the premiere instant noodle manufacturer in Thailand and rank top ten in the world with that product. More particularly, export quantity of “MAMA Brand” instant noodles soups would apparently amount to five million packages per day [see Exhibits “B” and “E” described above, as well as Exhibit “D” (that includes an excerpt from Wikipedia), and Exhibit “H” (that consists of a copy of an excerpt from the Department of Intellectual Property (DIP) of Thailand, showing that the trade-mark MAMA is listed as a well known mark at the DIP)].
[21] Reverting to the Opponent’s use of the MAMA & Design mark in Canada, Mr. Songkhla states that the Opponent’s customers in Canada include Loblaws Inc., Thai United Food Trading Ltd., Dong Phuong Oriental Market Ltd. and Thai Indochine Trading Inc. [paragraph 6 of his affidavit]. He attaches to this effect as Exhibit “K” (that was inverted with Exhibit “L”), photocopies of a representative sampling of the shipping documents and invoices issued by the Opponent to these retailers. The invoices pertain among others to the “MAMA BRAND” Instant Noodles (Chicken / Shrimp / Pork Flavor), the “MAMA BRAND” Instant Rice Vermicelli, the “MAMA BRAND” Instant Fried Rice, etc. Mr. Songkhla also attaches as Exhibit “N” photographs showing some of the MAMA instant noodle products displayed in a food fair in Canada, depicting the MAMA & Design mark. He also attaches as Exhibit “M” “printouts showing the products which were featured on [the Opponent’s] website.” Upon review of this last exhibit, I note that it consists of specimens of labels, as affixed to the Opponent’s products. While not all of these specimens display the exact trade-mark MAMA & Design as registered, such mark is clearly displayed on the labels pertaining to the “Oriental Style Instant Noodles” (Chicken / Shrimp / Pork Flavor) and the “Oriental Style Instant Rice Vermicelli Clear Soup”. The labels describe such products as a product of Thailand for export only and clearly identify the Opponent as manufacturer.
[22] To sum up, I am satisfied from my review of Mr. Songkhla’s affidavit that the Opponent has been selling instant noodle products under the MAMA & Design trade-mark in Canada for some time. While the evidence of use of the MAMA & Design trade-mark provided by the Opponent in this proceeding does not establish continuous use of the mark in Canada in association with all of the registered wares listed in the Opponent’s registration since the date of first use claimed in such registration, the sales figures provided for the years 2005-2008 (the majority of which may fairly be attributed to the Opponent’s instant noodle products as per my review above and as further put forward by the Opponent at the oral hearing) together with the statements of facts and exhibits discussed above, support the Opponent’s contention that its MAMA & Design mark has been used in Canada since at least as early as the mid 2000s and become known to some extent in Canada in association with instant noodle products.
[23] In view of the foregoing, the overall consideration of the inherent distinctiveness of the parties’ marks and the extent to which they have become known favours the Opponent.
6(5)(b) – the length of time the trade-marks have been in use
[24] In view of my comments above, this factor also favours the Opponent.
6(5)(c) and (d) – the nature of the wares, services or business; and the nature of the trade
[25] Turning to the nature of the wares and the nature of the trade, I must compare the Applicant’s statement of wares with the statement of wares in the Opponent’s registration [see Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); and Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)].
[26] I agree with the Opponent that the parties’ wares clearly overlap. As indicated above, the Opponent’s registration covers among others, flavoured instant noodles, flavoured rice, vermicelli, macaroni and spaghetti whereas the Applicant’s applied for wares cover “pasta”. The Applicant does not apparently contradict that point. However, it contends that the Opponent’s evidence of use of the MAMA & Design trade-mark filed through the affidavit of Mr. Songkhla is essentially limited to instant noodles, and that although they can be considered as related food products, “instant noodles” and “pasta” are not identical products. The Applicant’s contention does not convince me.
[27] First, the fact that the Opponent’s evidence of use of the MAMA & Design mark is essentially limited to its instant noodle product line is not determinative. As indicated above, it is the statement of wares covered by the Opponent’s registration that must be considered. Second, it is not necessary that the parties’ wares be identical. As stated in section 6(2) of the Act, confusion may occur “whether or not the wares or services are of the same general class”. Third, there is no clear distinction between the wares “instant noodles” and “pasta” since noodles are a type of pasta, as per the dictionary definitions reproduced below. Indeed, I have exercised the Registrar’s discretion to refer myself to dictionaries to determine the meaning of a word and found the following definitions from the Canadian Oxford Dictionary:
- Pasta: n. 1 a type of dough extruded or stamped into various shapes for cooking, e.g. lasagna or spaghetti. 2 a dish made from this.
- Noodle: n. 1 a thin, flat strip of pasta used in soups etc.
[28] In the absence of any evidence to the contrary, there is a potential overlap in the trades of the parties. As per my review of Mr. Songkhla’s affidavit, the Opponent’s wares are sold through grocery stores and other retail food stores. Presumably, the Applicant’s wares will or could be sold through the same types of outlets.
6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[29] The Applicant contends that the parties’ marks can easily be distinguished, at least from a visual point of view. On one hand, the Opponent’s trade-mark is a design mark composed of different types of characters, whereas the Mark is composed of two syllables “MA” “MA”, in Latin character, separated by a dot. The Applicant further contends that an important aspect to take into consideration is the dominant design element of the Opponent’s trade-mark.
[30] The Opponent contends for its part that the design element does not change the fact that the average Canadian consumer would still refer to the Opponent’s trade-mark as the “MAMA” trade-mark. I agree.
[31] As indicated above, the translation of the Chinese and Thai characters in the Opponent’s MAMA & Design trade-mark is “Mama” and the transliteration of these characters is “Ma-Ma”. Thus, if one considers the Canadian average consumer of the Opponent’s wares to be one who can read and understand Chinese or Thai characters, as the Opponent’s evidence may suggest given that the Opponent’s customers in Canada include Thai United Food Trading Ltd., Dong Phuong Oriental Market Ltd. and Thai Indochine Trading Inc. [see Cheung’s Bakery Products Ltd v Saint Honore Cake Shop (2011), 93 CPR (4th) 438 (TMOB); and Cheung Kong (Holdings) Ltd v Living Realty Inc (1999), 4 CPR (4th) 71 (FCTD)], that consumer would still refer to the Opponent’s trade-mark as the “MAMA” trade-mark. On the other hand, if one considers that Canadian average consumer to be one who cannot read or understand Chinese or Thai characters, as the Opponent’s evidence suggests given that the Opponent’s customers also include grocery stores, such as Loblaws Inc., that consumer would still refer to the Opponent’s trade-mark as the “MAMA” trade-mark, relying for so doing on the Latin characters in the mark rather than on the Chinese and Thai characters, the importance of which is attenuated given their absence of meaning for English and/or French-speaking consumers.
[32] This brings me to consider as an additional surrounding circumstance, the state of the register evidence submitted by the Applicant through the Thibodeau affidavit.
State of the register evidence
[33] State of the register evidence is introduced to show the commonality or distinctiveness of a mark or portion of a mark in relation to the register as a whole. Evidence of the state of the register is only relevant insofar as inferences may be made on it concerning the state of the marketplace, and inferences about the state of the marketplace can only be drawn when a significant number of pertinent registrations are located [see Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD); and Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)].
[34] Ms. Thibodeau states that she personally conducted an online search on the Canadian Trade-marks database. The scope of her mandate was to print the particulars of the trade-mark registrations listed at paragraph 5 of her affidavit, which include the following:
- Casa di Mama (TMA670,676, registered on August 22, 2006) for wares including pizzas; pasta; pasta meals made from …; sweet and savoury sauces;
- JUST LIKE MAMA’S (TMA543,531, registered on April 6, 2001) for Fresh or frozen prepared dinners;
- MAMA BRAVO (TMA406,448, registered on December 18, 1992) for Spaghetti sauce, tomato sauce;
- Mama Mucci’s Pasta (TMA676,230, registered on November 2, 2006) for Dry and Fresh pasta, spagetti [sic], macaroni; …; pasta sauces;
- MAMA THELKA (TMA542,609, registered on March 19, 2001) for wares including sauces, namely tomato, pasta, pizza, hot and chili sauces;…; pasta and rice;
- MAMMA ASSANTE (TMA631,763, registered on February 2, 2005) for wares including pasta (“pâtes alimentaires”) and pasta sauces (“sauces pour pâtes”);
- MAMMA G’S (TMA523,466, registered on February 21, 2000); MAMMA GRAZZI’S and MAMMA GRAZZI’S & Design (TMA523,384 and TMA523,383, both registered on February 18, 2000) for wares including pasta, noodles, sauces;
- MAMMA LUCIA (TMA480,499, registered on August 14, 1997) for wares including rice vermicelli, tomato sauces and tomato paste, spaghetti and pasta;
- MAMMA MIA (TMA452,931, registered on January 26, 1996) for wares including pasta;
- MAMMA TERESA (TMA305,598, registered on August 9, 1985) for Sauces;
- MAMMA’S PIZZA (TMA123,742, registered on September 29, 1961); MAMMA’S PIZZA & Design (TMA609,091, registered on April 30, 2004); and MAMA’S PIZZA (TMA347,810, registered on November 10, 1988) all for wares including pastas.
[See Exhibit TT-1 attached to her affidavit].
[35] Ms. Thibodeau further states that on August 24, 2010, she also visited a Walmart store located in Montreal, and purchased among others, MAMEE branded instant noodles, as per copy of the purchase receipt attached to her affidavit as Exhibit TT-2, and digital photograph of the front and back of the packaging of such product attached as Exhibit TT-3.
[36] The Applicant submits that it is reasonable to conclude from such evidence that the words “MAMA”, “MA-MA” or “MAMMA” have been commonly adopted in the food trade, presumably because they suggest the idea of mothers. The Applicant submits that it may therefore be inferred that customers of these products are accustomed to making the appropriate distinctions between the various “MAMA” (and variations thereof) trade-marks in the marketplace, by paying more attention to any small differences between marks. I am in general agreement with that position of the Applicant as far as the dictionary word “MAMA” and its informal variant “MAMMA” are concerned.
Previous registration for the trade-mark MA·MA
[37] The Applicant contends that another additional circumstance to take into consideration is the fact that it has successfully obtained the registration of its trade-mark MA·MA for pasta sauce (registration No. TMA677,617). However, there is no evidence that the parties’ marks have coexisted in the marketplace. More importantly, the statement of wares covered by the instant application differs from the one covered by TMA677,617. Section 19 of the Act does not give the owner of a registration the automatic right to obtain any further registration no matter how closely they may be related to the original registration [see Coronet-Werke Heinrich Schlerf GmbH v Produits Menagers Coronet Inc (1984), 4 CPR (3d) 108 (TMOB); Groupe Lavo Inc v Proctor & Gamble Inc (1990), 32 CPR (3d) 533 (TMOB)]. Accordingly, I am not prepared to accord significant weight to this surrounding circumstance.
Conclusion re likelihood of confusion
[38] As indicated above, section 6(2) of the Act does not concern the confusion of the marks themselves, but confusion of wares and services from one source as being from another source. In the instant case, the question posed is whether an individual who has an imperfect recollection of the Opponent’s MAMA & Design mark as applied to the Opponent’s registered wares, would, as a matter of first impression and imperfect recollection, be likely to conclude that the Applicant’s pasta are manufactured or sold by the Opponent.
[39] While I agree with the Applicant that it may be inferred from Ms. Thibodeau’s affidavit that customers of food products are generally accustomed to making the appropriate distinctions between the various “MAMA” trade-marks in the marketplace by paying more attention to any small differences between marks, I am not satisfied that the Applicant has sufficiently distinguished its Mark from that of the Opponent.
[40] The parties’ marks are identical in sound. They both suggest the idea of “mother”, although arguably less so for English and/or French-speaking consumers facing the Applicant’s Mark given that the two syllables “MA” “MA” are separated by a dot. Visually, the spelling of the Applicant’s Mark arguably evokes an Oriental connotation, as that of the Opponent’s mark, which is characterized by the presence of Chinese and Thai characters. Contrary to the various “MAMA” trade-marks revealed by the state of the register evidence, the Mark does not include any additional element apart from the word “MAMA” that may serve to distinguish it from the Opponent’s MAMA & Design mark. As such, I find that the state of the register evidence is not sufficient to outweigh the overall consideration of the section 6(5)(a) to (e) factors discussed above, which all favour the Opponent. At best for the Applicant, I find that the state of the register evidence brings back the balance of probabilities as to the likelihood of confusion as to the source of the parties’ wares to a break even point. As the onus is on the Applicant to show, on a balance of probabilities, that there is no reasonable likelihood of confusion, I must find against the Applicant.
[41] Accordingly, the section 12(1)(d) ground of opposition succeeds.
Non-entitlement ground of opposition
[42] The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark having regard to the provisions of section 16(2)(a) of the Act in that at the date of filing of the Applicant’s application, the Mark was confusing with the trade-marks MAMA; MAMA BRAND; and MAMA & Design, which had been previously used and made known in Canada by the Opponent and/or its Canadian licensee(s) in association with food products, including “Flavoured instant noodles, flavoured rice, vermicelli, instant boiled rice, milled rice, macaroni, spaghetti and biscuits”.
[43] An opponent meets its evidentiary burden with respect to a section 16(2)(a) ground if it shows that as of the date of filing of the Applicant’s application, its trade-mark had been previously used or made known in Canada and had not been abandoned as of the date of advertisement of the Applicant’s application [section 16(5) of the Act]. As per my review of Mr. Songkhla’s affidavit above, the Opponent has met its evidentiary burden with respect to the use of the MAMA & Design mark. Given my finding below, I do not need to determine if the Opponent has met its burden with respect to the use or making known in Canada of the trade-marks “MAMA” and “MAMA BRAND”.
[44] The difference in relevant dates does not substantially affect my analysis above under the section 12(1)(d) ground of opposition. That being so, my finding made above concerning the likelihood of confusion between the Opponent’s MAMA & Design trade-mark and the Mark remain applicable. Accordingly, the section 16(2)(a) ground of opposition succeeds with respect to the Opponent’s MAMA & Design trade-mark.
Non-distinctiveness ground of opposition
[45] The Opponent has pleaded that the Mark is not distinctive of the wares “pasta” since it is not adapted to distinguish the Applicant’s applied for wares from the wares of the Opponent, in view of the Opponent’s prior use of the trade-marks MAMA, MAMA BRAND and MAMA & Design.
[46] An opponent meets its evidentiary burden with respect to a distinctiveness ground if it shows that as of the filing date of the opposition, in this case July 27, 2009, its trade-mark had become known to some extent at least to negate the distinctiveness of the applied-for mark [see Motel 6, Inc v No. 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD)]. The Opponent has met its evidentiary burden with respect to its MAMA & Design mark. Given my finding below, I do not need to determine if the Opponent has met its burden with respect to its trade-marks “MAMA” and “MAMA BRAND”.
[47] The difference in relevant dates does not substantially affect my analysis above under the section 12(1)(d) ground of opposition. That being so, my finding made above concerning the likelihood of confusion between the Opponent’s MAMA & Design trade-mark and the Mark remain applicable. Accordingly, the non-distinctiveness ground of opposition succeeds with respect to the Opponent’s MAMA & Design trade-mark.
Disposition
[48] In view of the foregoing and pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.
______________________________
Annie Robitaille
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office