LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 174
Date of Decision: 2012-09-28
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Smart & Biggar against registration No. TMA691,826 for the trade-mark Upper Crust & Design in the name of SSP Financing UK Limited
[1] At the request of Smart & Biggar (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on July 22, 2010 to SSP Financing UK Limited (the Registrant), the registered owner of registration No. TMA691,826 for the trade-mark Upper Crust & Design (the Mark), shown below:
[2] The registration includes a colour claim: “the letters are in the color black, the circle is in the color yellow and the letters and circle are on white color background”.
[3] The Mark is registered for use in association the following wares:
(1) Cups, mugs, bowls and drinking
vessels; beverage glassware; lunchboxes; insulated containers for beverages and
foods; portable cool boxes; picnic baskets and picnic bags; clothing, namely
jackets, pants, shirts and caps; footwear, namely boots and shoes; uniforms;
overalls; work clothing; aprons; t-shirts; meat and meat products, namely
chicken legs, roast beef, ham and bacon, fish, namely fish sandwiches and fish
filets; seafood; poultry; preparations for making meals, namely cooked chicken
strips, cooked sausages, cooked chicken tikka, omelettes, carrot cakes, roasted
vegetables, cooked pieces of spicy pork meat, tuna in brine, tomato and onion
chutney, oregano, peppers, pepperoni, prawns, aubergines, courgettes, breads,
bagels, ciabatta, rolls, onions, mozzarella cheese, roast beef, lettuce, eggs,
cucumber, wipped cream, chives, tomatoes, cheddar cheese, brie cheese, bananas,
bacon, apples, coleslaw, feta chese and ham; sausages; burgers; hot dogs;
preserved, dried, canned and cooked fruits and vegetables and preparations made
therefrom; vegetarian foods, namely vegetable juice, vegetable oils and
vegetables; prepared vegetables; potatoes and foods made predominantly from
potatoes; salads; soups; pastes; pates; fillings and spreads; dairy products,
namely cheese, yoghurt, milk, and dairy based beverages; soya milk; desserts,
namely carrot cakes, brownies, croissants, danish pastries, muffins and fruit
sauce; puddings; eggs; edible oils and fats; nuts; fresh fruits and vegetables;
flowers and nuts; preparations for making non-alcoholic drinks, drinks, namely
chocolate powder, tea bags, coffee beans and coffee extracts; fruit juices and
vegetable juices; fruit flavoured beverages; mineral and aerated waters; water;
spring water; flavoured water; soft drinks; sparkling drinks; concentrates for
making such drinks.
(2) Prepared meals, namely hot and cold baquettes, with meat fillings,
sausages, chicken tikka, roasted vegetables and cooked pork meat; hot and cold
snacks, namely hot and cold filled baquettes, cakes, pastries, brownies,
muffins, croissants and scones; pizzas; filled rolls, sandwiches, filled
baguettes; none being frozen food and all for consumption away from home;
sauces, namely balsamic and olive oil dressings, barbecue sauce, cajun sauce,
cranberry sauce, mayonnaise, ketcup, mustard, horseraddish sauce, virgin olive
oil and pizza sauce; condiments; bread, rolls, cakes, buns, pastries, biscuits,
confectionery, namely chocolate, nuts, truffles, chocolate bars and cereal
bars; ices, ice cream, ice cream cones, and ice milk; cereals; breakfast
cereals; whole and ground coffee, coffee beans, coffee extracts, coffee
essences, tea and chocolate beverages, beverages, namely non-alcoholic
beverages, namely fruit juice, sparkling water, bottled drinking water,
chocolate beverages, chocolate milk, hot chocolate beverages, tea, coffee, and
carbonated soft drinks.
[4] The Mark is also registered for use in association with the following services:
(1) Catering services; restaurant, café,
cafeteria, snack bar and coffee shop services; preparation of foodstuffs or
meals or beverages for consumption on or off the premises; advice relating to
food and drink.
(2) The bringing together, for the benefit of others, a variety of foods and
beverages enabling customers to conveniently view and purchase these goods in
takeaway food outlets, grocery and convenience stores and motorway service
stations.
(3) Catering, restaurant, cafeteria and snack-bar services.
[5] Section 45 of the Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and services specified in the registration at any time within the three year period immediately preceding the date of the notice and, if not, the date when it was last in use and the reason for the absence of such use since that date. In this case, the relevant period for showing use is between July 22, 2007 and July 22, 2010.
[6] The definition of “use” is set out in section 4 of the Act:
4(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
[7] In response to the Registrar’s notice, the Registrant filed the affidavit of Chris Andreoff, sworn on October 20, 2010 and the affidavit of Sandeep Dhupar, sworn on October 19, 2010. Only the Registrant filed written representations; an oral hearing was not held.
[8] In his affidavit, Mr. Andreoff identifies himself as the Director of Operations of SSP Canada Food Services Inc. (SSP Canada), a subsidiary of the Registrant and licensee of the Mark during the Relevant Period. Mr. Andreoff attests that, during the Relevant Period, SSP Canada used the Mark in association with a variety of food and beverage products and in the operation of restaurants, cafés, cafeterias, snack bars and coffee shops in Canada. In support, attached to his affidavit, Mr. Andreoff provides the following exhibits:
• Exhibit A consists of photographs of various food and beverage products, which Mr. Andreoff attests are representative of the products sold by SSP Canada during the Relevant Period. I note that the products are in bags, sleeves or sandwich collars displaying the Mark.
• Exhibit B consists of photographs of representative pastry bags, take out bags and beverage cups with sleeves, all displaying the Mark, which were used by SSP Canada to put food and beverage products into at the time of sale.
• Exhibit C consists of photocopies of receipts issued by two of SSP Canada’s Upper Crust snack bar/café locations, which Mr. Andreoff attests are representative of the receipts consistently provided to customers at the time of purchase of its products during the Relevant Period.
• Exhibit D consists of photographs of two Upper Crust snack bar/cafés operated by SSP Canada at Pearson International Airport. I note that the Mark or a variant of the Mark is displayed prominently by way of signage, which Mr. Andreoff attests is representative of the signage at the Upper Crust locations operated by SSP Canada during the Relevant Period.
[9] In the second affidavit, Mr. Dhupar identifies himself as the Director of Business Solutions and Brands at Compass Group Canada Ltd. (Compass), also a licensee of the Mark during the Relevant Period. He provides similar evidence to that of Mr. Andreoff in that he attests that Compass used the Mark in association with a variety of food and beverage products and in the operation of café and coffee shop locations in Canada during the Relevant Period. He also provides representative photographs of food and beverage products bearing the Mark, representative receipts to demonstrate sales, and photographs of Upper Crust locations operated by Compass in Canada during the Relevant Period.
[10] Furthermore, both affiants attest to providing “advice relating to food and drink” and “catering services” during the Relevant Period. I note that Mr. Dhupar provides, as Exhibit F to his affidavit, a representative catering menu provided to customers by Compass; the Mark is displayed throughout the menu.
[11] In view of the foregoing, I agree with the Registrant’s written representations that the evidence furnished is sufficient to maintain the registration in association with the following services: restaurant, café, cafeteria, snack bar and coffee shop services; advice relating to food and drink; catering services.
[12] With respect to the remaining services, namely, “preparation of foodstuffs…” and “the bringing together…a variety of foods and beverages…”, no evidence is before me, nor does the Registrant address such services in its written representations. The registration will be amended to delete such services accordingly.
[13] With respect to the wares, the Registrant submits in its written representations that the evidence furnished supports use of the Mark in association with the following:
Clothing, namely, pants, shirts and caps; uniforms; overalls; working clothes; aprons; t-shirts; omelettes; breads, bagels, ciabatta, rolls, croissants, buns, biscuits, bananas, apples; desserts, namely, brownies, danish pastries, muffins, croissants, pastries; hot and cold baquettes, with meat fillings, sausages, chicken tikka, roasted vegetables and cooked pork meat; hot and cold snacks, namely hot and cold filled baquettes, pizzas; filled rolls, sandwiches, filled baguettes, none being frozen food and all for consumption away from home; ice cream, ice cream cones, soft drinks; salads; soups; yogurt; water; carbonated soft drinks; tea, coffee, hot chocolate.
[14] I note that this recitation of wares corresponds to the assertion of use in Mr. Andreoff’s affidavit. Additionally, however, the assertion of use in Mr. Dhupar’s affidavit includes the following food and beverage products: desserts, namely, carrot cake, cakes, scones, vegetable juices, fruit flavoured beverages, milk, water, and fruit juices.
[15] As such, in view of both affidavits and the representative evidence furnished therein, I am satisfied that the Registrant has demonstrated use of the Mark, within the meaning of sections 4 and 45 of the Act, in association with the aforementioned food and beverages wares.
[16] However, notwithstanding the assertion of use with respect to the wares “clothing, namely pants, shirts and caps; uniforms; overalls; working clothes; aprons; t-shirts”, no evidence of sales are provided, and I do not consider the representative evidence with respect to the food and beverage products to be applicable to such clothing wares. Rather, the evidence indicates that the Mark is simply displayed on the clothing worn by Upper Crust employees; such display is not use of a trade-mark in association with clothing in the normal course of trade [Dial Corp. v. Fiorucci SpA (1977), 74 CPR (3d) 106 (TMOB)]. The registration will be amended to delete these wares from the registration accordingly.
[17] With respect to the remaining wares, for which no assertion of use is made in either affidavit, the Registrant has provided no evidence of special circumstances excusing the absence of such use and the Registrant’s written submissions do not address such wares. Again, the registration will be amended to delete these remaining wares accordingly.
Disposition
[18] In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the statement of wares in the registration will be amended to read as follows:
(1) Omelettes, carrot cakes, roasted
vegetables, breads, bagels, ciabatta, rolls, bananas, apples; vegetarian foods,
namely vegetable juice; salads; soups; dairy products, namely yoghurt, milk;
desserts, namely carrot cakes, brownies, croissants, danish pastries, muffins;
fruit juices and vegetable juices; fruit flavoured beverages; water; soft
drinks.
(2) Prepared meals, namely hot and cold baquettes, with meat fillings,
sausages, chicken tikka, roasted vegetables and cooked pork meat; hot and cold
snacks, namely hot and cold filled baquettes, cakes, pastries, croissants and
scones; pizzas; filled rolls, sandwiches, filled baguettes; none being frozen
food and all for consumption away from home; bread, rolls, cakes, buns,
pastries, biscuits; ice cream, ice cream cones; beverages, namely non-alcoholic
beverages, namely fruit juice, hot chocolate beverages, tea, coffee, and
carbonated soft drinks.
[19] Furthermore, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the statement of services will be amended to read as follows:
(1) Catering services; restaurant, café,
cafeteria, snack bar and coffee shop services; advice relating to food and
drink
(2) Catering, restaurant, cafeteria and snack-bar services.
______________________________
Andrew Bene
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office