LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 5
Date of Decision: 2011-01-19
IN THE MATTER OF AN OPPOSITION by Rezk Hassanim 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. Mr. Rezk Hassanin (the Opponent) filed a statement of opposition on September 24, 2007. The Applicant filed a counter statement on October 31, 2007 in which it alleges prior use of the Mark and stating that it admits none of the allegations in the statement of opposition.
[4] The Opponent filed as its evidence the statutory declaration of Mohamed Hassanin while the Applicant filed the statutory declaration of Bassil Sleiman.
[5] Both parties filed a written argument and an oral hearing was held during which both parties made representations.
The Ground of Opposition
[6] The only ground of opposition raised by the Opponent is:
1) The Applicant is not the person entitled to registration of the Mark pursuant to s. s. 16(3)(a) and (c) of the Trade-marks Act, R.C.S. 1985, c. T-13 (the Act) because at the filing date of the application, the Mark was confusing with the Opponent’s trade-name and trade-mark previously used and made known in Canada in association with the wares specified in the application.
[7] I wish to point out that the Opponent did not identify its trade-mark(s) and/or trade-names(s) in the statement of opposition. However it will become obvious from the evidence filed by the Opponent that it intended to rely on evidence of prior use of the trade-marks MY DONAIR and/or MY DONAIR & Design and/or the trade-name MY DONAIR. At the decision stage, the Registrar may read a ground of opposition in conjunction with the evidence filed where no particulars had been requested by the Applicant prior to the filing of the evidence [see AstraZeneca AB v. Novopharm Ltd. (2001), 15 C.P.R. (4th) 327 (F.C.A.)].
Legal Onus and Burden of Proof in Trade-marks Opposition Proceedings
[8] 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].
Analysis of the Ground of Opposition Pleaded
[9] The relevant date for the analysis of the ground of opposition raised by the Opponent is the filing date of the application (January 25, 2006) [see s. 16(3) of the Act].
[10] I shall now review the Opponent’s evidence to determine if it has met its initial burden to prove that it has used the trade-mark and/or trade-name MY DONAIR and/or MY DONAIR & Design prior to the filing date of the application and that it has not abandoned the use of such trade-name or trade-mark at the advertising date of the present application [see s. 16(5) of the Act].
[11] Mr. Mohamed Hassinin (the Deponent) is the Opponent’s son. There is a Power of Attorney attached to the Deponent’s statutory declaration by which Mr. Rekz Hassinin authorizes the Deponent to act on his behalf in this opposition.
[12] The Opponent operates a restaurant under the name of “My Donair” on Macleod Trail SW in Calgary, Alberta. To support such contention, attached to the Deponent’s statutory declaration is a document entitled “purchase agreement” dated June 2, 2003 by which 474749 Alberta Ltd. authorized the Opponent to operate a MY DONAIR location on Macleod Trail SW in Calgary, Alberta. The document is quite succinct but it appears to be a franchise agreement. Therefore the Opponent obtained from 474749 Alberta Ltd., inter alia, the right to use the trade-mark MY DONAIR.
[13] Attached to The Deponent’s statutory declaration is a listing, taken from the website yellowpages.ca, of the locations in Calgary operating under MY DONAIR. There are nine of them according to such listing. I note that the location on Macleod Trail SW is listed under the name MY DONAIR & PIZZA. However we do not know when such listing was created. Given that the relevant date is the filing date of the application, such information is crucial to determine the relevancy of the document. Moreover we have no information on the entity(ies) that would operate those locations except for those of the Opponent. In the absence of the aforesaid information, I shall give little weight to such document.
[14] The Deponent filed a copy of the Opponent’s business permit issued in August 2004, which is prior to the filing date, making reference to the business name My Donair.
[15] The Deponent filed an article dated September 28, 2004 about the closing of two My Donair locations and another restaurant caused by E. coli bacteria cases. At the oral hearing the Opponent tried to argue that those incidents led the principals of the Applicant to stop operating their franchises under the trade-mark MY DONAIR and to start under a new name, namely Uncle Moe’s Donairs & Falafels. As such, the Opponent is arguing that the Applicant abandoned the use of the Mark. I mentioned at the oral hearing that this evidence is irrelevant to the issue to be decided under the sole ground of opposition raised. In any event the application was filed on the basis of proposed use, and not prior use.
[16] I may add at this point that all the evidence filed by the Opponent, except for the picture appearing on Exhibit E to the Deponent’s statutory declaration, refers to the trade-mark or trade-name MY DONAIR. In the case of Exhibit E, the picture appearing on the article published on the Canadian Broadcasting Company’s website illustrates an exterior sign with the design portion of the Mark beside the word portion. However the Deponent stated in his statutory declaration that the location illustrated on that picture is operated by him, not the Opponent.
[17] The Deponent filed a copy of a “Declaration as to Trade name” allegedly representing the oldest My Donair establishment operating in Calgary, which goes back to 1988. It refers to a third party to these proceedings, on which we have no information.
[18] I fail to see, based on this evidence, how the Opponent has discharged its burden to prove that it has used the Mark and/or MY DONAIR and/or the trade-name MY DONAIR prior to the filing date of the application. If there was any evidence of use of the Mark and/or MY DONAIR as a trade-mark or trade-name, it was as a franchisee of a third party, namely 474749 Alberta Ltd. Under those circumstances, any use of MY DONAIR and/or the Mark by the Opponent would accrue to the benefit of 474749 Alberta Ltd [see s. 50 of the Act].
[19] Moreover in virtue of s. 17 of the Act, only the owner of the trade-mark or trade-name cited as a ground of opposition may oppose the application. In this instance the Opponent is clearly not the owner of the trade-mark and trade-name MY DONAIR, as it is using either or both of them under the terms of a franchise agreement concluded with 474749 Alberta Ltd.
[20] The Opponent argues that the evidence shows that there are at least eight other locations operating under the trade-mark MY DONAIR. Unfortunately for the Opponent, it has not raised, as a ground of opposition, the distinctiveness of the Mark.
[21] Consequently I dismiss the only ground of opposition raised in the statement of opposition.
Disposition
[22] Pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office