OPIC		CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADE-MARKS

  Citation: 2017 TMOB 73

Date of Decision: 2017-06-21

IN THE MATTER OF AN OPPOSITION

	Mohammed Azhar Khan	Opponent
and
	BAR B Q TONIGHT GLOBAL PTE LTD.	Applicant
	1,567,539 for BAR-B-Q TONIGHT & Design	Application

Introduction

[1]  BAR B Q TONIGHT GLOBAL PTE LTD. (the Applicant) has applied to register the trade-mark BAR-B-Q TONIGHT & Design (the Mark), as shown below, for use in association with “cafes; cafeteria; restaurants, buffet restaurants, self-service restaurants; restaurant services; take-away services; catering services; bistro; snack-bar and coffee shop services” (the Services). The application claims use and registration in Singapore under No. T10157341, and is based on proposed use in Canada.

[2]  Mohammed Azhar Khan (the Opponent) has opposed the application. The opposition is primarily based on an allegation that the Mark is confusing with the Opponent’s prior use of the trade-mark BAR BQ TONITE in association with restaurant services.

[3]  For the reasons that follow, I refuse the application.

File Record

[4]  The Applicant filed application No. 1,567,539 for the Mark on March 7, 2012, and the application was advertised for opposition purposes in the Trade-marks Journal of October 23, 2013.

[5]  On January 17, 2014, the Opponent filed a statement of opposition. The grounds of opposition are based on entitlement under sections 16(2)(a) and 16(3)(a), distinctiveness under section 2, and non-compliance with section 30(d) of the Trade-marks Act, RSC 1985, c T-13 (the Act). The Applicant denied each of the grounds of opposition in a counter statement filed on May 28, 2014.

[6]  In support of its opposition the Opponent filed, on December 29, 2014, the affidavit of Prakash Nath Khanna, an accountant of 2211875 Ontario Ltd. The Opponent subsequently sought leave to file a re-executed affidavit of Mr. Khanna to replace the affidavit filed on December 29, 2014 on the basis that the date of execution (October 25, 2014) was a clerical error and should have been December 29, 2014. By a ruling dated February 27, 2015, the Opponent was granted leave to file additional evidence, namely the affidavit of Mr. Khanna sworn on December 31, 2014. Mr. Khanna was cross-examined on his affidavit sworn on December 31, 2014, and his cross-examination transcript and answers to undertakings form part of the record.

[7]  On October 28, 2015, the Applicant filed a statement that it did not wish to submit evidence.

[8]  Only the Opponent filed a written argument. Both parties submitted a request for a hearing, however, only the Applicant attended the hearing. 

Onus and Material Dates

[9]  The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is, however, an initial 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) at 298].

[10]  The material dates that apply to the grounds of opposition are as follows:

• section 38(2)(a)/30 – the filing date of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];

• section 382)(c)/16(2) and 16(3)– the filing date of the application;

• section 38(2)(d)/2 - the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185, 34 CPR (4th) 317 at 324 (FC)].

 

Preliminary Comments

Hearsay issues in the Khanna affidavit

[11]  Mr. Khanna is an accountant of the numbered company 2211875 Ontario Ltd. (the 875 company), operating as Bar BQ Tonite restaurant, and provides accounting services including bookkeeping and corporate tax returns. During cross-examination, Mr. Khanna confirmed that he was not an officer, director or employee of the company, but an ‘independent accountant’ providing accounting services to many different clients, including the predecessor to the 875 company (Khanna transcript, Q26, Q34-35).

[12]  On cross-examination, Mr. Khanna admitted that someone else had prepared his affidavit and exhibits. He further acknowledged that the exhibits to his affidavit, including various business records, were not within his possession but had been provided to him.

[13]  At the hearing, the Applicant argued that Mr. Khanna’s affidavit evidence is insufficient to support the grounds of opposition pleaded as he is not in a position to have personal knowledge of the facts deposed in his affidavit without necessarily being a direct witness to the event by virtue of his office, as he is not even an employee of the 875 company. The Applicant cited Rule 81(2) of the Federal Courts Rules, SOR/98-106 (the Federal Courts Rules) noting that an adverse inference may be drawn from the failure of a party to provide evidence of persons having personal knowledge of material facts, and questioned why the Opponent was not personally giving evidence. 

[14]  While it may be desirable for evidence before the Registrar of Trade-marks to conform to the Federal Courts Rules, it is not an obligation [see Tension 10 Inc v Tension Clothing Inc (2004), 45 CPR (4th) 136 (TMOB); London Life Insurance Company v Liberty Mutual Insurance Company (2013), 117 CPR (4th) 437 (TMOB)]. That being said, I agree that parts of Mr. Khanna’s affidavit clearly fall outside his personal knowledge, thus constituting hearsay, and it is noteworthy that the Opponent has provided no explanation for why it was necessary for Mr. Khanna to furnish the affidavit or why a person with direct knowledge, such as the Opponent, was unable to provide an affidavit. Indeed, Mr. Khanna himself agreed that the Opponent would have been the best person to talk about the business, since the Opponent knows much more about it, and is there every day (Khanna transcript, Q222).

[15]  Consequently, I will not have regard to those parts of Mr. Khanna’s affidavit, which will be set out in further detail below, that are not within his personal knowledge because they are inadmissible hearsay.

Allegations of trade name use by the Opponent

[16]  The Khanna affidavit references the Opponent’s use of the trade name Bar BQ Tonite since January 2009, and includes as Exhibit D a copy of an Ontario Master Business License, which identifies the business name as ‘BAR BE Q TONITE’. On cross-examination, Mr. Khanna confirmed that he was the person who had taken out the business license on behalf of Mr. Khan (Khanna transcript, Q238).

[17]  As the statement of opposition does not allege entitlement based on the Opponent’s previous use of a trade name, the analysis of entitlement under section 16 of the Act will be limited to allegations of previous trade-mark use by the Opponent.

Analysis of Grounds of Opposition

Section 30(d) ground of opposition

[18]  The section 30(d) ground of opposition alleges that the Mark has not been used in Singapore as of March 7, 2012, the filing date of the application, if at all. As there is no evidence that supports this ground of opposition, it is dismissed on the basis that the Opponent has not met its initial burden.

Section 16(2)(a) and 16(3) grounds of opposition

[19]  The section 16(2)(a) and 16(3)(a) grounds of opposition allege that the Applicant is not the person entitled to registration in that as of the date of application, the Mark was confusing with the Opponent’s trade-mark BAR BQ TONITE which had been used in Canada prior to the filing date of the application, and continues to be used, by the Opponent in association with full service restaurant services.

[20]  Despite the burden of proof on the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark, the Opponent has an initial onus to prove that its trade-mark was in use in Canada prior to March 7, 2012, the filing date of the application. There is also an initial onus to prove that its trade-mark had not been abandoned as of October 23, 2013, the date of advertisement of the Mark [section 16(5) of the Act].

[21]  If the Opponent has not met its initial burden, the ground of opposition will be rejected and it will not be necessary to assess (under these grounds) whether a likelihood of confusion exists.

[22]  Turning to the Opponent’s evidence, pertinent excerpts from the Khanna affidavit relating to ownership, licensing, and use of the trade-mark BAR BQ TONITE are set out below.

Ownership and licensing of the trade-mark BAR BQ TONITE

[23]  Mr. Khanna has been an accountant of the 875 company since July 13, 2009. He states that the 875 company, of which the Opponent is President, was incorporated on July 13, 2009, and has been doing business as Bar BQ Tonite restaurant since July 13, 2009.

[24]  Prior to this, Mr. Khanna was an accountant of 2130438 Ontario Inc. (the 438 company) from March 7, 2007 to January 2009. He asserts that the 438 company had been using BAR B Q TONITE as a trade name and trade-mark from March 7, 2007 to January 2009, in association with restaurant services, including take out and catering services.

[25]  Mr. Khanna explains that ownership of the BAR BQ TONITE trade-mark and trade name flowed from the 438 company, to the 875 company, to the Opponent. He purports to confirm the chain-of-title through two confirmatory documents attached to his affidavit as Exhibits A and B. Both exhibits were executed on December 29, 2014 and witnessed by Mr. Khanna.

[26]  Mr. Khanna states that the Opponent licenses the use of the BAR BQ TONITE trade-mark and trade name to the 875 company, and includes as Exhibit C a copy of an alleged written license.  I note that the document, which identifies the trade-mark as BAR BQ TONITE and the trade name as BAR BE Q TONITE, does not include an effective date. The document was executed on December 29, 2014, at the same time as Exhibits A and B, and was witnessed by Mr. Khanna.

[27]  Mr. Khanna states that since July 13, 2009, the Opponent has been actively involved in the operation of the 875 company, and has held direct or indirect control over the character or quality of the services associated with the BAR BQ TONITE trade-mark and trade name.

[28]  On cross examination, Mr. Khanna acknowledged that the Opponent had given him the exhibits attached to his affidavit (Khanna transcript, Q195), including the confirmatory assignments and licensing documentation in Exhibits A, B and C. Considering that there is no evidence that these documents are business records to which Mr. Khanna would, in the ordinary course, have access to as an ‘independent contractor’ providing accounting services to the 875 company, I consider Exhibits A-C to be inadmissible hearsay evidence.

[29]  At the hearing, the Applicant raised a number of issues with Exhibits A-C, including alleged inconsistencies in the cited dates of transfer, the status of the signatories at the date of execution of the documents, and the circumstances under which the documents were prepared and executed. As I am not considering these documents, it is not necessary to discuss the Applicant’s submissions on these issues.

[30]  Additional facts and admissions obtained during Mr. Khanna’s cross-examination relating to the ownership and licensing of the trade-mark BAR BQ TONITE are set out below:

• When Mr. Nadim Daudi, the principle of the 438 company, started the restaurant operating as BAR BQ TONITE, he asked Mr. Khanna, who had been his personal accountant, to start doing the books for the company (Q63).

• Mr. Khanna was not involved in selecting the restaurant name, nor was he involved with incorporating the 438 company, or registering the master business (license) or a trade name for the 438 company (Q70, 71). Mr. Khanna did provide bookkeeping and corporate tax returns for the business (Q77).

• The restaurant operating as BAR BQ TONITE and located at 35 Dundas Street West, Mississauga, Ontario, opened and first started serving food to the public in March 2007 (Q85). The restaurant has always remained at this location (Q69).

• Mr. Nadim Daudi ran the business, and he was there in the restaurant on a daily basis (Q55-58; Q87-89). However, by January 2009, the restaurant was not making money (Q93).

• Mr. Daudi subsequently transferred the business to the Opponent. Mr. Khanna does not know the terms of transfer agreement and was not involved in the discussions between the parties (Q100, 103). There was no written transfer agreement between the parties – it was all verbal (Q101, Q150-151, Q156).

• Following the transfer, Mr. Khanna’s relationship to the business continued, in that he continued to do the bookkeeping, as an independent contractor, for the 875 company (Q106-110).

• During the transition period when the Opponent took over the business, there was never a time when both Mr. Daudi and the Opponent were involved in operating the business (Q293). In other words, there was no overlap (Q294).

• The 438 company stopped doing business (Q111, 112), and was dissolved “somewhere down the road” (Q113). A corporate profile report for the 438 company shows it was dissolved on October 28, 2011 (Exhibit A to the cross-examination). Mr. Khanna did the dissolution on the instructions of Mr. Daudi (Q120-123; Q125).

• The Opponent started running the restaurant in July 2009 (Q160). He hired the cook and the employees (Q162), gave them the supplies, prepared the menu, and prepared the business cards (Q163).

• The 875 company has a bank account (Q181) and it is the one that pays the employees (Q183), the rent and utilities on the business premises located at 35 Dundas Street West, Mississauga, ON (Q175; Q184-185), and whatever the expenses (Q186).

• Mr. Khanna agreed that the statement made in paragraph 9 of his affidavit, regarding the Opponent’s control over the character of quality of the services associated with the trade-mark BAR BQ TONITE, can be said to mean that it is the Opponent who is responsible for the food that is served at the end of the day (Q204, 205). Counsel then presented Mr. Khanna with a series of questions touching on the concept of personal liability:

206	Q. And are you saying then, is your evidence then that, if somebody is ill from eating that food, it’s Mr. Khan’s responsibility personally?
	A. Pardon me?
207	Q. You’re saying he’s taking personal liability –
	A. No, I’m not saying
208	Q. – for the operation of that restaurant?
209	Q. Are you saying that he is personally responsible for the quality of the food served in that restaurant, so that, if somebody gets ill, it’s his fault personally?
	A. Where did you hear this, saying: I am personally responsible?
210	Q. You’re saying that he personally has been controlling the character and quality of the services. Is that correct?
MR. LANGAN: Just for the clarity of the record, I know we’re again getting into a little bit of the corporate law and I don’t know if this witness is able to – MR ROBBINS: All right. MR. LANGAN: -- give you an indication of the liabilities there. MR. ROBBINS: Let’s talk about that for a second, then.
211	Q. Do you know what personal liability means?
	A. No.
212	Q. You don’t know what personal liability means?
	A. No
213	Q. Do you know what liability means?
214	A. Yes
215	Q. You know what a corporation is?
	A. Yes
216	And do you know what function a corporation serves? Why do people create corporations?
	A. To shift the responsible [responsibility] from an individual director or shareholder to the company.
217	Q. Exactly, and that’s the shift that I’m getting at here. I want to know whether the responsibility for the food that gets put on the plates at the restaurant at 35 Dundas Street West, whether the entity responsible is the 875 corporation or Mr. Khan?
	A. No. The corporation.

 

• Mr. Khanna agreed that it is the Opponent that runs the corporation that hires the cooks, pays the cooks (Q218).

• The Opponent is the person at the restaurant every day (Q222).

[31]  While I consider the confirmatory assignment documentation (Exhibits A and B) to be inadmissible hearsay, based on a fair reading of the Khanna affidavit and the cross-examination transcript, I consider there to be sufficient evidence to conclude that the business and the trade-mark BAR BQ TONITE were transferred from Mr. Daudi, through the 438 company, to Mr. Khan, through the 875 company, with the Opponent taking over the business at some point in 2009. The fact that Mr. Khanna does not have knowledge of the terms of transfer is not material.

[32]  Section 50(1) of the Act requires the owner of a trade-mark to have direct or indirect control over the character or quality of the goods and services in order for the use of the trade-mark by a licensee to be deemed to be use by the owner. Section 50(1) does not require a written agreement. Evidence of control by the owner of the trade-mark can support the existence of an implied license agreement [Well’s Dairy Inc. v UL Canada Inc. (2000), 7 CPR (4th) 77 (FCTD)].

[33]  It is trite law that a corporate relationship, on its own, is insufficient to satisfy the requirement of section 50 of the Act [MCI Communications Corp. v MCI Multinet Communications Inc. (1995), 61 CPR (3d) 245 (TMOB); Dynatech Automation Systems Inc. v. Dynatech Corp. (1995), 64 CPR (3d) 101 (TMOB)]. However, the presence of a common controlling individual may be able to satisfy the requirement of section 50 of the Act [see Petro-Canada v 2946661 Canada Inc. (1998), 83 CPR (3d) 129 (FCTD); Lindy v Canada (Registrar of Trade-Marks) (1999), 241 NR 362 (FCA)]. It has been held that if the president or director or officer of a corporate owner is also the president or a director or officer of the user of the trade-mark, this may be sufficient to satisfy the control requirements of Section 50 of the Act [see TGI Friday’s of Minnesota Inc. v. Canada (Registrar of Trade Marks) (1999), 241 NR 362 (FCA); Goodwill Industries International Inc v Vedett IP Corporation, 2015 TMOB 212].

[34]  In the present case, I have deemed inadmissible the written trade-mark license attached as Exhibit C to the Khanna affidavit. While Mr. Khanna’s affidavit includes a statement that there is licensed use and that the Opponent exercises the requisite control pursuant to section 50 of the Act, it is not clear that this information would fall within his personal knowledge.  However, there appears to be a common controlling individual in that the Opponent is both the owner of the trade-mark, and the president of the 875 company.  Where the same person is the licensor and president of the licensee, it is reasonable to infer that a license exists in which the requisite control over the character and quality of the services is exercised [see Petro-Canada v 2946661 Canada Inc, supra].

[35]  At the hearing, the Applicant submitted that the inference of a valid license based on common control cannot be made as there is evidence suggesting otherwise. In particular, the Applicant noted that Mr. Khanna, on cross-examination, resisted the idea that the Opponent is the person responsible for ensuring the requisite control over the character and quality of the restaurant services.  However, based on a fair reading of the record, including the cross-examination transcript, I disagree with this characterization. I am of the view that Mr. Khanna did not resist the idea that the Opponent holds the requisite control, but instead appeared unsure of the notion of personal liability as a legal concept and how it figures into the requirement of control over the quality and character of the Services.

[36]  Accordingly, I find that it is reasonable to infer that there is a valid license such that the requirements under section 50 of the Act are satisfied.

Use of the trade-mark BAR BQ TONITE

[37]  Pertinent excerpts from the Khanna affidavit relating to the use of the trade-mark BAR BQ TONITE are set out below.

[38]  Mr. Khanna states that Bar BQ Tonite restaurant has been using the trade-mark BAR BQ TONITE since January 2009 in association with restaurant services, which include sit down, take out, and catering.

[39]  Mr. Khanna states that the trade-mark BAR BQ TONITE has been prominently displayed on signage on the top of the Bar BQ Tonite restaurant, and on the restaurant’s parking lot signage, since January 2009. Exhibits E and F are copies of photographs showing the restaurant’s front exterior and parking lot signage, respectively, bearing the trade-mark BAR BQ TONITE.

[40]  Mr. Khanna states that Bar BQ Tonite restaurant typically presents a menu to customers for them to order dishes, and has been presenting the menu to customers since January 2009. He advises that the trade-mark BAR BQ TONITE appears on the menu in several instances and attaches a copy of the restaurant menu (Exhibit G).

[41]  Mr. Khanna states that Bar BQ Tonite restaurant advertises its services over the internet, and attaches printouts of web pages of Bar BQ Tonite restaurant advertising its services (Exhibit H).

[42]  Mr. Khanna states that Bar BQ Tonite restaurant generates a significant amount of revenue from its operation, ranging between $210,894 and $380,425 between 2007 and 2012. He also states that Bar BQ Tonite restaurant spends a significant amount of time and money promoting Bar BQ Tonite restaurant services, and provides annual advertising expenditures for 2007-2012. He explains that the 2008 sales and advertising expenditures are not available since the relevant records cannot be located. I note that annual sales and advertising expenditures after 2012 are not provided.

[43]  Mr. Khanna states that the Bar BQ Tonite restaurant has been advertising the trade-mark BAR BQ TONITE by displaying/distributing promotional materials to restaurant customers since January 2009. Exhibit I to his affidavit is described as sample copies of labels, a business card, and flyers. However, I note that the exhibit consists solely of a copy of one side of a business card bearing the trade-mark BAR BQ TONITE.

[44]  Relevant facts and admissions relating to the use of the trade-mark BAR BQ TONITE disclosed during Mr. Khanna’s cross-examination include the following:

• Mr. Khanna recognizes the image shown in Exhibit E to his affidavit as the restaurant, but he did not personally take the photograph (Q241, 242).

• He has been to the restaurant several times (Q243).

• He confirms that the menu shown in Exhibit G to his affidavit is the current menu that is being used, and has been in place since 2009 (Q249). The prices might have changed, but the overall look of the menu has been the same since 2009 (Q250, 251).

• He has never visited the website referenced at paragraph 14 of his affidavit (Q265, 266). He did not print out the web pages (Exhibit H) (Q261), and he does not know whether this is what the website looks like (Q268).

• He is familiar with the summary of revenue set out in his affidavit (in paragraph 15) (Q269). Because he was the accountant, he provided the numbers (Q271).

• He does not remember, even roughly, what the sales numbers for 2013 and 2014 would have been (Q273).

• He prepared the advertising expenditure figures set out in his affidavit (in paragraph 16), and does not remember, not even roughly, what the expense figures would have been for 2013 and 2014 (Q276-279).

• He indicates that the advertising expenditures referenced in his affidavit cover materials in the nature of ‘flyers, business cards, those things’ (Q282), and admits that Exhibit I (to his affidavit) consists of only one page and that it is a business card. He is not familiar with flyers and labels, just the business card (Q290).

• Counsel for the Opponent gave an undertaking to provide any labels/flyers referred to in the Khanna affidavit (at paragraph 17), and subsequently provided a copy of a representative label affixed to take out packages for advertising purposes. With respect to flyers, counsel confirmed that a copy of the menu (Exhibit G) is also provided in take out packages.

[45]  Despite the deficiencies revealed in Mr. Khanna’s evidence, I am still satisfied from the Opponent’s evidence in its totality that the Opponent has met its initial burden of showing use of the trade-mark BAR BQ TONITE prior to March 7, 2012. The record shows that the Opponent’s trade-mark appeared on signage on the front exterior of the restaurant and in the parking lot (Exhibits E and F), and on restaurant menus (Exhibit G) prior to March 7, 2012. I do not consider it to be problematic that Mr. Khanna did not personally take photographs of the signage, given his personal knowledge as someone who has visited the restaurant several times. Similarly, I do not consider the fact that the restaurant menu had not been in Mr. Khanna’s possession to be problematic given his personal knowledge as someone who has visited the restaurant several times. In contrast, I have not considered and deem inadmissible the evidence of printouts of website advertising (Exhibit H), as Mr. Khanna admitted he had never visited the website.

[46]  The Opponent has also provided annual revenues, most of which predate the material date of March 7, 2012. At the hearing, the Applicant questioned the reliability of the figures provided by Mr. Khanna on the basis that as an accountant, he can only take the information that he has been given. In other words, the Applicant argued that while the accountant provided the numbers, he does not know them. I disagree with this position, and am of the view that the annual revenues provided by Mr. Khanna in his role as the accountant for the companies making the sales (both the 438 and 875 companies) is reliable. Accordingly, I accept Mr. Khanna’s evidence of annual revenues from 2007-2012.

[47]  I am also satisfied that the Opponent has met its initial burden to prove that the trade-mark BAR BQ TONITE had not been abandoned as of October 23, 2013, the date of advertisement of the Applicant’s Mark. While it is curious that the Khanna affidavit is silent on revenues and advertising expenditures after 2012, this fact alone is not sufficient to enable me to conclude that there was abandonment, which requires an intent to abandon [see Iwasaki Electric Co Ltd v Hortilux Schreder BV, 2012 FCA 321].

[48]  When questioned on cross-examination about figures beyond 2012, Mr. Khanna simply indicated that he did not have any recollection of 2013 and 2014 figures. I further note that Mr. Khanna’s cross-examination testimony, given on December 8, 2015, makes reference to the current use of the Opponent’s trade-mark on the restaurant menu (Q249-251), from which it can be inferred the trade-mark has not been abandoned as of the material date. 

Likelihood of Confusion

[49]  The Opponent having met its initial burden of proof, I must now determine, on a balance of probabilities, if the Mark is likely to cause confusion with the Opponent`s trade-mark BAR BQ TONITE. The test to determine this issue is set out in section 6(2) of the Act and requires consideration of all the relevant surrounding circumstances, including those enumerated in section 6(5): the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the goods, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them.

[50]  These enumerated factors need not be attributed equal weight [Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC), and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC)].

Inherent Distinctiveness

[51]  Neither of the parties’ marks is inherently strong because they both contain ordinary dictionary words (or grammatical iterations thereof) which are highly suggestive of their associated services.

[52]  The Opponent’s trade-mark BAR BQ TONITE consists solely of word elements. At the hearing, the Applicant pointed to the Opponent’s descriptive usage of the word(s) BAR BQ on its menu, and noted the imperative nature of the word element TONITE (in that it promotes attendance at the restaurant), to support its argument that the Opponent’s trade-mark is highly descriptive, thus very weak. I agree.

[53]  As for the Applicant’s Mark, in view of its design elements, including a man wearing a chef’s hat, a skewer, and a fire, all within a diamond shaped border, I consider the Mark to be slightly inherently stronger than the Opponent’s trade-mark.

Extent Known and Length of Time in Use

[54]  There is no evidence that the Applicant’s Mark has become known to any extent whereas Mr. Khanna’s affidavit shows that the Opponent’s trade-mark has been used in association with restaurant services since before the filing date of the Application. 

[55]  There is no evidence of use of the Applicant’s Mark; therefore the length of time each party’s trade-mark has been in use favors the Opponent.

Nature of Services and Trade

[56]  The parties’ services are of the same nature and there is direct overlap (restaurant services). It is therefore reasonable to assume that their channels of trade would also overlap.

Degree of Resemblance

[57]  There is a very high degree of resemblance between the parties’ marks in sound and ideas suggested. In this regard, the marks are identical when sounded. The ideas suggested by the marks are also similar, particularly given the descriptive nature of the design elements featured in the Mark. Visually, the marks are slightly different as the Mark contains prominent, albeit descriptive, design elements, including a man wearing a chef’s hat, a skewer, and a fire. The spelling of the word TONIGHT/TONITE is also different in each trade-mark.

Conclusion

[58]  Based on the foregoing, in particular the similarly between the parties’ marks and the direct overlap in the services, and considering the Applicant has not acquired any reputation in association with its proposed Mark, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that as of March 7, 2012, there was no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark BAR BQ TONITE. As such, the section 16 grounds of opposition are successful.

Section 2 ground of opposition

[59]  The material date for assessing the issue of distinctiveness is January 17, 2014, the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc., 2004 FC 1185].

[60]  There is an initial burden on the Opponent to establish that, as of January 17, 2014, its trade-mark BAR BQ TONITE was known to an extent that could negate the distinctiveness of the Mark.  The Opponent’s trade-mark's reputation should be substantial, significant or sufficient [see Bojangles' International LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC)].

[61]  The Opponent’s evidence of promotion and advertising, as of the material date, is scant. Assuming that the sample promotional materials referenced in the Opponent’s evidence, namely the business card (Exhibit I of Khanna affidavit), flyer (menu in flyer format at Exhibit G of Khanna affidavit) and representative label affixed to take out packages (answer to undertaking at page 51 of cross-examination) are representative of the material date, namely January 17, 2014, it is not clear from the evidence what the extent of distribution or reach would have been for these materials. In this regard, I note that annual advertising expenditures are not available for 2014 (which would cover the material date), and no assumptions can be made based on the data provided for previous years (2007, 2009-2012). Also notably absent is annual revenue data for 2014, which would cover the material date, and without which it is difficult to assess levels of restaurant attendance.

[62]  Overall, the evidence provided by the Opponent is sufficient to establish nothing more than a minimal reputation in Mississauga, where its sole location is situated.  It falls far short of establishing that the Opponent’s trade-mark had developed, as of the material date, a reputation that was substantial, significant, or sufficient to negate the distinctiveness of the Mark. 

[63]  Accordingly, this ground of opposition is unsuccessful on the basis that the Opponent has not met its initial burden. 

Disposition

[64]   Having regard to the above, 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.

Cindy Folz

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: 2017-03-27

APPEARANCES

No one appearing	FOR THE OPPONENT
Mark L. Robbins	FOR THE APPLICANT

AGENTS OF RECORD

Ridout & Maybee LLP	FOR THE OPPONENT
Bereskin and Parr LLP	FOR THE APPLICANT