Citation: 2017 TMOB 159

Date of Decision: 2017-11-29

IN THE MATTER OF AN OPPOSITION

	A. Bosa & Co. Ltd.	Opponent
and
	La Regina Di San Marzano Di Antonio Romano S.R.L.	Applicant
	1,662,493 for BONTA ITALIANE & Design	Application

introduction

[1]  A. Bosa & Co. Ltd. (the Opponent) opposes registration of the trade-mark BONTA ITALIANE & Design (shown below) (the Mark) that is the subject of application No. 1,662,493 by La Regina Di San Marzano Di Antonio Romano S.R.L. (the Applicant):

[2]  The application, as amended by the Applicant, indicates that: “The translation provided by the [A]pplicant of the Italian word(s) BONTA ITALIANE is ITALIAN GOODNESS”, and is based upon use and registration of the Mark in Italy in association with the following goods (1) and proposed use of the Mark in Canada in association with the following goods (2):

(1) Tomato juice for cooking, tomato puree; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; tomato sauce; coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour, bread, pastry and ices; treacle; yeast, baking-powder; salt, mustard; vinegar; spices; ice.

(2) Canned beans, canned tomatoes, canned vegetables, canned, cooked, and otherwise processed tomatoes, fruit concentrates and purees used as ingredient for foods, processed beans, diced tomatoes, peeled tomatoes, tinned tomatoes, tomato paste, and tomato preserves; tomato puree; edible oils, namely, olive oil, olive oil for food, and blended vegetable oils, preserved, dried, cooked and grilled vegetables; Tomato sauce; alimentary pasta, regular pasta, dried pasta, gluten free pasta, packaged meal mixes consisting primarily of pasta, pasta for soups, pasta sauce, and toddler meals, namely, prepared entrees consisting primarily of pasta.

[3]  The opposition was brought under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act), and raises the following grounds:

• The application does not conform to section 30(d) of the Act because the Mark has not been used by the Applicant in Italy as alleged in the application.

• The Mark is not registrable under section 12(1)(d) of the Act because it is confusing with the Opponent’s trade-mark BONTA registered under No. TMA535,095 in association with the following goods:

(1) Baby clams, beans, rice, peppers, pimentos, artichokes, fish for food purposes, mackerels, sardines and anchovies.

• The Applicant is not the person entitled to registration of the Mark under sections 16(2)(a) and 16(3)(a) of the Act because as of the filing date of the Applicant’s application, the Mark was confusing with the Opponent’s trade-mark BONTA, which had been previously used or made known in Canada by the Opponent and which trade-mark was not abandoned at the date of advertisement of the Applicant’s application.

• The Applicant is not the person entitled to registration of the Mark under sections 16(2)(b) and 16(3)(b) of the Act because as of the filing date of the Applicant’s application, the Mark was confusing with the Opponent’s trade-mark BONTA, in respect of which application No. 891362(1) for extending the statement of goods covered by registration No. TMA535,095 had been previously filed in Canada by the Opponent in association with the following goods, and which application was pending at the date of advertisement of the Applicant’s application:

(2) Chick peas, cornmeal, spit green peas, mushrooms, quinoa, semolina, olive oils, olives, fish for food purposes namely, squid, tuna, octopus.

• The Mark is not distinctive within the meaning of section 2 of the Act because it is not capable of distinguishing the Applicant’s goods from the Opponent’s goods sold under the trade-mark BONTA.

[4]  For the reasons that follow below, I find the application ought to be refused.

the record

[5]  The application for the Mark was filed on February 4, 2014 and advertised for opposition purposes in the Trade-marks Journal on April 22, 2015.

[6]  The statement of opposition was filed by the Opponent on June 4, 2015. The Applicant filed and served a counter statement on November 6, 2015 denying each of the grounds of opposition set out in the statement of opposition.

[7]  In support of its opposition, the Opponent filed an affidavit of its President, Bruno Benedet, Jr., sworn March 11, 2016 (the Benedet affidavit).

[8]  In support of its application, the Applicant filed an affidavit of Isaac da Silva Aboo, a summer student with the law firm representing the Applicant in the present proceeding, sworn July 18, 2016 (the Aboo affidavit).

[9]  Messrs. Benedet and Aboo were not cross-examined on their affidavits.

[10]  Only the Opponent filed a written argument.

[11]  No hearing was held.

the parties’ respective burden or onus

[12]  The Opponent has the initial evidentiary burden to establish the facts alleged to support each ground of opposition. Once that burden is met, the legal burden or onus that the Mark is registrable remains on the Applicant, on a balance of probabilities [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)].

overview of the evidence

The Benedet affidavit

[13]  Mr. Benedet’s affidavit is very brief, comprising only three substantive paragraphs and one exhibit.

[14]  Mr. Benedet first provides some general information on the Opponent’s history of incorporation [para 2 of the affidavit].

[15]  Mr. Benedet then briefly describes the steps having led to the Opponent obtaining a first registration for the trade-mark BONTA, which was thereafter extended, as per a copy of registration No. TMA535,095, as extended, attached to his affidavit as Exhibit A. Among other things, he states that:

Prior to filing the extended application, I am informed that our sales and marketing department reviewed the wares/goods covered in the registration as well as the wares/goods claimed in the extended application for the BONTA food products, in order to confirm current use and accurate first use dates for the extended wares/goods. [para 5 of the affidavit]

[16]  Mr. Benedet further states in the following paragraph that:

The [Opponent] is the Owner and operator of the grocery store which operates under “BOSA FOODS” at least at […], Vancouver, British Columbia […]. The [Opponent] (also operating as “Bosa Foods”) is a provider of a variety of goods and food products and I believe it is known to the Italian community and the general consumer alike as a provider and supplier of Italian styled goods. The BONTA food products are provided for sale within at least the primary BOSA FOODS retail store which are provided for sale to the general public. The BONTA food products also are provided for sale across Canada to a variety of food service customers. [para 7 of the affidavit]

[17]  However, Mr. Benedet provides no exhibits in support of these assertions of use. As such, Mr. Benedet’s statements amount to mere assertions of use only, rather than statements of fact showing use.

The Aboo affidavit

[18]  The Aboo affidavit is also very brief, comprising only one substantive paragraph and one exhibit.

[19]  The Aboo affidavit apparently purports to introduce into evidence state of the register evidence with respect to the commonality of the words “BONTA” and “GOODNESS” as an element of trade-mark applications and registrations in relation to the register as a whole.

[20]  Mr. Aboo states that:

In the normal course of my duties, I had occasion to download from the CIPO website […] copies of 80 trade-mark registrations and applications as identified [in the table] below and the downloaded copies of which are attached to my affidavit as Exhibit A […]. [para 2 of the affidavit]

analysis

Grounds of opposition summarily dismissed

Section 30(d) ground of opposition

[21]  The section 30(d) ground of opposition can be summarily dismissed on the basis that the Opponent has failed to meet its initial evidentiary burden in respect thereof.

[22]  There is no evidence whatsoever that puts into issue the correctness of the use and registration abroad basis claimed in the Applicant’s application. In the absence of any evidence suggesting that the Applicant has not used the Mark in Italy as claimed in its application, the Applicant was under no obligation to positively evidence such use.

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

[23]  The sections 16(2)(a) and 16(3)(a) grounds of opposition can be summarily dismissed on the basis that the Opponent has failed to meet its initial evidentiary burden in respect thereof.

[24]  An opponent meets its evidentiary burden under such grounds 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 the Benedet affidavit, the Opponent has not filed any evidence of use of its trade-mark BONTA. The mere filing of a certified copy of registration No. TMA535,095, as extended, can establish no more than de minimis use of the trade-mark BONTA [see Entre Computer Centers, Inc v Global Upholstery Co (1992), 40 CPR (3d) 427 (TMOB)]. Such use does not meet the requirements of section 16 of the Act [see Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) (TMOB)].

Section 2 ground of opposition

[25]  The section 2 ground of opposition can be summarily dismissed on the basis that the Opponent has failed to meet its initial evidentiary burden in respect thereof.

[26]  An opponent meets its initial onus with respect to a non-distinctiveness ground if it shows that as of the filing of the opposition 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 not filed any evidence demonstrating the extent to which its trade-mark BONTA has become known in Canada.

Analysis of the remaining grounds of opposition

Non-registrability of the Mark under section 12(1)(d) of the Act

[27]  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 Opponent’s registered trade-mark BONTA identified above.

[28]  I have exercised the Registrar’s discretion to confirm that this registration is in good standing as of today’s date, which is the material date for assessing a section 12(1)(d) ground of opposition [see Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)].

[29]  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 registered trade-mark.

The test for confusion

[30]  The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act provides that the 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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

[31]  Thus, this section does not concern the confusion of the trade-marks themselves, but of the goods or services from one source as being from another.

[32]  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 goods, 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 and all relevant factors are to be considered. Further, all factors are not necessarily attributed equal weight as the weight to be given to each depends on the circumstances [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].

Consideration of the section 6(5) factors

The inherent distinctiveness of the trade-marks and the extent to which they have become known

[33]  The trade-marks at issue are both inherently distinctive as they are not common words found in English or French dictionaries, although arguably less so in the case of the Mark.

[34]  Indeed, the Mark possesses an Italian connotation, especially in view of the word “ITALIANE” and the inclusion of a country landscape design seemingly evoking the Italian countryside, as further denoted by the translation provided by the Applicant of the “Italian words ‘BONTA ITALIANE’”, which translate into English as “ITALIAN GOODNESS”. However, I shall note that despite Mr. Benedet’s belief that the Opponent “is known to the Italian community and the general consumer alike as a provider and supplier of Italian styled goods”, there is no evidence to suggest that the average consumer of the food products associated with either one of the parties’ marks would be aware of the meaning ascribed to the word “BONTA” in Italian.

[35]  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 either one of the parties’ marks has been used in Canada pursuant to section 4 of the Act or that it has become known in Canada to any extent.

[36]  In view of the foregoing, I find that this factor, which is a combination of inherent distinctiveness and acquired distinctiveness, tends to somewhat favour the Opponent.

The length of time the trade-marks have been in use

[37]  As indicated above, the Applicant’s application is based on proposed use of the Mark in Canada and there is no evidence that any use of the Mark commenced subsequent to the filing of the application.

[38]  The Opponent’s registration claims use of the trade-mark BONTA in Canada since at least as early as 1980 in association with the goods covered by the original registration, and 1999 in association with the extended goods. However, as indicated above, the mere existence of a registration can establish no more than de minimis use of the Opponent’s trade-mark and cannot give rise to an inference of significant or continuing use [see Entre Computer Centers, supra].

[39]  In view of the foregoing, I find that this factor favours the Opponent, but only to a limited extent.

The nature of the goods, services or business; and the nature of the trade

[40]  When considering the nature of the goods and the nature of the trade, I must compare the Applicant’s statement of goods with the statement of goods in the registration relied upon by the Opponent [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)].

[41]  The Applicant’s applied-for goods are either identical (with respect to the goods “fish”, “rice”, “beans”, “olive oil”, etc.) or overlapping with those covered by the Opponent’s registration in that the parties’ marks are both seemingly associated with a variety of Italian style goods or goods which are used in Italian style cooking.

[42]  In the absence of evidence to the contrary, there is no reason to conclude that the parties’ goods would not travel through the same channels of trade and be directed to the same types of clientele.

[43]  In view of the foregoing, these factors favour the Opponent.

The degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

[44]  As noted by the Supreme Court in Masterpiece, supra, at paragraph 49, “the degree of resemblance, although the last factor listed in [section] 6(5) [of the Act], is the statutory factor that is often likely to have the greatest effect on the confusion analysis […] if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion”.

[45]  Moreover, as previously mentioned, it is well-established in the case law that likelihood of confusion is a matter of first impression and imperfect recollection. In this regard, “[w]hile the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public’s perception of it” [see Pink Panther Beauty Corp v United Artists Corp (1998), 1998, 80 CPR (3d) 247 (FCA), at para 34]. Even though the first word or portion of a trade-mark is generally the most important for the purpose of distinction, the preferable approach is to first consider whether any aspect of the trade-mark is particularly striking or unique [see Masterpiece, at paragraph 64].

[46]  Finally, as reminded by the Supreme Court in Masterpiece at paragraph 59, “a subsequent use that is within the scope of a registration, and is the same or very similar to an existing mark will show how that registered mark may be used in a way that is confusing with an existing mark.”

[47]  Applying those principles to the present case, I find there is a fair degree of resemblance between the parties’ marks.

[48]  The Mark incorporates the whole of the Opponent’s word mark BONTA, which constitutes the dominant element of the Mark. While the Mark includes a countryside landscape design, it is the word portion of the Mark made up of the words BONTA ITALIANE that gives the full meaning to the Mark, especially when sounded.

Additional surrounding circumstances

[49]  As indicated above, the Aboo affidavit apparently purports to introduce into evidence state of the register evidence with respect to the commonality of the words “BONTA” and “GOODNESS” as an element of trade-mark applications and registrations in relation to the register as a whole.

[50]  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)].

[51]  In its written argument, the Opponent has objected to the admissibility of the Aboo affidavit “since it cannot be relied upon as unbiased research as it was prepared by an employee of the Applicant’s [agent]”.

[52]  Alternatively, the Opponent submits that if the evidence is deemed admissible, it should not be given any weight since “[o]nly the first four references itemized under paragraph 2 of the [Aboo] affidavit contain the word BONTA as part of the trade-mark, two of which are now abandoned.”

[53]  Addressing first the Opponent’s objection, I do not see how the fact that the state of the register evidence was introduced by an employee of the Applicant’s agent makes it less reliable than if the Applicant or its agent had hired an outside trade-mark searcher to conduct such searches and swear an affidavit. Indeed, Mr. Aboo’s affidavit does not contain conclusions or opinions on the contentious issues of the opposition.

[54]  That being said, I agree with the Opponent’s submission that the Aboo affidavit should not be given any weight as it does not reveal a number of relevant registrations large enough to enable me to draw inferences about the state of the marketplace.

[55]  The results listed in the table provided under paragraph 2 of the Aboo affidavit show only two registrations and two pending applications (none of which allowed to registration) standing in the name of third parties for trade-marks comprising the word “BONTA” as part of the trade-mark.

[56]  The fact that there are other third party registrations and applications for trade-marks comprising the English word “GOODNESS” as part of the trade-mark is irrelevant. As discussed above, there is no evidence that the average Canadian would be familiar with this English meaning of the word “BONTA”.

Conclusion regarding the likelihood of confusion

[57]  As indicated above, section 6(2) of the Act is not concerned with the confusion of the trade-marks themselves, but confusion of goods or services from one source as being from another. In the present case, the question posed is whether an individual, who has an imperfect recollection of the Opponent’s BONTA word mark as applied to the Opponent’s registered goods, would, as a matter of first impression and imperfect recollection, be likely to conclude that the Applicant’s goods are manufactured or sold by the Opponent.

[58]  While I acknowledge the fact that the trade-marks in issue are not identical, I find that the differences existing between them are not sufficient to outweigh the overall consideration of the section 6(5) factors discussed above. As such, I find the balance of probabilities as to the likelihood of confusion as to the source of the parties’ goods to be evenly balanced. 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.

[59]  The non-registrability ground of opposition therefore succeeds.

Non-entitlement under sections 16(2)(b) and 16(3)(b)of the Act

[60]  An opponent meets its evidentiary burden with respect to a section 16(2)(b) or 16(3)(b) ground if it shows that its application was filed prior to the date of filing of the applicant’s application and was pending when the applicant’s application was advertised [section 16(4) of the Act].

[61]  As the Opponent’s application to extend registration No. TMA535,095 was filed on June 25, 2013 and was still pending on April 22, 2015, the Opponent has met its evidentiary burden.

[62]  The difference in material dates is not significant and as a result my findings under the ground of opposition based on section 12(1)(d) of the Act are equally applicable here. Accordingly, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark BONTA. The sections 16(2)(b) and 16(3)(b) grounds of opposition succeed.

Disposition

[63]  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

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENTS OF RECORD

KLS Trademark Services	FOR THE OPPONENT
Perley-Robertson, Hill & McDougall LLP	FOR THE APPLICANT