Citation: 2020 TMOB 127

Date of Decision: 2020-10-30

IN THE MATTER OF AN OPPOSITION

	Specialty Rice Company	Opponent
and
	Shackelton Inc.	Applicant
	1,645,541 for YOGANICS	Application

Introduction

[1]  Specialty Rice Company (the Opponent) opposes registration of the trademark YOGANICS (the Mark), the subject of application No. 1,645,541, that was filed by Shackelton Inc. (the Applicant).

[2]  Filed on September 27, 2013, and amended on October 13, 2015, the application is based on proposed use of the Mark in Canada in association with the following goods and services:

Goods

(1) Prepared meals, namely, prepared cooked pasta based meals, prepared cooked rice based meals, prepared cooked noodle based meals, prepared cooked vegetable based meals, prepared cooked chicken based meals, prepared cooked beef based meals, prepared cooked seafood based meals, prepared salads; non-alcoholic beverages namely fruit-based drinks, fruit juices, nutritional supplements for general health and well-being; merchandising items namely water bottles and mugs; exercise clothing, t-shirts, yoga mats and pillows, gym towels; prerecorded CDs and DVDs containing yoga instruction, instruction on cooking and nutrition, fitness instruction, dance instruction and music.

Services

(1) Operation of a yoga studio; yoga instruction services, yoga teacher training services, fitness instruction, instruction in breathing exercises, pilates, dance and meditation instruction; offering cooking classes and nutritional counselling; conducting workshops in the field of general health and well-being, nutrition and fitness.

[3]  The application was advertised in the Trademarks Journal of February 15, 2017.

[4]  The Opponent alleges that (i) the application does not conform to the requirements of section 30(a) of the Trademarks Act, RSC 1985, c T-13 (the Act); and (ii) the application does not conform to the requirements of section 30(e) of the Act.

[5]  As a preliminary matter, I note that the Act was amended on June 17, 2019. All references in this decision are to the Act as amended, with the exception of references to the grounds of opposition which refer to the Act as it read before it was amended (see section 70 of the Act which provides that section 38(2) of the Act as it read prior to June 17, 2019 applies to applications advertised prior to that date).

[6]  For the reasons that follow, I reject the opposition.

the record

[7]  The Opponent filed its statement of opposition July 17, 2017. The Applicant filed and served its counter statement on September 26, 2017 denying the grounds of opposition.

[8]  In support of its opposition, the Opponent filed the affidavit of Sanjeevan Shivakumar, sworn January 26, 2018, together with Exhibits A through E, and a certified copy of the file history of the trademark application in question.

[9]  In support of its application, the Applicant filed a certified copy of the file history for each of the following applications:

• Application No. 1,658,894 for the trademark LIVE YOGANIC

• Application No. 1,658,893 for the trademark LIVE YOGANIC ONE GRAIN AT A TIME

[10]  Both parties filed written representations and attended an oral hearing.  

the parties’ respective burden or onus

[11]  The Applicant bears the legal onus of establishing, on a balance of probabilities that the application complies with the requirements of the Act. This means that if a determinate conclusion cannot be reached in favour of the Applicant after a consideration of all of the evidence, then the issue must be decided against the Applicant. However, there is 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 [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].

[12]  With respect to grounds of opposition based on sections 38(2)(a) and 30 of the Act, generally the material date is the filing date of the application, namely, September 27, 2013 [see Georgia-PacificCorporation v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB) re: section 30(a); an d Canadian National Railway Co v Schwauss (1991), 35 CPR (3d) 90 at 94 (TMOB) re: section 30(e)]. Note however, that with respect to a ground of opposition based upon section 30(a) of the Act, the exception to this material date is when the application has been amended, as in the present case. As such, the material date for the section 30(a) ground is the amended application date, namely, October 13, 2015.

analysis

Section 30(a) Ground of Opposition

[13]  The Opponent pleads the following:

[…] the Application does not conform to the requirements of section 30(a) of the Act, as the goods and services currently described therein – for example, “prepared meals”, “exercise clothing”, “instruction on cooking”, “fitness instructions” and “offering cooking classes” – are not in ordinary commercial terms.

[14]  An opponent’s initial evidential burden under section 30(a) of the Act is a light one. Indeed, an opponent can meet its burden by way of the Registrar taking judicial notice, based on argument, as why or how each particular good or service is not in ordinary commercial terms [see McDonald’s Corporation and McDonald’s Restaurants of Canada Ltd v M.A. Comacho-Saldana International Trading Ltd carrying on business as Macs International (1984), 1 CPR (3d) 101 (TMOB) at 104].

[15]  In the present case, the Opponent submits that as the following goods and services do not appear in the Canadian Intellectual Property Office’s Goods and Services Manual (the Manual), it has met its initial evidential burden [citing as support, On Side Restoration Services Ltd v Arete Safety and Protection Inc, 2017 TMOB 104 at para 16]:

• (a) Prepared meals;

• (b) Exercise clothing;

• (c) Instruction on cooking;

• (d) Fitness instruction; and

• (e) Offering cooking classes.

[16]  As evidence to further support this submission, the Shivakumar affidavit attaches as Exhibit A, the results of a search conducted on January 26, 2018 of the Manual located on the website of the Canadian Intellectual Property Office, for the above-noted goods and services.

[17]  The Manual includes a representative list of acceptable goods and services [see Johnson & Johnson v Integra Lifesciences Corp (2011), 98 CPR (4th) 429 (TMOB) at para 29, which confirms that the Registrar may exercise discretion to check it]. For goods and services that are not in the Manual, the acceptable listings can be used to indicate by analogy the kinds of statements that would also be acceptable to describe similar goods or services. A statement of goods or services is acceptable if it is as specific, or more specific than, a related or similar listing.

[18]  The Applicant submits, that the Manual lists as acceptable the following descriptions, which it considers, and I agree, to be analogous to the specific goods and services as follows:

• For exercise clothing, “athletic clothing” or “exercise wear”;

• For instruction on cooking, “cooking instruction” (in reference to the applied-for goods “pre-recorded CDs and DVDs containing… instruction on cooking);

• For fitness instruction, “conducting fitness classes”, “fitness training”, “physical fitness instruction”, or “teaching physical fitness” ; and

• For offering cooking classes, “cooking instruction”.

[19]  With respect to the remaining questioned goods, namely, “prepared meals”, the Applicant notes that it had amended the statement of goods to more specifically identify this as “Prepared meals, namely, prepared cooked pasta based meals, prepared cooked rice based meals, prepared cooked noodle based meals, prepared cooked vegetable based meals, prepared cooked chicken based meals, prepared cooked beef based meals, prepared cooked seafood based meals”.

[20]  However, the Opponent submits that, nevertheless, this amendment is not in compliance with section 30(a) of the Act. The Opponent submits that with respect to “prepared cooked [x] based meals”, the closest language located in the Manual is “prepared meals consisting primarily of …” or “prepared meals principally consisting of …”. The Opponent submits that this language is not analogous, nor is the amended language in the statement of goods more specific than these entries. In this regard, the Opponent submits that the term “base” has a particular meaning in relation to food, which does not mean “principally” or “primarily” (e.g. chicken base used to make a soup does not mean that the soup is principally or primarily chicken based).

[21]  The Opponent maintains that having regard to the foregoing, it has met its initial evidential burden, and as such, the Applicant must show that its application complies with section 30(a) of the Act. The Opponent submits that the Applicant has not met its burden, as it has not put forward any evidence to sustain that the goods and services are described in ordinary commercial terms, including any evidence as to the trade meanings for the description it has used. Further to this, the Opponent submits that simply because a statement of goods or services can be understood does not mean that it is a description “ordinarily” used in the trade.

[22]  The Applicant submits the Manual now includes terms such as “noodle-based prepared meals”, which are analogous to the presently defined terms further specifying “prepared meals”. As I am able to exercise my discretion to check the Manual [see Effigi Inc v ZAM Urban Dynamics Inc (2010), 89 CPR (4th) 461 (TMOB); and Johnson & Johnson v Integra Lifesciences Corp (2011), 98 CPR (4th) 429 (TMOB)], I note that this term does indeed appear in the Manual. Furthermore, I am in agreement with the Applicant that this term is analogous to the types of “prepared meals” specified in the Applicant’s amended application.

[23]  I would add that I also agree with the Applicant’s submission that the term “based” as used in the amendment to refine the goods described as “prepared meals”, is used to identify the base ingredient of the prepared meal; that is, the ingredient being the base or foundation of the meal. This finding is in line with the following definition as found in the Merriam-Webster Online Dictionary:

Base   Adjective

Having a specified type of base or basis

Often used in combination // e.g. oil-based paints

 

[24]  Consequently, even if I considered that the Opponent had met its initial burden under this ground, I would find that the Applicant has satisfied its onus of establishing, on a balance of probabilities, that its application complies with the requirements of section 30(a) of the Act.  

[25]  Accordingly, the section 30(a) ground of opposition is rejected.

Section 30(e) Ground of Opposition

[26]  The Opponent pleads the following:

[…], the Application does not conform to the requirements of section 30(e) of the Act, as the Applicant did not as of the date that it filed the Application intend to use the Opposed Mark in Canada in association with all the applied-for goods and services, and/or has already commenced use of the Opposed Mark in Canada with one or more of the applied-for goods and services prior to the filing date of the Application.

[27]  To begin with, the Opponent has not made any submissions with respect to the second prong of its section 30(e) ground of opposition; that is, the allegation that the Applicant has already commenced use of the Mark in Canada. Indeed, no evidence has been filed or relied upon in support of this aspect of the Opponent’s section 30(e) ground of opposition. As such, this particular prong of the section 30(e) ground of opposition is dismissed, as the Opponent has failed to meet its initial burden.

[28]  With regard to its initial evidential burden under this ground of opposition, the Opponent’s initial evidential burden is relatively light. Indeed, under this ground of opposition, the burden can be met by reference to the Applicant’s evidence [see Molson Canada v Anheuser-Busch Inc (2003), 29 CPR (4th) 315 (FC)]; although, as discussed below, the Opponent is relying on its own evidence in this case.

[29]  As the application contains a statement that the Applicant by itself and/or through a licensee intends to use the applied-for trademark in Canada, the application formally complies with section 30(e) of the Act.  

[30]  However, the Opponent submits that this ground essentially plays out as to whether the Applicant had a bona fide intention to use the Mark in association with the goods and services. The Opponent submits that even more so than section 30(a), its burden is light, as intent to use a trademark is within the knowledge of the Applicant. Further to this, the Opponent submits that the case law makes it clear that evidence dated after the filing of the subject application may be considered [citing Bacardi & Co Ltd v Jack Spratt Mfg Inc (1984), 1 CPR (3d) 122 (TMOB) at 125-126].

[31]  Specifically, the Opponent submits that as the Applicant has not ventured into the area of food-related products and services in the past, nor is there any evidence that it has done so since filing its application, this is sufficient to raise doubt as to the veracity of the Applicant’s statement.

[32]  In support, the Opponent relies upon the results of several searches conducted on January 26, 2018, attached as exhibits to the Shivakumar affidavit:

·  the results of a search of the Canadian Trademarks Database for applications and/or registrations under the current owner name “Shackleton Inc” (Exhibit B);

·  printouts of the full trademark details from the Canadian Trademarks Database for each of the trademarks located by the search shown in Exhibit B (Exhibit C);

·  PDF printouts or screenshots of webpages from the Applicant’s website www.yogashack.ca, which refers to the business name Yoga Shack and describes Lisa Shackleton as its founder (Exhibit D); and

·  printouts of a corporate search report for Shackleton Inc. from a government authorized database, which shows that the Applicant registered the business name Yoga Shack and identifies the president as Lisa Marie Shackleton (Exhibit E). 

[33]  The Opponent submits that none of the 11 trademark applications filed both prior to and following the filing of the application for the Mark, as included in Exhibits B and C above, are for food-related goods and services. Further to this, the Opponent notes that the evidence from the Applicant’s website also indicates that the Applicant has no relationship with food-related goods and services. The Opponent submits that this evidence is sufficient to meet its initial evidential burden [citing Beiersdorf AG v Mitsubishi Gas Chemical Company, Inc, 2012 TMOB 210 at paras 11-13 (Beiersdorf)], as it demonstrates a particular pattern of activity on behalf of the Applicant that does not include engaging in food-related goods and services, namely, the following applied-for goods and services:

(i)  Prepared meals, namely, prepared cooked pasta based meals, prepared cooked rice based meals, prepared cooked noodle based meals, prepared cooked vegetable based meals, prepared cooked chicken based meals, prepared cooked beef based meals, prepared cooked seafood based meals, prepared salads;

(ii)  Offering cooking classes and nutritional counselling; and

(iii)  Prerecorded CDs and DVDs containing… instruction on cooking and nutrition.

[34]  The Applicant submits, and I agree, that Beiersdorf is unique and distinguishable from the present case. In that case, the evidence suggested highly disparate products with very different channels of trade. More specifically, a wide range of industrial chemicals on the one hand, and a broad range of end consumer products, from cosmetics and personal care products to pharmaceutical preparations to food products on the other.  The Registrar found that the applicant had “not put forward any evidence to negate in any way the doubts raised by the opponent that the applicant intends to use the applied-for mark in association with a chemical ingredient used to manufacture various products rather than with the products themselves” [at para 13].

[35]  Noting the smaller set of products and services in the present case, the Applicant submits that it is not a stretch to consider that a yoga studio (such as that of the Applicant), would offer these products, as these goods and services are aimed at end consumers that are health conscious. The Opponent objects, submitting that there is no evidence to support such a finding.

[36]  However, I agree with the Applicant, and find that, on its face, it is entirely conceivable that a business dedicated to health and well-being would be interested in expanding its offerings in a more holistic manner. Furthermore, there is nothing in the evidence to suggest that, as of the filing date or otherwise, there was no intention to use the Mark in association with these goods and services. Thus, I find the Opponent has failed to meet its burden.

[37]  Accordingly, the section 30(e) ground of opposition is also rejected.

Disposition

[38]  In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition, pursuant to section 38(12) of the Act.

 

Kathryn Barnett

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2020-09-28

APPEARANCES

R. Scott MacKendrick	For the Opponent
Jamie Bordman	For the Applicant

AGENTS OF RECORD

Bereskin & Parr LLP	For the Opponent
Moffat & Co.	For the Applicant