Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2023 131 TMOB
Date of Decision: 2023-07-26
IN THE MATTER OF AN OPPOSITION
Opponent: McCormick & Company, Incorporated
Applicant: Pure Hothouse Foods Inc.
Application: 1,818,722 for PURE FLAVOR
Introduction
[1] Pure Hothouse Foods Inc. (the Applicant) applied to register the trademark PURE FLAVOR (the Mark) on January 18, 2017, relying on the basis of proposed use in Canada in association with the goods: fresh herbs, namely basil, thyme, rosemary, parsley, lavender, coriander, dill, arugula, watercress, cilantro, oregano, lavender, sage, mint, bay leaf, chives, savory, tarragon and lemongrass (the Goods). McCormick & Company, Incorporated (the Opponent) opposes the registration.
[2] The application was advertised on April 4, 2018. While numerous amendments to the Trademarks Act, RSC 1985, c. T-13 (the Act) came into force on June 17, 2019, as the Application was advertised before June 17, 2019, pursuant to section 70 of the Act, the grounds of opposition will be assessed based on the Act as it read immediately before June 17, 2019.
[3] The grounds of opposition, discussed in greater detail below, primarily involve a consideration of whether the Mark is clearly descriptive or deceptively misdescriptive. More specifically, the grounds of opposition under consideration are that (i) the application does not conform to the requirements of section 30(i) of the Trademarks Act, RSC 1985, c T-13 (the Act); (ii) the Mark is not registrable pursuant to section 12(1)(b) of the Act; and (iii) the Mark is not distinctive under section 2 of the Act.
[4] For the reasons that follow, I refuse the application on the basis the Mark is not registrable pursuant to section 12(1)(b) of the Act as I am not satisfied that the Applicant meets its legal burden to prove on a balance of probabilities that the Mark is not clearly descriptive. The section 2 ground of opposition also succeeds.
The Record
[5] On September 19, 2018, the Opponent filed a statement of opposition against the Mark pursuant to section 38 of the Act.
[6] In support of its opposition, the Opponent relies on the affidavit of Ms. Jane Buckingham, who is a searcher employed with the Opponent’s Agent firm. In brief, this evidence comprises:
· File wrappers pertaining to four trademark applications filed before the United States Patent and Trademark Office (USPTO)
· A file wrapper pertaining to one Canadian trademark application that issued to registration for PURE FLAVOR, containing a disclaimer of the terms “pure” and “flavor”
· Webpages showing dictionary definitions for the terms “pure” and “flavor”
· Websites showing the term “pure flavor” associated with various herb and spice products
[7] The Opponent also filed the affidavit of Mr. Jeffery Schwartz. As Mr. Schwartz could not be made available for cross-examination his Affidavit has been struck from the record, pursuant to rule 56(4) of the Trademarks Regulations, SOR/2018-227. Although cross-examination of Ms. Buckingham was requested, it did not take place on agreement by the parties.
[8] In support of its application, the Applicant relies upon the affidavit of Mr. Chris Veillon, the Applicant’s Chief Marketing Officer and a member of the Applicant’s executive legal team. In brief, the evidence comprises:
· A listing of the Applicant’s registered trademarks containing or comprising the terms “pure”, and “flavor” as registered in association with fresh fruits and vegetables and fresh fruit, fresh vegetables, spices, cheese and dressing as well as the pending application, which is the subject of this proceeding (Registered Marks)
· Information regarding use of the PURE FLAVOR mark in association with fresh fruits and vegetables since at least as early as 2003, and in association with fresh fruits and vegetables and fresh fruit, fresh vegetables, spices, cheese and dressing since at least as early as 2013
· Examples of the manner of use of the PURE FLAVOR trademarks in association with fresh fruits and vegetables
· Sales data and buyer information along with advertising, promotional, media and social media information, as well as information about sponsored events
· Product catalogs and current and archived websites with web traffic information
[9] The evidence relates to fresh fruit and vegetables along with a combination product comprising fresh fruit, fresh vegetables, spices, cheese and dressing [see Veillon affidavit, para 4 for the Applicant’s trademarks and Veillon cross-examination, question 62 and following in respect of the confirmation that spices, cheese and dressing are not sold separately]. I note the evidence does not include a break-down of sales or other figures for each of the Applicant’s trademarks, rather total sales in association with what the Mr. Veillon terms, at paragraph 7, the “Pure Flavor Family of Trademarks”.
[10] Mr. Veillon was cross-examined on his affidavit and the transcript was filed on December 20, 2021. Responses to undertakings were filed and are discussed in greater detail below under the heading Preliminary Issues.
[11] In addition to providing the corrected figures in the form of a response to an undertaking, the Applicant sought leave to file additional evidence of Mr. Veillon comprising the same materials. In correspondence dated March 14, 2022, the Registrar refused leave to file this additional evidence.
[12] Both the Opponent and Applicant filed written representations (Written Representations), however only the Applicant’s agent attended the hearing.
Preliminary Issue: Admissibility of Undertakings
[13] On January 20, 2022, the Applicant filed its response to an undertaking to confirm, and if necessary, provide, corrected statistical information pertaining to social media analytics reports contained in Mr. Veillon’s affidavit. The Applicant acknowledged the undertaking was specific to Table 10 [Applicant’s correspondence of January 20, 2022], nonetheless it sought to include corrections to two additional tables found to contained errors as well. In correspondence dated January 20, 2022, the Opponent objected to what it termed new evidence, not properly in reply to an undertaking. In correspondence dated February 18, 2022, the Registrar declined to rule, reminding the parties that, in general, rulings are made at the decision stage rather than during the course of proceedings. The Registrar additionally noted that the admissibility of such evidence could be address through written or oral submissions.
[14] When asked at the hearing, the Applicant’s Agent advised she did not wish to make submissions regarding the admissibility of these additional materials. In light of this I find the corrections to tables 9 and 11, filed in response to the undertaking pertaining to Table 10, were improperly filed and will not form part of the record. However, I also note that had I accepted this evidence, nothing would turn on it.
Evidential Burden and Legal Onus
[5] It may be helpful to review the evidential burden on an opponent to support the allegations made in a statement of opposition [John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298], as well as the legal onus on an applicant to prove its case. An evidential burden on an opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. However, the applicant ultimately bears the legal onus of establishing that, on a balance of probabilities, its application complies with the requirements of the Act, for those allegations for which the opponent has met its evidential burden. A legal onus on the applicant means that if a determinate conclusion cannot be reached once all relevant evidence is considered, then the issue must be decided against the applicant.
Grounds of Opposition Overview
[15] I note that the Opponent confirms that it will no longer rely on the alleged 38(2)(c) and section 16(3)(a) ground of opposition [Written Representations, para 6]. The Opponent also confirms that its 38(2)(d) ground will no longer be supported by the allegation of non-distinctiveness because the Mark did not distinguish and/or was not adapted to distinguish the Goods from the goods or services associated with the Opponent’s PURE FLAVOR TASTES BETTER trademark [Written Representations, para 7]. As such, the remaining grounds of opposition may be summarized as:
· The Mark is not registrable pursuant to section 38(2)(a) and 30(i) as the Applicant could not have been satisfied it was entitled to use the Mark in Canada in association with the goods as the trademark is composed solely of terminology that is clearly descriptive or deceptively misdescriptive.
· Pursuant to section 38(2)(b) and 12(1)(b), the Mark is not registrable as it is clearly descriptive or deceptively misdescriptive when considered in association with the Goods since PURE FLAVOR indicates to the average consumer that the Applicant’s goods provide a flavorful experience or an untainted flavor and/or that the goods consist of “pure flavor” namely pure substances used to alter or enhance the taste of food.
· Pursuant to section 2 of the Act, the Mark is not distinctive of the Applicant, within the meaning of section 2, as it does not distinguish and is not adapted to distinguish the Goods as it comprises clearly descriptive or deceptively misdescriptive terminology.
Section 30(i) Ground of Opposition
[16] The material date in respect of a section 30 ground is the filing date [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475 and Fiesta Barbeques Ltd v General Housewares Corp, 2003 FC 1021].
[17] The Opponent relies on evidence in the form of a file wrapper for United States registration No. 3927078, for the trademark PURE FLAVOR covering fresh fruits and vegetables [Buckingham affidavit, Exhibit A1], to support the allegation that the Applicant ought to have known that the Mark is composed solely of clearly descriptive or deceptively misdescriptive trade terminology [Written Representations, para 71].
[18] I agree with the Applicant’s comments that this ground of opposition has not been properly pleaded. Section 30(i) is not a “catch all provision” [Written Representations, para 66]. This section of the Act merely requires an applicant to declare itself satisfied that it is entitled to use the trademark in association with the claimed goods and services. That statement is included in this application.
[19] An Opponent may rely on section 30(i) of the Act in specific instances, such as where bad faith or fraud on the part of the applicant is alleged [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB); Interprovincial Lottery Corp v Western Gaming Systems Inc (2002), 25 CPR (4th) 572 (TMOB)]. The Opponent’s pleadings do not, however, contain allegations of this sort. For this reason, this ground of opposition is rejected.
[20] Had this ground been properly pleaded, I would nonetheless have rejected it on the basis the Opponent has not met its initial evidentiary burden. While dictionary definitions are relevant to the section 12(1)(d) ground, this is not the case with respect to the section 30(i) ground. Even if the Mark were clearly descriptive of the Goods, the Applicant would not be precluded from using the Mark in Canada. Therefore the Applicant could be satisfied of its entitlement to use [Gaines Pet Foods Corp v Tri-V Pet Foods Ltd, (1996), 73 CPR(3d) 566 (TMOB)].
Section 12(1)(b) Ground of Opposition
[21] The Opponent pleads that the Mark is not registrable in that it is clearly descriptive or deceptively misdescriptive of the character and quality of the Goods. The Opponent alleges that the word “pure” signifies that the Goods have an untainted composition and “flavor” describes the sensory response evoked by a substance in the mouth. As such it claims at paragraph 7 of its Statement of Opposition:
Taken together, the applied-for trade-mark “PURE FLAVOR” would consequently indicate to the average consumer that the Applicant’s wares provide a “flavorful” experience, or an “untainted” flavor, and/or that the Applicant’s wares consist of “pure flavor”, namely, pure substances used to alter or enhance the taste of food.
[22] The Opponent also argues that other parties routinely use the term “pure flavor” in association with herbs or similar products [Written Representations, para 52].
[23] It is the Applicant’s position that since the Mark is susceptible to other ready meanings, and because customers would have to engage in reflection, or a multi-stage reasoning process, it is registrable in spite of being suggestive, or even descriptive [Applicant’s Written Representations, para 41].
Assessment of a 12(1)(b) Ground of Opposition
[24] In deciding whether a trademark is clearly descriptive or deceptively misdescriptive of the character or quality of the goods, it is the first impression, left by the trademark on the average purchaser of the associated goods and services, that is relevant [Wool Bureau of Canada Ltd v Registrar of Trade-marks (1978), 40 CPR (2d) 25 (FCTD) at 27-8; Atlantic Promotions Inc v Registrar of Trade-marks (1984), 2 CPR (3d) 183 (FCTD) at 186]. In other words, the trademark must not be considered in isolation, but rather in its full context, in conjunction with the associated goods or services [Ontario Teachers’ Pension Plan Board v Canada (Attorney General), 2012 FCA 60]. The section 12(1)(b) analysis is not an abstract exercise of determining whether a character of the goods covered by the trademark matches dictionary definitions, but rather is a contextual inquiry based on the first impression of potential purchasers [Ottawa Athletic Club Inc v Athletic Club Group Inc 2014 FC 672 at para 188]. Furthermore, common sense must be applied when making the determination of whether a trademark is clearly descriptive or deceptively misdescriptive [Neptune SA v Canada (Attorney General) 2003 FCT 715].
[25] In respect of the statutory language, “character” means a feature, trait or characteristic of the goods and “clearly” means easy to understand, self-evident or plain [Drackett Co of Canada v American Home Products Corp, 1968 CarswellNat 9 (Can Ex Ct) at 34].
[26] For a trademark to be considered deceptively misdescriptive, the trademark must mislead the public as to the character or quality of the goods. The trademark must be found to be descriptive so as to suggest the goods are, or contain, something that is not the case. The purpose of the prohibition with respect to deceptively misdescriptive trademarks is to prevent the public from being misled [Atlantic Promotions Inc v Canada (Registrar of Trade Marks), 1984 CarswellNat 831 (FCTD); and Provenzano v Canada (Registrar of Trademarks), 1977 CarswellNat 676 (FCTD)].
[27] The purpose of the section 12(1)(b) prohibition is to protect the right of all traders to use apt descriptive language by preventing a single trader from monopolizing a term and placing legitimate traders at a disadvantage [Canadian Parking Equipment v Canada (Registrar of Trade Marks), 1990 CarswellNat 834 (FCTD)]. The courts have recognized that descriptive words are the property of all and cannot be appropriated by one person for their exclusive use [General Motors Corp v Bellows (1949), 1949 CanLII 47 (SCC), 10 CPR 101 (SCC) at 112-113].
The Opponent Meets its Evidential Burden
[28] The material date for this ground of opposition is the filing date of the application [General Housewares Corp v Fiesta Barbeques Ltd (2003), 2003 FC 1021, 28 CPR (4th) 60 (FC)].
[29] An opponent’s initial burden with respect to a section 12(1)(b) ground of opposition may be satisfied through reference to ordinary dictionary meanings of the words in the applicant’s mark [Flowers Canada/Fleurs Canada Inc v Maple Ridge Florist Ltd (1998), 86 CPR (3d) 110 (TMOB)].
[30] The Opponent provides dictionary definitions from a variety of sources [Buckingham Affidavit, para 3 and Exhibit B]. The Applicant has argued at paragraph 43 of its Written Representations that the Opponent’s dictionary definitions are “carefully curated”. While I agree, inasmuch as no explanation has been provided as to why these particular sources were chosen, I conclude several of the definitions are taken from respected and recognized reference sources and accurately reflect the meaning likely to be perceived when the meaning of the term “pure flavor” is considered in association with the Goods.
[31] The reference source Merriam-Webster.com defines “pure” as unmixed with any other matter. Flavor is defined as “the blend of taste and smell sensations evoked by a substance in the mouth”. The perhaps more simplistic, but nonetheless apt, definitions from the Oxfordlearnersdictionaries.com of “not mixed with anything else” for “pure” and “how food or drink tastes” for “flavor” convey essentially the same meaning as do many of the other reference sources [Buckingham affidavit, para 3 and Exhibit B1 to B8]. I find this meaning to be what the Mark conveys when considered in association with the Goods.
[32] I have considered the dictionary definitions provided by Ms. Buckingham, though they post-date the material date for this ground of opposition since the Registrar may take into account such evidence insofar as it may indicate a situation existing at the material date [George Weston Ltd v Corporate Foods Ltd (1988), 19 CPR (3d) 566 (TMOB]. I further note that the Applicant does not so much object to the definitions provided as argue there are additional meanings which render the Mark suggestive rather than clearly descriptive [see for example, Applicant’s Written Representations, para 45 and 46].
[33] Considering the Mark in the context of the goods I find that the meaning of PURE FLAVOR discussed above supports the Opponent’s allegation that the Mark is clearly descriptive or deceptively misdescriptive. The Mark clearly describes that the Applicant’s fresh herbs offer a characteristic taste, which is unmixed with, or untainted by, anything else. I find the term is equally clearly descriptive conveying that the fresh herbs offer a characteristic smell that is unmixed or untainted with anything else. However, I believe the more likely understood meaning would be for FLAVOR to refer to taste rather than smell. The definitions, most of which refer specifically to taste rather than smell, support this conclusion.
[34] The Opponent also relies upon third party websites to support the allegation that the term is one that would be relied upon by traders for descriptive purposes [Opponent’s Written Representations, para 52 and 53]. The Applicant argues that Ms. Buckingham’s evidence of third-party webpages corresponds to a time after the material date and should therefore not be considered [see Buckingham affidavit, Exhibit C for third-party webpages and Applicant’s Written Representations para 49 and 50 for arguments]. Even if the searches were conducted after the material date, given the ordinary meanings of the term PURE FLAVOR, the websites available at the time the evidence was prepared may be relied upon to infer the state of affairs that existed as of the material date [Yamaha Motor Canada Ltd v Polaris Industries Inc (2011), 99 CPR (4th) 373 (TMOB)]. Additionally, I note that the period of time between the date of filing and the date on which the websites were accessed is not so great that it would affect manner of use of the term, particularly owing to the unchanging nature of the Goods. While, for example, descriptive terms used for goods of a more technical nature might be expected to change over a few years, the same cannot be said about the Goods. These factors, taken together with the copyright information appearing at these pages, which suggests at least some of the sites have been in operation for several years, allows me to conclude that as of the material date it is likely that third parties relied on the term “pure flavor” to describe goods similar to those of the Applicant . I note for example at Exhibit C-1 of the Buckingham affidavit the entity behind Nuts.com, describes its ginger root powder as providing a “powerful punch of pure flavor”. Copyright information at the bottom of the site shows copyright dates of 1999-2019. At Exhibit C-11 basil infused olive oil is described as “creating pure flavor”, while copyright claims correspond 2006-2019. While not definitive proof these sites were operational as of the material date, they are sufficient to allow an inference to be drawn that third parties use the term for descriptive purposes.
[35] The Applicant also argues that the evidence comprising third party websites should be disregarded on the bases that they originate in other countries. I agree the websites do not appear to be limited to Canada and note other countries and currencies are mentioned [see, for example Buckingham affidavit, Exhibit C-3 showing £ and Exhibit C-4 referencing Denver, Colorado]. However, the fact that the websites are not specific to Canada is not necessarily fatal. The question is whether “pure flavor” is clearly descriptive in the English language and the fact that the sites are not Canadian does not automatically diminish their relevancy [see Canadian Inovatech Inc v Burnbrae Farms Ltd (2003), 31 CPR (4th) 151 (TMOB); Home Juice Co v Orange Maison Ltée [1970] SCR 942 and General Housewares Corp v Fiesta Barbeques Ltd (2001), 13 CPR(4th) 177 at 25 (TMOB)]. Additionally, I note that at least one of the websites appear to be that of a Canadian company and one specifically advertises shipping to Canada [see Exhibit C-5 showing an address in Markham, Ontario and Exhibit C-1 showing shipping to Canada].
[36] Furthermore, even if I were to exclude the evidence of third-party use of the term “pure flavor”, nothing would turn on my doing so because it is not necessary for the Opponent to prove the Mark is in common usage in order to meet its burden [Molson Canada 2005 v Drummond Brewing Company Ltd, 2011 TMOB 43; Alberta Government Telephones v Cantel Inc, 1994 CanLII 10102].
The Applicant Fails to Meet Its Legal Onus to Prove Registrability Under Section 12(1)(b)
[37] I find that the Applicant fails to meet its legal onus to prove, on a balance of probabilities, that its PURE FLAVOR trademark is not clearly descriptive for the following reasons.
PURE FLAVOR Is Clearly Descriptive Not Suggestive
[38] The Applicant argues that the Opponent “repeatedly and wrongly dissects” the Mark in support of its case [Applicant’s Written Representations, para 45] rather than considering the Mark as a whole. The Applicant, while not denying the descriptive nature of “pure” and “flavor”, argues that PURE FLAVOR, equally and more likely, conveys the meaning “unincumbered flavor” which is at most suggestive of the taste or aroma of a fresh herb. The Applicant argues that the term does not plainly describe an intrinsic or self-evident characteristic of fresh herbs [Applicant’s Written Representations, para 46].
[39] Relying on the dictionary definition of “herb”, as I am permitted to do [Tradall SA v Devil's Martini Inc, 2011 TMOB 65 at para 29], I note that according to the Canadian Oxford Dictionary, 2nd Ed. it means “any plant with leaves, seeds or flowers used for flavouring, food, medicine, scent etc.” I conclude that flavour (or flavor) is therefore an intrinsic characteristic of herbs. The laudatory adjective “pure” modifies the word “flavor” conveying the meaning that the Goods offer taste that is unmixed or untainted by anything else. As such I find the term clearly describes an intrinsic feature of the goods, namely taste, rather than being suggestive.
Multiple Meanings
[40] In the Applicant’s Written Representations, as well as at the hearing, the Applicant’s Agent argued that if a trademark has multiple meanings, it is not clearly descriptive.
[41] The Applicant points to the definitions provided by the Opponent suggesting PURE can also, for example, mean “straightforward or unaffected”, “like nothing else” or “absolutely or entirely”. It argues FLAVOR can refer to taste or smell. The Applicant’s position is that owing to the fact there is more than one possible meaning, the Mark cannot be clearly descriptive [Applicant’s Written Representations, para 46].
[42] At the hearing, the Applicant’s agent confirmed that, in support of the argument that multiple meanings render a trademark descriptive rather than clearly descriptive, it relies on paragraph 42 of the decision GWG Ltd v Registrar of Trademarks, (1981), 55 CPR (2d) 1 (FCTD) [see also Written Representations para 46]. I note that this case involved the trademark KIDFITTERS applied for in association with a variety of clothing. In refusing the application the Registrar relied on definitions for “kid”, “fit” and “er”. The Registrar found that “er” meant “one that has, e.g., the ship is a three-decker” to conclude that the average person of ordinary intelligence on hearing KIDFITTERS, in relation to clothing such as jeans and jackets, would understand the garments are designed to fit and be suitable for wear by children. On appeal, Mr. Justice Cattanach found that the word KIDFITTERS to be a coined term combining, not three words but two words, namely “kid” and “fitters”. He found that by breaking the term into three, rather than two components, the Registrar had done “violence” to the well-known word “fitters” and that it was more appropriate to combine “kid” and “fitters” rendering a combination meaning persons who fit young children. Noting fitting kids would be a service rather than goods, he went on to assess whether the mark was clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s clothing. He found it took an exercise in mental gymnastics to arrive at the meaning that the goods were designed to fit children rather than conclude the term referenced the services the manufacturer performs. Because another ready meaning existed that did not clearly describe the goods, the term was found to be a covert and skillful allusion to the character of the goods and therefore suggestive rather than clearly descriptive. A further differentiating factor is that contrary to this case, “kidfitters” was not a word other traders would use in the ordinary course of their business.
[43] The trademark KIDFITTERS was considered registrable not merely because the term had multiple possible meanings, but because the ready meaning assigned the by the court to the trademark rendered it ambiguous. This is contrary to the present case as there is no ready meaning available for the Mark that is ambiguous. Further, the fact that a trademark may have multiple meaning is not determinative since if each of the meanings of a trademark are clearly descriptive, then the trademark is unregistrable under section 12(1)(b) of the Act [Canadian Tire Corp v Hunter Douglas Inc (2010), 81 CPR (4th) 304 (TMOB)].
[44] In the present case, the meaning of the term “pure flavor”, as a matter of first impression, clearly describes or deceptively misdescribe the Applicant’s goods. It is clear from the evidence that the term “pure” has different meanings depending on the context. For example, when referenced in respect of subjects of study it means concerned with increasing knowledge of the subject rather than with using knowledge in practical ways, such as in “pure mathematics”. In the case of music, it means free from harshness or roughness. However, these meanings are not ready or apt meanings when considered in conjunction with the term FLAVOR for use in association with fresh herbs. The Applicant points to the meaning “straightforward or unaffected” [Written Representations, para 46] but this meaning is prefaced with the term “literary style” and is not a meaning that would ordinarily be attributed to the term PURE when considered in conjunction with the term FLAVOR for use in association with fresh herbs.
Not a Skillful Allusion to Characteristics of the Goods
[45] The Applicant also argues that skillful allusions to a characteristic of the goods, which require some reflection or multistage reasoning to arrive at the meaning, will result in a trademark that is registrable [see for example Applicant’s Written Representations, para 41]. The Applicant suggests that, for example, because it is not obvious whether the meaning of “untainted composition” in the context of herbs refers to their being free of pesticides, non-GMO, organically grown or free of other herbs, the Mark is suggestive, and not clearly descriptive [Written Representations, para 47]. I disagree. The words PURE FLAVOR describes that the associated fresh herbs have a flavor that is unmixed and untainted by anything else. This is not a skillful allusion to a characteristic of the goods but rather a term that clearly describes an intrinsic feature of the Goods.
Clearly Descriptive or Deceptively Misdescriptive of Function, Purpose and Effect
[46] At the Hearing, the Applicant’s agent argued that PURE FLAVOR could not be considered clearly descriptive of the character of the goods as it referred to the outcome of using the fresh herbs. However, since “character” includes the function, purpose and effect of the goods, when used as intended I find the Mark is also clearly descriptive of the function, purpose and effect of the Goods, which is provide a taste that is untainted by anything else [Thompson Research Associates Ltd. v Canada (Registrar of Trade Marks) (1983), 71 CPR (2d) 287 (FCA) affirming 67 CPR(2d) 205 (FCTD)].
Removing Words from the Trade Vocabulary
[47] The Applicant argues registration of the Mark will not deprive traders and competitors from using language to describe their goods, and the third-party website information contained in the Buckingham Affidavit does not prove use of the term by others [Written Representations, para 49 to 51]. As discussed above, the evidence supports the conclusion that traders use the term “pure flavor” for descriptive purposes. If granted registration, the Applicant would remove a term from the vocabulary of others providing comparable goods.
Significance of the Applicant’s Prior Registrations
[48] The Applicant also argues that others would not be deprived of useful trade language because the existence of the Applicant’s monopoly created by its Registered Marks already prevents this [Written Representations, para 56]. In this regard the Applicant relies on its evidence comprising an extensive enumeration of its prior use and promotion of Registered Marks, used in association with fresh fruits and vegetables and fresh fruit, fresh vegetables, spices, cheese and dressing. It is well established that reliance on a family of trademarks requires proof of use of each trademark in the alleged family [McDonald’s Corp v Yogi Yogurt Ltd (1982), 66 CPR (2d) 101 (FCTD)]. It is impossible to ascertain from the evidence which of the Applicant’s trademarks were used in association with particular goods, and the extent of sales or advertising of each. Mr. Veillon relies on generalized statements such as in paragraph 7 of his where he references sales exceeding 170 million dollars for “some or all of the Pure Flavor Products sold in association with the Pure Flavor Family of Trademarks”. However, even if I had accepted the Applicant’s registration, use and promotion of its Registered Marks created a monopoly, it would not have changed the outcome of the Opposition. The Applicant still would not have met its legal burden for the reasons that follow.
[49] At the Hearing I enquired as to whether the Applicant was aware of any jurisprudence that might support its reliance on prior use, promotion or registration of the same trademark used in association with related goods. The response was that it did not know of such jurisprudence.
[50] First, as far as the Applicant’s Registered Trademarks are concerned, it would be inappropriate to comment on, for example, the scope of these registrations. The Opposition Board is not in a position to explain why particular trademarks were deemed registrable by the Trademarks Office [Simmons I.P. Inc. v Park Avenue Furniture Corp. (1994), 56 CPR (3d) 284 at 288]. Even if I were to do so, the Goods associated with the Mark are different than those covered by the Registered Marks. This is significant since for the Goods, flavor is an intrinsic characteristic, whereas there is no evidence before the Registrar to suggest this is the case in respect of the goods covered by the Registered Marks. This differentiates the current application from the Applicant’s prior registrations. Additionally, I note the burden of proof when an application is under examination differs from that in opposition [Matusalem v Espiritu de Chile Ltd, 2011 TMOB 137].
The 12(1)(b) Ground of Opposition Succeeds
[51] The Applicant has a legal onus to establish, on a balance of probabilities, that the Mark did not (as of the date of filing of the Application) clearly describe or deceptively misdescribe an intrinsic characteristic of the Goods. I find that the Applicant has not met its legal onus. The first impression created by PURE FLAVOR would be that the Goods (various fresh herbs) offer unmixed or untainted taste or smell and that a normal or reasonable person would not require effort or imagination to reach this conclusion. I also find that Mark describes the function or effect of the Goods. Therefore, the Mark is clearly descriptive of the Goods. As I have found the Applicant’s Mark to be clearly descriptive, I need not address the deceptively misdescriptive allegation set out in the pleadings.
Section 2 Ground of Opposition
[52] The material date with respect to the distinctiveness ground is the filing date of the statement of opposition, September 19, 2018 [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185].
[53] The Opponent alleges in its Statement of Opposition that the Mark is not registrable because it is composed solely of clearly descriptive or deceptively misdescriptive trade terminology and as such does not distinguish, and is not adapted to distinguish, the Applicant’s goods from those of others. The Applicant argues that the Opponent has not met its initial burden with respect too “all grounds” but does not provide more specific comments in respect of the section 2 ground [Written Representations, para 34].
[54] As argued by the Opponent, a clearly descriptive or deceptively misdescriptive trademark is, necessarily, not distinctive [see Canadian Council of Professional Engineers v APA- The Engineered Wood Assn (2000), 7 CPR (4th) 239 (FCTD) at para 49]. In light of my earlier finding that the Mark is clearly descriptive, as of January 18, 2017, there is no reason to believe that this is otherwise as of the date of the Opposition, namely September 19, 2018. In respect of the alleged use of the Mark as trade terminology, if anything, the Opponent’s case is slightly stronger as the evidence of third-party use of the term “pure flavor” is more contemporaneous as it is dated June 19, 2019.
[55] The finding above that the Mark is clearly descriptive or deceptively misdescriptive means this derivative ground succeeds as well.
[56] For the same reasons as noted above, I reject the Applicant’s arguments that prior use and promotion of its Registered Marks, covering goods other than those claimed in the Application, are relevant in respect of this section 2 ground. The Applicant admits the goods covered by its registrations are similar, not identical to the Goods [Written Representations, para 56]. It is well established that section 19 of the Act does not give an Applicant who is the owner of a prior registration automatic entitlement to register a similar trademark [McSheep Investments Inc (formerly Telpo Investments Inc) v Hemingway, Ltd 2021 TMOB 58 at para 45]. Further, the Applicant’s evidence of use of the Mark with the fresh fruit and vegetables and the like is insufficient to actually distinguish the Mark for use in association with the Goods.
[57] I therefore find that the registration, use and promotion of the Applicant’s Registered Marks has no bearing on the whether the Mark is adapted to distinguish the goods of the Applicant from those of others. In light of the clear descriptiveness and its, albeit limited, use as a trade term by others, I conclude the Mark is not adapted to distinguish the Goods from the goods of others within the meaning of section 2 of the Act. As there is no evidence of the Mark having acquired distinctiveness, at any material time, this ground succeeds as well.
Disposition
[58] For the reasons provided above and pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(12) of the Act.
___________________________
Coleen Morrison
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: June 20, 2023
APPEARANCES
For the Opponent: No one appearing
For the Applicant: Deborah Meltzer
AGENTS OF RECORD
For the Opponent: Gowling WLG (Canada) LLP
Ottawa, Ontario
For the Applicant: MBM Intellectual Property Agency
Ottawa, Ontario