CONAGRA INC. v. MCCAIN FOODS LTD.

CONAGRA INC. v. MCCAIN FOODS LTD.
Court (s) Database
Federal Court Decisions
Date
2001-08-29
Neutral citation
2001 FCT 963
File numbers
T-1501-00
Decision Content
Date: 20010829
Docket: T-1501-00
Neutral Citation: 2001 FCT 963
BETWEEN:
CONAGRA, INC.
Applicant
- and -
McCAIN FOODS LIMITED
Respondent
REASONS FOR ORDER AND ORDER
BLAIS J.
[1] This is an appeal by ConAgra, Inc. (the "applicant") of a decision of the Registrar of Trade-marks through the Opposition Board (the "Registrar") dated June 14, 2000 rejecting, in part, an opposition by the applicant, against trade-mark application No. 760,649 for registration of the trade-mark HEALTHY DECISION filed by McCain Foods Limited, (the "respondent").
FACTS
[2] On August 2, 1994, the respondent filed an application to register the trade-mark Healthy Decision based upon proposed use in Canada. On or about March 11, 1996, the applicant filed a statement of opposition to registration of the mark, following the advertisement of McCain's mark in the Trade-marks Journal.
[3] In 1998, the respondent amended its statement of wares, whereby the proposed trade-mark was to be used in association with:
- frozen potato produces;
- potato specialties;
- cheese and cheese fondu;
- lasagna and pasta dishes;
- seafood;
- frozen microwavable prepared lunches;
- frozen fruit juices and fruit beverages;
- beverages;
- juice bars;
- frozen berries and fruit;
- frozen pizza;
- fresh entrees;
- frozen prepared entrees;
- pate;
- meats and delicatessen foods.
[4] The applicant's grounds of opposition were based on subsection 16(3) of the Trade-marks Act, R.S.C.1985, c. T-13 (the "Act"), section 30 of the Act, and non-distinctiveness.
DECISION OF THE REGISTRAR
[5] Before the Registrar, the applicant relied on subsection 16(3) of the Act and argued that the respondent was not entitled to registration of the trade-mark Healthy Decision because at the date of filing of the application, Healthy Decision was confusing with the applicant's trade-marks Make the Healthy Choice, Healthy Choice, and Healthy Choice & Design "applications for registration of which had been previously used and/or filed in Canada by the applicant".
[6] The Registrar concluded that there was no evidence of any use of the applicant's mark, Make the Healthy Choice, prior to the filing date of the respondent's application, namely August 2, 1994 and therefore, the paragraph 16(3)(a) ground of opposition failed to the extent that it relied on this trade-mark.
[7] The Registrar found that the evidence showed clearly that the applicant had not abandoned use of its Healthy choice trade-mark with respect to pasta sauces as of the date of advertisement of the respondent's application, namely, February 7, 1996.
[8] The Registrar however noted that the evidence concerning frozen dinners and entrees was less clear. While it was not clear that sales were ongoing as of February 7, 1996, the Registrar nevertheless concluded that the applicant had not abandoned its marks with respect to frozen dinners and entrees as of February 7, 1996.
[9] As for the paragraph 16(3)(b) grounds, the Registrar noted that the application No. 663,368 for Make the Healthy Choice was not pending as of August 2, 1994, having issued to registration on October 1, 1993. Accordingly, the paragraph 16(3)(b) ground failed to the extent that it relied on the application for Make the Healthy Choice.
[10] Applications No. 628,993 for Healthy Choice & Design and No. 679,139 for Healthy Choice were pending as of August 2, 1994 and February 7, 1996, but were abandoned in 1999.
[11] Application No. 679,140 for Healthy Choice & Design is still pending but currently only covers pudding and spaghetti sauces and disclaims the right to the exclusive use of the words Healthy and Choice apart from the trade-mark.
[12] The Registrar then applied the test for confusion set forth in subsection 6(2) of the Act. The Registrar considered the likelihood of confusion between the trade-marks Healthy Choice and Healthy Decision pursuant to paragraph 16(3)(a) of the Act, for which the material date is August 2, 1994. The Registrar considered this to be the strongest of the applicant's subsection 16(3) grounds of opposition and was of the view that if it was not successful, the remaining subsection 16(3) grounds would not succeed.
[13] The Registrar observed that neither the mark Healthy Choice nor the mark Healthy Decision had much inherent distinctiveness as both suggest that the purchaser or consumer of the wares made a choice or decision that is good for his or her health.
[14] The Registrar found that as the application by the respondent was based on proposed use, a consideration of the length of time each mark had been used as of the filing date of the application favoured the applicant. Similarly, the extent to which each of the marks had become known necessarily favoured the applicant.
[15] The Registrar further noted that as of August 2, 1994, the applicant had used Healthy Choice for frozen dinners, frozen entrees and pasta sauces. Some of the applicant's Healthy Choice frozen dinners and entrees consisted of lasagna and pasta. Given that the respondent's statement of wares included fresh entrees, frozen prepared entrees, lasagna and pasta dishes, and frozen microwavable prepared lunches, the Registrar was of the view that the wares of the respondent and applicant clearly overlapped.
[16] The Registrar also noted that the parties' channels of trade overlapped as both parties sell their wares through retail grocery stores.
[17] The Registrar found that the marks resembled each other in appearance and sound as a result of them both consisting of two words, with the first word being "healthy". As for the idea suggested, the Registrar found the resemblance between Healthy Choice and Healthy Decision considerable, the words "choice" and "decision" having overlapping meanings.
[18] As a surrounding circumstance, the Registrar then considered the state of the Trade-mark Register. The Registrar explained that while consumers were not likely to be confused simply because two marks both started with the word Healthy, he was not convinced that the respondent's state of the Register evidence showed dilution with respect to the idea expressed by the marks in issue as of the relevant dates.
[19] The Registrar was not satisfied that there was no reasonable likelihood of confusion between Healthy Choice frozen dinners, frozen entrees and pasta sauces and Healthy Decision fresh entrees, frozen prepared entrees, lasagna and pasta dishes, and frozen microwavable prepared lunches. The Registrar explained that this was primarily due to the resemblance between the marks in ideas suggested, the overlap in the wares and channels of trade, and the significant use of Healthy Choice prior to August 2, 1994.
[20] Regarding the paragraph 16(3)(b) grounds of opposition, the Registrar considered the current state of the applicant's application as a further surrounding circumstance in assessing the likelihood of confusion between the trade-marks at issue.
[21] The Registrar concluded that confusion between the respondent's mark and the marks which were the subject of applications Nos. 628,993 and 679,139 was no longer an issue. Furthermore, given that the only wares remaining in application No. 679,140 were spaghetti sauce and pudding, the Registrar found that the only wares of the respondent for which he was not satisfied that there was no reasonable likelihood of confusion under paragraph 16(3)(b) were lasagna and pasta dishes.
[22] The next ground of opposition before the Registrar was that the respondent's application did not comply with the requirement of section 30 of the Act, "by virtue of the fact that the respondent could not be satisfied that it was entitled to use the trade-mark Healthy Decision in Canada in association with the wares described in the application given that, on the date of the filing of the application in Canada, the respondent was aware of the use by the applicant of the trade-marks Make the Heathy Choice, Healthy Choice, Healthy Choice & Design. Further, the respondent did not have and does not now have the intention of using the trade-mark Healthy Decision in association with the wares set out in application No. 760,649."
[23] The Registrar found that there was no evidence that the respondent ever lacked the intention to use the applied for mark and that the respondent could have been satisfied that it was entitled to use its mark if it did not believe that its mark was likely to cause confusion with the applicant's marks. The Registrar did not discuss this ground further.
[24] The last ground of opposition was that "the respondent's trade-mark was not distinctive since it did not actually distinguish nor was it adapted to distinguish the wares or services of others, including the wares and services of the applicant".
[25] The Registrar accepted that the respondent had satisfied its evidential burden to prove the allegations of fact supporting the ground of non-distinctiveness, at least with respect to Healthy Choice pasta sauce.
[26] The Registrar issued a split decision refusing the respondent's application pursuant to subsection 38(8) of the Act with respect to fresh entrees, frozen prepared entrees, lasagna and pasta dishes, and frozen microwavable prepared lunches and rejected the opposition of the applicant with respect to the remaining wares.
THE EVIDENCE
The applicant's evidence
Before the Registrar
The affidavit of Taketo Murata (respondent's record, vol.1, tab 4)
[27] The applicant submitted the affidavit of Taketo Murata, the President of the Canadian distributor of the applicant's Healthy Choice products.
[28] In his affidavit, Mr. Murata stated that :
- the applicant first used its trade-mark Healthy Choice in Canada on June 24, 1991. At that time, the applicant's Healthy Choice frozen dinners and frozen entrees were introduced, distributed and marketed in the province of Ontario. Distribution of these products was subsequently extended to all other Canadian provinces except Quebec and Newfoundland;
- in July, 1992, the applicant launched its Healthy Choice line of pasta sauces for retail sale in Ontario. This was followed shortly by the introduction of that product to all other Canadian provinces except Quebec and Newfoundland;
- as of May 1995, the approximate value of the applicant's Canadian gross sales of Healthy Choice dinners, entrees, and pasta sauces was Cdn $36,000,000;
- the trade-mark Healthy Choice is displayed on the packaging and labelling of all Healthy Choice dinners, entrees and pasta sauces sold in Canada;
- during 1991 and 1992, when the Healthy Choice line of food products was being launched in Canada, the trade-mark was advertised in television commercials, grocery store advertising and consumer couponing;
- as a result of the distribution of the applicant's Healthy Choice food products worldwide, the extent of its sales in Canada and the rest of the world and the size of the applicant's advertising budget, the applicant's trade-mark Healthy Choice has become well-known in Canada.
[29] Mr. Murata was also crossed-examined on his affidavit: (respondent's record, vol.1, tab 5).
Additional Evidence filed before this Court
Affidavit of Ronald Koopman (applicant's record, tab C.)
[30] In his affidavit, Mr. Koopman, co-owner and General Manager of Great Northern Sales Merchandising Inc. (which represents food manufacturers in Canada, with the function primarily of ensuring that their food and grocery products are being carried by Canadian grocery stores, are actually placed on the store shelves and also obtain favourable placement on the shelves vis a vis the food and grocery products of its clients' competitors) states that:
- generally, the respondent's frozen food products with respect to which the Trade-marks Office permitted the registration of the Healthy Decision trade-mark would be sold in close proximity to, and in many cases adjacent to, frozen dinners and frozen entrees;
- in Canada, the grocery store business can be viewed as falling into two categories: the small to medium sized stores, having square footage of up to 25,000 square feet, and larger stores, with square footage of more than 25,000 square feet. In Canada, most grocery stores are small to medium sized stores;
- in the small to medium sized grocery stores, the frozen food section typically consists of only one aisle. In this aisle, the grocery store will offer consumers as wide a variety of frozen food products as possible. Given space constraints, therefore, these frozen food products are usually packed together tightly. In these situations, frozen food products such as frozen french fries are often placed adjacent to, or near, frozen dinners and entrees. In any event, in his experience, in such situations, frozen potato products would usually not be positioned more than thirty feet from frozen dinners and entrees. Similarly, frozen fruit juices and fruit beverages, juice bars, frozen berries and fruit, and frozen pizza, would usually not be more than thirty feet from frozen dinners and entrees;
- in the larger stores, the frozen food section may consist of two aisles. Dairy products would be located on the outside wall of one aisle. On the other side of the aisle, i.e. the first inside cooler wall, one would typically find frozen pizzas, frozen dinners and entrees, frozen pretzel sticks, frozen pogos, frozen waffles, etc. Behind that, in the other aisle, one would typically find frozen juices and beverages and ice cream. Between the frozen pizzas and frozen dinners and entrees etc., and the frozen juice and beverages and ice cream, one would typically find frozen vegetables and frozen beverages. Accordingly, even in the larger stores, all of these frozen foods are placed in the same section of the grocery store (i.e. the frozen food section). Typically, a consumer would navigate through the entire frozen food section continuously during one shopping experience. Even in the larger stores, some of the food products which the Trade- marks Office allowed the respondent to register, such as frozen pizzas, would be place adjacent to frozen dinners and entrees. The other frozen food products at issue would also be in close proximity to frozen dinners and entrees;
- from the point of view of marketing, frozen foods, in his view, are generally marketed to consumers as a convenient alternative to the fresh version of the same foods.
Affidavit of Eli Fellman (applicant's record, tab D.)
[31] In his affidavit Mr. Fellman, student-at-law at the law firm, Stikeman Elliott, the solicitors for the applicant, states that:
- he downloaded the applicant's 1999 annual report and printed it;
- on September 11, 2000, he attended the Loblaws grocery store located at 375 Rideau Street in Ottawa, Ontario. The grocery store's frozen food section consisted of two aisles;
- the frozen french fries were located in the inside cooler wall of the first frozen food aisle. The frozen french fries were placed immediately below the frozen dinners and entrees. Frozen pizzas were adjacent to the frozen french fries and frozen dinners and entrees, at one end of the aisle. Frozen juices were at the other end of the aisle and were placed approximately thirty feet from the frozen dinners and entrees;
- the second frozen food aisle was located behind the inside cooler wall of the first frozen food aisle. The frozen food cooler in the second aisle contained ice cream, cream bars, juice bars, and other frozen novelty items;
- there was also a frozen food cooler situated between the first and second frozen food aisles, which was accessed as one exits one aisle and turned to access the other aisle. This cooler contained additional frozen juices, placed two shelves below additional frozen dinners and entrees;
- on September 11, 2000, he also attended the Loblaws grocery store located at 64 Isabella Street in Ottawa, Ontario. The grocery store's frozen food coolers were placed only along the outside wall of the dairy/frozen food section, and consisted of approximately one side of one aisle;
- in the first frozen food cooler, frozen french fries were placed immediately below the frozen dinners and entrees. Frozen lasagnas were immediately adjacent to the frozen french fries and frozen dinners and entrees. Frozen pizza pops and pizza pockets were also immediately adjacent to the frozen lasagna;
- the second frozen food cooler was perpendicular to the first frozen food cooler. In the second frozen food cooler, frozen vegetables were immediately above the frozen juices. Frozen fruit was immediately adjacent to the frozen juices and frozen vegetables. Frozen waffles were immediately adjacent to the frozen fruit. Ice cream and ice cream products were immediately adjacent to the frozen waffles. Frozen juice bars were immediately adjacent to the ice cream and ice cream products.
The respondent's evidence
Before the Registrar
The affidavit of John Marsalek (respondent's record, vol.1, tab 6)
[32] In his affidavit, Mr. Marsalek, articling student employed by the respondent's agent, stated that:
- he telephoned the following food manufacturers: U.L. Canada Inc. (Thomas J. Lipton Division); National Sea Products Ltd.; H.J. Heinz Co. of Canada Ltd.; Campbell Soup Co.; and Borden Inc.;
- he spoke with customer service representatives at each of these companies and enquired of each whether the company makes any products with the word "Healthy" in the trade-mark. He was informed by the said customer service representatives with respect to each of the companies with the following information:
Healthy Request (Campbell Soup Co.),
Healthy Harvest (Borden Inc.),
Healthy Catch (National Sea Products),
Healthy Bake (National Sea Products) and,
Healthy Gourmet (H.J. Heinz Co.);
- he went to the Supercentre Store in Burlington, Ontario, on Sunday, June 8, 1997 to search for the listed products and located and purchased the above products;
- he was informed by Colleen Spring Zimmerman, Barrister and Solicitor of Fasken Campbell Godfrey, that the original of these food packages have been filed with the Canadian Trade-marks Office, on June 9, 1997;
- he conducted research to determine the legislation governing how and when a manufacturer may use the word "healthy" on its product packaging for a food product. A summary of his findings appears at pages 3 and 4 of his affidavit.
[33] Mr. Marsalek was crossed-examined on his affidavit: (respondent's record, vol.1, tab 7).
The affidavit of Petra J. McDonald (respondent's record, vol. II, tab 1.)
[34] In her affidavit, Mrs. McDonald, trade-mark agent employed by Fasken Campbell Godfrey, the law firm and agent acting on behalf of the respondent, stated that:
- on September 15, 1997, she conducted trademarkscan computer searches of the Canadian Trade-marks Office database to locate those trade-marks on the Canadian register which include the word "healthy" or derivatives of the word "health" and which were either pending or registered for those wares falling in international classes 29, 30 and 31;
- she obtained the file histories for Make the Healthy Choice, Healthy Choice, and Healthy Choice & Design and determined the following:
Application No. 628,993 for Healthy Choice & Design was filed on April 5, 1989 and was still pending. The respondent had until November 13, 1997 in which to file a response to the Examiner's communication dates May 13, 1997. The Examiner had advised that advertisement of application No. 628,993 was contingent upon the receipt of an amended application in which the words Healthy Choice have been disclaimed apart from the trade-mark as heretofore requested;
Application No. 679,139 for Healthy Choice was filed on April 3, 1991 and was still pending. The Examiner had maintained her objection based on paragraph 12(1)(B) of the Act, despite an argument filed by the respondent on March 24, 1993 arguing that the trade-mark Healthy Choice is distinctive and is registrable. The respondent had been given until March 6, 1998 to respond to the April 6, 1994 office action by filing evidence to claim the benefit of section 14 of the Act;
Application No. 679,140 for Healthy Choice & Design was filed April 3, 1991 and was still pending. The Examiner had requested a disclaimer of the words "healthy" and "choice". By letter dated March 4, 1996 the respondent requested an extension of time since it was in the process of assembling evidence in support of a claim under section 14 of the Act. The respondent had been given until March 6, 1998 to respond to the April 6, 1994 office action by filing evidence to claim the benefit of section 14 of the Act;
Application No. 663,368 for Make the Healthy Choice issued to registration No. 417,527 on October 1, 1993. The registrant was required to disclaim the right to the exclusive use of the word "healthy" apart from the trade-mark.
The affidavit of Steven A. Yung (applicant's record, tab H.)
[35] In his affidavit, Steven A. Yung, Vice-President Marketing of McCain Foods(Canada) stated that:
- the respondent uses the trade-mark Healthy Decision on frozen french fried potatoes. Theses are sold through retail grocery stores to the general public;
- the respondent has used the trade-mark Healthy Decision in Canada, continues to use this trade-mark in Canada and has not at any time abandoned the use of this trade-mark in Canada;
- sales of frozen french fries potatoes by the respondent bearing the trade-mark Healthy Decision in fiscal year 1996 were $13,074,404, in fiscal year 1997 they were $12,255,623 and in fiscal year 1998 they were anticipated to be $18,600,909;
- many of the respondent's competitors sell food products which include the word "healthy". Such well known companies are Societé des Produits Nestlé S.A. (Lean Cuisine and Stouffer's food products) and Campbell Soupe Company (Swanson and Weight Watchers food products).
- over the last three years, the respondent and its subsidiary companies have spent over Cdn$60 million in advertising each year. In the 1997 fiscal year which ended June 30, 1997, the respondent spent almost Cdn$1 million covering media advertising and promoting in Canada frozen french fried potato products bearing the trade-mark Healthy Decision. In the 1998 fiscal year, it was estimated that the respondent would spend over Cdn$660,000 for advertising and promotion in Canada for products bearing the Healthy Decision trade-mark. This advertising includes television, radio and print media;
- he was of the opinion that the trade-mark Healthy Decision, as used and to be used by the respondent in association with the list of wares set out in the advertisement for the respondent's trade-mark application Healthy Decision, which appeared in the February 7, 1996 issue of the Trade-marks journal, is distinctive, is capable of distinguishing the wares of the respondent and actually distinguishes the respondent's food products on which it is currently used;
- he was of the opinion that the applicant was not entitled to a monopoly in the use of the word "healthy" in association with food products;
- Healthy Choice owned by the applicant was not well-known outside of the United States. Healthy Choice was not well-known in Canada and has never been;
- while the Healthy Choice trade-mark was allegedly first used by the applicant in June, 1991, it is virtually unknown in the Canadian market place today. The Healthy Choice frozen dinner and frozen entrees are in no major grocery stores in the country. These products would be found, if at all in Canada, in small privately operated grocery stores;
- the market launch of the Healthy Choice food products was in 1991 and 1992. By 1993, the market launch had failed. At the height of the market launch, the Healthy Choice products may have had six to seven percent of the market share of frozen dinners and frozen entrees in Canada;
- there has been virtually no major advertisements of the Healthy Choice products of the applicant in Canada since 1993;
- there are no production facilities in Canada for the Healthy Choice products and in his opinion, there is no commitment by the applicant to the manufacture and sale of the products in Canada;
- the applicant does not sell its Healthy Choice products into the food service business in Canada;
- the applicant's market penetration in Canada for its Healthy Choice products is around zero. The applicant is not a player in the frozen dinner and entree business under the Healthy Choice mark in Canada. Any use of the trade-mark Healthy Choice in Canada would be in association with pasta sauces but is minor;
- the applicant is spending very little time and money on the support of the Healthy Choice brand in Canada;
- the applicant does not use and promote a family of Healthy Choice trade-marks in Canada.
[36] Mr. Yung was cross-examined on his affidavit.
Additional Evidence filed before this Court
Affidavit of John Senders (applicant's record, tab E.)
[37] In his affidavit, Mr. Senders, consulting scientist working largely in research and analysis of human perception and behaviour in a number of areas, states that:
- his opinion is that the trade-mark Healthy Decision for use in association with a variety of food products is distinctly different both in formal definition and in connotation from the applicant's trade-mark Healthy Choice;
- this conclusion stems from three sources. The first of these is the American College Dictionary. The second is the body of refereed, archival research on decision theories and processes in the scientific literature of the behavioral sciences. The third is his own assessment of the manner in which confusion arises in the minds of consumers of products;
- based on the American College Dictionary, it is clear that the word "decision" is used to indicate a mental process. It is also clear that "choice" is used to indicate an action, the freedom to select one of an array of options, or the thing actually chosen. It is clear that the word "choice" is used to indicate an observable, as opposed to a mental, process;
- the scientific literature, in its treatment of "decision processes" also distinguishes between overt acts, behavior that can be observed in the laboratory, and inferred underlying mental processes, whose existence is dependent completely upon the observation of a choice-either an actual selection of a thing or an equally observable statement of one of an array of things that could be said. Thus, when someone - a subject in an experiment or a purchaser in a shop - chooses one thing from the array of available choices, the observable choice is a real phenomenon. It is detectable classifiable, countable;
- a common scientific way of analyzing the data gathered from real choices is to hypothesize a mathematical process of decision whose equations can be calculated from the statistics of choice. In common parlance people justify their choices by claiming that they "made up their mind" to act as they did. There is no substantive evidence that either the decision process or the "making up of the mind" actually existed. Their claim to existence rests only on the unsubstantiated assertions of people engaged in rationalizing the choices that were made- their own or those of others;
- it is his view, based largely on his many years of observing and measuring confusions between pairs of trade-marks used with similar or the same lines of products, that significant confusion is unlikely to be found between the trade-marks "Healthy Choice" and "Healthy Decision";
- it is also clear that the trade-mark Healthy Choice is clearly descriptive or deceptively misdescriptive of the character or quality of the food products (which bear that mark). The food product is the selected "thing" i.e. the choice. One must also consider whether the word Healthy is clearly descriptive or deceptively misdescriptive. It must, by the doctrine of the excluded middle, be on or the other;
- the trade-mark Healthy Decision is neither clearly descriptive nor deceptively misdescriptive of the character or quality of the food products (which bear or are intended to bear that mark). It refers to the mental process of the buyer and not the product chosen.
APPLICANT'S POSITION
Standard of Review
[38] The applicant submits that in this appeal, significant new evidence has been filed by the applicant. Therefore, when considering the evidence, this Court should ask itself whether the Registrar reached the wrong decision on the issue of confusion between the applicant's trade-marks and the respondent's trade-mark Healthy Decision, as it relates to the remaining wares.
Mr. Senders' affidavit is irrelevant
[39] The applicant submits that Mr. Senders gives his opinion on matters which are not in issue in this appeal, namely that:
(i) the trade-mark Healthy Decision for use in association with a variety of food products is distinctly different both in formal definition and in connotation from the applicant's trade-marks;
(ii) the applicant's Healthy Choice trade-mark is either clearly descriptive or deceptively misdescriptive of the character or quality of the food products which bear the mark, while the Healthy Decision trade-mark is neither.
The Registrar erred in considering the 1999 abandonment of certain trade-mark applications by the applicant in its assessment of confusion under paragraph 16(3)(b)
[40] The applicant contends that the Registrar erred in making his decision because it ignored the plain language of paragraph 16(3)(b), and the legislative intent to create a priority scheme based on the "first to file", in determining the registrability of competing trade-mark applications based on proposed use.
[41] The applicant further alleges that the Registrar misinterpreted the decision in Molson Breweries, A Partnership v. Labatt Brewing Co. Ltd. (1996), 68 C.P.R. (3d) 202 (F.C.T.D.) ("Molson Breweries") as standing for the general proposition that confusion between an applied for mark and the mark which is the subject of an application abandoned after the material date is no longer an issue in an opposition under paragraph 16(3)(b).
[42] The applicant also alleges that the Registrar should have had regard to the issue of confusion between the abandoned trade-mark applications and the trade-mark Healthy Decision since the remaining wares in the respondent's application were covered in the applicant's trade-mark applications 679,139 and 679,140 for Healthy Choice, which were valid and subsisting at the material date, i.e. August 2, 1994, and at the filing of the applicant's statement of opposition, but abandoned five years later.
There is a reasonable likelihood of confusion between the applicant's trade-marks and the trade-mark Healthy Decision (in relation to the remaining wares)
[43] The applicant submits that the Registrar erred in finding that there was no overlap between the applicant's pasta sauces, frozen dinners and frozen entrees, and the remaining wares, and hence in finding no reasonable likelihood of confusion between the applicant's trade-marks and the respondent's trade-marks.
[44] The applicant alleges that the Registrar erred in finding that the two trade-marks are confusing only with respect to wares that overlap directly but not with respect to other similar wares since the finding places undue emphasis on a technical and narrow classification of the different categories of food products at issue in this case.
[45] The applicant submits that the Registrar's error in not finding confusion with respect to the remaining wares is clear. In essence, the respondent applied for a trade-mark, for use in association with various food products, that is remarkably similar to the trade-mark chosen by the application (also for use in association with various food products), and previously used and applied for by the applicant. It is clearly wrong to allow the trade-mark Healthy Decision to mature to registration when it looks and sounds almost identical to the applicant's trade-marks, connotes an identical meaning, and will be used in association with wares sold in the same grocery stores (and often immediately adjacent to each other, or, at the very least, in close proximity to each other), simply because not all of the wares are identical in nature.
The Registrar erred in finding no confusion between the trade-mark Healthy Decision and the applicant's trade-marks in relation to the remaining wares.
[46] The evidence before the Board shows a close connection between the goods which bear the respective marks at issue in this appeal. More particularly, the evidence shows that the subject goods could very well be placed in close proximity to each other in the same sections of the same retail grocery stores. The evidence also shows that the subject goods are generally marketed in similar fashion. Yet, this evidence was disregarded by the Registrar.
[47] The respondent's own evidence showed that it engages in cross-merchandising efforts involving, for example, discounts on combined purchases of juices and frozen french fries. Yet the Registrar's decision would characterize these as unrelated wares.
[48] With respect to the nature of the wares, the Registrar held that if the goods sold in association with competing marks are or will be sold in different sections of a grocery store, confusion may be less likely to occur.
[49] However, given that the applicant's frozen dinners, frozen entrees and pasta sauces, and the remaining wares are not intrinsically different, are or will be, sold in the same section or aisle of a grocery store, or in close proximity to each other, can be and often are, marketed in similar fashion, the Registrar's conclusion that there is no reasonable likelihood of confusion between the applicant's trade-marks and the respondent's trade-mark used in association with the remaining wares, was clearly wrong.
The Registrar reached the wrong decision on the issue of confusion between the applicant's trade-marks and the respondent's trade-marks, having regard to the significant new evidence filed by the applicant
[50] In light of the significant new evidence filed by the applicant, it is submitted that the Registrar reached the wrong decision on the issue of overlap between the parties' respective goods and hence on the issue of confusion.
[51] The evidence filed by the applicant in support of this appeal has a probative significance to the issues that were before the Registrar. The evidence clearly highlights the error in narrowly or technically construing the question of which wares overlap with the applicant's frozen dinners, frozen entrees and pasta sauces, and in rendering such overlap (or lack thereof) the controlling factor in determining confusion.
RESPONDENT'S POSITION
Mr. Koopman's affidavit is inadmissible
[52] The respondent notes that Mr. Koopman's affidavit does not speak to anything raised in Mr. Yung's affidavit or any comments made by the Registrar in his decision. Mr. Koopman's evidence does not therefore pertain to any material issue on appeal.
[53] Mr. Koopman offers his opinion that foods are marketed to consumers as convenient alternatives to the fresh versions of the same foods. His opinion does not refer to or rely upon statistical or other evidence.
[54] The respondent further notes that neither the affidavit of Mr. Yung nor the Registrar's decision raise the issue of the proximity of frozen food items located in any proximity to one another.
[55] The respondent argues that the affidavit of Mr. Koopman is inadmissible, or in the alternative, should be given little weight since it is not directed at any material aspect under appeal herein.
Mr. Fellman's affidavit is inadmissible
[56] The respondent argues that Mr. Fellman's affidavit is inadmissible or, in the alternative should be given little weight since all the testimony is for time periods after the relevant date of August 2, 1994 and no evidence is given that would in any way relate the testimony to the required earlier period.
[57] Further the evidence does not relate to any matter raised in the respondent's evidence or any statements relating to the Registrar's decision. The evidence is not directed at any material aspect under appeal herein.
[58] Mr. Fellman speaks to certain observations of grocery stores and placement of frozen food. He also introduces as evidence the 1999 Annual Report of the applicant. This evidence is irrelevant as it relates to the applicant's information and statistics subsequent to the material date, namely four years after August 2, 1994. It is submitted that this evidence should be ignored.
[59] Based on the additional affidavits filed on appeal by the applicant, the respondent is of the view that no evidence has been filed to change the basis upon which the Registrar rendered his decision. The new evidence filed on behalf of the applicant does not speak to the specific point raised by Mr. Yung and mentioned by the Registrar, namely that frozen french fried potatoes wares are not sold in close proximity to pasta sauces. Furthermore, this was a minor point in the Registrar's Decision. It is submitted that the applicant has failed to demonstrate that there is any basis for overturning the Registrar's decision based on any new evidence before this Court.
Affidavit of Mr. Senders
[60] The applicant submits that Mr. Senders' opinion evidence is irrelevant as it pertains to issues which are not at issue in this appeal. The respondent contends that the applicant's view of Mr. Senders' evidence as well as the issue at appeal is excessively narrow.
[61] The affidavit of Mr. Senders relates to the concept of confusion as a whole and not merely the narrow issues pertaining to section 6(5)(e) - resemblance of the marks. The respondent submits that considerations of formal definition and connotation of the respective marks and the difference therein are clearly relevant to the determination of confusion, particularly since Mr. Senders' opinions relate to confusion and that issue to the relevant period, namely August 2, 1994. Mr. Senders' opinion as to the applicant's mark being clearly descriptive and/or deceptively descriptive and the respondent's mark not being so is also relevant as this goes directly to the inherent distinctiveness of the marks at issue, at the relevant date.
[62] The respondent notes that the applicant commented on Mr. Senders' statement that there would be "significant confusion" between the trade-marks. While Mr. Senders relies upon various sources in support of his opinion, he states his opinions regarding confusion are as to what an ordinary consumer would do or perceive. Mr. Senders also clarifies the meaning of his use of the word "significant" in the context of his opinion regarding confusion, namely "confusion at a level high enough that a court might take notice". Mr. Senders essentially states that the marks at issue are not confusion enough to take to issue before the Court, i.e. there is no likelihood of confusion.
[63] As for Mr. Senders' opinions with respect to the clearly descriptiveness and deceptively misdescriptiveness of the marks at issue, these were based upon appropriate critical analysis. Furthermore, the applicant has admitted the descriptiveness of its marks and has disclaimed each of the words Healthy and Choice. In that respect, the applicant is in agreement with Mr. Senders' opinion.
Standard of review
[64] The respondent submits that given, in particular, the expertise of the Registrar on the question of confusion, the reasons for vesting decision-making in the Registrar, and the rights at stake, "unreasonableness simpliciter", is the most appropriate of the three standards of review currently available.
[65] As for the impact on the standard of review on the filing of additional evidence on an issue at the appeal, the respondent