Les Marques Metro / Metro Brands S.E.N.C. v. 1161396 Ontario Inc.

Les Marques Metro / Metro Brands S.E.N.C. v. 1161396 Ontario Inc.
Court (s) Database
Federal Court Decisions
Date
2017-09-08
Neutral citation
2017 FC 806
File numbers
T-416-16
Notes
A correction was made on July 30, 2018.
Reported Decision
Decision Content
Date: 20170907
Docket: T-416-16
Citation: 2017 FC 806
Ottawa, Ontario, September 7, 2017
PRESENT: The Honourable Mr. Justice Annis
BETWEEN:
LES MARQUES METRO / METRO BRANDS S.E.N.C.
Applicant
and
1161396 ONTARIO INC.
Respondent
JUDGMENT AND REASONS
TABLE OF CONTENTS
I. Nature of the Matter 4
II. The Application 4
III. The Opposition 4
IV. The Decision under Review 6
V. New Evidence on Appeal 8
(1) Gina Petrone 10
(2) Francis Parisien 11
(3) Denis Gendron 13
(4) N. Arthur Smith 13
VI. Standard of Review 14
VII. Issues 17
VIII. Analysis 18
A. Was the TMOB’s decision not to strike the statement of opposition reasonable? 18
(1) Position of the parties 18
(2) The Registrar’s conclusion that the TM Application is for specific goods is reasonable 20
(a) Subsection 30(b): “use the trade-mark in association with each of the general classes of goods or services” 21
(b) Trade-marks Office’s practice 22
(c) Post-advertisement amendments are irrelevant 25
(d) Conclusion 25
(3) Subsection 30(b) requires that the trade-mark have been used association with each specific good or service listed in the application 26
(a) The words of subsection 30(b) of the Act 26
(b) The context of the Act 27
(c) Conclusion 30
B. Has 116 Inc. used the Mark in association with “cookies and biscuits” since at least as early as the claimed date of first use? 31
(1) Onus 31
(2) Subsection 30(b) of the Act 32
(3) Respondent’s Allegations of Frivolous and Vexatious Application by the Opponent 32
C. Does the Court, in exercising the discretion vested in the Registrar of Trade-marks, have jurisdiction to issue a “split” decision pursuant to subsection 38(8) of the Act? 33
(1) Background 33
(2) Judicial comity 35
(3) Analysis 36
(a) The wording of subsection 38(8) is ambiguous 36
(b) The context of the Act is not particularly helpful 37
(c) One of the objects of the Act is the balance between free competition and fair competition 38
(d) The Bill C-31 amendments are not indicative of Parliament’s intent 39
(e) Policy reasons support the Registrar’s jurisdiction to issue split decisions 40
(i) It is unreasonable and unfair for a partially successful opposition to result in a complete refusal of the entire application 40
(ii) Split decisions prevent the perverse effect of encouraging inefficient practices thereby upholding one of the purposes of the Act 41
(f) Coronet was correctly decided and is not distinguishable 42
(4) Conclusion 43
IX. Conclusions 43
JUDGMENT 44
APPENDIX 45
I.
Nature of the Matter
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, RSC 1985, c T-13 [Act] from a decision of a Hearing Officer of the Trade-marks Opposition Board [TMOB] dated December 22, 2015 (cited as 2015 TMOB 227) [Decision] respecting application No. 1,333,541 [TM Application] wherein registration of the word IRRESISTIBLES [Mark] for “candy and snacks, namely candy bars, chocolate bars, all sugar confectionary, peanut brittle, caramel bars, cookies & biscuits, all gummi confectionary, chocolate confectionary, chocolate mints, assorted chocolate boxes, and marshmallow derivative candy” [Goods] was allowed. For the reasons that follow, I find that the appeal should be allowed.
II. The Application
[2] The Respondent, corporate entity 1161396 Ontario Inc. [116 Inc.] filed the TM Application with the Canadian Trade-marks Office on February 1, 2007, based on use in Canada since at least as early as August 2001. The TM Application was approved and subsequently advertised in the Trade-marks Journal on February 20, 2013.
III. The Opposition
[3] The Applicant, Les Marques Métro / Metro Brands S.E.N.C. [Metro], filed an opposition to the registration of the Mark on July 19, 2013, alleging pursuant to paragraph 38(2)(a) of the Act that the TM Application does not conform to the requirements of subsection 30(b) of the Act as the Mark has not been used by 116 Inc. in Canada in association with “cookies and biscuits” since the claimed date of first use, being “at least as early as August 2001”.
[4] Metro filed as its evidence a certified copy of the affidavit of Mr. Sarbjit Singh [Singh Affidavit], the President and sole owner of 116 Inc., dated July 31, 2014. The Singh Affidavit attests inter alia that 116 Inc. has been doing business as S & M Enterprises since 1995. It also appears from the exhibits of the affidavit that at least some of 116 Inc.’s good associated with the Mark (IRRESISTIBLES) are distributed by the corporate entity “One Better Inc”. The Singh Affidavit was produced by 116 Inc. in the context of a prior opposition proceeding respecting trade-mark application no. 1,329,344 for the trade-mark IRRESISTIBLE by Metro, which was abandoned on October 23, 2012 [previous opposition].
[5] 116 Inc. filed as its evidence the affidavit of Mr. Karol Pawlina [Pawlina Affidavit], a student in their employ. The Pawlina Affidavit essentially produced copies of the correspondence and procedure from the previous opposition.
[6] There was no cross-examination upon any of the affidavits filed in the Opposition.
IV. The Decision under Review
[7] In his decision, the Hearing Officer first dealt with house-keeping and procedural matters. These not being highly relevant, I would simply refer to the Decision which can be found on the web at: cipo.ic.gc.ca.
[8] The Hearing Officer then dealt with the issue of whether the Registrar of Trade-marks erred in refusing 116 Inc.’s interlocutory request to strike and reject the statement of opposition on the basis that it failed to disclose an arguable case. 116 Inc. alleged that the test pursuant to subsection 30(b) “merely requires that an [a]pplicant prove use in association with the general class of wares and not with each product listed in an application for registration”. As the Statement of Opposition alleged that 116 Inc. (the trade-mark applicant) had not used the Mark in association with each of the Goods set out in the TM Application, 116 Inc. claimed that Metro had not properly pled its sole ground of opposition. In the interlocutory decision, the Trade-mark Opposition Board made the following findings on behalf of the Registrar:
In my view in the instant case the application is not for wares of one general class but for individually named specific wares. In this regard, whether the specified wares are separated by a coma or a semi-colon is not determinative of whether the wares are specified as a general class or as a separate class. In my view, the phrase “namely” in the application serves to specify that separate wares follow the adverb. Further, at this stage of the proceedings the [sic] in the opposition, a proper pleading need only allege the material facts but not the evidence which the party intends to adduce to establish those facts: see Pepsico Inc and Pepsi-Cola Canada Ltd v Registrar of Trade-marks (1975), 22 CPR (2d) 62 (FCTD).
In view of the above, I find that the ground of opposition, as pleaded, discloses an arguable case with respect to one or more or all of the specific wares enumerated in the application. Whether the opponent succeeds in proving its case with respect to any or all of the wares will depend on the evidence filed by the parties. In this regard, the Board, acting on behalf of the Registrar, has jurisdiction to issue divided decisions: see Produits Ménagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 CPR (3d) 482 (FCTD).
[emphasis added]
[9] At the opposition hearing, the Hearing Officer refused to reconsider the interlocutory ruling seeing as the Registrar had not erred at law or in the appreciation of the facts in concluding that “the application is not for wares of one general class but for individually named specific wares”.
[10] Turning to the issue of whether the TM Application met the requirements of subsection 30(b) of the Act, the Hearing Officer held that Metro’s subsection 30(b) ground of opposition was set out in sufficient detail in the statement of opposition to enable 116 Inc. to reply thereto and to understand the case it had to meet. He then found that the Singh Affidavit was relevant and admissible evidence.
[11] Metro argued that since the Singh Affidavit is purported to show use of the Mark in association with the applied for goods, it is reasonable to believe that if evidence of use of the Mark in association with the opposed goods was available, that 116 Inc. would have produced it as it was in his best interest to do so. The Hearing Officer’s views are well summarized in the following portions of paragraphs 65-66 of his Decision:
[65] […] The Singh affidavit does not claim to show use of the Mark with each of the applied for goods in the subject application; it does not claim to provide photos of an exhaustive list of labels or packaging of candy or snack items that bear the Mark. […]
[66] There is no inconsistency in the evidence provided by Mr. Singh in his affidavit. The Singh affidavit does not cast doubt, put into question, or even speak to the claimed date of first use of the Mark with “cookies and biscuits”. The Singh affidavit simply does not address use of the Mark with these particular goods.
[12] In brief, the Hearing Officer was not convinced that the Singh Affidavit satisfied Metro’s initial evidential onus to show that the Mark was not used in association with “cookies and biscuits” at the claimed date of first use. For this reason, he dismissed the subsection 30(b) ground of opposition and rejected the opposition.
V. New Evidence on Appeal
[13] On March 10, 2016, Metro filed the present application for judicial review, appealing the Decision before this Court. In support of the present appeal, Metro has filed new evidence pursuant to subsection 56(5) of the Act in the form of sworn affidavits, each of which I discuss in the following paragraphs.
[14] Conversely, 116 Inc. has not tendered any new evidence and has declined to cross-examine any of Metro’s affiants. Nonetheless, 116 Inc. argues that all of Metro’s newly filed evidence is entirely irrelevant as it postdates the material date at which evidence is to be considered for purposes of subsection 30(b) of the Act, which is the date of filing of the trade-mark application, being February 1, 2007 (Redsand Inc v Dylex Ltd (1997), 74 CPR (3d) 373 at 383 (FCTD).
[15] Metro has submitted two decisions of the TMOB to support its argument that evidence postdating the material date may be used by an opponent to satisfy its initial evidential onus (Seven-up Canada Co v Caribbean Ice Cream Company Ltd, 2007 CanLII 80903 at 4 (TMOB) [Seven-up]; Brasstech, Inc v Elte Carpets Limited, 2014 TMOB 92 at para 14) [Brasstech] . In Seven-up, the TMOB explained that such evidence may be admissible because
it is difficult for a third party to produce evidence to show that there was no use of another party's mark at any date, let alone at a date several years ago, and it is for this reason that the evidential burden in cases like this is lighter. The Applicant has the opportunity to rebut such evidence[.]
[16] In Brasstech, the TMOB cited the Seven-up decision and endorsed its reasoning. I find that the reasons provided in Seven-up and Brasstech are consistent with this Court’s recognition that the evidential burden of proof imposed on an opponent can be quite problematic. As explained by Justice Rennie in Bacardi & Co v Corporativo de Marcas GJB, SA de CV, 2014 FC 323 at para 29 [Bacardi]:
To adduce evidence of non-use of a mark by a competitor is problematic in two ways: first, because it requires [the opponent] to prove that something did not occur (an inherently difficult exercise), and second, because such evidence is far more likely to be in the possession of the applicant, not the party opposing the mark. It would be a challenge for [the opponent] to keep records of non-sale (whatever those records might look like) of all of its competitor's products.
[17] The main issue with evidence of non-use postdating the material date is the probative value of such evidence or, put differently, the reasonableness of the inferences that can be drawn from such evidence regarding non-use at or prior to the material date. This will depend on numerous factors, notably the amount of time elapsed between the material date and the facts established by the evidence.
[18] In view of the above, I find that the evidence submitted by Metro that postdates the material date is admissible, subject to relevance, exclusion rules, and the Court’s discretion. Indeed, 116 Inc. raises questions of relevance and, in addition, argues that some of the new evidence has little or no probative value and is prejudicial to 116 Inc..
[19] It is now trite law that relevance relates to whether there is a connection between tendered evidence and a material fact, such that it makes it possible to infer the existence of one from the existence of the other (Cloutier v R, [1979] SCR 709 at 731 (SCC)). Put differently, the evidence must tend to increase or diminish the probability of a material fact at issue (R v Arp, [1998] 3 SCR 339 at 360 (SCC)). For purposes of the section 30(b) ground of opposition, evidence will be relevant if it tends to increase or diminish the possibility that 116 Inc. has used the Mark at the relevant date. I now turn to the evidence tendered by Metro.
(1) Gina Petrone
[20] Metro has filed the affidavit of Ms. Gina Petrone [Petrone Affidavit], a clerk employed by Counsel for Metro’s law firm, dated April 5, 2016. The Petrone Affidavit contains a list and printouts of all 116 Inc.’s trade-mark applications, registrations and corresponding information obtained from the Canadian Intellectual Property Office’s [CIPO] website. Metro alleges that out of 27 trade-mark applications and registrations in 116 Inc.’s name, only one application (application no. 1,711,130, filed January 16, 2015, for the mark SNACK ATTACK) references “cookies” and “biscuits”. Upon reviewing the Petrone Affidavit, the Court noticed the registration of the mark BRITTLE BITS (LMC 750673) registered based on use in Canada since at least as early as November 15, 2006, in association with “cookies and biscuits”. The Court also takes note of application no. 1,609,443 for the mark IRRESISTIBLES based on use since at least as early as May 10, 2000, in association with “snacks”.
[21] 116 Inc. submits that the Petrone Affidavit is irrelevant and immaterial as it does not provide relevant factual proof of use or lack thereof by 116 Inc. at the material date. The premise of Metro’s argument relating to the Petrone Affidavit is that 116 Inc.’s trade-mark applications and registrations are representative of 116 Inc.’s business over time. Based on Metro’s argument, the Court could imply that 116 Inc. is generally in the business of selling candy and chocolate goods, not “cookies and biscuits”. That is not a very convincing argument. While I agree that the evidence is relevant, I find it has little probative value.
(2) Francis Parisien
[22] Metro has also filed the affidavit of Mr. Francis Parisien [Parisien Affidavit], Vice-President for Eastern Canada at ACNielson Company of Canada [Nielson], sworn March 31, 2016. Nielson operates and maintains a database called MarketTrack, which collects on an ongoing basis thousands of point of sale data obtained from optical scanning of packaged consumer goods. The point of sale data includes the Universal Product Code [UPC], a unique series of numbers that identifies it to a specific manufacturer and product. The Parisien Affidavit attests that the UPC codes are part of the GS1 identification system, which is widely used in Canada and internationally for goods sold in stores. MarketTrack only contains data from 2010 until present. However, the Parisien Affidavit reveals that MarketTrack has not found any sales of “cookies” or “biscuits” associated with 116 Inc. since 2010.
[23] 116 Inc. argues that the Parisien Affidavit and the data collected by MarketTrack is irrelevant as it postdates the material date, has no probative value, is prejudicial to 116 Inc., and constitutes hearsay. 116 Inc. further argues that there is no indication that Mr. Parisen conducted the attached research. Having resolved the issue of evidence postdating the material date, I would note that the fact that MarketTrack only collects data from 2010 is beyond Metro’s control. Had data been available for the years preceding 2010, the situation may well have been different. It is clear that the absence of use of the Mark since 2010 in association with “cookies” or “biscuits” is relevant and sufficiently probative. I disagree that the evidence is prejudicial to 116 Inc. and refuse to use my discretion to discard it. Further, the Parisien Affidavit being uncontroverted, 116 Inc. cannot now suggest that Mr. Parisien has not conducted the research when it could have cross-examined the affiant, but declined to do so. I also disagree with 116 Inc. that the sales figures derived from Neilson’s database constitute inadmissible hearsay. I accept that the data from Nielson satisfies the best evidence rule regarding electronic documents (see Canada Evidence Act, RSC 1985, c C-5, ss 31.1-31.8) [Canada Evidence Act] . I further accept that the document is admissible as it is a business record made in the usual and ordinary course of business pursuant to section 30 of the Canada Evidence Act. Finally, the mere fact that 116 Inc. has adduced evidence of sales under the general class of “candy and snacks” in the Singh Affidavit has no bearing on the admissibility of Metro’s evidence.
(3) Denis Gendron
[24] Metro further filed the affidavit of Mr. Denis Gendron [Gendron Affidavit], who is the president of United Grocers Inc. [UGI]. In his affidavit, Mr. Gendron explains that he was personally given by Mr. Sam Singh (the affiant of the Singh Affidavit) two catalogs featuring 116 Inc.’s products so that Mr. Gendron may provide them to UGI’s members for future business purposes. The catalogs are entitled “Product Catalogue 2016” and “Product Catalogue”.
[25] 116 Inc. argues that the Gendron Affidavit is irrelevant and would not have had any impact on the Registrar of Trade-marks’ Decision. I disagree. While the Gendron Affidavit postdates the material date, it is nevertheless relevant. Moreover, it is more probative than the Singh Affidavit itself as the nature of a product catalog suggests that it would be more likely to contain all of 116 Inc.’s products sold at the time the catalog was made.
(4) N. Arthur Smith
[26] Metro’s final piece of evidence is the affidavit of Mr. N. Arthur Smith [Smith Affidavit], the Chief Executive Officer of GS1 Canada Inc. [GS1 Canada]. In his affidavit, Mr. Smith attests that Metro requested a list generated from GS1 Canada’s database of all the products and suppliers associated either with One Better Inc. or with UPC codes featuring two company prefixes [company Codes] associated with 116 Inc.. The search identified S/M Enterprises as the sole entity registered with GS1 Canada associated with the company Codes. From the search, a list of all products associated with the company Codes from July 2007 to January 2016 was generated. The list does not mention “cookies and biscuits”.
[27] 116 Inc. argues that in addition to postdating the material date, the Smith Affidavit is prejudicial, without probative value, and should be struck or given no weight. I disagree for substantially the same reasons provided regarding the Parisien Affidavit. Moreover, I note that the GS1 Canada database did not contain data dating back to the material date, through no fault of Metro. Had the database also contained data from February to July 2007, this may have indicated that Metro had not provided the best evidence it could obtain. However, that is not the case here.
VI. Standard of Review
[28] Appeals pursuant to section 56 of the Act are reviewable on a standard of reasonableness unless new evidence filed pursuant to subsection 56(5) of the Act would have materially affected the Registrar’s finding of fact or exercise of discretion, in which case the trial judge must come to his or her own conclusion as to the correctness of the Registrar’s decision (Pfizer Products Inc v Canadian Generic Pharmaceutical Association, 2015 FC 493 at para 140 [Pfizer]; Molson Breweries, A Partnership v John Labatt Ltd, [2000] 3 FC 145, 5 CPR (4th) 180 at para 29 (FCTD)). In order to have a material effect, the new evidence must be substantial and significant, the test being one of quality, not quantity: Pfizer at para 140.
[29] In view of Metro’s new evidence discussed above, I am satisfied that the new evidence tendered by Metro would have materially affected the Registrar’s decision. The new evidence is not a repetition of the original evidence filed before the Registrar, but better evidence. That is not to say that the evidence tendered by Metro is perfect, but I believe it would have changed the TMOB’s conclusion on whether Metro had satisfied its initial evidential onus with regards to its subsection 30(b) ground of opposition. I must therefore come to my own conclusion as to the correctness of the Registrar’s Decision.
[30] Metro submits that I should, however, review the TMOB’s decision regarding 116 Inc.’s interlocutory request that the Registrar strike and reject the statement of opposition on a reasonableness standard. In its submissions, 116 Inc. argues that the interlocutory ruling by the Registrar is “incorrect”, which I take it to mean that 116 Inc. would apply a correctness standard. 116 Inc. cites no authority in support of a correctness standard of review.
[31] This Court has consistently held that a correctness standard of review should only apply to those findings of fact which the new evidence materially affects, while other unrelated issues on appeal remain subject to a reasonableness standard of review (Worldwide Diamond Trademarks Limited v Canadian Jewellers Association, 2010 FC 309 at para 43, aff’d 2010 FCA 326, citing Garbo Creations Inc v Harriet Brown & Co (1999), 176 FTR 80 (FCTD). See also Community Credit Union Ltd v Canada (Registrar of Trade Marks), 2006 FC 1119 at para 14).
[32] I agree that questions of fact and of mixed fact and law are reviewable on a reasonableness standard. As for questions of law, the presumption is that a tribunal’s interpretation of its home statute is reviewable on a standard of reasonableness. Writing for the Supreme Court of Canada in Rogers Communications Inc v Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35 at para 19 [Rogers], Justice Rothstein held that this presumption can be rebutted where Parliament has indicated a contrary intention by conferring concurrent jurisdiction at first instance to both an administrative tribunal and a court:
I wish to be clear that the statutory scheme under which both a tribunal and a court may decide the same legal question at first instance is quite unlike the scheme under which the vast majority of judicial reviews arises. Concurrent jurisdiction at first instance seems to appear only under intellectual property statutes where Parliament has preserved dual jurisdiction between the tribunals and the courts. However, I leave the determination of the appropriate standard of review of a tribunal decision under other intellectual property statutes for a case in which it arises. Nothing in these reasons should be taken as departing from Dunsmuir and its progeny as to the presumptively deferential approach to the review of questions of law decided by tribunals involving their home statute or statutes closely connected to their function.
[33] The Supreme Court in Rogers held that the Federal Court of Appeal and the Copyright Board had concurrent jurisdiction at first instance in matters relating to the certification of tariffs for communication rights. Thus, the Copyright Board’s interpretation of its own statute was reviewable on a correctness standard.
[34] Recently, Justice Russell of the Federal Court in conducted a Dunsmuir-type analysis to determine the proper standard of review with regards to the TMOB’s interpretation of the Trade-marks Act and concluded:
A consideration of the factors leads me to conclude that the presumption has been rebutted. The Act explicitly provides for an appeal to the Federal Court in which new evidence may be heard and the Federal Court is permitted to exercise any discretion vested in the Registrar. In my view, these provisions rebut any presumption that the legislature expected the Board to have greater expertise in trade-mark matters than the Federal Court. Further, the nature of the question is the interpretation of "distinctiveness." The Board interpreted "distinctiveness" by reference to Federal Court and Federal Court of Appeal jurisprudence. The Board has no expertise over the Federal Court in interpreting case law. The Board's determinations of law will be reviewed on a standard of correctness. (Pfizer at para 149)
[35] I agree with Justice Russel’s above reasoning. The Court notes that it has concurrent jurisdiction with the TMOB with regards to the interpretation of subsection 30(b) of the Act in the context of appeals pursuant to section 56 of the Act. I will therefore review the TMOB’s determinations of law and interpretation of the Act on a correctness standard. However, unless I can extricate a clear question of law from a mixed question of fact and law, I shall apply the reasonableness standard to such questions.
VII. Issues
Was the TMOB’s decision not to strike the statement of opposition reasonable?
Has 116 Inc. used the Mark in association with “cookies and biscuits” since at least as early as the claimed date of first use?
Does the Court, in exercising the discretion vested in the Registrar of Trade-marks, have jurisdiction to issue a “split” decision pursuant to subsection 38(8) of the Act?
VIII. Analysis
B. Was the TMOB’s decision not to strike the statement of opposition reasonable?
[36] Whether subsection 30(b) of the Act merely requires 116 Inc. to prove use of the Mark in association with the “general class” of candy and snacks as opposed to in association with each individually named specific goods, namely cookies and biscuits, is a mixed question of fact and law. The Registrar’s conclusion that “the application is not for wares of one general class but for individually named specific wares” is a mixed finding of fact and law. It must therefore be reviewed on a standard of reasonableness.
(1) Position of the parties
[37] 116 Inc. submits that the test pursuant to subsection 30(b) “merely requires that an [a]pplicant prove use in association with the general class of wares and not with each product listed in an application for registration”. Consequently, 116 Inc. believes it satisfies the use requirement under subsection 30(b) of the Act merely by proving use of the Mark in association with the “general class” of candy and snacks, as opposed to use in association with the specific goods “cookies and biscuits”.
[38] 116 Inc. makes the following arguments in its Memorandum of Fact and Law:
(a) Subsection 30(b) of the Act is explicit in that only the use in association with the general class of goods or services described in the application needs be proven (Respondent’s Memorandum of Fact and Law, para 42).
(b) The interlocutory ruling was contrary to the practice before the Trade-marks Office, the CIPO Examination Manual [Examination Manual], and the CIPO Goods and Services Manual [Goods and Services Manual] at the time of the decision and subsequently. Because the goods in the statement of goods aren’t separated by semi-colons (i.e. “candy and snacks, namely candy bars, […], cookies and biscuits”), the Goods were not meant to be claimed individually but rather under the general “candy and snack” class which falls within Class 30 of the Nice Classification. In support of its argument before the Hearing Officer, 116 Inc. cited the TMOB decision in Pronuptia de Paris v Pronovias, 2007 CanLII 80847, [2007] TMOB No 63 (QL) [Pronuptia cited to QL] (Respondent’s Memorandum of Fact and Law, paras 42-43).
(c) To prove use in association with each of the listed goods isn’t in accordance with the Act which expressly permits applications to be amended before and after advertisement, subject to sections 31 and 32 of the Trade-marks Regulations, SOR/96-195 [Regulations] (Respondent’s Memorandum of Fact and Law, para 41).
[39] Metro argues that the Registrar’s conclusion is that the TM Application was not for goods of one general class (i.e. candy and snacks), but for individually named specific goods, namely cookies and biscuits. As such, 116 Inc. needs to show use for each individually named specific Goods, including use in association with cookies and biscuits. Metro further argues that even if the TM Application was for general classes of goods, 116 Inc. would still need to show use of the Mark in association with all the Goods in the TM Application.
[40] For the reasons that follow, I find that the Registrar’s decision is reasonable.
(2) The Registrar’s conclusion that the TM Application is for specific goods is reasonable
[41] Even though the Hearing Officer does not address each of 116 Inc.’s above-mentioned concerns specifically, his decision not to interfere with the Registrar’s interlocutory ruling is nevertheless reasonable. Below, I review the Hearing Officer’s reasons and, where appropriate, supplement them to address some of the concerns raised by 116 Inc. which were not specifically addressed in the Hearing Officer’s reasons.
(a) Subsection 30(b): “used the trade-mark in association with each of the general classes of goods or services”
[42] Section 30(b) of the Act reads as follows:
Contents of application
Contenu d’une demande
30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing
30 Quiconque sollicite l’enregistrement d’une marque de commerce produit au bureau du registraire une demande renfermant :
[…]
[…]
(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application;
b) dans le cas d’une marque de commerce qui a été employée au Canada, la date à compter de laquelle le requérant ou ses prédécesseurs en titre désignés, le cas échéant, ont ainsi employé la marque de commerce en liaison avec chacune des catégories générales de produits ou services décrites dans la demande;
[emphasis added]
[Non-souligné dans l’original.]
[43] I agree with 116 Inc. that a plain reading of subsection 30(b) of the Act appears to only require that the trade-mark applicant file an application containing the date of first use for “each of the general classes of goods or services described in the application”. This is also corroborated in section II.7.1 of the Examination Manual (“Applications Based on Use in Canada — Subsection 16(1) and Paragraph 30(b)”). Neither the Registrar’s interlocutory ruling nor the Hearing Officer’s Decision however suggests that this was misunderstood. Indeed, they both focused their respective analysis on whether the TM Application was for goods of a general class or for individually named specific goods.
(b) Trade-marks Office’s practice
[44] Though the interlocutory decision and the Hearing Officer’s Decision may not have specifically relied on the Examination Manual and the Goods and Services Manual, I disagree that the interlocutory ruling was contrary to practice before the Trade-marks Office. It is however noteworthy that these manuals, though useful, do not have legislative authority, and are not intended to, nor can they supersede the provisions of the Act (Ontario Dental Assistants Association v Canadian Dental Association, 2013 FC 266 at para 24; Wordex Inc v Wordex, [1983] 2 FC 570, 70 CPR (2d) 28 at 31).
[45] First, to the extent 116 Inc. equates “general classes of goods” to classes for goods under the Nice classification system, I disagree as there is no basis to this argument. Though it is currently acceptable for goods and services in a trade-mark application or registration to be grouped and classed according to the classes of the Nice Classification, there is no legislation in force requiring trade-mark owners or applicants to refer to Nice classes.
[46] Second, the Registrar reasonably distinguished the decision of the TMOB in Pronuptia by concluding that it did not address whether individually named specific goods separated by commas after “namely” in a statement of goods form part of a general class of goods. Indeed, Member Carrière in Pronuptia determined that by using a semi colon to separate a good from other goods in an application, the applicant had clearly indicated that it considered the other goods as a separate general class of goods.
[47] Third, both the Registrar’s ruling and the Pronuptia decision are both consistent with the Trade-marks Office practice. Section II.5.4.2 (“Context of the Goods and Services”) of the Examination Manual explains that “the context of a statement of goods or services may serve to specify an otherwise unacceptable statement of goods or services.” The Examination Manual provides the following example:
For example, "cases" alone are not acceptable as they could include any type of "cases" from camera cases to pillowcases. However, in an application for "cameras, tripods, and cases", the goods "cases" would be acceptable as it is clear from the context that the "cases" would be restricted to camera cases. Similarly "delivery" services alone is not acceptable as the service could include any type of delivery from flower delivery to furniture delivery.
[48] “Candy and snacks” are generic terms that take their sense from their context in the application, seeing as snacks are generally understood to mean any small portion of food or drink consumed between meals. As emphasized by Metro during the hearing, it is not uncommon for identical trade-marks to coexist in the food industry when they relate to intrinsically different goods (see e.g. Edelweiss Food Products Inc / Aliments Edelweiss Inc v World's Finest Chocolate Canada Ltd (2000), 5 CPR (4th) 256 (TMOB) (meat and chocolate). See also Clorox Co v Sears Canada Inc, [1992] 2 FC 579, 41 CPR (3d) 483 (FCTD), aff’d 49 CPR (3d) 217 (FCA) (fruit cake and barbecue sauce)). Therefore, the Registrar’s conclusion that “the application is not for wares of one general class but for individually named specific wares” is in my view clearly reasonable seeing as the phrase “candy and snacks” – on its own – likely would not have been an acceptable category of goods without being further specified. As the Examination Manual States, “[g]oods and services that require further specification may be specified using the definite terms “namely”, “consisting of” or “specifically”, which appears to be what 116 Inc. has done in its TM Application to further specify “candy and snacks”. To conclude otherwise would allow 116 Inc. to obtain a trade-mark monopoly over the Mark beyond the scope of protection necessary to protect the public from confusion.
[49] Section II.5.4.2 of the Examination Manual also notes the following:
Goods or services which are separated by semi-colons (;) are generally considered to stand on their own and therefore must meet the requirements of paragraph 30(a) of the Trade-marks Act without regard to the other listed goods or services.
[50] The above note is merely an exception to the general rule, that an otherwise unacceptable description of good may be acceptable if the goods listed before or after it serve to qualify the good – i.e. goods which are separated by semi-colons are generally considered not to qualify each other.
[51] Therefore, neither Pronuptia nor the note in reference to semi-colons in section II.5.4.2 of the Examination Manual addresses whether individually named specific goods separated by commas after “namely” in a statement of goods form part of a general class of goods.
[52] The Registrar relied on the TMOB decisions MAPA GmbH v 2956-2691 Quebec Inc, 2013 TMOB 22 [MAPA] and Sky Solar Holdings Co, Ltd v Skypower Global, 2014 TMOB 262 [Sky Solar] as examples where the TMOB “determined that an applicant had failed to substantiate a claimed date of first use for some of the applied for goods or services in a statement of goods or services appearing to fall in the same general class, notwithstanding the fact that use has been shown with other goods or services in a statement that includes the term ‘namely’”.
(c) Post-advertisement amendments are irrelevant
[53] The Court agrees that the Act allows an applicant to amend his or her trade-mark application before and after advertisement, subject to sections 31 and 32 of the Regulations. However, the Court fails to see how this argument is helpful to 116 Inc.
(d) Conclusion
[54] In view of the above, the Registrar’s decision was reasonable. Even on a standard of correctness, I would have arrived at the same conclusion as the Hearing Officer. Even if the TM Application had been for the general category of “candy and snacks”, 116 Inc. would still, for the following reasons, have needed to show use of the Mark in association with each of the goods listed in the TM Application.
(3) Subsection 30(b) requires that the trade-mark have been used in association with each specific good or service listed in the application
[55] Metro has argued that – though subsection 30(b) of the Act does not require an applicant to provide a date of first use for each specific good or service in a trade-mark application – every good or service listed in the application must nevertheless have been used to satisfy the requirement of subsection 30(b) of the Act. This being a question of statutory interpretation, it is now trite law that “[t]he modern approach to statutory interpretation requires that we examine the “words of an Act … in their entire context and in their grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament” (Canadian Broadcasting Corp v SODRAC 2003 Inc, 2015 SCC 57 at para 48, citing Elmer A Driedger, Construction of Statutes, 2nd ed (Toronto: Butterworths, 1983) at 87, approved and adopted in Rizzo & Rizzo Shoes Ltd, Re, [1998] 1 SCR 27 at para 21 (SCC)).
(a) The words of subsection 30(b) of the Act
[56] Subsection 30(b) of the Act reveals two requirements: (1) that the trade-mark application be for a trade-mark that has been used in Canada; and (2) that the application contain the date of first use for each of the general classes of goods or services described in the application. These requirements are readily apparent from a plain reading of subsection 30(b):
Contents of application
Contenu d’une demande
30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing
30 Quiconque sollicite l’enregistrement d’une marque de commerce produit au bureau du registraire une demande renfermant :
[…]
[…]
(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application;
b) dans le cas d’une marque de commerce qui a été employée au Canada, la date à compter de laquelle le requérant ou ses prédécesseurs en titre désignés, le cas échéant, ont ainsi employé la marque de commerce en liaison avec chacune des catégories générales de produits ou servi