Cheung's Bakery Products Ltd v. Saint Honore Cake Shop Limited

2011 TMOB 94 (June 20, 2011)

Overview

The Trademarks Opposition Board refused an application to register the trademark SAINT HONORE CAKE SHOP & Chinese Characters Design in association with certain overlapping wares on the basis that, inter alia, the mark was confusing with the opponent's registered trademarks. This decision is noteworthy as the Trademarks Opposition Board found that in a situation where the wares are offered primarily to Chinese consumers, the average Canadian consumer for determining the likelihood of confusion would be one who can read and understand Chinese characters. Also of interest is the Opposition Board's conclusion that despite the inclusion of English words in the design mark, the parties' marks were similar in both appearance and sound, because the English words were not emphasized in any way and were included merely as part of the applicant's corporate name. The case also provides guidance on the admissibility of expert evidence following the Supreme Court of Canada's Masterpiece decision.

Abstract

The Trademarks Opposition Board (the "Opposition Board") found that the applicant's trademark SAINT HONORE CAKE SHOP & Chinese Characters Design (the "mark") was confusing with the opponent's marks, including ANNA'S CAKE HOUSE and ANNA'S CAKE HOUSE & Chinese Characters Design, with respect to the overlapping wares. The Opposition Board also found that the opponent had succeeded in establishing that its trademarks had become sufficiently known to negate the distinctiveness of the applied-for mark as of the date of filing the opposition. The Opposition Board confirmed that in a situation in which the wares are offered primarily to Chinese consumers, the average Canadian consumer for determining the likelihood of confusion would be one who can read and understand Chinese characters.

Case summary

Facts. In December 2006, Saint Honore Cake Shop Limited (the "applicant") filed application serial no. 1,329,117 to register the trademark SAINT HONORE CAKE SHOP & Chinese Characters Design, shown below:

The application was based on proposed use in association with a number of wares, including food storage containers and wrappers, leaflets and booklets, coffee, cakes, chocolates and other related goods.

The mark was opposed by Cheung's Bakery Products Ltd. (the "opponent") on a number of grounds, including:

• the mark is confusing with the opponent's registered trademarks shown below since the Chinese characters of the opponent's trademarks are the same as the Chinese characters of the applied-for mark, merely in a different style of printing, and both are pronounced phonetically the same and recognized as ANNA CAKE HOUSE by a person who understands and reads Chinese characters;
  • Chinese characters design – Registration No. TMA480,506
           
  • ANNA'S CAKE HOUSE – Registration No. TMA354,194
  • ANNA'S CAKE HOUSE & Design – Registration No. TMA354,193
         
  • ANNA'S CAKE HOUSE & Chinese Characters Design – Registration No. TMA667,403
• the applicant is not the person entitled to registration of the mark; and
• the mark is not distinctive as defined in section 2 of the Trademarks Act.

Only the opponent filed evidence, including an affidavit of Bill Joyce, the 2006 Census Dissemination Project Manager within the Census Operation Division of Statistics Canada, and an affidavit of Qing Xie, who was put forward as an expert in the field of Chinese language studies. Mr. Joyce's evidence concerned Chinese language statistics among the Canadian population and established that in 2006 a total of 1,012,065 persons reported a Chinese language as their only mother tongue. Ms. Xie opined on the transliteration, appearance and translation of the parties' marks. In particular, she stated that the written form of Chinese language characters is the same in appearance for all the Chinese language dialects and therefore the appearance of the Chinese characters of the mark and the opponent's Chinese characters design mark would be the same for every Chinese-speaking Canadian regardless of the dialect that the individual speaks.

With respect to Ms. Xie's evidence, the Board noted that the Supreme Court of Canada recently considered the issue of expert evidence in Masterpiece Inc. v. Alavida Lifestyles Inc. 2011 SCC 27, and quoted as follows from the Masterpiece case: "This Court in R. v. Mohan, [1994] 2 S.C.R. 9, set out four requirements to be met before expert evidence is accepted in a trial: (a) relevance; (b) necessity in assisting the trier of fact; (c) the absence of any exclusionary rule; and (d) a properly qualified expert."

Without conducting a detailed analysis, the Board concluded that Ms. Xie's evidence satisfied the Mohan test.

Analysis. The majority of the Opposition Board decision focussed on the ground of opposition based on confusion with the opponent's registered trademarks.

The Opposition Board noted that this was a situation in which it would be appropriate to consider, as a surrounding circumstance, the impression of the average Canadian consumer who can read and understand Chinese characters when determining the likelihood of confusion between the parties' marks, since a substantial portion of the opponent's actual consumers would be able to read and understand Chinese characters.

The Opposition Board went on to find that the inherent distinctiveness of the trademarks favoured the opponent. In particular, the Board held that the inclusion of the word "ANNA" in the opponent's trademarks resulted in a greater degree of inherent distinctiveness than the applied-for mark, which contained the suggestive words "cake shop" and descriptive words "Saint Honore."

With respect to the length of time the marks had been in use and the overlapping nature of the wares and trade, the Board held that these factors favoured the opponent.

In considering the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them, while the Board noted that the inclusion of the English word "HONORE" in the applicant's mark created a difference between the parties' marks in terms of sound and appearance, the importance of this difference was minimized by virtue of the fact that the word "HONORE" was not emphasized in any way and was included merely as part of the applicant's corporate name. The Opposition Board also found that the parties' marks share a degree of similarity in the ideas suggested due to the inclusion of the word "CAKE" in English and the Chinese characters for "cake house" or "cake shop."

Based on the above, the Board was not convinced that the applicant had established no reasonable likelihood of confusion and the opposition was allowed with respect to the overlapping wares.

A similar decision was reached for the applicant's application to register the Chinese Characters Design shown below:

Cheung's Bakery Products Ltd v. Saint Honore Cake Shop Limited, 2011 TMOB 95 (June 20, 2011)

Conclusion

This case is noteworthy because it confirms that in a situation where the wares are offered primarily to Chinese consumers, the average Canadian consumer for determining the likelihood of confusion would be one who can read and understand Chinese characters. This case also serves as a reminder to applicants applying for a foreign language design mark that includes English words, to emphasize the English words in order to avoid confusion with other foreign language marks.

Junyi Chen, Toronto

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