Appeal with fresh evidence bears fruit for juice maker

In Industries Lassonde Inc v Sun Pac Foods Ltd, the Federal Court of Canada has overturned an Opposition Board decision in which the board allowed an opposition against the registration of the mark FRUITÉ.

Industries Lassonde Inc filed a trademark application for FRUITÉ in association with fruit beverages, based on use since 1987. The registrar stated that even if the mark was considered to be clearly descriptive of the goods in association with which it was used, it had become distinctive of Lassonde's products at the time of filing of the trademark application pursuant to Section 12(2) of the Trademarks Act. Sun Pac Foods Ltd, which was, at the time, facing litigation for having used a confusingly similar trademark, opposed the application on various grounds, including the fact that:

• it was not distinctive at the time of filing of the application;
  
  
• it was not distinctive because of coexistence on the register and on the market of similar trademarks; and
  
  
• it was confusingly similar to registered trademarks belonging to third parties.

The board upheld the opposition and refused the application on the grounds of descriptiveness. Even though Lassonde had submitted evidence to demonstrate that FRUITÉ had become distinctive, such evidence was disregarded because Lassonde's witness had refused to be properly cross-examined. The board rejected Lassonde's affidavit as a result of the abusive behaviour of its agent during cross-examination. Lassonde appealed and filed fresh evidence. Sun Pac was not represented at the hearing of the appeal.

Lassonde submitted evidence of its extensive use of the trademark FRUITÉ since 1987 and it was not cross-examined during the appeal. The Federal Court could therefore rely on evidence which was not available to the board to determine that the mark had become distinctive of Lassonde's products at the time of filing of the application. It therefore overturned the board's decision and accepted the application.

The court also considered, as a surrounding circumstance, the fact that Lassonde already had two similar registrations. Those registrations had been obtained following objections by the examiners as to the descriptiveness of the marks. The applications were finally accepted and registered after Lassonde, in each case, had submitted evidence of acquired distinctiveness.

The Federal Court's decision also raises interesting points. In its opposition, Sun Pac had alleged that the mark was not registrable because it was confusingly similar to the trademark FRUITTI (and design), registered by Ault Foods Ltd, which was not a party to the opposition nor the appeal. Sun Pac had also raised numerous other trademarks used by third parties. This ground of opposition was not decided by the board and the usual practice would have been to return the matter to the board to rule on this particular issue. Lassonde however convinced the court that returning the matter to the board would delay the registration by at least one year and that the court should accept to render a decision on the issue. The court accepted, making it clear that it was an exception because of the special circumstances of this case.

The court rejected the argument that numerous third parties had been using similar trademarks. There was no evidence of use of the marks listed by Sun Pac. As for the registered trademark FRUITTI, the court was of the view that the argument of confusion would have been more convincing had it come from the registered trademark owner rather than from a third party. It also concluded that given the weak inherent distinctiveness of the marks FRUITÉ and FRUITTI, small differences, in the spelling and pronunciation, were sufficient so as to avoid any likelihood of confusion.

France Lessard, Léger Robic Richard LLP, Montreal