KIMBO mark expunged for the second time

In Café Do Brasil SpA v Walong Marketing Inc, the Federal Court of Canada has allowed the plaintiff's claim for expungement of the mark KIMBO. The dispute was complicated by the fact that the plaintiff had itself previously owned the KIMBO mark, only to have it expunged, apparently without its knowledge, by the current owner's predecessor in title.

In 1990 Café Do Brasil SpA obtained a trademark registration for the mark KIMBO for use in association with coffee, tea and other food products. In 1999 an entity called TAWA Supermarket Inc started an expungement proceeding against Café Do Brasil's KIMBO mark. The mark was expunged for non-use since no evidence of use was filed by Café Do Brasil. Having successfully expunged Café Do Brasil's mark, TAWA went on to obtain registration for the KIMBO mark for use in association with various foods, including coffee, and assigned title to the mark to Walong Marketing Inc in January of 2002. In 2004 Café Do Brasil applied to extend the goods covered by the registration it thought it had, and the Walong trademark was cited against its application.

In this Federal Court proceeding, Cafe Do Brasil sought to expunge Walong's registration for the KIMBO trademark. Café Do Brasil filed evidence that it had never received the actual expungement notice which commenced the former proceeding. This evidence was unchallenged.

The court was, therefore, faced with the following three issues:

• Is Café Do Brasil entitled to bring this Federal Court proceeding?
  
  
• If so, was TAWA entitled to the registration of the KIMBO mark in Canada?
  
  
• Is the trademark now owned by Walong distinctive and valid?

To commence an expungement proceeding in the Federal Court, an applicant must show that it is a "person interested" within the meaning of Section 2 of the Trademarks Act. The court found that Café Do Brasil is a "person interested" since (i) Walong's registered mark was cited against its pending trademark application, and (ii) Café Do Brasil is the owner of several foreign registrations for the KIMBO mark in association with coffee. An applicant must also show that it did not have express notice of a decision of the registrar of trademarks from which it had a right to appeal. As Café Do Brasil did not have actual notice of the prior expungement proceeding, Subsection 57(2) did not preclude it from bringing this application.

Café Do Brasil contended that TAWA was not entitled to registration of the mark because at TAWA's claimed date of first use of the mark, January 1995, the KIMBO mark was confusingly similar to Café Do Brasil's marks, which had been used in Canada in association with coffee products since 1992.

In evaluating the likelihood of confusion between the marks, the court found that:

• the mark KIMBO has "some measure of inherent distinctiveness";
  
  
• Café Do Brasil's mark was better known in Canada than Walong's mark;
  
  
• Café Do Brasil's use of KIMBO pre-dated that of TAWA or Walong;
  
  
• the goods at issue were very similar and in some cases identical; and
  
  
• there was a "significant degree of resemblance between the marks".

Considering all these factors, the court believed that there was a likelihood of confusion between the Walong mark and Café Do Brasil's mark and, consequently, TAWA was not entitled to register its mark. Having reached that conclusion, it was unnecessary to discuss the other grounds raised by Café Do Brasil.

The Walong mark was ordered to be expunged from the Trademarks Register.

John Macera, Macera & Jarzyna - Moffat & Co, Ottawa