2017 FC 806, 2017 FC 806

T-416-16 2017 FC 806 Les Marques Metro/Metro Brands S.E.N.C. ( Applicant ) v. 1161396 Ontario Inc. ( Respondent ) Indexed as: Les Marques Metro/Metro Brands S.E.N.C. v. 1161396 Ontario Inc. Federal Court, Annis J.—Ottawa, March 21 and September 7, 2017.

Trade-marks — Registration — Appeal pursuant to Trade-marks Act, s. 56 from decision of Hearing Officer of Trade-marks Opposition Board respecting application No. 1333541 (TM Application) wherein registration of word IRRESISTIBLES (mark) for items listed as “candy and snacks” allowed — Respondent, corporate entity, filing TM Application with Canadian Trade-marks Office in February 2007 based on use in Canada since at least as early as August 2001 — TM Application approved — Applicant filing opposition to registration of mark, alleging that TM Application not conforming to requirements of Act, s. 30(

b) since mark had not been used by respondent in Canada in association with “cookies and biscuits” since claimed date of first use — Hearing Officer determining, inter alia: that Registrar properly concluding that TM application not for wares of one general class but for individually named specific wares; that TM application meeting requirements of Act, s. 30(b); that applicant failing to show that mark not used in association with “cookies and biscuits” at claimed date of first use — Issues: whether Board’s decision not to strike statement of opposition reasonable; whether respondent used mark in association with “cookies and biscuits” since at least as early as claimed date of first use; whether Court, in exercising discretion vested in Registrar of Trade-marks, having jurisdiction to issue “split” decisions pursuant to Act, s. 38(8) — Registrar’s conclusion that TM Application for specific goods reasonable — Plain reading of Act, s. 30(

b) only requiring that trade- mark applicant file application containing date of first use for each of general classes of goods or services described in application — “Candy and snacks” generic terms taking sense from context in application — Registrar’s conclusion that application not for wares of one general class but for individually named specific wares clearly reasonable since phrase “candy and snacks” alone would likely not have been acceptable category of goods without being further specified — Applied for trade-mark must nevertheless have been used in association with each of specific goods or services identified in general class prior to applicant’s filing date — Applicant’s new evidence could reasonably lead to conclusion that, at relevant date, respondent had not used mark — Respondent in turn not filing evidence of use of mark, failing to show having used mark as early as August 2001 nor any time since then — Regarding Court’s jurisdiction, jurisdiction to issue split decisions allowing Registrar to maintain proper balance between free competition, fair competition — Object of Act favouring

interpretation of Act, s. 38(8) allowing Registrar or Court to issue split decisions — Therefore, Registrar having jurisdiction to issue split decisions pursuant to Act, s. 38(8) — Appeal allowed. This was an appeal pursuant to

section 56 of the Trade-marks Act from a decision of a Hearing Officer of the Trade-marks Opposition Board (Board) respecting application No. 1333541 (TM Application or 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.

The respondent, a corporate entity, filed the TM Application with the Canadian Trade-marks Office in February 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 in February 2013. The applicant filed an opposition to the registration of the mark in July 2013, alleging, pursuant to paragraph 38(2)(

a) of the Act, that the TM Application did not conform to the requirements of paragraph 30(

b) of the Act since the mark had not been used by the respondent in Canada in association with “cookies and biscuits” since the claimed date of first use, being as early as August 2001. In his decision, the Hearing Officer dealt, in particular, with whether the Registrar of Trade-marks erred in refusing the respondent’s interlocutory request to strike and reject the applicant’s statement of opposition on the basis that it failed to disclose an arguable case.

The Hearing Officer refused to reconsider the interlocutory ruling that the ground of opposition disclosed an arguable case since the Registrar had properly concluded that the TM application was not for wares of one general class but for individually named specific wares. The Board then determined that the TM application met the requirements of paragraph 30(

b) of the Act: the ground of opposition was set out in sufficient detail in the statement of opposition to enable the respondent to reply thereto and to understand the case it had to meet. With respect to the affidavit of the respondent’s sole owner and president that the applicant filed as its evidence, the Hearings Officer found that it was relevant and admissible. However, he was not convinced that this particular affidavit satisfied the applicant’s onus to show that the mark was not used in association with “cookies and biscuits” at the claimed date of first use. He thus dismissed the paragraph 30(

b) ground of opposition and rejected the applicant’s opposition. The main issues were whether the Board’s decision not to strike the statement of opposition was reasonable; whether the respondent used the mark in association with “cookies and biscuits” since at least as early as the claimed date of first use; and whether the Court, in exercising the discretion vested in the Registrar of Trade-marks, has jurisdiction to issue a “split” decision pursuant to subsection 38(8) of the Act. Held , the appeal should be allowed. The Registrar’s conclusion that the TM Application was for specific goods was reasonable.

Even though the Hearing Officer did not address each of the respondent’s concerns specifically, his decision not to interfere with the Registrar’s interlocutory ruling was nevertheless reasonable. A plain reading of paragraph 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”. Neither the Registrar’s interlocutory ruling nor the Hearing Officer’s decision suggested that this was misunderstood. “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. The Registrar’s conclusion that the application was not for wares of one general classbut for individually named specific wares was clearly reasonable since the phrase “candy and snacks”—on its own—likely would nothave been an acceptable category of goods without being further specified. The requirements of paragraph 30(

b) were examined. While paragraph 30(

b) merely requires that a date of first use be provided withregard to each general class of goods or services, the applied for trade-mark must nevertheless have been used in association with each ofthe specific goods or services identified in the general class prior to the applicant’s filing date. However, the date of first use with respectto each of the specific goods in the general class may vary.

With respect to the respondent’s use of the mark, the applicant bore the initial evidential onus to adduce sufficient admissible evidencefrom which it could reasonably be concluded that the facts alleged to support the ground of opposition existed. The applicant’s newevidence on appeal was sufficient to satisfy its initial evidential onus. The applicant made significant efforts to amass the best evidence itcould and its newly tendered evidence could reasonably lead to the conclusion that, at the relevant date, the respondent had not used themark.

The burden of proof consequently fell on the respondent; however, having filed no evidence of use of the mark, the respondentfailed to show that it had used the mark as early as August 2001 nor at any time since that date. Regarding the Court’s jurisdiction to issue split decisions, subsection 38(8) of the Act and the objects thereof were examined. Trade-mark law rests on principles of fair dealing and holds the balance between free competition and fair competition. The jurisdiction to issuesplit decisions allows the Registrar to maintain a proper balance between free competition and fair competition.

The rejection of anopposition in its entirety, regardless of whether the objection was justified for some of the goods or services, would be unfair to theopponent. Conversely, the refusal of the application, regardless of whether some goods or services associated with the trade-mark shouldbe registrable, would be unfair to the applicant. The object of the Act therefore favoured an

interpretation of subsection 38(8) of the Actwhich allows the Registrar or the Court to issue split decisions. Only through such an

interpretation can the proper balance between freecompetition and fair competition be attained. Furthermore, there were compelling policy reasons supporting the Registrar’s jurisdictionto issue split decisions. Therefore, as previously established in Produits Ménagers Coronet Inc. v. Coronet-Werke Heinrich SchlerfGmbH (1986), the Registrar has the jurisdiction to issue split decisions pursuant to subsection 38(8) of the Act. STATUTES AND REGULATIONS CITED Bill C-31, Economic Action Plan 2014 Act, No. 1, S.C. 2014, c. 20. Canada Evidence Act, R.S.C., 1985, c. C-5, ss. 30, 31.1–31.8.

Trade-marks Act, R.S.C., 1985, c. T-13, ss. 30, 38(2)(a),(8), 40(2), 45, 48, 56. Trade-marks Regulations, SOR/96-195, ss. 31, 32. Unfair Competition Act, R.S.C. 1952, c. 274. CASES CITED FOLLOWED: Produits Ménagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 C.P.R. (3d) 482, 5 F.T.R. 184 (F.C.T.D.). APPLIED: Seven-up Canada Co. v. Caribbean Ice Cream Company Ltd., (T.M.O.B.); Brasstech, Inc. v. Elte Carpets Limited,2014 TMOB 92, 125 C.P.R. (4th) 41; Corporativo DE Marcas GJB, SA DE CV v. Bacardi & Company, 2014 FC 323, 122 C.P.R. (4th)389; Pfizer Products Inc. v.

Canadian Generic Pharmaceutical Association, 2015 FC 493, 133 C.P.R. (4th) 159; Canadian BroadcastingCorp. v. SODRAC 2003 Inc., 2015 SCC 57, [2015] 3 S.C.R. 615; Rizzo & Rizzo Shoes Ltd. (Re), (SCC), [1998] 1S.C.R. 27, (1998), 36 O.R. (3d) 418; Haqi v. Canada (Public Safety and Emergency Preparedness), 2014 FC 1246, [2015] 3 F.C.R. 612;Apotex Inc. v. Allergan Inc., 2012 FCA 308, 105 C.P.R. (4th) 371; Mattel Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R.772. CONSIDERED: Rogers Communications Inc. v.

Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35, [2012] 2 S.C.R. 283;Pronuptia de Paris v. Pronovias, S.A., , [2007] T.M.O.B. No. 63 (QL); Parfums Christian Dior v. Lander Co.Canada Ltd. (2000), (CA TMOB), 6 C.P.R. (4th) 257; McCabe v. Yamamoto & Co (America) Inc., (FC), [1989] 3 F.C. 290, 1989 CarswellNat 500 (WLNext Can) (T.D.). REFERRED TO: Redsand, Inc. v. Dylex Limited (1997), 74 C.P.R. (3d) 373, (F.C.T.D.); Cloutier v. The Queen, (SCC), [1979] 2 S.C.R. 709, (1979), 99 D.L.R. (3d) 577; R. v. Arp, (SCC), [1998] 3 S.C.R. 339, (1998), 166 D.L.R.(4th) 296; Molson Breweries v.

John Labatt Ltd., (FCA), [2000] 3 F.C. 145, (2000), 5 C.P.R. (4th) 180 (C.A.);Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association, 2010 FC 309, [2011] 3 F.C.R. 120, affd 2010 FCA 326, 91C.P.R. (4th) 187; Garbo Group Inc. v. Harriet Brown & Co. (1999), (FC), 176 F.T.R. 80, 23 Admin. L.R. (3d) 153(F.C.T.D.); Community Credit Union Ltd. v. Canada (Registrar of Trade-marks), 2006 FC 1119, 53 C.P.R. (4th) 296; Dunsmuir v. NewBrunswick, 2008 SCC 9, [2008] 1 S.C.R 190; Ontario Dental Assistants Association v. Canadian Dental Association, 2013 FC 266, 109C.P.R. (4th) 327; Wordex Incorporated v.

Wordex, (FC), [1983] 2 F.C. 570, (1983), 70 C.P.R. (2d) 28 (T.D.);Edelweiss Food Products Inc. v. World’s Finest Chocolate Canada Ltd. (2000), 5 C.P.R. (4th) 256, (T.M.O.B.);Clorox Co. v. Sears Canada Inc., (FC), [1992] 2 F.C. 579, (1992), 41 C.P.R. (3d) 483 (T.D.), affd (1993), 49 C.P.R.

(3d) 217 (C.A.); MAPA GmbH v. 2956-2691 Quebec Inc., 2013 TMOB 22, 111 C.P.R. (4th) 281; Sky Solar Holdings Co., Ltd. v.Skypower Global, 2014 TMOB 262, 139 C.P.R. (4th) 363; Distrimedic Inc. v. Richards Packaging Inc., 2012 TMOB 199, 108 C.P.R.(4th) 33; John Labatt Ltd. v. Molson Companies Ltd. (1990), (FC), 30 C.P.R. (3d) 293, 36 F.T.R. 70 (F.C.T.D.);Christian Dior, S.A. v. Dion Neckwear Ltd., 2002 FCA 29, [2002] 3 F.C. 405; SanDisk Corporation v. UC Mobile Co., 2016 TMOB 148;Chavali v. Canada, 2001 FCT 268, 34 Admin. L.R. (3d) 101, affd 2002 FCA 209, 291 N.R. 311; Ratt v. Matchewan, 2010 FC 160, subnom.

Elders of Mitchikinabikok Inik (Algonquin of Barriere Lake) v. Algonquins of Barriere Lake Customary Council, 2010 CarswellNat2754 (WLNext Can); Devil’s Gap Cottagers

(1982) Ltd. v. Rat Portage Band No. 38B, 2008 FC 812, [2009] 2 F.C.R. 267; Spin MasterLtd. v. George & Company, LLC, 2015 TMOB 159. AUTHORS CITED Canadian Intellectual Property Office. Goods and Services Manual, modified July 22, 2016. Canadian Intellectual Property Office. Trademarks Examination Manual, modified November, 26, 2015. Driedger, Elmer A. Construction of Statutes, 2nd ed. Toronto: Butterworths, 1983. World Intellectual Property Organization. Nice Classification, established by the Nice Agreement (1957), is an internationalclassification of goods and services applied for the registration marks, 2016. APPEAL pursuant to

section 56 of the Trade-marks Act from a decision (2015 TMOB 227) of a Hearing Officer of the Trade-marksOpposition Board respecting the respondent’s application No. 1333541 wherein registration of the word IRRESISTIBLES for itemsdescribed as candy and snacks was allowed. Appeal allowed. APPEARANCES Joanne Chriqui and Erika Bergeron-Drolet for applicant. Keri A. F. Johnston and Daniel S. Drapeau for respondent. SOLICITORS OF RECORD Norton Rose Fulbright Canada LLP, Montréal, for applicant. Johnston Law, Toronto, for respondent. TABLE OF CONTENTS Paragraph

Section ParagraphI. Nature of the Matter 1II. The Application 2III. The Opposition 3IV. The Decision under Review 7V. New Evidence on Appeal 13(1) Gina Petrone 20(2) Francis Parisien 22(3) Denis Gendron 24(4) N. Arthur Smith 26VI. Standard of Review 28VII. Issues 35VIII. Analysis 36A. Was the TMOB’s decision not to strike the statement of oppositionreasonable? 36

(1) Position of the parties 37(2) The Registrar’s conclusion that the TM Application is for specific goodsis reasonable 41 (

a) Paragraph 30(b): “use[d] the trade-mark in association with each of thegeneral classes of goods or services” 42 (

b) Trade-marks Office’s practice 44(

c) Post-advertisement amendments are irrelevant 53(

d) Conclusion 54(3) Paragraph 30(

b) requires that the trade-mark have been used associationwith each specific good or service listed in the application 55 (

a) The words of paragraph 30(

b) of the Act 56(

b) The context of the Act 58(

c) Conclusion 61B. Has 116 Inc. used the Mark in association with “cookies and biscuits”since at least as early as the claimed date of first use? 62

(1) Onus 62

(2) Paragraph 30(

b) of the Act 65

(3) Respondent’s Allegations of Frivolous and Vexatious Application by the Opponent 67 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? 70

(1) Background 70

(2) Judicial comity 73

(3) Analysis 77 (

a) The wording of subsection 38(8) is ambiguous 78 (

b) The context of the Act is not particularly helpful 80 (

c) One of the objects of the Act is the balance between free competition and fair competition 81 (

d) The Bill C-31 amendments are not indicative of Parliament’s intent 85 (

e) Policy reasons support the Registrar’s jurisdiction to issue split decisions 87 (

i) It is unreasonable and unfair for a partially successful opposition to result in a complete refusal of the entire application 88 (ii) Split decisions prevent the perverse effect of encouraging inefficient practices thereby upholding one of the purposes of the Act 91 (

f) Coronet was correctly decided and is not distinguishable 94

(4) Conclusion 97 IX. Conclusions 98 JUDGMENT APPENDIX The following are the reasons for judgment and judgment rendered in English by Annis J.: I. Nature of the Matter [ 1 ] This is an appeal pursuant to

section 56 of the Trade-marks Act , R.S.C., 1985, c. T-13 (Act) from a decision of a Hearing Officer of the Trade-marks Opposition Board (T.M.O.B.) dated December 22, 2015 (cited as 2015 TMOB 227 ) (Decision) respecting application No. 1333541 (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 Metro / 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 paragraph 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. 1329344 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: www.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 paragraph 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 thisregard, whether the specified wares are separated by a coma or a semi-colon is not determinative of whether the wares are specified as ageneral class or as a separate class. In my view, the phrase “namely” in the application serves to specify that separate wares follow theadverb.

Further, at this stage of the proceedings the [sic] in the opposition, a proper pleading need only allege the material facts but notthe 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 thespecific wares enumerated in the application.

Whether the opponent succeeds in proving its case with respect to any or all of the wareswill depend on the evidence filed by the parties. In this regard, the Board, acting on behalf of the Registrar, has jurisdiction to issuedivided 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 erredat law or in the appreciation of the facts in concluding that “‘the application is not for wares of one general class but for individuallynamed specific wares’” [Decision, at paragraph 37]. [10] Turning to the issue of whether the TM Application met the requirements of paragraph 30(

b) of the Act, the Hearing Officer heldthat Metro’s paragraph 30(

b) ground of opposition was set out in sufficient detail in the statement of opposition to enable 116 Inc. toreply 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 isreasonable to believe that if evidence of use of the Mark in association with the opposed goods was available, that 116 Inc. would haveproduced it as it was in his best interest to do so.

The Hearing Officer’s views are well summarized in the following portions ofparagraphs 65 and 66 of his Decision: …. 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 notclaim to provide photos of an exhaustive list of labels or packaging of candy or snack items that bear the Mark.… There is no inconsistency in the evidence provided by Mr. Singh in his affidavit. The Singh affidavit does not cast doubt, put intoquestion, or even speak to the claimed date of first use of the Mark with “cookies and biscuits”.

The Singh affidavit simply does notaddress 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 theMark was not used in association with “cookies and biscuits” at the claimed date of first use. For this reason, he dismissed the paragraph30(

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 supportof the present appeal, Metro has filed new evidence pursuant to subsection 56(5) of the Act in the form of sworn affidavits, each of whichI 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 beconsidered for purposes of paragraph 30(

b) of the Act, which is the date of filing of the trade-mark application, being February 1, 2007(Redsand, Inc. v. Dylex Limited (1997), (FC), 74 C.P.R. (3d) 373 (F.C.T.D.), at page 383). [15] Metro has submitted two decisions of the T.M.O.B. to support its argument that evidence postdating the material date may beused by an opponent to satisfy its initial evidential onus (Seven-up Canada Co. v. Caribbean Ice Cream Company Ltd., (T.M.O.B.) (Seven-up), at page 4; Brasstech, Inc. v. Elte Carpets Limited, 2014 TMOB 92, 125 C.P.R. (4th) 41 (Brasstech), atparagraph 14).

In Seven-up, the T.M.O.B. 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 adate several years ago, and it is for this reason that the evidential burden in cases like this is lighter. The Applicant has the opportunity torebut such evidence.... [16] In Brasstech, the T.M.O.B. cited the Seven-up decision and endorsed its reasoning.

I find that the reasons provided in Seven-upand Brasstech are consistent with this Court’s recognition that the evidential burden of proof imposed on an opponent can be quiteproblematic. As explained by Justice Rennie in Corporativo DE Marcas GJB, SA DE CV v. Bacardi & Company, 2014 FC 323, 122C.P.R. (4th) 389 (Bacardi), at paragraph 29: ….

To adduce evidence of non-use of a mark by a competitor is problematic in two ways: first, because it requires [the opponent] toprove that something did not occur (an inherently difficult exercise), and second, because such evidence is far more likely to be in thepossession 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 willdepend 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 ofthe 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 thatit makes it possible to infer the existence of one from the existence of the other (Cloutier v. The Queen, (SCC), [1979] 2S.C.R. 709, at page 731).

Put differently, the evidence must tend to increase or diminish the probability of a material fact at issue (R. v.Arp, (SCC), [1998] 3 S.C.R. 339, at page 360 [at paragraphs 37 to 39]). For purposes of the paragraph 30(

b) ground ofopposition, 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, datedApril 5, 2016. The Petrone Affidavit contains a list and printouts of all 116 Inc.’s trade-mark applications, registrations andcorresponding 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. 1711130, filed January 16, 2015, for themark SNACK ATTACK) references “cookies” and “biscuits”.

Upon reviewing the Petrone Affidavit, the Court noticed the registrationof the mark BRITTLE BITS (LMC 750673) registered based on use in Canada since at least as early as November 15, 2006, inassociation with “cookies and biscuits”. The Court also takes note of application No. 1609443 for the mark IRRESISTIBLES based onuse 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 lackthereof by 116 Inc. at the material date.

The premise of Metro’s argument relating to the Petrone Affidavit is that 116 Inc.’s trade-markapplications and registrations are representative of 116 Inc.’s business over time. Based on Metro’s argument, the Court could imply that116 Inc. is generally in the business of selling candy and chocolate goods, not “cookies and biscuits”. That is not a very convincingargument. 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 ACNielsonCompany of Canada (Nielson), sworn March 31, 2016. Nielson operates and maintains a database called MarketTrack, which collects onan ongoing basis thousands of point of sale data obtained from optical scanning of packaged consumer goods. The point of sale dataincludes the Universal Product Code (UPC), a unique series of numbers that identifies it to a specific manufacturer and product.

TheParisien Affidavit attests that the UPC codes are part of the GS1 identification system, which is widely used in Canada andinternationally for goods sold in stores. MarketTrack only contains data from 2010 until present.

However, the Parisien Affidavit revealsthat 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 factthat MarketTrack only collects data from 2010 is beyond Metro’s control. Had data been available for the years preceding 2010, thesituation 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 todiscard it. Further, the Parisien Affidavit being uncontroverted, 116 Inc. cannot now suggest that Mr.

Parisien has not conducted theresearch when it could have cross-examined the affiant, but declined to do so. I also disagree with 116 Inc. that the sales figures derivedfrom Neilson’s database constitute inadmissible hearsay. I accept that the data from Nielson satisfies the best evidence rule regardingelectronic documents (see Canada Evidence Act, R.S.C., 1985, c. C-5, sections 31.1–31.8) (Canada Evidence Act). I further accept thatthe document is admissible as it is a business record made in the usual and ordinary course of business pursuant to

section 30 of theCanada Evidence Act. Finally, the mere fact that 116 Inc. has adduced evidence of sales under the general class of “candy and snacks” inthe 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 catalogsfeaturing 116 Inc.’s products so that Mr. Gendron may provide them to UGI’s members for future business purposes. The catalogs areentitled “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 probativethan 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 productssold 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 GS1Canada Inc. (GS1 Canada). In his affidavit, Mr. Smith attests that Metro requested a list generated from GS1 Canada’s database of all theproducts 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 thecompany Codes.

From the search, a list of all products associated with the company Codes from July 2007 to January 2016 wasgenerated. 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, andshould 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 alsocontained 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 tosubsection 56(5) of the Act would have materially affected the Registrar’s finding of fact or exercise of discretion, in which case the trialJudge must come to his or her own conclusion as to the correctness of the Registrar’s decision (Pfizer Products Inc. v. Canadian GenericPharmaceutical Association, 2015 FC 493, 133 C.P.R. (4th) 159 (Pfizer), at paragraph 140; Molson Breweries v. John Labatt Ltd., (FCA), [2000] 3 F.C. 145, (2000), 5 C.P.R. (4th) 180 (C.A.), at paragraph 29).

In order to have a material effect, the newevidence must be substantial and significant, the test being one of quality, not quantity: Pfizer, at paragraph 140. [29] In view of Metro’s new evidence discussed above, I am satisfied that the new evidence tendered by Metro would have materiallyaffected the Registrar’s decision. The new evidence is not a repetition of the original evidence filed before the Registrar, but betterevidence.

That is not to say that the evidence tendered by Metro is perfect, but I believe it would have changed the T.M.O.B.’sconclusion on whether Metro had satisfied its initial evidential onus with regards to its paragraph 30(

b) ground of opposition. I musttherefore come to my own conclusion as to the correctness of the Registrar’s Decision. [30] Metro submits that I should, however, review the T.M.O.B.’s decision regarding 116 Inc.’s interlocutory request that theRegistrar strike and reject the statement of opposition on a reasonableness standard.

In its submissions, 116 Inc. argues that theinterlocutory 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 newevidence materially affects, while other unrelated issues on appeal remain subject to a reasonableness standard of review (WorldwideDiamond Trademarks Limited v.

Canadian Jewellers Association, 2010 FC 309, [2011] 3 F.C.R. 120, at paragraph 43, affd 2010 FCA326, 91 C.P.R. (4th) 187, citing Garbo Group Inc. v. Harriet Brown & Co. (1999), (FC), 176 F.T.R. 80 (F.C.T.D.).See also Community Credit Union Ltd. v. Canada (Registrar of Trade-marks), 2006 FC 1119, 53 C.P.R. (4th) 296, at paragraph 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, thepresumption is that a tribunal’s

interpretation of its home statute is reviewable on a standard of reasonableness. Writing for the SupremeCourt of Canada in Rogers Communications Inc. v.

Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35,[2012] 2 S.C.R. 283 (Rogers), at paragraph 19, Justice Rothstein held that this presumption can be rebutted where Parliament hasindicated 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 isquite unlike the scheme under which the vast majority of judicial reviews arises.

Concurrent jurisdiction at first instance seems to appearonly 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 casein which it arises.

Nothing in these reasons should be taken as departing from Dunsmuir and its progeny as to the presumptivelydeferential approach to the review of questions of law decided by tribunals involving their home statute or statutes closely connected totheir function. [33] The Supreme Court in Rogers held that the Federal Court of Appeal and the Copyright Board had concurrent jurisdiction at firstinstance in matters relating to the certification of tariffs for communication rights. Thus, the Copyright Board’s

interpretation of its ownstatute was reviewable on a correctness standard. [34] Recently, Justice Russell of the Federal Court in Pfizer conducted a Dunsmuir[[1]] type analysis to determine the proper standardof review with regards to the T.M.O.B.’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 tothe Federal Court in which new evidence may be heard and the Federal Court is permitted to exercise any discretion vested in theRegistrar. 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 FederalCourt in interpreting case law. The Board’s determinations of law will be reviewed on a standard of correctness. (Pfizer, at paragraph 149.) [35] I agree with Justice Russell’s above reasoning. The Court notes that it has concurrent jurisdiction with the T.M.O.B. with regardsto the

interpretation of paragraph 30(

b) of the Act in the context of appeals pursuant to

section 56 of the Act. I will therefore review theT.M.O.B.’s determinations of law and

interpretation of the Act on a correctness standard. However, unless I can extricate a clear questionof law from a mixed question of fact and law, I shall apply the reasonableness standard to such questions. VII. Issues 1. Was the T.M.O.B.’s decision not to strike the statement of opposition reasonable? 2. Has 116 Inc. used the Mark in association with “cookies and biscuits” since at least as early as the claimed date of first use? 3. Does the Court, in exercising the discretion vested in the Registrar of Trade-marks, have jurisdiction to issue a “split” decisionpursuant to subsection 38(8) of the Act?

VIII. Analysis A. Was the T.M.O.B.’s decision not to strike the statement of opposition reasonable? [36] Whether paragraph 30(

b) of the Act merely requires 116 Inc. to prove use of the Mark in association with the “general class” ofcandy and snacks as opposed to in association with each individually named specific goods, namely cookies and biscuits, is a mixedquestion of fact and law. The Registrar’s conclusion that “the application is not for wares of one general class but for individually namedspecific 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 paragraph 30(b) “merely requires that an [a]pplicant prove use in association with thegeneral class of wares and not with each product listed in an application for registration”. Consequently, 116 Inc. believes it satisfies theuse requirement under paragraph 30(

b) of the Act merely by proving use of the Mark in association with the “general class” of candy andsnacks, 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) Paragraph 30(

b) of the Act is explicit in that only the use in association with the general class of goods or services described in theapplication needs be proven (respondent’s memorandum of fact and law, paragraph 42). (

b) The interlocutory ruling was contrary to the practice before the Trade-marks Office, the CIPO Trademarks Examination Manual(Examination Manual), and the CIPO Goods and Services Manual (Goods and Services Manual) at the time of the decision andsubsequently.

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” classwhich falls within Class 30 of the Nice Classification [established by the Nice Agreement (1957), which is an international classificationof goods and services applied for the registration of marks.] In support of its argument before the Hearing Officer, 116 Inc. cited theT.M.O.B. decision in Pronuptia de Paris v. Pronovias, S.A., , [2007] T.M.O.B.

No. 63 (QL) (Pronuptia cited to QL)(respondent’s memorandum of fact and law, paragraphs 42 and 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 beamended 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, paragraph 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 andsnacks), but for individually named specific goods, namely cookies and biscuits.

As such, 116 Inc. needs to show use for eachindividually named specific Goods, including use in association with cookies and biscuits. Metro further argues that even if the TMApplication was for general classes of goods, 116 Inc. would still need to show use of the Mark in association with all the Goods in theTM 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 tointerfere with the Registrar’s interlocutory ruling is nevertheless reasonable. Below, I review the Hearing Officer’s reasons and, whereappropriate, supplement them to address some of the concerns raised by 116 Inc. which were not specifically addressed in the HearingOfficer’s reasons. (

a) Paragraph 30(b): “used the trade-mark in association with each of the general classes of goods or services” [42] Paragraph 30(

b) of the Act reads as follows: Contents of application 30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing … (

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; [Emphasisadded.] [43] I agree with 116 Inc. that a plain reading of paragraph 30(

b) of the Act appears to only require that the trade-mark applicant filean application containing the date of first use for “each of the general classes of goods or services described in the application”. This isalso corroborated in

section II.7.1 of the Examination Manual (“Applications Based on Use in Canada — Subsection 16(1) andParagraph 30(b)”). Neither the Registrar’s interlocutory ruling nor the Hearing Officer’s Decision however suggests that this wasmisunderstood. Indeed, they both focused their respective analysis on whether the TM Application was for goods of a general class orfor 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 ExaminationManual and the Goods and Services Manual, I disagree that the interlocutory ruling was contrary to practice before the Trade-marksOffice. 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, 109C.P.R. (4th) 327, at paragraph 24; Wordex Incorporated v. Wordex, (FC), [1983] 2 F.C. 570, (1983), 70 C.P.R. (2d)28 (T.D.), at page 31). [45] First, to the extent 116 Inc. equates “general classes of goods” to classes for goods under the Nice classification system, I disagreeas there is no basis to this argument.

Though it is currently acceptable for goods and services in a trade-mark application or registration tobe grouped and classed according to the classes of the Nice Classification, there is no legislation in force requiring trade-mark owners orapplicants to refer to Nice classes. [46] Second, the Registrar reasonably distinguished the decision of the T.M.O.B. in Pronuptia by concluding that it did not addresswhether individually named specific goods separated by commas after “namely” in a statement of goods form part of a general class ofgoods.

Indeed, Member Carrière in Pronuptia determined that by using a semi colon to separate a good from other goods in anapplication, 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.

SectionII.5.4.2 (“Context of the Goods and Services”) of the Examination Manual explains that “the context of a statement of goods or servicesmay serve to specify an otherwise unacceptable statement of goods or services.” The Examination Manual provides the followingexample: For example, “cases” alone are not acceptable as they could include any type of “cases” from camera cases to pillowcases. However, inan 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 ofdelivery 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 generallyunderstood to mean any small portion of food or drink consumed between meals. As emphasized by Metro during the hearing, it is notuncommon for identical trade-marks to coexist in the food industry when they relate to intrinsically different goods (see e.g. EdelweissFood Products Inc. v.

World’s Finest Chocolate Canada Ltd. (2000), (CA TMOB), 5 C.P.R. (4th) 256 (T.M.O.B.)(meat and chocolate)). See also Clorox Co. v. Sears Canada Inc., (FC), [1992] 2 F.C. 579, (1992), 41 C.P.R. (3d)483 (T.D.), affd (1993), 49 C.P.R. (3d) 217 (C.A.) (fruit cake and barbecue sauce).

Therefore, the Registrar’s conclusion [Decision, atparagraph 37] that “the application is not for wares of one general class but for individually named specific wares” is in my view clearlyreasonable seeing as the phrase “candy and snacks”—on its own—likely would not have been an acceptable category of goods withoutbeing further specified. As the Examination Manual states [at

section II.5.4.4], “[g]oods and services that require further specificationmay be specified using the definite terms ‘namely’, ‘consisting of’ or ‘specifically’”, which appears to be what 116 Inc. has done in itsTM Application to further specify “candy and snacks”. To conclude otherwise would allow 116 Inc. to obtain a trade-mark monopolyover 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 therequirements 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 acceptableif the goods listed before or after it serve to qualify the good—i.e. goods which are separated by semi-colons are generally considerednot 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 addresseswhether individually named specific goods separated by commas after “namely” in a statement of goods form part of a general class ofgoods. [52] The Registrar relied on the T.M.O.B. decisions MAPA GmbH v. 2956-2691 Quebec Inc., 2013 TMOB 22, 111 C.P.R. (4th) 281(MAPA) and Sky Solar Holdings Co., Ltd. v.

Skypower Global, 2014 TMOB 262, 139 C.P.R. (4th) 363 (Sky Solar) as examples where theT.M.O.B. “determined that an applicant had failed to substantiate a claimed date of first use for some of the applied for goods or servicesin a statement of goods or services appearing to fall in the same general class, notwithstanding the fact that use has been shown with othergoods or services in a statement that includes the term ‘namely’” [emphasis in original; Decision, at paragraph 40]. (

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 thesame 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 TMApplication.

(3) Paragraph 30(

b) requires that the trade-mark have been used in association with each specific good or service listed in theapplication [55] Metro has argued that—though paragraph 30(

b) of the Act does not require an applicant to provide a date of first use for eachspecific good or service in a trade-mark application—every good or service listed in the application must nevertheless have been used tosatisfy the requirement of paragraph 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 theirgrammatical 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, [2015] 3 S.C.R. 615, at paragraph 48, citing Elmer A. Driedger,Construction of Statutes, 2nd ed. (Toronto: Butterworths, 1983), at page 87, approved and adopted in Rizzo & Rizzo Shoes Ltd. (Re), (SCC), [1998] 1 S.C.R. 27, at paragraph 21). (

a) The words of paragraph 30(

b) of the Act [56] Paragraph 30(

b) of the Act reveals two requirements: (1) that the trade-mark application be for a trade-mark that has been used inCanada; and (2) that the application contain the date of first use for each of the general classes of goods or services described in theapplication. These requirements are readily apparent from a plain reading of paragraph 30(b): Contents of application 30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing … (

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; [Emphasisadded.] [57] The Act is clear that only a date of first use of the Mark in association with each general class of goods or services must beprovided—i.e. the second requirement.

However, an ambiguity remains with regards to the first requirement: does the Act’s firstrequirement that the application be based on use of the trade-mark in Canada imply that all goods in the application must have been usedas of the relevant date? For the reasons that follow, the Court must answer this question in the affirmative. (

b) The context of the Act [58]

Section 30 of the Act generally sets out the information that must be included in a trade-mark application. Non-compliance withsection 30 is both a ground of opposition and a ground for an initial examiner’s rejection of an application for registration.

When filingan application to register a trade-mark in Canada, there are numerous grounds upon which the application may be based, namely: (1)prior use of the trade-mark in Canada; (2) prior making known of the trade-mark in Canada; (3) registration (or application forregistration) of a trade-mark used in a country of the Union; and (4) proposed use of the trade-mark in Canada. These grounds forregistration are reflected in paragraphs 30(b), 30(c), 30(

d) and 30(

e) of the Act, respectively: Contents of application 30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing … (

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; (

c) in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union inwhich it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which theapplicant or named predecessors in title have made it known in Canada in association with each of the general classes of goods orservices described in the application; (

d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registrationby the applicant or the applicant’s named predecessor in title on which the applicant bases the applicant’s right to registration, particularsof the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of acountry in which the trade-mark has been used by the applicant or the applicant’s named predecessor in title, if any, in association witheach of the general classes of goods or services described in the application; (

e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee,intends to use the trademark in Canada; [Emphasis added.] [59] If 116 Inc. was to be permitted to register the Mark in association with a general class of goods, regardless of whether it has usedthe Mark in association with all of the goods listed within the general class, an absurd result would ensue: 116 Inc. would in fact bereceiving a certificate of registration for the Mark on the basis of prior use without having actually used the Mark in association withsome of the listed goods.

By doing so, 116 Inc. would be avoiding the need to file a declaration of use (subsection 40(2) of the Act) forthose particular goods, as it would have been required to do if it had applied for the registration of the Mark on the basis of proposed use. [60] The law cannot reasonably be interpreted in a way that would allow 116 Inc. to circumvent the fundamental requirement of use.Without use, trade-mark rights do not exist. 116 Inc. cannot exploit paragraph 30(

b) of the Act in a way that would frustrate theunderlying logic of the trade-mark registration bases scheme. (

c) Conclusion [61] It is the Court’s view that while paragraph 30(

b) of the Act merely requires that a date of first use be provided with regards toeach general class of goods or services, the applied for trade-mark must nevertheless have been used in association with each of thespecific goods or services identified in the general class prior to the applicant’s filing date. However, the date of first use with respect to

each of the specific goods in the general class may vary. This is consistent with the T.M.O.B.’s reasoning in Parfums Christian Dior v.Lander Co. Canada Ltd. (2000), (CA TMOB), 6 C.P.R. (4th) 257, at page 266, where it stated the following: …. However, since the applicant has claimed that its mark has been used in association with the general class of wares, the trade-markFASCINATION must have been used in association with each of the specific wares identified in the general class prior to the applicant’sfiling date although the date(

s) when such use commenced with respect to each of the specific wares in the general class may vary [see inthis regard, McCarthy Tétrault v. Hilary’s Distribution Ltd., 67 C.P.R. (3d) 279, at p.284]. Moreover, as noted above, such use of thetrade-mark FASCINATION in association with each of the specific wares in the general class must also have been continuous “use” inthe normal course of trade. [Emphasis added.] 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?

(1) Onus [62] There are two separate onuses to bear in mind. [63] First, Metro (opponent) bears the initial evidential onus (often called the burden of production or presentation) to adducesufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support the ground of oppositionexist. For the reasons stated by Justice Rennie in Bacardi, at paragraph 29 (cited in this decision, at paragraph 15), I agree with Metrothat the initial burden on the opponent is a light one (Bacardi, at paragraph 30; Distrimedic Inc. v.

Richards Packaging Inc., 2012 TMOB199, 108 C.P.R. (4th) 33, at paragraph 25. See also John Labatt Ltd. v. Molson Companies Ltd. (1990), (FC), 30C.P.R. (3d) 293 (F.C.T.D.) (John Labatt), at page 299). [64] Second, once the initial evidential onus has been satisfied, the burden shifts to 116 Inc. who bears the legal onus (often calledburden of persuasion) of establishing, on a balance of probabilities, that its trade-mark application complies with the requirements of theAct (MAPA, at paragraph 7; John Labatt, at pages 299 and 300; Christian Dior, S.A. v. Dion Neckwear Ltd., 2002 FCA 29, [2002] 3 F.C.405).

The presence of such an onus means that if a determinate conclusion cannot be reached once all the evidence is in, then the issuemust be decided against 116 Inc. (John Labatt, at page 300).

(2) Paragraph 30(

b) of the Act [65] I find that Metro’s new evidence on appeal is sufficient to satisfy its initial evidential onus.

Bearing in mind Justice Rennie’scomments in Bacardi regarding the problems associated with such a burden of proof, I am not only satisfied that Metro has madesignificant efforts to amass the best evidence it could, but also that Metro’s newly tendered evidence can reasonably lead to theconclusion that, at the relevant date, 116 Inc. had not used the Mark. [66] The burden of proof consequently falls on 116 Inc., who must show, on a balance of probability, that it has used the Mark as ofthe relevant date.

Having filed no evidence of use of the Mark, 116 Inc. has not satisfied me that it has used the Mark since as early asAugust 2001, nor at any time since.

(3) Respondent’s Allegations of Frivolous and Vexatious Application by the Opponent [67] 116 Inc. alleges that Metro’s opposition and subsequent appeal relating to the TM Application is frivolous and vexatious. In lightof my above findings, this accusation is without merit. [68] 116 Inc. also alleges a number of wrongdoings by Metro relating to 116 Inc.’s alleged rights in the trade-mark IRRESISTIBLES,including inter alia misappropriation of 116 Inc.’s Mark, creating reverse confusion, acting in bad faith, and misleading the Registrar, theT.M.O.B. and the Courts.

Comparing itself to David (in the mythical story of David against Goliath), 116 Inc. argues that Metro(Goliath) has used its dominant market position to frustrate the legitimate senior trade-mark rights of 116 Inc. [69] Beyond being baseless accusations, such matters are wholly extraneous to the present appeal from the T.M.O.B. Decision whichrelates to 116 Inc.’s right to register the Mark. Metro has opposed the registration of the Mark based on non-compliance with paragraph30(

b) of the Act, which is entirely irrelevant to any use of any trade-mark by Metro. If 116 Inc. claims rights to the Mark in associationwith “cookies and biscuits”, then it should have filed evidence to substantiate its claim. It chose not to do so and must now accept theensuing consequences. C. Does the Court, in exercising the discretion vested in the Registrar of Trade-marks, have jurisdiction to issue a “split” decisionpursuant to subsection 38(8) of the Act?

(1) Background [70] Despite the quasi-absence of written submissions on the matter, the issue of the jurisdiction of the Registrar to issue “split”decisions became a live issue between the parties at the hearing. A split decision in the context of an opposition is generally understoodto result in an application being accepted for certain goods and/or services and refused for others (SanDisk Corporation v. UC MobileCo., 2016 TMOB 148 (SanDisk), at paragraph 58).

On appeal before this Court, Metro argued that the TM Application should be refusedonly in so far as “cookies and biscuits” are concerned, citing the decision of Produits Ménagers Coronet Inc. v. Coronet-Werke HeinrichSchlerf GmbH (1986), 10 C.P.R. (3d) 482 (F.C.T.D.) (Coronet) as authority for the Registrar’s jurisdiction pursuant to subsection 38(8)of the Act to issue such a split decision.

Conversely, 116 Inc. argued that the Registrar—and therefore the Court in exercising theRegistrar’s discretion on appeal—has no such jurisdiction. [71] The Court notes that it is particularly odd for a trade-mark applicant to argue, as 116 Inc. has, that “after considering the evidenceand argument, the Registrar is under a positive obligation to do one of two mutually exclusive things: refuse the application in itsentirety; or reject the opposition in its entirety”.

This position is most-often argued by opponents because the logical conclusion flowingfrom such an argument is that if a ground of opposition is successful with regards to any good or service, the only decision the Registrar

can issue is one in which the entire trade-mark application is refused. This was in fact the position argued by the opponent in Coronet . In the present matter, having concluded that paragraph 30 (

b) of the Act required 116 Inc. to have used the mark in association with all of it specific goods, namely “cookies & biscuits”, the Court must decide if 116 Inc.’s entire TM Application should be refused. Strangely, it is Metro who argues that the Court should save part of 116 Inc.’s TM Application. [ 72 ] The T.M.O.B. rejected the opposition in its entirety, and therefore did not need to consider whether it could issue a split decision.

However, having concluded that 116 Inc. has failed to prove use of the Mark in association with cookies and biscuits, the Court must now determine whether it can refuse the TM Application in part or if it must refuse it in its entirety. The Federal Court being a statutory court without inherent jurisdiction, it must satisfy itself of its jurisdiction even if the issue hasn’t been raised or properly addressed by the parties ( Chavali v. Canada , 2001 FCT 268 , 34 Admin. L.R. (3d) 101, at paragraph 6 , affd 2002 FCA 209 , 291 N.R. 311; Ratt v. Matchewan , 2010 FC 160 , at paragraph 96 , sub nom.

Elders of Mitchikinabikok Inik (Algonquin of Barriere Lake) v. Algonquins of Barriere Lake Customary Council , 2010 CarswellNat 2754 (WLNext Can) ; Devil’s Gap Cottagers

(1982) Ltd. v. Rat Portage Band No. 38B , 2008 FC 812 , [2009] 2 F.C.R. 267, at paragraph 26 ). Consequently, the Court directed the parties to provide further and fuller written submissions on this specific issue.

(2) Judicial comity [ 73 ] Whether the Registrar has the jurisdiction to issue split decisions is a question of law that appears to have been answered by this Court in Coronet . The T.M.O.B. has consistently relied on this decision for over 30 years as authority to issue “split decisions” in over a hundred cases (see e.g. Sky Solar , at paragraph 70; SanDisk , at paragraphs 58–61; Spin Master Ltd. v. George & Company, LLC , 2015 TMOB 159 , at paragraph 96 ). [ 74 ] As a matter of comity, it would appear that I should follow the Coronet decision. As Justice Mactavish rightly pointed out in Haqi v.

Canada (Public Safety and Emergency Preparedness) , 2014 FC 1246 , [2015] 3 F.C.R. 612, at paragraph 48 : Under principles of stare decisis, judges of one Court are not bound by decisions of members of their own Court. However, in accordance with the principle of judicial comity, judges should follow the decisions of their colleagues involving the

interpretation of statutory provisions unless there is good reason to depart from a prior decision. [ 75 ] As stated by the [Federal] Court of Appeal in Apotex Inc. v. Allergan Inc. , 2012 FCA 308 , 105 C.P.R. (4th) 371, at paragraph 48 : …. the general view appears to be that the conclusions of law of a Federal Court judge will not be departed from by another judge unless he or she is convinced that the departure is necessary and can articulate cogent reasons for doing so.

On this test, departures should be rare. [ 76 ] However, I agree with 116 Inc. that no decision appears to have undertaken a textual, contextual, or purposive analysis of subsection 38(8) of the Act to determine whether it confers upon the Registrar the jurisdiction to issue split decisions. This, in my view, is a sufficient reason to revisit the question and to determine whether there is good reason to depart from the Coronet decision.

(3) Analysis [ 77 ] Whether subsection 38(8) of the Act permits the Registrar to issue split decisions is a question of statutory

interpretation. The modern approach, as discussed above, requires that I examine the words of the 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. (

a) The wording of subsection 38(8) is ambiguous [ 78 ] Subsection 38(8) of the Act reads with my emphasis, as follows: 38 … Decision

(8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision. [Emphasis added.] [ 79 ] 116 Inc. argues that after considering the matter pursuant to subsection 38(8) of the Act , “the Registrar is under a positive obligation to do one of two mutually exclusive things: refuse the application in its entirety , or reject the opposition in its entirety ” (emphasis added).

This submission demonstrates that for the provision to be unambiguous, as argued by 116 Inc., additional words implying the “entirety” of the result are required. These words are not in the provision, just as the phrase “in part” is similarly not included to explicitly authorize the Registrar to render a decision that only partially refuses the application. (

b) The context of the Act is not particularly helpful [ 80 ] 116 Inc. submits that the Act contains express provisions permitting the Registrar to issue split decisions in other contexts (citing sections 45 and 48 of the Act). For example,

section 45 of the Act specifically allows for registrations to be expunged or to be amended. However, given that

section 45 expungements occurred after registration of a mark, this

section is not truly helpful in interpreting subsection 38(8). The same can be said of

section 48. The context of the Act is therefore not particularly useful and is superseded by the prevailing object of the Act, which is to attain a balance between free competition and fair competition, as discussed below. (

c) One of the objects of the Act is the balance between free competition and fair competition [ 81 ] The predecessor statute to the current Trade-marks Act was the Unfair Competition Act , R.S.C. 1952, c. 274, whose purpose was “to bring some semblance of order in the market-place and to codify or structure in statute form the rights, duties and privileges of

intellectual property owners at common law. Its whole thrust is to promote and regulate the lawful use of the trade marks” (McCabe v.Yamamoto & Co (America) Inc., (FC), [1989] 3 F.C. 290 (T.D.), at page 298 [1989 CarswellNat 500 (WLNext Can),at paragraph 29]). [82] Though the current Act does not have an object clause, it can reasonably be said that the Act is to be interpreted as continuing thepolicy and purpose of its predecessor (McCabe v. Yamamoto & Co (America) Inc., at paragraph 29).

This is in accordance with theSupreme Court of Canada’s decision Mattel Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772, at paragraph 21, where theCourt stated that “[t]rade-mark law rests on principles of fair dealing. It is sometimes said to hold the balance between free competitionand fair competition” (emphasis added). [83] The jurisdiction to issue split decisions allows the Registrar to maintain a proper balance between free competition and faircompetition.

The rejection of an opposition in its entirety, regardless of whether the objection was justified for some of the goods orservices, would be unfair to the opponent. Conversely, the refusal of the application, regardless of whether some goods or servicesassociated with the trade-mark should be registrable, would be unfair to the applicant. In either scenario, the public interest is not wellserved seeing as the former promotes unfair competition, and the latter stifles free competition. [84] The object of the Act therefore favours an

interpretation of subsection 38(8) of the Act which allows the Registrar or the Court toissue split decisions. Only through such an

interpretation can the proper balance between free competition and fair competition beattained. (

d) The Bill C-31 amendments are not indicative of Parliament’s intent [85] Parliament has adopted amendments to the Act through Bill C-31 [Economic Action Plan 2014 Act, No. 1, S.C. 2014, c. 20]which are not yet in force. Notably, subsection 38(8) of the Act will be replaced by the proposed subsection 38(12), which reads asfollows: 38 … Decision

(12) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application,reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the oppositionwith respect to the others. He or she shall notify the parties of the decision and the reasons for it. [Emphasis added.] [86] 116 Inc. argues that proposed subsection 38(12) suggests that Parliament intended to provide a power to the Registrar which itdoes not have—i.e. the jurisdiction to issue split decisions.

Conversely, Metro argues that in adopting subsection 38(12), Parliamentintended to confirm the jurisdiction to issue split decisions, thereby affirming the status quo of more than 30 years of issuing splitdecisions in over a hundred cases. In the Court’s view, the Bill C-31 amendments to the Act which are not yet in force neither supportthe position that the Registrar currently has jurisdiction to issue a “split decision” nor that it does. This post hoc reasoning is uselessunless substantiated by further evidence of Parliament’s intent in adopting the changes in the text of the Act.

No such evidence wasprovided by the parties, and the Court is satisfied that, had such evidence been available, it would have been provided. (

e) Policy reasons support the Registrar’s jurisdiction to issue split decisions [87] There are compelling policy reasons supporting the Registrar’s jurisdiction to issue split decisions. First, it is an unreasonableand unfair outcome that a partially successful opposition results in a complete refusal of the entire application. Second, split decisionsprevent the perverse effect of encouraging inefficient practices. (

i) It is unreasonable and unfair for a partially successful opposition to result in a complete refusal of the entire application [88] The relevant wording of subsection 38(8) reads that the “Registrar shall refuse the application or reject the opposition” (emphasisadded). 116 Inc. argues that to refuse the application or reject the opposition constitutes two mutually exclusive outcomes, with whichthere is no disagreement, but that either must be done in their “entirety”, which is an unreasonable and unfair

interpretation of theprovision. [89] The wording of subsection 38(8) of the Act provides for what is described as an “either/or” outcome. By this is meant thatchoosing one option, eliminates the other; like the soup or salad choice on a restaurant menu. The concept behind a reasonable either/oroption is that the outcomes are judged to be equivalent.

The soup option is intended to replace the salad option on the restaurant menu asreasonably providing equal value for the customer’s money, where the decision relates to choosing appealing food to eat. [90] The termination of the application that results from a decision that only extends to accepting or rejecting the oppositionproceeding is an outcome that is not logically or reasonably connected to the decision. The argument is like saying that the choice of aglass of water provides the same value as that of a bowl of soup on food choice.

There exists no rational connection between the decisionon the trademark opposition relating to specific wares and its effect on wares not relevant to the decision. The either/or choice makes nosense if read literally as 116 Inc. argues.

Taking into considerations the objectives of the Act, subsection 38(8) must be interpreted toallow split decisions; any other conclusion would be unreasonable and unfair to the applicant. (ii) Split decisions prevent the perverse effect of encouraging inefficient practices thereby upholding one of the purposes of the Act [91] The lack of logical connection between the decision and the extent of the prejudice that flows from striking the application byliterally applying subsection 38(8) to “refuse the application”, results in unfairness to the applicant.

As a matter of policy, and bearing inmind the object of the Act, subsection 38(8) should not be interpreted by not providing for the issuance of split decisions. To concludeotherwise would be unreasonable and unfair to the applicant.

[ 92 ] It can be presumed that Parliament intended the trade-mark registration process to be as efficient as possible. I agree with Metro that refusing to recognize the Registrar’s jurisdiction to issue split decisions would have the perverse effect of encouraging inefficient practices. [ 93 ] If the application is refused, trade-mark applicants would again have to go through the entire trade-mark application process with a trade-mark application featuring a narrower statement of goods and services.

Eventually, not permitting split decisions would likely impel trade-mark applicants to file several trade-mark applications instead of a single one to avoid the risk that an entire trade-mark application would be refused due to the applied-for mark being unregistrable with respect to a single good or service listed in the application. This would result in higher costs for both trade-mark applicants and the Trade-marks Office, as it would multiply the number of trade-mark applications and opposition proceedings, in addition to forcing the applicant to incur unnecessary delay and costs. (

f) Coronet was correctly decided and is not distinguishable [ 94 ] As an alternative argument, 116 Inc. submits that Coronet is distinguishable from the present matter on the basis that the grounds of opposition were different and did not include a

section 30 ground of opposition. 116 Inc.’s distinction between the present matter and the one in Coronet suggests that split decisions are intra vires of the Registrar only in respect of certain grounds of opposition. I disagree. Subsection 38(8) of the Act makes no such distinction and applies to all oppositions, regardless of the ground of opposition raised. [ 95 ] The object of the Act as well as the policy considerations discussed above are relevant to all opposition proceedings, regardless of the ground of opposition alleged.

To refuse to acknowledge the Registrar’s jurisdiction to issue a split decision would in all such cases be unreasonable, and result in an unfair outcome for the applicant. [ 96 ] Such considerations were undoubtedly the underlying reasons at the core of Mr. Justice Teitelbaum’s conclusion in Coronet that the Registrar has jurisdiction to issue split decisions. Accordingly, I conclude that Coronet was correctly decided.

(4) Conclusion [ 97 ] On the basis of the aforementioned reasoning, I am in agreement with the decision of Coronet that the Registrar has the jurisdiction to issue split decisions pursuant to subsection 38(8) of the Act . IX. Conclusion [ 98 ] In light of all of the above, the appeal is allowed with costs. JUDGMENT FOR T-416-16 THIS COURT’S JUDMENT is that: 1. The appeal is allowed. 2. The Decision of the Trade-marks Opposition Board is quashed. 3. Trade-mark application No. 1333541 is returned to the Trade-marks Office for further processing with the wares restricted to the fo

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