Federal Court Dismisses Application to Expunge Upper Crust’s Trademark

On April 2, 2019, in Bon Appetit Danish, Inc v 2168587 Ontario Ltd, 2019 FC 396, the Federal Court (Court) dismissed an application brought by Bon Appetit Danish, Inc and Bon Appetit Distribution Inc (collectively, Bon Appetit) to expunge 2168587 Ontario Ltd’s (Upper Crust) registered trademark BON APPÉ GOURMET & Design. Both parties are manufacturers and distributors of packaged baked goods generally sold in convenience stores.

Bon Appetit sought to expunge Upper Crust’s trademark on the basis that Upper Crust’s registered mark was confusing with its BON APPETIT marks . Upper Crust filed its application to register BON APPÉ GOURMET & Design in 2009 based on proposed use and was granted registration in 2015. The competing marks are shown below with Bon Appetit’s mark on the left and Upper Crust’s mark on the right.

The main issue before the Court was whether there is a reasonable likelihood of confusion between the marks pursuant to subsection 18(1)(b) or (d) of the Trade-marks Act (the “Act”). The Court answered in the negative. Paragraph 18(1)(b) is directed at the distinctiveness of the registered mark as of the date proceedings commenced (February 1, 2018), while paragraph 18(1)(d) asks whether Upper Crust was entitled to registration as of the filing date (December 3, 2009).

The Court considered the confusion factors set out in subsection 6(5) of the Act. The Court found that while there are some similarities between the two marks, the resemblance is low. The Court concluded that the BON APPETIT wordmark has weak distinctiveness and that there is no reasonable likelihood of confusion between the marks in 2009.

The Court further considered whether the BON APPETIT wordmark acquired distinctiveness by the time of proceedings.  The Court held that although Bon Appetit demonstrated continuous use of their marks since 2008, Bon Appetit’s evidence of sales and advertising was insufficient to show that their wordmark acquired distinctiveness of what otherwise is a generic phrase.

Accordingly, the Court dismissed Bon Appetit’s application with costs. Those costs were halved, though, as the Respondent admitted it had filed misleading statements that it had not commenced use of the mark in its requests to the Registrar for extensions of time to file its declaration of use.

Summary By: Anna Troshchynsky