Just Desserts? Opposition Board Draws a Line of Descriptiveness between Four Dessert-Related Trademark Applications
Poppy Industries Canada Inc. (the “Applicant”) filed applications for the trademarks “CAKE SLIMS”, “CAKE THINS”, “DESSERT THINS” and “DESSERT CRISPS”, each in association with the goods listed below:
Class 29: (1) Vegetable-based snack foods.
Class 30: (2) Cakes, crackers, biscotti, cookies, snack crackers, snack cookies, wheat-based snack foods, rice based snack foods.
Wonder Brands Inc. (the “Opponent”) opposed registration of each of these trademarks, and since the parties and grounds of opposition were identical, all four opposition proceedings were heard together. However, since the specific evidence was different in each case, the Opposition Board
issued four separate decisions as cited below:
· Wonder Brands Inc. and Poppy Industries Canada Inc., 2023 TMOB 156 [CAKE SLIMS]
· Wonder Brands Inc. and Poppy Industries Canada Inc., 2023 TMOB 157 [CAKE THINS]
· Wonder Brands Inc. and Poppy Industries Canada Inc., 2023 TMOB 158 [DESSERT THINS]
· Wonder Brands Inc. and Poppy Industries Canada Inc., 2023 TMOB 159 [DESSERT CRISPS]
Decisions and Definitions
The Opposition Board rejected three out of the Opponent’s four oppositions, but refused registration of the Applicant’s DESSERT CRISPS trademark on the basis of it being clearly descriptive of the applied for goods, listed above.
Although the specific evidence was different, in each case the Opponent submitted dictionary definitions to support its argument that the Applicant’s trademarks clearly describe a feature and an intrinsic characteristic of the Applicant’s dessert or dessert-like products, contrary to section 12(1)(b) of the Trademarks Act. For instance, those dictionary definitions included a definition for “crisp” as “a dessert of fruit […] baked with a crunchy mixture […]”.
The Applicant did not submit any evidence of its own, but in each case argued that the trademark was capable of conveying multiple different meanings given its unusual grammatical construction, and thus cannot be considered clearly descriptive. In the CAKE SLIMS decision, the Opposition Board favoured the Applicant’s position with respect to the word “slims”, which was found to suggest a product that “slims you down” but also a “slice” or “piece” of cake. Similarly, in both the CAKE THINS and DESSERT THINS decisions, the Opposition Board found that the word “thins” suggests a product that “thins you down” but also a “slice” or “piece” of cake or dessert.
In contrast, in the DESSERT CRISPS decision, the Opposition Board found that the word “crisp” clearly describes a particular type of dessert, and so “Dessert Crisps” is clearly descriptive of the Applicant’s food products.
Marketplace Evidence from Outside of Canada
In each case, the Opponent also submitted printouts from various third-party websites describing dessert recipes and third-party food products that used the terms “cake slims”, “slims”, “cake thins”, “thins”, “dessert thins”, “dessert crisp(s)” or “crisp(s)” to support the argument that each of the Applicant’s trademarks consist of terms common to the trade that no single trader should be allowed to monopolize.
The Applicant questioned the availability in Canada of the third-party food products referenced by the Opponent. However, the Opposition Board stated the following:
“[…] the fact that [the Opponent’s evidence] includes references from outside of Canada does not, in and of itself, render them irrelevant under section 12(1)(b) of the [Trademarks] Act. With this ground of opposition, the issue is not whether the term has been used in a clearly descriptive manner in Canada, but whether the term is clearly descriptive in the English or French language […]”
Despite this position, the Opposition Board found that the Opponent’s evidence of third-party use of “CAKE SLIMS”, “CAKE THINS”, and “DESSERT THINS” in association with food products merely disclosed attempts by third parties to use each of those expressions as trademarks as opposed to as descriptive terms. To illustrate, the Opposition Board referenced images from the Opponent’s evidence of one or more food product packages where the terms “CAKE SLIMS”, “CAKE THINS” and “DESSERT THINS” were presented in a larger and different font than the other words on the packages.
