Snowcrest Foods Ltd. (the “Applicant”) filed an application for the trademark “PERFECTLY IMPERFECT” (the “Mark”) in association with fruit, vegetable and yogurt-related goods.
Loblaws Inc. (the “Opponent”) opposed the registration of the Mark primarily on the basis that it is confusing with the Opponent’s trademarks, including a registered trademark for the design:
Decision
In Loblaws Inc. and Snowcrest Foods Ltd., 2023 TMOB 209 (CanLII), the Opposition Board refused the Applicant’s trademark application with respect to the following goods:
- Frozen fruits; fruit purees; fruit fillings; fruit and fruit-based pie fillings; frozen vegetables; vegetable purees; vegetable fillings; vegetable and vegetable-based pie fillings.
- Fresh fruits; fresh vegetables; fresh sliced fruits and fresh sliced vegetables.
- Fruit juices; vegetable juices.
However, the Opposition Board rejected the opposition with respect to the remaining goods:
(1) fruit jams; fruit jellies; fruit preserves; fruit and fruit-based sauces; fruit and fruit-based spreads; vegetable and vegetable-based sauces; vegetable and vegetable-based spreads; yogurt products; yogurt chips; frozen yogurt used for baking, cooking and blending; yogurt-covered fruit.
Reasoning
The Opposition Board determined that the words “Naturally Imperfect” describe that the Opponent’s fresh fruits and vegetables are, by their inherent character, not perfect. In doing so, the Opposition Board found that the Opponent’s registered trademark had a low degree of inherent distinctiveness, entitling it to a limited scope of protection.
In contrast, the Opposition Board found the Applicant’s Mark to possess a higher degree of inherent distinctiveness than the Opponent’s registered trademark since the combination of “perfectly” and “imperfect” creates an oxymoron with unique character.
Despite acknowledging that the first portion of a mark is often most important for the purpose of distinction, the Opposition Board still considered the word “IMPERFECT” to be the more striking and unique portion of the Opponent’s registered trademark, with the word “NATURALLY” simply modifying the word “imperfect”. Nonetheless, given the overall differences in appearance, sound and ideas suggested, the Board found that the degree of resemblance between the marks favoured the Applicant overall.
Although the Opposition Board found that many of the Applicant’s goods were nearly identical to the fresh fruit and vegetables associated with the Opponent’s registered trademark, the Board considered the following goods, while also involving fruit and vegetables and falling into the same general class, to be intrinsically different in nature than the Opponent’s goods and likely to be sold in a different retail section :
- fruit jams; fruit jellies; fruit preserves; fruit and fruit-based sauces; fruit and fruit-based spreads; vegetable and vegetable-based sauces; vegetable and vegetable-based spreads; yogurt-covered fruit.
Notably, given the length of time and extent of use shown by the Opponent in the form of significant sales of fresh fruits and vegetables in association with its registered trademark, the Opposition Board found in favour of the Opponent with respect to some of the Applicant’s fruit and vegetable related goods, despite the limited degree of resemblance between the marks. However, the Opposition Board found in favour of the Applicant with respect to the Applicant’s remaining fruit-derivative, vegetable-derivative and yogurt related goods.
