Trademark Opposition Victory
Should You Cry Over Spilled Milk?
INTRODUCTION
Pnc IP Group is very proud to have represented Mylko Inc. against The Dairy Farmers of Canada, regarding an application to register the trademark MYLKO.
https://dairyfarmersofcanada.ca/
This specific trademark was applied for use in association with dairy-substitute liquids and beverages.
Examples of these types of substitute beverages include non-dairy oat-, coconut-, almond-, and nut-based beverages and liquids for preparing those beverages.
What lies at the heart of this dispute was several issues – some relevant to trademarks, some not so much:
1) what is milk and / or a dairy product?
2) could the Dairy Farmers of Canada use the Trademarks Act to force compliance with the wishes of a voluntary but powerful collective?
3) even if the trademark MYLKO sounds like the “milk”, did that provide any basis for The Dairy Farmers of Canada to object to this trademark application?
This dispute took the form of a trademark opposition.
WHAT IS A COLLECTIVE?
Before getting into trademark opposition, it is useful to know what a collective is.
For context, the Dairy Farmers of Canada is, what can be roughly described as, a collective representing various dairy farmers across Canada.
You may think of something similar when you think of SUNKIST oranges in the United States (you cannot import any orange into the United States of America which does not bear a SUNKIST label).
By participating in that collective, The Dairy Farmers of Canada (TDFC) collective spends money on advertisement, licences trademark usage, negotiates market rates, and lobbies milk-based interests.
Anyone who has ever run for Prime Minister in Canada knows how powerful the dairy industry in Canada is, especially when it comes to trade issues with our best trading partner the United States of America.
So why would such a powerful collective become involved in a trademark case involving non-dairy substitutes?
JURISDICTION
One issue was whether TDFC’s true source of frustration had any jurisdiction under the Trademarks Act.
Would trademark opposition afford TDFC the remedies they sought?
A primary interest of the TDFC is to control the word “milk” in the marketplace, in terms of many aspects.
For example, the TDFC works to ensure that products claiming to have or contain milk do so, general price points for retail, etc.
As part of their scope, TDFC felt they had concern with a trademark application for MYLKO because they felt it contained the sound “milk” and so was problematic.
A problem was that TDFC had no means of engaging Mylko Inc. because Mylko Inc. did not fall within the TDFC purview.
Since subscription to the TDFC is voluntary, there was nothing compelling Mylko Inc. to cede to any demands by TDFC.
In other words, TDFC had no way of complaining about Mylko directly short of attempting an opposition under the Trademarks Act.
Mylko Inc. was not dealing in milk or dairy products, and quite the opposite was dealing in non-milk / non-dairy products.
Moreover, participation in any collective (such as the TDFC) is voluntary unless one is compelled by Government.
Mylko Inc. was not a subscribing member to that collective, and grocers tend to be aware of the distinction between dairy and non-dairy products.
Even then, a collective can govern only those interests that fall within their catchment, whether membership is voluntary or otherwise.
In the case of The Dairy Farmers of Canada, non-dairy substitute liquids did not qualify for catchment under the headings of milk and dairy.
But of course, a conclusion extending that far is not even within the purview of the Trademarks Opposition Board.
Although TDFC was unhappy with Mylko Inc., a trademark opposition proceeding was not an appropriate venue.
TRADEMARK OPPOSITION
This case has roots extending to 2018, when Mylko Inc. first applied to register the mark MYLKO.
Mylko Inc. had applied to register this mark in association with non-dairy-substitute beverages, as well as liquids for preparing those non-dairy-substitute beverages.
Theses substitutes included oat-, coconut-, almond-, and nut-based beverages and liquids.
Almost anyone can agree that the made-up word MYLKO has the sound “milk” in it as part of a linguistic root.
However, this word is also “coined” or fictionalized by adding the “o” sound is added thereafter.
In other words, MYLKO is a made-up or coined word – no real meaning although there may be some suggestiveness when taken in context.
The application details can be viewed here:
https://ised-isde.canada.ca/cipo/trademark-search/1916562
Eventually this trademark application was examined by the Trademarks Office.
It is interesting that during prosecution a trademark was found from under the old Newfoundland marks register.
The story behind the Newfoundland register is an interesting anomaly, not just in Canada but across the world.
During prosecution Mylko Inc. was required to disclaim exclusive access to the provincial Newfoundland-based market – a common occurrence in Canada.
This application acknowledges that registration is subject to the provisions of Section 67 of the Trademarks Act, in view of Newfoundland Registration UCA34539 MIL-KO.
https://laws-lois.justice.gc.ca/eng/acts/t-13/page-11.html#h-451416
One might consider this a set-back for Mylko Inc. but in reality this occurrence was to the benefit of Mylko Inc. especially with respect to The Dairy Farmers Of Canada.
On September 15, 2021, the MYLKO mark was advertised in the Canadian Trademarks Journal.
The Trademarks Journal is an official Government publication – a gazette.
The publication of the trademark for trademark opposition by third parties is the Government’s giving of public notice of all applied-for trademark registrations.
A provision of the Trademarks Act provides that third parties must be given public notice of applied-for trademarks and an opportunity to oppose any such registration.
Trademark opposition (to registration) must be based on a clear foundation.
The primary basis of trademark opposition must be that the Opponent somehow has superior rights in the subject trademark as compared to the applicant.
As is sometimes the case, this trademark application became the subject of such an trademark opposition on March 15, 2022.
COULD THINGS GO WRONG?
Any applicant applying for trademarks naturally feels stress when their application is opposed.
Trademark oppositions almost immediately trigger applicants to inform themselves as to possible costs, consequences, and obligations of dealing with an Opposition.
Usually costs are driven by how far an opponent and applicant push each other down the trademark opposition chain.
Trademark opposition can culminate in an oral hearing followed by a decision.
In more aggressive cases trademark oppositions can be appealed through the court system, and theoretically to the Supreme Court of Canada.
Of course, the latter is exceptionally rare, especially these days.
Costs are generally driven by “invisible” or intangible factors.
Invisible or intangible factors include who the parties to the trademark opposition are, and how much each party is financially vested in the subject trademark.
Aside from the costs, applicants are usually relieved to learn that a trademark opposition is not litigation – there is no cost penalty system or forced participation.
Trademark opposition is administrative processes to determine only who at the relevant time can establish superior rights in a subject trademark.
Either participant – the opponent or the applicant, is always free to withdraw from participating in the trademark opposition proceeding at any time.
Where the applicant withdraws from the trademark opposition, the trademark application dies a natural death – the application becomes abandoned (eventually).
Where the opponent withdraws from the trademark opposition, the trademark application automatically becomes eligible for registration.
The latter can be registered only after a registration fee has been paid.
THE FRENCH TRAP
An interesting note in this case was that The Dairy Farmers Of Canada were represented by a Quebec-based law firm.
For any federal proceeding, every person in Canada is entitled to have their case plead and heard in either English or French.
As is a common tactical action, Quebec law firms by default tend to plead cases in French to drive up the cost to any English adversary.
This is done because it is known the English adversary will likely expend translation cost, whereas the Quebec firm might not expend as much translation cost if any.
That stated, initial stages are usually manageable regardless of the language plead.
Initial stages are manageable because trademark oppositions must state or rely on specific parts of the Trademarks Act.
https://laws-lois.justice.gc.ca/eng/acts/t-13/
Therefore, if you can’t see relevant Trademarks Act sections in the pleadings (regardless of the language), you know one participant has a difficult problem.
HOW DID THINGS TURN OUT?
How this matter concluded is in part based on understanding why The Dairy Farmers Of Canada brought this opposition to begin with.
Their trademark opposition statement can be accessed through the Trademark Document Retrieval Service.
https://www.ic.gc.ca/app/scr/opic-cipo/mc-tm/rd-dr/?fn=1916562
The trademark opposition statement does make it clear that although the collective pleads facts alleging control over the milk and dairy market.
However, with scrutiny what is discovered is the collective does not have a *superior claim* to the subject trademark as compared to the applicant.
The Opponent was missing a basis in the Trademarks Act to claim superior rights to the subject trademark.
Especially given the words milk and dairy are descriptive by their nature, it was difficult (virtually impossible) for TDFC to rely on a specific trademark or trademarks.
TDFC needed to rely on specific trademarks that were confusingly similar to the applicant’s trademark.
Although TDFC does own some trademarks, they could not establish a confusing similarity basis under the Trademarks Act.
Wisdom prevailed when the collective realized this effort would not likely yield the fruit they had hoped for.
As such, the Opposition was withdrawn in October 2023.
LESSONS LEARNED
This case presents a great learning opportunity for clients.
Just because your trademark application is opposed does not mean that you are doomed.
Even where a large and powerful interest opposes your trademark application, often it is worthwhile to stand your ground and be patient.
If the law is on your side, it is difficult to forego principle – stand your ground when you factually know you can establish your case.
Even if your application is opposed, you will not necessarily face astronomical or out-of-control costs.
Especially with Pnc IP Group, we focus on educating clients to become trademark savvy in a manner that helps to control and cut their costs.
In this case, we were grateful our client maintained their ground.
Mylko Inc. knew both principles and law were on their side, and they executed fantastic patience during this proceeding.
This statement is not an endorsement but factual observation that Mylko Inc. experienced great success not just with their trademark application but market sales too.
A quick visit to their web site makes it clear by noting how rapidly many of their items sell-out.
Mylko Inc. is carried by major supermarkets across Canada and makes its way to thousands of consumers every year.
Readers of this article should be aware that over time the above links will naturally expire and become non-functional.
Printouts and PDF records are recommended for anyone looking to historically preserve information presented in the above links.
None of the information in any of our articles constitutes legal advice.
None of the information in our articles constitute advice as registered patent and trademark agents.
Pnc IP Group bears no responsibility for the accuracy of third party links.
All legislation, regulations, practice notices and practice manuals quoted or referenced in any article are quoted or referenced as they existed.
Pnc IP Group bears no responsibility for updates and changes to legislation, regulations, practice notices, and practice manuals.
All readers accept these articles as being written accurately for the time they were published.
All readers accept the accuracy and correctness of any article varies by time, statutory and regulatory amendments, case law, and practice updates.
All readers are forewarned to obtain independent legal advice.
All readers are forewarned to obtain independent registered patent and trademark agent advice.
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