Date: 20010131
Docket: T-1260-99
BETWEEN:
MERIAL LLC
Applicant
- and -
NOVARTIS ANIMAL HEALTH CANADA INC.
Respondent
REASONS FOR ORDER
HANSEN J.
Introduction
[1] This is an appeal from the May 10, 1999 decision of a member of the Trade-marks Opposition Board ("the Opposition Board") allowing the opposition of Novartis Animal Health Canada Inc. and refusing the registration of the applicant's trade-mark ELIMINEX.
Background
[2] On February 14, 1995, Merrick and Company, Inc. filed an application to register the trade-mark ELIMINEX on the basis of proposed use in Canada in association with "veterinary anti-parasitic preparations". This application, which was advertised for opposition, now stands in the name of the applicant.
[3] Ciba-Geigy Canada Ltd. filed a statement of opposition to the application on January 2, 1996. As a result of merger, the opponent at the time of the hearing is the named respondent in this appeal.
[4] Two grounds of opposition were raised before the Opposition Board, only one of which is relevant for the purposes of this appeal. The relevant ground of opposition advanced by the respondent is that pursuant to paragraph 16(3)(b) of the Trade-marks Act, R.S.C. 1985, c. T-13 ("Act"), the proposed mark is not registerable because it is confusing with the respondent's Canadian Trade-mark Application number 704,405 for the trade-mark ELIMINATOR filed April 30, 1992 proposed for use in association with "insecticidal ear tags".
[5] The applicant filed the affidavits of Peter Carayiannis and Mary Kent before the Opposition Board. No further evidence was filed on the appeal. The respondent filed the affidavit of Victor John Parks before the Opposition Board and a further affidavit of the same deponent on this appeal. There was no cross-examination on any of the affidavits.
[6] The Kent affidavit establishes the existence of three registrations and four applications for trade-marks which include the prefix ELIM-. The four applications and the ELIMIT registration are for pharmaceutical preparations for human use. Of the remaining registrations, ELIMIX was registered on December 12, 1958 and renewed December 12, 1988 for use in association with "veterinary anthelmintics"and ELIMIN-ODOR was registered on April 17, 1992 for use in association with "veterinary products, namely a deodorant".
The Decision
[7] The following is a summary of the Opposition Board's findings in relations to the factors enumerated in subsection 6(5) of the Act:
| Distinctiveness: The ELIMINATOR trade-mark is suggestive of the result of using its product, namely, to eliminate insects from animals and accordingly is inherently weak. The trade-mark ELIMINEX being a coined word is inherently distinctive, however, being derived from the word "eliminate" is somewhat suggestive of the purpose of the applicant's wares, namely to eliminate parasites from animals. |
| Use in Canada: This is not a material circumstance as neither mark had been used in Canada at the material date. |
| Nature of the wares: The wares of the parties are similar both being medical preparations for veterinary use for similar purposes. |
| Nature of the trade: Having regard to the similarities of the wares, the trades of the parties would or could overlap. |
Degree of resemblance of the trade-marks:
| The marks bear a fair degree of visual and phonetic resemblance due to the common prefix ELIMIN-. The degree of resemblance with respect to the ideas suggested is greater since both marks suggest the concept of elimination. |
[8] As well, the Opposition Board considered the state of the register evidence tendered by the applicant. The four applications and one registration for pharmaceutical preparations for human use were found to be irrelevant. The registration for ELIMIN-ODOR was considered irrelevant being a home deodorant and therefore not a similar ware, and the ELIMIX registration for "veterinary anthelmintics" being arguably relevant.
[9] The Opposition Board also found that the applicant's state of the register evidence did not assist the applicant since the existence of a single relevant registration did not permit a conclusion that the mark in question was in active use at the material date nor that there had been common adoption of such marks in the market place at the material date.
[10] Having regard to the fact that it is a matter of first impressions and imperfect recollection, the resemblance between the wares, trades and marks of the parties, the Opposition Board concluded that the applicant's trade-mark is confusing with the respondent's previously applied for mark.
Issues
[11] The applicant raised three issues on this appeal:
| (i) The Opposition Board relied on irrelevant evidence in finding that the nature of the parties' wares are similar both being "medical "preparations", and as a consequence, gave no weight to the previously registered mark ELIMIN-ODOR. |
| (ii) The Opposition Board erred in giving undue weight to the common prefix ELIMIN-, which prefix is common to third party marks in the same area, and which is an inherently weak prefix suggesting the concept of elimination. |
| (iii) The respondent, having applied for registration of its mark over the earlier registration for ELIMIX, must have been satisfied that there was no likelihood of confusion with the earlier registration and is now precluded from arguing a likelihood of confusion with the applicant's mark. |
Standard of Review
[12] In John Labatt Ltd. v. Molson Breweries, [2000] 3 F.C. 145 (F.C.A.) Rothstein J.A. articulated the standard of review as follows:
| ... Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether a fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision. |
[13] Although the respondent filed affidavit evidence on this appeal regarding the sales and marketing of the product ELIMINATOR, it does not disclose significant new material evidence for consideration by this Court.
Analysis
[14] The first issue raised by the applicant relates to the Opposition Board's consideration of the nature of the wares pursuant to paragraph 6(5)(c) of the Act. In its decision the Opposition Board stated:
| ... The wares of the parties are similar, both being medical preparations for veterinary use. Mr. Parks, who formerly worked for Ciba-Geigy Canada Ltd., states in his affidavit that the opponent's insecticidal ear tags comprise two anti-parasitic preparations which suggests that the opponent's wares are very similar to the applicant's. In its written argument, the applicant contents that its wares can be administered orally or topically but there is no evidence to support that contention. However, even if that were the case, the wares at issue would still be similar since they are designed for similar purposes... |
[15] The applicant submits the Opposition Board, in its examination of the nature of the wares of the parties, relied on a statement in the Parks affidavit that the respondent's "insecticidal ear tags comprise two anti-parasitic preparations" to find that the wares of the parties are similar. As the respondent's wares were not in existence at the material date, the Opposition Board's taking into account irrelevant evidence permitted the respondent to retroactively change its statement of wares to be identical to that of the applicant and to the finding that the trades of the parties would or could overlap. The applicant argues this also led to the Opposition Board's mischaracterization of the wares of the parties as "medical preparations" for veterinary use. This in turn resulted in the finding that the ELIMIN-ODOR registration was irrelevant because although it is a veterinary product the product is not a "medical preparation" but rather a home deodorant.
[16] The applicant proposes to use ELIMINEX with its "veterinary anti-parasitic preparations@. According to the Oxford Dictionary of Current English ("Oxford"), Aanti@ used as a prefix, as it is in this context, means "opposite; preventing@. Oxford describes parasitic as a derivative of the word parasite, which it defines as Aan animal or plant living in or on another and drawing nutriment directly from it@. Given that the mark ELIMINEX is intended to be used for a veterinary product, the logical conclusion then is that the product is intended to prevent an animal or plant from living on or drawing nutriment from an animal.
[17] ELIMINATOR was proposed to be used for the respondent's "insecticidal ear tag@. Insecticidal is derived from the word insecticide which Oxford defines as "a substance for killing insects@. Insects which live in or on or draw nutriment from an animal are by definition parasites. Another way, then, of describing the respondent's wares is that it kills parasites.
[18] Disregarding the statement in the Parks affidavit, based on the statements of wares of the parties, it can reasonably be assumed that both marks are to be used in association with wares having anti-parasitic properties. And indeed, this is precisely the Opposition Board's finding; "the wares at issue would still be similar since they are designed for similar purposes.
[19] The Opposition Board, however, also characterized the parties' wares as Amedical preparations@. This is not necessarily a reasonable or correct conclusion. Parasites may be internal or external to the host. While internal parasites may require a Amedical preparation@ to eliminate or prevent them, external parasites may be addressed in a variety of ways such as by the use of repellants or insecticides, which are produced in a variety of formats. In the absence of evidence to the contrary, these would not ordinarily be considered Amedical preparations@. In the present case, there is no evidence to support the Opposition Board's finding that the wares of the parties are Amedical preparations@.
[20] The Opposition Board concluded that the ELIMIN-ODOR registration was irrelevant "... because, although it is for a veterinary product, the product is not a medical preparation but rather a home deodorant. ... as noted, the product is not similar to the wares at issue@. While I agree with the applicant's submission that the wares at issue are not "medical preparations", I am not persuaded that this mischaracterization is material. The Opposition Board found the wares of the parties to be similar, because they are designed for similar purposes. As noted earlier, I cannot take issue with this finding. Nor, however, can I take issue with the Opposition Board's finding that the ELIMIN-ODOR product is not similar to the wares of the parties. Although all three wares are for veterinary purposes, a deodorant does not come within the category of wares designed to eliminate parasites from animals.
[21] In the end, it was reasonably open to the Opposition Board to conclude that a deodorant product although for veterinary use was not a "medical preparation" in the broad sense of that term. In my view, the Opposition Board did not err in concluding that the ELIMIN-ODOR registration was irrelevant.
[22] The applicant's strongest argument rests on its assertion that the Opposition Board in its analysis of the resemblance of the parties' respective marks failed to consider the entireties of the marks. As noted earlier, the Opposition Board found that "... the marks at issue bear a fair degree of visual and phonetic resemblance due the common use of the prefix ELIMIN-. The degree of resemblance with respect to the ideas suggested is greater since both marks suggest the concept of elimination".
[23] The principle stated in British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48 at 60 (Sec. II), (Ex. Ct.), aff'd 5 C.P.R. 71 (Sec. II), (S.C.C.) is well established in the jurisprudence that when assessing the degree of resemblance between two marks they are to be examined as totalities and not dissected. As stated in that case, "... It is the combination of the elements that constitutes the trade-mark and gives distinctiveness to it, and it is the effect of the trade mark as a whole, rather than of any particular element in it, that must be considered".
[24] As a general principle, it has also been held that the first syllable of the trade-mark is far more important for the purposes of identifying the trade-mark (Fonorola, Inc. v. Mortorola, Inc. et al (1998), 78 C.P.R. (3d) 509 at 517).
[25] In the present case, the use of the prefix ELIMIN- in both marks suggests the notion of elimination, however, there is no evidence at the material date of recognition or association of this prefix with the respondent's wares. Although there are not a large number of prior applications or registrations with similar prefixes, as is often the case, I note the earlier registration of ELIMIX which also shares the prefix ELIM- with the marks of the parties and is for use in association with wares very similar to those of the parties.
[26] In my view, the strength of the distinguishing aspect of the suffix -EX, as opposed to the suffix -ATOR, when used in conjunction with the prefix ELIMIN- is significant. In the case of the applicant's mark, the addition of the suffix -EX creates a coined word while the suffix -ATOR in the respondent's mark creates a word found in the common vocabulary. The impact of the suffix -EX as opposed to -ATOR when considering the totality of the two marks is, in my view, significant. The impact of the suffix is of greater importance when, as in this instance, the common prefix is weak and non-distinctive. This also results in the marks being phonetically distinguishable.
[27] In the present case, the Opposition Board's conclusion that the two marks are confusing based on the common prefix ELIMIN- and its connotation of elimination fails to take into account the totalities of the two marks.
[28] In my opinion, at the material date, the applicant's trade-mark would not cause a purchaser to infer that the applicant's wares emanate from the same source as those of the respondent.
[29] Having so concluded it is not necessary to consider the third argument raised by the applicant.
[30] For these reasons, the appeal is allowed with costs to the applicant.
"Dolores M. Hansen"
J.F.C.C.
Ottawa, Ontario
January 31, 2001