LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 210
Date of Decision: 2012-11-13
IN THE MATTER OF AN OPPOSITION by Beiersdorf AG to application No. 1,324,288 for the trade-mark BIOQ10 in the name of Mitsubishi Gas Chemical Company, Inc.
File Record
[1] On November 15, 2006, Mitsubishi Gas Chemical Company, Inc. (“MCG”) filed an application to register the trade-mark BIOQ10, based on proposed use in Canada, for numerous and diverse wares. The applicant subsequently requested, and was granted, leave to amend the wares: see the Board ruling dated July 16, 2009. A sampling of the wares, as amended, is shown below:
chemicals for industrial use, namely, aqueous ammonia, sodium hydrosulfite, sodium percarbonate, persulfates . . .
chemicals for use in the manufacture of chemical products, namely, dyestuffs, fragrances, flavorings, pharmaceuticals, inorganic acids . . .
make-up powder; toilet water; cosmetic creams, namely, anti-aging cream, body cream, depilatory cream, eye cream . . . eyebrow pencils; hair bleaches; pet shampoos; washing powder for the hands, face and body . . .
dietetic foods preparations made of Coenzyme Q10 adapted for medical purposes namely, meal replacement drink mixes, meal replacement bars, protein powders . . .
energy bars and protein shakes protein for human consumption made of Coenzyme Q10, namely, protein bars and snacks, meal replacement bars; Japanese traditional confectionery . . .
pharmaceutical agents for the treatment of carpal tunnel syndrome . . .
antiallergic agents; cardiovascular agents, namely, cardiotonics, antihypertensives and vasoconstrictors . . .
non-alcoholic tomato juice beverages; non-alcoholic pine juice beverages; non-alcoholic fruit juice beverages; whey beverages; vegetable juices.
The complete specification of the wares is attached as Schedule A to these reasons for decision. For ease of reference, I have divided the wares listed in Schedule A into two groups where, generally speaking, Group 1 is comprised of chemical/industrial products while Group 2 is comprised of consumer products or other “finished” products.
[2] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated September 10, 2008 and was opposed by Beiersdorf AG on February 10, 2009. The Registrar forwarded a copy of the statement of opposition to the applicant on March 5, 2009, as required by s.38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition. The opponent subsequently requested, and was granted, leave to file an amended statement of opposition: see the Board ruling dated October 13, 2010.
[3] The opponent’s evidence consists of the affidavit of Sarah D. Carnegie. The applicant’s evidence consists of the affidavits of Yuki Manabe and Shannon Young; a certified copy of the file wrapper for Canadian trade-mark registration for Q10 & Design, covering cosmetic products, in the name of the opponent; a certified copy of Canadian trade-mark registration for BIO-SOLUTION in the name of Pronatex Inc and a certified copy of an extract from the file wrapper; and a certified copy of an extract from the file wrapper of the mark BIOLAB applied for in the name of Sogelab Inc. Both parties filed a written argument and both parties were represented at an oral hearing held on October 10, 2012.
Statement of Opposition
[4] 1. The first ground of opposition, pursuant to s.30(a) of the Trade-marks Act, alleges that the application does not contain a “statement in ordinary commercial terms of the specific wares in association with which the alleged Trade-mark is proposed to be used.”
2. The second ground of opposition, pursuant to s.30(e) of the Act, alleges that the applicant does not intend to use the applied-for mark in association with the wares specified in the application. In this regard, the opponent pleads that (i) the applicant’s wares consist of a chemical ingredient found in the wares, and (ii) any use of the applied-for mark is in respect of an ingredient of the wares rather than the wares specified in the application.
3. The third ground of opposition, pursuant to s.30(i), alleges that the applicant could not have been satisfied that it was entitled to use the applied-for mark in association with the wares specified in the application. In this regard, the opponent pleads that the applicant “is a manufacturer of a chemical ingredient used in various products” and had no intention to use the applied-for mark in association with “the numerous wares set out in its Application.”
4. The fourth ground, pursuant to s.12(1)(b), alleges that the applied-for mark BIOQ10 is not registrable because it clearly describes the character or the quality of the wares “including but not limited to ‘ . . . dietetic foods and beverages made of Coenzyme Q10 adapted for medical purposes . . .;’ and ‘ . . . protein for human consumption made of Coenzyme Q10 . . .’ ”
5. The fifth ground, pursuant to s.12(1)(c), alleges that the applied-for mark BIOQ10 is not registrable because it is the name of the wares identified in the subject application “including but not limited to ‘ . . . dietetic foods and beverages made of Coenzyme Q10 adapted for medical purposes . . .;’ and ‘ . . . protein for human consumption made of Coenzyme Q10 . . .’ ”
6. The sixth ground, pursuant to s.2, alleges that the applied-for mark is not adapted to distinguish the applicant’s wares from those of others.
Opponent’s Evidence
Sarah Carnegie
[5] Ms. Carnegie identifies herself as a project manager and statistical consultant working in the area of business intelligence, statistical measurement and forensic market research. Ms. Carnegie was retained by the firm representing the opponent to conduct investigations relating to the terms Mitsubishi Gas; BIOQ10; Q10; and Bio-coenzyme Q10. She conducted Internet searches, between September 10 and September 16, 2010, on the GOOGLE search engine (limited to “pages from Canada”) to locate references to the term “Mitsubishi Gas.” The results of her research, attached as exhibits to her affidavit, indicate that the applicant is a manufacturer of various specialty chemicals including the chemical ubidecarenone, otherwise referred to as coenzyme Q10 or CoQ10 or Q10. The applicant sells the chemical CoQ10 under the brand name BioQ10 “with a target purity of over 99%.” The applicant’s BioQ10 product is intended for use in medicine for cardiac disease, as well as in supplements and cosmetics. The applicant also sells an emulsion of CoQ10 under the brand name Bio Q10 SA. The emulsion form is intended to “enhance the intestinal absorption of CoQ10.”
[6] The exhibit material also indicates that the applicant manufactures neopentyl glycol, “used in every corner of our daily lives, from coating compounds for automobile/home electronic products to clothing buttons.” The web pages located by Ms. Carnegie appear to be operated by the applicant and copyright attribution is given to the applicant.
Applicant’s Evidence
Yaki Manabe
[7] Mr. Manabe identifies himself as the Sales Manager with Mitsubishi Gas Chemical America (“MCGA”) for sales and marketing in North America, including Canada. Formerly, Mr. Manabe had worked for the applicant MCG in Tokyo, Japan. MCGA is a wholly owned subsidiary of MCG which is a major chemical company in Japan. MCG produces a variety of products which “contribute to Chemicals, Paint & Coating, Food, Pharmaceuticals, Health, Lifestyle, Agrochemicals, Electronics & IT Materials, and Metals Industries.” MCGA is responsible for the distribution of BIOQ10 products in Canada and the United States. Mitsubishi Canada Ltd (not related to MGC) is MGCA’s distributor for Canada.
[8] MGC has applied to register the mark BIOQ10 in the United States, under two applications, both of which have been allowed unopposed. MGC also owns U.S. trade-mark registration No 2084651 for the mark BIO-Q10 which was assigned from Sabinsa Corporation in November 2007.
Shannon Young
[9] Ms. Young identifies herself as a trade-mark agent with the firm representing the applicant. Her affidavit serves to introduce into evidence the exhibit material discussed below.
Exhibit A
Particulars of 42 trade-marks registrations for BIOQ10 which the applicant holds in various countries including, for example, Japan, United States, Korea, Australia, New Zealand, Mexico, Panama, and Brazil.
Exhibit B
A copy of a trade-mark opposition case in New Zealand, decided in May 2010, involving the same mark BIOQ10 and the same parties as herein. A portion of the evidence MCG filed in the case is summarized at page 19 of the decision:
12. The applicant's evidence in support of both of its trade mark
application under regulation 84 of the Regulations consists of the statutory
declarations of:
12.1 Kazuo Sakai dated 18 November 2009 (Sakai declaration).
Kazuo Sakai is the President of the applicant, which provides
chemical engineering products and services in a wide range of
fields. The Sakai declaration says that, since 1980, the applicant
has manufactured coenzyme Q10, which is marketed by the
applicant under the trade mark BIOQ10, and is used as an
ingredient by the applicant's customers in the manufacture of
health supplements and skin care products. The Sakai declaration
says, at paragraph 4:
The trade mark BIOQ10 is an invented word which alludes
to the product coenzyme Q10 and its method of manufacture
which incorporates biotechnology.
(emphasis added)
Exhibit C
A copy of a trade-mark opposition decision in Costa Rica, and a translation thereof, dated December 1, 2010, concerning the mark BIOQ10 and the same parties as herein. The opponent Beiersdorf AG alleged that the mark BIOQ10 “consists of two commonly used terms in the field of biology and chemistry, that BIO is a generic component and Q10 is the name of a coenzyme type . . .”
I would mention that I have not had regard to any conclusions of law reached in the two above mentioned foreign trade-mark cases as no evidence has been presented concerning how closely the laws of New Zealand and Costa Rica coincide with Canadian trade-mark law. In fact, a reading of the cases indicates significant divergences from Canadian law. Thus, the two above noted cases do not assist the applicant. I have noted, however, some points of similarity between the evidence discussed in the two foreign cases and the evidence submitted in the instant case.
Exhibits D and E
Exhibit D is a collection of trade-mark registrations and pending applications for marks, comprised of the first portion BIO, used in association with various of the wares specified in the subject application. The evidence includes in excess of 200 such marks. Exhibit E is a summary, in table form, of the information in Exhibit D.
Consideration of the Grounds of Opposition
First Ground - s.30(a)
[10] The first ground, alleging that the wares are not stated in ordinary commercial terms, may be rejected because the pleading is too broad. In this regard, if there is more than one type of ware, then the opponent should specify if the pleading refers to all of the wares or only some of them. In any event, the opponent has not met its evidential burden to put the allegation into issue in respect of any of the wares: see John Labatt Limited v. The Molson Companies Limited, 30 CPR (3d) 293 at 298 (FCTD).
Second Ground - s.30(e)
[11] The material date to consider a ground of opposition pursuant to s.30(e) is the filing date of the application, in this case November 15, 2006: see Canada National Railway Co. v. Schwauss (1991), 35 CPR (3d) 90 (TMOB). There is an initial evidential burden on the opponent to raise sufficient doubts respecting the applicant’s compliance with s.30: see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 CPR (3d) 325 (TMOB). The evidential burden respecting the issue of non-compliance with s.30(e) is relatively light as the facts at issue may be exclusively in the possession of the applicant: see p. 95 of Schwauss, above and see Green Spot Co. v. J.B. Food Industries (1986), 13 CPR (3d) 206 at pp. 210-211 (TMOB).
[12] I have given some weight to the opponent’s evidence, based on Internet searches, indicating that the applicant is a manufacturer of chemicals which are used in a wide variety of products: in this regard, see the discussion of evidence before tribunals in Anheuser-Busch v. Daum 88 CPR(4th) 300 at paras. 13-16 (TMOB). Although the evidence was collected after the material date, I assume that the nature of the applicant’s business did not change significantly between the material date and the date when the evidence was accumulated. Further, the notion that the applicant’s chemicals are used as ingredients for other products is supported to some extent by the applicant’s own evidence: see para. 9, Exhibit B, above.
[13] In my view, the evidence of record is sufficient to satisfy the relatively light burden on the opponent to put the s.30(e) ground of opposition into issue. The legal onus therefore falls on the applicant to substantiate that it does in fact intend to use the applied-for mark in association with the plethora of products specified in the subject application. However, the applicant has not put forward any evidence to negate in any way the doubts raised by the opponent that the applicant intends to use the applied-for mark in association with a chemical ingredient used to manufacture various products rather than with the products themselves. I therefore find that the opponent succeeds, on the second ground of opposition, in respect of the specified wares which are not basic chemicals. The wares which I consider not to be basic chemicals are those listed in Group 2 of Schedule A attached to these reasons for decision.
Third Ground - s.30(i)
[14] The third ground, alleging that the applicant could not be satisfied that it is entitled to use the applied-for mark, is rejected because the pleadings do not support the allegation: see Sapodilla Co. Ltd. v. Bristol‑Myers Co. (1974), 15 CPR (2d) 152 (TMOB) at 155 and Canada Post Corporation v. Registrar of Trade‑marks (1991), 40 CPR (3d) 221.
Fourth Ground - s.12(1)(b)
[15] As discussed in paragraph 10 above, the fourth ground is pleaded too broadly and is inapplicable except for those wares specifically referred to in the pleading namely, (i) dietetic foods and beverages made of Coenzyme Q10 adapted for medical purposes and (ii) protein for human consumption made of Coenzyme Q10. The material time for assessing the fourth ground of opposition, based on s.12(1)(b) of the Act, shown below, is the filing date of the application:
12. (1) Subject to section 13, a trade-mark is registrable if it is not
(a) . . .
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(emphasis added)
[16] “Character” in s. 12(1)(b) means a feature, trait or characteristic of the product and “clearly” does not mean the description has to be precise but must be “easy to understand, self-evident or plain:” see Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 CPR 29 at 34 (Ex C); Drolet v. Stiftung Gralsbotchaft, (2009) 85 CPR (4th) 1 at 56 (FCTD). The issue under s.12(1)(b) is to be determined from the point of view of an everyday user of the wares or services. The trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see e-Funds Ltd. v. Toronto-Dominion Bank 61 CPR(4th) (2007), 475 at 478 (TMOB). To be objectionable as clearly descriptive, a mark must be so apt for normal description of the article (or services) that a monopoly on the use of it should not be acquired: see Clarkson Gordon v. Registrar of Trade-marks (1985), 5 CPR (3d) 252 at 256 (FCTD).
[17] It appears from the evidence that the term Q10 would be understood, at least by those familiar with chemical nomenclature, as a short form for the terms CoQ10 and coenzyme Q10, all of which terms reference the chemical ubidecarenone. The term BIO connotes life or a living thing and is commonly used as the first portion of trade-marks, as evidenced by the Young affidavit. There is no evidence to indicate that the composite term BIOQ10 has any definite meaning in the chemical industry or otherwise. Thus, although the chemical ubidecarenone may be a constituent of dietetic foods and beverages and protein for human consumption, I would not conclude that BIOQ10 plainly describes, from the point of view of an everyday user of the wares, the character or quality of those products. Further, I do not find that the term BIOQ10 is apt for a normal description of any of the wares specified in the subject application. The fourth ground of opposition is therefore rejected.
Fifth Ground - s.12(1)(c)
[18] As with the fourth ground, the fifth ground is pleaded too broadly and is inapplicable except for those wares specifically referred to in the pleading namely, (i) dietetic foods and beverages made of Coenzyme Q10 adapted for medical purposes and (ii) protein for human consumption made of Coenzyme Q10. The fifth ground may be rejected as the opponent has not met its evidential burden to put the allegation into issue: see John Labatt Limited, above.
Sixth Ground - s.2
[19] The fifth ground, alleging that the mark BIOQ10 is not adapted to distinguish the applicant’s wares from the wares of others, may be rejected because the opponent has not met its evidential burden to put the allegation into issue: see John Labatt Limited, above.
Disposition
[20] As the opponent has been partially successful on the second ground of opposition, (a) the application is refused in respect of the wares listed in Group 2 of
Schedule A,
(b) the opposition is rejected in respect of the wares listed in Group1 of Schedule A.
[21] This decision has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act. Authority for a divided decision is found in Produits Ménagers Coronet Inc. v. Coronet‑Werke Heinrich Schlerf GmbH (1986), 10 CPR (3d) 482 (FCTD).
___________________
Myer Herzig
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
Schedule A
Group 1
chemicals for industrial use, namely, aqueous ammonia, sodium hydrosulfite, sodium percarbonate, persulfates, and water treatment agents, excluding all chemicals and products in relation to swimming pools and spas;
sulphates excluding all chemicals and products in relation to swimming pools and spas; ammonium persulfate excluding all chemicals and products in relation to swimming pools and spas;
nitrates, namely aluminum nitrate, bismuth nitrate, and/or lead nitrate for industrial uses, excluding all chemicals and products in relation to swimming pools and spas;
oxides excluding all chemicals and products in relation to swimming pools and spas;
hydrogen peroxide used as a bleaching agent for fiber and pulp in the wood industry, and for cotton, wool, silk, and other fibers in the textile industry, for food stuffs in the food industry, as an oxidizing agent in the metal fabricating industry and in the mining industry, as an etching agent for printed circuit boards, as a cleaning agent in the manufacture of semiconductor chips, for treating of waste water of all kinds excluding all chemicals and products in relation to swimming pools and spas, and as a raw material in the chemical industry excluding all chemicals and products in relation to swimming pools and spas;
alcohols, namely, ethyl alcohol and methyl alcohol, methanol, methanol and ammonia derivatives, namely formalin, ammonia, amines, methyl methacrylate, and polyols, excluding all chemicals and products in relation to swimming pools and spas;
glycol excluding all chemicals and products in relation to swimming pools and spas;
ethers, namely, dimethyl ether excluding all chemicals and products in relation to swimming pools and spas;
aldehydes and ketone, excluding all chemicals and products in relation to swimming pools and spas;
esters, namely methacrylic acid esters excluding all chemicals and products in relation to swimming pools and spas;
chemicals for use in the manufacture of chemical products, namely, dyestuffs, fragrances, flavorings, pharmaceuticals, inorganic acids, namely hydrochloric acid, sulfuric acid, and/or nitric acid, excluding all chemicals and products in relation to swimming pools and spas;
alkalis, inorganic salts, hydrogen, helium, boron, carbon such as carbon disulphide, carbon fluorochloride, and/or carbon tetrachloride, nitrogen, fluorine, neon, phosphorus, sulphur, chlorine, argon, arsenic, bromine, iodine, sodium, potassium, namely, potassium cyanate, ferricyanide, and/or sulphate fertilizer, and calcium, excluding all chemicals and products in relation to swimming pools and spas;
oxygen for use as a preserver, namely, oxygen absorbers for use to maintain quality for pharmaceutical preparations, health support foodstuffs, and medical related apparatus and implements;
unprocessed plastics;
Group 2
make-up powder; toilet water; cosmetic creams, namely, anti-aging cream, body cream, depilatory cream, eye cream, lip cream and shaving cream; cosmetic rouges; hair care preparations; perfumes; eye shadows; absorbent facial tissue; depilatories; talcum powder [for toilet use]; nail polish; nail polish removers; bath oils; bath salts; beauty masks; baby oils; baby powder; mascaras; eyebrow pencils; hair bleaches; pet shampoos; washing powder for the hands, face and body; skin polishing rice bran [arai-nuka]; hair-washing powder; glass cleaning preparations; liquid and powder scouring preparations [cleanser excluding all chemicals and products in relation to swimming pools and spas]; toilet soap; industrial soap excluding all chemicals and products in relation to swimming pools and spas; shampoos; detergents prepared from petroleum for household use excluding all chemicals and products in relation to swimming pools and spas; laundry soap; dry cleaning preparations, namely, solvents; hand cleaners [hand cleaning preparations]; toilet bowl detergents; scrubbing powder for use on clothing; liquid soap for hand, face and body; medicated soap for the treatment of skin disorders; dentifrices; perfumery, fragrances; sniffing incenses [kyuko]; fumigating incenses [kunko]; burning incenses; joss-sticks; perfuming sachets; pharmaceutical preparations for the treatment of central nervous system infections, brain diseases, central nervous system movement disorders, ocular motility disorders, spinal cord diseases; pharmaceutical agents for the treatment of carpal tunnel syndrome; pharmaceutical agents for the treatment of the eye and ear infections; antiallergic agents; cardiovascular agents, namely, cardiotonics, antihypertensives and vasoconstrictors; agents for the treatment of the respiratory organs, namely, anti-cough drops; pharmaceutical agents for the treatment of the digestive organs; hormones for medical purposes, namely, thyroid and para-thyroid hormone preparations; agents for the uro-genital and anal organs; pharmaceutical agents for epidermis, namely, acne medication, antibiotic ointments and burn relief medication; vitamin supplement; amino acid preparations, namely, threonine preparations; nutritional additives for medical purposes, namely calcium supplements; medicinal tonics and substitutes, namely, liquid medicinal alcoholic cocktails containing brandy; hemotoropic agents, namely, hemostatics; pharmaceutical agents for the treatment of diabetes; cellular function activating agents; tumor supressing agents; pharmaceutical agents for treating physically caused lesions; pharmaceutical agents for treating depression, bipolar disorder, mental illness; antibiotic preparations; chemotherapeutics; biological preparations for medical purposes, namely, antitoxic sera; antiparasitics; agents for dispensing purposes, namely odor improving agents for drugs; diagnostic preparations, namely, x-ray contract agents; radio-isotope markers for therapeutic or diagnostic use; narcotics; moxa; veterinary preparations, namely, germicides and fungicides; mosquito-repellent incenses; germicides and fungicides, excluding all chemicals and products in relation to swimming pools and spas; rodenticides; insecticides; fumigants for insect infestation; herbicides [weedkillers]; insect-repellents; antiseptics excluding all chemicals and products in relation to swimming pools and spas; dental cements; dental prosthetics and fillings; dental wax; materials for artificial teeth; dietetic foods and beverages made of Coenzyme Q10 adapted for medical purposes, namely, meal replacement drink mixes, meal replacement bars, protein powders, dietary pills; dietetic foods preparations made of Coenzyme Q10 adapted for medical purposes namely, meal replacement drink mixes, meal replacement bars, protein powders, dietary pills; edible oils and fats; milk; cream [milk product]; cheese; lactic acid drinks; butter; meat preserved in sake lees; dried meat; croquettes; sausages; canned cooked meat; meat boiled down in soy sauce; bottle cooked meat; ham; bacon; fish or shellfish preserved in sake lees; steamed or toasted cakes of fish paste; smoked fish products; fermented fish guts; squid guts; sea cucumber guts; shrimps; calling crabs; oysters; salted and dried fish products; canned fish products; sea foods boiled down in soy sauce, bottled fish products; fish and shellfish dried in the shade of the sun; tube-shaped toasted cakes of fish paste; boiled and dried fish and shellfish; steamed cakes of smashed fish and yam; fish sausages; processed vegetables and fruits;, energy bars and protein shakes protein for human consumption made of Coenzyme Q10, namely, protein bars and snacks, meal replacement bars; Japanese traditional confectionery; ice candies; ice cream; caramels; candies; cookies; chewing gums; chocolate; doughnuts; biscuits, bread and buns; worcester sauce; soy sauce; vinegar; mayonnaise; sauces for barbecued meat; sugar; cooking salt; spices; oat flakes; oatmeal; spaghetti [uncooked]; bread crumb; Chinese rice noodle; macaroni [uncooked]; flour for food; non-alcoholic refreshing beverages, namely, soft drinks; mineral water; soda pops; sherbets [beverages]; soda water; non-alcoholic fruit juice beverages; non-alcoholic orange juice beverages; non-alcoholic tomato juice beverages; non-alcoholic pine juice beverages; non-alcoholic fruit juice beverages; whey beverages; vegetable juices.