IN THE MATTER OF AN OPPOSITION
by Reckitt & Colman (Overseas) Limited
to application No. 876,174 for the trade-mark
FEMMEGESIC filed by Femme Biomedica Inc.
(now Ventana Clinical Research Corporation)
On April 27, 1998, the applicant, Femme Biomedia Inc. (now Ventana Clinical Research Corporation), filed an application to register the trade-mark FEMMEGESIC for “pharmaceutical products, namely analgesics” based on proposed use in Canada. The application was advertised for opposition purposes on December 2, 1998.
The opponent, Reckitt & Colman (Overseas) Limited, filed a statement of opposition on April 29, 1999, a copy of which was forwarded to the applicant on June 1, 1999. The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with the trade-mark TEMGESIC registered under No. 237,381 for “pharmaceutical preparations and substances, namely, an analgesic and anti‑inflammatory preparation” and the trade-mark TEMGESIC Design registered under No. 367,266 for “pharmaceutical preparations and substances, namely analgesics.”
The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3)(a) of the Act because, as of the applicant’s filing date, the applied for trade-mark was confusing with the trade-mark TEMGESIC previously used or made known in Canada by the opponent with the registered wares noted above. The third ground is that the applicant’s application does not conform to the requirements of Section 30(i) of the Trade-marks Act because the applicant could not have been satisfied that it was entitled to use its applied for trade-mark in view of the prior adoption, use and registration of the trade-mark TEMGESIC by the opponent. The fourth ground is that the applied for trade-mark is not distinctive because it is confusing with the opponent’s trade-mark.
The applicant filed and served a counter statement. As its evidence, the opponent submitted an affidavit of David George Mulligan. As its evidence, the applicant submitted the affidavits of Mary P. Noonan and Rohit Parekh. Only the opponent filed a written argument and no oral hearing was conducted.
As for the first ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark pursuant to Section 12(1)(d) of the Trade-marks Act is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
As for Section 6(5)(a) of the Act, the applicant’s mark FEMMEGESIC is a coined word comprising the French word “femme” and the suffix “gesic” from the word analgesic. The mark therefore suggests that the applicant’s product is an analgesic for use by women. Thus, although the applicant’s mark is inherently distinctive, it is not an inherently strong mark. Since there is no evidence of use or advertising of the applicant’s mark, I must conclude that it has not become known at all in Canada.
The opponent’s marks TEMGESIC and TEMGESIC Design are also coined words derived, at least in part, from the word “analgesic.” To that extent, they are at least somewhat suggestive of the registered wares. Thus, the two registered marks are inherently distinctive and inherently stronger marks than the applicant’s mark.
In his affidavit, Mr. Mulligan states that he is the Head of the Group Trade Mark Department of Reckitt Benckiser plc which is the parent company of the opponent, Reckitt & Colman (Overseas) Limited (“RCO) and of Reckitt & Colman Products Limited (“RCP”). According to Mr. Mulligan, RCP has been producing and marketing an opiate analgesic in the United Kingdom in association with the trade-mark TEMGESIC since 1978. RCO sells the product overseas and owns the Canadian registrations for the trade-mark.
Since 1976, RCO has sold the TEMGESIC product in many countries including Canada. In 1997, Reckitt & Colman plc (now Reckitt Benckiser plc) entered into an agreement with Essex Chemie AG, the Swiss subsidiary of Schering-Plough Corporation, for the exclusive marketing and distribution of TEMGESIC in various countries including Canada.
According to Mr. Mulligan, TEMGESIC products have been supplied in Canada in response to specific requests from doctors, hospitals and medical research establishments. It does not appear that the opponent or its licensees or distributors have effected regular sales of the TEMGESIC product in Canada. In this regard, Mr. Mulligan did not provide any Canadian sales or advertising figures and his exhibits evidence only a handful of sales in this country. Representative packaging used in Canada appended as Exhibit F to the Mulligan affidavit includes wording identical to, or similar to, the following:
Made in Britain Reckitt & Colman (PL) Products Ltd., Dansom Lane, Hull, HU8 7DS......Export Distributors: Reckitt & Colman (Overseas) Ltd., Hull, UK.
Thus, the Mullligan affidavit fails to evidence any reputation of note for the opponent’s mark TEMGESIC in Canada. Furthermore, in view of the labelling on the representative packaging, it appears that any use of the mark in Canada has been by RCP rather than by the opponent RCO who is the registered owner of the mark in Canada and is described on the packaging as a distributor only. Thus, if anything, the sales of TEMGESIC product in Canada to date have reduced the ambit of protection to be afforded to the opponent’s registered marks.
As for Section 6(5)(b) of the Act, as discussed, the opponent has not evidenced use of its registered marks in Canada by itself. Thus, the length of time the marks have been in use in Canada is not a material circumstance in this case. As for Sections 6(5)(c) and 6(5)(d) of the Act, the products of the parties are very similar and presumably their respective trades would be the same.
As for Section 6(5)(e) of the Act, there is some degree of resemblance between the marks at issue. However, much of that resemblance is due to the common use of the suffix “gesic” which is derived from the non-distinctive word “analgesic” (see Exhibits A-E to the Parekh affidavit).
The applicant has submitted that the significance of any resemblance between the marks is mitigated by the state of the register evidence introduced by means of the Noonan affidavit. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
The Noonan affidavit evidences fourteen registrations for trade-marks for pharmaceutical preparations for human use where the component “gesic” is used as a suffix. Given such evidence, I am prepared to assume that at least some of those registered marks are in active use in Canada. Parts of the Parekh affidavit dealing with the appearance of such marks in the Compendium of Pharmaceuticals and Specialties and the Ontario Drug Benefit Formulary further support such a conclusion. Thus, consumers would be used to seeing such marks in the marketplace and would look to the prefixes of such marks to distinguish them.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the absence of any reputation for the mark TEMGESIC in Canada in the hands of the opponent, the potential non-distinctive use of that mark in Canada by the opponent’s sister company RCP and the use of similar marks by third parties, I find that the applicant’s trade-mark FEMMEGESIC is not confusing with the opponent’s two registered trade-marks. The first ground of opposition is therefore unsuccessful.
As for the second ground of opposition, the opponent has an initial burden to evidence use of its trade-mark prior to the applicant’s filing date in view of Section 16(3) of the Act and to show non-abandonment of that mark as of the date of advertisement of the applicant’s application in view of Section 16(5). As discussed, any use of the mark TEMGESIC in Canada appears to have been by the opponent’s sister company RCP, not by the opponent. Thus, the second ground is also unsuccessful.
The third ground does not raise a proper ground of opposition. The opponent did not even allege that the applicant was aware of the opponent’s trade-mark as of the filing of the present application. Thus, the third ground of opposition is also unsuccessful.
As for the fourth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - April 29, 1999): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).
The fourth ground alleges that the applicant’s trade-mark is not distinctive in view of the opponent’s use of its trade-mark TEMGESIC. As discussed, any use of that mark in Canada appears to have been by the opponent’s sister company RCP rather than by the opponent. Since the opponent failed to rely on allegations of use of the mark TEMGESIC by others, it has failed to satisfy its evidential burden in respect of the fourth ground and it, too, is therefore unsuccessful. Even if the opponent had relied on third party use of the mark TEMGESIC in its statement of opposition, it is unlikely that the handful of Canadian sales by RCP would have had any effect on the distinctiveness of the applicant’s mark.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT GATINEAU, QUEBEC, THIS 25th DAY OF NOVEMBER, 2002.
David J. Martin,
Member,
Trade Marks Opposition Board.