IN THE MATTER OF AN OPPOSITION by
Canadian Medical Association to
application No. 1,060,581
for the trade-mark PRAIRIE DOCTOR BRAND
filed by Eclectic Echinacea Inc.
On May 26, 2000, the applicant, Eclectic Echinacea Inc., filed an application to register the trade-mark PRAIRIE DOCTOR BRAND. The application is based upon use of the trade-mark in Canada in association with the following wares:
(1) Echinacea flower, Echinacea
herb, Echinacea root and products manufactures with Echinacea flower, Echinacea
herb and Echinacea root namely Echinacea tincture, Echinacea fluid extract,
Echinacea skin cream, Echinacea tea and products custom manufactured with
Echinacea flower, Echinacea herb and Echinacea root to the specifications of
others, namely Echinacea tincture, Echinacea fluid extract, Echinacea
skin cream and Echinacea tea.
(2) Echinacea powder and Echinacea powder custom manufactured to the
specifications of others.
(3) St-John's Wort flower and St-John's Wort herb and products manufactured
with St-John's Wort flowers and St-John's Wort herb namely St-John's Wort
tincture, St-John's Wort fluid extract, St-John's Wort oil extract, St-John's
Wort tea and St-John's Wort powder and in association with the general class of
wares comprising the following specific wares St-John's Wort tincture,
St-John's Wort fluid extract, St-John's Wort oil extract, St-John's Wort tea
and St-John's Wort powder manufactured to the specification of others.
(4) Valerian roots and products manufactured with Valerian roots namely;
Valerian tincture, Valerian fluid extract, Valerian tea and Valerian powder and
in association with the general class of wares comprising the following
specific wares namely; Valerian tincture, Valerian fluid extract, Valerian tea
and Valerian powder custom
manufactured to the specifications of others.
(5) Echinacea flowers, Echinacea herb and Echinacea roots and Goldenseal roots
and products manufactured with Echinacea flowers, Echinacea herb and Echinacea
roots and Goldenseal roots namely; Echinacea and Goldenseal tincture, Echinacea
and Goldenseal powder and in association with the general class of wares
comprising the
following specific wares namely; Echinacea and Goldenseal tincture and Echinacea
and Goldenseal powder custom manufactured to the specifications of others.
(6) Hawthorn flowers, Hawthorn leaves, Hawthorn twigs and Hawthorn berries and
products manufactured with Hawthorn flowers, Hawthorn leaves, Hawthorn twigs
and Hawthorn berries namely; Hawthorn tincture and Hawthorn powder and in
association with the general class of wares comprising the following specific
wares namely; Hawthorn tincture and Hawthorn powder custom manufactured to the
specifications of others.
(7) Astragalus roots and products manufactured with Astragalus roots namely;
Astragalus tincture, Astragalus fluid extract and Astragalus powder and in
association with the general class of wares comprising the following specific
wares namely; Astragalus tincture, Astragalus fluid extract and Astragalus
powder custom manufactured to the specifications of others.
(8) Echinacea flowers, Echinacea herb and Echinacea roots and Eupatorium
flowers and Eupatorium herb and products manufactured with Echinacea flowers,
Echinacea herb and Echinacea roots and Eupatorium herb namely; Echinacea and
Eupatorium tincture, Echinacea and Eupatorium fluid extract and Echinacea and
Eupatorium powder and in association with the general class of wares comprising
the following
specific wares namely; Echinacea and Eupatorium tincture, Echinacea and
Eupatorium fluid extract and Echinacea and Eupatorium powder custom
manufactured to the specifications of others.
(9) Echinacea flowers, Echinacea herb, Echinacea roots and Astragalus roots and
products manufactured with Echinacea flowers, Echinacea herb, Echinacea roots
and Astragalus roots namely; Echinacea and Astragalus tincture, Echinacea and
Astragalus fluid extract and Echinacea and Astragalus powder and in association
with the general
class of wares comprising the following specific wares namely; Echinacea and
Astragalus tincture, Echinacea and Astragalus fluid extract and Echinacea and
Astragalus powder custom manufactured to the specifications of others.
(10) Skullcap flower, Skullcap herb and products manufactured with Skullcap
flower and Skullcap herb namely; Skullcap tincture, Skullcap fluid extract,
Skullcap tea and Skullcap powder and in association with the general class of
wares comprising the following specific wares namely; Skullcap tincture,
Skullcap fluid extract, Skullcap tea
and Skullcap powder custom manufactured to the specifications of others.
(11) Lemon Balm herb and Lemon Balm flowers and products manufactured with
Lemon Balm herb and Lemon Balm flowers namely; Lemon Balm tincture, Lemon Balm
fluid extract, Lemon Balm tea and Lemon Balm powder and in association with the
general class of wares comprising the following specific wares namely; Lemon
Balm tincture, Lemon Balm fluid extract, Lemon Balm tea and Lemon Balm powder
custom
manufactured to the specifications of others.
(12) Goldenseal roots and products manufactured with Goldenseal roots namely;
Goldenseal tincture and Goldenseal powder and in association with the general
class of wares comprising the following specific wares namely; Goldenseal
tincture, and Goldenseal powder custom manufactured to the specifications of
others.
(13) Valerian roots, Lemon Balm flowers, Lemon Balm herb and Hops flowers and
products manufactured with Valerian roots, Lemon Balm flowers, Lemon Balm herb
and Hops flowers namely; Valerian, Lemon Balm and Hops tincture, Valerian,
Lemon Balm and Hops fluid extract and Valerian, Lemon Balm and Hops powder and
in association with the general class of wares comprising the following specific
wares namely; Valerian, Lemon Balm and Hops tincture, Valerian, Lemon Balm and
Hops
fluid extract and Valerian, Lemon Balm and Hops powder custom manufactured to
the specifications of others.
(14) Valerian roots, Skullcap flowers, Skullcap herb, St. John's Wort flowers
and St. John's Wort herb and products manufactured with Valerian roots,
Skullcap flowers, Skullcap herb, St. John's Wort flowers and St. John's Wort
herb namely; Valerian, Skullcap and St. John's Wort tincture, Valerian,
Skullcap and St. John's Wort fluid
extract, Valerian, Skullcap and St. John's Wort powder and in association with
the general class of wares comprising the following specific wares namely;
Valerian, Skullcap and St. John's Wort tincture, Valerian, Skullcap and St.
John's Wort fluid extract and Valerian, Skullcap and St. John's Wort powder
custom manufactured to
the specifications of others.
(15) Hops flowers and products manufactured with Hops flowers namely; Hops
tincture, Hops fluid extract and Hops powder and in association with the
general class of wares comprising the following specific wares namely; Hops
tincture, Hops fluid extract and Hops powder custom manufactured to the
specifications of others.
The claimed dates of first use in association with each of the groups of wares are as follows:
January 17, 1996 on wares (1); February 1, 1997 on wares (2); March 10, 1998 on wares (3); July 17, 1998 on wares (4); January 05, 1999 on wares (5), (6); November 11, 1999 on wares (7), (8), (9); and March 24, 2000 on wares (10), (11), (12), (13), (14), (15).
The application was advertised for opposition purposes in the Trade-marks Journal of January 2, 2002. The opponent, Canadian Medical Association, filed a statement of opposition on February 26, 2002.
The grounds of opposition are summarized below:
1. The application does not comply with subsection 30(i) of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use the trade-mark because use of the mark is contrary to various statutory provisions including section 33 of the Ontario Regulated Health Professions Act, which prohibits the use of the designation DOCTOR and its abbreviations in the course of offering or providing health care to individuals by any person other than a member of the College of Physicians and Surgeons of Ontario, the College of Chiropractors of Ontario, the College of Optometrists of Ontario, the College of Psychologists of Ontario or the Royal College of Dental Surgeons of Ontario. Parallel prohibitions have been enacted by other provinces, including British Columbia. Use of the trade-mark is misleading, therefore, in that it suggests that the applicant’s wares have been approved, authorized or endorsed by a “doctor” which is not the case.
2. The trade-mark is unregistrable under paragraph 12(1)(b) of the Act because it is deceptively misdescriptive of the character or quality of the wares and/or the persons employed in their production in that the average consumer would assume that the wares have been formulated, designed, produced, sold or endorsed by a qualified medical doctor, which is not the case.
3. The trade-mark is unregistrable under paragraph 12(1)(e) of the Act because:
i) the adoption and/or use of PRAIRIE DOCTOR BRAND is prohibited by subparagraph 9(1)(n)(iii) of the Act because it so nearly resembles as to be likely to be mistaken for one or more of the opponent’s following official marks – DR. (s.n. 912,999); Dr (s.n. 913,001); Doctor (s.n. 907,423); Doctor (s.n. 912,998); Docteur (s.n. 913,000);
ii) the word DOCTOR, and its standard abbreviation and phonetic equivalent DR., in both official languages, has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind and quality of services provided by medical doctors and the opponent. As such the adoption and use of PRAIRIE DOCTOR BRAND is prohibited by section 10 of the Act;
iii) the adoption and use of the trade-mark is likely to mislead, in that it suggests that the wares have been approved, authorized, sold or endorsed by a qualified medical doctor, which is not the case, with the result that the adoption of the mark is prohibited by section 10.
4. The trade-mark is not distinctive because it does not distinguish and is not adapted to distinguish the wares of the applicant from the wares and services of others, including the opponent, particularly because the trade-mark will mislead members of the public to believe that the wares have been endorsed by one or more members of the medical profession.
The applicant filed and served a counter statement.
The opponent filed as its evidence the affidavit of Leanne Mascolo.
As its evidence, the applicant filed the affidavit of Robert Chabot.
As reply evidence, the opponent filed two additional affidavits of Leanne Mascolo.
Each party filed a written argument. An oral hearing was not requested.
The applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Trade-marks Act. However, there is an initial evidential burden on the opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298].
Opponent’s Rule 41 Evidence
Ms. Mascolo, an articling student employed by the opponent, provides copies of the following materials:
• the Act of Incorporation and the Bylaws of the opponent;
• the opponent’s Mission, Vision and Values Statements;
• two section 9 Notices for the official mark DOCTOR;
• dictionary definitions re “doctor” and “health care”;
• certain sections of the Ontario Regulated Health Professions Act;
• pages obtained from an Internet website on November 20, 2002, namely information about the applicant.
Applicant’s Rule 42 Evidence
Mr. Chabot, an officer and director of the applicant, discusses and compares the opponent’s section 9 notices for its official marks and the applicant’s application for PRAIRIE DOCTOR BRAND. In addition, he discusses section 33 of the Ontario Regulated Health Professions Act and subsection 27(8) of the Ontario Regulated Health Professions Act 1991. He states that the information located on the Internet by Ms. Mascolo concerning the applicant is not entirely factually correct. He also provides a dictionary definition for “health food”.
Mr. Chabot states that Echinacea is commonly known as “prairie doctor”. In support of this statement, he provides copies of a number of articles.
Mr. Chabot also provides evidence of various other uses of the word “doctor” by third parties in a non-medical sense. In addition, he provides the results of a search of the Canadian Intellectual Property Office’s trade-marks data base directed to registered trade-marks containing the word “doctor” that were registered between August 2, 1995 (the date of the publication of the opponent’s section 9 marks for services) and December 10, 2002. The search located 46 such marks but Mr. Chabot has only provided the trade-mark and registration number for each of these.
Opponent’s Rule 43 Evidence
Ms. Mascola has provided copies of pages from the Internet advertising PRAIRIE DOCTOR BRAND products and listing therapeutic and medical claims. She has also provided the labels from PRAIRIE DOCTOR BRAND products that she obtained pursuant to an order that she placed through the Internet on May 9, 2003.
Subsection 30(i) Ground of Opposition
The material time for considering the circumstances respecting the issue of the applicant’s compliance with section 30 of the Act is the filing date of the application. [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.) at 475]
As the application contains the statement required by subsection 30(i) and there is no evidence of bad faith on the part of the applicant, I dismiss this ground of opposition. [see Sapodilla Co. Ltd. v. Bristol-Myer Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155]
I will also point out that the opponent did not plead that the applicant was aware of the facts on which the opponent relies. [see unreported decision of Board Member Herzig re application No. 1,021,294 dated June 16, 2005, at page 7] In addition, I have my doubts that it was the intent of the Legislature to have the Registrar of Trade-marks decide whether or not an applicant is in compliance with other legislation during the process of opposition proceedings. [see Hayhurst, W.L., “Trade-mark Oppositions: How ‘Satisfied’ Must an Applicant Be?” (1991), 7 I.P.J. 75 at 79]
Paragraph 12(1)(b) Ground of Opposition
The material date with respect to the paragraph 12(1)(b) ground of opposition is the date of filing of the application. [see Shell Canada Limited v. P.T. Sari Incofood Corporation, 2005 FC 1040; Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)]
The opponent’s written argument with respect to this ground reads in part as follows:
Specifically, the trade-mark PRAIRIE DOCTOR BRAND implies that the Applicant’s Wares are of the kind or quality developed, endorsed, produced or authorized by a medical doctor or are otherwise authorized, endorsed or approved by a medical doctor. Since the Applicant’s Wares are not developed, approved, produced or otherwise endorsed by a medical doctor, we submit that the trade-mark PRAIRIE DOCTOR BRAND is deceptively misdescriptive… Given the nature of the wares covered by the Applicant’s application, most people would assume that such wares are of the kind or quality developed, endorsed, produced or authorized by a medical doctor or are otherwise authorized, endorsed or approved by a medical doctor.
In Canadian Council of Professional Engineers v. John Brooks Co. (2004), 35 C.P.R. (4th) 507 (F.C.T.D.) at 514, O’Reilly J. stated:
If part of a proposed trade-mark is objectionable, the question arises whether the whole can still be registered. Here, given that JBCL cannot register SPRAY ENGINEERING, can it register BROOKS BROOKS SPRAY ENGINEERING? The answer depends on whether the objectionable part of the proposed trade-mark forms a significant part of the whole and, therefore, causes it to remain deceptively misdescriptive. The parties differed on the question whether the offensive part of the trade-mark must be the dominant element of it or merely a dominant feature. As I read the case law, the proper test is whether the deceptively misdescriptive words "so dominate the applied for trade mark as a whole such that . . . the trade mark would thereby be precluded from registration" [p. 255]: Chocosuisse Union des Fabricants -- Suisses de Chocolate v. Hiram Walker & Sons Ltd. (1983), 77 C.P.R. (2d) 246 (T.M.O.B.), citing Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103 (F.C.T.D.).
In the present case, the applicant may not be able to register DOCTOR as a trade-mark but the question remains whether it can nevertheless register PRAIRIE DOCTOR BRAND on the basis that “doctor” does not “dominate the applied for trade–mark as a whole”.
In Consorzio del Prosciutto di Parma v. Maple Leaf Meats Inc. (2001), 11 C.P.R. (4th) 48 (F.C.T.D.), affirmed 18 C.P.R. (4th) 414, McKeown J. said at page 52:
In order to determine whether or not the "PARMA" trade-mark was deceptively misdescriptive in 1971, I must decide:
[W]hether the general public in Canada would be misled into the belief that the product with which the trade mark is associated had its origin in the place of a geographic name in the trade mark.
(Atlantic Promotions Inc. v. Canada (Registrar of Trade-marks) (1984), 2 C.P.R. (3d) 183 (F.C.T.D.) at 186.)
In evaluating this question, I must place myself in the position of a consumer of ordinary intelligence and education and determine what he or she would think if he or she saw the mark used in context.
In Lassonde Inc. v. Pied-Mont Dora Inc. (1996), 72 C.P.R. (3d) 272 (T.M.O.B.), the then Chairman of the Trade-marks Opposition Board said, at pages 276-7:
The second ground of opposition states that the applicant's trade-mark is not registrable pursuant to paragraph 12(1)(b) of the Trade-marks Act because the trade-mark MONT-JUS is deceptively misdescriptive in the English or French language of the character or the quality of the wares of the applicant since the flavoured powders and liquids for the preparation of the applicant's non-alcoholic fruit-flavoured drinks are not juices but fruit-flavoured drinks.
The principal issue to be resolved with respect to this ground is whether the trade-mark MONT-JUS, viewed in its entirety, is deceptively misdescriptive of the powders and liquids for the preparation of non-alcoholic, fruit-flavoured drinks. The legal burden of proof with respect to the ground of opposition based on paragraph 12(1)(b) lies with the applicant, who must prove that its trade-mark MONT-JUS is registrable. However, the initial evidentiary burden of proof is upon the opponent to provide sufficient elements of proof that, if accepted, will support the truth of the allegations that the applicant's trade-mark is deceptively misdescriptive of the character or quality of its wares… Furthermore, the applicable criterion to determine whether the applicant's trade-mark, viewed in its entirety, is deceptively misdescriptive, is as follows: would the general public in Canada be misled into the belief that flavoured powders and liquids used in the applicant's preparation of MONT-JUS fruit-flavoured drinks contain juice when in fact they do not (see T.G. Bright & Co. v. Institut National des Appellations D'Origine des Vins et Eaux-de-vie (1986), 9 C.P.R. (3d) 239 (F.C.T.D.), at pages 241 and 242; and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R. (3d) 183 (F.C.T.D.), at page 188).
…
The evidence upon which the opponent relies focuses on the word JUS (juice) and not the trade-mark MONT-JUS, considered as a whole. Even if the definitions indicate that the word JUS is falsely misdescriptive of the wares of the applicant, I do not think that the evidence of the opponent proves its claim that the trade-mark MONT-JUS, considered in its entirety, is falsely misdescriptive in the English or French language, of flavoured powders and liquids for the preparation of fruit-flavoured drinks. Consequently, I have come to the conclusion that the opponent has not met the burden of proof incumbent upon it and therefore, I reject the second ground of opposition.
Therefore, I must assess whether the general public in Canada would be misled into the belief that the product with which the trade-mark is associated has been approved by a medical doctor. I find that the word “doctor” is not the dominant portion of the trade-mark PRAIRIE DOCTOR BRAND; rather the word PRAIRIE is at least equally, if not more, dominant. Moreover, I am satisfied on a balance of probabilities that a Canadian consumer of ordinary intelligence and education would not have been misled by the use of PRAIRIE DOCTOR BRAND into believing that a medical doctor was associated with the applicant’s products as of the material date of May 26, 2000. The fact that the applicant’s wares comprise flowers, herbs, roots, etc., which are commonly referred to as “alternative medicine”, simply reinforces the unlikelihood that members of the public would think that the PRAIRIE DOCTOR BRAND wares are associated with medical doctors.
Subparagraph 9(1)(n)(iii) Ground of Opposition
In WWF-World Wide Fund for Nature v. 615334 Alberta Limited (2000), 6 C.P.R. (4th) 247 (T.M.O.B.) at 253, Board Member Martin discussed the test to be applied under paragraph 9(1)(n)(iii) with reference to the court decisions in Big Sisters Association of Ontario v. Big Brothers of Canada (1999), 86 C.P.R. (3d) 504 (F.C.A.); affg. (1997), 75 C.P.R. (3d) 177 (F.C.T.D.), as follows:
As stated in Section 9(1)(n)(iii) of the Act, the test to be applied is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, any of the opponent’s official marks?: see page 217 of the trial level decision in the Big Sisters case noted above. At page pages 218-219 of the trial level decision, Mr. Justice Gibson confirmed that in assessing the resemblance between the marks at issue, regard may be had to the factors set out in Section 6(5)(e) of the Act. Further, at page 218, Mr. Justice Gibson indicated that the test was to be applied as a matter of first impression and imperfect recollection: see also pages 8-9 of the unreported decision of the Federal Court of Appeal in Canadian Olympic Association v. Techniquip Limited (Court No. A-266-98; November 10, 1999).
In the present case, the applicant's trade-mark is not identical to any of the opponent's official marks. Further, while the trade-mark PRAIRIE DOCTOR BRAND includes the opponent's official mark DOCTOR, I find that the applicant's trade-mark, when considered in its entirety, has only some resemblance to that official mark in appearance, sounding or in the idea suggested. Consequently, the applicant's mark is not almost the same as any of the opponent's marks.
In its written argument, the opponent submits that the resemblance test pursuant to subparagraph 9(1)(n)(iii) is “whether an average person, as a matter of first impression, would react to the adopted mark as one that so nearly resembles the official mark as to be likely to be mistaken for it.” The opponent further submits that the dominant component of the applicant’s mark is the word DOCTOR, but as set out earlier, I consider the word PRAIRIE to be at least as dominant, if not more so, in part because it appears at the beginning of the mark, the location traditionally considered to be the most dominant. [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.)]
In my view, the differences between the marks PRAIRIE DOCTOR BRAND and DOCTOR are more than sufficient to prevent a Canadian consumer from mistaking PRAIRIE DOCTOR BRAND for DOCTOR.
For the foregoing reasons, this ground of opposition fails.
Section 10 Grounds of Opposition
In order to satisfy its evidential burden with respect to its section 10 ground of opposition, the opponent was obliged to furnish evidence to show that the word DOCTOR (or DR.) has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind and quality of the services provided by medical doctors and the opponent. I am not certain what services the opponent is referring to. In any event, the applicant has not adopted DOCTOR or DR. as a mark, nor does PRAIRIE DOCTOR BRAND so resemble DOCTOR or DR. so as to be likely to be mistaken for either, as required by section 10. Accordingly, the trade-mark PRAIRIE DOCTOR BRAND does not offend section 10 of the Act.
Regarding the opponent’s allegation that the adoption and use of the trade-mark PRAIRIE DOCTOR BRAND is prohibited by section 10 because it is likely to mislead in that it suggests that the wares have been approved, authorized, sold or endorsed by a qualified medical doctor, which is not the case, I refer to my earlier finding that a Canadian consumer of ordinary intelligence and education would not be so misled.
Non-distinctiveness Ground of Opposition
The material date with respect to non-distinctiveness is generally accepted to be the date of filing of the opposition. [see Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.) at 324]
The opponent has premised its distinctiveness ground of opposition on the allegation that the applicant’s trade-mark will mislead members of the public to believe that the wares have been endorsed by one or more members of the medical profession. As discussed above, the evidence does not support that allegation. Accordingly, this ground of opposition also fails.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade-marks Act, I reject the opposition pursuant to subsection 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 21st DAY OF SEPTEMBER 2005.
Jill W. Bradbury
Member
Trade-marks Opposition Board