IN THE MATTER OF AN OPPOSITION
by Amway Corporation to application No.
790,667 for the trade-mark NUTRAVITA
filed by Nutravite Pharmaceutical Inc.
On August 22, 1995, the applicant, Nutravite Pharmaceutical Inc., filed an application to register the trade-mark NUTRAVITA based on proposed use in Canada. The application was advertised for opposition purposes on January 17, 1996. The application as advertised covers the wares “vitamins, minerals and herbs.” The applicant subsequently amended its application to restrict the wares to “vitamins, minerals and herbs for retail sale through drug stores, pharmacies and health food stores.”
The opponent, Amway Corporation, filed a statement of opposition on June 17, 1996, a copy of which was forwarded to the applicant on July 10, 1996. 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 opponent’s trade-mark NUTRILITE registered under No. UCA42540 for the following wares:
(1) chemical preparations, namely, vitamin and mineral food supplements,
(2) nutrition enhancing food products, namely, food bars, protein powder and light beverage mixes fortified with nutrients, and
(3) powder mixes for food and beverage products for weight control.
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 NUTRILITE previously used and made known in Canada by the opponent. The third ground is that the applied for trade-mark is not distinctive because it is confusing with the opponent’s mark. The fourth ground is that the applicant’s application does not conform to the provisions of Section 30(i) of the
Act because the applicant could not have been satisfied that it was entitled to use its trade-mark in view of the opponent’s prior rights in its mark.
The applicant filed and served a counter statement. The opponent’s evidence consists of two affidavits of Carl S. Rehnborg and two affidavits of Martyn Smith. The applicant’s evidence comprises the affidavit of Donna Harris and two affidavits of Margaret H. McKay. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
The Opponent’s Evidence
The opponent’s evidence is somewhat unclear about the history of the use of the trade-mark NUTRILITE in Canada. Mr. Rehnborg, in his first affidavit, states that Nutrilite Products, Inc. (“NPI”) has sold vitamin and mineral supplements in association with the trade-mark NUTRILITE for more than sixty years and has sold such wares in Canada through distributors since 1948. In his second affidavit, Mr. Rehnborg states that NPI merged with the opponent, Amway Corporation, effective September 1, 1995. From that date on, according to Mr. Rehnborg, the manufacture and sales of NUTRILITE products has been carried on by Amway Corporation through its Nutrilite Division.
In his first affidavit, Mr. Smith identifies himself as the National Marketing Manager for Amway of Canada, Inc. (“ACI”) which he identifies as the exclusive distributor in Canada of NUTRILITE products made by NPI. However, the representative NUTRILITE labels and packages appended as exhibits to the first Smith affidavit identify Nutrilite as a division of Amway Corporation and indicate that the products are exclusively distributed by Amway of Canada, Ltd. (“ACL”). In his second affidavit, Mr. Smith clarifies the initial discrepancy by confirming that NPI merged with Amway Corporation effective August 31, 1995 and that subsequent sales to ACI of NUTRILITE products were made by Amway Corporation through its Nutrilite Products Division. No explanation was given as to the apparent discrepancy between Mr. Smith’s identification of ACI as the exclusive Canadian distributor and the labelling and packaging which identifies ACL as the company performing that function.
In any event, it appears that prior to August 31, 1995, NUTRILITE products were manufactured by NPI and distributed in Canada by the opponent and ACL who were both previously recorded as registered users under registration No. UCA42450. After that date, NUTRILITE products were manufactured by Amway Corporation through its Nutrilite division and were distributed in Canada by ACL or ACI. Sales of all NUTRILITE products in Canada for the period 1984 to 1996 were in excess of $140 million with over $100 million of that total pertaining to sales of vitamins and minerals. Final sales are made by individual distributors or salespersons who number more than 150,000. Those individual distributors spent about $800,000 on NUTRILITE promotional materials over the period 1984-1995.
The Applicant’s Evidence
The Harris affidavit introduces the results of a state of the register search conducted by Ms. Harris respecting marks of record in the Canadian Trade-marks Office which commence with the letters NUTR- and cover wares similar to those at issue. She conducted her search using a “CD Name Search” CD-ROM compiled from Trade-marks Office records and made available at the public search room of the Trade-marks Office.
The opponent objected to the admissibility of Ms. Harris’ search results on the basis that they comprise inadmissible hearsay since the database searched by Ms. Harris is owned by a third party, CDName Search Corp. Technically, there may be some merit in the opponent’s objection. However, given that the Trade-marks Office provides the information for the third party database and relies on it itself in its own public search room suggests that it is a reliable reflection of the Office records. Thus, I consider Ms. Harris’ search results to be reliable and admissible.
A review of the Harris search results reveals more than 35 trade-marks commencing with the letters NUTR- that are registered for vitamins, minerals and dietary food supplements. Ms. Harris also located a number of applications for such marks. However, I have not considered those applications since many will likely be based on proposed use or may be under opposition.
In her first affidavit, Ms. McKay evidences the results of her review of various telephone directories from different Canadian cities regarding entries commencing with the letters NUTR-. That evidence is of little use in this proceeding since there is no indication for most of the entries as to the type of business engaged in. Furthermore, a number of the entries simply include the descriptive word “nutrition.” Finally, there is little or no use of any of these business names.
In her first affidavit, Ms. McKay also evidenced the results of what she called a “411"
search of the World Wide Web. There is no indication of how the search was conducted, what type of business is carried on by the entities located or how many Canadians would be aware of any of these names. Thus, this evidence is of no assistance in the present case.
In her second affidavit, Ms. McKay attests to a more detailed Internet search that she conducted regarding sites featuring NUTR- marks or business names. She provides particulars concerning about two dozen such sites. However, most appear to be based in the United States although some are anonymous as to source and two appear to be U.K.-based. More importantly, there is no evidence that any Canadians beyond Ms. McKay have accessed these sites.
The balance of the second McKay affidavit deals with Ms. McKay’s visits to a number of drug stores and health food stores in Ottawa where she purchased various products bearing NUTR-prefixed trade-marks. Most of the purchases were of wares unrelated to those at issue in the present case. However, she was able to purchase NUTRICAP food supplement capsules, NUTRIBAR meal replacement bars, NUTRAVITE herbal supplements and NUTRICOLOGY vitamins and minerals.
The Grounds of Opposition
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 prefixes NUTRI and NUTRA are suggestive of the word “nutrition”, “nutritious” or “nutrient” and are thus inherently weak in the context of the two marks at issue: see the opposition decision in Amway Corp. v. Nutravite Pharmaceuticals Inc. (1997), 84 C.P.R.(3d) 276 at 282. The applicant’s mark NUTRAVITA also suggests that the related wares are vitamins. Thus, that mark is inherently weak. The opponent’s mark NUTRILITE also suggests that the opponent’s food supplements allow for a “lighter” diet while still maintaining adequate nutrition. Thus, the opponent’s mark is also inherently weak.
There is no evidence of use of the applicant’s mark and I must therefore conclude that it has not become known at all in Canada. In view of the sales volumes associated with the opponent’s mark over a number of years, I can conclude that the mark NUTRILITE has become known in Canada for vitamin and mineral supplements and food supplements. The length of time the marks have been in use favors the opponent.
The nature of the parties’ wares are the same in respect of vitamins and minerals and herbs are closely related to such wares. To the extent that there is a similarity between the wares of the parties, there is also a potential overlap in the natures of the parties’ trades. Although the opponent apparently sells its wares through direct marketing rather than through retail outlets, there is nothing to preclude the opponent from changing its marketing mode. Further, while the applicant has restricted its statement of wares to particular retail outlets, the opponent’s registration contains no restrictions to its channels of trade and it is the statements of wares of the parties that govern in this case. In other words, I am obliged to consider whether confusion would be likely if the applicant and opponent were to operate in any way open to them: see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R.(3d) 3 at 10-11 (F.C.A.); Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R.(3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Bohna (1994), 58 C.P.R.(3d) 381 at 390-392 (F.C.A.). It should also be noted that the approach taken in McDonald’s Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R.(3d) 168 at 169 (F.C.A.) to consider the actual trades of the parties is only applicable where the specification of the wares in an application might be ambiguous and open to interpretation.
As for Section 6(5)(e) of the Act, I consider that there is a fair degree of resemblance between the marks at issue in all respects primarily due to the similarities between the first components of the two marks - i.e. - NUTRA and NUTRI. The visual, phonetic and conceptual differences between the marks arise from the differences between the second components of the two marks, namely VITA and LITE.
As an additional surrounding circumstance, the applicant has relied on the state of the register evidence introduced by the Harris affidavit to minimize the effect of any resemblance found between the marks at issue. 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.
In the present case, as noted, the Harris affidavit evidences more than 35 registrations for trade-marks commencing with the letters NUTR- for vitamins, minerals and related wares. Given those numbers, I am able to infer that a fair number of those registered marks are in active commercial use and that consequently consumers would be more likely to look to the non-NUTR components of such marks to distinguish them.
As previously noted, much of the evidence introduced by the two McKay affidavits is of little relevance to the issues at hand. However, the second McKay affidavit does evidence purchases by Ms. McKay of several NUTR-prefixed products related to the wares at issue. Thus, that evidence underscores to a limited extent my conclusion about common adoption of NUTR-prefixed marks in the relevant marketplace.
The opponent contends that the issue of confusion should be decided in accordance with the Amway opposition noted above. The present parties were also involved in that opposition where the central issue was confusion between the opponent’s registered mark NUTRILITE and the applicant’s proposed mark NUTRAVITE. In that case, Board Member Herzig found the marks to be confusing in view of the high degree of similarity between their second components notwithstanding the existence of some state of the register evidence.
The present case is distinguishable from the Amway decision on several grounds. First, the state of the register evidence is more extensive in the present case with roughly twice as many relevant marks having been located by the applicant. Second, there is some evidence of actual use of several third party NUTR-prefixed marks as shown in the second McKay affidavit. No such evidence was present in the Amway case. Third, the second components of the marks at issue bear less resemblance to each other than to the second components of the marks under consideration in the Amway case. Thus, the state of the register and state of the marketplace evidence in the present case becomes more relevant.
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 inherent weakness of the marks at issue and the common adoption of similar marks by third parties and notwithstanding the reputation associated with the opponent’s registered
mark, I find that the applicant has satisfied the onus on it to show no reasonable likelihood of confusion. Thus, the first ground of opposition is unsuccessful.
As for the second ground of opposition, as discussed, the opponent’s evidence is somewhat deficient regarding who was using the opponent’s registered mark when. Nevertheless, I am prepared to conclude that the opponent (through its predecessor amalgamating company NPI) used its trade-mark NUTRILITE in Canada prior to the applicant’s filing date. However, the evidence is insufficient to allow me to conclude that the opponent’s mark had been made known in this country as of that date. Thus, that aspect of the second ground is unsuccessful.
As for the first aspect of the second ground, it remains to be decided on the issue of confusion between the parties’ marks as of the applicant’s filing date. My conclusions respecting the first ground of opposition are, for the most part, equally applicable to this ground. Thus, I find that the two marks were not confusing as of the earlier date and the first aspect of the second ground of opposition is also unsuccessful.
As for the third 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. - June 17, 1996): 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 third ground essentially turns on the issue of confusion. As before, my conclusions respecting the first ground of opposition are, for the most part, also applicable here. Thus, I find that the applicant’s mark was confusing with the opponent’s mark as of the filing of the opposition and the third ground is therefore also unsuccessful.
As for the fourth ground, it fails to raise a proper ground of opposition. The opponent failed to set forth sufficient allegations of fact to support a ground of opposition of non-conformance with Section 30(i) of the Act. Thus, the fourth ground is also unsuccessful.
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 HULL, QUEBEC, THIS 16th DAY OF FEBRUARY, 2001.
David J. Martin,
Member,
Trade Marks Opposition Board.