IN THE MATTER OF AN OPPOSITION
by Vitality Products Inc. to application no. 895527
for the trade-mark VITALITY FOR LIFE filed
by Melaleuca, Inc.
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The Record
[1] On November 12, 1998, Melaleuca, Inc. filed an application to register the trade-mark
VITALITY FOR LIFE based on:
(1) use of the mark in Canada in association with
(i) dietary and nutritional supplements, namely vitamins, minerals, and herbal supplements, all of the above available for purchase only through the applicant's mail order catalogue, since May 1994,
(ii) nutritional drink mixes for use as a meal replacement, available for purchase only through the applicant's mail order catalogue, since January, 1997,
(2) use and registration of the mark in association with the above
mentioned wares in the United States of America.
I note that the United States registration referred to in (2) above, a copy of which was provided by the applicant pursuant to Section 31(1) of the Trade-marks Act, indicates that the applied for mark was first used in the United States on May 9, 1993. I also note that the specification of wares in the United States registration does not limit the applicant’s channels of trade in any way, unlike the subject Canadian application which limits the applicant’s channels of trade as “available for purchase only through the applicant's mail order catalogue.”
[2] The Examination Section of the Trade-marks Office raised several objections to the application as initially filed, including the objection that the applied for mark was
confusing with trade-mark registration nos. 183854 and 508062 for VITALITY & Design: see the Office letter dated August 5, 1999. The cited marks covered, among other wares, health foods, food supplements and vitamins. The applicant overcame the objections raised by the Examination Section (see its submissions dated December 4, 2001) and the subject application was subsequently advertised for opposition purposes in the Trade-marks Journal issue dated May 28, 2003.
[3] The subject application was opposed on October 28, 2003 by Vitality Products Inc., the owner of the above-mentioned marks cited by the Examination Section. The Registrar forwarded a copy of the statement of opposition to the applicant on December 2, 2003, as required by Section 38(5) of the Trade-marks Act. The applicant responded by filing and serving a counter statement.
The opponent’s evidence consists of the affidavit of W. Douglas Grant. Mr. Grant was cross-examined on his affidavit and the transcript thereof, exhibits thereto and replies to undertakings form part of the evidence of record. The applicant’s evidence consists of the affidavit of McKay Christensen. Both parties filed a written argument, however, only the applicant was represented at an oral hearing held on November 17, 2009.
Statement of Opposition
[4] The first ground of opposition alleges that the subject application does not conform to Section 30(i) of the Trade-marks Act because at the date of filing the application the applicant was or should have been aware of the opponent’s trade-mark VITALITY & Design used in association with health foods, food supplements and vitamin preparations.
[5] The second ground, pursuant to Section 12(1)(d) of the Act, alleges that the applied for mark is confusing with the opponent’s mark VITALITY & Design, regn. no. 183354, the particulars of which are shown below:
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Registration no. 183854 |
Wares |
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health foods, food supplements and vitamin preparations of every nature and kind, including alpha tablets, iron and liver capsuls, digestive aids, fish liver oil, calcium lactate. |
I note in passing that registration no. 508062, covering somewhat similar wares and also initially cited by the Examination Section, was expunged from the register of trade-marks on November 7, 2003 for non-use.
[6] The third ground, pursuant to Section 16(3)(a), alleges that the applicant is not entitled to register the applied for mark because, as of the date of filing the application, the applied for mark VITALITY FOR LIFE was confusing with the opponent’s above mentioned mark regn. no. 183354 previously used in Canada.
I note that the third ground is incorrectly pleaded as Section 16(3)(a) applies to proposed use marks rather than to trade-mark applications based on past use in Canada or based on use and registration abroad. This matter will be discussed more fully later in these reasons for decision.
[7] The fourth ground, pursuant to Section 2, alleges that the applied for mark VITALITY FOR LIFE does not actually distinguish and is not adapted to distinguish the applicant’s wares from the wares of the opponent sold under its mark VITALITY & Design.
Opponent’s Evidence
W. Douglas Grant
[8] Mr. Grant identifies himself as Vice-President and Chief Financial Officer of the opponent company. The opponent and its predecessor have been in business since 1946. The opponent is a nutritional food products and health education company which markets over 70 vitamin products. Its products have been sold under its mark VITALITY & Design since January 1951. The opponent has marketed its wares exclusively through its website since the year 2000. Typical purchasers of the opponent’s wares are Canadian residents who purchase the wares directly from the opponent or from retail health food stores located in Canada. The opponent works with a distributor to provide wares to retail stores. Sales in Canada under the opponent’s mark averaged about $154,000 annually for the period 1986 to 1991 inclusive, but thereafter sales decreased significantly. Annual sales for the period 1992 - 2005 inclusive averaged about
$24,000 while in each of the years 1999, 2000, 2001 and 2005 sales amounted to less than $1,500.
[9] Mr. Grant testifies that the opponent’s mark VITALITY & Design appears on labels attached to the opponent’s wares, as illustrated in Exhibit C of his affidavit, and that the mark is featured in brochures advertising the opponent’s wares sent to the opponent’s wholesale and retail customers, as illustrated in Exhibit E of his affidavit. From my inspection of Exhibits C and E, it appears that the opponent is using a variant of its mark in which the stylized human figure is depicted somewhat differently from the mark as registered. I am satisfied that the manner of actual use of the opponent’s mark qualifies as use of the registered mark relied on by the opponent in the statement of opposition: see Nightingale Interloc v. Prodesign Ltd. (1984), 2 C.P.R.(3d) 535 at 538 (TMOB) under the heading Principle 2.
[10] It appears from Mr. Grant’s transcript of cross-examination that he is unfamiliar with details concerning many aspects of the opponent’s business operations. However, I do not consider that such lack of knowledge puts into question the veracity or reliability of his affidavit evidence which has been summarized in the preceding paragraphs.
Applicant’s Evidence
McKay Christensen
[11] Mr. Christensen identifies himself as the Chief Operating Officer of Melaleuca, Inc. The applicant company was founded in Idaho, U.S.A. in 1985 as a direct sales company and has been selling its products to customers in Canada since 1994. As of the date of Mr. Christensen’s affidavit, the applicant employed more than 2,400 people worldwide and operated in several countries. In 2006 worldwide gross sales exceeded US$780 million. The applicant’s products are household staples (in excess of 300 items) including household cleaners, candles, natural health products, soaps, cosmetics, hair and skin care products and over the counter pharmaceuticals. Canadian customers may order products via a toll free number or via the Internet or from a local representative. The products are then delivered directly to the customer.
[12] The applicant’s VITALITY FOR LIFE mark identifies a family of products including fat-conversion activity bars, energy bars, nutrition bars, cardiovascular protection dietary supplements, relaxation dietary supplements and the like. The opponent’s representatives in Canada refer potential Canadian customers for VITALITY FOR LIFE products to the opponent’s catalogues, brochures and price lists. Such materials are distributed by the applicant directly to its Canadian representatives and customers. Between 1999 and 2005, about two million product catalogues were distributed in Canada. From May 1994 to May 2007 the opponent sold in excess of 11 million individual units of VITALITY FOR LIFE products in Canada with gross sales in excess of US$200 million.
Legal Onus and Evidential Burden
[13] The legal onus is on the applicant to show that the application does not contravene the provisions of the Trade-marks Act as alleged by the opponent in the statement of opposition. The presence of a legal onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant. However, there is also, in accordance with the usual rules of evidence, an evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition: see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298. The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.
Section 30(i) Ground of Opposition
[14] The first ground of opposition is based on Section 30(i) of the Trade‑marks Act, the opponent alleging that the applicant could not have been satisfied that it was entitled to use the trade‑mark VITALITY FOR LIFE in Canada (in association with the wares covered in the present application) having regard to the opponent’s use of its mark VITALITY & Design.
No evidence has been filed by the opponent in support of its allegation that the applicant could not have been satisfied that it was entitled to use the trade‑mark VITALITY FOR LIFE in Canada. The opponent has therefore failed to meet its evidentiary burden to put the first ground into issue. Even if the evidence had shown that the applicant had been aware of the opponent’s trade‑mark prior to filing the present application, such a fact is not inconsistent with the statement in the application that the applicant was satisfied that it was entitled to use the trade‑mark VITALITY FOR LIFE on the basis inter alia that its mark is not confusing with the opponent’s trade‑mark. Thus, the success of the second ground is in any event contingent on a finding that the trade‑marks in issue are confusing: see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191 at 195 and Sapodilla Co. Ltd. v. Bristol‑Myers Co., 15 C.P.R. (2d) 152 at 155.
12(1)(d) Ground of Opposition
[15] The determinative issue is whether the applied for mark VITALITY FOR LIFE is confusing with the opponent’s mark VITALITY & Design. The material date to assess the issue of confusion is the date of decision: see 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) 413 at 424 (F.C.A.). The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2) of the Act, shown below, between the applied for mark VITALITY FOR LIFE and the opponent's mark VITALITY & Design.
6(2) The use of a trade‑mark causes confusion with another trade‑mark if the use of both trade‑marks in the same area would be likely to lead to the inference that the wares . . . associated with those trade‑marks are manufactured . . . by the same person, whether or not the wares . . . are of the same general class.
[16] The test for confusion is one of first impression and imperfect recollection. Factors to be considered in making an assessment as to whether two marks are confusing are set out in Section 6(5) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade‑marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.).
[17] The applied for mark VITALITY FOR LIFE possesses a relatively low degree of inherent distinctiveness as the phrase is somewhat laudatory and descriptive of the beneficial effects of the opponent’s sports nutrition bars and supplements. In this regard, the mark represents, or at least strongly suggests, that the applicant’s wares will provide the consumer with strength and energy to engage with the demands of life. In the same way, the opponent’s mark VITALITY & Design possesses a relatively low degree of inherent distinctiveness because it is an elliptical allusion that is laudatory and descriptive of the positive effects of consuming the opponent’s wares. The design component of the opponent’s mark adds little to the overall inherent distinctiveness of the mark. I infer from the applicant’s evidence of sales under its mark and advertising and promotion of the mark that VITALITY FOR LIFE had acquired a substantial reputation in Canada as of the material date. However, I infer from the opponent’s evidence of sales and advertising that its mark was known to only a limited extent as of the material date, although the mark would have been more widely known prior to 1991. The length of time that the parties’ marks have been in use favours the opponent, but it is not a major factor as the presence of the opponent’s mark in the marketplace decreased sharply after 1991. The parties’ wares fall into the same general class and there is significant overlap in the parties’ wares with respect to dietary and nutritional supplements. However, the parties’ channels of trade are different. In this regard, Mr. Christensen makes it clear that the applicant’s wares are not available through retail stores while Mr. Grant has testified that the opponent’s wares are available through retail health food stores.
[18] The parties’ marks resemble each other to a fairly high degree in sounding and in ideas suggested owing to the common dominant component VITALITY. However, the overall visual impacts of the marks in issue are different owing to the design feature comprising the opponent’s mark and the word components FOR LIFE comprising the applied for mark.
[19] Of course, it is the marks in their entirety that must be considered. Nevertheless, ordinarily it is the first portion of a mark that is the most important for the purpose of distinguishing between marks and in the instant case the word component VITALITY may be considered as the dominant first portion of each of the marks in issue. However, when the first or dominant portion of a mark is a common descriptive word, its importance diminishes: see Conde Nast Publications Inc. v. Union Des Editions Modernes (1979) 26 C.P.R.(2d) 183 at 188 (F.C.T.D.);Vancouver Sushiman Ltd. v. Sushiboy Foods Co. (4th) 22 C.P.R. (4th) 107 (TMOB). Accordingly, in the present case there would be a tendency to discount the importance of the word VITALITY in the parties’ marks and by corollary to focus more on their other components. As noted in United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 at 263 (F.C.A.),
While the marks [in issue] must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public's perception of it."
Conclusion
[20] Having regard to the above, and keeping in mind in particular the relatively low inherent distinctiveness of the marks in issue, that small differences may suffice to distinguish between weak marks (see GSW Ltd. V. Great West Steel Industries Ltd. (1975), 22 C.P.R.(2d) 154 (F.C.T.D.)), that the opponent’s mark appears to be known to only a limited extent while the applicant’s mark has acquired a higher degree of distinctiveness, and that the parties’ channels of trade differ, I find that the applicant has met the legal onus on it show that, on a balance of probabilities, there is no reasonable likelihood of confusion between the applied for mark VITALITY FOR LIFE and the opponent’s mark VITALITY & Design at the material date which is the date of decision. The second ground of opposition is therefore rejected.
Section 16(3)(a) Ground of Opposition
[21] The applicant in its counter statement pleads that “Section 16(3)(a) is inapplicable, since the application is based on use.” The applicant is correct that Section 16(1)(a) or 16(2)(a) rather than Section 16(3)(a) should have been pleaded since the application in issue is not based on proposed use in Canada. Once put on notice by the applicant, the opponent made no attempt to correct its error by seeking leave to amend the statement of opposition as permitted by Section 40 of the Trade-marks Regulations. I therefore do not regard the error in pleading as a mere typographical miscue or technical deficiency which may be overlooked. Accordingly the third ground of opposition is rejected as it has no relevance to the facts of this case.
Distinctiveness Ground of Opposition
[21] With respect to the fourth ground of opposition, the legal onus 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 Inc. v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (TMOB). As usual, the legal onus means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant. The material time for considering the circumstances respecting the issue of distinctiveness is as of the filing of the opposition, in this case October 28, 2003: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.).
In deciding the issue of distinctiveness, I am guided by the dicta of Addy J. in Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R.(2d) 44 at 58 (F.C.T.D.):
On the issue of lack of distinctiveness of a mark, although it must be shown that the rival or opposing mark [the opponent’s mark] must be known to some extent at least, it is not necessary to show that it is well known . . . It is sufficient to establish that the other mark [the opponent's mark] has become known sufficiently to negate the distinctiveness of the mark under attack [the applicant's mark].
[22] As noted earlier, the extent to which the opponent’s mark was known in Canada began to decline in 1992. On the other hand, the applicant’s evidence of sales and advertising in connection with its mark VITALITY FOR LIFE indicates that the applied for mark had acquired a fair degree of reputation in Canada as of the material date October 28, 2003. In the circumstances I find that the opponent has not established that its mark was sufficiently known, as of October 28, 2003, to negate the distinctiveness of the applicant's mark for use in association with the wares specified in the subject application. The fourth ground of opposition is therefore rejected.
Disposition
As each of the grounds of opposition has been rejected, the opposition is rejected. This
decision has been made pursuant to a delegation of authority under Section 63(3) of the Trade-
marks Act.
DATED AT VILLE DE GATINEAU, QUEBEC, THIS 14th DAY OF DECEMBER, 2009.
Myer Herzig,
Member,
Trade‑marks Opposition Board