LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 234
Date of Decision: 2011-11-17
IN THE MATTER OF AN OPPOSITION by Johnson & Johnson to application No. 1,004,750 for the trade-mark DURAGEN in the name of Integra Lifesciences Corporation
[1] On February 10, 1999, Integra Lifesciences Corporation, then known as Integra Lifesciences I, Ltd. (the Applicant), filed an application to register the trade-mark DURAGEN claiming the priority of its United States application No. 75/546,616 filed on September 1, 1998. The Mark has been applied for registration, on the dual basis of proposed use in Canada and use and registration in the United States, in association with “pharmaceutical preparation for use in the treatment of central nervous system disorder” (the Wares).
[2] The application was advertised for opposition purposes in the Trade-marks Journal of May 28, 2003.
[3] Johnson & Johnson (the Opponent) filed a statement of opposition on October 30, 2006. The grounds of opposition allege, in summary, that:
• the application does not conform to the requirements of s. 30(a), (d), (e) and (i) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act);
• the Mark is not registrable pursuant to s. 12(1)(d) of the Act since it is confusing with the Opponent’s trade-mark DURAGESIC of registration No. TMA409,004;
• the Applicant is not the person entitled to registration of the Mark pursuant to s. 16(2)(a), 16(2)(b), 16(3)(a) and 16(3)(b) of the Act; and
• the Mark is not and cannot be distinctive pursuant to s. 2 of the Act.
[4] The Applicant filed a counter statement essentially denying each ground of opposition on June 7, 2007.
[5] The Opponent elected to file no evidence in support of its opposition.
[6] In support of its application, the Applicant filed an affidavit of Carolyn Hewitt, sworn on April 9, 2009, and an affidavit of Lisa Saltzman, sworn on April 2, 2009. Ms. Hewitt is a law clerk employed by the Applicant’s trade-marks agent firm. Ms. Saltzman is Director of the trade-mark searching department with Onscope, a division of Marque d’Or Inc. The Opponent obtained an order for the cross-examination of both affiants, but it did not proceed with the cross-examinations.
[7] Both parties filed written arguments. Only the Applicant was represented at an oral hearing.
[8] The Applicant took the opportunity of the oral hearing to reiterate submissions raised in letters that it had sent to the Registrar during the course of the opposition proceeding. More particularly, the Applicant submitted that the Opponent has repeatedly failed to comply with the provisions of Rule 36 of the Trade-marks Regulations, SOR/96-195 (the Regulations) by not forwarding copies of requests for extension of time while stating in those requests that the Applicant was copied. The agent for the Applicant went as far as alleging that the agent for the Opponent misled the Registrar. Despite the Applicant’s request, I see no reasons to comment on its submissions in my decision. Suffice it to say that the Regulations do not provide the Registrar with any means for enforcing compliance with Rule 36, which has been acknowledged by the Applicant. That being said, I would remark that it is unfortunately not uncommon for parties not to comply with Rule 36 of the Regulations, be it voluntarily or inadvertently, which is clearly not in the interest of the administration of the opposition process.
Onus
[9] The Applicant bears the legal onus of establishing on a balance of probabilities that its application complies with the requirements of the 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. Once this initial onus is satisfied, the Applicant has the burden to prove that the particular grounds of opposition should not prevent registration of the Mark [see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.) and Wrangler Apparel Corp. v. The Timberland Company (2005), 41 C.P.R. (4th) 223 (F.C.)].
Material Dates
[10] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(a) / s. 30 – 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.)];
• s. 38(2)(b) / s. 12(1)(d) – the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)];
• s. 38(2)(c) / s. 16(2) and s. 16(3) – the convention priority filing date of the application; and
• s. 38(2)(d) / non-distinctiveness – the filing date of the statement of opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Analysis of the Grounds of Opposition
[11] I will analyze the grounds of opposition in regard to the evidence of record.
Non-conformity to s. 30 of the Act
[12] I am considering the s. 30 grounds of opposition in their reverse order of pleading.
Non-conformity to s. 30(i) of the Act
[13] I dismiss the ground of opposition because the allegation that the Applicant should have been aware that the Mark was confusing with the Opponent’s trade-mark DURAGESIC does not raise a proper ground of opposition. Section 30(i) of the Act only requires that an applicant declares itself satisfied that it is entitled to use the applied-for mark. Such statement is included in the application for the Mark. Further, the mere knowledge of an opponent’s rights, at the filing date of the application, is not sufficient to succeed under a s. 30(i) ground of opposition. Section 30(i) of the Act can sometimes be the basis of a ground of opposition in specific cases, such as where fraud by the applicant is alleged and established or if specific statutory provisions prevent the registration of the applied-for mark [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) and Canada Post Corporation v. Registrar of Trade-marks (1991), 40 C.P.R. (3d) 221 (F.C.T.D.)].
Non-conformity to s. 30(e) of the Act
[14] The ground of opposition has been pleaded as a two-part ground. The Opponent alleges that “the Applicant, at the time of filing the application, was already using the [Mark] in Canada” and “alternatively or cumulatively”, the Applicant “never intended and does not intend to use the [Mark] in Canada”. The Opponent did not file any evidence in support of the ground of opposition and did not make any submissions relating thereto in its written argument.
[15] I dismiss the first part of the ground of opposition for the Opponent’s failure to meet its evidential burden.
[16] Further, as there are no allegations of facts to support the second part of the ground of opposition, it is dismissed for being insufficiently pleaded. If I am wrong in so finding, then the second part of the ground of opposition should be dismissed for the Opponent’s failure to meet its evidential burden of showing that the Applicant falsely made the statement of intent to use the Mark in Canada [see Home Quarters Warehouse, Inc. v. Home Depôt, U.S.A., Inc. (1997), 76 C.P.R. (3d) 219 (T.M.O.B.); Jacobs Suchard Ltd. v. Trebor Bassett Ltd. (1996), 69 C.P.R. (3d) 569 (T.M.O.B.)].
Non-conformity to s. 30(d) of the Act
[17] The statement of opposition sets out that contrary to s. 30(d), “the Applicant has not used the [Mark] in the United States of America, as alleged, for the wares set out in the application”. In its written argument, the Opponent submits that Exhibits “A” and “D” to the Hewitt affidavit clearly demonstrate that the Mark is used in association with a medical device, i.e. a dural graft matrix, rather than being used in association with a pharmaceutical preparation.
[18] Based on the pleading and the Opponent’s submissions, I consider that the issue arising under the s. 30(d) ground of opposition is not whether the Mark was used in the United States as of February 10, 1999, but rather whether the Mark was used in the United States in association with the Wares as of such a date.
[19] It was found in Lofaro v. Esurance Inc. (2010), 90 C.P.R. (4th) 155 (T.M.O.B.) that it is sufficient for an opponent to make a satisfactory argument to meet its initial burden of proof with respect to a ground of opposition based upon non-conformity to s. 30(d) of the Act.
[20] For a better understanding of the Opponent’s submissions regarding Exhibits “A” and “D”, I find it is useful to reproduce the following excerpts of its written argument [pp. 3-5]:
[…] The Applicant’s website, excerpts of which are reproduced in Exhibit A of the Hewitt affidavit, indicates that the Applicant’s [Mark] is used in association with a duraplasty product, specifically a “collagen matrix for dural closure”, described as an “implant” or “onlay graft” that is “more than a patch” and provides physical separation between the dura and overlying tissues. Images of the product in Exhibit A depict the DURAGEN matrix as a square or rectangular patch of material that is available in various sizes ranging from 1 inch x 1 inch to 4 inches x 5 inches. […]
[…]
Exhibit D to the Hewitt affidavit also contains specimens of use of the [Mark] that were filed by the Applicant in support of its U.S. registration, for example on pages 111 and 114 of Exhibit D. Both of these pages show a picture of a box containing DURAGEN-brand Dural Graft Matrix. It is noted that on the front of the box, there appears the statement: “CAUTION: Federal (U.S.A.) law restrict the device for sale by or on the order of a physician”.
(Emphasis by the Opponent)
[21] While the website pages are introduced into evidence by an employee of the Applicant’s trade-mark agent, in the circumstances of this case, I see no reasons to doubt the reliability of the website’s information regarding the Wares. In addition, even though the website pages were printed on April 9, 2009, I consider that such a fact does not impact the assessment of the ground of opposition at the material date of February 10, 1999. As for the pictures of the box, the Applicant does not debate that they have been filed with the United States Patent and Trademark Office as specimens of use of the Mark in the United States.
[22] I am satisfied that the Opponent’s submissions are sufficient to meet its evidential burden. Thus, the Applicant has the burden to prove, on a balance of probabilities, that this ground of opposition does not prevent registration of the Mark.
[23] At the oral hearing, the Applicant devoted a significant portion of its submissions to refuting the Opponent’s contention that the Mark is associated with a medical device. I do not find it necessary to discuss in detail the Applicant’s submissions. Suffice it to say that I agree with the Applicant that the appearance of the word “device” on the box is not to be considered a deciding factor. I also agree with the Applicant that the website’s information supports a finding that the product associated with the Mark is a pharmaceutical preparation. For instance, there are several mentions that the product is absorbed by the body. In addition, as the Opponent is seemingly arguing that the word “implant” implies a device, I have decided to refer myself to the online version of the Oxford Concise Medical Dictionary and noted that one of the definitions for “implant” is “a drug (such as a subcutaneous hormone implant)”. (My emphasis)
[24] Having regard to the foregoing, I am satisfied that the Applicant has met its evidential burden and therefore the s. 30(d) ground of opposition, as pleaded, is dismissed. I wish to add that even if the Opponent had been able to defeat the basis of registration and use of the Mark in the United States, the application could still proceed on the basis of proposed use, depending on the outcome of the remaining grounds of opposition.
Non-conformity to s. 30(a) of the Act
[25] The pleaded ground of opposition is that the Wares “are insufficiently described and are not set out in ordinary commercial terms”.
[26] It was found in McDonald’s Corp. v. M.A. Comacho-Saldana International Trading Ltd. (1984), 1 C.P.R. (3d) 101 (T.M.O.B.) that it is sufficient for an opponent to make a satisfactory argument to meet its initial burden of proof with respect to a ground of opposition based on s. 30(a) of the Act.
[27] The Opponent submits that the statement of wares fails to sufficiently describe the Wares or set them in ordinary commercial terms because there is no indication in the statement of wares of what the Wares “truly are – i.e. medical devices in the nature of a dural graft matrix”. The Opponent concludes: “The statement “pharmaceutical preparation for use in the treatment of central nervous system disorder” does not describe a dural graft matrix in ordinary commercial terms.” (Emphasis by the Opponent)
[28] I am not satisfied that the Opponent’s argument is sufficient to meet its evidential burden. For one thing, the Opponent is essentially reiterating the submissions it made to support the s. 30(d) ground of opposition. Yet, I have found that the evidence does not support the Opponent’s contention that the Mark is associated with a medical device, rather than with a pharmaceutical preparation. Moreover, with due respect, I find that the Opponent’s argument does not address the issue arising under the ground of opposition, that is whether “pharmaceutical preparation for use in the treatment of central nervous system disorder” is a statement in ordinary commercial terms.
[29] In the event one finds that the Opponent’s submissions are sufficient to satisfy its evidential burden, then I find that the Applicant has satisfied its burden to prove that the application conforms to the requirements of s. 30(a) of the Act. While a decision by an Examiner is not binding on or does not have precedential value for this Board in opposition proceedings, there have been instances where Members of the Board, including myself, have referred to the Wares and Services Manual of the Canadian Intellectual Property Office (CIPO) [see Effigi Inc. v. ZAM Urban Dynamics Inc. (2010), 89 C.P.R. (4th) 461 (T.M.O.B.)]. I note that the Wares and Services Manual requires "pharmaceutical preparations" to be specified in greater detail by either naming the disease; specifying the disease group or type of disease, disorder or condition to be treated; or by indicating the specific type of medication.
[30] Having regard to the foregoing, I dismiss the s. 30(a) ground of opposition.
Registrability pursuant to s. 12(1)(d) of the Act
[31] I have exercised the Registrar's discretion to check the register in order to confirm the existence of registration No. TMA409,004 for the trade-mark DURAGESIC [see Quaker Oats Co. of Canada/Cie Quaker Oats du Canada v. Menu Foods Ltd. (1986), 11 C.P.R. (3d) 410 (T.M.O.B)]. The Opponent's initial burden under s. 12(1)(d) of the Act has been met because the registration is extant. The mark DURAGESIC is registered in association with “pharmaceutical preparation, namely an analgesic administered transdermally via patches adhered to the skin”.
[32] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that 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 or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[33] In applying the test for confusion, I must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time the trade-marks have been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.); Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401 (S.C.C.); and Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 C.P.R. (4th) 361 for a thorough discussion of the general principles that govern the test for confusion].
[34] I note in passing that I am not affording any significance to the fact that the application for the Mark did not encounter an objection based upon the Opponent’s trade-mark [Exhibit “E” to the Hewitt affidavit]. Once again, decisions by the Examination Section of CIPO are not binding and have no precedential value in determining the registrability of a trade-mark in an opposition proceeding [see Procter & Gamble Inc. v. Morlee Corp. (1993), 48 C.P.R. (3d) 377 (T.M.OB)].
The inherent distinctiveness of the trade-marks and the extent to which they have become known
[35] Considering the Wares, I conclude that the prefix “dura” in the Mark infers the “tough fibrous connective tissue sheet that forms the outer protective membrane encasing the brain and the spinal cord” [page 4 of Exhibit “A” to the Hewitt affidavit]. There seems to be no apparent meaning attaching to the suffix “gen”, except for the fact that collagen is used in the manufacture of the product [page 6 of Exhibit “A” to the Hewitt affidavit].
[36] As for the mark DURAGESIC, I find the prefix “dura” suggestive of the word “durable”, i.e. long-lasting. Also, I find the suffix "gesic" suggestive of "analgesic". Hence, I conclude that the Opponent’s mark is suggestive of a long-lasting analgesic.
[37] In the end, since both trade-marks are coined words, I find that each possesses some measure of inherent distinctiveness. However, given the obvious meaning of its suffix “gesic”, I find that the Opponent’s mark has a lesser degree of inherent distinctiveness than the Mark.
[38] A trade-mark may acquire distinctiveness through use or promotion, but neither party has filed evidence directed to the extent of use or promotion of its mark in Canada. The most that I can presume from the mere existence of the Opponent’s registration is that there has been de minimis use of the DURAGESIC mark in Canada [see Entre Computer Centers, Inc. v. Global Upholstery Co. (1992), 40 C.P.R. (3d) 427 (T.M.O.B.)]. De minimis use does not support a conclusion that the mark has become known to any significant extent.
The length of time each trade-mark has been in use
[39] The trade-mark DURAGESIC proceeded to registration further to the filing of a Declaration of Use on December 18, 1992. Even though the Opponent did not file evidence directed to the use of its mark, it submits that the Applicant’s own evidence shows use of the trade-mark DURAGESIC in 1991. More particularly, the Opponent submits that the excerpts of the 2006 Compendium of Pharmaceutical and Specialities and 2009 Compendium of Pharmaceutical and Specialities (collectively the Compendiums) indicate the date of preparation of the DURAGESIC product monograph to be December 20, 1991 [Exhibits “B” and “C” to the Hewitt affidavit].
[40] In written and oral arguments, the Applicant noted that the Compendiums identify Janssen-Ortho with the entries for DURAGESIC, not the Opponent. That being said, the Applicant did not debate that the entries relate to the product associated with the registered mark DURAGESIC. The Applicant submitted in oral argument that those entries by themselves do not evidence use of the mark in Canada, but if one considers that they do, then there is no evidence to show that the use benefited the Opponent.
[41] In the end, I do not consider the s. 6(5)(b) factor to be significant in the present proceeding. Even if one accepts that the mark DURAGESIC has been used in Canada at least since the filing of the Declaration of Use, there is no evidence of continuous use of the mark since then. Thus, I find it unnecessary to rule on the admissibility or value of the entries in the Compendiums as evidence of use of the trade-mark DURAGESIC by the Opponent.
The nature of the wares, services or business; and the nature of the trade
[42] It is the statements of wares in the application and in the registration that must be taken into consideration when assessing the factors set forth at s. 6(5)(c) and (d) of the Act [see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
[43] Based on a plain reading of the statements of wares, the Opponent submits that the category of wares associated with the marks at issue is identical. Further, the Opponent submits that the overlap may extend to a potential similarity in the nature of the drugs themselves. I understand that the Opponent’s submission as to “potential similarity” is based on its contention that “[i]t is common knowledge that analgesics, which are known colloquially as pains killers, act on the central and peripheral nervous system in order to relieve pain”.
[44] The Applicant devoted a significant portion of its oral argument to review the entries for DURAGESIC in the Compendiums and to argue differences between the parties’ pharmaceutical preparations. Without finding that the entries in the Compendiums constitute evidence of use of the mark DURAGESIC, in the circumstances of this case, I see no reasons to doubt the reliability of the information contained therein about the product itself.
[45] As far as I am able to determine from the evidence of record, there appear to be differences between the DURAGEN and DURAGESIC products. However, it remains that both are pharmaceutical preparations and as such I considered them to be related.
[46] Since the parties’ wares are pharmaceutical products, I also consider the parties’ channels of trade to be related. In Ciba-Geigy Canada Ltd. v. Apotex (1992), 44 C.P.R. (3d) 289, the Supreme Court of Canada established that in cases of prescribed medication, the reference clientele for determining the likelihood of confusion consists of the physician, the pharmacist and the patient. Contrary to the position taken by the Applicant at the oral hearing, I am not prepared to conclude from the mere entries in the Compendiums that patients do not purchase or self-administer the DURAGESIC product. However, I accept the position taken by the Applicant that the "end users" of the Wares are surgeons. In other words, the patients do not purchase or self‑administer the DURAGEN product.
The degree of resemblance between the marks in appearance or sound or in the ideas suggested by them
[47] It is trite law that when assessing the degree of resemblance between two marks they are to be looked at in their entirety and not dissected [see British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48 at 56 (Can. Ex. Ct.), affirmed (1946), 5 C.P.R. 71 (S.C.C.)]. Also, this factor “is often likely to have the greatest effect on the confusion analysis” [see Masterpiece, supra]. In his discussion of the approach to be taken in assessing the resemblance between trade-marks, Mr. Justice Rothstein stated in Masterpiece, at paragraph 64: “While the first word may, for the purposes of distinctiveness, be the most important in some cases, I think the preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique.”
[48] In addition to being almost the same length, the parties’ marks share the letters “durage” and so I consider there to be a fair degree of resemblance between the marks in appearance. However, when considered in their entirety, I find that their respective endings, i.e. “gen” versus “gesic” distinguish the marks when sounded. Their different endings also serve to distinguish the marks in the ideas suggested. As previously indicated, the Opponent’s mark is suggestive of a long-lasting analgesic, which is not an idea suggested by the Mark.
Additional circumstance – Drug errors
[49] The Opponent argues the possibility of errors in prescribing, dispensing or administrating drugs as a further surrounding circumstance to support a finding of confusion because the harm to consumers is “far more serious than a simple mistaken belief as to source or association in the context of ordinary consumer goods”. To better understand the Opponent’s submissions, I find it useful to reproduce the following excerpts of its written argument [pp. 17-18]:
When the confusing trade-marks in question are associated with pharmaceutical preparations, the stakes are immeasurably higher, and it is respectfully submitted that the Registrar has a duty to marshal whatever tools he has available to him in the arsenal of trade-mark law, to ensure that the safety of consumers is preserved. While evidence of extensive sales, promotion and advertisement and the like are useful under normal circumstances to the ability to make a determination that two marks are confusing, in a case such as this where the competing products are both drugs which are capable of causing as much harm to patients as they are of healing, the significance of such purely commercial factors pales; the confusion analysis must be far more attuned to basic principles and far more cognizant of the significance of the potential for error that can be caused by drug names simply looking alike and sounding alike, irrespective of other typical market considerations. […].
[…]
[…] It is not the Opponent’s intention to suggest that the Registrar should engage in the type of [look-alike sound-alike] analysis which is within the purview of Health Canada rather than the Trade-Marks Office. However, it is respectfully submitted that the Registrar must be mindful of the fact that, in the case of pharmaceutical preparations of the kind associated with the Applicant’s and the Opponent’s trade-marks and the pharmaceutical industry in general, the granting of a trade-mark registration arguably has a far greater import than in the case of other kinds of consumer goods.[…].
[50] Arguably, mistake and confusion are not mutually exclusive since mistaking one trade-mark for an other implies a degree of resemblance between the marks, which is one of the factors to be considered in assessing confusion in opposition proceedings. Still, this additional circumstance is not directly related to the likelihood of confusion as to the source of the product, which is the issue for decision in this case. I disagree with the Opponent’s suggestion that in opposition proceedings relating to pharmaceuticals, the standard of confusion is different than that applicable to other wares. Section 6(2) of the Act fixed only one standard and the essential question to be determined is expressly related to the source of the product [see SmithKline Beecham Corp. v. Pierre Fabre Médicament (1998), 1998 CarswellNat 3245 (T.M.O.B.); Biofarma, S.A.S. v. NPS Pharmaceuticals Inc. (2008), 2008 CarswellNat 778 (T.M.O.B), aff’d 72 C. P. R. (4th) 391 (F.C.), aff’d 81 C.P.R. (4th) 115 (F.C.A.)].
Additional circumstance – State of the register
[51] Ms. Saltzman introduced into evidence the results of searches of the Canadian trade-marks register, which she conducted on April 2, 2009, for “dura” [Exhibit L S‑1] and “gesic” [Exhibit L S‑2] in international class 5 for pharmaceutical preparations.
[52] State of the register evidence is usually introduced to show the commonality of a mark or a portion of a mark in relation to the register as a whole and is only relevant insofar as one can make inferences from it about the state of the marketplace [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 (T.M.O.B.); Welch Foods Inc. v. Del Monte Corp. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.)]. 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 [see Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)].
[53] The search for “dura” discloses 23 active trade-marks, including the marks at issue and three other marks owned by the Opponent. Once these marks and those that had not proceeded to registration at the date of the search are excluded from the results, there are 14 registrations for marks involving the prefix “dura”. I note that two marks are associated with pharmaceutical preparations for veterinary use.
[54] The search for “gesic” discloses 23 active trade-marks, including DURAGESIC as well as marks that involved the word “analgesic” rather than the element “gesic” as a suffix. Once these marks and those that had not proceeded to registration at the date of the search are excluded from the results, there are 15 registrations for marks involving the suffix “gesic”. Once again, I note that two marks are associated with pharmaceutical preparations for veterinary use. As rightly noted by the Applicant, in some cases, the registered statement of wares contain an explicit reference to the word “analgesic”. Arguably, this is not surprising given the connotation attaching to the element “gesic” for pharmaceutical preparations.
[55] In the end, I am satisfied that the state of the register evidence allows me to infer that trade-marks involving the prefix “dura” or the suffix “gesic” are commonly used by third parties in association with pharmaceutical preparations for human use.
Conclusion on the likelihood of confusion
[56] In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. In the circumstances of this case, I arrive at the conclusion that there is no likelihood of confusion between the Mark and the Opponent’s mark DURAGESIC.
[57] I base my conclusion, inter alia, on the fact that although the mark DURAGESIC is a coined word, it has a suggestive connotation and so, in the absence of evidence of acquired distinctiveness, I find it is not highly distinctive. Also, there is no evidence to conclude that the length of time the mark DURAGESIC has been used is a significant factor. Furthermore, and even though both marks are associated with pharmaceutical preparations, I am satisfied that the evidence establishes that the parties’ pharmaceutical preparations are distinguishable. Finally, considering the marks in their entirety, I find that their differences in sound combined to their differences in ideas suggested outweigh their similarity in appearance.
[58] In view of the above, I conclude that the Applicant has discharged its burden of establishing, on a balance of probabilities, that the Mark is not confusing with the trade-mark DURAGESIC of registration No. TMA409,004. Accordingly, I dismiss the registrability ground of opposition.
Non-entitlement pursuant to s. 16(2) and 16(3) of the Act
[59] The grounds of opposition are based upon confusion with the Opponent’s trade-mark DURAGESIC alleged to have been previously used or made known in Canada by the Opponent and in respect of which an application for registration had been previously filed.
Non-entitlement pursuant to s. 16(2)(a) and 16(3)(a) of the Act
[60] Despite the onus resting on the Applicant, the Opponent has the initial burden of proving that its alleged trade-mark was used or had been made known in Canada prior to the priority filing date of the application for the Mark [see s. 16(2)(a) and 16(3)(a)] and had not been abandoned at the date of advertisement of such application [see s. 16(5) of the Act].
[61] The lack of evidence from the Opponent means that the Opponent has not met its initial burden in respect of the s. 16(2)(a) and s. 16(3)(a) grounds of opposition and therefore both grounds are dismissed.
Non-entitlement pursuant to s. 16(2)(b) and 16(3)(b) of the Act
[62] Since neither of the pleadings refers to a serial number of the alleged previously filed application, the most that can be inferred is that the Opponent relies upon the application for its trade-mark DURAGESIC that matured to registration No. TMA409,004 on March 5, 1993.
[63] Despite the onus resting on the Applicant, the Opponent has the initial burden of proving that its application for trade-mark DURAGESIC was filed prior to the priority filing date of the application for the Mark [s. 16(2)(b) and 16(3)(b)] and was still pending at the date of advertisement of such application [s. 16(4) of the Act].
[64] Since the application for the registration of the trade-mark DURAGESIC had already proceeded to registration at the advertisement date of the Mark, I dismiss both grounds of opposition for having been improperly pleaded [see Governor and Co. of Adventurers of England trading into Hudson’s Bay v. Kmart Canada Ltd. (1997), 76 C.P.R. (3d) 526 (T.M.O.B.)].
Non-Distinctiveness
[65] The ground of opposition has been pleaded as a three-part ground of opposition, namely that: (i) the Mark does not actually distinguish, nor is it adapted to distinguish the Wares from the wares of the Opponent or others; (ii) the Mark is used outside the scope of the licensed use provided for by s. 50 of the Act; and (iii) as a result of an assignment, two or more persons have rights into the use of the Mark and have exercised those rights.
[66] Since the Opponent did not file evidence and did not specify “others”, the most that can be inferred from the first part of the pleading is that it is based on the likelihood of confusion between the Mark and the mark DURAGESIC. However, the lack of evidence from the Opponent means that the Opponent has not met its initial burden to show that its trade-mark DURAGESIC had become known sufficiently as of October 30, 2006 to negate the distinctiveness of the Mark [see Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.); Bojangles’ International, LLC and Bojangles Restaurants, Inc. v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.T.D.)].
[67] Likewise, the Opponent’s failure to furnish evidence means that the Opponent has not met its initial evidentiary burden with respect to the second and third parts of the pleading
[68] Having regard to the foregoing, the ground of opposition is dismissed.
Disposition
[69] Having regard to the foregoing, pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
Céline Tremblay
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office