Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION

by Canadian Medical Association

to application no. 1,021,294

for the trade-mark PHYSICIAN’S CHOICE

filed by Physician’s Choice of Arizona, Inc.

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On July 6, 1999, the applicant Physician’s Choice of Arizona, Inc.  filed an application to register the trade-mark PHYSICIAN’S CHOICE, based on prior use in Canada, in association with the following wares:

(1)   non‑medicated skin care products, namely, peeling solutions, exfoliating and bleaching soaps, hydrating and photo‑protectant lotions, anti‑oxidant moisturizers, bleaching gels, creams and lotions, all for sale exclusively to licensed health‑care professionals for re‑sale to their patients,

(2)   non‑medicated skin care products, namely, facial cleansers, astringents and alphahydroxy‑acid toners, all for sale exclusively to licensed health‑care professionals for re‑sale to their patients,

(3)   non‑medicated skin care preparations, namely, soaps for psoriasis and eczema, all for sale exclusively to licensed health‑care professionals for re‑sale to their patients,

(4)   non‑medicated skin care products, namely, bleaching, anti‑inflammatory, anti‑redness and lubricating creams, all for sale exclusively to licensed health‑care professionals for re‑sale to their patients; and medicated skin care preparations, namely, creams and lotions for acne, wrinkles and skin textures, all for sale exclusively to licensed health‑care professionals for re‑sale to their patients.

The application claims use of the mark since April, 1994 in association with the wares (1); since August, 1994 in association with the wares (2); since January, 1996 in association with the wares (3); and since August 1996 in association with the wares (4). The application disclaims the right to the exclusive use of the word PHYSICIAN’S apart from the mark as a whole.

The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated December 13, 2005 and was opposed by the Canadian Medical Association on February 13, 2001. A copy of the statement of opposition was forwarded by the Registrar to the applicant on February 27, 2001. The applicant responded by filing and serving a counter statement.

The statement of opposition pleads that the opponent is a national association, the members of which are medical doctors. The opponent is also a public authority within the meaning of Section 9(1)(n)(iii) of the Trade-marks Act, and the Registrar gave public notice of the opponent’s official mark PHYSICIAN in September 1999. The statement of opposition further pleads that the word PHYSICIAN is recognized by the public primarily as the professional designation of medical practitioners who are members of the opponent association. The opponent alleges that use of the applied for mark will mislead the public into believing that the applicant’s wares have been endorsed by one or more members of the medical profession. The grounds of opposition may be summarized as follows:

(a), (b)     The opponent could not have been satisfied that it is entitled to use the mark PHYSICIAN’S CHOICE, pursuant to Section 30(i) of the Trade-marks Act, in view of Section 9(1) of the Ontario Medicine Act, S.O. 1991, c.30 which prohibits the use of the designation PHYSICIAN by a person who is not a member of the college of Physicians and Surgeons of Ontario, and in view of the other matters set out in the statement of opposition.

(c.i)         The application does not comply with Section 30(b) of the Trade-marks Act in that the  applicant has not used the term PHYSICIAN’S CHOICE as a trade-mark. Rather, the applicant’s “use” of the term PHYSICIAN’S CHOICE is more consistent with trade-name usage than with trade-mark usage.

(c)           The applied for mark is unregistrable, pursuant to Section 12(1)(b) of the Act, because the applied for mark is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares, or their method of production. That is, the average consumer would assume that the applicant’s wares have been formulated, designed, produced or sold by a qualified medical doctor, which is not the case.     

(d)           The applied for mark is unregistrable, pursuant to Section 12(1)(e) of the Act, because

         (i)   the applied for mark  PHYSICIAN’S CHOICE so nearly resembles the opponent’s                          official mark PHYSICIAN as to be likely to be mistaken for it, contrary to Section                          9(1)(n)(iii),

         (ii), (iii)   since the word PHYSICIAN has become recognized as designating the kind and                     quality of services provided by medical doctors, the applied for mark is likely to                              mislead and is therefore prohibited by Section 10 of the Act,

(e)            the applied for mark is not distinctive of the applicant’s wares in view of the above.

            The opponent’s evidence consists of the affidavit of Dana Sullivan, articling student. Ms. Sullivan’s affidavit serves to introduce into evidence (i) public notice of the opponent’s official mark PHYSICIAN published by the Registrar on September 1, 1999, (ii) dictionary definitions for the words “physician” and “choice,” (iii) the Canadian Medical Association Code of Ethics, (iv) sections of the Ontario Medicine Act, S.O. 1991, c.30, including Section 9.

The applicant’s evidence consists of two affidavits of Margaret M. Ancira, founder and President of the applicant company, and Linda Mah, legal assistant. Ms. Mah’s affidavit provides copies of registrations for the following marks which include the component PHYSICIAN.

Also included in Ms. Mah’s evidence is a copy of application no. 1,010,133 for the mark GEOMETRIA PHYSICIAN covering office management for physicians.

Ms. Ancira’s affidavit dated November 15, 2001, may be summarized as follows. Ms. Ancira is a licensed aesthetician (Arizona) and founded the applicant company in 1991. She works with biochemists to develop skin care products and provides information and training to physicians on the use of such products. She speaks regularly at international conventions in the United States and Canada to promote PHYSICIANS CHOICE products, has appeared on radio and television, and has written articles for industry publications. 

The applicant company provides a full line of skin care products to the plastic surgery and dermatology market under the trade-mark PHYSICIAN’S CHOICE. These products include creams and lotions, peeling solutions, bleaching soaps, and enzyme toners. Each product is specifically formulated to heal damaged skin. The applicant’s products are sold exclusively to physicians for distribution and resale to patients. The applicant’s mark and its trade-names Physician’s Choice and Physician’s Choice of Arizona have been used in Canada since 1994. Attached as Exhibit A to Ms. Ancira’s affidavit are representative samples of packaging showing use of the applied for mark “along with one or more of the Trade Names.”  Also included as exhibit material are informational folders, a newsletter, as well as a product order form  showing the applicant’s trade-names and trade-mark. The applicant promotes its products at numerous industry trade-shows attended by Canadian based customers. Also included as exhibit material are two medical research articles written by Canadian based physicians wherein the applicant’s products have been mentioned as useful in the treatment of skin conditions. Ms. Ancira’s second affidavit, dated June 18, 2003, serves to introduce into evidence further examples of packaging for the applicant’s products sold in Canada.

Both parties submitted a written argument and both were represented at an oral hearing. Two procedural matters were dealt with at the commencement of the hearing. Well prior to the oral hearing, the applicant had requested leave (on June 25, 2003) to amend its application to remove the qualifiers “non-medicated” and “medicated” from the specification of the wares. The applicant’s request was not dealt with prior to the hearing, apparently though inadvertence. At the oral hearing I refused leave because the amendment would broaden the scope of the wares: see Section 32(e) of the Trade-mark Regulations. Also well prior to the oral hearing, the opponent had requested leave (on October 23, 2003) to substitute a corrected page 3 of the statement of opposition. The opponent’s request was not dealt with prior to the hearing, apparently though inadvertence.  I granted the request at the oral hearing because the file record indicated that the request was justified and there was no element of surprise or prejudice to a diligent applicant. 

With respect to the grounds of opposition denoted by (a) and (b) above, the opponent has not provided any jurisprudence on the interpretation or application of Section 9(1) of the Ontario Medicine Act, shown below:

9. (1) No person other than a member shall use the titles "osteopath", "physician" or "surgeon", a variation or abbreviation or an equivalent in another language.

“Member,” above,  means a member of the College of Physicians and Surgeons of Ontario. Section 9(1), above, appears to be a prohibition against persons holding themselves out as qualified medical professionals by adopting certain titles. It is not clear to me that Section 9(1), above, has any application in the instant case where the term PHYSICIAN is used in the possessive form as a component of a trade-mark for the purpose of identifying the source of wares.  In any event, the opponent has not pleaded that the applicant was aware of the facts on which the opponent relies. The ground of opposition relying on Section 9(1) of the Ontario Medicine Act is therefore rejected: see Canadian Medical Assn. v. Enzymatic Therapy, Inc. (2002) 24 C.P.R. (4^th) 552 at 557 (TMOB). The additional ground raised under Section 30(i) of the Trade-marks Act does not stand independently but is contingent on the success of one or more or the other grounds of opposition. 

With respect to the ground of opposition denoted by (c.i) above, Rouleau J., in Road Runner Trailer Mfg. v. Road Runner Trailer Co. (1984) 1 C.P.R.(3d) 443 (F.C.T.D.), considered whether a term that is part of a corporate name can also function as a trade-mark, at pp. 448 - 449:

When a mark is part of a corporate name it does not constitute a bar. One must be reluctant in maintaining such a mark but there are circumstances when it can be sustained.

. . . . .

The U.S. courts indicate that they must be satisfied that the trade mark used in conjunction with the trade name is sufficient to identify and distinguish the product; that it is attached to the goods; that, though an address of the manufacturer is included in the label, it does not merely identify the manufacturer's address, but predominantly sets out and distinguishes the mark; that a corporate name, when also used as a trade mark, should be decided on the circumstances of each particular case; that the presumption, that a company name is a trade name rather than a trade mark, is rebuttable.

In the instant case, the product packaging prominently displays the mark PHAZE & Design together with one or more butterfly designs, as shown below.

The applied for mark PHYSICIAN’S CHOICE also appears on the product packaging but inconspicuously in diminutive lettering, either at the front bottom (as in the above illustration) or to the side or at the back of the container. Wherever on the product packaging the term PHYSICIAN’S CHOICE appears, it is invariably accompanied by the trade-mark symbol TM in superscript and followed by a mailing address. The font size of the term PHYSICIAN’S CHOICE is sometimes, but not always, larger than the mailing address. As noted by the opponent in its written argument, the display of the symbol TM adjacent to the term PHYSICIAN’S CHOICE cannot, by itself, operate to transform trade-name use into trade-mark use. In my view the term PHYSICIAN’S CHOICE cannot be said to identify or distinguish the product. Rather, the term operates to alert the consumer of the manufacturer’s mailing address. Were it not for the presence of the TM symbol, then there would be no doubt whatsoever that the term PHYSICIAN’S CHOICE would be perceived as a trade-name. I agree with the opponent that the presence of the trade-mark symbol is not in this case sufficient to establish that the term PHYSICIAN’S CHOICE was used as a trade-mark. I am of course aware that secondary marks may be featured on product packaging together with primary marks. However, in the instant case, I find that the applicant has not established use of the term PHYSICIAN’S CHOICE even as a secondary mark. Accordingly, the second ground of opposition is successful.

With respect to the ground of opposition denoted by (c) above, based on Section 12(1)(b) of the Trade-marks Act, the opponent relies on Canadian Medical Assn. v. Enzymatic Therapy, Inc. above. The aforementioned case concerned an application for the trade-mark DOCTOR’S CHOICE based on proposed use in Canada in association with nutritional supplements. The Board reasoned as follows, at pp. 558 - 559:

. . . I believe that I can take judicial notice that the primary public perception of the meaning of DOCTOR, as applied to nutritional products, namely vitamin, mineral and herbal supplements, would be that of a doctor of medicine.

. . . . .

I conclude that the applicant's mark is clearly descriptive or deceptively misdescriptive of the character and quality of the applicant's wares. However, the opponent did not plead that the trade-mark is clearly descriptive but rather that the mark is deceptively misdescriptive. The trade-mark is of course only deceptively misdescriptive if an ordinary purchaser of the applicant's wares is likely to be misled by the trade-mark DOCTOR'S CHOICE into thinking that the applicant's wares are the choice of a doctor, when in fact one or more doctors do not prefer the applicant's wares. It would have been a simple matter for the applicant to evidence that one or more doctors had approved its wares if this was in fact true. In the absence of such evidence, I am concerned that use of the mark may mislead ordinary consumers. I therefore conclude that the trade-mark is deceptively misdescriptive of the applicant's nutritional products as the applicant has not satisfied me on a balance of probabilities that the typical purchaser of the applicant's DOCTOR'S CHOICE wares would respond to the trade-mark as a fanciful name, mere puffery, or as merely indicative of source, as opposed to as deceptively misdescribing the wares as being favoured by the medical profession. The s. 12(1)(b) ground of opposition therefore succeeds.

For the purposes of the instant case, I take the word “physician” to be synonymous with the word “doctor.” As in the Enzymatic case, above, I find that the primary public perception of the meaning of PHYSICIAN, as applied to skin care products, to be that of a doctor of medicine. The medical research articles submitted as part of  the applicant’s evidence do not endorse the applicant’s wares as a superior product “of choice” but merely reports on products that achieved certain healing results. I agree with the reasoning in the Enzymatic case, above, and I find that the public would not respond to the applied for mark PHYSICIAN’S CHOICE as mere puffery or indicative of source, but as being an endorsement by the medical profession. It follows that the applied for mark is contrary to Section 12(1)(b) as deceptively misdescriptive of the applicant's skin care products (at the material date July 6, 1999: see Zorti Investments Inc. v. Party City Corp. 36 C.P.R. (4th) 90 (TMOB)).

With respect to the ground of opposition denoted by d(i) above, the Board in Enzymatic, above, considered whether the applied for mark DOCTOR’S CHOICE contravened Section 9(1)(n)(iii) of the Trade-marks Act in view of the opponent’s official mark DOCTOR, at p. 62:

The question therefore is whether DOCTOR'S CHOICE so nearly resembles DOCTOR so as to be likely to be mistaken for DOCTOR. Based on first impression and imperfect recollection, I conclude that the degree of resemblance between DOCTOR'S CHOICE and DOCTOR in appearance, sound and idea suggested is sufficient to result in DOCTOR'S CHOICE being likely to be mistaken for DOCTOR. It is noted that "the state of the register is of no relevance to the issue as to whether the applicant's trade mark consists of or so nearly resembles the opponent's official mark as to be likely to be mistaken for it" (Canadian Olympic Assn. v. IMI Norgren Enots Ltd. (1989), 23 C.P.R. (3d) 389 (T.M.O.B.) at p. 392). Accordingly, the s. 12(1) (e) ground of opposition also succeeds.

Of course, in the instant case the opponent relies on its official mark PHYSICIAN rather than DOCTOR but otherwise the fact situation is entirely analogous to the Enzymatic case, above. Following the principle of stare decisis, or alternatively the principle of comity of decision making (rather than my own inclination), I find that the opponent succeeds on the ground of opposition denoted by d(i) above.

As the opponent has succeeded on three different grounds of opposition, it is not necessary for me to consider the remaining grounds. The subject application is refused.

DATED AT GATINEAU, QUEBEC, THIS 16th DAY OF JUNE, 2005.

Myer Herzig,

Member,

Trade‑marks Opposition Board