IN THE MATTER OF AN OPPOSITION by Pharmed Group Holdings, Inc. to application No. 1,179,441 for the trade-mark PHARMED filed by Kimia Niknamian___ ______________________
On June 9, 2003, Kimia Niknamian (the “Applicant”) filed an application to register the trade-mark PHARMED (the “Mark”) based upon proposed use. The statement of wares currently reads:
dietary and nutritional supplements, namely minerals, vitamins, and multivitamin/mineral preparations; herbal supplements, namely, alfalfa, aloe vera, asparagus, bee pollen, bee propolis, bilberry, brewer's yeast, cat's claw, cayenne pepper, chamomile, chickweed, clover (red blossom), club moss extract, dandelion root, devil's claw, dogwood extract, dong quai, Echinacea, feverfew, garlic extract, ginger root, ginseng, gingko biloba, golden seal root, grape seed extract, green tea, hawthorne, horse chestnut, kava kava, olive leaf extract, red yeast rice, rhododendron, royal jelly, saw palmetto, slippery elm, St. John's Wort, valerian, yohimbine, yucca; pharmaceutical preparations, namely, analgesics, antacids, antidepressants, anti-inflammatories, calcium supplements, cough treatment medication.
The application was advertised for opposition purposes in the Trade-marks Journal of July 20, 2005.
On December 20, 2005, Pharmed Group Holdings, Inc. (the “Opponent”) filed a statement of opposition.
The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
In support of its opposition, the Opponent filed the affidavit of Odelin Fernandez. The Applicant did not seek to cross-examine this affiant.
The Applicant elected to not file any evidence in support of its application.
Only the Applicant filed a written argument. An oral hearing was not requested.
Onus
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, R.S.C. 1985, c. T-13 (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 [see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298].
Section 16(3) Grounds of Opposition
The Opponent has pleaded that the Applicant is not the person entitled to register the Mark under two bases:
1) s. 16(3)(a): as of the date of the filing of the application, the Mark was confusing with the Opponent’s trade-marks PHARMED, PHARMED & Design and PHARMED GROUP, which had been previously made known in Canada in association with dietary supplements, herbal supplements, nutritional supplements, vitamins and minerals, vitamin and mineral supplements, pharmaceuticals, nutraceuticals, cotton products for cosmetic use, surgical, medical, dental and veterinary equipment, supplies and instruments, and the distribution and sale of these wares;
2) s. 16(3)(c): as of the date of the filing of the application, the Mark was confusing with the Opponent’s trade-name Pharmed Group Holdings, Inc. which had been previously made known in Canada in association with dietary supplements, herbal supplements, nutritional supplements, vitamins and minerals, vitamin and mineral supplements, pharmaceuticals, nutraceuticals, cotton products for cosmetic use, surgical, medical, dental and veterinary equipment, supplies and instruments, and the distribution and sale of these wares.
In order to meet its initial burden under s. 16(3)(a), the Opponent must establish that its marks had been made known in Canada prior to June 9, 2003, as well as non-abandonment of its marks as of July 20, 2005 (s. 16(5)). Section 5 of the Act sets out when a mark is deemed to have been made known, as follows:
A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services, and
(a) the wares are distributed in association with it in Canada, or
(b) the wares or services are advertised in association with it in
(i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the wares or services, or
(ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares or services,
and it has become well known in Canada by reason of the distribution or advertising.
The Opponent has not established that any of its marks had become known in Canada as of the relevant date. Mr. Fernandez, a vice-president of the Opponent, states that the Opponent “is the largest independent, full-line distributor of medical, surgical and pharmaceutical supplies, and materials management services provider to hospitals, medical clinics, health care institutions and alternate care facilities in the United States, Latin America and the Caribbean.” [paragraph 2] However, it is only the reputation that the Opponent’s marks have in Canada that is relevant under this ground of opposition. Mr. Fernandez’ evidence regarding Canada is limited to the following:
• the Opponent’s marks “have been, and continue to be extensively used worldwide, especially on Pharmed Group’s enabled website www.pharmed.com” [paragraph 7]; this statement does not assist the Opponent because i) it does not clearly relate to the relevant time period; ii) there is no evidence that any Canadians ever accessed the website; and iii) it has not been shown how the marks appeared on the website
• “Pharmed Group has established long-term relationships with vendors and customers. Attached hereto and marked as Exhibit D is a list of Pharmed Group vendors and partners, as well as printouts from the websites of some of these companies, which demonstrate that these companies have a Canadian business location, have dealers selling their products in Canada or offer their products for sale to Canadians via their enabled websites when shipping to Canada.” [paragraph 12]; this does not assist the Opponent because i) none of it relates to the relevant time period; ii) none of the Opponent’s marks appear on the web pages that have been provided; and iii) there is no evidence that any Canadian has ever been exposed to ads displaying the Opponent’s marks or has ever purchased any wares that bear the Opponent’s marks.
I also note that copies of articles about the success of the Opponent (Exhibit E) all appeared in U.S. publications, with no indication of any Canadian circulation, and awards received by the Opponent appear to be from U.S. organizations (and appear to not have been awarded during the relevant time period).
As the Opponent has not met its initial burden, the s. 16(3)(a) ground is dismissed.
In order to meet its initial burden under s. 16(3)(c), the Opponent must establish that its trade-name had been made known in Canada prior to June 9, 2003, and had not been abandoned as of July 20, 2005 (s. 16(5)). The Opponent’s evidence regarding its trade-name is no better than its evidence regarding its trade-marks. Accordingly, the s. 16(3)(c) ground of opposition is also dismissed on the basis that the Opponent has not met its initial burden.
Distinctiveness Ground of Opposition
The Opponent has pleaded that the Mark does not distinguish, nor was it adapted to distinguish, the wares of the Applicant from the wares of others, including those of the Opponent. In order to meet its initial burden under this ground, the Opponent must show that its trade-marks or trade-name had become sufficiently known in Canada as of December 20, 2005 to negate the distinctiveness of the Mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.)]. The Opponent’s evidence does not show this and therefore this ground is dismissed.
Section 30(a) Ground of Opposition
The Opponent has pleaded that the application does not contain a statement in ordinary commercial terms of the specific wares in association with which the Mark is proposed to be used. However, the Opponent has filed neither evidence nor argument in support of this allegation. I am therefore dismissing this ground of opposition on the basis that the Opponent has not met its evidential burden.
Section 30(e) Ground of Opposition
The Opponent has pleaded that the Applicant, by itself or through a licensee, or by itself and through a licensee, did not have a bona fide intention to use the Mark as at the date of filing of the application, nor does it have a bona fide intention to use the Mark in Canada in association with the applied for wares. The material date that applies to this ground of opposition 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].
There is no evidence concerning the Applicant’s intent as of any date. The Opponent has accordingly not met its evidential burden and this ground is dismissed.
Disposition
All of the pleaded grounds of opposition have been dismissed. Therefore, having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 21st DAY OF NOVEMBER 2008.
Jill W. Bradbury
Member
Trade-marks Opposition Board