IN THE MATTER OF AN OPPOSITION by Aloette Cosmetics, Inc. to application No. 1,048,230 for the trade-mark ALOEVITE
filed by Medique Cosmetics Inc. (now in the name of_Medique Skincare Ltd.) ___
On February 28, 2000, Medique Cosmetics Inc. filed an application to register the trade-mark ALOEVITE (the “Mark”) based on use of the Mark in Canada in association with facial moisturizer since February 1998. In 2005, Medique Skincare Ltd. was recorded as the owner of the application, pursuant to an assignment. Medique Cosmetics Inc. and Medique Skincare Ltd. are collectively hereinafter referred to as the “Applicant”.
The application was advertised for opposition purposes in the Trade-marks Journal of July 25, 2001. On December 27, 2001, Aloette Cosmetics, Inc. (the “Opponent”) filed a statement of opposition against the application. The Applicant filed and served a counter statement.
As rule 41 evidence, the Opponent filed certified copies of its Canadian trade-mark registrations Nos. TMA291,231 and TMA493,107 for the trade-marks ALOETTE and ALOESPA, respectively.
As rule 42 evidence, the Applicant filed the affidavits of Nancy Hamilton and Sylvia Martin. Ms. Hamilton was the Applicant’s President between August 11, 1995 and December 31, 1999. Dr. Martin is the Applicant’s Secretary/Treasurer. The content of each affidavit is substantially the same.
The Opponent obtained an order for the cross-examination of the Applicant’s affiants but did not proceed with any cross-examinations.
Only the Applicant filed a written argument but both parties were represented at an oral hearing.
Grounds of Opposition
The grounds of opposition are summarized below:
1. the Mark is not registrable in view of s. 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13, (the “Act”) because it is confusing with the trade-marks registered by the Opponent under Nos. TMA291,231 and TMA493,107;
2. contrary to s. 16(1)(c) of the Act, the Mark is confusing with the Opponent’s trade or corporate name Aloette Cosmetics or Aloette Cosmetics, Inc. which have been used in Canada in association with cosmetics, body and personal care products since at least as early as October of 1979;
3. the Mark is not and is not capable of being distinctive of the Applicant’s wares in view of the above use of confusingly similar marks and names;
4. the Applicant has not used the Mark since the date of first use alleged or at all in Canada contrary to s. 30(b) of the Act.
Onus
Although the Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act, there is an initial 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, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)]
Material Dates
The material dates with respect to the grounds of opposition are as follows: 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, 37 C.P.R. (3d) 413 (F.C.A.)]; s. 16(1)(c) – the Applicant’s date of first use; non-distinctiveness - the date of filing of the opposition [see Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.) at 324]; s. 30 - the date of filing of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469 at 475].
Dismissal of Grounds 2 and 3
Grounds 2 and 3 are dismissed because the Opponent has failed to satisfy its evidential burden. There is no evidence of the Opponent having previously used either its marks or names. Although the Opponent’s registrations were based upon use, the mere filing of a certified copy of a registration will not support an opponent's evidential burden with respect to grounds of opposition based on allegations of non-entitlement or non-distinctiveness [see Entre Computer Centers, Inc. v. Global Upholstery Co. (1991), 40 C.P.R. (3d) 427 (T.M.O.B.)].
Ground 4
The Opponent’s agent focused his submissions on this ground. In particular, he submitted that 1) the evidence only shows token sales as of the claimed date of first use and 2) the evidence does not show use of the Mark as of any date.
The burden on each party with respect to a s. 30(b) ground of opposition was explained as follows in Ivy Lea Shirt Co. v. Muskoka Fine Watercraft and Supply Co. (1999), 2 C.P.R. (4th) 562 (T.M.O.B.) at 565-6, affirmed 11 C.P.R. (4th) 489:
While the legal burden is upon the applicant to show that its application complies with Section 30 of the Trade-marks Act, there is an initial evidential burden on the opponent to establish the facts relied upon by it in support of its Section 30 ground (see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 (T.M.O.B.) at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.)). However, the evidential burden on the opponent respecting the issue of the applicant's non-compliance with Subsection 30(b) of the Act is a light one (see Tune Masters v. Mr. P's Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.H.O.) at p. 89). Further, the opponent may rely upon the applicant's affidavit evidence to meet its evidential burden in relation to this ground. In such a case, however, the opponent must show that the applicant's evidence is "clearly" inconsistent with the applicant's claims set forth in its application.
In addition, s. 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed. [Labatt Brewing Co. v. Benson & Hedges (Canada) Ltd. (1996), 67 C.P.R. (3d) 258 (F.C.T.D.) at 262]
1) sales as of the claimed date of first use
The Applicant’s evidence is that the Mark was first used “as early as January or, at the latest, February of 1998 by selling it in retail sales from our test centre and then in wholesale sales commencing April 23, 1998.” “The first products sold under the brand ALOEVITE were 15 ml travel containers which were sold to retail customers from Medique Cosmetic’s test centre at $1.50 per container … The 15 ml containers were affixed with a label bearing the word ALOEVITE. In addition, a typed printed page bearing the trade-mark ALOEVITE was enclosed with the travel-size container… Once it was determined in February 1998 that the retail sales were a success and that marketing of wholesale sales should also commence, professional labels containing the ALOEVITE trade-mark for 60 ml. containers were completed [and] wholesale sales of the products commenced on April 23, 1998.”
The Opponent’s position is that test sales are not sales in the ordinary course of trade, especially when the labels used are of a non-permanent nature. However, I am not prepared to find that the use evidenced as of the claimed date of first use was not use in the normal course of trade for the following reasons. The Applicant here has provided evidence that suggests that its ordinary course of trade includes having face creams manufactured, which it sells first by retail at its test centre and then by wholesale. The Opponent had the opportunity to cross-examine the Applicant’s affiants if it wished to demonstrate that this was not in fact the Applicant’s ordinary course of trade. Moreover, it seems quite understandable that a party would not invest in professional-quality labeling until it had assured itself of the marketability of a new product through test marketing. In addition, these initial test sales do not appear to be token sales given that there is evidence that the sales evolved into full-fledge marketing through wholesale sales.
I find that the Applicant’s evidence is not clearly inconsistent with its claim to the extent that I am satisfied that the test market sales referred to in the affidavits would qualify as the commencement of use in the ordinary course of trade, given the continuance into commercial wholesale sales. As stated by the Applicant’s affiants, “Medique Cosmetics has continuously and without interruption sold products under the trade-mark ALOEVITE to customers in Canada since at least January 1998 to the present date [of May 28, 2002].”
2) evidence of use of the Mark
The Opponent’s second argument pursuant to s. 30(b) is that the Mark which is the subject of this application is not the mark that was used by the Applicant at any time, including as of its claimed date of first use.
The Applicant’s evidence shows the following usages.
Labels affixed to the 15 ml. travel size containers:
Ingredient page enclosed with the 15 ml. travel containers:
The Applicant has not provided any samples of the professional labels that it began using in April 1998.
The key question is whether the in house labels produced for the test marketing are clearly inconsistent with the claim of use of the Mark in accordance with s. 4. The Opponent’s position is that they are because of the placement of MEDIQUE in front of ALOEVITE. I agree with the Opponent. The labels used for test marketing would most likely be interpreted as being use of the trade-mark MEDIQUE ALOEVITE, not ALOEVITE simpliciter. Alternatively, the enclosed ingredient page suggests that the trade-mark is the four words MEDIQUE ALOEVITE FACE CREAM, partly because TM is placed after these words in the heading and partly because these four words are equally highlighted in the body of the text. Thus the documentary evidence is clearly inconsistent with the claim that ALOEVITE simpliciter was used as a trade-mark since February 1998. The fourth ground of opposition is therefore successful on this basis.
Analysis of Likelihood of Confusion Pursuant to Ground 1
I have already held that the application should be refused but I will nevertheless discuss the remaining ground.
The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set forth in s. 6(2) of the Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act. Those factors specifically set out in s. 6(5) are: the inherent distinctiveness of the trade-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; and the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. The weight to be given to each relevant factor may vary, depending on the circumstances. [see Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)]
The Applicant’s Mark has a degree of inherent distinctiveness, but it is not inherently strong because it suggests that the products contain “aloe” and will work “quickly”.
The Opponent’s ALOESPA mark has a degree of inherent distinctiveness, but it is not inherently strong as it suggests that the products contain “aloe” and are of a nature/quality as those used in a “spa”.
The Opponent’s ALOETTE mark is inherently distinctive. Although some Canadians might interpret it as suggesting that the products contain “aloe”, others might associate it with a “sky lark” (“alouette”), especially when sounded.
There is no evidence from the Opponent that would enable me to conclude that either of its marks has acquired any distinctiveness. Although the Applicant has evidenced some use of its Mark, I can at best conclude that its Mark has acquired only some distinctiveness.
According to the Opponent’s registrations, the Opponent’s marks have been used much longer in Canada than has the Applicant’s Mark.
Both parties’ wares are of the same general class and their channels of trade presumably would overlap.
Although the first component of a mark is often considered more important for the purpose of distinction, when a word is a common, descriptive or suggestive word, the significance of the first component decreases [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Phantom Industries Inc. v. Sara Lee Corp. (2000), 8 C.P.R. (4th) 109 (T.M.O.B.)]. Here the first portion of the mark that the Applicant seeks to register is identical to the first portion of the Opponent’s marks but it is the word “aloe” and I can take judicial notice that the word “aloe” is suggestive of an ingredient used in cosmetics and skin care. [Merriam Webster Online Dictionary: aloe vera – an aloe whose leaves furnish an emollient extract used especially in cosmetics and skin care]
Aurally, the resemblance among the marks is not great, any resemblance being attributed solely to their common use of the descriptive prefix “aloe”.
The ideas suggested by each mark are different, as set out above under my discussion of inherent distinctiveness.
I note that there is no evidence of the state of the register or of the marketplace, directed to the adoption of “aloe” in other parties’ marks.
Having considered all of the surrounding circumstances, I conclude that on a balance of probabilities there is not a reasonable likelihood of confusion between the Applicant’s Mark and either of the Opponent’s marks, as of today’s date. The most crucial or dominant factor in determining the issue of confusion is the degree of resemblance between the trade-marks and it is my view that the differences between the marks at issue here are sufficient to make confusion unlikely. [see Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145 (F.C.T.D.) at 149, affirmed 60 C.P.R. (2d) 70]
The word “aloe” is a difficult one for any party to monopolize in the field of cosmetics and consumers are likely to distinguish one cosmetic product associated with the word “aloe” from another cosmetic product associated with the word “aloe” by reference to other indicia or words in the trade-mark.
For the foregoing reasons, the registrability ground of opposition fails.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, pursuant to s. 38(8) I refuse the application based solely on the s. 30(b) ground of opposition.
DATED AT TORONTO, ONTARIO, THIS 26th DAY OF APRIL 2006.
Jill W. Bradbury
Member
Trade-marks Opposition Board