IN THE MATTER OF AN OPPOSITION
by Estée Lauder Cosmetics Ltd.
to application no. 845,922 for the mark
IN-TU-IT filed by Louise Brandolini
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On May 23, 1997, the applicant, Louise Brandolini, filed an application to register the
trade-mark IN-TU-IT, for the following wares
audio and video recordings, namely pre‑recorded instructional and meditation audio cassettes and pre‑recorded instructional and meditation video cassettes; health care products, namely oil blends for relaxation and massage,
and for the following services:
healing and metaphysical services, namely providing instruction and guidance in body work, breathing and visualization in relation to sexual energy and sexual energy dynamics, cranial sacral therapy, Qi Gong therapy, aromatherapy, astrology and philisophical teaching; sexual energy education; spa services, namely aromatherapy spa services.
The subject application is based on proposed use of the mark in Canada in respect of the above-mentioned wares and use of the mark in Canada since at least as early as 1994 in association with the above-mentioned services.
The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated September 23, 1998 and was opposed by Estée Lauder Cosmetics Ltd. (through its predecessor Aveda Corporation) on April 23, 1999. A copy of the statement of opposition was forwarded to the applicant on May 25, 1999. The applicant responded by filing and serving a counter statement generally denying each of the grounds of opposition. At the oral hearing, both parties were granted leave to amend their pleadings.
The grounds of opposition are pleaded succinctly and are reproduced in full below.
The opponent’s evidence in chief consists of the affidavits of Lesley A. Moradian, Assistant Secretary of the opponent company and Ludmila Spaleny, student at law. The Spaleny affidavit merely serves to introduce into evidence definitions of the words “intuition” and “intuit” found in several standard reference dictionaries. Ms. Spaleny’s evidence shows that the words “intuition” and “intuit” have similar meanings namely, to perceive without reasoning or deduction. The applicant’s evidence in chief consists of the affidavit of the applicant Louise Brandolini dated February 24, 2000. The applicant subsequently requested and was granted leave to file a second affidavit of Louise Brandolini, dated October 30, 2000 as additional evidence pursuant to Section 44(1) of the Trade-marks Regulations: see the Board ruling dated November 7, 2000. Both parties filed a written argument and both were represented at an oral hearing.
Mr. Moradian’s affidavit testimony, which is supported by documentation in the form of exhibits to his affidavit, may be summarized as follows. The opponent company is located in Minneapolis in the United States. The opponent has been a manufacturer, distributor and seller of fragrance, cosmetic, body care, hair care and like products since 1978. Many of its products are based on aromatherapy which uses aroma to promote well-being in body and mind. The opponent has used it mark INTUITION (regn. no. 495,848) in Canada in association with perfume, cologne, body cleansers and body lotions since at least as early as May 1994. The opponent’s mark INTUITION is prominently displayed on containers for the above-mentioned wares and is advertised in product catalogues distributed in Canada. The opponent’s products are sold through retail outlets located in Montreal, Vancouver, Toronto, Ottawa, Victoria and Etobicoke and are supplied to over 150 spas and salons. Retail sales for INTUITION products for the year 1995 amounted to $31,000 rising steadily to $127,000 for the year 1999, representing over 11,000 units of INTUITION products sold in Canada. Paragraph 15 of Mr. Moradian’s affidavit explains the opponent’s concerns regarding the applied for mark IN-TU-IT:
Ms. Brandolini’s affidavit evidence, submitted by the applicant, serves to introduce into evidence various exhibits which, according to the applicant, “will support my application for the trade-mark IN-TU-IT.” The exhibit material itself, and its significance, is not introduced or explained in the main body of Ms. Brandolini’s affidavits but are introduced and explained, to a limited extent, in Exhibit A of the applicant’s affidavit filed as evidence in chief. Exhibit material should of course further elaborate or particularize evidence given in the main body of the affidavit. In the instant case, however, the applicant’s affidavits are essentially lacking a main body and are essentially comprised entirely of exhibit material. Leaving aside the deficiencies in the introduction of the exhibit material, much of the exhibit material itself must be regarded as clearly inadmissible hearsay or questionably inadmissible hearsay or irrelevant to the issues at hand. I am in general agreement with the opponent’s views of the applicant’s evidence as set out at pp 8-9 of the opponent’s written argument:
I would note further that for the most part the applicant’s exhibit material does not demonstrate use of the mark IN-TU-IT per se but in word combinations such as IN-TU-IT STUDIOS or IN-TU-IT SEXENERGY or IN-TU-IT SEXENERGIZE.
With respect to the opponent’s first ground of opposition, the onus or legal burden is on the applicant to show its compliance with the provisions of Section 30(b) of the Act: see Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329‑330 (TMOB), John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponent respecting its allegations of fact in support of that ground. The opponent’s evidential burden is relatively light concerning the issue of non‑compliance with Section 30(b) of the Act and can be met by reference to the applicant’s own evidence: see Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89 (TMOB), Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R.(3d) 216 at 230 (F.C.T.D.).
In the instant case, giving the applicant’s evidence the most favourable reading possible
leads to the conclusion that the applicant engages in the following services under its mark
IN-TU-IT namely,
healing and metaphysical services, namely providing instruction and guidance in body work, breathing and visualization in relation to sexual energy and sexual energy dynamics, sexual energy education
but casts doubt on whether the applicant offers any other services in association with the applied for mark. In view of the foregoing, the first ground of opposition is partially successful. The evidence of record neither confirms nor casts doubt on the applicant’s claim to use of the applied for mark IN-TU-IT since December 31, 1994. Accordingly, that aspect of the first ground of opposition concerning the date of first use of the applied for mark has not been put into issue.
The remaining grounds of opposition turn on the issue of confusion between the applied for mark IN-TU-IT and the opponent’s mark INTUITION used in association with perfume, cologne, body cleansers and body lotions. The material dates to assess the issue of confusion are (i) the date of my decision with respect to the second ground of opposition alleging non-registrability, (ii) the date of filing the subject application (that is, May 23, 1997) with respect to the third ground of opposition alleging that the applicant is not entitled to register the applied for mark for wares, (iii) the date of first use claimed in the subject application (that is, December 31, 1994) with respect to the fourth ground of opposition alleging that the applicant is not entitled to register the applied for mark for services, and (iv) the date of opposition (that is, April 23, 1999) in respect of the final ground of opposition alleging non-distinctiveness of the applied for mark: for a review of case law concerning material dates in opposition proceedings see American Retired Persons v. Canadian Retired Persons (1998), 84 C.P.R.(3d) 198 at 206 ‑ 209 (F.C.T.D.).
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), between the applied for mark IN-TU-IT and the opponent's mark INTUITION. The presence of an 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: see John Labatt Ltd. v. Molson Companies Ltd. (1990) 30 C.P.R.(3d) 293 at 297‑298 (F.C.T.D.). 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).
The applied for mark IN-TU-IT possesses a fair degree of inherent distinctiveness as there is no immediate or obvious connection between the word “intuit” and the wares and services specified in the subject application. Similarly, the opponent’s mark INTUITION possesses a fair degree of inherent distinctiveness. The opponent’s mark INTUITION had acquired some reputation in Canada at all material times mainly through sales of its wares under its mark. The applied for mark IN-TU-IT has not acquired any reputation in relation to wares and only a minimal reputation in relation to some of the applicant’s services, that is, those dealing with sexual energy therapy and education. The length of time that the marks in issue have been in use appears to favour the opponent, but only to a limited extent. The nature of the parties’ wares and services are distinct aside from the wares “health care products, namely oil blends for relaxation and massage” cited in the subject application. In my view, such wares are similar to the opponent’s “body lotions.” The parties’ channels of trade would likely be distinct except for one area of overlap namely, in respect of “oil blends” and “body lotions.” The marks IN-TU-IT and INTUITION resemble each other to a fair degree aurally and in ideas suggested, but to a lesser extent visually.
Having regard to the above, I find that the mark IN-TU-IT, when used in association with the services cited in the subject application or with any of the wares aside from “oil blends,”
is not confusing with the opponent’s mark INTUITION. However, I find that I am at least in a state of doubt whether the applied to mark IN-TU-IT, for use in association with oil blends, is confusing with the opponent’s mark INTUITION used in association with body lotion and related wares. Given that such doubt must be resolved against the applicant, the subject application is refused in respect of the wares “health care products, namely oil blends for relaxation and massage.”
In view of the above, the subject application is refused in respect of the wares
health care products, namely oil blends for relaxation and massage
and is refused in respect of the services
cranial sacral therapy, Qi Gong therapy, aromatherapy, astrology
and philisophical teaching; spa services, namely aromatherapy spa
services.
Otherwise, the opponent’s opposition is rejected. Authority for a divided decision is found in Produits Ménagers Coronet Inc. v. Coronet‑Werke Heinrich Schlerf GmbH (1986), 10 C.P.R. (3d) 482 (F.C.T.D.).
DATED AT HULL, QUEBEC, THIS 7th DAY OF JUNE , 2001.
Myer Herzig,
Member,
Trade‑marks Opposition Board