IN THE MATTER OF AN OPPOSITION
by Alberto-Culver Company to application
No. 588,278 for the trade-mark EB5 Design
filed by eb5 Corporation
On July 21, 1987, the applicant, eb5 Corporation, filed an application to register the trade-mark EB5 Design (illustrated below) for "creams and lotions for skin, hair and body" based on use in Canada since April 13, 1983. The application was advertised for opposition purposes on December 21, 1988.
The opponent, Alberto-Culver Company, filed a statement of opposition on April 21, 1989, a copy of which was forwarded to the applicant on May 2, 1989. The opponent was granted leave on July 10, 1992 to amend its statement of opposition pursuant to Rule 42 of the Trade-marks Regulations. The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with five registered trade-marks of the opponent. The most relevant of the opponent's marks is VO5 registered under No. 200,509 for the following wares:
preparations for the hair and body, namely, hair sprays,
hair setting lotions, hair dressings, shampoos, shaving
preparations, permanent wave lotion, hair spray, setting
lotion, creme rinse, dressing and conditioner, concentrated
hair lightener; hair brightener, and conditioner for colored
hair; and personal deodorant.
The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(1) of the Act because, as of the applicant's claimed date of first use, the applied for trade-mark was confusing with each of the opponent's five registered trade-marks previously used in Canada by the opponent. The third ground is that the applied for trade-mark is not distinctive because it is confusing with the opponent's five trade-marks. The fourth ground is that the application does not comply with the provisions of Section 30(b) of the Act because the applicant did not use its mark in Canada in association with "creams and lotions for hair" since April 13, 1983 as claimed.
The applicant filed and served a counter statement on September 5, 1989. The applicant was granted leave to amend its counter statement on December 16, 1992 pursuant to Rule 42.
As its evidence, the opponent filed an affidavit of Gerald S. Hunchak, the President of its former registered user, Alberto-Culver Canada, Inc. The applicant filed an affidavit of its Vice-President, Daniel D. Wendell, and an affidavit of a trade-mark searcher, Gay J. Owens. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
Considering first the opponent's fourth 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 the opposition decision in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and the decision in 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. That burden is lighter respecting the issue of non-compliance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89.
The opponent added the fourth ground of opposition to its statement of opposition in response to the Wendell affidavit filed by the applicant. Paragraph three of the Wendell affidavit reads as follows:
eb5 Corp. has marketed facial cremes [sic] and cleansers and
body lotions in Canada since at least as early as April 13, 1983.
Examples of packaging of eb5 Corp.'s products showing display
of the "eb5" mark are attached at Exhibits 1-3.
The opponent noted that this paragraph failed to refer to any of the hair-related products listed in the applicant's application. The opponent further submitted that a fair inference to make from that omission is that the applicant did not use its applied for trade-mark in Canada for creams and lotions for hair. I agree with the opponent's contention and I consider that this is sufficient to meet the light burden on the opponent respecting those wares, particularly where the opponent amended its statement of opposition to include a ground of non-compliance with Section 30(b) specifically directed only to those wares. Since the applicant
did not evidence its claimed date of first use in respect of the omitted wares, I find that the first ground is successful in respect of "creams and lotions for hair."
The first three grounds all turn on the issue of confusion, the opponent's first ground being its strongest. As previously noted, the most relevant of the opponent's marks is VO5 registered under No. 200,509. Thus, a consideration of the issue of confusion between the applicant's mark and the registered mark VO5 will effectively decide the outcome of the first three grounds.
The material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.). Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
Both marks are comprised of two initials and a numeral. Thus, they are both inherently weak: see the opposition decision in PepsiCo, Inc. v. Daiwa Seiko, Inc. (1983), 80 C.P.R.(2d) 160. The applicant has evidenced some sales of its creams and lotions in Canada for the period 1987 to 1991. Thus, I am able to conclude that its mark has become known to at least some extent. The opponent has evidenced significant sales and advertising of its mark VO5 for many years in association with various hair care products. Although the exhibits to the Hunchak affidavit show that the opponent's mark is invariably used with its house mark
ALBERTO, they also show that the VO5 mark is always dominant. Thus, I am able to conclude that the opponent's mark has become very well known throughout Canada.
The length of time the marks have been in use favors the opponent. As a consequence of my finding respecting the fourth ground of opposition, the applicant's remaining wares are "creams and lotions for skin and body." Those wares are different from the opponent's registered wares which comprise various hair care products and personal deodorant.
However, the wares at issue are somewhat similar in that they all comprise what could be called personal care products. The evidence establishes that the trades of the parties overlap.
As for Section 6(5)(e) of the Act, I consider that there is only a minor degree of resemblance between the marks at issue in any respect. The only common element between the marks is the numeral 5 which is the last and least distinctive component of both marks.
The applicant submitted that the significance of any resemblance between the marks is mitigated by the state of the register evidence introduced by means of the Owens affidavit.
State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that 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.
The Owens affidavit evidences eight registrations for trade-marks for personal care products where the mark includes the numeral 5 or the word FIVE. At the oral hearing, the parties' agents agreed that three of those registrations have now been expunged for failure to renew. Only three of the remaining five registered marks incorporate 5 or FIVE as the last element of the mark. In the absence of evidence of use of the registered marks located by Ms. Owens, I am unable to infer that any of them are currently in use to more than a minimal extent. Thus, I am unable to make any inferences about the possible common use of the numeral 5 or the word FIVE in the marketplace by other traders in personal care products such as those at issue in the present case.
As an additional surrounding circumstance, I have considered the fact that the two marks at issue have been used in the same marketplace for several years and yet there is no evidence of record pointing to incidents of actual confusion having arisen. The wares of both parties have been sold by the same retail drug store chains, namely London Drugs and Shoppers Drug Mart. Given the widespread sales of the opponent's products, it seems almost certain that the parties' wares have, in some instances, been sold in the same retail outlets. However, it is difficult to know the extent of this actual overlap in sales and thus I have not given this additional circumstance great weight.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the low degree of resemblance between the marks at issue, I find that the applicant has satisfied the onus on it to show that its mark is not confusing with the opponent's registered mark. Thus, the first three grounds of opposition are unsuccessful.
In view of the above, I refuse the application in respect of "cream and lotions for hair" and I otherwise reject the opposition. The applicant's statement of wares will therefore read "creams and lotions for skin and body." Authority for such a divided result may be found in Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH (1986), 10 C.P.R.(3d) 482 at 492 (F.C.T.D.).
DATED AT HULL, QUEBEC, THIS 28th DAY OF APRIL, 1995.
David J. Martin,
Member,
Trade Marks Opposition Board.