IN THE MATTER OF AN OPPOSITION by Jurak Holdings Ltd. to Application No. 1,004,414 for the trade-mark KARL JURAK 1904-1993 filed by Matol Biotech Laboratories Ltd. ____________________________________
I The Proceedings
On February 5, 1999 Matol Biotech Laboratories Ltd. (the “Applicant”) filed an application to register the trade-mark KARL JURAK 1904-1993 (the “Mark”). The Applicant filed a request to revise the list of wares and services detailed in the original application and the Registrar accepted on May 4, 2004 such revised application. It now covers minerals and vitamins preparations for therapeutical uses (the “Wares”). The application is based on use in Canada since October 31, 1994 and was advertised in the Trade-marks Journal of August 28, 2002.
Jurak Holdings Ltd. (the “Opponent”) filed a statement of opposition on January 28, 2003, which the Registrar forwarded to the Applicant on February 25, 2003. The Applicant filed a counter statement on February 27, 2003 denying each and every ground of opposition.
The Opponent filed the affidavits of Anthony Carl Jurak, Arlene E. Siderius and Glenn A. Berg while the Applicant filed the affidavits of Jennifer Perras and J.F. Robert Bolduc. By consent of the parties and with the Registrar’s permission the transcript of the cross-examination of Mr. Anthony Carl Jurak held in a related opposition proceeding, namely application 1004415, was produced in the present matter. The Registrar also issued on June 30, 2004 an order for the cross-examination of Mr. Bolduc. However there is no trace in the file of the transcript of such cross-examination. Either the cross-examination of Mr. Bolduc never took place or the transcript was not filed into the record.
Both parties filed written argument but no oral hearing was held. The Registrar received the Applicant’s written argument on July 19, 2005 without any covering letter. This fact created some confusion in the mind of the Opponent as it contends that it was not filed within the deadline, probably due to the absence of a covering letter that would have confirmed its filing.
II The related Proceedings
The Applicant also filed applications to register the trade-marks Karl Jurak 1904-1993 & Design, application number 863,443, KARL JURAK, application number 1,004,415 and JURAK, application 1,000,611. My colleague Céline Tremblay in the latter file rendered on March 3, 2006 a decision (reported as Jurak Holdings Ltd. v. Matol Biotech Laboratories Ltd. (2006), 50 C.P.R. (4th) 337) rejecting the Opponent’s opposition. Some of the affidavits produced in the present file appear to have been filed as reply evidence in application 1,000,611. Without going into the details of such decision suffice to quote at this stage an extract of her decision on the issue of the admissibility of such reply evidence:
For all intent and purposes, I note that even if these affidavits were to be considered as evidence under Rule 43, I would at best accept to consider the content directly relating to Karl Jurak because it is one of the individuals named in the Applicant’s letter (Exhibit RB-1). I would disregard any other evidence for not being strictly confined to matter in reply to the Applicant’s evidence. According to my analysis of these affidavits, which follows, I would not afford any weight to the evidence that I would accept under Rule 43. Thus, even if I have erred in accepting the affidavits in the present opposition or if I have erred in refusing them as evidence under Rule 43, the overall outcome of the present case would be the same. I should add that any of my comments on the affidavits are made in the context of the present opposition, and not in the context of the opposition to Application No. 1,004,415. (My underlines)
III The grounds of opposition
The statement of opposition raises the following issues:
1) The application does not comply with the requirements of s. 30(i) of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”) in that the Applicant could not have been satisfied that it was entitled to use the Mark as it had knowledge that Karl Jurak is primarily merely the name of a famous individual who died within the preceding thirty years. In fact the numbers that follow the name Karl Jurak in the Mark represent respectively the year of Karl Jurak’s birth (1904) and the year of his death (1993). Therefore the Mark is not registrable and incapable of functioning as a trade-mark;
2) The application does not comply with the requirements of s. 30(a) of the Act in that it does not contain a statement in ordinary commercial terms of the Wares;
3) The application does not comply with the requirements of s. 30(b) of the Act as the Applicant has not used the Mark in Canada since October 31, 1994 in association with the Wares;
4) The Mark is not registrable pursuant to s. 12(1)(a) because it is primarily merely a surname of a famous individual who has died within the preceding thirty years- along with the years of that famous individual’s life-and is therefore not registrable. Furthermore, although there may be less than 25 entries for the name Karl Jurak in Canadian telephone directories, evidence will show that the name is that of a famous individual. Accordingly, although there may be less than 25 entries for the name in Canadian telephone directories the application is not saved by he practice Notice dated August 16, 2000 which the examiner may heave relied on this matter;
5) The Mark is not distinctive in that it does not distinguish and is not adapted to distinguish the Applicant’s wares and services from the wares and services of others since it is primarily merely the name of a famous individual who has died within the preceding thirty years - along with the years of that famous individual’s life - and is therefore not registrable and is incapable of functioning as a trade-mark. Furthermore, although there may be less than 25 entries for the name Karl Jurak in Canadian telephone directories, evidence will show that the name is that of a famous individual. Accordingly, although there may be less than 25 entries for the name in Canadian telephone directories the application is not saved by he practice Notice dated August 16, 2000 which the examiner may heave relied on this matter.
IV Discussion of the issues raised by the Opponent
The legal burden is upon the Applicant to show that its application complies with the provisions of the Act, but there is however an initial evidential onus 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. Once this initial onus is met, the Applicant still has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company, [2005] F.C. 722].
I have reviewed the evidence filed by both parties, some of which will be described in more detail hereinafter, and none of it support the contention that the Wares are not described in ordinary commercial terms. As a matter of fact the Opponent did not address this issue in its written argument. The Opponent has not met its initial onus. Consequently the second ground of opposition described above is dismissed.
The relevant dates for the analysis of the remaining grounds of opposition are:
➢ Compliance to the requirements enumerated under s. 30(b) and (i) of the Act: the filing date of the application (February 5, 1999); [See John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469]
➢ Registrability of the Mark under s. 12(1)(a) of the Act: also the filing date of the application; [See Calvin Klein Trademark Trust v. Wertex Hosiery Inc. (2005), 41 C.P.R. (4th) 552]
➢ Distinctiveness of the Mark: the filing date of the statement of opposition is generally accepted as the relevant date (January 28, 2003). [See Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)]
i) Compliance to the requirements of s. 30(b) of the Act
The Opponent has an evidential onus but it has been characterized as a light one. Moreover the Opponent can rely on the evidence filed by the Applicant itself. However in the latter case the Applicant’s evidence must raise serious doubts on the accuracy of the statements made by the Applicant in its application. [See Tune Masters v. Mr. P’s Mastertune Ignition Services Ltd. (1986) 10 C.P.R. (3d) 84 (T.M.O.B.), Labatt Brewing Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.) and Williams Telecommunications Corp. v. William Tell Ltd., (1999) 4 C.P.R. (4th) 107 (T.M.O.B)].
I shall summarize hereinafter the relevant evidence on this issue.
Mr. Anthony Carl Jurak is the Opponent’s president and C.E.O. of Jurak Corporation World Wide Inc. He was a co-founder of Matol Botanical International Ltd (“Matol Botanical”) with Mr. Bolduc. He is the son of the late Dr. Karl Jurak who died in 1993.
He filed as Exhibits GG-1 to GG-6 to his affidavit photographs of the Applicant’s products bearing the trade-mark MATOL. He did explain in paragraph 54 of his affidavit that while involved with Matol Botanical between 1984 and 1997 he was responsible for the production of its products. Each one of them bore an expiration date marked on the product. It coincides with a two-year period after its production. He also states that Exhibit GG-1 is representative of the products manufactured while he was still involved with Matol Botanical. According to its expiration date it would have been manufactured on or about August 29, 1996 and it does not bear the Mark or any reference to Karl Jurak or Dr. Karl Jurak. However Exhibit GG-2 does bear the Mark and would have been manufactured on or about June 5, 1997 if we apply Mr. Jurak’s theory. The Mark also appears on Exhibit GG-6, which would have been manufactured on or about July 4, 2002.
Mr. Anthony Carl Jurak alleges in paragraph 56 of his affidavit that Matol Botanical only referred to his father in 1994 on the products sold in association with the trade-mark MATOL. It was a special packaging that was used up by the end of that year. Exhibit GG-2 contradicts such statement. Moreover Mr. Bolduc in his affidavit has produced invoices going back to 1995 (Exhibit RB-1 and paragraph 7 of his affidavit), as he was unable to track down invoices for the year 1994 (paragraph 8 of his affidavit), evidencing the sale of products bearing the trade-mark MATOL. Mr. Bolduc filed as Exhibit RB-2 a representative sample of the bottle bearing the trade-mark MATOL (paragraph 9 of his affidavit) on which also appears the Mark. The Opponent argues that the affiant failed to state that the Applicant continuously used such sample since October 1994. I do not consider this omission as raising a serious doubt such that the Opponent’s initial onus would be met. Paragraphs 7 to 9 to Mr. Bolduc’s affidavit must be read as a whole. Moreover, Mr. Jurak admitted in his affidavit that reference was made to his father in 1994 on the products sold by Matol Botanical under the trade-mark MATOL. Therefore I dismiss the third ground of opposition.
ii) Registrability of the Mark
As pointed out by the Applicant in its written argument the remaining grounds of opposition turn on the issue of whether the Mark is a word primarily merely the name or surname of an individual who has died in the preceding thirty years. The bulk of the evidence filed relates to this issue. There is no doubt that there was an individual by the name of Karl Jurak who died in 1993. Reference was made to the Practice Notice of August 16, 2000 entitled “Section 12(1)(a) of the Act- Name or Surname” that provides some guidelines with respect to the interpretation of s. 12(1)(a). Such guidelines are applicable at the examination stage of the application. Moreover they are not binding on the Registrar at the decision stage of an opposition.
The leading cases on the issue of non-registrability of a trade-mark consisting of primarily merely the name or surname of an individual who is living or has died in the preceding thirty years are Canada (Registrar of Trade-marks) v. Coles Book Stores Limited [1974] S.C.R. 438, Gerhard Horn Investments Ltd. v. Registrar of Trade-marks (1983), 73 C.P.R. (2d) 23 and Standard Oil Company v. The Registrar of Trade-marks, (1968) 2 Ex. C. R. 523. As set out in those cases the test under s. 12(1) (a) is two fold:
1) The first and foremost condition is whether the Mark is the name or surname of a living individual or an individual who has recently died;
2) If the answer to the first question is affirmative, then the Registrar must determine if in the mind of the average Canadian consumer the Mark is “primarily merely” a name or surname rather than something else.
In the cases Molson Cos. v. John Labatt Ltd. 58 C.P.R. (2d) 157, Gould Inc. v. Gould Fasteners Ltd. 85 C.P.R. (3d) 549 and Baron Philippe de Rothschild SA v. Hiltebrandt 22 C.P.R. (3d) 411 it has been decided that, for the purposes of s. 12(1)(a) of the Act, it is the Mark as a whole that must be looked at and not only the portion of the trade-mark that could be considered as a name or surname of an individual.
In the present case the Mark is not solely the name of an individual. There is a numerical portion. Therefore, as a whole, the Mark is not the name or surname of an individual who is living or has died within the preceding thirty years. There is no need to look at the second portion of the test described above. Consequently the fourth ground of opposition is dismissed.
iii) Section 30(i) and distinctiveness grounds of opposition
The first ground of opposition uses language similar to that found under the fourth ground of opposition. Without deciding if the first ground of opposition, as drafted, constitutes a proper ground of opposition, I see no reason why I would reach different conclusions with respect to the two grounds. The Mark as a whole is not the name of a person. Therefore the first ground of opposition is also dismissed.
The Opponent argues that the Mark is not distinctive on the basis that it is primarily merely the name of a famous individual who has died within the preceding thirty years. Therefore the Opponent is relying on a similar wording used under the fourth ground of opposition. For the same reasons discussed when assessing the fourth ground of opposition, I dismiss the fifth ground of opposition. I may add that there is no evidence to show that the Mark is not distinctive, or capable of distinguishing, the Applicant's wares from the wares of others including those of the Opponent.
V Conclusion
Having regard to the foregoing, and with the authority delegated to me under s. 63(3) of the Act, I reject the Opponent’s opposition pursuant to s. 38(8) of the Act.
DATED IN BOUCHERVILLE, QUEBEC, THIS 14th DAY OF SEPTEMBER 2007.
Jean Carrière,
Trade-marks Opposition Board