Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Canadian Medical Association to application

No. 853,709 for the trade-mark DOCTOR'S CHOICE Filed bv Enzvmatic Therapv. Inc.

On August 15, 1997, the applicant, Enzymatic Therapy, Inc., filed an application to register the

trade-mark DOCTOR'S CHOICE. The application is based upon proposed use of the trade-mark

in Canada in association with nutritional products, namely vitamin, mineral, dietary and herbal

supplements.

The application was advertised for opposition purposes in the Trade-marks Journal of September

16, 1998. The opponent, Canadian Medical Association, filed a statement of opposition on

November 16, 1998. The applicant filed and served a counter statement.

The opponent filed as its evidence the affidavit of Maira Hassan. As its evidence, the applicant

filed the affidavit of Tony Bortolin. Ms. Hassan provides: certified copies of a notice published

under section 9 for the official mark DOCTOR and registration No. TMA448,650 for PATIENT'S

CHOICE; a dictionary definition for DOCTOR; a copy of the Canadian Medical Association

Code of Ethics; and a copy of the Ontario Medicine Act. Mr. Bortolin provides: particulars

(excluding the associated wares or services) of 100 Canadian trade-mark registrations for marks

containing the word DOCTOR or DR.; full particulars of sixteen selected Canadian trade-mark

registrations for marks that include the term DOCTOR, DR. or DR. 'S; full particulars of three

Canadian trade-mark registrations for marks that include the words DOCTOR'S CHOICE (all

three of which are for wares of a very different nature from those presently applied for);

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Canadian business telephone listings for names listed under DOCTOR or DR.; Internet web pages

relating to the term DOCTOR or DR.; U.S. trade-mark registrations for marks comprising

DOCTOR or Dr. and CHOICE; a copy of the opponent's web site; his knowledge that DOCTOR

is also used to refer to individuals who hold Ph D degrees; and full particulars of Canadian trade­

mark registrations for eleven other marks comprising the word CHOICE.

Each party filed a written argument and an oral hearing was held at which both parties were

represented.

The first ground of opposition is that the application does not comply with subsection 30(i) of the

Trade-marks Act because the applicant could not have been satisfied that it is entitled to use the

mark in Canada in view of the matters set out in the statement of opposition.

The second ground of opposition is that the mark is not registrable pursuant to paragraph

12(1)(d) because it is deceptively misdescriptive of the character or quality of the wares for the

reasons set out elsewhere in the statement of opposition.

The third ground of opposition is that the mark is not registrable pursuant to paragraph 12(1)(d)

because it is confusing with the trade-mark PATIENT'S CHOICE registered under No. 448,650

for wares including vitamins.

The fourth ground of opposition is that the mark is not registrable pursuant to paragraph 12(1)(e)

because:

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i)

the adoption of the mark is prohibited by subparagraph 9(1)(n)(iii) in that it so nearly resembles as to be likely to be mistaken for the opponent's official mark DOCTOR, in respect of which the Registrar gave public notice on August 2, 1995 of the opponent's adoption and use;

ii)

the word DOCTOR has by ordinary and bona fule commercial usage become recognized in Canada as designating the kind and quality of the services provided by medical doctors and the Canadian Medical Association in Canada. As such the adoption and use of the trade-mark DOCTOR'S CHOICE as proposed by the applicant on vitamins and related products is prohibited by section 10;

iii)

the adoption and use of the trade-mark DOCTOR'S CHOICE by the applicant as set out in application no. 853,709 is likely to mislead. As such, the adoption of the trade-mark DOCTOR'S CHOICE as proposed is prohibited by section 10.

The final ground of opposition is that the mark is not distinctive because it does not distinguish

and is not adapted to distinguish the wares of the applicant from the wares and services of others,

having in mind the matters set out in paragraphs 2, 3 and 4(c) of the statement of opposition.

Paragraph 4(c) is the third ground of opposition. Paragraphs 2 and 3 are reproduced below:

2.         The Canadian Medical Association is a national association, the members of which

are medical doctors. The objectives of the Canadian Medical Association include furthering public health care in Canada. The Canadian Medical Association is a public authority within the meaning of Section 9(1)(n)(iii). The Registrar of Trade-marks has given public notice of the adoption and use by the Canadian Medical Association of the official mark "DOCTOR" for its adoption and use in services relating to the treatment, diagnosis, healing, cure or care of medical conditions, including diseases and disabilities and their prevention. The particulars of this public notification were published in the Trade-marks Journal of August 2, 1995, volume 42, number 2127.

3. In Canada, the word DOCTOR is recognized by the public primarily as the professional designation of medical practitioners with M.D. university degrees and who comprise the membership of the Canadian Medical Association, as well as in association with the medical services they provide. The statement of wares and services in application no. 853,709 refers to "nutritional products, namely vitamin, mineral, dietary and herbal supplements." It is the opponent's position that use of the trade-mark DOCTOR'S CHOICE by the applicant in association with the wares and services set out in the subject application will mislead members of the public to believe that those wares have been endorsed by the medical profession and, specifically, by the Canadian Medical Association, possibly to the detriment of public health in Canada.

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Subsection 30m

To the extent that the opponent relies on allegations of fact in support of its section 30 ground,

there is an evidential burden on the opponent to prove those allegations [see Joseph E. Seagram &

Sons Ltd. et ale v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. If none of the facts

alleged by the opponent were known to the applicant then there is no reason to conclude that the

applicant could not have been satisfied that it was entitled to use DOCTOR'S CHOICE. It is also

noted that the opponent has not pleaded that the applicant was aware of the various facts on

which the opponent relies. Accordingly, the section 30 ground of opposition fails both because it

has not been properly pleaded and because the opponent has not met its initial evidential burden.

In any event, the success of the section 30 ground would have been contingent upon the success of

one or more of the other grounds of opposition.

Para2raoh 12(1 )(b)

The material date for considering the ground of opposition based on paragraph 12(I)(b) is the

date of my decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional

Engineers, 41 C.P.R. (3d) 243 (F.C.A.)]. There is an initial evidential burden on the opponent to

adduce sufficient evidence that would support the truth of its allegations but the applicant bears

the onus throughout of showing that its mark is not contrary to paragraph 12(1 )(b).

The opponent's position is that DOCTOR'S CHOICE is a laudatory phrase that clearly indicates

that the product is of such high quality that it is the choice of doctors. The opponent submits that

the mark is misleading because the approval of a product by a medical doctor would be contrary

to the Canadian Medical Association's Code of Ethics. The relevant section of the Code of Ethics

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is, according to the Hassan affidavit, under the heading "Responsibilities to the Profession" and

reads as follows: "40. Avoid promoting, as a member of the medical profession, any service

(except your own) or product for personal gain."

I do not think that section 40 of the Code of Ethics results in the applicant's mark being

misleading. First of all, it is the perception of the consuming public with which we are concerned.

There is no basis on which to conclude that the public is aware of the opponent's Code of Ethics.

Even if it were, I note that section 40 is not a strict prohibition, using the word "avoid" rather

than "do not". It is also interesting to note that section 40 falls under "Responsibilities to the

Profession", not "Responsibilities to the Patient" or "Responsibilities to Society" and appears to

be directed towards advising individual medical doctors against profiting from promoting a

product.

I wish to take this opportunity to state that, as pointed out by the applicant, the opponent's

comments in its written argument to the effect that the Ontario Medicine Act specifically prohibits

the use of the title "DOCTOR" and "DR." except as permitted by that act is wrong. "DOCTOR"

and "DR." are used by more than medical doctors and the Ontario Medicine Act only restricts the

use of the titles" osteopath", "physician" and" surgeon" .

In the statement of opposition, the opponent makes several statements in paragraphs 2 and 3 that

have not been supported by evidence. For example, there is no evidence that the opponent is a

national association, the members of which are medical doctors, whose objectives include

furthering public health care in Canada. Nor is there any evidence that "the word DOCTOR is

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recognized by the public primarily as the professional designation of medical practitioners with

M.D. university degrees and who comprise the membership of the Canadian Medical Association,

as well as in association with the medical services they provide." The opponent has filed evidence

of the dictionary meaning of the word DOCTOR which points to it having at least two current

meanings: "a holder of the highest degree awarded in a university faculty or (now) by some other

competent body. Now usu. used as a title preceding a name (freq. abbrev. Dr); and Orig., an

authority on medicine or surgery; a doctor of medicine. Now, any medical practitioner."

Nevertheless, I believe that I can take judicial notice that the primary public perception of the

meaning of DOCTOR, as applied to nutritional products, namely vitamin, mineral and herbal

supplements, would be that of a doctor of medicine. There is however no evidence that use of the

trade-mark DOCTOR'S CHOICE by the applicant in association with the wares set out in the

subject application will mislead members of the public to believe that those wares have been

endorsed by the Canadian Medical Association, rather than simply having been chosen by a

doctor or doctors as the best.

I conclude that the applicant's mark is clearly descriptive or deceptively misdescriptive of the

character and quality of the applicant's wares. However, the opponent did not plead that the

trade-mark is clearly descriptive but rather that the mark is deceptively misdescriptive. The

trade-mark is of course only deceptively misdescriptive if an ordinary purchaser of the applicant's

wares is likely to be misle~ by the trade-mark DOCTOR'S CHOICE into thinking that the

applicant's wares are the choice of a doctor, when in fact one or more doctors do not prefer the

applicant's wares. It would have been a simple matter for the applicant to evidence that one or

more doctors had approved its wares if this was in fact true. In the absence of such evidence, I am

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concerned that use of the mark may mislead ordinary consumers. I therefore conclude that the

trade-mark is deceptively misdescriptive of the applicant's nutritional products as the applicant

has not satisfied me on a balance of probabilities that the typical purchaser of the applicant's

DOCTOR'S CHOICE wares would respond to the trade-mark as a fanciful name, mere puffery,

or as merely indicative of source, as opposed to as deceptively misdescribing the wares as being

favoured by the medical profession. The paragraph 12(1)(b) ground of opposition therefore

succeeds.

Before moving on to the next ground of opposition, I will add that the third party trade-marks

and names adduced by the applicant did not cause me to rule in its favour largely because most

were for significantly different wares and many referred to a particular doctor or combined the

word DOCTOR with one or more other words that would cause a typical consumer to not

conclude that the medical profession was connected with the mark (e.g. DOCTOR DRIVEWAY).

I also want to address the applicant's arguments that concern the fact that the mark shows

DO~TOR in the singular, not the plural. The applicant relies on the singular form to argue that a

reasonable consumer would not conclude that the whole medical profession endorses the product.

However, one must not forget that paragraph 12(1)(b) is concerned with the mark when depicted,

written or sounded. When sounded, there is no distinction between DOCTOR'S CHOICE and

DOCTORS' CHOICE.

Parae:raoh 12(1)( d)

The material date with respect to paragraph 12(1)(d) is the date of my decision [Park Avenue

Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37

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C.P.R. (3d) 413 (FCA)]. There is a legal burden on the applicant to establish that there would be

no reasonable likelihood of confusion between the marks in issue. This means that if a determinate

conclusion cannot be reached, the issue must be decided against the applicant [John Labatt Ltd. v.

Molson Companies Ltd. (1990),30 C.P.R. (3d) 293].

The test for confusion is one of first impression and imperfect recollection. In applying the test for

confusion set forth in subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all

the surrounding circumstances, including those specifically enumerated in subsection 6(5) of the

Act. Those factors specifically set out in subsection 6(5) are: 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; and the degree of

resemblance in appearance or sound of the marks or in the ideas suggested by them. The weight to

be given to each relevant factor may vary, depending on the circumstances [Clorox Co. v. Sears

Canada Inc. 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.)].

Neither DOCTOR'S CHOICE or PATIENT'S CHOICE possesses a great degree of inherent

distinctiveness. There is no evidence on which I can conclude that either of the marks has become

known in Canada.

There is no evidence that the applicant's mark has been used to date.

According to the

registration page, PATIENT'S CHOICE was first used some time before September 5,1995.

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T~;J wares overlap and presumably so might the businesses and trades of their owners.

The trade-marks resemble each other to some degree in sound, appearance and idea suggested.

Another surrounding circumstance is the state of the register. State of the register evidence is only

relevant insofar as one can make inferences from it about the state of the marketplace [Ports

International Ltd. v. Dunlop Ltd. (1992),41 C.P.R. (3d) 432; 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.

Although there is evidence of various trade-marks registered in Canada that include the word

CHOICE, only one, PHARMACIST'S CHOICE covers wares that overlap with those associated

with the PATIENT'S CHOICE and DOCTOR'S CHOICE trade-marks.

The overall issue is of course whether a consumer who has a general and not precise recollection

of the mark, PATIENT'S CHOICE, will be confused upon seeing the applicant's mark. Overall, I

conclude that the resemblance between the applicant's mark and the opponent's mark is

insufficient to result in the ordinary consumer being confused. The paragraph 12(1)(d) ground of

opposition therefore fails.

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Parat!raph 12(1)( e)

In Canadian Council of Professional Engineers v. John Brooks Company Limited (unreported

decision of December 3, 2001 re application No. 732,837), Board Member Martin summarized

certain aspects concerning paragraph 12(1)( e) grounds of opposition starting at page 13 as

follows:

The material time for considering the circumstances respecting the fourth ground of opposition is the date of my decision: see the decisions in Allied Corporation v. Canadian Olympic Association (1989), 28 C.P.R.(3d) 161 (F.C.A.) and Olvmpus Optical Company Limited v. Canadian Olympic Association (1991), 38 C.P.R.(3d) 1 (F.C.A.). Furthermore, the opponent is not required to evidence use and adoption of the official marks it is relying on, at least not in the absence of evidence suggesting that the marks were not used: see page 166 of the Allied decision. ...

As stated in Section 9(1)(n)(iii) of the Act, the test to be applied is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, any of the opponent's official marks?: see page 217 of the trial level decision in the Bit! Sisters case noted above. The opponent contended that the words "consists of" are not equivalent to "identical to" but Mr. Justice O'Keefe held otherwise at page 259 of the AP A - The En2ineered Wood Association decision as follows:

Having outlined the protection official marks enjoy, based on the provisions of the Act, it must be determined what the scope of prohibited marks is: The meaning of "consists of" most specifically. As a result ofthe foregoing, which clearly shows the privileged position official marks enjoy, I reject the interpretation of subparagraph 9(1)(n)(iii) proffered by the appellant and declare that the interpretation advanced by the Registrar is correct. In order to offend subparagnlph 9(1)(n)(iii) so as to be unregistrable under paragraph 12(I)(e), the proposed mark must either be identical to the official mark or so nearly resemble it so as to be likely to be mistaken for it. The words" consists of" in the subsection of the Act are to be interpreted to mean "identical to" as was apparently held by the Registrar.

At pages 218-219 of the trial level decision in the Bit! Sisters case, Mr. Justice Gibson confirmed that in assessing the resemblance between the marks at issue, regard may be had to the factors set out in Section 6(5)( e) of the Act. Further, at page 218, Mr. Justice Gibson indicated that the test was to be applied as a matter of first impression and imperfect recollection: see also pages 302-303 of the Court of Appeal decision in Techniauip. rTechniauip Limited v. Canadian Olympic

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Association (1999), 3 C.P.R.(4th) 298 (F.C.A.); affg. (1998), 80 C.P.R.(3d) 225 at 233 (F.C.T.D.)]".

The applicant's evidence does not suggest that the opponent's official mark DOCTOR was not

used before the opponent requested that public notice be given of its adoption and use as an

official mark. The fact that the official mark did not appear on the opponent's web site in 2000 is

insufficient to suggest that it was not used prior to August 2, 1995.

Following Mr. Justice O'Keefe's approach, DOCTOR'S CHOICE does not consist of DOCTOR.

The question therefore is whether DOCTOR'S CHOICE so nearly resembles DOCTOR so as to

be likely to be mistaken for DOCTOR. Based on first impression and imperfect recollection, I

conclude that the degree of resemblance between DOCTOR'S CHOICE and DOCTOR in

appearance, sound and idea suggested is sufficient to result in DOCTOR'S CHOICE being likely

to be mistaken for DOCTOR. It is noted that "the state of the register is of no relevance to the

issue as to whether the applicant's trade mark consists of or so nearly resembles the opponent's

official mark as to be likely to be mistaken for it." [Canadian Olympic Association v. IMI Norgren

Enots Ltd. (1989), 23 C.P.R. (3d) 389 (T.M.O.B.) at p. 392] Accordingly, the paragraph 12(1)(e)

ground of opposition also succeeds.

As the opponent has already succeeded on two of its grounds of opposition, I will not discuss the

remaining grounds of opposition.

Disposition

Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade­

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marks Act, I refuse the application, pursuant to the provisions of subsection 38(8) of the Act.

DATED AT GATINEAU, QUEBEC, THIS 29^TH DAY OF MAY, 2002.

Jill W. Bradbury Hearing Officer

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