IN THE MATTER OF AN OPPOSITION by London Drugs Limited to application No. 755,877 for the trade-mark DOING IT BETTER PERSONALLY filed by Colley, Borland & Vale Insurance Brokers Limited
On June 1, 1994, the applicant, Colley, Borland & Vale Insurance Brokers Limited, filed an application to register the trade-mark DOING IT BETTER PERSONALLY based upon use of the trade-mark in Canada since at least as early as August, 1992 in association with “Services of operating an insurance brokerage”. At the examination stage, the applicant amended its application to include a disclaimer of the right to the exclusive use of the words BETTER and PERSONALLY apart from its trade-mark.
The present application was advertised for opposition purposes in the Trade-marks Journal of February 1, 1995 and the opponent, London Drugs Limited, filed a statement of opposition on June 27, 1995, a copy of which was forwarded to the applicant on September 1, 1995. In its statement of opposition, the opponent alleged the following grounds of opposition:
(a) The present application does not comply with the requirements of Section 30 of the Trade-marks Act in that, pursuant to Subsection 30(b), the applicant has not used the trade-mark since August 1992 in connection with the services claimed in the application;
(b) The present application does not comply with the requirements of Subsection 30(i) of the Trade-marks Act in that the applicant cannot claim that it is satisfied that it is entitled to use its trade-mark in Canada in association with the services described in its application while being fully aware of the previous registration in Canada by the opponent of its trade-mark NOBODY DOES IT BETTER, identified in registration Nos. 366,381 and 399,960;
(c) The applicant's trade-mark is not registrable in view of the provisions of Paragraph 12(1)(d) of the Trade-marks Act in that the applicant’s trade-mark is confusing with the opponent’s trade-mark NOBODY DOES IT BETTER, identified in registration Nos. 366,381 and 399,960;
(d) The applicant is not the person entitled to registration of the trade-mark in view of Paragraph 16(1)(a) of the Trade-marks Act because on the applicant’s alleged date of first use, the applicant’s trade-mark was confusing with the opponent’s trade-mark NOBODY DOES IT BETTER which had previously been used in Canada by the opponent since at least as early as September 1986 in association with a variety of services. The opponent’s use of its trade-mark NOBODY DOES IT BETTER includes insurance services;
(e) The applicant's trade-mark is not distinctive in that it does not distinguish and is not adapted to distinguish the applicant’s services from the services of the opponent.
The applicant served and filed a counter statement on September 27, 1995 in which it denied the allegations set forth in the statement of opposition. The opponent filed as its evidence the affidavit of Shelden Smollan, General Manager of London Drugs Insurance Services Limited, a wholly-owned subsidiary of the opponent. The applicant submitted as its evidence the affidavit of Don Vale, together with copies of nine trade-mark registrations. Both parties filed a written argument and both were represented at an oral hearing.
The first two grounds of opposition are based on Subsections 30(b) and 30(i) of the Trade-marks Act. 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 grounds [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R.(3d) 293]. The material time for considering the circumstances respecting the issues of non-compliance with Section 30 of the Act is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R.(3d) 469, at p. 475].
As its first ground, the opponent alleged that the present application does not comply with the requirements of Subsection 30(b) of the Trade-marks Act in that the applicant has not used the trade-mark since August, 1992 as alleged. While the legal burden is upon the applicant to show that its application complies with Subsection 30(b), there is, as noted above, an initial evidential burden on the opponent to establish the facts relied upon by it in support of this ground. Furthermore, 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, 10 C.P.R.(3d) 84, at p. 89].
In the present case, no evidence has been furnished by the opponent in support of this ground. However, the opponent has submitted that the applicant’s evidence is inconsistent with its claim that it has used the trade-mark DOING IT BETTER PERSONALLY in Canada since at least as early as August, 1992. In particular, the opponent has noted that in paragraph 4 of his affidavit, Mr. Vale states that the applicant “has used the slogan “DOING IT BETTER PERSONALLY” in Canada in association with insurance services since at least as early as September 1989.” As noted by the Hearing Officer in Sanna, Inc. v. Chocosuisse Union des Fabricants Suisses de Chocolat, 14 C.P.R. (3d) 139, at pp. 141-142, the decision of Cattanach, J. in Marineland Inc. v. Marine Wonderland & Animal Park Ltd., 16 C.P.R. (2d) 67, is authority for the proposition that an applicant who has used its trade-mark prior to filing may claim any date subsequent to the actual date of first use. Thus, the applicant’s claimed date of first use is not clearly inconsistent with its evidence. I find, therefore, that the opponent has not met the evidential burden upon it in respect of the Subsection 30(b) ground which is unsuccessful.
As its second ground, the opponent alleged that the present application does not conform to the requirements of Subsection 30(i) of the Act in that the applicant could not have been satisfied that it was entitled to use and register the trade-mark DOING IT BETTER PERSONALLY in Canada in association with its services in that the applicant was fully aware of the previous registration in Canada by the opponent of its trade-mark NOBODY DOES IT BETTER. However, even if the applicant were aware of the opponent’s registrations, no evidence has been furnished by the opponent to show that the applicant could not properly have been satisfied that it was entitled to use its trade-mark DOING IT BETTER PERSONALLY in Canada on the basis inter alia that its trade-mark is not confusing with the opponent’s trade-mark NOBODY DOES IT BETTER. Thus, the success of this ground is contingent upon a finding that the trade-marks at issue are confusing [see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191, at p. 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152, at p. 155]. I will therefore consider the remaining grounds of opposition which are based on allegations of confusion between the applicant’s trade-mark DOING IT BETTER PERSONALLY and the opponent’s trade-mark NOBODY DOES IT BETTER.
The third ground of opposition is based on Paragraph 12(1)(d) of the Trade-marks Act, the opponent alleging that the applicant’s trade-mark DOING IT BETTER PERSONALLY is not registrable in that it is confusing with its registered trade-marks NOBODY DOES IT BETTER, registration Nos. 366,381 and 399,960. In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the date of my decision, the material date in respect of the Paragraph 12(1)(d) ground of opposition [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (FCA)].
Considering initially the inherent distinctiveness of the trade-marks at issue, the applicant’s trade-mark DOING IT BETTER PERSONALLY possesses some measure of inherent distinctiveness when considered in its entirety even though the word BETTER is laudatory. The opponent’s trade-mark NOBODY DOES IT BETTER as applied to the “Operation of a department store and drugstore” [registration No. 366,381] and “Photofinishing services; the operation of a retail photographic equipment and photographic accessories outlet; camera store services. Operation of retail and wholesale outlets dealing in computer software, computer hardware and computer‑related accessories; computer services, namely customer training, computer repairs, computer education services, computer systems integration and computer programming” [registration No. 399,960] has a laudatory connotation when considered in its entirety, that is, that the opponent’s services are better than its competitors. There are a number of decisions in which the Federal Court has concluded or commented on the fact that words or prefixes having a laudatory connotation are prima facie descriptive terms [see, for example, Mitel Corporation v. Registrar of Trade Marks, 79 C.P.R. (2d) 202, at p. 206; Molson Companies Ltd. v. John Labatt Ltd., 58 C.P.R. (2d) 157, at p. 160; Imperial Tobacco Ltd. v. Benson & Hedges (Canada) Inc., 75 C.P.R. (2d) 115, at p. 118; and Cafe Supreme F et P Ltée v. Registrar of Trade Marks, 4 C.P.R. (3d) 529, at p. 532]. Having regard to these decisions, it is apparent that a trade-mark having a laudatory connotation such as the opponent’s mark possesses little inherent distinctiveness.
The applicant has adduced evidence relating to its use of the trade-mark DOING IT BETTER PERSONALLY in the Markham area and its trade-mark has therefore become known to some extent in that area of Ontario. The Smollan affidavit establishes that the opponent’s sales through its general merchandise and drug store retail business in British Columbia and Alberta have been extensive. However, the opponent has used its trade-mark NOBODY DOES IT BETTER as a secondary mark to its trade-mark LONDON DRUGS and, while the mark NOBODY DOES IT BETTER has become fairly well known in western Canada, I do not consider that it qualifies as a famous trade-mark, as has been submitted by the opponent. In any event, the extent to which the trade-marks at issue have become known and the length of time the marks have been in use both favour the opponent, the latter having used its trade-mark NOBODY DOES IT BETTER in Canada since September 1986 whereas the applicant has used its trade-mark DOING IT BETTER PERSONALLY in association with insurance services since at least August of 1992.
The applicant’s services of operating an insurance brokerage bear no similarity to the services covered in the opponent’s registrations and no evidence has been adduced by the opponent to show that there could be a potential overlap in the channels of trade associated with the services covered in the present application and the opponent’s registrations. As for the degree of resemblance between the trade-marks at issue, I consider there to be little similarity in either appearance or sounding between the applicant’s trade-mark DOING IT BETTER PERSONALLY and the opponent’s trade-mark NOBODY DOES IT BETTER when the marks are considered in their entireties as a matter of immediate impression. Further, the trade-marks do not suggest similar ideas.
As a further surrounding circumstance in respect of the issue of confusion, the applicant adduced evidence of the following third party trade-mark registrations:
Trade-mark Registration No. Services
NOBODY COVERS YOU BETTER 372,925 Roofing services
NOBODY KNOWS HOT DOGS BETTER 327,564 Operation of a business dealing in the sale of food products
NOBODY TREATS YOU BETTER 343,898 Development and use of promotional material for the promotion of candy, chocolates, cookies, muffins, pastries, dipped fruits, sugared and spiced nuts, toffee, brittles, fudge, caramel, popcorn, cakes and ices of others.
NOBODY'S BETTER THAN BAD 430,916 Operation of retail outlets for the sale of BOY...NOOOBODY! furniture and appliances; carpets, broadloom and rugs and the installation thereof; and window coverings.
BAD BOY & Design 452,309 Operation of retail outlets for the sale of furniture and appliances; carpets, broadloom and rugs and the installation thereof; and window coverings.
NOBODY'S BETTER...NOOOBODY! 430,935 Operation of retail outlets for the sale of furniture and appliances; carpets, broadloom and rugs and the installation thereof; and window coverings.
TODAY’S BETTER WAY 398,562 Operation of retail food stores and supermarkets
TODAY’S BETTER WAY... TO SAVE 414,208 Grocery store and supermarket services
WE DO IT BETTER. 324,450 Operation of an insurance brokerage
PERSONALLY & Design
The roofing services covered in registration No. 372,925 and the sale of furniture, appliances, carpets, broadloom and window coverings in three of the registrations identified above are unrelated to the services of the parties. Furthermore, having regard to the limited number of third party registrations located by the applicant, I am not prepared to draw any inferences concerning the possible use of any of these marks in the marketplace.
As yet a further surrounding circumstance in respect of the issue of confusion, the opponent submitted that it commenced offering insurance services to the public in August 1994 in association with its trade-mark NOBODY DOES IT BETTER. In his affidavit, Mr. Smollan states that his company, London Drugs Insurance Services Inc., a wholly-owned subsidiary of London Drugs Limited, has used the slogan NOBODY DOES IT BETTER in conjunction with the promotion of the insurance services as a trade-mark licensee of London Drugs limited. Exhibits H, J and K to the Smollan affidavit clearly point to London Drugs Insurance Services Inc. as being the source of the insurance services associated with the trade-mark NOBODY DOES IT BETTER in Canada, there being no notice given to the public relating to the existence of a license arrangement between the opponent and London Drugs Insurance Services Inc. or that the use by the latter of the trade-mark NOBODY DOES IT BETTER is a licensed use of the mark. Moreover, Mr. Smollan is silent in his affidavit as to the control, whether direct or indirect, which the opponent has over the character or quality of the insurance services associated with the trade-mark NOBODY DOES IT BETTER. I have concluded, therefore, that use of the mark NOBODY DOES IT BETTER by London Drugs Insurance Services Inc. has not been shown to be deemed use by the opponent of the trade-mark in association with insurance services within the scope of Section 50 of the Trade-marks Act.
Apart from the above, I do not consider insurance services to be a natural area of expansion of the existing services covered in the opponent’s registrations. With respect to the issue of expansion into a new area of business, I would note the following comments of Mr. Justice MacKay in Joseph E. Seagram & Sons Ltd. et al v. Registrar of Trade Marks et al, 33 C.P.R. (3d) 454, at p. 467:
“The appellants argued before me that corporate diversification would be a significant consideration in the mind of an average Canadian who, because of the well-known nature of the SEAGRAM'S mark, is likely to infer some connection between the appellant and respondent even though the wares in question may be very different. I do not agree with this proposition. In my view, consideration of future events and possibilities of diversification is properly restricted to the potential expansion of existing operations. It should not include speculation as to diversification into entirely new ventures, involving new kinds of wares, services or businesses: see Cochrane-Dunlop Hardware Ltd. v. Capital Diversified Industries Ltd. (1976), 30 C.P.R. (2d) 176 at p. 188 (Ont. C.A., per Blair J.A.).”
Considering that there is little resemblance between the trade-marks at issue and the services of the parties as covered in the present application and the opponent’s registrations differ, I find that the applicant has met the legal burden upon it in respect of the issue of confusion in relation to the Paragraph 12(1)(d) ground. I have therefore rejected the third ground of opposition.
The fourth ground is based on Paragraph 16(1)(a) of the Trade-marks Act, the opponent alleging that the applicant is not the person entitled to registration of the trade-mark DOING IT BETTER PERSONALLY because the applicant’s trade-mark was confusing with the opponent’s trade-mark NOBODY DOES IT BETTER which had previously been used in Canada by the opponent since at least as early as September 1986 in association with a variety of services. There is an initial burden on the opponent in view of Subsections 16(5) and 17(1) of the Trade-marks Act to establish its use of its trade-mark prior to the applicant’s claimed date of first use [August 31, 1992], as well as to show that it had not abandoned its mark as of the date of advertisement of the present application [February 1, 1995]. Clearly, the opponent has established its prior use and non-abandonment of the trade-mark NOBODY DOES IT BETTER in association with the operation of a department store and drug store, the operation of retail photographic equipment and photographic accessories outlets, and the operation of retail and wholesale outlets dealing in computer software, computer hardware and computer‑related accessories. As well, the opponent has met its burden in relation to camera store services, its photofinishing services and its computer services, namely customer training, computer repairs, computer education services, computer systems integration and computer programming. However, the opponent has not established its prior use of the trade-mark NOBODY DOES IT BETTER in association with insurance services.
The legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the applicant’s claimed date of first use. Again, in determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Trade-marks Act. As noted previously, the opponent’s trade-mark NOBODY DOES IT BETTER has a laudatory connotation and therefore possesses little inherent distinctiveness although the opponent’s evidence establishes that the mark has become fairly well known in western Canada. The applicant’s trade-mark DOING IT BETTER PERSONALLY possesses some measure of inherent distinctiveness even though the word BETTER is laudatory, but that the trade-mark had not been shown to have become known to any measurable extent in Canada as of the claimed date of first use. Thus, the extent to which the trade-marks at issue have become known and the length of time the marks have been in use both weigh in the opponent’s favour, the latter having used its trade-mark NOBODY DOES IT BETTER in Canada for at least six years prior to the applicant’s claimed date of first use.
The applicant’s services of operating an insurance brokerage bear no similarity to the opponent’s services and no evidence has been adduced by the opponent to show that there could be a potential overlap in the channels of trade associated with the respective services of the parties. As for the degree of resemblance between the trade-marks at issue, I consider there to be little similarity in either appearance or sounding between the applicant’s trade-mark DOING IT BETTER PERSONALLY and the opponent’s trade-mark NOBODY DOES IT BETTER when the marks are considered in their entireties as a matter of immediate impression. Further, the trade-marks do not suggest similar ideas.
As a further surrounding circumstances in assessing the likelihood of confusion between the trade-marks at issue, I would note that only four of the third party registrations identified above were in existence as of the material date and I am not prepared to draw any inferences concerning the possible use of any of these marks in the marketplace. Further, use of the mark NOBODY DOES IT BETTER by London Drugs Insurance Services Inc. in association with insurance services has not been shown to be deemed use by the opponent and, in any event, I do not consider insurance services to be a natural area of expansion of the services being rendered by the opponent as of August of 1992.
Considering that there is little resemblance between the trade-marks at issue and the services of the parties differ, I find that the applicant has met the legal burden upon it in respect of the issue of confusion in relation to the Paragraph 16(1)(a) ground. I have therefore rejected this ground of opposition.
The final ground is that the applicant's trade-mark is not distinctive in that it does not distinguish and is not adapted to distinguish the applicant’s services from the services of the opponent. As no facts have been alleged by the opponent in support of this ground, the ground is contrary to Paragraph 38(3)(a) of the Trade-marks Act. In any event, having concluded that the trade-marks at issue are not confusing in relation to the Paragraphs 12(1)(d) and 16(1)(a) grounds, I would likewise have found the trade-marks at issue to have not been confusing as of the date of opposition, the material date for considering this ground [see Re Andres Wines Ltd. and E.&J. Gallo Winery, 25 C.P.R. (2d) 126 (F.C.A.), at p.130; Park Avenue Furniture Corp. v. Wickes/ Simmons Bedding Ltd., 37 C.P.R.(3d) 412 (F.C.A.), at p. 424; and Molson Breweries, a Partnership v. Labatt Brewing Company Limited, (Court No. T-162-96, dated June 25, 1998, yet unreported, at p. 25)]. As a result, this ground is also unsuccessful.
Having been delegated by the Registrar of Trade-marks pursuant to Subsection 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 20th DAY OF OCTOBER, 1998.
G.W.Partington,
Chairperson,
Trade-marks Opposition Board