Trademark Opposition Board Decisions

IN THE MATTER OF AN OPPOSITION by Healthworld B.V. and Healthworld Corporation to application No. 1,041,331 for the trade-mark WORLD HEALTH ALLIANCE filed by Dr. Matthias Rath__ _

                                                        

 

On December 30, 1999, Dr. Matthias Rath (the “Applicant”) filed an application to register the trade-mark WORLD HEALTH ALLIANCE (the “Mark”), claiming a convention priority filing date of December 28, 1999. The application is based upon proposed use of the Mark in Canada in association with the following wares and services:

wares:

(1) Books, newspapers, journals, pamphlets, magazines, all in the field of healthcare, nutritional supplements, dietary supplements, vitamin and mineral supplements; educational materials and printed teaching materials, namely books, newspapers, journals, pamphlets, magazines in the field of healthcare, nutritional supplements.

services:

(1) Education, providing training in the field of health care, health precautions and nutrition; consultancy in the field of health precautions, health care and nutrition; scientific research.

 

The Applicant has disclaimed the right to the exclusive use of the words WORLD and HEALTH apart from the trade-mark.

 

The application was advertised for opposition purposes in the Trade-marks Journal of August 28, 2002. On January 10, 2003, Healthworld B.V. and Healthworld Corporation (collectively the “Opponent”) filed a statement of opposition against the application. The Applicant filed and served a counter statement.

 

As rule 41 evidence, the Opponent filed the affidavit of Denis Piquette. As rule 42 evidence, the Applicant filed the affidavit of Lynda Palmer. No cross-examinations were conducted.

 

Each party filed a written argument and each was represented at an oral hearing.

 

Grounds of Opposition

The grounds of opposition may be summarized as follows:

 

1.         The Mark is not registrable pursuant to s. 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) because it is confusing with the Opponent’s registered trade-mark HEALTHWORLD & Design, registration No. TMA462,229, which is shown below.

 

                                                 

 

2.         The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(3)(a) of the Act because the Mark is confusing with the Opponent’s trade-marks HEALTHWORLD and HEALTHWORLD & Design, which had been previously used in Canada in association with advertising agency services, medical information services and other communication services.

 

3.         The Mark is not distinctive within the meaning of s. 2 of the Act because it does not actually distinguish and is not adapted to distinguish the wares and services of the Applicant from those offered for sale and sold by the Opponent.

 

Material Dates

Summary of Rule 41 Evidence

Mr. Piquette is the President and Chief Operating Officer of Healthworld (Canada) Ltd., which he says “is a Canadian corporation that operates as an advertising agency and, in particular, is a leading Canadian provider of strategic marketing and communication services to healthcare marketers, offering integrated solutions to successfully create, launch and manage clients’ brands globally and locally to optimize commercial lifetime value.”

 

Mr. Piquette explains that Healthworld B.V., the worldwide owner of the trade-mark HEALTHWORLD, has granted Healthworld Corporation, a Delaware corporation, the exclusive licence to use the HEALTHWORLD trade-mark worldwide, as well as to sublicense its use worldwide. Mr. Piquette states that Healthworld B.V. controls the character and quality of the services used in association with the HEALTHWORLD trade-mark at all times through licence agreements. Mr. Piquette also states that since 1995 Healthworld (Canada) Ltd. and its predecessor companies have been the licensee in Canada of the HEALTHWORLD & Design trade-mark that is the subject of registration No. TMA462,229.

 

At paragraph 5, Mr. Piquette states:

In 1995, a predecessor company to Healthworld (Canada) Ltd., Rubel & Schwab, a business partnership between Phil Rubel and Gord Schwab, became the Canadian licensee of the HEALTHWORLD trade-mark and commenced using the HEALTHWORLD trade-mark in Canada. In 1997, Denis Piquette purchased the shares of Phil Rubel in Rubel & Schwab and the company name was changed to Schwab & Piquette/Healthworld. On or about May 23, 2001, the assets of Schwab & Piquette/Healthworld were purchased by Bates Canada Inc., carrying on business as Bates Healthworld. Subsequently, in or about January 2003, Bates Healthworld changed its name to Healthworld (Canada) Ltd. At all times since 1995, Healthworld (Canada) Ltd. and its predecessor companies have continuously used in the normal course of trade, and continue to use in the normal course of trade, the HEALTHWORLD trade-mark in Canada, pursuant to the aforesaid licence.

 

The last sentence in paragraph 5 is of course a bald allegation of use and Mr. Piquette’s exhibits will be assessed later to ascertain whether they support such claim.

 

Mr. Piquette says that the Canadian sales of advertising agency services in association with the HEALTHWORLD trade-mark have been as follows: June 2001 through December 2001 - $3.5 million; 2002 - $6.2 million; January 1, 2003 through October 2003 - $4.3 million; November and December 2003 - $1.3 million (estimated).

 

Summary of Rule 42 Evidence

Ms. Palmer, a trade-mark searcher, conducted searches of the Canadian Trade-marks Office’s records in July 2004, directed towards marks incorporating

1)      the words “HEALTH” and “WORLD” in connection with any wares or services,

2)      the word “WORLD” in connection with advertising services, and

3)      the word “WORLD” in connection with health care services and supplements.

 

Her results will be discussed further below.

 

Likelihood of Confusion

Each of the grounds of opposition turns on the issue of the likelihood of confusion.

 

The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion set forth in s. 6(2) of the Act, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act. Those factors specifically set out in s. 6(5) are: the inherent distinctiveness of the trade-marks or trade-names 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 between the trade-marks or trade-names in appearance or sound 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. (1992), 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.)].

 

The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is however an initial burden 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. [See John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293 at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)]

 

Initial Onus re Section 16 Ground of Opposition

To meet its initial burden with respect to its s. 16 ground of opposition, the Opponent must show use of either HEALTHWORLD or HEALTHWORLD & Design in Canada in association with advertising agency services, medical information services and other communication services prior to December 28, 1999. In addition, it must show that its marks had not been abandoned as of August 28, 2002 [see s. 16(5)].

 

It is the Applicant’s position that there is scant evidence of use of the Opponent’s two pleaded marks, for several reasons. First, it submits that most of the exhibits show use of other marks, namely marks that include the word HEALTHWORLD. Second, it submits that many of the materials (e.g. prospectuses and correspondence with suppliers) do not show use in accordance with s. 4 of the Act in association with the pleaded services. It also submits that sometimes HEALTHWORLD is used as a trade-name, rather than as a trade-mark, i.e. it is used to identify an entity, rather than a source. Bearing those issues in mind, I summarize below those exhibits from Mr. Piquette’s affidavit that I consider to be the most supportive of the Opponent’s claim of use in Canada prior to December 28, 1999:

1. exhibit 7: ”a copy of the letterhead  used and distributed…in Canada during the years between 1997 and 2001” – Although this letterhead does display the HEALTHWORLD trade-mark and a Canadian address, it is blank and there is no indication as to how it was used in Canada. In addition, the phrase “between 1997 and 2001” is ambiguous.
2. exhibit 8: copies of business cards that display HEALTHWORLD used and distributed in Canada during the years between 1997 and 2001
3. exhibit 9: a print-out of a presentation that was presented in Canada during the years 1998 and 1999 to provide an overview of the company’s advertising agency services to potential clients, which at certain points displays HEALTHWORLD

 

I agree with the Opponent’s characterization of this evidence as scant, but it is just barely sufficient to meet the Opponent’s initial onus, but only with respect to the word mark HEALTHWORLD.

 

In addition, I find that the Opponent has satisfied its onus to show non-abandonment of its HEALTHWORLD mark as of August 28, 2002, by means of the invoices dated 2002 in Mr. Piquette’s exhibit 3, which are discussed further below. 

 

Initial Onus re Distinctiveness Ground of Opposition

According to Mr. Justice Noël in the recent decision in Bojangles’ International, LLC and Bojangles Restaurants, Inc. v. Bojangles Café Ltd. 2006 FC 657, the initial onus on the Opponent with respect to its distinctiveness ground of opposition requires it to show that one of its marks had a reputation in Canada that was either substantial, significant or sufficient as of January 10, 2003. I shall therefore summarize those parts of Mr. Piquette’s affidavit that I consider to support such a claim, in addition to those already set out under s. 16 above:

1. paragraph 6: pre-2003 sales of $9.7 million
2.  exhibit 3: copies of 3 representative invoices dated in 2002 – Although these invoices show HEALTHWORLD at the top preceded by the word BATES, I am satisfied that this is use of HEALTHWORLD per se (rather than the combination mark BATES HEALTHWORLD) because BATES is set apart by being the only letters printed in bold. [See Principle 1 in Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 at 538-9]
3. exhibit 6: copy of a business card used and distributed in Canada during 2001 and 2002, with mark displayed in manner similar to that in exhibit 3
4. paragraph 17: pre-2003 advertising expenditures of $18,000 in association with the HEALTHWORLD mark
5. exhibit 13: advertisement that was located in 2 Canadian magazines in 2001 that show the HEALTHWORLD mark in a form similar to that in exhibit 3

 

Based on the foregoing, I conclude that as of January 10, 2003, the Opponent had a reputation in association with its HEALTHWORLD mark that was sufficient to meet its initial burden with respect to its distinctiveness ground of opposition.

 

Initial Onus re Section 12(1)(d) Ground of Opposition

The Opponent has met its initial burden with respect to this ground by providing a copy of its registration for HEALTHWORLD & Design. This design mark is registered for advertising agency services based, inter alia, on use in Canada since at least as early as October 1993.

 

Analysis of Section 6 Factors

Although the s. 12(1)(d) ground of opposition has the latest material date, this ground is nevertheless the Opponent’s weakness ground because there is almost no evidence of the Opponent’s registered mark being used or advertised. [The only place that I see this exact mark in the evidence is on an internal memorandum dated March 23, 1998 (exhibit 17, Piquette affidavit).]

 

Also, as outlined above, there is very little evidence of use or advertisement of the Opponent’s word mark as of the material date regarding the s. 16 ground.

 

For these reasons, I consider the distinctiveness ground of opposition to present the Opponent’s best case and the following analysis is focused on that ground.

 

s. 6(5)(a): the inherent distinctiveness of the trade-marks and the extent to which they have become known

Both WORLD HEALTH ALLIANCE and HEALTHWORLD are inherently weak, since they both consist of words that are suggestive of their associated wares/services.

 

Only the Opponent’s mark had acquired some distinctiveness through use and promotion as of January 10, 2003.

 

A consideration of this factor therefore favours the Opponent.

 

s. 6(5)(b): the length of time each trade-mark or trade-name has been in use

This factor clearly favours the Opponent, as there is no evidence that the Applicant has commenced use of its mark.

 

s. 6(5)(c) and (d): the nature of the wares, services, businesses or trade

The parties appear to be in quite different businesses. The Opponent operates an advertising agency that serves healthcare marketers, such as pharmaceutical companies. From the evidence, it appears that its mark would only be known to healthcare marketers; I am not aware of any evidence that shows that the Opponent’s mark is promoted to the public at large. On the other hand, the Applicant’s business seems to consist primarily of providing information and training with respect to healthcare and nutrition; it seems rather unlikely that the Applicant’s clientele would overlap with that of the Opponent.

 

At the oral hearing the Opponent’s agent pointed out that the Opponent distributes a newsletter and provides consulting services. However, I do not find that these facts support a conclusion that there is a noteworthy overlap or connection between the parties’ wares and services. First of all, the newsletter in question (exhibit 18, Piquette affidavit) is clearly an internal newsletter. Second, the Applicant’s statement of services makes it clear that its consulting services are in the field of health precautions, healthcare and nutrition. They are thus different from consulting services that would be included in an advertising agency’s services directed to pharmaceutical companies and the like with a view to promoting such companies’ brands.   

 

s. 6(5)(e): the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them

As summarized in Polo Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9 C.P.R. (4^th) 51 (F.C.A.) at 58-59: 

With respect to the degree of resemblance in appearance, sound or ideas under subparagraph 6(5)(e), the trade‑marks at issue must be considered in their totality. As well, since it is the combination of elements that constitutes a trade‑mark and gives distinctiveness to it, it is not correct to lay the trade‑marks side by side and compare and observe similarities or differences among the elements or components of the marks when applying the test for confusion. In addition, trade‑marks must not be considered in isolation but in association with the wares or services with which they are used.

 

In addition, as stated in Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) at 188, “It is axiomatic that the first word or the first syllable in a trade mark is far the more important for the purpose of distinction.”

 

When considered in their totality, I find that WORLD HEALTH ALLIANCE and HEALTHWORLD do not have a high degree of resemblance either in appearance or sound or in the ideas suggested by them. While it is obvious that they both include the words “health” and “world”, there are significant differences between them, namely: one has four syllables, the other has two; one starts with WORLD, the other with HEALTH; one suggests an entity that is working to improve health in the world, the other suggests that its associated advertising agency services specialize in the healthcare industry.

 

other surrounding circumstances

Another surrounding circumstance is the state of the register or marketplace.

 

State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located.  [Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432 (T.M.O.B.); Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D); Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]

 

Ms. Palmer has evidenced registrations for 15 trade-marks that include the word “world” for advertising agency services and the like. The Applicant relies on Ms. Palmer’s evidence as support for the conclusion that the word “world” is a weak component in the Opponent’s field. However, I see no need to rely on state of the register evidence in this regard as I have already found that the Opponent’s trade-mark is not inherently strong based on the ordinary meaning of the components of its mark. There is therefore no need for me to consider the state of the register evidence any further.

 

Conclusion

Having considered all of the surrounding circumstances, I conclude that the Applicant has satisfied the burden on it to show that there is not a reasonable likelihood of confusion between WORLD HEALTH ALLIANCE and HEALTHWORLD as of January 10, 2003. To put it another way, I am satisfied that the Applicant’s Mark was at that point of time capable of distinguishing the Applicant’s wares and services from those of the Opponent. I base my conclusion on the differences between both the parties’ marks and their fields of endeavour.

 

As the Opponent’s position is weaker with respect to the other two grounds of opposition, all three grounds of opposition fail.

 

Disposition

Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8).

 

 

 

DATED AT TORONTO, ONTARIO, THIS  10^th DAY OF JULY 2006.

 

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board