IN THE MATTER OF AN OPPOSITION
by The Body Shop International Plc
to application no. 739,139 for the trade-mark
THE BODY EMPORIUM filed by Lander
Co. Canada Limited
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On October 18, 1993, the applicant, Lander Co. Canada Limited, filed an application to register the mark THE BODY EMPORIUM, based on proposed use in Canada, in association with the following wares:
hair care products namely, shampoos, conditioners, combination shampoos and conditioners, cream rinses, wave solutions, hair sheens, neutralizer shampoos, setting lotions, anti‑dandruff shampoos, hair setting gels, hair setting creams, hair setting sprays, hair lotions and permanent wave solutions;
cosmetics, toiletries and personal care products namely, skin lotions, soaps, eau de toilette, eau de cologne, cologne, perfume, bath powder, bubble bath, milk bath cream, after bath oil, dusting powders, talcum powders, bath foams, bath gels, bath beads, bath fragrances, after bath freshener, body sprays, essential oils, sun tan lotions, sun tan creams, sun screens, skin creams, skin lotions, skin cleansers, astringents, moisturizers, skin polishers, body shampoos, baby oils, baby powder, baby lotions, baby soap, toilet water, skin fresheners, bath salts, face powder, vanishing cream, massage cream, muscle oil cream, pore cleansers and creams, bleach creams, eye lash creams, depilatory cream, black head remover, hair tonic, liquid hairdressing, cuticle softener, cuticle cream,
cleansing products for female and male intimate hygiene namely, soaps and deodorants, antiperspirants, lipstick, eye shadow, eye pencils, foundations, mascara, blushes, eyeliner, aftershave lotions, aftershave colognes, aftershave moisturizer, shaving cream, aftershave balm, deodorant sticks, moisture balm, protective skin condition, skin creams, beauty masks, body lotion, liquid and cream make‑up, toner, freshener, nail enamel, nail enamel remover, nail and cuticle treatment, make‑up remover, medicated and non‑medicated hair straighteners, petroleum jelly,
toothpaste, tooth powders, tooth brushes, dentifrice, mouthwashes, dental floss, dental and denture cleaners and adhesives for dentures.
The subject application disclaims the right to the exclusive use of the word BODY apart from the mark as a whole. The subject mark was advertised for opposition purposes in the Trade-marks Journal issue dated July 19, 1995, after the applicant had overcome objections raised at the Examination stage. The opponent, The Body Shop International Plc, filed a statement of opposition on August 21, 1995, a copy of which was forwarded to the applicant on November 3, 1995. The grounds of opposition are set out concisely in the statement of opposition and are reproduced in full below.
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The design marks cited in paragraph (a) of the statement of opposition are illustrated below.
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As the word phrase THE BODY SHOP forms a dominant component of the design marks, and as the word phrase THE BODY SHOP would be perceived as a trade-mark per se (in this regard see Nightingale Interloc v. Prodesign Ltd. (1984), 2 C.P.R.(3d) 535 at 538 under the heading Principle 1 (TMOB)), I will refer to the opponent’s registration nos. 286,211; 288,081; and 422,827 collectively as the mark THE BODY SHOP. Further, since the French word LE is equivalent to the English word THE, I will consider that the two marks THE BODY SHOP and LE BODY SHOP are equivalent to the average bilingual consumer: see Etablissements Leon Duhamel v. Créations K.T.M. Inc., 11 C.P.R. (3d) 33 at 42-43 (TMOB); see also Les Vins La Salle Inc. v. Les Vignobles Chantecler Ltée, 6 C.P.R. (3d) 533 at 535 to 536 (TMOB).
The applicant responded to the statement of opposition by filing and serving a counter statement. Paragraph 2 of the counter statement is reproduced below.
The opponent in its written argument submits that the allegations of fact and the trade-marks referred to in Schedule 1 of the counter statement should not be taken into consideration in determining the outcome of this proceeding because the cited marks have not been proved by evidence. I agree. Although this Board may exercise its discretion to review the trade-marks register in order to confirm the existence of registrations or applications, the Board only exercises such discretion in limited circumstances: see Quaker Oats Co. of Canada v. Menu Foods Ltd. (1986), 11 C.P.R. (3d) 410 at 411 (TMOB) and Royal Appliance Mfg. Co. v. Iona Appliance Inc. (1990), 32 C.P.R.(3d) 525 at 529 (TMOB). The usual manner for a party to evidence the state of the register is by means of certified copies of the registrations or the pending applications relied on or photocopies of the registrations and applications together with an affidavit of the person who made the photocopies: see Quebec Maple Products v. Stafford Foods Ltd. (1988), 20 C.P.R.(3d) 404 at 408 (TMOB). In the instant case the applicant has not provided such evidence to the Board. Therefore, Schedule 1 represents mere unsupported allegations which I cannot take into consideration: see National Starch Co. v. Sealweld Canada Ltd. (1974), 15 C.P.R.(2d) 51 at 53 (TMOB) and John Labatt Ltd. v. W.C.W. Western Canada Water Enterprises (1991) 39 C.P.R.(3d) 442 at 445-446 (TMOB).
The opponent’s evidence consists of the affidavit of Betty-Ann Franssen, a senior executive with the opponent’s exclusive franchisee in Canada. Ms. Franssen was cross-examined on her affidavit and the transcript thereof, and exhibits thereto, form part of the evidence of record. The applicant’s evidence consists of the affidavit of Sandra M. Ward, secretary with the firm representing the applicant. Ms. Ward’s affidavit serves to introduce into evidence, among other things, advertisements from various flyers showing “body” products for sale.
Each ground of opposition turns on the issue of confusion between the applied for mark THE BODY EMPORIUM and the opponent’s mark (and trade-name) THE BODY SHOP. The material dates to consider the issue of confusion is the date of my decision with respect to the first ground of opposition alleging non-registrability; the date of filing the application (that is, October 18, 1993) with respect to the second ground of opposition alleging non-entitlement; and the date of opposition (that is, August 21, 1995) with respect to the third ground alleging non-distinctiveness. However, in the circumstances of this case, nothing turns on whether the issue of confusion is determined at any particular date.
The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2), between the applied for mark THE BODY EMPORIUM and the opponent's mark THE BODY SHOP. The presence of an onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd. (1990) 30 C.P.R.(3d) 293 at 297-298 (F.C.T.D.). The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are set out in Section 6(5) of the Act: 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; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.).
The applied for mark THE BODY EMPORIUM possesses a fairly low degree of inherent distinctiveness since there is a direct connection between the mark and the wares cited in the application namely, cosmetic and personal care products which are intended to be applied to the body. There is no evidence that the applied for mark THE BODY EMPORIUM acquired any reputation in Canada at any material time. The opponent’s mark THE BODY SHOP possesses a somewhat greater degree of inherent distinctiveness owing to the “double entendre” meaning of a body shop namely, a shop where automotive bodies are made or repaired: see Body Shop International PLC v. Bodyline Cosmetics Ltd. (1995) 61 C.P.R.(3d) 400 at 403 (TMOB). Ms. Franssen’s evidence is that the opponent has been operating in Canada (through its main Canadian franchisee) since 1980; that as of September 1986 there were 118 retail stores operating across Canada under the opponent’s mark THE BODY SHOP; that sales of products under the mark THE BODY SHOP totalled $45 million in 1989 rising steadily to $97 million in 1995; and that THE BODY SHOP enterprise has received editorial coverage in Canadian newspapers including The Gobe & Mail, The Toronto Star, The Calgary Sun and Le Journal de Montreal for its products as well as for its involvement in charitable and environmental issues. Ms. Franssen’s affidavit evidence concerning the opponent’s sales and operations were not queried or challenged at her cross-examination; her affidavit evidence concerning editorial coverage was queried and confirmed. Accordingly, I am prepared to infer that the opponent’s mark and trade-name THE BODY SHOP had acquired a significant reputation in Canada at all material times.
The length of time that the marks in issue have been in use favours the opponent as it has been using its mark (and trade-name) in Canada since 1980. Further, the evidence shows that such use has been fairly extensive since about 1989, that is, during a period of four years prior to the earliest material date. The nature of the parties’ wares are essentially the same namely, cosmetic and personal care products. However, the parties’ channels of trade would be expected to vary. As noted by counsel for the applicant, the evidence is clear that the opponent sells only THE BODY SHOP brand products only through THE BODY SHOP retail outlets. Given the emphasis that the opponent places on projecting a certain image namely, an environmentally concerned and knowledgeable manufacturer and retailer, I find it unlikely that the opponent would contemplate any deviations from its long established marketing strategy. Thus, the applicant’s THE BODY EMPORIUM wares would not be sold in the opponent’s stores nor would the opponent’s THE BODY SHOP wares be sold though retail outlets that would sell the applicant’s wares. However, there is potential for the parties’ wares to be sold in adjacent stores in shopping malls or otherwise through stores in close proximity.
There is a fair degree of resemblance between the marks in issue visually, aurally, and in ideas suggested. The visual and aural resemblance between the marks owes to the prefix THE BODY common to both marks. In this regard, the first portion in a trade-mark is far the more important for the purpose of distinction: see Conde Nast Publications Inc. v. Union Des Editions Modernes (1979) 26 C.P.R.(2d) 183 at 188 (F.C.T.D.); see also Pernod Ricard v. Molson Breweries (1992), 44 C.P.R. (3d) 359 at 370 (F.C.T.D.). Further, the word “emporium” is roughly synonymous to the noun “shop.” Thus, the idea suggested by the marks in issue, at least as a matter of first impression and imperfect recollection, is a retail outlet where cosmetic and/or personal care products may be purchased. At the oral hearing counsel for the applicant argued that the opponent operates “boutiques” rather than “shops,” and that there is a substantive difference between a “boutique” and an “emporium.” In my view, such analysis has little usefulness in the instant case. The opponent’s retail outlets would be viewed by the general public as specialty stores - without the need for further differentiation as to the exact nature of the outlet.
The examples of advertising attached as Exhibit 3 to Ms. Ward’s affidavit are intended to demonstrate that various cosmetic and/or personal care items are sold under trade-marks comprised of the word BODY. In my view, in most of the examples shown the word BODY is used as part of a descriptive phrase such as “body oil” or “body wash” or “body spray” rather than as a component of a trade-mark. Thus, Ms. Ward’s evidence is of little assistance to the applicant.
The Bodyline Cosmetics case, above, is somewhat similar on its facts to the instant case.
In that case I concluded as follows (at p. 405):
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. I have also considered that the opponent's mark [THE BODY SHOP] has acquired a significant reputation in Canada, that the parties' wares are essentially the same, and that the marks resemble each other to a fair extent. It may be that the average consumer, already familiar with the opponent's mark, might conclude that the mark BODYLINE is a new mark introduced by the opponent for use in association with some particular lines of its merchandise. In any event, regardless of whether the average consumer would reach such a conclusion, I am in a state of doubt whether the applied for mark BODYLINE is confusing with the opponent's mark THE BODY SHOP. It follows that the applicant has failed to meet the legal onus on it to show that the marks in issue are not confusing.
I have arrived at the same conclusion in the instant case. Keeping in mind the acquired distinctiveness of the opponent’s mark THE BODY SHOP and that the applicant has not established that the term THE BODY is a common component of marks used in association with cosmetic and/or personal care products, I am in a state of doubt whether the marks in issue are confusing. It follows that the subject application must be refused.
DATED AT HULL, QUEBEC, THIS 22nd DAY OF JUNE, 1999.
Myer Herzig,
Member,
Trade-marks Opposition Board