IN THE MATTER OF AN OPPOSITION
by Johnson & Johnson to application
no. 717,750 for the trade-mark MICOZOLE
filed by Taro Pharmaceuticals Inc.
On November 27, 1992, the applicant, Taro Pharmaceuticals Inc., filed an application to register the trade-mark MICOZOLE, based on proposed use in Canada, in association with pharmaceutical preparations containing miconazole nitrate.
The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated June 9, 1993. The opponent Johnson & Johnson was granted a retroactive extension of time until August 13, 1993 to file its statement of opposition, a copy of which was forwarded to the applicant on September 15, 1993. The applicant responded by filing and serving a counter statement.
The first ground of opposition alleges that the application does not conform to the requirements of subsection 30(i) of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use the applied for mark. In this regard, the opponent alleges that the applied for mark MICOZOLE clearly describes or deceptively misdescribes the character or quality of the applicant’s wares and is therefore prohibited by Subsection 9(1) of the Food and Drugs Act.
Next, the opponent alleges that the applied for mark MICOZOLE is not registrable because (i) pursuant to paragraph 12(1)(b) of the Trade-marks Act, it is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares, (ii) pursuant to paragraph 12(1)(c), it is the name of the applicant’s wares, and (iii) pursuant to paragraph 12(1)(e), the mark is prohibited by Section 10 of the Act in that
“the generic name miconazole is recognized in Canada as designating a kind or quality of wares . . . the alleged
Trade-mark . . . [is] likely to be mistaken for this name.”
Lastly, the opponent alleges that the applied for mark is not distinctive and is not adapted to distinguish the applicant’s wares because of its descriptive or deceptive nature and because the mark is prohibited by Section 10 of the Act.
The opponent’s evidence consists of the affidavit of Nancy MacDonald, Doctor of Pharmacy and a Vice-President of a subsidiary company of the opponent; and the affidavit of Alan J. Booth, trade-mark searcher. Mr. Booth’s affidavit serves to introduce into evidence, by way of exhibits, the results of a search of the trade-marks register for marks consisting of or containing the letter combinations MICO, MIKO, MYCO, and MYKO. Having regard to Dr. MacDonald’s education and background in pharmacology, I am satisfied that she has qualified herself as an expert in that field. I therefore accept fully her testimony, well supported by documentation attached as exhibits to her affidavit, at paragraph 7, page 2 of her affidavit:
However, Dr. MacDonald has not qualified herself as competent to offer expert opinion evidence relating to whether the applied for mark is clearly descriptive of the applicant’s wares (as she purports to do in paragraph 8 of the affidavit) and I have given little weight to her evidence in that regard.
The applicant’s evidence consists of the affidavit of its Vice-President of Sales and Marketing namely, Saul Magder. At the opponent’s request, the Board issued an order for cross-examination of Mr. Magder. However, the opponent did not carry out the order in a timely fashion and ultimately defaulted its opportunity for cross-examination. As its evidence in reply, the opponent submitted the affidavit of Aletta Dekkers, trade-mark agent. Ms. Dekkers’ affidavit serves to introduce into evidence a search of the trade-marks register for marks which start with the prefix MIC and include the letter string ZOL. Both parties filed a written argument and both were represented at an oral hearing. During the course of these proceedings the applicant objected that the Dekkers affidavit was not proper reply evidence, however, it waived such objections at the oral hearing.
One day prior to the oral hearing, the applicant requested leave to file additional evidence relating to the applicant’s commencement of use of its mark MICOZOLE. The opponent responded by objecting to the applicant’s request and by requesting leave to file its own additional evidence in the event that the applicant’s request was granted. At the oral hearing I refused the applicant’s request for the reason that there was no credible explanation why the evidence could not have been submitted much earlier. In any event, nothing turns on whether the applicant’s proposed additional evidence forms part of the record. In the result, there was no need to consider the applicant’s request for leave to file its additional evidence.
Much of Mr. Magder’s evidence relates to procedures for the approval of new drugs under the Food and Drug Act and is not relevant to the issues in this proceeding. Mr. Magder is, however, in agreement with Dr. MacDonald that miconazole and miconazole nitrate are the common names or the proper names for a drug.
The case before me is similar in many respects to the decided cases Parlam Corp. v. Ciba Co. 1961, 26 C.P.R. 78 (Ex.C.) and Canadian Hoescht Ltd. v. ICN Canada Ltd. 1979, 54 C.P.R.(2d) 139 (TMOB). In Parlam, the applied for mark in issue was MIKEDIMIDE for use in association with a pharmaceutical preparation which acted to overcome toxicity of sedatives. The opponent pleaded in the statement of opposition that NIKETHAMIDE is a generic term for a pharmaceutical preparation formulated by the opponent and that the mark MIKEDIMIDE is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares. The Court found that the applied for mark, when sounded, so closely resembled the generic term NIKETHAMIDE that the mark MIKEDIMIDE was not registrable as it was deceptively misdescriptive. The Parlam case was applied in ICN Canada, above, where the mark in issue was FUROSIDE for use in association with a pharmaceutical preparation namely, a diuretic. The opponent pleaded, and demonstrated by evidence, that the term FUROSEMIDE was the generic term for a diuretic pharmaceutical used for various life-threatening conditions. The Chairman of the Board followed the reasoning in Parlam to refuse the application (see p. 143 of the reported decision):
Of course, in the instant case the applied for mark MICOZOLE closely resembles the generic term MICONAZOLE both visually and when sounded.
Another approach adopted by the Board in similar cases is discussed in General Foods Inc. v. International Kafia Coffee Ltd. (1982), 74 C.P.R.(2d) 234 at 240:
In its written argument the applicant points to the mark MYCOZOL (used in association with a preparation for treating skin infections) which appeared on the trade-marks register from 1932 until 1987. The applicant submits that it would be inconsistent for MYCOZOL to have been allowed registration but to deny registration for the mark MICOZOLE. I find that the applicant’s submission is without merit since the Board is not in a position to explain why a particular mark was permitted to proceed to registration by the examination section of the Trade-marks Office: see the Board decisions in Thomas J. Lipton Inc. V. Boyd Coffee Co. (1991), 40 C.P.R.(3d) 272 at 277 and Proctor & Gamble Inc. v. Morlee Corp. (1993), 48 C.P.R.(3d) 377 at 386.
In view of the decided cases discussed above, and in view of the close resemblance between the applied for mark and the generic term MICONAZOLE, I find that the applied for mark MICOZOLE is clearly descriptive and not distinctive of the applicant’s wares. Accordingly, the subject application is refused.
It is not necessary to decide whether the applied for mark is prohibited by Section 10 of the Trade-marks Act or Subsection 9(1) of the Food and Drugs Act and I make no finding in that regard. I would, however, express my view that a generic term is not necessarily the type of expression or mark that is contemplated by Section 10 of the Act: see Chairman Metcalfe’s comments at p. 144 of ICN Canada, above, and see H. G. Fox, Canadian Law of Trade-marks and Unfair Competition, 3rd ed., (Toronto, Carswell, 1972), chapter IV at pp. 199-200.
DATED AT HULL, QUEBEC, THIS 3rd DAY OF JULY, 1998.
Myer Herzig,
Member,
Trade-marks Opposition Board