Citation: 2021 TMOB 79

Date of Decision: 2021-04-28

IN THE MATTER OF AN OPPOSITION

	Cilag GmbH International	Opponent
and
	Yiwu Qiaohuo World Electronic Commerce Co.	Applicant
	1,817,558 for PILATEN & Design	Application

Introduction

[1] Cilag GmbH International (the Opponent) is a manufacturer of pharmaceutical and medical products and active ingredients. It opposes registration of the trademark PILATEN & Design (the Mark) reproduced below, which is the subject of application No. 1,817,558 (the Application), filed by Yiwu Qiaohuo World Electronic Commerce Co. (the Applicant) on the basis of proposed use of the Mark in Canada in association with the following goods (the Goods): “Soaps for household use; laundry stain removers; Shoe wax; ethereal oils for the manufacture of perfumes; Cosmetics; Beauty masks; Dentifrices; Incense; Cosmetic kits”:

[2] The main issue in this proceeding is whether there would be a likelihood of confusion between the Mark in association with the Goods and either one or more of the Opponent’s registered trademarks that include or consist of the word PENATEN for, among other things, skin care preparations, as set out in the attached Schedule A (collectively referred to as the PENATEN Marks).

[3] For the reasons that follow, the application is refused.

The record

[4] The Application was filed on January 10, 2017 and advertised for opposition purposes in the Trademarks Journal on December 27, 2017.

[5] On May 28, 2018, the Opponent filed a statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). This Act was amended on June 17, 2019. All references herein are to the Act as amended, with the exception of references to the grounds of opposition which refer to the Act before it was amended (see section 70 of the Act which provides that section 38(2) of the Act, as it read prior to June 17, 2019, applies to applications advertised before that date).

[6] The grounds of opposition raised by the Opponent can be summarized as follows:

(a) The Mark is not registrable pursuant to section 12(1)(d) of the Act as it is confusing with the Opponent’s PENATEN Marks.

(b) The Applicant is not the person entitled to registration of the Mark pursuant to section 16(3)(a) of the Act because, as of the filing date of the Application, and at all material times, the Mark was confusing with the Opponent’s PENATEN Marks, previously used by the Opponent in Canada.

(c) The Mark is not distinctive pursuant to section 2 of the Act because it does not and is not capable of distinguishing the Applicant’s Goods from those of the Opponent.

[7] On August 7, 2018, the Applicant filed and served a counter statement denying each ground of opposition pleaded in the statement of opposition.

[8] In support of its opposition, the Opponent filed the affidavit of Suzanne DePrizio, Head of the Marketing for consumer brands in Canada at Johnson & Johnson, sworn December 7, 2018 (the DePrizio affidavit). Ms. DePrizio was not cross-examined on her affidavit.

[9] The Applicant elected not to file any evidence.

[10] Neither party submitted written representations. An oral hearing was not requested.

Analysis

The parties’ respective burden or onus

[11] The Opponent has the initial evidential burden to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once that burden is met, the Applicant bears the legal onus of establishing, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155].

Ground of opposition based on non-registrability of the Mark under section 12(1)(d)

[12] I have exercised the Registrar’s discretion to confirm that each of the four trademark registrations pleaded by the Opponent are in good standing as of today’s date, which is the material date for assessing a section 12(1)(d) ground of opposition [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 1991 CanLII 11769 (FCA), 37 CPR (3d) 413 (FCA)].

[13] Hence, the Opponent has met its evidential burden in respect of this ground of opposition. The Applicant must therefore establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Mark and either one or more of the Opponent’s PENATEN Marks.

 

The test for confusion

[14] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

[15] Thus, section 6(2) of the Act does not concern the confusion of the trademarks themselves, but of the goods or services from one source as being from another. In the present case, the question is essentially whether a consumer, with an imperfect recollection of the Opponent’s PENATEN Marks, who sees the Applicant’s Goods in association with the Mark, would think that they emanate from, are sponsored by or approved by the Opponent.

[16] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those listed at section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time the trademarks have been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them. This list is not exhaustive, and all relevant factors are to be considered. Further, all factors are not necessarily attributed equal weight as the weight to be given to each depends on the circumstances [see Mattel, Inc v 3894207 Canada Inc 2006 SCC 22, 49 CPR (4th) 321; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée 2006 SCC 23, 49 CPR (4th) 401; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 for a thorough discussion of the general principles that govern the test for confusion].

The inherent distinctiveness of the trademarks and the extent to which they have become known

[17] The parties’ marks are inherently distinctive. The Mark and the word PENATEN comprising the Opponent’s PENATEN Marks both consist of coined words which do not appear to describe or suggest the goods associated with each of the parties’ marks. In this regard, I note that the printouts from the PENATEN website attached as Exhibit A to the DePrizio affidavit (discussed below) indicate that the Opponent’s PENATEN brand is “named after the Roman gods of protection”. However, there is no evidence that consumers would understand the PENATEN brand to refer to the Penates. I will return to this point when assessing the degree of resemblance between the parties’ marks in appearance, sound and ideas suggested by them.

[18] The degree of distinctiveness of a trademark may be increased by means of it becoming known through promotion or use.

[19] There is no evidence that the Applicant's Mark has been used or has become known in Canada in association with the Goods to any extent.

[20] In comparison, the Opponent’s evidence filed through the DePrizio affidavit speaks to the issue of the Opponent’s use of the PENATEN Marks in Canada as outlined below.

The DePrizio affidavit

[21] In her affidavit, Ms. DePrizio attests to the following:

· The Opponent has been a subsidiary of Johnson & Johnson since 1959 [paras 1 and 2].

· The Opponent owns a family of trademarks that include or consist of the word PENATEN in association with skin care preparations. PENATEN formative marks have been in use since 1904, when PENATEN-branded baby diaper rash cream was first sold in Germany [para 3].

· PENATEN-branded skin care preparations are currently sold in 33 countries and global annual sales revenue is in excess of $75 million USD [para 4].

· Various of the PENATEN Marks have been used in Canada by the Opponent and its predecessors in title since at least as early as 1953. The Opponent exercises direct or indirect control over the character or quality of all goods sold under the PENATEN Marks in Canada. The products currently sold in Canada in association with the PENATEN Marks are the following:

(a) PENATEN Original Medicated Cream

(b) PENATEN Medicated Creamy Diaper Rash Treatment

(c) PENATEN Daily Clear Protection Cream

Ms. DePrizio collectively refers to these three products as the “PENATEN Products” and I will do the same unless indicated otherwise [paras 6-8; Exhibit A: “printouts from the PENATEN website for Canadian consumers, www.penaten.ca, relating to the PENATEN Products, showing the PENATEN Marks and the packaging in which PENATEN Products are sold in Canada”].

In this regard, I note that Ms. DePrizio states that the printouts in Exhibit A are representative of how the PENATEN Marks have been displayed on and in association with the PENATEN Products sold in Canada for at least the last 10 years.

Upon review of this exhibit, I note that the PENATEN Original Medicated Cream and the PENATEN Medicated Creamy Diaper Rash Treatment are intended to soothe pain and irritation caused by diaper rashes and that the PENATEN Daily Clear Protection Cream is a non-medicated, daily protection cream designed for regular use to help protect against the wetness and irritants that can lead to diaper rashes and chafing. All three products can be used by both babies and adults.

I further note at this point of my analysis that I am satisfied that the packaging for the PENATEN Products as shown in this exhibit can be considered as amounting to use of both the PENATEN word mark and the PENATEN design mark of registration No. TMA869180 as depicted in Schedule A.

· PENATEN Products are sold throughout Canada, including by the following retailers: Walmart, Amazon.ca, Well.ca, Toys R Us, Real Canadian Superstore, Loblaws, London Drugs, and Jean Coutu [para 9; Exhibits B1, B2 and B3: “printouts from the websites www.walmart.ca, www.amazon.ca and www.well.ca of webpages for the PENATEN Products”].

Upon review of this exhibit, I note that the PENATEN Products displayed therein match the ones featured in Exhibit A discussed above.

· PENATEN is the No. 1 diaper rash cream brand in Canada by units sold, based on the point-of-sale data compiled by Nielsen, a leading market research firm. Annual sales volume of the PENATEN Products in Canada has for the last few years consistently been in excess of CAD $5 million according to data compiled by Nielsen [para 10].

· The Opponent has, for many decades, invested significant resources in promoting the PENATEN Marks in Canada. Annual spend on advertisements in print publications and other media has averaged over $300,000 for the last five years [para 11].

In this regard, I note that while Ms. DePrizio indicates at paragraph 12 of her affidavit that representative examples of advertisements in print publications, online ads, and social media would be filed in a separate affidavit, no such additional evidence was filed.

· The reputation enjoyed by the PENATEN Marks in Canada is enhanced by the frequent recommendation of the PENATEN Products by experts and writers in the field of skin care and related fields and by other mentions of the PENATEN Products in online and print publications published in and/or distributed in Canada [para 13; Exhibit C].

Upon review of this exhibit, I note that the PENATEN diaper rash cream has indeed been mentioned in various Canadian newspaper articles or commentaries over the last three decades.

[22] To sum up, on a fair reading of the DePrizio affidavit as a whole, I am prepared to find that the Opponent’s PENATEN Marks have acquired a significant reputation in Canada in association with the PENATEN Products. Therefore, such use increases the distinctiveness of the PENATEN Marks.

[23] Accordingly, the overall consideration of this factor favours the Opponent insofar as its skin care medicated creams and daily protection creams are concerned.

The length of time the trademarks have been in use

[24] For the reasons given above, this factor favours the Opponent insofar as its PENATEN Products are concerned.

The nature of the goods, services or business; and the nature of the trade

[25] When considering the nature of the goods, services or business and the nature of the trade, I must compare the Applicant’s statement of Goods with the statements of goods in the registrations relied upon by the Opponent [Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)]. However, those statements must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. Evidence of the parties’ actual trades is useful in this respect [McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); American Optional Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[26] Considering first the goods covered in the Opponent’s registration No. TMA869180, I find that all of the Goods are either identical or overlapping in nature with those of the Opponent. In this respect, I note that both the Opponent’s registration and the Applicant’s Application include in their respective statements of goods, a few broad categories of goods or descriptions, which render the parties’ statements of goods overlapping. For example, I find the Opponent’s “cleaning, polishing, scouring and abrasive preparations for household use” broad enough to encompass or overlap with the Applicant’s “shoe wax” and “laundry stain removers”. Likewise, the Applicant’s “cosmetics” and “cosmetic kits” are directly overlapping with the Opponent’s array of “body and beauty care products”. In the absence of evidence to the contrary, it is fair to assume that the parties’ channels of trade would also be the same or overlapping.

[27] However, with respect to the goods covered in the Opponent’s registration Nos. TMA955434, TMA233166 and UCA51004, I find that only the Applicant’s Goods described as “cosmetics”, “beauty masks” and “cosmetic kits” are overlapping in nature with the goods of the Opponent. Again, in the absence of evidence to the contrary, it is fair to assume that the parties’ channels of trade would also be the same or overlapping with respect to these goods.

The degree of resemblance between the trademarks in appearance or sound or in the ideas suggested by them

[28] In Masterpiece, supra, the Supreme Court of Canada considered the importance of section 6(5)(e) in conducting an analysis of the likelihood of confusion (see para 49):

…the degree of resemblance, although the last factor listed in s. 6(5) is the statutory factor that is often likely to have the greatest effect on the confusion analysis … if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion…

[29] When considering the degree of resemblance between trademarks, they must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the marks [Veuve Clicquot, supra, at para 20].

[30] In Masterpiece, supra at paragraph 64, the Court further advised that while in some cases, the first word or syllable of a trademark will be the more important for the purpose of distinction, the preferable approach to considering resemblance “is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique”.

[31] Considering first the PENATEN word mark of registration Nos. TMA233166 and UCA51004, I find there is a fairly high degree of resemblance between the parties’ marks when sounded, but that there is less resemblance in appearance, and that the ideas suggested by them are at best unclear.

[32] In this respect, both parties’ marks consist of single coined words having no readily apparent meaning in relation to the parties’ goods. In my view, no one part of either of them stands out as being more striking or unique. Otherwise, the first part of the parties’ marks differs somewhat, especially in appearance, owing mainly to the presence of what resembles a stylized apostrophe after the letter “L” in the Mark, which is absent from the PENATEN mark. However, both parties’ marks start with the letter “P”. Furthermore, they share the same number of syllables and the last part of the parties’ marks is identical.

[33] Overall, when all three aspects of resemblance are considered, I find the Mark and the Opponent’s PENATEN word mark are more alike than they are different.

[34] Turning to the PENATEN & Design marks of registration Nos. TMA869180 and TMA955434, again I find that this factor turns largely on the fairly high degree of resemblance between the parties’ marks when sounded.

[35] In appearance and when sounded, I find the dominant or striking element of the Opponent’s design marks remains the word PENATEN, given its relative size to the design of the shepherd and the much smaller words in cursive, “Dr. med.” and “Max Riese”. Furthermore, while I am mindful that the design of the shepherd is an integral part of the Opponent’s design marks in appearance, there would be no determinate pronunciation of that design element when sounded. In terms of ideas suggested, neither of the Opponent’s design marks has any clear meaning in the context of the Opponent’s goods. In this regard, it is unclear how the addition of the design of a shepherd clarifies the meaning of the word PENATEN in the context of the Opponent’s goods. Lastly, while the Opponent’s design mark of registration No. TMA869180 claims colour as a feature of the trademark, I do not consider it to significantly impact the resemblance of the parties’ marks in appearance and, more importantly, is not relevant to the significant resemblance of the parties’ marks when sounded.

[36] Overall, when all three aspects of resemblance are considered, I find the Mark and the Opponent’s PENATEN & Design marks are, at best for the Applicant, about as alike as they are different.

Conclusion regarding the likelihood of confusion

[37] As indicated above, the Applicant bears the legal onus of establishing, on a balance of probabilities, that there is not a reasonable likelihood of confusion as to the source of the parties’ goods. The presence of an onus on the Applicant means that if, after all the evidence is in, a determinate conclusion cannot be reached, the issue must be decided against the Applicant [see John Labatt, supra].

[38] Having considered all of the surrounding circumstances, I arrive at the conclusion that, at best for the Applicant, the probability of confusion is evenly balanced between a finding of confusion and of no confusion insofar as the Opponent’s PENATEN & Design mark of registration No. TMA869180 is concerned. While I have found that the parties’ trademarks are about as alike as they are different and that they both possess some degree of inherent distinctiveness, the Opponent’s trademark has been used and has become known to a significant extent in Canada in association with its PENATEN Products. The Applicant has not established any reputation in association with its Mark. Further, all of the Applicant’s Goods are either identical or overlapping in nature with the registered goods of the Opponent and their associated channels of trade are the same. In the absence of any additional surrounding circumstances favouring the Applicant, I must therefore find against the Applicant.

[39] However, insofar as the Opponent’s registration Nos. TMA955434, TMA233166 and UCA51004 are concerned, I am of the view that except for the Applicant’s goods described as “cosmetics”, “beauty masks” and “cosmetic kits”, the Applicant’s remaining goods are sufficiently different from the Opponent’s registered goods and PENATEN Products that confusion is unlikely.

[40] In view of the above, the section 12(1)(d) ground of opposition succeeds insofar as the Opponent’s registration No. TMA869180 is concerned. It otherwise fails in respect of all of the Applicant’s Goods except the goods “cosmetics”, “beauty masks” and “cosmetic kits”, insofar as the Opponent’s registration Nos. TMA955434, TMA233166 and UCA51004 are concerned.

Ground of opposition based on non-entitlement of the Applicant under section 16(3)(a) of the Act

[41] In order to meet its initial evidential burden under this ground of opposition, the Opponent had to evidence use of its PENATEN Marks prior to the date of filing of the Application and non-abandonment of its marks as of the date of advertisement of the Application [section 16(5)]. As outlined above, the Opponent has met this burden insofar as its PENATEN Products are concerned.

[42] The difference in relevant dates does not affect my analysis above under the section 12(1)(d) ground of opposition. However, the Opponent’s case is weaker under the non-entitlement ground of opposition than it is under the non-registrability ground of opposition in that the section 6(5)(c) factor must now be assessed in view of the actual use of the PENATEN Marks (that is use of the PENATEN Products only), as opposed to the entire scope of the Opponent’s existing registrations.

[43] Accordingly, the section 16(3)(a) ground of opposition succeeds only insofar as the Applicant’s goods described as “cosmetics”, “beauty masks” and “cosmetic kits” are concerned as these goods are not narrowly defined or limited and could thus encompass skin creams potentially close in nature or overlapping with the Opponent’s PENATEN Products. It is otherwise dismissed with respect to the Applicant’s remaining goods.

Ground of opposition based on non-distinctiveness of the Mark under section 2 of the Act

[44] In order to meet its initial evidential burden under this ground of opposition, the Opponent had to show that as of the filing date of the statement of opposition (namely May 28, 2018), its relied upon PENATEN Marks had a substantial, significant or sufficient reputation in Canada with relevant goods so as to negate the distinctiveness of the Applicant’s Mark [Motel 6, Inc v No 6 Motel Ltd, (1981), 56 CPR (2d) 44 (FCTD); Bojangles’ International, LLC v Bojangles Café Ltd, 2006 FC 657].

[45] The Opponent’s evidence of use of the PENATEN Marks in association with its PENATEN Products discussed above with respect to the section 12(1)(d) ground of opposition is sufficient to meet the Opponent’s burden with respect to the section 2 ground of opposition.

[46] The difference in relevant dates does not affect my analysis above under the sections 12(1)(d) and 16(3)(a) grounds of opposition. As the section 2 ground of opposition is not stronger than the section 16(3)(a) ground of opposition, it also succeeds only insofar as the Applicant’s goods described as “cosmetics”, “beauty masks” and “cosmetic kits” are concerned. It is otherwise dismissed with respect to the Applicant’s remaining goods.

Disposition

[47] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the Application pursuant to section 38(12) of the Act.

Annie Robitaille

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

Schedule A

Trademark	Registration No.		Goods
	TMA955434		(1) Baby creams, baby lotions, baby powder, baby shampoo, skin moisturizing cream and lotion, bath oil, bubble bath, cream bath, cosmetic and cleaning cloth/tissues soaked in cosmetic lotions, cotton wool for cosmetic purposes; cotton swabs for cosmetic purposes. (2) Balsam and creams for medicinal purposes, namely face and body creams for allergy-prone and sensitive skin, for dry skin, for acne prone skin, for skin with dilated capillaries, for skin with acne rosacea, for skin with discolorations, for skin after oncologic treatments, for skin irradiated due to radiotherapy, for skin with psoriasis problems, for atopic skin, for skin for pregnant woman or for woman after labor, for children's and baby's skin.
Colour is claimed as a feature of the trade-mark. The colours are blue, yellow, white. The words to the left of the shepherd are: Dr. med. The words to the right of the shepherd are: Max Riese. The outer edge of the circle is yellow; the word PENATEN is dark blue on a light blue background; the words Dr. med. and Max Riese are in dark blue; the shephard is light blue with dark blue outlines on a yellow background; the sheep is white outlined in dark blue.	TMA869180		(1) Baby creams, balsam and creams for medicinal purposes, namely face and body creams for allergy-prone and sensitive skin, for dry skin, for children's and baby's skin. (2) Cleaning, polishing, scouring and abrasive preparations for household use; soaps, namely, skin soaps, body soaps, facial soaps, cosmetic soaps, bath soaps, cream soaps, deodorant soap, hand soaps, disinfectant soaps and liquid soaps; perfumery, essential oils for aromatherapy, for personal use, for baby care, for skin care, body and beauty care products, namely face and body creams and lotions, peeling gels, non-medicated toiletries, body spray and body powder; baby creams, baby lotions, baby powder; hair lotions; dentifrices; hair and skin care products, namely, hair conditioner, hair tonics, baby shampoo, skin moisturizing cream and lotions, bath oil, bubble bath, cream bath, skin preparations, shower gels; shampoo; skin cream (cosmetic); talcum powder for toiletry purposes; cosmetic and cleaning cloth/tissues soaked in cosmetic lotions, cotton wool for cosmetic purposes; cotton swabs for cosmetic purposes; sanitary preparations for medical purposes, namely astringents, analgesic balms, bath salts, medicated hair care preparations, articulation and joint creams, skin cleansing lotions and anti-bacterial wound cleansers, antiseptics, soaps and cleansers; dietetic substances adapted for medical use, namely, vitamin and mineral supplements, food for medically restricted diets, namely dietary fibre enriched food supplements in bar, drink and powder form, water containing minerals; food for babies; plasters, materials for dressings, namely medical plasters, medical dressings, wound dressings, nursing pads; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; balsam and creams for medicinal purposes, namely face and body creams for allergy-prone and sensitive skin, for dry skin, for acne prone skin, for skin with dilated capillaries, for skin with acne rosacea, for skin with discolorations, for skin after oncologic treatments, for skin irradiated due to radiotherapy, for skin with psoriasis problems, for atopic skin, for skin for pregnant woman or for women after labor, for children's and baby's skin, anti-wrinkle face creams for medicinal purposes, anti-cellulite body creams for medicinal purposes, bath preparations, namely bath gels, bath oil and bath salts for the treatment of skin problems, namely, allergy-prone and sensitive skin, dry skin, acne-prone skin, skin with dilated capillaries, acne rosacea, skin discolorations, skin after oncologic treatments, skin irradiated due to radiotherapy, psoriasis, atopic skin, skin of pregnant women or women after labor, for children's and baby's skin, and for cold and flu.
PENATEN	TMA233166		(1) Baby bath. (2) Baby shampoo. (3) Baby puffs. (4) Milk lotion for treating the skin.
PENATEN	UCA51004		(1) Preparations for treating children's skin, namely, medicated creams, oils, soaps and powders.

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENTS OF RECORD

Bereskin & Parr LLP/S.E.N.C.R.L., S.R.L.	For the Opponent
Paul B. Bélanger	For the Applicant