Alticor Inc. v. Nutravite Pharmaceuticals Inc., 2003 FCT 718

Date: 20030609

Docket: T-653-01

Citation: 2003 FCT 718

BETWEEN:

                                                                      ALTICOR INC.

                                                                                                                                                       Applicant

                                                                              - and -

                                            NUTRAVITE PHARMACEUTICALS INC.

                                                                                                                                                   Respondent

                                                            REASONS FOR ORDER

KELEN J.:                  

[1]                 This is an appeal pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 as amended (the "Act"), from an order of the Registrar of Trade-marks dated February 16, 2001 refusing the applicant's opposition to the respondent's application No. 790,667 for the trade-mark NUTRAVITA for use in association with "vitamins, minerals and herbs for retail sale through drug stores, pharmacies and health food stores."

[2]                 The Registrar's order was premised upon the negative decision of the Trade-marks Opposition Board. The issues in this appeal turn on whether the Board erred in determining that there was no reasonable likelihood of confusion between the respondent's trade-mark NUTRAVITA and the applicant's trade-mark NUTRILITE

[3]                 The applicant corporation, Alticor Inc., is a successor to the Amway Corporation, which filed the statement of opposition. As will be seen later, this case also involves several subsidiary corporations of Alticor. References to the applicant in these reasons include Alticor and any related or predecessor corporations that are involved in this case.

FACTS

Background

[4]                 The respondent filed an application to register the trade-mark NUTRIVITA based on proposed use on August 22, 1995. It proposes to use the trade-mark in association with "vitamins, minerals and herbs for retail sale through drug stores, pharmacies and health food stores." The application was advertised for opposition purposes on January 17, 1996 and the applicant filed a statement of opposition on June 17, 1996, alleging that the respondent's trade-mark NUTRAVITA is confusing with the its trade-mark NUTRILITE, registered under No. UCA42540 for the following wares:

(1)                 chemical preparations, namely vitamin and mineral food supplements,

(2)                 nutrition enhancing food products, namely food bars, protein powder and light beverage mixes fortified with nutrients, and

(3)                 powder mixes for food and beverage products for weight control.

Three Issues

[5]                 Four grounds of opposition were put forward by the applicant, three of which are at issue in this application. First, the applicant alleged that the respondent's mark is not registrable at the date of the Registrar's decision (February 16, 2001) under paragraph 12(1)(d) of the Act because it was confusing with the applicant's mark:

When trade-mark registrable

12. (1) Subject to section 13, a trade-mark is registrable if it is not

(d) confusing with a registered trade-mark;

Marque de commerce enregistrable

12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants_:

d) elle crée de la confusion avec une marque de commerce déposée;

[6]                   Second, the respondent is not entitled to secure its registration under subsection 16(3) of the Act because its mark was confusing with the applicant's mark as of the date of filing of the application (August 22, 1995):

Proposed marks

16. (3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with

(a) a trade-mark that had been previously       used in Canada or made known in Canada by any other person;

(b) a trade-mark in respect of which an            application for registration had been previously filed in Canada by any other person; or

(c) a trade-name that had been previously      used in Canada by any other person.

Marques projetées

16. (3) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d'en obtenir l'enregistrement à l'égard des marchandises ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n'ait créé de la confusion_:

a) soit avec une marque de commerce              antérieurement employée ou révélée au Canada par une autre personne;

b) soit avec une marque de commerce à           l'égard de laquelle une demande d'enregistrement a été antérieurement produite au Canada par une autre personne;

c) soit avec un nom commercial antérieurement employé au Canada par une autre personne.

[7]                   Finally, the applicant alleged that the respondent's mark lacked distinctiveness at the date of the filing of the statement of opposition (June 17, 1996) was and therefore cannot be validly registered pursuant to paragraph 18(1)(b) of the Act:

When registration invalid

18. (1) The registration of a trade-mark is invalid if

(b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, or

Quand l'enregistrement est invalide

18. (1) L'enregistrement d'une marque de commerce est invalide dans les cas suivants_:

b) la marque de commerce n'est pas distinctive à l'époque où sont entamées les procédures contestant la validité de l'enregistrement;

[8]                 The term "distinctive" is defined in section 2 of the Act:

"distinctive"

"distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;

« distinctive »

« distinctive » Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d'autres propriétaires, ou qui est adaptée à les distinguer ainsi.

Evidence before the Board

        The applicant submitted evidence before the Board relating to the history of the use of the trade-mark NUTRILITE in Canada, which it claims dates back to 1948. The Board noted some discrepancies in the applicant's evidence on the history of use, but was able to discern that NUTRILITE products have been sold in Canada since at least 1984.

[10]            Prior to August 31, 1995, NUTRILITE products were manufactured by Nutrilite Products, Inc. and distributed in Canada by Amway of Canada, Inc. ("ACI") and Amway of Canada, Ltd. ("ACL"), both of whom were recorded as registered users. After that date, NUTRILITE products were manufactured by the Amway Corporation through its Nutrilite

division and distributed by ACI and ACL to independent business operators who are free to keep the product for themselves or resell it others. There was no evidence before the Board that the applicant's wares were distributed to retail outlets, but as that channel of trade was open to the applicant, it was considered by the Board. The Board reviewed the sales of NUTRILITE products in Canada at page 3 of its decision:

Sales of all NUTRILITE products in Canada for the period 1984 to 1996 were in excess of $140 million with over $100 million of that total pertaining to sales of vitamins and minerals. Final sales made by individual distributors or salespersons who number more 150,000. Those individual distributors spent about $800,000 on NUTRILITE promotional materials over the period 1984-1995.

[11]            The respondent introduced an affidavit from Ms. Donna Harris, a Trade-mark Searcher with the firm of Kent & Edgar, containing search results showing that there were 50 trade-marks including the prefix NUTR- registered for use in association with vitamins, herbs, mineral food and food supplements as of August 26, 1997. The results also revealed 17 pending trade-mark applications for use in association with vitamins, herbs, mineral food and food supplements. The respondent submitted entires beginning with the prefix NUTR- found in telephone directories from different Canadian cities and from a "411" search on the internet. Also submitted were results from an internet search for sites featuring NUTR- marks or business names, and evidence of the purchase of products bearing NUTR- marks from health food stores in Ottawa.

Decision of the Board

      In its decision dated February 16, 2001, the Board concluded that there was no reasonable likelihood of confusion between the two trade-marks at any of the relevant dates. The Board's first finding was that both of the trade-marks were "inherently weak" at p. 5:

[T]he prefixes NUTRI and NUTRA are suggestive of the word "nutrition", "nutritious" or "nutrient" and are thus inherently weak in the context of the two marks at issue . . . The [respondent's] mark NUTRAVITA also suggests that the related wares are vitamins. Thus, that mark is inherently weak. The [applicant's] mark NUTRILITE also suggests that the [applicant's] food supplements allow for a "lighter" diet while still maintaining adequate nutrition. Thus, the [applicant's] mark is also inherently weak.

[13]            The Board accepted that the trade-mark NUTRLITE has become known in Canada, that the two marks will be used in association with similar wares, and that the two parties are involved in trades of a similar nature. It also acknowledged at page 6 that "there is a fair degree of resemblance between the marks at issue." Nonetheless, the Board held that the state of the register evidence introduced by the respondent minimized the effect of any resemblance between the marks. The Board found that marks with the prefix NUTR- have been commonly adopted in the relevant marketplace. For various reasons, the Board gave little weight to all the respondent's

evidence except the search results of the Trade-mark Office records, but noted the Harris affidavit showed that there were more than 35 registrations for trade-marks commencing with the letters NUTR- for vitamins, minerals and related wares. In light of that evidence, the Board inferred that "a fair number of those registered marks are in active commercial use and that consequently consumers would be more likely to look to the non-NUTR components of such marks to distinguish them." Accordingly, the trademarks in issue are not confusing, and can be distinguished by consumers.

Evidence tendered on appeal

      Subsection 56(5) of the Act allows evidence that was not before the Registrar to be adduced on an appeal to this Court. It states:

Additional evidence

56. (5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.

Preuve additionnelle

56. (5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi.

[15]            Both parties have taken advantage of this provision. The applicant has submitted evidence showing that ACL was and still is the exclusive Canadian distributor of NUTRILITE products. It has also provided additional evidence on the sale of NUTRILITE vitamins and minerals, specifically concerning the volume of sales and new channels of trade (including direct sales to consumers via a toll free telephone number or the internet) that have been added since 1999. The applicant maintains that its competitors in Canada are not only direct selling companies, but also companies that sell vitamins, minerals and herbal products through retail stores. The applicant has also submitted additional search evidence showing the state of the register as of February 2001 in an affidavit from Ms. Jennifer Leah Stecyk, a trade-mark searcher employed by the law firm representing the applicant. The parties have taken differing positions on what the results of the search show. I will discuss these results in more detail below.

[16]            The respondent has submitted additional evidence from searches of Canadian telephone directories and the internet. This evidences shows that there are a large number of businesses in Canada with trade-names including the component NUTR- and nine websites in the United States from which Canadians can order nutrition related products having trade-marks that include the component NUTR-. The respondent also submitted evidence that health shops in Ottawa sell various nutrition-related products having trade-marks that include the component NUTR-.

STANDARD OF REVIEW

[17]            Although this Court has at times described a section 56 appeal as a trial de novo, the Federal Court of Appeal recently stated that the term trial de novo is not an entirely accurate description of a section 56 appeal: Molson Breweries, a Partnership v. John Labatt Ltd., [2000] 3 F.C. 145 at paras. 24-25 (C.A.). On a section 56 appeal, the Court is reviewing the decision of an expert tribunal that is entitled to a degree of deference: Molson Breweries at para. 27. Mr. Justice Décary, writing for the Court, set out the appropriate standard of review on a section 56 appeal in Christian Dior, S.A. v. Dion Neckwear Ltd., [2002] 3 F.C. 405, 2002 FCA 29 at para. 8:

Decisions of the Registrar, whether of facts, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter, which is synonymous to "clearly wrong". Where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's decision, a judge must come to his or her conclusion as to the correctness of the Registrar's decision (see Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), per Rothstein J.A., at page 168: Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51 (F.C.A.), per Malone J.A., at paragraph 13 and Isaac J.A., at paragraph 10; Garbo Creations Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224 (F.C.T.D.) per Evans J., at page 234).

[18]            The additional evidence adduced in this appeal would not have materially affected the Board's decision. The applicant's evidence fills in some gaps in the history of its trade-mark. At most, this evidence strengthens the Board's finding that the applicant's trade-mark was in use in Canada. Likewise, the respondent's evidence simply reinforces the Board's finding that marks with the prefix NUTR- have been commonly adopted in the relevant marketplace at the different material time. For this reason, I conclude the additional evidence would not have materially affected the Registrar's decision. Consequently, the standard of review in this appeal is reasonableness simpliciter: Sunbeam Products v. Mister Coffee & Services, 16 C.P.R. (4th) 53, 2001 FCT 1218.

THE TEST FOR CONFUSION

[19]            The issue at the heart of this application is whether the trade-marks in question are confusing. The test for confusion is whether the ordinary customer or unwary purchaser would believe the product or service of one trade is likely to be related to the product or service of another trade: Rowntree Co. v. Paulin Chambers Co. (1967), [1968] S.C.R. 134">[1968] S.C.R. 134, 54 C.P.R. 43.

Evaluating confusion is a matter of first impression and imperfect recollection: Battle Pharmaceuticals v. British Drug Houses, Ltd. (1945), [1946] S.C.R. 50">[1946] S.C.R. 50, 5 C.P.R. 71. Subsection 6(5) of the Act contains a list of the factors to be considered when determining whether confusion exists:

What to be considered

6. (5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;

(b) the length of time the trade-marks or          trade-names have been in use;

(c) the nature of the wares, services or            business;

(d) the nature of the trade; and

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

Éléments d'appréciation

6. (5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris_:

a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;

b) la période pendant laquelle les marques      de commerce ou noms commerciaux ont été en usage;

c) le genre de marchandises, services ou         entreprises;

d) la nature du commerce;

e) le degré de ressemblance entre les              marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent.

[20]            Whether two marks are confusing is ultimately a determination of fact. Accordingly, the factors enumerated in subsection 6(5) need not be attributed equal weight: Polysar v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 at p. 298 (F.C.T.D.); and United Artists Corp. v. Pink Panther Beauty Corp., [1998] 3 F.C. 534, 80 C.P.R. (3d) 247 at para. 38 (C.A.) In each case of

confusion, the relative weight given to the individual factors may vary. Moreover, the list of factors in subsection 6(5) is not intended to be exhaustive. The Court should make an effort to examine all surrounding circumstances of the case: Molson Breweries v. Labatt Brewing Co. (1996), 115 F.T.R. 33, 68 C.P.R. (3d) 202.

ANALYSIS

1.         Confusion

      The issues of registrability and entitlement turn solely on whether NUTRAVITA was confusing with NUTRILITE as of the relevant dates. This determination is also important to the issue of distinctiveness because when a trade-mark is found to be confusing with another trade-mark, it cannot be found to be distinctive: Culinar v. Mountain Cholcates Ltd. (1998), 86 C.P.R. (3d) 251 (T.M.O.B.). In its decision, the Board examined whether there was confusion between the two trade-marks as of three dates: the date of the Board's decision (February 16, 2001) with respect to registrability; the filing date of the application (August 22, 1995) with respect to entitlement; and the date of the filing of the statement of opposition (June 17, 1996) with respect to distinctiveness. The parties are in agreement that these three dates are the relevant ones in this application.

[22]            I now turn to the factors enunciated in subsection 6(5). First, neither of the marks in question have a high degree of inherent distinctiveness. The Board's finding that both marks were "inherently weak" is well-founded. Neither mark is strikingly original and both convey a meaning other than that provided by their owners. The prefixes NUTRI- and NUTRA- obviously suggest an association with nutrition. When the prefix NUTRI- was combined with the suffix -LITE a previously unheard of word may have been created, but the meaning it suggests is obvious: a product that allows for a lighter diet while maintaining adequate nutrition. In this sense, NUTRILITE is similar to the trade-mark COMPULIFE, which Muldoon J. dealt with in Compulife Software Inc. v. CompuOffice Software Inc., 13 C.P.R. (4th) 117 at p. 126, 2001 FCT 559 at para. 21. The same can be said for the respondent's trade-mark. As the Board stated, the addition of the suffix -VITA suggests the related wares are vitamins.

[23]            Second, there is also enough evidence to show that the applicant's trade-mark has been in use in Canada since at least 1984. While NUTRILITE is not a household name, the volume of sales associated with the trade-mark indicates that it is known to some degree among customers in the relevant marketplace. This factor favours a finding of confusion.

[24]            Third, it is apparent that the parties' wares are similar in nature. I am also willing to accept that the parties, if not direct competitors, are at least in trades of a similar nature. As the Board stated, selling its products through retail outlets is a channel of trade open to the applicant and is one which the applicant could move into with ease. Whether the respondent's trade mark is confusing with that of the applicant must be considered not only in regard to the applicant's present business practices, but also with regard to the possibility that the applicant might someday operate in any way open to it: Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), [1988] 3 F.C. 91 at para. 24, 19 C.P.R. (3d) 3 at p. 12 (C.A.). This factor also favours a finding of confusion.

[25]            Fourth, as the two trade-marks both incorporate the suffix NUTR- it is apparent that there is a fair degree of resemblance between them.The most obvious difference between the two is that once the common element of NUTR- is removed, three of the five remaining letters in NUTRAVITA differ from those in NUTRILITE. The -VITA suffix also sounds different than the -LITE suffix and contains two syllables as opposed to one. These differences may seem slight, but when two trade-marks contain a common element that is also present in a number of other trade-marks in use in the same market, consumers will distinguish the marks by paying more attention to the other features of the respective marks: Re Harrods Ltd.'s Application (1934), 52 R.P.C. 65 at p. 70; and Polo Ralph Lauren Corp. v. United States Polo Association (2000), 9 C.P.R. (4th) 51 at para. 26 (F.C.A.). I am satisfied that is the case here.

[26]            The evidence indicates that as of the relevant dates the prefix NUTR- was shared with a large number of other trade-marks and business names used in relation to nutritional products. After reviewing the search records attached to the Harris affidavit as exhibits, I concur with the Board's finding that as of August 26, 1997, there were at least 35 trade-marks registrations for trade-marks commencing with the letters NUTR- for vitamins, minerals and related wares. From the filing dates listed on the registrations, it is apparent that a large number of these trade-marks were registered prior to August 22, 1995. On that basis, I find that as of the filing date and the date of the statement of opposition, the trade-marks shared the prefix NUTR- with a variety of other trade-marks.

[27]            The trade-marks continued to share the prefix NUTR- with a variety of other registered trade-marks as of the date of the Board's decision.By my count, the search results found in Ms. Stecyk's affidavit shows that as of February 2001 there were at least 25 trade-marks commencing with the prefix NUTR- registered for vitamins, minerals and herbal supplements, and at least 24 trade-marks commencing with prefix NUTR- registered in association with nutrition-related food products. The search also revealed a large number of trade-marks commencing with the prefix NUTR- registered with respect to other areas of trade related to nutrition, such as baby food products and pharmaceutical ingredients.

[28]            The applicant argues the state of register evidence alone is not sufficient to support the Board's inference that a significant number of these marks were in commercial use. It contends that most of the evidence of commercial use submitted by the respondent is weak and based on hearsay. Admittedly, the respondent's evidence of commercial use of the trade-marks with the prefix NUTR- could be stronger. Nonetheless, while state of register evidence is not determinative (see Haskett v. Queenswear International Ltd. (1997), 74 C.P.R. (3d) 472 at p. 476 (F.C.T.D.)), in this case the fact that there are a significant number of trade-marks sharing similar features registered in the names different parties, combined with some proof of commercial use, is sufficient to support a finding that these NUTR- trade-marks were commonly used in conjunction with a variety of different suffixes at the relevant dates. This means that consumers are used to distinguishing among them, and are not confused.

[29]            Even though a number of these factors suggest a likelihood of confusion, there is no doubt the determining factors in this are the lack of inherent distinctiveness of NUTRILITE and the high number of marks including the prefix NUTR- that are registered with respect to the same wares. A similar conclusion was reached by the Federal Court of Appeal in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd., [1992] 3 F.C. 442, 43 C.P.R. (3d) 349 (C.A.), where

the issue was whether confusion existed between the proposed trade-mark NUTRI-VITE and the trade-marks NUTRI-MAX and NUTRI-FIBRE. Stone J.A., writing for the Court, found that while none of the marks were inherently distinctive, consumers are accustomed to making fine distinctions between various NUTRI trade-mars based on small differences in their suffixes. He stated at pages 359-360 (cited to C.P.R.):

The evidence does show that the word "nutri", as a prefix or otherwise, has been generally adopted and used in the food trade in Canada. As of the filing date, the evidence shows at least 47 trade mark registrations and 43 trade names; as of the amended opposition date, a further three trade names existed; since that date, there have been at least 18 additional trade mark registrations and applications. I agree with counsel's submission that it is reasonable from all of this evidence to conclude that the word "nutri" has been commonly adopted in the food trade as suggestive of a desirable attribute of foods, particularly health foods. I think it may be inferred that consumers of these products are accustomed to making fine distinctions between the various NUTRI trade marks in the market-place, by paying more attention to any small differences between marks. [Emphasis added.]

The statements of Stone J.A. are as true for the trade in vitamins, minerals and herbal products as for the food trade. Therefore, the Federal Court of Appeal has addressed the same issue in the case at bar, and found that consumers are not confused .

[30]            The applicant argues this appeal can be distinguished from Kellogg because the trade-marks at issue in this appeal share a higher degree of resemblance that those in Kellogg. In support its argument, the applicant has referred to the Opposition Board's decision in Amway Corp. v. Nutravite Pharmaceuticals Inc. (1997), 84 C.P.R. (3d) 276 (T.M.O.B.), where the applicant's opposition to another one of the respondent's proposed use trademarks,

NUTRAVITE, was successful. The applicant argues the change from NUTRAVITE to NUTRAVITA is insufficient to avoid a finding of confusion. The Board distinguished the applicant's opposition to the trade-mark NUTRAVITA from the earlier decision at page 7:

The present case is distinguishable from the Amway decision on several grounds. First, the state of the register evidence is more extensive in the present case with roughly twice as many relevant marks having been located by the applicant. Second, there is some evidence of actual use of several third party NUTR-prefixed marks as shown in the second McKay affidavit. No such evidence was present in the Amway case. Third, the second components of the marks at issue bear less resemblance to each other than to the second components of the marks under consideration in the Amway case. Thus, the state of the register and state of the marketplace evidence in the present case becomes more relevant.

[31]            The applicant submits it was an error of law for the Board to conclude that the state of the register evidence and state of the marketplace evidence had become more relevant in the instant case than in Amway. The Court respectfully disagrees. While the Amway decision served as a persuasive precedent, the Board was not bound to follow that decision and was required to make a determination based on the evidence before it. With its first two grounds of distinguishment, the Board was expressing its view that the state of the evidence in this case was sufficient to distinguish it from Amway. This was a reasonable determination and there is no basis upon which the Court can interfere with it.

[32]            Based on the foregoing, it can be inferred that customers of vitamins, minerals and herbal products are accustomed to making minor distinctions between wares bearing the prefix NUTR- and would not be confused between wares bearing the NUTRAVITA trade-mark and those bearing the NUTRILITE trade-mark. For this reason, the Registrar's conclusion on this issue is reasonable.

2. Distinctiveness

      An additional argument with respect to distinctiveness was raised by the applicant at the hearing based on the recent Federal Court of Appeal decision in Boston Pizza International Inc. v. Boston Chicken Inc., 2003 FCA 120, rev'g 15 C.P.R. (4th) 345, 2001 FCT 1024. Pelletier J.A., writing for the Court, stated that for a trade-mark to be valid under subsection 18(1)(b), it must either be adapted to distinguish the holder's wares or services from those of others or acquire distinctiveness through use. The trade-mark at issue in that case, BOSTON CHICKEN, was held not to be distinctive because it had not been in use in Canada and was found to lack inherent distinctiveness. To support this latter proposition, Pelletier J.A. at paragraph 8 relied upon Nadon J.'s (as he then was) finding at the trial level that BOSTON CHICKEN lacked inherent distinctiveness in the context of the paragraph 6(5)(a) of the Act:

Nadon J.'s finding that the BOSTON CHICKEN mark lacked inherent distinctiveness amounts to a finding that the mark is not adapted to distinguish the respondent's services from those of other traders. Consequently, since the mark does not actually distinguish the respondent's services from those of other traders, and is not adapted to do so, its registration is invalid because of its lack of distinctiveness.

[34]            The applicant contends the situation in the case at bar is the same. As NUTRAVITA has not been used in Canada, it cannot have acquire distinctiveness through use. Further, based on the Board's finding that the mark was "inherently weak", it can be concluded that it was not adapted to distinguish the holder's wares or services from those of others.

[35]            However, the case at bar is distinguishable from Boston Pizza. In his decision at paragraph 6, Pelletier J.A. relied upon paragraph 47 of Cattanach J.'s decision in Standard Coil Products (Canada) Ltd. v. Standard Radio Corp., [1971] 1 F.C. 106 (T.D.):

If a trade mark is a coined or invented word it is obviously adapted to distinguish but if a trade mark is prima facie not distinctive, as for example a laudatory epithet or descriptive of the character of quality of the wares, then it becomes a question of fact if the trade mark actually distinguishes the wares.

[36]            By my reading, Nadon J. in Boston Pizza found that the mark BOSTON CHICKEN lacked inherent distinctiveness due to its descriptive character, i.e. it referred to a geographic location coupled with a food product. This interpretation is based upon his adoption at paragraph 66 of the words of Rouleau J. in Prince Edward Island Mutual Insurance v. Insurance Co. of Price Edward Island (1999), 159 F.T.R. 112, 86 C.P.R. (3d) 342. The same cannot be said of the

trade-mark NUTRAVITA. Unlike the components of BOSTON CHICKEN, NUTRAVITA is an invented word, not a descriptive term. While undoubtedly the word NUTRAVITA "suggests" (to use the words of the Board) the related wares are vitamins, it is not merely a commonly used noun, descriptive adjective or place name. By comparison, it has a fundamentally different character than the descriptive term "nutritious vitamins". Therefore, while the mark is "inherently weak" and entitled to a lower degree of protection, it does not entirely lack inherent distinctiveness for the reasons discussed by the Federal Court of Appeal in Kellogg Salada Canada, supra.; namely consumers are accustomed to make fine distinctions between various NUTR trade-marks based on differences in their suffixes. For this reason, the Registrar's conclusion on this point was reasonable.

DISPOSITION

[37]            For the reasons set out above, I find the Board made a reasonable decision in denying the applicant's opposition to the trade-mark NUTRAVITA. Accordingly, this application for judicial review will be dismissed with costs.

"Michael A. Kelen"                                                                                                         ________________________________

          J.F.C.C.

OTTAWA, ONTARIO

JUNE 9, 2003

                          FEDERAL COURT OF CANADA

                              TRIAL DIVISION

           NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD

COURT FILE NO.:         T-653-01

STYLE OF CAUSE:ALTICOR INC.

v.

NUTRAVITE PHARMACEUTICALS INC.

PLACE OF HEARING:      OTTAWA, ONTARIO

DATE OF HEARING:MAY 26, 2003

REASONS FOR ORDER OF THE HONOURABLE MR. JUSTICE KELEN

DATED:                    JUNE 9, 2003

APPEARANCES:

MS. DIANE E. CORNISH FOR THE APPLICANT

MR. MARCUS GALLIE FOR THE RESPONDENT

MS. LISA REYNOLDS

SOLICITORS ON THE RECORD:

OSLER, HOSKIN & HARCOURT LLP FOR THE APPLICANT

OTTAWA, ONTARIO

RIDOUT & MAYBEE LLPFOR THE RESPONDENT

OTTAWA, ONTARIO

             FEDERAL COURT OF CANADA

                                                              Date: 20030609

Docket: T-653-01

BETWEEN:

ALTICOR INC.

                              Applicant

- and -

NUTRAVITE PHARMACEUTICALS INC.          

                                                                     Respondent

REASONS FOR ORDER