A-140-87
Kellogg Salada Canada Inc. (Appellant)
(Appellant)
v.
The Registrar of Trade Marks and Maximum
Nutrition Limited (Respondents) (Respondents)
INDEXED AS.' KELLOGG SALADA CANADA INC. Y. CANADA
(REGISTRAR OF TRADE MARKS) (CA.)
Court of Appeal, Mahoney and Stone JJ.A. and Gray
D.J.—Toronto, June 10; Ottawa, June 29, 1992.
Trade marks — Registration — Appeal from trial judgment
upholding Opposition Board's rejection for registration of
"Nutri-Vite" for use in association with breakfast and snack
foods as likely to be confused with respondent's registered
marks "Nutri-Max" and "Nutri-Fibre" — More than 225
marks incorporating "Nutri" registered — Appeal allowed —
(1) Issue of confusion to be determined as of date opposition
disposed of — (2) Pepsi-Cola Company of Canada, Ltd. v. The
Coca-Cola Company of Canada, Ltd., [1940] S.C.R. 17
applied although infringement, not registration, case — Rules
of comparison similar in both types of cases, although closer
likeness must be shown in infringement case — All relevant
evidence to be considered in determining whether appellant
discharging burden of showing little likelihood of confusion —
(3) No likelihood of confusion — Common element in mark
causing purchasers to distinguish between marks by other fea
tures — Where marks having common characteristics owned
by different persons less proprietorial significance of common
feature — Suffixes herein different and serving to distinguish
marks.
This was an appeal from the trial judgment upholding the
Opposition Board's rejection of "Nutri-Vite" for registration as
a trade mark for use in association with breakfast and snack
foods. The Trial Judge held that "Nutri-Vite" would likely be
confused with the respondent's registered trade marks "Nutri-
Max" and "Nutri-Fibre", used in Canada in association with
health food products. At trial, the appellant filed new affidavits
not before the Opposition Board showing registration of more
than 225 different trade marks and trade names incorporating
the word "Nutri". The Opposition Board had disallowed evi
dence of the state of the register because the trade mark search
report post-dated the original statement of opposition by many
months. The Opposition Board held that the appellant had
failed to meet the onus of showing that there was no reasona
ble likelihood of confusion between the marks. The Trial Judge
found that the appellant had not discharged the onus of show
ing that little likelihood of confusion existed, that the Court
should not interfere with the finding of the Opposition Board
and that as the validity of the respondent's trade marks was not
in issue, there was no onus on the respondent to demonstrate
that its trade marks were not confusing with those of any third
party. He found that the common use of the prefix "Nutri" was
more relevant to the question of "inherent distinctiveness". He
distinguished Pepsi-Cola Company of Canada, Ltd. v. The
Coca-Cola Company of Canada, Ltd., [1940] S.C.R. 17, on the
basis that it was a case of infringement rather than one of
registration. The appellant submitted that the Trial Judge erred
in the consideration he gave to the general criteria in subsec
tion 6(5) ("regard to all the surrounding circumstances") by
ignoring relevant evidence establishing that many trade marks
and trade names containing the word "Nutri" are in use in
Canada. The issues were: (1) the date as of which the issue of
confusion must be determined; (2) whether the Pepsi-Cola
decision was relevant notwithstanding that it was an infringe
ment case; and (3) whether there was a likelihood of confusion.
Held, the appeal should be allowed.
(1) The issue of confusion must be determined as of the date
that the opposition is disposed of. All of the evidence filed in
the Trial Division must be considered in determining the issue
of confusion.
(2) Pepsi-Cola should not be distinguished simply because it
was an infringement case. The Supreme Court of Canada there
held that the rules of comparison in an infringement case
resemble those in a registration case, although a closer likeness
must be shown in an infringement case and the standard of
proof of confusion to be met differs. Pepsi-Cola did not hold
that register evidence is not to be considered in a registration
case. Therefore, all of the relevant evidence must be consid
ered in determining whether the appellant has discharged the
burden of proof. Furthermore, distinguishing Pepsi-Cola solely
because it was concerned with infringement would cause evi-
dentiary difficulty and produce inconsistency in the decided
cases.
(3) The appellant has discharged the onus of showing that
there is no likelihood of confusion between its trade mark and
either of the respondent's trade marks. The presence of a com
mon element causes purchasers to pay more attention to the
other features of the respective marks and to distinguish
between them by those other features. The fact that marks
which have a common characteristic are owned by different
persons tends to negative any proprietorial significance of the
common feature. The Opposition Board and the Trial Judge
held that none of the marks in issue was inherently distinctive.
Where marks possess little or no inherent distinctiveness,
"small differences will serve to distinguish". "Nutri" has been
commonly adopted in the food trade as suggestive of a desira
ble attribute of foods, particularly health foods. Consumers are
accustomed to making fine distinctions between the various
"Nutri" trade marks. The suffixes herein are totally different
and are sufficient to distinguish the marks. The respondent's
marks may have acquired distinctiveness only in relation to
those portions that are different from all the other "Nutri"
marks. To the extent that the appellant is already the owner of
two trade mark registrations which incorporate the word
"Nutri", it is already entitled to use the prefix "Nutri".
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 6(5), 12(1)(d),
16(3)(a), 29(b), 39(2), 44.
CASES JUDICIALLY CONSIDERED
APPLIED:
Pepsi-Cola Company of Canada, Ltd v. The Coca-Cola
Company of Canada, Ltd., [1940] S.C.R. 17; [1940] 1
D.L.R. 161; affd Coca-Cola Co. v. Pepsi-Cola Co.
(1942), 2 D.L.R. 657; [1942] 2 W.W.R. 257; (1942), 1
C.P.R. 293; 2 Fox Pat. C. 143; [1942] 1 All E.R. 615
(P.C.); Park Avenue Furniture Corp. v. Wickes/Simmons
Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Molson
Cos. v. Distilleries Corby Ltée/Corby Distilleries Ltd.
(1987), 17 C.I.P.R. 19; 18 C.P.R. (3d) 55 (T.M. Opp.
Bd.).
CONSIDERED:
Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd.
(1982), 61 C.P.R. (2d) 42 (F.C.T.D.).
REFERRED TO:
Benson & Hedges (Canada) Limited v. St. Regis Tobacco
Corporation, [1969] S.C.R. 192; (1968), 1 D.L.R. (3d)
462; 57 C.P.R. 1; 39 Fox Pat. C. 207; Andres Wines Ltd.
v. Canadian Marketing International Ltd, [1987] 2 F.C.
159; (1986), 10 C.I.P.R. 206; 13 C.P.R. (3d) 253; 8 F.T.R.
173 (T.D.); affd (1988), 22 C.P.R. (3d) 289; 93 N.R. 253
(F.C.A.); Laurentide Chemicals Inc. v. Les Marchands
Deco Inc. (1985), 7 C.P.R. (3d) 357 (F.C.T.D.); Esprit de
Corp v. S.C. Johnson & Co. (1986), 11 C.I.P.R. 192; 13
C.P.R. (3d) 235; 8 F.T.R. 81 (F.C.T.D.); Beck, Koller &
Coy. (England) Ld's Application for a Trade Mark
(1947), 64 R.P.C. 76; Harrods Ld. — In the Matter of an
Application by — to Register a Trade Mark (1934), 52
R.P.C. 65; Oshawa Group Ltd. v. Creative Resources Co.
Ltd. (1982), 61 C.P.R. (2d) 29 (F.C.A.).
AUTHORS CITED
Fox, Harold G. The Canadian Law of Trade Marks and
Unfair Competition, 3rd ed. Toronto: Carswell Co.
Ltd., 1972.
APPEAL from trial judgment (Maximum Nutrition
Ltd. v. Kellogg Salada Can. Inc. (1987), 11 C.I.P.R.
1; 14 C.P.R. (3d) 133; 9 F.T.R. 136 (F.C.T.D.))
upholding Opposition Board's rejection of "Nutri-
Vite" for registration as a trade mark for use in asso
ciation with breakfast and snack foods. Appeal
allowed.
COUNSEL:
Frank Farfan and Tony Bortolin for appellant
(appellant).
Roger T. Hughes, Q. C. for respondents (respon-
dents).
SOLICITORS:
MacBeth & Johnson, Toronto, for appellant
(appellant).
Sim, Hughes, Dimock, Toronto, for respondents
(respondents).
The following are the reasons for judgment ren
dered in English by
STONE J.A.: This appeal, and the appeal in Court
File No. A-141-87, were heard together. Both are
from a judgment of the Trial Division rendered Feb-
ruary 9, 1987, in appeal proceedings under the Trade
Marks Act, R.S.C. 1970, c. T-10, as amended,
whereby decisions of the Opposition Board, giving
effect to amended oppositions filed on December 18,
1981, to the registration of the appellant's marks
"Nutri-Bran" and "Nutri-Vite" for use in association
with "cereal and vegetable-derived food products to
be used as a breakfast food and snack food", were
upheld. That judgment is fully reported as Maximum
Nutrition Ltd. v. Kellogg Salada Can. Inc. (1987), 11
C.I.P.R. 1 (F.C.T.D.). The present appeal is in respect
of the rejection of "Nutri-Vite" for registration as a
trade mark in Canada.
The application for registration of both marks was
based on proposed use. The respondent's position
before the Opposition Board, as in the Trial Division,
was that the mark "Nutri-Vite" would likely be con
fused with its registered trade marks "Nutri-Max"
and "Nutri-Fibre", both of which had been in use in
Canada for some considerable periods in association
with health food products in the same trade. The Trial
Judge agreed. In doing so, he had regard to the provi
sions of subsection 6(5) of the Act, which reads:
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;
(e) 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 sug
gested by them.
In the Trial Division proceeding, the appellant filed
affidavit material in addition to that which had been
filed before the Opposition Board. This new material
consisted of two affidavits of Michael Godwin sworn
March 20, 1986, the affidavit of Jennifer Stecyk
sworn March 20, 1986 and the affidavit on the regis
ter of Catherine Brunelle sworn April 18, 1986.
These affidavits show more than 225 different trade
marks and trade names registration by different per
sons in Canada which incorporate the word "Nutri"
as a prefix or otherwise. In the proceeding before the
Opposition Board, the appellant filed the affidavit of
a legal secretary to which was attached a copy of a
trade mark search conducted by an agent. This was
found to be inadequate because it constituted hearsay
evidence and also because the search report post
dated the original statement of opposition by many
months. A second affidavit, that of Paul Corimé who
was National Sales Manager of the appellant, was in
large measure ruled inadmissible to the extent that it
too was hearsay.
The Opposition Board held that the onus of show
ing that there was no reasonable likelihood of confu
sion between the marks rested with the appellant.
After finding that none of the marks possessed a
great deal of inherent distinctiveness and weighing
the factors enumerated in subsection 6(5) of the Act,
the Opposition Board, in rejecting registration of the
mark "Nutri-Vite", came to the following conclusion:
Having regard to the above, and bearing in mind that the legal
burden is upon the applicant to establish that there would be no
reasonable likelihood of confusion between the trade marks at
issue, I have concluded that the applicant has failed to meet
this onus in that there would be a reasonable likelihood of con
fusion between the applicant's trade mark NUTRI-VITE
applied to the applicant's wares and to the opponent's regis
tered trade mark NUTRI-MAX as applied to the wares covered
in the opponent's trade mark registration and, in particular, the
cereals and cereal-type products covered in its trade mark
registration. In so concluding, I find that despite the fact that
the trade marks at issue do not possess a great deal of inherent
distinctiveness, the opponent by its evidence has established
that its NUTRI-MAX trade mark has become known in
Canada in association with the wares covered in its trade mark
registration and that there is some similarity between the trade
marks in appearance and sounding and that the applicant's
wares and certain of the opponent's wares are related and
would travel through the same channels of trade.
It reached an identical conclusion in rejecting regis
tration of the mark "Nutri-Bran".
The issue before the Trial Judge was whether there
was a likelihood of confusion between the appellant's
mark and those of the respondent, particularly "Nutri-
Max". In upholding the opposition the Trial Judge
found: that the appellant had not discharged the onus
of showing that little likelihood of confusion existed,
that the Court should not interfere with the finding of
the Opposition Board and that, as the validity of the
respondent's trade marks was not in issue, there was
no onus on the respondent to demonstrate that its
trade marks were not confusing with those of any
third party. While the Opposition Board's decision is
entitled to great weight, it did not relieve the Trial
Judge of the responsibility of determining the issues
in the light of the circumstances: Benson & Hedges
(Canada) Limited v. St. Regis Tobacco Corporation,
[ 1969] S.C.R. 192, at page 200. As we shall see, the
case had also to be considered in the light of all the
evidence including, that which was not before the
Opposition Board.
The appellant does not quarrel with the Trial
Judge's treatment of the specific criteria set forth in
paragraphs 6(5)(a) to (e). Mr. Farfan, counsel for the
appellant, conceded that if the case was properly con
fined to the statutory criteria contained in these
paragraphs, he could not take issue with the result.
He submits, however, that the Trial Judge erred in the
consideration he gave to the general criteria con
tained in that subsection i.e. that the likelihood of
confusion be determined by reference "to all the sur
rounding circumstances" in light of the evidence.
This aspect of the matter was dealt with by the Trial
Judge at pages 5-6, where he stated:
The appellant contends that there is compelling evidence of
another circumstance, a lack of distinctiveness of the respon
dent's registered trade marks in relation to the trade marks and
trade names of third parties, which should have led the Regis
trar or should lead the Court to conclude that there is no likeli
hood of confusion between the appellant's proposed trade
marks and the respondent's registered trade marks. The appel
lant sought to demonstrate through evidence submitted to the
Chairman that the word "NUTRI" is in such common use in
other trade marks, trade names and company names that it is in
no way distinctive. Most of this evidence was held to be defec
tive by the Chairman. New affidavits were filed before me to
overcome those defects. Counsel for the appellant states, and
this was not refuted by counsel for the respondent, that accord
ing to the evidence now on file as of the filing date of the
applicant's applications, May 19, 1981, there were at least 47
trade mark registrations and 43 trade names using the word
"NUTRI". As of the opposition date, December 17, 1981 there
were at least a further three trade names. Since that time there
have been 18 further trade mark registrations or applications
therefor and 66 trade names adopted using this word. I am not
satisfied that such a "surrounding circumstance" adds much to
the appellant's case. It may well be, in fact, that this is more
relevant to the question of "inherent distinctiveness", which
the Chairman and I have both already found the respondent's
trade marks to lack. Further, I reiterate that the trade marks of
the respondent are in no way on trial here. Nor is the respon
dent suing the applicant for infringement of the former's regis
tered trade marks. What the Chairman had to decide on behalf
of the Registrar, and what I have to decide, is whether the
appellant has demonstrated that there is no likelihood of confu
sion between its proposed trade marks and the proposed trade
marks of the respondent referred to in its opposition. Having
regard to the nature of the products and of these particular
trade marks I do not think the appellant has met the onus on it
at least with respect to possible confusion with NUTRI-MAX.
The fact that there are many other trade marks, trade names
and businesses which use the word "NUTRI" is only margin
ally relevant to the issues which must be decided in these pro
ceedings.
He proceeded to distinguish the decision of the
Supreme Court of Canada in Pepsi-Cola Company of
Canada, Ltd. v. The Coca-Cola Company of Canada,
Ltd., [1940] S.C.R. 17, and on appeal to the Privy
Council in Coca-Cola Co. v. Pepsi-Cola Co. (1942),
2 D.L.R. 657 on the basis that it was a case of
infringement rather than one of registration. He based
the distinction on the following passage in the judg
ment of Davis J., at page 32:
The authorities are plain, we think, that the rules of compari
son for testing an alleged infringement of a registered mark
resemble those rules by which the question of similarity on an
application for registration is tested but that it is necessary to
establish a closer likeness in order to make out an actual
infringement than would justify the refusal of an application to
register. The burden on a plaintiff in an infringement action is
to show reasonable probability of confusion, while an applicant
for registration must establish, if challenged, the absence of all
reasonable prospect of confusion.
Mr. Farfan submits that the Trial Judge erred fun
damentally in that the conclusion he reached ignored
relevant evidence of user contained in the register
and elsewhere. That evidence, he says, establishes
that many trade marks and trade names containing
the word "Nutri" are in use in Canada. Actual use in
Canada had to be shown before any of these marks
could be registered 1 and non-use may lead to
expungement. 2 He submits that some admissible evi
dence before the Opposition Board did establish use
of "Nutri" in the market place, that being the portions
of Mr. Corimé's affidavit which were not based on
hearsay. Had all of this evidence been properly con
sidered, he submits, the Trial Judge would have con
cluded that the burden of proof had been met, that no
confusion existed and that registration of "Nutri-
Vite" as a trade mark in Canada would have been
approved.
Mr. Hughes, for the respondent, emphasizes the
statutory scheme within which the opposition had to
be determined. Since the opposition was based on the
assertion that "the trade mark is not registrable", the
provisions of paragraph 12(1)(d) 3 were rendered
applicable, and since it was also based on the asser
tion that "the trade mark is not distinctive", the provi
sions of paragraph 16(3)(a) 4 were rendered applica
ble. Both of those paragraphs bring in the element of
"confusion" which, as we have seen, must be deter
mined by reference to subsection 6(5) of the Act. He
submits that the onus of showing that no likelihood
of confusion exists rests with the appellant as estab
lished by Cattanach J. in Molnlycke Aktiebolag v.
1 See ss. 29(b) and 39(2) of the Act.
2 See s. 44 of the Act.
3 S. 12(1)(d) reads:
12. (1) Subject to section 13, a trade mark is registrable if
it is not
(d) confusing with a registered trade mark; or ....
4 S. 16(3)(a) reads:
16....
(3) Any applicant who has filed an application in accor
dance with section 29 for registration of a proposed trade
mark that is registrable is entitled, subject to sections 37 and
39, to secure its registration in respect of the wares or ser
vices 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;....
Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R.
(2d) 42 (F.C.T.D.), at page 45:
The classic statement of where the onus lies is that of Lord
Watson in Eno v. Dunn (1890), 15 A.C. 252, where he summed
up the position of an applicant for registration in these words
at p. 257:
... here he is in petitorio, and must justify the registration
of his trade-mark by sheaving affirmatively that it is not
calculated to deceive. It appears to me to be a necessary
consequence that, in dubio, his application ought to be
disallowed.
Therefore, where there is a question of confusion between a
trade mark for which an application for registration is being
made and a registered trade mark the onus is on the applicant
for registration to establish no reasonable probability of confu
sion and if that onus is not discharged the application ought not
to be allowed.
This is a constant onus and remains as such. It is not compa
rable to a shifting burden of proof.
Mr. Hughes submits that the Opposition Board and
the Trial Judge correctly decided that the appellant
had failed to discharge this onus. As registration was
opposed, he contends that the appellant was required
to show, at a minimum, actual use in the market
place of the word "Nutri", alone or in combination,
as a trade mark. He turns again to Molnlycke, for the
proposition that in opposition proceedings use of a
trade mark must be established on the evidence and
cannot be presumed. Indeed, at page 48, Cattanach J.
stated:
These considerations apply in the preliminary stages of
application before the Registrar and gives rise to the presump
tion of use of some of the marks unless there is evidence to the
contrary but in opposition proceedings no such presumption
will be made because the opponent is in a position to file such
evidence: see Re Beck, Koller & Co. (England), Ltds. Appl'n
(1947), 64 R.P.C. 76, and Re Harrods Ltds. Appl'n (1934), 52
R.P.C. 65.
Mr. Farfan contends that the decision in Moln-
lycke, when viewed in its totality, does not support
this submission. He draws attention to page 49 of
Molnlycke, supra, where Cattanach J. stated:
This being the case there has been no series of trade marks
enjoying common features which have been adopted by the
respondent but, on the contrary, there have been a plethora of
marks registered for use in association with ladies intimate
wear all using the word "free" with the connotation of freedom
of movement from which it follows the word is one commonly
used in this particular trade without any particular proprietorial
signification. [Emphasis added.]
This view, he says, was based upon evidence of the
state of the register. He cites several additional cases
in the Trial Division and in this Court in which evi
dence of user appears to have been drawn exclusively
from the state of the register: Andres Wines Ltd. v.
Canadian Marketing International Ltd., [ 1987] 2
F.C. 159 (T.D.), at pages 162-163; and on appeal
(1988), 22 C.P.R. (3d) 289 (F.C.A.), at page 290;
Laurentide Chemicals Inc. v. Les Marchands Deco
Inc. (1985), 7 C.P.R. (3d) 357 (F.C.T.D.), at pages
359-360; Esprit de Corp v. S.C. Johnson & Co.
(1986), 11 C.I.P.R. 192 (F.C.T.D.); Park Avenue Fur
niture Corp. v. Wickes/Simmons Bedding Ltd. (1991),
37 C.P.R. (3d) 413 (F.C.A.), at pages 427-428. Most
of all, he relies on Pepsi Cola, supra, and Coca-Cola,
supra. In Pepsi-Cola, at page 33, it appears that the
evidence of user consisted of a number of registra
tions of trade marks and trade names in some form of
the word "cola". At that same page, the Court viewed
these registrations "as some evidence of the general
adoption of the word in names for different beverages
or tonics". That view appears to have found favour
with the Privy Council when the case reached it by
way of final appeal. At page 661 of Coca-Cola, Lord
Russell of Killowen stated:
The defendant put in evidence a series of 22 trade marks
registered in Canada from time to time during a period of 29
years, viz, from 1902 to 1930, in connection with beverages.
They include the mark of the plaintiff and the registered mark
of the defendant. The other 20 marks consist of two or more
words or a compound word, but always containing the word
"Cola" or "Kola" .... Their Lordships agree with the Supreme
Court in attributing weight to these registrations as showing
that the word Cola ... had been adopted in Canada as an item
in the naming of different beverages.
Beck, Koller & Coy. (England)14's Application for a
Trade Mark (1947), 64 R.P.C. 76 and Harrods 14. —
In the Matter of an Application by — to Register a
Trade Mark (1934), 52 R.P.C. 65, referred to by Cat-
tanach J. in Molnlycke, supra, were both decided in
the office of the Comptroller General. The latter deci
sion post-dated Pepsi-Cola and Coca-Cola, but made
no reference to either of them.
Before addressing the overall issue of confusion, I
wish to deal with two sub-issues which arose in argu
ment: the date as of which that issue must be deter
mined and whether the decision of the Supreme
Court of Canada in Pepsi-Cola is relevant to that
issue notwithstanding that it was an infringement
case. The relevant date has been the subject of some
controversy, but the position has recently become
clear in this Court. In the present case, the point has
some significance because state of the register evi
dence, which was largely ruled inadmissible by the
Opposition Board, was admitted in the Trial Division
proceeding. In some of the earlier Trial Division
decisions, the date of application for registration, the
date of opposition and the date an opposition is dis
posed of were each regarded as relevant dates. It is
now established, however, that the date as of which
an opposition is disposed of is the only relevant date:
Park Avenue, supra. There, additional evidence was
filed subsequent to the filing of the application. After
reviewing the cases including that of Oshawa Group
Ltd. v. Creative Resources Co. Ltd. (1982), 61 C.P.R.
(2d) 29 (F.C.A.), Desjardins J.A. stated, at page 424:
In an opposition to registrability, the view adopted by Heald
J.A. in Oshawa appears to me to be the most logical one. I find
no fallacy in the possibility of an update of the situation by the
parties when the issue is whether statutory recognition should
be given to a mark. It is important, it would seem to me, that
the decision of the Registrar or the court be taken on an accu
rate state of the record. Registrability should be decided at the
date of registration or at the date of refusal of registration.
The relevant date, in the case at bar, was the day the Regis
trar disposed of the opposition on the evidence adduced ....
[Footnote omitted.]
The result here is that all of the evidence filed in the
Trial Division must be considered in determining the
issue of confusion.
Secondly, I am unable, with respect, to distinguish
Pepsi-Cola, on the simple ground that it was an
infringement case. As I understand it, the Supreme
Court of Canada there held, indeed, that the rules of
comparison in an infringement case resemble those
in a registration case although a closer likeness must
be shown in an infringement case and that the stan
dard of proof of confusion which a plaintiff in an
infringement case or an applicant in a registration
case must meet differs. I do not read that decision as
holding that while in an infringement case state of
the register evidence may be considered on the issue
of confusion, it is not to be considered on that same
issue in a registration case. If that be the case, the
case at bar cannot be disposed of without considering
all of the relevant evidence in determining whether
the appellant has discharged the burden of proof.
To distinguish Pepsi-Cola from the case at bar
solely because it was concerned with infringement, it
seems, causes evidentiary difficulty and produces
inconsistency in the decided cases. That view was
recently expressed by the Opposition Board in Mol -
son Cos. v. Distilleries Corby Ltée/Corby Distilleries
Ltd. (1987), 17 C.I.P.R. 19 where, at pages 25-26,
Chairman Martin stated:
The opponent further submitted that the state of the register
evidence in the present case can be given little, if any, signifi
cance in view of the decision in Maximum Nutrition Ltd. v.
Kellogg Salada Can. Inc. (1987), 11 C.I.P.R. 1 (sub nom. Kel-
logg Salada Can. Inc. v. Reg. T.M.), 14 C.P.R. (3d) 133, 9
F.T.R. 136 (Fed. T.D.). At p. 138 [C.P.R., p. 6 C.I.P.R.] of that
decision, Mr. Justice Strayer commented as follows on the
state of the register evidence before him:
"The fact that there are many other trade marks, trade names
and businesses which use the word `nutri' is only marginally
relevant to the issues which must be decided in these pro
ceedings."
Mr. Justice Strayer goes on to distinguish the Pepsi-Cola case
noted above on the basis that it was an infringement action
although his reasons for doing so are unclear. Furthermore, his
approach would seem to be at odds with other Federal Court
decisions including the following three recent decisions of the
Trial Division: Laurentide Chemicals Inc. v. Marchands Deco
Inc. (1985), 7 C.P.R. (3d) 357 at p. 365; Esprit de Corp v. S.C.
Johnson & Co. (1986), 1I C.I.P.R. 192; 8 F.T.R. 81 (sub nom.
S.C. Johnson & Son Inc. v. Esprit de Corp), 13 C.P.R. (3d) 235
at pp. 247-48, and Andres Wines Ltd. v. Cdn. Marketing Ltd.,
[1987] 2 F.C. 159, 10 C.I.P.R. 206; 8 F.T.R. 173; 13 C.P.R.
(3d) 253 at 259-60. In the face of this apparent contradiction
and in view of the ambiguity in the Maximum Nutrition case, I
feel obliged to follow the line of decisions supporting the rele
vance of state of the register evidence in cases such as the pre
sent.
The presence of a common element in trade marks
has been held to have an important bearing on the
issue of confusion for, as was stated by the Comptrol
ler General in Harrods Ld., supra, at page 70:
Now it is a well recognised principle, that has to be taken
into account in considering the possibility of confusion arising
between any two trade marks, that, where those two marks
contain a common element which is also contained in a num
ber of other marks in use in the same market, such a common
occurrence in the market tends to cause purchasers to pay more
attention to the other features of the respective marks and to
distinguish between them by those other features.
Much the same point was made in Beck, Koller &
Coy. (England), Ld's, supra. In Molnlycke, supra,
Cattanach J. commented on the significance of a
common feature and on the nature of evidence
required. At page 48, he stated:
If those marks which have common characteristics are regis
tered in the names of different owners then the presumption is
that the common characteristic is a common feature in the
trade and registration ought to be allowed. The fact that the
marks are owned by different persons tends to negative any
proprietorial significance of the common feature and so assists
an applicant.
See also the decisions of this Court in Park Avenue,
supra, at page 428 and Andres Wines, supra, at page
290. In Fox, The Canadian Law of Trade Marks and
Unfair Competition, (3rd ed.), Toronto, 1972, at page
351, the learned editors stated:
It is seldom that only parts common to the trade are taken and
used without the addition of other and possibly distinguishing
features. The usual circumstance is that a part of a trade mark
such as a prefix or suffix of a word, is taken, or in other cases,
only one of the words of a trade mark consisting of a plurality
of words. In considering the possibility of confusion between
any two trade marks, it is a well recognized principle that,
where those two marks contain a common element that is also
contained in a number of other marks in use in the same mar
ket, such a common occurrence in the market tends to cause
purchasers to pay more attention to the other or non-common
features of the respective marks and to distinguish between
them by those other features. This principle, however, requires
that the marks comprising the common elements shall be in
fairly extensive use in the market in which the marks under
consideration are being used or will be used. (Per the Comp-
troller-General in Harrods Ld. (1935), 52 R.P.C. 65 at 70; Dia
mond T. Motor Car Co. Ltd.'s Application (1921), 38 R.P.C.
373 at 378; Bale & Church Ltd. v. Sutton, Parsons & Sutton
(1934), 51 R.P.C. 129 at 144; and see also Marshall's Applica
tion (1943), 60 R.P.C. 147 at 150.)
In the case at bar, both the Opposition Board and the
learned Trial. Judge were of the view that none of the
marks in issue was inherently distinctive. I agree.
Where marks possess little or no inherent distinctive
ness, as is pointed out in Fox, supra, at pages 152-
153, "small differences will serve to distinguish".
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 regis
trations and 43 trade names; as of the amended oppo
sition date, a further 3 trade names existed; since that
date, there has been at least 18 additional trade mark
registrations and applications. I agree with counsel's
submission that it is reasonable from all of this evi
dence 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 distinc
tions between the various "Nutri" trade marks in the
marketplace, by paying more attention to any small
differences between marks. I accept the appellant's
contention that the respondent's marks are weak
because they incorporated a word that is commonly
used in the trade. The suffix "Vite" in the appellant's
mark and the suffixes "Max" and "Fibre" in the
respondent's marks are totally different and appear
sufficient to distinguish them. To the extent that the
respondent's marks may have acquired distinctive
ness, they could only have done so in relation to
those portions that are different (the portions which
do not include the word "Nutri") from all the other
"Nutri" marks. It is noteworthy as well that the appel
lant is itself already the owner of two trade mark
registrations which incorporate the word "Nutri",
"Nutri-Grain" and "Nutri Grain and Design". To that
extent, the appellant is already entitled to use the pre
fix "Nutri".
Based on all of the evidence of surrounding cir
cumstances, I have concluded that the appellant has
discharged the onus of showing that there is no likeli
hood of confusion between the appellant's trade mark
"Nutri-Vite" and either of the respondent's trade
marks "Nutri-Max" and "Nutri-Fibre" notwithstand
ing that they are in respect of food products which
are sold in the same trade. To allow the opposition
would, in the words of Davis J. in Pepsi-Cola, supra,
at page 32, make the respondent "virtually .. . the
possessor of an exclusive proprietary right" in rela
tion to the word "Nutri" in respect of such products.
I would allow the appeal, set aside the judgment of
the Trial Division rendered February 9, 1987, and the
decision of the Opposition Board dated November
29, 1985, and would refer the matter back to the Reg
istrar of Trade Marks on the basis that application
No. 470,140 for registration of the trade mark "Nutri-
Vite" be granted. As this appeal and the appeal in
Court File No. A-141-87 were heard together there
should be one set of costs but with disbursements in
both files.
MAHONEY J.A.: I agree.
GRAY D.J.: I agree.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.