TRADE MARKS |
Registration |
Merial LLC v. Novartis Animal Health Canada Inc.
T-1260-99
Hansen J.
31/1/01
12 pp.
Appeal from Trade-marks Opposition Board's refusal of registration of applicant's trade-mark "Eliminex" proposed for use in association with veterinary anti-parasitic preparations on ground confusing with respondent's previously applied for mark "Eliminator" proposed for use in association with insecticidal ear tags--Board concluded existing "Elimin-Odor" registration for use in association with "veterinary products, namely a deodorant" irrelevant because not medical preparation, but home deodorant--Finding wares similar, both being medical preparations for veterinary use--Appeal allowed--(1) Whether Board relied on irrelevant evidence in finding nature of wares similar, both being medical preparations, and as consequence gave no weight to previously registered mark "Elimin-Odor"--Parasites may be internal or external--If external, may be addressed by use of repellants, insecticides, not normally considered "medical preparations"--No evidence supporting finding wares "medical preparations"--Reasonably open to Board to conclude deodorant product, although for veterinary use, not medical preparation--Not erring in concluding "Elimin-Odor" registration irrelevant--(2) Whether Board erred in giving undue weight to common prefix "Elimin-", common to third party marks in same area, and inherently weak prefix suggesting concept of elimination--Board finding marks bearing fair degree of visual, phonetic resemblance due to common use of prefix "Elimin-"--Degree of resemblance greater since both marks suggesting concept of elimination--Use of prefix "Elim-" suggesting notion of elimination, but no evidence at material date of recognition or association of prefix with respondent's wares--Board noting earlier registration of "Elimix"--Strength of distinguishing aspect of suffix "-ex" significant--In case of applicant's mark, addition of suffix "-ex" creating coined word while suffix "-ator" in respondent's mark creating word found in common vocabulary--Impact of suffix "-ex" as opposed to "-ator" when considering totality of two marks significant--Impact of suffix of greater importance when common prefix weak, non-distinctive--Also resulting in marks being phonetically distinguishable--Opposition Board's conclusion two marks confusing based on common prefix "Elim-" and connotation of elimination failing to take into account totalities of two marks--At material date, applicant's trade-mark would not cause purchaser to infer applicant's wares emanate from same source as those of respondent--Appeal allowed.