Opposition to NUTRAVITA mark fails

In Alticor Inc v Nutravite Pharmaceuticals Inc, the Federal Court of Canada has affirmed the decision of the Trademark Opposition Board (TOB) to deny Alticor's opposition to the registration of the term 'Nutravita' as a trademark. The Federal Court concluded that (i) the marks NUTRAVITA and NUTRILITE would not be confusingly similar when used in association with vitamins, minerals and herbs, and (ii) the term 'Nutravita' is distinctive.

Nutravite Pharmaceuticals filed an application to register the word 'Nutravita' as a trademark in August 1995. Alticor opposed the registration on the grounds that (i) it had been using the mark NUTRILITE for many years, and (ii) during this period sales in association with NUTRILITE were in excess of C$100 million. Alticor claimed that registration of 'Nutravita' as a mark would lead to consumer confusion and 'Nutravita' should not be registered anyway because it lacks distinctiveness.

The TOB denied the opposition because, at the time, there were at least 50 registered marks beginning with the prefix 'Nutr' and 17 pending applications, all in connection with vitamins, minerals and herbs. In addition, a search of the Internet and telephone directories revealed that the prefix is commonly used. The TOB also concluded that the suffixes 'vita' and 'lite' are suggestive of the products in association with which they are used. As a result of these findings, the TOB concluded that the mark NUTRILITE is entitled to very limited protection.

On appeal, the Federal Court affirmed these findings. It also found that (i) the term 'Nutravita' is not lacking in inherent distinctiveness, and (ii) in spite of the fact that there is a fair degree of resemblance between the two marks, consumers would look to other aspects of the mark NUTRAVITA to determine its source.

David Wotherspoon, Fasken Martineau DuMoulin LLP, Vancouver