Date: 20100224
Docket: T-450-09
Citation: 2010
FC 214
Ottawa,
Ontario, February 24, 2010
PRESENT: The
Honourable Leonard S. Mandamin
BETWEEN:
VIBE MEDIA GROUP LLC now
INTERMEDIA VIBE HOLDINGS LLC
Applicant
and
LEWIS CRAIG TRADING AS
VIBETRAIN
Respondent
REASONS
FOR JUDGMENT AND JUDGMENT
[1]
The Applicant, Vibe Media Group LLC appeals the
decision of a member of the Opposition Board (Board Member) for Trade-marks dated
January 18, 2009 denying opposition to application No. 1,221,122 for trade-mark
VIBETRAIN by the Respondent, Lewis Craig Trading as VIBETRAIN.
BACKGROUND
[2]
On June 21, 2004 the Respondent filed an
application to register the trade-mark VIBETRAN based on the proposed use in Canada
for wares and services including sound recordings, printed promotional
materials, magazines, clothing, souvenir items and entertainment services
involving the provision of musical and entertainment performances in live,
television, video and internet media. The dominant characteristic of the wares
and services relate to music and culture as reflected in recordings and
performances with related publications and media. The Respondent has not used
the mark VIBETRAIN while waiting for trade-mark approval.
[3]
On August 4, 2005 Vibe Ventures LLC filed a
statement of opposition. On June 30, 2006 Vibe Ventures LLC assigned its
trade-mark rights for VIBE, registration No. TMA526,485 and its pending
applications Nos. 1,16727 and 1, 284,250 to the Applicant, Vibe Media Group LLC.
The Applicant published VIBE, a popular culture magazine focusing on urban
culture at the relevant time, January 18, 2009. On January 4, 2010, the
Applicant filed notice that its interest in the proceeding is now assigned to
Intermedia Vibe Holdings LLC.
DECISION
UNDER APPEAL
[4]
The Board Member began with a correct statement
of the law in her analysis of confusion: “the test for confusion is one of
first impression and imperfect recollection”. She considered the statutory
criteria for confusion set out in section 6 of the Trade-mark Act,
R.S.C., 1985 c. T-13 (the Act) in particular to susections (2) and (5).
[5]
The Board Member found the word “vibe” is not
inherently distinct relying on the Court’s decision in Vibe Ventures LLC v.
3681441 Canada Inc., 45 C.P.R. (4th) 17. She also referred to
the Oxford English Dictionary (OED) defining the word as a noun.
[6]
The Board Member found VIBETRAIN consists of the
fusion of two ordinary disctionary words that are disconnected from their
respective meanings and which, when juxtaposed, are inherently distinctive.
[7]
The Board Member found the marks were “similar
to some extrent”; however, she found they had different meanings “… I find the
word VIBE creates an impression limited to its defined meanings, whereas
VIBETRAIN, a coined word with no apparent meaning, creates a significantly
different impression.”
[8]
She found overlap between the Applicant’s and
Respondent’s wares and services only with respect to a “general interest
magazine”.
[9]
The Board Member found:
“… the issue
is whether a consumer who has a general and not precise recollection of the
Opponent’s mark VIBE, will, upon seeing the Applicants’s mark VIBETRAIN, be
likely to think that the two products share a common source or that the Applicant
wares and serivce have been licenced or otherwise approved by the Oppenent … I
find the average Canadian consumer, who has imperfect recollection of VIBE, is
not likely to assume that the Applicant’s Mark VIBETRAIN for the applied-for
wares and services, share the same source as the Opponent’s mark VIBE for
magazines.”
LEGISLATION
[10]
The relevant legislative
provisions are:
Trade-marks
Act, R.S.C, 1985, c. T-13
|
2. In this
Act,
“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;
…
6. (1) For
the purposes of this Act, a trade-mark or trade-name is confusing with
another trade-mark or trade-name if the use of the first mentioned trade-mark
or trade-name would cause confusion with the last mentioned trade-mark or
trade-name in the manner and circumstances described in this section.
(2) The use
of a trade-mark causes confusion with another trade-mark if the use of both
trade-marks in the same area would be likely to lead to the inference that
the wares or services associated with those trade-marks are manufactured,
sold, leased, hired or performed by the same person, whether or not the wares
or services are of the same general class.
…
(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.
…
56. (1) An
appeal lies to the Federal Court from any decision of the Registrar under
this Act within two months from the date on which notice of the decision was
dispatched by the Registrar or within such further time as the Court may
allow, either before or after the expiration of the two months.
(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.
|
2. Les
définitions qui suivent s’appliquent à la présente loi.
« 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.
…
6. (1) Pour
l’application de la présente loi, une marque de commerce ou un nom commercial
crée de la confusion avec une autre marque de commerce ou un autre nom
commercial si l’emploi de la marque de commerce ou du nom commercial en
premier lieu mentionnés cause de la confusion avec la marque de commerce ou
le nom commercial en dernier lieu mentionnés, de la manière et dans les
circonstances décrites au présent article.
(2)
L’emploi d’une marque de commerce crée de la confusion avec une autre marque
de commerce lorsque l’emploi des deux marques de commerce dans la même région
serait susceptible de faire conclure que les marchandises liées à ces marques
de commerce sont fabriquées, vendues, données à bail ou louées, ou que les
services liés à ces marques sont loués ou exécutés, par la même personne, que
ces marchandises ou ces services soient ou non de la même catégorie générale.
…
(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.
…
56. (1)
Appel de toute décision rendue par le registraire, sous le régime de la
présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui
suivent la date où le registraire a expédié l’avis de la décision ou dans tel
délai supplémentaire accordé par le tribunal, soit avant, soit après
l’expiration des deux mois.
(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.
|
STANDARD
OF REVIEW
[11]
The Applicant has submitted new
evidence as permitted by s. 56(5) of the Act. In Molson Breweries v. John
Labatt Ltd., [2003] 3 FC 145 (C.A.)
at 51, Justice Rothstein wrote:
Having regard
to the Registrar’s expertise, in the absence of additional evidence adduced in
the Trial Division, I am of the opinion that decisions of the Registrar,
whether of fact, law or discretion, within the area of his expertise, are to be
reviewed on a standard of reasonableness simplicitor. However, where
additional evidence is adduced in the Trial Division that would have materially
affected the Registrar’s findings of fact or the exercise of his discretion,
the Trial Division judge must come to his or her own conclusion as to the
correctness of the Registrar’s decision.
Accordingly,
I will assess this appeal having regard to the Applicant’s new evidence.
ANALYSIS
[12]
The Board Member concluded there was nothing
distinctive in the word ‘vibe’, referring to the finding in Vibe Ventures
LLC v. 3681441 Canada Inc., 45 C.P.R. (4th) 17 (Vibe Ventures
LLC) and the OED definition: “vibe: noun (informal) the atmosphere or aura
of a person or place as communicated to and felt by others”. The Board Member
interpreted “vibe” as an adjective referring to its use by the Applicant as “…
the content of the magazine holds a certain aura, a certain vibe, characterizing
the flavour of the magazine”.
[13]
The Respondent supports the Board Member’s finding
by giving as examples the myriad uses of the the word ‘home’ in marks such as
Home Depot, Home Hardware, and the like.
[14]
The Applicant argues the Board Member’s use of
the OED was extrinsic evidence the parties should have had an opportunity to
respond to. It refers to other dictionaries which do not define “vibe”;
concluding it is not an ordinary dictionary word.
[15]
In my view, the distinctive nature of the word
‘vibe’ is more nuanced. In Vibe Ventures LLC, Justice Harrington stated
there was nothing distinctive in the word. He acknowledged its use in different
contexts such as music and youth lifestyle but argued at paragraph 35, “the
genius of the English language is such that a word may mean different things to
different people at different times and in different places.” On this point, he
concluded at paragraph 37:
“Vibe”,
however the English language may be developing, is not so unique as to lend
itself exclusively to a particular culture, a particular age group, particular
wares such as magazines, clothing, or automobiles, or services.”
[16]
The crux is “developing”. At the time Quincy Jones
called his magazine Vibe, the word may have been slang and his use of the word for
his magazine unique. However, the use of the word increased. It is now
sufficiently widespread as to lead one to conclude “vibe” is no longer
inherently distinctive. Nevertheless, through continuous by Mr. Jones’
successors including the Applicant corporation (of which Mr. Jones is
Chairman), the word ‘VIBE’ has acquired a reputation. This reputation was
acknowledged by the Board Member who stated:
Not only is
the word VIBE an ordinary word, it is also suggestive of the Opponent’s
magazine since it can be said the content of the magazine holds a certain aura,
a certain vibe, characterizing the flavour of the magazine.
[17]
The Applicant submitted new evidence to
establish the term ‘train’ can suggest ‘a succession of musical performances’
and reiterates its magazine is popular in the field of music. It appears to me
the dominant word in VIBETRAIN is ‘vibe’ which characterises a musical and
cultural millieau rather than “train” used to denote a succession of things.
[18]
The Applicant also submitted new evidence to
show no other magazine title begins with “VIBE”. The Applicant’s evidence
establishes in addition to magazine sales in Canada,
the mark “VIBE” has been used in Canada in
connection with:
-
TV programs as early as 1998;
-
An annual two-hour TV production called the VIBE
AWARDS show since 2003;
-
A website providing an on-line magazine with information
relating to music and entertainment since 1996;
-
A website providing music and music videos;
-
A mobile phone based service called MVIBE or
MOBILE VIBE through which subscribers receive entertainment updates, album
reviews, and other information;
-
Books relating to music, entertianment and
culture; and
-
Musical recordings (CD’s).
[19]
I find there is a broad overlap in the music,
culture and clothing wares and services which both the Applicant’s and
Respondent’s marks seek to identify. Both rely on similar channels of trade.
They both target people who have an interest in music, entertainment and
culture. For these reasons I find there is a likelihood of confusion in the mind
of a “casual consumer somewhat in a hurry”: Advance Magazine Publishers,
Inc. v. Wise Gourmet Inc., 2009 FC 1208 at 48.
CONCLUSION
[20]
I find the Applicant’s additional evidence
gives rise to reconsideration of the question of confusion between the marks
VIBE and VIBETRAIN.
[21]
Use of the mark VIBE going back to its
originator, Quincy Jones, has given the Applicant a reputation related to its
magazine and associated wares and services in the field of culture, music and
entertainment. That reputation was well known in Canada
at the material time of the filing of the Repondent’s mark on June 21, 2004. I
find considerable overlap exists in the areas of marketing to which the marks
are directed both with respect to subject matter and audience. In these
circumstances, I conclude confusion would arise such that the Respondent’s mark
VIBETRAIN would be seen to be associated with the Applicant’s mark VIBE.
[22]
Accordingly, the appeal is granted.
[23]
The Respondent is self-represented. He refrained
from use of the mark VIBETRAIN pending success of his application. Individuals
are entitled to apply for legislative rights such as trade-mark. The Respondent
has conducted himself responsibly and was initially successful, therefore I
make no order for costs.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that:
1.
The appeal is granted.
2.
The application No. 1,221,122 under the Trade-marks
Act for the Trade-mark VIBETRAIN is refused.
3.
I make no order for costs.
“Leonard S. Mandamin”
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