IN THE MATTER OF OPPOSITIONS
by Metromedia CMR Plus Inc. to applications
Nos. 1,014,396 and 1,014,397 for the trade-
marks METROMEDIA and METROMEDIA
TECHNOLOGIES filed by Metromedia Company
Application No. 1,014,396
[1] On May 4, 1999, the applicant, Metromedia Company, filed an application to register the trade-mark METROMEDIA for the following services:
1) entertainment services in the nature of an ice show; entertainment services in the nature of a skating show
2) billboard advertising and rental of advertising space.
The application is based on use of the mark in Canada since 1964 for the services marked 1) and since 1987 for the services marked 2). The application was advertised for opposition purposes on June 28, 2000.
[2] The original joint opponents, Metromedia CMR Montreal Inc. (“Montreal”), Metromedia CMR Broadcasting Inc. (“Broadcasting”) and Metromedia CMR Plus Inc. (“Plus”), filed a statement of opposition on November 28, 2000, a copy of which was forwarded to the applicant on December 12, 2000. On April 30, 2009, leave was granted pursuant to Rule 40 of the Trade-marks Regulations to remove the first two joint opponents.
[3] The first ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(i) of the Trade-marks Act because the applicant could not have been satisfied that it was entitled to use the applied for trade-mark in Canada. The second ground is that the applicant’s application does not conform to the requirements of Section 30(b) of the Act because the applicant did not use the applied for mark with the applied for services since the dates claimed.
[4] The third and fourth grounds of opposition read as follows:
(b) The applicant is not the person entitled to registration of the Trade-mark under Section 16 since at the first date on which it actually used the Trade-mark in Canada, the trade-mark was confusing with the Opponents’ trade-mark “METROMEDIA” that had been previously used and made known in Canada.
(c) The trade-mark is not distinctive within the meaning of section 2 as the Trade-mark is not adapted to distinguish and is incapable of distinguishing the Applicant’s services from the wares and services of others, particularly the wares associated with and the services performed by the Opponents in association with their aforementioned trade-mark.
[5] The applicant filed and served a counter statement on April 11, 2001. Paragraph 1(d) of the counter statement reads as follows:
The Applicant states and the fact is that paragraph 3(b) does not provide any proper grounds of opposition in that the paragraph does not state in association with which services the Opponent’s alleged trade-mark METROMEDIA had been allegedly previously used or allegedly made known in Canada.
[6] The opponent’s evidence consists of an affidavit of Pierre Béland. As its evidence, the applicant submitted an affidavit of Jonathan P. Gilmore. Both parties filed a written argument and an oral hearing was held on June 16, 2009 at which both parties were represented.
[7] As a preliminary matter, I have considered the contention in the counter statement that the opponent’s third ground based on prior entitlement was not properly pleaded. I agree with the applicant that the wording of that ground lacks specificity in that it does not identify the wares or services in association with which the opponent’s mark had been previously used. However, that deficiency has been remedied by the opponent’s evidence which provides the missing information: see Novopharm Limited v. AstraZeneca AB (2002), 21 C.P.R.(4th) 289 at 293 (F.C.A.).
The Opponent’s Evidence
[8] In his affidavit, Mr. Béland identifies himself as the President and a director of Plus, Montreal and Broadcasting. He details the shareholding structure of the three companies and states that Montreal is a wholly-owned subsidiary of Broadcasting. Furthermore, he states that Montreal granted consent to Plus to use the name Metromedia CMR Plus Inc. by a consent signed by Mr. Béland and that Montreal consented to the use of the name Metromedia CMR Broadcasting Inc. - Diffusion Metromedia CMR Inc. by Broadcasting by a consent issued September 5, 1995. It should be noted that Mr. Béland does not provide any information to support a finding that use of either of these names pursuant to such consents qualifies as properly licensed use pursuant to Section 50 of the Act.
[9] According to Mr. Béland, since its incorporation in September of 1993, Plus has sold indoor and outdoor billboard advertising across Canada under the trade-marks and trade-names METROMEDIA PLUS and MÉTROMÉDIA PLUS. Exhibit PB12 to his affidavit comprises photocopies of sheets illustrating samples of the products, the sheets being marked with the trade-mark METROMEDIA PLUS. According to Mr. Béland, the indoor and outdoor advertising products of Plus generated more than $1 million in 1994 and around $2 million in each of the years between 1995 and 1998.
[10] Mr. Béland states that Broadcasting operates two English language radio stations in Montreal. The ratings are more than 400,000 listeners for one station and more than 100,000 listeners for the other, 90% of those listeners being Quebec residents. Mr. Béland states that each station broadcasts a daily message saying that the station is owned and operated by Metromedia CMR. However, that entity has not been identified or described by Mr. Béland nor has it been relied on in the statement of opposition. In any event, it is difficult to ascribe any reputation of note to a name that is only briefly mentioned once a day on two radio stations. Appended as Exhibit PB18 to the Béland affidavit are photocopies of invoices that include the name Metromedia CMR Broadcasting Inc. - Diffusion Métromédia CMR Inc. However, that trade-name has not been relied on in the statement of opposition.
[11] Mr. Béland states that Montreal operates two French language radio stations in Montreal. The ratings are more than 400,000 listeners for one station and more than 1.2 million listeners for the other with 90% of each audience being in the province of Quebec. Mr. Béland states that each station broadcasts a message twice daily referring to ownership of the station by Metromedia CMR Inc., Metromedia CMR Incorporated or Metromedia CMR Montreal Inc. However, none of those trade-names has been relied on in the statement of opposition. Exhibit PB23 to the Béland affidavit comprises photocopies of invoices which include the name Metromedia CMR Inc. which has not been relied on in the statement of opposition.
[12] Even if the trade-names identified by Mr. Béland had been relied on in the statement of opposition, it is doubtful that they could have supported a ground of prior entitlement or non-distinctiveness. Given the absence of evidence of the ownership of each name and the absence of proper licensing of those names from the owner (whoever that might be), it is not apparent which company benefits from any such use.
The Applicant’s Evidence
[13] In his affidavit, Mr. Gilmore identifies himself as Assistant Secretary and Assistant General Counsel of the applicant. He states that his company uses the trade-marks METROMEDIA, METROMEDIA TECHNOLOGIES, METROMEDIA TECHNOLOGIES INTERNATIONAL and MMT METROMEDIA TECHNOLOGIES in Canada through its licensees Metromedia Technologies, Inc. and Metromedia Technologies International, Inc. in association with the service of producing vinyl outdoor advertisements used in billboard advertising. He states that his company maintains care and control over the nature of the wares sold and services performed in association with the METROMEDIA marks. However, he fails to specifically describe what his company does to maintain such care and control. More importantly, he fails to provide evidence that, under the licenses, his company has direct or indirect control of the character or quality of the services performed.
[14] According to Mr. Gilmore, his company’s licensees take orders to produce vinyl outdoor billboard advertisements. The licensees produce the vinyl billboard ads and then ship them in tubes to their customers. Mr. Gilmore states that the tubes have labels bearing the trade-mark METROMEDIA TECHNOLOGIES. However, the materials appended as exhibits to his affidavit (notably, Exhibits C and D) do not show that trade-mark displayed. Rather they illustrate the use of the trade-mark MMT and the trade-name Metromedia Technologies Inc. According to Mr. Gilmore, total sales of ads in Canada in association with the trade-marks METROMEDIA and METROMEDIA TECHNOLOGIES have been greater than $4.9 million.
[15] Mr. Gilmore further states that, according to company records, the applicant or its predecessor in title owned the Ice Capades ice show between 1964 and 1986. Each program for the Ice Capades identified the show as “a Metromedia Company.”
The Grounds Of Opposition
[16] The first ground does not raise a proper ground of opposition. The opponent failed to include any allegations of fact to support a ground of non-conformance with the provisions of Section 30(i) of the Act. Merely reproducing the wording of Section 30(i) does not suffice. Thus, the first ground is unsuccessful.
[17] As for the opponent’s second ground of opposition, the onus or legal burden is on the applicant to show that its application conforms to the requirements of Section 30(b) of the Act: see the opposition decision in Joseph Seagram & Sons v. Seagram Real Estate (1984), 3 C.P.R.(3d) 325 at 329-330 and the decision in John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 (F.C.T.D.). There is, however, an evidential burden on the opponent respecting its allegations of fact in support of that ground. That burden is lighter respecting the issue of non-conformance with Section 30(b) of the Act: see the opposition decision in Tune Masters v. Mr. P's Mastertune (1986), 10 C.P.R.(3d) 84 at 89. Furthermore, Section 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed: see Labatt Brewing Company Limited v. Benson & Hedges (Canada) Limited et al. (1996), 67 C.P.R.(3d) 258 at 262 (F.C.T.D.). Finally, the opponent’s evidential burden can be met by reference to the applicant’s own evidence: see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R.(3d) 216 at 230 (F.C.T.D.).
[18] As for the applicant’s entertainment services in the nature of an ice show or skating show, the applicant’s own evidence satisfies the opponent’s evidential burden. The only evidence supporting the applicant’s claim to use of its mark for ice shows is the identification of Ice Capades as “a Metromedia Company” in the programs. That phrase does not support a finding of use of the trade-mark METROMEDIA for such services. More importantly, Mr. Gilmore’s statement about the applicant’s ownership of the Ice Capades strongly suggests that the applicant no longer owned the ice show after 1986. Thus, it would appear that there has not been continuous use of the applied for mark with those services.
[19] As for the remaining services, Mr. Gilmore gives no indication that his company rents advertising space for advertisers. Rather, his company appears to be in the business of preparing billboard material for customers who engage someone else to install the advertising. Assuming that such activity qualifies as providing the service of “billboard advertising”, the question remains as to whether the applicant’s mark has been used in association with that service.
[20] As discussed, the Gilmore affidavit is deficient in a number of respects. First, Mr. Gilmore refers to four trade-marks as the METROMEDIA marks without breaking down sales and activities by individual mark. Second, he states that the mark METROMEDIA TECHNOLOGIES appears on product tubes but the exhibits do not support that statement. The use of the trade-name Metromedia Technologies Inc. does not, in this instance, also constitute use of the trade-mark METROMEDIA TECHNOLOGIES. In any event, he does not state that the trade-mark METROMEDIA ‘per se’ appears on such tubes. Third, he fails to adequately evidence a licensing arrangement that would result in properly licensed use of any of the applicant’s marks by its purported licensees.
[21] In view of the above, the opponent has met its evidential burden respecting the second ground. It was therefore incumbent on the applicant to clearly evidence use of its mark as claimed. Since it failed to do so, the second ground of opposition is successful on all counts.
[22] As for the third ground of opposition, there was an initial burden on the opponent to evidence use of the trade-mark METROMEDIA by it prior to the applicant’s filing date (since the claimed dates of first use are no longer valid) and non-abandonment of that mark as of the applicant’s advertisement date. As discussed, the opponent has failed to meet that burden. It is unclear who owns what trade-mark or trade-name. Further, no proper trade-mark licensing arrangements have been evidenced that would satisfy the requirements of Section 50 of the Act. Finally, even if those deficiencies could be overlooked, Mr. Béland failed to evidence use of the trade-mark METROMEDIA ‘per se’ which is the only mark relied on in the statement of opposition. Thus, the third ground of opposition is unsuccessful.
[23] As for the fourth ground of opposition, the onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its services from those of others throughout Canada: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.). Furthermore, the material time for considering the circumstances respecting this issue is as of the filing of the opposition (i.e. - November 28, 2000): see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.) and Park Avenue Furniture Corporatio v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 at 424 (F.C.A.). Finally, there is an evidential burden on the opponent to prove the allegations of fact in support of its ground of non-distinctiveness.
[24] As noted, the opponent has only relied on use of the mark METROMEDIA. Since no use or reputation has been established for that mark in the hands of the opponent, it has not met its initial evidential burden and the fourth ground is therefore also unsuccessful.
[25] In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I refuse application No. 1,014,396.
Application No. 1,014,397
[26] On May 4, 1999, the applicant, Metromedia Company, filed an application to register the trade-mark METROMEDIA TECHNOLOGIES based on use of the mark in Canada since 1987 for the services “billboard advertising and rental of advertising space.” The application was advertised for opposition purposes on August 23, 2000.
[27] The original joint opponents, Montreal, Broadcasting and Plus filed a statement of opposition on January 19, 2001, a copy of which was forwarded to the applicant on January 30, 2001. On April 30, 2009, leave was granted pursuant to Rule 40 of the Trade-marks Regulations to remove the first two joint opponents. The grounds of opposition are essentially the same as in the first opposition as is the evidence of both parties and the written arguments filed. Thus, for the reasons previously discussed, I find that the second ground of opposition is successful and the remaining three grounds are unsuccessful.
[28] In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I also refuse application No. 1,014,397.
DATED AT GATINEAU, QUEBEC, THIS 26th DAY OF JUNE, 2009.
David J. Martin,
Member,
Trade Marks Opposition Board.