IN THE MATTER OF AN OPPOSITION by Look Communications Inc. to Application No. 1146741 for the trade-mark COMMON LOOK filed by 1323826 Ontario Ltd___________________________
I The Pleadings
On July 12, 2002, 1323826 Ontario Ltd. doing business as NetCentric Technologies (the “Applicant”) filed an application to register the trade-mark COMMON LOOK (the “Mark”), application number 1146741, in association with computer software for checking the compliance of websites with established standards (the “Wares”). The application is based on proposed use in Canada and was advertised on September 29, 2004 in the Trade-marks Journal for opposition purposes.
Look Communications Inc. (the “Opponent”) filed on November 29, 2004 a statement of opposition, which was forwarded on January 3, 2005 by the Registrar to the Applicant, raising the following grounds of opposition:
1. The Mark is not registrable in view of s. 30(e) of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”) in that at the date of filing of the present application the Applicant never intended itself or through a licensee or by itself and through a licensee to use the Mark in Canada in association with the Wares;
2. The application does not satisfy the criteria set out in s. 30(a) of the Act as the Wares are not described in ordinary commercial terms;
3. The Mark is not registrable in view of s. 30(i) of the Act in that at the date of filing of the present application the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the Wares as the Applicant was or should have been aware at the filing date of the application of the Opponent’s trade-marks and trade-names as well of their wide use in Canada in association with the Opponent’s wares and services;
4. The Mark is not registrable within the meaning of s. 12(1)(d) as it is confusing with the following Opponent’s registered trade-marks:
LOOK TV, registration number TMA519663 in association with the services of broadcasting and distribution of television programs and Internet services;
LOOK, registration number TMA544236 in association with broadcasting and distribution of programming and telecommunication services, namely electronic, television and radio broadcasting of community and information programming, electronic programming guides, namely electronic distribution of television programming listings and broadcasting of community and information programming; on-screen display of interactive programming guide, namely 7-day-in-advance television program listings that include brief program descriptions, provision of news and on-screen distribution of news, information, entertainment through picture-video and sound and/or alphanumeric text recorded electronically; distribution of subscription and non-subscription, digital television and radio programming services via microwave multi-point distribution system and fibre optic cable; provision of interactive services, namely provision of interconnection to the internet, e-mail capabilities, web site hosting, provision of portal internet services; interactive services enabled by internet access or television distribution through modem technology and/or digital set top box receiver;
LOOK & Design registration number TMA 547,313 in association with broadcasting equipment, namely decoder boxes, relay units, remote control handsets, antennae, Modems and in association with Radio and television broadcasting; broadcasting distribution services, namely radio and television communication; carrying and distributing audio, video and data signals by means of microwave multi-point distribution system, satellite, and fibre optics cables. Digital television broadcast distribution services, broadcasting of community and information programming; on-screen display of interactive programming guide, namely 7-day-in-advance television program listings that include brief program descriptions; on-screen distribution of news, information, entertainment through picture-video and sound and/or alphanumeric text recorded electronically; distribution of subscription and non-subscription, digital television and radio programming services; provision of interactive services, enabled by internet access through modem technology and/or the digital set-top box receiver; telecommunication services, namely provision of interconnection to the internet, e-mail capabilities, web site hosting, provision of portal internet services; interactive services enabled by internet access or television distribution through modem technology and/or digital set top box receiver;
LOOK EASYHOSTING registration number TMA 578,780 in association with Web site publishing and hosting software; software to be used in the management of an e-commerce business and to facilitate on-line commercial transactions and in association with Internet services namely domain name registration, management, and renewal; web site hosting and management; email hosting and administration; providing services to others for the management of an e-commerce business;
LOOK ULTRAFAST registration number TMA567917 in association with computer software providing high speed internet access and in association with ; providing high speed internet access;
LOOK ULTRARAPIDE registration number TMA569591 in association with computer software providing high speed internet access and in association with providing high speed internet access;
DIGILOOK & Design registration number TMA574226 in association with Broadcasting equipment, namely decoder boxes, relay units, remote control handsets, antennae and in association with Broadcasting and distribution of informational and educational television programs; audio, video and data transmissions namely, digital television transmission and electronic mail services; Internet services namely providing access to the global computer network; decoding and receiving digital transmission signals; programming services namely electronic distribution of on-screen television program listings;
INFOLOOK & Design registration number TMA586796 in association with Broadcasting and distribution of informational and educational television programs; audio, video and data transmissions namely, digital television transmission and electronic mail services; Internet services namely providing access to the global computer network; decoding and receiving digital transmission signals; programming services namely electronic distribution of on-screen television program listings;
LOOKTOWN registration number TMA574633 in association with computer software and games, namely multi-user interactive internet games, card games, quiz games and games of chance; computer software for use in gaining access to computer information networks for the transfer and dissemination of a wide range of information on a local, national and international basis, and manuals therefore; personal calendar and in association with Interactive internet connections, communications and entertainment services, namely internet access services, world wide web postings, email, chat rooms, sports information, current affairs information and electronic interactive computer games; providing single user and multiple user access to computer information networks for the transfer and dissemination of a wide range of information on a local, national and international basis; direct and remote access services to the internet; providing data communications and network services, namely the facilitation of electronic digital information transmitted between others over the internet; providing online services, namely: providing access to Internet searchable data bases, online directories; providing travel information, advice and bookings; the provision of information in the fields of shopping, horoscope, sports, movies, finance, news; advice on topics of general interest; the provision of classified advertisement services; providing access to information online through radio and video transmissions; providing online services to others for the management and operation of online business transactions and all aspects of commercial activity conducted via a global computer network.;
LOOKBIZ.CA registration number TMA601119 in association with the provision of online electronic and telecommunications services, namely: business Internet services, namely: domain name services, email services, web hosting services, Internet access services via a combination of technologies as well as analog Internet access services, technical support services, Internet Protocol services; retail sale of hardware and software supporting business Internet services delivery;
LOOK COMMUNICATIONS registration number TMA544238 in association with Broadcasting and distribution of programming and telecommunication services, namely electronic, television and radio broadcasting of community and information programming, electronic programming guides, namely electronic distribution of television programming listings and broadcasting of community and information programming; on-screen display of interactive programming guide, namely 7-day-in-advance television program listings that include brief program descriptions, provision of news and on-screen distribution of news, information, entertainment through picture-video and sound and/or alphanumeric text recorded electronically; distribution of subscription and non-subscription, digital television and radio programming services via microwave multi-point distribution system and fibre optic cable; provision of interactive services, namely provision of interconnection to the internet, e-mail capabilities, web site hosting, provision of portal internet services; interactive services enabled by internet access or television distribution through modem technology and/or digital set top box receiver.;
(hereinafter referred to as the « Opponent’s registered trade-marks »)
5. The Applicant is not the person entitled to the registration of the Mark within the meaning of s. 16(3)(a) of the Act as the Mark is confusing with the Opponent’s trade-marks listed above previously used and made known in Canada;
6. The Applicant is not the person entitled to the registration of the Mark within the meaning of s. 16(3)(b) of the Act as the Mark is confusing with the Opponent’s trade-marks LOOK WHO'S CALLING (application number 1069319) and LOOK COMBO (application number 1217040) for which applications had been previously filed in Canada;
7. The Applicant is not the person entitled to the registration of the Mark within the meaning of s. 16(3)(c) of the Act as the Mark is confusing with the Opponent’s trade-names LOOK COMMUNICATIONS, LOOK TV, LOOK, LOOK EASYHOSTING, LOOK ULTRAFAST, LOOK ULTRARAPIDE, DIGILOOK, INFOLOOK, LOOKTOWN, LOOKBIZ.CA, LOOK WHO'S CALLING, LOOK COMEO previously used and made known in Canada;
8. The Mark is not distinctive within the meaning of s. 2 of the Act as it cannot act to distinguish the Wares from the wares and services of the Opponent nor is it adapted so to distinguish them as the Mark is confusing with the Opponent’s trade-marks and trade-names.
The Applicant filed on February 3, 2005 a counter statement denying each and every ground of opposition.
The Opponent filed the affidavits of René Vocelle and Suzanne Antal. The Applicant filed the affidavit of Monir ElRayes. Only the Opponent filed a written argument. No oral hearing was held.
II Discussion of the issues raised by the Opponent
The legal burden is upon the Applicant to show that its application complies with the provisions of the Act, but there is however an initial evidential onus on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once this initial onus is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark. [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company, [2005] F.C. 722]
In its written arguments the Opponent did not make any representations with respect to the second ground of opposition. There is no evidence filed by the Opponent on this issue and as such it has not met its initial onus. Therefore this ground of opposition is dismissed.
The relevant dates for the analysis of the other grounds of opposition are:
➢ Compliance to the requirements enumerated under s. 30 (e) and (i) of the Act: the filing date of the application (July 12, 2002); [See John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R. (3d) 469]
➢ Registrability of the Mark under s. 12(1)(d) of the Act: the date of the Registrar’s decision; [See Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A)]
➢ Distinctiveness of the Mark: the filing date of the statement of opposition is generally accepted as the relevant date (November 29, 2004). [See Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)]
➢ Entitlement to the registration of the Mark where the application is based on proposed use: the filing date of the application. [See s. 16(3) of the Act]
i) Compliance to the requirements of s. 30 (e) and (i) of the Act
I have reviewed the evidence filed by both parties, some of which will be described in more detail hereinafter, and none of it supports the first ground of opposition. As for the third ground of opposition, assuming that it is properly pleaded, there is no evidence of the Applicant’s knowledge of the Opponent’s trade-marks. Even if the Applicant had such knowledge, it did not prevent it from making the statement required under s. 30(i) of the Act. This ground of opposition has a limited scope such as when the trade-mark applied for contravenes a statute or in case of bad faith on the part of the Applicant. [See for example Sapodilla Co. Ltd. v. Bristol Myer Co. (1974), 15 C.P.R. (2d) 152] There is no such allegation in the statement of opposition or evidence in the file to that effect. Consequently the first and third grounds of opposition described above are dismissed.
ii) Registrability of the Mark
The Opponent did file certificates of authenticity for each of the Opponent’s registered trade-marks as exhibits to Mr. Vocelle’s affidavit, the Opponent’s vice-president. Therefore it met its initial onus with respect to this ground of opposition.
The test to determine if there exists a reasonable likelihood of confusion is set forth in s. 6(2) of the Act and I must have regard to all the surrounding circumstances, including those listed in s. 6(5): the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; the length of time the trade-marks or trade-names have been in use; the nature of the wares, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks or trade-names in appearance, or sound or any ideas suggested by them. Those criteria are not exhaustive and it is not necessary to give each one of them equal weight. [See Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.), Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.) and Mattel, Inc. v. 3894207 Canada Inc., (2006) 49 C.P.R. (4th) 321 (S.C.C.)]
For the purpose of this discussion I shall concentrate my analysis of the relevant factors by comparing the Mark with the Opponent’s registered trade-mark LOOK, registration number TMA544236. I shall consider afterwards the argument of the existence of a family of trade-marks put forward by the Opponent.
Neither of the parties’ trade-marks have strong inherent distinctiveness as they are composed of words that are common in the English language. Their intrinsic originality is therefore minimal. However the degree of distinctiveness of a trade-mark might be enhanced through its use in Canada. I will try to summarize the voluminous evidence of use of the Opponent’s registered trade-mark LOOK that it adduced through Mr. Vocelle’s affidavit.
The Opponent is the result of a merger on October 31, 1999 of numerous companies. As it appears from the description of the wares and services associated with the Opponent’s registered trade-marks described above, it is involved in the field of distribution of television programs and providing various services related to the Internet. It presently holds a transmission and broadcasting license issued by the CRTC that will expire on August 31, 2011.
The Opponent’s wares and services are sold and made available in the provinces of Quebec, Ontario, Manitoba, Alberta and British Columbia. Between 1999 and May 2005 the yearly sales of the Opponent’s wares and services in association with its trade-marks varied between over $10 million and close to $37 million for a total exceeding $166 million. Even though those figures are not broken down per trade-mark it appears from the sample evidence filed in the record that there has been some use not only of the trade-mark LOOK but also of some of the Opponent’s other registered trade-marks comprising the word “LOOK” listed above as will be discussed hereinafter. In any event I consider the use of the trade-mark LOOK TV and LOOK & Design as use of the trade-mark LOOK. [See Registrar of Trade Marks v. Compagnie Internationale pour L’Informatique CII Honeywell Bull, S.A. (1985), 4 C.P.R.(3d) 523 (F.C.A.) and Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R.(3d) 535 (T.M.O.B.)]. These trade-marks have been used in association with distributing and providing television programs and various services related to the Internet. I refer specifically to exhibits RV-8 (samples of advertising in newspapers and magazines) and RV-19 (samples of various type of advertising) to Mr. Vocelle’s affidavit.
The number of customers in Canada, to whom the Opponent’s services were provided, between 2000 and 2005 varied between over 90,000 to close to 300,000 customers. The Opponent has spent close to $50 million between 1999 and 2005 to promote its trade-marks. Numerous samples of advertisements have been provided such as ads published in magazines/newspapers or placed on billboards and bus shelters, and commercials aired on radio and broadcasted on television. It also published a bulletin entitled INFOLOOK distributed to its clients wherein it promotes its services in association with its trade-mark LOOK. The trade-mark LOOK also appears on the Opponent’s letterhead and stationary as well as on numerous websites owned by the Opponent.
From this evidence I conclude that, as of at least September 1, 2005 which is the date of execution of Mr. Vocelle’s affidavit, the Opponent’s trade-mark LOOK was known in Canada in association with the services of broadcasting and distribution of television programs and providing Internet services.
The Applicant’s evidence through the affidavit of Mr. Monir ElRayee, the Applicant’s President, consists mainly of a statement that, since the use of the Mark by the Applicant in January 2003, he is unaware of any instances of confusion between the parties’ trade-marks. There is no evidence of use of the Mark in Canada, within the meaning of s. 4(1) of the Act, in association with any of the Wares.
Therefore the first and second criteria listed under s. 6(5) favour the Opponent.
As for the third and fourth criteria, it is the statement of wares in the application and the statement of wares and services in the Opponent's registration that govern. [See Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 at 10-11 (F.C.A.), Henkel Kommanditgesellschaft v. Super Dragon (1986), 12 C.P.R. (3d) 110 at 112 (F.C.A.) and Miss Universe, Inc. v. Dale Bohna (1994), 58 C.P.R.(3d) 381 at 390-392 (F.C.A.)]. However, those statements must be read with a view to determine the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful. [See McDonald's Corporation v. Coffee Hut Stores Ltd. (1996), 68 C.P.R. (3d) 168 at 169 (F.C.A.)] There is no evidence of actual use of the Applicant’s Mark in association with the Wares. Nevertheless I can compare the description of the Wares in the application and the Opponent’s evidence of use of the trade-mark LOOK in association with, amongst others, Internet services. In the absence of proof to the contrary, as the burden is on the Applicant, I can infer from such comparison, that there is some correlation between Internet services and software that is used for checking the compliance of websites with established standards. This factor also favours the Opponent.
It has often been said that the degree of resemblance is the most important factor when assessing the likelihood of confusion between two trade-marks especially when the wares of the parties are identical or similar. [See for example Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d) 145] The first component of the parties’ respective trade-marks is different. The word COMMON is an adjective that puts emphasis on the word LOOK. The Mark encompasses the entirety of the Opponent’s registered trade-mark LOOK. In summary, there is some degree of resemblance between the parties’ respective trade-marks in appearance and sound when considered in their totalities.
As an additional surrounding circumstance the Opponent argues that it owns a family of trade-marks that comprises the word LOOK and as such it should enjoy a wider ambit of protection. I am satisfied from a review of Exhibits RV-8 and RV-19 to Mr. Vocelle’s affidavit that there is evidence of use of the following registered trade-marks:
LOOK & Design
LOOK TV
LOOK EASYSHOOTING
LOOK ULTRAFAST
LOOK ULTRARAPIDE
INFOLOOK & Design
LOOKBIZ.CA
LOOK COMBO
As stated in Mission Pharmacal Co. v. CIBA-Geigy Canada Ltd. (1988) 23 C.P.R. (3d) 238 (T.M.O.B.), this situation enhances the likelihood of confusion with the Applicant’s Mark. [See also McDonald's Corp. v. Yogi Yogurt Ltd. (1982) 66 C.P.R. (2d) 101 (F.C.T.D.)]
The Opponent has also filed state of the register evidence through the affidavit of Ms. Suzanne Antal. There has been no argument developed by the Opponent around the state of the register evidence. In the absence of any argumentation it is difficult for me to speculate on a relevant argument in favour of the Opponent based on such material.
The Applicant’s evidence is aimed at establishing concurrent use of the parties’ respective trade-marks without any instances of confusion. In some instances such argument has been considered as an additional surrounding circumstance. However in this case we have no evidence of use of the Mark by the Applicant. Annexed, as an exhibit to Mr. ElRayes’ affidavit, is a brochure “showing the manner in which the Mark is being used”. A brochure does not constitute evidence of use of a trade-mark in association with wares. [See s. 4(1) of the Act] Under these circumstances the lack of evidence of confusion bears little or no weight.
The Opponent’s registered trade-mark LOOK has been used since at least 1998 and is known in Canada. There is some connection in the nature of the parties’ respective wares and services. There is no evidence that the channels of trade, the nature of the Wares and the Opponent’s services would not overlap. There is also some similarity in the marks in issue, as they both comprise the word LOOK. The Opponent has established use of a family of trade-marks comprising the word LOOK. Consequently, I conclude that the Applicant has not discharged its burden to prove, on a balance of probabilities, that the Mark would not likely cause confusion with the Opponent’s registered trade-mark LOOK when used in association with the Wares.
As a result, I maintain the fourth ground of opposition.
iii) Distinctiveness of the Mark
The Opponent has an evidential onus to show that, as of January 3, 2005, its trade-mark LOOK had become sufficiently known to negate the distinctiveness of the applied-for Mark. [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.)] Once this burden is met, the Applicant has a legal burden to show that the Mark is adapted to distinguish or actually distinguishes the Wares from the Opponent’s wares and/or services throughout Canada. [See Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (T.M.O.B.)]
As mentioned above the Opponent has provided extensive evidence of use and promotion of its trade-mark LOOK prior to the material date. The Opponent has clearly demonstrated that its trade-mark LOOK has become sufficiently known to negate the distinctiveness of the Mark as of the material date. The distinctiveness ground of opposition therefore succeeds.
iv) Entitlement grounds of opposition
Because the Opponent has already been successful on two separate grounds of opposition it is not necessary to adjudicate on the remaining grounds of opposition.
IV Conclusion
Having been delegated authority by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the Applicant’s application, the whole pursuant to s. 38(8) of the Act.
DATED IN BOUCHERVILLE, QUEBEC, THIS DAY 11th DAY OF APRIL 2008.
Jean Carrière
Member,
Trade-marks Opposition Board