IN THE MATTER OF AN OPPOSITION by Sony Corporation to application No. 777,777 for the trade-mark THE WONDER NETWORK filed by David P. Latchman
On March 14, 1995, the applicant, David P. Latchman, filed an application to register the trade-mark THE WONDER NETWORK based upon proposed use of the trade-mark in Canada in association with “Pre‑recorded compact discs, compact discs for use with computers, video tapes, audio tapes” and in association with “Entertainment services namely broadcasting video and interactive video services; satellite distribution of video and interactive video services; provision of interactive on‑line video services; and the production and distribution of video programming.” The applicant disclaimed the right to the exclusive use of the word NETWORK apart from his trade-mark in respect of the services covered in the present application.
The present application was advertised for opposition purposes in the Trade-marks Journal of January 29, 1997 and the opponent, Sony Corporation, filed a statement of opposition on June 27, 1997, a copy of which was forwarded to the applicant on July 23, 1997. The applicant served and filed a counter statement in response to the statement of opposition on August 22, 1997. The opponent submitted as its evidence the affidavit of Therese Garnett while the applicant filed a statement that he would not be filing evidence pursuant to subsection 42(1) of the Trade-marks Regulations. The opponent requested and was granted leave to amend its statement of opposition pursuant to section 40 of the Trade-marks Regulations. Further, both parties filed written arguments and both parties were represented at an oral hearing.
The following are the grounds of opposition asserted by the opponent in its amended statement of opposition:
a) The trade-mark THE WONDER NETWORK is not registrable having regard to the provisions of paragraph 12(1)(d) of the Trade-marks Act in that the applicant’s mark is confusing with its registered trade-mark SONY WONDER, registration No. 443,467, registered June 2, 1995.
b) The trade-mark THE WONDER NETWORK is not registrable having regard to the provisions of paragraph 12(1)(b) of the Trade-marks Act in that the mark is either clearly descriptive or deceptively misdescriptive of the character or quality of the wares and services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.
c) The applicant is not the person entitled to registration of the trade-mark THE WONDER NETWORK in association with the wares and services covered in the present application in that, as of the filing date of the present application, the applicant’s mark was confusing with the opponent’s trade-mark SONY WONDER which had been previously registered as a trade-mark and used in Canada by the opponent as both a trade-mark and trade-name in association with audio and video tapes, theatrical films and printed matter namely books and Internet services.
d) The present application does not comply with the requirements of section 30 of the Trade-marks Act.
e) The applicant’s trade-mark THE WONDER NETWORK is not distinctive because it does not actually distinguish nor is it adapted to distinguish the applicant’s wares and services from the services of others, including the wares of the opponent bearing the opponent’s trade-mark SONY WONDER.
No facts have been alleged by the opponent in support of its section 30 ground. Thus, the fourth ground is contrary to paragraph 38(3)(a) of the Trade-marks Act and has therefore been rejected. Likewise, no evidence has been furnished by the opponent in support of its paragraph 12(1)(b) ground. Consequently, the opponent has failed to meet the evidential burden on it to adduce sufficient admissible evidence which, if believed, would support the truth of its allegations that the trade-mark THE WONDER NETWORK is either clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares or services or of the conditions of or the persons employed in their production or of their place of origin. Moreover, the trade-mark THE WONDER NETWORK, when considered in its entirety, does not appear to have any readily discernible meaning or significance in relation to either the wares or the services covered in the present application. As a result, I have dismissed the second ground of opposition.
As its third ground, the opponent has alleged that the applicant is not the person entitled to registration of the trade-mark THE WONDER NETWORK in that the applicant’s mark was confusing with the opponent’s trade-mark SONY WONDER which had been previously used in Canada by the opponent in association with audio and video tapes, theatrical films, books and Internet services. There is an initial burden on the opponent in view of subsections 16(5) and 17(1) of the Trade-marks Act to establish its use of the trade-mark SONY WONDER in Canada in association with audio and video tapes, theatrical films, books and Internet services prior to the filing date of the present application [March 14, 1995], as well as to show that it had not abandoned its mark in relation to these wares and services as of the date of advertisement of the present application [January 29, 1997].
After considering the Garnett affidavit, I find that the opponent has not established its prior use and non-abandonment of either the trade-mark or trade-name SONY WONDER in Canada in association with audio and video tapes, theatrical films, books or Internet services. In this regard, the Garnett affidavit points to the use of the trade-mark and trade-name SONY WONDER by the Sony Wonder Division of Sony Music Entertainment (Canada) Inc. For evidence of use of the trade-mark SONY WONDER by the Sony Wonder Division to accrue to the benefit of the opponent, the opponent must show that such use has been licensed by or with the authority of Sony Corporation and that Sony Corporation has, under the license, direct or indirect control of the character or quality of the wares or services associated with the trade-mark.
In the present case, the only evidence adduced by the opponent in relation to this issue is paragraph 9 of the Garnett affidavit which provides as follows:
9. I am advised by our counsel and do verily believe that Sony Music Entertainment (Canada) Inc. uses the SONY WONDER trade mark pursuant to the permission of the trade mark owner and parent company, Sony Kabushiki Kaisha (also doing business as Sony Corporation).
Even assuming that the above paragraph were sufficient to show that Sony Music Entertainment (Canada) Inc. was operating under a license from Sony Corporation in relation to its use of the trade-mark SONY WONDER, the opponent has not established that Sony Corporation had, under the license, either direct or indirect control of the character or quality of the wares or services associated with the trade-mark, as required by subsection 50(1) of the Trade-marks Act. Furthermore, while reference is made to the fact that Sony Corporation is owner of the trade-mark SONY WONDER in certain of the exhibits annexed to the Garnett affidavit, these exhibits do not indicate that the use of the trade-mark SONY WONDER by Sony Music Entertainment (Canada) Inc. is under license from Sony Corporation. Thus, the opponent cannot benefit from the provisions of subsection 50(2) of the Act. Moreover, the use of the trade-mark SONY WONDER in association with an Internet website since 1995 has not been shown to predate the applicant’s filing date of March 14, 1995. Moreover, any use of the trade-name SONY WONDER by Sony Music Entertainment (Canada) Inc. would not accrue to the benefit of the opponent as section 50 of the Act only applies to trade-mark use. As a result, the third ground of opposition is unsuccessful.
The first ground of opposition is based on paragraph 12(1)(d) of the Trade-marks Act, the opponent alleging that the applicant’s trade-mark THE WONDER NETWORK is confusing with its registered trade-mark SONY WONDER. While the opponent did not submit a copy of its registration as part of its evidence, the Registrar does have the discretion, in view of the public interest to maintain the purity of the register, to check the register in order to confirm the existence of the registration relied upon by the opponent [see Quaker Oats of Canada Ltd./ La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd., 11 C.P.R. (3d) 410]. In doing so, I noted that the opponent’s registered trade-mark SONY WONDER, registration No. 443,467, is in good standing and was registered June 2, 1995 by SONY KABUSHIKI KAISHA ALSO TRADING AS SONY CORPORATION in association with: “Audio and video tapes, theatrical films and printed matter namely books.”
With respect to the first ground, the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between his trade-mark THE WONDER NETWORK and the registered trade-mark SONY WONDER as of the date of decision, the material date with respect to the paragraph 12(1)(d) ground [see Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. et al, 37 C.P.R. (3d) 413 (F.C.A.)]. Further, in determining whether there would be a reasonable likelihood of confusion between the applicant’s mark THE WONDER NETWORK and the opponent’s registered trade-mark SONY WONDER, the Registrar must have regard to all the surrounding circumstances including, but not limited to, those specifically enumerated in subsection 6(5) of the Trade-marks Act.
Considering initially the inherent distinctiveness of the trade-marks at issue [para.6(5)(a)], the opponent’s trade-mark SONY WONDER is inherently distinctive when applied to “Audio and video tapes, theatrical films and printed matter namely books”. Likewise, the applicant’s trade-mark THE WONDER NETWORK is inherently distinctive as applied to “Pre‑recorded compact discs, compact discs for use with computers, video tapes, audio tapes”. However, the applicant’s mark possesses a limited degree of inherent distinctiveness when applied to “Entertainment services namely broadcasting video and interactive video services; satellite distribution of video and interactive video services; provision of interactive on‑line video services; and the production and distribution of video programming”. In this regard, the applicant’s disclaimer of the right to the exclusive use of the word NETWORK apart from his trade-mark in relation to the services covered in the present application is arguably an admission by the applicant that the word NETWORK is not distinctive in relation to his services [see Andres Wines Ltd. v. Les Vins La Salle Inc., 3 C.P.R. (3d) 272 at p.275]. In any event, the word NETWORK would, in my view, be perceived by the average consumer as indicating that the applicant’s video and interactive video services are provided through a network of computers.
Neither the extent to which the trade-marks at issue have become known [para.6(5)(a)] nor the length of time the marks have been in use [para.6(5)(b)] favours either the applicant or the opponent. In this regard, the applicant has failed to adduce any evidence in this opposition while the Garnett affidavit fails to establish that the use of the trade-mark SONY WONDER in Canada by Sony Music Entertainment (Canada) Inc. would accrue to the benefit of the opponent, Sony Corporation.
As for the nature of the wares and services of the parties [para.6(5)(c)] and the nature of the trade associated with their respective wares and services [para.6(5)(d)], the applicant’s “Pre‑recorded compact discs, compact discs for use with computers, video tapes, audio tapes” overlap the “Audio and video tapes” covered by registration No. 443,467 and I would expect that the channels of trade associated with these wares could potentially overlap. On the other hand, the applicant’s “Entertainment services namely broadcasting video and interactive video services; satellite distribution of video and interactive video services; provision of interactive on‑line video services; and the production and distribution of video programming” differ from the wares covered in the opponent’s registration even though audio or video tapes may be used in the production of those services. Furthermore, I would not expect there to be any overlap in the channels of trade normally associated with the applicant’s services and the opponent’s wares.
With respect to the degree of resemblance between the trade-marks at issue [para.6(5)(e)], I find there to be at least some similarity in appearance between the applicant’s trade-mark THE WONDER NETWORK and the opponent’s registered trade-mark SONY WONDER although the marks differ in sounding and do not suggest any particular ideas in common.
The applicant in his written argument has referred to the word WONDER and the word NETWORK as each being a component of a large number of trade-marks on the register in Canada. However, no evidence has been furnished by the applicant by way of affidavit or statutory declaration in support of his submission. Moreover, while the Registrar will exercise his discretion in the public interest to verify the existence of a registration identified in a paragraph 12(1)(d) ground or a pending application identified in a paragraph 16(1)(b), 16(2)(b) or 16(3)(b) ground, the Registrar will not assist an applicant or an opponent by having regard to applications or registrations which ought to have been filed as evidence in the opposition. As a result, the Registrar cannot have regard to the applicant’s submissions relating to the state of the register in determining the outcome of the present opposition.
The applicant also submitted that the trade-marks at issue differ when considered side by side. However, the likelihood of confusion between the trade-marks of the parties must be considered as a matter of first impression and imperfect recollection from the point of view of the average consumer of the wares and services of the parties and not based on a side by side comparison of the trade-marks at issue. In this regard, I would note the following comments of Malone, J.A. in Polo Ralph Lauren Corp. v. United States Polo Assn., 9 C.P.R. (4th) 51 at p.54:
“A review of some of the leading cases also establishes some practical guidelines. For example, the Court is to put itself in the position of an average person who is familiar with the earlier mark but has an imperfect recollection of it;14 the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier. With respect to the degree of resemblance in appearance, sound or ideas under subparagraph 6(5)(e), the trade‑marks at issue must be considered in their totality.15 As well, since it is the combination of elements that constitutes a trade‑mark and gives distinctiveness to it, it is not correct to lay the trade‑marks side by side and compare and observe similarities or differences among the elements or components of the marks when applying the test for confusion. In addition, trade‑marks must not be considered in isolation but in association with the wares or services with which they are used.16”
Having regard to the foregoing, and bearing in mind that there is some resemblance between the trade-marks at issue and the fact that the applicant’s wares overlap the opponent’s wares and could potentially travel through the same channels of trade, I find that the applicant has failed to meet the legal burden on him in respect of the issue of confusion between his trade-mark THE WONDER NETWORK as applied to “Pre‑recorded compact discs, compact discs for use with computers, video tapes, audio tapes” and the opponent’s registered trade-mark. On the other hand, I have concluded that there would be no reasonable likelihood of confusion between the applicant’s trade-mark as applied to “Entertainment services namely broadcasting video and interactive video services; satellite distribution of video and interactive video services; provision of interactive on‑line video services; and the production and distribution of video programming” and the opponent’s registered trade-mark.
As its only remaining ground, the opponent has alleged that the applicant’s trade-mark THE WONDER NETWORK is not distinctive because it does not actually distinguish nor is it adapted to distinguish the applicant’s wares and services from the wares of the opponent bearing the opponent’s trade-mark SONY WONDER. Having concluded that the applicant has failed to meet the legal burden on him in respect of the issue of confusion between his trade-mark THE WONDER NETWORK as applied to “Pre‑recorded compact discs, compact discs for use with computers, video tapes, audio tapes” and the opponent’s registered trade-mark SONY WONDER covering video and audio tapes, it follows that the applicant’s mark is not distinctive in relation to these wares.
In view of the foregoing, the only remaining issue is whether the final ground of opposition is successful in relation to the applicant’s services. The material time for considering the circumstances regarding the non-distinctiveness ground is the date of the opposition, that is, June 27, 1997 [see Re Anders Wines Ltd. and E.&J. Gallo Winery, 25 C.P.R. (2d) 126 (F.C.A.) at p.130; Park Avenue Furniture Corp. v. Wickes/ Simmons Bedding Ltd., 37 C.P.R.(3d) 412 (F.C.A.) at p.424; and Molson Breweries, a Partnership v. Labatt Brewing Company Limited, 82 C.P.R. (3d) 1 at p.5)]. Furthermore, the onus or legal burden is on the applicant to show that his mark is adapted to distinguish or actually distinguishes his services from those of others throughout Canada [see Muffin Houses, Inc. v. Muffin House Bakery Ltd., 4 C.P.R.(3d) 272 (T.M.O.B.)]. There is, however, an evidential burden on the opponent to prove the allegations of fact in support of its non-distinctiveness ground [see Clarco Communications Ltd. v. Sassy Publishers Inc., 54 C.P.R.(3d) 418, at p. 431 (F.C.T.D.)].
As noted previously, the opponent has failed to show that it has used its trade-mark SONY WONDER in Canada in association with any wares or services. Moreover, the opponent has not relied upon use by Sony Music Entertainment (Canada) Inc. of the trade-mark or trade-name SONY WONDER in challenging the distinctiveness of the applicant’s mark. As a result, this ground of opposition is unsuccessful in relation to the applicant’s services. In any event, I do not consider there to be any reasonable likelihood of confusion between the applicant’s mark as applied to his entertainment services and the opponent’s trade-mark in association with its wares. As a result, this aspect of the non-distinctiveness ground is unsuccessful.
In view of the above, and having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Trade-marks Act, I refuse the present application as applied to “Pre‑recorded compact discs, compact discs for use with computers, video tapes, audio tapes” and otherwise reject the opponent’s opposition to registration of the applicant’s trade-mark THE WONDER NETWORK as applied to “Entertainment services namely broadcasting video and interactive video services; satellite distribution of video and interactive video services; provision of interactive on‑line video services; and the production and distribution of video programming”. In this regard, I would note the decision of the Federal Court, Trial Division in Produits Ménagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH, 10 C.P.R. (3d) 492 in respect of there being authority to render a split decision in a case such as the present.
DATED AT HULL, QUEBEC THIS 12th DAY OF FEBRUARY, 2002.
G.W.Partington,
Hearing Officer.