IN THE MATTER OF AN OPPOSITION by Viewer’s Choice Canada Inc. to application No. 1,023,155 for the trade-mark VOLCANO & Design filed by Volcano Entertainment II, LLC_____   ___

                                                        

 

On July 21, 1999, Volcano Entertainment II, LLC (the “Applicant”) filed an application to register the trade-mark VOLCANO & Design (the “Mark”), which is shown below:                                   

                                               

 

The application is based upon use of the trade-mark in Canada in association with pre-recorded phonorecords, audio cassettes and compact discs featuring music since at least as early as March 24, 1997.

 

The application was advertised for opposition purposes in the Trade-marks Journal of October 11, 2000. On December 11, 2000, Viewer’s Choice Canada Inc. (the “Opponent”) filed a statement of opposition. The grounds of opposition are summarized below:

 

1.                       The application does not comply with s. 30(b) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) in that the Applicant has not used the Mark as a trade-mark in Canada since the alleged date of first use claimed in the application in association with the Applicant’s wares;

 

2.                       The application does not comply with s. 30(i) of the Act in that the Applicant was or ought to have been aware, at the date of filing of the application, of the Opponent’s trade-marks V Design and VIEWER’S CHOICE & Design each of which had been previously used and made known in Canada in association with, inter alia, entertainment services through the medium of television, namely programming services offering movies, sporting events, concerts and other special events on a per unit basis. The Applicant could not thus have been satisfied that it was entitled to use the Mark in Canada in association with the Applicant’s wares.

 

3.                       The Mark is not registrable under s. 12(1)(d) of the Act in that the Mark is confusing with the Opponent’s registered trade-marks, namely V Design TMA 429,613 and VIEWER’S CHOICE & Design TMA 534,722.

 

4.                       The Applicant is not the person entitled to registration of the Mark under s. 16(1)(a) of the Act in that, at the alleged date of first use claimed in the application, the Mark was confusing with the Opponent’s trade-marks which have been previously widely used and made known in Canada.

 

5.                       The Mark is not and cannot be distinctive of the Applicant’s wares because it is not adapted to distinguish and does not actually distinguish the Applicant’s wares from the Opponent’s services.

 

The Opponent’s marks are shown below.

1. V Design:

       2. VIEWER’S CHOICE & Design:

The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.

 

In support of its opposition, the Opponent filed the affidavit of Brian Cuff. Mr. Cuff is the Director of Business and Legal Affairs of Astral Television Networks – a division of Astral Broadcasting Group Inc., which he attests manages the Opponent.

 

The Applicant obtained an order for the cross-examination of Mr. Cuff. Answers to undertakings given during such cross-examination have been filed.

 

In support of its application, the Applicant filed the affidavit of Deborah Eatherley, a law clerk employed by the Applicant’s trade-mark agent.

 

Each party filed a written argument and participated in an oral hearing.

 

Onus and Material Dates

The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden 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 [see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298]. 

 

The material dates that apply to the grounds of opposition are as follows:

 

Section 30(b) Ground of Opposition

The Opponent’s evidential burden is lighter than usual respecting the issue of non-conformance with s. 30(b) [see Tune Masters v. Mr. P's Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.O.B.) at 89] and it can be met by reference not only to the Opponent's evidence but also to the Applicant's evidence [see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) (F.C.T.D.) 216 at 230]. However, while the Opponent may rely upon the Applicant’s evidence to meet its evidential burden in relation to this ground, the Opponent must show that the Applicant’s evidence is ‘clearly’ inconsistent with the claims set forth in its application.

 

The Opponent has submitted that Ms. Eatherley’s evidence is clearly inconsistent with the Applicant’s claimed date of first use since she only provides evidence of use of the Mark as of a later date. However, this is not a case where the Applicant’s affiant attests to a date of first use that is later than that set out in the application. Rather, Ms. Eatherley merely provides some evidence of how the Applicant’s Mark is applied to wares and advertised on the Internet. As such, her evidence is not clearly inconsistent with the claims set forth in the application. In the absence of evidence from the Opponent that satisfies the Opponent’s evidential burden under s. 30(b), there is no obligation on the Applicant to evidence its first use and the fact that Ms. Eatherley has not done so does not serve to satisfy the Opponent’s burden.

 

The s. 30(b) ground of opposition is accordingly dismissed on the basis that the Opponent has not satisfied its evidential burden. 

 

Section 30(i) Ground of Opposition

Where an applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant. [Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155] As this is not such a case, I am dismissing this ground of opposition.

 

Remaining Grounds of Opposition

Each of the remaining grounds of opposition turns on the issue of the likelihood of confusion between the Mark and either of the Opponent’s V Design mark or VIEWER’S CHOICE & Design mark.

 

As a preliminary matter, I wish to address the Applicant’s submissions to the effect that there is little, if any, use shown of V Design simpliciter as opposed to as part of VIEWER’S CHOICE & Design. At the oral hearing, the Applicant’s agent directed me to Exhibits 11 and 14 to the Cuff affidavit, which it submitted did not qualify as use of V Design. I agree that page 2 of Exhibit 11 does not show use of the V Design. However, Exhibit 14 shows a sign displayed in 1999 on which the V Design is displayed to the right of three lines of words: the first line reads VIEWER’S; the second line reads CHOICE™ ; and the third line reads PAY PER VIEW™. The size of the V Design is such that its height is the same as the three lines of words combined. The Applicant’s position, as I understand it, is that this is not use of V Design because the impression that it would leave on the viewer is of the V Design combined with the words. However, I find that such signage is use of the trade-mark V Design (as well as of VIEWER’S CHOICE and PAY PER VIEW). Not only is V Design discretely separated from the wording but also the use of ™ serves to emphasize that both VIEWER’S CHOICE and PAY PER VIEW are discrete trade-marks. [See Principle 1 in Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 at 538-9.]

 

Furthermore, among the voluminous materials provided by Mr. Cuff, there are other examples of use of V Design simpliciter, such as:

• Exhibit 8: The July 1998 promotional magazine displays V Design on its own followed by ®.
• Exhibit 12: In a direct mailing sent to Canadians in 1998, the V Design appears above the words VIEWER’S CHOICE, which in turn are above the words PAY PER VIEW. However, not only is V Design followed by ® and VIEWER’S CHOICE by ™, but the following trade-mark notice appears below PAY PER VIEW: “The V Design is a registered trademark owned by Viewer’s Choice Canada. ™ is a trademark owned by Viewer’s Choice Canada.”
• Exhibit 24: The letterhead shows V Design not only flagged as a separate trade-mark by the use of ® but also the V Design is displayed in colour whereas VIEWER’S CHOICE™ is displayed in black.

 

I also wish to add that in my view the display of V Design above the words VIEWER’S CHOICE is susceptible of being perceived as either two marks or a single mark. Moreover, the Applicant’s position that the words VIEWER’S CHOICE are highly suggestive, if not descriptive, of the Opponent’s services, reinforces the view that consumers would disassociate the Opponent’s V Design from the surrounding “descriptive” words and see the V Design as its own distinct mark.

 

Section 12(1)(d) Grounds of Opposition

The Opponent has met its initial burden with respect to these grounds because both of its registrations are in good standing.

 

As it is evident that the resemblance between the Mark and the V Design mark is higher than between the Mark and VIEWER’S CHOICE & Design mark, my assessment will be directed to the likelihood of confusion between the Applicant’s Mark and the Opponent’s V Design mark.

 

test for confusion

The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that 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.

 

In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; b) the length of time each has 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 in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).]

 

s. 6(5)(a) - inherent distinctiveness of the marks and the extent to which each has become known

(i) inherent distinctiveness

The Opponent submits that a mark is inherently distinctive when nothing about it refers consumers to the nature of the associated wares or services. Based on this definition, both the Opponent’s V Design mark and the Applicant’s Mark are inherently distinctive.

 

However, the Applicant submits that the Opponent’s V Design mark is not inherently distinctive on the basis that it comprises a letter and letters are recognized as not being inherently distinctive. In support of its position, it relies on GSW Ltd. v. Great West Steel Industries Ltd. et al. (1975), 22 C.P.R. (2d) 154 (F.C.T.D.). I reproduce below the relevant portions of that decision:

29     It is clear from the du Cros case, supra, and others that a trade mark consisting only of letters, and prior to the registration dated May 3, 1968, that is what the appellant's mark consisted of, without any accompanying distinctive indicia as registered, is a trade mark that lacks inherent distinctiveness. Accordingly a trade mark or design mark consisting only of letters is characterized as a "weak mark".

30     In American Cyanamid Co. v. Record Chemical Co. Inc. (1972), 7 C.P.R. (2d) 1, [1972] F.C. 1271 [affirmed 14 C.P.R. (2d) 127] Noel, A.C.J., said at p. 5:

No doubt, in the case of weak marks or of marks possessing little inherent distinctiveness, small differences may be accepted to distinguish one from the other, but this does not mean that any such weak portions of a mark must be discounted in so distinguishing.

 

31     In short, where a trader has appropriated letters of the alphabet as a design mark without accompanying distinctive indicia, and seeks to prevent other traders from doing the same thing, the range of protection to be given that trader should be more limited than in the case of a unique trade mark and comparatively small differences are sufficient to avert confusion and a greater degree of discrimination may fairly be expected from the public in such instances.

…

50     In his reasons for rejecting the appellant's opposition the Registrar said: "Letters per se are not inherently distinctive and are not entitled to a wide ambit of protection."

51     In so stating the Registrar was giving effect to the principles which I have stated above, that is that letters not being inherently distinctive they constitute a "weak" mark and as such, small differences may be accepted to distinguish one mark from another. However a "weak" mark by long and extensive use might become distinctive.

 

Paragraph 51 above sets out the well-accepted view that marks comprised of letters are inherently weak. However, paragraph 31 refers more specifically to the situation where a party “has appropriated letters of the alphabet as a design mark without accompanying distinctive indicia” and paragraph 29 states:

…a trade mark consisting only of letters…without any accompanying distinctive indicia is a trade mark that lacks inherent distinctiveness. Accordingly a trade mark or design mark consisting only of letters is characterized as a “weak mark”.

 

This begs the question of whether the Opponent’s V Design mark is the type of mark that was being discussed by the Court in the GSW decision.

 

It is true that the Opponent’s mark has been referred to as V Design, but I do not think that it is the sort of mark that the Court was addressing its comments to. I reach this conclusion both because the Opponent’s mark would perhaps be better described as a V-shaped Design (rather than V Design) and because the Opponent’s mark incorporates distinctive indicia. Thus I conclude that the Opponent’s V Design mark, although not inherently strong, does possess some inherent distinctiveness. 

 

(ii) extent to which each mark has become known

Marks may acquire distinctiveness through use and promotion.

 

The Opponent displays its marks on screen during broadcasts and in other manners such as on signage and in printed promotional materials. However, Mr. Cuff has set out his information with respect to the Opponent’s two marks in a cumulative fashion. Accordingly, if I am right in accepting that the display of V design over the words VIEWER’S CHOICE qualifies as use of the V Design mark, then the V Design mark has become known to a substantial extent in Canada through substantial advertising and use. [Revenues from the Opponent’s services in association with its marks exceeded $6 million in each of the years 1991 through 2000; related advertisements exceeded $900,000 in each of the years 1995 through 2000; and the Opponent’s services were made available to more than half a million subscribers in each of the years 1996-2000.]  If I am not right, then it is difficult to assess the extent to which the V Design mark has become known.

 

The Applicant chose to not file an affidavit from one of its employees, opting instead to file an affidavit from an employee of the firm acting as its trade-mark agent. As a result, there is very little evidence concerning the Applicant’s activities in association with the Mark. That evidence merely comprises the following:

•         a photograph taken on August 3 or 4, 2005 of a VHS videocassette that displays the Mark both on the cover and the cassette, and bears a copyright notice of 1999, without further information as to how, where or when Ms. Eatherley obtained this item;

•         photographs taken on August 3 or 4, 2005 of three compact discs that display the Mark on the cover and the disk, without further information as to how, where or when Ms. Eatherley obtained these items;

•         pages from the Amazon.ca website as it existed in August 2005, which offer the above videocassette and two of the three discs for sale to Canadian residents;

•         pages from the website www.cduniverse.com as it existed in August 2005, which offer the above videocassette for sale to Canadian residents;

•         pages from the website www.discogs.com as it existed in August 2005, which lists the Applicant’s discography releases and displays the Mark.

 

Based on the foregoing, I am unable to conclude that the Applicant’s Mark has become known to any extent in Canada. There is no evidence that any Canadian has ever bought the compact discs introduced by Ms. Eatherley. Nor is there any evidence that any Canadian, other than Ms. Eatherley, has ever viewed the Internet pages that she has introduced. Regarding the evidence concerning the videocassette, I note that the Applicant’s application does not cover videocassettes.

 

s. 6(5)(b) - the length of time each mark has been in use

This factor favours the Opponent since its registration claims use of its V Design mark since as early as June 17, 1991.

 

s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade

Mr. Cuff attests that the Opponent carries on a pay television network undertaking for the distribution of a pay-per-view service via satellite to cable affiliates in Canada as well as directly via satellite to a consumer’s home. Its services have been offered since 1991 on a 24-hour-a-day basis and consist of feature films as well as coverage of sporting or musical events or concerts.

 

Both parties are in the entertainment field; the Opponent provides musical events etc. via television while the Applicant provides music via records, cassettes and discs.

 

Little is known about the Applicant’s channels of trade, but it appears that its wares are sold, at least in part, via the Internet.

 

At the oral hearing the Applicant’s agent submitted that the procedure for obtaining the Opponent’s services is fairly complex (e.g. the evidence shows that a user must rent a special box in order to access the Opponent’s services), and that this complexity would diminish the likelihood of confusion. It also pointed to the evidence concerning the fact that the Opponent must be licensed by the CRTC to provide its services and that it does not produce the content that its services provide. In addition, it noted that the Opponent’s clients pay by means of monthly billing whereas the Applicant’s clients pay at point of purchase.

 

While I agree that the parties’ channels of trade are different, in the circumstances of this case, I do not consider such differences to be worthy of much weight.

 

s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

In Polo Ralph Lauren Corp. v. United States Polo Association et al. (2000), 9 C.P.R. (4th) 51 (F.C.A.), Malone J.A. stated at page 59:

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. 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.

 

The Applicant’s Mark comprises two features: a V Design and the word VOLCANO. It is difficult to determine which feature may dominate: when spoken, presumably it would be the pronounceable portion, i.e. the word VOLCANO; when seen, the first, and larger, portion is the V Design. [See Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) for the proposition that the first component of a mark is often considered more important for the purpose of distinction.]

 

The Applicant submits that there are significant differences between the design portions of the parties’ marks. It submits that while the Opponent’s design is merely a V design, its design is the mouth of a volcano with lava erupting from it.  With all due respect to the Applicant’s graphic designer, I cannot conclude that this interpretation would be the first impression made on the average consumer, despite the fact that the word VOLCANO accompanies the design. Instead, it appears that the first impression could simply be that it is a V or V-shaped design. 

 

So far as the Opponent’s mark is concerned, the first impression on a consumer who sees it in association with the Opponent’s services might be that it is the beams of a spotlight, rather than a V or V-shaped design.

 

other surrounding circumstances

(i) lack of evidence of confusion

There is no evidence that anyone else uses a design that resembles those of the parties, in any field, let alone the entertainment field.

 

conclusion regarding likelihood of confusion

In assessing the likelihood of confusion, I have had particular regard to Mr. Justice Binnie’s statement of the perspective from which the likelihood of confusion is to be assessed, as set out in paragraphs 56-58 of his decision in Mattel (supra):

 

56     What, then, is the perspective from which the likelihood of a "mistaken inference" is to be measured? It is not that of the careful and diligent purchaser. Nor, on the other hand, is it the "moron in a hurry" so beloved by elements of the passing-off bar: Morning Star Cooperative Society Ltd. v. Express Newspapers Ltd. (1978), [1979] F.S.R. 113 (Eng. Ch. Div.), at p. 117. It is rather a mythical consumer who stands somewhere in between, dubbed in a 1927 Ontario decision of Meredith C.J. as the "ordinary hurried purchasers": Klotz v. Corson (1927), 33 O.W.N. 12 (Ont. H.C.), at p. 13. See also Barsalou v. Darling (1882), 9 S.C.R. 677 (S.C.C.), at p. 693. In Aliments Delisle Ltée/Delisle Foods Ltd. v. Anna Beth Holdings Ltd. (1992), 45 C.P.R. (3d) 535 (T.M. Opp. Bd.), the Registrar stated at p. 538:

When assessing the issue of confusion, the trade marks at issue must be considered from the point of view of the average hurried consumer having an imperfect recollection of the opponent's mark who might encounter the trade mark of the applicant in association with the applicant's wares in the market-place.

And see American Cyanamid Co. Record Chemical Co., [1972] F.C. 1271 (Fed. T.D.), at p. 1276, aff'd (1973), 14 C.P.R. (2d) 127 (Fed. C.A.). As Cattanach J. explained in Canadian Schenley Distilleries, at p. 5.

That does not mean a rash, careless or unobservant purchaser on the one hand, nor on the other does it mean a person of higher education, one possessed of expert qualifications. It is the probability of the average person endowed with average intelligence acting with ordinary caution being deceived that is the criterion and to measure that probability of confusion. The Registrar of Trade Marks or the Judge must assess the normal attitudes and reactions of such persons.

57     Having repeated that, I fully agree with Linden J.A. in Pink Panther that in assessing the likelihood of confusion in the marketplace "we owe the average consumer a certain amount of credit" (para. 54). A similar idea was expressed in Michelin & Cie v. Astro Tire & Rubber Co. of Canada (1982), 69 C.P.R. (2d) 260 (Fed. T.D.), at p. 263:

...one must not proceed on the assumption that the prospective customers or members of the public generally are completely devoid of intelligence or of normal powers of recollection or are totally unaware or uninformed as to what goes on around them.

58     A consumer does not of course approach every purchasing decision with the same attention, or lack of it. When buying a car or a refrigerator, more care will naturally be taken than when buying a doll or a mid-priced meal: General Motors Corp. v. Bellows, [1949] S.C.R. 678 (S.C.C.). In the case of buying ordinary run-of-the-mill consumer wares and services, this mythical consumer, though of average intelligence, is generally running behind schedule and has more money to spend than time to pay a lot of attention to details. In appropriate markets, such a person is assumed to be functionally bilingual: Four Seasons Hotels Ltd. v. Réseau de television Quatre Saisons Inc./Four Seasons Television Network Inc. (1992), 43 C.P.R. (3d) 139 (T.M. Opp. Bd.). To those mythical consumers, the existence of trade-marks or brands make shopping decisions faster and easier. The law recognizes that at the time the new trade-mark catches their eye, they will have only a general and not very precise recollection of the earlier trade-mark, famous though it may be or, as stated in Pepsi-Cola Co. v. Coca-Cola Co., [1942] 2 D.L.R. 657 (Canada P.C.), "as it would be remembered by persons possessed of an average memory with its usual imperfections" (p. 661). The standard is not that of people "who never notice anything" but of persons who take no more than "ordinary care to observe that which is staring them in the face": Coombe v. Mendit Ltd. (1913), 30 R.P.C. 709 (Eng. Ch. Div.), at 717. However, if ordinary casual consumers somewhat in a hurry are likely to be deceived about the origin of the wares or services, then the statutory test is met.

 

Having considered all the surrounding circumstances, I find that the Applicant has not met its legal burden. In particular, I find that an ordinary casual consumer who has an imperfect recollection of the Opponent’s V Design mark and is somewhat in a hurry, will, as a matter of immediate impression, be likely to conclude that records, cassettes and discs featuring music that are associated with the Mark are somehow associated with the Opponent’s V Design services. Although the word VOLCANO is a unique portion of the mark, it is given less prominence than the design portion of the Mark, which not only dominates the Mark but also is strikingly similar to the Opponent’s V Design mark. Both parties are in the entertainment field and the sale of discs of the music from concerts shown through the Opponent’s pay-per-view services does not appear to be an unnatural extension of the Opponent’s services, even though the Applicant points out that the Opponent has not taken any steps to extend its product line in this direction.

 

I will add that my conclusion regarding the likelihood of confusion would remain the same whether I consider the Opponent’s V Design mark to have become known to a substantial extent as of the material date, or not.

 

Section 16(1) Ground of Opposition

In order to meet its initial burden under s. 16, the Opponent must establish use of its mark in Canada prior to March 24, 1997, as well as non-abandonment of its mark as of October 11, 2000.

 

As the only evidence that shows use of the Opponent’s V Design mark prior to March 24, 1997 is when it is displayed above the words VIEWER’S CHOICE, the success of the s. 16 ground (insofar as it relies on the V Design mark) turns on whether or not I am correct in finding that such use qualifies as use of the two marks, rather than just the composite mark. If I am correct, then the ground succeeds for reasons similar to those set out under my discussion of the s. 12(1)(d) ground of opposition. If I am not correct, then the s. 16(1) ground would fail, to the extent that it relies on the V Design mark, on the basis that the Opponent has not satisfied its initial burden.

 

Distinctiveness Ground of Opposition

In order to meet its initial burden with respect to this ground, the Opponent need only show that its mark was “known to some extent at least” as of December 11, 2000. [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.) at 58]

 

There is evidence that the Opponent’s V Design mark was known to some extent at least as of December 11, 2000 [see exhibits referred to on pages 5 and 6 above] and therefore the Opponent has met its initial burden. For reasons similar to those set out under my discussion of the s. 12(1)(d) ground of opposition, I find that the Applicant has not satisfied its legal burden. This ground is therefore successful.

 

Remaining Grounds of Opposition

As I have already found in favour of the Opponent under more than one ground, I see no need to address the issue of whether or not the Opponent would be equally successful based on its VIEWER’S CHOICE & Design mark.

 

Disposition

Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.

 

 

DATED AT TORONTO, ONTARIO, THIS 7th DAY OF  MAY 2008.

 

 

Jill W. Bradbury

Member

Trade-marks Opposition Board