IN THE MATTER OF AN OPPOSITION by VOCM Radio Newfoundland to application No. 564,005 for the trade-mark FAVOURITES OF THE 60'S 70'S AND 80'S filed by Chum Limited
On June 5, 1986, the applicant, Chum Limited, filed an application to register the trade-mark FAVOURITES OF THE 60'S 70'S AND 80'S based upon proposed use of the trade-mark in Canada in association with "cigarette lighters, pens, pencils, pen holders, note pads, note stickers, calendars, memo cubes, shirts, golf shirts, pants, jackets, buttons, cassettes, t-shirts, blouses, sweat shirts, sweat suits, shorts, hats and caps" and in association with "entertainment services provided by pre-recorded music, live musical performances, related commentary and news broadcast on radio; television production and broadcasting; and radio programming".
The opponent, VOCM Radio Newfoundland Limited, filed a statement of opposition on April 6, 1987 in which it alleged that the applicant's trade-mark is not registrable as applied to the services covered in the application in that it is either clearly descriptive or deceptively misdescriptive of the character or quality of the services with which it is proposed to be used. Further, the opponent alleged that the applicant's trade-mark is either the generic name of the services, contrary to s. 12(1)(c) of the Trade-marks Act, or has become recognized by ordinary and bona fide commercial usage as designating the kind of services in association with which it is proposed to be used, contrary to sections 10 and 12(1)(e) of the Trade-marks Act. Finally, the opponent alleged that the applicant's trade-mark is not distinctive in that it does not serve to distinguish applicant's services from the services of the opponent or other traders who broadcast favourites of the 60's, 70's and 80's.
The applicant served and filed a counterstatement in which it denied the allegations set forth in the statement of opposition.
The opponent filed as its evidence the affidavits of David Robert Hay, Kenneth M. Adams, Michael Osland and Gary J. Butler while the applicant submitted the affidavit of Duff Roman. Further, the applicant alone filed a written argument and neither party requested an oral hearing.
I would note that the opponent has not filed a written argument nor did it request the opportunity to make submissions at an oral hearing. As a result, I am left to speculate as to the specific grounds of opposition which were intended to be addressed by the various affidavits filed by the opponent. I have, therefore, concluded that the Hay affidavit was filed in support of the s. 12(1)(b) ground of opposition while the Butler, Adams and Osland affidavits relate to the non-distinctiveness ground.
The opponent's first ground of opposition is that the applicant's trade-mark is either clearly descriptive or deceptively misdescriptive of the character or quality of the applicant's services, contrary to Section 12(1)(b) of the Trade-marks Act.
The issue as to whether the applicant's trade-mark FAVOURITES OF THE 60'S 70'S AND 80'S is clearly descriptive of the applicant's services must be considered from the point of view of the average user of those services. Further, in determining whether a trade-mark is clearly descriptive of the character or quality of the services associated with it, the trade-mark must not be dissected into its component elements and carefully analyzed, but rather must be considered in its entirety as a matter of immediate impression (see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pgs. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at pg. 186).
The relevant date for considering the ground of opposition based on Section 12(1)(b) is as of the filing date of the applicant's application (June 5, 1986). In this regard, reference may be made to the decisions in Oshawa Group Ltd. v. Registrar of Trade Marks, 46 C.P.R. (2d) 145, at pg. 147 and Carling Breweries Limited v. Molson Companies Limited et al, 1 C.P.R. (3d) 191, at pg. 195. Further, while the legal burden is on the applicant to establish the registrability of its trade-mark, there is an evidential burden on the opponent in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of the allegations set forth in the statement of opposition relating to the alleged non-registrability of the trade-mark FAVOURITES OF THE 60'S 70'S AND 80'S. It is therefore necessary in the present case to consider the opponent's evidence in order to determine whether the opponent has met the evidential burden upon it.
In his affidavit, David Robert Hay, a radio personality employed by the opponent, states the following:
1. That I am a radio personality employed by VOCM Radio Newfoundland Limited (hereinafter "my company").
2. That I have been employed by my company in this capacity for 10 years.
3. That my duties at my company are primarily as an on-air announcer/host for a part of my company's radio broadcasts.
4. That the expression "favourites" when used in the music context in radio broadcasting clearly describes music which has at one time or another been very popular, as determined by record sales and the like indicators.
5. That the expression "favourites of" followed by any indication of a time period would clearly describe to a radio listener music that had been very popular during the time indicated. Thus, for example, the expression "favourites of the 60's" would clearly describe music which was very popular in the years of the 1960's.
7. That the expression "favourites of the 60's 70's and 80's" would in a way which is plain and easy to understand describe to virtually any radio listener that the music being played was music which was very popular in the 1960's, 1970's and to date in the 1980's.
8. That it is common in the broadcasting field for on-air announcers/hosts to refer to music from a given period whether in time or style as favourites of that time period or style.
Paragraphs 6 and 7 of the Hay affidavit are opinion evidence and to be admissible as expert opinion evidence, the affiant must qualify himself as being an expert in the area in which he is giving his opinions. In this regard, and while Mr. Hay has established that he is experienced in the area of on-air radio broadcasting, he has not in my opinion qualified himself in any way as an expert who is qualified to give opinions as to the significance of words or expressions to radio listeners.
With respect to the admissibility of opinion evidence on the ultimate issue to be decided in a trade-mark case, Mr. Justice Collier in his reasons for judgment [Jordan & Ste-Michelle Cellars Ltd. et al v. T. G. Bright & Co. Ltd., 71 C.P.R. (2d) 138] dismissing an appeal from the decision of the Registrar of Trade-marks [71 C.P.R. (2d) 132] in respect of the registrability of the trade-mark BRIGHTS CHILLABLE RED, commented as follows [pp. 138-9]:
In William H. Rorer (Canada) Ltd. v. Johnson & Johnson, 48 C.P.R. (2d) 58, at pg. 62, Mahoney, J. made the following comments regarding the admissibility of opinion evidence in that case:
Apart from not having qualified himself as an expert to give the opinions which he has expressed, Mr. Hay has not set forth any facts and/or assumptions upon which he has based his opinions as to the significance to radio listeners of the expressions referred to in paragraphs 6 and 7 of his affidavit. Accordingly, I consider that the opinions expressed by the affiant in paragraphs 6 and 7 of his affidavit are inadmissible opinion evidence.
I consider paragraph 5 of the Hay affidavit to be admissible to the extent that the affiant has indicated the significance to him of the expression "favourites" in radio broadcasting. However, I do not consider that being an on-air announcer/host for ten years would qualify Mr. Hay as being an expert in the radio broadcasting area in general. Likewise, I consider paragraph 8 of the Hay affidavit to be admissible only insofar as it refers to the personal perception of the affiant.
As the totality of the opponent's evidence in respect of the s. 12(1)(b) ground of opposition comprises the personal perceptions of an employee of the opponent, I am of the view that the opponent has failed to adduce any evidence as to the perception of the average user of the applicant's entertainment services of the expressions FAVOURITES or FAVOURITES OF, or of the applicant's trade-mark. Additionally, I would note that the statements made by Mr. Hay must be considered as being made as of the date of his affidavit (June 14, 1988) which is more than two years subsequent to the filing date of the applicant's application, the material date in respect of a s. 12(1)(b) ground of opposition. Further, the opponent's evidence does not establish that the applicant's trade-mark is either deceptive or misdescriptive of its services. As a result, I have concluded that the opponent has failed to meet the evidential burden upon it in respect of its s. 12(1)(b) ground of opposition which I have therefore rejected.
The opponent next alleged that the applicant's trade-mark is the name of its services and has, by ordinary and bona fide commercial usage, become recognized as designating the kind of services covered in the applicant's application. However, no admissible evidence has been adduced by the opponent in respect of either of these grounds. Accordingly, I have rejected the sections 12(1)(c) and 12(1)(e) grounds of opposition for failure of the opponent to meet the evidential burden upon it in respect of these grounds.
The opponent's final ground is that the applicant's trade-mark is not distinctive in that it does not serve to distinguish the applicant's services from the services of the opponent or of other traders who broadcast favourites of the 60's, 70's and 80's. The material date in respect of this ground is the date of opposition (April 6, 1987). The Butler, Osland and Adams affidavits adduce evidence of radio programming and other related activities by three radio stations in Canada. However, in his affidavit, Duff Roman, Vice President, Industry Affairs of the applicant, states the following with respect to the three radio stations referred to in the opponent's affidavits:
6. I have read the affidavits of David Robert Hay, Kenneth Adams, Michael Osland and Gary J. Butler filed on behalf of the Opponent herein. With respect to the radio stations cited in these affidavits:
(a) 93/CJYQ (Q-RADIO and Q-93) is operated by my company as a division
(b) CFRA is operated by my company as a division, and
(c) CFLY is operated by St. Lawrence Broadcasting Company Limited and has my company's consent to the use of the Trade Mark FAVOURITES OF THE 60'S 70'S AND 80'S.
Apart from the above, the matters referred to by each of the opponent's affiants are all dated subsequent to the date of opposition, the material date respecting the non-distinctiveness ground. As a result, I have concluded that the opponent has not met the evidential burden upon it in respect of its final ground of opposition which I have therefore rejected.
In view of the above, I reject the opponent's opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 28TH DAY OF MARCH 1991.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.