Citation: 2018 TMOB 7

Date of Decision: 2018-01-22

IN THE MATTER OF AN OPPOSITION

	Juice International Holdings, Inc.	Opponent
and
	Juice DMS Advertising Limited	Applicant
	1,559,009 for JUICE MOBILE 1,559,010 for JUICE	Applications

introduction

[1]  Juice International Holdings, Inc. opposes registration of the trade-marks JUICE MOBILE and JUICE of application Nos. 1,559,009 and 1,559,010 respectively in the name of Juice DMS Advertising Limited.

[2]  Each trade-mark was applied for registration on the basis of use in Canada since August 15, 2010 in association with mobile advertising services provided to advertising companies, brand managers and branded companies, as more fully described below.

[3]  The determinative issue in each of the proceedings is whether the trade-mark applied for registration is confusing with the Opponent’s trade-mark JUICE alleged to have been previously used in Canada in association with services, including creating, writing and producing marketing material for others for use in the entertainment, film, television and music fields.

[4]  For the reasons that follow, I find that each application ought to be refused.

the record

[5]  Each application was filed by Oriole Media Corp. on January 9, 2012 on the basis of use of the trade-mark in Canada since August 15, 2010. The statement of services of each application, last amended on April 20, 2016, reads as follows:

Mobile advertising services provided to advertising companies, brand managers and branded companies, namely advertising on (a) delivering advertisements for others to mobile devices, tablets and handheld gaming devices, and distribution of advertisements for others through mobile content channels (the Applicant’s Services).

[6]  Each application currently stands in the name of Juice DMS Advertising Limited further to an assignment recorded by the Canadian Intellectual Property Office on June 10, 2016. The term “Applicant” shall be used throughout to refer to the owner of both applications at the relevant time.

[7]  Each application was advertised in the Trade-marks Journal of November 27, 2013.

[8]  Each opposition was brought by statement of opposition filed on April 2, 2014 by Juice Productions Inc. In each case, the Registrar granted leave to file an amended statement of opposition dated April 28, 2016 that changed the opponent’s identity to Juice International Holdings, Inc. (the Opponent) further to an amalgamation of August 31, 2015.

[9]  The grounds of opposition pleaded against the applications are the same. Generally speaking, in each case, the first two grounds of opposition allege that the application does not comply with the requirements of section 30 of the Trade-marks Act, RSC 1985, c T-13 since (1) some of the services identified in the application are not defined in ordinary commercial terms, and (2) the Applicant did not use the trade-mark since the date claimed in the application. The other grounds of opposition are that the Applicant is not the person entitled to registration of the trade-mark and that the trade-mark is not distinctive. These other grounds of opposition are premised on allegations of confusion with the Opponent’s trade-mark JUICE or with the trade‑name JUICE PRODUCTIONS INC.

[10]  In particular, the Opponent alleges use and made known in Canada of the trade-mark JUICE by the Opponent and its predecessor in title, Juice Productions Inc., as well as previous use in Canada of the trade-name JUICE PRODUCTIONS INC. since at least as early as June 29, 2004 in association with the following services:

creating, writing and producing marketing materials for others for use in the entertainment, film, television and music fields, namely, web movie trailers, broadcast movie trailers, mobile movie trailers, theater movie trailers, web television series promotions, broadcast television series promotions, mobile television series promotions, web music promotions, broadcast music promotions, mobile music promotions, web artist promotions, broadcast artist promotions, mobile artist promotions, art work, website promotions, digital and e‑copy development material and promotional material for use with media player computer programs for playing, downloading, saving and organizing digital music and video files; graphic design services; web interface application design services; digital asset management services; distribution services of content for film, music and television; operation of post-production facilities for film, music and television; authoring services for Digital Versatile Discs (DVDS) and high definition digital video discs.

[11]  In each case, the Applicant filed and served a counter statement and was subsequently granted leave to file an amended counter statement. The Applicant essentially denies each of the grounds of opposition.

[12]  In support of each opposition, the Opponent filed an affidavit of Andrew Buck, the President of Juice Productions Inc. In each case, the Applicant obtained an order for the cross-examination of Mr. Buck. However, the Applicant’s last extension of time request to comply with the cross-examination order was denied by the Registrar. Thus, Mr. Buck has not been cross-examined by the Applicant.

[13]  In support of both applications, the Applicant filed one affidavit of Christian Landeta, a trade-mark paralegal employed by its trade-marks agent. While the Opponent obtained an order for the cross-examination of Mr. Landeta, no cross-examination was conducted.

[14]  I note in passing that the Applicant had also filed an affidavit of David Wong whose cross-examination was ordered by the Registrar. However, rather than making Mr. Wong available for cross-examination, the Applicant withdrew his affidavit. Ultimately, the affidavit of Mr. Wong was returned to the Applicant because the affiant was not made available for cross-examination [section 44(5) of the Trade-marks Regulations, SOR/96-195 (the Regulations)].

[15]  As reply evidence in each case, the Opponent filed an affidavit of Cindy Noel, a secretary employed by its trade-marks agent. Ms. Noel was not cross-examined.

[16]  Both parties filed written arguments in each case. Only the Opponent requested a hearing. However, the Opponent withdrew its request and the scheduled hearing was cancelled.

preliminary remark

[17]  The Opponent’s predecessor in title, Juice Productions Inc., successfully opposed registration of the trade-mark JUICE MOBILE & Design of application No. 1,525,820 filed by Oriole Media Corp., the predecessor in title of Juice DMS Advertising Limited [see Juice Productions Inc v Oriole Media Corp, 2015 TMOB 204 (the JUICE MOBILE & Design case)]. I will return later to the Registrar’s decision in the JUICE MOBILE & Design case.

legal onus and evidential burden

[18]  In each case, the legal onus is on the Applicant to show, on a balance of probabilities, that the application does not contravene the provisions of the Act as alleged in the amended statement of opposition. This means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the Applicant. However, there is also an initial evidential burden on the Opponent to prove the facts inherent to its pleadings. The presence of an evidential burden on the Opponent means that in order for a ground of opposition to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that ground of opposition exist [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155; and Wrangler Apparel Corp v The Timberland Company, 2005 FC 722, 41 CPR (4th) 223].

the evidence

[19]  I will review below the parties’ evidence, some of which I will discuss further in my analysis of the grounds of opposition, where appropriate.

Opponent’s Evidence in Chief

[20]  The affidavit of Andrew Buck in support of application No. 1,559,009 was sworn on October 10, 2014 and the one in support of application No. 1,559,010 was sworn on October 24, 2014. In reviewing the evidence, I will use the singular form to refer to both affidavits of Mr. Buck as they are essentially identical.

[21]  At the time of his affidavit, Mr. Buck had been President of Juice Productions Inc., the Opponent’s predecessor in title, since June 2004. Mr. Buck testifies among other on the use and advertisement of the trade-mark JUICE in Canada by Juice Productions Inc. (Juice Productions).

[22]  At the outset, I note that I do not place any weight on statements made by Mr. Buck at paragraph 10 of his affidavit concerning the distinctiveness of the Opponent’s trade-mark JUICE. These statements amount to opinions on questions of fact and law to be determined by the Registrar in the present proceedings.

[23]  At paragraph 3 of his affidavit, Mr. Buck states that Juice Productions is in the business of creating, writing and producing marketing material. He summarizes as follows the services offered by Juice Productions in association with the trade-mark JUICE and trade-name Juice Productions Inc.:

creating, writing and producing marketing materials for others for use in the entertainment, film, television and music fields; graphic design services; motion design and animation services; web interface application design services; digital asset management services; digital distribution services of content for film, music and television; operation of post-production facilities for film, music and television; authoring services for Digital Versatile Discs (DVDs) and high definition digital video discs (blue-rays).

[24]  From paragraphs 4 to 6 of his affidavit, Mr. Buck discusses more specifically Juice Productions’ services. He explains that Juice Productions delivers feature films and TV content to online platforms, such as iTunes, Netflix, Rogers VOD, on behalf of the content right holders (the CRH). The CRH would send a copy of their content to Juice Productions and the later would digitize, encode and package it in the format requires by the particular distribution platform. Also, Juice Productions typically receives prepared marketing content or creates marketing content, such as movie trailers and commercials, which Juice Productions develops and/or edits to a specific length for broadcast on various platforms. Juice Productions also writes scripts, records voice overs and performs final sound design.

[25]  I pause to note that Mr. Buck subsequently uses throughout his affidavit the term “JUICE Services” as a collective reference to the services described in paragraphs 3 to 6 of his affidavit. Based on a fair reading of those paragraphs, I conclude that the JUICE Services are encompassed in the services described in the amended statement of opposition. Accordingly, I will also use the term “JUICE Services” throughout my decision as a collective reference to the Opponent’s services.

[26]  Mr. Bucks affirms that the trade-mark JUICE appears on all of the following [para 7]:

• Agreements

• Contracts

• Social media platforms and Juice Productions related internet sites

• Slates at the beginning of film entertainment content owned by Juice Productions

• Digital platforms Juice Productions has content available on

• Correspondence

• Emails

• Invoices

[27]  Mr. Buck also affirms the following about Juice Productions:

• It has sold, marketed and performed the JUICE Services in Canada since at least as early as June 29, 2004 in association with the trade-mark JUICE [para 9].

• It does business in every province and territory of Canada. A partial list of clients is provided in the affidavit [para 11].

• It “is one of the top providers of iTunes encoding and distribution services worldwide for movies, music and television”and “one of a select few Netflix ‘preferred’ encoding partners worldwide” [para 12].

• It owns the website located at www.juicesproductionsinc.com, which has been operational since August 10, 2004 and receives approximately 1,000 hits per month [para 16].

• It recently participated in media sponsorships events, in particular the Toronto International Film Festival (TIFF), the Canadian International Documentary Festival (HotDocs) and the Fantasia Film Festival [para 19].

[28]  According to the yearly breakdown provided in the affidavit, from July 1, 2004 to July 1, 2014 the total revenues generated by the JUICE Services have exceeded 15.3 million dollars and the advertising expenditures for the JUICE Services have totaled $133,923.21 [paras 14 and 18].

[29]  What follows is a description of the documentary evidence provided by Mr. Buck in support of his assertions of use of the trade-mark JUICE and trade-name Juice Productions Inc.

• Redacted copy of a Non-Disclosure Agreement dated March 22, 2013 [Exhibit A1].

• Copies of slates relating to the commercial editing services [Exhibit A2]. I note that the only date shown by these is March 8, 2013.

• Redacted copy of a correspondence dated January 9, 2012 [Exhibit A3].

• Redacted copies of invoices dated August 20, 2004 and February 8, 2005 [Exhibit A4].

• Redacted copy of an email of April 3, 2013 [Exhibit A5].

• Copies of lists of Apple-preferred iTunes Movie/Music/TV Encoding Houses and of Netflix-preferred Movie Encoding Houses [Exhibit B].

• Letterhead and business cards [Exhibit C]. These are said to be representative of the manner in which Juice Productions has used its trade-name and trade-mark in Canada in association with the JUICE Services since June 29, 2004.

• Printouts of some pages from the website www.juicesproductionsinc.com [Exhibit D]. I note that these pages, apparently printed on March 27, 2013, show a copyright notice of 2012.

• Copies of a pamphlet advertising the 2011 TIFF, of pages from the 2012 HotDocs Program Guide, and of an advertisement from the 2014 Fantasia Film Festival [Exhibit E].

• Printout of the Canada411.ca listing for Juice Productions [Exhibit F].

[30]  The remainder of Mr. Buck’s testimony is directed to the activities of the Applicant.

[31]  In paragraph 22 of his affidavit, Mr. Buck states that he believes the Applicant has established a subsidiary under the trade-mark JUICE MOBILE and is “clearly attempting to pass off on the goodwill of Juice Productions, as seen from its website at juicemobile.org”. Mr. Buck goes on to state: “It is clear from a review of the applicant’s Products and Services webpage at http://www.juicemobile.org/products-and-services/ that the applicant is attempting to pass off on the goodwill established by Juice Productions in a related field.” I note that Mr. Buck did not provide any pages from the referenced website nor did he provide the specific referenced webpage. More importantly, however, Mr. Buck’s statements about the Applicant attempting to pass off on the goodwill of Juice Productions are of no value in the subject proceedings.

[32]  From paragraphs 23 to 52 of his affidavit, Mr. Buck makes various statements with respect to the Applicant’s Services and customers and explains why they are identical to those of Juice Productions. These statements are based on his “knowledge of the industry”. In summary, Mr. Buck testifies that both the Applicant and Juice Productions:

• create advertisement for mobiles devices;

• use motion design and animation in the marketing material they create for clients;

• offer “rich media” services;

• convert advertising from static ads to non-static rich media;

• convert filmed content provided by brand companies into other formats;

• collect and analyze data and provide metrics to brand companies;

• provide an online sharing platform;

• have Rogers Communications, Universal Music, Shaw and Microsoft among their customers; and

• work with major media companies.

[33]  Without making any findings as to the value of Mr. Buck’s testimony based on his knowledge of the industry at this time, I note that Mr. Buck is not an independent objective witness. Also, Mr. Buck did not provide any documentary evidence to corroborate his statements concerning the Applicant’s Services and customers (for example, pages from the website referenced in paragraph 22 of his affidavit). On the other hand, Mr. Buck was not cross-examined. Also, the Applicant had the opportunity to refute the evidence tendered by Mr. Buck, but elected not to do so.

Applicant’s Evidence

[34]  The affidavit of Christian Landeta filed in support of both applications was sworn on October 29, 2015.

[35]  Mr. Landeta introduces in evidence the results of his searches of the Canadian Trade-marks Database, conducted on October 28, 2015, for active trade-marks with the term “JUICE” as well as active trade-marks for the term “JUICE” combined with the terms “MARKETING”, “ADVERT*” or “DIGITAL” in the statement of goods and services [Exhibits “1” to “4”].

Opponent’s Reply Evidence

[36]  In reviewing the evidence, I will use the singular form to refer to both affidavits of Ms. Noel, each sworn on June 21, 2016, since they are essentially identical.

[37]  Ms. Noel provides two exhibits to her affidavit, one of which is a copy of the Registrar’s decision in the JUICE MOBILE & Design case [Exhibit CN-2]. The other is a copy of the transcript of the cross-examination of David Wong (the Transcript) on his affidavit of August 8, 2013 filed as part of Oriole Media Corp.’s evidence in the JUICE MOBILE & Design case [Exhibit CN-1].

[38]  At this time, I shall address the parties’ submissions about the admissibility of the affidavit of Ms. Noel as reply evidence under section 43 of the Regulations.

[39]  Obviously, the decision of the Registrar (acting through Member Jean Carrière) in the JUICE MOBILE & Design case does not need to be introduced in evidence for the Opponent referring to the decision in its submissions or for me to discuss the decision. Thus, I shall address only the parties’ submissions as to the admissibility of the Transcript.

[40]  The Applicant submits that the Transcript does not arise out from its evidence, but rather relates to subject matter that could have, and ought to have, been included in the Opponent’s evidence in chief. The Applicant points out that the cross-examination of Mr. Wong in the JUICE MOBILE & Design case was conducted on November 20, 2013 whereas the Opponent’s evidence in chief in the present proceedings was filed almost one year later (October 14, 2014 for appl. No. 1,559,009; October 30, 2014 for appl. No. 1,559,010).

[41]  The Opponent does not dispute that the Transcript was available at the time of its evidence in chief. However, it submits that the Transcript was made relevant when the Applicant filed the affidavit of Mr. Landeta. In this regard, the Opponent contends that the evidence responds to the results of Mr. Landeta’s search for active trade-marks with the term “JUICE” in combination with the terms “ADVERT*” in the statement of goods and services, which returned application No. 1,525,820. The Opponent submits that the Transcript is filed to demonstrate the overlap between the services associated with the parties’ respective trade-marks. Finally, the Opponent submits that simply because the evidence was available at the time of filing of its evidence in chief does not preclude its admissibility as reply evidence (citing Trans Canaderm Inc v Bio Actif Inc, 2010 TMOB 60, 2010 CarswellNat 1927, at paras 23 and 24).

[42]  According to section 43 of the Regulations, the evidence must be strictly confined to matter in reply. Justice Pelletier in Halford v Seed Hawk Inc, 2003 FCT 141, 24 CPR (4th) 220 provides the following guidelines as to what constitutes proper reply evidence:

15.  Consequently, I believe that the following principles govern the admissibility of reply evidence:

1- Evidence which is simply confirmatory of evidence already before the court is not be allowed.

2- Evidence which is directed to a matter raised for the first time in cross-examination and which ought to have been part of the plaintiff’s case in chief is not be allowed. Any other new matter relevant to a matter in issue, and not simply for the purpose of contradicting a defence witness, may be allowed.

3- Evidence which is simply a rebuttal of evidence led as part of the defence case and which could have been led in chief is not be be [sic] admitted.

16.  To these principles, I add one further. Evidence which is excluded because it should have been led as part of the plaintiffs’ case in chief will be examined to determine if it should be admitted in the exercise of my discretion.

[43]  It is true that the mere fact that the evidence was available at the time of filing the evidence in chief does not preclude the admissibility as reply evidence. Still, a party is not entitled to split its case [see Halford, supra].

[44]  With respect, the Opponent’s argument that the Transcript is filed to demonstrate the overlap between the parties’ services somewhat contradicts its argument that the Transcript was made relevant by the affidavit of Mr. Landeta. Indeed, as discussed before, a significant part of Mr. Buck’s affidavit purports to evidence that the parties’ services and customers are identical. The Transcript could have been introduced as documentary evidence through the affidavit of Mr. Buck.

[45]  In the end, I find that the Transcript does not qualify as reply evidence under section 43 of the Regulations and so I will not discuss it further.

Analysis of the grounds of opposition

[46]  Since no material differences exist between the two opposition proceedings, I will analyze the grounds of opposition by using “the Mark” to refer interchangeably to the Applicant’s trade-marks JUICE MOBILE and JUICE, but I will distinguish them as needed. Thus, my conclusion concerning a ground of opposition will apply to both proceedings.

Non-compliance with Section 30 of the Act

[47]  The material date that applies to both grounds of opposition alleging that the application does not comply with the requirements of section 30 is the filing date of the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB)].

[48]  In the absence of representations from the Opponent, both grounds of opposition are summarily dismissed for the reasons that follow.

[49]  While not referenced in the pleading, the first ground of opposition is based upon section 30(a) of the Act. However, the Opponent has provided neither evidence nor argument to support its pleading that “advertising on (a) delivering advertisement for others” does not describe any services (other services objected to by the Opponent are no longer in the statement of services of the application of record). Accordingly, the ground of opposition is dismissed for the Opponent’s failure to meet its evidential burden.

[50]  While not referenced in the pleading, the second ground of opposition is based upon section 30(b) of the Act. However, the Opponent has not provided evidence to support its pleading that the Applicant did not use the Mark since at least as early as August 15, 2010. Also, this is not a case where the Opponent may rely upon the Applicant’s evidence to meet its relatively light burden under section 30(b) of the Act. Accordingly, the ground of opposition is dismissed for the Opponent’s failure to meet its evidential burden.

Non-entitlement Grounds of Opposition

[51]  The Opponent has pleaded two grounds of opposition alleging that the Applicant is not the person entitled to registration of the Mark. While not referenced in the pleadings, the relevant sections of the Act are sections 16(1)(a) and 16(1)(c) respectively.

[52]  The material date to assess both grounds of opposition is the claimed date of first use of the Mark, namely August 15, 2010 [section 16(1) of the Act].

Section 16(1)(a) of the Act

[53]  The section 16(1)(a) ground of opposition is premised on an allegation of confusion between the Mark and the Opponent’s trade-mark JUICE allegedly used and made known in Canada by the Opponent and its predecessor in title since at least as early as June 29, 2004 in association with the JUICE Services.

[54]  I find from the outset that there is no evidence establishing that the Opponent’s alleged trade-mark JUICE has been made known at any time in Canada in association with the JUICE Services pursuant to the definition of “made known” set out in section 5 of the Act.

[55]  What remains to be considered is whether the Opponent has discharged its burden to show use of its alleged trade-mark JUICE in Canada prior to August 15, 2010, and non-abandonment at the date of advertisement of the application for the Mark, namely November 27, 2013 [section 16(5) of the Act].

[56]  While most of the exhibits to the affidavit of Mr. Buck postdate August 15, 2010, Exhibit C consists of letterhead and business cards filed as representative of the use of the Opponent’s trade-mark JUICE in Canada since June 29, 2004. In addition, the two invoices provided as Exhibit A4 date back to the years 2004 and 2005. I consider the display of “Juice Productions” shown by these exhibits to be use of the trade-mark JUICE. Indeed, the words “juice” appears prominently above the word “productions”; it is printed in a much larger font and in a different script than the word “productions”. I would add that the Applicant, in its written argument, acknowledges that the Opponent has offered evidence of use of the trade-mark JUICE in Canada since 2004.

[57]  In the end, I am satisfied that the affidavit of Mr. Buck establishes use of the trade-mark JUICE in Canada in association with the JUICE Services by Juice Productions prior to August 15, 2010, as well as non-abandonment of the trade-mark as of November 27, 2013.

[58]  Thus, the question becomes whether the Applicant has met its legal onus to show that the Mark, as of August 15, 2010, was not reasonably likely to cause confusion with the Opponent’s trade-mark JUICE previously used by the Opponent’s predecessor in title in association with the JUICE Services.

Likelihood of confusion

[59]  The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that the 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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

[60]  In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 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 the trade-marks have been in use; c) the nature of the goods, 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 Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, 49 CPR (4th) 321; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al, 2006 SCC 23, 49 CPR (4th) 401; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 for a thorough discussion of the general principles that govern the test for confusion.]

[61]  In Masterpiece, supra, the Supreme Court of Canada stated that the degree of resemblance between marks, although the last factor listed in section 6(5) of the Act, is often likely to have the greatest effect on the confusion analysis; the Court chose to begin its analysis by considering that factor. I will do the same.

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

[62]  When considering the degree of resemblance, the law is clear that the trade-marks must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the trade-marks.

[63]  The first portion of a trade-mark is usually considered more important for assessing the likelihood of confusion [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 at 188 (FCTD)]. At paragraph 64 of the Masterpiece decision, the Court writes that to measure the degree of resemblance, a preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique.

[64]  The Applicant submits that there is only a small degree of resemblance between its trade-mark JUICE MOBILE and the Opponent’s trade-mark JUICE. I disagree. I find that there is a significant degree of resemblance between the trade-marks. The first portion of the Applicant’s trade-mark, i.e. JUICE, is identical to the Opponent’s trade-mark. Furthermore, I find that the term JUICE is the most striking component of the Applicant’s trade-mark as the term MOBILE describes the type of advertising services provided by the Applicant.

[65]  As for the Applicant’s trade-mark JUICE, it is identical to the Opponent’s trade-mark.

[66]  Accordingly, the section 6(5)(e) factor favours the Opponent.

Section 6(5)(a) ‑ the inherent distinctiveness of the trade-marks and the extent to which they have become known

[67]  The overall consideration of the section 6(5)(a) factor involves a combination of inherent and acquired distinctiveness of the parties’ trade-marks.

[68]  Relying on the evidence introduced by Mr. Landeta, the Applicant argues that the word JUICE “is not inherently distinctive of any one entity”. In my view, this argument advances the state of the register evidence as an additional surrounding circumstance rather than being germane to the consideration of section 6(5)(a) of the Act. Thus, I will return to the evidence introduced by Mr. Landeta later on.

[69]  The Applicant rightly submits that the word JUICE is a word of the ordinary English language. However, it has no descriptive or suggestive connotation in the context of the parties’ respective services. Accordingly, the Opponent’s trade-mark and the Applicant’s trade-mark JUICE possess the same measure of inherent distinctiveness.

[70]  As for the Applicant’s trade-mark JUICE MOBILE, I assess its inherent distinctiveness as about the same as the Opponent’s trade-mark, although the inherent distinctiveness of the Applicant’s trade-mark is arguably less since the word MOBILE describes the type of advertising services associated with the trade-mark.

[71]  The strength of a trade-mark may be increased by means of it becoming known in Canada through promotion or use.

[72]  I am puzzled by the Applicant’s submissions that both parties provided evidence “showing some level of renown of their respective marks”. Indeed, there is no evidence of record to establish that the Mark has acquired distinctiveness through promotion or use in Canada.

[73]  By comparison, the affidavit of Mr. Buck indicates that the total advertising expenditures associated with the trade-mark JUICE exceeded $79,000.00 between July 1, 2004 and July 1, 2010. The affidavit also indicates that the total revenues generated by the JUICE Services exceeded 7.9 million dollars between July 1, 2004 and July 1, 2010. Even though the evidence does not distinguish whether the total revenues relate to the trade-mark JUICE or the trade-name JUICE PRODUCTIONS INC., when considering the affidavit in its entirety, I find it fair to infer that a significant portion of the revenues generated by the JUICE Services were in association with the trade-mark JUICE.

[74]  In the end, there is sufficient evidence to conclude that the Opponent’s trade-mark JUICE had become known in Canada on August 15, 2010.

[75]  Accordingly, the overall consideration of the section 6(5)(a) factor favours the Opponent.

Section 6(5)(b)  ‑ the length of time the trade-marks have been in use

[76]  The evidence satisfactorily establishes that the Opponent’s trade-mark JUICE had been used in Canada by Juice Productions for approximately six years (since 2004) prior to the Applicant’s claimed date of first use (August 15, 2010).

[77]  Accordingly, the section 6(5)(b) factor favours the Opponent.

Sections 6(5)(c) and (d)  ‑ the nature of the services or business; the nature of the trade

[78]  Not surprisingly, each party submits that both the section 6(5)(c) and (d) factors weight in its favour. For the purposes of my discussion of these factors, I will first summarize the parties’ submissions, starting with those of the Opponent.

[79]  The Opponent submits that the Applicant’s Services are the same as, similar to, or overlap with, the JUICE Services and that some of the Applicant’s clients are the same as those of the Opponent. It is of note that the Opponent partly supports its submissions by referencing the Transcript, which I have found inadmissible as evidence under section 43 of the Regulations.

[80]  In addition, the Opponent submits that it has already been found in the JUICE MOBILE & Design case that there is an overlap between the nature of the parties’ services and an overlap in the parties’ clients. The Opponent points out that no evidence has been provided by the Applicant to dispute the conclusion reached in the JUICE MOBILE & Design case.

[81]  As for the Applicant, it contends that the nature of the parties’ services, business and trade are distinguishable.

[82]  The Applicant submits that it prepares and distributes advertisement and marketing campaigns that are to be displayed on mobile devices such as phones and tablets; its services are offered to a wide variety of companies and ad agencies; they are not limited to a particular sector or industry. In contrast, the Opponent provides post-production, voice over, and trailer services to the entertainment, film, television and music industry.

[83]  In addition, the Applicant submits that there is no evidence to suggest that the Opponent offered any mobile advertising or marketing services as of any relevant date. In this regard, the Applicant submits that there is no evidence to support Mr. Buck’s assertions that Juice Productions was involved in the provision of advertising services in the mobile space.

[84]  The Applicant acknowledges that “there appears to be some overlap in the customers who have used the services” of both parties, but it submits that this fact alone is not determinative (citing United Artist Corp v Pink Panther Beauty Corp (1998), 80 CPR (3d) 247 at 261-262). The Applicant submits that the services offered by each party are specialized and are acquired by professionals who are not likely to be confused. The Applicant adds that “no instances of confusion have occurred”.

[85]  I begin my discussion of the parties’ submissions by noting that I will deal later with the “no instances of confusion” argument of the Applicant as an additional surrounding circumstance. As for the Applicant’s argument that professionals acquiring specialized services are not likely to be confused, it suffice to say that the Supreme Court of Canada confirmed in Masterpiece that the first impression of consumers when they encounter the trade-marks is the focus of the confusion analysis [Masterpiece, supra, para 70].

[86]  While the absence of cross-examination does not prevent me from assessing the value of Mr. Buck’s testimony, I have no reasons to question his sworn statement that “Juice Productions creates advertising for movies companies and distributors and the advertising is generally in the form of trailers and television spots available on mobile devices through social media and the Internet” [para 27 of the affidavit].

[87]  Finally, it is trite law that each case must be decided based upon its own merit. Clearly, the evidence before me differs from the evidence of record in the JUICE MOBILE & Design case. However, given the evidence and the parties’ submissions in the present case, the following comments of Member Jean Carrière caught my attention as they can be applied to the case before me:

[69]  The Applicant argues it provides mobile advertising and marketing services to companies. It goes on to state in its written argument that the Applicant helps companies and advertising agencies prepare and distribute advertisement and marketing campaigns that are to be displayed on mobile devices such as phones and tablets, while the Opponent would provide post-production, voice-over, and trailer services to the entertainment, film, television, and music industry.

[70]  I am of the opinion that this is a somewhat narrow interpretation of the nature of the Opponent’s JUICE Services. As stated by Mr. Buck, the Opponent is in the business of, amongst others, creating, writing and producing marketing material for others, as does the Applicant. Consequently, there is an overlap in the nature of the parties’ services. Where it differs, it is in the distribution platform: the Applicant’s Services are aimed for mobile devices, such as phones and tablets, while the Opponent’s distribution platforms are iTunes, Netflix, Rogers VOD. In all, the nature of some of the parties’ services is the same, namely to provide marketing material for others.

[88]  While the principle of stare decisis does not apply to decisions rendered by Members and Hearing Officers of the Board acting on behalf of the Registrar, I see no reasons not to follow the principle of comity of decision making and adopt the same rationale here.

[89]  In the end, I find that there is an overlap between the parties’ services as well as a potential for overlap in the nature of the parties’ trade.

[90]  Accordingly, the overall consideration of the section 6(5)(c) and (d) factors favours the Opponent.

Additional surrounding circumstance – No instances of confusion

[91]  As indicated before, the Applicant supports its case by arguing that no instances of confusion have occurred.

[92]  Arguably, there could not have been any instances of confusion before the Mark was first used in Canada, which is the material date to be considered.

[93]  In any event, an opponent needs not to prove instances of confusion. The burden is on an applicant to demonstrate the absence of likelihood of confusion. Absence of evidence of confusion does not relieve an applicant from its burden of proof. Nevertheless, an adverse inference may be drawn from the lack of evidence of actual instances of confusion when there is evidence of extensive concurrent use of the trade-marks [see Mattel Inc, supra at page 347].

[94]  As noted before, the Applicant did not provide any evidence directed to the use of the Mark in Canada at any time whatsoever. Ultimately, absent evidence of extensive concurrent use of the parties’ trade-marks as of August 15, 2010, the lack of actual instances of confusion is of no significance.

Additional surrounding circumstance – State of the register evidence

[95]  For the reasons that follow, I disagree with the Applicant’s contention that the results of the searches conducted by Mr. Landeta on October 28, 2015 support its case.

[96]  State of the register evidence can be useful to assess the commonality or distinctiveness of a trade-mark or portion of a trade-mark in relation to the register as a whole. However, it has been held that this evidence is only relevant insofar as inferences may be made with respect to the state of the marketplace, and inferences about the state of the marketplace can only be drawn when a significant number of pertinent registrations are located [see Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD); and Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)].

[97]  In summary, the Opponent submits that the vast majority of the trade-marks disclosed by the searches are irrelevant and that the nature and number of relevant marks located by the search are insufficient to draw any meaningful conclusion as to the state of the marketplace.

[98]  For its part, the Applicant points out that the results of Mr. Landetta’s search for active trade-marks with the term “JUICE”, filed as Exhibit 1 to the affidavit, disclosed four registrations and two allowed applications for trade-marks purportedly relating to the field of entertainment, music, film or television, namely:

• JUICE (TMA740,110)

• DIGITAL JUICE (TMA754,618)

• Juicemix Productions (TMA703,546)

• THE JUICE (TMA434,556)

• JUICEBOX (allowed appl. No. 1,544,811)

• JUICEBOX. MUSIC FOR KIDS (allowed appl. No. 1,564,376)

[99]  I pause to note that it is not an easy task to locate these trade-marks in Exhibit 1. Indeed, the search disclosed 190 applications and registrations; the list of these entries as well as printouts of the applications and registrations were provided in bundle.

[100]  Except for the above-identified registrations and applications, the Applicant does not cite any entries nor discuss the relevance of the results of the searches for active trade-marks with the term “JUICE” combined with the following terms in the statement of goods and services: “MARKETING” [Exhibit 2]; “ADVERT* [Exhibit 3]; and “DIGITAL” [Exhibit 4]. Rather, the Applicant broadly references the results of these searches. According to my perusal of Exhibits 2 to 4, the number of entries (applications and registrations) disclosed by these searches are 8, 15 and 11 respectively. The list of entries as well as printouts of the applications and registrations were provided in bundle. Finally, it is apparent from the lists that some entries are duplicated.

[101]  Ultimately, I located three of the registrations cited by the Applicant in Exhibit 1. These registrations for the trade-marks JUICE (TMA740,110), DIGITAL JUICE (TMA754,618) and THE JUICE (TMA434,556) issued prior to the material date of August 15, 2010. It was much easier to locate the three other entries cited by the Applicant in Exhibits 2 and Exhibit 3.

[102]  I located the registration for the trade-mark Juicemix Productions (TMA703,546) among the entries disclosed for trade-marks with the term “JUICE” combined with the term “MARKETING” in the statement of goods and services. This registration issued prior to the material date. The only other disclosed registration issued prior to the material date is the previously discussed trade-mark registration for JUICE (TMA740,110).

[103]  I located the applications for the trade-marks JUICEBOX (appl. No. 1,544,811) and JUICEBOX. MUSIC FOR KIDS (appl. No. 1,564,376) among the entries disclosed for trade-marks with the term “JUICE” combined with the terms “ADVERT*” in the statement of goods and services. These applications matured to registration Nos. TMA860,045 and TMA860,043 respectively subsequently to the material date (the applications were also allowed after the material date). Except for the previously cited trade-mark JUICE (TMA740,010), there are only two other disclosed trade-marks registered prior to the material date, namely JUICE HUT (TMA662,791) and JUICESPOT (TMA741,609), but in my view only the trade-mark JUICESPOT is associated with relevant services.

[104]  Finally, seven registrations are disclosed by the search for trade-marks for the term “JUICE” combined with the term “DIGITAL” in the statement of goods and services. Except for the previously discussed trade-mark DIGITAL JUICE (TMA754,619), there is only one other disclosed trade-mark registered prior to the material date, namely JUICE (TMA680,914), but in my view it is not associated with relevant goods or services.

[105]  In the end, based on a fair reading of the statements of goods or services of the four registrations specifically cited by the Applicant, I disagree that they are relevant registrations. I would add that even if I were wrong, it would not affect my assessment of the state of the register as an additional surrounding circumstance. Indeed, considering the Applicant’s submissions and my previous comments, at best for the Applicant I would conclude that the evidence shows only five relevant registered trade-marks as of August 15, 2010, which is not a sufficient number to draw a conclusion favourable to the Applicant.

Conclusion

[106]  Section 6(2) of the Act is not concerned with confusion between the trade-marks themselves, but rather confusion as to the source of the goods or services.

[107]  In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. Having considered all of the surrounding circumstances, I conclude that the Applicant did not discharge its legal onus of establishing that, as of August 15, 2010, there was no reasonable likelihood of confusion between the Mark in association with the Applicant’s Services and the Opponent’s trade-mark JUICE in association with the JUICE Services.

[108]  Accordingly, the non-entitlement ground of opposition based upon section 16(1)(a) of the Act is successful.

Section 16(1)(c) of the Act

[109]  The section 16(1)(c) ground of opposition is premised on an allegation of confusion between the Mark and the trade-name JUICE PRODUCTIONS INC. allegedly used in Canada since at least as early as June 29, 2004 in association with the JUICE Services.

[110]  I do not intend to engage into a review of the evidence to decide whether the Opponent has discharged its burden to show use of the alleged trade-name prior to August 15, 2010 and non-abandonment at the date of advertisement of the application for the Mark. Indeed, the answer to that question does not affect the outcome of the opposition which ultimately succeeds based on the likelihood of confusion between the Mark and the Opponent’s trade-mark JUICE.

Non-distinctiveness Ground of Opposition

[111]  The material date to assess the non-distinctiveness ground of opposition is the filing date of the statement of opposition, namely April 2, 2014 [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185, 34 CPR (4th) 317].

[112]  There is an evidential burden on the Opponent to establish that either its alleged trade-mark JUICE or the alleged trade-name JUICE PRODUCTIONS INC. had a substantial, significant or sufficient reputation in Canada in association with the JUICE Services as of April 2, 2014 to negate the distinctiveness of the Mark [see Motel 6, Inc v No 6 Motel Ltd, (1981), 56 CPR (2d) 44 (FCTD); and Bojangles’ International, LLC and Bojangles Restaurants, Inc v Bojangles Café Ltd, 2006 FC 657, 48 CPR (4th) 427].

[113]  To the extent that the ground of opposition revolves around the likelihood of confusion between the Mark and the Opponent’s trade-mark JUICE, I am satisfied that the Opponent has discharged its evidential burden.

[114]  Thus, the question becomes whether the Applicant has met its legal onus to show that the Mark was not reasonably likely to cause confusion with the Opponent’s trade-mark JUICE as of April 2, 2014.

[115]  As a first matter, I note that except for referencing different material dates, the Applicant in its written argument does not make any distinctions between the non-entitlement and non-distinctiveness grounds of oppositions when assessing the factors of section 6(5) of the Act.

[116]  In the end, considering the evidence of record, I find that assessing each of the section 6(5) factors as of April 2, 2014 rather than as of August 15, 2010 does not significantly impact my previous analysis of the surrounding circumstances of this case.

[117]  Indeed, in view of the Opponent’s evidence, I conclude that the extent to which its trade-mark JUICE had become known in Canada and the length of time it had been in use favour the Opponent even more significantly.

[118]  In terms of additional surrounding circumstances, the lack of actual instances of confusion remains of no significance.

[119]  As for the state of the register evidence, obviously the number of registrations predating the material date is higher under the non-distinctiveness ground than under the non-entitlement ground. However, I do not consider it necessary to discuss the nature and number of relevant registrations as of April 2, 2014. For one thing, the Applicant itself has chosen not to discuss the grounds of opposition distinctively. In addition, even if the number of relevant registrations was sufficient to draw a conclusion favourable to the Applicant, in weighing all of the factors enumerated at section 6(5) and their relative importance, I would not consider this additional surrounding circumstance to be so significant as to tip the balance of probabilities in favour of the Applicant.

[120]  Thus, for reasons similar to those expressed under the section 16(1)(a) ground of opposition, I conclude that the Applicant has not discharged its legal onus of establishing that there was no reasonable likelihood of confusion between the Mark and Opponent’s trade-mark JUICE as of April 2, 2014.

[121]  Accordingly, the non-distinctiveness ground of opposition is successful to the extent that it revolves around the likelihood of confusion between the Mark and the Opponent’s trade-mark JUICE.

Disposition

[122]  In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse both application Nos. 1,559,009 and 1,559,010 pursuant to section 38(8) of the Act.

Céline Tremblay

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENT(S) OF RECORD

RICHES, MCKENZIE & HERBERT LLP	FOR THE OPPONENT
NORTON ROSE FULBRIGHT CANADA LLP/S.E.N.C.R.L., s.r.l.	FOR THE APPLICANT