Citation: 2018 TMOB 36

Date of Decision: 2018-04-18

IN THE MATTER OF AN OPPOSITION

	Meng Liu	Opponent
and
	Enjoy Technology, Inc.	Applicant
	1,688,156 for ENJOY LOGO	Application

Introduction

[1]  Enjoy Technology, Inc. has filed an application to register the trade-mark ENJOY LOGO (the Mark), as shown below.

 

[2]  The application is based upon proposed use of the Mark in Canada in association with the following services: (1) On-line retail store services featuring consumer electronics, retail store services featuring consumer electronics, excluding cable connectors, audio/video cable connectors, audio/video cables, audio/video cable converters and audio/video cable adapters, electronic interconnectors for audio and video signals, electronic switchers for audio and video signals; Installation and repair of consumer electronics; Education services, namely, providing tutorial sessions in the field of consumer electronics; Technical support services for consumer electronics, namely, help desk services; diagnostic services in the field of consumer electronics.

[3]  The Opponent, Meng Liu, is the owner of the following trade-marks:

Trade-mark	Application/ Registration Number	Goods/Services
1.	TMA901,423	Goods: Electronics namely, cable connectors, audio/video cable connectors, audio/video cables, audio/video cable converters and audio/video cable adapters.
2.   ENJOYGADGETS	1,677,165	Goods: Audio/video cable connectors; audio/video cable converters; audio/video cable adapters; electronic interconnectors for audio and video signals; electronic switchers for audio and video signals.
3.   ENJOYGADGETS	TMA928,129	Goods: Audio/video cable connectors; audio/video cable converters; audio/video cable adapters; electronic interconnectors for audio and video signals; electronic switchers for audio and video signals.
4.		Services: On-line retail sales of consumer electronics; provision of on-line reviews and technical advice relating to consumer electronics
5.		Goods: Audio/video cable connectors; audio/video cable converters; audio/video cable adapters; electronic interconnectors for audio and video signals; electronic switchers for audio and video signals.   Services: On-line retail sales of consumer electronics; provision of on-line reviews and technical advice relating to consumer electronics
6.   ENJOYGADGETS		Services: On-line retail sales of consumer electronics; provision of on-line reviews and technical advice relating to consumer electronics

[4]  The Opponent claims to have been using each of these marks in Canada since at least as early as January 1, 2012 and it has opposed the Applicant’s application for the Mark, inter alia, based upon an allegation that there is a likelihood of confusion between the parties’ trade-marks.

[5]  For reasons that follow, the opposition is successful.

File History

[6]  The application for the Mark was filed on August 5, 2014.

[7]  It was advertised for opposition purposes in the Trade-marks Journal dated May 20, 2015. The Opponent opposed it on July 20, 2015 by filing a statement of opposition under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act). The Opponent subsequently requested leave to file an amended statement of opposition on February 8, 2016 and leave was granted. A further request for leave to amend was requested on January 4, 2017. It was also granted, the result being that the January 4, 2017 statement of opposition will govern these proceedings.

[8]  The grounds of opposition are based upon sections 30(i), 12(1)(d), 16(3) and 2 of the Act.

[9]  The Applicant filed a counterstatement on September 25, 2015. It subsequently requested leave to file an amended counterstatement on October 17, 2016 and leave was granted.

[10]  As evidence in support of its opposition, the Opponent filed: the affidavit of Kimberly Louise Raoul (an assistant employed by the agent for the Opponent), sworn January 22, 2016, the affidavit of Meng Liu (the Opponent and founder and proprietor of the business ENJOYGADGETS SOLUTIONS), sworn February 4, 2016 and the affidavit of Tina Carla Cohen (an assistant employed by the agent for the Opponent), sworn February 8, 2016. None of the affiants were cross-examined.

[11]  The Applicant filed a statement indicating that it did not wish to file any evidence in support of its application on June 3, 2016. It subsequently requested leave to file additional evidence under Section 44(1) of the Trade-marks Regulations. However, its request for leave was denied. Accordingly, that evidence has not been made of record.

[12]  Both parties filed written arguments and the Opponent’s written argument was amended on January 6, 2017.

[13]  Both parties were represented at a hearing held on December 12, 2017.

Onus

[14]  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 [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298].

material dates

[15]  The material dates that apply to the grounds of opposition are:

·  sections 38(2)(a)/30(i) - the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];

·  sections 38(2)(b)/12(1)(d) - the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)];

·  sections 38(2)(c)/16(3)(a)/16(3)(b)/16(3)(c) – the date of filing of the application for the Mark [section 16(3) of the Act]; and

·  sections 38(2)(d)/2 - the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 2004 FC 1185 (CanLII), 34 CPR (4th) 317 (FC)].

The Evidence

The Cohen Affidavit

[16]  Ms. Cohen attaches as an exhibit, a copy of the Certificate of Registration for the Opponent’s registration No. TMA928,129 for the trade-mark ENJOYGADGETS [para 2; Exhibit TCC-1].

The Raoul Affidavit

[17]  Ms. Raoul attaches as exhibits, print-outs from the Canadian Trade-marks Database for the Opponent’s registration No. TMA901,423 and its application No. 1,677,165 [paras 5 and 6; Exhibits KLR-1 and KLR-2].

The Liu Affidavit

[18]  Ms. Liu provides background information regarding her business and the use of her trade-marks and trade-name. According to Ms. Liu, she operates her business in British Columbia under the names EnjoyGadgets Solutions and EnjoyGadgets and has been doing so continuously since August 14, 2009 [paras 7 and 8].

[19]  Ms. Liu operates her business on-line at the website located at enjoygadgets.com. Through this website, Ms. Liu sells and provides reviews about consumer electronics [para 9]. Ms. Liu states that she has been selling consumer electronics through this website since at least 2010 [paras 10 and 16]. Attached as Exhibit ML-1 is a screenshot for the current homepage for her business’ website [para 10]. Attached as Exhibit ML-2 is a collection of screenshots from the homepage accessed through the Internet Archive Wayback Machine from 2010 to 2015.

[20]  Some of the screenshots attached as Exhibits ML-1 and ML-2 make reference to the EnjoyGadgets word mark in text and all of them display the design mark (hereinafter, the EnjoyGadgets logo) and/or a slight variation of it (i.e. with the words being featured in white) depicted below. Although featured in colour, I consider these logos to constitute use of the black & white version of the mark as pleaded in the statement of opposition (see mark no. 5 in the chart shown in para 3 above).

[21]  Ms. Liu states that each page of her website features the EnjoyGadgets logo at the top and bottom and that this logo has been continuously used since 2010, with some variations on the website in terms of the wording of the copyright notice (earlier versions referenced “EnjoyGadgets” and later versions referenced “EnjoyGadgets Solutions”) and the removal of the words “Elite Gadgets Only” beside the logo [paras 10 to 13].

[22]  Ms. Liu also sells consumer electronics through third party on-line stores such as amazon.ca, ebay.ca and newegg.ca [para 9]. According to Ms. Liu, her business’ storefront on the on-line store operated by amazon.ca has always shown either of the following marks depicted below [para 17].

 

[23]  Attached as Exhibit ML-3 to her affidavit is a screenshot of the current page for her business’ storefront on amazon.ca. Ms. Liu states that her business’ product listings on amazon.ca have always shown the words “Sold by EnjoyGadgets” and/or “by EnjoyGadgets” and/or “Ships from and sold by EnjoyGadgets”, and in the Checkout section the words “Sold by EnjoyGadgets” appear. Attached as Exhibit ML-4 is a collection of screenshots of such product listings.

[24]  According to Ms. Liu, since at least as early as 2010, all purchases have been shipped in her business’ shipping packages bearing the word ENJOYGADGETS and her business’ invoices showing the trade-mark and trade-name ENJOYGADGETS have been inserted in the packages [paras 20 and 21]. Representative copies of shipping packages and invoices are attached as Exhibits ML-5 and ML-6. Representative flyers bearing ENJOYGADGETS which have been inserted into shipping packages from time to time are attached as Exhibit ML-7].

[25]  In paragraph 23 of her affidavit, Ms. Liu states that all of the products sold by her business have been electronic consumer goods, such as camcorders, or parts and accessories for consumer electronic products such as SD cards and network routers and HDMI switches. Ms. Liu provides an itemized list of products sold by her business for the years 2010 to 2016 [para 24].

[26]  According to Ms. Liu, the average price of products sold by her business is around $50 [para 25]. The dollar volume of sales of products sold by her business from 2010 to February 12, 2014 is over $2,000,000; during 2014 is over $1,000,000; and during the first three quarters of 2015 is over $1,000,000 [para 26].

[27]  In addition to selling third party goods, Ms. Liu states that her business also sells some consumer electronic goods with the trade-mark ENJOYGADGETS featured on the product itself or on a label affixed to the product at the time of shipping [paras 31-33 and 35-39; Exhibit ML-10 - ML-13]. The volume of sales of ENJOYGADGETS products sold by Ms. Liu’s business from 2009 to February 12, 2014 is over $1,000,000; during 2014 is over $500,000; and during the first three quarters of 2015 is over $200,000 [para 40].

[28]  In paragraph 27, Ms. Liu provides data pertaining to the number of visits to her business’ website and to her business’ storefronts on amazon.ca and amazon.com for the years of 2010-2015. Visits to her own website ranged between 26, 635 and 63,084 between 2010 and 2013 and in the first three quarters of 2015, visits to her storefront on amazon.ca exceeded 1 million visitors. There is no indication how many of the visitors were Canadian. However, given that these websites are both Canadian, I consider it reasonable to infer that a fair number of them would have been. According to Ms. Liu, her business is listed as one of the top 100 sellers on the amazon.ca website [para 28; Exhibit ML-8].

[29]  Ms. Liu further states that she has been providing technical advice and reviews relating to consumer electronics through her business’ website and through downloadable newsletters since at least as early as 2010. Attached as Exhibit ML-9 is a screenshot of the current blog page of her business’ website, which contains such advice and reviews, some of which dates back to before 2013.

[30]  In paragraphs 42-45 of her affidavit, Ms. Liu provides some information pertaining to the Applicant’s products and services. Attached as Exhibit ML-14 is a collection of screenshots from the Applicant’s website. These screenshots show the brand Apple® and products such as iPad Pro®, iPad Air 2® and iPad mini 4® for sale. According to Ms. Liu, her business has been offering accessories for such products for sale since at least as early as 2011 [para 43]. The screenshots also show items such as headphones and cameras and Ms. Liu states that her business has also been selling items of this nature since at least as early as 2011. Finally, Ms. Liu states that the screenshots also show products such as televisions, cameras and computers of such a nature that her business has been selling adapters, converters, and cables for since at least as early as 2010 [para 45].

Analysis of Grounds of Opposition

Section 12(1)(d)

[31]  The Opponent has pleaded that the Mark is not registrable in view of section 12(1)(d) of the Act, as it is confusing with her trade-mark ENJOYGADGETS (registration No. TMA928,129) and her design mark EnjoyGadgets (registration No. TMA901,423), as depicted below.

[32]  An opponent’s initial evidential burden is met with respect to a section 12(1)(d) ground of opposition if the registrations relied upon in the statement of opposition are in good standing as of the date of the decision. The Registrar has discretion to check the register in order to confirm the existence of a registration relied upon by an opponent [Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. I have exercised the Registrar’s discretion and confirm that the Opponent’s registrations are extant. The Opponent has therefore met her initial evidential burden in respect of this ground. I must therefore determine whether the Applicant has met the legal onus upon it to establish that there is no likelihood of confusion between the parties’ trade-marks.

[33]  In assessing this ground of opposition, I am going to focus on the Opponent’s word mark ENJOYGADGETS (registration No. TMA928,129). Her design mark (registration No. TMA TMA901,423) is no more similar to the Mark and she has shown less use of that particular mark. She therefore stands a better chance of success in relation to her word mark.

Test for Confusion

[34]  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 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.

[35]  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 each has 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, in general, Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC)]. Moreover, the test under section 6(2) of the Act does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source.

Consideration of Section 6(5) Factors

Inherent Distinctiveness and the Extent to which the Trade-marks have Become Known

[36]  The Opponent’s trade-mark consists of a combination of the ordinary dictionary terms ENJOY and GADGETS. This combination of words suggests the idea of “enjoying” gadgets. The Mark consists of a combination of the word ENJOY and a design component, which may be perceived as a smile. Thus, it also suggests the idea of “enjoying” something. Despite their suggestive nature, both parties’ marks do possess some degree of inherent distinctiveness, and I assess that degree of inherent distinctiveness to be of a similar degree.

[37]  I will now address the extent to which the parties’ trade-marks have become known.

[38]  The application for the Mark is based upon proposed use and the evidence of record does not enable me to conclude that the Mark has become known to any significant extent. By contrast, I am satisfied from the Liu affidavit, as summarized above, that the Opponent’s trade-mark has become known to some extent.

[39]  According to Ms. Liu, her business in British Columbia has been operational since August 14, 2009 [paras 7 and 8]. Ms. Liu states that her business has been selling consumer electronic goods with the trade-mark ENJOYGADGETS featured on the product itself or on a label affixed to the product at the time of shipping, since 2009 [paras 31-33 and 35-39; Exhibit ML-10 - ML-13].

[40]  According to Ms. Liu, customers have bought ENJOYGADGETS products from the websites located at ebay.ca, amazon.ca and newegg.ca [para 32]. Attached as Exhibit ML-10 to her affidavit are printouts from these websites showing her business’ ENJOYGADGETS products. The trade-mark ENJOYGADGETS is visible on the products shown for sale in the printouts and in the text advertising those particular products. The printouts feature products such as switchers, splitters, adapters and converters.

[41]  In paragraph 35 of her affidavit, Ms. Liu provides the dates since various products featuring the trade-mark ENJOYGADGETS have been sold in Canada on her business’ own website. The dates range from 2009 to 2014.

[42]  Attached as Exhibit ML-11 are print-outs from her business’ website, showing these products with the trade-mark ENJOYGADGETS visible thereon. They include items such as switches, splitters, cables and converters. She indicates that these print-outs are representative of the manner in which the trade-mark ENJOYGADGETS has appeared on the products at the time of shipping since the corresponding dates indicated in paragraph 35 [para 36].

[43]  In paragraph 37, Ms. Liu provides the dates since various products have been sold with a label featuring the trade-mark ENJOYGADGETS affixed thereto. Attached as Exhibit ML-12 are print-outs from her business’ website showing such products, which are similar in nature to some of those featured in Exhibit ML-11 and also include “connectors”. Attached as Exhibit ML-13 is a collection of photographs which Ms. Liu states are representative of the labels affixed to the products identified in paragraph 37 of her affidavit. The trade-mark ENJOYGADGETS is visible thereon.

[44]  The volume of sales of ENJOYGADGETS products sold by Ms. Liu’s business from 2009 to February 12, 2014 is over $1,000,000; during 2014 is over $500,000; and during the first three quarters of 2015 is over $200,000 [para 40].

[45]  Ms. Liu tracks the number of visitors to her website and between the years of 2010 to 2014, the number of visitors ranged from 26,635 to 63,084, though it is not clear how many of these were Canadian visitors [para 27]. She has also provided details pertaining to the number of visitors to her on-line store front located on amazon.ca.

[46]  According to Ms. Liu, her business’ ENJOYGADGETS products have also been featured in YouTube videos posted by third parties since 2010 [para 41].

[47]  Overall, I find that this factor, which involves an assessment of a combination of the inherent and acquired distinctiveness of the parties’ trade-marks, favours the Opponent, owing to the greater acquired distinctiveness of her trade-mark.

Length of Time the Marks have been in Use

[48]  This factor also favours the Opponent, as the Applicant has not evidenced any use of the Mark and as discussed above, the Opponent has evidenced use of her trade-mark.

The Nature of the Parties’ Goods, Services or Business and Trades

[49]  It is the Applicant’s statement of goods as defined in its application versus the Opponent’s registered goods that governs my determination of these factors [Henkel Kommanditgesellschaft auf Aktein v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); Mr. Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); Miss Universe Inc v Bohna (1994), 58 CPR (3d) 381 (FCA)].

[50]  The Opponent’s registration covers: audio/video cable connectors; audio/video cable converters; audio/video cable adapters; electronic interconnectors for audio and video signals; electronic switchers for audio and video signals.

[51]  The Application for the Mark (as amended), covers: “on-line retail store services featuring consumer electronics, retail store services featuring consumer electronics, excluding cable connectors, audio/video cable connectors, audio/video cables, audio/video cable converters and audio/video cable adapters, electronic interconnectors for audio and video signals, electronic switchers for audio and video signals; Installation and repair of consumer electronics; Education services, namely, providing tutorial sessions in the field of consumer electronics; Technical support services for consumer electronics, namely, help desk services; diagnostic services in the field of consumer electronics”.

[52]  At the hearing, the Applicant attempted to draw a distinction between the goods covered in the Opponent’s registration and the services associated with the Mark. In particular, the Applicant submitted that the Opponent’s goods are specialized accessories and not general consumer electronics of the same nature as those which are associated with the Applicant’s services. In support of this argument, the Applicant pointed out that the Opponent’s goods are characterized in some instances on her website as being “elite” gadgets.

[53]  It was further pointed out that the Applicant’s on-line and retail store services featuring consumer electronics specifically exclude the particular items which are covered by the Opponent’s registration.

[54]  While it is true that there is no direct overlap between the goods covered in the Opponent’s registration and the goods which are intended to be sold by the Applicant by way of its on-line and retail store services, I still consider there to be a relationship between them. As pointed out by the Opponent at the hearing, her goods are complimentary to certain consumer electronic products. Further, I note that the Applicant’s remaining educational, technical support and diagnostic services have not been amended to exclude the particular items covered by the Opponent’s registration. Rather, they broadly relate to the field of consumer electronics, and again, while there is no direct overlap, these services may be peripherally related to the Opponent’s goods.

[55]  In terms of the nature of the parties’ trade, only the Opponent has provided evidence with respect to how/where it carries on its business. The Opponent did file print-outs from what appears to be a website for the Applicant, but that evidence alone is not sufficient for me to draw any definitive conclusions about the nature of the Applicant’s trade. In the absence of any evidence to the contrary from the Applicant, and given the related nature of the Opponent’s goods and the Applicant’s services, I find it reasonable to infer that there could be at least some potential for overlap in the parties’ channels of trade.

Degree of Resemblance

[56]  When considering the degree of resemblance between trade-marks, they 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 marks [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 (CanLII), CarswellNat 1402 at para 20].

[57]  In Masterpiece (supra), at para 64, the Supreme Court further advises that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trade-marks that is particularly striking or unique.

[58]  In the case of the Mark, I find that it is ENJOY which stands out most. To the extent that the design component may be perceived as conveying the idea of a smile, as a matter of first impression, I am of the view that it serves to reinforce the idea of enjoying something, thereby placing further emphasis on the word ENJOY. The Opponent’s trade-mark is composed solely of a combination of the two ordinary dictionary terms ENJOY and GADGETS. Given that ENJOY appears in the dominant first position of the mark, and that “gadgets” is simply a descriptive term, I also consider ENJOY to be what stands out most in the Opponent’s trade-mark. Overall, I find that the inclusion of the word ENJOY in both parties’ marks results in there being a fair degree of visual and phonetic similarity between them and in a similar suggested idea.

Conclusion Regarding Likelihood of Confusion

[59]  Section 6(2) of the Act does not concern confusion of the marks themselves, but confusion of goods and services from one source as being from another source. The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the Mark in association with the goods and/or services at a time when he or she has no more than an imperfect recollection of the Opponent’s trade-mark and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot (supra) at para 20].

[60]  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 find that the Applicant has not satisfied the onus on it to prove that, on a balance of probabilities, there is not a reasonable likelihood of confusion between the parties’ trade-marks as of today’s date. I acknowledge that the parties’ trade-marks do not possess a high degree of inherent distinctiveness. However, they are not completely devoid of any inherent distinctiveness and this is a case where there is no evidence that the Applicant’s Mark has acquired any distinctiveness in association with the services covered by its application. By contrast, the Opponent’s trade-mark has acquired some distinctiveness, and the remaining surrounding circumstances mostly favour the Opponent.

[61]  Accordingly, this ground of opposition is successful.

Section 16(3)(a)

[62]  The Opponent has pleaded that the Applicant is not the person entitled to registration of the Mark having regard to the provisions of section 16(3)(a) of the Act because at the date of filing of the Applicant’s application, the Mark was confusing with the following trade-marks, previously used or made known in Canada by the Opponent, in association with the goods “audio/video cable connectors; audio/video cable converters; audio/video cable adapters; electronic interconnectors for audio and video signals; electronic switchers for audio and video signals” and the services “on-line retail sales of consumer electronics; provision of on-line reviews and technical advice relating to consumer electronics”.

ENJOYGADGETS

[63]  In order to meet her burden under this ground of opposition, the Opponent is required to show that as of the date of filing of the application for the Mark, one or more of her pleaded trade-marks had been previously used in Canada and had not been abandoned as of the date of advertisement of the applicant’s application [section 16(5) of the Act].

[64]  As per my review above of the Liu affidavit, the Opponent has met her burden, at least in respect of the first two of these trade-marks. As outlined in my analysis under section 12(1)(d) ground of opposition, the Opponent has shown use of the first mark in association with at least some of her goods, even as of the August 5, 2014 filing date of the application for the Mark. She has also shown use of both  the first mark and the second mark in association with on-line retail sales of consumer electronics and the provision of on-line reviews and technical advice relating to consumer electronics, since prior to that date (see, for example, Exhibits ML-1, ML-2, ML-7 and ML-9).

[65]  The different material date for assessing the Opponent’s non-entitlement ground of opposition and the fact that the Opponent has relied upon additional trade-marks under this pleading does affect my analysis under the section 12(1)(d) ground of opposition. However, it does not impact my ultimate conclusion regarding the likelihood of confusion between the parties’ trade-marks.

[66]  The section 6(5)(a) and 6(5)(b) factors still favour the Opponent, as the Applicant has not filed any evidence of use or reputation for the Mark.  

[67]  Insofar as section 6(5)(c) is concerned, I note that in paragraph 24 of her affidavit, Ms. Liu provides a list of various products her business has sold since 2010. Many of these fall within the category of what might generally be considered to be “consumer electronics” or accessories therefore. For example, “camcorders”, “iPad cases”, “iPad earphones, headsets and cases”, “controllers for electronic gaming devices” and “computer drives”. As Exhibit ML-14 to her affidavit, Ms. Liu attaches a collection of screenshots from the Applicant’s website, which shows products such as iPad Pro, iPad Air 2, headphones, cameras, computers and Apple TV’s. Ms. Liu states that her business has been selling iPad and iPhone accessories, headphones and cameras since at least as early as 2011 and adapters, converters and cables for use with televisions, video cameras and computers since as early as 2010 [paras 42-45]. Thus, it would seem that the section 6(5)(c) factor, namely, the nature of the parties’ goods, services or businesses favours the Opponent even more so in some aspects under this ground of opposition, than it did under the section 12(1)(d) ground.

[68]  With respect to section 6(5)(d), again, in the absence of any evidence to the contrary from the Applicant, and in view of the related nature of the parties’ goods and services, I consider it reasonable to infer that there could be some potential for overlap in the parties’ respective channels of trade.

[69]  With respect to section 6(5)(e), my analysis regarding the degree of resemblance between the Opponent’s ENJOYGADGETS word mark and the Mark is the same. The Opponent’s design mark contains the additional feature of a check mark design. However, I still consider there to be a fair degree of resemblance between this mark and the Mark, particularly in terms of suggested idea.

[70]  In view of the foregoing, I find the outcome of the non-entitlement ground is the same as the outcome of the section 12(1)(d) ground. Accordingly, the section 16(3)(a) ground of opposition is successful.

Remaining Grounds of Opposition

[71]  As I have already found in favour of the Opponent under two grounds, I do not consider it necessary to address the remaining grounds of opposition.

Disposition

[72]  In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

Lisa Reynolds

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2017-12-12

APPEARANCES

Bayo Odutola	FOR THE OPPONENT
Meghan Dillon	FOR THE APPLICANT

AGENTS OF RECORD

Ollip P.C.	FOR THE OPPONENT
Meghan Dillon	FOR THE APPLICANT