Citation: 2018 TMOB 97

Date of Decision: 2018-08-31

IN THE MATTER OF AN OPPOSITION

	LinkedIn Ireland and LinkedIn Corporation	Opponents
and
	Coldwin Software Inc.	Applicant
	1,626,149 for BOOKEDIN	Application

Introduction

[1]  LinkedIn Ireland and LinkedIn Corporation (collectively referred to as “the Opponent”) oppose registration of the trade-mark BOOKEDIN (the Mark), filed by Coldwin Software Inc. (the Applicant).

[2]  For the reasons that follow, I refuse the application.

The Record

[3]  On May 10, 2013 the Applicant filed the application bearing serial No. 1,626,149 for the registration of the Mark. The application covers:

Platform as a service (PAAS) featuring web-hosted computer software platforms for use in scheduling appointments for businesses; online advertising services, namely, promoting the wares and services of others through the provision of an Internet webpage and the operation of an online business directory; online payment processing services for businesses. (the Services)

[4]  The application is based on use in Canada since September 9, 2010 and was published on October 1, 2014 in the Trade-marks Journal for the purposes of opposition.

[5]  On March 2, 2015 LinkedIn Ireland Limited filed a statement of opposition. On March 27, 2015 an amended statement of opposition was filed in order to properly identify the Opponent, and was forwarded to the Applicant by the Registrar on April 2, 2015.

[6]  The grounds of opposition pleaded are based on sections 30(a) and (b) (compliance), 12(1)(d) (registrability), 16(1)(a) (entitlement) and 2 (distinctiveness) of the Trade-marks Act, RSC 1985, c T-13 (the Act).

[7]  The Applicant filed a counter statement on April 13, 2015 denying each ground of opposition pleaded.

[8]  The Opponent filed as its evidence the affidavits of Mike Bates, dated November 9, 2015 and Sara Harrington of the same date.

[9]  The Applicant filed as its evidence the affidavit of Michael Iwasiow dated June 8, 2016.

[10]  Both parties filed written arguments and were represented at the hearing.

Evidentiary burden

[11]  The legal onus is on the applicant to show that the application complies with the provisions 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. Once this initial burden is met, the applicant has to prove, on a balance of probabilities, that the particular ground of opposition should not prevent the registration of the Mark [see Joseph E Seagram & Sons Ltd et al v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB), John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD), and Wrangler Apparel Corp v The Timberland Company [2005] FCJ No 899, (FC)].

Preliminary remarks

[12]  In reaching my decision I have considered all the evidence in the file. However, I shall refer only to those portions of the evidence which are directly relevant to the issues discussed in the body of my decision.

[13]  At the hearing, the Applicant conceded that the Opponent’s trade-mark LINKEDIN has a significant degree of acquired distinctiveness. Therefore, I do not intend to summarize in details the content of Mr. Bates’ affidavit, a law clerk at the firm of Smart & Biggar, the Opponent’s agent at the time of filing of his affidavit. Mr. Bates makes reference to 56 exhibits, most of which to establish the extensive use of the Opponent’s various trade-marks namely, IN & Design, LINKEDIN and LinkedIn & design, registered in association with online business networking, computer software and advertising services.

[14]  Attached to the Applicant’s list of authorities were various documents identified by the Applicant as “unreported authorities to be relied upon”. They were in fact extracts from the register in order to establish the existence of registration of various trade-marks ending with the suffix “EDIN”. The Applicant argued, at the hearing, that it was only after reading the Opponent’s written argument, wherein the Opponent raised the issue that there was no evidence in the record of the existence on the register of other trade-mark registrations ending with “EDIN” that it decided to file those extracts.

[15]  I mentioned, at the hearing, that those extracts cannot be considered as “decisions” of the Registrar in the context of the filing of the list of authorities to be relied upon by a party and submitted prior to the hearing in accordance with Section X.8 of the Practice Notice in Trade-marks Opposition Proceedings. They constitute state of the register evidence and should have been filed in accordance with the rules of evidence governing opposition proceedings, either under Rule 42 of the Trade-marks Regulations (Regulations), as the Applicant’s evidence, or as additional evidence, with the Registrar’s permission, in accordance with Rule 44 of the Regulations.

[16]  Therefore, I shall not take into consideration in my decision those extracts of the register, since they were improperly filed and therefore not part of the record.

Section 30 (b) ground of opposition

[17]  The relevant date for this ground of opposition is the filing date of the application (May 10, 2013) [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB)].

[18]  The Opponent has an initial burden to file some evidence to support this ground of opposition. The initial burden of proof incumbent on an opponent regarding this ground of opposition is less onerous than under other grounds of opposition given that the relevant facts to support such ground are more readily available to the applicant [see Tune Masters v Mr P's Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB)].

[19]  The Opponent has not filed any evidence to support such ground of opposition. It may rely on the Applicant’s evidence to meet its light evidential burden. The Opponent argues that the Applicant has not filed any evidence of use of the Mark. This deficiency, according to the Opponent, is sufficient to raise some doubts on the veracity of the statement made by the Applicant in its application.

[20]  I disagree. The Applicant was under no obligation to file any evidence of use of the Mark as the Opponent’s evidence did not put into issue the claimed date of first use of the Mark.

[21]  Therefore, I dismiss this ground of opposition.

Section 30(a) ground of opposition

[22]  The Opponent pleads, in its statement of opposition, that the application does not include a statement in ordinary commercial terms of the specific services in association with which the Mark has been used in Canada.

[23]  Again, the Opponent has not filed any evidence to support such ground of opposition. At the hearing, it questioned the meaning of “Platform as a service…”. In the absence of evidence that would raise any doubts that “platform” in the context of the description of the Services is not an ordinary commercial term, I must dismiss this ground of opposition.

Registrability ground of opposition (Section 12(1)(d) of the Act)

[24]  The relevant date to assess this ground of opposition is the date of the Registrar’s decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 at 424 (FCA)].

[25]  Mr. Bates filed, as Exhibit A, copies of the registrations listed in Annex A to this decision. I shall refer to these registrations as the LINKEDIN marks.

[26]  I checked the register and all those registrations are still extant. Therefore, the Opponent has met its initial burden with respect to this ground of opposition.

[27]  The test for confusion is outlined in section 6(2) of the Act. Some of the surrounding circumstances to be taken into consideration when assessing the likelihood of confusion between two trade-marks are described in section 6(5) of the Act: the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks or trade names have been in use; the nature of the goods, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or any ideas suggested by them. Those criteria are not exhaustive and it is not necessary to give each one of them equal weight [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al [2006] 1 SCR 824, (2006), 49 CPR (4th) 401 (SCC), Mattel Inc v 3894207 Canada Inc [2006] 1 SCR 772, (2006), 49 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc et al [2011] 2 SCR 387, (2011), 96 CPR (4th) 361 (SCC)].

[28]  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. In the instant case, the question posed by section 6(2) is whether a consumer, with an imperfect recollection of the Opponent’s trade-marks, who sees the Applicant’s Services in association with the Mark, would think they emanate from, or are sponsored by, or approved by the Opponent.

[29]  For the purposes of the analysis of the relevant criteria listed in section 6(5) of the Act, I consider the Opponent’s best chance of success is with its LINKEDIN word mark registrations (TMA848,909 and TMA724,002). Should the Opponent not be successful with its opposition relying on these marks, it would not achieve a better result with its IN and Design trade-marks.

Degree of resemblance

[30]  As indicated by the Supreme Court of Canada in Masterpiece, in most instances, the degree of resemblance between the marks in issue is the most important relevant factor. One must consider the degree of resemblance from the perspective of appearance, sound and in the ideas suggested by them. Moreover, the Supreme Court stated that the preferable approach, when comparing trade-marks, is to begin by determining whether there is an aspect of the trade-mark that is particularly striking or unique. It is not the proper approach to set the marks side by side and to critically analyze them to find similarities and differences.

[31]  In the present case, the marks in issue are comprised of the past tense of the verbs “link” and “book” (LINKED and BOOKED) followed by the word “in”. They both end with “KEDIN”. This similarity in their structure makes them visually and phonetically similar.

[32]  As for the ideas suggested by the parties’ marks, the Opponent argues that they both suggest the idea of a connection. Certainly, the word “link” suggests that idea. Mr. Iwasiow, the Applicant’s President, describes the Mark in the following terms in his affidavit:

The term “BOOKEDIN” is derived from common parlance used in conversation when scheduling an appointment with a service provider. Namely, the service provider will often tell the end customer, “We have you booked in for 1:00 p.m. today”, or, “You are booked in for an appointment tomorrow at 2:00 p.m.” [emphasis in his affidavit]

[33]  Despite having different first portion, overall, I consider this factor to slightly favour the Opponent, given the visual and phonetic similarities in the marks caused by their similar structure and ending.

The inherent distinctiveness of the marks and the extent to which the marks have become known

[34]  I consider the Opponent’s trade-mark LINKEDIN to be suggestive, when it is used in association with some of the Opponent’s services, for example networking services, it is suggestive, namely that a link is created between the members of that network.

[35]  As for the Mark, from Mr. Iwasiow’s explanation on the meaning of the Mark detailed above, it is also suggestive.

[36]  In all, I do not consider one mark to be more inherently distinctive over the other. The degree of distinctiveness of a trade-mark can be enhanced through use and promotion in Canada.

[37]  Mr. Iwasiow states that the Applicant has been operating under the Mark since in or about June 2010. He provides information about the use of a couple of domain name addresses. He states that the Applicant’s current website has been operating continuously since August 2014.

[38]  I will describe in more detail the nature of the parties’ services later. At this stage, suffice to say that Mr. Iwasiow states that the Applicant developed a software product it termed BOOKEDIN, which was created to operate primarily as an online appointment booking system for businesses, and to offer certain tertiary services to its clients such as staff scheduling and payment processing. Attached to his affidavit, are various extracts of the Applicant’s website printed in June 2016.

[39]  As pointed out by the Opponent, there is very little corroborative evidence of any use of the Mark, aside from a bald assertion of use of the Mark since June 2010. The Applicant’s evidence does not include any advertising of the Mark or any sales figures. There is no information on the number of subscribers to the Applicant’s Services in association with the Mark.

[40]  The Applicant argues the evidence shows that it acquired the domain name www.bookedin.net in January 2009 and, subsequently, acquired the domain name www.getbookedin.com in June 2011. By themselves, those acquisitions do not establish use of the Mark in Canada in association with the Services within the meaning of Section 4(2) of the Act.

[41]  The evidence filed by the Applicant does not enable me to conclude that the Mark is known to any extent in Canada in association with the Services.

[42]  Mr. Bates was asked to do a search on the Internet for the term «Linkedin» limited to pages from Canada and he printed the first 100 results which have been attached as Exhibit B to his affidavit.

[43]  On August 5, 2015 Mr. Bates performed searches on various Canadian newspapers and magazines websites such as for example: the National Post, the Globe and Mail, Forbes, the Time and Fortune’s for the term “Linkedin” and printed the results. He also filed extracts of the Opponent’s website.

[44]  Mr. Bates visited and printed extracts of websites of Canadian companies and their Linkedin profiles such as, KPMG, Deloitte Touche, IBM, Rona, The Home Depot, Canadian Tire, National Bank, BMO, Scotia Bank, RBC, TD Bank, Bombardier, Air Canada, etc… to name a few.

[45]  Ms. Harrington is the Opponent’s Vice President Legal-IP, Product, and Privacy and has been working for the Opponent since April 2012. She states she has reviewed the content of Mr. Bates’ affidavit and the exhibits attached to it.

[46]  Ms. Harrington affirms that the Opponent is the leading provider of online business and professional networking services worldwide. The Opponent currently has over 400 million members drawn from a wide range of industries and professions. It offers it services in over 200 countries and is available in over 20 languages.

[47]  Ms. Harrington explains that the Opponent’s network offers to its members the possibility to seek career opportunities, to create and build personal networks, to join groups on topics of interest, and to communicate, receive and share information and insights on a wide variety of topics.

[48]  Ms. Harrington states that the Opponent has been providing its services to Canadian users since at least as early as June 2010. Currently the Opponent has 11 million active Canadian members. It is now the third-largest networking site in the world. On the employer side, there are 64 Canadian companies present on the LinkedIn network and those companies each employ more than 5000 LinkedIn members.

[49]  Exhibit S to the Bates’ affidavit is a press release published on Stryve Digital Marketing’s website. It is mentioned that June 16, 2011 was the Opponent’s first anniversary of its Canadian operations and as such, the Opponent’s marks were in use in Canada since June 2010.

[50]  As indicated earlier, the Applicant does not contest the fact that the LINKEDIN mark is well-known in Canada as of this date (the relevant date). Consequently, overall, this factor favours the Opponent.

Length of time the marks have been in use

[51]  The Applicant argues that the Iwasiow affidavit demonstrates use of the Mark in Canada since June 2010. I have already rejected that proposition. From the evidence described above, I find that the Opponent has been using in Canada its trade-mark LINKEDIN in association with networking services since at least as early as June 2010.

[52]  Therefore, this factor also favours the Opponent.

Nature of the parties’ services and channels of trade

[53]  As pointed out by both parties, the Registrar must compare the Opponent’s services as described in its registrations for the trade-mark LINKEDIN with those enumerated in the present application [see Miss Universe, Inc v Bohna (1994), 58 CPR (3d) 381 (FCA)]. However, those statements must be read with a view to determine the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. The evidence of the parties' actual trades is useful in this respect [see McDonald's Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); and American Optical Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[54]  I consider the following Opponent’s goods and services to be the most relevant for the purpose of this analysis:

Online business networking website to facilitate professional networking between individuals;

Computer software enabling business and social networking, posting and searching of employment opportunities, providing recruiting services and information about employment, careers, and recruiting, for allowing the uploading, downloading, retrieval, discussing and sharing of documents, information, video, sound, text and other media or multi-media, all being electronically recorded or downloadable from the Internet, extranets or other communications networks; computer software development tools for business and social networking; computer software, namely application programming interface software for use in connection with the software applications of others;

Advertising, marketing and promotion services for businesses, namely advertising, marketing and promoting the businesses of others through online publication of business information and operation of a business networking website;

facilitating the exchange and sale of services and products of third parties via computer and communication networks;

Electronic commerce services, namely, providing an on-line community for advertising and marketing;

On-line retail store services in the field of digital media, clothing, footwear, headgear, printed matter, stationery, office accessories, bags, games, toys and pins.

[55]  Mr. Iwasiow states that the Services are for online scheduling solution for small businesses. The Applicant has put a lot of emphasis on “small businesses” in an effort to distinguish the parties’ channels of trade.

[56]  As I pointed out at the hearing, the description of the Services does not restrain their offering to “small businesses”, while the services covered by the Opponent’s registrations for the trade-mark LINKEDIN does not contain any restriction on the size of the businesses to whom those services are offered and/or provided.

[57]  Consequently, I am disregarding that argument put forward by the Applicant.

[58]  As for the nature of the parties’ services, not surprisingly, the parties have different views. The Applicant argues that the services covered by the Opponent’s registrations and the Services are two distinct types of services: business networking for the Opponent and scheduling appointments for the Applicant. The Applicant refers to Exhibit E to the Bates affidavit and the content of paragraph 3 of the Harrington affidavit to conclude that the Opponent provides a platform for social professional networking. I reproduce below the pertinent extract of that paragraph:

The LinkedIn network offers members the opportunity to seek career opportunities, create and build personal networks, join groups on topic of interest, and communicate, receive and share information and insights on a wide variety of topics.

[59]  The Applicant characterizes the Services, however, as a software platform conceived to operate a booking system. According to the Applicant, the only common element between the parties’ services therefore is the fact that they are both offered on the Internet.

[60]  The Opponent points out that there is clear overlapping in so far as “online advertising services” are concerned as they are part of the Services while registration TMA 848,909 for the trade-mark LINKEDIN includes “…  providing a website featuring non-downloadable software in the fields of business networking and marketing, employment, recruiting, advertising, marketing and promotion”. I agree with the Opponent on this issue.

[61]  With respect to the remaining applied for services, the Opponent argues that its evidence shows that LINKEDIN members use the Opponent’s web-hosted computer software platform to create and build personal networks, and communicate, receive and share information and insights on a wide variety of topics. Its messaging feature, part of its software, enables LINKEDIN members to privately schedule appointments, calls and meetings.

[62]  On this point, the Opponent refers to paragraph 3 of the Harrington affidavit [see quote above] and Exhibits P and W to the Bates affidavit. Exhibit P consists of two articles, one of which published in the August 2015 issue of the Entrepreneur magazine. It clearly indicates the possibility for LINKEDIN members to “book a coffee or lunch, or schedule a phone call”.

[63]  I agree with the Opponent that there is some overlap between the Opponent’s abovementioned computer software and the Applicant’s “Platform as a service (PAAS) featuring web-hosted computer software platforms for use in scheduling appointments for businesses”.

[64]  Finally, with respect to the Applicant’s “online payment processing services for businesses”, the Opponent submits that its LINKEDIN platform serves many members in the payment processing field, and it offers a full suite of “social selling” services to its members through LINKEDIN Marketing Solutions, which helps to deliver high-quality leads to its members’ sales teams to close deals, purchase goods and hire services. To that end, the Opponent refers to paragraph 4 of the Harrington affidavit and Exhibit F to the Bates affidavit.

[65]  Paragraph 4 of the Harrington affidavit refers to its LinkedIn Marketing Solutions. Ms. Harrington refers to Exhibit F to the Bates affidavit. That exhibit consists of extracts of the Opponent’s website. In fact, in one of these extracts, there is a section promoting the Opponent’s LinkedIn Sales Navigator and “social selling” services offered to its members. There is no specific reference to online payment processing services.

[66]  Despite the fact that there is no specific reference in those extracts, as well as in the content of paragraph 4 of Ms. Harrington’s affidavit, to “online payment processing services for businesses”, there is some relationship between those services and “social selling” services offered by the Opponent to its LINKEDIN members. They are both part of the process of the sale of goods and services, namely the Opponent’s social platform offers its users the possibility of selling goods and services while the Applicant provides on its online platform the possibility for its users to collect payment for the goods and services sold.

[67]  As stated in section 6(2) of the Act, the services do not need to be in the same general class to conclude to a likelihood of confusion. In this case, subsequent to the analysis described above, I conclude that there is some relationship between the Services and the Opponent’s services that goes beyond the simple fact that the parties’ services are both offered on the Internet, as characterized by the Applicant.

[68]  In so far the nature of the trade is concerned, I agree with the Opponent’s contention. The parties’ evidence clearly shows that they both offer their business services over the Internet,  to persons doing business in Canada, through their respective web-hosted computer software platforms.

[69]  In all, these factors also favour the Opponent.

Absence of evidence of actual confusion

[70]  The Applicant argues, despite the fact that the Services have been made available in Canada since June 2010, there have been no instances of confusion reported, as alleged by Mr. Iwasiow in his affidavit.

[71]  There is no obligation for an opponent to prove actual confusion. The test is likelihood of confusion. Moreover, as mentioned above, there is no clear evidence of use of the Mark in Canada, and if so, since when and to what extent. Therefore, the absence of evidence of actual confusion could very well be explained by the non-use of the Mark in Canada or its token use in limited region(s) of Canada.

[72]  Consequently, I do not consider the absence of evidence of actual confusion to be a relevant factor in this case.

Conclusion

[73]  Having considered all of the surrounding circumstances, I conclude that the Applicant has not discharged its burden to show on a balance of probabilities that there is no reasonable likelihood of confusion between the trade-marks in issue. I have found that the parties’ trade-marks have some visual and phonetic similarities despite their differences. They both end with the unique combination of letters “KEDIN”. They are both suggestive, however, the Opponent’s LINKEDIN trade-marks have been in use for over eight years in Canada and have become well known in Canada across a wide range of institutions and industries. Further, the goods and services of the parties are somewhat related. To some extent, they may be said to go hand in hand. Some services even directly overlap. As previously mentioned, the test is not whether there is confusion between the marks themselves, it is whether there is confusion as to source and in this case, I am not satisfied that such confusion would be unlikely to occur.

[74]  Accordingly, the ground of opposition based upon section 12(1)(d) of the Act succeeds.

Lack of distinctiveness of the Mark (Section 2)

[75]  The Opponent alleges that the Mark is not distinctive as it does not distinguish and is not adapted to distinguish the services of the Applicant from the goods and services in association with which the Opponent has used and advertised its marks.

[76]  While there is a legal onus on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its services from those of others [see Muffin Houses Incorporated v The Muffin House Bakery Ltd (1985), 4 CPR (3d) 272 (TMOB)], there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the ground of non-distinctiveness. In the present case, the Opponent is under an obligation to show that, as of the date of filing of the statement of opposition (March 2, 2015), one or more of its LINKEDIN trade-marks had become known sufficiently to negate the distinctiveness of the Mark [see Bojangles’ International, LLC v Bojangles Café Ltd (2004), 40 CPR (4th) 553, affirmed (2006), 2006 FC 657 (CanLII), 48 CPR (4th) 427 (FC)]. I am satisfied, from the evidence described under the previous ground of opposition, that the Opponent has met its burden.

[77]  Again, this ground of opposition essentially turns on the issue of confusion between the parties’ marks and the difference in material dates is insignificant. For the same reasons as outlined in my analysis of the section 12(1)(d) ground of opposition, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities that there is no reasonable likelihood of confusion between the parties’ marks.

[78]  Therefore, this ground of opposition is also successful.

Other grounds of opposition

[79]  Given that the Opponent has been successful under two different grounds of opposition, there is no need to rule on the remaining grounds of opposition.

Disposition

[80]  Accordingly, 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.

Jean Carrière

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

ANNEX A

Trade-mark	Registration Number	Goods/Services
	TMA848,911	Goods:(1) Computer software enabling business and social networking, posting and searching of employment opportunities, providing recruiting services and information about employment, careers, and recruiting, for allowing the uploading, downloading, retrieval, discussing and sharing of documents, information, video, sound, text and other media or multi-media, all being electronically recorded or downloadable from the Internet, extranets or other communications networks; computer software development tools for business and social networking; computer software, namely application programming interface software for use in connection with the software applications of others. (2) Downloadable electronic publications in the fields of business and social networking, recruiting and employment, and personal and career development. Services: (1) Computer software enabling business and social networking, posting and searching of employment opportunities, providing recruiting services and information about employment, careers, and recruiting, for allowing the uploading, downloading, retrieval, discussing and sharing of documents, information, video, sound, text and other media or multi-media, all being electronically recorded or downloadable from the Internet, extranets or other communications networks; computer software development tools for business and social networking; computer software, namely application programming interface software for use in connection with the software applications of others.   (2) Telecommunication services, namely facilitating electronic transmission of user generated content, text, images, software, multimedia and messages between users through wired and wireless access to a website; telecommunication services, namely, enabling users to transmit messages, comments, multimedia content, videos, movies, films, and photos, audio content, animation, pictures, images, text, information, and other user-generated content via a global computer network and other computer and communications networks; providing online communications links which transfer users to other websites; providing online forums, chat rooms and electronic bulletin boards for users to post, search, watch, share, critique, rate, and comment on subjects of interest; providing access to computer, electronic and online databases in the field of employment and business information; audio, text, video and multimedia broadcasting services over computer and electronic communications networks, namely uploading, posting, displaying, tagging and electronically transmitting third party data, audio, and video; providing access to computer databases in the fields of entertainment and education; providing access to computer databases in the field of social networking. (3) Entertainment and education services in the field of professional and business networking services; disseminating information and providing, sponsoring and hosting seminars, presentations and discussion groups and providing training in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; facilitating the sharing of journals, blogs, photos, videos, podcasts, and other audio-visual materials through the operation of a professional networking site; facilitating the creation and updating of personal electronic web pages featuring user provided content; electronic publishing services for others; electronic and online publishing services; hosting of exhibitions, conferences and seminars and networking events for business, cultural and educational purposes in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; organizing and conducting online events namely virtual meetings and seminars. (4) Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via the Internet or other communications networks; hosting virtual communities for registered users to organize groups, events, participate in discussions, aggregate information and resources, and engage in social, business and community networking; hosting of digital content online; hosting computer software applications of others; hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; providing a website featuring non-downloadable software in the fields of business networking and marketing, employment, recruiting, advertising, marketing and promotion; providing non-downloadable software enabling users to search, locate and communicate with others via electronic communications networks for networking, for conducting polls and surveys, for tracking online references to businesses, organizations, career and job opportunities, and business topics; providing online computer databases and online searchable databases in the fields of business and professional networking; application service provider services; providing information from searchable indices and databases of information, including text, electronic documents, databases, graphics and audio visual information, by means of global computer information networks or other communications networks; providing temporary use of non-downloadable software; computer services in the nature of customized web pages featuring user-defined information, personal profiles, audio and images; scientific and industrial research; computer programming; computer services, namely, on-line personalized information services; providing the use of software; design and development of computer software for others. (5) Social introduction and networking services; hosting an online website community for registered users to share information, photos, audio and video content and engage in communication and collaboration between and among themselves, to form groups and to engage in social networking; providing information in the field of personal development, namely self-improvement, self-fulfillment; licensing of computer software and other technology. (6) On-line retail store services in the field of digital media, clothing, footwear, headgear, printed matter, stationery, office accessories, bags, games, toys and pins. (7) Charitable services, namely promoting public awareness about charitable, community service, and volunteer activities. (8) Providing information in the field of personal development, namely charitable, philanthropic, volunteer, public and community services, and
	TMA848,912	Same list of goods and services as in TMA848,911
	TMA800,941	Online business networking website to facilitate professional networking between individuals.
INMAIL	TMA820,163	Goods: (1) Communications software to facilitate the transfer of electronic data by providing access to databases which provide data, documents, information, video, sound, text, and other media Services: (1) Online business networking services for facilitating professional networking between individuals; advertising, marketing and promotion services for businesses, namely, advertising, marketing and promoting the goods and services of others via computer networks, wireless networks and global communications networks; providing online personal and business referral services; human resources consulting services; business research and survey services; monitoring services, namely tracking online references to businesses, organizations, and business topics; promoting the goods and services of others via computer networks, wireless networks and global communications networks; providing a website to facilitate the exchange and sale of services and products of third parties; charitable services, namely promoting public awareness about charitable, community service and volunteer activities; providing online career networking services and information in the fields of employment, recruitment, job resources and job listings; electronic commerce services, namely, providing an on-line community for advertising and marketing. (2) Telecommunication services, namely providing multiple user access to a global computer network for electronic transmission of documents, text, video, sound and other media or multimedia and information between and among computers, mobile and hand-held devices and wired and wireless communication devices; telecommunication services, namely, enabling users to transmit comments, videos, movies, films, photos, audio content, animation, pictures, images, and text via computer networks, wireless networks and global communication networks; providing online forums, chat rooms and electronic bulletin boards for users to post, search, watch, share, critique, rate, and comment on subjects of interest; providing access to computer, electronic and online databases in the fields of professional networking, employment and business information; providing access to computer databases in the field of social networking. (3) Disseminating information in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; online dissemination of journals, blogs, photos, videos, podcasts; electronic publishing services for others; electronic and online publishing services. (4) Hosting virtual communities for registered users to organize groups, events, participate in discussions, aggregate information and resources, and engage in social, business and community networking; hosting an interactive website for uploading, downloading, posting, displaying, tagging, sharing and transmitting messages, comments, videos, movies, films, photos, audio content, animation, images, text. (5) Social introduction and networking services; hosting an online website community for registered users to share information, photos, audio and video content and engage in communication and collaboration between and among themselves, to form groups and to engage in social networking; providing information in the field of personal development, namely self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities.
LINKEDIN	TMA724,002	Online business networking website to facilitate professional networking between individuals.
LINKEDIN	TMA848,909	Goods: (1) Computer software enabling business and social networking, posting and searching of employment opportunities, providing recruiting services and information about employment, careers, and recruiting, for allowing the uploading, downloading, retrieval, discussing and sharing of documents, information, video, sound, text and other media or multi-media, all being electronically recorded or downloadable from the Internet, extranets or other communications networks; computer software development tools for business and social networking; computer software, namely application programming interface software for use in connection with the software applications of others. (2) Downloadable electronic publications in the fields of business and social networking, recruiting and employment, and personal and career development. Services: (1) Advertising, marketing and promotion services for businesses, namely advertising, marketing and promoting the businesses of others through online publication of business information and operation of a business networking website; compilation and systemization of personal and business information into computer databases; providing an online searchable database featuring employment and career opportunities and business, employment and professional queries and answers; providing information about and making referrals concerning products, services, events and activities; facilitating the exchange and sale of services and products of third parties via computer and communication networks; organizing and conducting job fairs; job placement services, human resources consulting services; business research and survey services, namely market research services; monitoring services, namely tracking online references to businesses, organizations and business topics; promoting the goods and services of others via computer and communication networks; providing online career networking services and information in the fields of employment, recruitment, job resources, and job listings; providing online interactive employment counseling; recruitment and placement services; electronic commerce services, namely, providing an on-line community for advertising and marketing (2) Telecommunication services, namely facilitating electronic transmission of user generated content, text, images, software, multimedia and messages between users through wired and wireless access to a website; telecommunication services, namely, enabling users to transmit messages, comments, multimedia content, videos, movies, films, and photos, audio content, animation, pictures, images, text, information, and other user-generated content via a global computer network and other computer and communications networks; providing online communications links which transfer users to other websites; providing online forums, chat rooms and electronic bulletin boards for users to post, search, watch, share, critique, rate, and comment on subjects of interest; providing access to computer, electronic and online databases in the field of employment and business information; audio, text, video and multimedia broadcasting services over computer and electronic communications networks, namely uploading, posting, displaying, tagging and electronically transmitting third party data, audio, and video; providing access to computer databases in the fields of entertainment and education; providing access to computer databases in the field of social networking. (3) Entertainment and education services in the field of professional and business networking services; disseminating information and providing, sponsoring and hosting seminars, presentations and discussion groups and providing training in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; facilitating the sharing of journals, blogs, photos, videos, podcasts, and other audio-visual materials through the operation of a professional networking site; facilitating the creation and updating of personal electronic web pages featuring user provided content; electronic publishing services for others; electronic and online publishing services; hosting of exhibitions, conferences and seminars and networking events for business, cultural and educational purposes in the fields of personal development, career development, relationship building, training, recruiting, business consulting, business development, and networking; organizing and conducting online events namely virtual meetings and seminars. (4) Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via the Internet or other communications networks; hosting virtual communities for registered users to organize groups, events, participate in discussions, aggregate information and resources, and engage in social, business and community networking; hosting of digital content online; hosting computer software applications of others; hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; providing a website featuring non-downloadable software in the fields of business networking and marketing, employment, recruiting, advertising, marketing and promotion; providing non-downloadable software enabling users to search, locate and communicate with others via electronic communications networks for networking, for conducting polls and surveys, for tracking online references to businesses, organizations, career and job opportunities, and business topics; providing online computer databases and online searchable databases in the fields of business and professional networking; application service provider services; providing information from searchable indices and databases of information, including text, electronic documents, databases, graphics and audio visual information, by means of global computer information networks or other communications networks; providing temporary use of non-downloadable software; computer services in the nature of customized web pages featuring user-defined information, personal profiles, audio and images; scientific and industrial research; computer programming; computer services, namely, on-line personalized information services; providing the use of software; design and development of computer software for others. (5) Social introduction and networking services; hosting an online website community for registered users to share information, photos, audio and video content and engage in communication and collaboration between and among themselves, to form groups and to engage in social networking; providing information in the field of personal development, namely self-improvement, self-fulfillment; licensing of computer software and other technology. (6) On-line retail store services in the field of digital media, clothing, footwear, headgear, printed matter, stationery, office accessories, bags, games, toys and pins. (7) Charitable services, namely promoting public awareness about charitable, community service, and volunteer activities. (8) Providing information in the field of personal development, namely charitable, philanthropic, volunteer, public and community services, and humanitarian activities.
	TMA848,910	Same goods and services as in TMA848,909.

 

 

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2018-07-03

APPEARANCES

John Cotter	FOR THE OPPONENTS
Dean G. Giles	FOR THE APPLICANT

AGENT(S) OF RECORD

Osler, Hoskin & Harcourt LLP	FOR THE OPPONENT(S)
Filmore Riley LLP	FOR THE APPLICANT