Citation: 2021 TMOB 242

Date of Decision: 2021-10-29

IN THE MATTER OF FOUR OPPOSITIONS

	Monster Energy Company	Opponent
and
	NBA Properties, Inc.	Applicant
	1,729,906 for TO 16 with Star with Claw Marks and Banner Design 1,729,907 for Star with Claw Marks 1,730,061 for TO 16 with Star with Claw Marks and Banner Design 1,730,063 for Star with Claw Marks Design	Applications

Introduction

[1] NBA Properties, Inc. (the Applicant) has filed four applications for trademarks, all of which incorporate a claw design element (as shown below). All four applications were filed on the basis of proposed use in Canada in association with a variety of goods and services, covering among other things, clothing, footwear and headgear items as well as various basketball related goods and services. The statements of goods and services for these applications, as revised by the Applicant, are reproduced in Schedule A to this decision.

Application Nos. 1,729,906 and 1,730,061	Application Nos. 1,729,907 and 1,730,063
(sometimes collectively referred to as the Marks, otherwise individually referred to as either the Mark or the ʼ906 Mark, ʼ907 Mark, ʼ061 Mark and ʼ063 Mark respectively)

[2] Monster Energy Company (the Opponent) has opposed these applications primarily on the basis that the Marks are confusing with its previously registered and/or used trademarks that are composed of or comprise an M claw design (collectively, the Opponent’s M Design Marks or the Opponent’s Registered Trademarks, listed in Schedule B below).

[3] At the outset, I note that numerous amendments to the Trademarks Act, RSC 1985, c T‑13 (the Act) came into force on June 17, 2019. All references in this decision are to the Act as amended, with the exception of references to the grounds of opposition which refer to the Act before it was amended.

[4] For the reasons that follow, each opposition is rejected.

File records

[5] The table below summarizes some of the particulars for each of the opposed trademark applications, namely the dates that they were respectively filed, advertised for opposition purposes in the Trademarks Journal, and opposed.

Application No.	Filed on	Advertised on	Statement of opposition filed on
1,729,906	May 26, 2015	November 25, 2015	January 20, 2016
1,729,907	May 26, 2015	November 25, 2015	January 20, 2016
1,730,061	May 27, 2015	March 30, 2016	May 30, 2016
1,730,063	May 27, 2015	March 30, 2016	May 30, 2016

[6] Each statement of opposition was subsequently amended by the Opponent with leave from the Registrar granted on October 22, 2018 (with respect to application Nos. 1,730,061 and 1,730,063) and November 21, 2018 (with respect to application Nos. 1,729,906 and 1,729,907). In each case, the amendment was to update the status of the Opponent’s relied upon application No. 1,692,983, which was included in each original statement of opposition under the entitlement issues section and had since matured to registration on August 24, 2017.

[7] As amended, the grounds of opposition raised by the Opponent are similar in each of the four cases and allege that the applications do not conform to section 30(e) of the Act, that the Marks are not registrable under section 12(1)(d) of the Act, that the Applicant is not the person entitled to registration of the Marks under section 16(3)(a) of the Act, and that the Marks are not distinctive under section 2 of the Act. The main variation in terms of pleadings is with respect to the non-conformance ground where the Opponent also alleges that the applications do not conform to sections 30(b), (h) and (i) of the Act in respect of its oppositions to trademark application Nos. 1,729,906 and 1,729,907.

[8] The Applicant filed and served counter statements denying the Opponent’s allegations.

[9] In support of its oppositions, in each case, the Opponent filed the affidavit of Rodney Cyril Sacks (the Sacks affidavit). The Opponent further filed:

· With respect to its oppositions to trademark application Nos. 1,729,906 and 1,729,907

- Certified copies of its registration Nos. TMA637,677, TMA833,007 and TMA833,012.

· With respect to its oppositions to trademark application Nos. 1,730,061 and 1,730,063

- The supplemental affidavit of Rodney Cyril Sacks (the Supplemental Sacks affidavit).

[10] The Sacks affidavit provides information with respect to the Opponent’s business, including the use and promotion of its relied-upon marks in Canada. The Supplemental Sacks affidavit provides some information on how the Opponent’s energy drinks have been sold or promoted at venues or facilities where NBA teams play or have played. Mr. Sacks was not cross-examined on his affidavits.

[11] In support of its applications, in each case, the Applicant filed the affidavit of Jennifer Leah Stecyk (the Stecyk affidavit). The Stecyk affidavit introduces state of the register evidence. Ms. Stecyk was not cross-examined on her affidavit.

[12] Both parties filed a written argument in every proceeding and were represented at the hearing. The four oppositions were heard together as all proceedings involve the same parties, the same or related trademarks, and the grounds of opposition, evidence and issues raised, though not necessarily identical, are overall substantially similar.

Material dates and onus

[13] The material dates with respect to the grounds of opposition are as follows:

· Sections 38(2)(a) / 30 of the Act – the filing date of the applications [Georgia-Pacific Corporation v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB); Austin Nichols & Co, Inc v Cinnabon, Inc (2000), 5 CPR (4th) 565 (TMOB); Canadian National Railway Co v Schwauss (1991), 35 CPR (3d) 90 at 94 (TMOB); Tower Conference Management Co v Canadian Exhibition Management Inc, (1990) 28 CPR (3d) 428 at 432‑433 (TMOB)];

· Sections 38(2)(b) / 12(1)(d) of the Act – the date of the decision [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)];

· Sections 38(2)(c) / 16 of the Act – the filing date of the applications [section 16(3) of the Act]; and

· Sections 38(2)(d) / 2 of the Act – the filing date of the oppositions [Metro‑Goldwyn‑Mayer Inc v Stargate Connections Inc, 2004 FC 1185].

[14] 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 Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD)]. If this burden is met, the Applicant then bears the legal onus of establishing, on a balance of probabilities, that no grounds of opposition prevent the registration of its Marks.

Analysis of the grounds of opposition

[15] As mentioned above, the grounds of opposition mainly turn on the issue of whether there is a likelihood of confusion between the Mark and the Opponent’s relied-upon trademarks. I will now consider them, starting with the section 12(1)(d) ground.

Section 12(1)(d)

[16] The Registrar has the discretion to check the register in order to confirm the existence of an opponent’s relied-upon registration(s) [Quaker Oats Co of Canada Ltd/La Compagnie Quakers Oats du Canada Ltée v Menu foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. Having exercised the Registrar’s discretion, I confirm that registration Nos. TMA637,677, TMA833,007, TMA833,012 and TMA979,313 are extant.

[17] The Opponent having met its initial burden with respect to this ground of opposition, the Applicant must now establish, on a balance of probabilities, that there is not a reasonable likelihood of confusion between the Marks and either of the Opponent’s relied-upon marks.

[18] In this regard, I will focus my analysis on the Opponent’s M claw design trademark that is the subject of registration Nos. TMA637,677, TMA833,007 and TMA979,313, as I consider this to represent the Opponent’s strongest case.

Test for confusion

[19] The test to determine the issue of confusion is set out in section 6(2) of the Act which stipulates that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would likely lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

[20] Therefore, section 6(2) of the Act does not concern confusion of the trademarks themselves, but confusion of the goods or services from one source as being from another. The question here is essentially whether a consumer, with an imperfect recollection of the Opponent’s M claw design trademark, seeing the Applicant’s goods and services in association with the Mark, would think that they emanate from, are sponsored by or approved by the Opponent.

[21] In applying the test for confusion, I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time they 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 trademarks including in appearance or sound or in the ideas suggested by them. These criteria are not exhaustive and different weight will be given to each one in a context-specific assessment [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 where the Supreme Court of Canada states at para 49 that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.

[22] In my view, the degree of resemblance between the parties’ trademarks is the determining factor in each case at hand. As such, I will consider this factor first.

Degree of resemblance

[23] Beginning with the Applicant’s application No. 1,730,063, I find that when taken as a whole, the parties’ trademarks are quite dissimilar. For ease of reading this decision, the parties’ marks are reproduced below.

Applicant’s Mark (application No. 1,730,063)	Opponent’s M Claw design trademark

[24] The parties’ marks resemble each other only to the extent that they both comprise a claw or claw scratch design element and could therefore both arguably suggest the idea of something being held by claws or being torn/ripped/scratched with claws.

[25] The similarities between the parties’ marks, however, end there. More specifically, the Opponent’s trademark is a design composed of a claw or three vertical claw scratches forming the letter “M”. Both aurally and visually, it is in my view the letter “M” which stands out in the Opponent’s trademark. Conceptually, the letter “M” does not have any obvious meaning in relation to the Opponent’s goods and services. That said, it is the first letter of the Opponent’s name and Monster brand. As such, it could, in my view, suggest the idea of a monster (as in a clawed imaginary creature) or simply, that of the Opponent’s own Monster brand energy drinks.

[26] The Mark, on the other hand, as a whole, connotes no obvious meaning apart from arguably suggesting ideas related to sports/basketball stars (that is skillful, talented or famous sports/basketball players or team). It is comprised of a design combining a graphic representation of a claw or three claw scratches displayed on a horizontal axis surrounded by or framed by a five-pointed star and does not strike me as having a single dominant aspect over another. In other words, the striking aspect of the Mark is the star with claw marks design as a whole.

[27] The Opponent submits that what is striking is that the lower portion of its M claw design trademark is entirely comprised in the Mark, although in the horizontal position, and that the scratches look identical in both cases, going from a wider line to a slimmer line at the tip of the scratches. I disagree. When considering the degree of resemblance, the law is clear that the trademarks must be considered in their totality and not dissected into their component parts. Here, a focus on the individual part of the Mark, namely the fanciful claw or scratches representation, that is somewhat similar to the Opponent’s trademark, appears to involve a side-by-side comparison of the type warned against by the courts.

[28] Accordingly, the section 6(5)(e) factor strongly favours the Applicant.

Inherent distinctiveness and extent known

[29] While I find the Mark to be somewhat inherently stronger than the Opponent’s M claw design trademark, I note that both marks at issue possess some measure of inherent distinctiveness in view of their respective inclusion of fanciful design or unique stylization elements.

[30] The strength of a trademark may be increased by it becoming known through promotion or use. As mentioned above, the Applicant has not presented any evidence that the Mark has been used or become known to any extent in Canada. The Opponent, on the other hand, submits that its M claw design trademark has acquired substantial distinctive character in Canada, having become well-known and famous to Canadian customers in the energy drink industry as a result of massive sales, advertisement and promotion. The Opponent’s evidence in this regard is mainly comprised of the Sacks affidavit, the most salient portions of which are summarized below.

· Mr. Sacks is the Chairman and Chief Executive Officer of Monster Beverage Corporation and its subsidiaries, including the Opponent [para 1].

· The Opponent is in the business of designing, creating, developing, producing, marketing and selling energy drinks. Prior to June 2015, its business also included other “non-energy” beverages, such as natural sodas, fruit juices, smoothies, lemonades and iced teas. [para 3]

· The Opponent’s brands include the M claw design trademark, the MONSTER and MONSTER ENERGY trademarks (the Monster Marks) used, among others, in connection with energy drinks (the Monster energy drinks). The M claw design trademark has been filed or registered and is sold in more than 116 countries around the world. [paras 5‑7 and 10]

· Mr. Sacks states that each can of the Monster energy drinks bears the M claw design trademark [Sacks affidavit, para 8]. He provides website excerpts from monsterenergy.com showing the Monster energy drinks sold in Canada [para 23, Exhibit RCS‑3]. I note that the energy drink cans depicted are all labelled with at least the M claw design trademark.

· Mr. Sacks states that the Opponent launched its Monster energy drinks in the United States in 2002 and started international sales, including in Canada, as of 2003. He states that since 2002, the Opponent has sold more than 16.1 billion cans of Monster energy drinks worldwide, including in Canada, generating over US$24 billion in total retail revenues internationally. He also states that the Opponent sales of Monster energy drinks exceed 3 billion cans per year. In Canada, between the launch of the products in 2003 through March 31, 2016, Mr. Sacks states that the sales of Monster energy drinks have reached more than 479 million cans bearing the M claw design trademark, amounting to sales of over US$565 million dollars. [paras 8‑9, 12‑13 and 16]

· As of the 52-week period ending December 26, 2015, Mr. Sacks states that the Opponent had a 34.6% market share by unit volume of the energy drinks sales in Canada [para 9].

· Mr. Sacks states that, in Canada, the Opponent’s Monster energy drinks are sold in over 33,000 total outlets, in the channels of retail stores, gas stations and other outlets such as grocery stores, drug stores, and on-premise [para 15].

· Mr. Sacks explains that the Opponent’s marketing strategy is not conventional in that it does not use direct television or radio advertising to promote the M claw design trademark, but states that through its marketing strategy said trademark nevertheless receives exposure on television, the Internet, in magazines, and at live events [para 19].

· Mr. Sacks states that the Opponent has widely advertised, marketed and promoted its Monster energy drinks bearing the M claw design trademark through the sponsorship of athletes and athletic competitions around the world (which includes vast media and Internet coverage), on apparel and merchandise bearing the M claw design trademark distributed in retail outlets, in magazines, on the Opponent’s and other Internet websites, through social media such as its Facebook page, in publications, through the sponsorship of music festivals and musicians, and through the distribution of point of sale and promotional materials. For the period of 2011 up to and including March 31, 2016, Mr. Sacks states that the Opponent has spent more than US$131 million in advertising, marketing and promoting its Monster energy drinks in Canada and that the Opponent’s advertisements and promotions for its Monster energy drinks, almost without exception, feature the M claw design trademark. [paras 23‑25]

· Mr. Sacks explains that, in Canada and elsewhere outside of the United States, the Opponent allocates the majority of its marketing, advertising and promotional budget on athlete endorsements and sponsoring athletic competitions and other events. In particular, he states that the Opponent’s marketing focus includes international events, including but not limited to events that are webcast on the Internet (a few examples include sponsorship of Road Racing World Championship Grand Prix events, Formula One World Championship Series races, Supercross events and Ultimate Fighting Championship events). In addition to the contractual amounts paid to sponsor athletes and racing teams, he states that the Opponent expends substantial amounts in supporting the sponsored athletes, teams and sports through point of sale materials, sweepstakes and give-aways, wrapping/branding the athletes’ vehicles, paying for the athletes travel expenses and by providing them with Monster-branded apparel (being apparel that bears the Monster Marks and/or the M claw design trademark, but almost always includes the M claw design trademark), free products for sampling stations (which are provided at every event), and action sports gear bearing the M claw design trademark. Mr. Sacks states that the Opponent has distributed over 3.4 million sample 473mL cans of Monster energy drinks to Canadian consumers. He also provides copies of photographs which show promotions of the Opponent’s Monster energy drinks in Canada and Monster-sponsored events in Canada. The photographs show posters and other marketing materials for various sporting events which notably feature the M claw design trademark. [paras 20, 26 and 32, Exhibit RCS‑2]

· Mr. Sacks explains that the Opponent’s sponsorship of sporting events involves the M claw design trademark being displayed at the events on banners, posters, signs, and on clothing and accessories sold at the events, on transport, support and hospitality tractor trailers, on motor homes and promotional vehicles that tour the circuit for various sports. Mr. Sacks further explains that in addition to sponsoring events, the Opponent also sponsors sports teams and professional athletes, where the M claw design trademark is prominently featured on the team’s or individual athlete’s equipment. He goes on to provide numerous detailed examples of the Opponent’s international sports sponsorship activities, including at Canadian events such as Monster Energy Motocross Nationals (2007‑2011), The Shred Show at the World Ski and Snowboard Festival (since 2011), North by Northeast festival (2011‑2013), Ruckus in the Rockies snowboard competition (2011‑2014), Montreal Supermotocross (2010‑2012), Center of Gravity beach festival (since 2012), Grand Prix de Trois-Rivieres (since 2014). Mr. Sacks provides numerous supporting exhibits which include photographs of sponsored events and athletes, as well as Canadian broadcast information, event viewership/attendance statistics, printouts of sponsored event homepages and Facebook pages, printouts of sponsored athlete’s homepages, articles featuring sponsored athletes, and more. The Opponent’s M claw design trademark is clearly visible on athlete equipment/attire, event banners, posters, etc. as per Mr. Sack’s description. The events/sponsorships range in date from 2007 (MotoGP sponsorship for example) through to at least 2016 (X Games), many of which with large international audiences (including in Canada), events taking place in Canada (such as Formula One Racing-Canadian Grand Prix/Grand Prix du Canada), as well as (19) sponsored Canadian athletes. [paras 27, 30‑111 and 112‑118, Exhibits RCS‑4 to RCS‑33]

· In discussing the Opponent’s marketing efforts on its website and social media, Mr. Sacks states that the Opponent’s website at monsterenergy.com, where the Monster energy drinks and the M claw design trademark are prominently displayed, was launched in August 2003. He provides statistics regarding visitors to this website including from Canada (1.2 million between September 1, 2010 and June 30, 2016) and attaches pages from the Canadian localised version of this website. Mr. Sacks also states that visitors to the Opponent’s website can subscribe to its newsletter and that the Opponent engages in “blast emails” to subscribers wherein the M claw design trademark is featured when a significant event is achieved by a sponsored athlete. [paras 126‑129, Exhibits RCS‑34 and RCS‑35]

· Mr. Sacks states that advertising and promotion of the Monster energy drinks is also made through popular social media, such as Facebook, Tweeter and Instagram. More specifically, the Opponent has the following social media pages and accounts:

• - The MONSTER ENERGY Facebook page, with more than 647,000 likes from Canada;

• - The MONSTER ENERGY Gaming Facebook page, with more than 29,000 likes from Canada;

• - The MONSTER ENERGY Supercross Facebook page, with more than 82,000 likes from Canada;

• - The MONSTER ENERGY Music Facebook page, with more than 7,000 likes from Canada;

• - The MONSTER Army Facebook page, with more than 9,000 likes from Canada;

• - The MONSTER ENERGY Girls Facebook page, with more than 23,000 likes from Canada;

• - The MONSTER ENERGY Military Facebook page, with more than 1,400 likes from Canada;

• - The MONSTER ENERGY Instagram account, with 3.2 million followers from around the world;

• - The MONSTER Twitter account with 3.1 million followers from around the world, and a separate Twitter account for Canada that has over 24,000 followers.

[paras 130, 131‑132, Exhibit RCS‑38]

· According to Facebaker’s report of Facebook Global Statistics from 2012 provided by Mr. Sacks, Monster Energy is listed as the 14th most popular “Facebook page name”. That same year, CNBC reported that the MONSTER ENERGY Facebook page was one of the top 10 most “liked” brands on Facebook worldwide. [paras 131 and 133, Exhibits RCS‑36 and RCS‑37]

· The Opponent also delivers content through various YouTube channels, including its MONSTER ENERGY YouTube channel which, since its launch on March 22, 2006, has received more than 152 million views worldwide, including more than 5.5 million views from Canada. [paras 133‑135, Exhibits RCS‑38 and RCS‑39]

· Mr. Sacks also indicates that the M claw design trademark has received extensive press coverage in internationally circulated magazines describing and referring to the Monster energy drinks including in The Wall Street Journal (2003), Time magazine (2003), BusinessWeek online (2005, 2006), Forbes magazine (2005), etc., as well as in trade publications. [para 141‑142, 145 and 147, Exhibit RCS‑41]

· In addition to featuring on the Monster energy drink itself, Mr. Sacks states that the Opponent also distributes many point of sale items (including display headers, display cases, display cards, sell sheets, stickers, posters, pole signs, countertop coolers, freestanding coolers, “sideshelf” racks or wired racking systems, suction cup racks, static clings, banners, and inflatables), giving exposure to the M claw design trademark in the Opponent’s overall marketing. In 2010, the Opponent distributed in excess of 7.7 million points of sale materials worldwide. [para 149, Exhibit RCS‑49]

· Mr. Sacks explains that, since 2002, the Opponent has used, and/or has licensed the use, around the world, including in Canada, its M claw design trademark on clothing, including t-shirts, hooded sweatshirts, sweat shirts, jackets, pants, bandanas, sweat bands, gloves, and headgear. He states that the Opponent also uses this trademark and/or has licensed use of this trademark on other products ranging from sport helmets to silicone wrist bands and sticker kits to all-purpose carrying bags. [paras 136‑137]

· Mr. Sacks further states the Opponent has entered into license agreements with several clothing manufacturers, giving them license to produce and sell clothing that bears the M claw design trademark. Said agreements impose on the licensee obligations to maintain the high standards associated with this trademark, subject to periodic inspection by the Opponent. Each of the apparel and merchandise licensees sells the apparel and merchandise with the M claw design trademark to retailers worldwide. [para 138, Exhibit RCS‑40]

· Mr. Sacks states that the Monster Marks are featured in video games in association with skateboarding, rally car racing, etc. and sponsored athletes, available for purchase in many countries around the globe, including Canada. He states that the Opponent has also partnered with video game publishers to promote the release of new video games (cross promotions wherein the Monster Marks appeared), in association with popular video games such as Call of Duty (2009‑2010 and 2013). He adds that the Opponent has also sponsored events including gaming tournaments (2014‑2016) as well as E-Sports (competitive video game teams) teams which compete in multiplayer video game competitions (2011‑2015). [paras 150‑160, Exhibit RCS‑50]

[31] At the hearing, relying on the decision in Monster Energy Company v Chun Hua Lo, 2021 TMOB 40 at paras 16‑22, the Applicant submitted that any use evidenced by Mr. Sacks cannot accrue to the Opponent. The Opponent, in turn, argued that the present case is distinguishable from the one cited by the Applicant notably because (i) the evidence differs (the Sacks affidavit containing no footnote similar to the one discussed in Monster Energy Company v Chun Hua Lo); and (ii) Mr. Sacks’ statements here are clear(er) and mostly refer to direct sales by the Opponent. I agree. I also note that the Applicant chose not to cross-examine Mr. Sacks when it had the opportunity to do so.

[32] The Opponent’s evidence presents some other deficiencies (such as sales numbers not being broken down for each of the trademarks being relied upon or for each good/service covered by its registrations). Be that as it may, I am satisfied that a fair review of the whole of Mr. Sacks’ evidence establishes that the Opponent’s M claw design trademark has a significant degree of acquired distinctiveness, at least in association with energy drinks, as a result of substantial sales, advertisement and promotion - including through multiple sponsorship activities - in Canada since 2003.

[33] All in all, while I consider the Mark to be more inherently distinctive, the Opponent’s M claw design trademark has been used for a longer period of time and has significantly more acquired distinctiveness. Accordingly, I find that the overall assessment of the section 6(5)(a) factor ultimately favours the Opponent owing to the substantial degree of distinctiveness acquired by its M claw design trademark.

Length of time in use

[34] In view of the above, the section 6(5)(b) factor also favours the Opponent.

Goods, services or business and nature of the trade

[35] The section 6(5)(c) factor favours the Opponent to the extent that there is direct overlap at least in respect of the parties’ stickers, decals, some clothing and headgear items, and promotional services in the sporting field. That said, in view of my overall conclusion regarding the likelihood of confusion below, I do not believe that it is necessary to further discuss the parties’ goods and services or to establish to what extent their corresponding channels of trade (i.e. section 6(5)(d)) may eventually overlap [see Monster Energy Company v Moncler SPA, an incorporated business forming a joint stock company of Italian nationality, 2021 TMOB 112 at para 62 and Monster Energy Company v Moncler SPA, an incorporated business forming a joint stock company of Italian nationality, 2021 TMOB 113 at para 61 for similar treatment of these factors].

Additional surrounding circumstance – State of the register

[36] State of the register evidence is introduced to show the commonality or lack of distinctiveness of a trademark or of a portion of a trademark. It is established that where trademarks contain a common element that is also contained in a number of other trademarks in the same market, this tends to cause consumers to pay more attention to the marks’ other non-common features to distinguish them [K‑Tel International Ltd v Interwood Marketing Ltd (1997), 77 CPR (3d) 523 (FCTD)]. That said, such evidence is relevant only insofar as it allows for inferences concerning the state of the marketplace, which can only be drawn when a significant number of relevant registrations are located [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); Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA)].

[37] As previously indicated, the Stecyk affidavit introduces state of the register evidence. Such evidence is with respect to trademarks comprising or containing representations of claws, paws, talons, claw marks, paw marks or scratch marks and/or which comprise or contain the letter M depicted in a stylized form, which the Applicant argues commonly appear and coexist with each other on the Canadian trademarks register and are used in association with a wide range of goods and services.

[38] The Applicant submits that there are 139 relevant active trademarks which incorporate the elements searched by Ms. Stecyk, a number of which are owned by various sports teams or sporting organizations covering services related to sports competitions, sporting events and related goods and/or services promoting such sporting activities.

[39] In its written argument, the Applicant more specifically directs attention to nine registrations, namely Nos. TMA455,329, TMA512,171, TMA555,252, TMA456,268, TMA456,270, TMA456,273, TMA965,712, TMA965,386 and TMA502,157. The Applicant submits that these trademarks which comprise or contain the representation of claws, paws, talons, claw marks, paw marks or scratch marks are registered in Canada by professional NBA basketball teams and most have been used and/or registered in Canada from dates well prior to any use by the Opponent of its M claw design trademark in Canada.

[40] With specific and limited reference to beverages, the Applicant also directs attention to four registrations, namely Nos. TMA498,789, TMA916,405, TMA934,736 and TMA835,500, as well as to two applications for official marks, namely Nos. 906,245 and 900,318. All of these marks feature a stylized letter M and/or representations of claws, paws, talons, claw marks, paw marks or scratch marks, stand in the names of third parties and coexist on the register.

[41] The Opponent, for its part, submits that the results of Ms. Stecyk’s search are irrelevant since none of the trademarks revealed, unlike the Applicant’s Mark, present features as similar to the M claw design trademark. The Opponent further submits that the only trademarks located which comprise a similar design (such as application No. 1,707,081, for example) are the subject of opposition proceedings by the Opponent.

[42] I agree that Ms. Stecyk’s evidence includes many irrelevant results (such as the Marks, trademarks owned by the Opponent, as well as a number of other formalized, searched, examined or opposed applications). Furthermore, I note that Ms. Stecyk does not provide information as to the extent of any third party use. Be that as it may, in view of my overall conclusion regarding the likelihood of confusion below, I do not believe that it is necessary to undergo a detailed review of her search results.

Additional surrounding circumstance – No actual instances of confusion

[43] Although this is not specifically addressed under the surrounding circumstances section of its written argument, the Applicant therein submits that there is no evidence of actual confusion between the marks at issue.

[44] More specifically, the Applicant contends that that the “claw” graphic incorporated as a distinguishing element of the Mark is similarly an element of various trademarks owned, used and registered in Canada by professional NBA basketball teams including those trademarks referred to in paragraph 39 above, that use of the “claw” graphic comprising an element of the Mark commenced in Canada more than 20 years ago and that as a result, there has been a period of well more than ten years’ coexistence between the Applicant’s “claw” graphic and the Opponent’s marks.

[45] Nothing in the evidence supports this contention. As mentioned above, the Applicant has not demonstrated any use of its Mark which is based on proposed use in Canada. It has also not demonstrated any third party use in the Canadian marketplace. Accordingly, this is not a relevant surrounding circumstance.

Additional surrounding circumstance – Applicant’s prior registrations

[46] The Stecyk affidavit includes particulars of the Applicant’s trademark registration Nos. TMA935,533 and TMA947,206, reproduced below.

TMA935,533	TMA947,206

[47] The Applicant submits that these trademarks, containing the representation of a claw or claw marks, also contain the Mark as an element.

[48] Although I note that the Applicant’s applied-for goods and services here are virtually identical to the ones covered by at least one of these prior registrations, I do not find the existence of such registrations to be dispositive [Coronet-Werke Heinrich Schlerf GmbH v Produits Ménagers Coronet Inc (1984), 4 CPR (3d) 108 at 115 (TMOB); Groupe Lavo Inc v Proctor & Gamble Inc (1990), 32 CPR (3d) 533 at 538 (TMOB); American Cyanamid Co v Stanley Pharmaceuticals Ltd (1996), 74 CPR (3d) 571 (TMOB); 385229 Ontario Limited v ServiceMaster Company, 2012 TMOB 59 at para 47] especially as the Applicant has not adduced any evidence of use of its previously registered trademarks in Canada.

Additional surrounding circumstance – Opposition proceeding(s) in the United States

[49] At the hearing the Applicant also submitted that the Opponent was recently unsuccessful in opposing the registration of the Mark in the United States and, as such, this is a surrounding circumstance which favours the Applicant.

[50] Although foreign decisions may in some cases be considered for their persuasive value, I do not believe that it is necessary to consider the decision issued on May 3, 2021 by the United States Patent and Trademark Office to conclude in favour of the Applicant.

Conclusion regarding likelihood of confusion

[51] Having regard to section 6(5) of the Act, I find that the Applicant has met its onus to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the ʼ063 Mark and the Opponent’s M claw design trademark. I reach this conclusion mainly as I find that the lack of resemblance between the trademarks at hand outweighs all the other relevant factors which favour the Opponent combined. As this was confirmed by the Supreme Court in the Masterpiece decision at para 49, “[…] if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion”.

[52] Furthermore, the issues, evidence and submissions regarding application Nos. 1,730,061, 1,729,906, and 1,729,907 are substantially analogous to those discussed with respect to application No. 1,730,063; with any differences being immaterial to my ultimate conclusion. For example, with respect to the inherent distinctiveness and degree of resemblance factors, I note that the presence of the additional elements in the ʼ061 Mark does not particularly increase its inherent distinctiveness, nor does it change the degree of resemblance. Consequently, for reasons similar to those discussed above, I make the same findings for each of the Applicant’s Marks regarding confusion under section 12(1)(d) of the Act.

[53] Accordingly, the section 12(1)(d) ground of opposition is rejected with respect to all four of the Applicant’s applications.

Grounds summarily rejected

Sections 16(3)(a) and 2

[54] With respect to its section 16(3)(a) ground of opposition, the Opponent relies on use of the same trademarks pleaded with respect to its section 12(1)(d) ground of opposition in association with the same goods and the sale thereof, as well as the sponsorship of sports and music events. With respect to its section 2 ground of opposition, the Opponent has pleaded that the Marks are not distinctive and are not capable of distinguishing the Applicant’s goods and services from the goods and services of the Opponent.

[55] As these grounds also turn on the issue of confusion, seeing that the Opponent was not successful under the section 12(1)(d) ground of opposition, for reasons analogous to those discussed above it will also not succeed under the sections 16(3)(a) and 2 grounds which rely on the same trademarks. The difference in material dates here has no significant impact on my overall conclusion regarding likelihood of confusion.

Section 30(e)

[56] With respect to this ground of opposition, the Opponent has pleaded that contrary to section 30(e), as of the filing date of the application, the Applicant, by itself or through a licensee, or by itself and through a licensee, never intended to use the Marks in Canada. Alternatively, the Opponent has pleaded that contrary to section 30(e), the Applicant was already using the Marks in Canada. However, no evidence or submissions were filed in support of these allegations with respect to any of the Applicant’s applications.

[57] Accordingly, as the Opponent has not met its initial evidential burden, this ground of opposition is also rejected with respect to all four of the Applicant’s applications.

Sections 30(b), (h) and (i)

[58] Applications Nos. 1,729,906 and 1,729,907 were simultaneously filed one day after the filing of application Nos. 1,730,061 and 1,730,063 and respectively cover identical trademarks. As mentioned above, the statements of opposition submitted against these two later-filed applications raise substantially similar grounds of opposition as those which were pleaded with respect to application Nos. 1,730,061 and 1,730,063 with the exception that the Opponent also alleges that the applications do not comply with sections 30(b), (h) and (i) of the Act.

[59] The Opponent has pleaded that contrary to sections 30(b) and (h), the respective trademark allegedly used is not the ʼ906 Mark or the ʼ907 Mark. However, no evidence or submissions were filed in support of this allegation.

[60] The Opponent has also pleaded that contrary to section 30(i), the statements that the Applicant is satisfied as to its entitlement to the respective use of the ʼ906 Mark and the ʼ907 Mark in Canada are false in view of the content of the present oppositions, including the knowledge of the Applicant of the rights of the Opponent as herein alleged and of the unlawfulness of said use, if any:

· such use would be, was and is unlawful in that such use is encroaching upon the proprietary rights, as alleged herein, of the Opponent;

· such use would be, was and is unlawful in that such use is likely to have the effect of depreciating the value of the goodwill attaching to the trademarks alleged by the Opponent, contrary to section 22 of the Act;

· such use would be, was and is unlawful in that such use would direct public attention to the Applicant’s goods, services or business in such a way as to cause confusion in Canada between these goods, services or business and those of the Opponent, contrary to section 7(b) of the Act.

[61] The Opponent has not filed any submissions in support of this ground of opposition.

[62] In any event, the first prong of this ground fails because mere knowledge of the existence of the Opponent’s M Design Marks or confusion with the Opponent’s M Design Marks alone, does not support the allegation that Applicant could not have been satisfied of its entitlement to use either the ʼ906 Mark or ʼ907 Mark. Where an applicant has provided the necessary statement, a section 30(i) ground should only succeed in exceptional cases, such as where there is evidence of bad faith. The applications for the ʼ906 Mark and ʼ907 Mark each contain the required statement and the evidence adduced does not demonstrate that these are exceptional cases.

[63] The second and third prongs of this ground fail because the Opponent has not met its initial evidential burden with respect to its allegation that the Applicant could not be satisfied it was entitled to use the ʼ906 Mark and the ʼ907 Mark in view of a combination of section 30(i) with sections 7(b) or 22 of the Act. More specifically, I am not satisfied that the Opponent’s evidence supports all three requisite components of a passing off action [as set out in Ciba-Geigy Canada Ltd v Apotex Inc, [1992] 3 SCR 120 at 132 cited by Pharmacommunications Holdings Inc v Avencia International Inc, 2008 FC 828 at para 41] nor does it support a likelihood of depreciation of goodwill which would establish a section 22 violation [as set out in Veuve Clicquot at paras 46, 63‑68]. For example, there is no evidence of deception of the public due to a misrepresentation. Also, there is no evidence of actual use of the ʼ906 Mark or the ʼ907 Mark in Canada in association with any goods or services and I am not satisfied that these trademarks are sufficiently similar to any of the Opponent’s relied upon marks or that the evidence establishes that there would be a mental association or linkage between any of the Opponent’s relied upon trademarks and the ʼ906 Mark or the ʼ907 Mark.

Disposition

[64] In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I reject all four oppositions pursuant to section 38(12) of the Act.

Iana Alexova

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Schedule A

Statement of goods and services for application Nos. 1,729,906 and 1,729,907

Goods

(1) Clothing, namely hosiery, socks, shoes, basketball shoes, basketball sneakers, slippers, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties, nightshirts, hats, caps, visors, warm-up suits, warm-up pants, warm-up tops/shooting shirts, jackets, wind resistant jackets, parkas, coats, baby bibs not of paper, head bands, wrist bands, aprons, undergarments, boxer shorts, slacks, ear muffs, gloves, mittens, scarves, woven and knit shirts, jersey dresses, dresses, cheerleading dresses and uniforms, swim wear, bathing suits, swimsuits, bikinis, tankinis, swim trunks, bathing trunks, board shorts, wet suits, beach cover-ups, bathing suit cover-ups, bathing suit wraps, sandals, beach sandals, beach hats, sun visors, swim caps, bathing caps, novelty hats, caps and visors with attached wigs; sporting event tickets; posters and banners.

 

Services

(1) The production and distribution of radio and television shows featuring basketball games, basketball events and programs in the field of basketball; Organization of basketball games, basketball skills displays and competitions, basketball team practices and exhibition games, and special events and parties in the field of basketball, namely press conferences, personal appearances and autograph signing sessions by basketball teams, players and coaches, charity fundraising events, VIP lounges, cocktail parties, receptions and after parties; Entertainment services, namely providing a website featuring multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings in the field of basketball; Providing news and information in the nature of statistics and trivia in the field of basketball; Providing an online computer database in the field of basketball; Arranging for ticket reservations and sale of tickets for sporting events; Arranging and offering packages for experiential adventures in the field of basketball, namely, tickets for tours of sports arenas, for attending basketball game radio and television broadcasts, for attending meet and greet events with basketball teams, players and coaches, for attending basketball team practices, and for charity basketball game events; Promotional services in the form of promoting goods and services by arranging for sponsors to affiliate goods and services with a basketball game; Promoting the sale of goods and services through promotional contests and the distribution of related printed material.

 

Statement of goods and services for application Nos. 1,730,061 and 1,730,063

Goods

(1) Audio tape recordings and video tape recordings featuring entertainment and information in the field of basketball; pre-recorded optical discs, pre-recorded digital versatile discs, pre-recorded audio and video cassettes, pre-recorded audio and video tapes, pre-recorded compact discs, pre-recorded computer laser discs, all featuring entertainment and information related to basketball; computer accessories, namely flash drives, computer stands, mouse pads, mice, disc cases, computer bags, computer cases, computer sleeves, keyboard wrist pads, all related to basketball; computer software for accessing and viewing information, statistics and trivia about basketball; computer software, namely screen savers featuring basketball themes; computer software to access and view computer wallpaper; computer web browser software for use in viewing and displaying websites, web pages, digital images, videos and photographs on the Internet; computer skins, namely, fitted plastic film for covering and providing a scratch proof barrier for computer devices; computer video games; computer games downloadable from a global computer network; computer games for use on mobile and cellular phones; video games, video game cartridges; radios, electronic audio speakers, headphones and ear buds, wireless telephones, telephones; cell phone accessories, namely headsets, skins, face plates and cell phone covers; electronics accessories, namely skins, covers and stands for MP3 players, electronic tablets and portable personal digital assistant devices; decorative switch plate covers, video monitors, computer monitors, binoculars; sunglasses; eyeglass frames; eyewear straps and chains; eyeglass and sunglass cases; magnets; disposable cameras; credit cards and pre-paid telephone calling cards magnetically encoded; downloadable digital video recordings, downloadable digital video streams and downloadable digital audio recordings in the field of basketball provided over the Internet; downloadable computer software for database management and accessing of information, statistical information, trivia, opinion polling information, and interactive opinion polling, all in the field of basketball provided over the Internet; downloadable computer game software; downloadable interactive video games and downloadable trivia games provided over the Internet; downloadable computer software for use as screensavers and wallpaper, to access and display computer browsers, for use in viewing websites, web pages, digital images, videos and photographs on the Internet, for use in designing plastic film computer skins to protect computer monitors, for use in creating avatars for playing games and for use in remotely manipulating computer cursors over the Internet; downloadable electronic publications in the nature of magazines, newsletters, coloring books, game schedules all in the field of basketball provided over the Internet; downloadable catalogs provided over the Internet featuring an array of basketball-themed products; downloadable greeting cards provided over the Internet.

(2) License plate holders .

(3) Pendants, cuff links, earrings, bracelets, jewelry; costume jewelry; beaded jewelry; beaded necklaces; beads for use in the manufacture of jewelry; clocks; wrist and pocket watches; watch bands and watch straps, watch cases, watch fobs; necklaces made of precious metals; piggy banks; lapel pins; jewelry boxes, decorative boxes; money clips; tie clips; medallions; pins, non-monetary coins of precious metals; precious metals; figures and figurines of precious metals; trophies, and wall clocks .

(4) Publications and printed matter, namely basketball trading cards, trading cards, stickers, decals, commemorative basketball stamps, collectible cardboard trading discs, memo boards, clipboards, paper coasters, post cards, place mats of paper, facial tissues, note cards, memo pads, note pads, ball point pens, crayons, felt tip markers, rubber bands, pencils, pen and paper holders, desktop document stands, scrap books, rubber stamps, drafting rulers, paper banners and flags, 3-ring binders, stationery folders, wirebound notebooks, portfolio notebooks, unmounted and mounted photographs, posters, calendars, bumper stickers, book covers, bookmarks, wrapping paper, children’s activity books, children’s coloring books; statistical books, guide books, and reference books, all in the field of basketball; magazines in the field of basketball, catalogs in the field of basketball, commemorative game and souvenir programs related to basketball, paper pennants, paper stationery and writing stationery, stationery-type portfolios, post cards, invitation cards, printed certificates, greeting cards, Christmas cards, holiday cards, informational statistical sheets for basketball topics; newsletters, brochures, pamphlets, and game schedules in the field of basketball; bank checks, check book covers, check book holders, comic books; non-magnetic credit cards and telephone calling cards not magnetically encoded; money clips.

(5) Athletic bags, shoe bags for travel, overnight bags, umbrellas, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote bags, drawstring pouches, luggage, luggage tags, patio umbrellas, beach umbrellas, valises, attaché cases, billfolds, wallets, briefcases, canes, business card cases, book bags, all-purpose sports bags, golf umbrellas, gym bags, purses, coin purses, fanny packs, waist packs, cosmetic cases sold empty, garment bags for travel, handbags, key cases, leather key chains, suitcases, toiletry cases sold empty, trunks for traveling and rucksacks, foot lockers, pet clothing, pet leashes, and pet collars.

(6) Foot lockers; pillows and seat cushions; stadium seats and cushions; non-metal money clips; non-metal and non-leather key rings; non-metal and non-leather key chains, tags and fobs; picture frames; hand-held mirrors; roller shades for windows with suction cups; magazine caddies; plaques; soft sculpture wall decorations; non-metal reusable bottle caps; non-metal clips for tablecloths; hard plastic bobble head figurines and plastic bobble cap statues; decorative mobiles; miniature stadium reproductions, namely, small plastic models of a stadium; chairs and stools; tables; folding sports seats and stools; bathroom furniture; dining room furniture; living room furniture; office furniture; outdoor furniture; patio furniture; children’s bedroom furniture; bedroom furniture; clothes hangers and coat hangers; non-metal trophy cups; bean bag chairs; non-metal coat racks; non-metal stands for holding and displaying various types of balls; dividers for drawers; plastic figurines; snow globes; plastic pet identification tags, air mattresses; sleeping bags; wood boxes and pins; furniture chests; gift package decorations made of plastic; plastic flags; plastic novelty license plates; plastic name badges; non-metal names plates.

(7) Mugs, cups, shot glasses, plates, dishes, bowls, dinnerware, glassware, picture frames, portable beverage coolers, cocktail shakers, and waste paper baskets; beverage glassware, beer mugs, bottles sold empty made of plastic and glass; paper and plastic cups, glasses, mugs, bowls, and plates; stirrers; jugs; decorative and commemorative plates; dinnerware and servingware for serving food; figurines made of china, crystal, earthenware, glass, porcelain and terra cotta; lunch boxes and pails; tankards not of precious metal; meal trays.

(8) Bath towels, beach towels, cloth towels, hand towels, towels of textile, blankets, bed sheets, pillow cases, cloth pennants, curtains, pillow shams, cloth flags, comforters, and billiard cloths.

(9) Clothing, namely hosiery, socks, athletic footwear, casual footwear, children’s footwear, sports footwear, shoes, boots, basketball shoes, basketball sneakers, slippers, T-shirts, shirts, polo shirts, sweatshirts, sweatpants, pants, tank tops, jerseys, shorts, pajamas, sport shirts, rugby shirts, sweaters, belts, ties, nightshirts, hats, caps, visors, warm-up suits, warm-up pants, warm-up tops/shooting shirts, jackets, wind resistant jackets, parkas, coats, baby bibs not of paper, head bands, wrist bands, aprons, undergarments, boxer shorts, slacks, ear muffs, gloves, mittens, scarves, woven and knit shirts, jersey dresses, dresses, cheerleading dresses and uniforms, swim wear, bathing suits, swimsuits, bikinis, tankinis, swim trunks, bathing trunks, board shorts, wet suits, beach cover-ups, bathing suit cover-ups, bathing suit wraps, sandals, beach sandals, beach hats, sun visors, swim caps, bathing caps, novelty hats, caps and visors with attached wigs.

(10) Hair bands, ties, and clips; cloth patches.

(11) Floor mats for vehicles.

(12) Toys, games and sporting goods, namely basketballs, golf balls, playground balls, sports balls, rubber action balls and foam action balls, plush balls for games, plastic balls for games, basketball nets, basketball backboards, miniature basketball backboards, pumps for inflating basketballs and needles therefore; golf clubs, golf bags, golf putters, golf accessories, namely, divot repair tools, tees, ball markers, golf bag covers, club head covers, golf gloves, golf ball sleeves, golf putting greens; billiard cue racks, billiard balls, billiard ball racks, dart board cabinets, electronic basketball table top games, basketball table top games, basketball board games, action skill games, adult's and children’s party games, trivia information games and electronic video arcade game machines, basketball kit comprised of a net and whistle, dolls, decorative dolls, collectible dolls, toy action figures, bobblehead action figures, stuffed toys, plush toys, jigsaw puzzles, toy building blocks, Christmas tree ornaments and Christmas stockings; toy vehicles in the nature of cars, trucks, trains and vans, all containing basketball themes, novelty foam toys in the shapes of fingers and trophies, toy trophies, playing cards, card games, toy noisemakers, pet toys; beach toys, namely, beach balls, inflatable balls, toy pails, toy shovels, sand toys, sand box toys, water-squirting toys; pool accessories, namely swim floats, pool floats, toy water rafts, foam floats, swim rings, pool rings, foam rings, body boards, surf boards, swim fins, surf fins, arm floats and water wing swim aids, all for recreational use; volleyball game kits comprised of ball, net, sidelines and whistle, and water polo game kits comprised of ball, net and whistle; decorative cloth wind socks; miniature stadium reproductions, namely, small toy plastic models of a stadium; snow globes; video game machines for use with television and video game hand held controllers for use with console video gaming systems.

(13) Sporting event tickets.

Services

(1) Computerized on-line retail store, ordering, retail, electronic retailing, catalog and mail order catalog services for basketball-themed and basketball related consumer products; promoting the goods and services of others by allowing sponsors to affiliate these goods and services with a basketball team or league; promoting the sale of goods and services of others through the distribution of promotional contests provided over the internet; conducting public opinion poll surveys and public opinion poll surveys in the field of basketball for non-business, non-marketing purposes over the internet; providing access to interactive polling in the field of basketball over the internet.

(2) Charitable fund raising services.

(3) Audio broadcasting by satellite; Internet radio broadcasting; cable television broadcasting; radio broadcasting; subscription television broadcasting; television broadcasting; video broadcasting of basketball games and digital recordings of basketball related content over the Internet; satellite television broadcasting; webcasting services in the nature of providing on-line chat rooms and on-line interactive chat rooms with guests for transmission of voice and text messages among computer users concerning the field of basketball; broadcasting radio programs, television programs and sports webcasts over the Internet, providing on-line electronic bulletin boards for transmission of voice and text messages among computer users concerning the field of basketball, providing multiple-user access to a global computer information network for the purpose of participating in interactive polling in the field of basketball; wireless communications services, namely transmission of downloadable computer graphics to mobile phones; wireless electronic transmission of voice messages, facsimiles, text messages, streaming video, movies, music, photographs, digital images and information in the field of basketball over the Internet and via wireless and cellular networks; wireless broadband communications services, namely the broadband transmission of live broadcasts of basketball games and digital recordings of basketball related radio and television programs; Webcasting services in the nature of broadcasting basketball games, basketball events, basketball programs, player interviews and press conferences in the field of basketball over the internet, subscription audio and video broadcasts in the field of basketball over the internet, non-subscription audio and video broadcasts in the field of basketball over the internet, broadcasts of ongoing radio programs over the internet, broadcasting highlights of television, cable television and radio programs in the field of basketball over the internet.

(4) Entertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions; the production and distribution of radio and television shows featuring basketball games, basketball events and programs in the field of basketball; conducting and arranging basketball clinics and camps, coaches clinics and camps, dance team clinics and camps and basketball games; entertainment services in the nature of personal appearances by a costumed mascot or dance team at basketball games and exhibitions, clinics, camps, promotions, and other basketball-related events, special events and parties; fan club services; entertainment services, namely providing a website featuring multimedia material in the nature of television highlights, interactive television highlights, video recordings, video stream recordings, interactive video highlight selections, radio programs, radio highlights, and audio recordings in the field of basketball; providing news and information in the nature of statistics and trivia in the field of basketball; on-line non-downloadable games, namely, computer games, video games, interactive video games, action skill games, arcade games, adults’ and children’s party games, board games, puzzles, and trivia games; electronic publishing services, namely, publication of magazines, guides, newsletters, coloring books, and game schedules of others on-line through the Internet, all in the field of basketball; providing an online computer database in the field of basketball.

(5) Organization of basketball games, basketball skills displays and competitions, basketball team practices and exhibition games, and special events and parties in the field of basketball, namely press conferences, personal appearances and autograph signing sessions by basketball teams, players and coaches, charity fundraising events, VIP lounges, cocktail parties, receptions and after parties; arranging for ticket reservations and sale of tickets for sporting events; arranging and offering packages for experiential adventures in the field of basketball, namely, tickets for tours of sports arenas, for attending basketball game radio and television broadcasts, for attending meet and greet events with basketball teams, players and coaches, for attending basketball team practices, and for charity basketball game events; promotional services in the form of promoting goods and services by arranging for sponsors to affiliate goods and services with a basketball game; promoting the sale of goods and services through promotional contests and the distribution of related printed material.

 

Schedule B

Opponent’s M Design Marks

Trademark	Registration No.	Goods/Services
	TMA637,677	(1) Carbonated drinks enhanced with vitamins, minerals, nutrients, amino acids and/or herbs. (2) Beverages, namely, carbonated soft drinks, fruit juice drinks having a juice content of 50 percent or less by volume that are shelf-stable; carbonated and non-carbonated energy or sports drinks, noncarbonated teas, water, but excluding perishable beverage products that contain fruit juice or soy, whether such products are pasteurized or not.
	TMA833,007	(1) Stickers, sticker kits, decals; sports bags, travel bags, school bags, handbags, messenger bags, knapsacks, backpacks; clothing, namely t-shirts, sweat shirts, pants, jackets, shorts; and headgear namely, hats, caps and beanies; protective clothing, namely protective headwear, namely motorcross helmets, motorcycle helmets, snowmobile helmets, all terrain vehicle helmets, sports helmets, bicycling helmets, ski helmets, snowboard helmets.
	TMA833,012	(1) Stickers, sticker kits, decals; sports bags, travel bags, school bags, handbags, messenger bags, knapsacks, backpacks; clothing, namely t-shirts, sweat shirts, pants, jackets, shorts; and headgear namely, hats, caps and beanies; protective clothing, namely protective headwear, namely motorcross helmets, motorcycle helmets, snowmobile helmets, all terrain vehicle helmets, sports helmets, bicycling helmets, ski helmets, snowboard helmets. (2) Towels, namely hooded towels for children, face towels made of textile materials, hand towels, bath towels, hooded towels, cotton towels, ktichen [sic] towels of textile, golf towels, beach towels, cloth towels, children’s towels, microfiber towels, terry towels, waffle towels, tea towels and dish towels for drying.
	TMA979,313	(1) Promoting goods and services in the sports, motorsports, electronic sports, and music industries through the distribution of printed, audio and visual promotional materials; promoting sports and music events and competitions for others.

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-06-10

APPEARANCES

Catherine Bergeron	For the Opponent
Barry Fong	For the Applicant

AGENTS OF RECORD

ROBIC	For the Opponent
OSLER, HOSKIN & HARCOURT LLP	For the Applicant