| OPIC
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CIPO
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| LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADEMARKS
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Citation: 2022 TMOB 128
Date of Decision: 2022-07-05
[UNREVISED ENGLISH
CERTIFIED TRANSLATION]
IN THE MATTER OF AN OPPOSITION
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Jean-Louis Vill
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Opponent
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Ebox Inc.
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Applicant
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1,829,437 for EBOX TV
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Application
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Introduction
[1] Ebox Inc. (the Applicant) has filed an application (No. 1,829,437) for the trademark EBOX TV (the Mark) based on proposed use in Canada in association with the following services, as revised:
Streaming of audiovisual materials and media content via the Internet, namely television programs, video games, music and films; transmission and dissemination of audiovisual and multimedia content via the Internet, namely television programs, video games, music and films; video-on-demand services; entertainment services, namely on-demand provision of films and television programs as well as information, reviews and recommendations related to films and television programs; provision of a website featuring television programs, films and multimedia entertainment content, namely films, television programs and video games with visual effects, 2D and 3D animations and music as well as information, reviews and recommendations related to television programs, films and multimedia entertainment content, namely films, television programs and video games with visual effects, 2D and 3D animations and music; provision of access, via telecommunications, to films and television programs; cable television broadcasting services; Internet television services; subscription television broadcasting; pay television broadcasting; broadcasting of television programs via the Internet; pay-per-view television services and subscriptions to television programs; transmission of online television programs; cable television services; sale and rental of television set-top boxes; sale and rental of television terminals; television entertainment services, namely entertainment in the form of television programs; entertainment services for handheld computers, mobile telephones and electronic tablets, namely films, music, videos, and audio/video and text content, namely books, plays, pamphlets, brochures, newsletters, journals and magazines, relating to sporting and cultural activities as well as to a wide variety of general interest topics and disseminated by means of computer networks; provision of online video games; online library services offering books, magazines and photographs; online sale and rental of books, magazines and photographs; development services for Internet sites; call centre, namely technical support in the field of telecommunications, aftersales services in the fields of telephony, the Internet and television, support and troubleshooting services for Internet, telephone network and television network outages; telephone conference services; (the Services)
[2] Jean-Louis Vill (the Opponent) objects to the registration of the Mark, arguing that there is a likelihood of confusion with the mark and trade name IBOX TV, which he claims has been used in the past—and continues to be used—in Canada, primarily in association with television set-top boxes and various content transmission and broadcasting services.
[3] For the reasons that follow, I find the opposition ought to be rejected.
The record
[4] The application for the Mark was filed on March 27, 2017, and advertised for opposition purposes in the Trademarks Journal on January 2, 2019.
[5] The statement of opposition was filed on January 11, 2019, under section 38 of the Trademarks Act, RSC 1985, c. T-13 (the Act). It must be noted at this point that, because the Act was amended on June 17, 2019, all references in my decision refer to the Act as amended, except for references to the grounds of opposition (see section 70 of the Act, which provides that section 38(2) of the Act as it read applies to applications advertised before that date).
[6] The grounds of opposition argued by the Opponent are as follows:
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Pursuant to section 38(2)(c) of the Act, the Applicant is not the person entitled to registration of the Applicant’s Mark in association with the Applicant’s Services in view of the provisions of section 16(3)(a) of the Act, since at the filing date of the Application, the Applicant’s Mark created, and still creates, confusion with the Opponent’s IBOX TV TM Trademark that was previously used in Canada, and is still in use, in association with the Opponent’s Goods and Services; and
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Pursuant to section 38(2)(c) of the Act, the Applicant is not the person entitled to registration of the Applicant’s Mark in association with the Applicant’s Services in view of the provisions of section 16(3)(c) of the Act, since at the filing date of the Application, the Applicant’s Mark created, and still creates, confusion with the Opponent’s IBOX TV TM trade name that was previously used in Canada, and is still in use, in association with the Opponent’s Goods and Services.
[7] For the purposes of its statement of opposition, the “Opponent’s Goods and Services” are defined as follows:
[translation]
Television set-top boxes (the Opponent’s Goods); and
Streaming of audiovisual materials and media content via the Internet, namely television programs, video games, music and films; transmission and dissemination of audiovisual and multimedia content via the Internet, namely television programs, video games, music and films; provision of access, via telecommunications, to films and television programs; Internet television services; subscription television broadcasting; pay television broadcasting; transmission of online television programs; sale of television set-top boxes; television entertainment services, namely entertainment in the form of television programs (the Opponent’s Services).
(Collectively the Opponent’s Goods and Services)
[8] On March 28, 2019, the Applicant voluntarily filed a revised application, which was subsequently accepted by the Registrar.
[9] The Applicant responded by filing its counter statement of opposition on March 29, 2019.
[10] Both parties submitted evidence, which is briefly summarized below. Both parties filed written representations and attended the oral hearing.
Overview of the evidence
Opponent’s evidence – the Vill affidavit
[11] The Opponent’s evidence consists of his own affidavit, dated May 13, 2019, and exhibits JLV-1 to JLV-3.
[12] The Opponent states that he is a contractor that personally markets goods and services under the IBOX TV mark [para 1].
[13] More specifically, the Opponent indicates that, since 2016, he has personally used the IBOX TV mark in association with the Opponent’s Goods and Services, as well as in association with the following services: [translation] “Internet access services, Internet telephony services, Internet telephony services that provide a choice of various options, namely local calls, long-distance calls, international calls, voice messaging, call display, call waiting, automatic call forwarding, conditional automatic call forwarding, conference call services, cellular phone services” (the Opponent’s Additional Services) [para 3]. I note that all the Opponent’s following references to goods and services throughout his affidavit collectively refer to the Opponent’s Goods and Services and the Opponent’s Additional Services. Below, I will therefore use the designation Opponent’s Extended Goods and Services to represent that to which the Opponent has referred in his affidavit.
[15] The Opponent indicates that the iboxtv.ca website [translation] “was put online” to promote the Opponent’s Extended Goods and Services under the IBOX TV mark since at least March 8, 2016 [para 6]. The Opponent attached as Exhibit JLV-2 an excerpt from this site that was printed on January 8, 2019, using the Wayback Machine and archived on March 8, 2016.
[16] The Opponent submits approximate sales figures in association with the Opponent’s Extended Goods and Services from 2016 to the date his affidavit was signed totalling $82,000 [para 7]. As Exhibit JLV-3, the Opponent attached what he describes as [translation] “proof of payment received in return for the sale of the Opponent’s [Extended] Goods and Services under the IBOX TV mark” [para 8]. In fact, this exhibit includes four Paypal transaction statements, along with what appears to be a partially redacted list of orders.
[17] The Opponent then detailed efforts to promote the IBOX TV mark. Specifically, he indicates that he promotes the Opponent’s Extended Goods and Services on the iboxtv.ca website and, from his affidavit, reproduced an excerpt from a page dated February 14, 2019, said to be representative of the website since its creation [para 9]. However, I note that this excerpt does not appear to be entirely consistent with the one referenced above on January 8, 2019, which was obtained using the Wayback Machine and archived on March 8, 2016.
[18] The Opponent also indicates that he is doing optimization and Internet referencing work so that the iboxtv.ca website is featured in consumer searches. He estimates that he has personally dedicated more than 2,000 hours to this task over three years [para 10].
[19] The Opponent concludes his affidavit by referring to examples of customers and potential customers who allegedly confused the Opponent’s Extended Goods and Services with the Applicant’s Services [paras 11 to 13].
[20] The Opponent was cross-examined on his affidavit and the transcript of his cross-examination is on record. The Opponent also made some undertakings on that occasion. I will return to the items raised during the cross-examination, as well as the undertakings made during the cross-examination, later in my decision.
The Applicant’s evidence
[21] The Applicant's evidence is as follows:
· The affidavit of Mylène Arsenault, dated May 8, 2020, and its exhibits (1 to 6);
· The affidavit of Martin Latendresse, dated May 8, 2020, and its exhibits (1 to 3);
· The affidavit of Jean-Philippe Béïque, dated May 8, 2020, and its exhibits (1 to 32);
· The affidavit of Queeny-Marie Noche, dated May 25, 2020, and its exhibits (1 to 4); and
· Certified copies of its registrations (Nos. TMA990,150 and TMA1,022,746) for the EBOX mark.
[22] None of the Applicant’s affiants were cross-examined.
The Arsenault affidavit
[23] Ms. Arsenault works as a Sales Manager for the Applicant [para 1].
[24] On or about June 2, 2019, Ms. Arsenault contacted the Opponent at the number found on the iboxtv.ca website for information related to television and Internet access services. The Opponent subsequently contacted her. Ms. Arsenault attached the audio recordings of her conversations with the Opponent on June 3 and 4, 2019, along with the transcripts of these conversations, which make up Exhibits 1-A to C respectively of her affidavit [paras 2 and 3].
[25] Ms. Arsenault later states that she received a subscription confirmation, confirmation of ownership and a summary of costs, a copy of which she attached to her affidavit as Exhibit 3 [para 4]. I note that no mention is made of the Opponent in these documents, except for the slips entitled [translation] “Quick start information”, where the Opponent’s name and contact information appears under “Representative identification”. IBOX TV is also not mentioned.
[26] Ms. Arsenault stated that she received an email from the Opponent with a [translation] “promo code” and a link to order the IPTV service with the provider iptvtvip.com. A copy of this email is attached to her affidavit as Exhibit 4, along with screenshots of the site ipttvtvip.com that she took [para 5].
[27] Ms. Arsenault also states that she received emails related to a subscription to Internet access services from an entity identified as ACN, which she attached to her affidavit as Exhibit 5 [para 6].
[28] Lastly, Ms. Arsenault states that she received a modem by mail. She took photos of the box she received and its contents, which she attached to her affidavit as Exhibit 6 [para 7]. I note that the name of the sender of the box in question appears as ACN of Canada Co. and that no mention is made of this exhibit of IBOX TV.
The Latendresse affidavit
[29] Mr. Latendresse works as Operations Manager for the Applicant [para 1].
[30] In early June 2019, Mr. Latendresse completed the contact form on the iboxtv.ca website to get a call back with information on Internet access services. On or about June 7, 2019, the Opponent contacted him. Mr. Latendresse attached the audio recording of his conversation with the Opponent and the transcripts of this conversation, which make up Exhibits 1 and 2 respectively of his affidavit [paras 2 and 3].
[31] Afterwards, Mr. Latendresse went to the iboxtv.ca site and took screenshots. He also took screenshots of the CloudTV application. These screenshots are attached to his affidavit as Exhibit 3 [para 4].
The Béïque affidavit
[32] Mr. Béïque is the President and Chief Executive Officer of the Applicant [para 1]. The main purpose of his affidavit is to support the Applicant’s claims that: it has used the EBOX mark since at least as early as 1997 [paras 4, 7 to 18 and 58, exhibits 2 to 10]; it was normal for the Applicant to transition its offer of services to service related to the broadcast of audiovisual and multimedia content over the Internet and the Applicant’s other Services [paras 7, 20 to 35 and 58, exhibits 13 to 19]; and the Opponent does not personally provide any of its alleged goods and services and also does not have the necessary permits to do so [paras 7, 24 to 28, 31 and 36 to 57, exhibits 14, 17 and 21 to 30].
[33] Mr. Béïque also provides some details regarding proceedings that were reportedly instituted by the Applicant in the Superior Court of Québec against the Opponent [paras 59 and 60, exhibits 31 and 32].
The Noche affidavit
[34]
Ms. Noche works as a paralegal for the agents who represent the Applicant [para 1]. She adduced into evidence the results of her online searches (using the Google search engine and CIPO’s Canadian Trademark Database) [paras 4 to 6] essentially to support the Applicant’s claim that it is common for telecommunications companies to provide Internet access services and content distribution services under a single mark.
Evidentiary burden
[35] It is initially up to the Opponent to determine the merits of his opposition. His grounds for opposition must be duly pleaded and there is an initial evidentiary 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 that evidentiary burden has been met, it is up to Applicant to establish, on a balance of probabilities, that no grounds of opposition prevent the registration of the Mark [see John Labatt Ltd v Molson Companies Ltd. (1990), 30 CPR (3d) 293 (FCTD); and Dion Neckwear Ltd v Christian Dior, SA et al. (2002), 20 CPR (4th) 155 (FCA)].
Grounds of opposition based on non-entitlement – sections 16(3)(a) and (c) of the Act
[36] As indicated above, the Opponent argues that the Applicant is not a person entitled to registration of the Mark within the meaning of sections 16(1)(a) and (c) of the Act because leads to confusion with the Opponent’s IBOX TV mark and trade name.
[38] Before going any further, I find that the Applicant—both in its written representations and at the hearing—raises preliminary issues. On the one hand, the Applicant requests that the Vill affidavit and its supporting exhibits not be taken into account. Alternatively, the Applicant requests that negative inferences be drawn from the Opponent’s failure to submit replies to the Registrar regarding the undertakings made during his cross-examination. As I find this to be helpful in reading my decision, I will look at the issue of the undertakings first.
Opponent’s request to submit its undertakings
[39] I note that during his cross-examination, the Opponent made some undertakings that were not honoured.
[40] On the day of the hearing, however, the Opponent applied for a retroactive extension of time under section 47(2) of the Act to remedy this defect. Additionally, the Opponent applied for leave to submit additional evidence under section 55 of the Trademarks Regulations, SOR/2018‑227 (the Regulations), this additional evidence being the replies to the undertakings and the exhibits related thereto. The Applicant objected to granting these applications.
[41] I indicated at the hearing that I would issue my ruling on this matter alongside this decision. I also asked the parties to consider in their oral representations the possibility that at least one of the Opponent’s requests made at the hearing would be granted.
[42] The Opponent had until December 19, 2019 to submit his replies regarding the undertakings to the Registrar in the manner prescribed by the Regulations. In support of his application for an extension of time, the Opponent submits that the replies to the undertakings were provided to the Applicant on November 13, 2019, in accordance with the practice in force before the legislative and regulatory amendments that came into force in June 2019. The Opponent also submits that on November 14, 2019, the Applicant acknowledged receipt and attached a copy of a related email exchange.
[43] The Opponent notes that the Registrar’s notice regarding the time limit for cross-examination, in which it is stated that the Opponent will need to submit its replies regarding the undertakings to the Registrar and serve them to the other party within one month of the effective date of the signing of the transcript of stenographic notes, was dated July 19, 2019, only a little more than a month after the amendments to the Act came into force. In the Opponent’s view, this would show that he proceeded in error, but in good faith, according to the former practice and sent the replies regarding the undertakings to the Applicant, but not to the Registrar. In this context, the Opponent argues that he was satisfied that the Applicant, who conducted the cross-examination, would submit the replies to the undertakings when submitting the stenographic notes, as required by practice prior to June 19, 2019, and that the Opponent was therefore in a position where he could not reasonably avoid submitting the abovementioned replies to the undertakings.
[44] The Opponent’s application is late, to say the least. That being so, in light of the above representations and considering the apparently limited prejudice to the Applicant in the circumstances, I am prepared to consider that the events described by the Opponent in this case justify the granting of a retroactive extension of time for it to honour the undertakings made during its cross-examination. The replies have thus been added to the record.
Admissibility of Opponent’s evidence
[45] The second preliminary issue raised is the admissibility of the Opponent’s evidence. Specifically, the Applicant argues that the Vill affidavit and its supporting exhibits must be dismissed immediately because the affiant is not able to affirm that it signed the affidavit in the presence of a Commissioner for Oaths and because the affiant did not have the exhibits present when the affidavit was signed.
[46] In response, the Opponent simply submitted at the hearing that it is [translation] “flat” (I understand that to mean regrettable or annoying) to respond to the type of allegation made by the Applicant; that this only challenges the integrity of the Commissioner for Oaths; that the Opponent’s document submitted as evidence does in fact include the required signatures; and that there is no real reason for his form to be questioned further.
[47] It is clearly stated in section 49 of the Regulations that evidence in respect of an opposition proceeding is to be submitted to the Registrar by way of affidavit or statutory declaration. Section 41(1)(a) of the former Trademarks Regulations, SOR/96-195, which affected the Opponent’s evidence specifically at the time it was submitted, was essentially to the same effect. In short, the submitted evidence must be in the form of a sworn document or a statement made under oath before a Commissioner for Oaths.
[48] However, as it appears from the excerpt of his cross-examination reproduced below, I find that the Opponent in fact stated that he was alone when signing his affidavit and did not remember seeing Ms. Veilleux, the Commissioner for Oaths whose signature appears on the affidavit and the supporting exhibits.
[translation]
Q: And where were you when you signed that statement?
A: At BCF’s Québec City office.
Q: Were you alone at that time?
A: Yes.
Q: Yes. Did you see Ms. Veilleux?
A: I don’t know.
[Page 6, line 21 to page 7, line 2]
[49] It is also apparent from his cross-examination that the Opponent did not believe that he had the exhibits in his possession when his affidavit was signed:
[translation]
Q: [...] What did you have with you when you signed the statement?
A: I don’t remember.
Q: You don’t remember?
A: No.
Q: OK. Do you remember if you had a copy of exhibits JLV-1, JLV-2 and JLV-3 with you?
A: Certainly not, no, I don’t remember. I don’t think I had them with me.
[Page 7, lines 3 to 11]
[51]
As a result, notwithstanding his observations made in this regard at the hearing, I am of the view that the Opponent’s affidavit is flawed and inadmissible. Therefore, I cannot consider this document. Since the Opponent’s cross-examination and his replies to the undertakings are not sufficient in my view, I find that the Opponent failed to meet his initial burden and I reject each of his grounds of opposition based on the absence of entitlement to registration.
[52]
If I am mistaken in rejecting the grounds of opposition for this reason, I would add that, even if the Opponent’s affidavit had been admissible, it would not have changed the outcome of these proceedings. Specifically, I find that the Opponent’s evidence included several inaccurate statements that are not moreover corroborated by the provided documentary evidence. I will confine myself to the following few comments on these shortcomings and inaccuracies.
Additional summary comments on the Opponent’s evidence
[53] First, the Opponent conceded at the hearing that his evidence did not demonstrate use of the IBOX TV trademark in association with the Opponent’s Goods.
[54] Second, as highlighted in the above summary, the Opponent alleges in his affidavit that he used the IBOX TV mark and trade name with services that are broader than those cited in support of his statement of opposition. Since the statement of opposition was not amended to include them, I would not have been able to consider the Opponent’s Additional Services in my analysis. This would have been particularly problematic because, as I have already mentioned, all the Opponent’s assertions regarding the goods and services throughout his affidavit refer to the Opponent’s Extended Goods and Services.
[56] Fourth, with respect to the transaction records provided, I note once again that none of them refer to the Opponent. In addition, none of them include a consumer’s name or address or even a delivery address. With respect to the partially redacted list of orders, I agree with the Applicant’s representations that, even in accepting that it is in fact the Opponent’s name that is seen on two redacted entries that are identified with a red dot, the fact remains that there is no indication as to where this list comes from, what it is actually used for or what goods or services are referenced by the headings “Goods” and “Status” (“Order connected”/“Connecté”). These two entries are also dated February 17, 2017, a date that is not found on any of the transaction records provided by the Opponent.
[57] Lastly, the Opponent indicated that he had registered the iboxtv.ca domain name in late January 2016. However, the registration of a domain name would not in itself have demonstrated use of a trademark or trade name and the Opponent’s evidence does not include any documents that establish this domain name as, in fact, belonging to him. In my view, the Opponent’s evidence also does not include documents that support the claim that all services stated on this site would necessarily have been on behalf of the Opponent or would have been directly provided by the Opponent.
[58] As a result, even if his affidavit were admissible in this case, I would have concluded overall that the Opponent did not meet his initial evidentiary burden of showing that he had used the IBOX TV mark or trade name, in the ordinary course of trade in Canada, in association with the Opponent’s Goods and Service prior to the filing date of the application to register the Mark and that he had not abandoned this mark or this trade name when the Mark was published in the Trademarks Journal.
[59] In light of the foregoing, I find that it is not necessary for me to examine the Applicant’s claims that the Opponent does not have the necessary permits to provide its alleged goods and services.
Disposition
[60] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(12) of the Act.
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| Iana Alexova
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| Member
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| Trademarks Opposition Board
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| Canadian Intellectual Property Office
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Certified translation
Tony Santin
TRADEMARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
___________________________________________________
HEARING DATE 2022-05-24
APPEARANCES
| Pascal Lauzon
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For the Opponent
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| Cindy Bélanger
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For the Applicant
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AGENTS OF RECORD
| BCF S.E.N.C.R.L./BCF LLP
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For the Opponent
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| Cindy Bélanger (Legault Joly Thiffault S.E.N.C.R.L.)
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For the Applicant
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