Digests

Trade-marks

Registration

Appeal from Trade-marks Opposition Board member’s decision denying opposition to application for trade-mark VIBETRAIN by respondent—Respondent filing application to register trade-mark VIBETRAIN based on proposed use in Canada for wares, services related dominantly to music, culture—Applicant, publisher of VIBE, popular culture magazine, filing statement of opposition—Board member correctly setting out test for confusion, i.e. one of first impression, imperfect recollection, considering statutory criteria for confusion set out in Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(2),(5)—Board member finding word “vibe” not inherently distinct, relying on Court’s decision in Vibe Ventures LLC v. 3681441 Canada Inc. (2005), 45 C.P.R. (4th) 17—Board member finding average Canadian consumer not likely to assume that applicant’s, respondent’s marks sharing common source—Federal Court finding distinctive nature of word “vibe” more nuanced—Use of “vibe” now sufficiently widespread to conclude “vibe” no longer inherently distinctive—Nevertheless, through continuous use by originator’s successors, including applicant corporation, word “vibe” acquiring certain reputation—Broad overlap in music, culture, clothing wares, services which both applicant’s, respondent’s marks seek to identify, both relying on similar channels of trade, both targeting people who have interest in music, entertainment, culture—Likelihood of confusion in mind of “casual consumer somewhat in a hurry”—Appeal allowed.

Vibe media Group LLC (Intermedia Vibe Holdings LLC) v. Lewis Craig (VIBETRAIN) (T-450-09, 2010 FC 214, Mandamin J., judgment dated February 24, 2010, 10 pp.)