LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 202
Date of Decision: 2010-11-29
IN THE MATTER OF AN OPPOSITION by GGW Marketing, LLC to application No. 1,252,416 for the trade-mark WHERE LOCAL GIRLS GO WILD in the name of Teligence (Canada) Inc.
File Record
[1] On March 30, 2005, Chromatic Software Inc. filed an application to register the mark WHERE LOCAL GIRLS GO WILD, based on use of the mark in Canada since September 18, 2003, in association with the following services:
electronic voice messaging, namely recording, storage and subsequent transmission of messages for social purposes; telephone communication services in the field of dating and relationships; providing social club
services by telephone.
[2] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated November 14, 2007 and was opposed on April 14, 2008 by GGW Marketing, LLC. The Registrar forwarded a copy of the statement of opposition to the applicant on May 6, 2008 as required by s.38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition. During the course of this proceeding, the original applicant amalgamated with another company and continued as Teligence (Canada) Inc., the current applicant of record.
[3] Neither party filed evidence. Only the applicant filed a written argument. Neither party responded to the Registrar’s notice dated November 17, 2009 advising the parties that they may request an oral hearing.
Statement of Opposition
[4] The first ground of opposition, pursuant to s.30(i) of the Trade-marks Act, alleges that the applicant cannot be satisfied that it is entitled to register the applied for mark in view of the prior use and/or making known of the opponent’s marks GIRLS GONE WILD, GONE WILD and GUYS GONE WILD.
[5] The second ground of opposition alleges that the application is not in compliance with s.30(b) of the Act as the applicant has not used the applied for mark since the date of first use claimed in the application.
[6] The third ground of opposition, pursuant to s.16(1)(a), alleges that the applicant is not entitled to register the applied for mark because, at the date of claimed first use on September 18, 2003, and at the date of filing, the applied for mark WHERE LOCAL GIRLS GO WILD was confusing with the opponent’s above mentioned marks previously used or made known in Canada by the opponent.
[7] The fourth ground of opposition, pursuant to s.16(1)(b), alleges that the applicant is not entitled to register the applied for mark because, “at the date of filing such application” the applied for mark WHERE LOCAL GIRLS GO WILD was confusing with the opponent’s prior filed applications for the marks GIRLS GONE WILD and GUYS GONE WILD.
[8] The fifth ground alleges that the applied for mark does not distinguish the applicant’s services from the wares and services of the opponent.
Consideration of the Grounds of Opposition
[9] With respect to the first ground of opposition, the allegation pursuant to s.30(i) requires a pleading of fraud, bad faith or violation of specific federal statutory provision on the part of the applicant: see, for example, Sapodilla Co. Ltd. v. Bristol‑Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155; Canada Post Corporation v. Registrar of Trade‑marks (1991), 40 C.P.R. (3d) 221. In the instant case, the pleadings do not support a ground of opposition based on s.30(i) and therefore the first ground is rejected.
[10] With respect to the second ground, I agree with the applicant’s submissions in its written argument that (i) an opponent faces an initial burden requiring it to adduce admissible evidence from which it might reasonably be concluded that the facts alleged to support the ground of opposition exist, (ii) the evidential burden for s.30(b) is relatively light, and (iii) the opponent did not file any evidence relating to the second ground of opposition. The second ground is therefore rejected because the opponent has not met the evidential onus on it to put the second ground of opposition into issue.
[11] With respect to the third ground, I agree with the applicant’s submissions in its written argument that (i) the material time is the date of claimed first use, that is, September 18, 2003, (ii) the opponent faces an initial evidential burden to show use or making known of the marks the opponent is relying upon, and (iii) the opponent has not filed any evidence to show that it has used its marks or made them known. The third ground is therefore rejected because the opponent has not met the evidential onus on it to put the third ground of opposition into issue.
[12] With respect to the fourth ground, I would note that the material time is the date of claimed first use by the applicant, that is, September 18, 2003 rather than the filing date of the application (March 30, 2005). As noted by the applicant in its written argument, the opponent’s application for the mark GIRLS GONE WILD was in fact filed after the material date September 18, 2003. Accordingly, there is no support for the fourth ground based on the mark GIRLS GONE WILD. Thus, the fourth ground remains to be decided on the issue of confusion between the applied for mark WHERE LOCAL GIRLS GO WILD and the opponent’s application for the mark GUYS GONE WILD for use in association with “pre-recorded video tapes and DVD's, all featuring movies and television programs of all kinds” and with various items of clothing.
[13] As the opponent has not submitted any evidence or a written argument, the issue of confusion is most influenced by the resemblance between the marks in issue and the nature of the parties’ wares and services. As the parties’ marks are relatively weak marks, I find that the differences between the marks in issue outweigh their similarities. Further, I find that there is little overlap between the applicant’s services and the opponent’s wares. Accordingly, I find that the applicant has met the legal onus on it to show that, on a balance of probabilities, there is no reasonable likelihood of confusion between the applied for mark and the opponent’s mark GUYS GONE WILD. The fourth ground of opposition is therefore rejected.
[14] With respect to the fifth ground alleging non-distinctiveness, I agree with the applicant’s submission in its written argument that as the opponent has not submitted any evidence to show that the opponent’s marks were known to some extent, at the material date April 14, 2008, or that the applied for mark was not distinctive at the material date, the opponent cannot succeed on the fifth ground. The fifth ground is therefore rejected.
Disposition
[15] The opposition is rejected as each of the grounds of opposition has been rejected. This decision has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act.
___________________
Myer Herzig
Member
Trade-marks Opposition Board