Citation: 2020 TMOB 29

Date of Decision: 2020-03-11

IN THE MATTER OF AN OPPOSITION

	Kevin Ramon Johnson	Opponent
and
	David Niketa Holder, also known as Nick Holder	Applicant
	1,792,173 for TRACKHEADZ	Application

Introduction

[1]  Kevin Ramon Johnson (the Opponent) opposes registration of the trademark TRACKHEADZ (the Mark), which is the subject of application No. 1,792,173 by David Niketa Holder, also known as Nick Holder (the Applicant).

[2]  The Mark is applied for in association with the following goods and services:

GOODS

Prerecorded audio tapes featuring music; pre-recorded DVDs containing music

SERVICES

(1) Online sales of downloadable pre-recorded music
(2) Podcasting of music
(3) Operation of a blog in the field of music; operation of a website that provides streaming audio and video such as music, movies, television shows, music videos, news and sports webcasts; organizing music competitions; performances featuring live dance and live music; post-production editing services in the field of music, videos and film; providing weblogs in the field of music.

[3]  The opposition is primarily based on an allegation that the Mark is confusing with the Opponent’s trade name and trademark TRACKHEADZ (the Opponent’s Mark), used in association with the same or similar goods and services.

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

The Record

[5]  The application for the Mark was filed on July 19, 2016 on the basis of use in Canada since September 30, 1997.

[6]  The application was advertised for opposition purposes on April 12, 2017. Numerous amendments to the Trademarks Act, RSC 1985, c T-13 (the Act) came into force on June 17, 2019.  As the application was advertised prior to such amendments, pursuant to section 70 of the Act, the grounds of opposition will be assessed based on the Act as it read immediately before June 17, 2019.

[7]  The Opponent opposed the application on September 5, 2017, by filing a statement of opposition under section 38 of the Act. The grounds of opposition set out in the statement were based on sections 30(a), 30(b), 30(i), 12(1)(e), 16(1)(a), 16(1)(c) and 2 of the Act.   

[8]  The Applicant filed a counter statement on January 15, 2018, denying each of the grounds of opposition and requesting an interlocutory ruling on the sufficiency of the pleadings.  An interlocutory ruling striking the section 30(a) and section 12(1)(e) grounds of opposition issued on February 28, 2018.  Subsequently, the Opponent was granted leave to amend the statement of opposition to remove the struck grounds and to voluntarily clarify the alleged date of first use of the Opponent’s Trademark.  The remaining grounds of opposition are addressed below.

[9]  In support of his opposition, the Opponent filed his own affidavit, sworn March 15, 2018 in Toronto, Ontario [the Johnson Affidavit].  Mr. Johnson was not cross-examined on his affidavit.  The Applicant did not file evidence. 

[10]  On June 16, 2018, the Opponent attempted to submit a second affidavit as reply evidence.  By way of correspondence dated June 26, 2018, the Registrar confirmed that, as the applicant had not submitted any evidence, this second affidavit could not be considered as reply evidence and therefore had not been made of record.  The Opponent was invited to consider requesting leave to file additional evidence under section 44 of the Trademarks Regulations, as it then was.  As no such request for leave was made, I confirm that this second affidavit from the Opponent was not made of record and has not been considered for purposes of this decision.

[11]  On July 19, 2018, the Applicant filed an amended application, clarifying and amending the applicant’s name from “David Holder” to “David Niketa Holder, also known as Nick Holder”. 

[12]  Both parties filed written representations.  Neither party requested an oral hearing. 

[13]  Before assessing the remaining grounds of opposition, I will first provide an overview of the Opponent’s evidence (including a brief comment on the scope of the Opponent’s written representations), the evidential burden on the Opponent, and the legal onus on the Applicant.

The Opponent’s Evidence and Representations

[14]  The Johnson Affidavit is brief and can be summarized as follows:

·  The Opponent is the owner of “the Independent Music Artist and Record Label TRACKHEADZ” [para 2]. 

·  The Opponent owns the website trackheadz.ca [para 3, Exhibit B].  Attached as Exhibit A is the website’s contact information page, showing the Opponent’s email address as “kage@trackheadz.com”. 

·  The Opponent owns the TRACKHEADZ blog/audio podcast, available on Apple Music and iTunes [para 4, Exhibit C].  Exhibits C and D are webpage printouts from itunes.apple.com.  Exhibit C is a printout of the “Trackheadz on Apple Music” page, which includes links to various TRACKHEADZ “Albums” from 2015 to 2017.  Exhibit D is a printout of an “iTunes Preview” page showing a description of the “Trackheadz” audio podcast.

·  Mr. Johnson states that he commenced use of the Opponent’s Trademark on November 1, 1999 [para 5].  In support, attached as Exhibit E to his affidavit is a Certificate of Registration from the United States Copyright Office for the work “Take Me 2 Paradise (Kaje 1999 Remix)”, which shows the “Date of 1st Publication” as November 1, 1999.  The term “Trackheadz” appears on the certificate as a “Pseudonym” under the “Author” heading and as an “Organization Name” under the “Rights and Permissions” heading.

·  Mr. Johnson indicates that he conducted an online search for the Applicant and found that the online download site Traxsource shows that the Applicant is the owner of DNH Records [para 6].  A printout of the “Nick Holder” profile page from www.traxsource.com is attached as Exhibit F to his affidavit.  I note that Mr. Holder’s profile includes the following: “Upcoming in 2016, look out for numerous releases on his label DNH under both Holder’s own name, as well as his Trackheadz alias.”  

[15]  At this point, I note that, in his written representations, the Opponent alleges certain facts not in evidence as well as certain facts that do not appear to be relevant to any of the pleaded grounds of opposition.  Many of these allegations appear to relate to the Opponent’s submission that the Mark “is clearly descriptive or deceptively misdescriptive of the character and quality of its goods and services and should be available to all traders associated with music products” [para 22].  As the Opponent has not pleaded a ground of opposition based on section 12(1)(b) of the Act, I do not consider such allegations and submissions relevant to this proceeding.  

[16]  Nevertheless, where appropriate, I will address some of the Opponent’s allegations below in my analysis of the pleaded grounds of opposition. 

Evidential Burden and Legal Onus

[17]  In accordance with the usual rules of evidence, there is an initial evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition [John Labatt Ltd v Molson Companies Ltd, 1990 CarswellNat 1053, 30 CPR (3d) 293 (FCTD) at para 11]. The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.

[18]  For those allegations for which the opponent has met its initial evidential burden, the legal onus is on the applicant to show that the application does not contravene the provisions of the Act as alleged by the opponent in the statement of opposition. The presence of a legal onus on an applicant means that, if a determinate conclusion cannot be reached once all the evidence has been considered, then the issue must be decided against the applicant.

Analysis – Section 30(b) Ground

[19]  In his amended statement of opposition, the Opponent pleads that, pursuant to section 38(2)(a) and contrary to section 30(b) of the Act, the Mark has not been used in Canada since the claimed date of first use, September 30, 1997, in association with the applied-for goods and services.

[20]  The relevant date for considering the circumstances with respect to this ground of opposition is the filing date of the application, namely, July 19, 2016 [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB)]. To the extent that the relevant facts pertaining to a ground of opposition based on section 30(b) of the Act are more readily available to the applicant, the evidentiary burden on an opponent with respect to such a ground of opposition is not onerous [Tune Master v Mr P’s Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB)]. Furthermore, this burden can be met by reference not only to the opponent’s evidence but also to the applicant’s evidence [see Labatt Brewing Company Limited v Molson Breweries, a Partnership (1996), 68 CPR (3d) 216 (FCTD)].

[21]  However, while an opponent is entitled to rely on the applicant’s evidence to meet its evidentiary burden, the applicant is under no obligation to evidence its claimed date of first use if this date is not first put into issue by an opponent meeting its evidentiary burden.

[22]  In this case, in view of the opponent’s evidence of record summarized above, in my view, the Opponent has not met its initial evidentiary burden with respect to this ground.  In this respect, nothing in the exhibited Applicant’s Artist Profile page (Exhibit F) contradicts the claimed date of first use and the Opponent’s evidence otherwise does not address the Applicant’s use of the Mark. 

[23]  I note that, in his written representations, the Opponent alleges that it is “impossible for the Applicant to have offered mp3’s using [the Mark] from September 1997” as “Mp3’s did not exist for sale in Canada until the opening of iTunes on April 28, 2003”.  Presumably, the Opponent provides this information to counter the claimed date of first use with respect to the services “Online sales of downloadable pre-recorded music”.  However, the Opponent furnished no evidence in support of this assertion and I am not prepared to take judicial notice that this was the case.  In any event, the applied-for services do not reference and are not limited to that particular format of “downloadable pre-recorded music”.

[24]  In view of the foregoing, the ground of opposition based on section 30(b) of the Act is rejected.

Analysis – Section 30(i) Ground

[25]  In his amended statement of opposition, the Opponent pleads that, pursuant to section 38(2)(a) and contrary to section 30(i) of the Act, the Applicant could not have been satisfied that it was entitled to use the Mark in Canada “as it would violate section 7(b) of the Act”.  In this respect, the Opponent further pleads that the Applicant “directed attention to its goods and services in the same general classes as Opponent’s TRACKHEADZ Marks to cause confusion or likely cause confusion with Opponent’s already commercially recognized Marks in Canada.”

[26]  Section 7(b) of the Act states that:

7. Prohibitions – No person shall …
(b) direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services, or business and the goods, services or business of another …

[27]  Section 30(i) of the Act merely requires that an applicant include a statement in its application that it is satisfied that it is entitled to registration of its trademark. Where this statement has been provided, a section 30(i) ground should only succeed in exceptional cases, such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co Ltd v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB)]. Mere knowledge of the existence of an opponent’s trademark or tradename does not in and of itself support an allegation that an applicant could not have been satisfied of its entitlement to use its mark [Woot, Inc v WootRestaurants Inc, 2012 TMOB 197].

[28]  It is far from certain that the combination of section 30(i) with section 7(b) of the Act constitutes a valid ground of opposition [see Align Technology, Inc v Osstemimplant Co, Ltd, 2019 TMOB 101 at para 32, citing Euromed Restaurant Limited v Trilogy Properties Corporation, 2012 TMOB 19 at para 13 and Parmalat Canada Inc v Sysco Corp, 2008 FC 1104, 69 CPR (4th) 349 (FC) at paras 38-42].  In any event, as stated by the Federal Court, a party must prove possession of a valid and enforceable trademark in addition to the three necessary components of a passing-off action: i) the existence of goodwill; b) deception of the public due to a misrepresentation; and iii) actual or potential damage [Pharmacommunications Holdings Inc v Avencia International Inc, 2008 FC 828 at para 41, citing Ciba-Geigy Canada Ltd v Apotex Inc [1992], 3 SCR 120 (SCC) at para 33].  At a minimum, I agree with the Applicant that the Opponent has not adduced evidence in support of any of the three necessary components of a passing-off action. 

[29]  In view of the foregoing, the ground of opposition based on section 30(i) of the Act is rejected.

Analysis – Section 16 Grounds – Non-Entitlement

[30]  In his amended statement of opposition, the Opponent pleads that, pursuant to sections 38(2)(c), 16(1)(a) and 16(1)(c) of the Act, the Applicant is not the person entitled to registration of the Mark since at the date which the Mark was first used or made known it was confusing with i) the Opponent’s Trademark that had been previously used in Canada by the Opponent in association with the same or similar goods and services and ii) the Opponent’s trade name that had been previously used in Canada in association with the same or similar goods and services.

[31]  In order to meet its initial burden under these grounds, the Opponent was required to show that it had used or made known its trademark or trade name in Canada prior to the claimed date of first use set out in the application for the Mark, namely September 30, 1997.  Furthermore, the Opponent was required to establish non-abandonment of its trademark as of the date of advertisement of the subject application for the Mark, namely April 12, 2017.

[32]  However, as noted by the Applicant, in the amended statement of opposition, the Opponent actually claims a later date of first use of the Opponent’s Trademark, namely, November 1, 1999.  Indeed, the earliest date referenced in the Opponent’s evidence is this November 1, 1999 date, which appears on the U.S. copyright certificate at Exhibit E to the Johnson Affidavit.  Nothing in the evidence establishes any activities by the Opponent in association with the Opponent’s Trademark, his TRACKHEADZ trade name, or otherwise prior to the material date of September 30, 1997. 

[33]  In view of the foregoing, I cannot find that the Opponent has met its initial burden with respect to these grounds. As the Opponent has failed to meet its burden, I reject the grounds of opposition based on non-entitlement.

Analysis - Section 2 Ground – Non-Distinctiveness

[34]  In its statement of opposition, the Opponent pleads that, pursuant to sections 38(2)(d) and 2 of the Act, the Mark is not distinctive because it does not distinguish, nor is it adapted to distinguish, the Applicant’s applied-for goods and services from the same or similar goods and services associated with the Opponent’s Trademark.  In this respect, the Opponent further pleads that it has established goodwill in its trademark and that it has become well known in Canada in association with such same or similar goods and services.

[35]  The material date for this ground of opposition is the filing date of the opposition, namely, September 5, 2017 [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185, 34 CPR (4th) 317 at para 25].  With respect to an opponent’s initial evidentiary burden for a ground of this nature, its trademark “must be known to some extent at least to negate the established distinctiveness of another mark, and its reputation in Canada should be substantial, significant or sufficient” [Bojangles International LLC v Bojangles Café Ltd, 2006 FC 657 at para 34; see also Sadhu Singh Hamdard Trust v Navsun Holdings Ltd, 2019 FCA 10 at para 4].

[36]  In this case, even if I were to infer from the Opponent’s evidence that the Opponent’s Trademark had been used in Canada, I agree with the Applicant that it is not clear as to what extent the Opponent’s Trademark had become known as of the material date.  In this respect, the evidence with respect to the Opponent’s website, blogs/podcasts and U.S. copyright registration merely indicates their existence, not the extent to which the Canadian public has been exposed to the Opponent’s Trademark or even the Opponent’s business generally.  Indeed, as submitted by the Applicant in its written representations, “There is no evidence that [the Opponent’s Trademark] has ever been seen by the public, let alone in Canada, nor the extent to which it might have been seen by the public in Canada, if any” [at para 69].

[37]  Instead, one is left to speculate as to whether “sufficient knowledge” of the Opponent’s Trademark was present as of the material date; the Federal Court has indicated that such speculation should be resisted [1648074 Ontario Inc v Akbar Brothers (Pvt) Ltd, 2019 FC 1305 at para 53].  Accordingly, I do not find that the Opponent has met its initial burden with respect to this ground.

[38]  As the Opponent has not met its burden, I reject the ground of opposition based on non-distinctiveness.

Disposition

[39]  In view of all of the foregoing and 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.

Andrew Bene

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

 

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: No hearing held

AGENTS OF RECORD

No agent appointed	For the Opponent
OLLIP P.C.	For the Applicant