Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2023 TMOB 187

Date of Decision: 2023-11-03

IN THE MATTER OF AN OPPOSITION

Opponent: Twitter, Inc.

Applicant: Storyvine, Inc.

Application: 1850068 for STORYVINE

Introduction

[1] This is an opposition brought by Twitter, Inc. (the Opponent) in respect of application number 1850068 for the trademark STORYVINE (the Mark) filed by Storyvine, Inc. (the Applicant). The application contains the following goods and services (the Applicant’s Goods and Services respectively):

Cl 9 (1) Downloadable software for creating audiovisual presentations.

Cl 42 (1) Providing downloadable software for creating audiovisual presentations via an interactive website; Providing temporary use of online non-downloadable software and rental of computer systems comprised of digital signal processors, audio signal processors, equalizers and video processors for creating audiovisual presentations.

[2] The Opponent bases the opposition on various grounds, including that the Mark is confusing with its registration for the trademark VINE and pending applications for various VINE-formative trademarks, relevant particulars for all of which are contained in Schedule A (collectively, the Opponent’s Trademarks).

[3] For the reasons set out below, I reject the opposition.

The Record

[4] The application for the Mark was filed on July 31, 2017 and was advertised for opposition on December 23, 2020.

[5] On June 23, 2021, the Opponent filed its statement of opposition under section 38 of the Trademarks Act, RSC 1985, c T‑13 as amended June 17, 2019 (the Act). The Opponent bases the opposition on bad faith, non-entitlement to use, non-entitlement to registration, non-distinctiveness, and that the Applicant had not used the Mark as of the filing date and did not propose to use the Mark as of the filing date.

[6] The Applicant filed a counter statement denying the grounds of opposition.

[7] The Opponent did not file evidence.

[8] The Applicant’s evidence consists of a certified copy of the application for the Mark.

[9] Neither party filed written representations and no hearing was held.

Evidential Burden and Legal Onus

[10] In accordance with the usual rules of evidence, there is an 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 (FC)]. 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 admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist [John Labatt at 298].

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

Assessment of The Grounds of Opposition

12(1)(d) – Non-Registrability

[12] The Opponent pleads that the Mark is not registrable as it is confusing with the Opponent’s registered trademark VINE (TMA963595) (the Opponent’s Registered Trademark), full details of which are listed in Schedule A.

[13] The relevant date for this ground of opposition is the date of the Registrar's decision [Park Avenue Furniture Corp v Wickers/Simmons Bedding Ltd, (1991) 37 CPR (3d) 413 (FCA)].

[14] An opponent's initial onus is met with respect to a section 12(1)(d) ground of opposition if the registration relied upon is in good standing as of the date of the opposition decision. I have exercised my discretion to confirm that the registration relied on by the Opponent remains owned by the Opponent and extant [Quaker Oats Co Ltd of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)].

[15] I therefore find that the Opponent has satisfied its evidential burden. I must now assess whether the Applicant has met its legal onus.

The Test for Confusion

[16] 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.

[17] Therefore, section 6(2) of the Act does not concern confusion of the trademarks themselves, but of the goods or services from one source as being from another. The test to be applied is a matter of first impression in the mind of a casual “somewhat in a hurry”, who sees the Mark in association with the applied-for goods at a time when they have no more than an imperfect recollection of the Opponent’s Registered Trademark and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23].

[18] 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]. 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 trademarks, will often have the greatest effect on the confusion analysis.

Degree of Resemblance

[19] The Supreme Court of Canada suggested in Masterpiece that a consideration of the resemblance between the marks is where most confusion analyses should start. If the marks do not resemble each other, it is unlikely that even a strong finding on other factors would lead to a finding that there was a likelihood of confusion. 

[20] When considering the degree of resemblance, the law is clear that the trademarks must be considered in their totality. The appropriate test is not a side-by-side comparison but an imperfect recollection in the mind of a consumer of an opponent’s trademark [Veuve Clicquot, at para 20]. The preferable approach when comparing trademarks is to begin by determining whether there is an aspect of a trademark that is particularly striking or unique [see Masterpiece at para 64].

[21] In the present case, as the Opponent’s Registered Trademark is incorporated in full in the Mark, there is necessarily some degree of resemblance between the trademarks at issue. However, while the Opponent’s Registered Trademark consists solely of a common dictionary word, the Mark is a coined word that combines two common words in an uncommon and unique way.

[22] I am of the view that the trademarks at issue are notably different in appearance given that the Mark is a combination of two words, having three syllables and the different initial element from the Opponent’s Registered Trademark. The trademarks at issue also differ in sound for essentially the same reasons. Finally, I find the idea suggested by the trademarks of the parties to have some similarity given the common VINE element, but are overall distinguishable. The Opponent’s Registered Trademark, being a common dictionary word is suggestive of a tendril or something that winds and grows longer. While the Mark is also suggestive of the same concept, in my view, the Mark as a whole is suggestive of an account, for example, of an occurrence, incident or experience that evolves and grows.

[23] Overall, I am of the view that this factor favours the Applicant.

Length of Time the Trademarks Have Been in Use

[24] Notwithstanding any claims in the Opponent’s registration, there is no evidence of actual use of either party’s trademarks. Accordingly, this factor favours neither party.

Inherent Distinctiveness and Extent Known

[25] In the absence of representations, I will simply note that the Opponent’s Registered Trademark is a common dictionary word, whereas the Mark is, as noted above, a unique combination of two dictionary words. Accordingly, the Mark possesses at least a slightly higher degree of inherent distinctiveness than that of the Opponent’s trademark.

[26] As there is no evidence of acquired distinctiveness of either trademark, overall, this factor favours the Applicant.

Nature of the Goods, Services and Business

[27] When considering this factor in the assessment of confusion, it is the statement of goods and services as defined in the registration relied upon by the Opponent and the statement of goods and services in the application that govern the assessment of the likelihood of confusion [Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)].

[28] Again, in the absence of representations from the Opponent, it is not clear which of the applied-for goods and services it considers to be most overlapping in nature with the goods and services set out in the Opponent’s registration. In any event, while the goods and services of the respective parties are not identical, at a minimum, I consider there to be some overlap between the Applicant’s Goods and Services and the goods and services of the Opponent, reproduced below:

[29] As a result of this potential overlap of the Applicant’s Goods and Services with those of the Opponent, this factor favours the Opponent.

Nature of the Trade

[30] Neither party filed evidence regarding their respective channels of trade. As I have found there is a potential overlap in the goods and services of the parties, it is reasonable to assume that there would also be an overlap in the associated channels of trade. Accordingly, in the absence of any evidence to the contrary, this factor slightly favours the Opponent.

Conclusion

[31] Having regard to the foregoing, I find that the balance of probabilities with respect to the issue of confusion weighs in favour of the Applicant. While there is necessarily some degree of resemblance between the parties' marks given the shared VINE element, I find that the inclusion of the initial STORY element in the Mark significantly impacts the idea suggested by the Mark and that, as a whole, the Mark is notably different in all of idea suggested, appearance, and sound. The Mark also has a higher degree of inherent distinctiveness. While the Opponent is favoured by the factors of the nature of the goods, services, business and nature of trade, I make this conclusion in the absence of any pertinent evidence or compelling representations from either party and consider these factors to only slightly favour the Opponent.

[32] Accordingly, the section 12(1)(d) ground of opposition is rejected.

Section 16 Grounds - Non-entitlement to Registration

[33] The Opponent also pleads grounds of opposition under sections 16(1)(a) and (b), asserting that the Applicant is not the person entitled to registration of the Mark as it is confusing with the Opponent’s Trademarks:

1. which were previously used in Canada; and

2. were previously applied for in Canada.

[34] As there is no evidence of use of the Opponent’s Trademarks in Canada at any time, the Opponent has failed to meet its initial burden for the section 16(1)(a) ground.

[35] With respect to the Opponent’s Registered Trademark, in order to rely on this trademark for this ground, the underlying application must have been pending as of the date of advertisement for the application for the Mark [see Royal Appliance Mfg Co v Iona Appliances Inc, 1990 CanLII 6428, 32 CPR (3d) 525 (TMOB) at 529]. As the Opponent’s Registered Trademark proceeded to registration on February 22, 2017, it was not pending as of the December 23, 2021 date of advertisement for the application for the Mark. Accordingly, the Opponent’s Registered Trademark cannot be relied up for this ground.

[36] As all of the Opponent’s Unregistered Trademarks were filed in June 2019, being nearly two years after the filing date of the application for the Mark, the Opponent also fails to meet its evidential burden for the section 16(1)(b) ground.

[37] The section 16 grounds of opposition are therefore rejected.

Remaining Grounds of Opposition

[38] The remaining grounds of opposition (based on bad faith, non-distinctiveness, non-entitlement to use, non-entitlement to registration, no use/proposed use) required supporting evidence for the Opponent to meet its initial burden; such evidence was not filed in this case. As the Opponent has not met its initial burden with respect to each of the remaining grounds, these grounds are also rejected.

Disposition

[39] 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.

 

_______________________________

Leigh Walters

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Schedule A

The Opponent’s Trademarks

The Opponent’s Registration

Trademark	Application/Registration No.	Filing/ Registration Date	Goods and Services
VINE	1636607/ TMA963595	2013-07-24/ 2017-02-22	Goods (1) Downloadable software in the nature of a mobile application for creating, sharing, disseminating videos, personal and general information for the purposes of social, personal and professional networking; downloadable software in the nature of a mobile application for social and personal networking; downloadable software in the nature of a mobile application for displaying and sharing a user's location. (2) Application programming interface (API) software for allowing data, namely, audio, video, text, binary, still images, graphics and multimedia files, retrieval, upload, access and management; API software for use in building software applications; software applications for advertising and promoting the goods and services of others based on geo-location. (3) Downloadable software in the nature of a mobile application to facilitate online advertising by others and business promotion by others by matching consumers with providers of goods and services; downloadable software to enable uploading, creating, posting, showing, displaying, blogging, sharing and transmitting electronic media, videos or information over the internet and communications networks; Downloadable software in the nature of a mobile application for creating, sharing, disseminating and posting videos, personal and general information for the purposes of social, personal and professional networking; downloadable software in the nature of a mobile application for social and personal networking; downloadable software in the nature of a mobile application for displaying and sharing a user's location. (4) Downloadable software in the nature of a mobile application for creating, sharing, disseminating and posting photos for the purposes of social, personal and professional networking; downloadable software in the nature of a mobile application for displaying and sharing personal preferences and finding, locating, and interacting with other users and places.   Services (1) Advertising and marketing services, namely, advertising the goods and services of others via Internet; online advertising and marketing services for others, namely, delivery of advertisements and promotional information to users and providing non-downloadable software for use in managing promotional and advertising campaigns; business data analysis, namely, gathering, analyzing and reporting digital data, statistical data and information; promotional services, namely, consultation services for the promotion of goods and services of others; operation of a business networking website; online service for connecting social network users with businesses for the purpose of matching consumers with providers of goods and services; business consulting services, namely, providing strategy, insight, and marketing guidance. (2) Telecommunications, namely, providing video on demand transmissions, audio on demand transmissions, email services, text and multimedia messaging services, audio and video transmission services in the fields of general human interest, news, social networking, entertainment, sports, fashion, education, hobbies, recreation, training, celebrity, culture, current events and blogging, as well as to the latest stories, ideas, opinions and news, between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; providing an online community forum for users to share information, audio, videos, text, binary, still images, graphics and multimedia files and digital content to engage in social networking; providing an online platform featuring temporary use of non-downloadable software and cloud hosting services for mobile device communications for users to share information, audio and video content in the fields of general human interest, news, social networking, entertainment, sports, fashion, education, hobbies, recreation, training, celebrity, culture, current events and blogging, as well as to the latest stories, ideas, opinions and news. (3) Providing an online community forum for users to share photos, and to engage in social networking. (4) Providing an interactive website, namely an online platform to facilitate communication between users in the fields of general human interest, news, social networking, entertainment, sports, fashion, education, hobbies, recreation, training, celebrity, culture, current events and blogging, as well as to the latest stories, ideas, opinions, and news; providing a website featuring non-downloadable software in the fields of general human interest, news, social networking, entertainment, sports, fashion, education, hobbies, recreation, training, celebrity, culture, current events and blogging, as well as to the latest stories, ideas, opinions, news and to information of personal interest (educational, entertainment and cultural services); providing temporary use of online non-downloadable software to enable uploading, creating, posting, editing, showing, displaying, blogging, sharing and transmitting of electronic media, videos, or information; providing an online platform that gives users the ability to upload, exchange and share photos and videos in the fields of general human interest, news, social networking, entertainment, sports, fashion, education, hobbies, recreation, training, celebrity, culture, current events and blogging, as well as to the latest stories, ideas, opinions, news and to information of personal interest (educational, entertainment and cultural services). (5) Providing a web hosting platform featuring temporary use of non-downloadable software allowing users to upload, post, display, and share audio, video, text, binary, still images, graphics and multimedia files and digital content in the fields of general human interest, news, social networking, entertainment, sports, fashion, education, hobbies, recreation, training, celebrity, culture, current events and blogging, as well as to the latest stories, ideas, opinions, news and to information of personal interest (educational, entertainment and cultural services); creating an online community for users to engage in social networking. (6) Application service provider featuring application programming interface (API) software for the integration of video, audio and text content applications and third-party software into websites. (7) Online social networking services. (8) Providing a website on the internet for the purpose of social networking.

 

The Opponent’s Applications

Trademark	Application No.	Filing Date
VINE	1967491	2019-06-06
VINEKIDS	1967474	2019-06-06
	1967493	2019-06-06
VINER	1967494	2019-06-06
VINERS	1967495	2019-06-06

 

 

Appearances and Agents of Record

HEARING DATE: No hearing held

AGENTS OF RECORD

For the Opponent: Gowling WLG (Canada) LLP

For the Applicant: Miltons IP/P.I.