Digests

ITV Technologies, Inc. v. Wic television Ltd.

T-1459-97

2003 FC 1056, Tremblay-Lamer J.

10/9/03

70 pp.

Action springs from use of letters "ITV" by plaintiff in corporate name, business name and in domain name for web site, despite objections of defendant, which has several trade-marks registered incorporating initials "ITV"--Plaintiff, defendant by counterclaim, ITV Technologies Inc., (ITV) corporation with office in Vancouver, British Columbia-- Since November 21, 1995, operating Internet-based business with name ITV.net and web address www.itv.net--On web site, ITV archives variety of video footage, and transmits video and audio from live events over Internet in accordance with selections of Internet users accessing web site with their computers--Defendant, plaintiff by counterclaim, WIC Television Ltd., (WIC) corporation with office in Vancouver --Business of television broadcasting, program production and multi-media communications--WIC registered owner of following trademarks: (1) in 1983, trade-mark no. TMA 286,066 "ITV & Design" used in association with wares of films, video disks and cassettes, records, video tapes and audiotapes and services of television programs, radio programs, cable television and animation production; (2) In 1996, trade-mark no. TMA 467,002 for initials "ITV" used in association with operation of television station; (3) In 1998, trade-mark no. TMA 490,009 "ITV & Design" used in association with television broadcasting services--Under provisions of Broadcasting Act, WIC licensee of television station, CITV, Edmonton, which has carried on business since 1974 under name "ITV"--Since January 20, 1995, WIC operates Internet web site with domain name "itv.ca" communicating news, weather, and financial and entertainment information--In July 1997, ITV commenced action in Federal Court seeking to have WIC's trade-marks expunged on grounds trade-marks not registrable and no longer distinctive of WIC's wares and services--On October 24, 1997, WIC filed statement of defence and counterclaim, and brought motion for interim injunction--In counterclaim, WIC sues ITV for passing off contrary to Trade-marks Act, s. 7(b), for trade-mark infringement contrary to Act, s. 20, and for depreciation of goodwill attached to registered trade-marks, contrary to Act, s. 22--On November 25, 1997, WIC obtained interim injunction resulting in www.itv.net web site being turned off--Injunction terminated at further hearing three weeks later on basis WIC could not show irreparable harm--In 2000, WIC sold ITV business and trade-marks to Global--In September 2000, ITV became Global Edmonton and Global abandoned ITV trade-marks--As such, this action limited to period prior to September 2000--ITV seeks to expunge WIC's trade-marks on grounds they were not registrable at date of registration, and that they were not distinctive at time proceedings bringing validity of registration into question commenced pursuant to Act, s. 18(1)(a) and (b) --ITV relies on Act, s. 12(1)(b), (c), (e) and s. 10--S. 18(1)(a) provides determination of whether trade-mark registrable to be assessed as of date of registration of mark-- With regard to ITV's first ground, in order for mark to be clearly descriptive, it must be more than merely suggestive of character or quality of wares or services in association with which mark used or proposed to be used--In case at bar, whether as matter of immediate or first impression, ordinary user would find mark "ITV" clearly descriptive of wares or services offered by WIC--Mark "ITV" does not go to material composition and does not refer to intrinsic quality of these wares or services--Furthermore, evidence demonstrates letters "ITV" used to represent different meanings, such as independent television, interactive television, Internet television and instructional television--Fact letters "ITV" can represent different meanings another indication marks of WIC not clearly descriptive of wares or services--Ordinary, everyday user upon seeing expression "independent television", would not as matter of immediate and first impression find that it clearly describes wares such as films and records or services such as operation of television station --To be unregistrable, marks at issue would have had to clearly describe WIC's wares or services, through words such as "broadcasting station"--For all these reasons, ITV's allegation marks at issue not registrable as they are clearly descriptive of WIC's wares or services not supported by evidence--With regard to ITV's second ground, Federal Court has determined test under s. 12(1)(c) narrower than on use of descriptive terms (Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161 (F.C.T.D.))--Mark as whole must clearly be name of wares or services based on immediate and first impression of everyday user of registrant's wares or services--If mark "ITV" capable of representing various terms, such as Internet television, interactive television, instructional television or independent television, then "ITV" cannot be name of WIC's wares or services--ITV's claim WIC's marks not registrable as they are names of wares or services in connection with which they are used, contrary to s. 12(1)(c), also not supported by evidence--ITV's third ground with respect to registrability based on ss. 12(1)(e), 10 --Pursuant to s. 10, mark may become prohibited mark if as result of ordinary and bona fide commercial usage, mark has become recognized in Canada as designating kind, quality, destination, value, place of origin or date of production of any wares or services--Statutory prohibition requires use of mark in question be in Canada and mark must have been commonly used in Canada at relevant time as designating aspect of wares or services subject of mark--Relevant date for determining ordinary and bona fide commercial usage of mark at issue for purposes of s. 10 date when applicant first started using trade-mark--Based on evidence, term "ITV" not com-monly used and recognized in Canada as designating kind, quality, value, place of origin of above wares and services at relevant dates of adoption--As such, none of WIC's trade-marks were marks prohibited by s. 10-- Therefore, WIC's trade-marks registrable as not falling within exceptions in s. 12(1)(b), (c), (e) and s. 10--ITV further argues trade-marks of WIC should be expunged on ground not distinctive at time proceedings bringing validity of registration into question commenced-- Relevant date July 4, 1997--WIC's "ITV" trade-marks used on screen, on vehicles, in connection with community activities, conventions, sales presentations, newspaper, radio, transit, billboards, commercial sales material and stationery-- Based on evidence, WIC's "ITV" trade-marks well known and distinctive of broadcasting services, particularly in province of Alberta--Therefore, ITV's argument WIC's trade-marks should be expunged on ground not distinctive not supported by evidence--Claim of ITV Technologies Inc. dismissed--In counterclaim, WIC sues ITV for passing off, for trade-mark infringement and for depreciation of goodwill attached to registered trade-marks--Concerning first item listed in Act, s. 6(5), inherent distinctiveness of mark refers to originality-- In present case, WIC's registration for word mark "ITV" possesses little inherent distinctiveness and will be considered weak mark--Where mark does not have inherent distinctiveness, it may still acquire distinctiveness through continued use in marketplace--In case at bar, although WIC's "ITV" word mark weak, has acquired certain degree of inherent distinctiveness--Evidence establishes WIC's "ITV" word mark well known, particularly in province of Alberta, due to widespread advertising--Evidence also establishes WIC's "ITV" marks well known in association with operation of Edmonton-based television station--Evidence demonstrates majority of WIC's advertising in relation to broadcasting services--But evidence did not establish WIC's marks known in relation to web site and Internet--Regarding length of time in use, trade-mark newly adopted or registered only recently may be presumed not to have received wide public acceptance --On other hand, mark used for long time presumed to have made certain impression amongst consumers which must be given some weight--Evidence establishes WIC has used "ITV" word mark since September 1974 and ITV Design marks since August 1982 and July 1994--On other hand, ITV has used "ITV" marks since November 1995--Accordingly, this factor favours WIC--As to nature of wares, services or business, similarity in wares or services cannot be sine qua non in determination of confusion, as s. 6(5) dictates confusion may result "whether or not wares or services same general class"--However, ultimate test confusion, and where one product does not suggest other, strong indication confusion unlikely--Although broadcasting and web casting related in that they both provide audio-video content to mass audience, ordinary person at relevant date would have been able to grasp differences between broadcasting and web casting--For these reasons, broadcas-ting and web casting different and as such, services of ITV and WIC not similar-- As to nature of trade, services of ITV and WIC provided through two different mediums--WIC's broadcasting provided through television set, ITV's web casting service provided through Internet on computer--This reduces likelihood of confusion--Services of two parties provided in different geographical locations--Although ITV broadcast throughout Canada, majority of viewership from Alberta--By contrast, ITV had international presence, where it received recognition for web cast of such events as Olympics in Atlanta, the Cannes Film Festival, and the Grammy Awards-- This also reduces likelihood of confusion--Last factor for consideration similarity of two trade-marks in their appearan-ce, sound and idea suggested--With regard to WIC's design trade-marks, little similarity between these marks and ITV's mark--Style of lettering, colouring and appearance of WIC's marks completely different from ITV's design mark--Based on evidence, design trade-marks of WIC and design mark of ITV not similar--Next question to determine degree of resemblance between use by ITV and WIC of letters "ITV" as word mark--ITV has used mark "ITV" in corporate name ITV Technologies Inc., in business name ITV.net, and as domain name for www.itv.net web site--While letters "ITV" dominant feature of above marks, word Technologies and suffix.net sufficient to distinguish marks of ITV with those of WIC--In case at bar, ITV adduced evidence there were numerous web sites at relevant date with prefix "ITV"-- This indicates many businesses and entities were using letters "ITV" for identification purposes and therefore, WIC should not have been entitled to all domain names with prefix "ITV" --In addition to five factors to take into account when determining likelihood of confusion, Act directs Court to consider all surrounding circumstances-- One important circumstance which has been considered by Courts evidence of actual confusion--Expert evidence of confusion given little weight--Having considered and weighed all surrounding circumstances in addition to factors enumerated in s. 6(5), ITV's use of "ITV" marks not confusing with WIC's registered marks--Thus, no infringement of s. 20--WIC further argues ITV's use of "ITV" marks has depreciated value of goodwill attached to WIC's registered trade-marks, contrary to s. 22--In case at bar, ordinary consumer, upon seeing ITV's business name ITV.net or corporate name ITV Technologies Inc. or web site www.itv.net, would not immediately make connection with WIC, in light of evidence demonstrating numerous organizations using ITV acronym for identification purposes--Without this connection, it cannot be said WIC's goodwill has been diminished--Use of trade-mark must also have effect of depreciating goodwill attached to registered trade-mark--In case at bar, even assuming ordinary consumer believed ITV affiliated with WIC, this would not depreciate value of WIC's "ITV" marks--Evidence demons-trates ITV one of pioneers and innovators in field of web casting--ITV's reputation so reputable WIC even asked to collaborate with ITV for Investor's On-line Show-- Therefore, even if ordinary consumer had been under impression ITV and WIC related, he or she would not have had negative impression of WIC based on ITV's business and web site--Regarding passing off, WIC argues ITV's use of mark "ITV" infringes s. 7(b)--S. 7(b) statutory enactment of common law action of classic passing off--In order to succeed, plaintiff must establish three elements: (1) existence of goodwill; (2) deception of public due to misrepresentation; and (3) actual or potential damage to plaintiff--In case at bar, while evidence demonstrates WIC's trade-marks have acquired goodwill in relation to Edmonton-based television station, evidence not supporting finding that there has been deception of public due to misrepresentation--In addition, ITV's marks not confusing with those of WIC--As deception of public due to misrepresentation essential component to action of passing off, WIC cannot succeed with claim--As such, ITV's use of "ITV" marks does not infringe s. 7(b)-- Counterclaim of defendant WIC Television Ltd. dismissed-- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 7(b), 10, 12 (as am. by S.C. 1994, c. 47, s. 193), 18, 20 (as am. idem, s. 196), 22, 57(1)--Broadcasting Act, S.C. 1991, c. 11.