ITV Technologies Inc. v. WIC Television Ltd.

ITV Technologies Inc. v. WIC Television Ltd.
Court (s) Database
Federal Court Decisions
Date
2003-09-10
Neutral citation
2003 FC 1056
File numbers
T-1459-97
Notes
Digest
Decision Content
Date: 20030910
Docket: T-1459-97
Citation: 2003 FC 1056
Ottawa, Ontario, September 10, 2003
Present: The Honourable Madam Justice Tremblay-Lamer
BETWEEN:
ITV TECHNOLOGIES, INC.
Plaintiff
AND
WIC TELEVISION LTD.
Defendant
AND:
WIC TV AMALCO INC. and
GLOBAL COMMUNICATIONS LIMITED
Plaintiffs by Counterclaim
AND
ITV TECHNOLOGIES, INC.
Defendant by Counterclaim
REASONS FOR ORDER AND ORDER
[1] This action springs from the use of the letters ITV by the plaintiff in its corporate name, business name and in the domain name for its web site, despite the objections of the defendant, which has several trade-marks registered incorporating the initials ITV.
[2] The plaintiff, defendant by counterclaim, ITV Technologies Inc., (hereinafter "ITV Technologies") is a corporation with an office in Vancouver, British Columbia. Since November 21, 1995, it operates an Internet based business with the name ITV.net and the web address www.itv.net. On this web site, it archives a variety of video footage, and transmits video and audio from live events over the Internet in accordance with the selections of the Internet users who access its web site with their computers.
[3] The defendant, plaintiff by counterclaim, WIC Television Ltd., (hereinafter "WIC") is a corporation with an office in Vancouver, British Columbia. It is in the business of television broadcasting, program production and multi-media communications.
[4] WIC is the registered owner of the following trademarks:
a) Trade-mark no. TMA 286,066 "ITV & DESIGN" which has been used since August 19, 1982, and which was registered on December 23, 1983, in association with the wares of films, video disks and cassettes, records, video tapes and audiotapes and the services of television programs, radio programs, cable television and animation production.
b) Trade-mark no. TMA 467,002 for the initials "ITV" which has been used since September 1, 1974 in association with the operation of a television station, and which was registered on December 3, 1996.
c) Trade-mark no. TMA 490,009 "ITV & DESIGN" which has been used since July 1, 1994 in association with television broadcasting services and which was registered on February 17, 1998.
[5] Under the provisions of the Broadcasting Act, WIC is the licensee of the television station, CITV, Edmonton, which has carried on business since 1974 under the name "ITV".
[6] Since January 20, 1995, WIC operates an Internet web site with the domain name "itv.ca". On its www.itv.ca web site, WIC communicates news, weather, and financial and entertainment information.
[7] In late 1996, WIC discovered the existence of ITV Technologies and its web site. WIC attempted to have ITV Technologies stop using the mark ITV. WIC's lawyer sent correspondence to ITV Technologies asking it to stop using the mark ITV in its corporate name and domain name. WIC also wrote Network Solutions Inc. ("NSI"), the United States company which grants Internet top-level domain names. Pursuant to NSI's formal dispute resolution policy, ITV Technologies agreed to adopt a new domain name, "eyetv.net". In July 1997, ITV Technologies changed its mind and commenced this action in the Federal Court.
[8] ITV Technologies filed its statement of claim on July 4, 1997. In its claim, ITV Technologies seeks to have WIC's trade-marks expunged on the grounds that they were not registrable and are no longer distinctive of WIC's wares and services.
[9] On October 24, 1997, WIC filed a statement of defence and counterclaim, and brought a motion for an interim injunction. In its counterclaim, WIC sues ITV Technologies for passing off contrary to subsection 7(b) of the Act, for trade-mark infringement contrary to section 20 of the Act, and for depreciation of the goodwill attached to its registered trade-marks, contrary to section 22 of the Act.
[10] On November 25, 1997, WIC obtained an interim court injunction that resulted in the www.itv.net web site being turned off. The injunction was terminated at a further hearing three weeks later on the basis that WIC could not show irreparable harm.
[11] In 2000, WIC sold the ITV business and trade-marks to Global. In September 2000, ITV became Global Edmonton and Global abandoned the ITV trade-marks. As such, this action will be limited to the period prior to September 2000.
ANALYSIS
A. PRELIMINARY MATTERS
i) The Use of the Internet at Trial
[12] Access to the Internet was sought by ITV Technologies for the purpose of performing demonstrations at trial, for cross-examining witnesses, and for retrieving electronic versions of documents for use at trial. This was objected to by WIC which argued that the documents on the Internet constituted hearsay and were inadmissible for the truth of their contents. While I agree with WIC that the documents were inadmissible for the truth of their contents, I allowed under reserve the use of the Internet where the documents being retrieved had been produced at discovery.
[13] In my view, when considering the contents of a web site, the original is found on the Internet and provides better evidence than a print copy. The Court was able to see the documents as they existed on the Internet, and could witness such features as hyperlinking and interactive streaming that could not have been realistically reproduced on paper.
[14] There was the initial concern that the documents being retrieved on the Internet at trial would not be an accurate representation of how they appeared at the relevant time period. Given that web sites are continually changing and evolving, a web site which appears on the Internet today would not necessarily look the same as it did for example, in 1997. In order to look into the past, both parties relied on the web site www.archive.org, which contains a digital library of Internet web sites. By using the Way Back Machine, the parties were able to access the web sites as they had existed at the relevant time period. I am satisfied that this web site is reliable, and that the Court could rely on its digital library for an accurate representation of the web sites at the relevant time period.
[15] Overall, I am of the view that the use of the Internet at trial was beneficial and on several occasions, provided evidence which could not have otherwise been before the Court. For example, the Internet was used by counsel for WIC to confirm that the print copy of the meta tags (key information on a web site) was in conformity with the information found on ITV Technologies' web site. This would not have been possible without access to the Internet.
[16] With regard to the reliability of the Internet, I accept that in general, official web sites, which are developed and maintained by the organization itself, will provide more reliable information than unofficial web sites, which contain information about the organization but which are maintained by private persons or businesses.
[17] In my opinion, official web sites of well-known organisations can provide reliable information that would be admissible as evidence, the same way the Court can rely on Carswell or C.C.C. for the publication of Court decisions without asking for a certified copy of what is published by the editor. For example, it is evident that the official web site of the Supreme Court of Canada will provide an accurate version of the decisions of the Court.
[18] As for unofficial web sites, I accept Mr. Carroll's opinion that the reliability of the information obtained from an unofficial web site will depend on various factors which include careful assessment of its sources, independent corroboration, consideration as to whether it might have been modified from what was originally available and assessment of the objectivity of the person placing the information on-line. When these factors cannot be ascertained, little or no weight should be given to the information obtained from an unofficial web site.
ii) Admissibility of ITV Technologies' documentary evidence
[19] ITV Technologies submitted documentary evidence in the form of copies of magazines and dictionaries, as well as print-outs from on-line dictionaries and library searches. In this printed material, the letters ITV were used to represent various meanings, such as instructional television, interactive television, Internet television, industrial television, and independent television.
[20] WIC objected to the admissibility of most of the printed material filed by ITV Technologies on the grounds that the documents were hearsay, and the copies were not certified. It is true that certified copies were not produced and the traditional best evidence rule could be applied to exclude the admission of such copies. However, the fact that modern technology has enabled copies to be accurately made has diminished the importance of the best evidence rule. As stated in Sopinka, Lederman and Bryant, "The Law of Evidence in Canada", 2nd Ed. (1999) at pages 1013-1014:
[...] in the age of photocopies, computer print-outs, facsimile transmissions and video cassettes, it may be a subtle question which document is the original. Also, the rules of evidence should reflect the practices of modern society. In R. V. Governor of Pentonville Prison, ex Parte Osman, Lloyd L.J. said:
... this court would be more than happy to say goodbye to the best evidence rule. We accept that it served an important purpose in the days of parchment and quill pens. But since the invention of carbon paper and, still more, the photocopier and the telefacsimile machine, that purpose has largely gone. Where there is an allegation of forgery the court will obviously attach little, if any, weight to anything other than the original; so also if the copy produced in court is illegible. But to maintain a general exclusionary rule for these limited purposes is, in our view, hardly justifiable.
The modern common law, statutory provisions, rules of practice and modern technology, have rendered the rule obsolete in most cases and the question is one of weight and not admissibility.
[21] Thus, I find that the copies of magazines, dictionaries and other material of the same sort are admissible, not to prove the truth of the contents, but as evidence that the letters ITV were capable of various meanings at different time periods. However, their admissibility does not establish that anyone in Canada read any of these documents nor that the general public would have known what the term ITV meant at the relevant time period.
[22] With respect to ITV Technologies' Internet search results showing a large number of web sites utilizing the term ITV, again, I am of the opinion that the mere existence of these web sites does not establish that they were accessed or that they were known by Canadians at the relevant time period.
B. SUMMARY OF EVIDENCE
Evidence for the Plaintiff
[23] Ms. Julie Zilber, a university research associate, faculty researcher and co-director of Seventh Floor Media at Simon Fraser University, was qualified as an expert in multimedia and interactive television research and developments.
[24] Ms. Zilber testified that the term ITV could be used to represent interactive television or Internet television. She first became aware of the term ITV used in this context in late 1994 or early 1995. The acronym ITV was adopted because it is shorter than "interactive television" or "Internet television". At the core of the concept of ITV was the ability to do more than a normal broadcast. While a normal broadcast meant that the viewer would watch the video passively, ITV entitled the viewer to "interact" with the video, with features such as streaming on demand, pausing, rewinding, multiple selections, multiple split or virtual browser screens with different content, links to related sites, program guides, alternative commentaries, and viewer feedback.
[25] She visited the web site www.itv.net and found that it listed a variety of video content that was dated as early as 1997 and as late as 2001. This site would have been an example in 1995 or 1997 of an interactive and Internet television web site that provided television-like content to personal computers connected on the Internet.
[26] She found it hard to believe that any organization involved in television would claim exclusive rights to the letters ITV as those letters have been used extensively to mean interactive television and Internet television in Canada, in the United States and on the Internet since at least as early as 1995. ITV is a generic term of which everyone in the industry, including TV production companies, broadcasters, cable companies, and Internet companies, would equate with either Internet television or interactive television.
[27] In cross-examination, Ms. Zilber admitted that ITV could have a different meaning, depending on the context in which the term was being used. The meaning of interactive television and Internet television also depended on the type of project or industry the person was engaged in, and the context in which these terms were being used.
[28] William Mutual is the president of ITV Technologies. In 1994, he engaged in an intensive study of telecommunications technologies, and decided that the transmission of multimedia on the Internet would be a viable business opportunity. In 1995, he registered the domain name "itv.net" and the domain name "internexperts.com". He incorporated the company Internexperts, which was changed a year later to ITV Technologies Inc. He decided to change the company's name because ITV had become associated with Internet television, interactive television and instructional television, all areas which he felt were exactly germane to the activities and the business propositions which he wanted to profit from. It was also closely in line with the domain name "itv.net."
[29] He first heard of the term ITV in the early 1990s from Byte magazine. He became aware of the ITV movement in 1994 and 1995, where an enormous amount of money was being invested to bring ITV into the business environment. The only other use of the term ITV of which he was aware was a United Kingdom based programming station that listed the letters ITV after each program.
[30] ITV Technologies started out in the business of transmitting multimedia on the Internet, which is often referred to as net casting, web casting or cyber casting.
[31] Internet streaming, the transmission of files in real time, is very different than a traditional television or audio broadcast. A television station transmission has a licence, has a specific frequency or channel, and is allowed to transmit to a specific footprint. All the viewers watch the program through the same signal, which is being broadcast. By contrast, with Internet streaming, every person who watches an Internet stream gets his or her own signal, and viewers have to specifically request for a particular stream. Furthermore, while a television broadcaster pays the same amount of money regardless of how many people watch a broadcast, an Internet streaming company such as ITV Technologies has to pay for every single piece of band width that it transmits. Therefore, it is more expensive for a web casting company if more people watch a particular web cast.
[32] ITV Technologies' ability to obtain a .net domain name illustrated its networking capabilities. Mr. Mutual explained that .net domain names were by regulation, specified for large network infrastructure providers, and his company was able to meet the requirements in 1995.
[33] In June 1997, Mr. Mutual attended the Banff TV and film festival where he spoke to many broadcasters. There was never any confusion from any of the broadcasters between Internet and television; they all understood that the Internet was a different domain than televison. At the festival, he spoke with Mr. McDonald, the CEO of WIC, who did not at any time indicate that he thought ITV Technologies was associated with WIC. He also met Terry DeBono, who suggested an idea that would later become the Investors On-line show.
[34] The Investors On-line show was a financial information program that was transmitted every Saturday morning on the WIC television network. The program was also simulcast on the Internet. ITV Technologies designed the web site for the show and simulcasted the video feed delivered by Mr. DeBono. Mr. McDonald appeared on the first episode of Investors On-line on September 27, 1997. According to Mr. Mutual, Mr. McDonald knew what a simulcast was and knew that it was different from a broadcast.
[35] Mr. Mutual had no knowledge of CITV prior to this litigation. He found out about CITV in 1995 when he received a letter from the company, and was not aware of an "itv.ca" domain name until January 1997, when he received a letter from WIC alleging trade-mark infringement. He had no idea that people thought his operation belonged to WIC, and had never received complaints from parties other than WIC alleging trade-mark infringement.
[36] He has never met anyone who indicated that they were confused between ITV Technologies and CITV or WIC Television Ltd. He has only received two or three emails inquiring about some television programming. In each case, he replied back indicating that ITV Technologies was not affiliated with the company that the person was looking for.
[37] Mr. Mutual believed that he was not infringing on the rights of anyone, due to the vast and common use of the letters ITV by numerous entities. In November 1997, a search for the letters ITV on the Internet produced 8600 results in the search engine Altavista and 2006 results in the search engine Lycos. A search on Who Is, an engine that searches among top-level domain names, produced numerous sites possessing the letters ITV. A trade-mark search in the United States also revealed a vast number of domain names using the letters ITV.
[38] In the United Kingdom, the letters ITV were known in connection with independent television for more than 40 years.
[39] In 1997, a course in Instructional Television described as ITV, was offered by Carleton University, and a course in ITV was offered by the University College of the Caribou.
[40] In order to demonstrate the generic use of the letters ITV, ITV Technologies produced voluminous material including British and American dictionaries, on-line dictionaries, magazines, and library searches with printed descriptions of books and video tapes. It also tendered a number of patents dealing with inventions for industrial television, and patents for inventions that used the letters ITV as an acronym. Most of the material was not tendered for the truth of its contents but to demonstrate the "generic" use of the letters ITV.
[41] Ms. Jennifer Blome joined ITV Technologies in April 1997. Prior to that, she worked for Apple computers. In 1995, she was hired as a business development manager for the Interactive TV Division of Apple computers. She was then hired as the product manager for Quick Time, Apple's Internet TV or video standard. The letters ITV were used on the Apple media tool kit, which was software allowing the user to graphically interact with media.
[42] Mr. Allan Pedersen testified that he was contacted by ITV Technologies' solicitor to conduct research. He searched for web pages on www.archive.org, made some copies from the library, researched patents for references to ITV, and searched for ITV top-level domain names on the Internet.
[43] Mr. Martin Triggs was a student at Carleton University from 1992 to 1996. He testified that he took several courses that were available in ITV. The courses were either offered on video or could be watched on a specific channel. ITV meant instructional television to him. He had also heard of the term ITV in Britain, where one of the channels was called ITV.
Evidence for the Defendant
[44] The evidence of Mr. James Carroll, an Internet expert is contained in two affidavits.
[45] Mr. Carroll explained the allocation of Internet domain names at page 7 of his affidavit:
The addresses of Web users are based on the DNS, rather than the numerical TCP/IP address system. Under the DNS, which was established in the 1980s, there are two main groups of domain names. The first, known as Top Level Domain Names (TLD'S) can be used by anyone in any country, and end in .com, .edu, .org, .net or .gov (others were added in 2001). Country code domain names are country specific, such as .ca, .us or .uk, for Canada, the United States and the United Kingdom.
A company or organization can choose to obtain and use Domain Names that include either a Top Level Domain Name or a country code domain name, or both.
[46] At trial, he testified that the degradation of top-level domain names began occurring in 1994. The additional information that was required when registering a .net domain name was not stringent nor stiff.
[47] Mr. Carroll also gave the following opinion at page 21 of his affidavit regarding the confusion caused by ITV Technologies' web site:
The plaintiff was present on the Internet with the domain name ITV.NET and with its Web site at www.itv.net from late 1995 to at least September 2000 and it promoted that presence. In my opinion its activities were likely to lead a large number of Canadians to the conclusion that the plaintiff's Web site and business was, or was related to, the Edmonton-based ITV business of WIC. It does not surprise me at all that the plaintiff received emails intended for CITV.
[48] In cross-examination, Mr. Carroll admitted that he did not discuss the degradation of top-level domain names in the 1995, 1996 and 1997 editions of his book Canadian Internet Handbook. Mr. Carroll also admitted that he did not have any personal knowledge of how many Canadians believed that ITV Technologies' web site was related to WIC, and he agreed that the web pages www.itv.net and www.itv.ca looked different.
[49] Mr. Kirk worked at ITV from 1974 to 1999 in several positions, including vice-president and general manager. He confirmed that in 1974, a new license was granted to Dr. Charles Allard for ITV and it was the first station in Western Canada to sign on as an independent television station. This meant that it was a non-network station, and was not affiliated with either CBC or CTV, which was important to advertisers because it indicated that all of the programming was available for purchase, unlike CBC and CTV which held back a certain amount of programming from retail advertisers. The advertising slogan "independent television" was never used for the public.
[50] The station carried on business under the name ITV from 1974 to 2000. The letters ITV were used in all of the station's advertising. They were used on screen, on vehicles, in connection with community activities, conventions, sales presentations, newspaper, radio, transit, billboards, commercial sales material and stationary. The letters ITV were used as a letter mark and as a design mark.
[51] An enormous amount of money was spent advertising the ITV mark. As of January 1996, ITV Edmonton had invested on average one million dollars a year in advertising and promoting its ITV name and mark.
[52] In his career, Mr. Kirk has never encountered the expression instructional television, Internet television, or industrial television. He has never come across any usage of the letters ITV as an acronym or abbreviation for any of those terms in the Canadian marketplace. No one has ever used instructional television, interactive television or industrial television to describe CITV's business. He has also never encountered the signal for ITV UK in Canada and to his knowledge, it is not available in Canada.
[53] According to Mr. Kirk, the television industry in 1996 was very nervous about the Internet, which was perceived as a competitor in another format. One of the ways in which television stations responded to this potential crisis was to obtain web sites of their own. The www.itv.ca web site communicated programming, news, weather details, and entertainment reviews. It also hosted polls and contests. Audio and video content was available on the web site, but only for a month.
[54] Mr. Kirk visited ITV Technologies' web site and was concerned with its activities. ITV Technologies appeared to be conducting the same business as ITV of providing entertainment content and events aimed at a mass audience. The identification was also similar in that the letters ITV were used by ITV Technologies. Some of the events web cast on www.itv.net were also broadcast on television. In his opinion, there was likely to be confusion because of the similarities between the two companies. The effect of this confusion was the dilution and loss of control of WIC's ITV marks.
[55] In cross-examination, Mr. Kirk agreed that the design used by ITV.net with the eyeball inside the television was not identical to any design ever used by CITV. The form of the letters ITV in WIC's design trade-marks was also not similar to the way in which ITV Technologies used the letters ITV.
[56] Dr. Adam Finn was qualified as an expert in the marketing of film, television and new media in Canada from a business and economic perspective and consumer reaction and perceptions.
[57] He indicates in his affidavit that there was similarity between ITV Technologies' services and those of WIC, and that ITV Technologies used terminology that is synonymous with broadcasting when describing attributes of its business. In Dr. Finn's opinion, the use by ITV Technologies of its ITV trade-marks in Canada in 1995 and through to 2000 likely led a substantial number of Canadians to the inference that ITV Technologies' services and business were associated with WIC, as shown by the three e-mail communications received by ITV Technologies that were intended for WIC. This had a negative effect on the value of the brand equity that WIC had built up in its ITV trade-marks, and reduced the control that WIC had over its marks. It was a natural progression for WIC to become involved in video streaming, and ITV Technologies' presence and use of its ITV marks reduced the value of that opportunity.
[58] Dr. Finn was familiar with the use in the United Kingdom of the term ITV by various businesses in the television field. To the best of his knowledge, those businesses have not used that term in any substantial way in commerce in Canada. Although programs that were broadcast on the ITV station in the United Kingdom were also broadcast in Canada, the credits displaying the letters ITV would not appear in Canada, and as such, very few Canadians would have knowledge of the term ITV from the United Kingdom.
[59] In his experience, there have not been many companies who use the letters ITV with respect to broadcasting or the Internet, and the letters ITV have not come to denote interactive television, Internet television, instructional television or independent television.
[60] In cross-examination, Dr. Finn agreed that three letter acronyms can hold different meanings. He searched for ITV on-line and came up with numerous meanings, such as interactive television, Internet television, instructional television, and independent television. He also admitted that there were some differences between the businesses of ITV Technologies and WIC, and that he would never mistake the web site www.itv.ca for www.itv.net.
[61] Ms. Ruth Godfrey was the sponsorship coordinator for Hong Kong Bank of Canada. She testified that her bank sponsored the B.C. Tel Pacific Open with ITV. In 1996, she received documentation from ITV Technologies and was confused as to whether it was related to WIC. The logo ITV.net was the first thing that grabbed her attention.
[62] In cross-examination, she agreed that the only indication from the material which led her to believe that there was some connection between WIC and ITV Technologies was the use of the letters ITV. She did not visit the web site www.itv.net.
C. THE PLAINTIFF'S CLAIMS FOR EXPUNGEMENT
[63] Subsection 57(1) of the Trade-marks Act, R.S. 1985, c. T-13, (the "Act") gives the Court exclusive jurisdiction to order that any entry in the register be struck out or amended:
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
[64] ITV Technologies seeks to expunge WIC's trade-marks on the grounds that they were not registrable at the date of registration, and that they were not distinctive at the time proceedings bringing the validity of the registration into question were commenced, pursuant to paragraphs 18(1)(a) and (b) of the Act:
18. (1) The registration of a trade-mark is invalid if
(a) the trade-mark was not registrable at the date of registration,
b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced,
[...]
18. (1) L'enregistrement d'une marque de commerce est invalide dans les cas suivants :
a) la marque de commerce n'était pas enregistrable à la date de l'enregistrement;
b) la marque de commerce n'est pas distinctive à l'époque où sont entamées les procédures contestant la validité de l'enregistrement;
[...]
[65] Subsection 12(1) sets out factors or categories pursuant to which a trade-mark is not registrable. ITV Technologies relies on paragraphs 12(1)(b), (c), (e) and section10 of the Act:
12. (1) Subject to section 13, a trade-mark is registrable if it is not
[...]
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used;
[...]
e) a mark of which the adoption is prohibited by section 9 or 10;
12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants :
[...]
b) qu'elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des marchandises ou services en liaison avec lesquels elle est employée, ou à l'égard desquels on projette de l'employer, ou des conditions de leur production, ou des personnes qui les produisent, ou du lieu d'origine de ces marchandises ou services;
c) elle est constituée du nom, dans une langue, de l'une des marchandises ou de l'un des services à l'égard desquels elle est employée, ou à l'égard desquels on projette de l'employer;
[...]
e) elle est une marque dont l'article 9 ou 10 interdit l'adoption;
10. Where any mark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services, no person shall adopt it as a trade-mark in association with such wares or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that mark as to be likely to be mistaken therefor.
10. Si une marque, en raison d'une pratique commerciale ordinaire et authentique, devient reconnue au Canada comme désignant le genre, la qualité, la quantité, la destination, la valeur, le lieu d'origine ou la date de production de marchandises ou services, nul ne peut l'adopter comme marque de commerce en liaison avec ces marchandises ou services ou autres de la même catégorie générale, ou l'employer d'une manière susceptible d'induire en erreur, et nul ne peut ainsi adopter ou employer une marque dont la ressemblance avec la marque en question est telle qu'on pourrait vraisemblablement les confondre.
[66] Paragraph 18(1)(a) provides that the determination of whether a trade-mark is registrable is to be assessed as of the date of the registration of the mark. The dates of the registrations in issue are December 23, 1983 for registration no. TMA 286, 066, December 3, 1996 for registration no. TMA 467, 002 and February 17, 1998 for registration no. TMA 490,099.
[67] With regard to ITV Technologies' first ground, in order for a mark to be clearly descriptive, pursuant to paragraph 12(1)(b), it must be more than merely suggestive of the character or quality of the wares or services in association with which it is used or proposed to be used. The descriptive character must go to the material composition of the goods or services or refer to an obvious intrinsic quality of the goods or services which are the subject of the trade mark, such as a feature, trait or characteristic belonging to the product in itself (Provenzano v. Registrar of Trade-marks (1977), 37 C.P.R. (2d) 189).
[68] For example, in A. Lassonde Inc. v. Canada (Registrar of Trade-marks) (2000), 180 F.T.R. 177, the Federal Court determined that the mark BANANORANGE, for use in association with fruit juices and non-alcoholic fruit drinks, was not registrable, as an ordinary consumer would conclude based on the name that it was a fruit mixture composed of bananas and oranges.
[69] Similarly, in Pac-Fab Inc. v. Registrar of Trade-marks (1982), 69 C.P.R. (2d) 250, the Federal Court held that the mark HYDROPUMP for use in association with swimming pool filter pumps was not registrable, as the mark was synonymous with the words "water pump" which was clearly descriptive of the wares with which it was proposed to be used.
[70] By contrast, in Jordan & Ste-Michelle Cellars Ltd. v. T.G. Bright & Co., Ltd., [1984] 1 F.C. 964, the Federal Court of Appeal determined that the mark BRIGHTS CHILLABLE RED for use in association with red wine was not clearly descriptive, since the temperature at which wine may be served is completely unrelated to the character or quality of the wine itself.
[71] The test for determining whether a trade-mark infringes paragraph 12(1)(b) is the immediate or first impression formed. The determination must not be based on research into or critical analysis of the meaning of the words (Oshawa Group Ltd. v. Registrar of Trade Marks, [1981] 2 F.C. 18). The word "clearly" in paragraph 12(1)(b) is not synonymous with accurately, but rather means easy to understand, self-evident, or plain (Drackett Co. of Canada v. American Home Products Corp., (1968), 55 C.P.R. 29). The impression must also be assessed from the perspective of the ordinary, everyday purchaser or user of the wares or services (Wool Bureau of Canada Ltd. v. Registrar of Trade-marks (1978), 40 C.P.R. (2d) 25). The perspective of experts or people with special knowledge is not representative of the average ordinary purchaser (Consorzio del Prosciutto di Parma v. Maple Leaf Meats Inc., [2001] 2 F.C. 536).
[72] Furthermore, the fact that an acronym may be derived from particular words does not mean that it is necessarily descriptive of those particular words, or of a related product.
[73] In Canadian Council of Professional Engineers v. APA - Engineered Wood Assn. (2000), 184 F.T.R. 55, the mark APA - ENGINEERED WOOD ASSOCIATION was discussed in relation to laminated wood products. The mark was found not to be descriptive because the letters "APA" were used as an acronym for six different organizations. For O'Keefe J., evidence of various possible meanings supports the finding that the acronym is not descriptive. If it is capable of various meanings, it is not capable of an immediate image in the mind of the general public.
[74] On the other hand, a short form, when used as a mark, can be descriptive where it is proven to be well known as referring to a single idea. In Bank of Montreal v. Midland Walwyn Capital Inc. (1998), 86 C.P.R. (3d) 555, the applicant applied to register the mark NAFTA BOND FUND for use in association with mutual fund services, investment services and stockbroker services. The Trade-marks Opposition Board determined that the term NAFTA was well known to many Canadians as referring to the North American Free Trade Agreement, and that an everyday user of investment services would associate the mark with the agreement and assume that the fund at issue involved investments relating to the agreement. As such, the mark was considered to be clearly descriptive and unregistrable.
[75] In the present case, I must determine whether as a matter of immediate or first impression, an ordinary user would find that the mark ITV is clearly descriptive of the wares or services offered by WIC.
[76] I am not satisfied that the evidence demonstrates that an ordinary user would reach this conclusion.
[77] WIC's first design trade-mark is registered in association with the wares of films, video discs and cassettes, records, video and audio tapes, and the services of television and radio programs, cable television, and animation production; its second design trade-mark is registered in association with television broadcasting services; and its ITV word mark is registered in association with the operation of a television station. In my view, the mark ITV does not go to the material composition and does not refer to an intrinsic quality of these wares or services.
[78] Furthermore, the evidence demonstrates that the letters ITV were used to represent different meanings, such as independent television, interactive television, Internet television and instructional television. In my opinion, the fact that the letters ITV can represent different meanings is another indication that the marks of WIC are not clearly descriptive of its wares or services.
[79] Even if I were to accept that ITV represents independent television, this term does not clearly describe WIC's wares or services. An ordinary, everyday user upon seeing the expression "independent television", would not as a matter of immediate and first impression find that it clearly describes wares such as films and records or services such as the operation of a television station. To be unregistrable, the marks at issue would have had to clearly describe WIC's wares or services, through words such as "broadcasting station".
[80] For all these reasons, I am of the view that ITV Technologies' allegation that the marks at issue were not registrable as they are clearly descriptive of WIC's wares or services is not supported by the evidence.
[81] With regard to ITV Technologies' second ground, the Federal Court has determined that the test under paragraph 12(1)(c) is narrower than that on the use of descriptive terms (Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161). The mark as a whole must clearly be the name of the wares or services based on the immediate and first impression of the everyday user of the registrant's wares or services.
[82] In Canadian Bankers Association v. Northwest Bancorporation (1979), 50 C.P.R. (2d) 113, the applicant sought to register the mark BANCO on the basis of proposed use in association with banking services. The Trade-marks Opposition Board determined that the mark offended paragraph 12(1)(c) and was not registrable as the word "banco" was the Spanish equivalent of the English words "bank" and "banking services".
[83] Conversely, in Horn Abbot Ltd. v. Thurston Hayes Development Ltd. (1997), 137 F.T.R. 206, the Federal Court held that the trade-mark TRIVIAL PURSUIT was not the name of any game or board game. Reed J. determi