Likelihood of confusion found for “casual consumer somewhat in a hurry”

Canada

In Vibe Media Group LLC v Craig Trading as Vibetrain (2010 FC 214, February 24 2010), the Federal Court of Canada has granted an appeal in respect of a decision of the Trademark Opposition Board in which the latter had denied an opposition to the registration of the trademark VIBETRAIN.

The appellant (and opponent), Vibe Media Group LLC, is the owner of the trademark VIBE, which is registered in relation to general interest magazines. In 2004 the respondent, Lewis Craig, filed an application to register the trademark VIBETRAIN, based on proposed use in Canada, for use in association with goods including publications and media related to music, and for entertainment and related services.

Vibe Media brought an opposition, alleging confusion with its VIBE mark. The Opposition Board rejected the opposition. In its reasoning, the board relied on a previous Federal Court decision, Vibe Ventures LLC v 3681441 Canada Inc (2005 FC 1650, December 5 2005), and on the Oxford English Dictionary, to find that the word 'vibe' is not inherently distinct. Further, the board found that, although the marks were similar, the word 'vibe' created an impression limited to its defined meanings, whereas the word or trademark VIBETRAIN was inherently distinctive and created a significantly different impression.

On appeal to the Federal Court, Vibe Media, as it was entitled to do, filed new evidence. When, as in this case, additional evidence is adduced before the Federal Court that would have materially affected the registrar’s findings of fact or the exercise of the registrar’s discretion, the court may come to its own conclusion as to the correctness of the registrar’s decision.

The Federal Court first reviewed the distinctiveness of the word 'vibe', noting that, in the Vibe Ventures decision, the court had found that “the English language may be developing”. Using this logic, the court found that, although the word may have been unique at the time Quincy Jones named his magazine 'Vibe', through widespread use, the word was no longer unique. Nevertheless, the court found that through continuous use by Jones and his successors, the word and trademark VIBE had acquired a reputation. Further, the court found that the word 'vibe' was the dominant word in the trademark VIBETRAIN.

Additional evidence produced by Vibe Media showed that no other magazine title begins with the word 'vibe' and that, in addition to magazines, the trademark VIBE had been used in connection with:

  • TV programmes (as early as 1998);
  • a TV production entitled the Vibe Awards (since 2003);
  • websites providing online magazines, music and videos;
  • a mobile phone-based service called MVibe or Mobile Vibe;
  • books relating to music, entertainment and culture; and
  • musical recordings (CDs).

The Federal Court found that there was a likelihood of confusion between the two marks in the mind of a “casual consumer somewhat in a hurry” because:

  • there was a broad overlap in the goods and services covered by Vibe Media’s and Craig’s marks;
  • both marks relied on similar channels of trade; and
  • both targeted consumers with an interest in music, entertainment and culture.

Accordingly, Vibe Media’s appeal was granted.

Chad Matheson, Cameron MacKendrick LLP, Toronto

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