Opponent’s marks held to have ‘deeper roots’

Canada
In Bell ExpressVu Limited v Mariner Partners Inc (2011 TMOB 243, December 6 2011), the hearing officer has rejected applications to register the marks XVU and XVU TV CARE.
  
Mariner Partners Inc filed applications for the registration of the marks XVU and XVU TV CARE, claiming use in Canada since at least as early as October 16 2006 in association with the following goods and services:
  • "A software product that monitors the quality of video and audio television signals delivered over the internet and the performance of the equipment in which the software product is resident and operates."
  • "Installation and maintenance of the software product that monitors the quality of video and audio television signals delivered over the internet and the performance of the equipment in which the software product is resident and operates, including the provision of upgrades."
Bell ExpressVu relied upon its marks VU, VU!, VU! (and design), VU! TV, VU! TV (and design) and EXPRESSVU, as previously registered and used in Canada in association with telecommunication services and products, with Canadian sales in the billions of dollars, backed up with significant advertising and promotion expenditures, to oppose Mariner's applications.
 
Mariner stated in its evidence that it is not in the telecommunications business, nor in the “delivery of telecommunication signals either through satellite dishes, communication devices or any other type of communication delivery system”, but rather works in the “selling and maintaining of a software product that monitors the quality of video and audio television signals over the internet and the performance of the equipment in which the software product is resident and operates”. Mariner's product is not designed for Bell's customers, but rather the IPTV industry for service providers like Bell.
 
Mariner admitted to being aware of Bell’s marks, but believed that the respective parties were “pursuing distinct businesses not designated for the same clientele whatsoever and not operating in the same trade channels”. Mariner furthermore submitted that Bell’s VU marks were not famous and therefore not entitled to protection beyond the specific goods and services for which they are registered.
 
After reviewing the evidence, the hearing officer spoke in terms of the “deeper roots” of some of Bell’s marks, and assessed particularly Bell’s EXPRESSVU mark as having “become known significantly in Canada, if not well known”.
 
In contrast, Mariner provided no real evidence of reputation (ie, sales and marketing figures). It only asserted that it had built a solid reputation in its field. Mariner having failed to show on a balance of probabilities that there would be no reasonable likelihood of confusion, the hearing officer ruled in favour of Bell.
 
While the terms 'known significantly', 'well known', 'deeper roots' and 'famous' are used in the decision, the hearing officer’s analysis is cut short - possibly due to the deficiencies in Mariner’s evidence. In the end, we are left with only the broad statement that “in the case of strong marks, the distinction between wares and services and the nature of the trade of competing marks become less important”.
 
Toni Polson Ashton, Sim & McBurney/Sim Lowman Ashton & McKay LLP, Toronto

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