In Vibe Media Group LLC v. Lewis Craig Trading as VIBETRAIN the Federal Court of Canada set aside a decision of the Opposition Board and allowed the opposition to the application to register the mark VIBETRAIN. The application was based on proposed use in Canada in association with wares and services that included sound recordings, printed promotional materials, magazines, clothing and souvenir items and entertainment services involving the provision of musical and entertainment performances in live, television, video and Internet media. The opponent was a company with which Quincy Jones had an association and held the trademark rights, including an application and two pending applications, for VIBE, a popular magazine focusing on urban culture.
The Opposition Board member found that “vibe” was not inherently distinctive, relying on an earlier decision of the Court, Vibe Ventures LLC v. 3681441 Canada Inc. The Board also found that VIBETRAIN consisted of two ordinary dictionary words that were disconnected from their respective meanings and which, when juxtaposed, were inherently distinctive. The Board member referred to the Oxford English Dictionary for the definition of “vibe”. Before the Court, the Opponent argued that other dictionaries did not define “vibe” and it was therefore not an ordinary dictionary word.
On appeal, the Court found that “vibe” may no longer be inherently distinctive, but through continuous use it had become suggestive of the Opponent’s magazine, something the Board had acknowledged in its decision. The Opponent also submitted new evidence on the appeal to show that the word “train” suggested a series of musical performances, that no other magazine titles in Canada began with VIBE and that VIBE had been used in Canada with programs, websites, books and recordings related to music.
The Court concluded there was a broad overlap in the music, culture and clothing wares and services that the VIBE and VIBETRAIN trademarks sought to identify, as well as similar channels of trade, since both targeted people with an interest in music, entertainment and culture. Thus, there was a likelihood of confusion for a “casual consumer somewhat in a hurry”.