Federal Court Decisions

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", 2^nd 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:

[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:

[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:

[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. determined that the fact that the game is a trivia game and the word trivia is found in the word trivial was not enough to make the trade-mark the name of the wares.

[84]            In determining whether a mark is the name of the wares or services in connection with which it is used, the Court may have reference to dictionaries or other reference works to determine possible meanings for a mark. Nadon J. relied on French language dictionaries to conclude that the term "brûlerie" was a generic expression known to Canadians as being used in the coffee roasting business (Brûlerie Des Monts Inc. v. 3002462 Canada Inc. (1997), 132 F.T.R. 150). However, the Federal Court of Appeal has confirmed that dictionaries are sometimes inaccurate and should only be used as a guide (Bagagerie S.A. v. Bagagerie Willy Ltée (1992), 97 D.L.R. (4^th) 684).

[85]            In the case at bar, ITV Technologies submitted as evidence, online and print dictionaries with definitions of ITV. In my opinion, the fact that the term ITV is capable of possessing different definitions undermines ITV Technologies' argument that ITV is the name of the wares or services of WIC. If the mark ITV is capable of representing various terms, such as Internet television, interactive television, instructional television or independent television, then it follows that ITV cannot be the name of WIC's wares or services.

[86]            In any event, even if I were to accept that ITV was synonymous with independent television, this is not the name of WIC's wares or services or WIC's television station. The service provided by a television station includes coverage of news, weather, dramas, educational programs, etc. Independent television is not the name of any of these services.

[87]            For all these reasons, I am of the view that ITV Technologies' claim that WIC's marks were not registrable as they are the names of the wares or services in connection with which they are used, contrary to paragraph 12(1)(c), is also not supported by the evidence.

[88]            ITV Technologies' third ground with respect to registrability is based on paragraph 12(1)(e) and section 10 of the Act. Pursuant to section 10, a mark may become a prohibited mark if as a result of ordinary and bona fide commercial usage, it has become recognized in Canada as designating the kind, quality, quantity, destination, value, place or origin or date of production of any wares or services. The statutory prohibition requires that the use of the mark in question be in Canada and that the mark must have been commonly used in Canada at the relevant time as designating an aspect of the wares or services which are the subject of the mark (Unitel Communications Inc., supra).

[89]            The relevant date for determining the ordinary and bona fide commercial usage of the mark at issue for the purposes of section 10 is the date when the applicant first started using its trade-mark as determined by Strayer J. in Carling Breweries Limited v. Molson Companies Limited and Registrar of Trade Marks, [1984] 2 F.C. 920.

[90]            In Bank of Montreal v. Merrill Lynch & Co. (1997), 84 C.P.R. (3d) 262, the applicant sought to register the trade-mark CASH MANAGEMENT ACCOUNT for use in association with financial services. The opponent's evidence established that the term "cash management account" had by ordinary and bona fide commercial usage, become recognized in Canada at the material time as designating a type of financial service through which one can consolidate and manage cash investments and credit through one account. The evidence also demonstrated that the term "cash management" had become recognized at the material time as designating a type of financial service that allows one to maximize the value of liquid assets or manage cash to the best advantage. As such, the Trade-marks Hearing Officer determined that the applicant's mark was a prohibited mark pursuant to section 10.

[91]            On the other hand, there are numerous examples of cases before the Trade-marks Opposition Board where it was found that the evidence did not establish that a mark had become recognized as designating the kind, quality or origin of a ware or service. In Sherwood Brands Overseas Inc. v. Linkletter (P.E.I.) Ltd. (2001), 15 C.P.R. (4^th) 385, it was held that the mark COW'S had not become recognized in Canada as designating the kind or quality of candy containing dairy products. In Anheuser-Busch Inc. v. John Labatt Ltd. (2001), 14 C.P.R. (4^th) 548, it was determined that the mark ICE GOLD had not become recognized in Canada as designating the quality of alcoholic brewery beverages.

[92]            Thus, the test to meet in the present case is whether the term ITV, as a result of usage in Canada, had become commonly recognized as designating the kind, quality, value or place of origin of the service of operating a television station as of September 1974 when the word mark ITV was first used; 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 as of August 1982 when the mark ITV & Design was first used; and the service of television broadcasting as of July 1994 when the mark ITV & Design was first used.

[93]            I am not satisfied based on the evidence that the term ITV was commonly used and recognized in Canada as designating the kind, quality, value or place of origin of the above wares and services at the relevant dates of adoption. As such, none of WIC's trade-marks were marks prohibited by section 10.

[94]            Therefore, I am of the view that WIC's trade-marks were registrable as they do not fall within the exceptions in paragraphs 12(1)(b), (c), (e) and section 10.

[95]            ITV Technologies further argues that the trade-marks of WIC should be expunged on the ground that they were not distinctive at the time proceedings bringing the validity of the registration into question were commenced. In the case at bar, the relevant date is the date in which the statement of claim was filed, July 4, 1997.

[96]            According to section 2 of the Act, a "trade-mark" is a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others. A "distinctive" trade-mark is one that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others, or is adapted so as to distinguish.

[97]            Distinctiveness of a trade-mark deals with whether or not the mark when used in association with the wares, distinguishes for the consumer the source of those wares. The Court must ask itself whether or not the ordinary consumer in the market for that type of product would likely be deceived as to the source of that product (Consorzio, supra).

[98]            In order to be distinctive, it is not necessary for the mark to distinguish the wares or services throughout Canada. In certain circumstances, a trade-mark that distinguishes the owner's wares or services from the wares and services of others within a particular area of Canada can be found to be distinctive (Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145). The trade-mark will remain distinctive so long as people within that particular area of Canada recognize the mark as representing the owner of the wares or services. In Consorzio, supra, McKeown J. held at para. 26

I note that the distinctiveness of a trade-mark is made-out when appreciable portions of the public in the geographic area where the registration is to apply recognize the mark as distinctive.

[99]            In addition, it is not necessary for the owner of the trade-mark to show itself to be the sole user of the mark to demonstrate distinctiveness. While use of the same mark by others in association with similar wares is relevant in determining whether a mark is in fact distinctive, exclusivity is not essential in proving distinctiveness (Molson Breweries, supra).

[100]        WIC has adduced evidence that it has spent a considerable amount of money on the advertisement and promotion of its ITV trade-marks for over 20 years. Mr. Kirk testified that from September 1974 through to January 1996, WIC spent an average of at least $1 million per year in promoting its trade-marks for a total of at least $21 million over that period of time. As a result of its efforts, WIC was continuously the number one or two ranked station in the Edmonton market during that period of time. It developed a business which, by 1992, was doing in excess of $40 million in revenue per year and with an audience of more than two million viewers throughout Canada.

[101]        Furthermore, the evidence clearly demonstrates that the ITV trade-marks were featured prominently in WIC's delivery of its services at the relevant time. WIC's ITV trade-marks were used on screen, on vehicles, in connection with community activities, conventions, sales presentations, newspaper, radio, transit, billboards, commercial sales material and stationary.

[102]        Based on the evidence, I am satisfied that WIC's ITV trade-marks were well known and distinctive of its broadcasting services, particularly in the province of Alberta.

[103]        ITV Technologies' position is that at the relevant date, the mark ITV was no longer distinctive of WIC's wares and services due to the widespread use of the letters ITV. ITV Technologies adduced the expert evidence of Ms. Zilber in which she opined that the letters ITV had become a generic term to mean interactive television or Internet television at the relevant time period. I do not accept Ms. Zilber's evidence as representing the opinions of everyday Canadian consumers of the wares or services at issue.

[104]        In my view, only a small percentage of the population would have equated the letters ITV with interactive television or Internet television. No evidence was introduced by ITV Technologies to convince me otherwise. The term ITV would have represented interactive television or Internet television to people in the industry with specialized knowledge such as broadcasters, or those working for cable or Internet companies. It is unlikely that at the relevant date of July 1997, the general population would have equated ITV with interactive television or Internet television.

[105]        In Consorzio, supra, McKeown J. stressed the importance of using evidence that reflects the perspective of the average ordinary consumer. He stated at para. 26:

[...] Survey evidence offered regarding the distinctiveness of a trade-mark should usually measure the recognition of that mark by the general consumer, and not by specialized consultants. Much of the applicant's evidence came from people with a special knowledge of the Italian food industry in Canada and in Italy. In addition, the applicant's counsel put before the Court evidence provided by persons who are close family relations of a partner or an associate of their counsel's firm. On the whole, I do not view such evidence as representative of the knowledge held by the typical Canadian consumer of average intelligence and education.

[106]        ITV Technologies also submitted excerpts from books, magazines and web sites in which the term ITV was used. While I accept that the letters ITV were used, in most cases as an acronym for various wares and services, this evidence is not sufficient to show that the average consumer associated ITV with the wares and services described in this material. There was little evidence that Canadians knew of or read this material. I note that many of the articles came from specialized publications, of which the average Canadian consumer would be unaware. There was also little evidence that Canadians accessed any of the web sites submitted by ITV Technologies. Mr. Mutual even admitted in cross-examination that he had not come across many of these web sites until he performed searches for the purposes of this litigation.

[107]        Furthermore, the distinctiveness of WIC's marks must be measured in the Canadian market place alone. Many of the web sites and articles adduced by ITV Technologies came from outside Canada. The spill over into Canada of foreign references, in the form of books, newspapers, or the Internet, will not invalidate a Canadian trade-mark registration.

[108]        In Philip Morris Inc. v. Imperial Tobacco Ltd (1985), 7 C.P.R. (3d) 254, the applicant sought to expunge the respondent's trade-mark on the ground that significant advertising in the United States had rendered the respondent's mark non-distinctive. The applicant argued that the American publicity campaign involving Marlboro cigarettes spilled over into Canada which reduced the distinctiveness in the minds of Canadians as to the distinction between the American and Canadian brand of Marlboro cigarettes. Rouleau J. stated at pages 272-273:

After careful consideration of this issue, I have decided that the survey and the evidence on the circulation of U.S. publications in Canada do not establish, to my satisfaction, the fact that the Canadian trade mark MARLBORO sought to be expunged, has lost its distinctiveness. Indeed, as noted earlier, the test to be applied is to see if the trade mark used by the respondent on the Canadian market enables it to distinguish its wares from that of others offered on the same market at the date of these proceedings.

[...] I do not see how it can be said that the Canadian trade mark MARLBORO has lost its distinctiveness on the Canadian market. The wares produced and sold by the respondent are still distinguishable from that of others found on the Canadian market as well as the applicant/appellant's brand. It has been demonstrated that American Marlboro cigarettes are widely known and recognized, though not generally available on the Canadian market. This demonstrates and supports the influence the spill- over advertising has had on the minds of Canadians. They are well known in Canada and no doubt are purchased when our citizens are abroad. However, the survey and the advertising campaigns do not satisfy me that Canadian smokers are unable to distinguish an American brand of cigarette as opposed to a Canadian brand.

[109]        As such, I am of the opinion that the use of the mark ITV in web sites, magazines and newspapers did not render WIC's trade-marks non-distinctive.

[110]        Therefore, ITV Technologies' argument that WIC's trade-marks should be expunged on the ground that they were non-distinctive, pursuant to paragraph 18(1)(b) of the Act, is not supported by the evidence.

[111]        For all these reasons, ITV Technologies' claim is dismissed with costs.

D.        COUNTERCLAIM

[112]        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.

            i)           Trade-mark Infringement

[113]        WIC argues that ITV Technologies' use of the mark ITV constitutes trade-mark infringement, contrary to section 20 of the Act. Subsection 20(1) provides that the right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under the Act who sells, distributes, or advertises wares or services in association with a confusing trade-mark:

[114]        The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares associated with the trade-marks are manufactured, leased, hired or performed by the same person. In Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4^th) 51, the Federal Court of Appeal articulated at page 58:

[...] the question is whether the ordinary consumer will, on seeing the later mark, infer as a matter of first impression that the wares with which the second mark is used are in some way associated with the wares of the earlier.

[115]        It is not necessary that the wares of the plaintiff and the defendant be of the same general class for there to be a likelihood of confusion. In Miss Universe, Inc. v. Bohna, [1995] 1 F.C. 614, the Federal Court of Appeal affirmed at para. 14:

For a likelihood of confusion to be found, it is not necessary that the parties operate in the same general field or industry, or that the services be of the same type or quality. Trade-marks for wares and services of one quality intended for one class of purchasers may be confusing with trade-marks for wares and services of a different type or quality, intended for a different class of purchasers.

[116]        In order to determine whether there is a likelihood of confusion, the Court shall have regard to all the surrounding circumstances, including those described in subsection 6(5) of the Act:

[117]        In considering the factors enumerated in subsection 6(5) of the Act, it is not necessary for each factor to be given equal weight. A particular case might justify greater significance being given to one factor over others (Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289). The factors must also not to be approached mechanically, but with judgment and having regard to all the surrounding circumstances (Garbo Garbo Inc. v. Harriet Brown & Co. (1999), 176 F.T.R. 80).

            Inherent Distinctiveness & Extent to which Marks have become known

[118]        The first item listed under subsection 6(5) of the Act is the strength of the mark. This is broken down into two considerations: the inherent distinctiveness of the mark, and the acquired distinctiveness of the mark (Panther Beauty Corp. v. United Artists Corp., [1998] 3 F.C. 534).

[119]        The inherent distinctiveness of a mark refers to its originality. A mark that is composed of a unique or invented name, such that it can only refer to one thing, will possess more inherent distinctiveness than a word that is commonly used in the trade.

[120]        It is well established that the stronger the mark is, the greater ambit of protection it will be accorded (Miss Universe, Inc., supra). In Carson v. Reynolds, [1980] 2 F.C. 685, Mahoney J. noted at para. 10 that a trade-mark may be

so generally identified with [a person] that its use in association with anything else, however remote from entertainment services, would be confusing in the sense that its use in both associations would be likely to lead to the inference that all the wares and services, whatever they might be, emanated from [that person].

[121]        By contrast, weak marks will be accorded less protection. In General Motors Corporation v. Bellows, [1949] S.C.R. 678, the Supreme Court of Canada stated at page 691:

[...] where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word [...]

[122]        In the case at bar, WIC has the letters ITV registered in the form of a word mark and as design marks. The letters ITV in WIC's design trade-marks are presented in a distinctive shape and design and therefore, I am satisfied that they possess a certain degree of inherent distinctiveness.

                                      past picture (both itv)

[123]        With regard to WIC's registration of the letters ITV as a word mark, the Federal Court has held that trade-marks formed purely of letters of the alphabet are generally considered weak marks entitled to a small ambit of protection. In GSW Ltd. v. Great West Steel Industries (1975), 22 C.P.R. (2d) 154, Cattanach J. held at pages 163-164:

In short, where a trader has appropriated letters of the alphabet as a design mark without accompanying distinctive indicia, and seeks to prevent other traders from doing the same thing, the range of protection to be given that trader should be more limited than in the case of a unique trade mark and comparatively small differences are sufficient to avert confusion and a greater degree of discrimination may fairly be expected from the public in such instances.

[124]        Similarly, in Alfred Grass Gesellschaft m.b.H. Metallwarenfabrik v. Grant Industries Inc. (1991), 47 F.T.R. 231, Cullen J. determined that weak letter marks are only entitled to a narrow ambit of protection and that a single trader should not be entitled to obtain exclusive property rights over a letter or combination of letters of the alphabet which happens to be the initials of that particular trader to the detriment of other traders who may happen to have the same initials.

[125]        In the present case, I am of the opinion that WIC's registration for the word mark ITV possesses little inherent distinctiveness and will be considered a weak mark. The weakness of WIC's ITV word mark is compounded by the fact that the letters TV are often used as a replacement for the word television. The evidence establishes that the letters ITV were used to represent various meanings dealing with television, such as independent television, Internet televison, interactive television, and informational television. The fact that the letters ITV were commonly used as an acronym for numerous entities is strong evidence that the ITV word mark is a weak mark.

[126]        In addition, the evidence reveals that there was significant usage of the word mark ITV by third parties. Library searches made by M. Pedersen showed numerous companies and organisations using the acronym ITV for their names or web sites. ITV Technologies also filed into evidence a number of patent inventions using the letters ITV. The widespread use of the letters ITV by third parties reinforces my conclusion that the ITV word mark is a weak mark.

[127]        Where a mark does not have inherent distinctiveness, it may still acquire distinctiveness through continued use in the marketplace. To establish this acquired distinctiveness, it must be shown that the mark has become known to consumers as originating from one particular source (Pink Panther Beauty Corp., supra).

[128]        The extent to which a mark has become known can greatly influence the ambit of protection with which that mark is deserving, even where the inherent distinctiveness of the mark is low. In Miss Universe, supra, the Federal Court of Appeal stated at para. 17:

It may have been said, thirty years ago, that there was nothing remarkably distinctive about the word "Miss" or the word "Universe" or the expression "Miss Universe." But as time went by and as the use and promotion of the two words linked together as one expression were reaching global proportion, the expression acquired, to use the very words of the Trial Judge, a "considerable distinctiveness." The name is now a well-known and reputable name.

[129]        In determining the acquired distinctiveness of a trade-mark, I am of the view that a valid factor to consider is the wares or services in which the mark is associated.

[130]        In Joseph E. Seagram & Sons Ltd. v. Canada (Register of Trade-Marks) (1990), 38 F.T.R. 96, the respondent applied to register the trade-mark SEAGRAM REAL ESTATE LTD. in association with its business as a real estate broker and mortgage agent. This application was opposed by the appellant, who was a well-known company engaged in the manufacture and sale of alcoholic beverage products. On the issue of acquired distinctiveness, Mackay J. held at page 102:

The word Seagram therefore, being primarily merely a surname, is not inherently distinctive. Accordingly, the only distinctiveness which the appellants can successfully claim must lie in relation to the manufacture and distribution of alcoholic beverage products. That distinctiveness the respondent here acknowledges. Certainly, a realistic examination of the facts in this case satisfies me that the appellants have no reputation whatever in the real estate business. Indeed they do not claim experience in real estate brokering in association with their trade marks or trade names, nor is there any evidence to suggest that the appellants intend to develop a reputation in that field.

[131]        In Cornell Trading Ltd. v. Saan Stores Ltd. (2000), 185 F.T.R. 198, the respondent applied to register the trade-mark CACHE CREEK in association with various articles of clothing sold in the respondent's stores. The appellant opposed the registration, on the ground that the proposed trade-mark was confusing with its LA CACHE trade-mark. The Registrar determined that the appellant had not acquired distinctiveness of the mark LA CACHE in connection with clothing or the retail sale of clothing. Heneghan J. affirmed the decision of the Registrar and held that the evidence did not establish that the appellant's marks were known in association with clothing. She held at pages 209-210:

In light of this evidence and the evidence found in the affidavit of Karen Paquette-Adams submitted by the Respondent which indicates that the clothing did not bear the LA CACHE label and actually bore other labels, I cannot conclude, on the evidence submitted, that the Appellant has acquired a significant reputation such that the trade-mark LA CACHE has acquired distinctiveness in relation to clothing or to a store selling clothing.

Therefore, despite the large volume of sales in relation to clothing reported by the Appellant, as well as the costs incurred for advertising and promotion, I still cannot conclude that the Registrar erred in stating that the LA CACHE trade-marks had not acquired distinctiveness, relative to clothing and the retail sale of clothing.

[132]        In the case at bar, I am of the view that although WIC's ITV word mark is a weak mark, it has acquired a certain degree of distinctiveness. The evidence establishes that WIC's ITV word mark was well known, particularly in the province of Alberta, due to widespread advertising.

[133]        The evidence also establishes that WIC's ITV marks were well known in association with the operation of an Edmonton-based television station. The evidence demonstrates that the majority of WIC's advertising was in relation to its broadcasting services.

[134]        I am not satisfied that the evidence establishes that WIC's marks were known in relation to its web site and the Internet. WIC began operating its www.itv.ca web site in March 1995. Therefore, at the time of the counterclaim, WIC's web site had only been in operation for two years. In my opinion, this was not sufficient time for WIC's marks to have become known in relation to its web site and the Internet.

            Length of Time in Use

[135]        The length of time that a mark has been used is a factor which will contribute to confusion on behalf of the consumer in determining the origin of wares or services. A trade-mark that is newly adopted or registered only recently may be presumed not to have received wide public acceptance (Triple G. Manufacturing Inc. v. Work Wear Corp. (1990), 35 F.T.R. 193). On the other hand, a mark that has been used for a long time is presumed to have made a certain impression amongst consumers which must be given some weight (Pink Panther Beauty Corp, supra).

[136]        The evidence establishes that WIC has used its ITV word mark since September 1974 and its ITV Design marks since August 1982 and July 1994. On the other hand, ITV Technologies has used its ITV marks since November 1995. Accordingly, this factor favours WIC.

            Nature of the Wares, Services or Business

[137]        Where trade-marks are similar, the extent to which the wares or services are similar will be an important factor in determining whether confusion is likely to result. Similarity in wares or services cannot be a sine qua non in a determination of confusion, as subsection 6(2) dictates that confusion may result "whether or not the wares or services are of the same general class". However, the ultimate test is confusion, and where one product does not suggest the other, it will be a strong indication that confusion is unlikely. The nature of the wares, services and business, therefore, though not always controlling, are certainly of significance (Pink Panther Beauty Corp, supra).

[138]        The Courts have adopted different analytic strategies when assessing the wares of the parties and the effect that had on the likelihood of confusion. The fact that the ultimate test involves gauging the impression made by the marks on the consumer displays the difficulty inherent in developing any definitive, fool-proof approach to the concept of confusion (Pink Panther Beauty Corp, supra).

[139]        For example, in Berry Bros. & Rudd Ltd. v. Planta Tabak-Manufactur Dr. Manfred Obermann, (1980), 53 C.P.R. (2d) 130, the applicant wished to register the trade-mark CUTTY SARK for use in relation to tobacco products, and was opposed by the opponent who owned the trade-mark in association with scotch whisky. Cattanach J. determined that there was a connection between alcoholic beverages and tobacco products so that a consumer might presume that Cutty Sark Tobacco and Cutty Sark Whisky originated from the same producer.

[140]        By contrast, in A. Lassonde & Fils Inc. v. Imperial Tobacco Ltd. (1987), 12 F.T.R. 231, Rouleau J. held that the appellant's trade-mark OASIS which was used in association with fruit juices and beverages was not confusing with the respondent's identical mark which was used in association with tobacco products.

[141]        The Courts have also determined that the fact that the wares and services of the parties are related is not sufficient to establish a likelihood of confusion.

[142]        In Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries (1981), 36 N.R. 71, the appellant used the mark DUTCH BOY in relation to a supermarket business as well as two dairy items, whereas the respondent used the identical mark in association with pickled herring. The Federal Court of Appeal determined that the business and wares dealt with by the parties were substantially different. Heald J. came to this conclusion despite the fact that the wares were in the same general class, i.e. food products and services. (See also Man and His Home Ltd. v. Mansoor Electronics Ltd. (1999), 163 F.T.R. 270).

[143]        Furthermore, a party's assertion that it may get into or expand into a certain line of wares or services is insufficient to support a founding of confusion.

[144]        In S.C. Johnson & Son, Inc. v. Esprit de Corp (1986), 8 F.T.R. 81, the appellant applied to register the trade-mark ESPRIT for use in association with personal care products, namely hair shampoos, hair conditioners, cosmetics and toilet preparations. This application was opposed by the respondent, who owned the trade-mark ESPRIT DE CORP for use in association with high fashion clothing for women. The respondent argued that the wares of the parties were of the same general class, namely fashion, and that it could one day expand into cosmetics. Cullen J. rejected this argument. He stated at pages 90-91:

In my view if the respondent ever intended to "get into" cosmetics it would require a new application for a trade mark for these wares, or an amendment to its present description for wares. With its present trade mark it could not in my view enjoy the monopoly that goes with a trade mark unless a new application were made.

[145]        Similarly, in Joseph E. Seagram & Sons Ltd., supra, MacKay J. held at page 104:

In my view, consideration of future events and possibilities of diversification is properly restricted to the potential expansion of existing operations. It should not include speculation as to diversification into entirely new ventures, involving new kinds of wares, services or businesses.

[146]        In the present case, WIC submits that its service of broadcasting is similar to ITV Technologies' service of web casting in that they both provide audio-video content to a mass audience. As noted by Dr. Finn in his affidavit, ITV Technologies used terminology that is synonymous with broadcasting when describing attributes of its business.

[147]        Conversely, ITV Technologies adduced evidence to demonstrate the differences between the services of the two parties.

[148]        Ms. Zilber testified that whereas a television broadcast involves the transmission of a signal on a specific frequency or channel, web casting involves the transmission of individual streams to viewers. The experience is also different for the viewer. Whereas a viewer watches a television broadcast passively, web casting allows a certain degree of interactivity between the web caster and the viewer.

[149]        Mr. Mutual testified that the economics of the two businesses are very different. A television broadcaster pays the same amount of money regardless of how many people watch a broadcaster. As such, it is in the broadcaster's best interest to have the maximum number of viewers. Conversely, a web casting company has to pay for every single piece of band width that it transmits, making it more expensive for the web casting company if more people watch a particular program.

[150]        ITV Technologies also filed a News Release by the Canadian Radio-television and Telecommunications Commission (CRTC) in which the CRTC indicated that it would not regulate new media services on the Internet. With regard to the question of whether content on the Internet is broadcasting, as defined by the Broadcasting Act, the CRTC made the following points:

1. Everything transmitted over the Internet that is predominantly alphanumeric text is by definition not broadcasting under the Broadcasting Act.

2. Material transmitted over the Internet, which is significantly "customizable" or capable of being uniquely tailored by the individual user, does not involve the transmission of programs for reception by the public and is, therefore, not broadcasting.

[151]        Although I agree that broadcasting and web casting are related in that they both provide audio-video content to a mass audience, I do not believe that they are similar. Broadcasting does not allow any interaction between the viewer and the broadcaster. A viewer watches the broadcast passively. By contrast, web casting allows a significant amount of interaction between the viewer and the web caster. Web casting allows a viewer to interact with the video, with such features 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. In my view, an ordinary person at the relevant date, would have been able to grasp these differences between broadcasting and web casting.

[152]        For all these reasons, I am of the opinion that broadcasting and web casting are different and as such, that the services of ITV Technologies and WIC are not similar.

[153]        In making this determination, I acknowledge that WIC operated a web site on the Internet. However, as indicated earlier, I am not satisfied based on the evidence that WIC was known in relation to its web site and the Internet. In my opinion, WIC's www.itv.ca web site was a vehicle to promote its broadcasting services. The evidence does not establish that WIC intended the Internet to be a substantial part of its business. This is different than ITV Technologies, which depended on the Internet for its business. WIC's www.itv.ca web site was a passive web site which simply posted information that was accessed by users. By contrast, ITV Technologies' www.itv.net web site was an active web site, through which business was conducted and which involved the transmission of audio and video files in real time over the Internet in accordance with the selections of Internet users who accessed the web site with their computers.

[154]        I also do not accept Dr. Finn's assertion that it was a natural progression for WIC to become involved in video streaming. In my opinion, the evidence demonstrates that WIC was not interested in entering this business. Dr. Kirk testified that audio and video content was available on WIC's www.itv.ca web site, but only for a month. Mr. Mutual also testified that he developed the web site and simulcasted the video feed of the

Investors On-line Show which was broadcast on the WIC television network. In my view, the fact that WIC obtained a third party to develop the simulcast for a show on its network, and did not attempt to perform this service itself, is evidence that it was not interested in entering this business. Furthermore, WIC did not at any time seek to amend the registrations of its trade-marks to include the Internet as part of its services.

            Nature of the Trade

[155]        Similar to the nature of the wares or services is the consideration of the nature of the trade in which those wares or services circulate. The risk of confusion is greater where the wares or services, though dissimilar, are distributed in the same types of stores or are of the same general category of goods (Pink Panther Beauty Corp.,supra).

[156]        The geographic area where the wares or services circulate can also be taken into consideration. In Man and his Home, supra, Denault J. emphasized the fact that the wares of the parties were distributed in different geographic areas. He stated at page 276:

Finally, there are geographic differences. The plaintiff's trade is mainly limited to the greater Montreal area, whereas the defendant's products are distributed in each province of Canada, in the United States, Mexico and through subdistributors in countries of Central and South America and Eastern Europe. Only a small portion of sales occur in the province of Quebec.

[157]        In the case at bar, the services of ITV Technologies and WIC are provided through two different mediums. Whereas WIC's broadcasting service is provided through a television set, ITV Technologies' web casting service is provided through the Internet on a computer. In my view, this reduces the likelihood of confusion.

[158]        The services of the two parties were also provided in different geographic locations. Although ITV was broadcast throughout Canada, the majority of its viewership was from the province of Alberta. The evidence indicates that from 1990 - 2000, more than 50% of ITV's viewers were from Alberta. By contrast, ITV Technologies had an international presence, where it received recognition for its web cast of such events as the Olympics in Atlanta, the Cannes Film Festival, and the Grammy Awards. This also reduces the likelihood of confusion.

            Degree of Resemblance of Marks in Appearance, Sound and Ideas Suggested

[159]        The last factor for consideration under subsection 6(5) of the Act is the similarity of the two trade-marks in their appearance, sound and idea suggested.

[160]        When faced with marks that are similar, the Court must assess the likely impression made by the mark on the public. It must put itself in the position of a person who has a general recollection of a mark and then upon seeing the other mark at a later date, determine whether such a person is likely to think that one originates from the same source as the other (Merrill Lynch & Co. v. Bank of Montreal (1996), 66 C.P.R. (3d) 150).

[161]        The marks must be considered in their entirety and not as dissected items when determining prospective confusion between marks (Park Avenue Furniture Corp. v. Wickes/Smmons Bedding Ltd (1991), 130 N.R. 223). However, it is still possible to focus on particular features of the mark that may have a determinative influence on the public's perception of it (Ikea Ltd./Idea Ltée v. Idea Design Ltd. (1987), 8 F.T.R. 215).

[162]        Generally, the first word or first syllable in a trade-mark is far the more important for the purposes of distinction (Conde Nast Publications v. Union des Editions Modernes, [1979] F.C.J. No. 801 (Q.L.)). However, this is a general rule that is subject to exceptions (Fonorola, Inc. v. Motorola, Inc. (1998), 144 F.T.R. 97).

[163]        When comparing marks, in addition to the wording of the marks, it is also important to look at the design of the marks (Sum-Spec Canada Ltd.v. Imasco Retail Inc./Société de Détail (1990), 35 F.T.R. 44).

[164]        In the case of weak marks or of marks possessing little inherent distinctiveness, small differences may be accepted to distinguish one from the other. In American Cyanamid Co. v. Record Chemical Co., [1972] F.C.1271, Noël J. affirmed at page 1276:

No doubt, in the case of weak marks or of marks possessing little inherent distinctiveness, small differences may be accepted to distinguish one from the other, but this does not mean that any such weak portions of a mark must be discounted in so distinguishing.

[165]        In Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd., [1992] 3 F.C. 442, the Federal Court of Appeal determined that as the prefix nutri possessed little inherent distinctiveness, there was no likelihood of confusion between the appellant's trade-mark NUTRI-VITE and the respondent's trade-marks NUTRI-MAX and NUTRI-FIBRE. The Court reached this conclusion despite the fact that both marks were used on food products.

[166]        In Merial LLC v. Novartis Animal Health Canada Inc, (2001), 11 C.P.R. (4^th) 191, the Federal Court overturned the Trade-marks Opposition Board and permitted the registration of the mark ELIMINEX over the opposition of ELIMINATOR for similar wares. Hansen J. stated at page 198:

In my view, the strength of the distinguishing aspect of the suffix EX, as opposed to the suffix ATOR, when used in conjunction with the prefix ELIMIN is significant. In the case of the applicant's mark, the addition of the suffix EX creates a coined word while the suffix ATOR in the respondent's mark creates a word found in the common vocabulary. The impact of the suffix EX as opposed to ATOR when considering the totality of the two marks is, in my view, significant. The impact of the suffix is of greater importance when, as in this instance, the common prefix is weak and non-distinctive. This also results in the marks being phonetically distinguishable.

[167]        With regard to WIC's design trade-marks, I am of the view that there is little similarity between these marks and ITV Technologies' mark. The style of lettering, colouring and appearance of WIC's marks are completely different from ITV Technologies' design mark.

[168]        WIC's first design trade-mark is presented in a unique shape and design. The initials "itv" are written in minuscule letters, and have a certain "block-like" shape to them. The letter "i" is separate from the letters "tv" which are joined together. The trade-mark also possesses a unique colour scheme; the letter "i" is solid and coloured in whereas the letters "tv" are clear.

[169]        WIC's second design trade-mark, its brush stroke logo, is also presented in a distinctive shape and design. It consists of an oversized letter "i", written in minuscule letters, placed on top of the letters "TV", written in capital letters. Distinct colours are also used; the letter "i" is red whereas the letters "TV" are white.

[170]        By contrast, the initials "itv" in ITV Technologies' design mark are written in minuscule letters and use a font that is similar to "Times New Roman". The trade-mark possesses only one colour, a shade which can be described as turquoise. Furthermore, ITV Technologies' mark is also often accompanied by its Astro logo, which as admitted by Mr Kirk on cross-examination, is not identical to any design ever used by WIC.

[171]        Based on the designs below, I am satisfied that the design trade-marks of WIC and the design mark of ITV Technologies are not similar.

past picture (both WIC's itv trade-marks and ITV Technologies' mark) - may need more space

[172]        The next question to determine is the degree of resemblance between the use by ITV Technologies and WIC of the letters ITV as a word mark.

[173]        ITV Technologies has used the mark ITV in its corporate name ITV Technologies Inc., in its business name ITV.net, and as a domain name for its www.itv.net web site.

[174]        While I accept that the letters ITV are the dominant feature of the above marks, I believe that the word Technologies and the suffix .net are sufficient to distinguish the marks of ITV Technologies with those of WIC.

[175]        In my opinion, the word Technologies in the name ITV Technologies suggests that it is a business which is involved with technology, either through the use of new machines and procedures, or through the development of existing ones. This name conveys a different message than WIC's ITV marks which were known in association with the operation of a television station.

[176]        The suffix .net in the business name ITV.net also evokes a different idea than WIC's ITV marks. The suffix is descriptive in that it indicates that ITV.net is an Internet based business, involved in the selling of Internet services. Although Mr. Carroll testified that at the relevant date, the distinction between top-level domain names had broken down, this was contradicted by what he had written in his books. In the 1995, 1996 and 1997 editions of his book Canadian Internet Handbook, he described the .net suffix as "often used by organizations reselling Internet services". I am satisfied that at the relevant date, there was a distinction between top-level domain names, and that the .net suffix indicated to the public that ITV.net was an Internet based business.

[177]        Furthermore, in my opinion, the fact that WIC was the owner of the trade-mark ITV as a word mark did not entitle it to a monopoly of all domain names with the prefix ITV. A similar conclusion was reached by Wright J. of the Ontario Superior Court of Justice in the case of Black v. Molson Canada, [2002] O.J. No. 2820.

[178]        In this case, the applicant registered the domain name "canadian.biz", which he intended to use as a portal site for Canadian businesses and entrepreneurs to meet, interact and conduct business with each other. This registration was opposed by Molson Canada, the owner of the trade-mark CANADIAN which was registered in association with beer. Molson Canada demanded that the applicant transfer the domain name to it and commenced a complaint under the dispute resolution policy applicable to ".biz" domain names. The panelist appointed by the dispute resolution provider directed that the domain name be transferred to Molson Canada. The applicant then brought an application before the Ontario Superior Court of Justice for a declaration that he was the rightful registrant of the domain name.

[179]        Wright J. granted the application and held that Molson Canada's ownership of the trade-mark CANADIAN did not entitle it to all the domain names with the prefix Canadian. He made the following comments in his decision:

The fundamental problem stems from the registration of the generic name, "Canadian" as a trade-mark.

[...]

There are hundreds of Canadian businesses and entities which use the word "Canadian" as a prefix or suffix for identification purposes.

[...]

I also note that there are other domain names containing the word "Canadian" which have been registered as: < < canadian.ca > > ; < < canadian.com > > ; < < canadian.net > > ; and < < canadian.org > > . These domain names are owned by persons other than Molson Canada.

[...]

Simply because a domain name is identical or similar to a trade-mark name should not result in the transfer of the domain name to the trade-mark owner. In my view, unless there is some evidence that the use of the domain name infringes on the use of the trade-mark name, a person other than the owner of the trade-mark should be able to continue to use the domain name.

[180]        In the case at bar, ITV Technologies adduced evidence that there were numerous web sites at the relevant date with the prefix ITV. While this does not establish that Canadians were aware of the existence of these web sites, it nevertheless indicates that many businesses and entities were using the letters ITV for identification purposes and therefore, that WIC should not have been entitled to all domain names with the prefix ITV.

All the Surrounding Circumstances

[181]        In addition to the five factors that are to be taken into account when determining a likelihood of confusion, the Act also directs the court or the Registrar to consider all the surrounding circumstances (Pink Panther Beauty Corp., supra).

[182]        One important circumstance which has been considered by the Courts is the evidence of actual confusion. Although a party does not have to prove actual confusion for the court to find a likelihood of confusion, any evidence of actual confusion will always be relevant (Pink Panther Beauty Corp., supra).

[183]        WIC has submitted the evidence of Ms. Godfrey, who testified that she received documentation from ITV Technologies and was confused as to whether it was related to WIC. There is also the evidence of Mr. Mutual, who testified that he received three emails which were destined for another party, presumably WIC.

[184]        I have assigned little weight to this evidence. Ms. Godfrey's conclusion was based on the use of the letters ITV. She did not visit ITV Technologies' web site, nor was she aware of the type of business that ITV Technologies was involved in. In my view, this type of confusion is inevitable and is to be expected when a party, as WIC in this case, has adopted a weak trade-mark.

[185]        With regard to the few emails sent to Mr. Mutual, it is impossible to determine whether the senders of those emails were confused between the businesses of ITV Technologies and WIC. It is quite possible that the emails were sent as a result of confusion between similar email addresses, as opposed to confusion over the source of the trade-mark. In addition, the fact that WIC did not follow up on these emails is in my view, an indication that it was not particularly concerned about the confusion that had allegedly occurred.

[186]        WIC called Dr. Finn to provide evidence that the use by ITV Technologies of its ITV marks in Canada likely led a substantial number of Canadians to the inference that ITV Technologies' services were associated with those of WIC.

[187]        While I accept that an expert can provide an opinion on the issue that is to be ultimately determined by the trier of fact, I am not bound by his conclusions. In Culinar Inc. v. Gestion Charaine Inc. et al. (1987), 16 F.T.R. 202, the Federal Court held at page 219:

The expert witness' opinion was however regarded as admissible in this case, even if based on hearsay, for that opinion was not conclusive but was based on facts which the judge was free to accept or reject. I think, in any case, that an expert witness can certainly give an opinion on the question of fact which ultimately must be decided by the court, but it will be the function of the judge hearing the case to carefully weigh the witness' credibility in light of all the circumstances, and of course he is not bound by the expert witness' conclusions.

[188]        In the case at bar, I have assigned little weight to the opinion of Dr. Finn on the issue of confusion. His conclusion was not based on any surveys or studies that he conducted, but rather, on his own personal opinion. He purports to speak on behalf of ordinary Canadians of average intelligence acting with ordinary caution in the relevant markets, but yet, no evidence was adduced from such persons to corroborate Dr. Finn's opinion.

[189]        Having considered and weighted all the surrounding circumstances in addition to the factors enumerated in subsection 6(5) of the Act, I am of the view that ITV Technologies' use of its ITV marks is not confusing with WIC's registered marks. As a result, there is no infringement of section 20 of the Act.

ii) Goodwill

[190]        WIC further argues that ITV Technologies' use of its ITV marks has depreciated the value of the goodwill attached to WIC's registered trade-marks, contrary to section 22 of the Act. Subsection 22(1) of the Act provides that no person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attached to that trade-mark:

[191]        Goodwill is the reputation that has been built up by the owner of the trade-mark through years of honest work or substantial expenditure of money, with the consequent advantage that the wares or services provided by the owner are associated with the trade-mark. To depreciate the value of the goodwill in a mark means to reduce in some way the advantage of the reputation associated with the mark, and to reduce the esteem in which the mark is held (Clairol International v. Thomas Supply & Equipment Co., [1968] 2 Ex. C.R. 552; S.C. Johnson & Son, Ltd. v. Marketing International Ltd., [1977] F.C.J. No. 111 (Q.L.)).

[192]        In determining the scope of section 22, it is helpful to consider certain cases in which the Courts have found a depreciation of goodwill.

[193]        In Source Perrier (Société Anonyme) v. Fira-Less Marketing Co. Ltd., [1983] 2 F.C. 18, the defendant marketed bottled water in association with the name "Pierre Eh" in bottles substantially similar to those of the plaintiff's "Perrier" bottles. The defendant's product was intended to be an object of political spoof. The Court granted an injunction restraining the defendant from marketing its product. Dubé J. stated at page 23:

Of more significance, however, is that the defendant is depreciating the value of the goodwill attached to Perrier's marks contrary to the provisions of subsection 22(1) of the Act. The fact that the defendant intends to produce a spoof does not take away from the deception created in the minds of the customers. The defendant is clearly attempting to cash in on the well-established reputation of Perrier, and the deception, in my view, tends to dilute the quality of its trade marks, to impair its business integrity established over the years, and to cause injury to its goodwill.

Undoubtedly, a customer approaching the "Pierre Eh!" bottle and examining the labels will discover the spoof, but confusion is not the test to be used under section 22, "the test is the likelihood of depreciating the value of the goodwill attaching to the trade mark, a result which would not necessarily flow from deception and which might result without deception being present".

[194]        In Eye Masters Ltd. v. Ross King Holdings Ltd., [1992] 3 F.C. 625, the plaintiff sought an interlocutory injunction to prevent the defendant from referring to its trade-mark in comparative advertising. The plaintiff and the defendant were both engaged in the retail sale of eyeglasses, contact lens and related optical products. The defendant formed the opinion that the plaintiff charged higher prices for the products sold and purchased advertising reflecting this state of affairs. Reed J. determined that the advertising diminished the goodwill attached to the plaintiff's business:

[...] The advertising shows the same model, in two photographs which are placed side by side. In one of the photographs the model is frowning and the printing at the top of the photograph reads: "Eye Masters [Ltd.], $208 Reg. Price" In the other photograph the model is smiling and the printing at the top of the photograph reads: "Shopper's Optical, $107 Reg. Price" Above the two photographs in large letters is "COMPARE THE VALUE--SHOPPER'S OPTICAL". The model is wearing similar-looking eyeglasses in the two photographs. The eyeglasses are not identical and there is considerable dispute between the parties as to their respective quality.

[...]    The advertising leaves a very negative impression. Its objective and probable effect is to create a lasting and negative impression in the mind of the public as to the lesser value obtained in shopping at Eye Masters. The focus of its attack is the goodwill of Eye Masters' business. [...]

[195]        Although confusion is not the test under section 22, the potential for confusion may have the effect of depreciating the value of the goodwill of a registered trade-mark. In Jercity Franchises Ltd. v. Foord (1990), 39 F.T.R. 315, Strayer J. stated at pages 318-319:

For essentially the same reasons I would find that a strong prima facie case has been made out of the violation of subsection 22(1) because of the use of JERSEY JOE'S by the defendant in retail outlets selling, in part, similar sports related clothing. The potential confusion is likely to have the effect of depreciating the value of the plaintiff's goodwill and its registered trade marks, in respect of which the plaintiff spent substantial amounts on advertising prior to the defendant opening his business.

[196]        Based on this jurisprudence, I believe that two conditions are necessary for WIC to successfully invoke section 22. First, the public must make a connection between the marks of the two parties. Second, the use by ITV Technologies of its ITV marks must have the probable effect of creating a negative impression on the mind of the public such that it will impair the goodwill attached to WIC's trade-marks.

[197]        With regard to the first condition, the public must be able to make the connection that the defendant is referring to the plaintiff's trade-mark. For example, in Source Perrier, supra, there was no question that the defendant's product was a parody of the plaintiff's Perrier beverage. Similarly, in Eye Master's, supra, the public was aware that the defendant was referring to its competitor in the advertisements.

[198]        By contrast, in the case at bar, I am of the opinion that an ordinary consumer, upon seeing ITV Technologies' business name ITV.net or its corporate name ITV Technologies Inc. or its web site www.itv.net, would not immediately make a connection with WIC, in light of the evidence demonstrating that numerous organisations were using the ITV acronym for identification purposes.    Without this connection, it cannot be said that WIC's goodwill has been diminished.

[199]        The use of the trade-mark must also have the effect of depreciating the goodwill attached to a registered trade-mark. In the case at bar, even assuming that an ordinary consumer believed that ITV Technologies was affiliated with WIC, I am not satisfied that this would have depreciated the value of WIC's ITV marks.

[200]        The evidence demonstrates that ITV Technologies was one of the pioneers and innovators in the field of web casting. ITV Technologies' reputation was so reputable that WIC even asked to collaborate with ITV Technologies for the Investor's On-line Show. Therefore, even if an ordinary consumer had been under the impression that ITV Technologies and WIC were related, I do not believe that he or she would have had a negative impression of WIC based on ITV Technologies' business and web site.

[201]        For all these reasons, I am of the view that ITV Technologies' use of its ITV marks has not depreciated the value of the goodwill attached to WIC's registered trade-marks, and there is no infringement of section 22 of the Act.

iii) Passing Off

[202]        WIC finally argues that ITV Technologies' use of the mark ITV infringes subsection 7(b) of the Act which reads as follows:

[203]        Subsection 7(b) is a statutory enactment of the common law action of classic passing off. This is a form of misrepresentation whereby a trader benefits from another person's goodwill by pretending that his wares, services or business are those of that other person (MacDonald v. Vapor Canada Ltd., [1977] 2 S.C.R. 134).

[204]        In order to succeed in an action for passing off, the plaintiff must establish three elements: the existence of goodwill, deception of the public due to a misrepresentation, and actual or potential damage to the plaintiff (Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120).

[205]        In the case at bar, while I am satisfied that the evidence demonstrates that WIC's trademarks have acquired goodwill in relation to an Edmonton-based television station, I do not believe that the evidence supports a finding that there has been deception of the public due to a misrepresentation. Mr. Mutual testified that he went out of his way to forward the three emails that he had received, and specifically indicated that he was not affiliated with WIC. ITV Technologies also put a sign on its web site informing the public that it was not affiliated with CITV. At no time did ITV Technologies portray to the consuming public that it was WIC or that it was associated in any sort of commercial fashion with WIC. In addition, I have determined that ITV Technologies' marks are not confusing with those of WIC. As the deception of the public due to a misrepresentation is an essential component to the action of passing-off, WIC cannot succeed with its claim.

[206]        As such, I am of the view that ITV Technologies' use of its ITV marks does not infringe subsection 7(b) of the Act.

[207]        For all these reasons, the counterclaim of the defendant WIC is dismissed with costs.

                                                  ORDER

THIS COURT ORDERS that ITV Technologies's claim is dismissed with costs. The counterclaim of the defendant WIC is dismissed with costs.

                                                                      "Danièle Tremblay-Lamer"

J.F.C.

                          FEDERAL COURT OF CANADA

                                       TRIAL DIVISION

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                 T-1459-97

STYLE OF CAUSE: ITV TECHNOLOGIES,INC. v. WIC TELEVISION LTD

WIC TV AMALCO INC.,and others v.

ITV TECHNOLOGIES,INC. (Counterclaim)

PLACE OF HEARING:         Vancouver, British Columbia

DATE OF HEARING:           April 28^th, 2003

REASONS FOR ORDER

AND ORDER:                         Madam Justice Tremblay-Lamer

DATED:                                   September 10, 2003

APPEARANCES:

Mr. Paul D. Gornall                    FOR PLAINTIFF

Mr. Brian Edmonds

Mr. Barry Fraser                        FOR DEFENDANT

SOLICITORS OF RECORD:

McCarthy Tetrault                     FOR PLAINTIFF

Toronto, Ontario /

Vancouver, BC

Mr. Paul G. Gornall                    FOR DEFENDANT

Vancouver, BC