In Gang Cao and Apple Inc., 2023 TMOB 142 (CanLII), the Trademark Opposition Board rejected an opposition against the mark LIVE PHOTOS brought on clear descriptiveness and non-distinctiveness grounds. The decision was made in the context of a series of oppositions brought against Apple’s trademark applications for LIVE PHOTOS and related marks.
In this case, Apple Inc. (the “Applicant”) filed a trademark application for the mark LIVE PHOTOS in association with the Class 9 goods Computer software for recording and displaying images, video and sound.
Gang Cao (the “Opponent”), who was self-represented, opposed the application on a number of grounds including, that the mark was clearly descriptive. At the hearing of the matter, the opponent also attempted to introduce a bad faith ground of opposition that was not pled in the Statement of Opposition.
The opponent did not file any evidence in support of any of the grounds of opposition. The applicant filed extensive expert and fact evidence in support of the application though this evidence was not discussed in detail given that it was ultimately unnecessary for the Board to consider any of the grounds of opposition on their merits.The opponent did not file written arguments. Both parties attended an oral hearing.
The main ground of opposition was whether the LIVE PHOTOS mark was clearly descriptive of the goods, and, therefore, unregistrable pursuant to s. 12(1)(b) of the Trademarks Act. In rejecting this ground of opposition, the board noted that, by not submitting evidence, the opponent failed to meet its initial evidential burden, and noted that nothing in the Applicant’s evidence put this ground into issue.
Notwithstanding the burden issue, the board did go on to consider the descriptiveness of the mark taking note of the applicant’s arguments that the mark contained multiple meanings with the board observing that the mark was an oxymoron (“a photograph, by definition, cannot be ‘live’ per se”). The board found that only with an understanding of the “the end-photographic effect” would a descriptive meaning become clear. This extra step in reasoning meant that there was not a descriptive first or immediate impression from the point of view of the average purchaser of the associated goods, which is required to demonstrate a mark is clearly descriptive.
The board also declined to take notice of an EUIPO decision rejecting the same mark on descriptiveness and distinctiveness grounds submitted at the oral hearing, on the basis that it was not properly tendered as evidence and because the Registrar is not bound by the foreign decisions generally.
Regarding the other grounds of opposition, the board noted that the failure to file evidence meant that the opponent did not meet its initial burden for those grounds and, as such, they were rejected out of hand.In terms of the unpled bad faith ground, the board held that because the ground was not pled in the Statement of Opposition, the opponent was precluded from relying on it and therefore the ground could not be considered. The board also observed that since the application was a Protocol Application, the opponent was precluded from amending the Statement of Opposition to add the additional ground.
This decision offers an example of an unsuccessful opposition on descriptiveness grounds where the board found that there were multiple possible meanings of the mark such that there was not a clearly descriptive connotation on the immediate first impression of the relevant consumer.
The case also demonstrates the perils of self-representation in contentious matters, where failure to adhere to technical and procedural requirements can detrimentally impact outcomes.
It is recommended to retain competent counsel throughout all stages of the trademark process whether contentious or not.
