“VIBETRAIN” Carries a Confusing Vibe
Vibe Media Group LLC now Intermedia Vibe Holdings LLC v. Lewis Craig trading as VIBETRAIN, 2010 FC 214 (Mandamin, J.)

February 24, 2010

Tony Bortolin for the Applicant, Intermedia Vibe Holdings LLC
Lewis Craig for the Respondent, Lewis Craig trading as VIBETRAIN

This was an appeal by the Applicant, Vice Media Group LLC, of a decision of the Trade-marks Opposition Board, denying an opposition to the trade-mark VIBETRAIN.  The appeal was successful, based on new evidence of likelihood of confusion. No costs were awarded.   

The Respondent had applied for the trade-mark VIBETRAIN mainly in connection with wares and services related to music and culture with regards to recordings and publications with related publications and media. The Applicant, who published a popular urban culture magazine called ‘Vibe’, filed a statement of opposition which was denied.  

On appeal, the Court found that the word “vibe,” while no longer inherently distinctive in common parlance, had a nuanced distinctiveness in association with the VIBE magazine.  The Court found that the magazine had gained reputation in association with the mark.  

The Court accepted new evidence as permitted by Section 56(5) of the Trade-marks Act.  It accepted Applicant’s evidence that the dominant word in VIBETRAIN is “vibe”, and that its use of the word VIBE had extended to many other areas of music, culture and clothing, which the Respondent’s mark had sought to identify. On the basis of the new evidence, plus the longstanding use of the mark VIBE by the Applicant, going back to the magazine’s originator Quincy Jones, the Court found that confusion would arise. The appeal was allowed.

Of interest, the Court observed that the respondent was self-represented, had refrained from using VIBETRAIN until the matter was settled, and had conducted himself responsibly throughout.  Therefore no costs were awarded.     

By:  Ruth M. Corbin, with the assistance of Sarah Carnegie