Cushman & Wakefield Inc. v. Wakefield Realty Corp., 2004 FC 210

Date: 20040209

Dockets: T-229-01

T-230-01

Citation: 2004 FC 210

BETWEEN:

                                                   CUSHMAN & WAKEFIELD, INC.

                                                                                                                                                       Applicant

                                                                              - and -

                                              WAKEFIELD REALTY CORPORATION

                                                                                                                                                   Respondent

                                                            REASONS FOR ORDER

HARRINGTON J.:

[1]                 Imposters are dangerous. There is a thriving trade in stolen and false identities. Passports, visas and credit cards come immediately to mind. Each of us is unique and should not fly false flags.

[2]                 In the world of commerce this means one cannot pass off one's wares and services as those of another. In order to reduce the chance of confusion one cannot incorporate under a name that already exists or under a name similar to one in existence. In the same vein the Trade-marks Act, R.S.C. 1985, c.T-13 allows for the registration of trade-marks and trade-names. This registration and related publicity gives a measure of protection to those buying or selling wares or services. No one is permitted to register a trade-mark which is not distinctive or which is confusing with a registered trade-mark.

[3]                 Cushman & Wakefield, Inc., a New York corporation, applied to register the trade-marks "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD design" based on proposed use in Canada for real estate brokerage and related services.

[4]                 The application was opposed by Wakefield Realty Corporation of Toronto on the grounds that the applied-for trade-marks were confusing with its registered trade-mark "WAKEFIELD design" which had been in use for some time in association with real estate brokerage and related services. Wakefield also opposed because of its prior use of its trade-name, "WAKEFIELD REALTY CORPORATION", and because the applied-for trade-marks were said not to be distinctive in view of Wakefield Realty Corporation's past and current use of its trade-mark and trade-name.

[5]                 A member of the Trade-marks Opposition Board delegated by the Registrar of Trade-marks (hereinafter the "Registrar") dismissed the application on the grounds that Cushman & Wakefield did not satisfy him that the two trade-marks were not confusing with the registered trade-mark "WAKEFIELD design", and the trade-mark "WAKEFIELD". Furthermore, Wakefield Realty Corporation had shown prior use of its trade-name and non-abandonment thereof so that the registration of the applied-for marks could lead to confusion with the trade-name "WAKEFIELD REALTY CORPORATION", and the proposed marks did not distinguish its services.

[6]                 Cushman & Wakefield Inc. appealed that decision to the Federal Court pursuant to section 56 of the Act. Wakefield Realty Corporation maintains its opposition and is respondent on the appeal.

STANDARD OF REVIEW

[7]         An appeal from the Registrar of Trade-marks has its peculiarities. Both parties may adduce evidence in addition to that adduced before the Registrar, and the Court may exercise any discretion vested in the Registrar. As might be expected, this section has given rise to a great deal of jurisprudence dealing with the significance of the fresh evidence adduced before the Court and the circumstances in which it would be appropriate for the Court to exercise its discretion in a manner different from the Registrar.

[8]                 The current state of the law is succinctly summarized by Décary J.A. in Christian Dior, S.A. v. Dion Neckware Ltd., 2002 FCA 29, 20 C.P.R. (4^th) 155, at paragraph 8:

Decisions of the Registrar, whether of facts, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter, which is synonymous to "clearly wrong". Where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's decision, a judge must come to his or her conclusion as to the correctness of the Registrar's decision (see Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), per Rothstein J.A., at page 168: Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51 (F.C.A.), per Malone J.A., at paragraph 13 and Isaac J.A., at paragraph 10; Garbo Creations Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224 (F.C.T.D.) per Evans J., at page 234).

[9]                 Pursuant to the Supreme Court of Canada's recent discussion of the reasonableness standard in 2003 SCC 20">Law Society of New Brunswick v. Ryan, 2003 SCC 20, a reviewing court must look to the reasons given by the tribunal and determine whether there is a line of analysis within the given reasons that could reasonably lead the tribunal from the evidence before it to the conclusion at which it arrived. If any of the reasons that are sufficient to support the conclusion are tenable in the sense that they can stand up to a somewhat probing examination, then the decision will not be unreasonable.

[10]            The first task which therefore falls upon this Court is to decide whether the additional evidence would have affected the Registrar's decision. If it would have, then the issue is whether or not the decision was correct. If not, the issue is whether the decision was unreasonable.

[11]            To be put in proper perspective, the standard of review whether it be correctness or reasonableness simpliciter must be contrasted with the third standard, that of patent unreasonableness. See 2003 SCC 20">Law Society of New Brunswick v. Ryan, supra, and 2003 SCC 19">Dr. Q. v. College of Physicians and Surgeons of British Columbia, 2003 SCC 19.

THE CASE BEFORE THE REGISTRAR

[12]       As a great deal of additional evidence was adduced before the Court, we must begin with the evidence before the Registrar.

[13]            Cushman & Wakefield filed its trade-mark applications on June 30, 1994, for proposed use in association with:

"real estate brokerage services, namely, the leasing and sale of commercial industrial and multi-family residential property; real estate management and facilities operations; appraisal; insurance; real estate project consulting; research and development, including evaluations and reports, site plan analysis and feasibility studies."

[14]            The applications were amended on November 8, 1995, to include a disclaimer to the word "Cushman", and both were advertised for opposition purposes November 8, 1995. By filing a disclaimer, Cushman & Wakefield acknowledged that it was not seeking a proprietary interest in the word "Cushman" which by itself would, as the Registrar found, be taken to be a family name.

[15]            Wakefield Realty Corporation filed statements of opposition on November 17, 1995.

[16]            Four grounds of opposition proved to be successful. The first was that the applied-for trade-marks were not registrable pursuant to section 12(1)(d) of the Act because they were confusing with its trade-mark "WAKEFIELD design" which had been registered in relation to:

Real estate services including all of the services inherent in the operation of a real estate brokerage, a mortgage brokerage, a business brokerage, property management, and appraisal service.

[17]            The second successful ground was that Cushman & Wakefield was not entitled to register the marks pursuant to section 16(3)(a) of the Act because the applied-for trade-marks were confusing with the trade-mark "WAKEFIELD" previously used in Canada with respect to real estate services.

[18]            The third ground was that Wakefield Realty Corporation had prior entitlement based on its prior use of its trade-name "WAKEFIELD REALTY CORPORATION".

[19]            Finally, the applied-for trade-mark was found not to be distinctive in view of Wakefield Realty Corporation's use of its own trade-mark and trade-name.

[20]            Cushman & Wakefield's evidence comprised the affidavits of Frank Ziska and Jamie Bocking. Mr. Ziska was the Managing Director, United States/Canadian Operations of Cushman & Wakefield. He pointed out that on May 21, 1997 Cushman & Wakefield Inc. obtained Canadian registration for the trade-mark "CUSHMAN & WAKEFIELD WORLDWIDE" for:

...real estate brokerage services; real estate management services; real estate appraisal services; real estate financial services; real estate leasing services; real estate consulting services; real estate research services; real estate development services; insurance services.

He said that Cushman & Wakefield had authorized Royal Lepage Commercial Inc. to use that trade-mark in Canada. Cushman & Wakefield Worldwide was said to be an association of seven major real estate firms operating in different jurisdictions.

[21]            He went on to say that Royal Lepage Commercial Inc. had, for approximately two years, been using the trade-mark "CUSHMAN & WAKEFIELD WORLDWIDE" and the trade-name "CUSHMAN & WAKEFIELD" in Canada by displaying them on letterheads, business cards and other stationery materials. In addition, Royal Lepage Commercial Inc. distributed to clients and prospective clients an annual survey in which the trade-name "CUSHMAN & WAKEFIELD WORLDWIDE" and the trade-name "CUSHMAN & WAKEFIELD" appeared, as it did in newsletters, posters and other advertising paraphernalia.

[22]            Mr. Bocking was an articling student with Cushman & Wakefield's Canadian counsel. He had attended the National Library of Canada and appended to his affidavit photocopies of relevant pages of Canadian telephone directories which included the word "Wakefield" in association with real estate. He found a listing for "Wakefield Ridge Estates" in Ottawa, "Wakefield Realty" in Vancouver, and of course "Wakefield Realty Corporation" in Toronto, as well as other entries relating to construction and the like.

[23]            In opposition, Wakefield filed the affidavit of its President, Howard Freeman, who was cross-examined. In essence, Mr. Freeman testified that his corporation had been operating continuously in the Greater Toronto Area since July 1977, primarily as a residential real estate broker, but time to time in relation to commercial properties. Although "Wakefield" was the primary word in trade-names of various real estate companies owned and operated by Mr. Freeman's family since 1926, emphasis was placed on the fact that "Wakefield" had been transferred to "Wakefield Realty Corporation" in 1977. It was established that Wakefield advertised regularly. All this was in addition to the record which established that Wakefield had been registered as a trade-mark in 1986.

[24]            Mr. Freeman concluded his affidavit by saying:

I am concerned that use by another realtor of the name WAKEFIELD, alone or in combination with other words, will lead to public confusion and the assumption that Wakefield Realty Corporation, has somehow become affiliated or amalgamated with another realty company in Canada.

[25]            The Registrar noted that although Mr. Bocking had brought forward names that appeared in telephone directories, there was no evidence of the use of business names, other than Wakefield Realty.

[26]            Mr. Ziska's evidence was largely discounted as hearsay, and as being inadmissible. However, the Registrar went on to say that even if the statements were admissible there was insufficient evidence to establish that Royal Lepage had used the trade-mark "CUSHMAN & WAKEFIELD WORLDWIDE" under license and in any event for the most part the Royal Lepage materials evidenced use of the trade-mark or trade-name "CUSHMAN & WAKEFIELD WORLDWIDE" rather than the applied-for marks "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD design".

[27]            In coming to the conclusion he did the Registrar noted that the services of the parties were very similar, ie. the real estate business, and so could overlap. Although Cushman & Wakefield contended that its services were distinct because they were restricted to commercial real estate while Wakefield primarily engaged in residential real estate, the statements of services as filed were not so restricted and Wakefield occasionally got involved in rural, recreational and commercial properties. He also said:

As for section 6(5)(e) of the Act, I consider that there is a fairly high degree of resemblance in all respect between the marks at issue. The applicant has conceded that the first component of its two marks (namely, the word CUSHMAN) is non-distinctive. Thus, it has adopted the entirety of the opponent's trade-mark WAKEFIELD as the second and more distinctive component of its two trade-marks.

[28]            Section 6(5)(e) of the Act reads:

[29]            Wakefield relied on evidence of actual confusion or mistake, as Mr. Freeman had testified in cross-examination that he was aware of two or three incidents in which customers had seen the mark CUSHMAN & WAKEFIELD WORLDWIDE and had assumed some connection with Wakefield. The Registrar did not give that circumstance a great deal of weight, but nevertheless said:

...but it does underscore the likelihood of mistake occurring between the marks of the parties.

ADDITIONAL EVIDENCE IN APPEAL

[30]       Cushman & Wakefield filed a great deal of additional evidence in appeal. It turned the hearsay evidence of Frank Ziska into harder evidence by filing affidavits from Wayne Mondville and Sarah Langdon, who were involved with Royal Lepage Commercial Inc. at relevant times. They and John Coppedge, Executive Vice-President for International Operations at Cushman & Wakefield also dealt at some length with the business relationship between Cushman & Wakefield and Royal Lepage Commercial Inc. Celine Clarke, Director of Corporate Communications for Cushman & Wakefield, provided information about press releases and advertisements placed from 1990 onwards which promoted the Cushman & Wakefield name and the marks "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD WORLDWIDE" as well as its relationship with Royal Lepage Commercial Inc.

[31]            Affidavits were also filed by Mindy Klasky, Robert Dickey and Robert White which dealt with such matters as news reports of Cushman & Wakefield's operations in Canada and information on the circulation in Canada of various business magazines, some of which were published in the United States, and newspapers. The goal was to show that the Cushman & Wakefield name, in one form or another, had been promulgated in the Canadian marketplace. Mr. Coppedge was cross-examined.

[32]            Wakefield filed a further affidavit from its Howard Freeman, who again was cross-examined.

THE ISSUES IN APPEAL

[33]       In its application in appeal Cushman & Wakefield alleged eight grounds of appeal. Two are no longer relevant in that they relate to the characterization and rejection of some of Mr. Ziska's assertions as hearsay. What might have been said to be hearsay evidence before the Registrar is not hearsay evidence before this Court because of the affidavits filed by persons who had more personal knowledge of the facts in question. Five of the remaining grounds are that the Registrar erred:

a)          in finding that there was no evidence of use of the CUSHMAN & WAKEFIELD WORLDWIDE trade-mark under license by Royal Lepage;

b)          in finding that there was no evidence that the trade-mark "CUSHMAN & WAKEFIELD" had become known in Canada;

c)          in concluding that there was evidence of "not insignificant" use of the Wakefield trade-mark;

d)         in concluding that the services and trades of the parties overlapped and in not considering the issue of confusion from the point of view of the "ordinary consumer" to whom each party's respective services and trades were directed; and

e)         in failing to consider the applied-for trade-marks in their entirety and in attributing significance to the disclaimer of the word "Cushman" in the application;

[34]            Finally, the applicant submits that the Registrar reached the wrong decision in the light of the additional evidence.

[35]            For its part, Wakefield submits that the Registrar did not err in finding a fairly high degree of resemblance in all respects between the trade-marks, that he properly assessed the likelihood of confusion and that Cushman & Wakefield had failed to discharge its burden of proof. The decision was said to be right even in light of the additional evidence filed because there was no valid license of the Cushman & Wakefield trade-marks in favour of Royal Lepage Commercial Inc. pursuant to section 50 of the Trade-marks Act, and that any unlicensed use of the trade-marks by Royal Lepage did not render them distinctive marks of Cushman & Wakefield but actually rendered them non-distinctive. In the alternative, even if there were a valid license, the use was of the "CUSHMAN & WAKEFIELD WORLDWIDE" trade-mark, which was not sufficient to show use in Canada of the two trade-marks under application. In any event, Cushman & Wakefield had not discharged its burden to show there was no likelihood of confusion.

ANALYSIS

[36]       I have formed the opinion that the additional evidence filed would have materially affected the Registrar's decision, and therefore I must decide whether the decision was correct, not whether it was unreasonable.

[37]            Cushman & Wakefield has established to my satisfaction that that name, either alone or in conjunction with "Worldwide", was widely known in Canada in the appropriate circles and that Royal Lepage's use of the trade-mark "CUSHMAN & WAKEFIELD WORLDWIDE" was authorized and controlled. Had these facts been before the Registrar, he could not have held that there was insufficient evidence that Royal Lepage had used the trade-mark "CUSHMAN & WAKEFIELD WORLDWIDE" under license and that Mr. Ziska's statements provided little, if any, evidence of use of the two applied-for trade-marks.

A FRESH LOOK

Is the trade-mark registrable?

[38]       According to Wakefield, one must consider section 12(1)(d), section 6(2) and section 6(5) of the Act. They provide that a trade-mark is not registrable if it is confusing with a registered trade-mark. The use of a trade-mark would cause confusion with another if the use of both:

[39]            Section 6(5) goes on to provide:

[40]            In the light of the evidence before me, I find that the proposed trade-marks are registrable and should not cause confusion. Cushman & Wakefield has overcome the burden of proof which lay upon it before the Registrar, and before this Court.

[41]            As the Registrar noted, there are differences in the dates at which the confusion analysis must take place with respect to the different grounds of opposition urged by Wakefield. The Registrar held that the conclusions with respect to confusion between the Cushman & Wakefield trade-marks and Wakefield Realty Corporation's trade-mark were largely applicable to its conclusions with respect to the remaining grounds of opposition. In any event, I find that nothing really turns on any differences in the facts as they stood as of the date of filing, June 30, 1994, the filing of the opposition on November 17, 1995, and the Registrar's decision of December 8, 2000.

[42]            The words in question are weak in the sense of not being particularly distinctive in that they have family name or geographical connotations. The first word in a trade-mark is most important for the purposes of distinguishing between two trade-marks (Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.)) and the Registrar gave too much weight to Cushman & Wakefield's disclaimer of the right to exclusive use of the word "Cushman" in its applications. The combination of all elements constituting the mark have to be assessed in their overall effect. See Christian Dior, supra. Since the marks were weak, small differences are sufficient to distinguish them (Weetabix of Canada Ltd. v. Kellogg Canada Inc., 2002 FCT 724, 20 C.P.R. (4^th) 17).

[43]            The issue of confusion arising from the sale of services under competing trade-marks is to be determined by reference to the persons more likely to purchase those services (Baylor University v. Governor and Co. of Adventurers in Trading into Hudson's Bay (2000), 8 C.P.R. (4^th) 64 at 74 (F.C.A.)). Although Cushman & Wakefield overstated the distinction between commercial real estate and residential real estate brokerage services, persons currently minded to purchase the services of Wakefield are not likely to approach Cushman & Wakefield who limit themselves to commercial real estate brokerage.

[44]            The Registrar erred in suggesting that the Cushman & Wakefield marks had never been used in Canada. There is clear evidence that they had, although most of the use was of the trade-mark "CUSHMAN & WAKEFIELD WORLDWIDE". On that point, I further agree with counsel for the applicant that the use of "Cushman & Wakefield" even in conjunction with "worldwide" is relevant. Authority is to be found in the decision of the Federal Court of Appeal in Canada (The Registrar of Trade-marks) v. Compagnie internationale pour l'informatique CII Honeywell Bull S.A., et al., [1985] 1 F.C. 406; 4 C.P.R. (3d) 523. The issue in that case is whether CII used its trade-mark "BULL" when it used the composite mark "CII HONEYWELL BULL" to identify its wares. The trial judge held that it did: see [1983] 2 F.C. 766, 77 C.P.R. (2d) 101.    Although he was reversed on appeal, the Federal Court of Appeal held that the test to be applied was that used by the trial judge: whether the mark was used in such a way that it did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used. As reiterated by the Court of Appeal, a practical way of deciding is to determine whether the differences were so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identified goods having the same origin.

[45]            In this case I find that a purchaser would likely infer that services offered by Cushman & Wakefield and services offered by Cushman & Wakefield Worldwide emanated from the same source.

[46]            Cushman & Wakefield acted as a consultant in some construction projects in Canada going back to the 1980s. More important, however, is its subsequent relationship with the commercial division of Royal Lepage Real Estate Services Ltd., which later because a separate corporation, Royal Lepage Commercial Inc. That relationship, as sworn to by Sarah Langdon who had gathered the evidence attested to by Frank Ziska, establishes that between 1993 and 1995 the "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD WORLDWIDE" trade-marks and trade-names were used by Royal Lepage with permission and authorization.

[47]            I also consider it significant that "CUSHMAN & WAKEFIELD WORLDWIDE" was registered as a trade-mark in Canada and has only led to the anecdotal confusion referred to by Mr. Freeman in his cross-examination. In any event, that evidence simply led to enquiry and cannot be said to have led to confusion.

[48]            Consequently, having regard to all the surrounding circumstances, I am satisfied that there is no significant likelihood of confusion between "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD Design" on the one hand, and "WAKEFIELD REALTY CORPORATION" and "WAKEFIELD design" on the other.

Is Cushman & Wakefield entitled to register?

[49]       In accordance with section 16(3) of the Act, a proposed trade-mark may not be registered if, at the date of filing of the application, it was confusing with a trade-mark that had been previously used in Canada or made known in Canada by any other person, or was confusing with a trade-name that had been previously used in Canada by any other person.

[50]            The same confusion analysis under section 12(1)(d) of the Act applies here.

[51]            For the same reasons, I find that there is little likelihood of confusion between "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD design" on the one hand, and "WAKEFIELD REALTY CORPORATION" and "WAKEFIELD design" on the other.

[52]            Since there is no confusion between the trade-mark "FROOT LOOPS" and "FRUIT DOTS" for breakfast cereals and snack foods, there can hardly be confusion between "WAKEFIELD" and "CUSHMAN & WAKEFIELD" (Weetabix, supra).

Are the proposed trade-marks distinctive?

[53]       According the section 2 of the Act:

[54]            Much of the argument turned on section 50(1) of the Act which provides:

[55]            The license issue is relevant in light of my finding that the trade-name "CUSHMAN & WAKEFIELD" was used in Canada and was not subsumed into "CUSHMAN & WAKEFIELD WORLDWIDE", unlike "BULL", which was subsumed into "CII HONEYWELL BULL". The use of the "CUSHMAN & WAKEFIELD WORLDWIDE" trade-mark can only inure to Cushman & Wakefield's benefit if Royal Lepage used it under license or authority and Cushman & Wakefield maintained direct or indirect control of the character or quality of the services. Wakefield argues that there was no such license or authority, or in the alternative if there was, Cushman & Wakefield at most maintained an indirect control of the use of the trade-mark as opposed to the character or quality of the services, ie. real estate brokerage, etc.

[56]            The essence of the relationship between Cushman & Wakefield and Royal Lepage is a joint venture and referral arrangement. The written memorandum of agreement does not address trade-marks. However, the authority need not be in writing. I am satisfied that Royal Lepage had authority from Cushman & Wakefield to use both the "CUSHMAN & WAKEFIELD" name and the "CUSHMAN & WAKEFIELD WORLDWIDE" trade-mark. The evidence of John Coppedge and Sarah Langdon shows there was authorization. In furtherance of the joint initiative, Cushman & Wakefield established the position of Director of United States/Canadian Operations, a position initially held by its Frank Ziska. Thereafter, a branding initiative allowed Royal Lepage to continue to use the "CUSHMAN & WAKEFIELD" name but also the trade-mark. All business activities were closely monitored so that the requirements of section 50(1) have been met.

CONCLUSION

[57]       The appeals are maintained.

[58]            The decision of David J. Martin, Member, Trade-marks Opposition Board, in the matter of the oppositions by Wakefield Realty Corporation to applications nos. 758,126 and 758,127 for the trade-marks "CUSHMAN & WAKEFIELD" and "CUSHMAN & WAKEFIELD design", filed by Cushman & Wakefield Inc., are set aside and the Registrar of Trade-marks is directed to allow the applications.

[59]            Cushman & Wakefield Inc. shall have its costs in this appeal as against the respondent. However, there shall only be one set of costs for dockets nos. T-229-01 and T-230-01.       

"Sean Harrington"

                                                                                                           Judge                          

Ottawa, Ontario

February 9, 2004

                                       FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKETS:                                                         T-229-01 and T-230-01

STYLE OF CAUSE:                                        CUSHMAN & WAKEFIELD, INC.

and

WAKEFIELD REALTY CORPORATION

PLACE OF HEARING:                                                OTTAWA, ONTARIO

DATE OF HEARING:                                                  FEBRUARY 2, 2004

REASONS FOR ORDER:                                        HARRINGTON J.

DATED:                                                             FEBRUARY 9, 2004

APPEARANCES:

Ms. Justine Whitehead                                                     FOR APPLICANT

Mr. David Aylen                                                   FOR RESPONDENT

SOLICITORS OF RECORD:

Stikeman Elliott                                                     FOR APPLICANT

Ottawa, Ontario

Gowling Lafleur Henderson LLP                                      FOR RESPONDENT

Toronto, Ontario