Docket: T-866-15
Citation:
2016 FC 1075
Toronto, Ontario, September 22, 2016
PRESENT: The
Honourable Mr. Justice O'Reilly
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BETWEEN:
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TIMES GROUP
CORPORATION &
TIMES
DEVELOPMENTS INC.
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Applicants
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and
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TIME
DEVELOPMENT GROUP INC. &
TIME DEVELOPMENT
INC.
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Respondents
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JUDGMENT AND REASONS
I.
Overview
[1]
Since the mid-1980s, the applicants, Times Group
Corporation and Times Developments Inc. (collectively, Times), have carried on
business as property developers and managers, mainly in the Greater Toronto
Area (GTA). Times’ principal target market is the Chinese Canadian community. Times
has used the trade-names TIMES GROUP CORPORATION and TIMES DEVELOPMENTS INC in
the course of its business activities. It registered the trade-mark TIMES GROUP
CORPORATION in 2014.
[2]
Times contends that the respondents, Time
Development Group Inc. and Time Development Inc. (collectively, TDG) are
infringing Times’ trade-names and mark. TDG also conducts business in property
development and management in the GTA, and similarly targets the Chinese
Canadian community. TDG uses the trade name TIME DEVELOPMENT GROUP. TDG says
that when it incorporated as Time Development Inc. in 2008, it searched for
similar corporate names and did not find Times.
[3]
Times asks me to declare that TDG has infringed its
mark and to order TDG to cease doing so.
[4]
The main issue in this case is whether TDG’s use
of the trade name TIME DEVELOPMENT GROUP likely leads to confusion. If so,
Times is entitled to the relief it has requested.
[5]
I am satisfied that Times is entitled to the
exclusive use of its registered mark TIMES GROUP CORPORATION, and that there is
likely confusion between Times’s mark and TDG’s trade name TIME DEVELOPMENT
GROUP. Therefore, I will grant the declaration and the injunction Times seeks.
II.
Does TDG’s use of the trade name TIME
DEVELOPMENT GROUP lead to actual or potential confusion with Times’ registered
trade-mark TIMES GROUP CORPORATION?
[6]
As mentioned, the issue at the heart of this
case is confusion.
[7]
First, TGD asserts that Times is not entitled to
enforce its trade-mark because the mark is associated with two sources: Times
Group Corporation and Times Developments Inc. According to TGD, Times cannot
maintain that there is a risk of source confusion as between Times’ mark and
TGD’s trade-name given that more than one company already uses Times’ mark. In
effect, says TGD, Times’ mark is simply not distinctive.
[8]
Second, TDG argues that, to the extent there is any
confusion between its trade-name and Times’ trade-mark, Times was not entitled to
register that mark since TDG used its name first.
[9]
Third, TDG disputes Times’ assertion that there
is a reasonable likelihood of confusion. TDG contends that, without proof of confusion,
Times cannot succeed on its arguments that TDG has infringed Times’ trade-mark
or that TDG is guilty of passing off (under ss 20(1)(a) and 7(b) respectively
of the Trade-marks Act, RSC 1985, c T-13; see Annex for provisions
cited).
[10]
Accordingly, the various elements of the dispute
between the parties can essentially be compiled into an inquiry on the question
of confusion. I am satisfied that Times was entitled to register and enforce
its mark. Further, I am persuaded that TDG has infringed Times’ mark by using a
confusingly similar trade-name. Given my conclusion on that point, I need not
deal with the issue of passing off.
[11]
TDG’s first argument is that Times’ mark lacks
distinctiveness because it is used by both applicants without evidence that the
two companies are related or have a licensing arrangement. Therefore, TDG says
that Times’ trade-mark is not associated with a single source, which creates a
risk of source confusion even without TDG’s presence in the market. In
addition, TDG contends that the use of the mark by one applicant does not enure
to the benefit of the other. Accordingly, TDG maintains that Times simply cannot
claim a likelihood of source confusion.
[12]
In support of this position, TDG refers to United
Artists Corp v Pink Panther Beauty Corp (1998), 80 CPR (3d) 247 at para 21
(FCA). However, that case does not support TDG’s argument. Justice Allen Linden
merely emphasized that a trade-mark is meant to distinguish one person’s wares
or services from others; he said nothing about the situation where two entities
have allegedly used the same mark. Further, Times does not assert that use of
the mark by Times Group Corporation enures to the benefit of Times Developments
Inc. or vice versa. Therefore, TDG’s reliance on the absence of a
licencing arrangement between the two applicants does not address a question in
issue here. Finally, I have no evidence before me showing that both applicants
have used the registered mark. Accordingly, TDG’s argument is unsupported by
the evidence relating to use (see para 28 below).
[13]
With respect to TDG’s second argument, TDG
points to Times’ trade-mark application in which Times asserted that it began
using its mark in 2011. TDG began using its trade-name in 2008. TDG says that
its prior use of an allegedly confusing trade-name should have disentitled
Times from registering its mark. This is incorrect. It is the use of a
trade-mark that confers on the owner the rights to that mark, including the
exclusive right to use that mark and to register it. (Masterpiece Inc v
Alavida Lifestyles Inc, 2011 SCC 27 at para 35-36; Trade-marks Act,
s 16). The evidence set out below shows that Times has used its trade-names and
mark at least since 2006: this is both before TDG began using its trade-name
and well before Times’ registration of its mark in 2014. Therefore, in my view,
Times clearly had the right to register its mark and to acquire the exclusive
right to use it; the real question is whether TDG should be prevented from
using its trade-names on grounds of confusion.
[14]
That brings me to TDG’s third argument that
Times has not established that TDG’s trade-names are confusing. The parties
agree that to decide the issue of confusion, one should consider the first
impression of the somewhat hurried, casual consumer who has an imperfect
recollection of the marks or names in issue. One should then ask whether that
hypothetical person would, without giving the matter detailed consideration,
likely think that the goods associated with those marks have a common source.
If so, confusion has been made out. (Veuve Clicquot Ponsardin v Boutiques
Cliquot Ltée, 2006 SCC 23 at para 20; Masterpiece, above, at para
41).
[15]
To determine whether there is confusion, I must
consider all of the surrounding circumstances, including the specific factors set
out in s 6(5) of the Act. I am guided by Justice Marshall Rothstein’s interpretation
of those factors in Masterpiece. Masterpiece involved a
trade-mark dispute that, in many respects, resembles the disagreement between
Times and TDG.
A.
Degree of Resemblance
[16]
Degree of resemblance is the most important
factor: the other factors play a role only after the marks have been found to
be identical or very similar (Masterpiece, at para 49).
[17]
There is obviously a strong degree of resemblance
between Times’ mark (TIMES GROUP CORPORATION) and TDG’s trade-name (TIME
DEVELOPMENT GROUP). The word “Time” or “Times” is the first and most important element in
both. There is nothing particularly striking or unique about these words (Masterpiece,
at paras 63, 64).
[18]
TDG asserts that the dominant word “Time” or “Times” does
not even distinguish the parties from other entities involved in the same
trade. TDG points to numerous other companies that use the word “Time” or “Times” in
the property business; these include registered marks such as “First Time Program”, “Timeless”,
“New Times Square”, etc, as well as
unregistered marks and names, including “Times Realty
Group Inc”, “Time Real Estate Ltd”, “Times Property Management”, “Lifetime
Developments”, and “Real Time Contracting Group
Inc”.
[19]
However, these marks and names bear less
similarity to the parties’ identifiers than the latter do to one another. The most
similar are “Times Realty Group Inc” and “Time Real
Estate Ltd”, but these trade-names suggest the business of property
sales alone, not the development, building, and marketing of multiple-unit residential
dwellings and projects, the enterprise in which Times and TDG are both involved.
[20]
In effect, as in Masterpiece, the parties
both rely on the dominant word in their mark and name – “Time” or “Times” – to
distinguish themselves from others occupying the same field. Nothing in the
other ordinary words they use – “development”, “group”, and “corporation”
– is capable of serving that purpose. And clearly, the dominant words in issue are
nearly identical.
[21]
The parties present their respective mark and
name in different formats, but this is of little relevance. Times uses the
following mark:
[22]
TDG presents its trade name as follows:
[23]
These different presentations might help
distinguish Times’ mark from TDG’s name, but the owner of a trade-mark
consisting of words is entitled to exclude others from using the same or
confusingly-similar words in any form, not just the form the owner has adopted
(Masterpiece, at paras 55, 61). Accordingly, one must look at the words
themselves, not their get-up, in assessing the degree of resemblance between
Times’ marks and TDG’s name.
[24]
In that light, I find that Times’ mark clearly bears
a strong resemblance to TDG’s name. I must now consider the other factors
relevant to the possibility of confusion.
B.
Distinctiveness
[25]
Both parties use common, everyday words – “time”, “times”, “development”, and “group”
– to identify their businesses. These kinds of words obviously lack inherent distinctiveness,
which augments the possibility of confusion. On the other hand, trade-marks consisting
of ordinary descriptors generally attract a low level of legal protection as
otherwise a company could acquire a monopoly over everyday terms (General
Motors Corp v Bellows, [1949] S.C.R. 678 at 691).
C.
Duration of Use
[26]
Duration of use can help support an argument
that a mark has acquired distinctiveness over time even though the words it
contains may not be inherently distinctive.
[27]
The word “use”
has a specific meaning in the trade-mark context. To amount to use in
association with wares, a mark must appear on the wares themselves, or on their
packaging, or otherwise be “so associated with the
wares that notice of the association is then given to the person to whom”
they are transferred (s 4).
[28]
Times claims to have used its trade-names and
registered mark for over 30 years; however, it has provided little evidence to
support this claim:
- Articles of incorporation for Times Developments Inc. (1986)
and for The Times Group Investment Corporation (1995, changing its name
to Times Group Corporation in 2000);
- A list of 27 residential property projects it has built between
1985 and the present;
- A 2013 website design proposal for Times Group Corporation;
- A 2013 list of marketing expenses for certain property
developments;
- A 2006 advertisement for a property called “500 Sherbourne” that includes the trade-name “Times Group Corporation”;
- A 2013 magazine article in which “Times
Group Corp” is mentioned as the winner of the High-Rise Green
Builder of the Year, and the article includes a rendering of a property
called “Uptown Markham” by “Times Group”;
- A 2011 Globe & Mail article about the Uptown Markham
property built by “Times Group Corp.”;
- An undated magazine article about Uptown Markham by Times Group
Corporation for occupancy in late 2013;
- A 2012 magazine article about “Times
Group Corp.” in which the author mentions that the company was
founded almost 30 years previously; the article is accompanied by an
advertisement for a property called “River Park”
that includes the “Times Group Corporation”
trade-name;
- A 2011 Toronto Star article about Uptown Markham built by “Times Group Corp”;
- A 2011 Chinese language article about Uptown Markham that
includes the website www.timesgroupcorp.com;
- A 2015 photograph of a sign for a property called “The Majestic Court” that includes the “Times Group Corporation” mark;
- Copies of various certificates indicating that Times Group
Corporation was a member of the Building Industry and Development
Association (since 2012), that it was a winner of the High-Rise Green
Builder of the Year Award (2013), that its principal, Mr. Saeid Aghaei,
received an award from Ethnic Press Council of Canada Inc. (2002), that it
was a member of the Greater Toronto Home Builders’ Association (since
2004), that a division of “Times Group”
called “Life Construction Inc” received an
award of excellence (2005), that it received a design award from the City
of Markham (2006), that it donated $500,000 to the Markham Stouffville
Hospital (undated), and that it was the signature sponsor of a
fund-raising gala for the Unionville Home Society (undated).
[29]
Some of this evidence meets the definition of
use for trade-mark purposes because it shows Times’ trade-name or mark in
association with its wares. For example, the magazine articles reflect that the
developments under discussion emanated from Times: the authors recognized that
Times was the source of those properties, and disseminated that information to
the public. More particularly, the advertisements showing Times’ properties in
association with its trade-name or mark clearly link Times with its wares.
[30]
However, Times’ evidence does not establish use
for the duration it claims. The earliest evidence of use before me, the
advertisement for the “500 Sherbourne” property,
dates to 2006. The list Times provided tells me that it had been building
properties long before then, but that evidence does not help establish that it
was using its trade-names or mark in association with those developments.
[31]
The remaining evidence Times has provided simply
does not show use in the relevant sense. At best, it serves to identify that
Times is a recognized builder of residential homes, but it does not establish
the connection between Times and specific properties.
[32]
In contrast, TDG has used its trade name since
2008, mainly in Saskatchewan, before it started operating in the GTA in 2013. TDG
has marketed itself extensively under its trade-names on its website, print
advertising, and other promotional materials. This evidence establishes that
TDG has used its trade-names in association with its properties only since
2008.
[33]
On this evidence, I am satisfied that Times’ use
of its mark pre-dates TDG’s use of its trade-name. However, since Times’s
evidence of use dates only from 2006, I am not satisfied that the mark acquired
distinctiveness through long use and recognition in the marketplace.
D.
Nature of the Business
[34]
The parties operate similar businesses in the
same geographic area, and they target the same clients.
[35]
One would expect, though, that the parties’
clients – persons seeking to purchase expensive residential properties – would
take care to ensure they knew exactly from whom they would be buying. Discerning
buyers could be expected to choose vendors carefully and to take note of small
differences in their marks. This suggests that a buyer would be unlikely to buy
a condo from TDG thinking that it was built by Times. TDG insists there is no
evidence that anyone bought a property from either party believing it was built
by the other. TDG points out that “[s]electing and
purchasing a home is not like buying a candy bar”.
[36]
However, that is not the test for confusion.
Even for expensive goods, which may have lower risks of actual confusion, the
question is still whether the somewhat rushed, casual consumer’s first
impression would likely cause him or her to conclude that the parties’ goods
had a common source. Whether serious buyers later conduct further research is
irrelevant as it is the first impression that is pertinent. In essence, where
the resemblance between the marks or names in issue is strong and the other
factors do not point emphatically in the other direction, the likelihood of
confusion is not mitigated by the cost of the product in issue (Masterpiece,
at paras 70-74).
[37]
While there is no evidence of actual confusion
on the part of purchasers of the parties’ properties, Times submits that some
people seem to have confused Times’ projects with those of TDG. However, this
information comes in the form of an affidavit sworn by Times’ corporate counsel
that refers to statements made to him by Times employees relaying queries from
customers and real estate agents about TDG projects. This information does not
actually show confusion on the part of those who made the inquiries, and it also
amounts to inadmissible double-hearsay evidence.
E.
Other Circumstances
[38]
Times uses the plural form of “Time”; TDG uses the singular. This distinction,
however, disappears when the words are translated into Chinese characters for
purposes of advertising or other written materials. Accordingly, the risk of
confusion rises in the parties’ target markets.
[39]
I also note that the parties themselves are
confused. In its memorandum, TDG refers to Times Group Corporation as “Times Development Corporation” (para 16). Similarly,
Times mistakenly claims in its memorandum that TDG is using the trade-names “Times Development”, “Times
Group”, and “Times Development Group” (paras 38, 39, 44).
[40]
Overall, I am satisfied that TDG’s use of its
trade-names creates a risk of confusion with Times’ registered mark.
III.
Conclusion and Disposition
[41]
I am satisfied that Times is entitled to the
exclusive use of its trade-mark in respect of real estate development, and that
its right to that use has been infringed by TDG through its use of confusing
trade-names (contrary to s 20(1)(a)). Accordingly, I must grant a
declaration in Times’ favour and order that TDG refrain from using those
trade-names, with costs to Times.
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