American Assn. of Retired Persons v. Canadian Assn. of Retired Persons, docket T-638-97

Date: 19981210

Docket: T-638-97

         IN THE MATTER OF an Opposition by the American

         Association of Retired Persons to Application Serial

         No. 617,128 for the trade-mark CARP & Design filed by

         the Canadian Association of Retired Persons/Association

         Canadienne des Individus Retraites

BETWEEN:

     AMERICAN ASSOCIATION OF RETIRED PERSONS

     Appellant

     - and -

     CANADIAN ASSOCIATION OF RETIRED PERSONS/

     ASSOCIATION CANADIENNE DES INDIVIDUS RETRAITES

     Respondent

     REASONS FOR JUDGMENT

REED J.:

[1]      This is an appeal of a decision of the Registrar of Trade-marks, dated February 7, 1997, reported at (1997), 76 C.P.R. (3d) 545, which rejected the opposition of the American Association of Retired Persons (AARP) to the registration of the trade-mark C.A.R.P. & Design (the design includes a maple leaf within the letter "C") by the Canadian Association of Retired Persons (CARP).

[2]      CARP sought registration of its trade-mark for use in association with two services:

"operation of an association promoting the rights of Canadians 50 years and older"; and

"providing assistance to Canadians 50 years and older to obtain special rates, discounts and services from the general business community".

[3]      CARP claimed that it had used its trade-mark in Canada since at least as early as September 1984, in association with both of the above-described services. The Registrar found that CARP had used its trade-mark in association with the first service at the claimed date of first use, but not the second.

[4]      CARP also sought registration of its mark in association with certain wares: general interest periodicals, magazines, newspapers and pamphlets directed to retired persons. The date of first use was claimed to be September 1985. The Registrar granted this application except for magazines. The deletion of magazines from the registration is not appealed.

[5]      The appellant argues that the Registrar was incorrect in finding that CARP had used its mark in association with the first above-described service (the operation of an association promoting the rights of Canadians 50 years and older) since September 1984. CARP argues by way of cross-appeal that the Registrar was incorrect in finding that CARP had not used its mark in association with the second above-described service (providing assistance to Canadians 50 years and older to obtain special rates, discounts and services from the general business community) as of September 1984.

[6]      The appellant also argues that the Registrar was incorrect in finding that the C.A.R.P. & Design mark was registrable (and not confusing at the date of first use with the appellant's trade-mark AARP) and in finding that CARP had proven that its mark was distinctive as of the date of the filing of the opposition (January 31, 1992).

Role of the Court on Appeal

[7]      The appropriate approach for the Court on appeal from a decision of the Registrar of Trade-marks was set out by Mr. Justice Heald in Clorox Co. v. E.I. Du Pont de Nemours and Co. (1995), 64 C.P.R. (3d) 79, at 82:

The role of the court on an appeal in opposition proceedings in this court is well-stated by Strayer J. (as he then was) in the case of McDonald's Corp. v. Silcorp Ltd. (1989), 24 C.P.R. (3d) 207 at p. 210, 25 F.T.R. 151, 23 C.I.P.R. 292 (T.D.); affirmed 41 C.P.R. (3d) 67, 139 N.R. 319, 54 F.T.R. 80n (C.A.):

It seems clear that in opposition proceedings where the issue is essentially one of fact concerning confusion or distinctiveness the decision of the registrar or the Board represents a finding of fact and not the exercise of discretion. Therefore the court should not impose upon itself the same degree of restraint, in reviewing that decision, as it would if the decision were essentially an exercise of discretion. It is thus free to review the facts to determine whether the decision of the registrar or Board was correct, but that decision should not be set aside lightly considering the expertise of those who regularly make such determinations.

In similar circumstances, Denault J. stated:

[I]n cases such as these, the onus on the appellant is twofold. First, the appellant must establish that the hearing officer erred in his appreciation of the facts or in his interpretation of the law. It is well-established that such a decision carries considerable weight and is not to be lightly set aside . . .

(Mitac Inc. v. Mita Industrial Co. (1992), 40 C.P.R. (3d) 387 at pp. 391-2, 51 F.T.R. 281, 31 A.C.W.S. (3d) 289 (T.D.).)

I accordingly conclude that the appellant carries the onus of establishing that the Registrar erred in a determination of fact or in his interpretation of the law. I am of the opinion that the Registrar was correct in his view that the central issue herein is the issue of confusion between the two trade marks. A determination in relation to the issue of confusion has been characterized by the court as a finding of fact, and it is within the ambit of the court on appeal to satisfy itself the finding with respect to confusion was correct.

        

[8]      Mr. Justice Rouleau indicated, in Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340, at 344 that when additional evidence (which was not before the Registrar) is adduced before the Court, the Court has greater scope to reach a conclusion different from that of the Registrar:

When faced with an appeal from a Registrar's decision, this court is justified in intervening only if the appellant demonstrates that the Registrar erred in law or in the assessment of the facts in the case. Since the Registrar is a specialized tribunal with expert knowledge in the area of trade marks, this court must act with restraint: Welch Foods Inc. v. Del Monte Corp. (1992), 44 C.P.R. (3d) 205, 56 F.T.R. 249, 34 A.C.W.S. (3d) 1278 (T.D.); McDonald's Corp. v. Silcorp Ltd. (1992), 41 C.P.R. (3d) 67, 139 N.R. 319, 54 F.T.R. 80n (C.A.); Mitac Inc. v. Mita Industrial Co. (1992), 40 C.P.R. (3d) 387, 51 F.T.R. 281, 31 A.C.W.S. (3d) 289 (T.D.). When, however, additional evidence is adduced in accordance with s. 56(5) of the Act, this court enjoys greater latitude in relation to the Registrar's decision.

Both parties in this case have filed additional evidence.

First Use of the C.A.R.P. & Design Mark

[9]      An applicant for registration of a trade-mark must set out therein a date as of which it claims the mark was used in association with the relevant wares or services. Subsection 30(b) of the Trade-marks Act, R.S.C. 1985, c. T-13, provides:

30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing

     . . .

(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application;

[10]      As noted, the appellant, AARP, challenges the Registrar"s finding that CARP used its mark since September 1984 in association with the operation of an association promoting the rights of Canadians 50 years and older. On cross-appeal, CARP challenges the Registrar"s conclusion that it did not demonstrate use of its mark in association with the service of providing assistance to Canadians 50 years and older to obtain special rates, discounts and services from the general business community since September 1984.

[11]      The appellant argued before the Registrar and before this Court that CARP did not prove use of its mark in association with either of its services as of September 1984, as claimed in its application for registration. The appellant bases this argument on statements made by Mr. Morgenthau, Executive Director of CARP, in the course of cross-examination on his May 18, 1993 affidavit. During cross-examination he stated that CARP was dormant until mid-1985, and that prior to that date he and his wife were approaching companies to obtain services (such as discounts) for CARP members.

[12]      Mrs. Morgenthau, President of CARP, swore an affidavit for the purposes of this appeal on April 16, 1997, in which she states that some of the statements made by her husband during cross-examination require clarification because they were inaccurate or could be incorrectly interpreted. Mr. Morgenthau also swore an affidavit on April 16, 1997, in which he states that on reading the transcript of his cross-examination, it is apparent that he either misunderstood some of the questions or provided answers that could be subject to an incorrect interpretation. He adopts the statements made by his wife in her April 16, 1997 affidavit.

[13]      Mrs. Morgenthau's affidavit explains how CARP came into being, including how she created the C.A.R.P. & Design trade-mark in about 1983, or at the latest in early 1984. She describes CARP's activities during 1984 and 1985. She explains that she and her husband took over an existing corporation named the Canadian Association of Retired Persons in early 1984, after extensive discussions and negotiations with the original incorporator. She and her husband were CARP's first members; then membership increased to ten or fifteen members, mostly friends and relatives of the Morgenthau's. By September 1984 she states that there were approximately 150 members and, by September 1985 membership had grown to 357.

[14]      Mrs. Morgenthau states that from at least as early as September 1984 she and her husband were promoting the rights of Canadians 50 years and older and were providing assistance to Canadians 50 years and older to obtain special rates, discounts and services from the general business community, and that these activities were done in association with the C.A.R.P. & Design mark. She states that the first brochure by CARP was printed and distributed before September 1984. She appends to her affidavit a brochure as representative of that first used by them. The brochure describes various services that CARP members may obtain at either discount or more reasonable than usual rates. These include accident and health insurance, house insurance, tax reporting assistance, health and dental services, financial services, car rentals, and travel services. While the brochure is described as being representative of the first brochure that was printed, it is not claimed that it is an actual copy of the first.

[15]      Counsel for the appellant argues that this evidence does not establish the actual use of the C.A.R.P. & Design mark in association with the services claimed. He refers to Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 (F.C.A.) to support his submission that use cannot merely be alleged, but rather that there must be evidence of it. In Plough the appellant was trying to retain its trade-mark registration in the face of an expungement proceeding. Under the relevant provision, an affidavit or statutory declaration describing use of the trade-mark was required. The trade-mark had been registered for use with a broad category of pharmaceutical preparations. The affidavit under consideration was apparently so oblique that it did not identify the wares (the pharmaceutical preparations) in association with which it had been and was allegedly being used. This is a vastly different situation and affidavit from that under consideration in the present case.

[16]      In the first place, Mr. Morgenthau's cross-examination on his earlier affidavit does indicate some confusion with respect to dates. When he was asked whether the "activating" event that occurred in September 1985 was the first issue of CARP's newsletter, he answered no, yet Mrs. Morgenthau's affidavit and the copies of the newsletter that are in evidence show that this was the date of the first newsletter. Mr. Morgenthau, in giving answers in his cross-examination explained that prior to September 1985, he and his wife had obtained services for their members from various companies, prepared brochures and application forms that had been "sold" [sic] to friends, and placed in drug stores, and that by September 1985 there were 357 members of CARP.

[17]      Mrs. Morgenthau's evidence that the mark was used by September 1984 in association with both types of services is not simply a bald statement to that effect. For example, the September 1985 newsletter speaks repeatedly of new services that are now available to members, and it reports on T.V. talk shows where Mrs. Morgenthau had been a guest, one as early as April 1985. Mrs. Morgenthau explains that the first initiative she took in obtaining special consideration for seniors was with respect to insurance (this was initially on behalf of only her husband and herself and before the development of CARP). I have been persuaded, largely on the basis of Mrs. Morgenthau's affidavit, on which she was not cross-examined, that the respondent has demonstrated the use of its trade-mark in association with both sets of services described in its application by the claimed date of first use.

[18]      An additional point made by counsel for the respondent, on which it is not necessary to decide given the conclusion I have reached above, but about which I will comment for the sake of completeness, is the argument that, with respect to the second of the claimed services, the Registrar found that there had to be evidence that CARP's members had actually approached businesses and been given discounts in order for the respondent to demonstrate use of its mark in association with the service of "providing assistance to Canadians 50 years and older to obtain special rates...". I am not sure that I would read the Registrar's decision in that way, but, if that is the correct reading, then, I think it is too narrow. Making the special rates from businesses available to members constitutes "providing assistance ... to obtain special rates" (emphasis added), whether or not any member actually took advantage of the special rates that were available. This then would be an additional reason for reaching a conclusion different from that reached by the Registrar on the registrability of the trade-mark in association with the second set of services.

Confusion and Distinctiveness - Material Dates

[19]      Subsection 16(1) of the Trade-marks Act provides that an applicant may register a trade-mark if it is not confusing as of the date of first use with a mark that has been previously used or made known in Canada:

Any applicant ... for registration of a trade-mark ... is entitled ... to secure its registration ... unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with

(a) a trade-mark that has been previously used in Canada or made known in Canada by any other person;

Subsections 38(1) and (2) provide that an opponent to the prospective registration of a trade-mark may assert a number of specified grounds of opposition:

(1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

(2) A statement of opposition may be based on any of the following grounds:

(a) that the application does not conform to the requirements of section 30;

(b) that the trade-mark is not registrable;

(c) that the applicant is not the person entitled to registration of the trade-mark; or

(d) that the trade-mark is not distinctive. [Emphasis added.]

[20]      The material date for the determination of non-registrability on the ground of likelihood of confusion is the date of first use (September 1984 for services, September 1985 for wares). The material date as of which the respondent must prove distinctiveness is the date of the filing of the Statement of Opposition (January 31, 1992). There is some uncertainty in the jurisprudence concerning the appropriate date for the latter but I think the date that is generally accepted is the date of the filing of the opposition. The decision most often cited for this proposition is Andres Wines Ltd. v. E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126, at 130. Numerous other cases have also used the date of the filing of the opposition as the material date for the assessment of whether a trade-mark is distinctive (Humpty Dumpty Foods Ltd. v. George Weston Ltd. (1989), 24 C.P.R. (3d) 454, at 458 (F.C.T.D.); Borden, Inc. v. Hostess Food Products Ltd., [1990] 1 F.C. 570, at 585 (T.D.); Triple G. Manufacturing Inc. v. Work Wear Corporation of Canada Ltd. (1990), 35 F.T.R. 193, at 197; and Labatt Brewing Co. v. Molson Breweries (1992), 42 C.P.R. (3d) 481, at 493 (F.C.T.D.)).

[21]      In Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 (F.C.T.D.) Mr. Justice Denault raised some doubt, however, as to whether the filing date was the correct date for the assessment of distinctiveness. He relied on the Federal Court of Appeal decision in Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413, at 429-430, and suggested that the date for the assessment of distinctiveness should be the date as of which the Registrar disposes of the opposition.

[22]      The Park Avenue case however dealt with the registrability of the mark, not an opposition based on lack of distinctiveness. The logic of the finding was that registrability should be decided at the date of registration or at the date of refusal of registration, and not by reference to some earlier time.

[23]      Mr. Justice Denault used the date of the Opposition Board"s decision again in Automobile Club de l"Ouest de France (ACO) v. Bridgestone/Firestone, Inc. (1995), 62 C.P.R. (3d) 292, however, no other judge of the Court has followed this path. In Heavy Duty Cycles Ltd. v. Harley-Davidson Inc. (1997), 72 C.P.R. (3d) 527, at 531-532 (F.C.T.D.), Mr. Justice Gibson suggested that the authorities on the material date for determining distinctiveness were not unanimous, but that on the evidence before him, nothing turned on whether the assessment was based on the date of filing the opposition or on the date of the disposition of the opposition. Similarly, in Merrill Lynch Co. v. Bank of Montreal (1996), 66 C.P.R. (3d) 150 (F.C.T.D.), Mr. Justice Gibson used the date of the filing of statements of opposition as the relevant date for a determination of distinctiveness. He did note that Clarco Communications alleged the contrary.

[24]      The most recent statement on this issue is that of Madame Justice Tremblay-Lamer in Molson Breweries v. John Labatt Ltd. (1998) 148 F.T.R. 281, [1998] F.C.J. No. 929 (QuickLaw). At paragraphs 50-56, she summarizes the state of the law and suggests that the material date for a determination of distinctiveness is the date the opposition was filed, and that this was not changed by the Federal Court of Appeal"s reasons in Park Avenue Furniture .

Confusion and Distinctiveness - Analysis

[25]      The Registrar rejected the appellant's ground of opposition based on subsection 16(1)(a) because he found that the appellant had not proved use of its trade-mark AARP in Canada or the making known of its trade-mark in Canada prior to September 1985. He did not dispute that the American Association of Retired Persons, and its acronym AARP were known, but he found that the acronym AARP was not being used as a trade-mark at the relevant date.

[26]      The appellant attempted to remedy this evidentiary shortcoming by filing an affidavit, dated April 2, 1997, by Joan Wise. She is the appellant's Associate General Counsel and has been employed in that capacity for the past ten years. Her knowledge of activities during the 1984-1985 period is on information and belief. She appends to her affidavit a number of documents such as membership solicitation brochures, copies of the magazine Modern Maturity, and various educational program brochures and booklets. She describes these documents as "representative ... in marking and content ... [of the documents] distributed continuously in Canada since well prior to 1984". The 1984-1985 copies of the Modern Maturity magazine, however, show that the acronym AARP was not used on the cover of that magazine until December 1984 - January 1985, and at that time it was not being used as a trade-mark. It was used as an acronym in place of the long form of the organization's name, which long form had been used previously. None of the other documents, except one, date from the 1984-1985 period. Given that Ms. Wise has no first hand knowledge of the appellant's activities in the 1984-1985 period, I am not prepared to accept the documents as representative of trade-mark use at that time.

[27]      The one document that does carry an early date and on which AARP is used as a trade-mark is a membership application form from 1985. There is no direct evidence that that particular application form was in fact distributed in Canada, although the American Association of Retired Persons had, by mid-1984, approximately 10,000 members with Canadian addresses. Its Canadian membership increased by about 2,000 over the 1984-1985 period. I am not persuaded that the evidence establishes that there was a use or making known of AARP as a trade-mark in Canada prior to September 1985, but because of the conclusion I have reached on another aspect of this ground of opposition, I do not need to reach a final conclusion on this point.

[28]      A mark is confusing under the Act, according to the definition in section 2, when it would cause confusion in the manner and circumstances described in section 6:

6(1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.

(2) 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 or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.

[29]      Subsection 6(5) requires that when assessing whether or not there could exist a likelihood of confusion that regard be had to all the surrounding circumstances including:

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;

(b) the length of time the trade-marks or trade-names have been in use;

(c) the nature of the wares, services or business;

(d) the nature of the trade; and

(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

[30]      In general, to determine whether a trade-mark is confusing the court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of another mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.¹

[31]      I turn first to a consideration of the factors specifically identified in section 6. Both trade-marks are based on acronyms standing for the names of their respective organizations. As such they both have little inherent distinctiveness. CARP"s mark, carrying as it does the maple leaf within the C, identifies it as being associated with something Canadian. As such it is somewhat more inherently distinctive than AARP. As far as acquired distinctiveness is concerned, it is relevant to consider the number of members belonging to each organization.

[32]      CARP started in 1984 and had a membership of 357 by September 1985. The membership increased to 5,000 in 1986; 20,000 in 1988; 40,000 in 1990; 70,000 in 1992; and to 125,000 by 1993. AARP was formed in 1958. As noted, it had approximately 10,000 members with Canadian addresses by mid-1984. At that date it had 17 million members world-wide. By 1993 it had 33,000 members with Canadian addresses and 32 million members world-wide. However, there is no evidence that the appellant advertised its services and wares in Canada in association with its mark, and as noted above the evidence is very scanty with respect to any use of the acronym as a trade-mark in Canada prior to September 1985. Once use as a trade-mark started, it would be known in Canada only as a result of individuals residing in Canada having become members of the organization. The respondent has advertised its services in association with its trade-mark in Canada. I conclude that as of September 1984 and September 1985 acquired distinctiveness was a neutral factor. In addition, the evidence does not disclose a great deal of difference in the length of time each organization has used its respective trade-mark in Canada. This is also a neutral factor.

[33]      The two organizations offer similar wares and services but they largely relate to two different national geographic areas. The appellant's materials, for example, are replete with references to the lobbying efforts that that organization makes to Congress. CARP on the other hand, is concerned with lobbying Canadian politicians and government agencies. There is evidence that none of the insurance discounts or credit cards provided by AARP are available in Canada. Both organizations, however, provide travel associated discounts, for example, for hotel chains and car rental agencies. Each provides its members with travel associated discounts in both Canada and the United States, and abroad. There is thus a limited area of overlap in the services each organization provides to its members.

[34]      The marks have a resemblance in appearance and sound because the last three letters of the two acronyms are the same. When determining whether a trade-mark is confusing, the trade-mark as a whole should be considered. It should not be dissected into its component parts.² The C and maple leaf in CARP's mark does distinguish it. The idea elicited by the mark should also be considered.³ The idea conveyed by the last three initials of both marks is that of an association of retired persons, a concept that cannot be the subject of a monopoly. The initial letters A and C signify different geographical bases and, as noted, serve as a distinguishing feature.

[35]      I turn then to other surrounding circumstances. AARP is of course located in the United States. CARP is located in Canada. There is no evidence of actual confusion (actual confusion, of course, is not necessary). There is evidence that some individuals have asked whether the two associations are related or affiliated. In my view, this is evidence that there is an absence of likelihood of confusion rather than the contrary. Consumers are alert to the fact that these are two separate organizations. The appellant filed an affidavit of Janice Quinn, evidence that was not before the Registrar, attesting to the fact that the AAA and CAA are affiliated. Counsel for the appellant argues that when Canadians see two organizations identified by the same initials and having only the initial letter different, and such differences being only one of designation, Canadian ("C") or American ("A"), they tend to assume that the two organizations are affiliated or that the Canadian organization is operating under license. This is speculation by counsel. There was no survey evidence to support that suggestion. The newspaper articles and travel writers' comments that were filed indicate that while both organizations may be spoken of in the same context, writers know that the organizations are separate and distinct. For example, one article advises readers to join both organizations if they are going to travel.

[36]      Also, the reference in some of CARP's materials to AARP as CARP's counterpart in the United States is not an indication that the two are considered equivalent by the relevant consumers, or that CARP is trying to suggest that it is affiliated or linked to the appellant. It is a statement that conveys the idea that the two organizations are equivalent in the sense of providing the same or similar services in their respective geographical areas, to their respective members, not unlike the CBA and the ABA.

[37]      Counsel for the appellant refers to the decision in Conde Nast Publications Inc. v. L.N.K. Manufacturing Agencies Inc. (1989), 24 C.P.R. (3d) 343 at 346 (T.M.Opp.Bd.) for the conclusion that it is only necessary to find that consumers might likely infer some kind of business connection between the two organizations in order to find likelihood of confusion. That reading takes the words out of context. In the above noted decision the comments of Mr. Justice Cattanach in Conde Nast Publications Inc. v. Gozlan Bros. Ltd. (1980), 49 C.P.R. (2d) 250 (F.C.T.D.) were relied upon. In both cases corporate affiliation was not under discussion, but rather whether the public would infer a business connection between the parties from the use of the trade-mark by the one party and assume that that use was approved, licensed or sponsored by the other.

[38]      The Registrar noted that AARP and CARP are different entities offering services to different members in different countries (as noted, there is some overlap, for example, with respect to travel discounts in both countries and abroad). The Registrar concluded that the average consumer would recognize the applicant as being the source of C.A.R.P. & Design wares and services and would likewise recognize the opponent as being the source of AARP services. He suggested that the recognition of equivalency between the parties is due to the similarity in their corporate names rather than the similarity in their respective trade-marks:

The opponent has argued that the mere recognition of a potential affiliation between the parties is such as to lead to the conclusion that the applicant's trade-mark and the opponent's mark are confusing. However, the evidence establishes that the applicant and the opponent are different entities offering services to different members in different countries. Thus, the average consumer would recognize the applicant as being the source of C.A.R.P. & Design wares and services and would likewise recognize the opponent as being the source in the United States of America of AARP services. Consequently, I do not consider that evidence which points to the parties being equivalent leads to the conclusion that the trade-mark C.A.R.P. & Design and the mark AARP are confusing. Furthermore, I suspect that the recognition of equivalency between the parties is due to the similarity in their corporate names rather than the similarity in their respective acronyms. As a result, I have concluded that the applicant has met the legal burden upon it in respect of the second ground of opposition. I have therefore rejected this ground. [P. 550.]

[39]      I do not reach any different decision on the basis of the evidence before me from that reached by the Registrar on the evidence that was before him.

[40]      The factors that relate to the alleged failure of the respondent to prove that the C.A.R.P. & Design trade-mark is distinctive have been addressed in the above analysis of likelihood of confusion.

[41]      Whether one assesses the likelihood of confusion as of September 1984 and September 1985, or distinctiveness as of either January 1992, the date of the filing of the opposition, or February 7, 1997, the date of the Registrar's decision, I could not conclude that a likelihood of confusion or a lack of distinctiveness exists.

Conclusion

[42]      The Registrar's decision is upheld with respect to registration of C.A.R.P. & Design as a trade-mark for use in association with the service "operation of an association promoting the rights of Canadians 50 years and older". The Registrar's decision is varied in that the appellant's opposition to registration of the mark for use by the respondent in association with the service "providing assistance to Canadians 50 years and older to obtain special rates, discounts and services from the general business community" is rejected.

                             Judge

OTTAWA, ONTARIO

December 10, 1998.

__________________

     ¹      Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289, at 298 (F.C.T.D.).

     ²      Park Avenue Furniture Corp. v. Wickes Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413, at 426 (F.C.A.).

     ³      Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1986), 12 C.P.R. (3d) 511, at 520 (F.C.T.D.).