London Life Insurance Co. v. Manufacturers Life Insurance Co., docket T-1109-96

Date: 19990324

Docket: T-1109-96

     In the Matter of Sections 38, 56 and 59

     of the Trade-marks Act 1993 c. 15

     - and -

     In the Matter of an Appeal from the decision

     issued by the Registrar of Trade-Marks

     in an Opposition against Application No. 660,985

     for the trade-mark NEW FREEDOM TO PLAN YOUR FUTURE

BETWEEN:

     LONDON LIFE INSURANCE COMPANY

     Appellant

     - and -

     THE MANUFACTURERS LIFE INSURANCE COMPANY

     - and -

     THE REGISTRAR OF TRADE-MARKS

     Respondents

     REASONS FOR ORDER

REED, J.:

[1]      This is an appeal from a decision of the Trade Marks Opposition Board, which decision rejected the opposition of the London Life Insurance Company to the application for registration, by the Manufacturers Life Insurance Company, of the trade-mark NEW FREEDOM TO PLAN YOUR FUTURE for use in association with life insurance services. London Life is the owner of the trade-marks FREEDOM 55 and LIBERTÉ 55 as well as other marks containing the words freedom or liberté. These are registered for use in association with insurance, financial planning services, investment services, and investment saving plans.

[2]      The French counterpart of NEW FREEDOM TO PLAN YOUR FUTURE, LA LIBERTÉ DE PLANIFIER VOTRE AVENIR was also the subject of opposition proceedings and an appeal to this Court (T-1284-97). Some of the arguments of counsel were similar in both cases and thus some of the reasons for decision are also similar.

[3]      London Life argues that the Board Member erred in finding that NEW FREEDOM TO PLAN YOUR FUTURE was a registerable trade-mark. It is argued that he erred because: (1) the trade-mark is not registerable as there is a likelihood of confusion between that mark and the appellant's registered trade-marks FREEDOM 55 and LIBERTÉ 55 (sections 6 and 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended); (2) the respondent is not entitled to registration because it has not proven that the applied-for-mark at the date of the trade-mark application was not confusing with the appellant's mark (section 16(1) of the Trade-marks Act); (3) the respondent had not proven its mark was distinctive (as required by sections 38(2)(b) and (d) in combination with section 12(1)(d) of the Trade-marks Act).

Legislative Provisions

     A Trade-Mark is Not Registerable When . . .

[4]      Section 12 of the Trade-marks Act sets out when a trade-mark may be registered and by whom. The relevant passage for the purposes of this appeal is part (d) dealing with confusion.

12. (1) Subject to section 13, a trade-mark is registrable if it is not . . .

(d) confusing with a registered trade-mark;

[5]      A mark is confusing under the Act, as per 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. [Emphasis added.]

[6]      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.¹ The idea elicited by the mark should also be considered.²

[7]      The court is also instructed by s.6(5) to have regard to all the surrounding circumstances when assessing whether a mark is confusing, 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.

Each of these criteria need not be given the same weight.³

[8]      A trade-mark can be confusing in either English or French. A mark may be confusing or descriptive of the product in English, but not so in French and vice versa. It is important to consider both possibilities when determining whether the mark in issue is confusing with another.⁴

[9]      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 that other 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.5

[10]      The material date for considering whether the mark is confusing for the purposes of sections 6 and 12 is the date of the Board's decision - March 12, 1996.

     An Applicant May Register a Trade-mark When . . .

[11]      Subsection 16(1) of the Trade-marks Act provides:

(1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, 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 had been previously used in Canada or made known in Canada by any other person;

(b)      a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c)      a trade-name that had been previously used in Canada by any other person. [Emphasis added.]

[12]      The respondent's trade-mark application is an application for proposed use, thus the material date for assessing whether the applied-for-mark is confusing with the appellant's marks is the date of the filing of the application - June 26, 1990.

     A Person May Oppose a Registration on the Grounds That . . .

[13]      Subsections 38(1) and (2) provide that an opponent to a 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.]

[14]      The material date for a determination of likelihood of confusion (non-registrability) or lack of distinctiveness is the date on which the opposition was filed - June 21, 1991.

Role of the Court on Appeal

[15]      The appropriate approach for the Court on appeal from a decision of the Trade Marks Opposition Board was set out by Mr. Justice Heald in Clorox Co. v. E.I. DuPont 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.

[16]      Mr. Justice Rouleau indicated, in Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340, that where, however, additional evidence is adduced before the Court, which was not before the Board or Registrar, the Court has more scope to reach a conclusion different from that of the Board or 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.

New Evidence

[17]      The appellant filed extensive new evidence in support of its appeal. The most significant is the survey evidence that was commissioned from Dr. Ruth Corbin of Decision Resources Inc., a company specializing in survey and opinion research. The rest of the new evidence was not significantly different from that which had been filed before the Board. It does demonstrate, however, that the appellant's mark FREEDOM 55 is very famous.

[18]      Counsel for the respondent objected to the admissibility of some of the new evidence. He objected to part of Ingrid Whyte's affidavit, her reference to and reliance on "gross impressions" figures. These are figures which estimate the number of times people in certain age groups are likely to see an advertisement. They are based in part on Nielsen and Bureau of Broadcast Management, BBM, viewership statistics and information for specific TV programs (e.g., Seinfeld, Murphy Brown). The figures are relied upon by advertising agencies and purchasers of advertising but it is conceded that Ms. Whyte, an employee of London Life's advertising agency, could not testify as to how the figures were arrived at or put together. Counsel argues that they are hearsay. Similarly it is argued that the media schedules that form part of her affidavit are material she did not prepare, material that was given to her by media consultants, the provenance and origin of which she cannot attest to, and thus it is hearsay and not admissible.

[19]      I am prepared to consider both as part of the evidence, insofar as they are materials on which she and the appellant relied in deciding what advertising to purchase. I agree that the accuracy of the figures is a matter of hearsay. In the context of the evidence as a whole, however, this does not matter much. The famousness of the marks is proven by other evidence, for example, the survey evidence.

The Opposition Board's Decision and the Court's Conclusions

[20]      The Board Member considered the likelihood of confusion as of June 26, 1990, the date that Manufacturers Life filed its application for trade-mark registration, on the ground that such would be the date on which the opponent's case would be strongest. He noted that the burden was on Manufacturers Life to show no reasonable likelihood of confusion between the applied for mark NEW FREEDOM TO PLAN YOUR FUTURE and the registered mark FREEDOM 55 (this is re: s. 16(3) & 16(5)).

[21]      In assessing likelihood of confusion he determined that FREEDOM 55 possessed a low degree of inherent distinctiveness, as does NEW FREEDOM TO PLAN YOUR FUTURE. These decisions are clearly correct and there has been no evidence subsequently adduced that would lead to any different conclusion. He found that FREEDOM 55 had acquired a significant degree of acquired distinctiveness, while NEW FREEDOM TO PLAN YOUR FUTURE, being a proposed use mark, would have none. The additional evidence that has been filed shows that FREEDOM 55, by the date of the Board's decision, was a very famous mark indeed. As such, it is entitled to broad protection.

[22]      The Board assessed the factors listed in paragraphs (b), (c), (d) and (e) of section 6 of the Trade-marks Act and found that the length of time the respective marks had been in use and the overlapping nature of the services that could be sold under the two marks weighed in favour of London Life. With respect to the second factor the Board Member noted that it was the use Manufacturers Life could make of the applied-for-mark as described in its trade-mark application that governed, not the exiting use it was making of the mark (use in association with one insurance plan - the UL100). He found that London Life and Manufacturers Life conducted their business in more or less the same manner, although one operated only through brokers while the other sold directly to the general public. He found that the marks resembled each other visually and aurally to the extend that the word FREEDOM was common to both marks and appeared at the beginning. He found that the ideas suggested by each differed: "The opponent's mark suggests some type of emancipation while the applied-for mark suggests an innovative, flexible strategy for personal planning". I am not persuaded that these conclusions are erroneous or that the evidence before me leads to any different conclusion, although I consider there is more overlap in the ideas suggested by the two marks than the Board described.

[23]      The assessment of whether there is a reasonable likelihood of confusion is to be assessed in all the circumstances of the given case. The Board Member considered that two such factors were particularly relevant: the practice in the industry when using trade-marks is to use them in close association with the name of the particular insurance company; and, the kind of financial services that are sold in association with the marks are not purchased hastily - they are purchased only after time has been spent by a broker or agent explaining the policy to the potential purchaser. These conclusions are fully supported by the evidence, both that before the Board and that before me.

[24]      The Board Member also made reference to the fact that between the date of the trade-mark application and his decision both marks had been used and there was no evidence of actual confusion having occurred. I agree with counsel for the appellant that an absence of actual confusion has limited value in assessing future likelihood of confusion, particularly if Manufacturers Life expanded its use of the trade-mark, as it is entitled to do under the trade-mark registration.

[25]      Reference was made to the appellant's family of marks but the evidence did not establish any significant use of those marks other than FREEDOM 55 and LIBERTÉ 55. Thus this is not a significant factor. The crucial issue in this case is whether the new evidence, in particular the survey evidence that London Life has filed, supports the conclusion that there is a reasonable likelihood of confusion if the two marks are used in association with the services described. The survey that was commissioned by London Life was designed to determine the extent of the recognition of the expressions FREEDOM 55 and NEW FREEDOM TO PLAN YOUR FUTURE used in association with insurance services marketing and to determine whether there would be any association of NEW FREEDOM TO PLAN YOUR FUTURE with the company marketing its services under the trade-mark FREEDOM 55.

[26]      The survey results demonstrate that FREEDOM 55 is a very well known mark, and that NEW FREEDOM TO PLAN YOUR FUTURE is not. The conclusions that can be drawn from the survey results as interpreted by the respective experts, with respect to whether a reasonable likelihood of confusion would exist is less definitive.

[27]      The evidence relating thereto is found in seven affidavits: the affidavits of Dr. Corbin dated May 12, 1996, and August 8, 1996; the affidavit of Dr. Heeler dated September 3, 1996; the reply affidavit of Dr. Corbin dated December 10, 1996, and that of Dr. Chakrapani dated December 10, 1996; the rebuttal affidavit of Dr. Heeler dated May 21, 1997, and the surrebuttal of Dr. Chakrapani dated May 27, 1997. Many criticisms of the survey were made by Dr. Heeler. With respect to several of these, I do not need to consider the evidence in detail. It is sufficient to set out my conclusions.

[28]      I am not persuaded that the wrong universe was surveyed either because the interviewees were not asked whether they were in the market to purchase insurance or because they were asked about their household income rather than their personal income. I accept Dr. Corbin's statement that one surveys the potential market not the company's actual target market, or the actual market of insurance purchasers. I accept Dr. Chakrapani's statement that the results of the survey would not be affected in any significant way as a result of using household income rather than personal income as a screening test.

[29]      I do not find Dr. Heeler's criticism that Dr. Corbin's presentation of her results was done in a misleading fashion to be a valid criticism. I quote from Dr. Corbin's reply:

I was very careful never to overstate the results, and indeed note that Dr. Heeler confirms this when acknowledging that I refrained from claiming statistical significance where it did not exist. I reported only the facts, and provided all raw data and sample sizes, so that there could be no possibility of misapprehension by the reader.

[30]      Also, I do not accept Dr. Heeler's criticism that the high refusal rates invalidated the survey. Both Drs. Corbin and Chakrapani stated that the rates were within the industry standard for these types of surveys in Canada.

[31]      The main issue is the conclusions that should be drawn from the responses given to the questions that were designed to assess whether individuals would associate FREEDOM 55 and NEW FREEDOM TO PLAN YOUR FUTURE as denoting insurance services originating with the same company.

[32]      The survey was conducted by telephone using CATI (computer assisted telephone interviewing). A high percentage of those interviewed, 84%, claimed they were aware of the trade-mark FREEDOM 55. A series of follow up questions was asked that I do not find it necessary to describe in detail. The last of these asked one half of the interviewees (approx. 150) whether they believed insurance services sold by reference to FREEDOM 55 and NEW FREEDOM TO PLAN YOUR FUTURE were sold by (1) the same company, (2) different companies or (3) they did not know. (This is referred to as "the main group.") The other half of the interviewees were asked whether they believed insurance services sold by reference to FREEDOM 55 and MORE SECURITY TO PLAN FOR TOMORROW (a fictitious slogan) were sold by (1) the same company, (2) different companies, or (3) the interviewee did not know. (This is referred to as "the control group.") The two questions were asked of interviewees in strict rotation. In the main group 39% answered that they believed the services were sold by the same company. In the control group 29% answered that they believed the services were sold by the same company.

[33]      In addition to these questions, there were answers to other questions that gave some indication that the two marks might be associated with the same source. Dr. Corbin reported the results of the survey as follows:

47.      In summary, the data demonstrate that the name FREEDOM 55 is well-known by a large majority of Canadians. Also, there were five different measures where respondents indicated a perceived association between NEW FREEDOM TO PLAN YOUR FUTURE and FREEDOM 55, that was higher than could be explained by guessing:

(i)      Some respondents associated NEW FREEDOM TO PLAN YOUR FUTURE with FREEDOM 55 when asked to describe the service sold under the name NEW FREEDOM TO PLAN YOUR FUTURE.

(ii)      Some respondents associated NEW FREEDOM TO PLAN YOUR FUTURE with the London Life company.

(iii)      Some respondents said that the company who sold a service referred to by the name NEW FREEDOM TO PLAN YOUR FUTURE also sold FREEDOM 55.

(iv)      Some respondents said that they had seen advertising for NEW FREEDOM TO PLAN YOUR FUTURE, but were clearly thinking of FREEDOM 55 advertising.

(v)      Some respondents said directly that they believed NEW FREEDOM TO PLAN YOUR FUTURE and FREEDOM 55 to be sold by the same company. The result demonstrating this perception is statistically reliable.

[34]      It is agreed that paragraphs (i) to (iv) do not refer to statistically significant results. Dr. Heeler notes that even the results reported in support of paragraph (v) are only marginally statistically significant. (I do not think it necessary to discuss the details of that analysis since I understand all the experts agree that this is so). He also argues that the results relied upon for the conclusions in paragraph (v) do not meet the statistical standard that is applied to distinguish results that are obtained from random guessingly from those that are not (the ÷ ² test). He also states that when you assess the main group and that of the control group separately, as he states should be done when assessing the reliability of the answers given to the last question, you do not have a 95% confidence level.

[35]      Drs. Corbin and Chakrapani do not disagree with many of these statements. They assert however that statistical significance is a mechanical and arbitrary test and that conclusions can still be drawn from results that fail to meet those mechanical tests. Considering the results of the ÷ ² test, for example, the main group was much closer to non-randomness, than the control group.

[36]      The marginally statistically significant conclusions of paragraph (v) and the less than statistically significant but directional results that underpin paragraphs (i) to (iv) must be assessed, then, in the context of all the evidence relating to the survey. That context includes: the fact that the survey, like most surveys, is artificial in that it did not try to replicate the real life situation of an insurance salesman (broker or otherwise) selling the relevant insurance services to customers; it did not include the presentation of written materials to the would-be purchaser, in which the practice of the industry is to use trade-marks in close proximity to the respective company's name; the fictitious slogan that was used as a control did not contain the word freedom - had it done so the difference between the answers to the two might not have been as large as it was. Counsel for the respondent argues that the appellant cannot assert a monopoly on the word freedom and he notes that a review of the literature relating to financial and insurance services reveals that the word 3freedom3 is often used as a descriptive term in that literature. These are significant factors when assessing the conclusions to be drawn from the marginally significant and directional survey results. Considering the survey results in the light of these factors as a whole, I have not been persuaded that those results support the conclusion the appellant would have me draw.

[37]      For the reasons given I reach the same conclusion as that given by the Opposition Board and the appeal will be dismissed.

"B. Reed"

Judge

TORONTO, ONTARIO

March 24, 1999

     FEDERAL COURT OF CANADA

     Names of Counsel and Solicitors of Record

COURT NO:                          T-1109-96

STYLE OF CAUSE:                  LONDON LIFE INSURANCE COMPANY

                             - and -

THE MANUFACTURERS LIFE INSURANCE COMPANY

                             - and -

                             THE REGISTRAR OF TRADE-MARKS

DATE OF HEARING:              TUESDAY, FEBRUARY 23, 1999

PLACE OF HEARING:              TORONTO, ONTARIO

REASONS FOR ORDER BY:          REED J.

DATED:                          WEDNESDAY, MARCH 24, 1999

APPEARANCES:                  Ms. Adèle Finlayson

                            

                                     For the Appellant

                            

                             Mr. Michael E. Charles

                             Mr. Mark Robbins

                                     For the Respondents

SOLICITORS OF RECORD:          Shapiro Cohen

                             Barristers & Solicitors

                             2001-112 Kent St.,

                             PO Box 3440,Stn. D

                             Ottawa, Ontario

                             K1P 6P1

                                     For the Appellant

                             Bereskin & Parr

                             Barristers & Solicitors

                             Box 401, 40 King St. W.

                             Toronto, Ontario

                             M5H 3Y2

                                     For the Respondents             

                             FEDERAL COURT OF CANADA

                                 Date: 19990323

                        

         Docket: T-1109-96

                             Between:

LONDON LIFE INSURANCE COMPANY

                            

Applicant

                             - and -

                             THE MANUFACTURERS LIFE INSURANCE                              COMPANY

     - and -

                             THE REGISTRAR OF TRADE-MARKS

                        

     Respondents

                    

                            

            

                             REASONS FOR ORDER             

                            

    

__________________

     ¹      Park Avenue Furniture v. Wicks Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413, at 424 (F.C.A.).

     ²      Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1986), 12 C.P.R. (3d) 511, at 520 (F.C.T.D.).

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

     ⁴      101482 Canada Inc. v. Registrar of Trade-marks (1985), 7 C.P.R. (3d) 289, at 292.

     ⁵      Miss Universe Inc. v. Bohna (1995), 58 C.P.R. (3d) 381, at 387 (F.C.A.).