London Life Insurance Co. v. Manufacturers Life Insurance Co., docket T-1284-97

Date: 19990324

Docket: T-1284-97

     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. 709,954 for the trade-mark

     LA LIBERTÉ DE PLANIFIER VOTRE AVENIR

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 LA LIBERTÉ DE PLANIFIER VOTRE AVENIR for use in association with life insurance services. London Life is the owner of the trade-marks FREEDOM 55, LIBERTÉ 55, FIRST FREEDOM, LIBERTÉ PREMIÈRE and FREEDOM TIME. These are registered for use in association with insurance, financial planning services, investment services, and investment saving plans.

[2]      London Life argues that the Chairman of the Board erred in finding that the applied-for trade-mark was registerable. It is argued that he erred because: (1) there is a likelihood of confusion between the applied-for-mark and the appellant's family of marks (contrary to sections 6 and 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13 as amended); (2) the respondent has not proven that the applied-for-mark at the date of its first use was not confusing with the appellant's mark (contrary to section 16(1) of the Trade-marks Act); (3) the respondent has 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.

Role of the Court on Appeal

[3]      The appropriate approach for the Court on appeal from a decision of the 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.

[4]      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

[5]      There appears to be some uncertainty as to exactly what was considered by the Chairman of the Board in this case. He rejected much of the evidence that was filed by London Life and the certified record contains none of that filed by Manufactuer's Life, although the Board's reasons indicate it did consider this. London Life filed four affidavits for the purposes of the opposition proceedings, the affidavits of Shirley McDonald, Chantal Bertoša, Sheila Jennings-Linehan, and William Sandfield Kennedy. The Chairman of the Board indicated that he did not consider the evidence of Chantal Bertoša and Sheila Jennings-Linehan admissible because it was hearsay. He also appears to have had concerns about parts of William Standfield Kennedy's affidavit for the same reason. The certified record contains all four affidavits but only the affidavit of Shirley McDonald contains the exhibits submitted in association with the affidavit.

[6]      Manufacturers Life apparently filed four affidavits for the purposes of the opposition proceeding, the affidavits of Edward Jacob, Mark Robbins, Marie Lucie Lussier, and Linda Elford. Although these affidavits are mentioned by the Board, none of this material is part of the certified record. I asked that verification be obtained that the certified copy of the record, which had been sent, included the whole of the record. No additional material was provided to the Court. Subsequently, material sent to the Court as relevant to a related proceeding (T-1109-96) was found to contain three of the four missing affidavits and the cross-examination relevant to the fourth, that of Eward Jacob. The remaining missing affidavits were supplied to the Court by counsel.

[7]      Both parties filed evidence in this Court and it is on the basis of that evidence, together with the evidence that was before the Board, that my decision must be made. Counsel for the respondent argues that some of the evidence filed by London Life is inadmissible as hearsay. I allowed this evidence to be filed indicating that the objections would go the weight that would be given to that evidence.

[8]      The evidence attests to the extensive advertising that London Life has done to make its trade-mark FREEDOM 55/ LIBERTÉ 55 well known. The evidence includes a survey designed to assess the recognition that the mark LIBERTÉ 55 enjoys in the market place. The survey was confined to Quebec because although the reputation of FREEDOM 55 is relevant, the focus of this opposition is to the registration of LA LIBERTÉ DE PLANIFIER VOTRE AVENIR. The survey was conducted a few weeks after the Board's decision. The date of that decision is the relevant date for assessing the likelihood of confusion for the purposes of sections 6 and 12. The evidence does not contain direct evidence of confusion or likelihood of confusion.

Legislative Provisions

     A Trade-mark is Not Registerable When . . .

[9]      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;

[10]      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.]

[11]      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

[12]      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

[13]      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

[14]      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

[15]      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 - April 16, 1997.

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

[16]      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.]

[17]      The material date for assessing whether the marks were confusing is the date of Manufacturers Life's first use of its mark - April 6, 1992.

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

[18]      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.]

[19]      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 - February 26, 1993.

Opposition Board's Decision and the Court's Conclusions

[20]      I turn then to the Board's decision. The Chairman of the Board assessed the evidence concerning likelihood of confusion by reference to all the circumstances of the situation, and in accordance with the factors specifically identified in subsection 6(5) of the Trade-marks Act. He concluded that LA LIBERTÉ DE PLANIFIER VOTRE AVENIR had a limited degree of inherent distinctiveness as applied to life insurance services. He concluded that FREEDOM 55 and LIBERTÉ 55 had relatively little inherent distinctiveness when applied to life insurance, financial planning and investment services. Insofar as acquired distinctiveness is concerned, he found that the applied-for-mark LA LIBERTÉ DE PLANIFIER VOTRE AVENIR "had become known to some extent in Canada in association with life insurance services." Manufacturers Life had been using it since 1991 in association with one policy (the UL 100 policy). He found that LIBERTÉ 55 had considerable acquired distinctiveness, that it had become fairly well known in Canada in association with life insurance and financial planning, and that its acquired distinctiveness was augmented by virtue of London Life's very extensive use of the FREEDOM 55 trade-mark.

[21]      On the basis of the evidence before me, I find that the applied for mark has limited inherent distinctiveness, as does the appellant's mark. I find that the applied for mark has limited acquired distinctiveness. The evidence has shown, however, that LIBERTÉ 55 is widely recognized and familiar to members of the pertinent public in the Province of Quebec. A significant number of those surveyed associated the mark with insurance and financial planning services. The advertising by London Life, and in particular its television advertising, has had a substantial impact in the Canadian marketplace. The survey indicated that a significant number of those surveyed were able to identify the trade-mark LIBERTÉ 55 and associated it with financial planning for retirement. The mark, as a well-known mark, is entitled to broad protection.

[22]      With respect to the specifically listed factors in subsections 6(b)(c) and (d) of the Trade-marks Act, the Board found that these all weighed in London Life's favour: (1) London Life had been using FREEDOM 55 and LIBERTÉ 55 since 1984, while Manufacturers Life only began using the applied-for-mark in 1991; (2) the nature of the services with which the marks are associated is the same - although Manufacturers Life in the past had only used its mark in association with one type of policy in the past, its application for trade-mark registration was more broadly worded; (3) the respective channels of trade in which the two companies engage are overlapping - the fact that one sells directly to customers while the other acts through brokers is not a significant difference. These findings are equally the conclusions that arise from the evidence before me.

[23]      With respect to the appearance, sound and the concepts conveyed by the trade-marks, the Board found that there was some similarity between the appearance and sound of LIBERTÉ 55 and LA LIBERTÉ DE PLANIFIER VOTRE AVENIR but no similarity in either appearance or sound to the English FREEDOM 55. The Board found that while the marks conveyed the same general idea they also differed in their concepts:

There is some degree of similarity in appearance and in sounding between the opponent's trade-marks LIBERTE 55 and LIBERTE PREMIERE and the applicant's LA LIBERTE DE PLANIFIER VOTRE AVENIR trade-mark when the marks are considered in their entireties. However, there is no similarity either in appearance or in sounding between the applicant's trade-mark and the FREEDOM 55 mark. The idea suggested by the marks differ specifically in that the trade-marks FREEDOM 55 and LIBERTE 55 convey the idea of achieving financial freedom at age 55 while the applicant's trade-mark suggests the ideas of having the freedom or flexibility to plan for your future. While the marks convey the same general idea of financial freedom, I do not consider that the opponent is entitled to a monopoly in respect of such an idea. In this regard, the articles and printed publications annexed to the Robbins affidavit evidence relatively frequent use of the expression 3financial freedom3. Even though the truth of the contents of the articles and publications are hearsay with respect to the affiant Robbins, they are evidence of the use of the expression 3financial freedom3 appearing in them. Moreover, the concept or idea of achieving financial freedom is referred to in a non-proprietary manner in the opponent's own evidence [see exhibit A(2) to the Kennedy affidavit]. Further, the trade-mark LIBERTE PREMIERE does not suggest any readily apparent idea which is similar to the ideas suggested by either the applicant's trade-mark or the opponent's FREEDOM 55 and LIBERTE 55 trade-marks. [Emphasis added.]

I come to a similar conclusion. FREEDOM 55 and LIBERTÉ 55 convey the idea of being free of financial worries at age 55. LA LIBERTÉ DE PLANIFIER VOTRE AVENIR carries with it the idea of planning for the future. The ideas they convey overlap, but they are not completely identical.

[24]      I turn then to the state of the Register as a relevant consideration and to the appellant's "family" of marks. I will quote from the Board's decision because it contains a succinct and accurate summary of the evidence:

As a further surrounding circumstance in respect of the issue of confusion, the opponent submitted that it has a family of trade-marks including the elements FREEDOM and LIBERTE. In this regard, the opponent's evidence points to the existence of registrations for the trade-marks EN LIBERTE, LIBERTE PREMIERE, FIRST FREEDOM and FREEDOM TIME, as well as pending applications for the marks THE FREEDOM COMPANY, FREEDOM FUND, FONDS LIBERTY [sic], FREEDOM PORTFOLIO and THE FREEDOM PORTFOLIO. In view of the decision in McDonald's Corp. v. Yogi Yogurt Ltd., 66 C.P.R. (2d) 101, an opponent seeking to rely upon a family or series of trade-marks must evidence use of those marks in the marketplace. However, apart from annexing specimen brochures bearing the marks LIBERTE PREMIERE and FREEDOM TIME to the Kennedy affidavit, the opponent has not adduced any evidence to establish that these marks have been brought to the attention of the public. The opponent has therefore not established the existence of a family of FREEDOM or LIBERTE trade-marks in this case. On the other hand, and as noted above, the opponent's evidence of use of its trade-mark FREEDOM 55, which is the English version of its LIBERTE 55 mark, certainly augments the reputation associated with the trade-mark LIBERTE 55, and vice versa.

As yet a further surrounding circumstance in respect of the issue of confusion, the opponent sought to rely upon evidence of the state of the register respecting FREEDOM and LIBERTE trade-marks for financial, banking and insurance services. In this regard, the McDonald affidavit shows that the only registered trade-marks of that form are owned by the opponent. This supports to some extent the opponent's contention that consumers are not used to seeing FREEDOM marks in those fields and that there are probably few, if any, such marks in the marketplace that would limit the protection to be accorded to the opponent's mark. Reference was also made at the oral hearing to two pending third party applications for trade-marks including the element FREEDOM which have since bene abandoned, as well as to an application for registration of the trade-mark NESBITT THOMPSON FREEDOM ACCOUNT which was the subject of a yet unreported Opposition Board decision which is presently on appeal to the Federal Court [see London Life Insurance Company v. Nesbitt Thomson Inc., dated October 31, 1996]. In the Nesbitt Thomson case, the Opposition Board rejected an opposition by the present opponent to registration of the trade-mark NESBITT THOMSON FREEDOM ACCOUNT as applied to investment services, the Board Member concluding that the applicant's trade-mark was not confusing with the registered trade-mark FREEDOM 55. Also, in London Life Insurance Company v. The Manufacturers Life Insurance Company, 67 C.P.R. (3d) 563, the Opposition Board rendered a decision involving the trade-mark NEW FREEDOM TO PLAN YOUR FUTURE, the English version of the present trade-mark. In that case, the Board Member concluded that the Section 16 ground was the most relevant of the grounds of opposition involving the issue of confusion and that the applicant had met its legal burden of showing that there would be no reasonable likelihood of confusion between the trade-marks at issue in that proceeding as of the material date for assessing the Section 16 ground.

[25]      The description of the facts set out in the quoted paragraphs is accurate. Counsel for the appellant tried to argue that the evidence before me demonstrated a more extensive use of FIRST FREEDOM, LIBERTÉ PREMIÈRE and FREEDOM TIME than did the evidence before the Board. I cannot conclude that the evidence is materially different in this regard. LIBERTÉ PREMIÈRE (FIRST FREEDOM) are used in association with insurance and financial services designed as educational savings or insurance plans (e.g., parents saving for a child's future education). While sample brochures were appended to Mr. Postons' affidavit, there is no evidence of the extent of use.

[26]      There are several pending applications for related trade-marks, as noted in the Board's decision. In that context counsel for the appellant argues that the Board applied the wrong legal test when it held that reliance on a family of marks cannot be based on an application for registration or indeed the registration itself but must be based on evidence of the actual use that has been made of those marks. It is the use of the family of marks that is relevant. See McDonald's Corp. v. Coffee Hut Stores Ltd. (1994), 55 C.P.R. (3d) 463 (F.C.T.D.), Molnlycke Aktiebolag v. Kimberly-Clark of Canada Limited (1982), 61 C.P.R. (2d) 42 (F.C.T.D.) and McDonald's Corp. v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101 (F.C.T.D.). As noted, there is a paucity of evidence concerning use by the appellant of a family of marks.

[27]      Lastly, the appellant argues that the Chairman of the Board applied the wrong test when he assessed whether the respondent's mark was distinctive. Counsel argues that there is no burden on the appellant to prove lack of distinctiveness but rather the burden is on the respondent to prove to the Board that the mark it seeks to register is distinctive. The Board's comments in this regard must be read in the context of its decision as a whole and in the context of the Trade-marks Act as a whole. Distinctiveness (both inherent and acquired) is one of the elements that must be considered when assessing likelihood of confusion. The Board assessed the respondent's trade-mark in that context and determined that it had a limited degree of inherent distinctiveness, and that it had become known to some extent in Canada (acquired distinctiveness). I do not think the Board erred in the approach taken.

[28]      In any event, I conclude that the Chairman of the Board did not err in the findings of fact he made and the conclusions based thereon, and the evidence that was filed before me together with that filed before the Board does not lead me to reach any different conclusion.

[29]      For the reasons given, 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-1284-97

STYLE OF CAUSE:                  LONDON LIFE INSURANCE COMPANY

                             - and -

THE MANUFACTURERS LIFE INSURANCE COMPANY and THE REGISTRAR OF TRADE-MARKS

DATE OF HEARING:              TUESDAY, NOVEMBER 10, 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

                            

                                     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-1284-97

                             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. Wick 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.).