LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 161
Date of Decision: 2016-09-28
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Amacon Construction Ltd.
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Opponent |
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and |
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Reid’s Heritage Homes Ltd. |
Applicant |
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1,602,230 for LIVEWISE |
Application |
[1] On November 13, 2012, Reid’s Heritage Homes Ltd. filed an application to register the trade-mark LIVEWISE (the Mark) based on proposed use in Canada in association with property and real estate development, management, sales and rentals; general contracting and building of residential subdivisions and commercial properties; real estate brokerage services; plumbing; installation, repair and maintenance of electrical, heating, ventilating and air conditioning systems (the Services).
[2] The application was advertised for opposition purposes in the Trade-marks Journal of December 11, 2013.
[3] On May 9, 2014, Amacon Construction Ltd. (the Opponent) filed a statement of opposition. The grounds of opposition can be summarized as follows:
• The application does not comply with section 30(i) of the Trade-marks Act, RSC 1985, c T-13 (the Act) because the Applicant could not have been satisfied it was entitled to use or register the Mark in Canada in association with the Services in view of the Opponent’s prior use or prior use and registration of the Opponent’s trade-mark LIVE WELL.
• The Mark is not registrable pursuant to section 12(1)(d) of the Act because the Mark is confusing with the Opponent’s registered trade-mark LIVE WELL (registration No. TMA619,539).
• The Applicant is not entitled to registration of the Mark pursuant to section 16(3)(a) of the Act because the Mark was confusing with the Opponent’s trade-mark LIVE WELL which was previously used in Canada.
• Pursuant to section 2 of the Act, the Mark is not distinctive in that it will not distinguish and is not adapted to distinguish the Services from the services of the Opponent.
[4] The Applicant served and filed a counter statement in which it denied the Opponent’s allegations. In support of its opposition, the Opponent filed the affidavits of Marcello S De Cotiis and Ailbish Skinner. In support of its application, the Applicant filed the affidavits of Blake Seeberger and Beth Boisvert. Both parties filed written arguments and attended a hearing.
Onus and Material Dates
[5] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
[6] The material dates that apply to the grounds of opposition are as follows:
• sections 38(2)(a)/30(i) - the date of filing the application [see Georgia-Pacific Corp. v Scott Paper Ltd. (1984), 3 CPR (3d) 469 at 475 (TMOB) and Tower Conference Management Co. v Canadian Exhibition Management Inc. (1990), 28 CPR (3d) 428 at 432 (TMOB)].
• sections 38(2)(b)/12(1)(d) - the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)].
• sections 38(2)(c)/16(3)(a) - the filing date of the application [see section 16(3) of the Act].
• sections 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v Stargate Connections Inc. (2004), 34 CPR (4th) 317 (FC)].
Analysis of the Grounds of Opposition
Section 30(i) Ground of Opposition
[7] The section 30(i) ground of opposition alleges that the Applicant could not have been satisfied that it was entitled to use or register the Mark because the Applicant must have been aware of the Opponent's prior use and registration of its trade-mark LIVE WELL. Where an applicant has provided the statement required by section 30(i), this ground should only succeed in exceptional cases such as where there is evidence of bad faith [Sapodilla Co v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. As this application includes the required statement and there is no allegation or evidence of bad faith or other exceptional circumstances, the section 30(i) ground is rejected.
Section 12(1)(d) Ground of Opposition
[8] An opponent’s evidential burden is met with respect to a section 12(1)(d) ground of opposition if the registration relied upon is in good standing as of the date of the opposition decision. I have exercised my discretion to check the register [see Quaker Oats of Canada Ltd./La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd. (1986), 11 CPR (3d) 410 (TMOB)] and confirm that the registration for the Opponent’s trade-mark LIVE WELL remains valid. The particulars of this registration are set out below.
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Registration No. |
Trade-mark |
Services |
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TMA619,539 |
LIVE WELL |
Real estate services, namely investment, development, construction, marketing, sales, operation and management services relating to residential, office, retail, commercial, resort, industrial, hospitality and health care properties, namely senior and extended care properties. |
[9] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that 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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.
[10] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [see, in general, Mattel, Inc. v 3894207 Canada Inc. (2006), 49 CPR (4th) 321 (SCC). and Masterpiece Inc. v Alavida Lifestyles Inc. (2011), 96 CPR (4th) 361 (SCC).]
inherent distinctiveness
[11] The parties’ trade-marks have a very limited degree of inherent distinctiveness. The Opponent’s trade-mark LIVE WELL suggests that the end users of the Opponent’s services will live well. For example, the Opponent’s sales brochure for its TEMPO project states (De Cotiis affidavit, Exhibit B-1):
… Our dedication to service and quality doesn’t stop at your purchase. Attentive after-sales service gives customers the peace of mind they need to feel confident in their new homes. We do this so you can LIVE WELL.®
The Mark suggests that the Services have been smartly or wisely designed. The Applicant’s website states (Seeberger affidavit, Exhibit B4):
In every home we build, our commitment to excellence is defined by our LiveWISETM program, which underlies our award-winning emphasis on top quality, satisfied customers, environmental responsibility, superior service, exceptional design and the creation of vibrant neighbourhoods.
In finding that the Mark and the LIVE WELL trade-mark are not inherently distinctive it was unnecessary for me to have regard to the evidence of Ms. Boisvert who set out in the text of an affidavit the first definition of the words WELL, LIVE WELL and WISE from various dictionaries. The Opponent objected to this evidence mainly on the basis that Ms. Boivert did not attach printouts of the dictionary websites she consulted and the whole definitions were not provided (see Opponent’s Written Arguments, para 29). As I did not have regard to Ms. Boivert’s evidence, I will not be discussing it further.
the extent to which the marks have become known and the length of time in use
[12] The strength of a trade-mark may be increased by means of it becoming known in Canada through promotion or use. I will now turn to the extent to which the trade-marks have become known in Canada.
[13] The Applicant’s evidence of use of the Mark is set out in the affidavit of Blake Seeberger, the Senior Vice President, Residential of the Applicant. He provides the following:
• The Mark appears on the Applicant’s website www.reidsheritagehomes.com (para 7; Exhibits B1-B4) and in its Twitter and LinkedIn Accounts (para 13; Exhibits H1-H2); on sales brochures displayed at sales offices (para 8; Exhibits C1-C3); and in advertisements in newspapers such as the Waterloo Region Record and Guelph Mercury (para 9; Exhibits D1-D5) and the Active Adult Magazine (para 11; Exhibit F).
• The LIVEWISE program has been referenced in articles published in the New Home & Condo Guide and Your First Home & Condo (para 10; Exhibits E1-3).
• The Mark has appeared in newspaper advertising and on third party websites advertising the Services as early as January 2013 (Exhibits D1, G3-G4).
Since the Applicant has not provided sales or advertising information, website or social media hits, it is difficult to determine the extent to which the Applicant’s trade-mark has become known in Canada. Given these deficiencies, I am only able to infer that the Mark is likely known to a limited extent in Ontario.
[14] The Opponent’s evidence of use of its trade-mark LIVE WELL is set out in the affidavit of Marcello S. De Cotis, Vice President of the Opponent. He provides the following evidence:
• The Opponent’s trade-mark LIVE WELL has been used in association with a number of real estate projects in Mississauga, Ontario, and in Vancouver, Surrey, and Burnaby, BC (para 5).
• The LIVE WELL trade-mark is displayed in print advertising including sales brochures (para 9, Exhibits B1-B3; C), on signage and banners surrounding the Opponent’s real estate projects (para 10, Exhibits D1-D2, E), and on signage at sales centres (para 12; Exhibit H).
• The LIVE WELL trade-mark has been used on the Opponent’s website www.amacon.com from 2003-2014 (para 15; Exhibits L1-L2) and on its social media including its Twitter feed, Facebook page and Instagram page (para 16; Exhibits M-O).
• The LIVE WELL trade-mark is displayed on a variety of other promotional material used to promote the Opponent’s services, including the projects, such as blank note pads, pins, key rings, pens, USB keys and mint tins which are distributed to potential customers (para 14; Exhibit K).
• The Opponent’s LIVE WELL trade-mark has been discussed in newspaper articles including in the Toronto Star and the Vancouver Province (para 11, Exhibits F and G).
• The Opponent has evidenced use of its LIVE WELL trade-mark since 2003 (see, for example, Exhibit L1 which shows this trade-mark on the Opponent’s website in 2003).
• The Opponent provides that the sales figures as of January 2012 for its real estate projects were over $800 Million Cdn and advertising expenditures were over $7.5 Million (paras 6-7) for print advertising, online advertising, give-away collateral and sponsorship of events (para 7). While $800 Million Cdn represents very impressive sales, I have kept in mind that an individual purchase price of one of the Opponent’s homes would be considerable.
The Opponent also provides evidence through the affidavit of Ms. Skinner, an articling student employed by its agent. Ms. Skinner provides further examples of archived versions of the Opponent’s website between 2003-2014 featuring the LIVE WELL trade-mark (Exhibits D1-D11). Ms. Skinner also provides evidence that the Toronto Star circulation in 2008 was approximately 335,000 (Exhibit A) and the Vancouver Province circulation in 2013 was 140,000 (Exhibit B4). I infer that the circulation in 2014 would be similar to that in 2013.
[15] I agree with the Opponent that its use of the LIVE WELL trade-mark has increased its distinctiveness. That being said, I find that the trade-mark LIVE WELL nonetheless remains a relatively weak mark, and the evidence does not make it possible to conclude that it has become known in Canada to such an extent as to counterbalance the fact that it lacks any real degree of inherent distinctiveness.
the nature of goods, services or business
[16] This factor favours the Opponent as the Services are identical or overlap with the Opponent’s registered services.
the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them
[17] In considering the degree of resemblance, the Supreme Court of Canada in Masterpiece, supra, sets out that resemblance is defined as the quality of being either like or similar (para 62) and that the approach to assessing resemblance should involve a consideration of whether there is an aspect of a trade-mark that is particularly striking or unique (para 64). Further, while it is generally accepted that the first component of a mark is often the most important for the purposes of distinguishing between the marks, the importance of this factor diminishes if the first component is suggestive or descriptive [Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD); Sky Solar Holdings Co., Ltd. v Skypower Global, 2014 TMOB 262 at paras 48-50; Health4All Products Limited v The Nutraceutical Medicine Company Inc, 2012 TMOB 194 at paras 61-62; International Business Machines Corporation v Loris Technologies Inc, 2013 TMOB 136 at para 70; Reno-Dépôt v Homer TLC Inc (2009), 2010 TMOB 11 at para 58]. The law is also clear that when assessing confusion it is not proper to dissect trade-marks into their component parts, rather, marks must be considered in their entirety [United States Polo Assn v Polo Ralph Lauren Corp (2000), 9 CPR (4th) 51 (FCA) at para 18].
[18] In this case, there is nothing striking or unique about either parties’ trade-mark given that each relates to attributes of the parties’ respective services. While the common use of the word LIVE results in trade-marks with some degree of resemblance, I consider that the resemblance in appearance and as sounded is diminished due to the difference in their suffix components. Further, I find that for consumers there is a distinction to be made between the ideas suggested by each trade-mark. Specifically, the Mark suggests that the Applicant’s real estate projects are intelligently or wisely designed, while the Opponent’s trade-mark LIVE WELL suggests that the Opponent’s real estate projects will allow consumers to enjoy life.
[19]
In its written argument, the Opponent states (para 73):
Since both the [Mark] and the LIVE WELL Mark have the word LIVE as both the
first word and the dominant word of each of the respective marks at issue, each
followed by a 4 letter adjective beginning with the letter “W”, the Opponent
submits that the LIVE WELL Mark and the [Mark] are substantially similar to
each other.
However, the Opponent’s focus on the individual parts of the marks that are the same, appears to involve a side-by-side comparison of the type warned against by the courts [Veuve Clicquot Ponsardin Maison Fondée en 1772 v Boutiques Cliquot Ltée 2006 SCC at para 20; and International Stars SA v Simon Chang Design Inc, 2013 FC 1041at para 9].
Law Concerning Weak Trade-marks
[20] The jurisprudence on weak trade-marks supports the Applicant’s position. It is well accepted that comparatively small differences will suffice to distinguish between weak marks [see Boston Pizza International Inc v Boston Chicken Inc (2001), 15 CPR (4th) 345 (FCTD) at para 66]. In Provigo Distribution Inc v Max Mara Fashion Group SRL 2005 FC 1550, de Montigny J. explains:
The two marks being inherently weak, it is fair to say that even small differences will be sufficient to distinguish among them. Were it otherwise, first user of words in common use would be unfairly allowed to monopolize these words. A further justification given by courts in coming to this conclusion is that the public is expected to be more on its guard when such weak trade names are used …
[21] Further, a party adopting a weak trade-mark has been held to accept some risk of confusion [see General Motors v Bellows (1949), 10 CPR 101 at 115-116 (SCC)].
Applicant’s Other WISE Registrations
[22] The Applicant has evidenced that it owns other WISE trade-marks including DESIGNWISE, ENVIROWISE, PEOPLEWISE, and QUALITYWISE (Seeberger affidavit, Exhibits A1-A4). I do not consider this to be a relevant surrounding circumstance since this does not give it the automatic right to obtain any further WISE registrations [see American Cyanamid Co v Stanley Pharmaceuticals Ltd (1996), 74 CPR (3d) 571 (TMOB)].
Conclusion
[23] The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the trade-mark LIVEWISE in association with the Services when he or she has no more than an imperfect recollection of the Opponent’s LIVE WELL trade-mark, and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot Ponsardin Maison Fondée en 1772 v Boutiques Cliquot Ltée, supra at para 20].
[24] While the Opponent has established that its trade-mark is known to some extent in Canada and that the Services are identical or overlap with its services, the Opponent’s trade-mark remains a weak trade-mark. In view of this and the differences between the trade-marks, I conclude that the balance of probabilities between finding that there is no reasonable likelihood of confusion, and finding that there is a reasonable likelihood of confusion, falls slightly in favour of the Applicant. Accordingly, the section 12(1)(d) ground of opposition is rejected.
Section 16(3)(a) Ground of Opposition
[25] In order to meet its initial burden with respect to its section 16(3)(a) ground of opposition, the Opponent must show that it had used the trade-mark LIVE WELL as of November 13, 2012 and had not abandoned such use as of December 11, 2013 (see section 16(5)). The Opponent’s evidence detailed in paragraph 14 is sufficient to meet its evidential burden. The Applicant must now show, according to the balance of probabilities, that there was not a likelihood of confusion between the Mark and the Opponent’s LIVE WELL trade-mark on the date of filing of its application.
[26] In my view, the differences in the material dates does not have a significant impact on the determination of the issue of confusion. While the Opponent has met its initial burden, the Applicant has also met its burden because there is no likelihood of confusion for the reasons set out in the discussion of the section 12(1)(d) ground. While only the Opponent has evidenced use of its trade-mark as of this earlier material date, given that its evidence is insufficient for me to find that its trade-mark has become known in Canada to such an extent as to counterbalance the fact that it lacks any real degree of inherent distinctiveness, I do not find the that the earlier material date changes my conclusion on the likelihood of confusion. Accordingly, I reject the ground of opposition based on section 16(3)(a) of the Act.
Section 2 Distinctiveness Ground of Opposition
[27] The Opponent has pleaded that the Mark is not distinctive of the Services because it is confusing with the Opponent’s trade-mark LIVE WELL. The Opponent has met its initial burden since its evidence establishes that its LIVE WELL trade-mark had, at the material date, acquired a substantial, significant or sufficient reputation in Canada [see Bojangles' International LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 at para 34 (FC)]. In the circumstances of this case, however, nothing turns on the different material date for considering this ground of opposition as compared to the section 16 and 12(1)(d) grounds of opposition. Therefore the outcome of the distinctiveness ground is the same as the outcome of these grounds and this ground of opposition is rejected.
Disposition
[28] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Natalie de Paulsen
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
HEARING DATE: May 5, 2016
APPEARANCES
K. Beth Macdonald For the Opponent
Micheal Bean For the Applicant
AGENTS OF RECORD
McCarthy Tétrault LLP For the Opponent
Michael Bean Trademark & Copyright Law For the Applicant