Trademark Opposition Board Decisions

Decision Information

London Life Insurance Company v Groupe Leblanc Syndic Inc.

Collection	Trademark Opposition Board Decisions
Date	2017-06-29
Neutral citation	2017 TMOB 81
Application number/Registration number	1,585,504
Trademark	Créateur de liberté

Decision Content

OPIC

Logo de l'OPIC / CIPO Logo

CIPO

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2017 TMOB 81

Date of Decision: 2017-06-29

[UNREVISED ENGLISH

CERTIFIED TRANSLATION]

IN THE MATTER OF AN OPPOSITION

	London Life Insurance Company	Opponent
and
	Groupe Leblanc Syndic Inc.	Applicant
	1,585,504 for Créateur de liberté	Application

Introduction

[1] London Life Insurance Company (the Opponent) opposes registration of the Créateur de liberté trade-mark (the Mark) covered by application No. 1,585,504 in the name of Groupe Leblanc Syndic Inc. (the Applicant).

[2] This application, filed on July 10, 2012 and amended on April 17, 2013, is based on the use of the Mark in Canada since May 1, 2011 in association with the following services:

[TRANSLATION] Financial evaluation allowing the taking of concrete actions to create the desired freedoms, namely the financial position evaluation system, which accounts for past events of the current position, using an in-depth analysis of the available options and the motivations of the legal person or the business.

[3] In general, the first two grounds of opposition are based on allegations that the application is not compliant with the requirements of section 30 of the Trade-marks Act, RSC 1985, c T-13 (the Act). The other grounds of opposition are based on allegations of confusion between the Mark and various trade-marks of the Opponent containing the word LIBERTÉ in association with financial services and insurance services, as well as between the Mark and the Opponent’s trade-name FINANCIÈRE LIBERTÉ 55.

[4] The Opponent filed evidence in support of its opposition, while the Applicant filed no evidence in support of its application for registration.

[5] Each of the parties filed a written argument and was represented at the hearing held in this matter.

[6] As my analysis will reveal, I find there is reason to reject the application for registration.

The grounds of opposition

[7] The statement of opposition was filed on March 17, 2014. I summarize below the grounds of opposition raised under section 38(2) of the Act:

The application for registration is not compliant with the requirements of section 30(i) of the Act, in that the Applicant could not be satisfied it is entitled to use the Mark, due to the use of the Opponent’s LIBERTÉ family of trade-marks and FINANCIÈRE LIBERTÉ 55 trade-name.
The application for registration does not comply with the requirements of section 30 (b) of the Act in that the Applicant has not used the Mark in Canada since the date of first use alleged.
The Mark is not registrable according to section 12(1)(d) of the Act because it is confusing with one or more of the Opponent’s registered trade-marks containing the word LIBERTÉ. In Appendix A of my decision, I have reproduced the table found in the statement of opposition giving the details of the registrations alleged in support of the ground of opposition.
The Applicant is not the person entitled to registration of the Mark according to sections 16(1)(a) and 16(1)(b) of the Act because on the date of the first use alleged, the Mark was confusing with:

one or more of the Opponent’s registered trade-marks that the Opponent previously used or made known in Canada and in respect of which applications for registration had been previously filed; and
one or more other unregistered trade-marks of the Opponent containing the word LIBERTÉ, previously used and/or made known in Canada or in respect of which applications for registration had been previously filed. In Appendix B of my decision, I have reproduced the table found in the statement of opposition identifying the unregistered trade-marks alleged in support of these grounds of opposition.

The Opponent argues that the Applicant is not the person entitled to registration of the Mark under section 16(1)(c) of the Act, because on the date of use alleged, the Mark was confusing with the FINANCIÈRE LIBERTÉ 55 trade-name previously used and made known in Canada by the Opponent.
The Mark is not distinctive within the meaning of Section 2 of the Act in that it is not adapted to distinguish the Applicant’s services from the Opponent’s services offered in association with its family of marks containing the word LIBERTÉ.

Relevant dates

[8] The relevant dates for considering the circumstances in regard to the grounds of opposition are the following:

sections 38(2)(a)/30 of the Act - the filing date of the application for registration [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB)];
sections 38(2)(b)/12(1)(d) of the Act 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(1)a), 16(1)(b) and 16(1)(c) of the Act - the date of first use alleged in the application for registration [see section 16(1) of the Act]. However, if an opponent successfully contests the date of first use alleged, the relevant date becomes the filing date of the application [see Everything for a Dollar Store (Canada) Inc v Dollar Plus Bargain Centre Ltd (1998), 86 CPR (3d) 269 (TMOB)]; and
paragraph 38(2)(d) and section 2 of the Act the filing date of the statement of opposition [see Metro-Goldwyn-Mayer Inc v. Stargate Connections Inc, 2004 FC 1185, 34 CPR (4th) 317].

The burden incumbent on the Parties

[9] The legal onus is on the Applicant to show that the application for registration does not contravene the provisions of the Act. This means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the Applicant. However, the Opponent must discharge the initial burden of proving the facts on which it bases its allegations. The fact that an initial evidential burden is imposed on the Opponent means that a ground of opposition will be taken into consideration only if sufficient evidence exists to allow a reasonable conclusion of the existence of the facts alleged in support of this ground of opposition [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155; and Wrangler Apparel Corp v The Timberland Company, 2005 FC 722, 41 CPR (4th) 223].

Opponent’s Evidence

[10] Before proceeding with the analysis of the grounds of opposition, I will review the Opponent’s evidence. I will return, as needed, to certain evidence during my analysis of the grounds of opposition.

[11] The Opponent’s evidence consists of the affidavits of the following persons, who were not cross-examined by the Applicant.

Diane Grégoire
Diane Haynes
Rachael Prichard Noye
Leslie McCallum
Réal Veilleux
Eric Devenny
Joan E. Brehl Steele
Kirsten Smith (two affidavits)
Nancy Gallinger

[12] In my examination of the evidence, I will not consider witness assertions that I consider opinions on questions of fact and law, on which it is up to the Registrar to rule in these proceedings.

Affidavit of Diane Grégoire, sworn on February 13, 2015, and its Exhibits A to L

[13] Ms. Grégoire introduces herself as the Opponent’s “Manager, Quebec Communications”.

[14] Ms. Grégoire specifies that she has resided in the Province of Quebec since 1957 and that she has worked in the communications field regarding financial services and insurance since the beginning of her employment with the Opponent in 1990. Ms. Grégoire lists the positions she held with the Opponent prior to her current position.

[15] Ms. Grégoire explains in detail her roles and responsibilities with the Opponent, where she works in close collaboration with many persons internally, including Diane Haynes, as well as externally. It is sufficient to note that, in the context of her duties, Ms. Grégoire provides support: (a) in communications, which harmonizes with the corporate and marketing strategies by meeting the Francophone public’s needs, and (b) concerning the advertising of the Opponent’s Division LIBERTÉ FINANCIÈRE 55 (FREEDOM 55 FINANCIAL Division) and any other advertising concerning the LIBERTÉ trade-marks.

[16] Apart from an assertion that the Opponent has done business in Canada since its constitution in 1874, Ms. Grégoire affirms that the Opponent’s Division FINANCIÈRE LIBERTÉ 55, created in 2000, specializes in planning of financial security by providing financial advice and offering a wide variety of financial products.

[17] According to Ms. Grégoire’s statements, the advice offered by the financial security advisors of the Opponent’s Division FINANCIÈRE LIBERTÉ 55 meets several needs and objectives of the clients, including: financial planning of everything that counts for the client; financing of education; buying a home; retirement planning; planning of unexpected life events; protection of the interests of a business; creation of a sustainable charitable bequest.

[18] Still according to Ms. Grégoire’s statements, the financial products offered by the Opponent’s Division FINANCIÈRE LIBERTÉ 55 include: individual insurance (life, disability, critical illness, health, dental), individual segregated fund policies, retirement income, education, whole life funds, tax-free savings accounts); group insurance; group pension plans; mutual funds; banking products (bank account borrowing solutions).

[19] Ms. Grégoire explains that the Opponent began its activities as an insurance company; over the years, the Opponent extended the scope of its goods and services to the financial services and products described above.

[20] Ms. Grégoire explains that the examination of the Opponent’s records reveals that it initially adopted the trademark LIBERTÉ 55 in 1984, used it across Canada, and advertised it primarily in Quebec to identify its financial planning, insurance and investment services.

[21] Ms. Grégoire explains that since 1984, the Opponent has adopted a series of LIBERTÉ marks, used and advertised across Canada, and aimed at the Francophone market. The trade-marks that are part of the series of LIBERTÉ marks are listed in a table found in paragraph 17 of the affidavit. I note this table includes the marks alleged in the statement of opposition, as well as other marks composed of the word LIBERTÉ (for example, INSPIRER LA LIBERTÉ, LIBERTÉ POUR LA VIE, and LA LIBERTÉ DE CHOISIR). Ms. Grégoire specifies that the use of “LIBERTÉ Marks” throughout her affidavit is a collective reference to the marks identified in the table and to the trade-name LIBERTÉ FINANCIÈRE 55.

[22] Ms. Grégoire’s affidavit contains a large number of statements concerning the promotion in Canada of the Opponent’s goods and services in association with the LIBERTÉ Marks. The following is a summary of the promotional activities discussed by Ms. Grégoire:

Advertising during television news, current events, sports and entertainment shows, since 1984. A DVD containing a sample of television advertising is filed under Exhibit A.
Advertisements in newspapers, including La Presse, and the magazines Châtelaine (French-language edition), Affaires Plus, L’Actualité and Coup de Pouce. Copies of advertisements created for, and published in, La Presse in 2000; Châtelaine, L’Actualité and Coup de Pouce in 2002; and Courrier Laval in 2004 and 2006 are filed under Exhibit B.
Sponsorships of the Montreal Alouettes football team in 2006 and Junior Alouettes Camps in 2007, with supporting exhibits, namely:

mockups of banners in Percival Molson Stadium [Exhibit B1];
DVD containing two 15-second advertisements broadcast during the radio transmission of Alouettes games, in 2006 [Exhibit B2];
copies of brochures and registration forms for Junior Alouettes Camps and mockups of football jerseys distributed to the participants at the Junior Camps [Exhibits B3 and B4].

www.londonlife.com and www.financiereliberte55.com websites, with supporting exhibits, i.e.

samples of pages from the French version of each website on January 28, 2015 [Exhibits C and D];
screenshots of web pages obtained from the Wayback Machine Internet archive database. Screenshots of the www.londonlife.com site dating from February 12 and 13, 1998 [Exhibit E]. Screenshots of the www.financiereliberte55.com site, covering the years 2001 and 2002, the oldest dating from November 5, 2001 [Exhibit F].

Facebook social media since 2013. A printout of the Facebook page, such as it appeared on January 28, 2015, is filed under Exhibit G.
Direct marketing communications, such as the distribution of brochures and inserts accompanying the statements, and other marketing documents, including business cards and newsletter, with supporting exhibits, i.e.

examples of templates for the marketing material [Exhibit H];
examples of business cards and marketing material, identifying financial security advisors [Exhibit I];
representative examples of marketing communications, brochures, booklets and forms intended for the financial security advisors for distribution to their clients or potential clients for the years 1987 to 2006 [Exhibit J1] and 2007 to 2014 [Exhibits J2 to J9, each exhibit corresponding to one year]. A table filed under Exhibit K shows the number of copies of this material ordered and distributed to the financial security advisors for the years 2007 to 2014.

[23] In the context of her testimony on the television advertising, Ms. Grégoire affirmed that she remembered the advertising campaign for the LIBERTÉ 55 mark when she was a university student in 1984. She also affirmed she remembered this advertising campaign was discussed by persons in her social circle.

[24] Ms. Grégoire’s affidavit also contains statements concerning the evaluation of the Opponent’s marketing and advertising activities, statements that are based on her discussions with Ms. Haynes and her personal experience. I will summarize her testimony by indicating that, according to Ms. Grégoire, the Opponent obtains information from other organizations and retains the services of marketing companies with the goal of monitoring and continually evaluating its marketing campaigns, in order to maximize the exposure of the LIBERTÉ Marks with its target audience. The overall result of the studies has constantly shown there is a high level of recognition of LIBERTÉ 55 and the LIBERTÉ Marks in Quebec.

[25] Ms. Grégoire concludes her affidavit by discussing the 2009 television advertising campaign, staring Quebec comedian André Sauvé. She files as Exhibit L a copy of an article published in Le Journal de Montréal of April 14, 2009, which mentions the effectiveness of this advertising campaign.

Affidavit of Diane Haynes, sworn on February 13, 2015, and its Exhibit A

[26] Ms. Haynes introduces herself as the Opponent’s “Associate Manager, Marketing Communications”.

[27] Employed by the Opponent since 1979, Ms. Haynes lists the positions she held with the Opponent prior to her current position.

[28] Ms. Haynes explains that in the context of her duties, she supervises, with the assistance of senior management, the national advertising campaign and the sponsorship programs for the Opponent’s Division FINANCIÈRE LIBERTÉ 55. She manages the national advertising expense budget, including the Quebec advertising. Her team is responsible for the development and management of advertising communications across Canada, including those that present the LIBERTÉ trade-marks.

[29] A certain number of assertions contained in Ms. Haynes’ affidavit corroborate Ms. Grégoire’s testimony regarding the Opponent’s activities, the financial services and goods offered by its FINANCIÈRE LIBERTÉ 55 Division, created in 2000, the adoption of the LIBERTÉ 55 mark in 1984, followed by the adoption of a series of LIBERTÉ marks, used and advertised across Canada, targeting the Francophone market. These marks, listed in a table found in paragraph 13 of the affidavit, correspond to those identified in Ms. Grégoire’s affidavit. Ms. Haynes specifies that the use of “LIBERTÉ Marks” throughout her affidavit is a collective reference to the marks identified in the table and to the LIBERTÉ FINANCIÈRE 55 trade-name.

[30] According to Ms. Haynes’ statements, on the date of her affidavit, there were approximately 444 financial security advisors in Quebec and 39 managers within the LIBERTÉ FINANCIÈRE 55 Division; all the advisors benefited from the advice of approximately 37 marketing specialists in Quebec.

[31] Apart from the statements in view of supporting Ms. Grégoire’s testimony concerning the advertising of the Opponent’s goods and services in association with the LIBERTÉ Marks, Ms. Haynes provides information concerning the scope of the advertising of the LIBERTÉ Marks in Quebec. In particular, Ms. Haynes affirms in paragraphs 24 and 25 of her affidavit:

24. Between 1994 and 2010, London Life has spent over $6.48 million on advertising the LIBERTÉ Marks in Quebec alone (including to French-speaking audiences in the capital region of Ottawa/Gatineau), which has resulted in millions of Canadians seeing, or hearing of, London Life’s LIBERTÉ Marks. It is also estimated that London Life’s advertising of its LIBERTÉ Marks has achieved more than 510 million impressions in this period.

25. Attached to this my affidavit and marked as Exhibit “A” is a chart summarizing my company’s annual television advertising expenditures in the Quebec market for 1994 to 2010, together with annual estimated impressions and other particulars, including ratings, sample stations and programs during which the advertisements were aired.

[32] Based on statistics from the Opponent’s Google Analytics account, Ms. Haynes also provides data concerning access to the www.financiereliberte55.com and www.londonlife.com websites by Internet users from Canada. She affirms that the www.financiereliberte55.com website was visited more than 1.2 million times between May 1, 2009 and February 8, 2015 and that the www.londonlife.com website was visited more than 1.3 million times between December 31, 2012 and February 10, 2015; the French version of this website was visited more than 153,000 times during the same period.

[33] Ms. Haynes’ affidavit also contains statements relating to the development and examination of the effectiveness of the Opponent’s advertising campaigns. It is sufficient to state that, according to Ms. Haynes’ testimony, the Opponent relies on audience measurements and media information services from other organizations to ensure that its advertising campaigns allow its target audience to be reached effectively.

[34] Ms. Haynes concludes her affidavit by providing annual financial data to prove the growth of the Opponent’s business between the years 1980 and 2014, including data concerning the total premiums paid by Canadian insurance policyholders. Between 1980 and 2014, the total of these premiums increased from $295 million to over $2 billion. According to Ms. Haynes’ explanations, the insurance premium from Quebec represented approximately 19% of the total premiums paid between the years 2005 and 2012, and approximately 18% for the years 2013 and 2014.

[35] Still according to the data provided by Ms. Haynes, between 1994 and 2013, the total assets under management by the Opponent (excluding mutual funds and mortgages) increased from over $15 billion to over $87 billion.

Affidavit of Rachael Prichard Noye, sworn on February 13, 2015

[36] Ms. Prichard Noye introduces herself as “Assistant Vice-President, Wealth Management Product Marketing” with the Opponent.

[37] Employed by the Opponent since 1993, Ms. Prichard Noye lists the positions she held with the Opponent prior to her current position.

[38] Since Ms. Prichard Noye’s affidavit seeks to corroborate the affidavits sworn by Ms. Grégoire and Ms. Haynes, I do not believe it is necessary to discuss it at length. I limit myself to noting that Ms. Prichard Noye’s statements, in paragraph 5 of her affidavit, according to which she read the affidavits of Ms. Grégoire and Ms. Haynes and discussed their evidence with them, this evidence being in accordance with her experience concerning the marketing and advertising of the Opponent’s LIBERTÉ Marks, as defined in these affidavits.

Affidavit of Leslie McCallum, sworn on March 3, 2015

[39] Ms. McCallum introduces herself as President and Chief Executive Officer of “Bright Red Communications Inc.”, an advertising agency she founded in 2002.

[40] Ms. McCallum indicates that Ashley Dumouchel, a lawyer with the Opponent’s agents, asked her to swear an affidavit in these proceedings, to explain, in simple terms, some of the goals and results of the Opponent’s advertising campaigns concerning its LIBERTÉ mark.

[41] Ms. McCallum affirms that from 2003 to 2013, her agency worked with the Opponent and its division Financière Liberté on the developing and testing of advertising campaigns concerning the Quebec market, in collaboration with the Quebec advertising agency Saint-Jacques Vallée Y&R.

[42] Ms. McCallum’s affidavit seeks to support the testimony of Ms. Grégoire, Ms. Haynes and Ms. Prichard Noye concerning the effectiveness of the Opponent’s advertising campaigns. In addition to explaining the marketing and advertising concepts, Ms. McCallum explains the meaning of the terms used in the advertising business, including the term “impressions”. In paragraph 7 of her affidavit, she states:

“Impressions” are a measure of the total number of times an advertisement is seen. In the context of television advertising, one impression is counted each time one television set is use [sic] during the time an advertisement is aired. This may result in impressions being much higher than the number of individuals in a defined population, as many individuals may have seen the advertising more than once.

[43] Ms. McCallum concludes her affidavit by affirming that the television advertising for the Opponent’s LIBERTÉ brand (“London Life’s LIBERTÉ brand”) was aired constantly on programs widely broadcast in Quebec, including the RDI news and the NHL finals.

Affidavit of Réal Veilleux, sworn on February 11, 2015

[44] Mr. Veilleux introduces himself as a financial security advisor with the Opponent’s Division Financière Liberté 55 (Freedom 55 Financial Division). He has held his position as a financial advisor with the Opponent for 30 years.

[45] Mr. Veilleux mentions various organizations of which he is a member, certifications he holds in the insurance and financial planning industry, and positions held and committees of which he has been a member over the years.

[46] Mr. Veilleux affirms he is [TRANSLATION] “familiar with the introduction of the LIBERTÉ 55 mark” by the Opponent “because of the enormous television campaign conducted in Quebec in 1984 and in the following years”. Mr. Veilleux affirms this campaign “was an immense success and a phenomenon in the insurance and financial planning field”. He affirms he does not know any person other than the Opponent “who used the word LIBERTÉ in a trade-mark to identify or promote services related to the insurance and financial planning field in Quebec or elsewhere in the country”.

Affidavit of Eric Devenny, sworn on February 9, 2015, and its Exhibits A to C

[47] Mr. Devenny, a trade-mark agent employed by the Opponent’s agents, explains that he ran a search in the Register of Trademarks to identify all the active trademarks containing the word “LIBERTÉ” in the Opponent’s name.

[48] Mr. Devenny affirms his search identified 18 trade-marks. He files under Exhibit C of his affidavit the pages of the Register for each of these trade-marks.

Affidavit of Joan E. Brehl Steele, sworn on February 10, 2015, and its Exhibits A to E

[49] Ms. Brehl Steele is Vice-President/General Manager for Canada of the Alliance for Audited Media (formerly Audit Bureau of Circulations, also known as ABC).

[50] Ms. Brehl Steele presents in evidence, with supporting exhibits, the audited circulation figures of the magazines L’Actualité (186,547), Châtelaine (French-language edition, 186,920) and Coup De Pouce (204,039) for the year 2002.

[51] Ms. Brehl Steele also presents in evidence, with supporting exhibits, the audited circulation figures of the La Presse newspaper for a 12-month period ending March 31, 2000 (178,642 Monday to Friday, 276,379 Saturday; 186,978 Sunday) and March 31, 2001 (188,641 Monday to Friday; 279,980 Saturday; 196,329 Sunday).

Affidavit #1 of Kirsten Smith, sworn on February 12, 2015, and its Exhibits A to G

[52] Ms. Smith, professional researcher and sole proprietor of her research company, presents in evidence web pages she accessed in accordance with the instructions of Ashley Dumouchel.

[53] According to Ms. Smith’s assertions, in accessing the www.createurdeliberté.ca website, she was redirected to the www.groupeleblanc.com website, regarding which she files all the available pages under Exhibit A of her affidavit. I note that the Applicant’s name appears on the first page.

[54] Ms. Smith accessed the website of the Canadian Internet Registration Authority, at www.cira.ca, to obtain the WHOIS information for “createurdeliberte.ca”. According to the excerpt from the website filed under Exhibit C of her affidavit, this domain name was registered on November 20, 2011 by Gestion Leblanc & Compagnie Inc.

[55] Ms. Smith also accessed the who.godaddy.com website to obtain the WHOIS information for “groupeleblanc.com”. According to the excerpt from the website filed under Exhibit E of her affidavit, this domain name was registered on April 19, 2004.

[56] Finally, Ms. Smith searched for the names “Groupe Leblanc Syndic Inc.” and “Gestion Leblanc & Compagnie Inc.” on the website of the Québec Enterprise Registrar, at www.registreentreprises.gouv.qc.ca. According to the relevant pages of the website, filed under Exhibits F and G of her affidavit, Groupe Leblanc Syndic Inc. was constituted on June 1, 2004 and Gestion Leblanc & Compagnie Inc. was constituted on September 1, 2006.

Affidavit #2 of Kirsten Smith, sworn on February 12, 2015, and its Exhibits A to C

[57] Ms. Smith presents in evidence the results of a search she ran on the website of the La Presse newspaper, at www.lapresse.ca.

[58] Ms. Smith accessed the website’s archives to find all the articles published between January 1, 1990 and January 1, 2015, containing the words “LIBERTÉ” and “London Life”. Under Exhibit C of her affidavit, she files a copy of all the articles found by her search.

Affidavit of Nancy Gallinger, sworn on February 17, 2015, and its Exhibits A and B

[59] Ms. Gallinger, an administrative assistant in the employ of the Opponent’s agents, presents in evidence pages from the www.cairp.ca www.fpsc.ca websites, which she accessed in accordance with Ashley Dumouchel’s instructions.

[60] According to the pages filed under Exhibit A of the affidavit, the www.cairp.ca website contains information on Chartered Insolvency and Reorganization Professionals. According to the pages filed under Exhibit B, the www.fpsc.ca website contains information on financial planning and Certified Financial Planners.

Preliminary observations

[61] The Applicant made various representations relating to the inadmissibility of elements of the Opponent’s evidence due to hearsay. In summary, the Applicant submits that Ms. Grégoire admits in paragraphs 4 and 5 of her affidavit that she does not have personal knowledge of some of the facts reported in her affidavit and that she confirmed certain facts with third parties. The Applicant also submits that, according to Ms. Gallinger’s affidavit, she only printed pages from the www.cairp.ca and www.fpsc.ca websites, which she accessed; she has no personal knowledge of the facts reported on these sites or the validity of the information.

[62] During the hearing, the Opponent argued that in matters of opposition, the Register is the master of his own proceedings and is not bound to comply with the hearsay rule (citing London Life Insurance v Liberty Mutual Insurance Co, 2013 TMOB 217, 117 CPR (4th) 437, paragr. 19‑20). The Opponent also pointed out that the Applicant chose not to cross-examine Ms. Grégoire, and consequently the reliability of her testimony was not called into question.

[63] I will note immediately that the web pages attached to Ms. Gallinger’s affidavit cannot be admitted as evidence of the veracity of their contents. At most, they prove their existence on the date when Ms. Gallinger accessed the websites.

[64] With respect for the Applicant, for the following reasons, I find its position regarding the inadmissibility of elements placed in evidence by Ms. Grégoire due to hearsay not only disregards all the statements found in paragraphs 4 and 5 of Ms. Grégoire’s affidavit, but all the evidence filed by the Opponent.

[65] Indeed, Ms. Grégoire states in paragraph 4 of her affidavit: “Where matters stated within my affidavit are not within my personal knowledge […] I have reviewed the records of my company to confirm the accuracy of the facts.” Ms. Grégoire states in paragraph 3 of her affidavit: “In connection with my employment, I have access to London Life’s Quebec Communications files and records maintained in the ordinary course of business…”

[66] Moreover, Ms. Grégoire states in paragraph 5 of her affidavit: “Additionally, or in the alternative, where matters stated within my affidavit are not within my personal knowledge, I have confirmed the accuracy of the facts with individuals named in my affidavit…” In the case at bar, Ms. Grégoire’s statements concerning the evaluation of the Opponent’s marketing and advertising activities and based on her discussions with Ms. Haynes are corroborated by the latter [Grégoire Affidavit, paragr 47-48, Haynes Affidavit, paragr. 29-30].

[67] Thus, the statements of Ms. Grégoire and Ms. Haynes concerning the evaluation of the Opponent’s marketing and advertising activities are not only corroborated by Ms. Prichard Noye’s affidavit, but are also supported by Ms. McCallum’s affidavit [Noye Affidavit, paragr. 5, McCallum Affidavit, paragr. 5]. Moreover, the Applicant acknowledges in its written argument that Ms. McCallum explains certain terms used in advertising and that the Opponent ran searches on the measurements related to advertising campaigns and television advertising.

[68] I continue my preliminary observations by briefly discussing the representations found in paragraph 61 of the Applicant’s written argument reproduced below:

61. [TRANSLATION] The Opponent’s “LIBERTÉ 55” marks seems to have been used since 1984, and its use seems to have diminished [sic] to then be favoured [sic] by the “FINANCIÈRE LIBERTÉ 55” mark from 2000 to 2013, when it was abandoned voluntarily during an opposition that had been filed in 2005. It was then filed again in 2014 and is currently the object of an opposition.

[69] With respect, these representations by the Applicant are somewhat confused. I note that the Opponent’s evidence shows that, on June 25, 2014, it filed application for registration No. 1,682,738 for the FINANCIÈRE LIBERTÉ 55 trade-mark [Devenny Affidavit, Exhibit C]. I thereby conclude that the Applicant’s reference to the trade-mark “abandoned voluntarily” is intended as a reference to the FINANCIÈRE LIBERTÉ 55 trade-mark. There is no evidence that a previous application for registration was abandoned voluntarily “during an opposition”, and that application No. 1,682,738 “is currently the object of an opposition”. Whatever the case may be, the Opponent’s right to registration of the FINANCIÈRE LIBERTÉ 55 trade-mark is not in question in these proceedings.

[70] I will return later in my decision to the evidence presented by the Opponent to prove the use of its LIBERTÉ FINANCIÈRE 55 mark. For the time being, I will point out that I consider that any evidence of use of the FINANCIÈRE LIBERTÉ 55 & Design mixed trade-mark, illustrated below, in association with the Opponent’s services, within the meaning of section 4(2) of the Act, may also be valid as evidence of use of the FINANCIÈRE LIBERTÉ 55 word mark.

FINANCIÈRE LIBERTÉ 55 & DESIGN

[71] This having been said, I add that any evidence of use of FINANCIÈRE LIBERTÉ 55 as a trade-mark does not necessarily constitute evidence of use as a trade-name. The question of whether there can be simultaneous use of a trade-mark and a trade-name depends on the circumstances [see Road Runner Trailer Mfg Ltd v Road Runner Trailer Co Ltd (1984), 1 CPR (3d) 443 (FCTD)].

[72] To conclude my preliminary observations, I note that the decisions cited by the parties to substantiate their respective positions on the question of the likelihood of confusion between their trade-marks are relevant to the extent they involve opposition proceedings and raise principles that govern the test for confusion. However, it is a well-known principle of law that each case must be decided according to its specific circumstances.

Analysis

[73] I note that the following analysis does not consider the order in which the grounds of opposition were argued.

Application for registration non-compliant with section 30(i) of the Act

[74] For the following reasons, I reject the ground of opposition alleging the application for registration is non-compliant with the requirements of section 30(i) of the Act.

[75] Section 30(i) of the Act simply requires that an applicant provide a statement proving that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the goods or services described in his application. The Applicant complied strictly with the requirements of this provision.

[76] I will add that the mere knowledge of the existence of an opponent’s trade-mark does not, in itself, substantiate an allegation that the applicant could not be satisfied it was entitled to use a mark [Woot, Inc v WootRestaurants Inc/Les Restaurants Woot Inc 2012 TMOB 197]. It is established by the jurisprudence that a ground of opposition based on non-compliance with section 30(i) of the Act should be accepted only in precise cases, in particular, when the applicant’s manifest bad faith is established. This is not the case here. Moreover, the Opponent made no representation in support of this ground.

Non-registrability of the Mark

[77] The ground of opposition alleges that the Mark is not registrable according to section 12(1)(d) of the Act due to six registrations of the Opponent for trade-marks containing the word LIBERTÉ [see Appendix A hereof].

[78] I have exercised the Registrar’s discretionary power to confirm that each of registrations alleged by the Opponent is in good standing.

[79] Since the Opponent has discharged its evidential burden regarding this ground of opposition, it is appropriate to determine whether the Applicant has discharged its legal onus to prove, according to the balance of probabilities, that there is no confusion between the Mark and any of the Opponent’s registered trade-marks.

[80] The test for confusion is that of first impression and imperfect recollection. According to subsection 6(2) of the Act, 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.

[81] In deciding whether these trade-marks cause confusion, the registrar must take into account all circumstances in the case, specifically those listed in subsection 6(5) of the Act, i.e. a) the inherent distinctiveness of the trade-marks 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 goods, services or business; d) the nature of the trade; e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. This list is not exhaustive and different weight will be given to each of these factors in a context-specific assessment. [See Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, 49 CPR (4th) 321; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al, 2006 SCC 23, 49 CPR (4th) 401; and Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 for an advanced examination of the general principles governing the test for confusion.]

[82] I will begin my analysis of the ground of opposition by comparing the Mark with the Opponent’s LIBERTÉ 55 trade-mark (No. TMA308,603), registered in association with life insurance, financial planning and investment services, and with investment savings plan services.

[83] In the Masterpiece case, supra, the Supreme Court of Canada reminds us that the degree of resemblance between trade-marks in the presentation or sound, or in the ideas they suggest, is often the factor that can be the most important in the analysis regarding confusion; the Court decided to begin its analysis by examining this factor. Consequently, I begin with the examination of the degree of resemblance between the Mark and the LIBERTÉ 55 Mark.

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

[84] It is clearly established in case law that in the assessment of confusion, it is not appropriate to dissect trade-marks into their component parts. Trade-marks instead must be examined as a whole.

[85] Also, while it is true that in certain cases the first word will be the most important element in establishing the distinctiveness of a trade-mark, the Supreme Court, examining the degree of resemblance, writes at paragraph 64 of the Masterpiece case that a preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique.

[86] The Applicant submits it is obvious that the marks in question do not resemble each other. The Applicant bases its argument on the fact that the first word of the Opponent’s mark is “liberté”, while the first word of the Mark is “créateur”. Also relying on the fact that “liberté” is a common word in the French language, the Applicant submits that the number 55 is the most important element of the Opponent’s mark for the purposes of distinction.

[87] Regarding the ideas suggested, the Applicant submits that the LIBERTÉ 55 mark in the context of financial services suggests the idea of retirement at age 55. Regarding the Mark, the Applicant submits that it must be considered in the context of services related to insolvency. The Applicant thereby submits that the Mark refers to the discharge of a bankrupt in relation to his creditors and to the use of the terms “créateur de liberté” in Canada’s Bankruptcy and Insolvency Act.

[88] During the hearing, the Opponent rightly noted the absence of evidence substantiating the Applicant’s argument that the services associated with the Mark are related to insolvency within the meaning of the Bankruptcy and Insolvency Act. The Opponent also reiterated its written representations that there is a great degree of visual and phonetic resemblance between the parties’ marks, and an even greater degree of resemblance in the ideas they suggest.

[89] According to my understanding of its oral and written representations, the Opponent bases its argument on the existence of its alleged family of marks containing the word LIBERTÉ to substantiate its position. In other words, the Opponent’s representations do not pertain specifically to the assessment of degree of resemblance between the Mark and its LIBERTÉ 55 mark. Although the existence of a family of marks is a circumstance that may influence the analysis conducted under section 6(5) of the Act, the existence of a family of marks must be considered as a circumstance additional to the factors specifically set out in section 6(5) of the Act. Consequently, I will discuss the question of the family of marks alleged by the Opponent as an additional circumstance later in my decision.

[90] It is generally recognized that numerals are not highly distinctive in trade-mark matters. Numerals are intrinsically weak [see, for example Noxzema Chemical Co of Canada Ltd v Estee Lauder Cosmetics Ltd (1975), 23 CPR (2d) 214 (TMOB)]. Consequently, I conclude that the first element of the LIBERTÉ 55 mark, i.e. “liberté”, is the most important for the purposes of distinction. Concerning the Mark, I find that none of its elements is particularly striking or unique. Consequently, I conclude that the first word of the Mark, i.e. “créateur”, is the most important for the purposes of distinction.

[91] Thus, visually and phonetically, the Applicant’s position relating to differences between the trade-marks is not devoid of merit. Nonetheless, considering the trade-marks as a whole, I am not convinced these differences are as significant as the Applicant argues. Indeed, due to the positioning of the preposition “de”, I find that the word “créateur” is linked to the word “liberté”. In simple terms, when the Mark is considered as a whole, the word “créateur” pertains directly to the word “liberté”, which is the most important element of the Opponent’s mark for the purposes of distinction.

[92] I find that the Opponent’s LIBERTÉ 55 mark, in the context of the services associated with it, suggests the idea of achieving financial freedom at age 55. As for the Mark, on a simple reading of the statement of services of the application, and since I do not have any evidence, I am unable to conclude the services are related to questions of insolvency within the meaning of Canada’s Bankruptcy and Insolvency Act. Consequently, I cannot subscribe to the Applicant’s claim that the Mark refers to the discharge of a bankrupt in relation to his creditors. Moreover, although I recognize that the Mark does not suggest the idea of financial freedom at precisely age 55, I find the Mark nonetheless suggests the idea of financial freedom.

[93] In the final analysis, considering the parties’ marks as a whole, I find it cannot be said that the overall assessment of the factor stated in section 6(5)(e) of the Act significantly favours one party or the other.

The inherent distinctiveness of the trade-marks and the extent to which they have become known

[94] This factor, stated in paragraph 6(5)(a) of the Act, is a combination of the inherent distinctiveness of the trade-marks and the distinctiveness acquired by them due to their use or promotion in Canada.

[95] I note immediately that the Opponent made no representation on the question of the inherent distinctiveness of the trade-marks in question. Instead, it focused its representations on arguing that its evidence proves that its trade-marks composed of the word LIBERTÉ have acquired significant distinctiveness due to the extent of their use and promotion in Canada.

[96] I reproduce below paragraphs 54 and 57 of the Applicant’s written argument, which essentially summarize its written and oral representations on the question of the inherent distinctiveness of the Mark and the LIBERTÉ 55 mark:

54. [TRANSLATION] The marks in question are both derived from the word “liberté” and, in the context where the services involved in one case are related to financial security and the other to insolvency services, the marks a priori have a strong inherent distinctiveness. In other words, one works to avoid the services of the other.

[…]

57 The marks both have strong inherent characters but, above all, present very different meanings.

[97] At this time, I find it sufficient to remind the parties of my opinion that, in the context of the services associated with them, the Opponent’s LIBERTÉ 55 mark suggests the idea of achieving financial freedom at age 55, while the Mark suggests the idea of financial freedom. I thereby find that the marks of both parties have similar inherent distinctiveness.

[98] There is no evidence in the case at bar to conclude that the Mark has acquired distinctiveness due to its promotion or its use in Canada since the date claimed in the application for registration.

[99] By comparison, I find that the evidence presented by the Opponent substantiates the assertions of Ms.Grégoire and Ms. Haynes regarding the adoption of the LIBERTÉ 55 mark in 1984, and its use and promotion in Canada, primarily in Quebec, in association with the Opponent’s services.

[100] In this regard, I note references to the LIBERTÉ 55 mark in television advertising aired previous to the year 2011, some of which probably date back to the 1980s [Grégoire Affidavit, Exhibit A]. Moreover, the LIBERTÉ 55 trade-mark appears in examples of promotional documents covering the years 1987 to 2006 [Grégoire Affidavit, Exhibit J1]. It is also present in the screenshots obtained from the Wayback Machine Internet archives database for the www.londonlife.com website on February 12 and 13, 1998 [Grégoire Affidavit, Exhibit E]. I note that it has been ruled that web pages obtained from the Wayback Machine Internet archives database give a generally reliable representation of the websites, such as they existed in the past [see Candrug Health Solutions Inc v Thorkelson, 2007 FC 411, 60 CPR (4th) 35, overturned on other grounds in 2008 FCA 100, 64 CPR (4th) 431]. The LIBERTÉ 55 trade-mark is also presented on a business card [Grégoire Affidavit, Exhibit I].

[101] I agree with the Applicant that the Opponent did not break down its annual television advertising expenses for the Quebec market by trade-mark [Haynes Affidavit, paragr. 24-25, Exhibit A]. This is also true for the annual financial data with a view to proving the Opponent’s business growth, including the percentage of the total insurance premiums paid coming from Quebec [Haynes Affidavit, paragr. 33 -38]. However, I find the absence of this breakdown does not hurt the Opponent’s case for the assessment of the distinctiveness acquired by the LIBERTÉ 55 mark.

[102] Indeed, I find I can reasonably conclude from all the evidence presented by the Opponent that its LIBERTÉ 55 mark is widely known in the Province of Quebec, while there is no evidence of use or promotion of the Mark in Canada.

[103] In view of the foregoing, I conclude that the overall assessment of the factor set out in paragraph 6(5)(a) of the Act favours the Opponent.

The period during which the trade-marks have been in use

[104] The Applicant did not file evidence proving the use of the Mark in Canada since the date claimed in the application for registration dated May 1, 2011.

[105] According to the claims of registration No. TMA308,603, the LIBERTÉ 55 mark was registered in association with investment savings plan services on the basis of its use in Canada since December 1984; it was registered in association with life insurance, financial planning and investment services following the filing of a statement of use on July 27, 1985. As discussed above, the use of the LIBERTÉ 55 mark since 1984 is substantiated by the Opponent’s evidence, which ultimately was recognized by the Applicant in its written argument [paragr. 61 of the written argument].

[106] All in all, I conclude that the assessment of the factor set out in section 6(5)(b) of the Act favours the Opponent in the case at bar.

The type of services and the nature of the trade

[107] In the context of the ground of opposition based on paragraph 12(1)(d) of the Act, I must assess these factors, set out in paragraphs 6(5)(c) and (d) of the Act, by comparing the statement of services of the application under opposition with the statement of services of registration No. TMA308,603 [see Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); and Mr Submarine Ltd v. Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)].

[108] I remind the parties that the Applicant is seeking registration of the Mark in association with the following services:

[TRANSLATION] Financial evaluation allowing the taking of concrete actions to create the desired freedoms, namely the financial position evaluation system, which accounts for past events of the current position, using an in-depth analysis of the available options and the motivations of the legal person or the business.

[109] I also remind the parties that the statement of services of registration No. TMA308,603 for the LIBERTÉ 55 mark reads: “(1) Life insurance, financial planning and investment services. (2) Investment savings plans.”

[110] As indicated previously, the Applicant argues that its services are related to insolvency, and thereby are distinguished from the services associated with the LIBERTÉ 55 mark. The following excerpt from the Applicant’s written argument summarizes its position:

66. [TRANSLATION] It is clear in the public’s mind that insurance and financial services are distinct from services related to insolvency. The average consumer cannot believe that a company offering insurance and financial planning services can also act as a bankruptcy trustee and vice versa, since his expectations regarding the services offered by either company are intrinsically divergent.

[111] Once again, I note that I have no evidence from the Applicant to support its arguments regarding the existence of differences between the type of services and the nature of the trade associated with the parties’ marks.

[112] For its part, the Opponent submits there is a major overlap between the services and the nature of the trade associated with the parties’ marks. In this regard, the Opponent submits that the parties’ services are similar, if not identical, and all belong to the class of financial services. The Opponent also submits that the parties’ services concern financial planning and generally involve a client who deals with a planner or an advisor, who provides the client with financial advice and solutions.

[113] In the final analysis, to the extent that the Mark and the LIBERTÉ 55 mark are both associated with financial services, I conclude there is an overlap between the type of services of the parties. Consequently, for the purposes of assessment of confusion and in the absence of evidence from the Applicant to convince me to the contrary, I also conclude there is an overlap between the nature of the trade of the parties.

[114] In view of the foregoing, I conclude that the overall assessment of the factors set out in paragraph 6(5)(c) and (d) of the Act favours the Opponent.

Additional circumstance - LIBERTÉ family of trade-marks

[115] The Opponent submits that it holds a family of trade-marks containing the word LIBERTÉ. The Opponent thereby claims that the average consumer will react to the Mark in wrongly believing that the Applicant’s Services were approved by, or otherwise associated with the Opponent. In other words, the Mark would be interpreted, at first sight, as another member of the Opponent’s LIBERTÉ family of marks.

[116] In opposition proceedings, the existence of a family of trade-marks cannot simply be presumed. The party seeking to establish the existence of a family of marks must prove that the marks comprising it are used on the market [see McDonald’s Corp v Yogi Yogurt (1982), 66 CPR (3d) 101 (FCTD].

[117] In the case at bar, I agreed with the Opponent that it has established the existence of a LIBERTÉ family of marks.

[118] Indeed, the evidence presented by Ms. Grégoire is full of examples of use of the FINANCIÈRE LIBERTÉ 55 mark in Canada, which the Applicant ultimately recognized during the hearing. Moreover, although the Opponent did not establish the use of each of the trade-marks identified in the statement of opposition [see Appendices A and B hereof], the Opponent proved the use of a good number of these marks. In this regard, the following table indicates where there are examples of use of the marks in question in the Opponent’s evidence:

Trade-mark	Example of use in the evidence
EN LIBERTÉ	Grégoire Affidavit: Exhibit J1, p. 285-286.
FONDS LIBERTÉ	Grégoire Affidavit: Exhibit J1, p. 304, 306, 384, 385, 429, 434-439, 452-455, 458, 459, 504, 518, 531, 586, 587; Exhibit J2, p. 636, 691, 692, 705-707; Exhibit J3, p. 793, 844; Exhibit J4, p. 850-853; Exhibit J5, p. 905, 906, 920, 921; Exhibit J6, p.970, 971; Exhibit J7, p. 1008, 1009; Exhibit J8, p. 1015, 1016; Exhibit J9, p. 1021, 1022.
INSPIRER LA LIBERTÉ	Grégoire Affidavit: Exhibit D, p. 36.
LA LIBERTÉ COMMENCE AUJOURD’HUI	Grégoire Affidavit: Exhibit A (“theatre” disk); Exhibit E, p. 104; Exhibit J1, p. 303, 306-308, 429, 430, 432, 434, 436-440, 452, 454-458, 460, 468; Exhibit J4, p. 849.
LA LIBERTÉ DE MISER SUR VOTRE VIE	Grégoire Affidavit: Exhibit D, p. 40.
LA VRAIE LIBERTÉ EST LA LIBERTÉ FINANCIÈRE	Grégoire Affidavit: Exhibit D, p. 42.
LIBERTÉ PREMIÈRE	Grégoire Affidavit: Exhibit J1, p. 287-288.
LA LIBERTÉ DE PLANIFIER VOTRE LIBERTÉ	Grégoire Affidavit: Exhibit D, p. 57.
LA LIBERTÉ DE CHOISIR. LE POUVOIR DE RÉALISER	Grégoire Affidavit: Exhibit D, p. 42; Exhibit J1, p. 311, 313, 358, 360, 369, 371, 373, 381-383.
LIBERTÉ ET POUVOIR	Grégoire Affidavit: Exhibit J1, p. 311, 313.

[119] Consequently, I agree with the Opponent that its family of trade-marks containing the word LIBERTÉ is an additional circumstance that is definitely favourable to it in the case at bar.

Conclusion on the likelihood of confusion

[120] As I indicated above, and as I reminded the Applicant during the hearing, section 6(2) of the Act does not pertain to confusion between the trade-marks themselves, but to the likelihood that goods or services coming from one source are perceived as coming from another source. In the case at bar, the question asked is whether an individual with an imperfect recollection of the Opponent’s LIBERTÉ 55 mark could conclude, on the basis of a first impression, that the services associated with the Mark come from the same source or are otherwise related to or associated with the Opponent’s services.

[121] Further to my analysis of the factors set out in subsection 6(5) of the Act and their materiality, it is my opinion that the Applicant has not discharged its ultimate onus of establishing, according to the balance of probabilities, that there is no confusion between the Mark and the Opponent’s LIBERTÉ 55 mark.

[122] Indeed, I conclude that each of the factors set out in section 6(5)(a) to (d) of the Act favours the Opponent. Moreover, although the overall assessment of the factor set out in section 6(5)(e) of the Act does not significantly favour the Opponent, I find that its family of trade-marks containing the word LIBERTÉ is a sufficiently significant additional circumstance to tip the balance of probabilities definitively in favour of the Opponent.

[123] In view of my conclusion, I find it is unnecessary for me to rule on the likelihood of confusion between the Mark and each of the other registered trade-marks alleged by the Opponent in support of the ground of opposition based on section 12(1)(d) of the Act.

[124] Due to the foregoing, the ground of opposition based on paragraph 12(1)(d) of the Act is granted, to the extent it is based on registration No. TMA308,603 for the LIBERTÉ 55 trade-mark.

The Applicant is not the person entitled to registration of the Mark

[125] The grounds of opposition alleging that the Applicant is not the person entitled to registration of the Mark are based on section 16(1)(a) to (c) of the Act.

[126] I begin with the analysis of the ground of opposition alleging that the Applicant is not the person entitled to registration of the Mark, according to section 16(1)(a) of the Act, due to the confusion it creates with one or more of the trade-marks identified in the statement of opposition, which the Opponent alleges it previously used or made known in Canada in association with the services associated therewith [see Appendices A and B hereof].

[127] As for the ground of opposition based on paragraph 12(1)(d) of the Act, I will focus my analysis on the ground of opposition raised under section 16(1)(a) by comparing the Mark with the Opponent’s LIBERTÉ 55 mark.

[128] Following my review of the Opponent’s evidence, I find it discharged its onus of proving that it had used the LIBERTÉ 55 trade-mark in Canada prior to May 1, 2011 in association with financial planning, insurance and investment services, and that the LIBERTÉ 55 mark had not been abandoned at the date of announcement of the application, namely October 16, 2013 [see section 16(5) of the Act]. In this regard, I note that the fact the use of the LIBERTÉ 55 mark diminished over the years in favour of use of the FINANCIERE LIBERTÉ 55 mark is not sufficient in itself to conclude that the Opponent had abandoned the LIBERTÉ 55 mark as of October 16, 2013. [See Isawaki Electric Co Ltd v Hortilux BV, 2012 FCA 321 at paragr. 21 for a discussion of section 16(5) of the Act.]

[129] Since the difference in the relevant date has essentially no impact on my previous assessment of the factors set out in subsection 6(5) of the Act, I conclude that the Applicant has not discharged its ultimate onus of establishing, according to the balance of probabilities, that there was no risk of confusion between the Mark and the Opponent’s LIBERTÉ 55 mark as of May 1, 2011.

[130] As previously indicated, if the ground of opposition contesting the date of first use of the Mark were accepted, the question of whether the Applicant is the person entitled to registration of the Mark should be considered at the filing date of the application for registration, namely July 10, 2012. However, I find that considering the ground of opposition raised under section 16(1)(a) of the Act at the filing date of the application, instead of at the alleged data of first use, has no impact on the assessment of the risk of confusion between the Mark and the LIBERTÉ 55 mark in the case at bar.

[131] Consequently, the ground of opposition based on section 16(1)(a) of the Act is accepted, to the extent it is based on the likelihood of confusion between the Mark and the Opponent’s LIBERTÉ 55 mark.

[132] Since I have decided in favour of the Opponent on the ground of opposition based on section 16(1)(a) of the Act, I will not rule on the grounds of opposition based on sections 16(1)(b) and 16(1)(c) of the Act.

Non-distinctive mark / Application for registration non-compliant with section 30(b) of the Act

[133] Since I have decided in favour of the Opponent on the grounds of opposition based on sections 12(1)(d) and 16(1)(a) of the Act, I find it unnecessary to proceed with the analysis of the ground of opposition based on section 2 of the Act (Non-distinctive mark), or the ground of opposition based on section 30(b) of the Act (no use of the Mark in Canada since May 1, 2011).

Decision

[134] In exercising the authority delegated to me pursuant to section 63(3) of the Act, I refuse the application for registration No. 1,585,504 in application of section 38(8) of the Act.

Céline Tremblay

Acting Chair

Trade-marks Opposition Board

Canadian Intellectual Property Office

Certified translation

Arnold Bennett