Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2023 TMOB 140

Date of Decision: 2023-08-08

IN THE MATTER OF AN OPPOSITION

Opponent: T. Rowe Price Group, Inc.

Applicant: Glidepath Technologies Inc.

Application: 1,906,787 for LIVE WITH CONFIDENCE

Overview

[1] Glidepath Technologies Inc. (the Applicant) has filed application No. 1,906,787 to register the trademark LIVE WITH CONFIDENCE (the Trademark) in association with the following services in Nice class 36 (the Services):

Management of portfolios comprising securities; Investment portfolio services, namely financial planning and investment advisory services, financial portfolio management, financial investment counselling, financial investment analysis and stock research, financial investments in the field of mutual funds, financial investments in the field of securities; Operation of a website in the field of financial management and financial planning.

[2] T. Rowe Price Group, Inc. (the Opponent) has opposed the application.

[3] For the reasons that follow, the opposition is rejected.

The record

[4] The application, based on proposed use in Canada, was filed on June 28, 2018 and advertised for opposition purposes in the Trademarks Journal of March 13, 2019. On August 13, 2019, the Opponent opposed the application by filing a statement of opposition pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act).

[5] The Act was amended on June 17, 2019. Pursuant to section 70 of the Act, the grounds of opposition in this proceeding will be assessed based on the Act as it read prior to that date.

[6] The Opponent raises grounds of opposition based on non-compliance with section 30(e), non-compliance with section 30(i), non-registrability under section 12(1)(d), non-entitlement to register under section 16(3)(a), and non-distinctiveness under section 2 of the Act.

[7] For the grounds of opposition that are based on an alleged likelihood of confusion, the Opponent relies on its RETIRE WITH CONFIDENCE trademark, INVEST WITH CONFIDENCE trademark, as well as its two T. ROWE PRICE INVEST WITH CONFIDENCE design marks, one with and one without the depiction of a bighorn sheep (collectively, the Opponent’s Marks). The Opponent’s Marks are registered in association with goods and services in the fields of financial investment planning, investment management and advisory services. The particulars of the registrations are set out in Schedule A.

[8] The Applicant filed a counter statement denying the grounds of opposition.

[9] Both parties filed evidence and written representations, and were represented at a hearing.

Onus and legal burden

[10] The legal onus is on the Applicant to show that the application complies with the provisions 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. Once this initial burden is met, the Applicant must satisfy the Registrar, on a balance of probabilities, that the grounds of opposition pleaded should not prevent the registration of the Trademark [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298, 1990 CanLII 11059; Dion Neckwear Ltd v Christian Dior, SA, 2002 FCA 29].

Evidence

[11] As its evidence-in-chief, the Opponent filed the affidavit of Ryan Bruchey, declared on February 7, 2020, together with Exhibits A to O (the Bruchey Affidavit).

[12] In support of its application, the Applicant filed the affidavit of Ronald Edward Fox, declared on June 2, 2020, together with Exhibits A to D (the Fox Affidavit).

[13] The Opponent also filed, as reply evidence, a second affidavit of Mr. Bruchey, affirmed on December 20, 2021, together with Exhibits A to D (the Bruchey Reply Affidavit).

[14] Both affiants were cross-examined on their affidavits. The transcripts of those cross-examinations and responses to undertakings form part of the record.

[15] I will review the evidence filed by the parties. I will only refer to the cross-examination of an affiant if it is relevant to the analysis of the evidence and the parties’ representations. I would add that, in my review of the evidence, I will disregard any assertions of an affiant equivalent to an opinion on questions of fact and law to be determined by the Registrar in the present proceeding.

Opponent’s evidence

[16] Mr. Bruchey is the Senior Manager with the Brand Management team of the Opponent; he has held this position since April 2019. Mr. Bruchey has served in a brand management capacity with the Opponent since March 2011 [paras 1 and 2].

[17] The Opponent is an asset management firm focused on delivering global investment management services. As of December 31, 2019, the Opponent managed more than $1,600 billion in assets. The Opponent also offers investment planning and guidance tools to both individual and institutional investors, together with a range of equity and fixed income strategies [paras 5 and 6].

[18] Although he refers to them as the “WITH CONFIDENCE T. Rowe Price Marks”, Mr. Bruchey refers to the Opponent’s Marks collectively, throughout his affidavit. For example, Mr. Bruchey states that the Opponent has “extensively used” the Opponent’s Marks since as early as 1997 [para 9].

[19] Mr. Bruchey also explains that the Opponent’s Marks appeared “prominently and extensively” on marketing materials, advertising, newsletters, articles, portfolio updated and other printed material published or displayed by the Opponent in Canada [para 13]. In support, Mr. Bruchey attaches copies of various printed materials, such as brochures, newsletters, and reports dated from 2012 to 2019 [Exhibits B to J]. The exhibited materials display the word mark INVEST WITH CONFIDENCE, as well as the two T. ROWE PRICE INVEST WITH CONFIDENCE design marks . In this respect, Mr. Bruchey confirmed on cross-examination that the RETIRE WITH CONFIDENCE trademark is nowhere displayed in the exhibited materials [transcript at page 55].

[20] With respect to “advertising, exposure and awards”, Mr. Bruchey asserts that the Opponent has used the Opponent’s Marks in Canada since as early as 2005 and has invested significant amounts of time, money and effort in advertising and promoting the Opponent’s Marks in Canada [para 17]. Mr. Bruchey explains that the Opponent advertises its services through various means, including participating in conferences, organizing roundtables, and placing advertisements on television, and in printed and online publications [paras 18 and 19]. Such advertising also includes the operation of the Opponent’s website at www.troweprice.com since at least as early as 1996. Mr. Bruchey attests that the website is accessible from Canada and is accessed by Canadians [paras 20 and 21].

[21] By way of example, Mr. Bruchey states that the advertising expenditures for print advertising in Canada amounted to $72,450 in 2011. According to him, the Opponent spent similar amounts on Canadian advertising and promotion since that time [para 24]. While the amount provided by Mr. Bruchey does not appear to be specific to any particular trademark, I note that the exhibited examples of print advertising display the INVEST WITH CONFIDENCE word mark and design mark depicting a bighorn sheep [Exhibit M].

Applicant’s evidence

[22] Mr. Fox is the President and a director of the Applicant and has held that position since as early as May 6, 2015 [para 1].

[23] The Applicant is a company based in Toronto, Ontario, whose core business is that of financial planning, portfolio management and providing related technology. The company was founded in 2015. According to Mr. Fox, the Applicant is “dedicated to serving and servicing the financial and investment industry, and in particular, financial planning advisors and their clients” [para 4].

[24] Mr. Fox asserts that the Applicant uses a number of “brands” to promote itself in Canada and has filed more than a dozen Canadian trademark applications, six of which having proceeded to registration, in association with services that are similar to or identical to the Trademark. He defines those trademarks, collectively, as “the Glidepath Trademarks” [para 5]. Mr. Fox specifically identifies two registrations (TMA1,037,683 for DELIVER CONFIDENCE WITH COMFORT AND CARE; and TMA1,037,696 for DELIVERING CONFIDENCE WITH COMFORT AND CARE) and provides the particulars of those registrations [Exhibit A]. According to Mr. Fox, the Applicant “used and continues to use the Glidepath Trademarks and/or variations thereof in Canada in association with its goods and services” [para 11].

[25] In response to an undertaking given during his cross-examination to provide the Applicant’s applications and registrations in the same class as the subject application, Mr. Fox also provided a list of additional trademarks, including certain trademarks which include the term “with confidence” along with their respective application or registration numbers [Reply to U-1, page 28 of the transcript].

[26] Regarding use of the Trademark specifically, Mr. Fox indicated on cross-examination that the Trademark was displayed on digital brochures located on websites “cobranded” with the Applicant’s partners for “well over a year”, as well as on the Applicant’s LinkedIn page. He also indicated that the Trademark was not shown on the Applicant’s website at www.myglidepath.com until that website was updated on the day of his cross-examination, namely May 20, 2021 [transcript at pages 65 to 73].

[27] In response to an undertaking given during his cross-examination to provide examples of use of the Trademark on digital brochures and brochure websites, Mr. Fox provided email brochures and newsletters displaying the Trademark. The earliest material relates to the third quarter of 2020. Also in response to that undertaking, Mr. Fox provided what appears to be a list of email campaigns led by the Applicant in the third and fourth quarters of 2020 [Reply to U-3, pages 73 to 75 of the transcript]. There seems to be no specific indication that the contacts were located in Canada.

[28] In his affidavit, Mr. Fox includes the results of his search of the Canadian Intellectual Property Office (CIPO) trademark database for trademarks applications and registrations including the term WITH CONFIDENCE in association with services in class 36, namely “Insurance and financial” services [para 12].

[29] Mr. Fox explains that he has “been in the financial industry since as early as 2003” and that he was “somewhat aware” of the Opponent’s presence in the United States. Mr. Fox adds that he was not aware of the Opponent’s products or services being available to investors in Canada, nor was he aware of the Opponent’s presence in the Canadian retail investment market, or in any of the Canadian retail investment marketing or distribution channels [para 30].

[30] Based on his information and belief, Mr. Fox states that “most if not all third-party Canadian competitors to both Opponent and Applicant currently use ‘with confidence’ in their promotional and marketing material”. He lists six such competitors, all Canadian financial institutions, and attaches webpage printouts displaying the terms WITH CONFIDENCE (or CONFIDENCE) as part of slogans such as “Confidence comes with a plan” or descriptions of apparently offered services such as “Bank with confidence” and “Learn how to invest and trade with confidence” [paras 15 and 16, Exhibit C].

[31] I also note that Mr. Fox asserts that, based on his information and belief, the Trademark “has never caused confusion” with any of the Opponent's trademarks [para 43].

Opponent’s evidence in reply

[32] Mr. Bruchey states that that he did not observe any reference to the Trademark on the website which he understands to be the Applicant’s website, namely www.myglidepath.com, aside from a trademark notice in the website footer indicating that a number of trademarks (including the Trademark) belong to the Applicant. According to his search on the Internet archive WayBack Machine, that notice was not displayed as of January 6, 2021 [para 4].

[33] Replying to Mr. Fox’s statements regarding the Opponent’s presence in Canada, Mr. Bruchey states that the Opponent has “several financial products or services directly available to investors in Canada”, including in association with the Opponent’s Marks. In particular, Mr. Bruchey attests that, since at least as early as 2016, the Opponent has had “significant relationships” with three of the four largest “employee-retirement plan administers” in Canada, which make the Opponent’s investment funds available in Canada [para 5]. In addition, while consumers are unable to sign up for the Opponent’s products or services on the Opponent’s website, consumers may do so through their financial institution, such as such as TD Bank and Investor’s Group Wealth Management [para 11].

[34] Mr. Bruchey also attests that the Opponent “advertises frequently” in industry publications such that financial services associated with the INVEST WITH CONFIDENCE and RETIRE WITH CONFIDENCE trademarks are “extremely visible” in the financial community in Canada, including in retail investment marketing and distribution channels [para 6].

[35] Mr. Bruchey provides the following documentary evidence purportedly showing the Opponent’s use of the INVEST WITH CONFIDENCE and RETIRE WITH CONFIDENCE trademarks in Canada:

• Brochures, business card proofs and other materials, including a copy of an email newsletter and screenshots of what appears to be the Opponent’s website [para 7, Exhibit A]. Mr. Bruchey refers to those materials as “representative brochures and documents” and states that such brochures and documents have been distributed in Canada since about 2007 to advertise or promote the “INVEST WITH CONFIDENCE and/or RETIRE WITH CONFIDENCE” trademarks.
• Slides from a presentation made to TD in Canada in 2004 by the Opponent to “promote the INVEST WITH CONFIDENCE trademarks” [para 8, Exhibit B]. Mr. Bruchey states that similar presentations have been given in Canada to advertise and promote the “INVEST WITH CONFIDENCE and/or RETIRE WITH CONFIDENCE” trademarks.
• Screenshots of the Opponent’s “Canadian partner websites” [para 9, Exhibit C]. I note screenshots from what appear to be the websites of Canada Life, TD Asset Management and Investor’s Group Wealth Management. Mr. Bruchey states that the websites display the “T. Rowe Price logo and/or the INVEST WITH CONFIDENCE and/or RETIRE WITH CONFIDENCE trademarks”.
• Slides from a presentation made to Sun Life in 2019 for a defined benefit plan that Mr. Bruchey describes as including the promotion of the INVEST WITH CONFIDENCE trademark [para 10, Exhibit D].

[36] The word mark INVEST WITH CONFIDENCE, and the two T. ROWE PRICE INVEST WITH CONFIDENCE design marks are displayed throughout the materials. The trademark RETIRE WITH CONFIDENCE appears to be displayed only in the footer of one Exhibit A webpage screenshot. According to Mr. Bruchey’s response to an undertaking given during his cross-examination, that screenshot was taken in September 2015 [Reply to U-17, pages 189 to 192 of the transcript].

Admissibility of evidence

[37] The Applicant argues that the evidence tendered by Mr. Bruchey should be “ignored or deemed inadmissible” because at least some, if not most, of Mr. Bruchey’s affidavits were prepared by the agent for the Opponent. According to the Applicant, Mr. Bruchey’s lack of familiarity with his affidavits was evident during cross-examination, as Mr. Bruchey was unable to recall facts, refused to answer questions and provided inconsistent statements. In response to my questions at the hearing in this regard, the Applicant could only identify one such instance, namely Mr. Bruchey’s statements on cross-examination regarding paragraphs 11 and 17 of the Bruchey Affidavit. I will return to this point.

[38] Based on my review of Mr. Bruchey’s cross-examination transcript, including the excerpts specifically identified by the Applicant at the hearing, I see no reason to exclude the Opponent’s evidence.

[39] First, there is no requirement that the text of an affidavit be written by the affiant personally; rather, an affiant must attest to the veracity of the affidavit’s contents. In the present case, Mr. Bruchey confirms at the beginning of his affidavits that he declares (or, in the case of the Bruchey Reply Affidavit, “affirms”) the contents of his affidavits and that he has personal knowledge of their contents, except where noted that statements are based on his information and belief. During cross-examination, Mr. Bruchey consistently stated under oath that the language of his affidavits is representative of his thoughts and perspectives. That the affidavits were prepared with the assistance of counsel has no impact on the credibility or reliability of Mr. Bruchey’s testimony.

[40] Second, I will address to the Applicant’s submission that paragraphs 11 and 17 of the Bruchey Affidavit are inconsistent because the former paragraph claims use of the Opponent’s Marks since at least as early as 1997, while the latter claims use since at least as early as 2005. The Applicant contends that Mr. Bruchey “admitted to errors in the drafting that required corrections” in this regard [Applicant’s written representations at para 49, citing the cross-examination of Mr. Bruchey at page 73].

[41] Although Mr. Bruchey acknowledged that the statements at paragraphs 11 and 17 could be more precise, I find that Mr. Bruchey clearly explained the distinction to be drawn between those paragraphs, namely that the Opponent has been using its trademarks “in the course of doing business” since 1997, but that the Opponent only started “actively promoting”, such as through mass communications, paid media, events, advertising, sponsorships, since 2005 [transcript at pages 66, 68, 76 to 79].

[42] Overall, I see no indication that Mr. Bruchey was unfamiliar with the facts set out in his affidavits or that he refused to answer relevant questions. Based on a reading of the cross-examination transcript, and considering his position as Senior Manager in the Opponent’s Brand Management team, it is clear that Mr. Bruchey is able to provide evidence in respect of the Opponent’s business and use of the Opponent’s Marks, and that he has personal knowledge of the matters to which he attests. On the whole, I find that Mr. Bruchey provided reasonably fulsome answers to questions during his cross-examination and in his responses to undertakings.

[43] In closing on the admissibility of the evidence, I note that the Applicant’s evidence contained statements based on Mr. Fox’s information and belief. I do not find it necessary to address the potential hearsay deficiencies attaching to this evidence because I have ascribed no significance to it in reaching my conclusion.

Reasons for decision

Non-compliance with section 30(e)

[44] The Opponent pleads that the application, based on proposed use in Canada, does not comply with sections 38(2)(a) and 30(e) of the Act, because the Applicant did not intend to use the Trademark in Canada with all the Services. The Opponent also pleads that the application does not comply with the same sections of the Act, because “the Applicant, by itself or through a licensee, used the Trademark in Canada with one or more of the Applicant’s Services before the Application filing date”.

[45] At the hearing, the Opponent indicated that the two grounds of opposition are not alternative grounds, but rather complementary grounds in that they allege that the Applicant used the Trademark in association with some of the applied-for Services prior to the filing date, but did not intend to use the Trademark in association with all of the Services. The Opponent has not identified the particular Services which are concerned by each of those allegations.

[46] The material date for assessing this ground of opposition is the filing date of the application. As the application contains a statement that the Applicant by itself and/or through a licensee intends to use the Trademark in Canada, it formally complied with section 30(e) of the Act as of that date.

[47] The question becomes whether or not the application substantially complied with section 30(e) of the Act, namely: was the Applicant’s statement that it intended to use the Trademark true? [See Home Quarters Warehouse, Inc v Home Depot, USA, Inc (1997), 76 CPR (3d) 219 (TMOB); Jacobs Suchard Ltd v Trebor Bassett Ltd (1996), 69 CPR (3d) 569 (TMOB)].

[48] The Opponent submits that the Applicant only started to display the Trademark on its website on the day preceding the cross-examination of Mr. Fox, almost three years after the filing date, suggesting that the Applicant did not intend to use the Trademark at the filing date. In addition, the Opponent argues that because the Trademark is confusing with the Opponent’s Marks, the Applicant could not intend to “use” its mark as a “trademark”, because the Applicant would not in fact be able to distinguish its services from the Opponent’s services and business.

[49] An applicant does not have to evidence use of a proposed trademark and there is no requirement to use a proposed trademark until it is approved. Even if the Applicant began to use the Trademark only three years after the filing date, this would not be sufficient to conclude that the Applicant falsely stated its intent to use the Trademark when it filed the application. Otherwise, I note that the existence of potentially confusing trademarks does not undermine an applicant’s stated intention to use its mark as required by section 30(e) of the Act.

[50] Ultimately, I find that there is no evidence suggesting that the Applicant falsely made the statement required by section 30(e) of the Act. As for the ground of opposition alleging that the Applicant had already used the Trademark, the Opponent confirmed at the hearing that there is no evidence of use of the Trademark prior to the filing date.

[51] The Opponent has therefore failed to meet its evidential burden in respect of both grounds of opposition based on non-compliance with section 30(e) of the Act. These grounds are therefore rejected.

Non-compliance with section 30(i)

[52] The Opponent pleads that the application does not comply with sections 38(2)(a) and 30(i) of the Act “because the Applicant could not have been satisfied that it is entitled to use the Trademark in association with all the Applicant’s Services” in light of the Applicant’s knowledge of the prior adoption, use and registration of the Opponent’s Marks.

[53] The material date for assessing this ground of opposition is the filing date of the application.

[54] It is well established that where an applicant has provided the statement required by section 30(i) of the Act, a section 30(i) ground should only succeed in exceptional cases, such as where there is evidence of bad faith on the part of an applicant [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155].

[55] In its written representations, the Opponent submits that the application was “simply the beginning of a continuing pattern of unlawful and bad faith conduct”. In particular, it submits that the Applicant filed applications for several similarly confusing marks after having knowledge of the Opponent’s concerns with the present application. The Opponent argues that this conduct demonstrates that Applicant seeks to trade on the reputation and goodwill in the Opponent’s Marks. I disagree.

[56] There is no evidence of bad faith or exceptional circumstances in this case. Even assuming the Applicant had been aware of the Opponent’s Marks, the mere knowledge of the existence of the Opponent’s Marks does not in and of itself support an allegation that the Applicant could not have been satisfied of its entitlement to use the Mark [Woot, Inc v WootRestaurants Inc/ Les Restaurants Woot Inc, 2012 TMOB 197]. Knowledge of these trademarks would not preclude the Applicant from truthfully making the statement required by section 30(i), for example, if the Applicant believed its Trademark was not confusing with them.

[57] Accordingly, the Opponent has failed to meet its evidential burden and the ground of opposition based on non-compliance with section 30(i) of the Act is dismissed.

Non-registrability

[58] Pursuant to section 12(1)(d) of the Act, the Opponent pleads that the Trademark is not registrable because it is confusing with one or more of the Opponent’s Marks.

[59] The material date for assessing this ground of opposition is the date of my decision.

[60] I have exercised my discretion to check the Register and confirm that the Opponent’s registrations remain extant [see Quaker Oats Co Ltd of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. The Opponent has therefore met its initial evidential burden with respect to this ground of opposition.

[61] As a result, the Applicant bears the legal onus of demonstrating on a balance of probabilities that there is no likelihood of confusion between the Trademark and any of the Opponent's registered trademarks.

Test for confusion

[62] The test for confusion is set out in section 6(2) of the Act which provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would likely lead to the inference that the goods and services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods and services are of the same general class or appear in the same class of the Nice Classification. Therefore, section 6(2) of the Act does not deal with confusion between trademarks themselves, but with the likelihood that the goods or services from one source will be perceived as being from another source.

[63] In making such an assessment, I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5) of the Act: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time the trademarks have been in use; (c) the nature of the goods and services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them. These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at para 54].

[64] The test for confusion is assessed as a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees an applicant's mark, at a time when they have no more than an imperfect recollection of an opponent's trademark, and do not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks [Veuve Clicquot, supra, at para 20].

[65] I will assess the section 12(1)(d) ground of opposition based on confusion between the Trademark and the Opponent’s registered word marks RETIRE WITH CONFIDENCE (TMA889,004) and INVEST WITH CONFIDENCE (TMA513,335 and TMA845,543) as I am of the view that the Opponent’s case is strongest with respect to these trademarks. That is, if the Opponent is not successful based on those trademarks, then it will not be successful based on its other trademarks.

Inherent distinctiveness of the trademarks and the extent to which they have become known

[66] The overall consideration of this factor involves a combination of inherent and acquired distinctiveness of the trademarks.

[67] First, regarding inherent distinctiveness, the parties’ marks consist of common English words. While I do not accept the Applicant’s position that the term WITH CONFIDENCE is clearly descriptive of the services at issue, at a minimum, I agree that this term alludes to the relationship of trust which underlies the provision of financial investment management and advisory services. Moreover, the words “live”, “invest” or “retire” do not add meaningful distinctiveness to any of the marks as these are dictionary words which suggest that one can live, invest, and retire, having confidence in one’s financial security.

[68] Overall, I do not consider the parties’ marks to possess a significant degree of inherent distinctiveness and I assess their inherent distinctiveness as about the same.

[69] The acquired distinctiveness of a trademark refers to the extent to which it has become known in Canada as a result of its use or promotion. I accept that the Opponent’s INVEST WITH CONFIDENCE trademark has become known at least to some extent, given its use in Canada since 1997 and mass advertising since at least as early as 2005, as attested to by Mr. Bruchey and evidenced by materials attached to his affidavits. However, as pointed out by the Applicant, the evidence relating to the RETIRE WITH CONFIDENCE trademark is thin; it consists of general statements made by Mr. Bruchey regarding the Opponent’s Marks, collectively, and one instance of the RETIRE WITH CONFIDENCE mark displayed in the exhibits. As a result, I am not prepared to find that RETIRE WITH CONFIDENCE has become known to any significant extent in Canada.

[70] The application was filed on the basis of proposed use in Canada. Considering the evidence as a whole, including Mr. Fox’s cross-examination and responses to undertakings, it is reasonable to conclude that the Applicant started promoting its Services in association with the Trademark by approximately mid-2020, mainly through digital brochures and email communications. By mid-2021, the Trademark was also displayed on the Applicant’s website. That being said, the evidence is silent as to the number of Canadians that may have visited that website, or received the Applicant’s email communications. Without more detailed information regarding the Applicant’s advertising efforts and reach in Canada, there is little from which to conclude that the Trademark has become known to any significant extent in Canada.

[71] On balance, given the extent to which the INVEST WITH CONFIDENCE mark has become known in association with the financial services as described in the registrations, I find that this factor favours the Opponent.

Length of time the trademarks have been in use

[72] As discussed above, I accept that the Opponent’s INVEST WITH CONFIDENCE trademark has been used in Canada since 1997. There is also evidence that the RETIRE WITH CONFIDENCE trademark was displayed on the Opponent’s website as of September 2015.

[73] The Applicant’s use of the Trademark is more recent, dating back to 2020.

[74] As a result, this factor favours the Opponent.

Nature of the services or business; and nature of the trade

[75] Both parties offer services in the financial investment and planning sector.

[76] The Applicant argues that while its Services overlap with the Opponent’s, the parties’ channels of trade differ. In particular, the Applicant contends that the Opponent targets institutional investors or accredited investors, whereas the Applicant’s clients are individuals and independent financial planning advisors. In support, the Applicant points to Mr. Fox’s statements, in cross-examination, that the Applicant’s clients are retail investors, namely individuals and couples, who are themselves clients of “financial planning partners”. According to Mr. Fox, the Applicant does not “take clients directly”; instead, the Applicant works with the clients of its financial planning consultants partners [transcript at page 11].

[77] The Opponent argues that its services are “accessible” to investors of all kinds, including institutional investors and individual retail investors. In support, the Opponent points to Mr. Bruchey’s statements that the Opponent “sub-advises” Canadian funds with Canadian partners, and manages “defined benefit plans in Canada for several institutional clients and their plan members” [Bruchey Reply Affidavit at paras 9 and 10]. During his cross-examination, Mr. Bruchey also explained that the Opponent’s services are available to average retail investors through workplace retirement plans and through intermediary bank channels [transcript at pages 90 and 91].

[78] Overall, even if I were to accept that the parties do not target the same audiences, I do not consider that the channels of trade are sufficiently different to dispel any likelihood of confusion. Both parties provide management and advisory services. Both parties operate in the financial and investment planning field.

[79] Accordingly, these factors also favour the Opponent.

Degree of resemblance between the trademarks

[80] The degree of resemblance is often considered to have the greatest effect on the confusion analysis [Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 at para 49].

[81] The Applicant argues that the word “live” does not in any way appear, sound, or convey the same idea as either of the words “invest” and “retire”, and that given the descriptive nature of the term “with confidence”, the marks at issue have a low degree of resemblance.

[82] For its part, the Opponent argues that trademarks are intended to be read as unitary terms, but that, if any part is more striking, it is the shared WITH CONFIDENCE element because the verb component is descriptive. In support, the Opponent points to a statement made by Mr. Fox on cross-examination about his understanding that the term WITH CONFIDENCE is “not descriptive” [transcript at page 51].

[83] When considering the degree of resemblance, the law is clear that the trademarks must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the trademarks. Furthermore, while the first portion of the trademark is usually the most important for the purpose of distinguishing [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 at 188 (FCTD)], the Supreme Court of Canada in Masterpiece has advised that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trademark that is particularly striking or unique.

[84] In the present case, I agree with the Opponent that its INVEST WITH CONFIDENCE and RETIRE WITH CONFIDENCE trademarks are intended to be understood as unitary phrases. Indeed, they are short slogan-like phrases suggesting that consumers can either invest or retire “with confidence” when they retain the Opponent’s services. I therefore do not consider any of the individual words (or subset thereof) to be particularly striking or unique.

[85] Likewise, I do not consider any portion of the Trademark to be more striking or unique than the others. As with the Opponent’s trademarks, it is intended to be understood as a unitary phrase. The Trademark is also suggestive in that it conveys the idea that consumers can live with confidence when they retain the Applicant’s services.

[86] Further, I agree with the Applicant that the ideas conveyed by the parties’ respective marks as a whole are different because the first word “live” encompasses all aspects of a client’s life, and therefore has a somewhat broader meaning than the words “invest” and “retire”, which reference only certain specific aspects of life.

[87] Ultimately, while there is some degree of resemblance owing to the similar grammatical structures and the shared second half of the marks (i.e. the term “with confidence”), I find that the impact of the similarity is minimized by the fact that this shared component is suggestive [see Venngo Inc v Concierge Connection Inc, 2015 FC 1338, aff’d 2017 FCA 96].

[88] On balance, I find that the degree of resemblance factor slightly favours the Applicant.

Additional surrounding circumstance – no evidence of actual confusion

[89] The Applicant briefly argues that the Opponent has provided no evidence of actual confusion.

[90] While an Opponent is under no obligation to file evidence of actual confusion, it has been found that the failure to file such evidence in the face of an extensive period of coexistence may result in a negative inference being drawn [see Mattel, supra]. However, in this case, I am not prepared to make any such inference given the short period of coexistence of the trademarks.

[91] Accordingly, this factor does not assist the Applicant.

Additional surrounding circumstance – Alleged family of trademarks

[92] A family of trademarks is “a series of marks all having the same features and … all owned by the same trader” [Arterra Wines Canada, Inc. v Diageo North America, Inc., 2020 FC 508 at para 41, citing Molnlycke Aktiebolag v Kimberly-Clark of Canada Ltd. (1982), 61 CPR (2d) 42 (FCTD) at para 25].

[93] In other words, a “family” of marks consists of multiple trademarks which are, in a sense, variations on a theme [British Columbia Hydro & Power Authority v Union Gas Ltd. (1998), 85 CPR (3d) 231 (TMOB); see also McDonald's Corp. v Yogi Yogurt Ltd. (1982), 66 CPR (2d) 101 (FCTD), where use of trademarks having the prefixes MC and MAC in combination with the name of a food product was found to establish a family of marks such that consumers would associate that form of a mark with McDonald’s restaurants].

[94] There is no presumption of the existence of a family of marks in opposition proceedings. A party seeking to establish a family of marks must establish that it is using more than one or two trademarks within the alleged family [Techniquip Ltd v Canadian Olympic Assn (1998), 145 FTR 59, 1998 CanLII 7573 (FCTD)].

[95] The Opponent asserts that the Opponent’s Marks amount to a family of trademarks which follow the same “same grammatical structure”, namely that of “a verb followed by the unique or striking ‘with confidence’ component” [Opponent’s written representations at para 63]. The family asserted by the Opponent is comprised of (i) the word mark RETIRE WITH CONFIDENCE, (ii) the word mark INVEST WITH CONFIDENCE, and (iii) two design marks – one with and one without the depiction of a bighorn sheep:

[96] In other words, the Opponent’s asserted family is comprised of three trademarks including or consisting of INVEST WITH CONFIDENCE, and one trademark consisting of RETIRE WITH CONFIDENCE.

[97] I am satisfied that the Opponent has evidenced at least some use of its trademarks in association with its registered goods and services. I am therefore also satisfied that the Opponent has established a small family of marks which include the term WITH CONFIDENCE.

[98] Be that as it may, I do not ascribe to the Opponent’s position that it owns a family of trademarks featuring a verb followed by the term WITH CONFIDENCE, such that consumers have come to expect that this structure, when used as a trademark in the financial investment management and advisory field, necessarily designate services which originate from the Opponent. The above-reproduced design marks are composite marks which incorporate the word mark INVEST WITH CONFIDENCE, rather than some other variation of the asserted “verb followed by WITH CONFIDENCE” structure.

[99] Overall, I find that the small size of the Opponent's family of trademarks, together with the fact that the Opponent does not have a family of trademarks consisting of a verb followed by “with confidence”, tempers the weight that can be afforded to it as a surrounding circumstance [for a similar approach, see Align Technology, Inc v Osstemimplant Co, Ltd, 2019 TMOB 101, aff’d 2022 FC 720].

[100] Accordingly, this factor does not meaningfully assist the Opponent.

Additional surrounding circumstance – State of the register and marketplace

[101] The Applicant essentially argues that, due to the existence of third-party “with confidence” trademarks on the register and in the marketplace, the public would not recognize the Opponent as the common origin of “with confidence” marks.

[102] State of the register evidence can be introduced to show that a mark or portion of a mark is common among different traders, and thus that consumers are accustomed to distinguishing between the marks based on relatively small differences. However, state of the register evidence is only relevant insofar as inferences may be made from it concerning the state of the marketplace in Canada, and inferences about the state of the marketplace can only be drawn when a significant number of pertinent registrations are located [see Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD); and Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349, 1992 CanLII 14792 (FCA)].

[103] In the present case, the Applicant has introduced state of the register evidence by way of the Fox Affidavit, which contains the particulars of nine entries from the CIPO trademark database, namely eight registrations and one application, for trademarks which include the words “with” and “confidence”.

[104] First, I note that the application for the trademark TRADE WITH CONFIDENCE has been withdrawn by its owner. In addition, registrations for the trademarks DECIDE WITH CONFIDENCE (TMA666,991) and BUY WITH CONFIDENCE, SELL WITH SAFETY. (TMA198,837) have been expunged from the register. Those entries shall therefore be disregarded.

[105] Second, while each of the trademarks identified by Mr. Fox are registered in association with services in Nice class 36, very few registrations cover services similar to the parties’ financial investment management and advisory services. For example, the trademark RENT WITH CONFIDENCE (TMA804,655) is registered for use in association with rental of housing accommodations, and the trademark BUY WITH KNOWLEDGE. SELL WITH CONFIDENCE (TMA984,370) is registered for use in association with real estate services and real estate valuation services.

[106] Overall, the only relevant entry covering similar services is CONFIDENCE COMES WITH A PLAN, owned by the Bank of Montreal, for use in association with “Banking services, financial services, namely, financial planning related to investments and retirement plans”. However, this trademark does not include the term “with confidence”, nor does it follow the grammatical structure of the trademarks at issue.

[107] Even if I were to consider this registration, a single registration would be insufficient to make inferences regarding the state of the marketplace [see Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349, 1992 CanLII 14792 (FCA), for the principle that, unless a significant number of trademarks is established by the state of the register evidence, use of the trademarks in the marketplace must be demonstrated].

[108] The Applicant has introduced state of the marketplace evidence in the form of printouts from the websites of Canadian financial institutions [Fox Affidavit, paras 15 and 16, Exhibit C]. I note references to “investing with confidence”, “invest and trade with confidence”, “invest with confidence”, “trade with confidence”, “bank with confidence”, and “manage your money with confidence” on the websites of RBC, TD, Desjardins, Scotiabank and CIBC.

[109] The fact that the term “with confidence” is present on the websites of financial institutions is hardly surprising given the suggestive nature of that term in the context of the services at issue. That being said, I am not persuaded that the state of the marketplace evidence before me is sufficient to establish trademark use by third parties.

Conclusion on likelihood of confusion

[110] The confusion issue to be decided is whether a typical consumer with an imperfect recollection of the Opponent's trademarks, upon seeing the Trademark in association with the Services, would be likely to think that the parties’ services share a common source.

[111] Having regard to all the surrounding circumstances, I first find that the Applicant has met its legal burden to show that there is no reasonable likelihood of confusion between the Trademark and the Opponent’s INVEST WITH CONFIDENCE trademark. I reach this conclusion despite the extent to which the Opponent’s INVEST WITH CONFIDENCE mark has become known, and the similar services of the parties. Considering the narrow ambit of protection to be afforded the Opponent’s trademark, I find that the differences between the marks when considered in their entirety are sufficient to tip the balance in favour of the Applicant.

[112] I come to the same conclusion in respect of the Opponent’s RETIRE WITH CONFIDENCE trademark. In fact, the Applicant’s position is stronger with respect to that trademark, given that the Opponent has not shown that its trademark has become known to any significant extent.

[113] Lastly, as I considered the INVEST WITH CONFIDENCE and RETIRE WITH CONFIDENCE trademarks to represent the Opponent’s strongest case, I similarly find that the Applicant has satisfied its legal burden with respect to the other registered trademarks relied upon by the Opponent (TMA622,218; TMA844,545; and TMA933,996). In this regard, I note that the additional material included in those registered trademarks, serves to further distinguish those marks from the Trademark.

[114] Accordingly, the ground of opposition based on section 12(1)(d) of the Act is rejected.

Non-entitlement and non-distinctiveness grounds

[115] Pursuant to section 16(3)(a) of the Act, the Opponent pleads that the Applicant is not the person entitled to register the Trademark because at the filing date of the application, and at all material times, the Trademark was confusing with the Opponent’s Marks, previously used in Canada by the Opponent in association with its goods and services.

[116] The material date for assessing this non-entitlement ground is the filing date of the application. To meet its evidential burden, the Opponent must demonstrate that it previously used the trademarks it relies upon and that it had not abandoned those trademarks at the date of advertisement of the Applicant’s application.

[117] The Opponent also pleads, pursuant to section 2 of the Act, that the Trademark is not distinctive in that it does not distinguish and is not capable of distinguishing the Applicant’s Services from the Opponent’s goods and services in view of the Opponent’s prior adoption, use, and registration in Canada of the Opponent’s Marks.

[118] The material date for assessing the non-distinctiveness ground is the date of filing of the statement of opposition. To meet its evidential burden under this ground, the Opponent must show that the trademarks upon which it relies had become sufficiently known, i.e. that its reputation was “substantial, significant or sufficient”, to negate the distinctiveness of the Trademark at the material date [Motel 6 Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); Bojangles’ International, LLC and Bojangles Restaurants, Inc v Bojangles Café Ltd, 2006 FC 657].

[119] In view of the Opponent’s evidence, the Opponent’s strongest case on both grounds relies on the trademark INVEST WITH CONFIDENCE and I am satisfied that the Opponent has met its initial burden on both grounds with respect to that trademark.

[120] The differences in the material dates for these grounds of opposition and the material date for the section 12(1)(d) ground do not materially affect my prior findings that there is no reasonable likelihood of confusion as to the source of the parties’ respective services.

[121] As a result, for reasons similar to those set out above, I find that the Applicant has met its legal onus to show, on a balance of probabilities, that there was no reasonable likelihood of confusion between the Trademark and the Opponent’s Marks as of June 28, 2018. Likewise, I am satisfied that the Applicant has met its legal onus to show that the Trademark was distinctive within the meaning of section 2 of the Act as of August 13, 2019.

[122] Even if I were to accept that the Opponent has discharged its onus for the other trademarks upon which it relies, I would have no reason to reach a different conclusion regarding the non-entitlement and non-distinctiveness grounds with respect to any those marks.

[123] Accordingly, the section 16(3)(a) and section 2 grounds of opposition are rejected.

Disposition

[124] In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(12) of the Act.

 

 

_______________________________

Eve Heafey

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Appearances and Agents of Record

HEARING DATE: 2023-05-24

APPEARANCES

For the Opponent: Sangeetha Punniyamoorthy

For the Applicant: Ronald Toledano

AGENTS OF RECORD

For the Opponent: DLA Piper (Canada) LLP

For the Applicant: Spiegel Sohmer Inc.

 

Schedule A

The Opponent’s Marks

Registration Number	Trademark	Registration Date	Goods/Services
TMA513,335	INVEST WITH CONFIDENCE	Jul. 27, 1999	Mutual fund and financial advisory services.
TMA622,218		Oct. 7, 2004	Mutual fund distribution services, mutual fund investment services.
TMA844,543	INVEST WITH CONFIDENCE	Feb. 25, 2013	Investment management; and mutual fund distribution services.
TMA844,545		Feb. 25, 2013	Investment management; and mutual fund distribution services.
TMA889,004	RETIRE WITH CONFIDENCE	Oct. 30, 2014	(1) Financial services, namely, mutual fund investment, investment management, investment advice and consultation, and financial planning in the field of retirement; and providing electronic services via a Website on the Internet in the investment and financial fields, namely, financial planning in the field of retirement. (2) Financial investment services in the nature of financial investment planning for retirement and providing related investment advice; Educational services, namely, providing training and educational seminars in financial planning for retirement and retirement investments. (3) Financial administration of retirement plans for retirement plan providers and retirement plan participants.
TMA933,996		Apr. 7, 2016	Goods (1) A range of downloadable videos featuring information on personal investing and budgeting in the field of investment, investment management, asset management, and financial and monetary affairs; a range of downloadable electronic publications in the field of investment, investment management, asset management, and financial and monetary affairs. (2) Informational materials, namely, magazines, newsletters, and brochures in the field of investment, investment management, asset management, and financial and monetary affairs; a range of printed publications in the field of investment, investment management, asset management, and financial and monetary affairs. Services (1) Providing a range of educational, financial planning, financial analysis and research, financial analysis and consultation services in the field of investment, investment management, asset management, and financial and monetary affairs; providing various information by means of a website in the field of investment, investment management, asset management, and financial and monetary affairs; providing a range of online non-downloadable videos and content featuring financial information for financial planning and retirement planning, all in the field of investment, investment management, asset management, financial budgeting, planning for retirement and financial and monetary affairs. (2) Educational and informational services in the field of investment, investment management, asset management, and financial and monetary affairs; providing for a full range of non-downloadable electronic publications, namely, magazines, newsletters, emailed postcards, and brochures in the field of investment, investment management, asset management, and financial and monetary affairs.
TMA950,110	RETIRE WITH CONFIDENCE	Sep. 22, 2016	Investment management; financial administration of retirement plans for retirement plan participants.