Prince Edward Island Mutual Insurance v. Insurance Co. of Prince Edward Island
T-733-96
Rouleau J.
29/1/99
21 pp.
Passing-off action-Plaintiff claiming defendant's trade mark and trade name causing or likely to cause confusion with its own name, used as trade mark or trade name in association with insurance services for over 110 years-Action dismissed-In Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120 has defined what plaintiff must establish in passingoff action: (1) goodwill attached to services supplied; (2) defendant has made misrepresentation likely to lead public to believe source of defendant's and plaintiff's services same; (3) plaintiff likely to suffer damage-In this case, goodwill established in connection with plaintiff's name-However, considering factors set out in Act, s. 6(5), evidence does not support likelihood of confusion-Plaintiff's name highly descriptive (Insurance Company) and includes descriptive geographic element (Prince Edward Island)-Accordingly, not entitled to high degree of protection and must accept inevitable risk of some confusion-Significant differences in services and trade of parties-On one hand, plaintiff emphasizing "mutual" company owned by its members, protecting each other, providing reasonably priced services, discounts and rebates, and dealing mainly in fire insurance primarily for farming community-On other hand, defendant presenting itself as island-based general insurance company linked to Charlie Cooke Insurance, dominant market being automobile, commercial insurance-Furthermore, as matter of first impression, trade marks substantially dissimilar and, when looked at in their totality, so little resemblance between them that one could not conclude likelihood of confusion-Marks also have very different look-Evidence of actual confusion insufficient-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 7.