London Life Insurance Co. v. Manufacturers Life Insurance Co.
T-1284-97
Reed J.
24/3/99
13 pp.
Appeal from Trade Marks Opposition Board's decision rejecting London Life's opposition to application for registration of trade mark "La Liberté de Planifier Votre Avenir" for use in association with life insurance services-London Life owner of trade marks "Freedom 55", "Liberté 55", "First Freedom", "Liberté Première", "Freedom Time" for use in association with insurance, financial planning services, investment services, investment savings plans-London Life submitting Board erred in finding applied-for trade-mark registrable because likelihood of confusion contrary to Trade-marks Act, ss. 6, 12(1)(d)-Evidence London Life extensively advertising trade marks "Freedom 55/Liberté 55"-Trade-marks Act, s. 12(1)(d) providing trade mark registrable if not confusing with registered trade mark-Mark confusing when would cause confusion in manner, circumstances described in s. 6-S. 6(5) requiring court to have regard to all surrounding circumstances when assessing whether mark confusing-In general, court must ask itself whether, as matter of first impression on minds of ordinary person having vague recollection of that other mark, name, use of both marks, names in same area in same manner likely to lead to inference services associated with those marks, names performed by same person, whether or not services of same general class: Miss Universe, Inc. v. Bohna, [1995] 1 F.C. 614 (C.A.)-S. 16 providing applicant entitled to registration unless at date of first use confusing with trade mark previously used in Canada-S. 38 specifying grounds of opposition-Evidence applied-for mark having limited inherent distinctiveness, as does appellant's mark-Applied-for mark having limited acquired distinctiveness-Evidence "Liberté 55" widely recognized by, familiar to, members of pertinent public in Province of Quebec-Well-known mark entitled to broad protection-As to factors in s. 6(b), (c), (d) London Life using "Freedom 55", "Liberté 55" since 1984, while Manufacturers Life only beginning to use applied-for mark in 1991; nature of services with which marks associated same; respective channels of trade in which two companies engage overlapping-"Freedom 55", "Liberté 55" conveying idea of being free of financial worries at age 55-"La Liberté de Planifier Votre Avenir" conveying idea of planning for future-Ideas conveyed overlap, but not identical-As to state of register, several pending applications for related trade-marks, but little evidence concerning use by appellant of family of marks-Distinctiveness but one element to be considered when assessing likelihood of confusion-Board not erring in assessing respondent's trade mark in that context, determined it had limited degree of inherent distinctiveness, had become known to some extent in Canada-Board not erring in findings of fact, conclusions based thereon-Evidence filed before Court and before Board not leading to different conclusion-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 12, 16(1), 38 (as am. by S.C. 1992, c. 1, s. 134).