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Some Degree Of Expected Confusion With A Weak Trademark Not Enough To Prevent Registration

On February 5, 2018, Justice LeBlanc released his Judgment and Reasons in 2018 FC 121 involving the applicant, Assurant, Inc. and the respondent, Assurancia, Inc. He dismissed Assurant’s appeal brought under section 56 of the Trade-marks Act and upheld a decision of the Trade-marks Opposition Board rejecting Assurant’s opposition to the registration of the trade-mark ASSURANCIA by the Assurancia.

Assurancia is an insurance broker and financial services firm. It filed trade-mark application no. 1,574,477 for ASSURANCIA. The application was based on use since 2008 in association with insurance brokerage, financial services such as financial planning, and consulting services relating to insurance.

Assurant is the owner of thirteen registered trade-marks consisting of, or comprising of, the element ASSURANT, in association with insurance services. It opposed the registration of ASSURANCIA on the basis that the mark is confusing with its registered trade-marks. “Assurant” means “to insure” in French.

The TMOB rejected the opposition as it was satisfied that there was no likelihood of confusion between the ASSURANT and ASSURANCIA trade-marks. Regarding subsection 12(1)(d) of the Act, the TMOB concluded that ASSURANCIA has greater inherent distinctiveness than ASSURANT, although still low, and that the marks involved are different phonetically. While the marks resemble each other visually and in the ideas they suggest, this resemblance is due to the common component ‘ASSURAN’, which is highly suggestive of the parties’ services. While this element forms the first part of the marks involved, this factor is lessened by the fact that this is highly suggestive of the insurance industry. In such cases, a slight difference will be enough to distinguish them and reduce the probabilities of confusion. Choosing to use a non-distinctive evocative name independently of any acquired distinctiveness, one must accept some confusion without penalty. The TMOB also determined that the absence of probability of confusion is supported by the fact there is a lack of evidence of confusion, despite the coexistence of the marks in Quebec for a period of over 8 years.

On appeal, Assurant filed new evidence in an attempt to show, contrary to the TMOB’s findings, that the ASSURANT trade-marks have in fact been in use in Canada for far longer and to a vastly greater extent than ASSURANCIA.

On appeal, Justice LeBlanc held that concept of confusion under the Act is to be assessed from the viewpoint of the average consumer and is essentially a matter of first impression. The question to answer is whether the “casual consumer somewhat in a hurry,” who sees the mark and who has no more than an imperfect recollection of any one of the ASSURANT trade-marks, would likely be confused (i.e., is that consumer likely to think that Assurancia is the same source of insurance and financial services as the Assurant).

At the hearing, the Applicant focused mainly on the argument on section 16 and that the Respondent was not entitled to register the mark because it was confusing with the Applicants’ mark that has been previously used in Canada.  Justice LeBlanc agreed with the TMOB’s finding that that despite a certain resemblance both visually and in the idea they suggest, the two trade-marks at issue sounded differently due to their different suffixes “T” (for ASSURANT) and “CIA” (for ASSURANCIA), holding:

[47] Here, there is undeniably some degree of resemblance between ASSURANCIA and ASSURANT but this comes from the shared feature – “ASSURAN” – which is suggestive of insurance, the industry in which both parties offer their services. This is why, in my view, the non-common features of these competing trademarks – the suffixes “T” and “CIA” – are so  critical to the whole confusion analysis. In Ultravite Laboratories Ltd. v Whitehall Laboratories Ltd. ([1965] SCR 734 at p 737 citing Sealy Sleep Products Limited v Simpson’s-Sears Limited (1960), 33 CPR 129 at 136), the Supreme Court of Canada cautioned against concentrating the confusion analysis on the similarities of competing trademarks:

“It is not a proper approach to the determination of whether one trade mark is confusing with another to break them up into their elements, concentrate attention upon the elements that are similar and conclude that because there are similarities in the trade marks, the trade marks as a whole are confusing with another. Trade marks may be different from one another and, therefore, not confusing with another when looked at in their totality, even if there are similarities in some of the elements when viewed separately. It is the combination of the elements that constitutes the trade mark and it is the effect of the trade- mark as a whole, rather than of any particular part in it, that must be considered.”

[49] In the present case, I consider that as both trademarks clearly suggest insurance by the common element used, the rest of the trademarks as a whole are sufficient to distinguish their sounds and, to a certain extent, their appearances as well. I see, therefore, no reason to interfere with the Board’s finding that although they share some resemblance, the trademarks at issue, when taken as a whole, are, by virtue of their non-common features, dissimilar in sound and ultimately distinguishable to the average consumer.

Justic LeBlanc rejected the Applicant’s argument that the Board failed to consider the marks from the perspective of an Anglophone consumer who would consider “Assurant” to be an invented word of high inherent distinctiveness.  Rather, Justice LeBlanc, following Smithkline Beecham Corp v. Pierre Fabre Medicament and Bluedot Jeanswear, held that a trademark is suggestive of the associated products or services in English or French is detrimental to its distinctiveness. Attributing a high level of distinctiveness to “Assurant” in the English language would improperly give the Applicant the exclusive right of the majority of the French word for “insurance”.

Considering all of the surrounding circumstances, including the state of the register showing 69 entries containing “ASSUR” associated with insurance, Justice LeBlanc held that while some degree of confusion is to be expected between the suggestive marks, the suffixes “T” and “CIA” are enough to differentiate the marks.

A copy of the Judgment and Reasons of Justice LeBlanc can be found here.