Confusing Times
Arecent decisionof the Federal Court found that use of the business name “Time DevelopmentGroup” infringed a registration of the trademark TIMES GROUP CORPORATION.
The Facts
TimesGroup Corporation (“Times”) has carried on business as property developer andmanager mainly in the greater Toronto area. Its principle target market group is the Chinese community. In 2014 it obtained a trademark registrationfor the trademark TIMES GROUP CORPORATION for use in association withmanagement and financial services relating to all aspects of the management andfinancing of residential, commercial and industrial properties and real estateprojects and developments and related services based on use since 2011.
TimeDevelopment Group Inc. (“TDG”) also carries on business as a property developerand manager. TDG has used the tradename “TimeDevelopment Group” initially mainly in Saskatchewan but commenced operating inthe greater Toronto area in 2013. Italso targets the Chinese community.
The Action
Timescommenced an action in the Federal Court seeking a declaration that TDG hadinfringed its trademark and for an order that TDG cease doing so. No claim for damages was asserted.
Attrial the main issue was whether TDG’s use of the tradename “Time Development Group”would likely lead to confusion. Theappropriate approach was to determine whether a hypothetical person would,without giving the matter detailed consideration, likely think that theservices associated with the mark or trade name have a common source. If so, confusion would made out.
TheTrademarks Act directs that in orderto determine whether there is confusion all of the surrounding circumstances includingthe matters set out in section 6(5) of the Actmust be considered.
The Degree of Resemblance
Thedegree of resemblance is the most important factor and the other factors play arole only after the marks have been found to be identical or very similar. The judge observed that each of the parties reliedon the dominant word in their respective mark and trade name “TIME” or “TIMES”to distinguish themselves from others carrying on business in the samefield. The remaining words that theyuse, “DEVELOPMENT”, “GROUP” and “CORPORATION”, do not distinguish therespective businesses. In this case, thedominant words in issue were nearly identical.
TDGargued that it used a different design than Times which distinguished therespective marks. However, the judgesaid that the owner of a trademark consisting of a word or words is entitled toexclude others from using the same or confusing word(s) in any form and notjust the form that the owner has adopted. One must look at the words themselves not their getup in assessing thedegree of resemblance between Times mark and TDG’s trade name.
Distinctiveness
Thewords used by the parties lack inherent distinctiveness which the judge saidaugments the possibility of confusion. However, trademarks consisting of ordinary words generally attract a lowlevel of legal protection since otherwise a trademark owner would acquire amonopoly over everyday terms.
Duration of Use
Theduration of use can support an argument that a mark has acquireddistinctiveness over time even though the words it contains may not beinherently distinctive. However, thejudge concluded that Times mark had not acquired distinctiveness as a result ofuse and recognition in the marketplace.
Nature of the Business
Thejudge found that the parties operate similar businesses in the same geographicarea and target the same potential customers. TDG argued that since relevant customers were purchasing expensiveresidential properties that it was unlikely that a buyer would ultimatelypurchase a property from TDG thinking it was built by Times. The judge rejected this approach, he saidthat even for expensive goods, which may have lower risks of actual confusion,the question was still whether a somewhat rushed, casual consumer’s firstimpression would likely cause him or her to conclude that the parties respectiveservices had a common source. Whetherserious buyers later conduct further research is irrelevant, it is the firstimpression that is pertinent. Inessence, where the resemblance between the marks or names in issue is strongand other factors do not point emphatically in the other direction, thelikelihood of confusion is not mitigated by the cost of the product in issue.
Conclusion
Notwithstandingthere was no admissible evidence of confusion the judge found that TDG’s use ofits tradename created a risk of confusion with Times’ registered trademark andgranted the declaration sought.
Comment
Thedecision seems to be fairly close to the line but cases of this nature turn onthe facts and the judge’s reaction to those facts. The key element seems to beTDG’s relatively recent entry into the market serviced by Times. TDG could haveavoided the dispute if they had conducted a trademark search before theyentered the market serviced by Times.
Thejudge also may have given insufficient weight to the TDG design and overlybroad protection of the word mark contrary to the Pizzaiolo decision discussed here. However, this case was decided before the release of the Pizzaiolo decision.
John McKeown
Goldman SloanNash & Haber LLP
480University Avenue, Suite 1600
Toronto,Ontario M5G 1V2
Direct Line:(416) 597-3371
Fax: (416)597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.
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