Trademark Opposition Board Decisions

IN THE MATTER OF IWO OPPOSITIONS

by Citigroup Inc. to application nos. 1165031

and 1187778 for the trade-marks CITI COMMERCIAL and CITI RESIDENTIAL, respectively,

filed by Citi Commercial Real Estate Services Inc.

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On January 16, 2003, the applicant Citi Commercial Real Estate Services Inc. filed an

application to register the mark CITI COMMERCIAL, based on use of the mark since November

4, 2002, in association with

provision of commercial real estate services namely, the acquisition and disposition of commercial real estate, commercial real estate leasing services, tenant representation and professional negotiation pertaining to commercial real estate, commercial market analysis and research services, documentation management, project management and brokerage services.

In order to overcome objections raised by the Examination Section of the Trade-marks

Office, the applicant (i) disclaimed the exclusive use of the words CITI and COMMERCIAL

apart from the trade-mark as a whole, and (ii) provided documentation that the owner of the

official mark CITI & Design gave permission for the applicant " to use and register as a trade­

mark the word 'CITI' . . . "

The subject application was advertised for opposition purposes in the Trade-marks

Journal issue dated April 7, 2004 and was opposed by Citicorp on September 8, 2004. The

Registrar forwarded a copy of the statement of opposition to the applicant on September 14,

2004. The applicant responded by filing and serving its counter statement. The opponent was

later granted leave to submit a revised statement of opposition: see the Board ruling dated June

20, 2005. During the course of this proceeding the original opponent Citicorp merged with

Citigroup Inc. Thereafter the opposition continued in the name Citigroup Inc.

The opponent's evidence consists of (i) certified copies of trade-mark registrations and

applications relied on in the statement of opposition, (ii) the affidavit of Charles Alexander, a

lawyer and an executive with Citigroup and Citibank operating in Canada. The applicant's

evidence consists of the affidavit of Agron S. Miloti, President and main shareholder of the

applicant company. Both parties submitted a written argument. The opponent was represented by

counsel at an oral hearing while applicant was represented by Mr. Miloti.

STATEMENT OF OPPOSITION

The statement of opposition pleads that the opponent is the owner of a well known family

of CITI trade-marks including CITIBANK, CITIBUSINESS, CITICORP, CITIFINANCIAL,

CITIGROUP, and CITILEASE. Generally speaking, the opponent provides financial services

under its marks. Such services include banking services, credit card services and insurance

services including mortgage lending, real estate investment trusts, real estate insurance services

and real estate investment services. The opponent licenses related companies to use its trade­

marks and trade-names CITIBANK CANADA and CITI COMMERCE SOLUTIONS OF

CANADA, LTD.

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The grounds of opposition allege that:

(i) the applied for mark is not registrable, pursuant to Section 12(1)(d) of the Trade-marks Act, because the applied for mark CITI COMMERCIAL is confusing with the opponent's trade­mark registrations inc1uded in the opponent's family of CITI marks,

(ii) the applicant is not entitled to register the applied for mark CITI COMMERCIAL, pursuant to Sections 16(a), (b) and (c) of the Act, having regard the opponent's prior use of its family of CITI trade-marks and Citi trade-names,

(iii) the applied for mark is not distinctive having regard to the opponent's use of its CITI family of trade-marks and trade-names.

OPPONENT'S EVIDENCE

Mr. Alexander's affidavit lacks precision and particulars in some areas of his testimony.

However, on a fair reading of his affidavit as a whole and in the absence of cross-examination, I

understand his evidence as follows. Citibank Canada has been in operation in Canada since 1960.

Citibank Canada is related to the opponent and is licensed to use the opponent's marks in

accordance with Section 50(1) of the Trade-marks Act. As of 2005, Citibank Canada had over

3000 employees working in major Canadian cities inc1uding Toronto, Montreal, Calgary, London

and Vancouver.

Exhibit A attached to Mr. Alexander's affidavit is comprised of various documents and

brochures featuring the mark CITIBANK. One such document bears the expression "residential

mortgages" at the top of the first page. The amount of residential and commercial mortgages

underwritten by Citibank Canada is consistently in the hundreds of millions of dollars annually

prior to and since the applicant adopted the applied for marks CITI COMMERCIAL and CITI

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RESIDENTIAL.

Exhibit C attached to Mr. Alexander's affidavit is comprised of various documents and

brochures featuring the mark CITICAPITAL. The opponent offers, among other things, leasing

and financing programs to vendors of industrial equipment (such as cranes, elevators and dry

wall) used in the construction industry. The services offered under the trade-mark and trade-name

CITICAPITAL has a financial base of leases and collateral mortgages in Canada in excess of $1

billion dollars as of May 2005. The opponent has used its mark CITICAPITAL prior to and since

the applicant adopted the applied for marks CITI COMMERCIAL and CITI RESIDENTIAL.

Exhibit D attached to Mr. Alexander's affidavit is comprised of various documents and

brochures featuring the mark (and trade-name) CITIFINANCIAL. Shown below are examples of

how the mark (and trade-name) is used to promote the opponent's service:

You may have more equity in your home than you realize. With CitiFinancial' s EquityPlus home equity loan, you could take advantage of up to 100% of your home's value right now and put it to work for you! Whether it's buying furniture for your new house or using the cash for an entirely different purpose like buying a car, paying off bills, or affording college or university tuition, EquityPlus may make it possible!

At CitiFinancial, we may have a solution to higher-rate personal loans and credit cards! CitiFinancial's AdvantagePlus is a fully secured, adjustable-rate home equity loan that allows you to borrow more with an affordable monthly payment.

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Turn the equity in your home into borrowing power and pay off all your bills at once by refinancing your first mortgage with CitiFinancial. Whether you want a shorter-­term loan, need extra cash, or simply want to lower your monthly payment, we'll help you find the best solution to Balance Your Budget . Take comfort in knowing your rate and payment will never change with our fixed-rate first mortgage. Or, save a little extra cash each month with the lower initial rate and payment of our adjustable-rate AdvantagePlus loan.

For the period 2001 - 2004 inclusive, billions of dollars worth of loans were issued under

the CITIFINANCIAL mark and trade-name, while loans under the EQUITY PLUS program,

referred to above, were in the hundreds of millions of dollars.

The opponent offers CITI MASTERCARDS to consumers and businesses, and through

Citi Commerce Solutions of Canada Ltd. (presumably a related company) issues private label

credit cards for companies including HOME DEPOT, IKEA, PETRO CANADA, BUILDERS

CHOICE and GOODYEAR. The HOME DEPOT card has a consumer and commercial side, the

latter issued to companies in the trade who supply services for property maintenance,

management and repair. Such CITI cards began issuing before the applicant adopted the applied

for marks CITI COMMERCIAL and CITI RESIDENTIAL. As of May 2005, there were in

excess of one million persons in Canada using a credit card issued by CITIBANK CANADA,

with billions of dollars spent annually. The CITI credit card features the word CITI in large

letters across the face of the card and in smaller (but highly visible) font at the top right hand

corner of the card: see Exhibit E of Mr. Alexander's affidavit.

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Mr. Alexander also states, at paragraph 17 of his affidavit, that " real estate companies

recommend and/or arrange for financing such as mortgages and bridge financing for their

clients. . . "

APPLICANT'S EVIDENCE

Mr. Miloti's affidavit evidence is, for the most part, not relevant to the issues in this

proceeding. Further, portions of the applicant's written argument attempt to introduce evidence of

third party marks comprised of the formative CITI. Such information should have been submitted

by way of evidence in chief or as additional evidence. Accordingly, I have not had regard to

portions of the written argument which constitute inadmissible evidence. Mr. Miloti does state

that the applicant is licensed to carry on the business of real estate brokerage and that the

applicant has no intention to be involved in finance. Mr. Miloti further notes that the opponent is

not licensed to carry on the business of real estate brokerage and therefore concludes that "the

services the applicant provides and the services the opponent provides are completely different. "

MAIN ISSUE

The determinative issue with respect to application no. 1165031 is whether the applied

for mark CITI COMMERCIAL is confusing with one or more of the opponent's trade-marks

including CITI, CITIBANK, CITICAPIT AL, and CITIFINANCIAL. The material dates to assess

the issue of confusion are (i) the date of my decision with respect to the ground of opposition

alleging non-registrability; (ii) the applicant's claimed date of first use in Canada (November 4,

2002) with respect to the ground of opposition alleging non-entitlement; (iii) the date of

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 opposition (September 8, 2004) with respect to the ground of opposition alleging non­

distinctiveness: for a review of case law concerning material dates in opposition proceedings see

American Retired Persons v. Canadian Retired Persons (1998), 84 C.P .R.(3d) 198 at 206 - 209

(F.C.T.D.).

TEST FOR CONFUSION

The legal onus is on the applicant to show that there would be no reasonable likelihood of

confusion, within the meaning of Section 6(2) of the Trade-marks Act, between the applied for

mark CITI COMMERCIAL and one, or more, of the opponent's trade-marks including CITI,

CITIBANK, CITICAPITAL, and CITIFINANCIAL. The presence of an onus on the applicant

means that if a determinate conclusion cannot be reached once all the evidence is in, then the

issue must be decided against the applicant: see John Labatt Ltd. v. Moison Companies Ltd.

(1990) 30 C.P.R.(3d) 293 at 297-298 (F.C.T.D.). The test for confusion is one of first impression

and imperfect recollection. Factors to be considered, in making an assessment as to whether two

marks are confusing, are set out in Section 6(5) of the Trade-marks Act: the inherent

distinctiveness of the marks and the extent to which they have become known; the length of time

each has been in use; the nature of the wares, services or business; the nature of the trade; the

degree of resemblance in appearance or the sound of the marks or in the ideas suggested by them.

This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily

have equal weight. The weight to be given to each depends on the circumstances: see Gainers

Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R.(3d) 308

(F.C.T.D.).

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SECTION 6(5).F ACTORS

The opponent's trade-marks CITI, CITIBANK, CITICAPITAL, and CITIFINANCIAL

possess some degree of inherent distinctiveness owing to the misspelling of the word "city." The

applied for mark CITI COMMERCIAL also possesses some inherent distinctiveness owing to the

component CITI first adapted and used by the opponent. Despite areas of incompleteness in Mr.

Alexander's affidavit, in the absence of cross-examination I am prepared to find that the

opponent's marks CITI, CITIBANK, CITICAPITAL, and CITIFINANCIAL had acquired a

significant reputation in Canada at all material times. The applied for mark CITI

COMMERCIAL would not have acquired any reputation at the earliest material date and the

applicant has not submitted evidence to show that the applied for mark became known at the

later material dates. The length of time that the marks in issue have been in use favours the

opponent as the opponent began to use its marks before the applicant commenced use of its mark

CITI COMMERCIAL. I accept Mr. Miloti's argument that the parties' services are distinct,

however, a person entering into a transaction to lease or purchase residential or commercial real

estate is likely to require financing to complete the transaction. It follows that a person dealing

with the applicant will at the same time require the type of services offered by the opponent.

While Mr. Miloti is correct that the parties' services are distinct, the parties' services are

nevertheless connected. It is entirely plausible that persons looking to the applicant for real estate

services would also be looking to the opponent for financing the transaction.

The marks in issue resemble each other to a fair extent as the applicant has incorporated

the component CITI into its mark. In this regard, the first portion of a trade-mark is the most

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relevant for purposes of distinction see Pernod Ricard v. Mo/son Breweries (1992), 44 C.P.R. (3d) 359 at 370 (F.C.T.D.).

As mentioned earlier, the opponent has established a reputation for its marks CITI,

CITIBANK, CITICAPITAL, and CITIFINANCIAL. I also find, from an inspection of the exhibit

material attached to Mr. Alexander's affidavit and from a fair reading of his affidavit testimony,

that the opponent has used various other of its marks pleaded in the statement of opposition.

Accordingly, the opponent has established a family of marks, prefixed by the component CITI,

used in association with various types of financial services. As noted by Mr. Justice MacKay in

Consumers Distributing Co. v. United Consumers Club, Inc. (1991) 35 C.P.R.(3d) 259 at 272,

para. a:

Jurisprudence has established that there is a presumption that marks containing common elements form a series of related marks; viewed as a c1uster, the' likelihood of confusion is greater if another mark with similar common elements were registered for another applicant: see McDonald's Corp. v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101, 16 A.C.W.S. (2d) 3 (F.C.T.D.).

Considering all of the above, and considering in particular that at all material times the

marks CITI, CITIBANK, CITICAPITAL, and CITIFINANCIAL in the opponent's family of

marks had acquired a significant reputation in Canada; that the applied for mark had not acquired

any reputation; that the parties' services, while distinct, are connected and are the types of

services that are used contemporaneously; that there is no admissible evidence of CITI prefixed

third party marks in use in the marketplace, I find it likely, on a balance or probabilities, that the

public will assume the applicant's commercial real estate services are approved, licensed, or

sponsored by the opponent. It follows that the applied for mark CITI COMMERCIAL is

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confusing with the opponent's marks CITI, CITIBANK, CITICAPITAL, and CITIFINANCIAL:

see Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990),29 C.P.R.(3d) 7 at 12

(F.C.T.D.).

APPLICATION NO. 1187778

Application no. 1187778 for the mark CITI RESIDENTIAL was filed on August 19,

2003. Application no. 1187778 is based on use in Canada since September 22, 2004 and is the

sister application covering residential real estate services rather than commercial real estate

services. The pleadings, issues, and evidence are essentially the same for both opposition

proceedings and material dates differ only slightly. Thus, the considerations for determining the

issue of confusion between the mark CITI RESIDENTIAL and the opponent's marks CITI,

CITIBANK, CITICAPIT AL, and CITIFINANCIAL are essentially the same as those discussed in

respect of application no. 1165031 for CITI COMMERCIAL, above, and the same conclusion

follows. That is, I find it likely, on a balance of probabilities, that the public will assume the

applicant's residential real estate services are approved, licensed, or sponsored by the opponent. It

follows that the applied for mark CITI RESIDENTIAL is confusing with the opponent's marks

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CITI, CITIBANK, CITICAPITAL, and CITIFINANCIAL.

DECISIONS

In view of the above, application nos. 1165031 and 1187778 are refused.

DATED AT VILLE DE GATINEAU, QUEBEC, THIS 20th DAY OF MARCH, 2007.

~~

Myer Herzig,

Member,

Trade-marks Opposition Board

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