IN THE MATTER OF AN OPPOSITION by The Manufacturers Life Insurance Company to application No. 768,566 for the trade-mark ALPHA STAR filed by Newcastle Capital Management Inc.
On November 10, 1994, the applicant, Newcastle Capital Management Inc., filed an application to register the trade-mark ALPHA STAR based on proposed use of the trade-mark in Canada by itself, or through a licensee, in association with “investment fund services”.
The present application was advertised for opposition purposes in the Trade-marks Journal of April 5, 1995 and the opponent, The Manufacturers Life Insurance Company, filed a statement of opposition on September 1, 1995, a copy of which was forwarded to the applicant on October 27, 1995. The applicant filed and served a counter statement in which it generally denied the opponent’s grounds of opposition. The opponent filed as its evidence the affidavits of Keith Weaver, William G. Devolin, Edward A. Jacob and Daphne Lisa Maravel while the applicant submitted the affidavit of Dr. Robert R. Rafos. Both parties filed a written argument and both were represented at an oral hearing.
The first ground of opposition is based on Paragraph 12(1)(d) of the Trade-marks Act, the opponent asserting that the applicant’s trade-mark ALPHA STAR is not registrable in that it is confusing with its registered trade-marks ALPHAFAX, ALPHAPLUS and ALPHAPLUS & Design, registration Nos. 353,654, 368,165 and 396,255 respectively. In determining whether there would be a reasonable likelihood of confusion between the applicant’s trade-mark ALPHA STAR and one, or more, of the opponent’s registered trade-marks within the scope of Subsection 6(2) of the Trade-marks Act, the Registrar must have regard to all the surrounding circumstances, including those which are specifically enumerated in Subsection 6(5) of the Act. Further, the Registrar must bear in mind that the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks of the parties as of the date of my decision, the material date for considering the Paragraph 12(1)(d) ground [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (FCA)].
With respect to the inherent distinctiveness of the trade-marks at issue, the applicant has relied upon the Rafos affidavit in support of its submission that the word ALPHA is used commonly in the investment community to describe the contribution that an active manager makes to the investment performance of a portfolio. However, the applicant’s evidence does not establish that this meaning of the word ALPHA would be known by the average user of the services of the parties. I have concluded, therefore, that both the applicant's trade-mark ALPHA STAR as applied to investment fund services and the opponent’s trade-marks ALPHAPLUS and ALPHAPLUS & Design covering life and health insurance services and the opponent’s ALPHAFAX trade-mark as applied to “life and health insurance services; computer programs for preparing and customizing insurance plans and reports” are inherently distinctive.
Having regard to the Rafos affidavit, it does not appear that the applicant has yet commenced use of its trade-mark ALPHA STAR in Canada and its trade-mark must therefore be considered as not having become known to any extent in this country. On the other hand, the Weaver affidavit establishes that the opponent’s trade-marks ALPHAPLUS and ALPHAPLUS & Design have become known in Canada in association with its life and health insurance services but that its ALPHAFAX trade-mark has only become known to a limited extent in association with its insurance services. Thus, the extent to which the trade-marks at issue have become known weighs in the opponent’s favour in assessing the likelihood of confusion between the trade-marks at issue. Further, the length of time the marks have been in use also favours the opponent in that the applicant has not yet commenced use of its ALPHA STAR trade-mark in Canada whereas the opponent has used its ALPHAPLUS trade-mark in Canada since September of 1989 in association with insurance services and its ALPHAFAX mark since 1991.
The opponent’s life and health insurance services differ from the applicant’s investment fund services. As for the respective channels of trade of the parties, the Devolin affidavit establishes that the opponent has provided various investment funds as savings vehicles for its clients. Further, the Jacob affidavit points to there being more than 20,000 individual life insurance policies sold by the opponent each year which include a savings feature. Also, the Maravel affidavit introduces into evidence photocopies of newspaper articles, as well as excerpts from various promotional materials published by businesses offering both insurance and investment services. Thus, the opponent has adduced evidence which points to there being some measure of an overlap in the respective channels of trade of the parties.
The trade-marks ALPHA STAR and ALPHAPLUS and ALPHAFAX bear a fair degree of similarity both in appearance and in sounding. Further, considering that the trade-marks at issue are inherently distinctive, I do not consider that the average user of the services of the parties would perceive these marks as conveying any particular ideas.
Having regard to the degree of resemblance between the trade-marks at issue as applied to services which could well travel through the same channels of trade, and bearing in mind that the opponent has established that its ALPHAPLUS mark has become known in Canada in association with its insurance services, I have concluded that the applicant has failed to meet the legal burden upon it in respect of the issue of confusion in relation to the Paragraph 12(1) (d) ground of opposition. Consequently, the applicant’s trade-mark ALPHA STAR is not registrable.
The opponent also alleged that the applicant is not the person entitled to registration of the trade-mark ALPHA STAR and that the applicant’s trade-mark is not distinctive in that the trade-mark ALPHA STAR is confusing with its trade-marks ALPHAPLUS and ALPHAPLUS & Design as applied to life and health insurance services and the trade-mark ALPHAFAX as applied to life and health insurance services, as well as to computer programs for preparing and customizing insurance plans and reports. With respect to the non-distinctiveness ground, the opponent further alleged that it has operated in Canada an employee award program called STAR and STAR & Design. In assessing the likelihood of confusion between the applicant’s mark and the opponent’s trade-marks in relation to the non-entitlement and non-distinctiveness grounds, the Registrar must again have regard to all the surrounding circumstances, including those which are specifically enumerated in Subsection 6(5) of the Act. Further, the Registrar must bear in mind that the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks of the parties as of the materials dates for considering these grounds. In this regard, the material dates for considering the non-entitlement and non-distinctiveness grounds are the applicant’s filing date [November 10, 1994] and the date of opposition [September 1, 1995] respectively. My previous comments concerning the criteria under Subsection 6(5) of the Trade-marks Act are likewise applicable to the assessment of the likelihood of confusion between the trade-marks at issue as of the material dates for considering these grounds. As a result, these grounds of opposition are also successful.
Having been delegated by the Registrar of Trade-marks pursuant to Subsection 63(3) of the Trade-marks Act, I refuse the applicant’s application pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 16th DAY OF JUNE, 1998.
G.W. Partington
Chairperson
Trade-marks Opposition Board