IN THE MATTER OF AN OPPOSITION
by London Life Insurance Company to
application No. 660,985 for the trade-mark
NEW FREEDOM TO PLAN YOUR FUTURE
filed by The Manufacturers Life Insurance Company
On June 26, 1990, the applicant, The Manufacturers Life Insurance Company (hereinafter “Manulife”), filed an application to register the trade-mark NEW FREEDOM TO PLAN YOUR FUTURE, based on proposed use in Canada, in association with “ life insurance services.” The right to the exclusive use of the word PLAN apart from the mark as a whole was subsequently disclaimed.
The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated June 19, 1991 and was promptly opposed by London Life Insurance Company on June 21, 1991. A copy of the statement of opposition was forwarded to the applicant on July 30, 1991. The applicant responded by filing and serving a counter statement.
The first ground of opposition is that the application is not in compliance with Section 30(e) of the Trade-marks Act in that the applicant does not intend to use the applied for mark.
The second ground of opposition, pursuant to Section 12(1)(d), is that the applied for mark NEW FREEDOM TO PLAN YOUR FUTURE is not registrable because it is confusing with the opponent’s marks FREEDOM 55 (regn. No. 307,625) and LIBERTE 55 (regn. No. 308,603). Both registrations cover “life insurance, financial planning and investment services.” The opponent alleges that its marks “are very famous in view of the extensive use and advertising of such marks in Canada by the opponent herein.”
The third ground of opposition, pursuant to Section 16(3)(a), is that the applicant is not the person entitled to register the applied for mark since, at the date of filing the application, the applied for mark was confusing with the opponent’s marks FREEDOM 55 and LIBERTE 55 previously used and advertised in Canada. The fourth and last ground of opposition is that the applied for mark is not distinctive of the applicant’s services, within the meaning of Section 2. In this regard, the opponent alleges that applied for mark NEW FREEDOM TO PLAN YOUR FUTURE does not distinguish, nor is it adapted to distinguish, the services of the applicant from the services of the opponent.
The opponent’s evidence in chief consists of the affidavits of Robert Paul Bailey, Vice-President of Communications of the opponent company (2 affidavits of even date; the “second” affidavit serves to introduce into evidence, as an exhibit, a copy of a video tape of a TV show); Sheila Linehan, student-at-law; Gregory Sayer, student-at-law; and Karen Stauss, trade-mark searcher. The applicant’s evidence consists of the affidavits of Edward A. Jacob, Life Products Director of the applicant company; Robert W. White, Vice-President, Canada, of the Audit Bureau of Circulations (hereinafter “ABC”); Mark Robbins, student-at-law; and Linda Joyce Elford, trade-marks searcher. The opponent’s reply evidence consists of the affidavits of William Sandfield Kennedy, a senior executive with the opponent company; and Shirley Jean McDonald (two affidavits), trade-marks searcher. Mr. Jacob was cross-examined on his affidavit. The transcript thereof, and the answer to one question taken under advisement, form part of the record herein. Both parties filed a written argument and both were represented at an oral hearing.
The applicant, in its written argument, makes several objections regarding the admissibility of the opponent’s evidence. Firstly, the applicant objects that Mr. Bailey’s second affidavit is not proper evidence of the contents of the TV show copied on the tape filed as an exhibit. I agree that the contents of the show are hearsay as introduced into evidence by Mr. Bailey and I have therefore disregarded it.
Secondly, the applicant objects that information provided by Sheila Linehan regarding newspaper and magazine circulation in Canada elicited from the Audit Bureau of Circulation is inadmissible hearsay. Ordinarily I would agree with such a characterization. However, in the instant case, Robert W. White’s evidence (filed of behalf of the applicant) explains the operations of the ABC and I am therefore prepared to place reliance on statistics that ABC provides.
Thirdly, the applicant objects that information provided by Gregory Sayer regarding BBM Bureau of Measurement television viewership statistics are hearsay. I agree. It would not appear that Mr. Sayer has any personal knowledge of BBM operations. Mr. Sayer’s evidence of viewership statistics is unreliable hearsay which I have disregarded.
There is nothing in the opponent’s evidence to support its first ground of opposition pursuant to Section 30(e) of the Act and, in any event, Mr. Jacob’s testimony in his affidavit and at cross-examination confirm that the applicant began to use the applied for mark in April 1991. The first ground of opposition is therefore rejected.
The remaining grounds of opposition turn on the issue of confusion between the applied for mark and one, or both, of the opponent’s marks FREEDOM 55 and LIBERTE 55. A consideration of the issue of confusion between the applied for mark and the opponent’s mark FREEDOM 55 will effectively decide the outcome of this proceeding. The opponent’s case is strongest at the earliest material date, that is, the date on which the subject application was filed (- June 26, 1990), before the applicant commenced use of its mark. The issue of confusion will therefore be considered in the context of the third ground of opposition alleging that the applicant is not the person entitled to register the mark NEW FREEDOM TO PLAN YOUR FUTURE.
In view of the provisions of Sections 16(3) and 16(5) of the Act, it was incumbent on the opponent to evidence the use of its trade-mark FREEDOM 55 prior to the applicant's filing date ( - June 26, 1990) and to show that its trade-mark was not abandoned as of the date of advertisement ( - June 19, 1991) of the applied for mark. The first Bailey affidavit satisfies both of these requirements.
The legal onus is on the applicant to show no reasonable likelihood of confusion between the applied for mark NEW FREEDOM TO PLAN YOUR FUTURE and the applied for mark FREEDOM 55. The presence of a legal 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. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 at 297-298 (F.C.T.D.)
The material date for considering the circumstances respecting the issue of confusion is as of the applicant's filing date (- June 26, 1990) in accordance with the wording of Section 16(3). In applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set out in Section 6(5) of the Act, shown below:
6(5) In determining whether trade-marks . . . are confusing, the . . . Registrar . . . shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks . . . and the extent to which they have become known;
(b) the length of time the trade-marks . . . have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks . . . in appearance or sound or in the ideas suggested by them.
The opponent’s mark FREEDOM 55 possesses a low degree of inherent distinctiveness. In this regard, I accept the applicant’s submission, supported by Mark Robbins’ evidence, that the word “freedom” is a word commonly and “quite aptly used to connote a desirable feature of insurance or financial products.” As noted by the applicant at p.12 of its written argument, the opponent itself uses the word “freedom” in a non-proprietary manner when promoting its insurance and financial services. The numerals 55 add little to the inherent distinctiveness of the mark. Further, the mark as a whole, in relation to the opponent’s services, is highly suggestive of financial security or of financial independence at age 55. On the other hand, it is clear from Mr. Bailey’s first affidavit that the opponent has promoted and advertised its mark FREEDOM 55 extensively since late 1984. Premiums for services rendered (i.e., policies sold) under the mark are in the hundreds of millions of dollars annually since 1984. I am able to conclude from Mr. Bailey’s second affidavit that the opponent’s mark FREEDOM 55 has acquired a significant reputation across Canada in association with the opponent’s life insurance, financial planning and investment services. Further, the opponent’s state of the trade-marks register evidence indicates that there are very few registrations incorporating the word FREEDOM as a component of marks for insurance and financial planning services.
The applied for mark NEW FREEDOM TO PLAN YOUR FUTURE possesses a low degree of inherent distinctiveness in relation to the applied for services. The mark as a whole, in relation to the applicant’s services, is highly suggestive of an innovative, flexible planning strategy which is precisely the type of life insurance plan that the applicant is selling under the mark. Of course, the applied for mark would not have acquired any distinctiveness at the material date.
The length of time that the marks in issue have been in use favours the opponent as the opponent’s use of its mark FREEDOM 55 dates back to 1984.
When assessing the issue of confusion in the context of Section 16 of the Act, it is the actual wares and\or services sold under the opponent’s mark and the wares and\or services as specified in the applicant’s application that are compared. This differs from the determination of confusion between marks arising under Section 12(1)(d) of the Act where it is the opponent’s wares and\or services as specified in the registration that are paramount. It is clear from Mr Jacob’s evidence on cross-examination that the applicant has used its mark NEW FREEDOM TO PLAN YOUR FUTURE only in association with its UL100 insurance plan ( a type of universal life plan), that the opponent does not sell a similar type of plan, and that the opponent is not a competitor of the applicant for the particular service provided under the applied for mark. However, the applicant has not restricted its statement of services in its application to any particular type of insurance plan and, as mentioned above, it is the specification of services in the applicant’s application that governs in considering the issue of confusion.
In the instant case, the services performed under the opponent’s mark FREEDOM 55 namely, providing life insurance services (with concomitant financial planning aspects), are, for the purposes of determining the question of confusion, identical to the services specified in the subject application namely, “life insurance services.” In other words, the distinction between the parties’ services evidenced by Mr. Jacob does not assist the applicant.
As far as I am able to determine from the evidence, the parties conduct their businesses in more or less the same manner, that is, their agents interview clients prior to the issuance of an insurance policy. I note in passing that the applicant restricts its advertising for NEW FREEDOM TO PLAN YOUR FUTURE to its brokers (agents) while the opponent advertises FREEDOM 55 directly to the general public. This is in keeping with the distinction between the applicant’s specific product (i.e., the UL100 policy) directed at a specific market segment (above age forty, affluent business owner) and the opponent’s wide range of policies all sold under its mark FREEDOM 55. Further, insurance agents who sell the applicant’s NEW FREEDOM TO PLAN YOUR FUTURE policies do not sell the opponent’s policies because the opponent does not allow them to: see p. 42 of Mr. Jacob’s transcript of cross-examination.
The marks in issue resemble each other visually and aurally to the extent that the word FREEDOM is common to both marks and appears at the beginning of the mark as the first or second component. The ideas suggested by the marks differ. The opponent’s mark suggests some type of emancipation while the applied for mark suggests an innovative, flexible strategy for personal planning.
As a surrounding circumstances, I have considered Mr. Jacob’s evidence at paragraph 4 of his affidavit, reproduced below:
(emphasis added)
Mr. Jacob’s testimony, above, is corroborated by examples of advertising and promotion submitted as exhibit material by both parties. I conclude that it is more likely than not that the applied for mark NEW FREEDOM TO PLAN YOUR FUTURE will appear in proximity to the applicant’s trade-name Manulife Financial and that the mark FREEDOM 55 will appear in proximity to the opponent’s trade-name London Life.
The applicant in its written argument submits that life insurance services are not services which are purchased without careful consideration, that such a purchase is important and not inexpensive, and that typically insurance is purchased through a broker or agent who spends time explaining the policy to the potential buyer. That submission is supported Mr. Jacob’s testimony on cross-examination and on re-direct examination.
I would note that this Board may have regard to matters arising after the material date to the extent that one may draw inferences as to the situation existing as of the material date: see Speedo Knitting Mills Pty. Ltd. v. Beaver Knitwear (1975) Ltd. (1985), C.P.R.(3d) 176 at pp. 184-185 (TMOB) . In this regard, the applicant has evidenced substantial sales of insurance under its marks since April 1991. More than 11,300 life insurance policies have been sold under the mark, amounting to more than two billion dollars face amount and accounting for more than $30 million in first year premiums: see paragraph 10 of Mr. Jacob’s affidavit. Manulife is one of the fifteen largest life insurance companies in North America and policies sold under the applied for mark NEW FREEDOM TO PLAN YOUR FUTURE account for about 20% of the opponent’s Canadian individual life insurance product line. Mr. Jacob’s evidence on cross-examination is that any instances of actual confusion between the applied for mark and the opponent’s mark would likely have come to his knowledge, and that such instances have not come to his attention. Mr. Jacob’s answers on cross-examination were at all times direct, forthright and informative. I consider him to be a highly credible witness and I accept his testimony without reservation.
Considering all of the surrounding circumstances as discussed above, and keeping in mind that the test for confusion is one of first impression and imperfect recollection, I find that, despite persuasive argument by counsel for the opponent, the applicant has met the legal onus on it to show that the marks in issue were not confusing as of the material date June 26, 1990. The ground of opposition alleging non-entitlement pursuant to Section 16 of the Act is therefore rejected.
The considerations for determining the issue of confusion arising pursuant to the second ground of opposition alleging non-registrability (at the material date as of the date of my decision), and arising pursuant to the fourth ground alleging non-distinctiveness (at the material date as of filing the statement of opposition), are essentially the same as those considered above. It follows that the second and fourth grounds are also rejected.
In view of the above, the opponent’s opposition is rejected.
DATED AT HULL, QUEBEC, THIS 12th DAY OF MARCH, 1996.
Myer Herzig,
Member,
Trade-marks Opposition Board