Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2023 TMOB 011

Date of Decision: 2023-01-25

IN THE MATTER OF AN OPPOSITION

Opponent: AGF Management Limited

Applicant: Tiger Fintech (Singapore) Pte Ltd

Application: 1,902,323 for TIGER BROKERS & DESIGN

Overview

[1] Tiger Fintech (Singapore) Pte Ltd (the Applicant) has applied to register the trademark TIGER BROKERS & DESIGN (the Mark), depicted below, in association with various goods and services in the field of finance and investing.

[2] AGF Management Limited (the Opponent) has opposed the application based on an alleged likelihood of confusion with multiple registered trademarks which it owns which include tiger designs. The Opponent has used its trademarks in Canada for many years in association with financial services.

[3] For the reasons that follow, the Application is refused because the Applicant has failed to demonstrate on a balance of probabilities that there is no reasonable likelihood of confusion.

The Record

[4] Application No. 1,902,323 (the Application) was filed on June 4, 2018 and claims priority to a corresponding application filed in Singapore on May 31, 2018. The Application is in association with the goods and services listed below, and is based on proposed use of the Mark in Canada as well as use and registration of the Mark in Singapore:

Goods

(1) Computer software related to financial information, investment, and trading, namely, electronic trading software and investment portfolio management software; software for providing electronic connectivity to financial exchanges and markets

Services

(1) Economic forecasting and analysis; advisory services for business management; business management consultancy

(2) Financial consultation in the field of investment and commodity trading; securities brokerage; stock brokerage services; stock exchange quotations; stocks and bonds brokerage; investment of funds; Conducting business research in the field of financial investment and commodity trading; Providing business information in the field of financial investment and commodity trading for others via a website

(3) Providing non-downloadable on-line electronic publications, namely, magazines, newsletters and reports in the field of securities and investment information; educational services, namely, providing conferences, webinars, webcasts, and seminars in the fields of investment and finances

(4) Platform as a services (PAAS) featuring computer software platforms for use in the field of financial services for trading financial instruments

[5] The Applicant included the following foreign character transliteration and translation as part of its Application: “The mark consists of Chinese characters ‘laohu zhèngquàn’ appearing above the words TIGER BROKERS. The Chinese characters can be transliterated as ‘laohu zhèngquàn’”; “The words ‘laohu zhèngquàn’ can be translated into English as ‘TIGER SECURITIES’”.

[6] The Application was advertised for opposition purposes in the Trademarks Journal on September 16, 2020. On March 8, 2021, the Opponent filed a statement of opposition against the Application pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). Leave was subsequently granted to the Opponent to file a revised statement of opposition dated March 26, 2021 which corrected some typographical errors.

[7] I note that the Act was amended on June 17, 2019. As the Application in this case was advertised after June 17, 2019, the Act as amended applies (see section 69.1 of the Act).

[8] The Opponent raises grounds of opposition based on registrability under section 12(1)(d), entitlement under section 16(1)(a) and 16(1)(b), distinctiveness under section 2, and non-compliance with sections 38(2)(a.1), 38(2)(e), 38(2)(f), and section 38(2)(a) in conjunction with section 30(2)(a) of the Act.

[9] The Applicant filed a counter statement denying the grounds of opposition.

[10] Both parties filed evidence which is discussed below. Only the Opponent filed written representations and no hearing was held.

Onus

[11] The legal onus is on the Applicant to show that the Application complies with the provisions of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once this initial burden is met, the Applicant must satisfy the Registrar, on a balance of probabilities, that the grounds of opposition pleaded should not prevent the registration of the Mark [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298; Dion Neckwear Ltd v Christian Dior, SA (2002), 20 CPR (4th) 155 (FCA)].

Evidence

Opponent’s Evidence

[12] The Opponent filed the affidavit of Oriana Dalla Benetta, sworn on October 5, 2021 (the Benetta Affidavit), and two affidavits in the name of Christina Fradsham both sworn on August 12, 2021 (the Fradsham Affidavits). Neither affiant was cross-examined.

Benetta Affidavit

[13] Ms. Benetta is the Vice President, Brand and Creative Services of the Opponent. She describes that the Opponent was founded in 1957 as a financial services firm with a primary focus of providing asset management services on behalf of individuals and institutions. The Opponent’s services have expanded to include a variety of financial services including securities, commodities and investment advisory services, investment advice and analysis, distribution and management of mutual funds and financial portfolio management. The Opponent provides these services throughout Canada and it also has investment operations in Europe and Asia. The Opponent has more than $40,000,000,000 in total assets under management and serves more than 700,000 investors.

[14] Ms. Benetta states that as of about 1984, the Opponent adopted the tiger as its corporate identifier and began using images of tigers in association with its services as part of its core corporate brand in Canada. The Opponent has adopted as part of its primary corporate logo the image of a tiger displayed either above or adjacent to the letters “AGF” and generally in the following formats:

[15] Since its adoption more than 35 years ago, the Opponent has continuously used the tiger image as part of its corporate logo on virtually every advertisement and piece of correspondence distributed by the Opponent in the advertising and performance of its financial services.

[16] In addition to the corporate logos shown above, the Opponent has used and registered a variety of other trademarks which include or are comprised of tiger designs, illustrated tigers and images of tigers. These trademarks are included in Exhibit A of the Benetta Affidavit and are reproduced in Schedule A to this decision. Examples of the use of these tiger trademarks in print and online advertising of the Opponent’s services are included in Exhibits D, G, H, I, J, K and M of the Benetta Affidavit.

[17] In addition, the Opponent has also used and registered multiple word marks which include the term “tiger” in association with its financial services. These are listed in Exhibit E to the Benetta Affidavit and are also included in Schedule A to this decision. In particular, in 1998, the Opponent began using the trademarks TIGER TALK and LIGNE DU TIGRE, and in 2011 began using the trademark IT TAKES A TIGER. Examples of the use of these trademarks are included as Exhibit J to the Benetta Affidavit.

[18] I will refer to the Opponent’s trademarks which include tiger designs and word trademarks which include the term “tiger” collectively as the “AGF Tiger Trademarks”, as is done in the Benetta Affidavit.

[19] From 1998 to 2021, annual sales of the Opponent’s financial services in Canada in association with the AGF Tiger Trademarks have ranged from in excess of $1,000,000,000 to in excess of $6,000,000,000.

[20] In 2020 alone, the Opponent distributed more than 700,000 individual statements and pieces of correspondence bearing one or more of the AGF Tiger Trademarks to Canadian investors. Between 1984 and the end of 2020, Ms. Benetta estimates that the Opponent would have distributed more than approximately 1,145,435,000 individual statements or pieces of correspondence bearing one or more of the AGF Tiger Trademarks to Canadian investors.

[21] Since 2000, Ms. Benetta estimates that the Opponent has expended in excess of $79,557,000 CAD in the promotion of the Opponent’s financial services in association with the AGF Tiger Trademarks in Canada. In paragraph 27 of the affidavit these advertising expenditures are broken down on an annual basis.

Fradsham Affidavits

[22] Ms. Fradsham is a legal assistant with the Opponent’s agent. Her affidavits include as exhibits the particulars of the registered trademarks and trademark applications relied on by the Opponent.

Applicant’s Evidence

[23] The Applicant filed the affidavit of Eng Thiam Choon sworn on January 26, 2022 (the Choon Affidavit) and the affidavit of Audrey Campeau-Brassard sworn on January 27, 2022 (the Campeau-Brassard Affidavit). Neither affiant was cross-examined.

Choon Affidavit

[24] Mr. Choon is the CEO and Director of the Applicant. He describes that the Applicant was established in 2014 and offers services in the following five main business sectors: (1) Securities economy services, including margin trading and securities lending business. Specifically, the Applicant independently develops an online securities trading platform for global investors, whereby investors can trade stocks, options and other derivative financial instruments. (2) Investment banking business. The Applicant is involved in providing companies with listing services on various stock exchanges since 2017. (3) Wealth management services whereby professional investors of the Applicant provide wealth management services to clients. (4) Option management services. (5) Community market information services.

[25] Mr. Choon describes that the services are also provided by the Applicant via an application which can be downloaded by users on their mobile phones or tablet computers.

[26] The Applicant has physical offices in Singapore, New York, Beijing, Auckland, and Sydney and employs over 800 people throughout the word for the purpose of its services.

[27] As of around 2014, the Applicant adopted the tiger tail design (i.e. the design component at the left of the Mark) as part of its branding identity and has since then used the logo as part of its corporate identity to promote and offer its services worldwide. This logo, as well as the word TIGER have been used continuously by the Applicant in the advertising and provision of all of its services to its clients.

[28] The Applicant has applied for and obtained various registrations worldwide that include the tiger tail logo.

[29] I note that there is no indication in the Choon Affidavit that the Applicant has ever used the Mark in Canada or that it otherwise provides any goods or services in Canada.

Campeau-Brassard Affidavit

[30] Ms. Campeau-Brassard is a trademark agent with the Applicant’s agent. Her affidavit includes as exhibits the results of various searches of the Canadian Intellectual Property Office trademarks database.

Analysis

Section 12(1)(d) ground of opposition

[31] The Opponent pleads that the Mark is not registrable because it is confusing with each of twenty registered trademarks which include a tiger design and which are listed in Appendix A to the statement of opposition. The Opponent also pleads that the Mark is confusing with each of three registered word trademarks which include the word “tiger” and which are listed in Appendix B to the statement of opposition. I have reproduced in Schedule A to this decision the full collection of registered design and word trademarks on which the Opponent relies for its section 12(1)(d) ground of opposition.

[32] The material date for the section 12(1)(d) ground of opposition is the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)]. I have exercised my discretion to check the Register and confirm that all of the registrations relied on by the Opponent remain extant [see Quaker Oats Co Ltd of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. The Opponent has therefore met its initial evidential burden with respect to this ground of opposition. As a result, the Applicant bears the legal burden of demonstrating on a balance of probabilities that there is no likelihood of confusion between the Mark and any of the Opponent’s registered trademarks.

[33] In considering the issue of confusion, for ease of reference I will focus on the Opponent’s registration No. TMA349,667 for the trademark TIGER & DESIGN, depicted below. However, in my view, the result of the confusion analysis would be the same when considering at least each of the Opponent’s registration Nos. TMA349,787; TMA359,426; TMA568,737; TMA570,443; TMA581,062; TMA620,419; and TMA915,990.

Reg. No.	Trademark	Services
TMA349,667		Financial and investment managing and consultation services including founding, promoting, distributing and managing mutual funds, and managing investment portfolios.

[34] While the tiger design which is the subject of registration TMA349,667 is often displayed in close proximity to the trademark AGF, when considering the Benetta Affidavit as a whole, I am satisfied that the tiger design is displayed in such a manner that it would be perceived as a separate trademark in its own right. Further, it is well-established that nothing in the Act precludes a trademark owner from using more than one trademark at the same time in association with the same goods or services [AW Allen Ltd v Warner-Lambert Canada Inc (1985), 6 CPR (3d) 270 (FCTD)].

Test for confusion

[35] The test for confusion is set out in section 6(2) of the Act which provides that the use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would likely lead to the inference that the goods and services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods and services are of the same general class or appear in the same class of the Nice Classification. In making such an assessment, I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5) of the Act: (a) the inherent distinctiveness of the trademarks and the extent to which they have become known; (b) the length of time the trademarks have been in use; (c) the nature of the goods and services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them.

[36] These criteria are not exhaustive and different weight will be given to each one in a context specific assessment [see Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23, 49 CPR (4th) 401; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR 772 at para 54]. I also refer to Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27, 92 CPR (4th) 361 at para 49, where the Supreme Court of Canada states that section 6(5)(e), the resemblance between the marks, will often have the greatest effect on the confusion analysis.

[37] The test for confusion is assessed as a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the applicant’s mark, at a time when they have no more than an imperfect recollection of the opponent’s trademark, and do not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks [Veuve Clicquot, supra, at para 20].

Inherent distinctiveness of the trademarks and the extent to which they have become known

[38] Both parties’ trademarks have a reasonable degree of inherent distinctiveness in view of their design elements which are not descriptive of any aspect of the relevant goods and services. However, with respect to the extent to which the trademarks have become known, this element significantly favours the Opponent in view of its extensive use of its trademark in Canada for many years. In particular, the Benetta Affidavit demonstrates that the Opponent has a substantial client base in Canada and for over thirty years has used its trademark on a multitude of documents and advertisements in connection with the provision of its financial services. In contrast, there is no evidence that the Applicant’s Mark has been used in Canada or otherwise become known in Canada.

[39] As a consequence, taking into account both the inherent distinctiveness of the trademarks and the extent to which they have become known, this factor favours the Opponent.

Length of time the trademarks have been in use

[40] The Benetta Affidavit indicates that the Opponent’s trademark has been used in Canada since 1984. As noted above, there is no evidence that the Applicant’s Mark has been used in Canada. Therefore, this factor also favours the Opponent.

Nature of the goods, services or business; and the nature of the trade

[41] The Opponent’s registration covers financial and investment management services such as managing mutual funds and investment portfolios. The Opponent’s evidence of its use of the trademark in Canada is consistent with these descriptions.

[42] The Applicant’s services as described in the Application all relate to the field of finance and include services such as “Financial consultation in the field of investment and commodity trading; securities brokerage; stock brokerage services; stock exchange quotations; stocks and bonds brokerage; investment of funds; […]”. The software goods in the Application similarly relate to finance and investing. The description of the business activities of the Applicant outside of Canada, as set out in the Choon Affidavit, is consistent with the description of goods and services in the Application.

[43] In view of the above, I am satisfied that there is a meaningful overlap between the parties’ respective goods and services. Both parties are operating in the financial sector and specifically offer services relating to investment and wealth management. Moreover, while there is no evidence of record that the Applicant is operating yet in Canada, given the similarity in the goods and services, I see no evidence to suggest that the parties’ channels of trade would not also overlap.

[44] Consequently, the nature of the goods, services and trade factors also favour the Opponent.

Degree of resemblance

[45] In considering the degree of resemblance, it is preferable to determine whether there is an aspect of each trademark that is “particularly striking or unique” [Masterpiece, supra, at para 64]. The striking element of the Opponent’s trademark is the tiger design, which includes a striped tail. The Applicant’s Mark prominently features a tiger tail design.

[46] The Mark includes written matter in English and Chinese characters which is absent from the Opponent’s trademark, which reduces the degree of resemblance in terms of sound and somewhat in terms of idea. However, in my view, there is nevertheless a meaningful degree of resemblance between the parties’ trademarks in terms of appearance and idea conveyed, in view of the common tiger design features.

[47] On balance, I consider this factor to favour the Opponent, albeit only to a slight degree.

Surrounding circumstance – state of the Register

[48] Evidence concerning the state of the Register is relevant to the extent that inferences may be drawn regarding the state of the marketplace [Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); Del Monte Corporation v Welch Foods Inc (1992), 44 CPR (3d) 205 (FC)]. Inferences regarding the state of the market may be drawn from such evidence only if a large number of relevant trademarks are located [Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA); McDowell v Laverana GmbH & Co KG, 2017 FC 327 at paras 41-46]. Relevant trademarks include those that (i) are registered or are allowed and based on use; (ii) are for similar goods and services as the marks at issue, and (iii) include the component at issue in a material way [Sobeys West Inc v Schwan's IP, LLC, 2015 TMOB 197 at para 38].

[49] While I have no submissions from the Applicant on this point, presumably the Campeau-Brassard Affidavit filed by the Applicant seeks to demonstrate that there are third-party trademarks already present on the Register which should narrow the scope of protection afforded to the Opponent’s trademark. In particular, the search results in the Campeau-Brassard Affidavit relate to third-party applications and registrations for trademarks which include images of “Tigers or other large felines” or the word “TIGER” in Nice Classification 36. Thirteen (13) such third-party applications/registrations were found.

[50] However, I do not consider this evidence to assist the Applicant. First, of the thirteen trademarks which are identified in the Campeau-Brassard Affidavit, three are applications which have not been allowed or registered, namely, application Nos. 1925168, 1925182, and 2050557. Second, of the remaining trademark registrations, many are in association with very different services (e.g. TMA572,328 for TIGER HEAD DESIGN in association with sponsorship of amateur sports and related services) or do not contain a word or design component in a material way (e.g. TMA813,565 for the trademark Tree Logo Design, wherein the feline image constitutes such a small portion of the mark as to render the reference immaterial).

[51] In short, the state of the Register evidence filed by the Applicant does not assist the Applicant to any meaningful degree.

Surrounding circumstances –family and fame

[52] The Opponent submits that it owns and uses a family of trademarks which each incorporate images of tigers or the word “tiger” in association with financial services. Further, the Opponent submits that the tiger image is famous in Canada in association with its financial services. The Opponent’s position is that both of these surrounding circumstances increase the scope of protection that should be afforded to its trademarks and support a finding of confusion.

[53] I will keep my discussion of these two surrounding circumstances brief, as in my view a finding in the Opponent’s favour on these two points is not necessary for the Opponent to succeed on the issue of confusion, in view of the other statutory factors which all weigh in its favour. On the issue of a family of trademarks, I find that the Opponent has demonstrated use of more than two trademarks which include different tiger designs (e.g. TMA349667, TMA349787, TMA974230, and TMA1081008) and in this sense may be considered to have demonstrated the existence of a family of trademarks. As to the renown of the Opponent’s trademarks, based on the evidence of the extensive use of at least its trademark TIGER & DESIGN (TMA349667) set out in the Benetta Affidavit, I am prepared to find that trademark is reasonably well-known in Canada in the financial services industry, though this factor has largely been accounted for already in the discussion of the section 6(5)(a) factor, above.

[54] Thus, I find that these two surrounding circumstances assist the Opponent to a slight degree. However, I wish to specify that my conclusion regarding confusion would be the same even if I had not considered these two factors to assist the Opponent.

Conclusion regarding the section 12(1)(d) ground

[55] Having regard to all of the surrounding circumstances discussed above, and particularly given that each of the statutory factors under sections 6(5)(a) through (e) favour the Opponent, I conclude that at best for the Applicant, the probability of confusion between the Mark and the Opponent’s trademark is evenly balanced between a finding of confusion and no confusion. As the onus is on the Applicant to demonstrate on a balance of probabilities that there is no reasonable likelihood of confusion between the trademarks, I must therefore find against the Applicant.

[56] Consequently, the section 12(1)(d) ground of opposition succeeds.

Section 16(1)(a) ground of opposition

[57] The material date for the section 16(1)(a) ground of opposition is the priority filing date of the Application, namely, May 31, 2018 [see Earthrise Farms v Saretzky (1997), 85 CPR (3d) 368 (TMOB)]. The Opponent has met its initial evidential burden under this ground of opposition by virtue of its evidence of use of its trademark in Canada since 1984.

[58] In these circumstances, the analysis of the likelihood of confusion under this ground is the same as it was for the section 12(1)(d) ground. In my view, the different material dates for the two grounds does not have any impact on the analysis.

[59] Therefore, the section 16(1)(a) ground of opposition also succeeds.

Remaining grounds of opposition

[60] As I have already found in the Opponent’s favour in respect of the grounds of opposition under sections 12(1)(d) and 16(1)(a), I do not consider it necessary to address the remaining grounds of opposition.

Disposition

[61] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the Application pursuant to section 38(12) of the Act.

_______________________________

Timothy Stevenson

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Schedule A

Reg. No.	Trademark	Representative Services
TMA349787		(1) Financial and investment management and consultation services including founding, promoting, distributing and managing mutual funds, and managing investment portfolios. (2) Trust company services and lending services.
TMA349667		Financial and investment managing and consultation services including founding, promoting, distributing and managing mutual funds, and managing investment portfolios.
TMA359426		(1) Financial and investment management and consultation services including promoting mutual funds. (2) Financial and investment management and consultation services including founding, distributing and managing mutual funds, and managing investment portfolios.
TMA421204		(1) Trust company services, and financial services, namely taking, lending and investment of deposits.
TMA568737		(1) Providing financial services, namely, managing mutual funds; selling and distributing mutual funds and mutual fund shares; investment management and consultation services; […]
TMA570443		(1) Providing financial services, namely, managing mutual funds; selling and distributing mutual funds and mutual fund shares; investment management and consultation services; […]
TMA581062		(1) Investment services, namely, investment management of mutual funds of others; securities dealer services; […]
TMA620292		(1) Securities dealer services; securities agency in the fields of bonds and negotiable instruments; […]
TMA620419		(1) Securities dealer services; securities agency in the fields of bonds and negotiable instruments; stock brokerage services; brokerage services; […]
TMA915990		(1) Mutual fund management services; sales and distribution of mutual fund shares; investment management and consultation services; financial planning services; […]
TMA938920		(1) mutual fund management services; sales and distribution of mutual fund shares; […]
TMA974230		(1) Mutual fund management services; sales and distribution of mutual fund shares; investment management and consultation services; financial planning services; […]
TMA1080230		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA1080227		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA1080233		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA1081008		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA1090333		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA1090332		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA1090330		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA1092465		(1) Financial and investment services, namely, investment management, portfolio management, wealth management, namely, financial planning and investment portfolio management, asset management, mutual fund sales and management, […]
TMA632224	LIGNE DU TIGRE	Securities, commodity and investment advisory services; […]
TMA883400	IT TAKES A TIGER	Mutual fund management services; sales and distribution of mutual fund shares; […]
TMA633856	TIGER TALK	Securities, commodity and investment advisory services; securities, bond, debenture and stock trading and dealer services; […]

 

Appearances and Agents of Record

HEARING DATE: No hearing held

AGENTS OF RECORD

For the Opponent: RICHES, MCKENZIE & HERBERT LLP

For the Applicant: BROUILLETTE LEGAL INC.