Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2023 TMOB 201

Date of Decision: 2023-11-30

IN THE MATTER OF AN OPPOSITION

Opponent: Specialty Program Group Canada Inc.
(predecessor-in-title Can-Sure Underwriting Ltd.)

Applicant: Cannasure Insurance Services, LLC

Application: 1,846,809 for CANNASURE

Introduction

[1] Cannasure Insurance Services, LLC (the Applicant) has applied to register the trademark CANNASURE (the Mark) for use in association with various insurance services, including for the medical marijuana industry.

[2] Specialty Program Group Canada Inc. (predecessor-in-title Can-Sure Underwriting Ltd.) opposes the application, based primarily on an allegation that the Mark is confusing with its trademarks CAN-SURE and CANSURE (as well as a family of related trademarks) and its trade name CAN-SURE, all used in association with overlapping insurance services.

[3] The opposition also contains several grounds alleging that the Applicant cannot legally provide insurance services in Canada.

[4] For the reasons that follow, I find a likelihood of confusion between the Mark and the Opponent’s CANSURE trademark and trade name and I accordingly refuse the application.

The record

[5] Application no. 1,846,809 for the Mark (the Application) was filed on July 11, 2017, on the dual bases of use and registration in the United States of America and proposed use in Canada in association with the following services (the Services):

Services (Nice class & statement)

36 Insurance brokerage; insurance brokerage for insurance to the medical marijuana industry; insurance services, namely, underwriting and issuance of general and professional liability, property, products liability, business income, vehicle and crop insurance; insurance services, namely, underwriting and issuance of general and professional liability, property, products liability, business income, vehicle and crop insurance for the medical marijuana industry; consulting and information concerning insurance; consulting and information concerning insurance for the medical marijuana industry.

[6] The Application was advertised for opposition purposes in the Trademarks Journal on January 13, 2021, and opposed on July 13, 2021, when Specialty Program Group Canada Inc. (the Opponent) filed a statement of opposition pursuant to section 38 of the Trademarks Act, RSC 1985, c T-13 (the Act). The Applicant filed a counter statement that it intends to respond to the opposition.

[7] The grounds of opposition allege that the Mark is not registrable under section 12(1)(d) of the Act; that the Applicant is not the person entitled to registration under sections 16(1)(a), 16(1)(b), and 16(1)(c) of the Act; that the Mark is not distinctive, as is required by section 2 of the Act; that the Application was filed in bad faith, pursuant to section 38(2)(a.1) of the Act; that the Applicant was not using and did not propose to use the Mark in Canada, pursuant to section 38(2)(e) of the Act; and that the Applicant was not entitled to use the Mark in Canada, pursuant to section 38(2)(f) of the Act. In accordance with section 69.1 of the Act, since the Application was advertised after the Act was amended on June 17, 2019, the grounds of opposition will be assessed based on the Act as amended.

[8] In support of its opposition, the Opponent filed (i) the affidavit of its President, Cameron Copeland, dated January 18, 2022, and (ii) the January 19, 2022, affidavit of Tanya Cain, who is one of the agents in the firm representing the Opponent. Mr. Copeland describes the Opponent’s business and that of its predecessor-in-title, including use and promotion of their trademarks and trade names. Ms. Cain provides circulation figures for certain magazines mentioned by Mr. Copeland. Neither affiant was cross-examined.

[9] In support of the Application, the Applicant filed the May 20, 2022, affidavit of Naime Isaj, a summer student with the firm representing the Opponent. Ms. Isaj produces (i) printouts from the Canadian trademarks register dated May 11, 2022, for various trademarks comprising the element CAN or SURE and (ii) screenshots from May 2022 of commercial webpages displaying some of those trademarks, including some archived versions as captured by the Internet Archive Wayback Machine. Ms. Isaj was cross-examined on her affidavit and the transcript, as well as answers to questions taken under advisement, are of record.

[10] Both parties filed written representations and were represented at an oral hearing.

Evidential burden and legal onus

[11] In an opposition proceeding, the legal onus is on the applicant to show that its application complies with the provisions of the Act. However, for each ground of opposition, 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 that ground of opposition exist. If this initial burden is met, then the applicant must satisfy the Registrar, on a balance of probabilities, that the ground of opposition should not prevent registration of the trademark at issue [Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD)].

Preliminary matter: Admissibility issues

[12] Before discussing the grounds of opposition, I will address the parties’ arguments regarding the admissibility of certain portions of the evidence.

Mr. Copeland’s affidavit

[13] I am disregarding the opinions expressed by Mr. Copeland on the extent to which the Opponent’s business is known in Canada; on how Canadian consumers associate the CANSURE and CANNASURE trademarks with the Opponent; and on whether CANNASURE is available for the Applicant to register as a corporate name in Canada.

[14] At the oral hearing, the Opponent argued that Mr. Copeland’s evidence should be accepted at face value, since his position and experience make him a credible witness and his evidence was not challenged through cross-examination. In that respect, I note that Mr. Copeland joined the Opponent’s predecessor-in-title as a partner in 2011 and helped develop that company’s inland marine property and casualty insurance program [para 1]. He has been the Opponent’s President since 2017, being nominated three times for CEO of the Year at the Insurance Business Canada Awards [paras 1, 11; Exhibit F]. However, he has not qualified himself as an expert in Canadian trademark law, corporate law, consumer perceptions, or human behaviour, and is not independent of the parties. I am therefore not prepared to give any weight to his opinions on the questions of fact and law to be decided in this proceeding or on related questions of corporate law.

[15] That said, I accept that, by virtue of his position and responsibilities overseeing the Opponent’s business, Mr. Copeland would be generally familiar with the requirements for legally offering insurance services in Canada and with the identity and branding of the Opponent’s competitors in Canada. I am therefore prepared to accept his factual evidence in those respects.

[16] I am also prepared to accept the industry magazine circulation figures he obtained from the Opponent’s marketing team, the website traffic figures he obtained from the Opponent’s analytics provider Seo 5 Consulting, and the Google Analytics printouts he attaches to his affidavit. Although the Applicant argued that this evidence is hearsay, I am prepared to give it some weight. I find it reasonable to infer that the Opponent would be obtaining such statistics relating to its website and advertising reach, from trusted sources, in the ordinary course of business, and as such these records may be considered akin to business records [for similar conclusions, see Miller Brewing Co v Labatt Brewing Co (1991), 36 CPR (3d) 400 (TMOB); Canadian Generic Pharmaceutical Association v Pfizer Products Inc, 2013 TMOB 27; and MapQuest, Inc v Lodging Co Reservations Ltd, 2014 TMOB 113]. I find that this conclusion is supported by the statements at page 25 of the 2014 Annual Report that read, “We constantly monitor the results of our advertising efforts on Google Analytics and assess the information we receive from various publications. … monitoring results, we can increase our visibility and define our brand.” and “…we recently researched all the insurance publications and trade shows across Canada (readership, advertising costs, print & online opportunities, etc.) in order to make an informed decision as to where our advertising dollars would be best spent.” [Exhibit B].

[17] In the circumstances, I find that the production of these records was a reasonably expedient means of introducing evidence as to the subject magazines’ general level of circulation. I would also note that the Applicant has not suggested that any of the figures are inaccurate and has not challenged the reliability of any of the sources through cross-examination or independent evidence.

[18] Finally, I note that, when Mr. Copeland states he is attaching to his affidavit Annual Reports that discuss the CANSURE business, I consider him to be adopting the descriptions of the business that appear in the Annual Reports.

Ms. Cain’s affidavit

[19] The Applicant also argues that the industry magazine circulation figures Ms. Cain provides are hearsay and, moreover, do not cover the dates of the magazine advertising referenced by Mr. Copeland.

[20] Ms. Cain obtained circulation figures for Ontario Broker Magazine, Canadian Underwriter Magazine, and Alberta Broker Magazine from their publishers’ respective websites, and for BC Broker Magazine—said to be published by the Insurance Brokers Association of BC—from the website of the Magazine Association of British Columbia. The latter association claims on its site to represent, connect, and promote the BC magazine industry. The figures for Ontario Broker Magazine are from a 2021 Media Kit and the others are from printouts dated January 18, 2022 [Exhibits A‒‍D]. Ms. Cain states that she was unable to find figures online for the dates of the publications referenced by Mr. Copeland, and that she was also unable to consult the Toronto Reference Library’s records of historical circulation figures on microfiche because the library was closed “due to weather conditions” [para 2]. However, she does not specify how long the library closure lasted or explain what would have prevented her from attending when it re-opened; nor does she state whether historical data could have been obtained from the publishers by means other than searching online.

[21] The reliability of Internet evidence was discussed in ITV Technologies Inc v WIC Television Ltd, 2003 FC 1056, where it was accepted that “in general, official web sites, which are developed and maintained by the organization itself, will provide more reliable information than unofficial web sites, which contain information about the organization but which are maintained by private persons or businesses” [at para 16]. The Court was of the opinion that official web sites of well-known organizations can provide reliable information that would be admissible as evidence [para 17]. Conversely, the reliability of the information obtained from an unofficial web site will depend on various factors—including the objectivity of the person posting the information, their sources, independent corroboration, and the possibility of modification—and little or no weight should be given when these factors cannot be ascertained [paras 17‒‍18].

[22] I have no reason to doubt the reliability of the circulation figures that the Insurance Brokers Association of Ontario (IBAO), Canadian Underwriter, and the Insurance Brokers Association of Alberta (IBAA) provide for their own publications, although I note that only the IBAO specifies the year for which the figures are intended. However, the circulation figures for BC Broker Magazine were provided from the Magazine Association of British Columbia without any information about this entity or the methodology or currency with which it collects circulation data.

[23] At the hearing, the Opponent submitted that the Registrar may take judicial notice that the above-note magazines circulate in Canada, citing Gurwitch Products, LLC v Groupe Marcelle Inc, 2014 TMOB 22, in support. In response to the Applicant’s argument that judicial notice may only be taken of “notorious”, general-circulation magazines, the Opponent suggested that the magazines in question may be notorious in the insurance industry. I note that, in Gurwitch, the applicant’s vice-president of marketing had provided monthly circulation figures for the magazines Chatelaine, More, Zoomer, and Vita “as reported by the publishers”, apparently without supporting documentation [para 42, see also description of exhibits at paras 38‒‍45]. The Registrar was willing to take judicial notice that the magazine Chatelaine has “a certain circulation in Canada”, but did not do so for the other three [para 42].

[24] In the present case, I do not find the circulation of specialized industry magazines to be the type of notorious or generally accepted fact, or immediately verifiable information, of which I can take judicial notice. Nevertheless, Mr. Copeland has testified as to the years in which his company ran advertising in the above-noted magazines, and I am therefore satisfied that the magazines were circulating at the time. I am also prepared to infer that the identified industry magazines referencing Canada or a Canadian province in their titles would have had at least minimal circulation in Canada or in the named province, as the case may be.

[25] Furthermore, I am prepared to give Ms. Cain’s evidence some limited weight as an indication of the general order of magnitude for the circulation of these industry publications, particularly in the case of the figures published directly by the magazine itself. However, regardless of the difficulties Ms. Cain encountered in obtaining the information she was seeking, data specific to 2021 and/or 2022 is of limited usefulness as an indicator of circulation levels several years earlier.

Ms. Isaj’s affidavit

[26] Finally, the Opponent argues that the entirety of Ms. Isaj’s evidence is inadmissible hearsay, since it was not she but rather an articling student colleague who chose which trademark records and webpages to furnish and who drafted the affidavit [see Q33‒‍Q35]. The Opponent notes the absence of any indication as to why it was necessary for Ms. Isaj to swear the affidavit instead. The Opponent also submits that the evidence is unreliable, because Ms. Isaj was not involved in preparing the affidavit and cannot confirm whether any revisions were made to the series of undated screenshots she saved prior to their inclusion in the affidavit [Q42, Q58] [see Labatt Brewing Co v Molson Breweries, A Partnership (1996), 68 CPR (3d) 216 (FCTD) re the admissibility of hearsay meeting the criteria of necessity and reliability].

[27] Ms. Isaj’s evidence consists essentially of a series of printouts from the Internet, with an objective description of their origin and no subjective observations or opinions. Contrary to the Applicant’s submissions, I do not find that the reliability of Ms. Isaj’s evidence is affected by her lack of familiarity with the proceeding or with the rationale for the selection of the register entries and webpages she was asked to capture and print, or by the level of meticulousness with which she reviewed her affidavit for completion prior to signing [see cross-examination transcript Q26‒‍Q30, Q39‒‍41, Q54‒‍Q59, Q66‒‍69]. The existence of the trademarks records and webpages she captured is not affected by the methodology used to locate them or by the Applicant’s reasons for submitting them as evidence, and I agree with the Applicant that being told what to capture does not detract from Ms. Isaj’s having personally seen the records and webpages as described in her affidavit. Although there may have been a subjective element to how the lists of trademarks and webpages were compiled, the information presented in Ms. Isaj’s affidavit is merely a reflection of how certain Trademark Office records and webpages existed around the date of her affidavit and appeared at the time. The evidence does not purport to show what results any particular search of the register or of the Internet would yield.

[28] Moreover, Ms. Isaj confirmed that she had the opportunity to review the affidavit prior to signing and saw the evidence she had collected to be included in the exhibits [Q37‒‍Q39, Q66‒‍69]. She also confirmed that she had reviewed her affidavit prior to the cross-examination and had only a couple of transcription errors to correct [Q7‒‍Q8, Q15‒‍Q16]. The Opponent has not suggested any reason to believe that the exhibits to Ms. Isaj’s affidavit fail to provide an accurate reflection of the appearance of the webpages she visited on the dates stated in her affidavit. I would also note that the Wayback Machine has been accepted as a generally reliable source for evidencing the state of websites in the past [see Candrug Health Solutions Inc v Thorkelson, 2007 FC 411, rev’d on other grounds 2008 FCA 100; and ITV, supra].

[29] In view of the foregoing, I find Ms. Isaj’s evidence to be admissible to show how the identified websites appeared on the dates indicated. However, I note that the mere accessibility of such webpages in Canada on those dates does not establish the truth of the websites’ contents, how long the webpages have been online, the extent to which they have been accessed from Canada, or whether any of the goods or services offered, promoted, or described on the webpages have actually been sold or performed in Canada at any relevant time.

Grounds of opposition based on confusion between the trademarks

[30] The primary grounds of opposition in this case turn on allegations of confusion between the Mark and the Opponent’s trademarks and trade names.

Registrability under section 12(1)(d) of the Act

[31] The Opponent pleads that the Mark is not registrable because it is confusing with the Opponent’s registered trademarks CAN-SURE (TMA909,800) and CANSURE (TMA909,799), the particulars of which are set out at Schedule A to this decision (the CANSURE Trademarks), and the Opponent’s family of registered trademarks ending in “SURE”, the particulars of which are set out at Schedule B to this decision (the Pleaded Product Brands).

[32] The material date for this ground of opposition is the date of the Registrar’s decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)]. An opponent’s initial burden is met if the registration relied upon is in good standing on the material date and the Registrar has discretion to check the Register in this respect [per Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. Having exercised this discretion, I confirm that all of the registrations set out at Schedules A and B to this decision are in good standing.

[33] As the Opponent has met its evidential burden, the onus is on the Applicant to satisfy the Registrar, on a balance of probabilities, that the Mark is not likely to cause confusion with any the Opponent’s pleaded registered trademarks.

[34] In considering the issue of confusion, I will focus my discussion on the Opponent’s CANSURE trademark, registered under no. TMA909,799. This is the pleaded trademark that most resembles the Mark and the one for which the Opponent has furnished the most evidence of use and promotion. As such, I consider it to represent the Opponent’s best chance of success.

[35] However, I note at the outset that I consider the presence or absence of a hyphen in the CANSURE Trademarks to be a minor variation. Applying the principles in Canada (Registrar of Trade Marks) v Cie International pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA); Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA); and Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB), I find that the trademark CANSURE remains recognizable in the hyphenated version, CAN-SURE. The dominant features of the CANSURE trademark are preserved and it does not lose its identity with the addition of a hyphen between the two syllables. In this respect, I would also note that registration of a word mark grants its owner the right to use the mark with any style of lettering, colour, design, or other features [Masterpiece, supra; see also Advance Magazine Publishers, Inc v Banff Lake Louise Tourism Bureau, 2018 FC 108]. Thus it is open to the Opponent to use the CANSURE registered trademark with design features that create contrast between the portions “CAN” and “SURE”. Accordingly, use and promotion of the CAN-SURE variation qualifies as use and promotion of the registered trademark CANSURE.

[36] Additionally, I find that the CANSURE trademark does not lose its identity and stands out sufficiently to also remain recognizable as a separate trademark in the following logo, featuring an eleven-point maple leaf emerging above a thin arc, followed by the word CANSURE with the SURE portion in boldface (the CANSURE Logo):

[37] Thus, use of the CANSURE Logo also qualifies as use of the registered word mark CANSURE.

[38] I also note the Opponent’s position that the central issue in this case is the likelihood of confusion between the Mark and the Opponent's family of trademarks ending in “SURE”, which includes not only the Pleaded Product Brands but also additional, unregistered trademarks—including a “CANNASURE” trademark that the Opponent has used in association with services targeting the cannabis industry [written argument at paras 3 and 17]. However, the confusion analysis is to be done on a mark-to-mark basis and each mark must be considered separately [Masterpiece, supra]. The existence of a family of marks does not obviate the need to undertake a full comparative confusion analysis on a mark-to-mark basis [Benjamin Moore & Co Limited v Home Hardware Stores Limited, 2017 FCA 53]. Accordingly, I will consider the impact of the Opponent’s family of trademarks only as a surrounding circumstance.

The test for confusion

[39] Two trademarks will be considered confusing if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or in the same class of the Nice Classification system [section 6(2) of the Act]. Thus, the test for confusion does not concern confusion of the trademarks themselves but rather confusion as to whether the goods and services associated with each party’s trademark come from the same source. Where it is likely to be assumed that the applicant’s goods or services either come from the opponent or are approved, licensed, or sponsored by the opponent, it follows that the trademarks are confusing [see Glen-Warren Productions Ltd v Gertex Hosiery Ltd (1990), 29 CPR (3d) 7 (FCTD)].

[40] The test is to be applied as a matter of first impression in the mind of a casual consumer somewhat in a hurry, who sees the applicant’s trademark at a time when he or she has no more than an imperfect recollection of the opponent’s trademark and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the trademarks [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23]. Regard must be had to all the surrounding circumstances, including those set out in sections 6(5)(a) to (e) of the Act, but these criteria are not exhaustive and the weight given to each factor will vary in a context-specific analysis [Mattel USA Inc v 3894207 Canada Inc, 2006 SCC 22].

[41] I note that, in its written argument, the Opponent suggests the question in this case is whether a consumer with an imperfect recollection of the Opponent's family of trademarks, including the Opponent’s CANNASURE trademark, may be confused [at para 18]. However, as noted above, the confusion analysis is to be done on a mark-to-mark basis. Accordingly, I will apply the test from the perspective of the average consumer with an imperfect recollection of the CANSURE trademark, and consider the impact of the Opponent’s family of trademarks on the likelihood of confusion between the Mark and the CANSURE trademark as a surrounding circumstance.

Section 6(5)(e): Degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them

[42] The degree of resemblance between the trademarks at issue is often the factor likely to have the greatest effect on the confusion analysis and, thus, is an appropriate starting point [Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27]. Each trademark must be considered as a whole and assessed for its effect on the average consumer as a matter of first impression; it is not the proper approach to set the trademarks side by side and carefully examine them to tease out similarities and differences [Masterpiece; Veuve Clicquot]. However, it is still possible to focus on particular features of each trademark that may have a determinative influence on the public’s perception of it [per United Artists Pictures Inc v Pink Panther Beauty Corp (1998), 80 CPR (3d) 247 (FCA)].

[43] The Opponent submits that its CANSURE trademark is virtually identical to the Mark, differing only by two letters in the middle. However, the Applicant submits that the similarities in appearance are due to components of the CANSURE trademark that are highly suggestive and that there are significant differences in sound and ideas suggested when the trademarks are considered as a whole. In particular, the Mark has three syllables, which distinguishes it from CANSURE both visually and phonetically. Furthermore, its prefix CANNA is an invented term, unlike the prefix CAN, and suggests different ideas.

[44] The first portion of a trademark is often considered to be the most important for the purpose of distinction [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD)]. However, the preferable approach is to begin by considering whether there is an aspect of each trademark that is “particularly striking or unique” [Masterpiece at para 64]. In the present case, I find that the first portion of each trademark is also the more striking and unique aspect.

[45] In this regard, I find that the last portion—SURE—is a dictionary word suggestive of insurance, in the sense that insurance provides a measure of certainty and security (against a risk of loss or damage). I note the following definitions of “SURE” from Merriam-Webster (the only dictionary cited by a party, at Schedule 2 of the Applicant’s written argument) and from the Concise Canadian Oxford Dictionary, as well from the Multidictionnaire de la langue française in respect of the French counterpart “SÛRE” [see Tradall SA v Devil’s Martini Inc, 2011 TMOB 65, regarding the Registrar taking judicial notice of definitions]:

Merriam-Webster Dictionary at merriam-webster.com/dictionary

1a marked by or given to feelings of confident certainty

1b characterized by a lack of wavering or hesitation

2 admitting of no doubt: indisputable

3b bound to happen: inevitable

5 firmly established: steadfast

6 reliable, trustworthy

Concise Canadian Oxford Dictionary (2005)

2 convinced

4a reliable or unfailing

4b physically dependable; steady, secure

Multidictionnaire de la langue française Édition du 30e anniversaire (2018)

1 Certain… syn. assuré.
(loose translation: Certain… syn.confident.)

2 Qui ne comporte aucun danger … syn. sécuritaire.
(loose translation: That involves no risk… syn. secure.)

3 Assuré, sans erreur. … syn. solide.
(loose translation: Reliable, without error… syn. solid.)

[46] SURE is also the root and final portion of the English word “insure”, as well as its French counterpart “assure” [translation: insures]. Thus, the SURE portion of the parties’ trademarks reflects the name of the associated services, namely insurance services (services d’assurances), insurance underwriting, (souscription d’assurances), insurance brokerage, (courtage d’assurances), insurance consultancy (consultation en matière d’assurances), insurance claims processing (traitement des réclamations d’assurance), etc.

[47] The first portion of the parties’ trademarks is, in my view, the more distinctive and dominant portion. Although it too may be suggestive of the nature of the associated services, it provides the greater “content and punch” [per Masterpiece, supra, at paragraph 84]. In this regard, I find that both CAN and CANNA, in the context of the parties’ respective trademarks, would at most suggest an optional quality or particular subset of insurance (as further discussed below) rather than merely recalling the name “insurance” or a basic quality of insurance in general.

[48] Considering the parties trademarks as a whole, I find there to be a high degree of resemblance between them. The Mark is very similar to CANSURE visually, differing only by the addition of another N and A in the middle of the Mark. Although the Mark has an extra syllable in the middle, I find this syllable unlikely to receive much emphasis when the Mark is sounded. The pronunciation of the Mark would thus be almost identical to that of the Opponent’s trademark. These differences seem particularly subtle when considered as a matter of first impression on a casual consumer somewhat in a hurry who has only an imperfect recollection of the opponent’s trademark In addition, I consider there to also be a potential for overlap in the ideas suggested by the two trademarks.

[49] In the Applicant’s submission, the ideas suggested by the trademarks’ respective prefixes are different. Specifically, the prefix CAN in CANSURE would be viewed as the English word “can”, which means “know how to” and which is “used to indicate possibility” (citing the extract from Meriam-Webster at Schedule 2 of its written argument, which also includes the definitions “be physically or mentally able to” and “be inherently able or designed to”). In this respect, the Applicant notes that the Opponent often uses the slogan “You Can Be Sure” in conjunction with its trademark. Indeed, a box with the text “Simple | Convenient | Easy YOU CAN BE SURE” (or, in later materials, “Service | Speed | Expertise YOU CAN BE SURE”) is displayed on many of the promotional materials and advertisements as well as on the company website [Copeland Affidavit at Exhibits B, E, F, H]. One exhibited advertisement includes the text “Simple, Convenient and Easy – You can be sure with Can-Sure.” [IBABC Conference invitation at Exhibit E]. I also note the January 18, 2011, Brand Identity Guidelines for the CANSURE trademark, which confirm that “[t]he word ‘CanSure’ stands for ‘You Can be Sure’” and that “[t]his means that you can be sure this company will do the job for you” [Exhibit D]. A similar explanation is provided in the 2012 Annual Report provided to insurance carriers, which states that “Can-Sure” stands for “ ‘You Can Be Sure’ we will do our best to serve our customers with thoughtful, timely, creative insurance solutions” [Exhibit B, page 6].

[50] Alternatively, the Applicant submits that the prefix CAN would be viewed as a short form for the word “Canada”. In this respect, the Applicant notes that the design version of the Opponent’s trademark includes a maple leaf, which further denotes a connection with Canada. Again, the Brand Identity Guidelines confirm that “[t]he half Canadian flag represents this is a Canadian Company” [Exhibit D]. The 2012 Annual Report explains that the maple leaf in the logo “represents our independence and sole focus on the Canadian marketplace” [Exhibit B, page 6].

[51] On the other hand, the Applicant submits that the prefix CANNA in the Mark differs in that it is an invented term that does not suggest any ideas. Furthermore, even if CANNA is taken to suggest the “cannabis” plant, its meaning would be different than the meaning of CAN in the Opponent’s trademark.

[52] I agree with the Applicant’s submissions regarding the prefix CAN. I find that (i) “can insure” or “can be insured” in the sense of “able to insure” or “able to be insured” and (ii) “Canadian insurance” are the ideas likely to be suggested by the Opponent’s trademark as a whole, and that these ideas would likely be reinforced for any consumers who see the trademark in the context of the Opponent’s get-up and advertising. I find the notion of “can be sure”, in the sense of being confident that one is insured and secure from risk, to be a related notion. I also find that the idea of “Canadian insurance” (“assurance canadienne”) or of insurance that is “Canadian and reliable/secure” (“canadienne, sûre”) would be the most likely ideas suggested to a unilingual francophone consumer, albeit less directly.

[53] Although the Opponent submitted at the oral hearing that the idea of a “container” is another one that may be suggested by the word CAN, I do not find that this particular idea is at all likely to be suggested to consumers in the context of the parties’ insurance services as a matter of immediate impression or imperfect recollection. I make this finding despite the absence of evidence on what ideas would not come to mind. In assessing what consumers would understand from a combination of ordinary words, the Registrar must not only consider the evidence but also apply common sense, assessing the trademark not in isolation but in light of the products or services in question [Neptune SA v Attorney General of Canada, 2003 FCT 715; see also Candrug Health Solutions Inc v Thorkelson, 2008 FCA 100].

[54] That said, I disagree with the Applicant that consumers are unlikely to ascribe any meaning to the prefix CANNA in the context of the Mark. Bearing in mind that the Application specifically covers insurance both for the medical marijuana industry and in general, I am of the view that (i) the Mark is likely to suggest the idea of “cannabis insurance” when used in association with insurance products for that particular industry, but (ii) it might also suggest ideas such as “can assure” or “Canadian insurance”, particularly when sounded and/or when used in association with insurance products for other industries.

[55] Moreover, although the evidence shows that the Opponent also has a specific product brand (identical to the Mark) for its own cannabis insurance line, I find that the trademark CANSURE could, if used on its own in association with insurance for the cannabis industry, also suggest the idea of “cannabis insurance”.

[56] On balance, I find that the high degree of resemblance visually and phonetically, combined with some potential for overlap in ideas suggested, results in a high degree of resemblance overall.

[57] Thus, this important factor favours the Opponent.

Section 6(5)(a): Inherent distinctiveness of the trademarks and the extent to which they have become known

[58] Trademarks lacking in distinctiveness are only entitled to a narrow ambit of protection, in the sense that a greater degree of discrimination may fairly be expected from the public and relatively small differences between the trademarks may suffice to avert confusion [see GSW Ltd v Great West Steel Industries Ltd (1975), 22 CPR (2d) 154 (FCTD)].

Inherent distinctiveness

[59] Trademarks comprising rare, arbitrary, or invented words are generally considered to be more inherently distinctive than trademarks consisting of everyday dictionary words or words of a descriptive or suggestive character [see Joseph E Seagram & Sons Ltd v Canada (Registrar of Trade Marks) (1990), 33 CPR (3d) 454 (FCTD); and YM Inc v Jacques Vert Group Ltd, 2014 FC 1242].

[60] The Applicant submits that the Opponent’s trademark is highly suggestive, for the reasons discussed above, and that this is a very important factor, if not the determining factor, in the present case.

[61] In the Applicant’s submission, the Mark, even if taken to be suggestive of cannabis, is an invented word, and as such has greater inherent distinctiveness than the Opponent’s trademark, which is composed of two common dictionary words.

[62] I find that both parties’ trademarks have a low level of inherent distinctiveness, to the extent that CANSURE suggests insurance services from a Canadian source or for Canadians and CANNASURE suggests insurance services for the cannabis industry. In both cases, the prefix consists of a truncation of an ordinary English word.

[63] However, CAN may also be interpreted as the whole word “can”, suggesting ability. This alternate interpretation gives rise to a play on words, to the extent that the Opponent’s trademark may be interpreted as the elliptical-sounding phrase “can sure” while the Mark may be interpreted as the more grammatical phrase “can assure”. I find that this play on words lends a slight level of inherent distinctiveness, but more so in the case of the Opponent’s trademark, given the ambiguity of the phrase “can sure” as opposed to “can assure”, and less so in the case of the Mark, whose spelling more strongly suggests a truncation of the word “cannabis” than the beginning of the phrase “can assure”.

[64] I do not find that the possibility of interpreting the word “can” to mean a type of container, as suggested by the Opponent, is strong enough to add any additional inherent distinctiveness to either party’s trademark.

Extent known

[65] A trademark’s distinctiveness can be enhanced through use and promotion. Only the Opponent filed evidence in respect of such acquired distinctiveness, and the salient points of Mr. Copeland’s evidence in this regard may be summarized as follows.

• The Opponent is the successor-in-title to Can-Sure Underwriting Ltd. (Can-Sure Underwriting). (At the oral hearing, the Opponent’s agent confirmed that the references by Mr. Copeland and in its written representations to it being a “predecessor” in title were meant to indicate that it succeeded Can-Sure Underwriting in ownership of that company’s business, trademarks, and trade names, as is clear from the context and the documentary evidence as a whole.)

• Can-Sure Underwriting was formed in 2003 [para 2]. Its business assets and goodwill were purchased by Beacon Underwriting Ltd. in 2014 and both businesses were consolidated under the CANSURE brand in 2015 [para 2, with press releases at Exhibit A]. Beacon Underwriting Ltd. and its subsidiaries amalgamated under the name Specialty Program Group Canada Inc. the current name of the Opponent) effective January 1, 2021 [para 2, with certificate of amalgamation from the British Columbia corporate registry at Exhibit A].

• Can-Sure Underwriting was originally founded to provide brokers with commercial property and casualty (P&C) insurance products; the Opponent has since broadened its business in Canada to provide commercial and personal property and casualty brokering and underwriting services in over 40 different lines of business, including the cannabis industry, with bespoke insurance solutions for licensed cannabis retailers [para 3]. The business is described in company Annual Reports, which are annual “Contract Renewal Reports” provided to insurance carriers, as well as on the Opponent’s website at www.cansure.com (to which www.can-‍sure.com redirects) [para 4, Exhibit B]. The services described include underwriting as well as examination and payment of claims.

• Since 2003, CAN-SURE and CANSURE have been used as a house brand, first by Can-Sure Underwriting and then by the Opponent, in association with “Insurance services, insurance underwriting, processing of insurance claims and payment data” [para 5, with registrations at Exhibit C]. Can-Sure Underwriting initially started using the trademark and trade name CAN-SURE but, in 2010, modernized the associated logo to remove the hyphen, resulting in the CANSURE Logo [paras 6‒‍7, with Brand Identity Guidelines from 2011 at Exhibit D]. The brand has consistently been used as a trademark and trade name on the company website as well as on insurance applications, product sheets, promotional materials, signage, social media blasts, etc. [para 6]. The Annual Reports referenced above, which date from 2012 and 2014, feature the CANSURE Logo on the cover and in the footer of every second page [Exhibit B].

• The CANSURE Logo has been consistently displayed on the company website, as can be seen from versions of webpages from can-sure.com (2013, May 2018), can-sure.ca (2014, 2015, 2016), and cansure.com (August 2018 to 2021) archived by the Internet Archive Wayback Machine [para 9, Exhibit H] and from a printout made on January 14, 2022 [Exhibit B]. Data received from analytics provider Seo 5 Consulting showed 1,812 visits to the can-sure.com website (nearly half from new visitors) in the one-month period starting January 12, 2013, and 7,512 visits in the 5-week period starting January 1, 2015, with the top locations of visitors being Canadian cities [para 10]. Numbers rose after consolidation with Beacon’s businesses: the cansure.com website received over 1.5 million page views (over 1.2 million of them unique) in the four-year period from December 29, 2017 to January 4, 2022, with 18% of the over 230,000 users during this period being identified by their language setting (en-ca or fr-ca) as being Canadian [para 10, Exhibit H].

• The CANSURE Logo is displayed on the insurance application forms available for download on the website, as can be seen from the exhibited examples dating from 2011 to 2014 and “more recent”, and from the images of application cover pages from 2021 [paras 8 & 13, Exhibits E, F, G & J]. Mr. Copeland does not confirm the dates of the “more recent” forms, but numerical codes at the bottom of the pages suggest dates from April and July 2015, December 2017, and July and September 2018. I note that the examples from 2018 are a pair of CANNASURE applications for the Licensed Cannabis sector (one for retail/distribution and one for producers/manufacturers) and a CARGOSURE cannabis transportation supplement for the Inland Marine sector, respectively. (The “Cannabis Product Recall Application” referenced by Mr. Copeland does not appear to be included in the exhibit.) I will further discuss the Opponent’s use of the trademark CANNASURE in my analysis of the additional suffounding circumstances.

• Various advertisements and promotional materials have featured the CANSURE Logo. The Annual Reports from 2012 and 2014 describe how emphasis was placed on producing “a series of unique and eye-catching advertisements” [2012, page 16] that are “fresh, bold and modern, distinguishing ourselves as unique in the industry” [2014, page 25], which resulted in a “25% increase in web traffic” when the new advertising campaign was put into effect in January 2015 [ibid.].

• The advertisements and promotional materials include e-mail blasts and online advertising as well as advertisements in Canada-wide industry publications and at various conferences [paras 6‒‍7, with footnote 2]. The exhibited examples dating from February 16, 2011 to January 18, 2014 [Exhibit E] and from “2017 and prior” to 2021 [Exhibit F] include what appear to be brochures and product information sheets; press releases and announcements; magazine and newspaper advertisements; e-blasts and online advertising for digital magazines, social media, and mobile applicationss; images for e-mail signatures; convention and tradeshow signage and event posters; digital signage and advertisements for television monitors in office lobbies, at insurance conferences, etc.; and promotional items such as greeting cards, envelopes, and calendars, as well as items for tradeshows, prize draws, and broker visits (including by way of example push pin sets, mints, pens, note pads, and charging/data transfer cables). Some additional examples of online and magazine advertisements are shown at pages 25 and 26 of the 2014 Annual Report [Exhibit B].

• The e-mail blasts are sent to tens of thousands of retail insurance brokers,including clients in British Columbia, Alberta, Saskatchewan, Manitoba, and Ontario [para‍ 7].

• By way of example for social media reach, Mr. Copeland states that the Opponent had 2,800 followers on LinkeIn in 2022 [table at para 7].

• Since at least 2016, advertising has included the following industry publications, with 2016 circulation figures from the Opponent’s marketing team given in brackets: Canadian Underwriter (readership of 15,717, with one online advertisement generating over 2,200 hits and 507,000 impressions), Insurance Business (16,325 subscribers, with one online advertisement generatingover 74,000 impressions in the first half of the year (and over 225,000 in 2017)), BC Broker Magazine, AB Broker Magazine (readership of 6,200), MB Broker Magazine (readership of 8,400), SK Broker Magazine, and Atlantic Broker Magazine [para 7, with footnote 1]. Advertising in 2018 included rotating advertisements (rotating after 15,000 impressions) in Canadian Insurance newsletters [para 16]. Advertising since at least 2020 has also included Ontario Broker Magazine and advertising through Glacier Media that ran in 11 local newspapers in British Columbia and their websites [para 7, Exhibit F]. I note that the 2016 readership levels for Canadian Underwriter and AB Broker Magazine, while somewhat higher, are of the same general order of magnitude as the current circulation figures that Ms. Cain obtained from these publications’ websites in 2022. Her information also suggests that BC Broker Magazine and the print version of Ontario Broker Magazine have comparable circulation to the publications from the Prairie provinces; however, I note that Mr. Copeland does not specify whether the Opponent advertises in the print or digital versions of Ontario Broker Magazine (the digital version having higher circulation).

• Advertising in convention, tradeshow and event guides, magazines, and banners has included brokers’ conventions in British Columbia (2011, 2012, 2017, 2018, 2020), Saskatchewan (2017), Manitoba (2017), Ontario (2017, 2018), and Alberta (2018), as well as the Canadian Bike Show (2018), the Vancouver Motorcycle Show (2020), and the Insurance Business Canada Awards Virtual Guide (2021) [para 7, Exhibit F].

• From 2018 to ‍2021, the Opponent has sponsored a Broker of the Year award at the Insurance Business Canada Awards [para 11]. The Opponent has also sponsored other events, such as the Marine Drive Ladies Golf Tournament and the 34th Women of Insurance Banquet [para 7]. I note in particular an e-mail blast dated September 12, 2018, announcing sponsorship of a November 28, 2019, Cannabis Cover Masterclass Summit, where the Opponent was a title sponsor and presenter [Exhibit F].

• Marketing and advertising expenditures were over $140,000 in 2015, over $215,000 in 2017, and over $195,000 in 2018; the Opponent spent over $1.1 million altogether from 2017 to 2021 [para 16].

• The CANSURE Logo has been displayed in connection with press releases on the websites of Insurance Business Canada (insurancebusinessmag.com) and Canadian Underwriter (canadianunderwriter.ca) between 2016 and 2022 [para 11, Exhibits A, I].

• The Opponent and its employees have also been referenced in articles written by third parties for industry publications such as Insurance Business—including recognition for expertise in the cannabis industry, and for standing out as a “one-stop shop” for brokers [para 11, Exhibit I].

• The Opponent has been repeatedly recognized at the annual Insurance Business Canada Awards [para 11, Exhibits F, I]. It has been rated as a Five Star MGA (managing general agency) five times from 2016 to ‍2021, and has also been a finalist for Underwriter of the Year, a finalist for Industry Employer of Choice, a three-time finalist for CEO of the Year, and a three-time finalist for Advertising Campaign of the Year [para 11, and September 12, 2018 e-blast at Exhibit F]. The Opponent won the Armour Insurance MGA of the Year Award at the 2019 awards held in Toronto, Ontario [para 11, and 2019 press release at Exhibit I; see also 2020 full-page advertisements for industry magazines at Exhibit F].

• The Opponent’s press release regarding the MGA of the Year award explains that finalists are determined based on nominations, and winners chosen by a panel of judges representing various areas in the industry, who assess criteria that include various measures of the range and quality of services [Exhibit I]. The Opponent submits that receiving this accolade serves as evidence of how its CANSURE services stand out in the marketplace. The Opponent further submits that being a three-time finalist for Advertising Campaign of the Year confirms the distinctive and eye-catching nature of its advertisements.

• The only client counts provided are in the exhibited Annual Reports, whichindicate an increase in the number of brokerage clients from 1250 in 2012 to 2500 in 2014, with over 75 per cent of premiums being generated in British Columbia and most of the remainder in the Prairie provinces [para 4, Exhibit B]. Otherwise, Mr. Copeland states that the Opponent’s gross written premium rose from over $30 million in 2010 to over $300 million in 2021 and, by January 2022, the market value of the Cansure business was over $400 million [para 17].

[66] The Applicant submits that there is little evidence of the extent of use and advertising, with the volume of e-mail blasts being the only evidence of extent of distribution, and with the advertising figures being relatively insignificant and not broken down in any way. In the Applicant’s submission, little can be determined from the market value of the business or from the gross written premium in the absence of any explanation as to the significance of those figures. Conversely, the Opponent submits that its uncontroverted evidence shows a successful business.

[67] I am satisfied from the evidence above that the Opponent has become known to a significant extent in the relevant marketplace. Regardless of the exact circulation of the industry magazines referenced in Mr. Copeland’s affidavit or of the cost of advertising therein, it appears the Opponent runs multiple advertisements annually in the relevant publications for its market, both at the provincial level and nationwide, among other marketing efforts; has a consistent presence at industry trade shows and conferences; and has received meaningful industry recognition, bearing in mind that the Opponent’s client base appears to consist of brokers who are themselves service providers in the industry.

[68] Conversely, there is no evidence that the Mark has become known in Canada to any extent.

Conclusion with respect to inherent and acquired distinctiveness

[69] I find that the Opponent’s CANSURE trademark and the Mark each possess a relatively low level of inherent distinctiveness; however, it appears from the evidence that the Opponent’s CANSURE trademark has become known to a significant extent whereas there is no evidence of the Mark having become known at all. Accordingly, the section 6(5)(a) factor favours the Opponent.

Section 6(5)(b): Length of time the trademarks have been in use

[70] Although Mr. Copeland attests to use of the CANSURE trademark in Canada since 2010, and of the CAN-SURE variation dating back to 2003, the representative examples of use are provided as of 2011. On the other hand, there is no evidence that the Applicant has commenced use of the Mark in Canada, and Mr. Copeland attests in his affidavit that he is not aware of any such use [para 18].

[71] Accordingly, this factor favours the Opponent.

Sections 6(5)(c) & (d): Nature of the services, business, and trade

[72] Under a registrability ground of opposition, the statements of goods and services in the applicant’s application and in the opponent’s registration must be assessed, having regard to the channels of trade that would normally be associated with such goods and services [Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); Henkel Kommandit­gesellschaft auf Aktien v Super Dragon Import Export (1986), 12 CPR (3d) 110 (FCA)]. Each statement must be read with a view to determining the probable type of business or trade intended rather than all possible trades that might be encompassed by the wording and evidence of the parties’ actual trades is useful in this respect [see McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA)].

[73] The services covered by the Application are essentially “insurance brokerage”, “insurance services, namely, underwriting and issuance of general and professional liability, property, products liability, business income, vehicle and crop insurance”, and “consulting and information concerning insurance”—both in general and “for insurance to the medical marijuana industry”.

[74] The Opponent’s CANSURE trademark is registered for use in association with “Insurance services”, “insurance underwriting”, and “processing of insurance claims and payment data”. The Opponent has furnished evidence of use of the trademark in association with each of these services, as discussed above. The archived webpages from of the Opponent’s website at cansure.com at Exhibit H list various product lines, including commercial liability, professional liability, property insurance, wholesale & retail trade, equipment breakdown, trucking & transportation, and hobby farm & ranch lines, among others. Since 2013, specialized industry products have been featured, such as fitness clubs & instructors insurance, construction insurance, welding contractors & consultants, medical products, and others.

[75] With respect to the more general term “insurance services”, I note that, as of at least 2019, the services offered to brokers include a self-service online portal allowing brokers to quote, bind, and issue policies, and ecommerce support by way of direct-to-customer portals that brokers can embed on their own websites to allow customers to purchase the Opponent’s insurance products directly [Exhibit F]. Recent advertising also invites customers to contact the Opponent for thoughtful bespoke solutions and creative approaches for hard to place and complex risks and to subscribe to the Opponent’s electronic newsletter [Exhibit F]. Mr. Copeland specifies in particular that the Opponent offers “bespoke insurance solutions to meet the needs of licensed cannabis retailers” [para 3].

[76] Thus, it appears that the nature of the parties’ services is largely the same as regards the Applicant’s insurance underwriting and issuance services and at least closely related, if not largely the same, as regards the Applicant’s insurance brokerage and consulting & information services, which could also be said to fall under the umbrella of “insurance services”. I would also note that the statement of services in the Opponent’s Registration is broad enough to cover insurance to the medical marijuana industry and, indeed, the Opponent is already offering insurance products for cannabis producers, manufacturers, distributors, and retailers. Furthermore, I consider offering insurance for the cannabis industry following its legalization in Canada to be a natural extension of the Opponent’s portfolio of specialized industry products, and indeed Mr. Copeland attest that the Opponent began developing its product line in this direction before the Application was filed [para 12].

[77] As regards the nature of the business and trade, Can-Sure Underwriting was originally founded to provide commercial insurance products, but the Opponent has since broadened its business in Canada to cover both commercial and personal product lines, available through licensed brokers and online, including for the cannabis industry, as discussed above [para 3, Exhibits B, F]. There is no evidence regarding the nature of the Applicant’s business nor regarding its trade channels and clientele. Nevertheless, given the nature of the services at issue, and in the absence of evidence to the contrary, I am prepared to infer that the channels of trade for the parties’ services would be the same or similar. Indeed, in its written argument, the Applicant concedes that there is some overlap in the nature of the services and trade [para 27].

[78] I note that the degree of care of the relevant customer approaching a purchasing decision may vary with the circumstances [Mattel, supra; Clorox Company of Canada, Ltd v Chloretec SEC, 2020 FCA 76]. However, the test for confusion remains one of both first impression and imperfect recollection, even when the goods and services are expensive or important and likely to be researched by the prospective purchasers [Masterpiece, supra]. In the present case, I accept that sophisticated brokers and purchasers seeking important coverage are likely to be more alert and attentive to the trademarks encountered than a casual consumer making inexpensive minor purchases. This attitude decreases the likelihood of an error being made, even upon first impression and with imperfect recollection. Even so, the Supreme Court has held that, in circumstances where a strong resemblance suggests a likelihood of confusion, and the other statutory factors do not point strongly against a likelihood of confusion, factors such as cost are unlikely to lead to a different conclusion [Masterpiece, supra].

[79] In view of the foregoing, I find that the section 6(5)(c) and (d) factors favour the Opponent.

Surrounding circumstance: State of the register and marketplace

[80] The Applicant also furnished evidence on the state of the register and the state of the marketplace in an effort to establish that trademarks including the element “CAN” or “SURE” are common in the insurance trade. The Applicant submits that this is a key factor in the present case.

[81] The common occurrence of a certain element in trademarks tends to cause purchasers to pay more attention to the other features of the trademarks and to distinguish between them by those other features [see Maximum Nutrition Ltd v Kellogg Salada Canada Inc (1992), 43 CPR (3d) 349 (FCA); and Polo Ralph Lauren Corp v United States Polo Assn (2000), 9 CPR (4th) 51 (FCA)]. However, as noted in Kellogg, this principle requires that the trademarks containing the common element be “in fairly extensive use" in the relevant market.

[82] Where a large number of relevant trademarks are identified on the register, at least some use of the common element may be inferred; where the number of relevant trademarks identified is not large, evidence of such use needs to be furnished [see McDowell v Laverana GmbH & Co KG, 2017 FC 327; and Canada Bread Company, Limited v Dr Smood APS, 2019 FC 306]. Relevant trademarks include those that (i) are registered or are allowed and based on use; (ii) are for similar goods and services as the trademarks at issue, and (iii) include the element at issue in a material way [Sobeys West Inc v Schwan’s IP, LLC, 2015 TMOB 197, aff’d 2017 FC 38].

[83] It has been held that the exact number of trademarks needed to establish the common adoption of a component likely depends on the facts of a given case [Hawke & Company Outfitters LLC v Retail Royalty Company, 2012 FC 1539]. Indeed, it is “not the quantity or sheer numbers that count but rather the quality of evidence showing actual use of the common [element] in the relevant industry in Canada” [Ecletic Edge Inc v Gildan Apparel (Canada) LP, 2015 FC 1332 at para 92].

[84] The Applicant cites cases where as few as seven registrations were found to be a sufficient basis from which to draw conclusions about the state of the market. However, cases predating the Federal Court’s guidance in Laverana must be approached with caution. In Laverana, the Court found that, absent evidence of actual use, having 10 registered trademarks featuring the word HONEY, in the names of seven different owners, was insufficient for a finding that HONEY was common to the trade. Subsequently, in McDowell v The Body Shop International PLC, 2017 FC 581, rev’g 2016 TMOB 150, the Federal Court found that evidence of at least 13 relevant registrations did not justify drawing an inference that the shared element was common. By contrast, in Kellogg, where the Federal Court of Appeal inferred that the element NUTRI had been commonly adopted in the food trade as suggestive of a desirable attribute of foods (particularly health foods), the evidence demonstrated over 47 registered trademarks and as many trade names containing that element. In those circumstances, the court found that it would be inappropriate to effectively grant the opponent an exclusive proprietary right in the word NUTRI in respect of food products.

[85] In the present case, Ms. Isaj’s affidavit provides the particulars of various registrations and pending applications for trademarks containing the element CAN or SURE, owned by third parties for use in association with insurance and insurance-related services, including underwriting securities and other financial or brokerage services [Exhibit A]. She also provides screenshots of various webpages displaying trademarks, trade names, domain names, and/or email addresses containing the element CAN or SURE, including some archived by the Wayback Machine over the years [Exhibits C to V]. The trademarks displayed on the webpages appear to be ones represented by the registrations and applications [for the Applicant’s proposed correlations, see paragraph 41 and Schedule 1 of its written representations].

[86] The Opponent submits that an inference of no use in Canada should be drawn for the trademarks omitted from Ms. Isaj’s website printouts. However, the Applicant submits that its website evidence is not meant to establish the number of trademarks in use but merely to support the inferences that can be drawn from the state of the register. In the Applicant’s submission, the number of trademarks on the register is sufficient for an inference that the terms CAN and SURE are each in common use as components of trademarks for insurance and related services, and the website evidence supports this inference by confirming that at least the particular trademarks shown therein are in use.

[87] I am not prepared to reach the conclusion put forward by the Opponent, since trademarks absent from the website printouts may be in use other than on the Internet. Conversely, where the evidence shows that a foreign entity’s trademark is used online but the exhibited webpages appear to target only that foreign country, use in Canada seems unlikely. However, this is not to say that those trademarks should be excluded from the state of the register. Indeed, the inference that may be made from a large number of relevant references on the register is that at least some of those reference are in use, while others may not be.

[88] The Opponent further submits that the relevant references in this case are those that have no distinctive design element, incorporate the component CAN or SURE in a “punchy” or “catchy” way similar to CANSURE, and cover insurance services per se, specifically in respect of cannabis. Conversely, the Applicant submits that it would be inappropriate to exclude design or other elements if customers would still see CAN or SURE as a component of the trademark, or to exclude the trademarks covering other financial services, which are still closely related to insurance services. I find that the relevant references are those that feature CAN or SURE as a discrete element in a coined word, regardless of any accompanying designs, and that cover either insurance services or financial services that are broad enough to involve insurance. Given the visual similarity and phonetic ambiguity that may be involved (for example, the Mark may be read as “CANNA-SURE” or “CAN ASSURE”), I also find relevant coined words ending in the sequence “INSURE” or “ASSURE”, as well as two-word phrases beginning or ending in the word “SURE”.

The CAN element

[89] Considering first the sequence “CAN”, it appears in 20 relevant trademarks. This count does not include the design mark “CAN ASSISTANCE (Logo seul), which has no word elements; the trademark THE CANADIAN TIRE SURE LIFE INSURANCEPLAN, in which “CAN” is not a discrete element but rather part of the word CANADIAN; or the two formalized applications for which no evidence of use has been provided. Not all of the service descriptions for these 20 entries explicitly reference insurance; however, I find “financial services, namely, banking and mortgage services” (WELCOME2CAN) broad enough to cover mortgage insurance; I find “[translation] financial consultancy and portfolio management services” (NATCAN) broad enough to cover consultancy on the insurance considerations that would typically affect a financial portfolio; and I find “financial services, namely … brokerage services” (CANACCORD’S ALLIANCE PROGRAM) broad enough to cover “insurance brokerage services” (which are in any event covered by the related CANACCORD GENUITY registration).

[90] That being said, I note that several of the registered owners each have two or three registrations featuring the same CAN-prefixed coined word, namely Canaccord Genuity (CANACCORD, CANACCORD GENUITY, CANACCORD’S ALLIANCE PROGRAM); the Association d’Hospitalisation Canassurance (CANASSISTANCE, CANASSISTANCE & Design); Patchell Holdings (CAN-FIT PRO, CANFITPRO Design, CANFITPRO & Design); and Can-Global Alliance (CAN-GLOBAL ALLIANCE INCORPORATED, CAN-GLOBAL ALLIANCE INCORPORATED & Design). In my view, encountering the same CAN-prefixed trademark with and without a design or with and without additional descriptive wording or sub-brands does not increase a consumer’s ability to distinguish between different CAN-formative trademarks. Accordingly, I will count such variations on a single CAN-formative trademark only once.

[91] The relevant references, along with the corresponding exhibits showing use and the years of any archived webpages, where applicable, are listed in the chart below:

Reg/App No. (app status)	Trademark	Owner	Use Exhibit (archive year)
TMA416499	CANACCORD	Canaccord Genuity Corp.	--
TMA1,099,068	CANACCORD GENUITY
TMA730,206	CANACCORD’S ALLIANCE PROGRAM
2,020,894 (formalized)		Canam Insurance Services (2018) Limited	C
TMA688,117	CANASSURANCE	Association d’Hospitalisation Canassurance	--
TMA362,563	CANASSISTANCE
TMA602,761
TMA1,011,246	CANFIN	Canfin Holdings Inc.	--
TMA638,606	CAN-FIT-PRO	Patchell Holdings Inc.	--
TMA977,630
TMA807,306
TMA929,375		Can-Global Alliance Incorporated	E
TMA929,371	CAN-GLOBAL ALLIANCE INCORPORATED
TMA1100,620	CANTRUST FINANCIAL	Cantrust Financial Services Inc.	F (2015, 2017, 2020, 2021)
TMA499,545	CANUS	The Canada Life Assurance Company	G (2021)
TMA546,511	CANEU		D (2021)
TMA847,591	EventCan Plus Insurance	ENCON Group Inc.	--
TMA381,117	NATCAN	Banque nationale du Canada	--
TMA1,002,508	VOXCAN	La compagnie d’assurance Belair	--
TMA932,945	WELCOME2CAN	Equitable Bank	--

[92] Based on the foregoing, I find that Ms. Isaj’s evidence includes essentially 14 relevant CAN-formative trademarks, in the names of 12 different owners. It appears that five of these trademarks were in use at the date of Ms. Isaj’s affidavit, in advertising insurance and insurance-related services for Canadians online. However, I note that two of the trademarks in use—CANUS and CANEU—appear to be English and French versions of the same brand (for insurance aimed at Canadian employers with U.S. employees). Moreover, even if the exhibited webpages advertise services for Canadians and meet the requirements for trademark use, I find their availability to be of limited significance in itself. The existence of a webpage does not mean that it has been visited by Canadians or that any of the trademarks displayed on the page have acquired any level of reputation in the Canadian marketplace [in this regard, see Candrug Health Solutions Inc v Thorkelson, 2007 FC 411]. In the absence of information on webpages’ reach or any indication that Canadians have actually availed themselves of the associated services, such advertising does not establish that the trademarks displayed therein have been brought to the attention of insurance brokers or consumers in Canada to any notable extent.

[93] In sum, the number of relevant trademarks on the register is not large and the evidence of use in the marketplace is limited to the existence of only four company websites, with no evidence of them having been accessed by Canadians other than the Applicant’s agent and no confirmation that the advertised services are actually available to be performed in Canada. In the circumstances, I find myself unable to conclude that the CAN element is “in fairly extensive use” in Canada or that consumers in the market for insurance services in Canada are accustomed to making fine distinctions between CAN-formative trademarks.

The SURE element

[94] Regarding the sequence “SURE”, it appears in 50 relevant trademarks for use in association with insurance and insurance-related services. This count does not include the six pending applications for which no evidence of use in Canada was provided. Nor does it include the trademarks, ASSUREX GLOBAL, ASSUREX INTERNATIONAL & Design, Surex or UNSURE-ANCE, since I do not consider “ASSUREX”, “SUREX”, or “UNSURE-ANCE” to feature “SURE” as a discrete element in a coined word or short phrase. I have, however, included the trademark VacanSures in the analysis. Given the similarity of its construction to that of the parties’ trademarks, I find the plural form to be a sufficiently minor deviation. I have also included the trademark THE CANADIAN TIRE SURE LIFE INSURANCEPLAN—although as a whole it is not a short phrase, the trademark may also be seen as the core element SURE or SURE LIFE with the addition of a house brand and descriptive wording.

[95] As before, the list of relevant trademarks includes instances where multiple registrations in the name of a single owner feature the same SURE-prefixed coined word. For the purposes of this analysis, I am counting each of the following sets of variations on a single SURE-formative trademark only once: the ACRISURE and ACRISURE EDGE word and design marks; the BENESURE word and design marks; the set of three ISURE/ISURE.CA trademarks; the DEALERSURE word and design marks; EQUISURE and EQUISURE FINANCIAL; HOLIDAYSURE PLAN and HOLIDAYSURE TRAVEL INSURANCE & Design; PrimaSure, PrimaSure Multi, and PrimaSure Uno; and the SINOSURE word and design marks.

[96] The relevant references, along with the corresponding exhibits showing use and the years of any archived webpages, where applicable, are listed in the chart below:

 

Reg/App No. (app status)	Trademark	Owner	Use Exhibit (archive year)
TMA834,580	ACCIINSURE	Banque nationale du Canada	--
TMA1,059,560	ACRISURE	Acrisure, LLC	H (from U.S.A.)
TMA1,059,558			--
TMA1,041,075	ACRISURE EDGE
TMA1,041,089
TMA577,276	ASSISTANCE-USURE	Ford Motor Company	--
TMA833,246	BE SURE	CCV Insurance & Financial Services Inc.	J (variant “Be Sure You’re Protected”) (2013, 2016, 2018, 2021)
TMA790,806	BENESURE	The Manufacturers Life Insurance Company	--
TMA831,890
TMA724,451	BSURE@ISURE.CA	Limelight Holdings Ltd.	O (2021)
TMA723,178	ISURE		O (2008, 2012, 2016, 2021)
TMA1,040,997	ISURE
TMA727,989	ISURE.CA
TMA980,829	MYSURE		O (2016, 2021)
TMA885,351	CRIMESURE	Liberty Mutual Insurance Company	--
TMA511,995	DEALERSURE	Arthur J. Gallagher Canada Limited	K (2021)
TMA515,596			--
TMA836,255	SURE SOLUTIONS	Gallagher Benefits Services (Canada) Group	--
TMA775,358	Eco-Sure	NFP Canada Corp.	--
TMA956,880	Engsure	Unigroup General Insurance Ltd.	--
TMA541,225	EQUISURE	Equisure Financial Network Inc.	--
TMA541,226	EQUISURE FINANCIAL NETWORK
TMA808,214	ERASSURE	Estate Risk Protection Plan Inc.	L (2012, 2016, 2018, 2021)
TMA1,037,275	GO SURE	Gore Mutual Insurance Company	--
TMA1,067,065	SUREAWAY	Green Shield Canada	S (2021)
1,974,595 (searched)	GSC sureHEALTH		M (2020, 2021) (GSC and SUREHEALTH trademarks displayed separately)
TMA849,925	HealthSure	Acure Health Corp.	N (2015, 2018, 2021)
TMA447,538	HOLIDAYSURE PLAN	Royal Bank of Canada	--
TMA469,298
TMA559,045	VacanSures
TMA531,749	MARINASSURE	Marsh Canada Limited	P
TMA862,372	PrimaSure	Nexim Canada Inc.	--
TMA862,374	PrimaSure Multi
TMA862,373	PrimaSure Uno
TMA654,961	SINOSURE	China Export & Credit Insurance Corporation	R (from China)
TMA858,377
TMA847,242	SITESURE	Chubb Limited	--
TMA688,540	SUREFLEET SOLUTIONS	RSA Insurance Group Limited	--
TMA841,750	SUREGAIN	William Maidment	--
TMA819,711	SURE-SKI	Mainway Hunter Creighton	--
TMA819,710	SURE-SWING
TMA1,005,696	SURE TRUST	Canadian Imperial Bank of Commerce	--
TMA333,718	TEL-SURE	Johnson Inc.	--
TMA855,773	THE CANADIAN TIRE SURE LIFE INSURANCEPLAN	Canadian Tire	--
TMA217,878	TRAVELSURE	North American Air Travel Insurance Agents Ltd.	--
TMA824,597	WEDENSURE	NW Insurance Brokers Ltd.	--
TMA722,423	WELLSURE	F.P. Butler Inc.	U (2019, 2020, 2021) (from USA)
TMA757,575	WINDOORSURE	Belpac Capri Insurance Brokers Ltd.	--
TMA1,052,436	WINSURE	Winfield Solutions, LLC	--
TMA889,484		Zipsure Insurance Brokers Limited	V (variant omitting “.ca”) (2013 (word mark), 2016, 2019, 2021 (omitting “.ca”))

[97] In this case, I count essentially 38 relevant SURE-formative trademarks (37 being the subject of one or more registrations and one being applied for), in the names of 33 different owners. (I note that Royal Bank of Canada’s HOLIDAYSURE and VacanSures trademarks appear on their face to possibly be English and French versions of the same brand, but without evidence of the manner of use, it is not possible to confirm.) It appears that 14 of the 38 trademarks, in the names of 11 different owners, were in use as trademarks, trade names, domain names and/or email addresses at the date of Ms. Isaj’s affidavit, in advertising insurance and insurance-related services for Canadians online. However, three of these trademarks, namely ACRISURE [Exhibit H], SINOSURE [Exhibit R], and WELLSURE [Exhibit U], are registered by foreign entities whose websites appear to originate outside Canada. Although the WELLSURE trademark is advertised as being “worldwide”, the furnished webpages provide no details in this regard, and none of the webpages provided with respect to any of these three trademarks indicates whether the associated services are available in Canada. I would also note that the trademark BE SURE [Exhibit J] is only displayed on the archived webpages up to the year 2021, being replaced in 2022 with the phrase “Be Sure You’re Protected”, which raises a question as to whether use of the trademark BE SURE has been discontinued. I do not consider the phrase “Be Sure You’re Protected” to feature “SURE” or even the two-word phrase “BE SURE” as a discrete element or to be an acceptably minor variation of the trademark BE SURE.

[98] In the end, I find that 10 relevant trademarks, in the names of 7 different owners, are displayed on the webpages from 2022 explicitly referencing Canada: SUREAWAY and SUREHEALTH (same owner); ISURE, BSURE@ISURE.CA and MYSURE (same owner); DEALERSURE; ERASSURE; HEALTHSURE; MARINASSURE; and ZIPSURE.

[99] Again, I find the mere existence of such webpages to be of limited significance in the absence of information on the number of Canadians having accessed the webpages or availed themselves of the associated services. Nevertheless, the advertising appears on its face to be from active websites—indeed, some of the webpages have slightly evolved over the years—and there is nothing to suggest the advertised services are not actually being offered in Canada. Ultimately, given the slightly greater number of examples provided than for CAN, I am prepared to accept that at least some of the advertising using SURE-formative trademarks has been seen by prospective purchasers of insurance services in Canada..

[100] Considering the evidence in respect of SURE-formative trademarks in its entirety, I am prepared to infer from the registration of 37 trademarks, in the names of 33 different owners, that at least some of those 37 trademarks are in use in the Canadian marketplace. This inference is supported by the fact that 9 of those registered trademarks, plus one applied for, are displayed in online advertising that has at least been made available to consumers in Canada—in some cases for several years. Overall, I find the level of evidence provided sufficient for an inference that the element SURE has been commonly adopted for trademarks in the insurance field, particularly as a suffix. That said, in the absence of evidence on the extent to which such trademarks are actually in use, I am only prepared to infer that consumers in the market for insurance services in Canada are accustomed to distinguishing between SURE-suffixed trademarks to a limited extent.

Conclusion on the state of the register and marketplace

[101] It is important to keep in mind that the resemblance between the parties’ trademarks in the present case goes beyond the shared suffix SURE to include also the shared prefix CAN. The Applicant submits that, in light of the suggestive nature and commonality of each of these elements individually, the relevant trademarks to consider are not restricted to ones combining both elements. However, as noted above, I am unable to conclude to the common adoption of the CAN element on the evidence provided. I accept that Canadians would be somewhat accustomed to seeing trademarks ending in “SURE” in the insurance field, and might therefore pay more attention to the initial portion of such trademarks. However, the evidence falls short of establishing that purchasers of insurance services in Canada are used to distinguishing trademarks as similar as those of the parties, and in particular trademarks comprising both CAN and SURE.

[102] With respect to the suggestive nature of the shared elements, I appreciate that, in Assurant, Inc v Assurancia Inc, 2018 FC 121, the Federal Court found that small differences sufficed to distinguish between the parties’ trademarks ASSURANT and ASSURANCIA, both for use in association with services related to the insurance field, in view of the fact that the shared element “ASSURAN” was highly suggestive. The Court found the suffixes T and CIA in that case sufficient for the purposes of distinction. However, in Assurant, searches revealed 69 relevant trademarks containing “ASSUR” in the insurance field as well as 130 brokers and 37 insurers using “ASSURAN” in their business or company names. The large number of relevant hits allowed the Court to conclude that the shared element was common in the industry. The evidence in the present case does not rise to the same level. Furthermore, in Assurant, the critical difference gave the trademarks a different ending, rendered them “dissimilar in sound”, and created a conceptual difference in that the applicant’s trademark ASSURANCIA was an invented word, in contrast to the opponent’s trademark, which was the ordinary French dictionary word ASSURANT. The present case is distinguishable: the difference between the trademarks is more subtly located in the middle of the marks, which remain very similar in sound, and are both invented words coined in a similar way. In the circumstances, I do not find that the suggestive nature of the trademarks reduces the importance of them sharing the CAN element in addition to the suffix SURE.

[103] Of the trademarks put forward by Ms. Isaj, none contain both CAN and SURE (or a phonetic equivalent) as discreet elements within the same coined word. Although both THE CANADIAN TIRE SURE LIFE INSURANCE PLAN and VacanSures include the sequence “CAN”, it is not a discreet element in either case, being part of the English word “CANADIAN” in the first trademark and part of the French word for “vacation”, namely “VACANCES” (creatively spelled “VacanS”), in the second. Furthermore, although the sequence “SUR”, as a phonetic equivalent of “SURE”, occurs with the element CAN in the trademarks CANASSURANCE, CanAm Insurance Design, and EventCan Plus Insurance, it does so as part of the words ASSURANCE and INSURANCE and not as a discreet element. All of this notwithstanding, I find the trademarks CANASSURANCE and VacanSures to be particularly relevant to the analysis, as both feature the syllable CAN followed by the syllable SURE (or a phonetic equivalent). However, neither of these trademarks has been shown to be in use, and I am unable to infer a common adoption of the CAN and SURE elements together based on only two trademark registrations.

[104] I note that the Applicant’s state-of-the-register evidence includes several pairs of SURE-formative trademarks that share more than just the SURE element, such as, for example, ACCINSURE / ACRISURE, ECO-SURE / EQUISURE, WINSURE / WINDOWSURE, SUREX / ASSUREX GLOBAL, BE SURE / BENESURE, BE SURE / BSURE@ISURE.CA, and SUREHELATH / HEALTHSURE. However, only in the last two cases has evidence of contemporaneous use has been furnished and, as noted above, this evidence does not establish whether any specific trademarks have come to consumers’ attention to any particular extent. Under the circumstances, I am unable to conclude from the evidence that consumers are accustomed to making fine distinctions between similarly-prefixed SURE-formative trademarks in general.

[105] Ultimately, the number of registered trademarks that end in the suffix SURE is sufficient for me to conclude that it is fairly common in the insurance industry to adopt SURE-suffixed trademarks, with the result that consumers should be somewhat accustomed to distinguishing between such trademarks. However, I do not find the evidence sufficient to establish that the average insurance broker or client would be accustomed to differentiating between trademarks beginning in CAN and ending in SURE or otherwise combining both of those elements.

[106] In summary, in view of the number of relevant trademarks on the register and the supporting evidence suggesting at least some third-party use in the marketplace (in addition to the Opponent’s own use), I find that I can infer potential purchasers are somewhat accustomed to seeing trademarks ending in SURE in this field, but that the evidence falls short of establishing that purchasers of insurance services in Canada are accustomed to making particularly fine distinctions among such trademarks or to distinguishing among trademarks combining both the elements CAN and SURE. Accordingly, I do not find that this factor assists the Applicant to any meaningful extent.

Surrounding circumstance: Opponent’s alleged family of marks

[107] When multiple trademarks having common characteristics are registered and used by the same owner, this series is known as “family”. Owning a family of trademarks increases the likelihood of consumers assuming that a new trademark having the same characteristic is simply another member of the family [Everex Systems Inc v Everdata Computer Inc (1992), 44 CPR (3d) 175 (FCTD)].

[108] A party seeking to rely on this concept must establish that it is using more than one or two trademarks within the alleged family and such use must be sufficient to establish that consumers would recognize a family of marks [Arterra Wines Canada, Inc v Diageo North America Inc, 2020 FC 508, and McDonald's Corp v Yogi Yogurt Ltd (1982), 66 CPR (2d) 101 (FCTD)]. However, if the common characteristic is also common to the trade, then it cannot form the basis of a family of marks [Benjamin Moore & Co Limited v Home Hardware Stores Limited, 2017 FCA 53; Techniquip Ltd v Canadian Olympic Assn (1999), 3 CPR (4th) 298 (FCA)].

[109] All relevant circumstances should be considered in assessing how the family of marks affects the confusion analysis, including the extent to which the family has become known and whether it is used in a particular context, for example, in conjunction with a company name [Benjamin Moore, ibid.].

[110] The Opponent submits that it owns a family of trademarks featuring the suffix “SURE” in association with identical services and that there is “an overwhelming degree of visual and conceptual resemblance between the Mark and the Opponent's *SURE Family of Marks” [written representations, para 21]. The Applicant submits that only the SURE-suffixed trademarks that were pleaded in the statement of opposition can be included in any family of marks that the Opponent is able to established and that trademarks not pleaded in the statement of opposition—including the Opponent’s trademark CANNASURE—cannot be considered. However, a trademark need not be pleaded within the statement of opposition to be considered as part of the "surrounding circumstances" [H-D Michigan Inc v MPH Group Inc, 2006 FC 538, citing Premdor Inc. v Alcan Aluminum Ltd (1997), 84 CPR (3d) 393 at 400 (TMOB)]. The fact that the Opponent’s CANNASURE trademark (among others) has not been pleaded as a separate trademark means that likelihood of confusion between it and the Mark cannot be considered as a ground of opposition [per Imperial Developments Ltd v Imperial Oil (1984), 79 CPR (2d) 12 (FCTD)]. However, use and promotion of the Opponent’s CANNASURE trademark, as part of a family of marks or otherwise, may still be considered as a surrounding circumstance in assessing the likelihood of confusion between the Mark and the Opponent’s trademark CANSURE [with respect to the latter, see H-D Michigan, ibid.].

[111] The Opponent’s written representations also include an allegation that it owns a family of trademarks that contain the prefix “CAN”, including CAN-SURE, CANSURE, and CANNASURE [para 21]. However, as noted at the outset of my analysis of the registrability ground of opposition, I find that CAN-SURE and its modernized version CANSURE are merely variations of the same trademark. The addition or removal of the hyphen does not add any elements to the alleged family; rather, use of the hyphenated version supports use of the nonhyphenated version and vice versa. The alleged family would therefore consists of only this trademark and CANNASURE. However, as noted above, two trademarks is an insufficient number to constitute a family. Accordingly, the concept of a family of trademarks does not apply to the Opponent’s use of the CAN prefix in its branding.

[112] As for the alleged family of trademarks featuring the suffix “SURE”, Mr. Copeland’s evidence may be summarized as follows:

• Since 2017, the Opponent has been using a series of trademarks that end in “SURE” in association with “Insurance services” and “Insurance underwriting” as well as “Insurance brokerage; Insurance consultancy” and “Providing insurance information and consultancy; Insurance agencies” [para 5, with printouts of registrations and pending applications for registration of such trademarks at Exhibit C]. These trademarks include not only the Pleaded Product Brands but also additional trademarks that the Opponent has applied to register, the particulars of which are set out at Schedule C to this decision (the Pending Marks). They also include the trademark CANNASURE, in association with which the Opponent has offered insurance tailored to the cannabis industry in Canada since November 2017 and which the Opponent believed to be “a natural and intuitive extension of our CANSURE marks and our *SURE family of marks”, prompted by the anticipation of the legalization of cannabis in Canada [para 12].

• The following Pleaded Product Brands have been used in Canada since at least as early as March 2017: FARMSURE, BUILDERSURE, PROSURE, ENVIROSURE, REALTYSURE, and CYBERSURE [para 15]. The Pleaded Product Brand CARGOSURE has been used in Canada since at least as early as August 2018 [para 15, Exhibit K].

• The website at cansure.com lists the following product lines, as shown on the archived webpages from August 14, 2020, October 1, 2020, and January 19, 2021 [Exhibit H]:

• oBUILDERSURE™: Construction,

• oCANNASURE,

• oCARGOSURE™,

• oCYBERSURE™: Cyber and Data Breach,

• oENVIROSURE™: Pollution Liability,

• oMANUFACTSURE™: Wholesale & Retail Trade,

• oPROSURE™: Professional Liability, and

• oREALTYSURE™: Residential Realty products, and

• oEVENTSURE™: Special Events, and

• oFARMSURE™: Hobby Farms & Ranches products.

• Mr. Copeland purchased the domain name www.cannasure.ca in October 2018 and it redirects consumers to the website at www.cansure.com [para 18].The trademark CANNASURE—sometimes presented as “CANNASURE BY CANSURE”—is featured on the Opponent’s website in advertising policies for licensed cannabis operations that include coverage for commercial general liability, products liability, equipment breakdown, and other extensions to coverage [screenshot from January 18, 2021 at para 13].

• Insurance applications available for download on the website include a CARGOSURE CANNABIS TRANSPORTATION SUPPLEMENT for the Inland Marine sector (dated 09/18) as well as a CANNASURE LICENSED CANNABIS RETAIL /DISTRIBUTION APPLICATION, and a CANNASURE LICENSED CANNABIS PRODUCERS / MANUFACTURERS APPLICATION (both dated 07/18) [paras 8 & 13, Exhibits G & J].

• Brochures for various insurance products offered under the Pleaded Product Brands have been published from April 2018 to April 2020; these include one or more brochures for each of the FARMSURE, BUILDERSURE , PROSURE, ENVIROSURE, REALTYSURE, CYBERSURE, and CARGOSURE product lines [para 15, Exhibit K].

• Brochures titled CANNASURE BY CANSURE and CANNASURE RETAIL BY CANSURE for insurance products in the CANNASURE product line, variouslyidentified as CANNASURE, CANNASURE BY CANSURE, or CANNASURE™ RETAIL, were published in July 2018 and June 2020 [para 13, Exhibit J].

• Various advertisements and promotional materials dating from “2017 and prior” to 2021 have featured trademarks from the alleged family [Exhibit F]:

• oSeveral advertisements dating from “2017 and prior” promote CYBERSURE Cyber & Data Breach insurance.

• oOne of the 2018 advertisements promotes CANNASURE by Cansure / Cannasure by Cansure, an insurance solution for licensed cannabis operations, from producers to retailers.

• oOther 2018 advertisements promote CYBERSURE PLUS / Cybersure Plus, BUILDERSURE construction insurance, or CARGOSURE OCEAN (2018 LinkedIn banner). One of the miniature advertisements intended as an email signature promotes CARGOSURE.

• oAdvertisement in the 2020s include ones for BUILDERSURE / BuilderSURE Course of Construction policy, PROSURE Fitness Clubs & Instructors policy, PROSURE professional liability coverage, MANUFACTSURE manufacturing & wholesale, REALTYSURE commercial and residential realty, CARGOSURE MTC transportation package, CYBERSURE by Cansure, CYBERSURE, Cyber & Data Breach insurance, CANNASURE by Cansure, CANNASURE BY CANSURE, CANNASURE RETAIL BY CANSURE, and CANNASURE coverage for licensed cannabis manufacturers, producers, distributors, and retailers.

• A March 6, 2019 article published online in Insurance Business Magazine (printed January 14, 2022) spotlights the Opponent’s offerings for licensed cannabis producers, manufacturers, retailors, and distributors, noting that “Cansure has launched a new product named ‘Cannasure,’ which offers a complete insurance solution for licensed cannabis operations” [para 4, Exhibit B].

Commercial product lines:

Personal product lines:

[113] I am satisfied that the Opponent has established use of the Pleaded Product Brands at the material date, along with the Pending Mark MANUFACTSURE and the additional trademark CANNASURE. Therefore, this series of trademarks, each of which is associated with an individual product line, could potentially form a family. However, I note that each of these trademarks is typically displayed in the vicinity of the CANSURE Logo and/or a trade name consisting of or incorporating the name CANSURE or CAN-SURE. Often, the box with the Opponent’s slogan is displayed in the vicinity as well.

[114] Moreover, as discussed under the previous surrounding circumstance, the Applicant has furnished evidence of a number of SURE-suffixed trademarks on the register in association with insurance or insurance-related services, as well as evidence that some of those trademarks are being used in advertising services for Canadians online. I note in particular the following:

Reg/App No. (app status)	Trademark	Owner	Use Exhibit (archive year)
TMA834,580	ACCIINSURE	Banque nationale du Canada	--
TMA885,351	CRIMESURE	Liberty Mutual Insurance Company	--
TMA511,995	DEALERSURE	Arthur J. Gallagher Canada Limited	K (2021)
TMA775,358	Eco-Sure	NFP Canada Corp.	--
TMA956,880	Engsure	Unigroup General Insurance Ltd.	--
TMA541,225	EQUISURE	Equisure Financial Network Inc.	--
TMA808,214	ERASSURE	Estate Risk Protection Plan Inc.	L (2012, 2016, 2018, 2021)
TMA849,925	HealthSure	Acure Health Corp.	N (2015, 2018, 2021)
TMA447,538	HOLIDAYSURE PLAN	Royal Bank of Canada	--
TMA559,045	VacanSures
TMA531,749	MARINASSURE	Marsh Canada Limited	P
TMA847,242	SITESURE	Chubb Limited	--
TMA333,718	TEL-SURE	Johnson Inc.	--
TMA217,878	TRAVELSURE	North American Air Travel Insurance Agents Ltd.	--
TMA824,597	WEDENSURE	NW Insurance Brokers Ltd.	--
TMA722,423	WELLSURE	F.P. Butler Inc.	U (2019, 2020, 2021)
TMA757,575	WINDOORSURE	Belpac Capri Insurance Brokers Ltd.	--

[115] In the circumstances, I do not find that the Opponent’s use of the series of trademarks identified above would, in general, make consumers who encounter the Mark more likely to infer it is part of the Opponent’s family of marks based on CANSURE—as opposed to simply another third-party use of SURE as a suffix for an insurance-related trademark. For these reasons, I find that the concept of a family of marks per se is of little assistance to the Opponent’s case.

Surrounding circumstance: Opponent’s use of CANNASURE BY CANSURE

[116] Despite my conclusion under the previous section, I still find it relevant that the Opponent has furnished evidence of use of the trademark CANNASURE BY CANSURE since 2018. In my view, the use of this trademark in advertising the Opponent’s portfolio of products increases the likelihood that consumers encountering the Mark at the material date would infer that the associated services are from the same source as those advertised under the Opponent’s house mark CANSURE, including the Opponent’s insurance products for the licensed cannabis sector. Therefore, this factor favours the Opponent.

[117] I also note the Applicant’s submission to the effect that any use of the Opponent’s CANNASURE trademark post-dates the filing date of the Application and as such is not relevant in this opposition [written argument, para 8]. However, the issue under a section 12(1)(d) ground of opposition is not which party was first to use its trademark but rather whether the applicant’s trademark is registrable on the date of the Registrar’s decision, having regard to all of the surrounding circumstances. An opponent’s use and promotion of a confusingly similar trademark after the application’s filing date is relevant in this respect.

Conclusion with respect to registrability under section 12(1)(d)

[118] In an opposition proceeding, the onus is not on the Opponent to show that confusion is likely but rather on the Applicant to satisfy the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion. The presence of a legal onus on the applicant means that, if a determinate conclusion cannot be reached once all the evidence has been considered, then the issue must be decided against the applicant.

[119] Having considered all the surrounding circumstances, I find that the Applicant has not met its legal onus to demonstrate, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s CANSURE trademark. I reach this conclusion based primarily on the high degree of resemblance between the parties’ trademarks and the considerable overlap in the nature of the services at issue, with the potential for similarity and overlap in the channels of trades. I am mindful that the inherent distinctiveness of the Opponent’s trademark is low and that the Applicant has furnished evidence from which it may be inferred that the element SURE has been commonly adopted as a component of trademarks in the insurance field. However, the evidence also demonstrates use of the Opponent’s trademark since at least 2010 and that it has become known to a significant extent as of the material date, whereas there is no evidence of use or promotion of the Mark in Canada, and the Applicant has not established that purchasers of insurance services in Canada would be accustomed to distinguishing between trademarks that are similar in the same way as those of the parties. I also find the Opponent’s use of the trademark CANNASURE BY CANSURE since at least 2018 to be a relevant surrounding circumstance that increases the likelihood of confusion between the Opponent’s registered CANSURE trademark and the Mark.

[120] In view of all the foregoing, the registrability ground of opposition under section 12(1)(d) of the Act is therefore successful.

Distinctiveness under section 2 of the Act

[121] The Opponent pleads that the Mark is not distinctive in that it does not distinguish, nor is it adapted to distinguish, nor is it capable of distinguishing, the Services from the services associated with the Opponent’s CANSURE Trademarks and Pleaded Product Brands.

[122] The material date for this ground of opposition is July 13, 2021, the date the statement of opposition was filed [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc, 2004 FC 1185]. To succeed, an opponent relying on its own mark or name must establish that, as of this date, its mark or name was known in Canada to some extent at least, i.e. that its reputation was “substantial, significant or sufficient” to negate the established distinctiveness of another party’s trademark, or else that it was well known in a specific area of Canada [Motel 6 Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); Bojangles’ International LLC v Bojangles Café Ltd, 2006 FC 657; 1648074 Ontario Inc v Akbar Brothers (PVT) Ltd, 2019 FC 1305].

[123] I find that the Opponent’s evidence of use and promotion of its CANSURE trademark discussed above is sufficient to meet its evidential burden. Furthermore, the earlier material date associated with the distinctiveness ground of opposition does not significantly alter the results of the test for confusion performed under the registrability ground in respect of this trademark. Under a distinctiveness ground, it is the services in association with which the Opponent has shown actual use, rather than the statement of services defined in the Opponent’s registration, that govern the analysis, and the manner and context of the trademark’s use, promotion, and publicity gain importance. However, neither distinction would materially affect my analysis in the present case.

[124] Similar to my discussion under the previous ground, I would also note that the issue under a distinctiveness ground of opposition is not which party was first to use its trademark but rather whether the trademark the applicant seeks to register was distinctive on the date the statement of opposition was filed. An opponent’s use and promotion of a confusingly similar trademark after the application’s filing date is relevant to the question of whether the applied-for trademark was capable of distinguishing the applicant’s goods and services from those of the opponent on the date the statement of opposition was filed [in this regard see also BITVO INC and BITSO SAPI DE CV, 2023 TMOB 7; and Navsun Holdings Ltd v Sadhu Singh Hamdard Trust, 2020 TMOB 64].

[125] For the reasons discussed in the previous section, the outcome of the distinctiveness ground of opposition is the same as under the registrability ground. Accordingly, the distinctiveness ground of opposition succeeds as well.

Entitlement under sections 16(1)(a), 16(1)(b), and 16(1)(c) of the Act

[126] The Opponent pleads that the Applicant is not the person entitled to registration of the Mark in Canada in view of section 16(1) of the Act because, at the Application’s filing date or at the date of first use the Mark (if applicable), the Mark was confusing with the following:

• 1.Pursuant to section 16(1)(a): the Opponent’s CANSURE Trademarks and Pleaded Product Brands, which the Opponent and/or its predecessor-in-title had previously used or made known in Canada.

• 2.Pursuant to section 16(1)(b): the Opponent’s Pleaded Product Brands that the Opponent or its predecessor-in-title had previously applied to register.

• 3.Pursuant to section 16(1)(c): the Opponent’s trade name CAN-SURE that the Opponent and/or its predecessor-in-title had previously used in Canada in association with the services set out at Schedule A to this decision.

[127] Since there is no evidence of use of the Mark in Canada, the material date to assess entitlement to registration in this case is the Application’s filing date, namely July 11, 2017.

[128] Section 16 of the Act does not require an opponent to demonstrate any particular level of use or reputation. If the opponent demonstrates that its trademark or trade name functions as such, that use of it meeting the requirements of section 4 of the Act occurred prior to the material date, and that the trademark or trade name was not abandoned at the date of advertisement of the application, then the opponent will meet its burden under section 16(1)(a) or (c) [JC Penney Co v Gaberdine Clothing Co, 2001 FCT 1333; see also Olive Me Inc, et al v 1887150 Ontario Inc, 2020 TMOB 26]. With respect to trade names, the principles in sections 2 and 4 of the Act have been held to apply, such that use must be in the normal course of a functioning business and in relation to the class or classes of persons with whom such business is to be conducted; display of a trade name in the performance or advertising of services available in Canada will suffice to demonstrate such use [see Carbon Trust Inc v Pacific Carbon Trust, 2013 FC 946; and Mr Goodwrench Inc v General Motors Corp (1994), 55 CPR (3d) 508 (FCTD)]. An opponent meets its initial burden under section 16(1)(b) if its own application was filed prior to the material date and still pending when the application being opposed was advertised for opposition [section 16(4) of the Act].

Section 16(1)(a)

[129] With respect to the first branch of the pleading, I find the Opponent’s evidence of use and promotion of its CANSURE trademark discussed above sufficient to establish use of this trademark prior to the material date of July 11, 2017, and that the trademark had not been abandoned when the Application was advertised for opposition purposes on January 13, 2021. Thus, the Opponent has met its initial burden for the ground of opposition based on section 16(1)(a). Furthermore, the earlier material date associated with the entitlement ground of opposition does not significantly alter the results of the confusion analysis performed under the registrability and distinctiveness grounds in respect of this trademark.

[130] Although the length of use of the Opponent’s trademark is shorter at the earlier material date, and the trademark had not yet become known to as large an extent or been used with as many aspects of the Opponent’s services (for example, the brokerage portal), these factors nevertheless still favour the Opponent. Additionally, the Applicant’s position with respect to the state of the register and marketplace is no stronger at the earlier date. Furthermore, the Opponent cannot rely on use of its CANNASURE BY CANSURE trademark at the earlier date; however, I do not find that factor to be determinative.

[131] On balance, for the reasons discussed in the previous sections, I find that the Applicant has not met its legal onus to demonstrate, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s CANSURE trademark at the material date for this ground of opposition. The entitlement ground of opposition based on use of the Opponent’s CANSURE trademark is therefore also successful.

Section 16(1)(b)

[132] With respect to the second branch of the pleading, I note that the only Pleaded Product Brand trademarks for which applications were filed prior to July 11, 2017 are REALTYSURE, CARGOSURE, and CYBERSURE; however, all three of these trademark applications matured to registration prior to the date of advertisement of the Applicant’s Application [Copeland affidavit, Exhibit C]. Since none of the applications filed prior to the material date were pending when the Application was advertised, the Opponent has not met its evidential burden for this ground. The ground of opposition based on section 16(1)(b) of the Act is therefore rejected.

Section 16(1)(c)

[133] With respect to the third branch of the pleading, although only the trade name CAN-SURE has been pleaded, I consider use of any of the forms “Can-Sure”, “CanSure”, or “Cansure” to be use of the Opponent’s pleaded trade name CAN-SURE. Applying the principles set out in CII Honeywell Bull, Promafil, and Nightingale, I find that the trade name Can-Sure has not lost its identity and remains recognizable in the more modern CanSure and Cansure variations—the omission of the hyphen being only a minor deviation that does not affect the trade name’s pronunciation or meaning. The derivation of “Cansure” from the two words “Can” and “Sure” remains evident as a matter of immediate impression. This is particularly the case when the trademark is sounded, but I find that it also holds true from a visual perspective. (For similar conclusions regarding hyphenation, see Reckitt Benckiser (Canada) Inc v Tritap Food Broker, 2013 TMOB 65; and Vision-Care Limited v Hoya Corporation, [2000] TMOB No 86, 2000 CanLII 28625].

[134] I also consider use of the trade names Can-Sure Underwriting and Can-Sure Underwriting Ltd. to constitute use of the pleaded trade name CAN-SURE, since the additions of “Underwriting” and “Inc.” are minor deviations that merely indicate the nature of the business and the form of business organization. The trade name CAN-SURE stands out sufficiently from these additional, descriptive elements and corporate indicia to retain its identity and remain recognizable. For convenience going forward, I will refer to the tradenames Can-Sure, Can-Sure Underwriting, Can-Sure Underwriting Ltd. and Cansure as the “Can-Sure Trade Name”.

[135] Mr. Copeland states that the Can-Sure Trade Name has consistently been used on the Opponent’s website as well as on insurance applications, product sheets, promotional materials, signage, social media blasts, etc. [para 6]. Indeed the materials attached as exhibits to his affidavit to demonstrate use of the trademark CANSURE and of the Pleaded Product Brands, discussed above, generally also display the Can-Sure Trade Name. I am satisfied that these materials show use of the Can-Sure Trade Name prior to the material date and that the trade name had not been abandoned when the Application was advertised for opposition purposes on January 13, 2021. The Opponent has thus met its evidential burden. The onus is therefore on the Applicant to satisfy the Registrar, on a balance of probabilities, that there was no reasonable likelihood of confusion between the Mark and the Can-Sure Trade Name at the Application’s filing date.

[136] I reach the same conclusion in respect of the Can-Sure Trade Name as in respect of the CANSURE trademark, for essentially the same reasons as discussed under the section 16(1)(a) ground of opposition. Although the presence of the hyphen in the pleaded trade name creates an additional point of visual difference, factoring this distinction into the analysis of the resemblance factor in the test for confusion is insufficient to tip the balance in favour of the Applicant.

[137] The entitlement ground of opposition based on use of the Opponent’s CAN-SURE trade name is therefore also successful.

Remaining grounds of opposition based on confusion

[138] The Opponent pleads additional grounds of opposition based on its trademark and trade name rights, as follows:

• ·Under section 38(2)(a.1) of the Act, the Opponent pleads that, at the filing date of the Application, the Application was filed in bad faith, because “the Applicant was subsequently aware that the Opponent’s predecessor-in-title objected to its use in Canada”.

• ·Under section 38(2)(f), the Opponent pleads that the Applicant was not entitled to use the Mark in Canada in association with the Services because the Mark:

• o(i) infringes the Opponent's registered trademarks referenced in Schedule "A", contrary to sections 19 and 20 of the Act;

• o(ii) is used in a manner likely to depreciate the value of the Opponent's CANSURE Trademarks, contrary to section 22 of the Act; and

• o(iii) if used by the Applicant, directs public attention to its services and business in such a way as to cause or to be likely to cause confusion in Canada between them and the Opponent's services and business, contrary to section 7(b) of the Act.

[139] However, as the Opponent has already succeeded under four other grounds of opposition based on confusion, there is no need to address these remaining grounds.

Grounds of opposition alleging non-compliance with insurance legislation

[140] Finally, the Opponent pleads several grounds of opposition alleging the Applicant is not licensed or authorized by statute to provide the Services in Canada, as follows:

• ·Under section 38(2)(a.1) of the Act, the Opponent pleads that the Application was filed in bad faith, because the Applicant requires a licence to offer most of the Services in Canada and, since it is not licensed in Canada as an insurance broker, agent or insurer, filed the Application knowing it was not entitled to offer those Services in Canada and could not do so in the future.

• Under section 38(2)(e) of the Act, the Opponent pleads that, at the filing date of the Application, the Applicant was not using and did not propose to use the Mark in Canada in association with the Services, given that the Applicant is not licensed to do so in Canada.

• Under section 38(2)(f) of the Act, the Opponent pleads that, at the filing date of the Application, the Applicant was not entitled to use the Mark in Canada in association with the Services, because such use is contrary to the Insurance Act.

[141] Essentially, the Opponent takes the position that the Applicant is unable to obtain the licensing required to legally offer or broker insurance services in Canada, and thus has not used the Mark in Canada; could not propose to use the Mark in Canada; was not entitled to use the Mark in Canada; and, knowing that it was not so entitled, filed the Application in bad faith.

[142] By way of evidence in support, Mr. Copeland states that, at the time the CANNASURE brand was developed, the Opponent was not aware of any third-party use of CANNASURE as a trademark in the insurance industry in Canada and, having “subsequently conducted searches to determine whether CANNASURE was used as a name for either a broker/agent or an insurer in all provinces, or used federally as an insurer”, did not find any such evidence [para 12]. He also confirms that he personally is not aware of the Applicant using the CANNASURE mark in Canada [para 18].

[143] In addition, at paragraph 18 of his affidavit, Mr. Copeland asserts the following:

[The Applicant] is a foreign entity and, under the Insurance Companies Act it cannot insure a risk unless it is authorized by order of the Superintendent to do so. Any entity intending to carry out insurance business/services in Canada must apply for an insurance license in the relevant class(es) of insurance from the insurance regulator of the province or territory in which it intends to carry out insurance business. Each jurisdiction has a publicly accessible registry of licensees and [The Applicant] is not listed in any such registry. Accordingly, I do not believe that [The Applicant] offered insurance in Canada at the time it filed for its CANNASURE Application. Further, I do not believe that [The Applicant] would be able to register an insurance company or agency under the name CANNASURE, because the corporate registries would likely have flagged Cansure's registrations as a conflict.

[144] I note that, on May 19, 2023, the Opponent had requested leave to file amend the statement of opposition (i) changing the existing citation of an insurance statute from “the Insurance Act” to “the Insurance Companies Act” and (ii) adding references to non-compliance with specific sections of the one federal and eight provincial Insurance Companies Act and Insurance Act statutes. In the Registrar’s letter of July 11, 2023, denying leave to amend, the following comments were made:

• The importance of the amendment to reference the federal Insurance Companies Act is diminished to the extent that the such clarification is already provided by the Opponent’s evidence.

• The importance of the amendment to reference specific sections of the statues at issue is diminished to the extent that the jurisprudence may not require it and that such clarification is already provided by the Opponent’s evidence.

• Setting aside the issue of whether it is appropriate to consider allegations of non-compliance with provincial statutes in a ground of opposition based on entitlement to use a trademark in Canada, the proposed amendment to reference provincial legislation would cover only eight of Canada’s provinces, with Quebec and British Columbia being omitted. As such, it would not appear to support an argument that, owing to provincial and territorial legislation, the Applicant was not entitled to use the Mark anywhere in Canada.

[145] Upon review of the evidence and arguments of record in this case, I find that, even if I interpret the reference to “the Insurance Act” in the pleadings to mean the Insurance Companies Act referenced by Mr. Copeland, and even if I take judicial notice of the sections of the federal Insurance Companies Act appended to the Opponent’s leave request, the Opponent will not meet its initial burden in respect of any of the above-noted three remaining grounds of opposition. I reach this conclusion because the Opponent’s evidence and submissions remain insufficient to establish that, at the filing date of the Application, the Applicant would have been unable to obtain the necessary licences to entitle it to use the Mark in compliance with the federal Insurance Companies Act upon the Mark’s registration. Indeed, in the absence of evidence to the contrary, I agree with the Applicant that it is reasonable to assume that the Applicant will comply with the relevant statutes and regulations [for similar conclusions, see Groupe Marcelle Inc and Annabis sro, 2022 TMOB 238; Star Island Entertainment, LLC v Provent Holdings Ltd, 2015 TMOB 25; Cadbury Confectionary Canada Inc v Valliant-Saunders (2002), 22 CPR (4th) 388; and Ontario Lottery Corp v Arkay Marketing Associates Inc (1993), 47 CPR (3d) 398].

[146] The Opponent cites Interprovincial Lottery Corporation v Western Gaming Systems Inc, 2002 CanLII 61461 (TMOB), for the proposition that, even if having an issued licence at the time of filing the Application was not required, it is incumbent upon an applicant to show that it has at least taken preliminary steps to comply with legislation in that regard. However, in that case, affidavits were provided from representatives of “all of the provincially legislatively designated entities charged with managing and conducting lotteries and the organization responsible for the overall national administration of various lotteries” and the Registrar found that “Presumably, the applicant would have already applied for a license or at least taken some preliminary steps to ensure its compliance with the Criminal Code”. In the present case, there is no evidence from which to infer that it would have been necessary for the Applicant to have already taken any preliminary steps that it did not in fact take.

[147] The Opponent has not directed attention to any legislative provisions that would prevent the Applicant from receiving a licence or otherwise from using the Mark in association with the services. Although the Mr. Copeland states that he does not believe the Applicant would be able to register an insurance company or agency under the name CANNASURE, because corporate registries would likely flag the Opponent’s “Cansure's registrations” as a conflict, Mr. Copeland has not qualified himself as an expert in corporate law and I am therefore not prepared to give his opinion on the practices of the federal and/or provincial corporate registries any weight.

[148] In view of the foregoing, the remaining grounds of opposition are rejected, as the Opponent has failed to meet its initial burden. I note that, in the absence of any further submissions on point, the Opponent’s proposed amendment to add references to provincial legislation to the statement of opposition would not have changed the outcome of these grounds, for the reasons set out above.

Disposition

[149] In view of all the foregoing, 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.

_______________________________

Oksana Osadchuk

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Schedule A

Opponent’s CANSURE Trademarks

Trademark	Reg. No.	Services
CANSURE	TMA909,799	Insurance services, insurance underwriting, processing of insurance claims and payment data.
CAN-SURE	TMA909,800

Schedule B

Opponent’s Pleaded Product Brands

Trademark	Reg. No.	Services
FARMSURE	TMA1,088,914	Insurance services; Insurance brokerage; Insurance consultancy; Insurance underwriting; Providing insurance information and consultancy; Insurance agencies.
BUILDERSURE	TMA1,088,911
PROSURE	TMA1,088,910
ENVIROSURE	TMA1,088,913
EVENTSURE	TMA1,088,912
REALTYSURE	TMA1,012,569
CYBERSURE	TMA1,012,568
CARGOSURE	TMA1,012,550

Schedule C

Opponent’s Pending Marks

Trademark	App. No.	Services
MANUFACTSURE	1,902,828	Insurance services; Insurance brokerage; Insurance consultancy; Insurance underwriting; Providing insurance information and consultancy; Insurance agencies.
COVERSURE	1,985,024
DRIVERSURE	2,009,935
FEELSURE	2,015,851
MEDISURE	2,015,852
PETSURE	1,944,251
TECHSURE	2,015,853

Appearances and Agents of Record

HEARING DATE: 2023-07-13

APPEARANCES

For the Opponent: Stephanie Vaccari

For the Applicant: Kevin Graham

AGENTS OF RECORD

For the Opponent: Baker Mckenzie

For the Applicant: Stikeman Elliot