Trademarks Must be Assessed as a Whole

Decision of the Federal Court allowed an appeal from the Trademark Opposition Board on the ground that the Board did not assess the respective marks in their totality but instead conducted a side-by-side comparison based only on their first components. T. Rowe Price Group, Inc. v. Glidepath Technologies Inc.2025 FC 179

The Facts

The Applicant filed a trademark application to register the trademark LIVE WITH CONFIDENCE (the Mark) in association with management and advisory services in the financial and investment planning field.

The Opponent opposed the application. The primary ground of opposition was based on an alleged likelihood of confusion with the Opponents registered marks RETIRE WITH CONFIDENCE and INVEST WITH CONFIDENCE. The Opponent’s trademarks are registered in association with services in the fields of financial investment planning, investment management and advisory services.

The Decision of the Trademark Opposition Board

The Hearing Officer said that on considering all the surrounding circumstances, that the Applicant has met its legal burden to show that there is no reasonable likelihood of confusion between the Mark and the Opponent’s INVEST WITH CONFIDENCE trademark. She reached this conclusion despite the extent to which the Opponent’s INVEST WITH CONFIDENCE mark has become known, and the similar services of the parties.

Considering the narrow ambit of protection to be afforded the Opponent’s trademark, the differences between the marks when considered in their entirety was sufficient to tip the balance in favour of the Applicant. The situation was the same concerning the Opponent’s RETIRE WITH CONFIDENCE trademark.

The Appeal

The Opponent appealed to the Federal Court. The central focus of the appeal was the Board’s analysis and application of the section 6(5)(e) degree of resemblance factor, since the Board found that each of the other relevant factors set out at section 6(5)(a) through 6(5)(d) favoured the Opponent.

As no additional evidence was filed on appeal the regular appellate standards applied.  For questions of fact and mixed fact and law (except for extricable questions of law), the applicable standard was that of the “palpable and overriding error”. Such an error must be an obvious error going to the core of the outcome. Unless such an error is found to be made a court cannot interfere on factually suffused questions of mixed fact and law and must defer to the Tribunal. For questions of law, the standard was in effect correctness.

The  Opponent argued that the Board did not assess the marks in their totality by conducting a side-by-side comparison of the parties’ trademarks based only on their first components which was an extricable error of law, even though the Board correctly identified the Supreme Court of Canada’s preferable approach “to first consider whether there is an aspect of the trade-mark that is particularly striking or unique”. 

It was further argued that failing to assess the trademarks in their totality resulted from the Board applying an incorrect legal standard, amounting to an extricable error of law reviewable on a correctness standard. The Opponent also argued this was a palpable and overriding error on a question of mixed fact and law.

The Court found that the Hearing Officer erred in her approach to the assessment. Given the virtually identical services in association with which the parties’ trademarks were used, which the Board characterized as management and advisory services in the financial and investment planning field, and when considering the ideas suggested by the trademarks as a whole, there was little or no distinction between the trademarks’ respective meanings, namely “living with confidence in one’s financial security” and either “investing with confidence in one’s financial security” or “retiring with confidence in one’s financial security”. The Judge could not find a meaning for living with confidence in one’s financial security if one is not either investing or retiring with that same confidence. The trademarks bore sufficient resemblance in the ideas suggested by them that the factor of degree of resemblance favoured the Opponent.

The Board erred in law by engaging a legal standard different from and contrary to the approach prescribed in Masterpiece that “[n]either an expert, nor a court, should tease out and analyze each portion of a mark alone” and “judges should consider the marks at issue, each as a whole, but having regard to the dominant or most striking or unique feature of the trade-mark”.

The Court completed the correctness analysis by applying the correct law to determine the correct outcome. The Court also agreed there was a palpable and overriding error on a question of mixed fact and law.

As the Board found all the other factors in the confusion analysis favoured the Opponent and, after applying the correct law following the Masterpiece approach, the factor of degree of resemblance likewise favoured the Opponent. As a matter of first impression, and on the vague or imperfect recollection of a casual consumer “somewhat in a hurry”  there exists a likelihood of confusion between the Applicant’s LIVE WITH CONFIDENCE trademark and the Opponent’s ’s INVEST WITH CONFIDENCE and RETIRE WITH CONFIDENCE registered trademarks. The Applicant’s LIVE WITH CONFIDENCE trademark was not registrable.

Comment

Since the parties seem to be competitors it seems odd from a business perspective to try to obtain a trademark which was close to that of a competitor who already owned a similar mark. The uncertainty and expense of litigation was inevitable.

If you have questions, please contact me at mckeown@gsnh.com

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1700

Toronto, Ontario MSG 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.