A recent decision of the Federal Court found that use of the business name “Time Development Group” infringed a registration of the trademark TIMES GROUP CORPORATION.
The Facts
Times Group Corporation (“Times”) has carried on business as property developer and manager mainly in the greater Toronto area. Its principle target market group is the Chinese community. In 2014 it obtained a trademark registration for the trademark TIMES GROUP CORPORATION for use in association with management and financial services relating to all aspects of the management and financing of residential, commercial and industrial properties and real estate projects and developments and related services based on use since 2011.
Time Development Group Inc. (“TDG”) also carries on business as a property developer and manager. TDG has used the tradename “Time Development Group” initially mainly in Saskatchewan but commenced operating in the greater Toronto area in 2013. It also targets the Chinese community.
The Action
Times commenced an action in the Federal Court seeking a declaration that TDG had infringed its trademark and for an order that TDG cease doing so. No claim for damages was asserted.
At trial the main issue was whether TDG’s use of the tradename “Time Development Group” would likely lead to confusion. The appropriate approach was to determine whether a hypothetical person would, without giving the matter detailed consideration, likely think that the services associated with the mark or trade name have a common source. If so, confusion would be made out.
The Trademarks Act directs that in order to determine whether there is confusion all of the surrounding circumstances including the matters set out in section 6(5) of the Act must be considered.
a) The Degree of Resemblance
The degree of resemblance is the most important factor and the other factors play a role only after the marks have been found to be identical or very similar. The judge observed that each of the parties relied on the dominant word in their respective mark and trade name “TIME” or “TIMES” to distinguish themselves from others carrying on business in the same field. The remaining words that they use, “DEVELOPMENT”, “GROUP” and “CORPORATION”, do not distinguish the respective businesses. In this case, the dominant words in issue were nearly identical.
TDG argued that it used a different design than Times which distinguished the respective marks. However, the judge said that the owner of a trademark consisting of a word or words is entitled to exclude others from using the same or confusing word(s) in any form and not just the form that the owner has adopted. One must look at the words themselves not their getup in assessing the degree of resemblance between Times mark and TDG’s trade name.
b) Distinctiveness
The words used by the parties lack inherent distinctiveness which the judge said augments the possibility of confusion. However, trademarks consisting of ordinary words generally attract a low level of legal protection since otherwise a trademark owner would acquire a monopoly over everyday terms.
c) Duration of Use
The duration of use can support an argument that a mark has acquired distinctiveness over time even though the words it contains may not be inherently distinctive. However, the judge concluded that Times mark had not acquired distinctiveness as a result of use and recognition in the marketplace.
d) Nature of the Business
The judge found that the parties operate similar businesses in the same geographic area and target the same potential customers. TDG argued that since relevant customers were purchasing expensive residential properties that it was unlikely that a buyer would ultimately purchase a property from TDG thinking it was built by Times. The judge rejected this approach, he said that even for expensive goods, which may have lower risks of actual confusion, the question was still whether a somewhat rushed, casual consumer’s first impression would likely cause him or her to conclude that the parties respective services had a common source. Whether serious buyers later conduct further research is irrelevant, it is the first impression that is pertinent. In essence, where the resemblance between the marks or names in issue is strong and other factors do not point emphatically in the other direction, the likelihood of confusion is not mitigated by the cost of the product in issue.
e) Conclusion
Notwithstanding there was no admissible evidence of confusion the judge found that TDG’s use of its tradename created a risk of confusion with Times’ registered trademark and granted the declaration sought.
Comment
The decision seems to be fairly close to the line but cases of this nature turn on the facts and the judge’s reaction to those facts. The key element seems to be TDG’s relatively recent entry into the market serviced by Times. TDG could have avoided the dispute if they had conducted a trademark search before they entered the market serviced by Times.
The judge also may have given insufficient weight to the TDG design and overly broad protection of the word mark contrary to the Pizzaiolo decision discussed here. However, this case was decided before the release of the Pizzaiolo decision.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
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.