• Two Appeals Dismissed: Opposition Board was Reasonable in (1) Refusing the Applicant’s Trademark Application and (2) in rejecting the Applicant’s Opposition
  • July 21, 2014 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders; Ryan Steeves
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Allianz Asset Management of America L.P. (“AAMA”) and Allianz Global Investors of America L.P. (“AGIA”) appealed two decisions of the Trade-marks Opposition Board (the “Board”). The appeals were heard together.

    In the first appeal (Re: AAMA), the Board refused AAMA’s application to register the mark INDEX PLUS to be used in association with financial services. The Board refused registration of the mark because, in its view, there was a reasonable probability of confusion between AAMA’s mark and those of the Respondent. The Board further held that there was nothing in AAMA’s mark to distinguish it from the Respondent’s. On appeal, AAMA argued that the Board erred in its finding of a reasonable likelihood of confusion, and that INDEX PLUS was not distinctive of AAMA’s services.
    AAMA argued that the evidence of the Respondent’s use was “inconsistent because of use of the mark by others.” However, the Board concluded (and the Court agreed) that the Respondent maintained control over the quality and character of the services associated with its mark. On the issue of confusion, the Court found no error with how the Board applied the test for confusion and noted that, having regard to the evidence, “the logic is compelling, if not self-evident”. With respect to distinctiveness, AAMA sought to undermine the distinctiveness of the Respondent’s mark by pointing to third party use. However, the Court found that the alleged third party use was inadequate as evidence of the Respondent’s mark lacking distinctiveness. According to the Court, there was no evidence that the use of the terms containing the word “IndexPlus” undermined the distinctiveness of the Respondent’s mark. The Court clarified that the “mere existence of the same word in corporate titles, or indeed as a registered mark in other jurisdictions, does not establish use in Canada by third parties sufficient to defeat distinctiveness.” On these bases, AAMA’s application for judicial review was dismissed.

    In the second appeal (Re: AGIA), the Board rejected AGIA’s opposition to the registration of the mark INDEX PLUS INCOME FUND by the Respondent. The Board found that AGIA failed to meet its evidentiary burden regarding its opposition based on (1) disputing the date that the mark was first used, (2) the mark lacking distinctiveness, and (3) the mark being clearly descriptive of the character or quality of its products or services. The Court noted that AGIA had to succeed on each of its three grounds of appeal in order to have the decision set aside. However, the Court found the Board’s decision reasonable on all three grounds and thus, AGIA’s application for judicial review was dismissed.