• Respondent's Use of Confusing Mark Prior to Asserted Use Date in TM Application Did Not Predate Actual Use of the Mark by the Applicant
  • October 27, 2016 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Times Group Corporation v. Time Development Group Inc., 2016 FC 1075

    The Applicants, Times Group Corporation and Times Developments Inc. (collectively, Times), sought to have the Court declare that the Respondents, Time Development Group Inc. and Time Development Inc. (collectively, TDG), had infringed its trade names and mark.

    Times has used the trade names TIMES GROUP CORPORATION and TIMES DEVELOPMENTS INC in the course of its business activities, and registered the trademark TIMES GROUP CORPORATION in 2014. TDG uses the trade name TIME DEVELOPMENT GROUP. The Court was satisfied that Times is entitled to the exclusive use of its registered mark, and that there is likely confusion between Times's mark and TDG's trade name.

    The Court dismissed TDG's argument that Times' mark lacks distinctiveness because it is used by both applicants without evidence that the two companies are related or have a licensing arrangement. The caselaw cited did not support TDG's position, nor did Times assert that use of the mark by Times Group Corporation enures to the benefit of Times Developments Inc. or vice versa. Further, there was no evidence showing that both Applicants have used the registered mark.

    The Court also dismissed TDG's second argument that its prior use of an allegedly confusing trade name should have disentitled Times from registering its mark. TDG's use of its trade name began in 2008, which was prior to the year asserted by Times in its trademark application (being 2011). The Court stated that it is the use of the trademark that confers on the owner the rights to that mark, including the exclusive right to use that mark and to register it. The evidence established that Times has used its trade names and mark since at least 2006, before TDG began using its trade name and Times' 2014 registration of its mark.

    Finally, the Court held that the trade names were confusing. The dominant word in their mark and name, "Time" or "Times", are nearly identical. Notwithstanding the different presentations of the trade names, the Court concluded that the Times' mark clearly bears a strong resemblance to TDG's name. The Court also noted that the risk of confusion in the parties' target markets, the Chinese Canadian community, increased when the words are translated into Chinese characters. Therefore, the distinction between Times use of the plural form of "Time", versus TDG's use of the singular, disappears upon translation.

    The Court granted the declaration in Times' favour and ordered that TDG refrain from using those trade names.