On January 29, 2025, the Federal Court issued its decision in T. Rowe Price Group Inc. v Glidepath Technologies Inc.1
T. Rowe Price Group Inc. (T. Rowe) registered the trademarks RETIRE WITH CONFIDENCE and INVEST WITH CONFIDENCE (collectively, the T. Rowe Marks), in association with certain investment management and advisory services. Glidepath Technologies Inc. (Glidepath) applied to register the trademark LIVE WITH CONFIDENCE (the Proposed Mark).2 The court in Rowe described the Proposed Mark as being associated with "virtually identical" services as the T. Rowe Marks.3
In order to be registrable in Canada, among other requirements, a trademark must not be confusing with a registered trademark when considering "all the surrounding circumstances" such as the degree of resemblance between them.4 T. Rowe opposed Glidepath's application for registration of the Proposed Mark, arguing that the Proposed Mark was not registrable due to the likelihood of confusion with the T. Rowe Marks.5
Issues and decision
The Trademarks Opposition Board (Board) had found no reasonable likelihood of confusion that would prevent registration of the Proposed Mark.6 T. Rowe appealed the Board's decision to the Federal Court.
On appeal, T. Rowe submitted that the Board made three errors in assessing the trademarks' degree of resemblance:7
- Comparing the trademarks side-by-side to differentiate them based on the first words of the trademarks (i.e., LIVE, RETIRE and INVEST), despite finding the trademarks are understood as "unitary phrases" without any portion of the trademarks being more striking or unique;
- Assessing the degree of resemblance between the trademarks by holding that the ideas conveyed by each trademark are different based on the unique ideas suggested by the words "LIVE", "RETIRE" and "INVEST", despite finding that the suggestion of the trademarks as "unitary phrases" was similar and neglecting to appreciate the clear overlap in the ideas suggested by the trademarks; and,
- Finding the suggestive nature of the shared component of the trademarks (i.e., WITH CONFIDENCE) to have minimized the impact of the similarity between the trademarks after concluding there is "some" degree of resemblance.
The Federal Court granted T. Rowe's appeal, finding that the Board committed an error of law in the legal test for assessing the degree of resemblance and that the Board committed a palpable and overriding error in its application of such legal test.8 The Court directed that the Registrar of Trademarks refuse Glidepath's application for the Proposed Mark and ordered costs payable to T. Rowe in the amount of CA$5,000.9
Reasoning
The Court found that the Board failed to consider the trademarks in their totalities and instead compared their components side-by-side.10 By focusing on the ideas conveyed by the first words of the trademarks (i.e., LIVE, RETIRE and INVEST), the Board incorrectly concluded that the trademarks conveyed different ideas.
The Court emphasized that the preferable approach is to first consider whether there is an aspect of a trademark that is particularly striking or unique (in this case, no portion of the trademarks was more striking or unique), and then consider whether there is a resemblance as a whole between the trademarks.11 A trademark's distinctiveness arises through the combination of its elements.12
The Court found that the ideas conveyed by the trademarks all relate to having confidence in one's financial security13 and, as a matter of first impression and upon the vague or imperfect recollection of a casual consumer somewhat in a hurry, there is a likelihood of confusion between the trademarks.14 Accordingly, the Proposed Mark is not registrable.
Conclusion
The Court confirmed that it is the combination of the trademark's elements that gives distinctiveness to the trademark. Accordingly, when assessing the likelihood of confusion between trademarks, the trademarks should each be considered as a whole (while having regard to the dominant, most striking or unique feature of the trademark, if any).
Footnotes
1 2025 FC 179 [Federal Court Decision] (Rowe)
2 Ibid at paras 1-2.
3 Ibid at para 25.
4 Trademarks Act, RSC 1985, c T-13 at ss 12(1)(d), 6(5).
5 T. Rowe Price Group, Inc. and Glidepath Technologies Inc., 2023 TMOB 140.
6 Ibid at paras 121-123.
7 Rowe, supra note 1at para 5.
8 Ibid at para 31.
9 Ibid at paras 38-39.
10 Ibid at para 23.
11 Ibid at paras 13, 19, citing Masterpiece Inc. v Alavida Lifestyles Inc., 2011 SCC 27.
12 Ibid at para 35, citing British Drug Houses Ltd. v. Battle Pharmaceuticals, 1944 CanLII 308 (CA EXC), [1944] Ex CR 239, at 251, affirmed 1945 CanLII 49 (SCC), [1946] SCR 50.
13 Ibid at para 25.
14 Ibid at para 26; Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 at para 20.
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