Merrill Lynch & Co., Inc. v. Bank of Montreal
T-425-94 / T-426-94
Gibson J.
27/2/96
25 pp.
Appeals from Registrar's rejection of opposition to application for registration of "Firstbank Cash Management Account" and "Firstbank Cash Management Account Design", each based on proposed use in Canada in association with "banking services"-Respondent disclaiming right to exclusive use of words "cash management account" apart from trade-mark as whole-Through predecessor in title, appellant using trade marks "Cash Management Account", "Merrill Lynch Cash Management Account", "CMA", "CMA & Design" in association with financial services in Canada from 1985 until withdrawing from business in Canada in 1990-Bank of Montréal using trade-mark "Firstbank" alone and in combination with descriptive words or phrases to identify banking services since 1973-Registrar critical of evidence before him on behalf of appellant with respect to spill-over effect of advertising in American periodicals-Finding (1) no confusion with appellant's registered mark; (2) no likelihood of confusion with appellant's unregistered mark as appellant's prior use of mark not establishing reputation and trade-mark use of mark in Canadian market giving rise to confusion; (3) appellant not establishing degree of distinctiveness for its mark "Cash Management Account" sufficient to negate distinctiveness of applied for mark-Appeals dismissed-Appellant filing additional affidavit evidence concerning advertising placed in prominent North American magazines, Canadian newspapers, periodicals; success of "Cash Management Account" operation in Canada from 1986 to 1989 in terms of number of accounts opened, value of assets administered; extensive display of appellant's trade marks in provision of services in association with which used-(1) Registrar applied proper principles to evidence when stating effect of each of trade- mark as whole not resulting in confusion because of inherent distinctiveness of those portions which will create lasting impressions with relevant public because of renown or notoriety-(2) Burden on opponent to registration to actually show prior use of mark as trade mark before relying on s. 16-When burden discharged, applicant for registration must show no confusion with opponent's mark if applied-for mark registered-None of evidence filed before Registrar, Court going to issue of "recognition by public" of "Merrill Lynch Cash Management Account"-Based on evidence before him, Registrar's conclusions with respect to reputation in Canada of appellant's marks, and with respect to issue of confusion, correct-(3) S. 2 defining "distinctive" in relation to trade mark for service as trade mark actually distinguishing services in association with which used by owner from wares and services of others, or that is adapted to so distinguish them-Relevant date for determining distinctiveness date of filing of statements of opposition-Registrar correctly concluding appellant's unregistered mark not distinctive, respondent's marks distinctive enough to distinguish them from appellant's registered mark-In failing to provide evidence of officer with first-hand knowledge who could have attested more directly, authoritatively to appellant's "cash management account", without explanation, Court infering no evidence more favourable to appellant than that provided-In absence of direct evidence, inference at least some recognition by public of mark "Cash Management Account" as appellant's trade-mark, that mark becoming known to some extent in Canada and some reasonable probability of confusion if respondent's marks registered, used-On totality of evidence, bearing in mind Court's discretion unfettered and appeal functions as trial de novo by reason of filing of fresh evidence, Court unable to conclude extent of operations significant in relation to totality of market in Canada to which operations directed-Evidence not establishing reputation in trade of appellant with regard to mark "Cash Management Account"-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2, 6(5), 12(1)(d), 16(3)(a), 56.