The Federal Court has recently provided a timely reminder that trademarks which are selected to readily communicate to customers the benefits of the product or services, while they may perform a useful role at the outset, may in the long term not be in the best interests of the brand owner, as they may prove to be difficult to enforce.

In Assurant, Inc. v. Assurancia, Inc. 2018 FC 121, the applicant filed an application for the registration of its trademark ASSURANCIA, for use in association with insurance brokerage services. The opponent, Assurant, owned 13 trademark registrations containing the element ASSURANT, all covering insurance services.

Both the Trade Marks Opposition Board and then the Federal Court rejected the opposition to the trademark application, on the basis that there was no likelihood of confusion.

The Court also held that whether a trademark is suggestive of the associated goods or services in either English or French will be detrimental to its overall inherent distinctiveness.

The key distinctions relied upon by the Court were that the trademark ASSURANCIA had greater inherent distinctiveness, and that the marks differed phonetically. The fact that there were 69 entries containing “ASSUR” for use in association with insurance goods or services was also held to be significant in leading to the conclusion that there were sufficient differences between the marks.

This decision provides a timely reminder that when selecting new trademarks, the interests of the marketing department may not mesh entirely with the interests of the trademark lawyer, and that neither viewpoint should be ignored.