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Cushman & Wakefield, Inc. v. Wakefield Realty Corp.
A-132-04
2004 FCA 415, Pelletier J.A.
9/12/04
9 pp.
Appeal from Federal Court decision ((2004), 247 F.T.R. 180) allowing registration of respondent's trade-marks "Cushman & Wakefield" and Cushman & Wakefield Design" --Appellant opposing registration because of alleged confusion with its registered trade-marks "Wakefield Design", "Wakefield" and trade-name "Wakefield Realty Corporation", all used in Canada by appellant--"Wakefield" and "Wakefield Realty Corporation" used in connection with real estate services--Federal Court properly applying statutory test for confusion under Trade-marks Act, s. 6(5) despite absence of systematic approach--Judge considering all required elements for analysis such as inherent distinctiveness of marks, extent to which marks have been made known, length of time marks used, nature of services provided--Use of "Cushman & Wakefield Worldwide" in connection with services offered by Royal Lepage not limited to cross-border referral service but with all commercial real estate services-- Under Act, ss. 4, 50, such use amounting to use of trade-mark in Canada by respondent in connection with commercial real estate business --Evidence showing Royal Lepage making extensive use of trade-mark "Cushman & Wakefield Worldwide"--Open to Federal Court to conclude respondent widely known in Canada in appropriate circles, using trade- mark for sufficient length of time--Also relying on nature of real estate industry to conclude no significant likelihood of trade-mark confusion given distinct markets appellant, respondent operating in-- Respondent representing clients needing commercial real estate brokerage services whereas appellant offering clients residential real estate services--Federal Court not misled as to nature of proceedings, not making any palpable, overriding errors of fact, law, mixed fact and law justifying Court's intervention--Appeal dismissed-- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4, 6, 50 (as am. S.C. 1993, c. 44, s. 233; 1999, c. 31, s. 211(F)).