Is your brand being diluted by a competitor using a similar tagline? A recent landmark decision by the Federal Court of Canada, T. ROWE PRICE GROUP, INC. v GLIDEPATH TECHNOLOGIES INC., 2025 FC 179, has delivered a crucial correction to the application of the trademark confusion test, particularly for composite marks used in the financial services sector.
If you own a trademark that shares a common descriptive or suggestive phrase with a competitor, this ruling confirms a vital principle: the overall commercial impression of your mark matters more than its individual pieces.
The dispute centered on the "likelihood of confusion" between the marks of the Applicant, T. Rowe Price Group, Inc. ("Rowe"), and the Respondent, Glidepath Technologies Inc. ("Glidepath").
Rowe's Registered Marks (Senior): "RETIRE WITH CONFIDENCE" and "INVEST WITH CONFIDENCE."
Glidepath's Applied-for Mark (Junior): "LIVE WITH CONFIDENCE."
All three marks were associated with virtually identical services: various forms of financial planning, investment advisory, and portfolio management services.
The key factor under the Trademarks Act was degree of resemblance (Section 6(5)(e)). Since the marks shared the dominant and virtually identical phrase "WITH CONFIDENCE," confusion seemed likely. However, the Trademarks Opposition Board (TMOB) initially rejected Rowe's opposition.
The TMOB committed a classic legal error: it compared the marks by dissecting them rather than viewing them as a whole.
The Board focused on the differing first words: RETIRE, INVEST, and LIVE. It argued these words conveyed distinct concepts, and therefore the marks were not confusing. Crucially, the TMOB dismissed the shared phrase "WITH CONFIDENCE" as merely suggestive or descriptive (i.e., lacking inherent distinctiveness), thereby minimizing its impact on the overall commercial impression.
On appeal, the Federal Court found this analysis to be a palpable and overriding error in the application of the legal test.
Justice Tsimberis emphatically clarified the correct legal standard:
View the Mark as a Whole: The primary error was failing to consider each trademark as a unitary phrase. The proper comparison must assess the marks' overall appearance, sound, and the general idea they suggest to the "ordinary casual consumer somewhat in a hurry" —a consumer who does not pause to dissect word choices.
The Dominance of "WITH CONFIDENCE": While "WITH CONFIDENCE" is suggestive of financial services, the Court found it was not so purely descriptive that it should be disregarded. Instead, it was deemed the dominant and striking feature in the context of the financial services offered by both parties. The marks are, therefore, highly similar in the idea they suggest.
Identical Services and Trade: Given that the services were virtually identical and delivered through the same trade channels, the high degree of resemblance created by the dominant "WITH CONFIDENCE" phrase was fatal to the junior applicant, Glidepath.
The Court concluded that the TMOB's error led to the wrong result and granted Rowe's appeal, directing the Registrar of Trademarks to refuse the "LIVE WITH CONFIDENCE" application.
This 2025 FC 179 ruling is an essential victory for senior brand owners and provides immediate, actionable insights for your brand protection strategy:
1. Composite Marks Must Be Treated as Unitary
Never let a competitor—or an Examiner—dissect your trademark to minimize similarity. The Canadian legal system is clear: the entire mark must be compared to the entire competing mark. If the most dominant or memorable feature is shared, confusion is highly likely, even if the marks differ in a single, secondary word.
2. Don’t Undervalue Suggestive Phrases
Even if a phrase like "WITH CONFIDENCE" is merely suggestive of a benefit (you'll feel confident using the service), that doesn't render it powerless in the confusion analysis. If that suggestive element is a prominent and striking part of the mark, the Court will treat it as a strong source identifier.
3. High-Stakes Appeals Require Expert Oversight
When appealing a TMOB decision, the Federal Court uses the deferential palpable and overriding error standard for questions of mixed fact and law. Successfully arguing that the TMOB made such an error—as Rowe did by demonstrating a flawed application of the resemblance test—requires deep expertise in appellate trademark litigation.
Are your key taglines or descriptive phrases being copied by a competitor? A trademark is only as strong as your willingness to defend it.
If you are facing a trademark opposition or considering appealing a decision by the Trademarks Opposition Board, you need counsel who understands the subtle but critical errors in applying the likelihood of confusion test.