JOHN HANCOCK LIFE INSURANCE SERVICES (“JOHN HANCOCK”) opposed the trademark application of PNB LIFE INSURANCE (“PNB”) for “DIVERSIFY” covering life insurance product in class 36.

PNB argued that it has a batter right to the mark as the first filer and registrant for the trademark DIVERSIFY on December 12, 2014 as opposed to JOHN HANCOCK which registered IDIVERSIFY only on January 16, 2016. JOHN HANCOCK registered the trademark “IDIVERSIFY” under class 9 (computer applications), 36 (providing services for research on financial investments) and 42 (software for analyzing investments).

The IPO rejected PNB’s argument since “it is not the application or registration that confers ownership of a mark, but it is the ownership of the mark that confers the right to registration”. The presumption of ownership yields to superior evidence of actual and real ownership of the trademark.

The IPO pointed out that both parties use the same literal elements “D-I-V-E-R-S-I-F-Y”, differing only in that the Opposer uses a first letter “I”, hence “IDIVERSIFY”. Deleting the letter “I” is negligible and insignificant because the resultant marks are still the same. There are no appreciable differences between the marks except for the letter “I””.

Applying the dominancy test in determining the likelihood of confusion, the word “DIVERSIFY” is the dominant, central, prevalent feature of both marks”. It is of no moment that PNB’s DIVERSIFY’s mark is written in script type as this does not detract from the fact that the public, when availing of financial services or insurance products, will recall the dominant word “DIVERSIFY”, which is connected to JOHN HANCOCK’s mark “IDIVERSIFY”. Likewise, although “IDIVERSIFY” is used on computer applications, the software services provided by JOHN HANCOCK relate to analyzing investment portfolios and strategies that are related and connected to insurance. As such, the public may be deceived that JOHN HANCOCK has branched out or have a connection, affiliation, or sponsorship to the business of PNB.

In conclusion, the IPO ruled that “the public interest, requires that two marks, identical to or closely resembling each other and used on the same and closely related goods/services, but utilized by different proprietors, should not be allowed to co-exist. Confusion, mistake, deception and even fraud, should be prevented”.

(BLA decision in IPC NO. 14-2015-00201 dated 22 December 2017)