A recent decision of the Federal Court shows how important it is to file the necessary evidence in a trademark opposition.
Eclectic Edge Inc. (the "Applicant") filed a series of trademark applications for the words VALENTINE SECRET and two design versions of this trademark as well as a separate application for VS Design for use in association with, among other things, women's clothing including bathing suits, underwear, clothing for gymnastics, undergarments, camisoles, and lingerie. The designs are shown below:
Victoria's Secret Stores Brand Management, Inc. (the "Opponent") opposed all of the applications on a number of grounds, including, that the applied-for marks were confusing with a number of VICTORIA'S SECRET registrations owned by the Opponent.
The Applicant did not properly file evidence relating to the state of the Register and attempted to introduce copies of various registrations at the cross-examination of the Opponent's witness.
The hearing officer refused to consider any state of the Register evidence in the absence of filing certified copies of the relevant registrations or at least an affidavit providing particulars of the registrations. It was also found that it was inappropriate to attempt to introduce the registrations through cross-examination.
The hearing officer found in favour of the Opponent on the ground that there was a likelihood of confusion and refused all of the applications. In considering the statutory factors relevant to establishing a likelihood of confusion the hearing officer found all of the factors favoured the Opponent.
The Applicant appealed to the Federal Court and as it was entitled to do filed additional evidence including proper affidavits and searches showing the state of the Register. More specifically, evidence was filed concerning a "how common" search directed at how frequently the term "SECRET" was used in trademarks used in association with women's clothing and undergarments. This search showed a significant number of registrations and pending applications for trademarks that included the word SECRET.
A separate affidavit was filed relating to a Canadian Common Law search directed at determining how frequently the word "SECRET" was used as part of a trademark or a company name. Once again, it was shown that the word SECRET appeared in the names of many corporations.
The judge determined that this new evidence was material and went to the heart of the determination of the likelihood of confusion. As a result, the judge treated the proceedings as a de novo review.
It was agreed that the test for determining a likelihood of confusion existed was whether, in the minds of an ordinary person having an imperfect recollection of the other mark, the use of both marks in the area in the same manner was likely to lead to the inference that the wares and/or services associated with those marks were offered or performed by the same person – which includes any inference that the applicant's wares and/or services are approved, licensed or sponsored by the Opponent.
The judge was satisfied that the new evidence showed that the use of SECRET was relatively commonplace in Canada by third parties in association with lingerie, women's clothing and women's undergarments. The presence of this common element had an important bearing on the issue of confusion because such an occurrence in the market causes purchasers to pay more attention to the other features of the marks in issue and to distinguish between them a result of those other features.
Primarily based on this approach the judge concluded that the differences in appearance and sound between the VICTORIA'S SECRET marks and the Applicant's VALENTINE SECRET marks was sufficient to show that there was no likelihood of confusion.
With respect to the Applicant's VS mark the judge said that there was no question that that the letters VS as used alone or as part of the Opponent's registered trademarks were prominately and extensively used and were extremely well known as an abbreviation for the words "Victoria's Secret". As a result, the judge found that for this mark there was a likelihood of confusion as a result of the fame and noteirity of the Opponent's VS trademarks.
Trademark oppositions can play an important role in maintaining the distinctiveness of a registered trademark. It is useful to think of an opposition as being very similar to an action in the Federal Court. The necessary evidence needs to filed in a form that complies with the applicable requirements. Like all oppositions this case turned on its facts. The state of the Register evidence was vital to the applicant's success on appeal. However, by the same token the evidence of extensive use of the trademark VS by the opponent was effective and resulted in the decision concerning the VS trademark.
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