par
Sarah D. Pinsonnault
Articles du même auteur
27 Avr 2015

The Words « Lingerie » and « Secret » Go Hand in Hand

Par Sarah D. Pinsonnault, avocate

By Sarah D. Pinsonnault

In Eclectic Edge Inc. v. Victoria’s Secret Stores Brand Management,
Inc
., 2015 FC 453, the Federal Court had to decide whether, inter alia, there was a risk of
confusion between the Applicant’s “Valentine Secret” Word Mark, Design Mark and
Lingerie Mark and those of the Respondent, “Victoria’s Secret”.

Although the Registrar of Trade Marks answered “yes” to that question,
the Federal Court however thought otherwise. In citing the Federal Court of
Appeal’s decision Kellogg Salada Canada
Inc
. v. Canada (Registrar of Trade
Marks)
, [1992] FCJ No 562, it found that just like the word “Nutri” which is commonly
used in trade-marks in the food trade industry, so is the word “Secret” in the
lingerie marketplace:

“[80] The problem with the Respondent’s
position, and that of the Trademarks Office [TMO] on likelihood of confusion,
is that they ignore a number of fundamental legal issues and facts as presented
in this case […]

b. The new evidence shows that the use of
SECRET is relatively common place in Canada by third parties in association
with lingerie, women’s clothing and women’s undergarments […]

[81] As stated by the Federal Court of Appeal
in Kellogg Salada Canada Inc. c Canada (Registrar of Trade Marks),
[1992] FCJ No 562 at pages 358-360 (FCA) (Kellogg):

[…]

…In Fox, The Canadian Law of Trade Marks and
Unfair Competition, (3rd ed.), Toronto, 1972, at page 351, the learned editors
stated:

[…] In considering the possibility of confusion
between any two trade marks, it is a well recognized principle that, where
those two marks contain a common element that is also contained in a number of
other marks in use in the same market, such a common occurrence in the market
tends to cause purchasers to pay more attention to the other or non-common
features of the respective marks and to distinguish between them by those other
features […]

The evidence does show that the word
« Nutri », as a prefix or otherwise, has been generally adopted and
used in the food trade in Canada […] I agree with counsel’s submission that it
is reasonable from all of this evidence to conclude that the word
« Nutri » has been commonly adopted in the food trade as suggestive of
a desirable attribute of foods, particularly health foods. I think it may be
inferred that consumers of these products are accustomed to making fine
distinctions between the various « Nutri » trade marks in the
marketplace, by paying more attention to any small differences between marks […]”

With that in mind, the Federal Court reaffirmed that when two trademarks
share a common element that is also widely used in the same market, there is less
of a likelihood of confusion given that consumers will tend to pay
more attention to the non-common features of the marks. Accordingly, on this
ground of appeal, the Federal Court concluded as follows:

“[83] Given the differences in appearance and
sound between the VICTORIA’S SECRET mark and the Respondent’s VALENTINE SECRET
Word Mark, Design Mark and Lingerie Mark, and notwithstanding the ideas
suggested by the marks in issue, which somewhat favor the Respondent, I find
there is no likelihood of confusion.”

To read this decision in its entirety, click here.

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