Date: 20090212
Docket: T-1490-07
Citation: 2009 FC 153
Ottawa, Ontario, February 12,
2009
PRESENT: The Honourable Mr. Justice Russell
BETWEEN:
ADVANCE
MAGAZINE PUBLISHERS INC.
Applicant
and
FARLEYCO
MARKETING INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This
application is an appeal of a decision of the Registrar of Trade-marks
(Registrar) dated June 4, 2007 (Decision), which found that Advance Magazine
Publishers Inc. (Advance) had not met the onus required by section 16(3) of the
Trademark Act, R.S.C. 1985, c. T-13 (Act) for its opposition to the Farleyco
Marketing Inc. (Farleyco) Canadian Trade-mark Application 1,199,765 for
Ghoulish Glamour..
[2]
Advance
argues that the Registrar erred in finding:
1)
That
Advance’s evidence at the opposition level was insufficient to demonstrate that
it was entitled to a broad scope of protection for its GLAMOUR mark;
2)
That
Advance’s GLAMOUR mark and Farleyco’s subject mark are not confusing;
3)
That
Advance’s evidence at the opposition level was not sufficient to meet its onus
under paragraph 16(3)(a) of the Act;
4)
That
Advance had not met its onus to establish that Farleyco’s mark was not
distinctive; and
5)
That
Advance had not filed sufficient evidence to meet its onus under subsection
30(i) of the Act.
BACKGROUND
[3]
On
December 16, 2003, Farleyco filed an application to register the trade-mark
GHOULISH GLAMOUR based upon the proposed use set forth in Application no.
1,119,765. Farleyco was the applicant in the Opposition from which this appeal
arises. The wares contained in the application were “Halloween cosmetics and
eyelash accessories”.
[4]
Advance
was the opponent in the Opposition of Application no. 1,119,765 for GHOULISH
GLAMOUR on July 12, 2004 based on its longstanding trade-marks for GLAMOUR
which is registered for use in association with a periodical magazine and a
variety of related print and electronic wares and services.
[5]
Farleyco
filed a Counterstatement to Advance’s Statement of Opposition, and Advance
filed the Affidavit of Elenita Anastacio to support its claim of use and
registration of the GLAMOUR mark.
[6]
GHOULISH
GLAMOUR has been used in the sale of strip false eyelashes by Farleyco which have
been principally sold for Halloween and costume wear since September 2004. They
are sold in drug, food and mass merchandize outlets. There have been no
instances of confusion of GHOULISH GLAMOUR eyelashes and GLAMOUR magazine that
have been reported. Farleyco claims it uses the word GLAMOUR as a descriptive
term on other products to indicate the style of the product.
[7]
Mr.
Reiken, an investigator hired by Farleyco, spent about 10 hours and visited two
malls and one other store in Toronto and located 31 “Glamour” products in the
field of cosmetics, lingerie, jewellery, children’s wear, computer games,
music, books and toys.
[8]
There
are also approximately 22 certified registrations and applications by third
parties for trade marks consisting of and/or incorporating the word “Glamour”
on the Trade Mark Register in Canada for wares and services in various fields,
including cosmetics, fashion and beauty.
DECISION
UNDER APPEAL
[9]
The
Trade-marks Opposition Board rejected Advance’s Opposition and provided the
following summary:
Having considered all of the surrounding
circumstances, I find that the Applicant has satisfied its onus to show that,
on a balance of probabilities, confusion between the marks is unlikely. This is
primarily because of the inherent weakness of the Opponent’s mark and the
difference between the parties’ marks, wares and channels of trade. The
Opponent’s evidence falls far short of demonstrating that its GLAMOUR
trade-mark is entitled to a scope of protection that is broad enough to render
the Applicant’s Mark unregisterable.
ISSUES
[10]
Advance
raises the following issues in this appeal:
1)
Has
Farleyco, the trade-mark applicant, met its legal burden or onus in this opposition,
namely to prove to the Court that there is no reasonable likelihood of
confusion between Farleyco’s trade-mark GHOULISH GLAMOUR and Advance’s
trade-mark GLAMOUR?
2)
Is
the evidence filed by Advance sufficient to demonstrate that it was entitled to
the broad protection of a well-known and famous trade-mark?
3)
Is
Farleyco entitled to the registration of the trade-mark GHOULISH GLAMOUR in
association with Halloween cosmetics and eyelashes?
STANDARD OF REVIEW
[11]
Advance
submits that subsection 56(5) of the Act provides that, on appeal under
subsection 56(1) of the Act, evidence in addition to that adduced before the
Registrar may be filed with the Federal Court and the Federal Court may
exercise any discretion vested in the Registrar.
[12]
Advance
says that when new evidence is submitted, the Court should, where the evidence
is substantial, proceed by way of a fresh hearing on the extended record: Phillip
Morris Inc. v. Imperial Tobacco Ltd. (1987), 17 C.P.R. (3d) 289 (F.C.A.); Mattel,
Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772 at paragraph 35; Garbo
Group Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224
(F.C.T.D.) at paragraph 24; Maison Cousin (1980) Inc. v. Cousins Submarines
Inc. (2006), 60 C.P.R. (4th) 369 (F.C.A.) at paragraph 7.
[13]
Advance
also submits that it has submitted substantive new evidence dealing with the
findings of the Registrar and the Court is not obliged to defer to the
Opposition Board Decision. The Court must decide the issues for itself. Advance
points out that Farleyco has also filed additional evidence for this appeal.
[14]
Advance
submits that the additional evidence filed is the affidavit of Ms. Susan
Goodall, Executive Managing Editor of GLAMOUR magazine, which was sworn on November
2, 2007. Advance says that this evidence significantly and substantially goes
beyond the evidence that was before the Registrar and demonstrates that the
Court should decide the issues before it on the new record without deference to
the Hearing Officer at the Opposition Board.
[15]
Farleyco
submits that a Trade-mark Opposition Board’s decision is subject to a standard
of reasonableness on appeal unless there is significant new evidence before the
Court that would have materially affected the Opposition Board’s decision: Mattel
at paragraph 37.
[16]
Farleyco
argues that Advance’s additional evidence filed in this appeal would not have
materially affected the Board’s finding that there was no likelihood of
confusion between the marks GLAMOUR and GHOULISH GLAMOUR. Farleyco also says
that, to avoid the reasonableness standard, Advance’s additional evidence would
have to show that the GLAMOUR mark was not inherently weak, or that it has
acquired extensive distinctiveness, and that the parties’ marks, wares and
channels of trade are not different. Advance’s additional evidence would also have
to show that its GLAMOUR mark was so well-known in Canada that it
renders Farleyco’s GHOULISH GLAMOUR mark unregisterable.
[17]
Farleyco
concludes that Advance’s additional evidence would not have materially affected
the Opposition Board’s findings that Advance’s GLAMOUR mark is inherently weak,
that both marks are different in appearance, and in the sound and ideas
suggested, and that the parties’ wares are different and are sold in different
channels of trade. Therefore, the Court should only overturn the Board’s Decision
if it is found to be unreasonable.
[18]
In
the alternative, Farleyco submits that if the Court accepts that Advance’s
additional evidence would have materially affected the Board’s finding in
respect to confusion, then the applicable standard of review is correctness. Farleyco
submits that the Board’s Decision was correct because there is no likelihood of
confusion between the GLAMOUR and GHOULISH GLAMOUR marks.
ARGUMENTS
Advance
Evidence
Presented
[19]
Advance
says that Ms. Goodall’s evidence is as follows:
1)
GLAMOUR
magazine has been distributed continuously in Canada for 70 years since 1938,
and is available in over 200 countries, including Canada and the United
States;
2)
Although
initially only used in the publishing business, the GLAMOUR mark has been used
in association with all of the following wares and services:
1.
A
periodical magazine;
2.
Interactive
CD-roms relating to: periodicals and magazines in the fields of fashion, beauty
and entertainment; pre-recorded compact discs, namely games and catalogues of
magazines in the fields of fashion, beauty and entertainment; pre-recorded
audio and video cassettes, electronic publications, namely magazines and
searchable computer software relating to periodicals and magazines in the fields
of fashion, beauty and entertainment;
3.
Online
magazines and publications distributed in electronic format via the internet
and operating an internet website which allows consumers to subscribe to consumer
magazines and allows advertisers to promote their goods and services via the
internet; and
4.
Providing
information directed to women about fashion, beauty, style and culture,
distributed over television, satellite, audio, video and global computer networks
and providing a wide range of information by means of global computer networks
and wireless media.
3)
GLAMOUR
is a monthly magazine and has also been available online since July of 1997.
The print version is by subscription and on newsstands and the average yearly
circulation is in excess of 2, 000,000 in the United States and 80,000 in Canada;
4)
Particular
excerpts from the Goodall Affidavit show representative magazine and online content
over the years. In particular, GLAMOUR magazine and its online equivalent regularly
feature articles, columns and advertisements that relate to fashion, cosmetics,
make-up, beauty tips, etc.;
5)
Advance
filed its typical Halloween content in GLAMOUR magazine;
6)
A
web capture from GLAMOUR’s website shows some typical Halloween promotions in
association with the GLAMOUR mark and, in particular, shows that Advance has
used the designation GHOULISH GLAMOUR;
7)
The
evidence also shows the ways in which Advance promotes its magazine and related
wares in Canada other than through subscriptions or newsstand displays. In
particular, Advance conducts TOP TEN COLLEGE WOMEN competitions at over 50
universities from coat to coast across Canada;
8)
Promotional
dollars spent on advertising the GLAMOUR magazine and the GLAMOUR mark in
association with its related products and services have been in excess of
$10,000,000 from 1997 to date;
9)
The
popularity of Advance’s online services in association with the GLAMOUR mark is
shown by the number of Canadians who visit www.glamour.com.
With regard to the online version of GLAMOUR, Canadians view over 400,000 pages
monthly and have done so since July 1997;
10)
The
GLAMOUR website allows advertisers, particularly cosmetics and make-up
companies, to promote their goods. Ms. Goodall opines, based on her experience
in the industry, that advertisers participate in the GLAMOUR website because it
is seen as an excellent vehicle for the promotion of their products; and
11)
Annual
revenues of Advance associated with its GLAMOUR products and services are well
in excess of $100,000,000 for the period of 1997 to 2007. Canada represents
approximately 10 percent of that number in terms of revenue.
[20]
Advance
submits that Farleyco’s evidence, particularly the affidavit of Mr. Edward
Reiken sworn November 30, 2007, is of limited value since it reflects a two-day
shopping spree conducted on November 12 and 13, 2007. There is no evidence as
to how long the products Mr. Reiken located have been in the marketplace or
whether they were recently put into commerce or otherwise.
[21]
Advance
also submits that the affidavit of Ms. Patricia Farley-Pope sworn December 3, 2007 and filed by
Farleyco is also of limited probative value for the following reasons:
1)
Ms.
Patricia Farley-Pope was not “sworn” before she signed the Affidavit;
2)
While
the affidavit attests to the use of the GHOULISH GLAMOUR mark, the sales are
relatively recent, minimal and seasonal;
3)
The
reference to the existing trade-mark registrations and applications of third
parties contains little or no evidence as to any use or promotion of the marks
referred to or where use occurred. There is no temporal context to give the
evidence any probative value.
[22]
Advance
also points out that the following admissions were made on cross-examination by
Mr. Reiken:
1)
He
was not aware of Farleyco’s GHOULISH GLAMOUR product and did not locate it in
his searches;
2)
He
was aware of Advance’s GLAMOUR magazine on magazine racks and his awareness
could be for 5-10 years;
3)
His
perception of GLAMOUR magazine was that it related to “fashion, clothing and
cosmetics”;
4)
The
magazines are sold and are visible in grocery and food stores, drug stores,
Costco’s at the checkouts and on racks. Cosmetics products are also available
in these stores;
5)
In
the Farley-Pope affidavit, 22 Canadian trade-mark applications and
registrations were listed which include the word GLAMOUR. The list was put to
Mr. Reiken and he admitted that he had been unable to find one of them in his
10-12 hours of searching. He even inquired of store clerks and none of the products
could be found; and
6)
Mr.
Reiken was not aware of how long the products he located on the website or
products he found and attached to his affidavit had been in existence or in the
marketplace.
[23]
Advance
also points out that Ms. Farley-Pope made the following admissions:
1)
She
had not been asked to confirm the truth of her affidavit before she signed it;
2)
That
eyelashes are a cosmetic accessory;
3)
She
has seen Advance’s GLAMOUR magazine in stores she has visited, which stores also
sell Farleyco’s GHOULISH GLAMOUR product;
4)
Advertising
and promotion sells cosmetic products and she is familiar with cosmetic
advertising in various magazines;
5)
She
has seen Advance’s GLAMOUR magazine “for as long as it has been around”;
6)
Magazines
and cosmetics are sold in the same stores;
7)
Farleyco’s
sales numbers in her affidavit and Exhibit D were not compiled by her. (Advance
submits that they are hearsay);
8)
No
written directions or memoranda have been sent out to retailers inquiring as to
consumer confusion between Advance’s and Farleyco’s trade-marks.
Confusion
[24]
Advance
submits that the Registrar erred in determining that Farleyco’s GHOULISH
GLAMOUR mark was not confusing with Advance’s GLAMOUR marks, particularly in
view of the new evidence contained in the Goodall Affidavit and the admissions
obtained from Farleyco’s witnesses.
[25]
Advance
says that the question of confusion is a matter of first impression and
imperfect recollection as to whether a consumer, knowing of Advance’s GLAMOUR
marks would, upon seeing the GHOULISH GLAMOUR mark, believe the products come
from the same source. Advance points to section 6(2) of the Act for the
definition of confusion.
[26]
Advance
also says that the wares in relation to which Farleyco’s GHOULISH GLAMOUR are
used, are related to, if not overlapping with, those of Advance’s GLAMOUR mark
and they are sold through the same channels of trade.
[27]
Advance
maintains that, when applying the test for confusion, the Court must have
regard to all the surrounding circumstances, including those specifically enumerated
in subsection 6(5) of the Act, namely: the inherent distinctiveness of the
trade-marks or trade-names in question and the extent to which they have become
known; the length of time each trade-mark has been in use; the nature of the
wares, services or businesses; the nature of the trade; the degree of
resemblance between the trade-marks or trade-name in appearance or sound or in
the ideas suggested by them. The Courts have determined that these enumerated
factors need not be attributed the same weight.
Inherent Distinctiveness of the
Trade-marks/Extent to Which Each Trade-mark has Become Known
[28]
Advance
submits that the Registrar’s position was to the effect that no evidence had
been filed to enable her to conclude that either party’s mark had become known
to any significant extent. The Registrar also found that both parties’ marks
were “suggestive” and that the strength of those marks could be increased
through evidence of use and promotion.
[29]
Advance
points out that legal authors and the Court have made it clear that acquired
distinctiveness through use and promotion can warrant a wide scope of
protection, even for suggestive or inherently weak marks: Gill, Kelly and R.
Scott Joliffe, Fox on Canadian Law of Trade-marks and Unfair Competition, 4th
ed., (Toronto: Carswell, 2002-2007) at section 8.2 (c), pages 8-30 and
8-31.
[30]
Advance
also cites and relies upon Bohna v. Miss Universe, Inc. (1994), 58
C.P.R. (3d) 381 at 389-390 (F.C.A.) at paragraphs 17 and 18:
17 It
may have been said, thirty years ago, that there was nothing remarkably
distinctive about the word “Miss” or the word “Universe” or the expression “Miss
Universe”. But as time went by and as the use and promotion of the two words
linked together as one expression were reaching global proportion, the
expression acquired, to use the very words of the Trial Judge, a “considerable
distinctiveness”. The name is now a well-known and reputable name.
18 In
these circumstances, one would have expected the Trial Judge to examine the
facts of this case on the assumption that the appellant’s trade mark was to be
accorded a particularly wide scope of protection and that the burden imposed on
the respondent to dispel any likelihood of confusion was particularly difficult
to overcome, even more so in the area of beauty pageants. This, in my view, he
has failed to do. His reasons, which I have reproduced earlier, show no such
concern. He seems to have ignored the fact that the respondent was a newcomer
entering a field already extensively occupied by the appellant and borrowing in
so doing the whole of a name already well-established in that very field by the
appellant.
[31]
Advance
maintains that even “clearly descriptive” marks can become very well known
through use and promotion. Advance cites and relies upon Molson Breweries v.
Schenley Canada Inc. (1991), 36 C.P.R. (3d) 543 (T.M.O.B.) (Molson):
8. …the opponent’s trade-mark
GOLDEN is clearly descriptive of brewed alcoholic beverages: see the decision
in John Labatt Ltd. v. Molson Cos. Ltd. (1987), 19
C.P.R. (3d) 88 (F.C.A.). The applicant’s mark GOLDEN COOLER is
inherently weak since COOLER is the name of the wares and GOLDEN is arguably
descriptive of the color of the wares.
9. Since the applicant filed no
evidence, I must conclude that its mark had not become known at all in Canada
as of the material time. The opponent, on the other hand, has evidenced long
and extensive use of its trade-mark GOLDEN in combination with its house mark
MOLSON or MOLSON’s for brewed alcoholic beverages. In his affidavit, Mr. Moran
attests to sales by the opponent of beer bearing labels featuring the mark
GOLDEN in excess of $700 million for the period 1970 to 1986. Advertising
expenditures for that same period were greater than $24 million. Thus, as of
the filing of the present application, the opponent’s trade-mark GOLDEN had
become very well known in Canada.
…
11.
…In view
of my conclusions above, and particularly in view of the similarities in the
wares, trades and marks of the parties and the extent to which the opponent’s
mark has become known, I find that the applicant has failed to satisfy the
legal burden on it to show that there is no reasonable likelihood of confusion
between its mark GOLDEN COOLER and the opponent's mark GOLDEN…
[32]
Advance
says that the Goodall Affidavit establishes that Advance’s GLAMOUR magazine is
well-known, if not famous, as a result of extensive promotion and use in Canada
and around the world since the late 1930s. Advance has used the GLAMOUR mark in
association with magazines in Canada and the United States since as
early as 1938. Advance’s magazine and related wares are also available in over
200 countries around the world. In addition, the Goodall affidavit indicates
that Advance’s GLAMOUR magazine has acquired a significant reputation over
almost 70 years of distribution in Canada and that the average yearly
circulation is in excess of 2 million copies in the U.S. and in
excess of 80,000 copies in Canada per monthly issue. While GHOULISH GLAMOUR is
seasonal and has been sold to a certain extent in some geographical regions in Canada since 2004,
Mr. Reiken did not know of Farleyco’s GHOULISH GLAMOUR mark; nor did he find it
in his investigations on the internet or in stores. Advance submits that this
factor favours Advance and establishes that its GLAMOUR mark is well-known,
which makes it difficult for Farleyco to meet the burden of dispelling any
likelihood of confusion.
Length of
Time
[33]
On
this issue Advance submits that the Registrar concluded there was no evidence
to the effect that Advance had continuously used its GLAMOUR mark in Canada.
The new evidence contained in the Goodall Affidavit, however, establishes
substantial and continuous use of GLAMOUR in Canada since as
early as December 1938, and continuously to the present. Advance points out
that GLAMOUR magazine has been available on-line continuously since at least
July 1997. Sales of GLAMOUR online reflect that Canadians have accessed over
400,000 pages per month in each year since 1997. GHOULISH GLAMOUR, on the other
hand, only commenced in Canada in September 2004 and is principally marketed in
August, September and October leading up to Halloween. Advance says this factor
is clearly in its favour.
Nature of the
Wares, Services or Businesses and the Nature of the Trade
[34]
Advance
submits that while it is clear that a finding of confusion is not dependent on
the wares and services in issue not being in the same general class of goods or
services, the closer the relationship, the harder it is for Farleyco to meet its
burden of establishing that there is no likelihood of confusion: section 6(2)
of the Act.
[35]
Advance
says that the Goodall Affidavit establishes the nature of GLAMOUR magazine and
other products distributed by Advance and bearing the trade-mark GLAMOUR. It is
“a monthly magazine, devoted to fashion, beauty, entertainment, health and
lifestyle which necessarily includes beauty products including cosmetics and
make-up and tips and advice related to beauty products.” As well, GLAMOUR
“regularly included articles, features and advertisements relating to fashion,
cosmetics, make-up, beauty, entertainment, health and lifestyle… .”
[36]
Advance
takes the position that, while it can be argued that the wares of the
respective parties are different, they do belong to the same general class of
goods, namely cosmetic, fashion and beauty. Ms. Farley-Pope admitted that the
wares associated with GHOULISH GLAMOUR are a cosmetic accessory and that both parties’
products are sold in the same channels of trade at the retail level.
[37]
Advance
also submits that the Registrar erred when she considered that Halloween
cosmetics are less likely to relate to fashion and beauty. There was no
evidence upon which to base such an opinion. The Registrar ignored the cosmetic
industry. The Goodall affidavit establishes a cross-over and that the trend in
cosmetics is that younger lines of makeup increasingly include Halloween
products in their mainstream displays year-round.
[38]
Advance
concludes on this issue by stating that the type of products sold by Farleyco
could be featured in Advance’s GLAMOUR publication or online magazine. If this
were to occur, it is likely that the public would conclude that the use of
GHOULISH GLAMOUR by Farleyco has been approved or authorized by Advance, or
that there is some kind of business connection between the parties. Advance
submits that this factor favours Advance.
Degree of Resemblance Between the
Trade-marks in Appearance or Sound or in the Ideas Suggested by Them
[39]
Advance
points out that the Registrar recognized the fact that Farleyco “has
appropriated the Opponent’s mark in its entirety and merely inserted a word in
front of it.” However, the Registrar concluded: “Overall, I find that when
considering the two marks as a whole, the degree of resemblance between them is
not great in appearance, sound or idea suggested.”
[40]
Advance
says that in reaching this conclusion the Registrar thought the word “GHOULISH”
in Farleyco’s mark did not significantly diminish its resemblance with
Advance’s mark, especially when the longstanding use of the mark GLAMOUR by
Advance, the breadth of the wares and services of Advance which are sold or
provided in association with the GLAMOUR mark, and the extent of revenues,
advertising, website units and so forth are taken into account. Advance has, throughout
its GLAMOUR website, used GHOULISH GLAMOUR along with its GLAMOUR mark.
[41]
With
use over almost 70 years and the acquired distinctiveness of Advance’s GLAMOUR
mark, Advance says it is entitled to a broad scope of protection and this should
render Farleyco’s GHOULISH GLAMOUR mark non-registrable in association with
Halloween cosmetics and eyelashes.
State of the
Register and the Marketplace
[42]
Advance
says that copies or certified copies of the registrations or applications filed
are required in evidence: Molson as cited in Maximum Nutrition Ltd.
v. Kellogg Salada Canada Inc. (1985), 7 C.P.R. (3d) 520 at paragraph 6. This
was not done in the present case. As well, in order to allow for inferences by
the Court as to the state of the marketplace, there must be a large number of
relevant registrations located: Perks Coffee Ltd. v. Blue Tree Hotels
Investment (Canada), Ltd. (2006), 51 C.P.R. (4th) 462 (T.M.O.B.)
at paragraph 25 and UFO Contemporary Inc. v. The Polo/Lauren Company, L.P. (2007),
60 C.P.R. (4th) 262 (T.M.O.B.) at paragraph 34.
[43]
Advance
says that Farleyco’s evidence regarding the state of the Trade-mark Register
should be given little weight, if any, as it does not show evidence of use of
the registered marks in the marketplace. Mr. Reiken could not locate any of the
registrants listed in the State of the Register search in the marketplace: Del
Monte Corp. v Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.) at
paragraph 10; Gill, Kelly and R. Scott Joliffe, Fox on Canadian Law of
Trade-marks and Unfair Competition, 4th ed., (Toronto: Carswell,
2002-2007) at section 8.7(k), page 8-76.11; Conde Nast Publications Inc. v.
Hanz Schwarzkopf GmbH (1988), 20 C.P.R. (3d) 176 (T.M.O.B.); Kellogg
and Advance Magazine Publishers Inc. v. Masco Building Products Corp. (1999),
86 C.P.R. (3d) 207 (F.C.T.D.).
[44]
Advance
points out that in assessing the likelihood for confusion, the Registrar
considered the GLAMOUR mark in combination with registrations and applications
owned by third parties and submitted by Farleyco. The Registrar did not
consider whether these third-party GLAMOUR registrations were sufficient to
provide any indication as to the state of the marketplace. Farleyco made little
or no effort to improve upon that evidence and an adverse inference should be
taken of this fact.
[45]
Advance
points out that Farleyco’s evidence disclosed the existence of a few GLAMOUR
registrations and applications; however, it did not show that GLAMOUR is
commonly used in the marketplace in association with wares related to
cosmetics, fashion and beauty. The existence of these registrations and
applications without any actual evidence of use is not sufficient to make any
conclusive determination as to the state of the marketplace.
[46]
Advance
reminds the Court that the legal onus on Farleyco with respect to confusion is
such that is has to prove that the absence of confusion is more probable than
its existence when considering the specific criteria under subsection 6(5) and
the surrounding circumstances. Advance says that Farleyco’s evidence falls
short of demonstrating an absence of confusion with Advance’s GLAMOUR mark, or
that there is no likelihood of confusion.
[47]
Advance
submits that if a definitive conclusion cannot be reached by the Court after
reviewing the evidence and the law, then this issue must be decided against
Farleyco. Farleyco’s mark should be refused as the evidence submitted by
Farleyco fails to establish that there is no likelihood of confusion between
Advance’s GLAMOUR mark and Farleyco’s GHOULISH GLAMOUR mark.
Ordinary
Dictionary Word
[48]
Advance
points out that the Registrar indicated that Advance’s mark “consists solely of
the ordinary dictionary word ‘glamour,’ which is highly suggestive of the
subject matter of [Advance’s] magazines.” The Registrar ignored the other wares
and services of Advance which carry the GLAMOUR mark. However, whether the word
“glamour” is or is not commonly used in the English language, it is not
sufficient to restrict Advance’s registered rights. Advance cites and relies upon
Frank T. Ross & Sons (1962) Ltd. v. de Leeuw (1997), 77 C.P.R. (3d)
51 (T.M.O.B.):
14 The applicant
has argued that as an additional surrounding circumstance I should consider the
fact that the word “nature” is a common word in the English language and as
such should not be monopolized by anyone. However, the fact that the word may
or may not be commonly used in the English language is not enough to convince
me to restrict the opponent’s rights. Once a mark is registered it gives the
owner the exclusive right to use it in association with the designated wares
and services (section 19 of the Act). The only question which the applicant can
raise in its defence in a trade-mark opposition is whether the word has come to
be commonly used by others in association with similar wares, which is shown by
evidence of the state of the register or the state of the marketplace. If the applicant
can show that it is so commonly used, then the presumption is that people are
used to seeing marks of this sort for wares of this sort and therefore small
differences between the marks will serve to distinguish them…
Initial Evidentiary Burden on Advance
[49]
The
Registrar also considered whether Advance had met its initial evidentiary onus
with respect to the grounds of opposition. In order to meet this initial
evidentiary burden with respect to section 16(3)(a) of the Act, there
must be evidence that Advance used its GLAMOUR mark in Canada prior to the date
of Farleyco’s application of December 16, 2003.
[50]
In
view of the new, substantial evidence contained in the Goodall affidavit and
exhibits filed by Advance on appeal, which provide evidence of continuous and
substantial use and promotion of the GLAMOUR mark since at least as early as
December 1938, Advance says that it has more than met its initial evidentiary
burden.
[51]
Advance
says that in order to meet its initial evidentiary burden with respect to
distinctiveness, it has to demonstrate that, as of the date of the opposition,
its mark had become sufficiently known in Canada to negate the
distinctiveness of Farleyco’s mark. As a result of the significant new evidence
filed on appeal, Advance submits that it has met its initial evidentiary burden
by showing that its registered trade-mark GLAMOUR, at the time of the filing of
the Statement of Opposition, had become well-known, if not famous, in Canada,
the United States and in several countries around the world.
[52]
With
respect to subsection 30(i) of the Act, Advance submits that the significant
new evidence submitted on appeal shows that Advance’s mark had become
well-known, if not famous, in Canada in association with magazines which provide
information in the fields of fashion, beauty, makeup and cosmetics prior to the
filing date of Farleyco’s application. Specifically, both Mr. Reiken and Ms.
Farley-Pope freely admitted knowledge of Advance’s GLAMOUR mark prior to the
application date. Farleyco could not have been satisfied that it was entitled
to the registration for the mark applied for. Hence, its application was filed
contrary to subsection 30(i) of the Act.
Farleyco
[53]
Farleyco
submits that GLAMOUR and GLAMOR are descriptive words widely used
in the cosmetic and cosmetic accessory industry to describe an attribute of a
product which is “an alluring charm or beauty” or a “magic spell or influence.”
Statutory
Test for Confusion
[54]
Farleyco
says that, pursuant to section 6(2) of the Act, trade-marks are confusing when
the use of both marks in the same area would be likely to lead to the inference
that the wares or services associated with those marks are manufactured, sold,
leased, hired or performed by the same person, whether or not the wares or
services are from the same general class: Mattel at paragraph 51.
[55]
Section
6(5) of the Act contains a list of factors that must be considered when making
a determination as to whether trade-marks are confusing. The list is not
exhaustive and the factors can be given different weights depending on the
context. Additional surrounding circumstances relevant to confusion include the
state of the register and marketplace, as well as the absence of evidence of
confusion despite the co-existence of the trade-marks in the same geographical
area: Kellogg Salada Canada Inc. c. Canada (Registrar of Trade Marks)
(1992), 43 C.P.R. (3d) 349 at 358-360 (F.C.A.) and Mattel at paragraphs
54-55 and 89.
[56]
Farleyco
points out that Advance bears an initial evidential burden of proving the
allegations of fact used to support each ground of opposition, and Farleyco
bears the burden of proving, on a balance of probabilities, there is no
likelihood of confusion and that its GHOULISH GLAMOUR mark is registerable.
Applying
Statutory Test to the Facts of this Case
Inherent
Distinctiveness
[57]
Farleyco
submits that the Opposition Board found that neither GLAMOUR or GHOULISH
GLAMOUR was inherently strong, as both marks are suggestive of the associated
wares. Marks that are descriptive or that are everyday expressions should not
receive the same level of protection as invented or non-descriptive marks. The
mark GLAMOUR, in Farleyco’s view, is inherently weak because it is highly
suggestive of the subject matter of Advance’s monthly magazine, particularly as
regards topics of fashion, beauty, health and lifestyle. These are all elements
that promote a perception of “an alluring charm or beauty.”
[58]
Farleyco
acknowledges that descriptive marks may, depending on the circumstances,
acquire distinctiveness through continuous use in the marketplace. To establish
acquired distinctiveness, a trade-mark owner must show that the consumer
recognizes the mark and associates it with the owner’s wares: Mattel at
paragraph 75 and Garbo Group Inc. v. Harriet Brown & Co. (1999), 3
C.P.R. (4th) 224 at 239 (F.C.T.D.). Farleyco points out that the
Goodall Affidavit falls short of establishing that the GLAMOUR mark is famous
or even well-known, particularly not outside the limited field of monthly periodicals.
Farleyco cites and relies upon Garbo Group at page 239:
The appellant introduced as evidence of
acquired distinctiveness a statement of the expenses that it had incurred for
advertising and promotion over the period between 1984 and 1998. However, there
was no direct evidence that consumers recognized the mark GARBO and associated
it with the wares sold by the appellant.
[59]
Farleyco
also cites and relies upon paragraph 30 in Mattel:
No doubt some famous brands possess protean power (it was
submitted, for example, the distinctive red and white “Virgin”
trade-mark has now been used in connection with such a diversity of wares and
services that it knows virtually no bounds), but other famous marks are clearly
product specific. “Apple” is said to be a well-known
trade-mark associated in separate markets simultaneously with computers, a
record label and automobile glass. The Board’s conclusion that BARBIE’s fame is
limited to dolls and dolls’ accessories does not at all mean that BARBIE’s aura
cannot transcend those products, but whether it is likely to do so or not in
the context of opposition proceedings in relation to restaurant, catering and
banquet services is a question of fact that depends on “all the surrounding
circumstances” (s. 6(5))…
[60]
Farleyco
submits that the Goodall Affidavit shows Advance’s GLAMOUR mark, if known at
all, is only known as the name of a magazine that contains information related
to fashion, beauty, entertainment, health and lifestyles. Advance has not
provided evidence of the use of its mark in association with any other wares,
nor any history or pattern of licensing the mark for use in other fields. As
well, Advance has not provided any evidence that would suggest that it is
commonplace practice for magazine names to be licensed for use as product
trade-marks.
[61]
Farleyco
submits that Advance’s argument of acquired distinctiveness ignores the impact
of numerous other users of the mark GLAMOUR in connection with fashion, beauty,
entertainment and lifestyle wares. There are many other registered and
unregistered GLAMOUR trade-marks for wares in the fields to which Advance
claims to have exclusive rights.
[62]
Farleyco
says that it is well established in trade-mark law that a trader who uses a
mark that consists of, or incorporates, an element that is common to the trade
and which is highly descriptive (as is the word GLAMOUR) cannot expect a wide
degree of protection: Molson Cos. v. John Labatt Ltd. (1994), 58
C.P.R. (3d) 527 at 529 (F.C.A.) and Monsport Inc. v. Vêtements de Sport
Bonnie (1978) Ltée. (1988), 22 C.P.R. (3d) 356 (F.C.T.D.). Farleyco
reminds the Court that trade-mark rights are based on use, and cites and relies
upon paragraph 83 of Mattel:
The point, I think, is that the law of trade-marks is based on
use. In an earlier era it was not possible to register a “proposed” use. Here,
expansion of the BARBIE mark is more than just speculation, but if the BARBIE
mark is not famous for anything but dolls and doll accessories in the area
where both marks are used and there is no evidence that BARBIE’s licensees,
whoever they may be, are in the marketplace using the BARBIE mark for “restaurant
services, take-out services, catering and banquet services”, it is difficult to
see the basis on which the mistaken inference is likely to be drawn.
[63]
Farleyco
concludes on this point that the scope of protection afforded to Advance’s mark
should not be extended beyond the wares for which the mark is actually
registered and used in Canada, namely magazines.
Length of
Time Marks in Use
[64]
Farleyco
submits that the length of time a trade-mark has been in use is only important
in considering whether a mark has really and truly become distinctive: Mattel
at paragraph 77. Advance claims to have distributed magazines in Canada since as
early as 1938, but the Goodall affidavit only provides numerical figures for
distribution and advertising from as early as 1996.
Nature of
Wares and Nature of the Trade
[65]
On
this issue, Farleyco submits that, pursuant to section 6(2) of the Act,
trade-marks are confusing when the use of both marks in the same area would be
likely to lead to the inference that the wares or services associated with
those marks are manufactured, sold, leased, hired or performed by the same
person, whether or not the wares or services are from the same general class: The
Conde Nast Publications Inc. v. C-T-L Uniforms Ltd. (1978), 40 C.P.R. (2d)
142 at 143-144 (T.M.O.B.).
[66]
Farleyco
cites and relies upon Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée,
[2006] 1 S.C.R. 824 at paragraph 33:
While the halo effect or aura of the VEUVE CLICQUOT mark is not
necessarily restricted to champagne and related promotional items and could expand more broadly into the luxury goods market, no
witness suggested the mark would be associated by ordinary consumers with
mid-priced women’s clothing. Thus, in considering all of the relevant
circumstances, the trial judge was of the opinion “that the key factor is the
significant difference between the plaintiff's wares and those of the
defendants” and that “[t]he plaintiff’s activities and those of the defendants
are so different that there is no risk of confusion in consumers’ minds” (para.
76). In weighing up the s. 6(5) factors, this was an emphasis she was entitled
to place in this particular case. Section 6(2) recognizes that the ordinary
somewhat-hurried consumer may be misled into drawing the mistaken inference “whether
or not the wares or services are of the same general class”, but it is still a
question for the court as to whether in all the circumstances such consumers
are likely to do so in a particular case.
[67]
Farleyco
submits that consumers are unlikely to be misled into drawing the inference
that its GHOULISH GLAMOUR Halloween cosmetics and eyelashes are manufactured,
sold, leased or hired by Advance, and Advance’s evidence does not illustrate
otherwise. Advance has mis-characterized, or overstated, Ms. Goodall’s
testimony. Her affidavit and exhibits do not evidence any “trend” in younger
lines of makeup, including Halloween products, in Advance’s mainstream display.
[68]
Farleyco
points to the following four different issues of Advance’s magazine where the
word Halloween has been used:
1)
The
first reference is the statement “Hey, its OK to ask him to wear the French
maid costume for Halloween if he loves it so much.” This statement is not made
in connection with any article or promotion for Halloween costumes or
cosmetics;
2)
The
second reference is a caption to five photos of people making faces at a
camera, “Glamour Snapshot: It’s Halloween. Make your scariest face!” Again, the
photos and caption are not made in connection with any article or promotion for
Halloween costumes or cosmetics;
3)
The
third reference is an article about how Halloween is one of the most common
holidays during which couples break up. This article does not discuss or
promote any Halloween costumes or cosmetics;
4)
The
final reference is also a caption for various photos of celebrities: “In honour
of Halloween, Glamour declares that all Dont’s are Dos for one day, so let’s
hear it for Tammy Fay’s tattooed on makeup look!” Again, contrary to Advance’s
submission, these photos and caption do not promote any brand or brands of
Halloween costumes or cosmetics.
[69]
Farleyco
notes that the reference to the term “GHOULISH Glamour” in Exhibit D of Goodall
Affidavit is a print-out of a UK-based web page advertising Halloween-themed
necklaces. The necklaces are advertised in UK currency and there is no indication they are
available to Canadian purchasers through Advance or its website. As well, Farleyco
points out that Advance has not provided any evidence of the date of the page,
or that any Canadians have ever viewed the page. The web page appears to use
“Ghoulish Glamour” as a descriptive phrase to identify a third party’s
Halloween-themed necklace.
[70]
Farleyco
takes the position that Exhibit D to the Goodall Affidavit is completely
irrelevant to the issues in this Opposition, except to the extent that the
phrase “ghoulish yet stylish” actually supports the Opposition Board’s finding
that Farleyco’s mark is an oxymoron and, therefore, distinguishable from
Advance’s mark.
[71]
Farleyco
further submits that Halloween cosmetics and eyelashes and magazines are
purchased and used for very different reasons. Farleyco’s Halloween cosmetics
and eyelashes are accessories purchased for use as part of a costume. Advance’s
magazine is purchased and read for the information contained therein. Farleyco’s
cosmetics and eyelashes are seasonal items and sold in retail stores only in
the weeks leading up to Halloween, while Advance’s magazine is distributed on a
monthly basis, by mail to subscribers and at newsstands for non-subscribers.
[72]
Farleyco
says that although its Halloween eyelashes and Advance’s magazine may have been
sold in some of the same grocery and drug stores, they are consistently
physically situated in different sections of those stores. Farleyco’s eyelashes
are always displayed in the cosmetics or seasonal Halloween aisles and
Advance’s magazine, if sold in any of these stores, is displayed on the
magazine rack in a different aisle.
[73]
Farleyco’s
wares are advertised in store flyers and at point-of sale on display boards. Its
Halloween eyelashes are not advertised on television or in magazines. Advance’s
magazines are not advertised in store flyers. Due to these differences, Farleyco
submits that it is difficult to see how consumers could mistakenly infer that
these wares originate from the same source.
Degree of Resemblance
between Marks
[74]
Farleyco
points out that the Registrar found the degree of resemblance between the marks
GLAMOUR and GHOULISH GLAMOUR “is not great in appearance, sound or ideas
suggested.” The Registrar’s finding on this factor was based on a consideration
of the overall appearance, sound and ideas suggested by the marks, as well as
the law that the first word or syllable of a mark is the most important
portion: Conde Nast Publications Inc. v. Union des éditions modernes
(1979), 46 C.P.R. (2d) 183 at 188 (F.C.T.D.). For this reason, any additional
evidence attempting to show that Advance’s mark has acquired distinctiveness
would not have materially affected the Board’s findings regarding the lack of
resemblance between the trade-marks.
[75]
Farleyco
concludes that the Board’s finding that the degree of resemblance between the
marks “is not great in appearance, sound or ideas suggested” is not only
reasonable, it is correct.
State of Trade-marks Register and
Marketplace
[76]
Farleyco’s
position on this issue is that the presence of a common element in trade-marks
has an important bearing on the issue of confusion. Therefore, the state of the
register and of the marketplace in respect of common elements are additional
circumstances to be considered when determining whether trade-marks are
confusing or distinctive: Kellogg Salada at pages 358-360; Kellogg
citing Pepsi-Cola Co. of Canada v. Coca-Cola Co. of Canada, [1940]
S.C.R. 17; Advance Magazine Publishers Inc. v. 412233 Ontario Ltd. (2002),
24 C.P.R. (4th) 96 at paragraphs 104-105 (T.M.O.B.); Telus Corp.
v. Orange Personal Communications Services Ltd. (2005), 39 C.P.R. (4th)
389 at 402-404 (F.C.T.D.), aff’d at 47 C.P.R. (4th) 249 (F.C.A.); MEXX
International B.V. v. NBC Fourth Realty Corp. (2003), 33 C.P.R. (4th)
562 at 571 (T.M.O.B.).
[77]
Farleyco
filed before the Registrar certified copies of twenty-two registrations and
applications for trade-marks consisting of, and containing, the word GLAMOUR
for a variety of wares and services including women’s and children’s fashions,
jewelry and accessories, and cosmetics and beauty-care products. With few
exceptions, a trade-mark can only be registered if in use. Advance would have
moved to cancel these registrations if there was any prospect of success.
[78]
Where
evidence shows the common use of a mark, it may be inferred that consumers are
accustomed to make fine distinctions between those marks by paying more
attention to the differences: Kellogg at page 358-360 and Telus at
page 404.
[79]
Farleyco
says that Canadian consumers have clearly been exposed to many GLAMOUR
trade-marks on products in the fields of cosmetics, fashion and beauty.
Consumers are accustomed to differentiating between marks and their multitude
of sources. Canadians are unlikely to infer mistakenly that Farleyco’s mark and
products are connected with Advance and its magazine.
[80]
Evidence
of actual confusion is a relevant surrounding circumstance and, when no
evidence has been provided despite the marks having been shown to be used
concurrently in the same area, the Court can infer that the allegation of
confusion is unjustified: Mattel at paragraphs 55 and 89; Veuve
Clicquot at paragraph 37. Advance has not led any evidence of actual
confusion. Farleyco, however, says it has shown that its GHOULISH GLAMOUR
products have been in the Canadian market for almost four years and there have
been no reported instances of confusion with Advance’s mark.
Conclusions
[81]
Farleyco
concludes that it has discharged the burden of proving, on a balance of
probabilities, that there is no likelihood of confusion between the marks
GLAMOUR and GHOULISH GLAMOUR, and that Advance’s allegation of confusion is
unjustified. In addition, the two marks are different in overall appearance,
sound and ideas suggested. The word GHOULISH serves to distinguish the GHOULISH
GLAMOUR mark from Advance’s mark.
[82]
Farleyco’s
Halloween eyelashes are different from Advance’s magazine, and these products
are not supplied from the same source nor advertised through the same means.
Advance’s mark is inherently weak and consists of a descriptive word that is
commonly used in the fashion, beauty and cosmetics industries. Advance’s mark
has not been shown to have acquired sufficient distinctiveness or a reputation,
which is not limited to magazines, so it does not affect the ability of the
GHOULISH GLAMOUR trade-mark to distinguish Farleyco’s Halloween eyelashes.
[83]
Farleyco
concludes that the GHOULISH GLAMOUR mark is registerable pursuant to paragraph
12(1)(d) of the Act and that Farleyco is entitled to registration of the
mark pursuant to paragraph 16(3)(a). Farleyco is also entitled to use
the mark for the purposes of subsection 30(i) of the Act and the GHOULISH
GLAMOUR trade-mark is distinctive of, and is capable of distinguishing Farleyco’s
wares from Advance’s wares.
ANALYSIS
The Board Decision
[84]
There
is nothing in the record to suggest that the Opposition Board Member did not
make an appropriate decision on the basis of the evidence before her. The
Member correctly reviewed all of the surrounding circumstances in accordance
with the governing jurisprudence and concluded as follows:
Having
considered all of the surrounding circumstances, I find that the Applicant
[Farleyco] has satisfied its onus to show that, on a balance of probabilities,
confusion between the marks is unlikely. This is primarily because of the
inherent weakness of the Opponent’s [Advance] mark and the difference between
the parties’ marks, wares and channels of trade. The Opponent’s evidence falls
far short of demonstrating that its GLAMOUR mark is entitled to a scope of
protection that is broad enough to render the Applicant’s mark unregisterable.
[85]
Notwithstanding
the appropriateness of the Member’s Decision on the evidence before her,
subsection 56(5) of the Act provides that on appeal under subsection 56(1) of
the Act, evidence in addition to that adduced before the Registrar may be filed
and this Court may exercise any discretion vested in the Registrar.
[86]
Advance
claims to have submitted substantive new evidence in this appeal and suggests
that the factual underpinnings of the Member’s Decision have been so changed
that the Court should now decide the matter itself without deference to the
Member’s Decision. Farleyco takes the position that the additional evidence
filed would not have materially affected the Opposition Board’s findings so
that I should merely review the Member’s Decision against a standard of
reasonableness.
[87]
Before
the Court can decide whether it should review the whole matter anew or simply
review the Member’s Decision for reasonableness, the Court must first examine
the new evidence that has been brought forward as part of this appeal.
The New Evidence
[88]
Advance
has filed additional evidence through the affidavit of Ms. Susan Goodall, the
Executive Managing Editor of GLAMOUR magazine sworn on November 2, 2007. Advance says that Ms.
Goodall’s evidence alone significantly and substantially extends beyond the
evidence that was before the Registrar. Ms. Goodall was not cross-examined on
her affidavit.
[89]
Farleyco
has also filed new evidence in the form of an affidavit of Mr. Edward M.
Reiken, sworn November 30, 2007 and the affidavit of Ms. Patricia Farley-Pope dated
December 3, 2007.
[90]
Ms.
Farley-Pope is the president of Farleyco and Mr. Reiken is the president of
Amera International Inc., a private investigation firm. Mr. Reiken was retained
by Farleyco’s counsel to identify, locate and obtain a variety of products
bearing the trade-mark GLAMOUR and he did this by visiting certain stores in
the Square One Shopping Centre in Mississauga on November 12, 2007, and the Yorkdale
Shopping Centre on November 13, 2007. Advance says, for various reasons I will
come to, that Mr. Reiken’s evidence is irrelevant to the present appeal.
Ms. Goodall’s Evidence
[91]
When
Ms. Goodall’s evidence is examined against the criteria and deficiencies noted
in the Member’s Decision, the following is revealed:
(A) Section 6(5)(a) –
inherent distinctiveness of the trade-marks and the extent to which each
trade-mark has become known. Section 6(5)(b) – the length of time each
trade-mark has been in use.
[92]
The
Member concluded that neither of the parties’ marks is inherently strong since
each mark is suggestive of its associated wares. Also, there was no evidence of
continuing use of the GLAMOUR mark by Advance.
[93]
However,
as the Member pointed out, the strength of a trade mark may be increased if it
becomes known through promotion or use. At the opposition stage there was no
evidence to enable the Member to conclude that either party’s mark has become
known in Canada to any significant
extent.
[94]
That
deficiency has now been remedied and Ms. Goodall’s affidavit makes it clear
that:
a)
GLAMOUR
magazine has been distributed continuously in Canada since 1938 and is
available in over 200 countries, including Canada and the United States;
b)
GLAMOUR
has been used:
(i)
Since
December
30, 1938
in association with a periodical magazine;
(ii)
Since
July 5, 2000 in association with: interactive CD-roms relating to periodicals
and magazines in the fields of fashion, beauty and entertainment; in association
with pre-recorded compact discs, games and catalogues of magazines in the
fields of fashion, beauty and entertainment; pre-recorded audio and video
cassettes, electronic publications, namely magazines and searchable computer
software relating to periodicals and magazines in the field of fashion, beauty
and entertainment;
(iii)
Since
July 1997 in association with an on-line magazine and publications distributed
in electronic format via the internet; operating an internet web-site which
allows consumers to subscribe to consumer magazines and allows advertisers to
promote their goods and services via the internet;
(iv)
In
accordance with a recent proposed use application, to provide information
directed to women about fashion, beauty, style and culture, distributed over
television, satellite, audio, video, and global computer networks, and
providing a wide range of information by means of global computer networks and
wireless media.
c)
GLAMOUR
magazine is a monthly magazine that has been available online since July, 1997.
The print version is available by subscription and on newsstands. The average
yearly circulation is in excess of 2,000,000 in the United States and 80,000 in Canada.
d)
The
contents of the GLAMOUR magazine (both print and online) reveal regular feature
articles, columns and advertisements dealing with fashion, cosmetics, make-up,
beauty tips and the like.
[95]
Farleyco
says that the evidence contained in Ms. Goodall’s affidavit falls far short of
establishing that the GLAMOUR mark is famous or even well-known, and
particularly not outside the limited field of monthly periodicals. In my view,
Ms. Goodall’s evidence shows a wide use of the GLAMOUR mark in association with
both the print and electronic versions of the magazine as well as other
electronic networks that advertise products and provide advice and information
to women in the fields of fashion, beauty and entertainment.
[96]
However,
I cannot find convincing evidence that consumers associate the products
featured in the magazine and its various electronic extensions with the GLAMOUR
mark. And there is no evidence that Advance has ever licensed the GLAMOUR mark
for use in association wares and products.
[97]
As
Ms. Goodall points out, Advance publishes GLAMOUR magazine, which is devoted to
fashion, beauty, entertainment, health and lifestyle, and this means, by
necessity, that beauty products such as cosmetics and make-up are advertised
and offered for sale in the magazine, and that the magazine offers advice,
articles, features and advertisements that relate to fashion, cosmetics,
make-up beauty, entertainment, health and lifestyle.
[98]
Whether
this means that confusion will result if Farleyco is permitted to use GHOULISH
GLAMOUR for its Halloween cosmetics and eyelash accessories depends upon all of
the circumstances of the case, but I think it is obvious at this point that the
evidence before the Court concerning Advance’s use of GLAMOUR and the extent to
which the mark has become known significantly extends the evidence that was
before the Member when she made her Decision, so that I must decide the issues
before me anew on the basis of the new evidential record.
(B) Section
6(5)(c) and (d) – the nature of the wares, services or business;
the nature of the trade.
[99]
As
regards Advance’s GLAMOUR mark the Member concluded that the “wares appear to
be essentially magazines, in printed or electronic form, in the field of
fashion, beauty and entertainment …” and that “[n]o information has been
provided regarding either party’s channels of trade and it is not apparent that
the parties’ wares would travel the same channels of trade.” The Member also
pointed out that “there is no evidence that the Opponent’s magazines ever dealt
with Halloween related cosmetics or eyelash accessories.”
[100] Ms. Goodall’s affidavit
brings out the following material evidence for consideration under this heading:
(a)
Besides
promoting its magazine and on-line extensions in Canada through subscriptions
and newsstand displays, Advance also conducts a TOP TEN COLLEGE WOMEN
competition carried out at over 50 universities from coast to coast across
Canada;
(b)
Advance
has spent in excess of $10,000,000 since 1997 on advertising GLAMOUR magazine
and its extensions, but the Court is not told how this breaks down between
Canada, the United
States and
the rest of the world;
(c)
As
regards the online version of GLAMOUR, Canadians have viewed over 400,000 pages
monthly since July 1997;
(d)
The
GLAMOUR website also allows advertisers, including cosmetics and make-up
companies, to promote their goods;
(e)
Annual
revenues of Advance associated with its GLAMOUR products and services are well
in excess of $100,000,000 for the period 1997-2007 and Canada represents
approximately 10% of that number in terms of revenue;
(f)
Advance
does include some specific Halloween content in its GLAMOUR magazine and has,
in fact, used the designation GHOULISH GLAMOUR.
[101] Once again, I think the
Court has been presented with evidence of the nature of the wares and services,
and the channels of trade that goes significantly beyond what was before the
Member and which should now be considered afresh as part of the general issues
before the Court.
[102] After reviewing this
evidence, although Ms. Goodall makes reference to interactive cd-roms,
pre-recorded compact discs consisting of games and catalogues, pre-recorded audio
and video cassettes and electronic publications in the fields of fashion,
cosmetics, make-up, beauty, entertainment, health and lifestyle, it seems to me
that the Advance evidence shows that various cosmetic products are featured and
advertised in GLAMOUR magazine and its electronic extensions as part of the
discussion and advice that Advance provides to its readers. There is no
evidence of use in association with the cosmetic products that are featured and
advertised. GLAMOUR is used by Advance in association with its magazine and
online periodicals and extensions, which are the wares for which the mark is
registered in Canada.
[103] As regards Exhibit C-1
to Ms. Goodall’s affidavit and the use of the word “Halloween,” I can see no
use in association with any article or promotion of Halloween costumes or
cosmetics. The references simply refer to Halloween as an occasion. And, as
Farleyco points out, the reference to “GHOULISH GLAMOUR” is a print-out from a UK based web site
advertising Halloween-themed necklaces. The necklaces are advertised in UK currency, and there is
no indication that they are available to Canadian purchasers through Advance or
its website. “GHOULISH GLAMOUR” is used as a descriptive phrase to identify a
third-party’s Halloween-themed necklace and there is no evidence that Canadians
have ever seen it.
Summary
[104] Considering the new
evidence put forward by Advance and Farleyco as it relates to section 6(5) of
the Act, my conclusions are as follows:
(a)
It
is still the case that neither of the parties’ marks is inherently strong
because both marks are suggestive of their associative wares;
(b)
Advance
has now been able to show that it has continuously used GLAMOUR in Canada since
1938;
(c)
Advance’s
GLAMOUR mark is used in association with magazines, in both printed and
electronic form, and related wares and services such as cd-roms, pre-recorded
compact discs, games, catalogues, pre-recorded audio and video cassettes,
electronic publications and searchable computer software, all of which deal
with the fields of fashion, beauty and entertainment, and which provide
information and advice directed at women about fashion, beauty, style and
culture. Advance’s magazine publications and internet web-site allow consumers
to subscribe to its magazines and advertisers to promote their goods and
services;
(d)
Advance’s
wares and services are sold by subscription, on newsstands and are also
available online on the internet and are distributed over television,
satellite, audio, video, and global computer networks. Farleyco’s evidence
reveals that its GHOULISH GLAMOUR Halloween eyelashes are sold in drug, food
and mass merchandise retail outlets such as Shoppers Drug Mart, WalMart,
Loblaws and Zellers where the GHOULISH GLAMOUR wares are stocked in the
cosmetic sections or Halloween specialty sections. There is no evidence to
suggest that such wares are displayed near magazines or that anyone, in
purchasing GHOULISH GLAMOUR wares, has inferred or might reasonably infer that
such wares are manufactured, sold, leased, hired or performed by the same
person who manufactures, sells leases, hires or performs wares and services in
association with the GLAMOUR mark. The evidence also suggests that Farleyco
advertises its GHOULISH GLAMOUR wares in store flyers and on display boards at
point-of-sale and not on television or in magazines. Advance’s GLAMOUR wares
and services, on the other hand, are not advertised in store flyers.
(e)
The
degree of resemblance between the trade marks in appearance or sound, or in the
ideas suggested by them is, in my view, as described by the Member in her
Decision, and the new evidence does not suggest that her conclusions that,
taken as a whole, “the degree of resemblance between them is not great in
appearance, sound or idea suggested” was either unreasonable or incorrect.
Considering this factor anew, I come to the same conclusions;
(f)
As
regards other factors, it is not entirely clear to what extent the other 22
registrations and applications on the request for marks consisting of, or
containing, GLAMOUR, amount to in terms of actual market use. But the evidence
of Mr. Reiken, as well as Advance’s own evidence, reveals that the word
“GLAMOUR” is in commonplace usage in the fashion, beauty and cosmetic fields.
As Farleyco points out, this would suggest that Canadian consumers have been
exposed to an array of GLAMOUR trade-marks and are accustomed to
differentiating between GLAMOUR marks and their multitude of sources. As
mentioned earlier, there is no evidence before me of actual confusion between
the two marks at issue in this case. GHOULISH GLAMOUR products have been in the
Canadian market for approximately four years and there are no reported
instances of confusion with Advance’s GLAMOUR. There is also no evidence that
anyone in the magazine industry typically licenses the names of their magazine
for use in association with cosmetics.
[105] The Member concluded
that, considering all of the surrounding circumstances, Farleyco had satisfied
its onus to show that, on a balance of probabilities, confusion between the
marks was unlikely:
This
is primarily because of the inherent weakness of the opponent’s [Advance’s]
mark and the differences between the parties’ marks, wares and channels of
trade. The opponent’s evidence falls far short of demonstrating that its
GLAMOUR mark is entitled to a scope of protection that is broad enough to
render the Applicant’s mark unregisterable.
[106] The Member also said
that her conclusion would remain the same even if she accepted that “the
opponent’s registrations showed de minimus use of its mark in Canada
since 1938” and whether or not she “treated the number of third party GLAMOUR
registrations as sufficient to reach a conclusion concerning the state of the
marketplace.”
[107] In considering this
matter anew, I still need to assess the extent to which the new evidence
brought forward by both sides concerning use demonstrates that Advance’s
GLAMOUR mark has an acquired distinctiveness through use and promotion that is
sufficient to warrant a wide scope of protection, even for a mark that is
suggestive and inherently weak.
[108] Farleyco, I think,
correctly points out that its Halloween eyelashes are different from Advance’s
magazine wares and services, they are not typically supplied from the same
source, and they are advertised and sold through different means and in
different retail locations. Just because cosmetic products are advertised,
discussed, or otherwise featured in Advance’s magazine and related wares does
not mean, in my view, that any acquired distinctiveness in the GLAMOUR mark
should extend to cover such products.
[109] However, as Advance
points out, section 6(2) of the Act makes it clear that confusion can occur
“whether or not the wares or services are of the same general class.”
[110] When applying the test
for confusion, it is clear that the Court must have regards to all the
surrounding circumstances, including those specifically enumerated in
subsection 6(5) of the Act, and that the enumerated factors need not be
attributed the same weight. It is also well established that the test for
confusion is one of first impression and imperfect recollection. The Supreme
Court of Canada has discussed the appropriate process for assessing all of the
surrounding circumstances to be considered in determining whether two
trade-marks are confusing in Mattel and Veuve Clicquot.
Conclusions
[111] In my view, what the
evidence establishes (particularly the new evidence put forward by Advance) is
that the word “GLAMOUR” is descriptive of a whole industry of cultural and
commercial endeavour. Like the words “Fashion” or “Beauty,” GLAMOUR may have a
more specialized meaning in particular contexts, but in the context of this
dispute Glamour is something that a large segment of the public obviously
wishes to acquire, and both Advance and Farleyco are part of an industry that wishes
to make money out of supplying Glamour to the public in various forms.
[112] Within this general
context, Advance has, through the continuous use of its GLAMOUR mark in
association with particular wares and services given its mark a certain
distinctiveness. GLAMOUR is distinctive of and associated with a particular
magazine as well as with the electronic derivatives of that magazine and
related wares and services. GLAMOUR is used by Advance in association with
wares and services that, in a general sense, create a culture and a realm of
discourse that is connected with, and bleeds off into, other related areas such
as fashion, beauty, health, life-style, entertainment, etc. But I think the
evidence is clear that Advance’s GLAMOUR mark is not associated with all wares
and services that make up the glamour industry and that its distinctiveness
lies in products and services that contribute to a culture, an ambience, a
forum, a form and mode of discourse that we know generally as the glamour
industry. Part of the purpose of the culture and discourse created by GLAMOUR
is to allow third parties to advertise and sell their glamour products and so
generate revenues for Advance.
[113] In my view, the evidence
is clear that, in doing this, Advance does not compete with its own advertisers
in, for instance, the manufacture, promotion and sale of cosmetics. There is a
clear distinction in the materials between the culture and discourse created by
Advance’s GLAMOUR products and services and the cosmetic products that come
with the promise – express or implied – that they will give, create, induce or bestow
glamour upon the purchaser.
[114] This is why, in my view,
there is no evidence in the present case of Advance having licensed its GLAMOUR
mark to product manufacturers or, indeed, that it is common practice in the
industry to do so. It is also why there is no actual evidence of confusion in
the present case. Those in pursuit of glamour and the products that will make
them glamorous are well-aware of the distinction between the general culture
and discourse of glamour within which Advance participates, and the myriad
cosmetics and packaged aids to glamour that are advertised in GLAMOUR magazine
and its electronic derivatives.
[115] Advance’s attempts to
establish a “cross-over” between its magazine and related products and
Farleyco’s Halloween eyelashes suggests that Advance is well aware of the
distinctions I have referred to above and is anxious to cite any possible use
of “Halloween” that might bridge the gap. But none of the examples given do
that.
[116] Even though cosmetics
and magazines may be sold in the same stores, the evidence in this case shows
that GLAMOUR magazine and Farleyco’s products are sold and advertised in very
different ways and are purchased and used in very different ways.
[117] Advance argues that,
although it might be said that the wares of the respective parties that are at
issue in this case are different, they nevertheless belong to the same general
class of goods, namely cosmetic, fashion and beauty.
[118] The evidence does not
suggest to me that magazines and their electronic derivatives are in the same
class of goods as cosmetics. I think what Advance means here is that those who
manufacture cosmetics are in the same industry as Advance who publishes a
magazine devoted to fashion and beauty that also advertises cosmetics
manufactured by third parties. There is no evidence, in my view, to establish
the cross-over that Advance wishes to make in order to give its GLAMOUR mark a
distinctiveness that would extend to cosmetics of the kind manufactured and
sold by Farleyco.
[119] The evidence suggests to
me that consumers are repeatedly exposed to many Glamour trade marks and to the
constant use of the word “glamour” in the glamour industry and the marketplace
it spawns. I think it can be assumed in this context that they have become
extremely adept at distinguishing between wares and services sold and
associated with the word “Glamour,” either singly, or in combination with other
words, and that they are extremely unlikely to associate Farleyco’s Halloween GHOULISH
GLAMOUR products with Advance’s GLAMOUR wares and services.
[120] For these reasons, after
considering all the factors enumerated in section 6(5) of the Act, and taking
into account the principles enunciated in Mattel, Veuve Clicquot
and all of the surrounding circumstances brought before me in this case, and
considering the matter anew, I still believe that Farleyco has discharged its
burden of proving, on a balance of probabilities, that confusion between the
marks is unlikely.
[121] As regards the section
30(1) grounds, I think the new evidence establishes that Farleyco was aware of
Advance’s GLAMOUR mark as of the relevant date, but this is not inconsistent
with Farleyco’s position that it was satisfied that it was entitled to use GHOULISH
GLAMOUR on the basis that its mark was not confusing with Advance’s mark, and I
see no evidence of bad faith on the part of Farleyco.
JUDGMENT
THIS COURT ORDERS AND
ADJUDGES that
1.
The
appeal is dismissed;
2.
The
decision of the Registrar of Trade-marks dated June 4, 2007, refusing
Advance’s opposition to Canadian Trade-mark Application No. 1,199,765 is
maintained;
3.
Farleyco
shall have the costs of this appeal.
“James Russell”
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