Docket:
T-1768-08
Citation: 2013 FC 1107
Ottawa, Ontario, October 30,
2013
PRESENT: The Honourable Madam Justice Tremblay-Lamer
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BETWEEN:
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CORTEFIEL, S.A.
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Applicant
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and
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DORIS
INC.
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Respondent
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REASONS FOR JUDGMENT AND JUDGMENT
[1]
This is an application for judicial review of
the decision of the Trade-marks Opposition Board, (the Board) dated September
10, 2008, wherein the Registrar refused the applicant’s application for
registration of the trade-mark WOMEN’SECRET Design (the Mark) pursuant to
s.38(8) of the Trade-marks Act (the Act) with respect to wares:
“(2) Clothing for
women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice),
underwear combinations, underwear tops, undershirts, panties, tangas
(g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts
(camisoles), dressing gowns, slippers, caps, bonnets, stockings (panties), mini
stockings, socks, bikini, bathing suits, pareos (sarongs), shorts for swimming;
footwear, namely esparto shoes, sandals, bath slippers, beach shoes, boots for
sports, slippers, gymnastic boots, sports shoes, espadrilles; headgear, namely,
berets, caps, hats, bonnets, and bathing caps; (3) … brassieres, body suits,
teddies, corsets, bustiers (bodice), underwear combinations, underwear tops,
undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles,
pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts,
sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts, slippers,
caps, bonnets, stockings (panties), mini-stockings, socks, bikinis, bathing
suits, pareos (saraongs), shorts for swimming.”
FACTS
[2]
On November 15, 1999 Cortefiel, S.A. (the applicant) filed an application to register the trade-mark WOMEN’SECRET, as illustrated:
[3]
The application was filed for a large number of
wares including “(1) Bleaching preparations; scouring preparations; soaps … (2)
Clothing for women … (3) Preparations for facial treatment … brassieres, body
suites, teddies, corsets …”
[4]
The bases of the application were for the
registration and use of WOMEN’SECRET in Spain for the wares marked (1) and (2)
and the proposed use in Canada for the wares marked (3).
[5]
The application was advertised in the Trade-marks
Journal on March 26, 2003.
[6]
On May 26, 2003, Doris Inc (the respondent)
filed a Statement of Opposition with respect to the wares (2) and (3), known
collectively as “clothing and intimate apparel”.
[7]
The applicant filed a counter statement on
January 22, 2004 in response.
[8]
Both parties filed written arguments and were
represented at an oral hearing before the Board.
THE IMPUGNED DECISION
[9]
The Registrar refused the application with
respect to the wares clothing and intimate apparel. She assessed six grounds of
opposition:
i.
The Registrar rejected the ground that the
application does not comply with the requirements of s. 30(e) of the Act in
that the applicant did not intend to use WOMEN’SECRET in Canada in association with the wares. The respondent did not discharge its evidentiary burden of
showing that the applicant did not intend to use the Mark in Canada in association with the specific wares;
ii.
The Registrar rejected the respondent’s argument
that the application does not comply with the requirements of s.30(i) of the
Act in that the applicant could not have been satisfied that it was entitled to
use WOMEN’SECRET in Canada in association with the wares in view of the prior
use and registration of the respondent’s trade-marks. The Registrar stated that
this ground “should only succeed in exceptional cases such as where there is
evidence of bad faith on the part of the applicant”. However, the respondent
did not allege that the applicant knew of the respondent’s trade-marks or
adopted WOMEN’SECRET knowing that it was confusing with the respondent’s
trade-marks;
iii.
The Registrar accepted that WOMEN’SECRET was not
registrable pursuant to s. 12(1)(d) of the Act because it was confusing with 53
registered trade-marks of the respondent, especially in relation to SECRET. The
Registrar considered the test for confusion in light of s. 6(2) of the Act and
took note of surrounding circumstances including those enumerated in s.6(5): “(a) the inherent
distinctiveness of the trade-marks or trade-names and the extent to which they
have become known; (b) the length of time the
trade-marks or trade-names have been in use; (c) the
nature of the wares, services or business; (d) the
nature of the trade; and (e) the degree of
resemblance between the trade-marks or trade-names in appearance or sound or in
the ideas suggested by them”. In particular, the Registrar found that
the respondent’s trade-mark was inherently distinctive; the applicant’s wares
were closely related to, “if not overlapping with,” the respondent’s wares
(primarily hosiery); and the applicant’s Mark was “in a fair degree of
similarity … in appearance, sound and idea suggested” to the respondent’s
trade-marks. The Registrar also held that the length of time the trade-marks
have been in use under s.6(5)(b) favours the respondent when considering the
registered wares corresponding to hosiery products and hosiery gloves, but that
the respondent did not file any evidence of use with respect to other wares.
The Registrar also considered additional circumstances in addressing
s.12(1)(d): she found that the respondent established the existence of a family
of trade-marks containing SECRET for women’s intimate apparel and agreed that
they had notoriety such that “consumers would probably believe that the
identical or closely related wares associated with the Mark derive from the
same source.” Moreover, the Registrar rejected the applicant’s argument that
“secret” is such a common trade-mark and trade-name in Canada in association with the wares that Canadians are used to distinguishing between different
marks. The Registrar held that the evidence was insufficient to show that
“secret” was commonly adopted by third parties in association with intimate
apparel, and that even if it was sufficient the evidence was “outweighed by the
existence of the SECRET Family of Trade-marks and the notoriety of [the] trade-mark
SECRET in association with women’s intimate apparel.” The Registrar also found
that the applicant failed to meet its onus of showing that WOMEN’SECRET was not
confusing in regards to other wares, such as swimwear, footwear and headwear;
iv.
The Registrar agreed with the respondent that
the applicant was not entitled to registration of WOMEN’SECRET pursuant to
s.16(2)(a) and s.16(3)(a) of the Act because at the date of the filing the Mark
was confusing with 41 trade-marks previously used in Canada by the respondent
and/or its licensees. However, the Registrar found that the likelihood of
confusion was only in respect of some wares, namely clothing and intimate
apparel, and not footwear, headwear and swimwear/beachwear;
v.
Regarding the grounds of opposition made in
relation to s.16(2)(b) and 16(3)(b), the Registrar dismissed the respondent’s
claims for being improperly pleaded in that they misidentified the filing date;
and
vi.
Finally, the Registrar accepted the respondent’s
argument that WOMEN’SECRET was non-distinctive only in relation to clothing and
intimate apparel.
ISSUES
[10]
The issues are as follows:
1. What is the standard of review?
2. Was the Registrar’s decision reasonable?
(a) In particular, was it reasonable for the Registrar
to find that there was a likelihood of confusion between WOMEN’SECRET and the
respondent’s SECRET trade-marks within the scope of s.6 of the Act?
(b) Was it reasonable for the Registrar to find that
WOMEN’SECRET was not distinctive?
STANDARD OF
REVIEW
[11]
The applicant submits that the additional
evidence and cross-examinations “significantly and substantially extends beyond
the evidence that was before the Registrar.” The applicant argues that the
Court should thus proceed by way of a fresh hearing without deference to the
Registrar’s decision.
[12]
The respondent takes
the position that the additional evidence filed was not particularly new and
would not have materially affected the Registrar’s findings in any case.
[13]
In addition, the respondent submits that even if
the evidence is considered substantial, the Court must still defer to the
Registrar (referring to Mattel Inc v 3894207 Canada Inc, 2006 SCC 22,
[2006] 1 S.C.R. 772 at paras 36-37, citing Benson & Hedges (Canada) Ltd v St
Regis Tobacco Corporation, [1969] S.C.R. 192 at 200).
[14]
Subsection 56(5) of the Act provides that on
appeal under s. 56(1) of the Act, additional evidence to that adduced before
the Registrar may be filed and this Court may exercise any discretion vested in
the Registrar.
[15]
In Molson Breweries, A Partnership v John
Labatt Ltd, [2000] 3 FC 145, 5 CPR (4th) 180 at para 51, the Federal
Court of Appeal held that:
[h]aving regard to
the Registrar’s expertise, in the absence of additional evidence adduced in
the Trial Division, I am of the opinion that decisions of the Registrar,
whether of fact, law or discretion, within his area of expertise, are to be
reviewed on a standard of reasonableness simpliciter. However,
where additional evidence is adduced in the Trial Division that would have
materially affected the Registrar’s findings of fact or the exercise of his
discretion, the Trial Division judge must come to his or her own conclusion as
to the correctness of the Registrar’s decision.
(Emphasis added)
[16]
The Federal Court has added that in determining whether new evidence would have materially
affected the Registrar’s findings of fact, the Court should ask “to what extent
this evidence has a probative significance that extends beyond the material
that was before the Registrar” (Diamant Elinor Inc v 88766
Canada Inc, 2010 FC 1184, [2010] FCJ No 1476 at
para 43; Spirits International BV v BCF s.e.n.c.r.l, 2011 FC 805, [2011]
FCJ No 1008 at para 29).
[17]
The Court emphasized that if
the new evidence “adds nothing of significance, but is merely repetitive of
existing evidence without enhancing its cogency, its presence should not affect
the standard of review applied by the Court on the appeal” (Garbo Group Inc v Harriet Brown & Co (1999), 3 CPR
(4th) 224, [1999] FCJ 1763 at para 37; Spirits International,
above, at para 29).
[18]
However, before the Court
can decide whether it should review the whole matter anew or simply review the
decision for reasonableness, the Court must first examine the new evidence that
has been brought forward as part of the appeal (Advance Magazine Publishers Inc v
Farleyco Marketing Inc, 2009 FC 153, [2009] FCJ No 198 at para 87).
[19]
Pursuant to s. 56(5) of the Act, both the
applicant and respondent filed new evidence. The applicant filed the affidavit
of Michael Stephan, Senior Investigator at King Reed & Associates Inc; the
affidavit of Hala Tabl, a summer student with the applicant’s counsel; and the
affidavit of Anthony Benevides, Law Clerk for the applicant’s counsel which
contains a copy of the file history of the Canadian trade-mark application no.
1,036,028 for WOMEN’SECRET.
[20]
The Stephan affidavit provides new evidence of
third-party use of “secret(s)” from November 2008 to January 2009: the retail
store in Toronto called Secret From Your Sister was selling women’s lingerie,
bras, panties, sleepwear, maternity wear and stockings, and allegedly affixing
a label with the store’s name to the products; Walmart in Mississauga was
selling women’s underclothing with the trade-mark HER SECRET affixed on the
packaging; and Victoria’s Secret was selling products through its website with
four trade-marks containing “secret”.
[21]
In addition, the Stephan affidavit highlights
numerous online retail stores selling lingerie to Canadian customers with
products bearing trade-marks with “secret(s)”, or with “secret(s)” in the name
of the stores: for example, Fresh Pair sold lingerie with the trade-mark OLGA
SECRET HUG; Bare Necessities sold lingerie with the trade-mark PLAYTEX SECRETS;
Secret Lingerie sold lingerie products through www.secretlingerie.org while the
sites www.eBay.ca and www.secretlingerie.ca sold bras with the
trade-mark SECRET TREASURES.
[22]
The Stephan affidavit also contains excerpts
from Victoria’s Secret catalogues (1987; 1992-2009) and the 2008 catalogue from
the Canadian women’s lingerie retailer, La Senza, documenting the use of the
trade-mark FLIRTY LITTLE SECRET.
[23]
The Tabl affidavit also provides new evidence
including the applicant’s operation of websites, available to Canadians, using
WOMEN’SECRET to sell sleepwear, footwear, swimwear and intimate apparel;
printouts of the applicant’s corporate website which document news on its
brands like WOMEN’SECRET; printouts of www.womensecret.com which include
examples of the use of the Mark in association with women’s wear; and excerpts
from catalogues of women’s wear items displayed in association with
WOMEN’SECRET.
[24]
The respondent also filed two additional
affidavits of Michael Poirier, who was cross-examined on both.
[25]
The first Poirier affidavit documents the
licenses that Doris has granted to Doris Intimates Inc and Lingerie Féminine
Doris Inc (Doris Intimates) for use of the SECRET family of trade-marks in Canada in association with intimate apparel. It specifies that pursuant to the licensing
arrangement, Doris controls the character and quality of SECRET products
bearing the licensed trade-marks in Canada and provides an example of
the typical terms and conditions contained in license agreements. These include
the requirement that products meet quality standards set by Doris; that samples
of products, packaging and promotional material be submitted; and that each
product bearing SECRET trade-marks include a statement that the trade-mark is
used under license. The Poirier Affidavit also provides the estimated retail
sales of SECRET products sold in association with trade-marks in Canada (2004-2009) and a sample of invoices (2004-2010).
[26]
The second Poirier affidavit states that Doris
started using the trade-mark SECRET in association with women’s hosiery in
1967; provides additional samples of packaging and financial information of
sales including a breakdown according to types of hosiery; and gives further
information about Doris’ advertising and promotion of SECRET products in Canada. Moreover, it identifies the opposition and action that Doris has taken against
third party usage of trade-marks containing “secret(s)” in the Federal Court
and in opposition proceedings against registration applications.
[27]
In addition, documents were produced as a result
of the Poirier cross-examination. These included a license agreement between
Doris and Doris Intimates, entered into on May 3, 2011, for use of a SECRET
family of trade-marks in association with women’s intimate apparel in Canada and agreements between Doris and third-parties regarding the word “secret(s)” in third-party
marks.
[28]
After careful review of the additional evidence,
I am of the opinion that it would not have materially affected the Registrar’s
assessment of s.12(1)(d).
[29]
First, the Tabl affidavit indicates that the
applicant operated its website, www.womensecret.com, using WOMEN’SECRET which
was accessible from Canada in association with the wares.
[30]
However, I agree with the respondent that there
is no evidence as to the extent to which this website has been accessed by
Canadian consumers. The website does not appear to target Canadian consumers:
prices are quoted in Euros; there is no mention of Canada, Canadian franchises
or shipping to Canada. Thus this new evidence is not compelling, and in my view
would not have materially affected the Registrar’s assessment.
[31]
Second, according to the Stephan affidavit, numerous
third-party uses of “secret(s)” indicate that the respondent lacked diligence
in protecting its SECRET trade-marks. I disagree.
[32]
To the contrary, the respondent’s new evidence
strengthens the respondent’s claim that it protected its trade-marks: it
identifies actions brought in the Federal Court against Secrets From Your
Sister, V Secret Catalogue, Inc, Victoria’s Secret Stores, Inc, and Victoria’s
Secret Catalogue, Inc; opposition proceedings against trade-mark applications
including VICTORIA’S SECRET, VICTORIA’S SECRET & Design, ANGELS’S BY VICTORIA’S
SECRET; the withdrawal of the trade-mark application by PLAYTEX SECRET; and the
abandonment of OLGA SECRET HUG’s application during opposition proceedings. In
addition, the opposition and action were settled with an agreement between
Doris and Victoria’s Secret, dated March 2000, which reportedly restricted Victoria’s Secret from selling through third-party outlets.
[33]
Overall, in my opinion, the additional evidence
is largely repetitive and does not enhance the cogency of the evidence.
[34]
Since this is not a de novo hearing, the
proper standard of review is reasonableness, as per Dunsmuir v New Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 at para 47.
2. Was the Registrar’s
decision reasonable?
[35]
Prior to specifically discussing whether it was reasonable for the
Registrar to find that there was a likelihood of confusion between WOMEN’SECRET
and the respondent’s marks, and that WOMEN’SECRET was not distinctive, I will
discuss some “errors” allegedly made by the Registrar in refusing the
application. At the outset of the hearing the applicant raised the alleged
errors. As I explain below, I disagree with all of them.
[36]
First, the applicant submits that the Registrar
failed to take into consideration the initial approval of the application for
publication in the Trade-marks Journal for Opposition as a potentially
relevant surrounding circumstance. In his oral submissions, he cites Masterpiece
Inc v Alavida Lifestyles Inc, 2011 SCC 27, [2011] 2 S.C.R. 387 as
authority for the proposition that the Registrar should have considered the
initial impression of the Trade-marks Examiner, and the existence of other
marks containing “secret” that were on registration at the same. In Masterpiece,
a case involving an application to expunge a registration, Rothstein J, at
paragraph 110, identified that “another potentially relevant surrounding
circumstance” to the confusion analysis was the refusal of the Registrar.
[37]
However, in my opinion, there is no obligation
for the Registrar to expressly consider the initial approval, or disapproval,
of the Examiner. Masterpiece is clearly distinguishable: Rothstein J’s
comments relate to the obligation of the trial judge to acknowledge the
Registrar’s finding, not the Examiner’s finding.
[38]
The Registrar, in an opposition proceeding
before the Trade-marks Opposition Board, is not required to give consideration
or deference to the Examiner because the onus and evidence before an Examiner
differs from that in an opposition proceeding. As correctly stated by the
Registrar in Lutron Electronics Co v Litron Distributors Ltd, 2013 TMOB
129, 2013 COMC 129 at para 59:
a decision by the
examination section of the Trade-marks Office is not binding on this Board and
does not have precedential value for this Board given that the examination
section does not have before it evidence that is filed by the parties in an
opposition proceeding. Furthermore, the burden on an applicant differs whether
the application is at the examination stage or at the opposition stage.
[39]
The Board has consistently refused to accord weight
to the decision of the Examiner in numerous other decisions, including Effigi
Inc v Major League Lacrosse LLC, 2012 TMOB 134, 2012 COMC 134; and Hot
Stuff Foods LLC v Maple Leaf Foods Inc, 2012 TMOB 30, 2012 CarswellNat 538.
[40]
This difference is found in the Act which
provides, for example, that the Registrar must give an applicant adequate
opportunity to answer objections before refusal and application (s.37(2)); the
opponent and applicant must be given an opportunity to submit evidence and make
representations in an opposition proceeding (s.38(7)); and the Registrar must
consider all the evidence and representations of the opponent and applicant in
coming to his or her decision (s.38(8)).
[41]
I also disagree with the applicant’s submission
that the Registrar erred in finding that websites, including Canada411.com and
the official sites of Victoria’s Secret and Secrets From Your Sister, were
unreliable.
[42]
In regard to the online telephone directory
found at Canada411.com, the Registrar considered the evidence submitted by the
applicant that the directory’s list of 21 third parties use “secret(s)” in
their names, but found it unreliable in the case at hand. She distinguished Vision-Care
Ltd v Hoya Corp, 7 CPR (4th) 331, [2000] TMOB No 86, a decision from the
Trade-marks Opposition Board, which neither the Registrar nor this Court are
bound to follow.
[43]
In addition, she rejected, as hearsay, the only
evidence submitted to show that retailers named in the directory used a
trade-mark with “secret(s)” in association with the wares. Similarly, I agree
with the respondent’s retort that the list is only a series of business names
and the broad category “lingerie retail” which gives no information as to use
and its specific link to wares.
[44]
Regarding the other sites, the applicant points
to my findings in ITV Technologies, Inc v WIC Television Ltd, 2003 FC
1056, [2003] FCJ No 1335 as authority for the reliability of websites in
certain circumstances.
[45]
While I agree with the applicant that the use of
trade-marks containing “secret” by Victoria’s Secret on its website could be
reliable, as I
caution in that decision, the evidence cannot be interpreted, on its own, as
showing that the website was accessed or known by Canadians at the relevant
time (ITV Technologies, above, at para 22).This is what the Registrar correctly
cautioned against: her finding that “the content of the website does not
constitute reliable evidence of use of the trade-mark VICTORIA SECRET in
Canada” is in response to the applicant’s claim that the brand is known in
Canada in association with intimate apparel.
[46]
Moreover, I also note that
the Registrar stated that even if she was wrong to find that the evidence is
insufficient to reach the conclusion that SECRET is frequently used as a part
of a trade-mark or trade-name in Canada in association with the wares, it would
still be “outweighed by the existence of the SECRET Family of Trade-marks and
the notoriety of [the] trade-mark SECRET in association with women’s intimate
apparel.” Thus the decision shows the bases of her decision and the strong
weight given to notoriety of SECRET in relation to the other considerations.
[47]
The applicant also submits
that the Registrar erred in accepting that the respondent’s evidence
establishes the existence of a family of trade-marks containing “secret” for
women’s intimate apparel as additional circumstances under s.6. The applicant
argues that the respondent submitted no evidence, other than examples of
products’ packaging, to prove that other marks with “secret” were ever used.
For example, the respondent’s financial data does not break sales down
according to their mark.
[48]
However, in my opinion, the
Registrar was reasonable in weighing the respondent’s evidence and concluding
that “the evidence before me suggests that consumers are sufficiently familiar
with the [respondent’s] trade-mark SECRET and that consumers would probably
believe that the identical or closely related wares associated with the mark
derive from the same source.” The Registrar did not err in relying on the
Hansen affidavit which described how the respondent has adopted a series of
trade-marks incorporating “secret” with other words and expanded its product
line. She also refused to consider trade-marks registered after the filing of
the Hansen affidavit as the part of the SECRET family of trade-marks.
[49]
Finally, I reject the
applicant’s submission that the Registrar made a reviewable error in law by
“over-examining” the Mark WOMEN’SECRET. The applicant argues that the Registrar
failed to follow Rothstein J’s directions in Masterpiece where he
stated, at paragraph 83, that a mark should be considered “as it is encountered
by the — as a whole, and as a matter of first
impression.” On the other hand, he emphasized that “[n]either an expert, nor a
court, should tease out and analyze each portion of a mark alone.”
[50]
It is clear from the decision that the Registrar
analyzed the Mark as a whole in finding that the “ordinary consumers will react
to the Mark by thinking of the ordinary words “women’secret”. Therefore, the
fact that the applicant has telescoped the two words is of little consequence”.
The Registrar’s finding that WOMEN’SECRET and SECRET are similar because the
Mark includes the entirety of the registered trade-mark and because “secret” is
the most distinctive feature of the Mark does not constitute a reviewable
error. Rather, this provides a further explanation of her more general analysis
of an ordinary consumer’s reaction to WOMEN’SECRET as a whole.
[51]
Moreover, her analysis is not unlike the more detailed
examination undertaken by the Supreme Court of Canada, at paragraph 84 of Masterpiece
in finding that the word “Masterpiece” was the distinctive component of the
mark, as opposed to the word “Living”. Justice Rothstein confirmed that “considering a trade-mark as a whole does not
mean that a dominant component in a mark which would affect the overall
impression of an average consumer should be ignored …. This is because, while
the consumer looks at the mark as a whole, some aspect of the mark may be
particularly striking”.
(a) Was it reasonable for the Registrar to find a reasonable
likelihood of confusion between WOMEN’SECRET and the respondent’s SECRET
trade-marks within the scope of s.6 of the Act?
Applicant’s
arguments
[52]
The applicant submits that WOMEN’SECRET is not likely
to be confused with the respondent’s trade-marks. “Secret(s)” is commonly
adopted in Canada in association with intimate apparel and lingerie and the use
of “secret(s)” is “a highly relevant factor in determining the likelihood of
confusion” (citing Boston Pizza v Boston Chicken Inc, 2001 FCT 1024, [2001] FCJ No 1407 at
paras 74).
[53]
The applicant also submits that a trade-mark
owner must aggressively protect its trade-mark rights or lose them. Thus,
according to the applicant, the respondent acquiesced in the use of SECRET(S)
by third-parties by knowingly allowing third-party marks to coexist on the
market place with the Doris marks. The respondent also acquiesced by failing to
properly monitor the quality and character of wares manufactured and sold in
association with its SECRET trade-marks. This “resulted in Canadian consumers
being conditioned to look for other elements of a mark such as design and words
to distinguish WOMEN’SECRET from other third-party SECRET(S) formative marks
and trade-names including those of Doris.”
[54]
In addition, the applicant submits that there
have been no instances of actual confusion since the applicant has used
WOMEN’SECRET on its website in association with clothing and intimate apparel
available to Canadian consumers since at least 2008 or May 2009.
Respondent’s
arguments
[55]
The respondent submits that the applicant failed
to establish that there was no reasonable likelihood of confusion with respect
to the wares.
[56]
With respect to the first factor set out in s.
6(5)(a) of the Act, the respondent submits that the SECRET trade-mark possesses
a high degree of inherent distinctiveness. Furthermore, the applicant’s Mark
cannot be assessed for distinctiveness given the limited evidence of the matter
in which the trade-mark would be used in Canada, including information such as
the extent to which the applicant’s website has been accessed by Canadian
consumers or how it is targeted to Canadians.
[57]
As to the second factor,
length of time in use, the applicant failed to show any
compelling use of WOMEN’SECRET in Canada. In contrast, the respondent adopted
its SECRET trade-mark over four decades ago and provided evidence of
substantial advertising and promotional expenses as well as annual sales.
[58]
With regard to the
third factor, the respondent submits that the nature of the wares are
identical in many respects.
[59]
With respect to the fourth
factor, there is no evidence to show that the nature
and channels or the trade or the customers of the parties would be
distinguishable. As the respondent argues, although the applicant did not file
any evidence describing the channels of trade it uses or would use, “it is
fairly likely that the wares that could be distributed though such channels of
trade would be overlapping, if not identical, to [those] currently used by
Doris Hosiery and its licensees.”
[60]
Finally, as to the fifth
criteria, the respondent submits that there is a high
degree of resemblance between the marks. WOMEN’SECRET includes the entirety of
the respondent’s SECRET mark and all the marks included in the respondent’s
SECRET family of trade-marks use the word “Secret”, sometimes in combination
with other words.
Analysis
[61]
In my opinion the applicant has not discharged
its burden of proving that the Registrar was unreasonable in finding that
WOMEN’SECRET is confusing with the respondent’s SECRET trade-mark and family of
trade-marks.
[62]
As the Supreme Court of Canada stated in Veuve Clicquot
Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23, [2006] 1 SCR 824
at paras 18-20,
Confusion is to be understood …in a special sense.
Parliament states in s. 6(1) that confusion occurs
if the use of the [appellant’s] trade-mark or trade-name
would cause confusion with the [respondents’] trade-mark or trade-name in the
manner and circumstances described in this section.
Such confusion occurs, we learn in s. 6(2)
if the use of both trade-marks in the same area would be
likely to lead to the inference that the wares or services associated with
those trade-marks are manufactured, sold, leased, hired or performed by the
same person, whether or not the wares or services are of the same general
class.
The test to be applied is a matter of first impression in
the mind of a casual consumer somewhat in a hurry.
[63]
The assessment should consider all the
surrounding circumstances including, but not limited to, the five criteria
enumerated in s.6(5) of the Act (ibid at para 21). The Supreme
Court emphasized that “[t]he list of circumstances is
not exhaustive and different circumstances will be given different weight in a
context-specific assessment.” (ibid)
[64]
As discussed in the analysis on the standard of
review above, I do not believe that the additional evidence before the appeal
would have materially changed the Registrar’s decision.
[65]
In my opinion the Registrar assessed all the
pertinent circumstances and her finding that WOMEN’SECRET is confusing was
reasonable.
[66]
Case law establishes that considerable deference
is owed to the Registrar in balancing the factors set out in s.6(5) of the Act.
As the Federal Court held in Classic Door &
Millwork Ltd v Oakwood Lumber & Millwork Co, “[e]ach of these criteria need not be given equal weight, as
the significance of those factors may far outweigh that of the others” ((1995),
63 CPR (3d) 337, [1995] FCJ No 1099 at para 13).
[67]
In particular, based on the overall similarities
of the marks including the common element of “secret”; the insignificant
novelty in the mark and its design, including its generic first word “women”
and the little difference of telescoping “women” and “secret”; as well as the
notoriety of the respondent’s marks, there is a significant likelihood that the
average consumer, somewhat in a hurry, would think that the wares offered by
the applicant in association with WOMEN’SECRET are from the respondent.
[68]
In considering additional circumstances under
s.6 of the Act, there is no evidence that the Registrar weighed the notoriety
of the respondent’s trade-marks and common use of “secret” unreasonably.
[69]
Thus, the decision of the Registrar satisfied
the Dunsmuir
criteria of “justification, transparency and intelligibility” (at para 47).
(b) Was it reasonable for the Registrar to find WOMEN’SECRET
distinctive?
Applicant’s
arguments
[70]
The applicant submits that WOMEN’SECRET is
distinctive in respect to clothing and intimate apparel. In particular, the
first part of the Mark is “women’s” and combined with “secret” to form a new
single word.
[71]
Furthermore, the respondent “knowingly
undermined the distinctiveness of its SECRET Trade-marks”. In particular, the
respondent failed to monitor or police the market as to third-party use of
SECRET(S) marks. The acquiescence and open use of “secret(s)” by numerous third-parties
means that the marks will be distinguishable with even small difference.
[72]
The applicant further submits that the
respondent failed to comply with s.50 of the Act in not providing evidence of
quality control. This undermines the respondent’s claim to the distinctiveness
of SECRET trade-marks and family of trade-marks.
[73]
The applicant argues that the respondent
licensed other entities like S.O.X Manufacturing and Medifit Marketing Inc as
well as the related companies like Doris Intimates to manufacture products
bearing its mark but failed to exercise quality control over the character and
quality of products as required by s.50 of the Act.
[74]
Thus the Court should take an adverse inference
of a breach of s. 50 in view of the respondent’s lack of evidence on quality
control and hold that the use of the marks by the respondent’s related
companies should not be attributed to the respondent.
[75]
The applicant points to the respondent’s failure
to provide any evidence regarding the quality standards and inspections of
products bearing the Licensed SECRET marks, samples of products and product
packaging, labelling and/or promotional materials. The use of the marks by
entities like Doris Intimates therefore should be considered equal to third
party use, thereby undermining the respondent’s distinctiveness.
Respondent’s
arguments
[76]
The respondent submits that WOMEN’SECRET is not
distinct because it does not distinguish itself, nor is it adapted to
distinguish the applicant’s wares from the respondent’s SECRET product and
licensed SECRET products.
[77]
Rather, the extensive use, advertisement and
promotion of the respondent’s trade-mark and family of trade-marks show that
they are distinctive of the respondent (citing Manufacturiers de bas de
nylon Doris Lteé v Warnaco Inc, 2004 FC 1781, [2004] FCJ No 2174).
[78]
Moreover, the respondent contends that it has
not lost the distinctiveness of SECRET trade-marks and family of trade-marks by
the use of “secret” by third-parties. It has been extremely vigilant in
protecting its SECRET trade-mark and SECRET family of trade-marks.
[79]
Furthermore, the respondent submits that it
meets the conditions of s.50. Thus the use of the licensed SECRET trade-marks
by Doris Intimates should benefit the respondent.
[80]
In particular, evidence shows that there is a
close relationship between the respondent and Doris Intimates; the existence of
an oral, and subsequently a written licensing agreement; the packaging of Doris
Intimates says licensed SECRET products; and direct control of marketing of
products.
Analysis
[81]
In my opinion, the Registrar’s decision was
reasonable in finding that WOMEN’SECRET is not distinct and that the respondent
sufficiently protected its marks against intrusion of other marks using
“secret(s)”.
[82]
For the distinctiveness ground of opposition to
succeed, the respondent must show that as of the filing of the statement of
opposition, its trade-mark had become sufficiently known to negate the
distinctiveness of WOMEN’SECRET.
[83]
The Registrar found that the
respondent met this initial burden by showing that its trade-mark SECRET had
become known as of the material date in association with clothing and intimate
apparel.
[84]
The applicant has not
provided new evidence showing that it used WOMEN’SECRET in association with the
applied-for-wares as of May 26, 2003.
[85]
In regard to the respondent’s protection of its
trade-marks, the Registrar also rejected the applicant’s submission that the
respondent’s marks lost their distinctiveness for failing to protect their
trade-marks.
[86]
The Registrar accepted the Poirier affidavit as
evidence that the respondent “has been vigilant in its efforts to
protect and enforce its rights.” (Registrar’s emphasis)
[87]
Moreover, the Registrar rejected the applicant’s
submission that a negative inference regarding the distinctiveness of the
SECRET trade-marks should be drawn from the respondent’s behaviour, including
Mr. Poirier’s refusal to divulge why the Opponent withdrew
its oppositions to Walmart Stores, Inc’s and to V Secret Catalogue, Inc’s
applications. As stated above, the new evidence strengthens the
respondent’s claim that it protected its trade-marks. In particular, the second
and third Poirier affidavits indicate that the respondent filed actions in the
Federal Court against third-parties including Secrets From Your Sister, V
Secret Catalogue, Inc, Victoria’s Secret Stores, Inc, and Victoria’s Secret
Catalogue, LLC. The respondent also filed opposition proceedings against
trade-mark applications.
[88]
While I recognize that the respondent has not
challenged all the third parties using “secret(s),” the Registrar was
reasonable in finding that the evidence suggested reasonable diligence on the
part of the respondent in protecting its marks so as to avoid undermining their
distinctiveness. The new evidence does not alter this.
[89]
In regard to the exercise of control over
licensed entities pursuant to s.50, I believe that the respondent has also
provided evidence of control over the character and quality of the wares.
[90]
Pursuant to s.50 of the Act, a trade-mark
license may be granted by the trade-mark owner. If an entity is licensed by the
owner of the trade-mark to use the trade-mark and the owner has the direct or
indirect control of the character or quality of the wares, the use of the
trade-mark by that licensed entity is deemed to be used by the owner.
[91]
Control in this context is important to prevent
loss of distinctiveness of the mark (Martin P.J. Kratz, Canada’s Intellectual Property Law in a Nutshel, Second Edition (Carswell:
2010) at 143).
[92]
In my opinion, the respondent provided
sufficient evidence that it has licensed its marks properly by monitoring the
quality and character of the wares manufactured and sold in association with
its SECRET trade-marks. For example, the cross-examination of Mr. Poirier,
dated July 9 and 12, 2012, specifies that there is a quality control department
which ensures quality standards.
[93]
Moreover, the respondent states that the
packaging of licensed SECRET products specify that Doris Intimates was using
the licensed SECRET trade-mark under license from the respondent. The Federal
Court has held that writing appearing on packaging which describes the identity
of the owner of the mark and the fact the label is licensed constitutes public
notice within the meaning of s.50(2) of the Act, thus triggering the
presumption that the use is licensed by the owner of the trade-mark and the
character or quality of the wares is under the control of the owner (Culinar
Inc v National Importers Inc (2005) FC 1460, 2005 CarswellNat 3994 at paras
45-47).
[94]
As the Supreme Court of Canada
held in Newfoundland and Labrador Nurses’ Union v Newfoundland and Labrador
(Treasury Board), courts owe deference to the decision-maker “in assessing
whether the decision is reasonable in light of the
outcome and the reasons” (2011 SCC 62, at para 15, [2011] 3 S.C.R. 708). The reasons of the
decision-maker, as well as the result under a reasonableness analysis, will
still be valid even if they do not include everything that would have been
preferably incorporated. Rather, Abella J. emphasized, at paragraph 16 of the judgment, that the Dunsmuir criteria are met “if the reasons allow
the reviewing court to understand why the tribunal made its decision and
permit it to determine whether the conclusion is within the range of
acceptable outcomes” (emphasis added).
[95]
For these reasons, this application for judicial
review is dismissed with costs.
JUDGMENT
THIS COURT’S JUDGMENT is that:
This
application for judicial review is dismissed with costs.
"Danièle Tremblay-Lamer"
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