Sanjukta Tole is an Osgoode Hall alumnus and practiced with the IP Group of a large Vancouver law firm.
Farleyco Marketing Inc. ("Farleyco") filed a trade-mark application for the trade-mark GHOULISH GLAMOUR for use in association with "Halloween cosmetics and eyelash accessories" on December 16, 2003. Farleyco then commenced selling their products in September 2004. In July 2004, Advance Magazine Publishers Inc. ("Advance"), the owners of GLAMOUR magazine, opposed Farleyco's trade-mark application based on its family of trade-marks for the word GLAMOUR in association with periodical magazines and related print and electronic wares and services (the "GLAMOUR trade-marks"). At the conclusion of the opposition hearing, the Trade-mark Opposition Board (the "Board") found for Farleyco on the basis that Advance had provided insufficient evidence to establish that its GLAMOUR trade-marks were "entitled to the scope of protection that is broad enough to render [Farleyco's] mark unregistrable" (Para. 9) given that both parties' trade-marks were inherently weak. The Board also held that Farleyco had shown that confusion between the marks was unlikely, and that the wares and services associated with the GLAMOUR trade-marks were very different from those associated with Farleyco's trade-mark. Advance then appealed to the Federal Court (see Advance Magazine Publishers Inc. v. Farleyco Marketing Inc. 2009 F.C. 153).
On appeal, both parties entered additional affidavit evidence, which Russell J. held to be evidence not available to the Board at the time of the opposition. Russell J. found that the new evidence submitted by Advance established that the publications using the GLAMOUR trade-marks in Canada: (1) were in continuous use by Advance in print since 1938 and electronically since mid-2000, (2) had an annual circulation of in excess of 80,000, and (3) featured content related to cosmetics and make-up, including the use of the phrase GHOULISH GLAMOUR in relation to beauty tips with a Halloween-based theme. He also found that Advance's evidence also established that it spent over $10,000,000 on advertising its publications using the GLAMOUR trade-marks worldwide and its annual revenues associated with those publications were in excess of $10,000,000 in Canada. Russell J. also held that Farleyco's evidence had demonstrated that products bearing the GHOULISH GLAMOUR trade-mark had been sold in drug, food and mass merchandize stores in Canada since 2004, and advertised in flyers and on display boards at point-of-sale and not in magazines. He also found that the third-party trade-mark registrations and applications with the word "Glamour" in association with wares and/or services associated with the cosmetics and beauty industries, as submitted by Farlyeco, revealed that this word was commonplace in those industries.
On the basis of this new evidence and pursuant to s. 56(5) of the Trade-mark Act R.S.C. 1985 c. T-13 (the "Act"), the Court then proceeded to reconsider the issue of confusion between the parties' trade-marks anew. Taking into account the factors set out in s. 6(5) of the Act, the surrounding circumstances and the test for confusion as set out by the Supreme Court of Canada ("SCC") in Mattel, Inc. v. 3894207 Canada Inc. [2006] 1 S.C.R. 772 [Mattel], the Court found that Advance had overcome the inherent weakness of its GLAMOUR trade-marks and established an acquired distinctiveness in association with its publications based on its evidence of use in Canada. However, the Court held that the acquired distinctiveness of the GLAMOUR trade-marks did not extend to beauty and cosmetic products simply because such products were advertised by third parties in Advance's publications. Instead, the Court found a clear distinction between the wares and services associated with the GLAMOUR trade-marks, namely publications, and the beauty and cosmetic products, such as those associated with Farleyco's trade-mark. To support its finding, the Court relied on the lack of evidence of actual confusion and the absence of any licences of the GLAMOUR trade-mark by Advance to manufacturers of beauty or cosmetic products.
In addition, the Court found that the nature of the trade was separate in that each party's products were sold, advertised and used by consumers in "very different ways" (Para. 116), even though both parties sold their products through the same type of stores. The Court also agreed with the Board that the degree of resemblance between the parties' trade-marks was not "great in appearance, sound or idea suggested" (Para. 104). Lastly, the Court looked to surrounding circumstances, namely the presence of other trade-mark applications and registrations with the word GLAMOUR in association with beauty and cosmetic products, and concluded that consumers in Canada were "accustomed to differentiating between GLAMOUR marks and their multitude of sources" (Para. 104) due to their exposure to so many different marks with the word GLAMOUR. On that basis, the Court concluded that Farleyco had shown, on a balance of probabilities, that confusion between its trade-mark and those of Advance was unlikely, and the appeal was dismissed.
It is not surprising that Advance lost its opposition to Farleyco's trade-mark for several reasons. First, in my opinion, Advance was attempting to rely on the fame of its GLAMOUR trade-marks to prevent Farleyco's use of the trade-mark GHOULISH GLAMOUR in association with goods and services (what I consider to be) unrelated to those of Advance. However, in all other similar cases, the owners of "famous" marks have failed to curb the use of those marks by third parties in association with unrelated goods and/or services. A close example is the case of Pink Panther Beauty Corp. v. United Artists Corp. [1998] 3 F.C. 534 (C.A.), where United Artists failed to prevent a third party from registering its movie trade-mark, PINK PANTHER, for use in association with beauty products.
In addition, the SCC in Mattel stated that the extension of the scope of protection offered to "famous" marks against third parties using those marks in association with unrelated wares and/or services was contingent on evidence of consumer confusion rather than the differences between the wares and services of the parties. However, in this case Advance was unable to submit any evidence of actual consumer confusion and the evidence it did submit was often incomplete. For example, Advance submitted evidence of having used the phrase GHOULISH GLAMOUR in association with Halloween-themed necklaces in an advertisement on its UK website. Yet, it provided no evidence as to whether the products were available to Canadian consumers through its magazine or electronic counterparts. This lack of evidence definitely weakened its case. Advance instead attempted to convince the Court that the goods and services associated with Farleyco's trade-mark were related (or in the same general category) as the goods and services associated with its GLAMOUR trade-marks. However, no real evidence was presented to the Court on this account by Advance other than citing that both parties' products were sold through similar types of stores, all of which sold a variety of goods.
Second, Advance's case was also weak because it did not have any explanation for its inaction against the validly existing trade-mark registrations with the word GLAMOUR in relation to wares and services in the beauty and cosmetics industry other than claiming that Farleyco had not shown use of those trade-marks in the marketplace based on a 10-12 hour search conducted by a hired investigator. However, Advance failed to address its lack of opposition at the time these trade-marks were being registered. As a result, the Court had to conclude that the GLAMOUR trade-marks were diluted, Canadians were used to differentiating between the various trade-marks with the word GLAMOUR and the GLAMOUR trade-marks deserved a narrower scope of protection.
Lastly, Advance failed to submit key elements of evidence to the Board at the time of the opposition hearing. This included crucial evidence supporting the acquired distinctiveness of its GLAMOUR trade-marks, which would have assisted Advance in proving that its GLAMOUR trade-marks were well-known. Thus, the Board reached its decision without all of the facts. Had Advance put all of its evidence to the Board, it may have had (by a long shot in my opinion) a different outcome or, at the very least, would have saved the time and money it exhausted on the appeal.
It remains to be seen whether Advance will launch a further appeal to the Federal Court of Appeal, but rest assured it will be an uphill battle.