LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 157
Date of Decision: 2012-08-20
IN THE MATTER OF AN OPPOSITION by Advance Magazine Publishers Inc. to application No. 1,440,589 for the trade-mark VOGUE in the name of Australian Gold, LLC
File Record
[1] On June 5, 2009, Australian Gold, LLC filed an application to register the trade-mark VOGUE, based on proposed use in Canada, in association with
non-medicated indoor and outdoor skin tanning preparations.
The application claims a priority filing date of December 17, 2008, pursuant to s. 34 of the Trade-marks Act, R.S.C. 1985, c. T-13, based on the applicant filing a corresponding application in the United States of America.
[2] The subject application was advertised for opposition purposes in the Trade-marks Journal issue dated January 6, 2010 and was opposed by Advance Magazine Publishers Inc. on June 7, 2010. The Registrar forwarded a copy of the statement of opposition to the applicant on June 17, 2010, as required by s.38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition.
[3] The opponent’s evidence consists of the affidavit of Elenita Anastacio. Her affidavit serves to introduce into evidence, by way of exhibit material, particulars of the opponent’s trade-mark registrations and applications relied on by the opponent in the statement of opposition. The applicant elected not to submit any evidence in support of its application. Neither party submitted a written argument. Only the opponent attended at an oral hearing held on June 27, 2012.
Statement of Opposition
[4] The opponent pleads that it is the owner of several trade-mark registrations and applications comprised in whole or in part of the component VOGUE, used in association with the wares “magazines” and related wares and services. In the case of the mark VOGUE per se, used in association with magazines, there has been continuous and extensive use of the mark in Canada in excess of 100 years. The opponent pleads that use of the applied for mark will result in confusion in the Canadian marketplace. The opponent further pleads that the applicant knew, at all material times, of the notoriety of the opponent’s marks and that the applicant’s use of the applied-for mark “will depreciate and diminish the goodwill of the Opponent’s VOGUE registrations contrary to Section 22 and Section 30(i) of the Trade-marks Act.”
[5] The opponent further alleges that in view of the above:
1. the applied-for mark VOGUE is not registrable as being contrary to s.12(1)(d) of the Trade-marks Act,
2. the applicant is not entitled to registration as being contrary to s.16(3)(a) and (b) of the Act,
3. the applied-for mark VOGUE is not capable of being distinctive of the applicant’s wares,
4. the application does not comply with s.30.
Legal Onus and Evidential Burden
[6] The legal onus is on the applicant to show that the application does not contravene the provisions of the Trade‑marks Act as alleged by the opponent in the statement of opposition. The presence of a legal onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant. However, there is also, in accordance with the usual rules of evidence, an evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition: see John Labatt Limited v. The Molson Companies Limited, 30 CPR (3d) 293 at 298 (FCTD). The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.
Main Issue & Material Dates
[7] The determinative issue with respect to the grounds of opposition denoted by (1) – (3) in paragraph 5, above, is whether the applied-for mark VOGUE, for use in association with skin tanning preparations, is confusing the opponent’s mark VOGUE used in association with a magazine. The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of s.6(2) of the Trade-marks Act, shown below, between the applied for mark and the opponent’s mark:
The use of a trade-mark causes confusion with another trade-mark 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 . . . or performed by the same person, whether or not the wares or services . . . are of the same general class.
[8] Thus, s.6(2) does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by s.6(2) is whether there would be confusion of the applicant’s skin tanning preparations sold under the mark VOGUE as products emanating from or sponsored by or approved by the opponent.
[9] The material dates to assess the issue of confusion are (i) the date of decision, with respect to the ground of opposition denoted by (1), above, alleging non-registrability; (ii) the priority filing date of the application, in this case December 17, 2008, with respect to the ground of opposition denoted by (2), above, alleging non-entitlement; and (iii) the date of filing the statement of opposition, in this case June 7, 2010, with respect to the ground of opposition denoted by (3), above, alleging non-distinctiveness: for a review of case law concerning material dates in opposition proceedings see American Retired Persons v. Canadian Retired Persons (1998), 84 CPR(3d) 198 at 206 ‑ 209 (FCTD).
Test for Confusion
[10] The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are “all the surrounding circumstances including” those specifically mentioned in s.6(5)(a) to s.6(5)(e) of the Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or sound of the marks or in the ideas suggested by them. This list is not exhaustive and all relevant factors are to be considered. Further, all factors do not necessarily have equal weight as the weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 CPR(3d) 308 (FCTD). However, as noted by Mr. Justice Rothstein in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 CPR(4th) 361 (SCC), although the degree of resemblance is the last factor cited in s.6(5), it is the statutory factor that is often likely to have the greatest effect in deciding the issue of confusion.
Consideration of s.6(5) Factors
[11] The opponent’s mark VOGUE is inherently weak in that it suggests that the content of the magazine deals with fashion. Similarly, the applied for mark VOGUE is inherently weak in that it suggests that the cosmetic results produced by the applicant’s wares are currently in vogue or fashionable. I may take judicial notice that the opponent’s magazine VOGUE circulates in Canada and is devoted to women’s fashion and fashion accessories: see Timberland Co. v. Wrangler Apparel Corp. (2005), 46 CPR (4th) 201 (TMOB); Conde Nast Publications Inc. v. Gozlan Brothers Ltd. (1980), 49 CPR(2d) 250 (FCTD); Procter & Gamble Company v 2797836 Canada Inc, 2008 CanLII 88311 (CA TMOB). Thus, I am able to infer that the opponent’s mark acquired distinctiveness in Canada at all material times. There is no evidence that the applied-for mark acquired any reputation at any material time. Thus, the first factor in s.6(5), which is a combination of inherent and acquired distinctiveness, favours the opponent. Similarly, the second factor in s.6(5) favours the opponent as I may take judicial notice that the opponent’s mark has been in use in Canada for many years and there is no evidence to show that the applicant began to use its mark at any material time.
[12] With respect the third and fourth factors in s.6(5), the wares of the parties are different and the parties’ channels of trade are also likely to differ. However, the applicant’s wares are of the type that would be featured or advertised in the opponent’s magazine. Thus, there is a connection in the parties’ wares and trades. With respect to the last and most important factor, the parties’ marks are identical.
Jurisprudence
[13] The opponent has brought to my attention an analogous case decided by this Board in Conde Nast Publications Inc. v. Hanz Schwarzkopf GmbH (1988), 20 CPR(3d) 176 wherein the applicant Hanz Schwarzkopf applied for the mark VOGUE, based on proposed use in Canada, in association with perfumes and cosmetics. The application was opposed, apparently by the present opponent’s predecessor in title, based on its use and registration of the mark VOGUE in association with magazines. The Board reasoned as follows, at pp. 180-181:
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Furthermore, I have considered that the onus or legal burden is on the applicant to show no reasonable likelihood of confusion. In the Gozlan Brothers case [Conde Nast Publications Inc. v. Gozlan Brotheres Ltd., above] referred to previously, Mr. Justice Cattanach emphasized that the onus was on the applicant to show no reasonable likelihood of confusion and went on to state at p. 254 of the reported decision as follows:
The Hearing Officer by finding as a fact, as he did, that the public infer that the use of "Vogue" as a trade mark in respect of costume jewellery by the respondent was approved, licensed or sponsored by the appellant or that there was some like business connection between the appellant and the respondent recognizes as a fact that "people's minds will be put in a state of doubt or uncertainty".
That being so there is no logical reason for the Hearing Officer to have limited the cause of the doubt or uncertainty to the conjecture that cause may have been the business connections of which he made mention but it would have been logical to extend that cause to include the inference, from the concurrent use of the trade mark VOGUE by the appellant and respondent, that appellant had embarked upon the manufacture or sale of costume jewellery.
Similarly, in the present case, I consider that the public might likely infer that the use of "Vogue" as a trade mark for perfumes and cosmetics by the applicant was approved, licensed or sponsored by the opponent or that there was some kind of business connection between the two parties. Thus, I find that the applicant has failed to satisfy the onus on it and consequently the opponent's first ground of opposition is successful.
Disposition
[14] In the instant case, considering the factors discussed in paragraphs 11 and 12, above, and applying the same reasoning as in Hanz Schwarzkopf, above, I find that the public would likely infer that the use of VOGUE as a trade-mark for a skin tanning preparation was approved, licensed or sponsored by the opponent or that there was some kind of business connection between the applicant and the opponent. It follows that the opponent succeeds on the first ground of opposition pursuant to s.12(1)(d), the second ground pursuant to s.16(3)(a) and the third ground alleging non-distinctiveness: see Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd. (1990), 29 CPR(3d) 7 at 12 (FCTD). It is therefore not necessary to consider the remaining grounds of opposition.
[22] In view of the foregoing, the application is refused. This decision has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act.
___________________
Myer Herzig
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office