LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 161
Date of Decision: 2012-08-24
IN THE MATTER OF AN OPPOSITION by Advance Magazine Publishers Inc. to application No. 1,352,521 for the trade-mark SLIMLINE VOGUE in the name of Louver-Lite Limited
[1] On June 14, 2007, Louver-Lite Limited (the Applicant) filed an application to register the trade-mark SLIMLINE VOGUE (the Mark), claiming a convention priority filing date of December 14, 2006.
[2] The application has been filed on two bases: i) proposed use of the Mark in Canada; and ii) use of the Mark in the United Kingdom and registration of the Mark in OHIM (EC). The application’s statement of wares reads: blind systems; headrail fitting kits for blinds; components, parts and fittings for blinds and blind systems; remote control units for blinds; parts and fittings for the aforesaid goods; timers for operating blinds at pre-programmed times.
[3] The application was advertised for opposition purposes in the Trade-marks Journal of July 2, 2008.
[4] Advance Magazine Publishers Inc. (the Opponent) filed a statement of opposition against the application for the Mark on September 2, 2008. The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
[5] In support of its opposition, the Opponent filed an affidavit of Elenita Anastacio. In support of its application, the Applicant filed affidavits of Brian Robertson, Michael Stephan and Alan Booth. Each of the affiants was cross-examined and the transcripts have been filed.
[6] Only the Applicant filed a written argument. The Opponent subsequently requested leave to amend its statement of opposition and file further evidence; leave was denied by letter dated July 18, 2012.
[7] Both parties participated in an oral hearing. At the oral hearing, the Opponent limited its submissions to its section 12(1)(d) ground of opposition, but advised that it was not withdrawing any of its other grounds.
Summary of Grounds of Opposition and Applicable Material Dates
[8] The grounds of opposition pleaded by the Opponent pursuant to the Trade-marks Act, RSC 1985, c T-13 (the Act) are summarized below:
1. contrary to section 12(1)(d), the Mark is not registrable because the Mark is confusing with a registered trade-mark, namely: i) VOGUE - registration No. UCA4268; ii) VOGUE - registration No. TMDA42009; iii) VOGUE Design – registration No. TMDA19676; iv) VOGUE CAREER – registration No. TMA346,637; v) VOGUE DECORATION – registration No. TMA388,687; vi) ULTRA EZ BY VOGUE Design – registration No. TMA468,713; vii) VOGUE – registration No. TMA576,133; viii) VOGUE Design – registration No. TMA561,966; ix) VOGUE HOMBRE – registration No. TMA576,327; x) VOGUE HOMMES INTERNATIONAL MODE – registration No. TMA595,905; and xi) TEEN VOGUE - registration No. TMA641,823;
2. contrary to section 16(3)(b), the Applicant is not the person entitled to registration of the Mark because the Mark is confusing with the trade-marks VOGUE, VOGUE CAFÉ and VOGUE, in respect of which applications for registration Nos. 856,582, 1,198,832 and 1,269,486 had been respectively filed in Canada before the application’s convention priority filing date;
3. contrary to section 16(3)(a), the Applicant is not the person entitled to registration of the Mark because the Mark is confusing with all of the aforementioned trade-marks, which the Opponent used in Canada before the application’s convention priority filing date;
4. contrary to section 2, the Mark is not distinctive and is not capable of becoming distinctive of the Applicant in view of the use of the aforementioned trade-marks of the Opponent;
5. contrary to section 30(i), the Applicant could not have been satisfied of its entitlement to use the Mark because the Applicant knew of the use and notoriety of the Opponent’s marks prior to the filing date of its application;
6. contrary to section 30(d), the Applicant has not used the Mark in the United Kingdom or elsewhere.
[9] The material dates with respect to the grounds of opposition are as follows:
- section 12(1)(d) - the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)];
- section 16(3) – the convention priority filing date of the application;
- section 2 - the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)];
- section 30 - the date of filing of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475].
Onus
[10] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
Summary of Evidence
[11] Ms. Anastacio is an employee of the Opponent’s agent. She provides details of the applications and registrations relied upon in the statement of opposition. In addition, she provides the results of some Internet searches that she conducted in 2009 directed to SLIMLINE VOGUE.
[12] Mr. Robertson is the President of Louver-Lite (Canada) Limited, a wholly-owned subsidiary of the Applicant that distributes, markets and sells window blind systems (manufactured by the Applicant) in Canada and the U.S. Mr. Robertson provides information concerning corporate background, the window blind business, the Applicant’s SLIMLINE brand and SLIMLINE VOGUE brand, sales of SLIMLINE VOGUE wares in Canada and the UK, and the promotion of SLIMLINE VOGUE wares. He also offers his view on the differences between the businesses, products and marks of the parties in this opposition. To the extent that Mr. Robertson is providing his opinion on the likelihood of confusion, I am disregarding his evidence.
[13] Mr. Booth is a trade-mark searcher. He provides results of a search that he conducted in 2010 of the Canadian Trade-marks Register for active applications and registrations for marks consisting of the word VOGUE that are not owned by the Opponent; 51 such marks were located.
[14] Mr. Stephan is a private investigator. In 2010, he bought several third party VOGUE products. He also called 35 businesses that have VOGUE in their names and confirmed that they are active and carrying on business under their names; he also provides various directory listings for these businesses, including telephone directory listings. In addition, he provides some evidence of window coverings being sold under trade-marks that are similar or identical to the names of third party magazines.
[15] As noted earlier, each of the affiants was cross-examined. Objections have been raised with respect to parts of the affiants’ evidence, and where these objections are with respect to evidence that is relevant to certain grounds of opposition, I will address them below.
Grounds to be Dismissed on the Basis that the Opponent has not Met its Initial Burden
[16] The grounds of opposition identified above as 3, 4, 5 and 6 are dismissed on the basis that the Opponent has not met its initial burden in respect thereof, as explained further below.
[17] Regarding the section 16(3)(a) ground of opposition, the Opponent was obliged to evidence that it had used its pleaded marks prior to December 14, 2006 and had not abandoned its marks as of July 2, 2008 [section 16(5)]. However, the Opponent has not filed evidence showing use of any of its marks. Moreover, any reference to use in the Opponent’s applications or registrations is not sufficient to satisfy the Opponent's evidential burden [see Rooxs, Inc v Edit-SRL (2002), 23 CPR (4th) 265 (TMOB)].
[18] Regarding the distinctiveness ground of opposition, the Opponent was obliged to evidence that its marks were known to some extent at least as of September 2, 2008 to negate the distinctiveness of the Mark [see Bojangles’ International LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC)]. However, the Opponent did not file evidence to support such a conclusion. Once again, the Opponent’s applications/registrations are insufficient to satisfy the Opponent’s evidential burden. At the oral hearing, the Opponent noted that the cross-examinations of both Mr. Stephan and Mr. Robertson revealed that these individuals were aware of the Opponent’s VOGUE magazine, but that is insufficient to satisfy the Opponent’s initial burden. The Opponent pointed out that Mr. Stephan refused to answer the question of whether VOGUE magazine is a well-known magazine in Canada (Q72-73) and asked me to draw an adverse inference based on this refusal. The refusal was based on the fact that Mr. Stephan is a lay person and cannot give opinion evidence and seems proper to me. However, even if an adverse inference were to be drawn, this would not satisfy the Opponent’s initial burden.
[19] Regarding the section 30(i) ground of opposition, where an applicant has provided the statement required by section 30(i), such a ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. The Applicant has provided the required statement and there is no evidence that this is an exceptional case.
[20] Regarding the section 30(d) ground of opposition, there is no evidence that supports the Opponent’s allegation that when the Applicant filed the application it had not used the Mark in the United Kingdom, In fact, the evidence suggests that the Mark had been used in the United Kingdom prior to that date [see: Exhibit “B”, Anastacio affidavit; Exhibits 14 and 15, Robertson affidavit].
Section 12(1)(d) Ground of Opposition
[21] Pursuant to section 12(1)(d), the Opponent has relied upon eleven registrations. An opponent’s initial burden is met with respect to a section 12(1)(d) ground of opposition if the registration upon which it relies is extant at the date of my decision. I have exercised the Registrar’s discretion to check the register to confirm the status of each of the pleaded registrations [see Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. As each of the pleaded registrations is currently extant, the Opponent has met its initial burden. The Applicant must therefore establish, on a balance of probabilities, that as of today’s date there is not a reasonable likelihood of confusion between the Mark and any one of the pleaded registered marks.
[22] The mark of the Opponent that is the most similar to the Mark is VOGUE. VOGUE is registered for a variety of wares and services, which seem to focus on a magazine/publication. None of the Opponent’s registrations refer to blinds or window coverings or any products that qualify as housewares, hardware or interior decor. However, at the oral hearing, the Opponent relied specifically on four of the pleaded registrations, Nos. iii), vii), viii) and xi) above, in support of an argument that a nexus exists between the parties’ wares/services. The wares/services of those four registrations are set out below, with the portions emphasized by the Opponent underlined:
• registration No. TMDA19676 for VOGUE Design: a trade journal.
• registration No. TMA576,133 for VOGUE: online magazine and publications distributed in electronic format via the internet; operating an internet website which allows consumers to subscribe to consumer magazines and allows advertisers to promote their goods and services via the internet.
• registration No. TMA561,966 for VOGUE Design: printed publications, namely magazines, books and periodicals; internet services, namely providing fashion and style information via the internet.
• registration No. TMA641,823 for TEEN VOGUE: printed matter, namely periodic publications, namely a fashion and entertainment magazine; newspapers, books, magazines; disseminating a wide range of information all relating to fashion, beauty and entertainment by means of computer databases available via a global computer network, wireless, satellite, and other communication media; transmitting and broadcasting live action entertainment services all relating to fashion, beauty and entertainment by means of computer databases available via a global computer network, wireless broadcast, satellite, internet, CD-ROMs, electronic publications and multimedia interactive software, telephonic and cable; operating online retail services featuring beauty, fashion and entertainment; operating interactive forums and chatrooms all relating to a fashion, beauty and entertainment; computer services, namely providing fashion, beauty and entertainment information and instruction over the internet.
[my underlines]
[23] As I understand it, the Opponent’s position is that the wares/services in these registrations support its view that both parties are in the fashion or style business and that the Applicant’s wares could be advertised in the Opponent’s publications (Mr. Robertson attested that the Applicant advertises in trade magazines, such as Window Fashions). The Opponent however also submitted that if I did not agree that they were in the same business, then of course section 6(2) of the Act indicates that this is not required in order for there to be a likelihood of confusion.
[24] Section 6(2) of the Act indicates that 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, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[25] The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has 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 in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC), Veuve Cliquot Ponsardin v Boutiques Cliquot Ltée (2006), 49 CPR (4th) 401 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC).]
[26] I will focus my discussion of the likelihood of confusion on the four registrations referred to above. If confusion is not likely with any of those registered marks, then it is not likely with any of the pleaded registered marks.
the inherent distinctiveness of the marks
[27] The party’s marks are not inherently strong, since they all consist of suggestive words.
[28] The Canadian Oxford Dictionary provides the following definition:
vogue noun [prec. by the] the prevailing fashion.
[29] In addition, although the Applicant submitted that “slimline” is an invented word, The Canadian Oxford Dictionary provides the following definition:
slimline adjective of sleek and slender design.
the extent to which each mark has become known
[30] A mark’s distinctiveness may be increased through use and promotion.
[31] The Opponent submitted that I should accept that the Opponent’s VOGUE mark has become known because it has been the subject of registrations for decades and because some of the Applicant’s affiants acknowledged during cross-examination that they were aware of VOGUE magazine. I will however only assume de minimis use of the Opponent's trade-mark(s) based on its registration(s) in the absence of any evidence showing that the Opponent has used or promoted its mark(s) [see Entre Computer Centers, Inc v Global Upholstery Co (1991), 40 CPR (3d) 427 (TMOB)].
[32] There is evidence that the Applicant has used and promoted the Mark. In particular, Mr. Robertson attests that Canadian sales as of April 30, 2010 were in excess of $25,000 and provides photographs of labels and packaging boxes that display the Mark. Advertising and promotion of SLIMLINE VOGUE blind systems in Canada is primarily carried out through sales representative visits to blind fabricators. Existing and potential customers receive brochures, price lists, samples and product sell sheets, which display the Mark.
[33] I note that the Opponent has objected to some of Mr. Robertson’s evidence concerning Canadian sales as hearsay because during cross-examination it was revealed that the sales figures were provided to him by Ann Harris of Louver-Lite (Canada) Limited (Q127). No further questions were asked as to whether Mr. Robertson confirmed those figures in any way. Given that Mr. Robertson as President of Louver-Lite (Canada) Limited is responsible for overseeing the sales of window blind systems and his attestation that he has access to company records and key personnel and has knowledge of the matters set out in his affidavit, I am prepared to accord weight to the stated sales figures. Even if I were to accord those figures reduced weight, there would still be more evidence of the Applicant’s use and promotion of its Mark than there is of the Opponent’s use or promotion of any of its marks.
the length of time the marks have been in use
[34] The particulars of the Opponent’s registrations provide dates of first use that go back many years. However, in the absence of evidence of continuing use by the Opponent of its marks, the length of time the marks have been in use in Canada is not a material circumstance in this case. As stated above, at most I may infer only de minimis use of any of the Opponent’s marks.
[35] Mr. Robertson attests that the Applicant has been using the Mark in Canada since October 2007.
the nature of the wares, services, business and trade
[36] When considering the wares and trades of the parties, it is the statement of wares or services in the parties’ trade-mark application and registrations that govern in respect of the issue of confusion arising under section 12(1)(d) [see Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA) and Miss Universe, Inc v Dale Bohna (1984), 58 CPR (3d) 381 (FCA)].
[37] The most common type of ware covered by the Opponent’s registrations is a publication, either in print or electronic form. While these wares are sometimes identified as “in the fields of fashion, beauty and entertainment”, there is no evidence that the Opponent itself sells any items of fashion.
[38] Magazines and periodicals are very different from window blinds and there is no reason to assume that they would travel the same channels of trade. Even if they were sold in the same store, there is no basis for finding that they would be sold in close proximity to each other.
[39] As discussed earlier, the Opponent submits that a connection exists between the parties’ wares/services for three reasons: 1) the Opponent’s publications etc. relate to fashion (and the word “fashion” has not been further restricted in its registrations); 2) the Applicant’s own evidence shows that the word “fashion” is associated with window coverings in general and the Applicant’s wares in particular; and 3) the Applicant’s wares could be advertised in the Opponent’s publications.
[40] The evidence regarding the second point includes the following:
• reference in an article that appeared in a 2005/2006 edition of BBSA Openings (the official journal of the British Blind & Shutter Association) to “the advent of Slimline Vogue, the window fashion statement for 2006.” [Exhibit 12, Robertson affidavit]
• Slimline Vogue systems are described as being “in fashionable colours” in an ad published in trade magazines [Exhibit 20, Robertson affidavit].
[41] The Opponent also points to references to glamour, stylish design, and similar concepts in the Applicant’s materials.
[42] I note the following definition from The Canadian Oxford Dictionary:
1. fashion noun the current popular custom or style, esp. in dress or social conduct [also attributive: fashion designer; fashion show].
[43] As submitted by the Opponent, the ambit of fashion is arguably wide and the word fashion might be used to refer to subject matter beyond clothing. Nevertheless it seems to me that the Opponent’s position, based on the evidence before me, is overreaching. The Opponent is claiming a monopoly of the ordinary word “vogue” over anything that might be considered to be fashionable. Given that “vogue” essentially means “fashion” that seems inappropriate.
[44] I am also not swayed by the argument that it is significant that the Applicant could advertise its wares in the Opponent’s publications. After all, it is not apparent that there is any restriction on the wares that might be advertised in the Opponent’s publications and so once again accepting such an argument would give the Opponent’s marks a broad scope of protection that is not supported by the evidence at hand.
[45] Before moving on, I note that the Applicant’s evidence is that its wares are sold to manufacturers, not to consumers, but no such restriction is indicated in the application’s statement of wares. In any event, such a restriction on the Applicant’s channels of trade would not have a significant impact on the outcome of this opposition.
the degree of resemblance between the marks
[46] The parties’ marks resemble each other to the degree that they each include the word “vogue”. Although the Applicant’s Mark incorporates the Opponent’s VOGUE mark as a whole, given the nature of the word “vogue” this is not as significant as if the Opponent’s mark comprised a unique or invented word.
[47] There are differences between the Mark and each of the Opponent’s marks in appearance, sound and idea suggested. VOGUE suggests that the Opponent’s publications relate to fashionable matters whereas SLIMLINE VOGUE suggests that the Applicant’s blind systems are slim and fashionable. Although “slimline” is not an inherently strong word, it serves to distinguish the Mark from the Opponent’s VOGUE mark. While trade-marks must be considered in their entirety, it is a well accepted principle that the first portion of a trade-mark is the most relevant for the purposes of distinction [see Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD) at 188].
other surrounding circumstances
state of the register and marketplace evidence
[48] The Applicant has introduced evidence of the state of the register with respect to the word VOGUE through Mr. Booth. The evidence shows that third parties have obtained registrations for the following:
1. VOGUE automobile tires and tubes
2. VOGUE tobacco in all forms (including cigarettes)
3. VOGUE biscuits, bonbons et confiseries
4. VOGUE…CRAVAT DE LUXE neckties
5. LA VOGUE buttons
6. VOGUE BRA women’s underwear and undergarments
7. VOGUE piscines hors-terre, piscines creusées, toiles intérieures pour piscines hors-terre et creusées
8. V VOGUE FIRENZE & Design sunglasses
9. VICTORIA VOGUE cosmetic applicators, pads and brushes
10. VOGUE DISPLAY store fixtures
[49] Mr. Booth also located an allowed application for VOGUE & Design for umbrellas, plus various applications for VOGUE marks that have either not yet been advertised or are the subject of opposition proceedings.
[50] State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace, and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located. [Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432; Del Monte Corporation v Welch Foods Inc (1992), 44 CPR (3d) 205 (FCTD); Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA)] Ten or eleven third party marks may or may not be sufficient to draw an inference about the state of the marketplace. However, here we also have some evidence concerning the marketplace, as discussed further below.
[51] Mr. Stephan purchased the following wares in Canada: VOGUE BRA and VOGUE BRA SPORTS brassieres; VICTORIA VOGUE loose powder puff and assorted beauty sponges; VOGUE CARACTERE cigarettes; and VOGUE sunglasses. In addition, he called each of the following 35 Canadian businesses to confirm that they are active and carrying on business under their names: Vogue Interiors Inc.; Vogue Textiles & Home Décor; Vogue Display Inc.; The Vogue Development Group Inc.; Vogue Homes Inc.; Vogue Textiles Inc.; Casa Vogue Ameublement; En Vogue Furniture; In Vogue Design & Draperies Inc.; Vogue Concrete Design Inc.; Vogue Optical; Vogue Models & Talent Burlington Toronto; Vogue Sosa Bridal Boutique; Vogue Hair; Vogue beauty salon; En Vogue Hair Studio; Vogue Hair Studio; Vogue Fashion & Tailoring; En Vogue Beauty Salon; En Vogue Hair Design; Vogue College for hair design, esthetics and nails; Vogue Hair Styling; Chaussures Vogue; Salon Vogue; Salon de Beauté Vogue; Exclusively Vogue Nails; Denise’s Hair in Vogue; Salon Vogue; En Vogue Sculptured Nail Systems; Vogue costume rental; En Vogue beauty salon; Vogue Unisex Salon; En Vogue Dayspa & Gift Studio; Vogue Hair Studio; Always in Vogue clothing storage facility.
[52] Although the Opponent has argued that this evidence should be disregarded as hearsay in part because Mr. Stephan did not obtain the names of the people who answered his enquiries, I am prepared to give it some weight. There is no reason to assume that Mr. Stephan’s evidence is not reliable and I note that his evidence concerning his telephone conversations are bolstered by exhibits that provide copies of various directory listings for the businesses, including in many cases copies of telephone directory listings or Yellow Pages ads.
[53] Based on the evidence of Mr. Booth and Mr. Stephan, I conclude that Canadians are used to distinguishing among various VOGUE wares/services/businesses. The evidence shows that others use the word “vogue” in a proprietary sense in association with marks/names that are used in fields that might well be described as relating to “fashion” and there is no reason to expect that these various third parties might not wish to advertise in suitable publications. In other words, based on the evidence, it appears that the Opponent’s marks already coexist in Canada with many marks/names that are used in fashion-related fields and that are as similar to the Opponent’s marks as is the Mark; in fact, many of them are more similar to the Opponent’s marks.
lack of evidence of confusion
[54] Although I do not consider it to be a significant factor, I acknowledge that despite the Applicant’s use of the Mark in Canada since 2007, there is no evidence of any confusion having occurred [see paragraph 66, Robertson affidavit].
use of SLIMLINE
[55] The Applicant has also evidenced that it began using the trade-mark SLIMLINE on its own in Canada in 1996, with SLIMLINE VOGUE being introduced in 2006 for an updated vertical headrail system. Therefore, the Applicant’s longer reputation in association with SLIMLINE may benefit the Mark, but I do not consider this to be a significant factor in the present proceeding.
abbreviation of the Mark
[56] The Opponent expressed the view that the Mark is likely to be abbreviated from SLIMLINE VOGUE to VOGUE. In support, it points to the 2005/2006 article provided by Mr. Robertson as Exhibit 12 which I mentioned earlier, in which the writer refers at the beginning to Slimline Vogue but later makes several references to Vogue without the preceding word Slimline. However, this publication does not come into Canada and it is not known who wrote this article [Questions 57 and 84, Robertson cross-examination]. I therefore consider it to be anecdotal rather than significant.
conclusion
[57] Having considered all of the surrounding circumstances, I find that the Applicant has established, on a balance of probabilities, that confusion is not likely between the Mark and any of the Opponent’s marks. The common feature among the marks, the word “vogue”, is an ordinary dictionary word that is a reference to fashion. A party ought not to be able to easily monopolize such a word, especially where there is no evidence of acquired distinctiveness. In the present case, I find that the differences between both the parties’ marks and the parties’ wares/services are more than sufficient to make confusion unlikely. This conclusion is reinforced by the evidence that many others have used the word VOGUE in association with fashion related businesses or wares in Canada.
[58] I note that the Opponent has relied on three cases where the Opponent (or its predecessor) was successful against a third party VOGUE mark, namely: i) Advance Magazine Publishers Inc v Masco Building Products Corp (1999), 86 C.P.R” (3d) 207 (FC); ii) Advance Magazine Publishers Inc v Peintures MF (1972) Inc (1996), 66 CPR (3d) 375; and iii) Conde Nast Publications Inc v Hanz Schwarzkopf GmbH (1988), 20 CPR (3d) 176 (TMOB). The marks and wares of the third parties in those cases were respectively i) VOGUE door locks and lock hardware, ii) LATEX VOGUE paints, and iii) VOGUE perfumeries and cosmetics. While the wares in the first two cases appear to be of a nature similar to the Applicant’s wares, the cases are easily distinguished. In all three cited cases there was evidence that the Opponent's VOGUE trade-mark was well-known; such evidence is not before me. The Opponent admits that such evidence is lacking here but argues that this is countered by the evidence that the Applicant’s wares are fashionable. However, I find the Opponent’s argument about the fashionable nature of the Applicant’s wares to be weak and not very persuasive, particularly in view of the many parties that use VOGUE in association with fashion-related wares/businesses.
[59] The section 12(1)(d) ground is accordingly dismissed in its entirety.
Section 16(3)(b) Ground of Opposition
[60] The Opponent has met its initial burden under this ground because each of the three pleaded applications was filed before December 14, 2006 and was pending as of July 2, 2008. However, I am satisfied on a balance of probabilities that the Mark is not likely to be confused with any of these three marks for reasons similar to those discussed with respect to the section 12(1)(d) ground. I note that the applications pleaded under section 16(3)(b) cover electronic publications (No. 856,582), restaurant and bar services (No. 1,198,832), and broadcasting services etc. (No. 1,269,486). In other words, none of these marks are for wares or services that are any more similar to those of the Applicant than those of the registered marks pleaded under section 12(1)(d). The section 16(3)(b) ground is therefore dismissed in its entirety.
Disposition
[61] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Jill W. Bradbury
Member
Trade-marks Opposition Board