Advance Magazine Publishers Inc. v. Masco Building Products Corp.
T-2756-96
Richard A.C.J.
29/1/99
21 pp.
Appeal from Trade-marks Opposition Board Chairman decision rejecting appellant's opposition to application for registration of "Vogue" trade mark for use in association with door locks and lock hardware-In opposition proceedings, appellant argued respondent's trade mark confusing with appellant's "Vogue" and "Vogue Decoration" magazines; respondent not entitled to registration as, at date of application, trade mark confusing with appellant's trade mark which had been used to such extent that trade marks very well known and indeed famous in Canada-Issues whether registrar erred in allowing respondent's application over appellant's opposition; whether respondent's proposed trade mark confusing with appellant's; whether respondent entitled to register trade mark "Vogue" in view of appellant's prior use of trade marks "Vogue" and "Vogue Decoration"-Appeal allowed-On appeal from Board decisions pursuant to Act, s. 56, Court must come to its own conclusion as to correctness of finding of Board; in doing so, however, Court must take into account special experience and knowledge of Board, and have regard to whether new evidence has been put before Court that was not before Board: Labatt Brewing Co. v. Molson Breweries, A Partnership (1996), 113 F.T.R. 39 (F.C.T.D.)-Legal burden on applicant to establish there would be no reasonable likelihood of confusion between trade marks of parties at date of registrar's decision-Likelihood of confusion to be determined according to factors set out in Act, s. 6(5): inherent distinctiveness; length of time marks in use; nature of wares; nature of trade; degree of resemblance-In instant case, only nature of wares and nature of trade need be considered, other three factors clearly in favour of appellant-With respect to nature of trade, evidence that appellant's magazine sold to consumers by subscription and at newsstand-Respondent has filed no evidence concerning nature of its intended trade, and its claimed monopoly not limited in any way-Therefore, appropriate to presume that monopoly sought by respondent includes products sold to consumers through all conceivable channels of trade-Criteria outlined in Act, s. 6(5) need not be given equal weight-Strong mark such as appellant's entitled to greater ambit of protection-In absence of any evidence from respondent concerning nature of its wares and respondent's claimed monopoly, appropriate to presume that all kinds of door locks and lock hardware fall within scope of its monopoly sought by respondent, including high quality, stylish, decorative products such as those likely to be featured, advertised or written about in appellant's magazines-Not case of gaping divergence in nature of wares-Chairman of Opposition Board therefore erred in saying no likelihood of confusion herein-Duty of respondent to select name with care so as to avoid any confusion and so as to avoid appearance he intended to jump on bandwagon of already famous mark-Many decisions where famous mark has prevailed with respect to non-competing goods-Evidence of trade names and trading styles which incorporate use of "Vogue" in telephone directories throughout Canada can lead to reasonable inference that number of these enterprises active in business, although far from determinative in this case-Weight of such evidence not sufficient to limit scope of protection to be afforded strong mark such as "Vogue"-In this case, nexus between wares particularly where marks identical and registered mark well-known mark-Applicant has not limited its use of mark to products which would be foreign to ambit of protection that "Vogue" mark now has-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(5), 56.