Eclectic Edge Inc. v. Gildan Apparel (Canada) LP, 2015 FC 1332 (Gascon, J.)
December 1, 2015
Janet M. Fuhrer and Jaimie Bordman of Ridout & Maybee LLP, for Eclectic Edge (Applicant)
Genevieve Bergeron and Daniel Grodinsky of Borden Ladner Gervais LLP, for Gildan Apparel (Respondent)
This is an appeal by Eclectic Edge Inc. (“Eclectic”) of decisions of the Registrar, refusing to register four trade-marks for which it had applied. Eclectic had filed the applications to register marks containing the words “valentine” and “secret”, based on proposed use in association with women’s clothing, undergarments and lingerie (the “VALENTINE SECRET Marks”). A predecessor entity of Gildan Apparel (Canada) LP (“Gildan”) opposed the registrations on the basis of reasonable likelihood of confusion with its own registered trade-mark SECRET and numerous other trade-marks containing the word SECRET (the “SECRET Marks”).
The Judge of the Federal Court (the “Judge”) first decided on issues of judicial comity. Interestingly, both parties raised the principle of comity in support of their respective positions, referring to recent Federal Court trade-mark decisions in the women’s intimate apparel industry. Eclectic pointed to a case in which the VALENTINE SECRET Marks were found not likely to be confusing with VICTORIA’S SECRET trade-marks (2015 FC 453). Meanwhile, Gildan pointed to a case in which a WOMEN’SECRET trade-mark was indeed found to be confusing with the SECRET Marks (2013 FC 1107). Responding to both submissions, the Judge held that the appeal before him involved a different issue, based on different facts, and opposing different parties. Thus, the principle of judicial comity was held not to apply in this case.
The Judge then decided on the appropriate standard of review in light of new evidence. Eclectic filed multiple affidavits, which it alleged provided a large quantity of data and examples on the common use of the word “secret” by third parties in trade-marks, business names, and web domains. According to Eclectic, the use of the word “secret” was widespread in the relevant marketplace at the appropriate date, thus reducing the likelihood of confusion between Eclectic’s and Gildan’s marks. In response, Gildan challenged many of the examples provided in the Eclectic affidavits and further provided its own additional evidence, which included additional facts on Gildan’s continued use, expansion and exercise over the SECRET Marks. The Judge held that the sheer number of examples presented by Eclectic on the state of the register and marketplace boil down to very little after analysis and would not have materially impacted the Registrar’s decision. Thus, the standard was held to be reasonableness.
Finally, the Judge examined the reasonability of the Registrar’s decision regarding likelihood of confusion. Of the five criteria comprising the test for confusion, only the degree of resemblance of s. 6(5)(e) was under dispute. The Judge held that there might have been reason not to have found a likelihood of confusion for one of the four VALENTINE SECRET Marks; however, there was no doubt that the decisions regarding all four applications were reasonable and fell within a range of possible, acceptable outcomes. The appeal was therefore dismissed with costs.
By: Phil Goldbach, AbCelex Technologies Inc.