Eclectic Edge Inc. v. Victoria's Secret Stores Brand Management, Inc., 2015 FC 453 (Manson, J.)
April 13, 2015
Jamie Bordman for the Applicant
Sarah O’Grady and Antonio Turco for the Respondent
The Applicant contested four trademarks using a combination of the words “Valentine Secret” or “VS” in association with lingerie. The Trademark Opposition Board found that these marks were non-distinctive and had a strong likelihood of confusion when compared to the Victoria Secret mark. On appeal, the Federal Court held that in the Canadian marketplace “Secret” commonly denotes lingerie. It further emphasized that when a mark contains a common place element the consumer is more focused on the ‘non-common place element’.
With this logic in mind the Court turned its attention to differentiating between Valentine and Victoria. Here, the Court agreed that when determining confusion and distinctiveness a mark cannot be dissected into its individual elements but must be regarded as a whole. Although both words began with a “V” the Court ultimately decided that “Valentine” and “Victoria” looked and sounded sufficiently different so as to avoid a likelihood of confusion. For the same reasons the Court found the marks were distinctive. However with regards to the “VS” mark the Court agreed with the Respondent and determined that this well-known abbreviation of the Victoria Secret mark was likely of confusing and non-distinctive from the Applicant’s mark.
By: Tracey Doyle, Borden Ladner Gervais LLP