Eclectic Edge Inc v. Gildan Apparel (Canada) LP

Eclectic Edge Inc v. Gildan Apparel (Canada) LP
Court (s) Database
Federal Court Decisions
Date
2015-12-01
Neutral citation
2015 FC 1332
File numbers
T-349-14, T-350-14, T-351-14, T-352-14
Decision Content
Date: 20151201
Dockets: T-349-14
T-350-14
T-351-14
T-352-14
Citation: 2015 FC 1332
Ottawa, Ontario, December 1, 2015
PRESENT: The Honourable Mr. Justice Gascon
BETWEEN:
ECLECTIC EDGE INC
Applicant
and
GILDAN APPAREL (CANADA) LP
Respondent
JUDGMENT AND REASONS
I. Overview [1] In August 2008, the applicant Eclectic Edge Inc. [Eclectic] filed applications to register four trade-marks containing the words “valentine” and “secret”, based on proposed use in association with several goods in the nature of women’s clothing, undergarments and lingerie [the VALENTINE SECRET Marks]. The respondent Gildan Apparel (Canada) LP [Gildan], through one of its predecessor entities, opposed the registration 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]. In December 2013, the Registrar of Trade-marks [the Registrar] refused Eclectic’s four applications.
[2] Eclectic is now appealing these decisions before this Court under section 56 of Canada’s Trade-marks Act, RSC 1985, c T-13 [the Act]. Eclectic contends that the Registrar’s decisions on the issue of likelihood of confusion were incorrect in view of several relevant material facts, including new evidence showing that the word “secret” is in widespread usage in the women’s clothing and undergarments market. Eclectic contends that Gildan cannot therefore claim exclusivity in the word “secret” and it is seeking an order from this Court setting aside the Registrar’s decisions. Gildan responds that the Registrar correctly recognized the likelihood of confusion between Eclectic’s VALENTINE SECRET Marks and its well-known SECRET Marks and family of SECRET trade-marks, which have been used in Canada for over 40 years in the market for women’s hosiery, intimate apparel and other related clothing products. Gildan further argues that the new evidence provided on appeal does not change this situation and that the Registrar’s decisions should not be disturbed.
[3] The dispute between the parties is compounded by the fact that diverging recent decisions have been issued by this Court about the likelihood of confusion between trade-marks containing the word “secret” in the market for women’s intimate apparel, lingerie, undergarments and other related clothing products.[1] In one case, Eclectic’s VALENTINE SECRET Marks were found not likely to be confusing with the VICTORIA’S SECRET trade-marks. In another one, the WOMEN’SECRET trade-mark was found likely to be confusing with Gildan’s SECRET Marks. The Court must now determine, based on the evidence before it, whether Eclectic’s VALENTINE SECRET Marks are likely to create confusion with Gildan’s SECRET Marks.
[4] The issues to be determined in this appeal are therefore as follows:
What is the appropriate standard of review? Would the new evidence filed on appeal have materially affected the Registrar’s decisions? Were the Registrar’s findings that Eclectic’s VALENTINE SECRET Marks were likely to be confused with and not distinctive from Gildan’s SECRET Marks correct or reasonable in view of the evidence?
[5] For the reasons that follow, I am not persuaded that the new evidence filed by Eclectic and Gildan in this appeal would have materially affected the Registrar’s decisions. Therefore, the appropriate standard of review is reasonableness. Having considered all of the evidence before the Registrar, the new evidence on appeal, all surrounding circumstances and the applicable law, I conclude that the Registrar’s findings that the VALENTINE SECRET Marks are likely to be confusing with Gildan’s SECRET Marks and not distinctive are reasonable and fall within the range of possible, acceptable outcomes defensible in respect of the facts and the law. Therefore, I will dismiss the appeal.
II. Background A. Facts [6] On August 1, 2008, Eclectic filed applications to register the following four VALENTINE SECRET Marks:
Application No. 1,405,838: word mark “VALENTINE SECRET” [the VALENTINE SECRET Word Mark]:
Application No. 1,405,840: design mark “VALENTINE SECRET” with design [the VALENTINE SECRET Design Mark]:
• Application No. 1,405,839: design mark “VALENTINE SECRET LINGERIE” with design [the VALENTINE SECRET Lingerie Design Mark]:
• Application No. 1,405,835: design mark “VS A SECRET THAT WOMEN LOVE…” with design [the VALENTINE SECRET VS Design Mark]:
[7] Each trade-mark is in connection with wares described as follows in Eclectic’s applications: “bandanas (neckerchiefs); bath robes; bathing drawers; bathing suits; beach clothes; boas (necklets); bodices (lingerie); brassieres; camisoles; clothing for gymnastics; corsets (underclothing); drawers (clothing); dressing gowns; frocks; fur stoles; girdles gloves (clothing); jumpers (shirt fronts); knitwear (clothing); mittens; petticoats; pockets for clothing; pullovers; ready-made clothing, namely, sleepwear, underwear and lingerie; ready-made linings (parts of clothing); robes (bath); scarfs; singlets; slips (undergarments); suits; suits (bathing -); sweat-absorbent under-clothing (underwear); sweaters; teddies (undergarments); tee-shirts; tights” [the Wares].
[8] After advertising the applications, Gildan’s predecessor Manufacturier de Bas de Nylon Doris Ltee/Doris Hosiery Mills Ltd, later known as Doris Inc. [Doris],[2] opposed Eclectic’s applications in a statement filed on January 29, 2010. In its oppositions, Gildan raised a number of grounds of opposition, including:
• Pursuant to s. 38(2)(a) and s. 30(i) of the Act, Eclectic could not have been satisfied that it was entitled to use the VALENTINE SECRET Marks in view of the prior use and/or registration of Gildan’s registered SECRET Marks;
Pursuant to s. 38(2)(b) and s. 12(1)(d) of the Act, Eclectic’s VALENTINE SECRET Marks were not registrable because they were confusing with Gildan’s SECRET Marks [the Registrability Ground]; Pursuant to s. 38(2)(c) and s. 16(3)(a) and (b) of the Act, Eclectic was not entitled to the registration of the VALENTINE SECRET Marks, because they were confusing with Gildan’s SECRET Marks [the Entitlement Ground]; Pursuant to s. 38(2)(d) of the Act, the VALENTINE SECRET Marks were not distinctive because they did not distinguish nor were they adapted to distinguish Eclectic’s wares in association with which it was proposed to be used by Eclectic from the wares or services of others, namely Gildan [the Distinctiveness Ground].
[9] In support of its oppositions before the Registrar, Gildan supplied two affidavits sworn by Mr. Michael Poirier, president of Doris [the Poirier Affidavits], and submitted written arguments. In essence, Gildan claimed that it filed an application for the trade-mark SECRET as early as July 28, 1966 and started using it in association with ladies’ hosiery in 1967. Gildan also claimed to have expanded its portfolio of SECRET Marks over the years to create a family of multiple trade-marks incorporating the word “secret”, used in association with women’s intimate apparel.
[10] Eclectic filed a counterstatement denying the allegations and stating that its applications complied with the Act. Eclectic argued that the adoption, use and registration in Canada by third parties of trade-marks containing the word “secret” in association with women’s intimate apparel substantially diminished the scope of protection to which Gildan’s trade-marks might be entitled. Eclectic cross-examined Mr. Poirier on his affidavits. However, Eclectic did not file evidence of its own in support of its applications before the Registrar.
[11] On December 5, 2013, the Registrar refused all four applications.
B. Decisions of the Registrar [12] The December 2013 decisions of the Registrar were all signed by Ms. Cindy R. Folz, a member of the Trade-marks Opposition Board [the Board]. She issued four largely identical decisions regarding each of the four VALENTINE SECRET Marks.
[13] As a preliminary matter, the Registrar refused to have regard to the evidence Eclectic attempted to file on various third-party trade-mark registrations involving the word “secret” during the cross-examinations of Mr. Poirier. She considered that it was inappropriate to introduce such “state of the register” evidence through cross-examination. The Registrar also indicated that she would focus on five of Gildan’s SECRET Marks (subject of registrations Nos. TMA 151,062, TMA 298,736, TMA 603,410, TMA 649,866 and TMA 503,802), as a determination of the issue of confusion between the VALENTINE SECRET Marks and these five specific marks would effectively decide the matter.
[14] The Registrar first dismissed Gildan’s claim that Eclectic did not meet the requirements of s. 30(i) of the Act and could not have been satisfied that it was entitled to use the VALENTINE SECRET Marks in Canada at the time of filing the application in view of the prior use and registration of the SECRET Marks. On that point, the Registrar noted the absence of evidence showing that Eclectic had acted in bad faith or adopted its trade-marks knowing that they were confusing with Gildan’s trade-marks.
[15] The Registrar then recognized that the main issue to be determined for Gildan’s other grounds of opposition was whether there was a likelihood of confusion between Eclectic’s VALENTINE SECRET Marks as applied to the Wares and one or more of the 59 registered SECRET Marks belonging to Gildan. Noting the history of Gildan’s SECRET Marks and associated SECRET products, the Registrar outlined the test for confusion as identified in the provisions of the Act and developed in the jurisprudence. Further to her analyses, the Registrar found in favour of Gildan on each of the Registrability Ground, the Entitlement Ground based on s. 16(3)(a) of the Act and the Distinctiveness Ground.
[16] In considering the factors listed in section 6 of the Act to assess the likelihood of confusion, the Registrar found that they all favoured Gildan.
[17] In terms of the inherent distinctiveness of the marks (factor 6(5)(a)), the Registrar found that Eclectic’s VALENTINE SECRET Word Mark, VALENTINE SECRET Design Mark and VALENTINE SECRET VS Design Mark had the same degree of inherent distinctiveness as Gildan’s SECRET Marks. However, the VALENTINE SECRET Lingerie Design Mark was not considered as inherently strong as Gildan’s marks because it described the nature of the applied Wares. The Registrar further found that Gildan’s evidence established that its SECRET Marks had become well-known if not famous in Canada in association with hosiery and undergarments, and since Eclectic did not file any evidence of use of its marks, this factor favoured Gildan. The Registrar also referred to the evidence on the use and reputation of the SECRET Marks in Canada, including figures provided by Mr. Poirier on the significant sales of the SECRET products made between 1986 and 2009 through thousands of retail outlets in Canada such as department stores and specialty stores, on expenditures made by Gildan during that period to promote and advertise the SECRET products bearing the SECRET Marks, and on the licensed products sold by Doris.
[18] The Registrar then found that the factor of the length of time that the trade-marks had been in use (factor 6(5)(b)) favoured Gildan, as there was no evidence that Eclectic’s VALENTINE SECRET Marks had been used in Canada.
[19] In terms of the nature of the wares, services or business (factor 6(5)(c)), the Registrar found that many of Eclectic’s Wares were either identical or closely related to Gildan’s SECRET products in that they all comprised articles of clothing. Since a vast number of the Eclectic Wares were either closely related to or overlapped with the SECRET products, this factor favoured Gildan.
[20] Turning to the nature of the trade (factor 6(5)(d)), the Registrar noted that Eclectic did not introduce evidence with respect to the channels of trade associated with its VALENTINE SECRET Marks. Since there was no reason to assume that there were any significant differences between the channels of trade associated with each party’s trade-marks, the Registrar concluded that this factor also favoured Gildan.
[21] On the degree of resemblance between the trade-marks in appearance, sound or ideas suggested by them (factor 6(5)(e)), the Registrar found a fair degree of similarity in appearance, sound and idea suggested between, on the one hand, the VALENTINE SECRET Word Mark, the VALENTINE SECRET Design Mark and the VALENTINE SECRET Lingerie Design Mark and, on the other hand, the SECRET Marks. The Registrar however noted that the similarity was not as high for the VALENTINE SECRET VS Design Mark. When examining the degree of resemblance, the Registrar acknowledged that the trade-marks had to be considered in their totality. The Registrar began by determining whether there was an aspect of the trade-mark that was particularly striking or unique. The Registrar recognized that the word “secret” was the dominant component of Gildan’s SECRET Marks, as it was its only component. She also found the word “secret” to be the dominant feature of Eclectic’s VALENTINE SECRET Design Mark and VALENTINE SECRET Lingerie Design Mark. Given that Eclectic’s VALENTINE SECRET Marks included Gildan’s SECRET trade-mark in its entirety, the Registrar found that there was a fair degree of similarity between the parties’ trade-marks in appearance, sound and idea suggested (or some degree of resemblance in the case of the VALENTINE SECRET VS Design Mark).
[22] I pause to note that, in her analysis, the Registrar only considered the word “secret” to be the dominant component for two of Eclectic’s marks, namely the VALENTINE SECRET Design Mark and the VALENTINE SECRET Lingerie Design Mark. For the VALENTINE SECRET Word Mark and the VALENTINE SECRET VS Design Mark, she only retained that these Eclectic trade-marks included Gildan’s SECRET trade-mark in its entirety.
[23] The Registrar also looked at additional surrounding circumstances and she identified two: the existence of a family of SECRET trade-marks and the notoriety of Gildan’s SECRET Marks. She found that Gildan had established the existence of a “family” of trade-marks containing the word “secret” for hosiery and undergarments. The Registrar further concluded that consumers familiar with Gildan’s SECRET Marks may be more likely to assume that the VALENTINE SECRET Marks were part of Gildan’s family of marks because of the SECRET component, therefore increasing the likelihood of confusion. On notoriety, the Registrar was satisfied that Gildan’s SECRET Marks had become well-known if not famous in Canada and noted that the fame and reputation of Gildan’s SECRET Marks had been acknowledged in other Federal Court and Board decisions.
[24] The Registrar also referred to the October 2013 decision of this Court in Cortefiel SA v Doris Inc, 2013 FC 1107 [Cortefiel] (confirmed on appeal in Cortefiel SA v Gildan Apparel (Canada) LP, 2014 FCA 255), where the Court upheld a Registrar decision having found a reasonable likelihood of confusion between the WOMEN’SECRET mark and Gildan’s SECRET Marks. The Registrar noted that, as in the Cortefiel decision, the evidence in this case suggested that consumers were sufficiently familiar with the SECRET Marks that they would probably believe that identical or closely-related wares associated with the VALENTINE SECRET Marks derive from the same source.
[25] As such, the Registrar found that Eclectic had not discharged its burden of showing, on a balance of probabilities, that the VALENTINE SECRET Marks were not likely to be confused with Gildan’s SECRET Marks, and she therefore refused Eclectic’s applications. She singled out the notoriety of the SECRET Marks, the degree of resemblance and Eclectic’s lack of interest in the proceedings as the main elements underlying her conclusion.
[26] On appeal before this Court, both parties filed new evidence. Eclectic submitted three affidavits aiming to demonstrate that the word “secret” has widely been used in the market for women’s intimate apparel. This new evidence relating to the state of the register and the state of the marketplace consisted of the affidavits of Mr. Sandro Romeo [the Romeo Affidavit], Ms. Caroline D’Amours [the D’Amours Affidavit] and Ms. Judith Lee [the Lee Affidavit], all employees of the intellectual property research firm Thomson CompuMark [CompuMark]. Gildan provided additional evidence in the form of a third affidavit from Mr. Poirier [the Third Poirier Affidavit], further explaining Gildan’s use of the SECRET Marks, providing updated sales, promotion and advertising data on the SECRET products, and outlining the enforcement efforts of Gildan in protecting its SECRET Marks against potentially confusing trade-mark applications and uses.
C. The Issue of Judicial Comity [27] The current case has a particular flavour because of recent trade-mark decisions of this Court in the women’s intimate apparel industry, involving similar issues, similar evidence and some of the same parties to this appeal. Indeed, in light of these precedents, both parties raise the principle of judicial comity in support of their respective position. Eclectic claims that judicial comity should lead the Court to follow the conclusions of Justice Manson in the recent Eclectic Edge Inc v Victoria's Secret Stores Brand Management, Inc, 2015 FC 453 [Eclectic Edge] decision involving Eclectic’s VALENTINE SECRET Marks and the VICTORIA’S SECRET trade-marks. Conversely, Gildan argues that the principle of judicial comity should instead convince the Court to echo the judicial findings of fact and law made by Justice Tremblay-Lamer in Cortefiel, which related to the WOMEN’SECRET trade-mark and Gildan’s SECRET Marks.
[28] I do not agree with either party on this issue of judicial comity and I am not persuaded that the doctrine of judicial comity is dispositive of this case. Judicial comity only applies to determinations of law, and has no application to findings of facts where there is a different factual matrix or evidentiary basis between two cases. This is the case here.
(1) The Principle of Judicial Comity [29] The purpose underlying the doctrine of judicial comity was recently described by Justice Martineau in Alyafi v Canada (Minister of Citizenship and Immigration), 2014 FC 952 [Alyafi] at para 45:
[T]he principle of judicial comity aims therefore to prevent the creation of conflicting lines of jurisprudence and to encourage certainty in the law. Generally, a judge should follow a decision on the same question of one of his or her colleagues, unless the previous decision differs in the facts, a different question is asked, the decision is clearly wrong or the application of the decision would create an injustice. Judicial comity requires much humility and mutual respect. If the rule of law does not tolerate arbitrariness, judicial comity, its loyal companion, relies on reason and the good judgement of each person. Failing a final judgment from the highest court, respect for the other's opinion can speak volumes. In short, judicial comity is elegance incarnate in the person of the magistrate who respects the value of precedents.
[30] The elegance alluded to by Justice Martineau in Alyafi extends to questions of law. In Allergan Inc v Canada (Minister of Health), 2012 FCA 308, the Federal Court of Appeal discussed the doctrine of judicial comity in the context of patent law and made it clear, at paras 43-44, that the principle only relates to determinations of law:
[43] […] This doctrine is sometimes described as a modified form of stare decisis, i.e. horizontal rather than vertical (House of Sga'nisim v. Canada (Attorney General), 2011 BCSC 1394 (B.C. S.C.), para. 74). Stare decisis requires judges to follow binding legal precedents from higher courts. Although not binding in the same way, the doctrine of comity seeks to prevent the same legal issue from being decided differently by members of the same Court, thereby promoting certainty in the law (Glaxo Group Ltd. v. Canada (Minister of National Health & Welfare), [1995] F.C.J. No. 1430, 64 C.P.R. (3d) 65 (Fed. T.D.), pp. 67 and 68).
[44] As a manifestation of the principle of stare decisis, the principle of judicial comity only applies to determinations of law. It has no application to factual findings. As was stated by the Ontario Court of Appeal in Delta Acceptance Corp. v. Redman, [1966] 2 O.R. 37 (Ont. C.A.), paragraph 5 at page 785:
The only thing in a [j]udge's decision binding as an authority upon a subsequent [j]udge is the principle upon which the case was decided.
[emphasis added]
[31] The conclusions of law of a Federal Court judge will therefore not be departed from by another judge unless he or she is convinced that the departure is necessary and can articulate cogent reasons for doing so. As Justice Lemieux stated in Almrei v Canada (Minister of Citizenship and Immigration), 2007 FC 1025 [Almrei] at para 61, the principle of judicial comity “is to the effect that a substantially similar decision rendered by a judge of this Court should be followed in the interest of advancing certainty in the law.” However, exceptions to that principle include the existence of a different factual matrix or evidentiary basis between two cases, or situations where different issues are to be decided [Almrei at para 62].
[32] It does not mean, though, that decisions by other judges of this Court on similar questions of fact should be treated with inelegance and disrespect. Quite the opposite. But it means that the doctrine of judicial comity cannot be invoked to trump the trial judge’s role in assessing the evidence as it unveils before him or her.
(2) The Precedents Raised by the Parties [33] While they also relate to trade-marks disputes in the market for women’s intimate apparel and therefore bear some resemblance with the current appeal, the cases cited by the parties to support their judicial comity argument involve different parties, different marks as well as conclusions based on their respective and particular set of facts.
[34] In Cortefiel, Justice Tremblay-Lamer reviewed a Board decision refusing an application to register the trade-mark WOMEN’SECRET for women’s clothing, which had been opposed by Gildan’s predecessor Doris. In that case, new evidence had been filed on appeal by both parties. The applicant had filed new evidence of some specific third-party usage of the word “secret(s)” and of retail stores selling lingerie products bearing trade-marks with the word “secret(s)”. Doris had filed affidavits from Mr. Poirier on license agreements for the use of the SECRET family of trade-marks and actions taken by Doris against third-party usage of trade-marks containing the word “secret(s)”. Justice Tremblay-Lamer found that this evidence would not have materially affected the Board’s assessment as it was largely repetitive and did not enhance the cogency of the evidence (Cortefiel at paras 31-33).
[35] Justice Tremblay-Lamer thus applied a standard of reasonableness and concluded that the Board was reasonable in finding that consumers were sufficiently familiar with Doris’ trade-mark SECRET and would probably believe that identical or closely-related wares associated with the WOMEN’SECRET mark derive from the same source (Cortefiel at para 48). She also found that the Board was reasonable in finding that the WOMEN’SECRET mark was confusing, based on the overall similarities of the marks including the common element of “secret”, the insignificant novelty in the mark, its design and its generic first word “women”, as well as the notoriety of Doris’ SECRET marks. Therefore, she concluded that there was a significant likelihood that the average consumer, somewhat in a hurry, would think that the wares offered by the applicant in association with WOMEN’SECRET were from Doris. Justice Tremblay-Lamer further found that, while Doris had not challenged all the third parties using the word “secret”, it was reasonable for the Registrar to find that the evidence suggested reasonable diligence on the part of Doris in protecting its SECRET marks so as to avoid undermining their distinctiveness (Cortefiel at paras 87-88).
[36] Gildan claims that this case has in essence addressed Eclectic’s arguments made in this case on the existence of third-party trade-marks and trade names containing the word “secret” and on the alleged lack of enforcement efforts by Gildan to control the use of the word “secret” in relation to its wares.
[37] In Eclectic Edge, Justice Manson dealt with an appeal of a Board decision involving Victoria’s Secret Stores Brand Management Inc. [VS] and Eclectic in relation to the same four VALENTINE SECRET Marks at issue in the current appeal. New evidence had also been filed on appeal by both parties in that case. Eclectic filed affidavits from the same three people as in the present case, namely Mr. Romeo, Ms. D’Amours and Ms. Lee, referring to what appears to be the same searches and the same information about third-party uses of trade-mark and trade names containing the word “secret”. VS had also filed new evidence on the licensing control of the VS trade-marks in Canada. In that case, Justice Manson found the VS new evidence to be material to the proper licensed control of the VS trade-marks in Canada and to the ambit of protection for the VS trademarks in Canada (Eclectic Edge at para 40). He also concluded that Eclectic’s new evidence on the common use of the word “secret” in trade-marks and in the marketplace by third parties in Canada for lingerie, women’s clothing and related goods, which had been disregarded by the Board, went to “the heart of the Court’s determination of likelihood of confusion” and was material.
[38] Justice Manson thus applied a standard of correctness to the Board’s decision. He ultimately concluded that three of the four VALENTINE SECRET Marks were not likely to be confusing with the VS trade-marks in light of the new evidence filed on the extensive use of trade-marks with the word “secret”, and of the differences in appearance and sound between the marks at issue. When examining the degree of resemblance, Justice Manson noted that the new evidence showed that “the use of SECRET is relatively common place in Canada by third parties in association with lingerie, women's clothing and women's undergarments” and that “the substantial number of trademark registrations and corporate entities shown in the searches in Canada, are sufficient to demonstrate the commonality of use of SECRET in association with lingerie and women's clothing by a number of third parties in this country” (Eclectic Edge at para 80). Justice Manson made particular note of the SECRET trade-marks owned and used by Gildan. However, Eclectic’s VALENTINE SECRET VS Design Mark was found likely to be confusing with the VICTORIA’S SECRET marks and not distinctive.
[39] Eclectic claims that, in the current appeal, it filed the exact same new evidence as in Eclectic Edge on the existence of third-party trade-marks and trade names that include the word “secret” and on the lack of enforcement efforts by Gildan, and that the Court should therefore conclude as Justice Manson did, and set aside the Registrar’s decisions.
[40] For completeness, I also note the older Board decision issued in Doris Hosiery Mills Ltd v Victoria’s Secret Inc, [1991] TMOB No 304, 39 CPR (3d) 131 [Victoria’s Secret], where the predecessor of Gildan opposed VS’ efforts to register the trade-mark VICTORIA’S SECRET, on the basis that there would be confusion with its own SECRET trade-mark. This was a decision by the Board, and therefore not binding on this Court. I however observe that the Board concluded at the time that there was a reasonable likelihood of confusion between VS’ trade-mark VICTORIA’S SECRET as applied to lingerie and women’s undergarments and Doris’ SECRET trade-mark. But the Board did not find a reasonable likelihood of confusion with respect to the remaining wares and services in VS’ application, including for nightwear, fragrances, mail order services, and retail store sales services. Since then, as indicated in the evidence before this Court, an agreement has been concluded between Gildan and VS allowing the VICTORIA’S SECRET and SECRET trade-marks to co-exist in the Canadian marketplace.
[41] The question that Justice Manson looked at in Eclectic Edge was whether there was a likelihood of confusion between Eclectic’s VALENTINE SECRET Marks and VS’ VICTORIA’S SECRET trade-marks. In Cortefiel, the question that Justice Tremblay-Lamer considered was whether there was a likelihood of confusion between Cortefiel’s WOMEN’SECRET trade-marks and Doris’ SECRET Marks. Both were different from the question raised in the present case, which is whether there is a likelihood of confusion between Eclectic’s VALENTINE SECRET Marks and Gildan’s SECRET Marks. In addition, as will be discussed in further detail below, even though there are evidently similarities between the evidentiary records in each of these cases and the current one, there are nonetheless material differences.
[42] I therefore conclude that the doctrine of judicial comity cannot lead me to simply follow and adopt either of these precedents, as the current appeal involves a different issue, based on different facts, and opposing different parties. I will of course be mindful of the findings made by my Federal Court colleagues in those Cortefiel and Eclectic Edge cases, as there is some overlap with this case, but I am not bound by those decisions and must assess the current appeal based on the evidentiary record and arguments before me.
III. Analysis A. What is the Appropriate Standard of Review? [43] There is no dispute on the principles governing the standard of review to be applied in this appeal. Subsection 56(5) of the Act provides that on appeal under section 56, additional evidence to that adduced before the Registrar may be filed. While decisions of the Registrar are normally reviewed on a standard of reasonableness, where additional evidence is presented on appeal that would have materially affected the Registrar’s findings of fact or exercise of discretion, the decision must be reviewed on a correctness standard (Molson Breweries v John Labatt Ltd, [2000] 3 FCR 145 [Molson Breweries] at paras 24-29). In these situations, the judge must come to his or her own conclusion as to the correctness of the Registrar’s decision (Eclectic Edge at para 9). Otherwise, the Court will be deferential to the decision of the Registrar, and if the findings were reasonably open to the Registrar, the Court will not intervene (Cortefiel at para 34).
[44] The criteria is whether the new evidence would have materially affected the Registrar’s finding of facts in the original decision (Molson Breweries at para 29; Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184 [Diamant] at para 41). In assessing the new evidence, the Court must ask to what extent this evidence has a probative significance that extends beyond the material that was before the Registrar (Diamant at para 43; Advance Magazine Publishers Inc v Farleyco Marketing Inc, 2009 FC 153 [Farleyco] at para 98). The new evidence must be sufficiently substantial in terms of probative value (Vivat Holdings Ltd. v Levi Strauss & Co, 2005 FC 707 [Vivat] at para 27). Furthermore, the new evidence should add something of significance, rather than be merely repetitive of existing evidence without enhancing its cogency (Garbo Group Inc. v Harriet Brown & Co (1999), 3 CPR (4th) 224 [Garbo] at para 37; Cortefiel at paras 16-17). Finally, materiality is viewed on a qualitative, not quantitative basis (Vivat at para 27; Hawke & Co Outfitters LLC v Retail Royalty Co, 2012 FC 1539 at para 31).
[45] While the new evidence must be such that it would have materially affected the Registrar’s decision, it does not mean that it would necessarily affect or change the final conclusion (Worldwide Diamond Trademarks Limited v Canadian Jewellers Association, 2010 FC 309 [Canadian Jewellers] at para 40). In other words, the Court can still come to the same conclusion as the Board, even with the new evidence.
[46] New evidence will typically be considered sufficiently material when it is putting a different light on the record or is significantly extending the evidence that was in front of the Registrar. Before the Court can decide whether it should review the whole matter anew or simply review the decision for reasonableness, the Court must first examine the new evidence that has been brought forward as part of the appeal (Farleyco at para 87).
[47] As the Federal Court of Appeal stated in Molson Breweries, it is important to note that the term trial “de novo” is not an accurate description of a section 56 appeal, as the Board remains entitled to a degree of deference (at para 27):
[27] In McDonald’s Corp. v. Silverwood Industries Ltd.16, Strayer J. (as he then was), having regard to the words of Ritchie J., explained that while the Court must be free to assess the decision of the Registrar, that decision should not be set aside lightly. It seems clear that in opposition proceedings where the issue is essentially one of facts concerning confusion or distinctiveness the decision of the registrar or the Board represents a finding of fact and not the exercise of discretion Therefore the court should not impose upon itself the same degree of restraint, in reviewing that decision, as it would if the decision were essentially an exercise of discretion. It is thus free to review the facts to determine whether the decision of the registrar or Board was correct, but that decision should not be set aside lightly considering the expertise of those who regularly make such determinations: see Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp. (1968), 57 C.P.R. 1 at p. 8, 1 D.L.R. (3d) 462, [1969] S.C.R. 192, at pp. 199-200 (S.C.C.). While different panels of the Federal Court of Appeal have variously expressed the duty of this Court on appeal to be to determine whether the registrar has ‘clearly erred’, or whether he has simply ‘gone wrong’, it appears that it is the duty of a judge sitting on an appeal such as this to come to his own conclusion as to the correctness of the finding of the registrar. In doing that he must, however, take into account the special experience and knowledge of the registrar or the Board, and more importantly have regard to whether new evidence has been put before him that was not before the Board.
[emphasis added]
[48] Even if the evidence is considered substantial, the Court must still show some deference to the Registrar, and the reception and consideration of fresh evidence does not “eliminate the Board’s expertise as a relevant consideration” (Mattel Inc v 3894207 Canada Inc, 2006 SCC 22 [Mattel] at paras 36-37). In Garbo, Justice Evans stated that, while s. 56(5) of the Act may suggest a correctness standard on those findings of fact to which the evidence relates, “it does not necessarily follow that the same standard should apply to the Registrar’s findings on other facts” (Garbo at para 23).In other words, a correctness standard of review should apply to those findings of fact of the Registrar which the new evidence materially affects, but other findings of fact remain subject to a more deferential reasonableness standard, recognizing the particular expertise of the Registrar (Canadian Jewellers at para 43).
B. Would the New Evidence Filed on Appeal Have Materially Affected the Registrar’s Decisions? [49] Eclectic argues that the additional evidence submitted on appeal significantly and substantially extends beyond the evidence that was before the Registrar and that the Court should thus proceed by way of a fresh hearing without deference to the Registrar’s decision. Gildan conversely takes the position that the additional evidence filed by the parties was not particularly new and would not have materially affected the Registrar’s findings in any case. If anything, Gildan contends, the new evidence reinforces the conclusion that the four VALENTINE SECRET Marks that Eclectic seeks to register are not distinct from the SECRET Marks used and effectively controlled by Gildan. Therefore, the reasonableness standard should prevail.
[50] Both parties have filed new evidence on appeal. With respect to Eclectic, it consists of the Romeo Affidavit, the D’Amours Affidavit and the Lee Affidavit. These affidavits strictly provided information on the state of the register and the state of the marketplace. They introduced the search results for trade-marks containing the word “secret” in the Canadian trade-marks register, in common law sources, in Canadian official business name registers and in web trade-mark searches. With respect to Gildan, the new evidence was limited to the Third Poirier Affidavit and focused on Gildan’s enforcement efforts to protect the SECRET Marks.
[51] For the reasons that follow, I am not satisfied that the additional evidence adduced by the parties in this appeal is so substantial that it would have materially affected the findings and assessments made by the Registrar. After a detailed review, I cannot conclude that the new evidence would have put “quite a different light” on the original record, that it “significantly extends” beyond the evidence that was before the Registrar or that it is sufficiently substantial and significant in terms of quality and probative value. Consequently, the standard of review in this appeal will be reasonableness.
(1) Eclectic’s Additional Evidence (a) The Romeo Affidavit [52] The Romeo Affidavit sets out the results of a search in the Canadian trade-marks database and in registers of internet domain names for the word “secret” in combination with “women’s clothing and undergarments, cosmetics, retail services” relating to the goods, and to international classes 3, 25 and 35. Mr. Romeo is a trade-marks research analyst for the intellectual property research firm CompuMark. He conducted the Canadian trade-marks database and registers of internet domain name portions of the Full Dilution (How Common) Search of the term “secret” undertaken by Eclectic as part of this appeal [the How Common Search]. This type of search is designed to inform a client of the number of occurrences of a word element of a trade-mark in a specific industry.
[53] Mr. Romeo searched the CompuMark trade-marks register database, which is compiled by periodically entering the registrations of trade-marks in the Canadian trade-marks register. Mr. Romeo’s search revealed a number of registrations and pending applications for trade-marks involving the word “secret”. In particular, it uncovered the following:
• 315 registrations and pending applications for trade-marks incorporating the word “secret” for use in association with clothing, cosmetics, and/or retail services for clothing or cosmetics;
• 99 entities own trade-mark registrations or pending applications to register trade-marks comprising or containing the word “secret”, for use in association with clothing, cosmetics, and/or retail services for clothing or cosmetics.
[54] According to Eclectic, the 315 registrations and pending applications found by Mr. Romeo included the following trade-marks:
• 80 trade-marks including the word SECRET owned by VS;
• 93 trade-marks using the word SECRET registered by Gildan for use in association with underwear, undergarments and lingerie;
• SECRET TREASURES registered by Wal-Mart Stores, Inc. [Wal-Mart] for use in association with sleepwear and lingerie;
• SECRETS FROM YOUR SISTER registered by Secrets From Your Sister Inc. for use in association with