In Advance Magazine Publishers, Inc. v. Wise Gourmet Inc. the publisher of GOURMET magazine successfully appealed a decision of the Trade-mark Opposition Board that the use of WISE GOURMET in association with various food products and printed publications, namely cookbooks, newsletters, nutrition guides, food recipes and periodicals relating to food and nutrition was not confusing with the use of GOURMET in association with magazines and other publications. On appeal to the Federal Court, Advance Magazine Publishers, the original Opponent, submitted two lengthy affidavits that were not before the Trade-mark Opposition Board. Although the original Applicant chose not to participate in the appeal, the Court noted that its position still had to be considered.
Given the new evidence the appeal proceeded on a de novo, or fresh, basis and applying the test for confusion set out in sections 6(2) and (5) of the Trade-marks Act, the Court concluded there was confusion, such that WISE GOURMET could not be registered. Although GOURMET was not inherently distinctive, its use over time had gained the Opponent a certain reputation in relation to its magazine and associated wares and services. The mark had also been in use for a long time, while the Applicant was a new entry into the market. The nature of the wares and services and the nature of the trade were similar. There was also a fair degree of resemblance between the two marks since the Applicant had incorporated the Opponent’s mark, GOURMET, in its entirety, into WISE GOURMET. While the first word, “wise”, helped distinguish the marks to some degree in terms of sound and appearance, the idea suggested by both marks was similar.
Although it chose not to participate in the appeal, the original Applicant had submitted a letter to the Court advising that the Opponent would soon cease publication of its magazine, something the Opponent did not deny. The Court declined to accept the letter as evidence since it was not submitted in affidavit form, but did note that the fact publication might cease in future did not affect its decision given the relevant dates. Following the recent case of Masterpiece Inc. v. Alavida Lifestyles Inc. the Court noted that the relevant date for assessing confusion under the applicable sections of the Act was the date of disposition of the matter (either by the Court or the Registrar) and therefore a future date was not a relevant fact.