The Federal Court recently handed down its decision in Advance Magazine Publishers Inc. v. Farleyco Marketing Inc., an appeal from an earlier decision by the Registrar of Trade-marks that had found no likelihood of confusion between the Farleyco mark GHOULISH GLAMOUR for Halloween cosmetics and eyelash accessories and the Advance mark GLAMOUR used in association with magazines and related products and services. New evidence was filed that went significantly beyond that which had been considered by the Registrar, so the Court considered the matter afresh.
The Court found that both marks were inherently weak as both were suggestive of their wares and services but considered whether Advance’s GLAMOUR mark had “an acquired distinctiveness through use and promotion… sufficient to warrant a wide scope of protection”.
The Court determined that while the GLAMOUR mark was well known in Canada in association with magazines (and thus had acquired distinctiveness), it was not associated with all wares and services that make up the glamour industry. Advance argued that the wares of both parties belonged to the same general class of goods, namely cosmetic, fashion and beauty, but the Court found: “Just because cosmetic products are advertised, discussed, or otherwise featured in Advance’s magazine and related wares does not mean… that any acquired distinctiveness of the GLAMOUR mark should extend to cover such products.”