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.”
Although the Court acknowledged that Section 6(2) of the Canada Trade-marks Act makes it clear that confusion can occur whether or not the wares or services are of the same general class, the Court found: “Even though cosmetics and magazines may be sold in the same stores, the evidence in this case shows that GLAMOUR magazine and Farleyco’s products are sold and advertised in very different ways and are purchased and used in very different ways.”
The Court rejected Advance’s appeal, finding that confusion between the two marks was unlikely: “The evidence suggests to me that consumers are repeatedly exposed to many Glamour trade marks and to the constant use of the word ‘glamour’ in the glamour industry and the marketplace it spawns. I think it can be assumed in this context that they have become extremely adept at distinguishing between wares and services sold and associated with the word ‘Glamour’, either singly, or in combination with other words, and that they are extremely unlikely to associate Farleyco’s Halloween GHOULISH GLAMOUR products with Advance’s GLAMOUR wares and services.”