IN THE MATTER OF AN OPPOSITION by ADVANCE MAGAZINE PUBLISHERS INC. to application No. 795,348 for the trade-mark VICTORIA VOGUE filed by VICTORIA VOGUE, INC.
On October 20, 1995, the applicant, VICTORIA VOGUE, INC., filed an application to register the trade-mark VICTORIA VOGUE based on use of the trade-mark in Canada since at least as early as 1960 in association with “brushes, powder puffs, sponges, cleansing pads and cotton swabs”. The applicant’s statement of wares was amended at the examination stage and, as of the date of advertisement, the present application covered: “Cosmetic applicators, pads and brushes, namely brushes, powder puffs, sponges, cleansing pads and cotton swabs”
The application was advertised for opposition purposes in the Trade-marks Journal of December 11, 1996 and the opponent, ADVANCE MAGAZINE PUBLISHERS INC., filed a statement of opposition on May 12, 1997, a copy of which was forwarded to the applicant on May 23, 1997. The applicant served and filed a counter statement in response to the statement of opposition on June 23, 1997. The opponent filed as its evidence the affidavit of Josie McGehee and Janice Quinn, together with certified copies of its registrations for the trade-marks VOGUE, VOGUE DECORATION and VOGUE CAREER. The applicant filed as its evidence the affidavits of Norman Tahler, Jeremy Want and Herbert McPhail, together with certified copies of registration Nos. 174,361, 245,656, 145,114 and 370,201. The opponent requested and was granted an order to cross-examine each of the applicant’s affiants but failed to proceed with the cross-examinations in a timely manner. The applicant alone filed a written argument and both parties were represented at an oral hearing.
In its statement of opposition, the opponent alleged that the applicant's application is not in compliance with Section 30(i) of the Trade-marks Act in that, as of the filing date of the applicant's application, the applicant could not have been satisfied that it was entitled to use its trade-mark VOGUE in Canada as the applicant was well aware of the opponent’s trade-marks prior to the date of application. The opponent also alleged that the applicant's trade-mark is not registrable and not distinctive, and that the applicant is not the person entitled to registration of the trade-mark VOGUE, in that the applicant’s trade-mark is confusing with its registered trade-marks: VOGUE and VOGUE CAREER, registration Nos. UCA 4268, UCA 42009, UCA 19676 and 346,637; and VOGUE DECORATION, registration No. 388,687, which it has previously and extensively used in Canada prior to the applicant’s filing date. The opponent also relied upon its pending application for the trade-mark VOGUE HOMBRE, application No.668,353, in challenging the applicant’s entitlement to registration and the distinctiveness of the applicant’s trade-mark.
The first ground of opposition is based on Section 30(I) of the Trade-marks Act. While the legal burden is upon the applicant to show that its application complies with Section 30(i) of the Act, there is an initial evidentiary burden on the opponent in respect of its Section 30 ground [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. As no evidence has been filed by the opponent in support of its allegation that the applicant could not have been satisfied that it was entitled to use the trade-mark VOGUE in Canada, it has failed to meet the evidentiary burden upon it in respect of the Section 30 ground. In any event, and even had the applicant been aware of the opponent’s trade-marks prior to filing the present application, such a fact is not inconsistent with the statement in the application that the applicant was satisfied that it was entitled to use the trade-mark VOGUE in Canada on the basis inter alia that its mark is not confusing with the opponent’s trade-marks VOGUE, VOGUE CAREER, VOGUE DECORATION and VOGUE HOMBRE. Thus, the success of this ground is contingent upon a finding that the trade-marks at issue are confusing [see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191, at pg. 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152, at pg. 155].
The opponent has relied upon prior use of its trade-marks VOGUE, VOGUE CAREER, VOGUE DECORATION and VOGUE HOMBRE in challenging the applicant’s entitlement to registration. In view of the provisions of Sections 16(5) and 17(1) of the Trade-marks Act, there is a burden on the opponent to establish prior use of its trade-marks in Canada, as well as to show that it had not abandoned its trade-marks as of the date of advertisement of the present application in the Trade-marks Journal [April 1, 1992]. Having regard to the Waterman affidavit, I am satisfied that the opponent has met the burden upon it in respect of its trade-mark VOGUE as applied to magazines and patterns and its trade-mark VOGUE DECORATION as applied to magazines. I am not satisfied, however, that the opponent has shown that it had previously used the trade-marks VOGUE CAREER and VOGUE HOMBRE in Canada in association with any wares or services. As a result, I have rejected the non-entitlement and non-distinctiveness grounds which are based on the opponent’s alleged prior use of the trade-marks VOGUE CAREER and VOGUE HOMBRE in Canada.
The remaining grounds of opposition turn on the issue of confusion between the applicant's trade-mark VOGUE as applied to door locks and lock hardware and the opponent’s registered trade-marks VOGUE covering magazines and patterns and VOGUE DECORATION as applied to magazines, both of which had previously been used in Canada, as well as the opponent’s registered trade-mark VOGUE CAREER as applied to books and paper patterns and the opponent’s application for registration of the trade-mark VOGUE HOMBRE covering magazines which had been previously filed in Canada.
With respect to the ground of opposition based on Section 12(1)(d) of the Trade-marks Act, the material date is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (FCA)] while the material dates for assessing the non-entitlement and non-distinctiveness grounds of opposition are, respectively, the applicant’s filing date [July 18, 1991] and the date of opposition [July 29, 1992]. In assessing whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances, including, but not limited to, the criteria which are specifically enumerated in Section 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is upon the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks of the parties as of the material dates noted above.
The applicant’s trade-mark VOGUE as applied to door locks and lock hardware, which I assume would include door handles, may suggest to some consumers that these wares have a stylish element to them. Consequently, I find that the applicant’s trade-mark possesses relatively little inherent distinctiveness as applied to its wares. Further, since no evidence has been furnished by the applicant relating to it having commenced use of its trade-mark VOGUE, I must assume that its proposed use mark has not become known to any extent in Canada.
As pointed out by Board Member Martin in Conde Nast Publications Inc. v. Gottfried Importing Co. Ltd. et al, 31 C.P.R. (3d) 26, at page 28, the opponent’s trade-mark VOGUE is not inherently strong. Likewise, the opponent’s trade-mark VOGUE DECORATION is suggestive of a magazine directed primarily to fashionable interior decoration and therefore possesses a limited degree of inherent distinctiveness. However, despite the inherent weakness of the word VOGUE, both of the opponent’s trade-marks VOGUE CAREER covering paper patterns and books and VOGUE HOMBRE as applied to magazines possess some measure of inherent distinctiveness when considered in their entireties. The Waterman affidavit confirms, as was concluded by Mr. Martin in the Conde Nast case, that the trade-mark VOGUE has become well known in Canada in association with magazines. On the other hand, the opponent’s VOGUE DECORATION magazines have only been distributed in Canada by the opponent and its predecessor-in-title since 1985 and, as of the date of the Waterman affidavit, subscription and newsstand sales of the magazine were limited to approximately 10,000 copies per issue in Canada. Thus, the trade-mark VOGUE DECORATION has become known to only a limited extent in Canada. No evidence has been furnished by the opponent relating to its use of its trade-marks VOGUE CAREER or VOGUE HOMBRE and I assume that these marks have not become known to any extent in Canada.
In view of the above, the extent to which the opponent’s trade-mark VOGUE and to a lesser extent its trade-mark VOGUE DECORATION have become known in association with patterns and magazines weighs in its favour in this opposition. Also, the length of use of the trade-marks at issue favours the opponent in respect of its trade-marks VOGUE and VOGUE DECORATION, the applicant’s trade-mark being based on proposed use in Canada.
The applicant’s trade-mark VOGUE is identical to the opponent’s trade-mark VOGUE, as well as being very similar in appearance, sounding and ideas suggested to the opponent’s trade-marks VOGUE DECORATION, VOGUE CAREER and VOGUE HOMBRE. As a result, the only remaining criteria which the Registrar must consider under Section 6(5) of the Act, apart from any additional surrounding circumstances, are the nature of the wares of the parties and their respective channels of trade. In this regard, the applicant’s door locks and lock hardware bear no similarity to the opponent’s magazines, books and patterns. However, the opponent has argued that its VOGUE magazine includes a section on interior design and decoration under the heading ‘Vogue style’ while the opponent’s VOGUE DECORATION magazine deals primarily with interior decoration and design, including articles and/or advertising concerning various products related to interior design. In a recent decision of the Opposition Board involving an opposition by the present opponent to an application to register the trade-mark LATEX VOGUE for paints [Advance Magazine Publishers Inc. V. Peintures M.P. (1973) Inc., 66 C.P.R. (3d) 375, at pg. 379], I found that interior design and decoration might be perceived by the average consumer as being a logical extension of the traditional use of VOGUE in association with a magazine dealing with fashion and accessories. However, in the present opposition, I would not expect that either door locks or lock hardware would be wares which the ‘average consumer’ would consider as being particularly relevant to interior design or decoration.
As a further surrounding circumstance in respect of the issue of confusion, the applicant submitted evidence of the results of searches and investigations undertaken by Christopher Dejardin, Christine McCluskey and Susan Burkhardt. In response to the Dejardin affidavit, the opponent submitted the Burke affidavit. Having considered the Dejardin and Burke affidavits, it would appear that there are about seventeen registered trade-marks comprising or including the word VOGUE on the register and standing in the name of thirteen different owners. Considering the number of third party VOGUE marks disclosed by the Dejardin search and bearing in mind that the Burkhardt affidavit appears to confirm that at least two of the companies [Vogue Brassiere Inc. and Industries Vogue Ltée.] identified as registrants of the third party marks are carrying on business in Canada, I am prepared to accord at least some weight to the applicant’s state of the register evidence. On the other hand, the McCluskey affidavit attests to the results of a United States trade-mark search undertaken by the affiant. Absent evidence of marketplace use of any of the marks disclosed by the search, I am not prepared to give any weight to this evidence.
In her affidavit, Ms. Burkhardt describes a computer search of companies which she conducted and has annexed to her affidavit the results of that search. As well, the affiant has annexed to her affidavit the results of a search of ‘Vogue’ corporations through internal records maintained by the affiant’s employer, Gowling, Strathy & Henderson. These searches confirm the adoption of Vogue as a component of numerous corporate names in Canada although no evidence has been adduced by the applicant that any of these names have been brought to the attention of consumers in the marketplace or, indeed, that the names are in fact in use in Canada. Additionally, Ms. Burkhardt has annexed to her affidavit photocopies of pages from telephone directories for Vancouver, Toronto, Montreal and Ottawa which include listings for companies or businesses having the word ‘Vogue’ in their name. In addition to confirming that ‘Vogue’ has a surname significance and identifying owners of certain of the registered trade-marks uncovered by the Dejardin trade-mark search, the results of the telephone directory searches show that ‘Vogue’ has been adopted as a component of trade or business names by about thirty businesses in the four cities noted above. Having regard to the number of corporate names and telephone directory listings uncovered by Ms. Burkhardt, and bearing in mind the results of the Dejardin search, I am prepared to conclude that the name and mark ‘Vogue’ has been brought to the attention of consumers in Canada and that this is an important factor weighing in the applicant’s favour in this opposition.
At the oral hearing, the opponent referred to the decision of Mr. Justice Cattanach in Conde Nast Publications Inc. v. Gozlin Bros. Ltd., 49 C.P.R. (2d) 250. At pages 253-254, the learned trial judge commented as follows with respect to the onus on an applicant to show that there would be no reasonable likelihood of confusion between its trade-mark and the trade-mark(s) of an opponent:
Even considering that the opponent’s trade-mark VOGUE is well known, the opponent’s evidence does not point to any connection between the applicant’s wares and the opponent’s magazines and patterns. Further, the applicant’s door locks and lock hardware do not fall within the area of interior design and decoration associated with the opponent’s VOGUE DECORATION magazine. Moreover, the applicant’s evidence relating to the existence of registered trade-marks comprising or including the word VOGUE, coupled with the evidence of the adoption of the word Vogue by a number of companies and businesses in Canada, supports the conclusion that consumers would be accustomed to seeing the mark or name VOGUE associated with the wares, services or businesses of third parties in the marketplace in Canada. As a result, I have concluded that the applicant has met the legal burden upon it in respect of the issue of confusion and have therefore rejected the remaining grounds of opposition.
In view of the above, and having been delegated by the Registrar of Trade-marks pursuant to Section 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 16th DAY OF FEBRUARY 2001.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.