IN THE MATTER OF AN OPPOSITION by Manufacturier de bas de nylon Doris Ltée/Doris Hosiery Mills Ltd. to Application No. 1,036,028 for the trade-mark WOMEN’SECRET Design in the name of Cortefiel, S.A.
On November 15, 1999, Women’s Secrets, S.A. filed an application to register the trade-mark WOMEN’SECRET Design (the "Mark"), as illustrated hereafter:
The application currently stands in the name of Cortefiel, S.A. I shall use the term “Applicant” throughout to refer to the owner of the Mark at the relevant time.
The Mark has been applied for registration in association with the following wares:
(1) Bleaching preparations; scouring preparations; soaps, namely, skin and toilet soaps; perfumery; essential oils; cosmetics, namely, facial lotions, cleansing milk, eye makeup removing gel, makeup removing tissues, nourishing creams, moisturizing creams, anti-age creams, nourishing ampoules, moisturizing lotions (waters), cream lip protector for facial treatment; preparations for body care, namely, gel; deodorants; moisturizing milk; body cream for sunning purposes; skin creams and skin lotions to treat stretch marks and to firm the skin; hand creams; preparations for tanning, namely, sun protectors and after sun preparations; hair lotions; dentifrices; (2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, slippers, caps, bonnets, stockings (panties), mini stockings, socks, bikini, bathing suits, pareos (sarongs), shorts for swimming; footwear, namely, esparto shoes, sandals, bath slippers, beach shoes, boots for sports, slippers, gymnastic boots, sports shoes, espadrilles; headgear, namely, berets, caps, hats, bonnets, and bathing caps; (3) Preparations for facial treatment, namely lotions, cleansing milks for toilet purposes, eye make-up removing gel, make-up removing tissues, creams (nourishing), creams (moisturising anti-age), nourishing ampoules, moisturising lotions (waters), cream lip protectors for facial treatment; preparations for body care, namely gels and deodorants, moisturising milk, cosmetic preparations for slimming purposes, anti-stretch marks, cosmetic preparations for toning (firming) purposes, hand creams; preparations for sun-tanning, namely sun protectors, after-sun preparations; fragrances, namely eau-de-toilette, perfumes, body mist; brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts, slippers, caps, bonnets, stockings (panties), mini-stockings, socks, bikinis, bathing suits, pareos (sarongs), shorts for swimming.
The bases of the application are as follows: registration and use of the Mark in Spain for the wares marked (1) (Registration No. 2174962/0 dated January 15, 1999); registration and use of the Mark in Spain for the wares marked (2) (Registration No. 2099113/4 dated October 5, 1998); and proposed use in Canada for the wares marked (3).
The application was advertised in the Trade-marks Journal of March 26, 2003 for opposition purposes. Manufacturier de Bas de Nylon Doris Ltée/Doris Hosiery Mills Ltd. (the "Opponent") filed a statement of opposition on May 26, 2003. According to the pleadings, and as confirmed by the Opponent’s agent at the oral hearing, the opposition is raised only with respect to the following wares (hereafter sometimes referred to collectively as the “Wares”):
(2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, slippers, caps, bonnets, stockings (panties), mini stockings, socks, bikini, bathing suits, pareos (sarongs), shorts for swimming; footwear, namely, esparto shoes, sandals, bath slippers, beach shoes, boots for sports, slippers, gymnastic boots, sports shoes, espadrilles; headgear, namely, berets, caps, hats, bonnets, and bathing caps; (3)… brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts, slippers, caps, bonnets, stockings (panties), mini-stockings, socks, bikinis, bathing suits, pareos (sarongs), shorts for swimming.
The grounds of opposition can be summarized as follows:
i) The application does not comply with the requirements of s. 30(e) of the Trade-marks Act, R.C.S. 1985, c. T-13 (the "Act") in that the Applicant did not intend to use the Mark in Canada in association with the Wares.
ii) The application does not comply with the requirements of s. 30(i) of the Act in that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the Wares in view of the prior use and/or registration of the Opponent’s trade-marks.
iii) The Mark is not registrable pursuant to s. 12(1)(d) of the Act because it is confusing with fifty-three (53) registered trade-marks of the Opponent, as more fully identified at Annex A of this decision.
iv) The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(2)(a) and s. 16(3)(a) of the Act because at the date of filing of the application, the Mark was confusing with forty-one (41) trade-marks, as more fully identified at Annex B of this decision, previously used in Canada by the Opponent and/or its licensees.
v) The Applicant is not the person entitled to registration of the Mark pursuant to s. 16(2)(b) and s. 16(3)(b) of the Act because, at the date of filing of the application, the Mark was confusing with four (4) trade-marks, as more fully identified at Annex C of this decision, in respect of which applications were filed in Canada.
vi) The Mark does not distinguish and is not adapted to distinguish the Wares from the wares of others, and more particularly those of the Opponent.
The Applicant filed and served a counter statement on January 22, 2004.
The Opponent's evidence pursuant to Rule 41 of the Trade-marks Regulations (the “Regulations”), as it read on September 30, 2007, consists of affidavits of Jack Hasen dated August 18, 2004 (the “Hasen Affidavit”) and Warren Chisling (the “Chisling Affidavit”) dated August 18, 2004. The Applicant’s evidence pursuant to Rule 42 of the Regulations, as it read on September 30, 2007, consists of an affidavit of Lorraine M. Fleck dated June 20, 2005 (the “Fleck Affidavit”). The Opponent’s evidence pursuant to Rule 43 of the Regulations consists of an affidavit of Michel Poirier dated November 21, 2005 (the “Poirier Affidavit”). Mr. Poirier has been cross-examined by the Applicant. The cross-examination transcript and reply to undertakings were filed on August 21, 2006. I will refer to the cross-examination of Mr. Poirier only insofar as it is relevant to the analysis of the evidence and to the parties’ argument.
Both parties filed written arguments and were represented at an oral hearing.
As a preliminary matter I note that, at the oral hearing, the Opponent requested leave to amend the statement of opposition to raise a ground of opposition based on non-compliance with s. 30(d) of the Act. The Opponent submitted that the omission of this ground in the statement of opposition was the result of an oversight. Having regard to all the surrounding circumstances, in particular the stage the opposition proceedings had reached and why the amendment was not made earlier, I refused the Opponent’s request for leave to amend the statement of opposition, which refusal is hereby confirmed.
Opponent’s evidence in chief
The Hasen Affidavit
Mr. Hasen, who has been continuously employed by the Opponent since 1979, has been the President of the Opponent since 1991.
Mr. Hasen states that the Opponent commenced using the trade-mark SECRET in association with ladies’ hosiery in 1967. Over the years, the Opponent adopted a series of trade-marks incorporating the word “secret” in combination with other words. Mr. Hasen states that all these trade-marks, together with the trade-mark SECRET and design variations thereof, form part of a family of trade-marks to which he refers as the SECRET Family of Trade-marks. He specifically identifies forty-four (44) trade-marks included in the SECRET Family of Trade-marks and provides copies of forty-two (42) corresponding registrations and two (2) corresponding applications, as the case may be [Exhibit JH-4]. According to my review of Exhibit JH-4, it includes copies of thirty-seven (37) of the fifty-three (53) trade-mark registrations alleged in support of the ground of opposition based upon s. 12(1)(d) of the Act as well as five (5) registrations and two (2) applications which have not been alleged in the statement of opposition.
At the oral hearing, the agent for the Opponent suggested that I exercise the Registrar’s discretion to consider trade-marks registered since the filing of the Hasen Affidavit as part of the SECRET Family of Trade-marks. Suffice it to say that in opposition proceedings, the Registrar does not exercise her discretion to have regard to anything appearing on the register that is not properly proved by evidence, except to verify whether properly pleaded trade-mark registrations and applications are extant [see Quaker Oats Co. of Canada v. Menu Foods Ltd. (1986), 11 C.P.R. (3d) 410 (T.M.O.B.); Royal Appliance Mfg. Co. v. Iona Appliance Inc. (1990), 32 C.P.R. (3d) 525 (T’M.O.B.)].
Mr. Hasen states that the trade-mark SECRET, alone or in combination with one or more of the trade-marks forming part of the SECRET Family of Trade-marks, has been used by the Opponent itself and/or through licensees as follows: since at least as early as 1967 in association with a variety of ladies’ hosiery products including, but not limited to, pantyhose, tights, thigh highs, knee highs, ankle highs, footlets, toe coverings and socks; since 1978 in association with men’s hosiery products; and since 1986 in association with children’s hosiery products. Per paragraph 5 of the Hasen Affidavit, any subsequent reference to the “SECRET Trade-marks” throughout is a collective reference to the trade-mark SECRET and the SECRET Family of Trade-marks.
The continuous expansion of the Opponent’s product line associated with the SECRET Trade-marks is described by Mr. Hasen as follows:
• In or around December 1998, the Opponent granted a license to Doris Intimates Inc./Lingerie Féminine Doris Inc. (“Doris Intimates”) to use the SECRET Trade-marks including, but not limited to, SECRET INTIMATES (Registration No. TMA531,815), SECRET DELUXE (Registration No. TMA572,245), HER CHOICE/SON CHOIX (Registration No. TMA525,747), SECRET Design (Registration No. TMA285, 242) and SECRET (Registration No. TMA603,410) in association with women’s intimate apparel including, but not limited to, underwear, undergarments, lingerie, chemises, camisoles, foundation slips, thongs, boxer shorts, bras, sleepwear and loungewear. Doris Intimates has been using the trade-marks under the authority and control of the Opponent in association with women’s intimate apparel since at least as early as February 1999.
• The Opponent granted a license to S.O.X. Marketing Inc. (“S.O.X.”) to use the SECRET Trade-marks in association with women’s, men’s and children’s hosiery products. S.O.X. has been using the trade-marks under the authority and control of the Opponent since at least as early as February 1989. Photocopies of representative packaging and labelling for various hosiery products sold by S.O.X. to retailers throughout Canada are filed as Exhibits JH-5 to JH-8.
• In or around June 1997, the Opponent granted a license to Medifit Marketing Inc. (“Medifit”) to use the trade-mark SECRET MEDI-SUPPORT in association with graduated compression medical hosiery for men and women, namely pantyhose, socks, stockings, and knee highs. Medifit has been using the trade-mark under the authority and control of the Opponent since at least as early as June 1997. Photocopies of representative samples of packaging for various medical hosiery products sold by Medifit to retailers throughout Canada are filed as Exhibits JH-9 and JH-10.
• The Opponent expanded its product line to include lingerie wash bags and hosiery gloves. Photocopies of representative samples of packaging for lingerie wash bags and hosiery gloves are filed as Exhibit JH-11. Mr. Hasen specifically states that packaging of this type have been in use by the Opponent since 1986 and are still being used for wash bags [paragraph 13]. I note that “100% cotton” appears on the packaging for hosiery gloves.
Per paragraph 14 of the Hasen Affidavit, any subsequent reference to “SECRET Products” throughout is a collective reference to intimate apparel, including hosiery, pantyhose, underwear undergarments, lingerie, sleepwear, loungewear, knitwear and related accessories.
Mr. Hasen states that the SECRET Trade-marks are being used by the Opponent by being affixed to the SECRET Products themselves or by being displayed on their packaging. Mr. Hasen files photocopies of a retail product display [Exhibit JH-12] and of representative samples of packaging and labelling [Exhibits JH-13 to JH-37] as specimens of use. He specifically identifies in his affidavit the trade-mark(s), the product and the period of use of each specimen.
According to the Hasen Affidavit, the SECRET Products are sold through thousands of retail outlets in Canada, more particularly through major department and chain stores, such as The Bay, Sears, Zellers and Wal-Mart, in specialty hosiery stores, lingerie boutiques, drug stores, grocery chains, independent dealers and rack jobbers (who in turn deal with chain stores or retail accounts such as Jean Coutu and Shoppers Drug Mart). A non-exhaustive chart of retailers in different parts of Canada is filed as Exhibit JH-38. The SECRET Products are also sold through catalogue or mail order services provided by entities such as Sears, Avon and Amway. Mr. Hasen states that SECRET Products have been advertised and shown in catalogues since at least 1985 and he files excerpts from representative Sears and Avon catalogues [Exhibit JH-39].
Mr. Hasen states that since 1999 to the date of his affidavit, Doris Intimates has sold in excess of 2,443,271 units of intimate apparel in association with the SECRET Trade-marks, which represented sales value in excess of $16,072,592.
According to the yearly breakdown provided in the Hasen Affidavit, the Opponent’s aggregate sales of SECRET Products to retailers, excluding sales by its licensees, totalled over $433,949,000 from 1986 to June 30, 2004, which represented 20,611,132 dozens of units of SECRET Products. As the Opponent posts its sales of SECRET Products by category of products, not by trade-mark, the Hasen Affidavit provides a yearly breakdown of the approximate sale figures of the following categories of SECRET Products to retailers between 1997 and June 2004: 1) basic pantyhose; 2) knee highs; 3) tights and trouser socks; 4) anklets and footlets; 5) capri, panty, leggings and garter belt; and 6) wash bags and cotton gloves. A sampling of invoices of representative sales of SECRET Products by the Opponent to retailers from 1993 to the date of the affidavit is attached as Exhibit JH-40.
According to the Hasen Affidavit, the means of promotion and advertisement of SECRET Products by the Opponent since 1972 can be summarized as follows:
• media, including radio, television, magazines, newspapers;
• signage such as billboards and mall posters [Exhibit JH-44];
• subway boards and signs in or on transit shelters;
• marketing support to retailers by providing product knowledge and assistance in planning sales programs and setting up product displays, and by providing in-store signs, posters, displays and other materials [Exhibits JH-45 to JH-50], including material used when introducing new SECRET Products and offering special promotion on SECRET Products [Exhibits JH-51 to JH-57];
• cooperative advertising with retailers, including advertisement in newspapers and direct mail flyers [Exhibit JH-58] as well as cooperative efforts with Sears in 1999 [Exhibits JH-41 to JH-43] and with Wal-Mart since 1994 [Exhibits JH-59 to JH-60].
According to the yearly breakdown provided in the Hasen Affidavit, the Opponent’s total advertising expenditures amounted to $28,742,793.00 from 1986 to June 30, 2004.
Mr. Hasen states that the Opponent is one of the largest manufacturers of hosiery and pantyhose in Canada, consistently ranking first in market share for hosiery in Canada over the last decade, “…such that SECRET hosiery…has become the largest selling brand of hosiery in Canada.” [paragraph 30]. He opines that the SECRET Trade-marks have become extremely well known, if not famous, throughout Canada [paragraph 31].
The Chisling Affidavit
Mr. Chisling has been the Secretary-Treasurer of Doris Intimates since June 30, 1995 and the Chief Financial Officer of the Opponent since 1992.
Mr. Chisling corroborates Mr. Hasen’s written testimony with respect to the licensed use by Doris Intimates of the SECRET Trade-marks in association with women’s intimate apparel since at least as early as February 1999. He provides representative samples of packaging and labelling as specimens of use by Doris Intimates and specifically identifies the trade-mark(s), the product and the period of use of each of specimen [Exhibits WC-2 to WC-5]. Mr. Chisling states that Doris Intimates sells SECRET Products through thousands of retail outlets in Canada, more particularly through chain stores, such as Wal-Mart and London Drugs, in lingerie boutiques, drug stores such as Shoppers Drug Mart/Pharmaprix, grocery chains such as Loblaws and A&P, and rack jobbers (who in turn deal with chain stores or retail accounts such as Jean Coutu). A non-exhaustive chart of retailers in different parts of Canada is attached as Exhibit WC-6.
According to the yearly breakdown provided in the Chisling Affidavit, Doris Intimates’ aggregate sales of SECRET Products totalled over $15,560,000 from 1999 to June 30, 2004, which represents 198,166 dozens of units of SECRET Products.
Mr. Chisling deposes that the advertising and promotion of the SECRET Products associated with the licensed trade-marks is done through the Opponent’s marketing department.
In concluding my analysis of the Opponent’s evidence in chief, I note that I have disregarded the portions of the Hasen Affidavit and Chisling Affidavit wherein each affiant expresses his view regarding the likelihood of confusion between the parties’ trade-marks.
Applicant’s evidence
The Fleck Affidavit
Ms. Fleck, an articling student with the Applicant’s trade-mark agent firm, provides information that she obtained from various searches conducted on the Internet, from telephone calls and from attendance at a retail store.
Ms. Fleck files copies of seven trade-mark registrations for third parties’ trade-marks containing the “element SECRET in association with underwear, lingerie, footwear, sleepwear, and activewear” [Exhibit “B”]. These were apparently printed on June 20, 2005 from the Canadian Trade-marks Register database. I note that one of the registrations is owned by Wal-Mart Stores Inc. (TMA540,312 for SECRET TREASURES) and the six other registrations are owned by V Secret Catalogue, Inc. (TMA530,906 for VICTORIA’S SECRET THE MIRACLE BRA; TMA432,093 for VICTORIA SECRET; TMA538,755 for VICTORIA’S SECRET; TMA536,157 for VICTORIA’S SECRET & Design; TMA531,897 for ANGELS BY VICTORIA’S SECRET; TMA539,023 for DREAMS ANGELS BY VICTORIA’S SECRET).
Ms. Fleck files “web archived Canadian newspaper coverage accessed…thru the Toronto Star’s website…on the lingerie brand Victoria’s Secret.” [paragraph 11, Exhibit “C”]. These newspaper articles were apparently published from November 7, 1991 to June 4, 2005. She also files pages of the website of Victoria’s Secret [Exhibit “D”].
Ms. Fleck files the results of her search of Canada 411.com conducted on June 6, 2005 [Exhibit E]. She specifically identifies the following entries as businesses whose name “contains the word SECRET in association with lingerie retail stores and hosiery stores” [paragraph 13]:
a) Secrets From Your Sister, Toronto, ON
b) Sexy Secrets Lingerie Novelties Inc. Bathurst, NB
c) Les Tiroirs Secrets, Granby, QC
d) Boutique Secret de Femme, Sainte-Agathe des Monts, QC
e) Boutique Secrets Nocturnes, Rouyn-Noranda, QC
f) Boutique Secrets Nocturnes, Val-d’Or, QC
g) Cindy’s Secrets, Calgary, AB
h) Cleopatra Secrets, Nepean, ON
i) Les Entrepôts Secrets Inc., Dollard-des-Ormeaux, QC
j) Her Secret Inc., Windsor, ON
k) Lingerie Secrets, Prince George, BC
l) My Secrets Lingerie, New Glasgow, NS
m) Sammi’s XXXtra Secret, Barrie, ON
n) Sassy Secrets & Things Ltd., Medicine Hat, AB
o) Secrets Drawers Lingerie Ltd., Happy Valley-Goose Bay, NFLD
p) Secrets Drawers Lingerie Ltd., Courtenay, BC
q) Secret Fine Lingerie, Saint-Laurent, QC
r) Secret Romance, Brantford, ON
s) Les Secrets Du Bonheur, Chicoutimi, QC
t) Secrets Int, Pelham, ON
u) Secrets Intimes, Châteauguay, QC
Ms. Fleck states that she called the stores (b) thru (u) and that only store personnel at Secret Drawers, My Secrets, Sexy Secrets, Cleopatra Secrets and Sassy Secrets answered her call [paragraph 14].
Ms. Fleck files printout and screen captures of the website of Secrets From Your Sisters [Exhibit “F”]. She states having attended at the store on June 11, 2005 where she was told by the salesperson that it had been open for six years. She files the sales receipt of her purchase of a bra and a pair of pajamas pants [Exhibit “G”], a photocopy of the store business card [Exhibit “H”], photographs of shopping bags [Exhibit “I”] and Canadian media coverage about the store [Exhibit “J”]. Ms. Fleck files printouts from the website of Cindy’s Secret [Exhibit “K”], a newspaper story on Cleopatra’s Secret [Exhibit “L”], retailer listings for Lingerie Secrets [Exhibits “M” and “N”], and printouts from the website of Secret Drawers [Exhibit “O”], and makes some statements based on her telephone call to My Secrets Lingerie.
Opponent’s evidence in reply
The Poirier Affidavit
Mr. Poirier, who has been continuously employed by the Opponent since 1972, executed his affidavit as Vice President of the Opponent since 1978. In cross-examination, he indicates being President of the Opponent since January 2006 [p. 6 of the transcript] and having been in charge of overseeing enforcement of the Opponent’s trade-marks “on and off” for thirty years [p. 7 of the transcript].
Mr. Poirier states that the Opponent has been vigilant in its efforts to protect and enforce its rights in its SECRET Family of Trade-marks. He knew none of the businesses identified at paragraph 13 of the Fleck Affidavit prior to his reading of the said affidavit, with the exception of Les Entrepôts Secrets Inc. The later is a wholly owned subsidiary of the Opponent and it operates an outlet store selling the Opponent’s products [paragraph 4]. In cross-examination, Mr. Poirier confirms that the word SECRET appears on signs that may be inside or outside the store. He indicates that he would have to check whether the word SECRET appears on bags that may be given to customers or in advertising [p. 12 of the transcript]. While that the Applicant submits in its written argument that Mr. Poirier did not provide an undertaking to do so, I would remark that the Applicant did not request such undertaking.
According to the Poirier Affidavit, the Opponent started investigating the activities of the businesses identified in the Fleck Affidavit. As of the date of the Poirier Affidavit, the Opponent had sent cease and desist letters to the following businesses: Secrets From Your Sister Inc., Lingerie Secrets, Her Secret, My Secret Lingerie Limited, Secret Fine Lingerie and Secrets Int. Copies of the cease and desists letters are attached as Exhibits MP-1 to MP-6. Legal proceedings had not yet been initiated against any of these businesses because the Opponent was engaged in confidential discussions aimed at having these businesses cease use of any trade-marks “which would be confusing with the SECRET trade-mark” [U-5, U-6 and U-7].
Mr. Poirier states that the Opponent, over the years, has actively protected its SECRET Family of Trade-marks by being involved in various expungement proceedings. Particular of registrations that were either expunged or voluntary amended as a result of expungement proceedings under s. 45 of the Act are provided in paragraphs 7 to 10 of the affidavit as well as in reply to an undertaking [pp. 8-9 of the transcript, U-1].
Mr. Poirier also discusses numerous oppositions initiated by the Opponent against third parties’ trade-marks. Particulars of applications that were opposed by the Opponent along with the outcome or status of the opposition proceedings are provided in paragraphs 12 to 29 of the affidavit as well as in reply to an undertaking [p. 9 of the transcript, U-2]. According to the reply to undertaking 2, the Opponent had opposed Wal-Mart Stores Inc.’s and V Secret Catalogue, Inc.’s applications that matured into the registrations attached as Exhibit “B” to the Fleck Affidavit. The opposition to Wal-Mart Stores, Inc.’s application was withdrawn [U-16]. Although the Applicant submits that Mr. Poirier during cross-examination (my emphasis) has refused to answers various questions with respect to whether or not the Opponent had ever opposed applications to register the trade-marks VICTORIA SECRET, it is apparent that answers were provided in response to undertakings. More particularly, the Opponent confirms that it had opposed V Secret Catalogue, Inc.’s applications, which oppositions were resolved through settlement [U-2], and it specifically confirms withdrawal of the opposition to the application for the trade-mark VICTORIA SECRET [U-13].
Although the Applicant suggested that a negative inference should be drawn from the fact that the oppositions to V Secret Catalogue, Inc.’s applications were not included in the Poirier Affidavit, I do not intend to do so. For one thing, Mr. Poirier specifically states providing a summary of certain opposition proceedings. Furthermore replies to undertakings seemingly contradict the Applicant’s position that Mr. Poirier has not been forthcoming. In that regard, I note that the Opponent refers to oppositions initiated by McGregor Industries Inc. against trade-mark applications filed by the Opponent [U-2]. The Opponent also confirms that Warnaco Inc., the owner of trade-mark applications for SECRET SHAPERS and OLGA SECRET SHAPERS that were successfully opposed by the Opponent [paragraphs 12 and 13, pp. 25-26 of the transcript, U-9], had opposed Application No. 794,644 for the Opponent’s trade-mark SECRET. The Registrar accepted the opposition but the Federal Court reversed the Registrar’s decision [pp. 22-24 of the transcript, U-8].
I find that it is not without merit for the Opponent to argue that questions with respect to the Opponent’s knowledge of the use of third party’s trade-marks, which were the subject of applications opposed by the Opponent, is outside the scope of the Poirier Affidavit. In any event, I consider that little, if any, significance should be given to Mr. Poirier’s testimony directed to the use of third parties’ trade-marks since it would not qualify as reliable evidence of use of third party’s trade-marks within the meaning of s. 4(1) of the Act. Accordingly, I find it unnecessary to decide whether or not negative inferences should be drawn from Mr. Poirier’s answers to these questions [pp. 24-30 of the transcript, U-11 and U-12] as argued by the Applicant.
The cross-examination discloses that the Opponent has filed Statements of Claim in the Federal Court against Victoria’s Secret Stores Inc., V Secret Catalogues, Inc. and Victoria’s Secret Catalogue, Inc. The Opponent has also filed a Statement of Claim against Dylex Limited regarding the use of the trade-marks HER SECRETS and JR. SECRETS [pp. 11-12 of the transcript, U-3].
In concluding my review of the Poirier Affidavit, I note that I am not willing to accept the Applicant’s contention that a negative inference should be drawn from the agent for the Opponent objecting to Mr. Poirier answering questions whether the Opponent has always been successful in s. 45 proceedings [pp. 8-9 of the transcript] and whether the Opponent has ever lost in opposition proceedings [p. 10 of the transcript]. In my view, the fact that the Opponent may not have been successful in all of its expungement and opposition proceedings would not diminish the value of the Poirier Affidavit as evidence that the Opponent has been vigilant in its efforts (my emphasis) to protect and enforce its rights.
Finally, I also reject the Applicant’s submissions that a negative inference regarding the distinctiveness of the SECRET Trade-marks should be drawn from Mr. Poirier’s refusal to divulge why the Opponent withdrew its oppositions to Wal-Mart Stores, Inc’s and to V Secret Catalogue, Inc.’s applications. In that regard, I agree with the Opponent’s submissions that, on balance, the Poirier Affidavit is at least as consistent with reasonable diligence on the part of the Opponent in the protection of its SECRET Trade-marks as it is with any conclusion that the Opponent had acquiesced to third party’s use of trade-marks involving the word SECRET in such a way as to undermine the distinctiveness of the Opponent’s SECRET Trade-marks [see Foodcorp Ltd. v. Chalet Bar B-Q (Canada) Inc. et al (1981), 55 C.P.R. (2d) 46 (F.C.T.D.)].
Analysis of the grounds of opposition
There is an initial evidential burden on the Opponent to establish the facts relied upon in support of the grounds of opposition. Once this initial onus is satisfied, the Applicant has the burden to prove that the particular grounds of opposition should not prevent registration of the Mark [see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.) and Wrangler Apparel Corp. v. The Timberland Company (2005), 41 C.P.R. (4th) 223 (F.C.)].
Non-compliance with s. 30 of the Act
The material date for considering the circumstances with respect to the ground of opposition based upon non-compliance with s. 30 of the Act is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.)].
Section 30(e)
Since the application contains a statement that the Applicant by itself and/or through a licensee intends to use the Mark in Canada in association with the wares marked (3), it formally complies with s. 30(e) of the Act. The issue becomes whether or not the Applicant has substantially complied with s. 30(e) of the Act, i.e. is the Applicant’s statement that it intended to use the Mark true? [see Home Quarters Warehouse, Inc. v. Home Depôt, U.S.A., Inc. (1997), 76 C.P.R. (3d) 219 (T.M.O.B.); Jacobs Suchard Ltd. V. Trebor Bassett Ltd. (1996), 69 C.P.R. (3d) 569 (T.M.O.B.)].
I find that the Opponent has not discharged its evidential burden of showing that the Applicant did not intend to use the Mark in Canada in association with the wares marked (3) at the material date. I therefore dismiss the ground of opposition.
Section 30(i)
The Opponent did not allege that the Applicant had any knowledge of the Opponent’s trade-marks or adopted the Mark knowing it to be confusing with the Opponent’s trade-marks. In any event, where an applicant has provided the statement required by s. 30(i) of the Act, the ground of opposition should only succeed in exceptional cases such as where there is evidence of bad faith on the part of an applicant [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155] As this is not such a case, I dismiss the ground of opposition.
Registrability
The material date with respect to the ground of opposition based upon s. 12(1)(d) of the Act is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)].
I consider that the Opponent’s case with respect to this ground of opposition is strongest when considering the likelihood of confusion between the Mark and the Opponent’s trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736, TMA372,467, TMA494,594 and TMA503,815 all alleged in support of the ground of opposition. Having exercised the Registrar’s discretion and determined that all these registrations are extant, I note that the Opponent has satisfied its initial burden. Therefore, the burden of proof lies on the Applicant to convince the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion.
The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; b) the length of time the trade-marks or trade-names have been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [see Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.) and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401 (S.C.C.) for a thorough discussion of the general principles that govern the test for confusion].
s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which they have become known
The Opponent’s trade-mark SECRET is inherently distinctive as is the Mark when considered in its entirety, even though there is a descriptive connotation attaching to the word “women”. I would further note that the design feature of the Mark does not increase its inherent distinctiveness since the stylized font employed is intrinsic with the words forming the essential part of the Mark [see Canadian Jewish Review Ltd. v. The Registrar of Trade Marks (1961), 37 C.P.R. 89 (Ex. C.)].
The Applicant did not file any evidence of use of the Mark in association with the Wares whereas the Opponent’s evidence establishes that the trade-mark SECRET has been extensively used in Canada in association ladies’ hosiery and ladies’, men’s and children’s socks and stockings.
The Opponent did not distinguish the sales figures for its hosiery gloves from the sale figures for its wash bags. Nonetheless, I find it reasonable to conclude that the trade-mark has become known to some extent in Canada in association with hosiery gloves, which arguably could correspond to the “woven gloves” of Registration No. TMA494,594 and No. TMA503,815. In the absence of evidence for the remaining wares listed in both registrations, the most that I can presume is that there has been de minimis use of the trade-mark [see Entre Computer Centers, Inc. v. Global Upholstery Co. (1992), 40 C.P.R. (3d) 427 (T.M.O.B.)]. The same comment applies to the footwear listed in Registration No. TMA372,467. Thus, I find that the extent to which the trade-mark SECRET has become known is of no significance when considering registered wares for which the Opponent has not provided any evidence of use.
s. 6(5)(b) - the length of time the trade-marks have been in use
The Applicant filed its application in 1999 on the dual basis of registration and use in Spain and proposed use in Canada.
There appears to be a discrepancy between the claimed dates of first use of the trade-mark SECRET in association with men’s and ladies’ socks and stockings in Registration No. TMA151,062 and No. TMA298,736. In any event, the earliest claimed date of first use in association with “ladies’ hosiery, men’s and ladies’ socks and stockings, sport socks, dress socks and knee socks” is May 4, 1967. The date of first use claimed in association with “children’s socks and stockings” is June 30, 1986. The Opponent has provided sales figures relating to ladies’, men’s and children’s hosiery products since 1986. The trade-mark SECRET has been registered under No. TMA372,467 further to a declaration of use filed on June 23, 1990, but the Opponent did not file evidence showing continuous use of the trade-mark in association with the registered wares. The trade-mark SECRET has been registered under No. TMA494,594 further to a declaration of use filed on April 23, 1998. The trade-mark SECRET has been registered under No. TMA503,815 further to a declaration of use filed on October 30, 1998. Except for evidence of use of the trade-mark in association with hosiery gloves since 1986, the Opponent did not file evidence showing continuous use of its trade-mark in association with the wares identified in both registrations.
In view of the above, the length of time the trade-marks have been in use favours the Opponent when considering its registered wares corresponding to ladies’, men’s and children’s hosiery products and to hosiery gloves. However, I find the length of time the trade-marks have been in use to be of little significance when considering registered wares for which the Opponent has not filed any evidence of use since, as indicated above, the most that I can presume from the mere existence of registrations is that there has been de minimis use of the trade-mark.
s. 6(5)(c) and (d) - the nature of the wares, services or business and the nature of the trade
In considering the nature of the wares and the nature of the trade, it is the statement of wares in the application and the statement of wares in the registrations that govern the assessment of the likelihood of confusion under s. 12(1)(d) of the Act [see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
The Applicant’s wares “slippers…footwear, namely, esparto shoes, sandals, bath slippers, beach shoes, boots for sports, slippers, gymnastic boots, sports shoes, espadrilles” are either identical or overlapping with the wares of Registration No. TMA372,467.
The wares “earmuffs” of Registration Nos. TMA494,594 and TMA503,815 specifically differ from the Applicant’s wares “caps, bonnets…headgear, namely, berets, caps, hats, bonnets, and bathing caps”. Nonetheless, for the purposes of determining confusion, I find that these respective wares are related as they fall within the class of headwear.
The Applicant’s wares “stockings (panties), mini-stockings, socks” are either identical or overlapping with the wares of Registration Nos. TMA151,062 and TMA298,736. Furthermore, although two cases are never alike, applying the reasoning of Partington G. in Manufacturier de Bas de Nylon Doris Ltée v. Victoria’s Secret Inc. (1991), 39 C.P.R. (3d) 131, I find that ladies’ hosiery and stockings are closely related to, if not overlapping with, women’s undergarments and lingerie. Thus, I find that the Applicant’s wares “brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes” are closely related to, if not overlapping with, ladies’ hosiery.
The Opponent’s registered wares specifically differ from the Applicant’s wares “jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts, bikinis, bathing suits, pareos (sarongs), shorts for swimming”. However other registered trade-marks alleged by the Opponent, such as HER CHOICE BY SECRET (Registration No. TMA478,262) and HER CHOICE/SON CHOIX BY/PAR SECRET (Registration No. TMA521,823), both of which are extant, are associated with, inter alia, exercise tights, leggings, exercise leotards, sweat pants, sweat shirts and T-shirts. I therefore find it reasonable to consider that there is no difference between the nature and kind of customer who would be likely to buy the Opponent’s registered wares and the wares “jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts”.
To the extent that some of the Wares are identical, closely related to or overlapping with the wares identified in the Opponent’s registrations, as discussed above, for the purposes of considering confusion, I find it reasonable to conclude that the channels of trade associated with the Mark would either be identical or overlapping with the Opponent’s channels of trade.
In view of the above, an overall consideration of the nature of the wares and of the nature of the trade favours the Opponent.
s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
The Applicant submits that there are differences between the trade-marks, when considered in their totality, as the registered trade-mark consists of one dictionary word not incorporating any punctuation or design elements, while the Mark is a design mark incorporating a stylized font and consists of an invented word containing an apostrophe. I believe that ordinary consumers will react to the Mark by thinking of the ordinary words “women’s secret”. Therefore, the fact that the Applicant has telescoped the two words is of little consequence. I agree with the Opponent’s submissions that the fact that the Mark includes the entirety of the registered trade-mark combined with the fact that the word “secret” is the most distinctive feature of the Mark result in a fair degree of similarity between the trade-marks in appearance, sound and idea suggested.
Additional circumstances
• SECRET Family of Trade-marks and notoriety
The Opponent raises its ownership of the SECRET Family of Trade-marks and the notoriety of its trade-mark SECRET as additional circumstances supporting a finding of confusion.
I am satisfied that the Opponent’s evidence establishes the existence of a family of trade-marks containing the word “secret” for women’s intimate apparel [see MacDonald’s Corporation v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101 (F.C.T.D.)]. Further, I agree with the Opponent’s submissions that the evidence before me suggests that consumers are sufficiently familiar with the Opponent’s trade-mark SECRET and the wares in association with which it is used that consumers would probably believe that the identical or closely related wares associated with the Mark derive from the same source.
• Common adoption of “secret” as a component of third parties’ trade-marks/trade-names
Both in its written argument and at the oral hearing, the Applicant lengthily argued that the Fleck Affidavit, the Poirier Affidavit and the cross-examination of Mr. Poirier, demonstrate that “secret” is commonly adopted by third parties as a trade-mark and/or trade-name in Canada in association with intimate apparel, including lingerie, underwear, undergarments and hosiery such that Canadians are used to distinguishing between one trade-mark or trade-name and another.
The Applicant submits that Exhibit “B” to the Fleck Affidavit shows that the word “secret” appears in a number of third party trade-mark registrations for intimate apparel. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace, and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located. [Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R. (3d) 432; Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.); Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.)]. In my view, seven registrations, six of which are owned by the same entity, are insufficient to draw any inference about the marketplace.
The Applicant submits that Exhibit “C” to the Fleck Affidavit demonstrates that “the VICTORIA’S SECRET brand is known in Canada in association with intimate apparel”. I find that newspaper articles cannot serve as evidence of use of the trade-mark VICTORIA SECRET in Canada. Even if I accept the Applicant’s submissions that Exhibit “D” to the Fleck Affidavit shows “that Victoria’s Secret product can be shipped to Canada”, I find that the said Exhibit is of very little assistance to the Applicant’s case because the content of the website does not constitute reliable evidence of use of the trade-mark VICTORIA SECRET in Canada.
The Applicant submits that Exhibit “E” to the Fleck Affidavit establishes that there are 20 third parties businesses using the word “secret” or “secrets” throughout Canada in association with intimate apparel. In support of its contention, the Applicant relies upon the decision Vision-Care Ltd. v. Hoya Corp (2000), 7 C.P.R. (4th) 331 (T.M.O.B.) wherein telephone directory listings for 20 third party business incorporating the opponent’s trade-mark in their names was accepted as evidence of common adoption of the said trade-mark. As interesting as the Vision-Care Ltd. decision may be, I find it to be distinguishable from the present case, as shown by the following excerpt of the decision:
21 The applicant's mark resembles the opponent's trade-name as a result of the common use of the words "VISION CARE". If these words were not descriptive, I would find confusion to be likely. However, all of the applicant's evidence points to the descriptive or generic nature of the term "vision care". The opponent has not attempted to counter the applicant's argument that "vision care" is a generic or descriptive term…” (my emphasis).
The Applicant made various submissions with respect to Exhibits “F” to “O” to the Fleck Affidavit and with respect to Ms. Fleck’s testimony based on conversations with individuals. Suffice it to say that in addition to the hearsay deficiency attaching to Ms. Fleck’s testimony based on the content of websites and conversations with employees, neither websites nor newspaper articles constitute reliable evidence of third party use of trade-marks or trade-names in Canada. Although Exhibits “G” to “I” may arguably evidence use of the business name Secret From your Sisters, at the utmost they evidence such use on June 11, 2005.
At the oral hearing, the Applicant’s agent expressed the view that the Opponent’s own investigations revealed that the six businesses to which the Opponent had sent cease and desist letters were in operation. Suffice it to say that the cease and desist letters may not serve as evidence of the allegations contained therein.
In view of the foregoing, I find that the evidence is insufficient to reach the conclusion that “secret” is commonly adopted by third parties as a component of trade-marks and/or trade-names in Canada in association with intimate apparel. I would add that even if I am wrong in so finding, in my view this additional circumstance is outweighed by the existence of the SECRET Family of Trade-marks and the notoriety of trade-mark SECRET in association with women’s intimate apparel.
In applying the test for confusion I have considered it as a matter of first impression and imperfect recollection. In view of my conclusions above, I find that there is a reasonable likelihood that the Mark will prompt consumers to think that the Applicant’s wares identified hereafter come from the same source as those covered by the trade-mark SECRET of Registration Nos. TMA151,062 and TMA298,736 or that they are otherwise associated with the Opponent:
“(2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns…stockings (panties), mini stockings, socks…(3)… brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts…stockings (panties), mini-stockings, socks...”
Therefore, I find that the Applicant has not discharged its burden of showing, on a balance of probabilities, that the Mark in association with the aforementioned wares is not confusing with the Opponent’s trade-mark SECRET of Registration No. TMA151,062 and No. TMA298,736.
Furthermore, I find that the balance of probabilities is evenly balanced between a finding of confusion and of no confusion between the trade-marks when considering the remainder of the Wares, namely:
• “(2) Clothing for women, namely…bikinis, bathing suits, pareos (sarongs), shorts for swimming…(3)…bikinis, bathing suits, pareos (sarongs), shorts for swimming” and the wares of Registration Nos. TMA151,062 and TMA298,736;
• “(2) Clothing for women, namely…slippers… footwear, namely, esparto shoes, sandals, bath slippers, beach shoes, boots for sports, slippers, gymnastic boots, sports shoes, espadrilles…(3)… slippers...” and the wares of Registration No. TMA372,467.
• “(2) Clothing for women, namely…caps, bonnets… headgear, namely, berets, caps, hats, bonnets, and bathing caps; (3)… caps, bonnets…” and the headwear of Registration Nos. TMA494,594 and TMA503,815.
As the onus is on the Applicant to establish on a balance of probabilities that the Mark is not confusing with the Opponent’s registered trade-mark, I must decide against the Applicant and find that it has not discharged its burden of showing, on a balance of probabilities, that the Mark in association with the remainder of the Wares is not confusing with the Opponent’s registered trade-mark SECRET, as detailed above.
Having regard to the foregoing, I find that the s. 12(1)(d) ground of opposition based upon confusion with the trade-mark SECRET of Registration Nos. TMA151,062, TMA298,736, TMA372,467, TMA494,594 and TMA503,815 is successful.
Non-entitlement
The material date for considering the circumstances with respect to each of the non-entitlement grounds of opposition is the date of filing of the application.
Sections 16(2)(a) and 16(3)(a) of the Act
Once again, I consider that the Opponent’s case with respect to these grounds of opposition is strongest when considering the likelihood of confusion between the Mark and the Opponent’s trade-mark SECRET. I also note that the wares for which the Opponent is alleging prior use of its trade-mark SECRET are specifically pleaded in its statement of opposition as the wares of Registration Nos. TMA151,062, TMA298,736, TMA372,467, TMA494,594 and TMA503,815
Since the Opponent has discharged its initial onus of proving that its trade-mark SECRET was being used in association with women’s intimate apparel at the material date and had not been abandoned at the date of advertisement of the application [s. 16(5) of the Act], the burden of proof rests upon the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the trade-marks at issue.
Notwithstanding the differences between the material date, I find that my prior conclusions with respect to the likelihood of confusion between the Mark and the trade-mark SECRET under the s. 12(1)(d) ground of opposition are applicable to the grounds of opposition based upon s. 16(2)(a) and s. 16(3)(a) of the Act, but only with respect to some of the Wares, as discussed hereafter.
There is no evidence that the Opponent and/or its licensee(s) at the material date were in the marketplace using the trade-mark SECRET, or for that matter any of the trade-marks included in the SECRET Family of Trade-marks, in association with footwear, headwear and swimwear/beachwear. Since de minimis use of the Opponent’s trade-mark cannot be assumed or consider sufficient to establish prior use of the trade-mark under a s. 16 ground of opposition, I am of the opinion that the Opponent’s case is weaker under these grounds of opposition than under the s. 12(1)(d) ground of opposition when considering the Applicant’s wares “(2)…slippers, caps, bonnets, bikini, bathing suits, pareos (sarongs), shorts for swimming; footwear, namely, esparto shoes, sandals, bath slippers, beach shoes, boots for sports, slippers, gymnastic boots, sports shoes, espadrilles; headgear, namely, berets, caps, hats, bonnets, and bathing caps; (3)…slippers, caps, bonnets…bikinis, bathing suits, pareos (sarongs), shorts for swimming”.
In view of the evidence of record, I find that the Applicant has discharged its burden of showing, on a balance of probabilities, that the Mark in association with the aforementioned wares is not confusing with the Opponent’s trade-mark SECRET. However, I find that the Applicant has not discharged its burden of showing, on a balance of probabilities, that the Mark in association with “(2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns…stockings (panties), mini stockings, socks…(3)… brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts…stockings (panties), mini-stockings, socks” is not confusing with the Opponent’s trade-mark SECRET.
Having regard to the foregoing, I find that the ground of opposition based upon s. 16(2)(a) of the Act is successful with respect to the following wares:
“(2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns…stockings (panties), mini stockings, socks…”.
I also find that the ground of opposition based upon s. 16(3)(a) of the Act is successful with respect to the following wares:
“(3)…brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts…stockings (panties), mini-stockings, socks…”.
Sections 16(2)(b) and 16(3)(b) of the Act
I remark that in both of its grounds of opposition, the Opponent has pleaded that its alleged trade-mark applications “…were pending at the Date of Filing of the Trade-mark, namely March 26, 2003”. It is apparent that the Opponent’s pleadings incorrectly identify the filing date of the Applicant’s application. In any event, the Opponent has the initial onus of proving that its alleged applications had been filed previously to the material date, namely November 15, 1999, and were pending at the date of advertisement of the application [s. 16(4) of the Act].
Since all the applications alleged by the Opponent in support of its grounds of opposition were filed after the material date, I dismiss the grounds of opposition based upon s. 16(2)(b) and s. 16(3)(b) for having been improperly pleaded.
Distinctiveness
The material date to consider the ground of opposition based upon non-distinctiveness is the filing date of the statement of opposition [see Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
There was an initial burden on the Opponent to show that one or more of its trade-marks had become known sufficiently as of May 26, 2003 to negate the distinctiveness of the Mark [see Motel 6, Inc. v. No. 6 Motel Ltd., 56 C.P.R. (2d) 44 (F.C.T.D.); Bojangles’ International, LLC and Bojangles Restaurants, Inc. v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.T.D.)
Notwithstanding the difference between the material date, I find that my prior conclusions with respect to the likelihood of confusion between the Mark and the trade-mark SECRET under the non-entitlement grounds of opposition based upon s. 16(2) and s. 16(3) of the Act are applicable to the distinctiveness ground of opposition. Therefore, I come to the conclusion that the evidence of record does establish that the Opponent’s trade-mark SECRET had become sufficiently known as of May 26, 2003 to negate the distinctiveness of the Mark in association with “(2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns…stockings (panties), mini stockings, socks…(3)… brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts…stockings (panties), mini-stockings, socks”, but not in association with “(2)…slippers, caps, bonnets…bikini, bathing suits, pareos (sarongs), shorts for swimming; footwear, namely, esparto shoes, sandals, bath slippers, beach shoes, boots for sports, slippers, gymnastic boots, sports shoes, espadrilles; headgear, namely, berets, caps, hats, bonnets, and bathing caps; (3)…slippers, caps, bonnets…bikinis, bathing suits, pareos (sarongs), shorts for swimming”.
Accordingly, the ground of opposition based upon non-distinctiveness is successful only with respect to the following wares:
“(2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns…stockings (panties), mini stockings, socks…(3)… brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts…stockings (panties), mini-stockings, socks…”.
Conclusion
Having regard to the foregoing, and with the authority delegated to me under s. 63(3) of the Act, I refuse the application with respect to the wares “(2) Clothing for women, namely, brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, slippers, caps, bonnets, stockings (panties), mini stockings, socks, bikini, bathing suits, pareos (sarongs), shorts for swimming; footwear, namely, esparto shoes, sandals, bath slippers, beach shoes, boots for sports, slippers, gymnastic boots, sports shoes, espadrilles; headgear, namely, berets, caps, hats, bonnets, and bathing caps; (3)… brassieres, body suits, teddies, corsets, bustiers (bodice), underwear combinations, underwear tops, undershirts, panties, tangas (g-string), panties (girdles), culottes, girdles, pyjamas, night-shirts (camisoles), dressing gowns, bathrobes, jackets, shirts, sweat shirts, trousers, leggings, shorts, overalls (dresses), skirts, slippers, caps, bonnets, stockings (panties), mini-stockings, socks, bikinis, bathing suits, pareos (sarongs), shorts for swimming” pursuant to s. 38(8) of the Act.
DATED AT MONTREAL, QUEBEC, THIS 10th DAY OF SEPTEMBER 2008.
Céline Tremblay
Member
Trade-marks Opposition Board
ANNEX A
1) SECRET, registered on May 26, 1967, under number TMA151,062 with respect to "(1) Ladies' hosiery. (2) Men’s and ladies socks and stockings. (3) Men’s and ladies sport socks, dress socks and knee socks”.
2) SECRET & Design, registered on November 25, 1983, under number TMA285,242 with respect to "(1) Ladies' pantyhose. (2) Men's and ladies' socks and stockings. (3) Children's socks and stockings".
3) SECRET, registered on January 4, 1985, under number TMA298,736 with respect to "(1) Ladies' hosiery, men's and ladies' socks and stockings, sports socks, dress socks and knee socks. (2) Children's socks and stockings”.
4) SECRET, registered on August 24, 1990, under number TMA372,467 with respect to "footwear, namely shoes, boots, slippers and sandals".
5) SECRET, registered on May 14, 1998, under number TMA494,594 with respect to “woven and knitted headwear namely earmuffs; woven and leather gloves, and umbrellas”.
6) SECRET, registered on November 6, 1998, under number TMA503,815, with respect to “woven and knitted headwear namely earmuffs; woven and leather gloves, and umbrellas”.
7) SECRET CONTROL PANTY, registered on October 26, 1979, under number TMA236,847 with respect to "ladies' panty hose and ladies' hosiery".
8) SECRET CONTROL TOP, registered on October 26, 1979 under number TMA236,848 with respect to "ladies' panty hose and ladies' hosiery".
9) SECRET SPARE PAIR, registered on July 18, 1980, under number TMA248,327 with respect to "ladies' panty hose and ladies' hosiery".
10) SECRET PAIRE DE SECOURS, registered on July 18, 1990, under number TMA248,329 with respect to "ladies' panty hose and ladies' hosiery".
11) SECRET SILKY, registered on October 27, 1989, under number TMA361,546 with respect to "ladies' pantyhose and ladies' hosiery".
12) SUPERSHEER SECRET SUPERFIN, registered on June 1, 1990, under number TMA369,065 with respect to "ladies' pantyhose and ladies' hosiery".
13) SECRET SUMMER COOL, registered on January 22, 1993, under number TMA407,290 with respect to "ladies' pantyhose and ladies' hosiery".
14) SECRET FRAICHEUR D’ÉTÉ, registered on January 22, 1993, under number TMA407,291 with respect to “ladies' pantyhose and ladies' hosiery".
15) HER CHOICE BY SECRET, registered on June 16, 1995, under number TMA444,050 with respect to “clothing, namely panty hose, trousers socks, kneehighs, socks, thigh highs and stockings".
16) JOUR À JOUR SECRET, registered on June 30, 1995, under number TMA444,724 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
17) SECRET FOR HIM, registered on September 29, 1995, under number TMA448,331 with respect to "clothing, namely socks and underwear for men”.
18) SECRET FOR HIM POUR LUI & Design, registered on November 3, 1995, under number TMA449,621 with respect to "clothing, namely socks and underwear for men".
19) SECRET SO SLIM, registered on November 24, 1995, under number TMA450,919 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
20) HER SECRETS, registered on May 2, 1997, under number TMA475,612 with respect to "ladies' lingerie, namely, bras, panties, and daywear, namely, slips, camisoles, teddies and loungewear, namely, robes, tops and bottoms not intended as streetwear; sleepwear".
21) JR. SECRETS, registered on May 9, 1997, under number TMA476,020 with respect to "girls' underwear and sleepwear";
22) SECRET UP LIFT, registered on June 18, 1997, under number TMA477,978 with respect to "pantyhose and panties".
23) HER CHOICE BY SECRET, registered on July 2, 1997, under number TMA478,262 with respect to "activewear, namely exercise tights, leggings, exercise leotards, sweat pants, sweat shirts, T-shirts; underwear".
24) SECRET ACTIVE SLIMMERS, registered on July 2, 1997, under number TMA478,269 with respect to “clothing, namely hosiery, pantyhose and undergarments".
25) SECRET ALL-DAY, registered on July 17, 1997, under number TMA478,681 with respect to "clothing, namely socks, stockings, lingerie, undergarments, kneehighs and tights".
26) HER CHOICE/SON CHOIX BY/PAR SECRET, registered on August 22, 1997, under number TMA481,370 with respect to "(1) Panty hose, socks, thigh highs and stocking. (2) Trouser socks, ankle highs and knee highs".
27) SECRET TONE-UP, registered on November 24, 1997, under number TMA486,169 with respect to "underwear, namely: bras, panties, slips, bodyliners, bodystockings, garter belts, g-strings, thongs, teddies, chemises, camisoles; pantyhose and hosiery".
28) SECRET SO SHEER L'INVISIBLE, registered on January 28, 1998, under number TMA488,430 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights";
29) SECRET SO SOFT TRÈS DOUX, registered on February 2, 1998, under number TMA488,942 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
30) SECRET SO SOFT, registered on February 2, 1998, under number TMA488,951 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
31) SECRET VIRTUAL SKIN/VOILE DE PEAU, registered on April 2, 1998, under number TMA492,220 with respect to "ladies hosiery, namely: thigh high's, knee high's and pantyhose".
32) SECRET MEDI-SUPPORT & Design, registered on May 8, 1998, under number TMA494,307 with respect to "graduated compression medical hosiery for men and women, namely pantyhose, socks, stockings and kneehights".
33) LITTLE SECRETS, registered on September 28, 1998, under number TMA501,368 with respect to "children's and infant's underwear, namely briefs and undershirts".
34) HER CHOICE/SON CHOIX BY/PAR SECRET, registered on October 28, 1998, under number TMA503,167 with respect to "woven and knitted headwear, including earmuffs; woven and leather gloves, and umbrellas".
35) HER CHOICE BY SECRET, registered on October 28, 1998, under number TMA503,169 with respect to "woven and knitted headwear including earmuffs; woven and leather gloves, and umbrellas".
36) HER CHOICE BY SECRET, registered on November 6, 1998, under number TMA503,802 with respect to "headwear, namely earmuffs; woven and leather gloves; scarves; umbrellas".
37) HER CHOICE/SON CHOIX BY/PAR SECRET, registered on November 6, 1998, under number TMA503,816 with respect to "headwear, namely earmuffs; woven and leather gloves; scarves; umbrellas".
38) SECRET NO-SEAM, registered on July 23, 1999, under number TMA513,154 with respect to "ladies' panty hose and ladies' hosiery".
39) SECRET ALL-DAY, registered on August 30, 1999, under number TMA515,750 with respect to “footwear, namely shoes, jogging shoes; slippers, namely house slippers”.
40) SECRET FIT, registered on August 30, 1999, under number TMA515,752 with respect to “footwear, namely shoes, jogging shoes; slippers, namely house slippers”.
41) SECRET AU NATUREL, registered on October 4, 1999, under number TMA517,521 with respect to “hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings”.
42) HER CHOICE/SON CHOIX BY/PAR SECRET, registered on January 19, 2000, under number TMA521,823 with respect to "activewear, namely exercise tights, leggings, exercise leotards, sweat pants, sweat shirts, T-shirts, underwear; and knitwear, namely hats, mitts, gloves and scarves”.
43) HER CHOICE BY SECRET, registered on January 19, 2000, under number TMA521,833 with respect to "knitwear, namely, hats, mitts, gloves and scarves".
44) SECRET INTIMATES, registered on August 28, 2000, under number TMA531,815 with respect to “men's, ladies' and children's hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings, sports socks, dress socks and knee socks; intimate apparel, namely bras, panties, slips, bodyliners, bodystockings, bodysuits, garter belts, g-strings, thongs, teddies, chemises, camisoles, foundation slips, half slips, girdles, panty girdles, garters, briflettes and control briefs”.
45) SECRET PLUS, registered on August 23, 2001, under number TMA550,155 with respect to "panty hose, socks, knee highs and tights; and panties";
46) SECRET DURASHEERS, registered on October 11, 2001, under number TMA522,296 with respect to “men's, ladies' and children's hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings, sports socks, dress socks, and knee socks”.
47) SECRET HIPSTER, registered on December 12, 2002, under number TMA572,221 with respect to “clothing, namely undergarments and legwear”.
48) SECRET SENSUALS, registered on December 13, 2002, under number TMA572,244 with respect to “hosiery and intimate apparel”.
49) SECRET DELUXE, registered on December 13, 2002, under number TMA572,246 with respect to “clothing, namely intimate apparel”.
50) SECRET GET HIP, registered on December 18, 2002, under number TMA572,608 with respect to “clothing, namely undergarments and legwear”.
51) SECRET NO-SEAM, registered on April 16, 2003, under number TMA579,685 with respect to “clothing, namely intimate apparel”.
52) CRAZE BY SECRET, registered on April 30, 2003, under number TMA580,305 with respect to “clothing, namely intimate apparel”.
53) SECRET ALL NUDE, registered on May 1, 2003, under number TMA580,442 with respect to “clothing, namely intimate apparel”.
ANNEX B
1) SECRET, registered on May 26, 1967, under number TMA151,062 with respect to "(1) Ladies' hosiery. (2) Men’s and ladies socks and stockings. (3) Men’s and ladies sport socks, dress socks and knee socks”.
2) SECRET & Design, registered on November 25, 1983, under number TMA285,242 with respect to "(1) Ladies' pantyhose. (2) Men's and ladies' socks and stockings. (3) Children's socks and stockings".
3) SECRET, registered on January 4, 1985, under number TMA298,736 with respect to "(1) Ladies' hosiery, men's and ladies' socks and stockings, sports socks, dress socks and knee socks. (2) Children's socks and stockings”.
4) SECRET, registered on August 24, 1990, under number TMA372,467 with respect to "footwear, namely shoes, boots, slippers and sandals".
5) SECRET, registered on May 14, 1998, under number TMA494,594 with respect to “woven and knitted headwear namely earmuffs; woven and leather gloves, and umbrellas”.
6) SECRET, registered on November 6, 1998, under number TMA503,815, with respect to “woven and knitted headwear namely earmuffs; woven and leather gloves, and umbrellas”.
7) SECRET CONTROL PANTY, registered on October 26, 1979, under number TMA236,847 with respect to "ladies' panty hose and ladies' hosiery".
8) SECRET CONTROL TOP, registered on October 26, 1979 under number TMA236,848 with respect to "ladies' panty hose and ladies' hosiery".
9) SECRET SPARE PAIR, registered on July 18, 1980, under number TMA248,327 with respect to "ladies' panty hose and ladies' hosiery".
10) SECRET PAIRE DE SECOURS, registered on July 18, 1990, under number TMA248,329 with respect to "ladies' panty hose and ladies' hosiery".
11) SECRET SILKY, registered on October 27, 1989, under number TMA361,546 with respect to "ladies' pantyhose and ladies' hosiery".
12) SUPERSHEER SECRET SUPERFIN, registered on June 1, 1990, under number TMA369,065 with respect to "ladies' pantyhose and ladies' hosiery".
13) SECRET SUMMER COOL, registered on January 22, 1993, under number TMA407,290 with respect to "ladies' pantyhose and ladies' hosiery".
14) SECRET FRAICHEUR D’ÉTÉ, registered on January 22, 1993, under number TMA407,291 with respect to “ladies' pantyhose and ladies' hosiery".
15) HER CHOICE BY SECRET, registered on June 16, 1995, under number TMA444,050 with respect to “clothing, namely panty hose, trousers socks, kneehighs, socks, thigh highs and stockings".
16) JOUR À JOUR SECRET, registered on June 30, 1995, under number TMA444,724 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
17) SECRET FOR HIM, registered on September 29, 1995, under number TMA448,331 with respect to "clothing, namely socks and underwear for men”.
18) SECRET FOR HIM POUR LUI & Design, registered on November 3, 1995, under number TMA449,621 with respect to "clothing, namely socks and underwear for men".
19) SECRET SO SLIM, registered on November 24, 1995, under number TMA450,919 with respect to "clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
20) HER SECRETS, registered on May 2, 1997, under number TMA475,612 with respect to "ladies' lingerie, namely, bras, panties, and daywear, namely, slips, camisoles, teddies and loungewear, namely, robes, tops and bottoms not intended as streetwear; sleepwear".
21) JR. SECRETS, registered on May 9, 1997, under number TMA476,020 with respect to "girls' underwear and sleepwear".
22) SECRET UP LIFT, registered on June 18, 1997, under number TMA477,978 with respect to "pantyhose and panties".
23) HER CHOICE BY SECRET, registered on July 2, 1997, under number TMA478,262 with respect to "activewear, namely exercise tights, leggings, exercise leotards, sweat pants, sweat shirts, T-shirts; underwear".
24) SECRET ACTIVE SLIMMERS, registered on July 2, 1997, under number TMA478,269 with respect to “clothing, namely hosiery, pantyhose and undergarments".
25) SECRET ALL-DAY, registered on July 17, 1997, under number TMA478,681 with respect to "clothing, namely socks, stockings, lingerie, undergarments, kneehighs and tights".
26) HER CHOICE/SON CHOIX BY/PAR SECRET, registered on August 22, 1997, under number TMA481,370 with respect to "(1) Panty hose, socks, thigh highs and stocking. (2) Trouser socks, ankle highs and knee highs".
27) SECRET TONE-UP, registered on November 24, 1997, under number TMA486,169 with respect to "underwear, namely: bras, panties, slips, bodyliners, bodystockings, garter belts, g-strings, thongs, teddies, chemises, camisoles; pantyhose and hosiery".
28) SECRET SO SHEER L'INVISIBLE, registered on January 28, 1998, under number TMA488,430 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights";
29) SECRET SO SOFT TRÈS DOUX, registered on February 2, 1998, under number TMA488,942 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
30) SECRET SO SOFT, registered on February 2, 1998, under number TMA488,951 with respect to “clothing, namely hosiery, socks, stockings, panty hose, lingerie, undergarments, kneehighs and tights".
31) SECRET VIRTUAL SKIN/VOILE DE PEAU, registered on April 2, 1998, under number TMA499,220 with respect to "ladies hosiery, namely: thigh high's, knee high's and pantyhose".
32) SECRET MEDI-SUPPORT & Design, registered on May 8, 1998, under number TMA494,307 with respect to "graduated compression medical hosiery for men and women, namely pantyhose, socks, stockings and kneehights".
33) LITTLE SECRETS, registered on September 28, 1998, under number TMA501,368 with respect to "children's and infant's underwear, namely briefs and undershirts".
34) HER CHOICE/SON CHOIX BY/PAR SECRET, registered on October 28, 1998, under number TMA503,167 with respect to "woven and knitted headwear, including earmuffs; woven and leather gloves, and umbrellas".
35) HER CHOICE BY SECRET, registered on October 28, 1998, under number TMA503,169 with respect to "woven and knitted headwear including earmuffs; woven and leather gloves, and umbrellas".
36) HER CHOICE BY SECRET, registered on November 6, 1998, under number TMA503,802 with respect to "headwear, namely earmuffs; woven and leather gloves; scarves; umbrellas".
37) HER CHOICE/SON CHOIX BY/PAR SECRET, registered on November 6, 1998, under number TMA503,816 with respect to "headwear, namely earmuffs; woven and leather gloves; scarves; umbrellas".
38) SECRET NO-SEAM, registered on July 23, 1999, under number TMA513,154 with respect to "ladies' panty hose and ladies' hosiery".
39) SECRET ALL-DAY, registered on August 30, 1999, under number TMA515,750 with respect to “footwear, namely shoes, jogging shoes; slippers, namely house slippers”.
40) SECRET FIT, registered on August 30, 1999, under number TMA515,752 with respect to “footwear, namely shoes, jogging shoes; slippers, namely house slippers”.
41) SECRET AU NATUREL, registered on October 4, 1999, under number TMA517,521 with respect to “hosiery, namely panty hose, thigh highs, knee highs, ankle highs, tights, socks and stockings”.
ANNEX C
1) SECRET NEW LOOK, filed on June 9, 2000, under number 1,062,903 with respect to “clothing, namely intimate apparel”
2) CRAZE BY SECRET, filed on June 6, 2001, under number 1,107,073 with respect to “clothing, namely sleepwear, casual wear, legwear, namely hosiery, tights, socks, stockings, leggings, footwear, namely slippers, shoes, jogging shoes, boots, sandals”.
3) SECRET KUSHYFOOT, filed on April 14, 2003, under number 1,174,648 with respect to “legwear”.
4) SECRETKUSHYFOOT, filed on April 29, 2003, under number 1,176,199 with respect to “footwear”.