Glamour magazine fails to prevent registration of GHOULISH GLAMOUR
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In Advance Magazine Publishers Inc v Farleyco Marketing Inc (2009 FC 153, February 12 2009), the Federal Court of Canada has upheld a decision of the registrar of trademarks in which it was found that Advance Magazine Publishers Inc had not met its burden in opposition proceedings against the registration of the trademark GHOULISH GLAMOUR.
In 2003 Farleyco Marketing Inc filed an application for registration based on the proposed use of the trademark GHOULISH GLAMOUR in Canada for “Halloween cosmetics and eyelash accessories” (Application 1,199,765). Advance opposed the application based on its GLAMOUR trademarks, which are registered in connection with magazines, as well as numerous related print and electronic goods and services.
The registrar rejected the opposition on the grounds that:
- Advance had failed to demonstrate that the GLAMOUR marks were entitled to a scope of protection broad enough to render Farleyco’s trademark unregistrable; and
- Farleyco had met its burden of showing that confusion between the marks was unlikely.
On appeal, three questions were brought up before the Federal Court of Canada - namely:
- Did Farleyco meet its legal burden of establishing that there was no reasonable likelihood of confusion between the marks at issue?
- Was Advance’s evidence sufficient to show that the GLAMOUR marks should benefit from the broader scope of protection available to well-known and famous trademarks?
- Was Farleyco entitled to the registration of its mark?
First, the court dealt with the additional evidence which was adduced on appeal by both parties. In light of the substantial nature of this evidence, the court was of the opinion that the matter at hand should be examined anew.
The court held that during the opposition proceedings, none of the evidence permitted the finding that either party’s mark had become known in Canada to any significant extent. Although the new evidence filed by Advance remedied that by establishing that its GLAMOUR marks had acquired some distinctiveness through use in Canada (the magazine has been distributed in the country since 1938), it did not persuade the court that consumers associated the products featured in the magazine and in its electronic expansions with the GLAMOUR marks. To be more precise, even though Advance advertised various cosmetic products in its magazine, the court believed that by doing so, Advance did not actually “compete with its own advertisers in, for instance, the manufacture, promotion and sale of cosmetics”.
Therefore, the court found that no licence of the GLAMOUR marks existed in favour of product manufacturers, nor did it find any evidence that could justify that the distinctiveness acquired by the marks would extend to Farleyco’s goods. In fact, the court was of the view that the term 'glamour' is descriptive of an entire industry which Advance and Farleyco are part of and wish to profit from.
The court also agreed with Farleyco’s allegations to the effect that:
- a distinction existed between the goods associated with the trademarks;
- Halloween eyelashes on the one hand, and magazines and related goods and services on the other, do not usually originate from similar sources; and
- the goods covered by the marks are sold and advertised in a different manner.
The court also considered surrounding circumstances such as:
- the presence of other trademarks consisting of or comprising the word 'glamour'; and
- the exposure of consumers to that word.
Moreover, the court found no evidence of actual confusion between the marks.
Hence, it was confirmed that Farleyco had satisfied the onus resting upon it and the appeal was dismissed.
Iana Alexova, Léger Robic Richard LLP, Montreal
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