Likelihood of confusion between GOURMET and WISE GOURMET
In Advance Magazine Publishers v Wise Gourmet Inc (2009 FC 1208, November 24 2009), Advance Magazine Publishers, the owner of the magazine Gourmet, has successfully appealed a decision of the Opposition Board in which the latter had held that there was no likelihood of confusion between the trademarks GOURMET and WISE GOURMET.
The case arose from Wise Gourmet Inc's application to register the trademark WISE GOURMET for various food products and printed publications. Advance Magazine opposed the registration of the mark based on its registered trademark GOURMET for magazines and other publications.
In rendering its decision, the Opposition Board found that although the parties’ goods were related and overlapped, the trademarks at issue were not inherently distinctive, since GOURMET and WISE GOURMET both conveyed the idea of cuisine and love of food. The Opposition Board concluded that without any evidence of acquired reputation, Advance Magazine’s GOURMET mark should be entitled to a narrow scope of protection and, therefore, confusion with WISE GOURMET was unlikely.
On appeal before the Federal Court, Advance Magazine submitted substantial new evidence by way of two lengthy affidavits. Since many of the findings of the Opposition Board were negated by this new evidence, a determination de novo by the court was required.
On the issue of distinctiveness, the court found that although the GOURMET mark was not inherently distinctive, its use over time had gained Advance Magazine a certain reputation in Canada in association with its magazine. In reaching its decision, the court also took in consideration the similar nature of the parties’ goods and the fair degree of resemblance between GOURMET and WISE GOURMET.
In view of the foregoing, the court concluded that there was a likelihood of confusion between the marks at issue, such that WISE GOURMET could not be registered. Wise Gourmet's application was thus refused.
Catherine Daigle, ROBIC LLP, Montreal
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