Victoria's Secret fails to prevent registration of VALENTINE SECRET


In Eclectic Edge Inc v Victoria’s Secret Stores Brand Management Inc (2015 FC 453), the Federal Court has allowed the registration of three VALENTINE SECRET marks, but refused the registration of the mark VS A SECRET THAT WOMEN LOVE.

Eclectic Edge sought to register four marks based on use in Singapore and on proposed use in Canada. Each was refused by the registrar. The four applications concerned the marks VALENTINE SECRET, VALENTINE SECRET (and design), VALENTINE SECRET LINGERIE (and design) and VS A SECRET THAT WOMEN LOVE (and design). The proposed marks were to be used with women’s clothing and undergarments, among other things. Victoria’s Secret had opposed.

On appeal to the Federal Court, the first three listed applications above were allowed. Only VS A SECRET THAT WOMEN LOVE (and design) was refused on the ground that it was likely being confusing with Victoria’s Secret’s VS and VICTORIA’S SECRET marks.

New evidence filed on appeal included evidence that ‘secret’ was a commonly appearing word for trademarks, applications for trademarks and business names. As a result, the court found that a purchaser would focus on the remaining part of the marks to distinguish them. For example, given the differences in appearance and sound between the VICTORIA’S SECRET mark and the VALENTINE SECRET marks, the court held there was no likelihood of confusion.

As to the last VS mark, the court found that Victoria’s Secret’s marks VS SPORT and VS PRO were extremely well known as the abbreviation of the VICTORIA’S SECRET marks and, therefore, the proposed mark would likely be confusing.

Chantal Saunders, Beverley Moore and Adrian J Howard, Borden Ladner Gervais LLP, Ottawa

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