Lady Gaga fails to prevent registration of 'gaga' mark for baked goods

Canada

Lady Gaga, through her company Ate My Heart Inc, has failed in her attempt to oppose registration in Canada of the trademark GAGA FOR GLUTEN-FREE by The Shortbread Bakery Ltd. The Trademarks Opposition Board, in its decision of November 5 2015, held that there was no likelihood of confusion between LADY GAGA, registered in Canada for use in association with various entertainment services, music recordings, clothing and cosmetics, and GAGA FOR GLUTEN-FREE for baked goods. 

The applicant’s evidence consisted primarily of an affidavit from the owner and founder of the bakery company, Ms Robyn Kay. Ms Kay explained how she developed recipes for various gluten-free cookies, launching and promoting them under the brand name GAGA FOR GLUTEN-FREE starting in 2011. The cookies are now available in over 280 retailers across seven Canadian provinces.

Lady Gaga’s evidence, filed primarily through an affidavit of her father Joe Germanotta, established her background as a singer, songwriter, performing artist, record producer, philanthropist and businesswomen. The applicant did not contest that Lady Gaga is a well-known entertainer, having sold millions of albums and singles. However, the applicant did contest any notion that there would be a likelihood of confusion given the differences between the marks and the goods and services, and that 'gaga' is a dictionary word in English and French meaning, among other things, 'crazy'. 

In addressing the disparate nature of the parties’ goods and services, the opponent did file evidence to suggest that Lady Gaga had at some point began adhering to a gluten-free diet, and that she was once associated with a charitable event in December 2011 that involved selling cookies at Barney’s department store in New York. The Opposition Board stated, however, that there was no evidence that any Canadians had purchased those cookies or even knew of the event or the gluten-free diet.

Most importantly, in terms of the marks themselves, the Opposition Board held that they were quite different in connotation and also differed considerably both visually and phonetically. In the case of GAGA FOR GLUTEN-FREE, the board held “it likely as a matter of first or immediate impression, that it would be read as a phrase which suggests the idea of being ‘gaga’ (ie, crazy) for ‘gluten-free’”. The board was not persuaded that the average consumer would perceive the word 'gaga' to be “anything other than this commonly understood meaning”. In contrast, the board was of the view that LADY GAGA would be read as a “reference to a person (iem a ‘lady’) by the name of ‘gaga’”.

After examining all the factors, the Opposition Board concluded that, despite how well known, if not famous, Lady Gaga may be as a musical entertainer, the marks themselves were too dissimilar and the goods and channels of trade too disparate for there to be any mistaken inference as to source. Similarly, the trademark GAGA FOR GLUTEN-FREE would not falsely suggest any connection with the individual Lady Gaga:

Overall, I do not consider the evidence in this case sufficient to enable me to conclude, on a balance of probabilities, that the average person who would purchase the applicant’s baked goods and other food products bearing the mark [GAGA FOR GLUTEN-FREE] would falsely assume that the living individual known as Lady Gaga has sponsored/approved or licensed the applicant’s goods or that the applicant’s goods are a spin-off from or somehow otherwise connected to or associated with Lady Gaga.”

The decision is consistent with Canadian jurisprudence which has long held that fame alone will be insufficient to create a likelihood of confusion when the associated goods and services are dissimilar.

Kelly Gill, Gowling Lafleur Henderson LLP, Toronto

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