• Federal Court Upholds Refusal of Four Applications for Marks Containing the Word Secret
  • January 18, 2016 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Eclectic Edge Inc v. Gildan Apparel (Canada) LP, 2015 FC 1332

    Eclectic Edge Inc. ("Eclectic") previously filed applications to register four trademarks containing the words "valentine" and "secret,” based on proposed use in association with several goods in the nature of women's clothing, undergarments and lingerie. The respondent Gildan Apparel (Canada) LP ("Gildan"), through one of its predecessor entities, opposed the registration on the basis of reasonable likelihood of confusion with its own registered trademark SECRET and numerous other trademarks containing the word SECRET (the "SECRET Marks"). The Registrar of Trademarks refused Eclectic's four applications, and Eclectic appealed from those decisions.

    One issue on appeal related to judicial comity. Eclectic claimed that judicial comity should lead the Court to follow the conclusions of Justice Manson in the recent Eclectic Edge Inc v Victoria's Secret Stores Brand Management, Inc, 2015 FC 453 decision involving Eclectic's VALENTINE SECRET Marks and the VICTORIA'S SECRET trademarks. Conversely, Gildan argued that the principle of judicial comity should instead convince the Court to echo the judicial findings of fact and law made by Justice Tremblay-Lamer in Cortefiel SA v Doris Inc, 2013 FC 1107, which related to the WOMEN'SECRET trademark and Gildan's SECRET Marks. The Court did not agree with either party on the issue of judicial comity because it held that comity only applies to determinations of law, and not to findings of facts where there is a different factual matrix or evidentiary basis between the two cases. The Court concluded that the current appeal involves a different issue, based on different facts, and opposing different parties, and assessed the current appeal based on the evidentiary record and arguments before him.

    The Court was not persuaded the new evidence filed in the appeal would have materially affected the Registrar's decisions. Therefore, the Court applied the reasonableness standard of review and on that basis dismissed the appeal.