Federal Court of Canada Justice Michael Manson overturned three of four decisions made by the registrar of trademarks in part because of the common use of the word “secret” for companies that sell lingerie.
The judge approved the marks for Valentine Secret, a stylized way of writing the name and one that reads “Valentine lingerie Secret.” A logo with Vs and the subheading “a secret that women love” was found to be too similar to Victoria’s Secret “given the fame and notoriety of the respondent’s VS trademarks,” Manson concluded.
Electric Edge Inc., an Indonesian-based company that sells the Valentine Secret products, originally filed the trademarks in 2008 for proposed use in Canada. Victoria’s Secret Stores Brand Management Inc. opposed the registrations, arguing that the Valentine Secret marks were not distinctive.
The Federal Court heard evidence about the sales of Victoria’s Secret products in Canada, both in stores and online, based on its widely distributed catalogues. All of its goods sold in this country have the Victoria’s Secret trademark affixed on them somewhere, the court was told.
“The only-real issue for the Court to decide is whether the applicant’s applied-for trademarks are likely to be confusing with the respondent’s asserted VS marks,” said Manson, in the decision issued earlier this month.
“There is no question that the Victoria’s Secret and VS marks are well-known, if not famous in Canada,” the judge said. The proper approach however, is “to look at the trademarks without dissecting them into component parts, as a matter of first impression to the relevant public,” wrote Manson.
Eclectic Edge presented evidence that a search of the ThomsonCompuMark databases revealed that there are more than 300 registrations and pending applications that incorporate the word “secret” for use in the sale of clothing or cosmetics. As well, there are 170 corporations or registered businesses with “secret” in their name.
“The new evidence shows that the use of “secret” is relatively common place in Canada by third parties in association with lingerie, women’s clothing and women’s undergarments,” Manson concluded.
The judge compared the use of the word secret in the lingerie industry to that of “nutri” in the food products sector. “Where two trademarks contain a common element that is also contained in a number of other trademarks, the common nature of the element in the market causes consumers to pay closer attention to the other non-common features of the marks,” wrote Manson in explaining why he found there is “no likelihood of confusion” between Valentine Secret and Victoria’s Secret.