Doris Hosiery Mills Ltd. v. Warnaco Inc.
2004 FC 1781, O'Reilly J.
Appeal from Trade Marks Opposition Board's ( T.M.O.B. No. 145 (QL)) refusal to allow applicant to register trade-mark "Secret" for underwear, lingerie--Applicant using trade-mark for hosiery, pantyhose for many years and wanting to expand line--Respondent opposing trade-mark application primarily on ground "Secret" mark would cause confusion with own trade-mark for "Secret Shapers" undergarments-- Respondent selling undergarments under "Secret Shapers" since September 1995--Using "Secret Shapers" mark in conjunction with word "Olga" or "Olga's"--Applicant using trade mark "Secret" for hosiery since 1967--Later adding other products to line--Applying to use "Secret" mark for undergarments in October 1995--Onus on applicant to show proposed mark "unlikely to create confusion" with other marks--Board not erring in requiring applicant to "establish" no reasonable likelihood of confusion in using mark-- Concluding applicant not meeting onus given reasonable probability of confusion as to source of goods if applicant using "Secret" mark on same kind of wares as those sold by respondent--Applicant filing three new affidavits on appeal--Relying on concept of "family" of marks in McDonald's Corporation et al. v. Yogi Yogurt Ltd. et al. (1982), 66 C.P.R. (2d) 101 (F.C.T.D.) to support trade-mark application--McDonald's holding owner of series of well-known, related trade-marks can rely on family of marks to show confusion if another company makes use of similar mark within same range of wares--Present case distinguish-able since issue whether proposed marks confusing, not whether multiplicity of trade-marks can be used by owner to show use by other company's similar mark causing potential confusion--Board also erring by focussing too much on whether applicant having established family of trade-marks instead of considering significance of array of applicant's marks in relation to issue of confusion--Evidence suggesting consumers sufficiently familiar with applicant's trade-mark "Secret", wares with which mark currently associated such that would probably believe closely-related products (undergarments) deriving from respondent--Affidavit evidence relating to applicant's licensing arrangement with Sears Canada Ltd. showing Sears' use of "Secret Slimmers" mark enuring to applicant's benefit--Sears referring to licensing arrangement with applicant in catalogues--Under Trade-marks Act, s. 50(1), (2), when public notice of licence given and owner of licence identified, licensee's use of trade-mark enuring to owner's benefit--Act, s. 4(1) defining "use" as including situations where trade-mark associated with wares in manner communicating to consumer existence of connection between mark and wares--Sears' association of "Secret Slimmers" mark with corresponding product in catalogue constituting "use" of applicant's mark--Act not requiring proof licensor exercising control over licensee's use --Once proving public notice of licensed use of trade-mark and identity of mark's owner given, presumption owner having control over character and quality of wares with which mark associated--Board erring in concluding licensing arrangement between applicant, Sears not enuring to applicant's benefit--Applicant discharging burden of showing consumers not likely confused about source of undergarments labelled with "Secret" mark--Evidence relevant to issue of confusion also relevant to issue of distinctiveness--Evidence establishing "Secret" brand distinctive in relation to hosiery, pantyhose, consumers likely to find brand distinctive in relation to undergarments--Appeal allowed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4, 50 (as am. by S.C. 1993, c. 44, s. 233; 1999, c. 31, s. 211(F)).