Canadian Media Houses Battle Over Fashionable Trade-marks

By Ashlee Froese of Gilbert's LLP

A decision was recently released relating to Toronto Life Publishing Company Limited and its successor company 1772887 Ontario Limited taking on Bell Canada in respect of its fashion-related blog in an opposition proceeding.  (OK - typing out 1772887 Ontario Limited and Toronto Life Publishing Company Limited throughout this article is a bit of a yawner - we're going to collectively refer to them as Toronto Life for the rest of this article).

Let's break it down.  Bell Canada sought to register a trade-mark FASHIONISM in Canada in association with a fashion, beauty and lifestyle related blog.  Toronto Life wasn't feeling this based on its trade-mark portfolio comprised of TORONTO LIFE FASHION, MONTREAL FASHION MAGAZINE, VANCOUVER FASHION MAGAZINE, CANADA FASHION MAGAZINE, TORONTO FASHION MAGAZINE and FASHION MAGAZINE, all registered or applied for in association with magazines.  Taking advantage of the opportunity to challenge Bell Canada's right to register the trade-mark FASHIONISM, Toronto Life opposed Bell Canada's trade-mark application.

Now for those non-lawyer readers of CanadaFashionLaw, let's back it up and go over opposition proceedings and where it fits in with the whole trade-mark registration process.

Conducting branding audits of your company and obtaining trade-mark registrations is a prudent business move.  Trade-mark registrations confer a number of benefits:

• Prima facie evidence of trade-mark rights
• Canada-wide protection
• Infinite renewable registration periods 
• Access to federal court judgments

The list goes on.  Suffice it to say, if you're looking to push the notoriety of your brand it makes sense to protect it in the best way possible: trade-mark registrations. 

Obtaining a trade-mark registration in Canada is an involved process and can take approximately two years.  As such, there are a number of stages within the registration process, one of which is opposition proceedings.  This allows other brand owners the opportunity to block a trade-mark from registering.  Taking advantage of the opposition period can be a useful tool in proactively protecting your company's brand. 

Okay.  Trade-marks 101 is done (for now) - let's get back to Toronto Life and Bell Canada. 

Toronto Life took the position that FASHIONISM was too similar to its various FASHION trade-marks.  Not surprisingly, Bell Canada challenged Toronto Life's assertions and defended its right to the trade-mark FASHIONISM. 

Overall, Toronto Life was not successful in opposing Bell Canada's trade-mark application based in part on the following reasoning by the Trade-marks Opposition Board:

• This matter was not exceptional and, therefore, did not warrant an examination into bad faith.
• Although the trade-mark registrations relied upon by Toronto Life were valid, its trade-mark applications were abandoned or refused.
• The parties' trade-marks are similar in as much as they all incorporate the word FASHION, which is suggestive of the parties' wares and services (i.e. publications whose subject matter is fashion).
• Given the suggestive nature of the trade-marks, Toronto Life's trade-marks lack inherent distinctiveness. 
• With respect to Bell Canada's trade-mark, the addition of the suffix -ISM brings the trade-mark FASHIONISM into the realm of a coined word, thereby having a greater degree of inherent distinctiveness than that of Toronto Life.  
• In going through the confusion test, the Trade-marks Opposition Board agreed that there was an overlap in services and channels of trade.
• However, there was no similarity between the "striking "ISM" element" of Bell Canada's trade-mark and those of Toronto Life's trade-marks.

Toronto Life's claims were each rejected and Bell Canada's FASHIONISM trade-mark application successfully moved through the opposition stage.  

View more from Canada Fashion Law and @BrandFashionLaw

(C) Ashlee Froese, 2011. All rights reserved.

The contents herein are for informational purposes and do not constitute legal advice. It is strongly recommended that you seek a professional legal opinion in the event of a legal dispute.

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