Eclectic Edge Inc. v. Victoria’s Secret Stores Brand Management, Inc. 2015 FC 453

Eclectic Edge sought to register four marks based on use in Singapore and on proposed use in Canada. Each was refused by the Registrar. The four applications concerned VALENTINE SECRET, VALENTINE SECRET & DESIGN, VALENTINE SECRET LINGERIE & DESIGN and VS A   SECRET THAT WOMEN LOVE & DESIGN. The proposed marks were to be used with women’s clothing, undergarments, etc. Victoria’s Secret had  opposed.

On appeal to the Federal Court, the first three listed applications above were allowed. Only VS A SECRET THAT WOMEN LOVE & DESIGN was refused for likely being confusing with the Respondent’s VS  and VICTORIA SECRET  marks.

New evidence filed on appeal included evidence that “secret” was a commonly appearing word for  trademarks, applications for trademarks, and business names. As a result, the Court found a purchaser would focus on the remaining part of the marks to distinguish the two. For example, given the differences in appearance and sound between the VICTORIA’S SECRET mark and the Respondent’s VALENTINE SECRET mark, the Court held there was no likelihood of confusion.

As to the last VS mark, the Court found that the Respondent’s marks VS SPORT and VS PRO is extremely well known as the abbreviation of the VICTORIA’S SECRET marks, and the proposed mark would likely be confusing.