“URBAN PLANET” and “PLANET”: A trade-mark dispute that was out of this world

On December 19, 2014, Justice Boswell of the Federal Court released the judgment and reasons in Jacques Vert Group Limited (“JVG”) v. YM Inc. (Sales). The case was an appeal from a decision of the Trade-Marks Opposition Board, in which the Board refused to allow JVG’s request for an extension of its trade-mark.

On August 23, 1991, Planet Fashion Ltd. registered the word “PLANET” as a trade-mark covering a number of clothing items for women and girls. On December 21, 2007, Planet Fashion Ltd. assigned its trade-mark registration for “PLANET” to Jacques Vert PLC (the predecessor in name to JVG). On April 24, 2008 JVG applied to extend its trade-mark registration for “PLANET” to include a number of additional items, including jewelry, watches, handbags, etc. All of the items bearing the mark “PLANET” were sold in boutiques located in Hudson’s Bay Company outlets across Canada.

YM Sales, which had trade-marked the words “URBAN PLANET” to cover retail clothing store services, opposed the extension on three grounds: (i) that the “PLANET” trade-mark had not been used as of the claimed date of first use; (ii) that it was confusing with “URBAN PLANET”; and (iii) that it was non-distinctive.

The Board agreed with the second and third grounds raised by YM Sales, and refused JVG’s request for an extension on the basis of there being a likelihood of confusion between the parties’ respective marks. In light of this confusion, the Board also found the mark “PLANET” to be non-distinctive.

JVG appealed the Board’s decision. It is worth noting that YM Sales chose not to file materials in response to this appeal and left the matter uncontested. As part of the appeal, JVG submitted new evidence by way of affidavits, including copies of the webpages for the Bay and Urban Planet, as well as statements from management of JVG as to the use and sales of the garments and accessories produced and sold under the “PLANET” mark. This new evidence had a significant effect. As the evidence would have materially and significantly affected the Board’s decision, Justice Boswell held that the court was to assess the decision of the Board on the standard of correctness.

Justice Boswell disagreed with the Board’s decision and held that there was no reasonable likelihood of confusion between “URBAN PLANET” and JVG’s proposed extension of its mark “PLANET”, and therefore, the mark was distinctive. Justice Boswell relied upon the factors identified in section 6(5) of the Trade-marks Act in determining whether the marks were confusing. The court reached a number of conclusions with respect to the section 6(5) analysis, including:

• Both of the marks were inherently distinctive and had become known in Canada;
• Both of the marks had been used for about the same length of time;
• The applied for extension of the “PLANET” mark may be confusing with the “URBAN PLANET” mark, as a casual consumer might associate the retail services of a clothing store with any wares marked similarly, however, this factor alone is not determinative of the issue of confusion;
• Goods bearing the “PLANET” mark are not sold in the “URBAN PLANET” stores, and the “PLANET” branded goods are significantly more expensive than the goods sold in “URBAN PLANET” retail stores;
• The inclusion of the word urban in the mark “URBAN PLANET”, provides a distinct impression/image in the mind of consumers, that differentiates it from the word “PLANET” alone; and
• An adverse inference can be drawn from the absence of any actual confusion between the two marks. Both marks have co-existed in Canada for almost their entire histories and the parties have a comparable number of retail outlets that overlap geographically. The fact that there is no evidence of any actual confusion leads to an inference that a casual consumer would not be confused.

In light of the foregoing, Justice Boswell allowed the appeal, and granted JVG’s request for an extension of the trade-mark “PLANET”.

A copy of the decision can be found here