Avon Products, Inc. v. Farleyco Marketing Inc. – Successful Trademark Opposition

Jennifer Dove - December 2010

Congratulations to Susan Chao of MBM on a successful Trademark Opposition on behalf of Avon Products, Inc.

The Trademarks Opposition Board recently released its decision in Avon Products, Inc. v. Farleyco Marketing Inc. 2010 TMOB 186. This matter concerned Avon’s opposition to the registration of the trademark "MesmorEyes" in association with various types of eye beauty products by Farleyco Marketing Inc.

Avon, represented by MBM Intellectual Property Law, was primarily relying on its prior registration and/or use of the trademarks MESMERIZE (Reg. No. TMA442,464) with women’s fragrance products, MESMERIZE FOR MEN (Reg. No. TMA635,139) with soap, cologne, hair and body wash, etc. and MESMERIZE FOR HER.

An interesting issue arose when the Opponent’s affiant became unavailable for cross-examination. The Opponent filed the affidavit of Ms. Lebel of Avon Canada, Inc. in support of the opposition. After an order for her cross-examination had been issued, the Opponent informed the Registrar that Ms. Lebel was unavailable for her cross-examination. Rather than filing a new affidavit by another witness to replace the evidence of Ms. Lebel, the Opponent presented a new affiant, Colleen Leithman, also of Avon Canada Inc., who "adopted" the affidavit of Ms. Lebel as her own and was cross-examined on her behalf.

In light of this somewhat unusual scenario, the parties were invited to make supplemental written arguments on the issue of whether the affidavit of Ms. Lebel and the transcript of the cross-examination of Ms. Leithman could be accepted as part of the record.

MBM drew the Board’s attention to the Federal Court decision Nedship Bank N.V. v. "Zoodotis" (The) (2000), 2000 CarswellNat 1238 which concerned a similar situation relating to ship sale priorities determination. In light of this decision, as well as a Practice Notice stating that "If the parties are in agreement that a particular form of evidence should be accepted, the Registrar will generally accept it", the Board decided to accept both forms of evidence.

The Opposition Board found in favour of the Opponent on the issue of confusion between MesmorEyes and MESMERIZE, highlighting the similarities in the marks in appearance, sound, and in the ideas suggested by them, as well as the overlap in the nature of the wares (women’s beauty products) and channels of trade.

With respect to the channels of trade, the Board noted that Avon’s registration was not limited to any particular channels of trade. Thus, although evidence showed that the parties’ respective goods were sold through different channels (drugs stores vs. through catalogues to sales representatives or online), it is the "normal" channels of trade for such products that are considered.

The Board also found in favour of the Opponent on the issue of distinctiveness.