Molson Canada v. Anheuser-Busch Inc.

Molson Canada v. Anheuser-Busch Inc.
Court (s) Database
Federal Court Decisions
Date
2003-11-05
Neutral citation
2003 FC 1287
File numbers
T-926-01
Notes
Digest
Decision Content
Date: 20031105
Docket: T-926-01
Citation: 2003 FC 1287
Toronto, Ontario, November 5th, 2003
Present: The Honourable Mr. Justice O'Keefe
IN THE MATTER OF AN APPLICATION for the Trade-mark
MICHELOB GOLDEN DRAFT under Serial No. 693,432,
filed by Anheuser-Busch, Incorporated;
AND IN THE MATTER OF Sections 56 and 59, of the Canadian
Trade-marks Act, R.S.C. 1985, c. T-13
BETWEEN:
MOLSON CANADA
Applicant
and
ANHEUSER-BUSCH, INCORPORATED
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an appeal by Molson Canada ("Molson","appellant" or "opponent"), pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act"), of the decision of the Registrar of Trade-marks, dated March 28, 2001. The Registrar of Trade-marks rejected Molson's opposition to the registration, by Anheuser-Busch, Inc. ("Anheuser" or "respondent"), of the trade-mark application for MICHELOB GOLDEN DRAFT, based on proposed use of the trade-mark in Canada in association with a list of wares.
[2] Molson seeks an order:
1. Allowing the appeal and reversing the decision of the Registrar of Trade-marks and holding that the respondent's trade-mark MICHELOB GOLDEN DRAFT is not registrable and is not distinctive and that the respondent is not the person entitled to registration of that trade-mark; and
2. costs of this appeal.
Background
Introduction
[3] Molson opposes Anheuser's trade-mark application No. 693,432 for the trade-mark MICHELOB GOLDEN DRAFT.
[4] The application was based on proposed use in Canada in association with a wide variety of items including clothing, sports equipment, bags, textiles, gift and novelty items, stationary items, games, soaps, jewellery, beer bread mix and chocolates. The application was also based on use and registration of the trade-mark in the United States in association with "clothing, namely gloves, shirts, jackets and hats". Subsequent to opposition proceedings, Anheuser disclaimed the right to the exclusive use of the word GOLDEN apart from its trade-mark.
[5] Anheuser's application was filed on November 12, 1991. It was amended on November 17, 1995. Anheuser claimed and was accorded a priority filing date of August 9, 1991 based on its application for registration of the trademark in the United States.
[6] The application was advertised in the Trade-marks Journal on March 3, 1993.
[7] Molson filed a statement of opposition on July 28, 1993. An amended statement of opposition was filed on September 17, 1998. The opponent based its opposition on the following grounds (as summarized in the Registrar's decision):
a) The present application does not comply with the requirements of section 30 of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use or register its trade-mark in view of the existence of the opponent's registration for its trade-marks identified below.
b) The present application does not comply with the requirements of section 30 of the Trade-marks Act in that the applicant did not intend to use the applied for trade-mark as alleged in the application or at all. Further, the applicant has not used the applied for trade-mark in the United States, as alleged. Moreover, any use or intention to use the applied for trade-mark is not as a trade-mark, but in a decorative manner.
c) The applied for trade-mark is not registrable in view of paragraph 12(1)(d) of the Trade-marks Act because it is confusing with its registered trade-marks covering "alcoholic brewery beverages" or "brewed alcoholic beverages" listed below:
Trade-mark Registration No.
MOLSON'S GOLDEN ALE & Design 100,941
GOLDEN ALE & Design 114,145
MOLSON GOLDEN ALE & Design 161,252
MOLSON GOLDEN & Design 290,098
MOLSON GOLDEN 292,103
GOLDEN ALE & Design 293,246
MOLSON GOLDEN & Design 309,841
GOLDEN 498,157
The opponent also relied upon its certification mark MOLSON GOLDEN & Design, registration No. 471,067, under the paragraph 12(1)(d) ground. ...
d) The applicant is not the person entitled to registration of the applied for trade-mark because, as of the filing date of the present application and at all other times, the trade-mark MICHELOB GOLDEN DRAFT was confusing with the opponent's above identified trade-marks previously used in Canada.
e) The applied for trade-mark is not distinctive of the foregoing. Further, the opponent has extensively sold brewed alcoholic beverages in Canada and advertised same in association with the aforementioned trade-marks, all of which contain the word GOLDEN. It is common in the trade for brewers such as the applicant and the opponent to market various products unrelated to beer such as the products listed in the present application. The marketing of such products is ancillary to the brewer's primary business and serves to generate additional revenue to the brewer and also to advertise its brands of beer. The opponent has extensively sold such "merchandising items" in Canada in association with its marks all of which contain the word GOLDEN. As a result of such extensive sales and advertising of such products bearing said trade-marks, consumers in Canada would recognize that the word "golden" when used in connection with such products is distinctive of the opponent. Therefore, the applied trade-mark cannot be distinctive of the applicant. Further, the trade-mark GOLDEN is distinctive of the opponent and therefore the applied for trade-mark cannot be distinctive of the applicant.
[8] Anheuser filed a counter-statement in response to the statement of opposition on November 5, 1993.
[9] Before the Registrar of Trade-marks, Molson submitted as its evidence, the affidavits of Katherine Davie, Blair Shier and Hui Ming Zheng. Anheuser submitted as its evidence, the affidavits of William S. Campbell, L. Jane Sargeant, Todd D. Bailey, Cynthia L. Martens, Robert W. White, Janice M. Bereskin and Isis E. Caulder.
[10] Before the Federal Court, Molson submitted further evidence by filing the affidavits of Michael S. Downey, Kimberley Lane, Lynda Palmer and D. Jill Roberts. Anheuser submitted further evidence by filing the affidavits of Frederik N. Meyer, Lloyd Potter, Sharyn Costin, and David Sunday.
[11] By decision dated March 28, 2001, the Registrar of Trade-marks rejected Molson's opposition to the registration of the trade-mark. The reasons of the Registrar are outlined below.
[12] The Registrar found that the facts relied upon by Molson did not support a ground of non-compliance with subsection 30(I) of the Act.
[13] The Registrar stated that the application formally complied with subsections 30(d) and 30(e) of the Act. The Registrar found that Anheuser's evidence was not inconsistent with its claim that it intended to use its mark as a trade-mark in association with the wares covered in the present application.
[14] With respect to the subsection 30(d) issue, the Registrar did not consider the absence of merchandising products bearing Anheuser's trade-mark from its catalogues as being "clearly" inconsistent with its claim that it has used the trade-mark MICHELOB GOLDEN DRAFT in the United States. As such, it dismissed this aspect of the second ground of opposition.
[15] The Registrar stated that the remaining grounds of opposition all turned on the issue of confusion. It stated that the opponent's strongest ground was that based on paragraph 12(1)(d) of the Trade-marks Act, in view of the opponent's registered trade-mark GOLDEN, registration No. 498,157 and its registered certification mark MOLSON GOLDEN & Design, registration No. 471,067.
[16] The Registrar found Anheuser's trade-mark to be inherently distinctive when considered in its entirety as applied to the wares covered in the present application. Likewise, the Registrar found that the opponent's registered certification mark MOLSON GOLDEN & Design possesses some measure of inherent distinctiveness when considered in its entirety as applied to the wares covered in registration No. 471,067 even though the word MOLSON has a surname significance. Citing two Court of Appeal cases, the Registrar found that the opponent's registered trade-mark GOLDEN is clearly descriptive of brewed alcoholic beverages and therefore possesses little inherent distinctiveness.
[17] With respect to the extent to which the trade-marks have become known and the length of time the marks have been in use, the Registrar noted that Anheuser had not yet commenced use of its trade-mark in Canada and therefore had to be considered as not having become known to any extent in this country. Likewise, the Registrar noted that no evidence of use of the certification mark MOLSON GOLDEN & Design was furnished by the opponent and that it too must be considered as not having become known to any extent in Canada. On the other hand, the Registrar found that the opponent's registered trade-mark GOLDEN has become well known in Canada in combination with its house mark MOLSON or MOLSON'S in association with brewed alcoholic beverages.
[18] As for the nature of the wares of the parties and the nature of the trade associated with their respective wares, the Registrar found that Anheuser's wares differ from the brewed alcoholic beverages covered in registration No. 498,157. However, as the wares are intended to be merchandising items related to its MICHELOB GOLDEN DRAFT beer, the Registrar noted that the channels of trade associated with Anheuser's merchandising items and the opponent's brewed alcoholic beverages could potentially overlap. Further, the Registrar found that Anheuser's wares overlap the wares covered in registration No. 471,067 and that there could be potential overlap in the channels of trade associated with these wares.
[19] In considering the degree of resemblance between the trade-marks at issue, the Registrar found there was little similarity in appearance, sound and in the ideas suggested by Anheuser's trade-mark MICHELOB GOLDEN DRAFT and the opponent's certification mark MOLSON GOLDEN & Design. However, the Board found there was some similarity in appearance, sound, and in the ideas suggested by Anheuser's mark and the opponent's registered trade-mark GOLDEN, as Anheuser's mark includes the entirety of the opponent's mark.
[20] As a further surrounding circumstance in assessing the likelihood of confusion between the trade-marks at issue, the Registrar took into consideration the affidavit evidence of Ms. Bereskin. The Registrar found that given the large number of marks containing the word GOLDEN on the Register (excluding those marks standing in the name of the opponent) from a database search of the records of the Canadian Trade-marks Office, it would be expected that a fair number of the marks would be in use and that consumers would therefore be able to distinguish such marks in the marketplace.
[21] The Registrar also noted that there was affidavit evidence of the use in Canada by two brewers, other than the opponent, of the word GOLDEN on the labels of their bottles of beer. The Registrar noted that the evidence did not disclose the extent of the use of the marks in Canada.
[22] In summary, the Registrar stated:
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Even considering that the wares and the nature of the trade of the parties are the same, I still find that there would be no reasonable likelihood of confusion between the applicant's trade-mark and the opponent's registered certification mark MOLSON GOLDEN & Design, registration No. 471,067 in that there is little similarity in appearance, in sounding or in the ideas suggested by the applicant's trade-mark MICHELOB GOLDEN DRAFT and the opponent's certification mark MOLSON GOLDEN & Design when these marks are considered in their entireties. Furthermore, the state of the register evidence submitted by way of the Bereskin affidavit points to there being relatively common adoption of the mark GOLDEN in relation to various of the wares covered in the present application and in the opponent's registered certification mark.
With respect to the opponent's remaining trade-marks and, in particular, its registered trade-mark GOLDEN, I likewise find that there would be no reasonable likelihood of confusion between the applicant's trade-mark MICHELOB GOLDEN DRAFT and any of these marks in that the applicant's wares differ from the brewed alcoholic beverages associated with the opponent's marks even though, as noted above, there could be a potential overlap in the nature of the trade associated with the applicant's wares and the opponent's brewed alcoholic beverages. Moreover, there is only some similarity in appearance, in sounding and in the ideas suggested by the applicant's trade-mark and the opponent's trade-mark GOLDEN which is an inherently weak mark which has only been shown to have become well known in Canada in combination with its house mark MOLSON or MOLSON's. Furthermore, the state of the register evidence submitted by way of the Bereskin affidavit points to there being relatively common adoption of the mark GOLDEN in relation to various of the wares covered in the present application. Also, the applicant's evidence establishes that there has been some measure of third party use of trade-marks including the word GOLDEN as applied to beer in the marketplace in Canada.
[23] The appellant, Molson, submits that the Registrar erred in fact and in law in rejecting its opposition based on subsections 30(d) and (e) of the Act and holding that Anheuser had met its burden of establishing that it intended to use the word MICHELOB GOLDEN DRAFT as a trade-mark in Canada on the wares covered in the application and that it had used the trade-mark in the United States in face of evidence to the contrary.
[24] The appellant submits that the Registrar erred in holding that the trade-mark MICHELOB GOLDEN DRAFT is not confusing with Molson's registered trade-mark GOLDEN and its family of registered trade-marks which include the word GOLDEN.
[25] The appellant submits that the Registrar further erred in holding that the ambit of protection for Molson's family of trade-marks, which include the word GOLDEN, should be limited on the basis that this word is often used along with the house mark MOLSON or MOLSON'S.
[26] The appellant submits that the Registrar further erred in considering state of the Register evidence on the issue of confusion as determinative when such evidence was inadmissible and irrelevant to the issues before it.
[27] The appellant submits that the Registrar further erred in law and exceeded its jurisdiction in attacking the validity of Molson's registered trade-mark GOLDEN within the scope of the opposition proceedings.
[28] The appellant submits that the Registrar erred both in fact and in law in failing to consider the fourth ground of opposition, namely that the trade-mark claimed in the application does not distinguish, nor is it adapted to distinguish the wares for which the trade-mark was applied from those of Molson.
[29] The appellant submits the Registrar erred in not differentiating between the material dates for the grounds of non-registrability, non-entitlement and non-distinctiveness which are separate and distinct grounds of opposition.
[30] The appellant submits that in the absence of additional evidence filed in the Federal Court, the standard of review of decisions of the Registrar, whether of fact or discretion, is reasonableness simpliciter. As additional evidence has been adduced that would have materially affected the Registrar's finding of fact or the exercise of its discretion, it is submitted that the standard of review is correctness. However, it is submitted that the Registrar's failure to distinguish between the differing pertinent dates on the issues of registrability and entitlement, the failure to address the issue of non-distinctiveness, the failure to take into account Molson's family of trade-marks and the exceeding of jurisdiction in attacking the registration of the trade-mark GOLDEN within the scope of opposition proceedings, all constitute errors of law, which justify a reversal of the Registrar's decision on any standard of review.
[31] In regard to compliance under section 30 of the Act, it is submitted that Molson has more than met the limited evidential burden under paragraphs 30(d) and (e) of the Act and that there is no evidence raised by the respondent to rebut the presumption raised by that evidence. It is submitted that the respondent has not met its legal burden and established that it ever had any intention of using its trade-mark in Canada in association with the wares covered in the subject application.
[32] In regard to inherent distinctiveness, pursuant to paragraph 6(5)(a) of the Act, the appellant submits there was no evidence before the Registrar to justify finding that its registered trade-mark GOLDEN is clearly descriptive. It is submitted that by treating the issue of inherent distinctiveness of the appellant's trade-mark GOLDEN as a matter of stare decisis, the Registrar committed an error of law. It is therefore submitted that the word "GOLDEN" has inherent distinctiveness in association with the wares covered under Molson's family of registered trade-marks and that this has been enhanced by the company's longstanding use and advertisement of its products in the Canadian marketplace. Further as Molson owns the registered trade-mark for the word GOLDEN, it is submitted that it must be both distinctive and valid as there is no evidence to the contrary.
[33] In regard to the length of time the trade-marks have been in use the appellant submits that paragraph 6(5)(b) of the Act clearly favours Molson as it has been selling beer under its GOLDEN family of trade-marks extensively and continuously since the mid-1950s, while the respondent has not yet commenced use of its trade-mark.
[34] In regard to the nature of the wares, pursuant to paragraph 6(5)©) of the Act, the appellant submits that the evidence clearly shows that the promotional wares of the parties under their respective trade-marks are overlapping. In addition, the promotional wares are closely associated with the parties' main product, namely beer.
[35] The appellant submits that the evidence establishes that the nature of the trade of the parties, pursuant to paragraph 6(5)(d) of the Act, would also be identical. It is submitted that where there is an overlap in the channels of trade and where there are directly competitive products, the likelihood of confusion is obvious.
[36] In assessing the degree of resemblance, pursuant to paragraph 6(5)(e) of the Act, it is submitted that the respondent has taken the whole of Molson's GOLDEN trade-mark and has incorporated it into its trade-mark. As licensing is common in the beer industry and given the alleged fame of the GOLDEN trade-mark it is submitted that there is an obvious possibility of confusion. It is submitted that the fact the word MOLSON also appears on the labelling does not in any way alter the distinctiveness of the GOLDEN mark. In view of the alleged fame of the GOLDEN trade-mark and the family of GOLDEN trade-marks owned by Molson, it is submitted that there is a real likelihood that upon seeing the respondent's trade-mark, that the average person might believe that this mark was either licenced or was another one of a series of trade-marks owned by Molson. It is submitted that the evidence of the state of the register filed by the respondent does not alter this fact and that the Registrar's reliance on the CD-ROM search constituted an error of law.
[37] In regard to additional surrounding circumstances, the appellant submits that because Molson is the owner of a family of trade-marks there is a greater likelihood of confusion that the public would consider another mark, with a common characteristic, as a product produced or licenced by Molson's.
[38] The appellant submits that the issue of distinctiveness is separate and apart from the issue of confusion. It is submitted that the Registrar simply failed to deal with the issue of non-distinctiveness and that this constitutes an error in law. It is submitted that the respondent has taken the whole of Molson's registered trade-mark GOLDEN and bracketed it between the geographical term "Michelob" and the generic word "draft". In addition, it is submitted that the evidence establishes that the respondent does not sell its promotional products, but uses them purely as a device to promote and sell its beer.
[39] In view of the above, it is submitted that the respondent has not discharged the constant and heavy onus upon it to establish that its trade-mark is registrable and distinctive and that it is the person entitled to registration.
Respondent's Submissions
[40] The respondent, Anheuser, submits that the points in issue are whether the Registrar erred in:
(a) finding that the evidence was not clearly inconsistent with Anheuser intending to use the trade-mark MICHELOB GOLDEN DRAFT in Canada;
(b) finding that the evidence was not clearly inconsistent with Anheuser having used the trade-mark MICHELOB GOLDEN DRAFT in the United States; and
©) finding no reasonable likelihood of confusion between the mark MICHELOB GOLDEN DRAFT, and Molson's GOLDEN and MOLSON GOLDEN trade-marks.
[41] The respondent submits that the new evidence filed in this appeal merely repeats and confirms the evidence which was before the Registrar and is not evidence which would have materially affected the Registrar's finding of fact or the exercise of its discretion. It is therefore submitted that the standard of review is reasonableness simpliciter.
[42] The respondent submits that the state of the register evidence shows a large number of registrations for marks including the word GOLDEN covering a broad range of wares related to those covered by the application in issue. It is submitted that such evidence is admissible and that the Registrar is entitled to draw inferences about the state of the marketplace from such information.
[43] The respondent submits that Molson's grounds of opposition under subsections 30(d) and (e) have no merit and the Registrar clearly did not err in dismissing these grounds. In regard to the subsection 30(d) ground, it is submitted that the respondent's evidence is not inconsistent with its claim to have used the mark MICHELOB GOLDEN DRAFT in the U.S. In regard to the subsection 30(e) ground, it is submitted that the respondent's evidence is not inconsistent with its claim to intend to use the trade-mark MICHELOB GOLDEN DRAFT in Canada with the promotional items covered by the application. It is submitted that there is no evidence of how the respondent intends to use the mark in Canada, and it is under no obligation to commence use of the mark until after its application is allowed by the Trade-mark Office.
[44] Anheuser submits that for Molson to succeed on each of its grounds of opposition, the Registrar would have fo find a likelihood of confusion between the marks at issue. It is submitted that once the registrar found no reasonable likelihood of confusion under Molson's strongest ground, Molson's other confusion-based grounds also had to fail.
[45] The respondent submits that a review the factors set out in subsection 6(5) of the Act demonstrate that the trade-mark MICHELOB GOLDEN DRAFT is unlikely to cause confusion with any of Molson's trade-marks containing the word "GOLDEN".
[46] The respondent submits that its trade-mark MICHELOB GOLDEN DRAFT is inherently distinctive in relation to the wares covered by this application. It is submitted that the primary word of the mark, MICHELOB, is very unique and unusual in association with the wares and therefore inherently distinctive. The respondent submits that as held by the Federal Court of Appeal, the word GOLDEN is clearly descriptive of beer, and a mark consisting of GOLDEN is therefore inherently very weak in relation to beer. It is submitted that the term GOLDEN should be available to all brewers of beer. It is submitted that on the issue of inherent distinctiveness of the mark GOLDEN in relation to beer, the Registrar did not need to consider more than the meaning of the words "golden" and "beer", that it appropriately cited the decisions of the Federal Court of Appeal in support of this finding.
[47] The respondent submits that the evidence also shows that the appellant uses GOLDEN always in close proximity to Molson. It is submitted that the inclusion of the house marks mitigates against there being any likelihood of confusion.
[48] The respondent disputes Molson's suggestion that its registered trade-marks constitute a "family", and as such, it is submitted that it is not entitled to an increased scope of protection. It is submitted that Molson has merely shown use of a successive series of variations on its MOLSON GOLDEN mark.
[49] The respondent submits that the Registrar did not rule on the validity of Molson's GOLDEN registration. It is submitted that the Registrar's comment that the appellant's GOLDEN mark possesses little inherent distinctiveness because of its descriptiveness was properly within its jurisdiction and relevant to this opposition.
[50] The respondent submits that lack of distinctiveness is often determined as part of an evaluation of whether a proposed mark is confusing with another mark. It is submitted that it is an independent ground of opposition because use of marks by others than the opponent can also be considered. It is therefore submitted that the Registrar applied the correct test in rejecting Molson's ground of opposition based on non-distinctiveness, after having found no reasonable likelihood of confusion between the marks at issue.
Issue
[51] Should the appeal of the decision of the Registrar be allowed?
Relevant Statutory Provisions
[52] The relevant provisions of the Trade-marks Act, supra state:
2. "distinctive", in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;
. . .
"trade-mark" means
(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
2. « distinctive » Relativement à une marque de commerce, celle qui distingue véritablement les marchandises ou services en liaison avec lesquels elle est employée par son propriétaire, des marchandises ou services d'autres propriétaires, ou qui est adaptée à les distinguer ainsi.
. . .
« marque de commerce » Selon le cas:
a) marque employée par une personne pour distinguer, ou de façon à distinguer, les marchandises fabriquées, vendues, données à bail ou louées ou les services loués ou exécutés, par elle, des marchandises fabriquées, vendues, données à bail ou louées ou des services loués ou exécutés, par d'autres;
b) a certification mark,
©) a distinguishing guise, or
(d) a proposed trade-mark;
6.(2) The use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
6.(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
©) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
12.(1) Subject to section 13, a trade-mark is registrable if it is not
b) marque de certification;
c) signe distinctif;
d) marque de commerce projetée.
6.(2) L'emploi d'une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l'emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les marchandises liées à ces marques de commerce sont fabriquées, vendues, données à bail ou louées, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces marchandises ou ces services soient ou non de la même catégorie générale.
6.(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l'espèce, y compris:
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
c) le genre de marchandises, services ou entreprises;
d) la nature du commerce;
e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux dans la présentation ou le son, ou dans les idées qu'ils suggèrent.
12. (1) Sous réserve de l'article 13, une marque de commerce est enregistrable sauf dans l'un ou l'autre des cas suivants:
. . .
(d) confusing with a registered trade-mark;
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
©) a trade-name that had been previously used in Canada by any other person.
19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.
22. (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.
. . .
d) elle crée de la confusion avec une marque de commerce déposée;
16. (1) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des marchandises ou services, a droit, sous réserve de l'article 38, d'en obtenir l'enregistrement à l'égard de ces marchandises ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l'a en premier lieu ainsi employée ou révélée, elle n'ait créé de la confusion:
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
b) soit avec une marque de commerce à l'égard de laquelle une demande d'enregistrement avait été antérieurement produite au Canada par une autre personne;
c) soit avec un nom commercial qui avait été antérieurement employé au Canada par une autre personne.
19. Sous réserve des articles 21, 32 et 67, l'enregistrement d'une marque de commerce à l'égard de marchandises ou services, sauf si son invalidité est démontrée, donne au propriétaire le droit exclusif à l'emploi de celle-ci, dans tout le Canada, en ce qui concerne ces marchandises ou services.
22. (1) Nul ne peut employer une marque de commerce déposée par une autre personne d'une manière susceptible d'entraîner la diminution de la valeur de l'achalandage attaché à cette marque de commerce.
30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
. . .
(d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant's named predecessor in title on which the applicant bases the applicant's right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant's named predecessor in title, if any, in association with each of the general classes of wares or services described in the application;
(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;
. . .
(I) a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.
38. (1) Within two months after the advertisement of an application for the registration of a trade-mark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.
(2) A statement of opposition may be based on any of the following grounds:
30. Quiconque sollicite l'enregistrement d'une marque de commerce produit au bureau du registraire une demande renfermant:
. . .
d) dans le cas d'une marque de commerce qui est, dans un autre pays de l'Union, ou pour un autre pays de l'Union, l'objet, de la part du requérant ou de son prédécesseur en titre désigné, d'un enregistrement ou d'une demande d'enregistrement sur quoi le requérant fonde son droit à l'enregistrement, les détails de cette demande ou de cet enregistrement et, si la marque n'a été ni employée ni révélée au Canada, le nom d'un pays où le requérant ou son prédécesseur en titre désigné, le cas échéant, l'a employée en liaison avec chacune des catégories générales de marchandises ou services décrites dans la demande;
e) dans le cas d'une marque de commerce projetée, une déclaration portant que le requérant a l'intention de l'employer, au Canada, lui-même ou par l'entremise d'un licencié, ou lui-même et par l'entremise d'un licencié;
. . .
I) une déclaration portant que le requérant est convaincu qu'il a droit d'employer la marque de commerce au Canada en liaison avec les marchandises ou services décrits dans la demande.
38. (1) Toute personne peut, dans le délai de deux mois à compter de l'annonce de la demande, et sur paiement du droit prescrit, produire au bureau du registraire une déclaration d'opposition.
(2) Cette opposition peut être fondée sur l'un des motifs suivants:
(a) that the application does not conform to the requirements of section 30;
(b) that the trade-mark is not registrable;
©) that the applicant is not the person entitled to registration of the trade-mark; or
(d) that the trade-mark is not distinctive.
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
a) la demande ne satisfait pas aux exigences de l'article 30;
b) la marque de commerce n'est pas enregistrable;
c) le requérant n'est pas la personne ayant droit à l'enregistrement;
d) la marque de commerce n'est pas distinctive.
56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois.
Analysis and Decision
[53] Standard of Review
The Federal Court of Appeal stated in Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 (F.C.A.), leave to appeal to S.C.C. refused, [2000] S.C.C.A. No. 161, at page 196:
I think the approach in Benson & Hedges v. St. Regis and in McDonald's Corp. v. Silcorp are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.
I am of the view that this states the current law.
[54] I have reviewed the additional affidavit evidence filed in appeal before the Court and I am of the view that the new evidence would have materially affected the Registrar's findings of fact. The new evidence included the evidence that Golden Promise Organic Beer, Fuller's Golden Pride and Golden Promise Ale were no longer on the Canadian market and that applications for the trade-marks for Golden Pride and Golden Promise were abandoned. The Registrar relied on references in volumes and internet sites to beers which included the word GOLDEN on their labels. The new evidence shows that there are no trade-mark registrations for these products. The applicable standard of review is therefore, correctness.
[55] I agree with Molson's summary of the onus in opposition proceedings:
The legal onus on all of the issues mentioned, namely, formal compliance, registrability, entitlement and distinctiveness lies squarely with the trade-mark applicant, in this instance, on the Respondent. An opponent has an evidential onus on each of its grounds. However, once the Opponent has met its basic evidential onus, the legal onus shifts to the trade-mark applicant to establish the registrability and the distinctiveness of its trade-mark and its entitlement to registration. Where there is any doubt as to registrability or distinctiveness, that doubt is to be resolved against the trade-mark applicant and the application should be rejected.
[56] Subsection 30(e) Ground
Subsection 30(e) of the Act states:
30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
. . .
(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;
I agree that the evidential burden on the opponent with respect to the 30(e) ground is a relatively light one and I also note that the opponent's evidential burden can be met by reference to both its own evidence and the cross-examination transcripts and by reference to Molson's evidence. Molson stated that the following portion of the cross-examination of Mr. Campbell is sufficient to meet the initial evidentiary burden on it in relation to the subsection 30(e) ground:
Q. All right. Now when we talk about use of the trade mark in association with items such as caps, t-shirts, and so on, how would that trade mark have been displayed on the