the “golden” battle for beer before the federal court of canada

the “golden” battle for beer before the federal court of canada

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THE “GOLDEN” BATTLE FOR BEER BEFORE THE FEDERAL COURT OF CANADA
By
Stella Syrianos
LEGER ROBIC RICHARD, Lawyers
ROBIC, Patent & Trademark Agents
55 St-Jacques, Montréal (Québec) Canada H2Y 3X2
Tel. (514) 987-6242 - Fax (514) 845-7874
E-mail: [email protected] - Web Site: www.robic.ca
The Federal Court of Canada rendered three decisions regarding the
registrability of the word and design marks MICHELOB GOLDEN DRAFT, by
Anheuser, in association with beer and various other products. In its decisions,
the Court upheld the Registrar’s decisions rejecting Molson’s oppositions to
Anheuser’s registrations primarily on the ground of lack of confusion between
the parties’ trade-marks. (Molson Canada vs. Anheuser Busch Inc., T-926-01,
November 5th, 2003; Molson Canada vs. Anheuser Busch Inc., T-632-01,
November 5th, 2003; Molson Canada vs. Anheuser Busch Inc., T-633-01,
November 5th, 2003, O’Keefe, J.)
The facts
The Respondent, Anheuser Busch (“Anheuser”) had applied to register the
trade-marks MICHELOB GOLDEN DRAFT under serial number 693,432 in
association with a wide variety of products including clothing, gifts, novelty
items, games, beer bread mix and chocolates, MICHELOB GOLDEN DRAFT &
design under serial number 686,179 in association with beer and MICHELOB
GOLDEN DRAFT under serial number 686,180 also in association with beer. The
Applicant, Molson Canada (“Molson”) opposed Anheuser’s registrations on
numerous grounds but primarily based on confusion with its registered
trade-mark GOLDEN and its family of registered trade-marks which include the
word GOLDEN in association with beer.
The Court heard Molson’s appeals in relation to the marks MICHELOB GOLDEN
DRAFT & design (no. 686,179) and MICHELOB GOLDEN DRAFT (no. 686,180) on
the same day (dockets number T-632-01 and T-633-01 respectively) and
adopted and incorporated in its decision regarding the MICHELOB GOLDEN
DRAFT mark, its analysis pertaining to the trade-mark MICHELOB GOLDEN DRAFT
& design (with the necessary trade-mark name changes). The Court heard the
appeal in relation to the mark MICHELOB GOLDEN DRAFT (no. 693,432)
separately but rendered all three of its decisions on the same day.
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Additional evidence was adduced by both parties before the Federal Court.
The Registrar’s decisions
The main grounds of opposition turned on the issue of confusion between
Anheuser’s trade-marks and Molson’s registered trade-mark GOLDEN (TMA
498,157) and its registered certification mark MOLSON GOLDEN & design (TMA
471,067).
In assessing the likelihood of confusion, the Register reviewed the criteria
enumerated under Section 6 (5)(a) of the Trade-marks Act and found that
notwithstanding the identical or similar nature of the wares and trades,
Molson’s trade-mark GOLDEN had only been shown to have become well
known in Canada in combination with its house mark MOLSON or MOLSON’S
for brewed alcoholic beverages and that there was no likelihood of confusion.
In a nutshell, the Registrar held that Anheuser’s marks were inherently
distinctive whereas Molson's trade-mark GOLDEN was clearly descriptive of
beer [based on previous Federal Court of Canada decisions which held that
the term “GOLDEN” is clearly descriptive.] the word MOLSON had surname
significance and therefore its marks possessed little inherent distinctiveness,
there was little similarity in appearance, sound or in the ideas suggested by
Anheuser’s mark and Molson’s marks, the state of the register evidence
showed that was a relatively common adoption of the mark GOLDEN in
relation to various wares such as those covered in the MICHELOB GOLDEN
DRAFT application (no. 693,432) and that two other brewers in Canada other
than Molson has the word GOLDEN on their labels for beer.
The Appeals to the Federal Court of Canada
Standard of review
Having reviewed the additional affidavit evidence filed before it, the Court
opined that this new evidence would have materially affected the Registrar’s
finding of fact and concluded that the applicable standard of review was
that of correctness.
Issues addressed by the Court
The Court dismissed Molson’s appeals based on the primary ground there was
no confusion between the marks at issue. In its ruling, it addressed three main
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questions raised Molson : (1) did the Registrar err in its finding of no confusion
between Anheuser’s trade-marks MICHELOB GOLDEN DRAFT and MICHELOB
GOLDEN DRAFT & design and Molson’s trade-marks, (ii) did the Registrar err in
law and exceed his jurisdiction by attacking the validity of Molson’s registered
trade-mark GOLDEN within the scope of the opposition proceeding and (iii)
did the Registrar dispose of the distinctiveness ground correctly.
1.
Finding of no confusion
In its analysis, after reviewing the applicable criteria for determining confusion,
the Court held that the Registrar was correct in his finding of no reasonable
likelihood of confusion between the marks at issue based on the following
elements:
2.
•
the marks MICHELOB GOLDEN DRAFT and MICHELOB GOLDEN DRAFT
& design are inherently distinctive while the word GOLDEN, which is
descriptive, has always been prominently associated with word
MOLSON or MOLSON’S;
•
both parties’ marks include their house marks MOLSON or MICHELOB
with the term GOLDEN;
•
there is little similarity in appearance, sounding and in the ideas
suggested by the marks at issue despite the common element
"GOLDEN”;
•
as a surrounding circumstance, the Court was not satisfied that
Molson’s trade-marks containing the word “GOLDEN” constituted a
family of trade-marks in light of te descriptiveness of the word
“GOLDEN”;
•
third party use of trade-marks including the word “GOLDEN” as
applied to beer in the marketplace in Canada
Attacking the validity of Molson’s registered trade-mark GOLDEN
The Court decided that the Registrar did not err in law nor exceed his
jurisdiction since he did not attack the validity per se of Molson’s trade-mark
GOLDEN. In ruling that GOLDEN was descriptive, the Court held that the
Registrar was obliged to take it into consideration as it relates to the inherent
and acquired distinctiveness and strength of Molson’s marks.
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3.
Non-distinctiveness as a separate ground of opposition
Molson argued that the Registrar erred at law by not considering and
disposing of the distinctiveness ground of opposition correctly. In response to
this argument, the Court held that Molson only adduced evidence regarding
the non-distinctiveness ground by showing use of its own trade-marks with
which it stated that Anheuser’s marks were confusing. Molson did not allege
that Anheuser’s marks did not distinguish its wares from those of others as
distinct from Molson’s and as such, the non-distinctiveness ground of
opposition was to be determined as part of the determination process for the
issue of confusion.
Since confusion was the only basis put forward by Molson for its claim that
Anheuser’s marks were not distinctive, the Court decided that the Registrar
properly disposed of this ground of opposition.
Conclusion
The Court’s decisions seemed to be influenced by two key factors: the
descriptiveness of the term “GOLDEN” as it relates to beer and that it had only
become well known in Canada in combination with Molson’s house mark
MOLSON or MOLSON’s. These cases may serve as reminders that where weak
marks are concerned, the ambit of protection is lessened and trade-mark
owners sometimes face an uphill battle in proving confusion with their
inherently weak marks.
© LEGER ROBIC RICHARD / ROBIC, 2004.
Published at (2004), 18-3 World Intellectual Property Report 3-4 under the title Molson Loses
Battle Over Word 'Golden' For Beer.
ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué depuis 1892 à la protection et
à la valorisation de la propriété intellectuelle dans tous les domaines: brevets, dessins industriels et modèles utilitaires;
marques de commerce, marques de certification et appellations d'origine; droits d'auteur, propriété littéraire et
artistique, droits voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés; biotechnologies,
pharmaceutiques et obtentions végétales; secrets de commerce, know-how et concurrence; licences, franchises et
transferts de technologies; commerce électronique, distribution et droit des affaires; marquage, publicité et
étiquetage; poursuite, litige et arbitrage; vérification diligente et audit; et ce, tant au Canada qu'ailleurs dans le
monde. La maîtrise des intangibles.
ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892 to the protection and the
valorization of all fields of intellectual property: patents, industrial designs and utility patents; trademarks, certification
marks and indications of origin; copyright and entertainment law, artists and performers, neighbouring rights; computer,
software and integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets, know-how,
competition and anti-trust; licensing, franchising and technology transfers; e-commerce, distribution and business law;
marketing, publicity and labelling; prosecution litigation and arbitration; due diligence; in Canada and throughout the
world. Ideas live here.
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ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué depuis 1892 à la protection et
à la valorisation de la propriété intellectuelle dans tous les domaines: brevets, dessins industriels et modèles utilitaires;
marques de commerce, marques de certification et appellations d'origine; droits d'auteur, propriété littéraire et
artistique, droits voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés; biotechnologies,
pharmaceutiques et obtentions végétales; secrets de commerce, know-how et concurrence; licences, franchises et
transferts de technologies; commerce électronique, distribution et droit des affaires; marquage, publicité et
étiquetage; poursuite, litige et arbitrage; vérification diligente et audit; et ce, tant au Canada qu'ailleurs dans le
monde. La maîtrise des intangibles.
ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892 to the protection and the
valorization of all fields of intellectual property: patents, industrial designs and utility patents; trademarks, certification
marks and indications of origin; copyright and entertainment law, artists and performers, neighbouring rights; computer,
software and integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets, know-how,
competition and anti-trust; licensing, franchising and technology transfers; e-commerce, distribution and business law;
marketing, publicity and labelling; prosecution litigation and arbitration; due diligence; in Canada and throughout the
world. Ideas live here.