Digests

Molson Canada v. Anheuser-Busch, Inc.

T-632-01

2003 FC 1294, O'Keefe J.

5/11/03

35 pp.

Appeal by Molson Canada (Molson, opponent or appellant), pursuant to Trade-marks Act (Act), s. 56, of decision of Registrar of Trade-marks (Registrar) rejecting appellant's opposition to registration, by Anheuser-Busch, Inc. (Anheuser or respondent), of trade-mark application for "Michelob Golden Draft & Design"--Molson seeking order allowing appeal and reversing decision of Registrar of Trade-marks and holding respondent's trade-mark "Michelob Golden Draft & Design" not registrable and not distinctive and respondent not person entitled to registration of trade-mark--Whether Registrar erred in finding no confusion between Anheuser's trade-mark "Michelob Golden Draft & Design" and opponent's trade-marks--Act, s. 12(1)(d) states trade-mark registrable if not confusing with registered trade-mark-- Registrar stated in determining real likelihood of confusion between marks, Registrar must have regard to all surrounding circumstances including those enumerated in Act, s. 6(5)--As to s. 6(5)(a), Registrar found Anheuser's trade-mark, "Michelob Golden Draft" & Design inherently distinctive when considered in its entirety--Registrar found opponent's registered trade-mark "Golden" clearly descriptive--In Molson Companies Ltd. v. John Labatt Ltd. (1994), 58 C.P.R. (3d) 527, Federal Court of Appeal stated "The words `gold' and `golden' are adjectives which, like blond, amber, pale, brown and dark are merely descriptive of categories of beers to which a given brand belongs. . .these epithets are of common use and serve to identify the nature and category of the product, not the trad mark [sic] of the producer"-- Registrar correctly found trade-mark "Michelob Golden Draft & Design" inherently distinctive--Fact trade-mark includes words "Michelob" and "A & Eagle Design" makes mark inherently distinctive and mitigates against confusion--As to circumstances enumerated in s. 6(5)(b), (c) and (d), Registrar correctly applied s. 6(5)(b), (c) and (d) to present case--As to s. 6(5)(e), Registrar found little similarity in appearance and only some similarity in sounding and in ideas suggested by applicant's trade-mark "Michelob Golden Draft & Design" and opponent's registered trade-mark "Golden", applicant's mark includes entirety of opponent's registered trade-mark as relatively minor element thereof--When mark "Michelob Golden Draft & Design" and Molson marks considered, very little similarity in appearance--Registrar found only some similarity in sound and in ideas suggested by respondent's trade-mark "Michelob Golden Draft & Design" and opponent's registered trade-mark "golden" and Registrar stated respondent's mark includes entirety of Molson's registered trade-mark but relatively minor element thereof-- Registrar correct in conclusions on this factor--As to all surrounding circumstances, Registrar considered evidence of L. Jane Sargeant and ruled evidence only relevant in so far as one can make inferences from it about state of marketplace and further, that you can only make these inferences where large numbers of relevant registrations located--Another surrounding circumstance considered was purchases of beer with "gold" or "golden" on label--Registrar ruled third party marks containing "gold" not relevant and labels with word "golden" showed use by third parties other than opponent but not extent of such use in Canada--Registrar's conclusion correct in this regard--Whether Registrar erred in law and exceeded jurisdiction by attacking validity of Molson's registered trade-mark "Golden" within scope of opposition proceedings--Molson arguing Registrar's ruling "Golden" trade-mark descriptive, in effect, attacked validity of its registration--In context of opposition proceeding, Registrar has no jurisdiction to expunge trade-mark from Register--As Simpson J. ruled in Canada Games Co. v. Llumar Star Kites Inc. (1995), 64 C.P.R. (3d) 1 (F.C.T.D.), affd (1996), 69 C.P.R. (3d) 454 (F.C.A.), Registrar obliged under s. 6(5)(a) to consider inherent and acquired distinctiveness when assessing likelihood of confusion between trade-marks--Ruling "golden" descriptive relates to inherent distinctiveness and strength of mark, not validity per se--Registrar correct in determining trade-mark "Golden" descriptive, did not exceed jurisdiction or rule on validity of Molson's "Golden" registration--In addition, Molson arguing Registrar erred in fact and law in failing to consider and dispose of fourth ground of opposition based on Act, s. 38(2)(d), namely trade-mark claimed in application not distinguishing and not adapted to distinguish wares of trade-mark applied from those of Molson--Molson contending grounds of confusion and non-distinctiveness separate and distinct grounds of opposi-tion, and should have been treated as such by Registrar-- Confusion with registered trade-mark and lack of distinctive-ness of trade-mark submitted for registration two separate grounds of challenge--Registrar did dispose of all grounds of opposition because he stated in decision that he "dismissed the opponent's remaining grounds of opposition" --Whether he disposed of s. 38(2)(d) ground correctly-- Registrar in this case assessed Molson's case for confusion at strongest ground for finding confusion because matter would be disposed of based on evidence produced at material date of Registrar's decision on registrability-- Molson relied on allegations of facts for other grounds of opposition as basis for establishing non-distinctiveness--If no finding of likelihood of confusion based on evidence at date of decision there could be no finding of confusion at material dates for non-entitlement and non-distinctiveness--Material date for assessing non-entitlement date of registration application and for non-distinctiveness date of filing of opposition--As result of no confusion established by evidence on non-registrability ground, there could be no confusion found supporting non-distinctiveness ground--Confusion only basis put forward by Molson for claim respondent's mark not distinctive--Since no suggestion respondent's trade-mark did not distinguish wares from wares of "others" as distinct from Molson's, ground of non-distinctiveness could be determined as part of determination process for issue of confusion-- Therefore, Registrar's finding correct--Molson also raised non-entitlement pursuant to s. 38(2)(c) as ground of opposition-- Material date as of which to consider non-entitlement is as of date of application for registration of mark --Registrar dismissing Molson's remaining grounds of opposition which would include non-entitlement ground--No likelihood of confusion could be found to support non-entitlement ground-- Appeal dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 12, 38(2), 56.