Digests

Molson Canada v. Anheuser-Busch, Inc.

T-926-01

2003 FC 1287, O'Keefe J.

5/11/03

45 pp.

Appeal from decision of Registrar of Trade-marks rejecting Molson's opposition to registration by Anheuser-Busch, Inc. (Anheuser) of trade-mark application for "Michelob Golden Draft", based on proposed use of trade-mark in Canada in association with list of wares (merchandising items)--Appeal under Trade-marks Act (Act), s. 56 involves review of Registrar's findings--Whether Registrar erred in finding no confusion between respondent's trade-mark and appellant's trade-marks--Act, s. 12(1)(d) states trade-mark registrable if not confusing with registered trade-mark--In determining real likelihood of confusion between marks, must have regard to all surrounding circumstances including, but not limited to, those specifically enumerated in Act, s. 6(5)--Registrar correctly finding "Michelob Golden Draft" inherently distinctive (s. 6(5)(a))--Inclusion of word "Michelob" making mark inherently distinctive and mitigating against confusion--Both parties' marks include "House Marks"--Molson's use of "Golden" always prominently associated with word "Molson" and since 1969, "Molson" always part of label for "Molson Golden"--"Golden" clearly descriptive--Molson submitted there was no evidence before Registrar showing Molson's trade-mark "Golden" clearly descriptive--However, as Federal Court of Appeal noted in John Labatt Ltd. v. Molson Cos. Ltd. (1987), 19 C.P.R. (3d) 88 (F.C.A.); "golden is a word one of whose primary meanings is to describe a colour. That colour is found in most beer"--Registrar not erring in finding "Golden" clearly descriptive--As to length of time trade-marks in use (s. 6(5)(b)), as Anheuser's trade-mark not used in Canada, this factor favours Molson's mark--As to nature of wares (s. 6(5)(c)), services or business, Registrar correctly finding Anheuser's wares differ from Molson's wares with respect to "Golden" trade-mark; Anheuser's wares overlapped Molson's wares with respect to "Molson Golden & Design" trade-mark--As to nature of trade (s. 6(5)(d)), Registrar correctly finding potential overlapping of channels of trade for Anheuser's wares and Molson's brewed alcoholic beverages because Anheuser's wares intended to be merchandising items related to "Michelob Golden Draft"--Also correctly finding overlapping of channels of trade for Anheuser's wares and wares covered by "Michelob Golden & Design" registration --As to degree of resemblance between trade-marks or trade-names in appearance, sound or idea suggested by them (s. 6(5)(e)), when mark "Michelob Golden Draft" and Molson's certification mark "Molson Golden & Design" considered in entirety, little similarity in appearance when looked at in required manner--Registrar correctly finding only some similarity in appearance, sounding and in ideas suggested by Anheuser's trade-mark "Michelob Golden Draft" and opponent's registered trade-mark "Golden" and stated respondent's mark includes entirety of Molson's registered trade-mark but only relatively minor element thereof-- Registrar correctly considering remaining surrounding circumstances, correctly concluding no reasonable likelihood of confusion between trade-marks at issue--As to whether Registrar erred in law and exceeded jurisdiction by attacking validity of Molson's registered trade-mark "Golden" within scope of opposition proceedings by ruling "Golden" trade-mark descriptive, Registrar obliged under Act, 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--Finally, Molson arguing Registrar erred in fact and in law in failing to consider and dispose of opposition based on Act, s. 38(2)(d) i.e. trade-mark not distinguishing wares--Molson contending grounds of confusion and non-distinctiveness separate, distinct grounds of opposition, and should have been treated as such by Registrar--Case law clear confusion with registered trade-mark and lack of distinctiveness of proposed trade-mark two separate grounds of challenge--Application for registration may be opposed and refused on basis of non-distinctiveness independent of issue of confusion--Registrar did dispose of all grounds in stating: "dismissed the opponent's remaining grounds of opposition"--Registrar disposed correctly of s. 38(2)(d) ground--Grounds of opposition establishing Molson's non-distinctiveness argument based on confusion--Registrar assessed case for confusion at its strongest, i.e. on ground of non-registrability--Molson relied on allegation 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, could be no finding of confusion at material dates for non-entitlement and non-distinctiveness--Since no suggestion Anheuser's trade-mark not distinguishing 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, not error for Registrar to dispose of Molson's non-distinctiveness ground of opposition in manner he did--Appeal dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 12, 38(2)(d), 56.