Digests

Labatt Brewing Co. v. Molson Canada

T-1552-99

2003 FCT 235, MacKay J.

27/2/03

13 pp.

Appeal from Trade-marks Opposition Board (Board) decision refusing applicant's application to register word "Oland Export" as trade-mark--Whether registration of trade-mark properly refused on basis trade-mark not distinctive-- Whether Board erred by neglecting to consider existing registered marks of Oland, including word "Oland's" and words "Oland Export Ale" in design label; if not an error, whether additional evidence, filed on appeal, warranting reversal of Board's decision and order proposed mark, "Oland Export", be registered--Board's decision based on finding that no admissible evidence of use or reputation of mark sought to be registered, at relevant time--Thus, no evidence on which finding of distinctiveness could be based--Mere registration of trade-mark provided no proof of extent registered work may have become distinctive in fact--No submission mark "Oland Export" should have been found to have been adapted to distinguish appellant's wares from wares of others--Board's decision reasonable in absence of evidence of use or reputation of trade-mark "Oland Export"--Result of Board's decision not unreasonable--Regarding additional evidence filed on appeal, burden of establishing distinctiveness of mark resting on applicant, both at opposition proceeding before Registrar and on appeal to Federal Court-- Additional evidence of Oland on present appeal establishing distinctiveness of trade-mark "Oland Export"--Additional affidavits of Mr. Tilden and Mr. Beasley, filed on appeal, include evidence based on corporate records relating to competitive brands, maintained and referred to by Mr. Tilden, which indicate no other company known to use word "Oland" in association with brewed alcoholic beverages since at least 1979--Lack of evidence adequately addressed by additional evidence introduced for present appeal by applicant-- Additional evidence would have materially affected Board's finding of fact or exercise of Board's discretion--In decision, Board commented, after setting out conclusion proposed mark did not distinguish and not adapted to distinguish Oland's wares from wares of others, had applicant been able to adduce admissible evidence showing significant use and advertising of mark in Canada, result might well have been different-- Finally, appellant has discharged burden of proving at date of opposition, proposed mark, "Oland Export", distinctive in relation to appellant's brewed beer--Appeal allowed.