Par Sarah D. Pinsonnault
“The potential for the use of phrases such as “this is a horse of a different colour” or equine and beer jokes jump out at one. The Court will refrain from such frivolities for this is a case about beer and a case of beer is a serious matter...” is how Justice Michael L. Phelan begins his judgement in San Miguel Brewing International Limited v. Molson Canada 2005, 2013 FC 156.
The Applicant in this case, San Miguel Brewing International Ltd., is a corporation based in the Philippines that filed an application in 2005 to register the trade-mark “RED HORSE MALT LIQUOR” and “Horse Head Design” for use in association with beer.
The Respondent, Molson Canada 2005, opposed this trade-mark application on the basis that it already owned several trade-marks that included the words “Black Horse”. The primary market for this mark is located in Newfoundland and Labrador.
The member of the Trade-marks Opposition Board (“Board”) analysed the “surrounding circumstances” (s. 6(5) of the Trade-marks Act, RSC 1985, c. T-13 (“TMA”)) in order to determine whether or not the Applicant’s trade-mark is confusing with another registered trademark, namely that of the Respondent (s. 12(1)d) TMA).
The Board ultimately found that the significance of the word HORSE that dominated both marks was such that the “ideas suggested by them” (s. 6(5)e) TMA) were similar and that “the design of resemblance between the marks favoured the Respondent Molson”.
Furthermore, the Board added that, given the Respondent’s “Black Horse” was well-known in Newfoundland, this was sufficient enough to negate the Applicant’s “Red Horse Malt Liquor” mark’s distinctiveness in other areas of Canada.
The Applicant’s appealed this decision before the Federal Court. After having determined the applicable standard of review, Justice Phelan tried to determine whether RED HORSE is confusing with BLACK HORSE in the minds of the relevant consumer. In other words, the question was asked whether an ordinary beer drinking consumer, upon hearing the words RED HORSE, would be likely to think that RED HORSE was a beer made by the same company that produced BLACK HORSE.
Justice Phelan used the “test for confusion” as set forth by the Supreme Court of Canada in Masterpiece Inc. v Alavida Lifestyles Inc, 2011 SCC 27. Thus, “confusion” is based on the first impression of the “average person who goes into the market and not one skilled in semantics”. At the same time, in citing Mattel, Inc v 3894207 Canada Inc., 2006 SCC 22, Justice Phelan also recognized that the notion of “consumer” must carry with it a certain level of intelligence:
“56 What, then, is the perspective from which the likelihood of a “mistaken inference” is to be measured? It is not that of the careful and diligent purchaser. Nor, on the other hand, is it the “moron in a hurry” so beloved by elements of the passing-off bar: Morning Star Co-Operative Society Ltd. v. Express Newspapers Ltd.,  F.S.R. 113 (Ch. D.), at p. 117. It is rather a mythical consumer who stands somewhere in between, dubbed in a 1927 Ontario decision of Meredith C.J. as the “ordinary hurried purchasers”…”
In this case, in order to assess the issue of confusion, the trade-marks were considered from the point of view of an “ordinary beer consumer”:
“ Applied to the beer consumer (the relevant “ordinary person” at the bar or beer/liquor store), I am of the view that the ordinary beer drinker is sensitive to the names of beers and to what they know and like. The test is premised on the ordinary beer drinking consumer – not on what might be a legal fiction of the non-beer drinking life partner who is asked to pick up beer. The following quotes from Justice Walsh’s decision in Carling O’Keefe Breweries of Canada Ltd v Anheuser-Busch, Inc, 68 CPR (2d) 1 at 20-21, 1982 CarswellNat 670 (Fed TD), are apt:
Even though the colours and designs of the two labels are somewhat similar a purchaser would have to be nearly blind, (or perhaps having consumed so much beer as to be in the same condition), not to be able to see at a glance from the label on the bottle or container, that he was getting either Plaintiff's Standard Lager or Defendant's Budweiser as the case might be.
The second major contributor to sales is of course the product itself and the flavour thereof, as regular beer drinkers will have considerable loyalty to their favourite brand.”
Justice Phelan thereby concluded that there was no evidence to suggest, nor would it be very likely, that an ordinary beer drinking consumer would be confused between the two marks.
Moreover, while raising the point that to rule otherwise could risk granting Molson a monopoly over the word HORSE, being of any colour, in relation to beer, Justice Phelan granted the appeal and the application for the trade-mark RED HORSE was thus granted.
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