Par Sarah D. Pinsonnault
Revenu Québec
“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., [1979] 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”:
“[33] 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.
To read this decision in its entirety, click here.
Aucun commentaire:
Publier un commentaire
L'équipe du Blogue vous encourage à partager avec nous et nos lecteurs vos commentaires et impressions afin d'alimenter les discussions sur le Blogue. Par ailleurs, prenez note du fait qu'aucun commentaire ne sera publié avant d'avoir été approuvé par un modérateur et que l'équipe du Blogue se réserve l'entière discrétion de ne pas publier tout commentaire jugé inapproprié.