Molson Canada v. Anheuser-Busch Inc., 2003 FC 1294

Date: 20031105

Docket: T-632-01

Citation: 2003 FC 1294

Toronto, Ontario, November 5^th, 2003

Present:           The Honourable Mr. Justice O'Keefe

IN THE MATTER OF AN APPLICATION for the Trade-mark

MICHELOB GOLDEN DRAFT & Design under Serial No. 686,179,

filed by Anheuser-Busch, Incorporated;

AND IN THE MATTER OF Sections 56 and 59, of the Canadian

Trade-marks Act, R.S.C. 1985, c. T-13

BETWEEN:

                                                            MOLSON CANADA

Applicant

and

ANHEUSER-BUSCH, INCORPORATED

Respondent

REASONS FOR ORDER AND ORDER

[1]                This is an appeal by Molson Canada ("Molson", "appellant" or "opponent"), pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act"), of the decision of the Registrar of Trade-marks, dated February 16, 2001. The Registrar of Trade-marks rejected Molson's opposition to the registration, by Anheuser-Busch, Incorporated ("Anheuser" or "respondent"), of the trade-mark application for MICHELOB GOLDEN DRAFT & Design.

[2]                Molson seeks an order:

1.          Allowing the appeal and reversing the decision of the Registrar of Trade-marks and holding that the respondent's trade-mark MICHELOB GOLDEN DRAFT & Design is not registrable and is not distinctive and that the respondent is not the person entitled to registration of that trade-mark; and

2.          Costs of this appeal.

Background

Introduction

[3]                Molson opposes Anheuser's trade-mark application No. 686,179 for the trade-mark MICHELOB GOLDEN DRAFT & Design.

[4]                The application was based on proposed use in Canada and use and registration in the United States in association with beer. Anheuser disclaimed the right to the exclusive use of the word DRAFT apart from the trade-mark. Subsequent to opposition proceedings, Anheuser disclaimed the right to the exclusive use of the word GOLDEN apart from its trade-mark.

[5]                Anheuser's application was filed on July 18, 1991. It was amended on June 9, 1992 and November 17, 1995. Anheuser claimed and was accorded a priority filing date of May 6, 1991 based on its application for registration of the trademark in the United States.

[6]                The application was advertised in the Trade-marks Journal on December 2, 1992.

[7]                Molson filed a statement of opposition on January 27, 1993. An amended statement of opposition was filed on September 22, 1998. The opponent based its opposition on the following grounds (as summarized in the Registrar's decision):

a) The present application does not comply with the requirements of section 30 of the Trade-marks Act in that the applicant could not have been satisfied that it was entitled to use or register its trade-mark in view of the existence of the opponent's registration for its trade-marks identified below.

b) The present application does not comply with the requirements of section 30 of the Trade-marks Act in that the applicant did not intend to use the applied for trade-mark as alleged in the application or at all.

c) The applied for trade-mark is not registrable in view of paragraph 12.(1)(d) of the Trade-marks Act because it is confusing with its registered trade-marks covering "alcoholic brewery beverages" or "brewed alcoholic beverages" listed below:

Trade-mark                                                             Registration No.

MOLSON'S GOLDEN ALE & Design 100,941

GOLDEN ALE & Design                                        114,145

MOLSON GOLDEN ALE & Design     161,252

MOLSON GOLDEN & Design                              290,098

MOLSON GOLDEN                                              292,103

GOLDEN ALE & Design                                        293,246

MOLSON GOLDEN & Design                              309,841

GOLDEN                                                                498,157

The opponent also relied upon its certification mark MOLSON GOLDEN & Design, registration No. 471,067, under the paragraph 12.(1)(d) ground. ...

d) The applicant is not the person entitled to registration of the applied for trade-mark because, as of the filing date of the present application and at all other times, the trade-mark MICHELOB GOLDEN DRAFT & Design was confusing with the opponent's above identified trade-marks which had been previously used in Canada.

e) The applied for trade-mark is not distinctive of the foregoing. The opponent has extensively sold brewed alcoholic beverages in Canada and advertised same in association with the aforementioned trade-marks all of which contain the word GOLDEN.

[8]                Anheuser filed a counter-statement in response to the statement of opposition on June 24, 1993.

[9]                Before the Registrar of Trade-marks, Molson submitted as its evidence, the affidavits of Margaret Swain, David Perkins and Hui Ming Zheng. Anheuser submitted as its evidence, the affidavits of L. Jane Sargeant, Todd D. Bailey, Cynthia L. Martens, Robert W. White, William S. Campbell and Isis E. Caulder.

[10]            Before the Federal Court, Molson submitted further evidence by filing the affidavits of Michael S. Downey, Kimberley Anne Lane and D. Jill Roberts. Anheuser submitted further evidence by filing the affidavits of Frederik N. Meyer, Sharyn Costin, Lloyd Potter, and David Sunday.

Reasons of the Registrar of Trade-marks

[11]            By decision dated February 16, 2001, the Registrar of Trade-marks rejected Molson's opposition to the registration of the trade-mark. The reasons of the Registrar are outlined below.

[12]            The Registrar found that the facts relied upon by Molson did not support a ground of non-compliance with subsection 30(I) of the Act.

[13]            The Registrar stated that the application formally complied with subsection 30(e) of the Act. It also held that there was no evidence adduced by Molson in support of its allegation that Anheuser did not intend to use the applied for trade-mark as alleged or at all. The Registrar found that Anheuser's evidence was not inconsistent with its claim that it intended to use the trade-mark MICHELOB GOLDEN DRAFT & Design in Canada.

[14]            The Registrar stated that the remaining grounds of opposition all turned on the issue of confusion. It stated that the opponent's strongest ground was that based on paragraph 12(1)(d) of the Trade-marks Act in view of the opponent's registered trade-mark GOLDEN, registration No. 498,157.

[15]            The Registrar found Anheuser's trade-mark to be inherently distinctive when considered in its entirety as applied to the wares covered in the present application despite the fact that the words GOLDEN and DRAFT are both descriptive when applied to "beer" and were disclaimed by Anheuser apart from its trade-mark. Citing two Court of Appeal cases, the Registrar found that the opponent's registered trade-mark GOLDEN is clearly descriptive when applied to brewed alcoholic beverages and therefore possesses little inherent distinctiveness.

[16]            With respect to the extent to which the trade-marks have become known and the length of time the marks have been in use, the Registrar noted that Anheuser had not yet commenced use of its trade-mark in Canada and therefore had to be considered as not having become known to any extent in this country. On the other hand, the Registrar found that the opponent's registered trade-mark GOLDEN has become well known in Canada in combination with its house mark MOLSON or MOLSON'S in association with brewed alcoholic beverages.

[17]            As for the nature of the wares of the parties and the nature of the trade associated with their respective wares, the Registrar found that Anheuser's "beer" is the same as the opponent's brewed alcoholic beverage covered in registration No. 498,157 and that the channels of trade associated with these wares would be the same.

[18]            In considering the degree of resemblance between the trade-marks at issue, the Registrar found there was little similarity in appearance and only some similarity in sound and in the ideas suggested by Anheuser's trade-mark MICHELOB GOLDEN DRAFT & Design and the opponent's registered trade-mark GOLDEN.

[19]            As a further surrounding circumstance in assessing the likelihood of confusion between the trade-marks at issue, the Registrar noted that there was affidavit evidence of the use in Canada by two brewers, other than the opponent, of the word GOLDEN on the labels of their bottles of beer. The Registrar noted that the evidence did not disclose the extent of the use of the marks in Canada.

[20]            In summary, the Registrar stated:

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Even considering that the wares and the nature of the trade of the parties are the same, I still find that there would be no reasonable likelihood of confusion between the applicant's trade-mark and any of the opponent's registered trade-marks including the registered trade-mark GOLDEN in that there is little similarity between the trade-marks at issue in appearance, in sounding or in the ideas suggested and the opponent's trade-mark GOLDEN is an inherently weak mark which has only been shown to have become well known in Canada in combination with its house mark MOLSON or MOLSON's. Furthermore, the evidence establishes some measure of third party use of trade-marks including the word "golden" as applied to beer in the marketplace in Canada. . . .

[21]            The Registrar therefore dismissed the remaining grounds of opposition.

Appellant's Submissions

[22]            The appellant, Molson, submits that in the absence of additional evidence filed in the Federal Court, the standard of review of decisions of the Registrar, whether of fact or discretion, is reasonableness simpliciter. As additional evidence has been adduced that would have materially affected the Registrar's finding of fact or the exercise of its discretion, it is submitted that the standard of review is correctness. However, it is submitted that the Registrar's failure to distinguish between the differing pertinent dates on the issues of registrability and entitlement, the failure to address the issue of non-distinctiveness, the failure to take into account Molson's family of trade-marks and the exceeding of jurisdiction in attacking the registration of the trade-mark GOLDEN within the scope of opposition proceedings, all constitute errors of law, which justify a reversal of the Registrar's decision on any standard of review.

[23]            In regard to inherent distinctiveness, pursuant to paragraph 6(5)(a) of the Act, the appellant submits there was no evidence before the Registrar to justify finding that its registered trade-mark GOLDEN is clearly descriptive. It is submitted that by treating the issue of inherent distinctiveness of the appellant's trade-mark GOLDEN as a matter of stare decisis, the Registrar committed an error of law. The appellant notes that in the original application, the respondent did not disclaim the word "GOLDEN", but did so voluntarily after the filing of the statement of opposition. It is therefore submitted that the word GOLDEN has inherent distinctiveness in association with the wares covered under Molson's family of registered trade-marks and that this has been enhanced by the company's longstanding use and advertisement of its products in the Canadian marketplace. Further, as Molson owns the registered trade-mark for the word GOLDEN, it is submitted that it must be both distinctive and valid as there is no evidence to the contrary.

[24]            In regard to the length of time the trade-marks have been in use, the appellant submits that paragraph 6(5)(b) of the Act, clearly favours Molson as it has been selling beer under its GOLDEN family of trade-marks extensively and continuously since the mid-1950s, while the respondent has not yet commenced use of its trade-mark.

[25]            In regard to the nature of the wares, pursuant to paragraph 6(5)©) of the Act, the appellant submits that the evidence clearly shows that the wares of the parties under their respective trade-marks are identical.

[26]            The appellant submits that the evidence establishes that the nature of the trade of the parties, pursuant to paragraph 6(5)(d) of the Act, would also be identical. It is submitted that where there is an overlap in the channels of trade and where there are directly competitive products, the likelihood of confusion is obvious.

[27]            In assessing the degree of resemblance, pursuant to paragraph 6(5)(e) of the Act, it is submitted that the respondent has taken the whole of Molson's GOLDEN trade-mark and has incorporated it into its trade-mark. As licensing is common in the beer industry and given the alleged fame of the GOLDEN trade-mark, it is submitted that there is an obvious possibility of confusion. It is submitted that the fact the word "MOLSON" also appears on the labelling does not in any way alter the distinctiveness of the GOLDEN mark. In view of the alleged fame of the GOLDEN trade-mark and the family of GOLDEN trade-marks owned by Molson, it is submitted that there is a real likelihood that upon seeing the Anheuser's trade-mark, the average person might believe that this mark was either licenced or was another one of a series of trade-marks owned by Molson.

[28]            In regard to additional surrounding circumstances, the appellant submits that because Molson is the owner of a family of trade-marks which have been used for many years in association with wares which are identical to those covered in the respondent's trade-mark application, the possibility for confusion is obvious.

[29]            The appellant submits that the issue of distinctiveness is separate and apart from the issue of confusion. It is submitted that the Registrar simply failed to deal with the issue of non-distinctiveness and that this constitutes an error in law. It is submitted that the respondent has taken the whole of Molson's registered trade-mark GOLDEN and bracketed it between the geographical term "Michelob" and the generic word "draft", and as such the respondent's trade-mark is not adapted to distinguish its wares from those of Molson. It is submitted that the registration of the respondent's trade-mark would be contrary to section 19 and subsection 22(1) of the Act.

[30]            In view of the above, it is submitted that the respondent has not discharged the constant and heavy onus upon it to establish that its trade-mark is registrable and distinctive and that it is the person entitled to registration.

Respondent's Submissions

[31]            The respondent, Anheuser, submits that the only point in issue is whether the Registrar erred in finding no reasonable likelihood of confusion between the mark MICHELOB GOLDEN DRAFT & Design and Molson's GOLDEN and MOLSON GOLDEN trade-marks.

[32]            The respondent submits that the new evidence filed in this appeal merely repeats and confirms the evidence which was before the Registrar and is not evidence which would have materially affected the Registrar's finding of fact or the exercise of its discretion. It is therefore submitted that the standard of review is reasonableness simpliciter.

[33]            The respondent submits that to succeed on each of its grounds of opposition, Molson required the Registrar to find confusion between the marks at issue. It is submitted that once the Registrar found no reasonable likelihood of confusion under Molson's strongest ground, Molson's other confusion-based grounds also had to fail.

[34]            The respondent submits that a review of the factors set out in subsection 6(5) of the Act demonstrates that the trade-mark MICHELOB GOLDEN DRAFT & Design is unlikely to cause confusion with any of Molson's trade-marks containing the word GOLDEN.

[35]            The respondent submits that its trade-mark MICHELOB GOLDEN DRAFT & Design is inherently distinctive in relation to the wares covered by this application. It is submitted that the primary word of the mark, MICHELOB, is very unique and unusual in association with the wares and therefore inherently distinctive. The respondent notes that the mark also includes the fanciful A & Eagle Design. The respondent submits that as held by the Federal Court of Appeal, the word GOLDEN is clearly descriptive of beer, and a mark consisting of GOLDEN is therefore inherently very weak in relation to beer. It is submitted that the term GOLDEN should be available to all brewers of beer. It is submitted that on the issue of inherent distinctiveness of the mark GOLDEN in relation to beer, the Registrar did not need to consider more than the meaning of the words "golden" and "beer", and that it appropriately cited the decisions of the Federal Court of Appeal in support of this finding.

[36]            The respondent submits that the evidence also shows that the appellant uses GOLDEN always in close proximity to Molson. It is submitted that the inclusion of the house marks mitigates against there being any likelihood of confusion.

[37]            The respondent submits that the significant differences between the design elements in the parties' respective marks, and the descriptive presentation of GOLDEN in the MICHELOB GOLDEN DRAFT & Design mark, make confusion unlikely.

[38]            The respondent disputes Molson's suggestion that its registered trade-marks constitute a "family" and as such, it is submitted that it is not entitled to an increased scope of protection. It is submitted that Molson has merely shown use of a successive series of variations on its MOLSON GOLDEN mark.

[39]            The respondent submits that the Registrar did not rule on the validity of Molson's GOLDEN registration. It is submitted that the Registrar's comment that the appellant's GOLDEN mark possesses little inherent distinctiveness because of its descriptiveness was properly within its jurisdiction and relevant to this opposition.

[40]            The respondent submits that all of the grounds of opposition in this appeal turn on the issue of confusion and that lack of distinctiveness is often determined as part of an evaluation of whether a proposed mark is confusing with another mark. It is submitted that it is an independent ground of opposition because use of marks by others than the opponent can also be considered. It is therefore submitted that the Registrar applied the correct test in rejecting Molson's ground of opposition based on non-distinctiveness, after having found no reasonable likelihood of confusion between the marks at issue.

Issue

[41]            Should the appeal of the decision of the Registrar of Trade-marks be allowed?

Relevant Statutory Provisions

[42]            The relevant provisions of the Trade-marks Act, supra state:

Analysis and Order

[43]            Standard of Review

The Federal Court of Appeal stated in Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 (F.C.A.), leave to appeal to S.C.C. refused, [2000] S.C.C.A. No. 161, at page 196:

I think the approach in Benson & Hedges v. St. Regis and in McDonald's Corp. v. Silcorp are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.

I am of the view that this states the current law to be applied in this case.

[44]            I have reviewed the additional affidavit evidence filed in the appeal before the Court and I am of the view that the new evidence would have materially affected the Registrar's findings of fact. The new evidence included the evidence that Golden Promise Organic Beer, Fuller's Golden Pride and Golden Promise Ale were no longer on the Canadian market and that applications for the trade-marks for Golden Pride and Golden Promise were abandoned and supplementary materials that bring the evidence up to the material date on the issue of registrability. The standard of review is therefore correctness.

[45]            Although appeals pursuant to section 56 of the Act are often referred to as a trial de novo, this description of the appeal is not completely correct as an appeal under section 56 also involves a review of the findings of the Registrar.

[46]            Did the Registrar err in its finding of no confusion between Anheuser's trade-mark MICHELOB GOLDEN DRAFT & Design and the opponent's trade-marks?

The Registrar stated the grounds of opposition of non-registrability, non-entitlement and non-distinctiveness all turned on the issue of confusion. He further stated that the opponent's strongest ground of opposition was based on paragraph 12(1)(d) of the Act in light of Molson's registered trade-mark GOLDEN, registration No. 498,157. He proceeded to correctly state that on the paragraph 12(1)(d) ground, the legal burden was on Anheuser to establish that there would be no reasonable likelihood of confusion of its trade-mark and the opponent's registered trade-mark as of the date of his decision, which is the material date for considering the paragraph 12(1)(d) ground of opposition.

[47]            Paragraph 12(1)(d) states that a trade-mark is registrable if it is not confusing with a registered trade-mark. The Registrar stated that in determining a real likelihood of confusion between the marks, he must have regard to all the surrounding circumstances including, but not limited to, those that are specifically enumerated in subsection 6(5) of the Act, which states:

6.(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;

(b) the length of time the trade-marks or trade-names have been in use;

(c) the nature of the wares, services or business;

(d) the nature of the trade; and

(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.

The Registrar then proceeded to determine whether or not a likelihood of confusion existed.

[48]            Under section 6(2) of the Act, a trade-mark is confusing with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with the trade-marks were manufactured, sold, leased, hired or performed by the same company whether or not the wares or services are of the same general class.

[49]            In Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.), Décary J.A. stated at pages 387 to 389:

Applicable principles

To decide whether the use of a trade mark or of a trade name causes confusion with another trade mark or another trade name, the court must ask itself whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name 1 , the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class. (See s. 6(2), (3) and (4) of the Act; [1968] S.C.R. 134">Rowntree Co. v. Paulin Chambers Co., [1968] S.C.R. 134; Oshawa Holdings Ltd. v. Fjord Pacific Marine Industries Ltd. (1981), 55 C.P.R. (2d) 39, 36 N.R. 71 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 at pp. 9-10, [1988] 3 F.C. 91, 16 C.I.P.R. 282 (C.A.), Thurlow C.J. and Canadian Schenley Distilleries Ltd. v. Canada's Manitoba Distillery Ltd. (1975), 25 C.P.R. 1 at p. 12 (F.C.T.D.), Cattanach J.)

In determining whether there is a likelihood of confusion, the court shall have regard to all the surrounding circumstances, including those described in s. 6(5) above.

The onus is always upon an applicant for the registration of a trade mark to establish that, on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trade mark. (See Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 at p. 57 (F.C.T.D.), Cattanach J. and Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42 (F.C.T.D.), Cattanach J.)

The stronger the mark is, the greater the ambit of the protection it should be accorded and the more difficult it will be for an applicant to discharge the onus. As noted by Mahoney J. (as he then was) in Carson v. Reynolds (1980), 49 C.P.R. (2d) 57 at pp. 62-3, 115 D.L.R. (3d) 139, [1980] 2 F.C. 685 (T.D.), a trade mark may be:

. . . so generally identified with [a person] that its use in association with anything else, however remote from entertainment services, would be confusing in the sense that its use in both associations would be likely to lead to the inference that all the wares and services, whatever they might be, emanated from [that person].

Examples abound, in the jurisprudence respecting opposition to registration of trade marks, of the scope of protection to be afforded to strong marks 2 . The same is true in infringement cases 3 as well as in injunction cases 4 where weaker marks have also successfully passed the test. (For example see "LA BAGAGERIE WILLY LTE" for sale and repairs of suitcases, as opposed to "LA BAGAGERIE" for leather goods (Bagagerie SA v. Bagagerie Willy Ltée (1992), 45 C.P.R. (3d) 503, 97 D.L.R. (4th) 684, 148 N.R. 125 (F.C.A.)), an infringement action.)

The factors enunciated in s. 6(5)(a) to (e) need not be interpreted as having equal weight in all circumstances. Where, for example, a strong trade mark is measured against a proposed mark, criteria (c) and (d), i.e., the nature of the wares, services or business and the nature of the trade, are not particularly determinative. As was noted by Joyal J. in the Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289 at pp. 298-9, 36 A.C.W.S. (2d) 184 (F.C.T.D.), case:

Of particular relevance to the criteria outlined in s-s. 6(5) of the statute is the principle that they need not be interpreted as having equal weight. Each particular case of confusion might justify greater significance being given to one criteria than to others.

. . .

I should venture a further observation. It seems to me that the relationship between two opposing marks as regards the nature of the wares must bear a much more stringent test when a strong and historical trade mark is measured against a proposed mark. The strength of the mark is obviously its distinctiveness, i.e., a combination of vowels, syllables and sound which has an inherent quality that conjures a direct association not only with the specific wares which might otherwise be listed in the mark's registration, but with the proprietary image of all the several or multifarious operations of its owner. This, in my view, is the essence of the phrase "secondary meaning". I can do no better in finding support for this guiding principle than to cite the KODAK and the VOGUE cases... I will admit that no prior case resolved by the courts is ever completely on point. Nevertheless, in the case of such marks as KODAK, by the nature of its [page389] inherent distinctiveness, and of VOGUE, by reason of its acquired reputation as an arbiter of current fashions, courts have extended to them a much wider area of general protection than the narrower one of cameras on the one hand and a glossy magazine on the other. The fundamental purpose of the Trade Marks Act or the Unfair Competition Act, R.S.C. 1952, c. 274, or of the old common law right to a passing-off action is to protect acquired rights, whether such rights are acquired by usage or by registration. An applicant which uses Kodak in relation to bicycles or Vogue in relation to costume jewelry is in effect challenging prior rights. Such an applicant might some time succeed, but as stated by Lord Watson in Eno v. Dunn (1890), 15 App. Cas. 252 at p. 257:

". . . he . . . must justify the registration of his trade-mark by shewing affirmatively that it is not calculated to deceive. It appears to me to be a necessary consequence that, in dubio, his application ought to be disallowed."

and by Rouleau J. in Leaf Confections Ltd. v. Maple Leaf Gardens Ltd. (1986), 12 C.P.R. (3d) 511 at pp. 519-20, 10 C.I.P.R. 267, 7 F.T.R. 72:

Nevertheless, it is clear that in considering the elements of s-s. 6(5) of the Trade Marks Act, R.S.C. 1970, c. T-10, each element need not be interpreted as having equal weight. A particular case might justify greater significance being given to one criterion over others. As previously stated, I find the respondent's mark and design to be a strong one, well-known throughout Canada. In such cases the courts have held that the distinction between the wares and the nature of the trade of the two competing marks becomes less important.

For a likelihood of confusion to be found, it is not necessary that the parties operate in the same general field or industry, or that the services be of the same type or quality. Trade marks for wares and services of one quality intended for one class of purchasers may be confusing with trade marks for wares and services of a different type or quality, intended for a different class of purchasers. (See Bagagerie SA v. Bagagerie Willy Ltée, supra.)

[50]            Inherent Distinctiveness - Paragraph 6(5)(a)

The Registrar found that Anheuser's trade-mark, MICHELOB GOLDEN DRAFT & Design was inherently distinctive when considered in its entirety. This was true even though the words GOLDEN and DRAFT are both descriptive when applied to beer and were disclaimed by Molson apart from its trade-mark. The Registrar found that the opponent's registered trade-mark GOLDEN is clearly descriptive. Molson submitted that there was no evidence before the Registrar to show that Molson's trade-mark GOLDEN was clearly descriptive. I would note, however, the Federal Court of Appeal in John Labatt Ltd. v. Molson Cos. Ltd. (1987), 19 C.P.R. (3d) 88 (F.C.A.) stated at page 89:

. . . golden is a word one of whose primary meanings is to describe a colour. That colour is found in most beer . . . (there is even evidence to this effect but we trust that the colour of beer is a matter of which we may be allowed to take judicial notice).

Furthermore, in Molson Companies Ltd. v. John Labatt Ltd. (1994), 58 C.P.R. (3d) 527 (F.C.A.), the Court of Appeal stated at pages 528 to 529:

. . . 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. . . . It is not unlike the use of the qualifying adjectives 'red, white, rose and yellow' for wines. All of these epithets are of common use and serve to identify the nature and category of the product, not the trade mark of the producer.

I am satisfied that the Registrar did not make an error when he determined the word GOLDEN was clearly descriptive.

[51]            With respect to the Registrar's finding that the trade-mark MICHELOB GOLDEN DRAFT & Design is inherently distinctive, I am of the view that the Registrar was correct. The fact that this trade-mark includes the words "MICHELOB" and the "A & Eagle Design" in my opinion, makes the mark inherently distinctive and mitigates against confusion. I would also note that both parties' marks include their "House Marks". Molson's use of GOLDEN has always been prominently associated with the word "MOLSON" and since 1969, "MOLSON" has always been part of the label for MOLSON GOLDEN (Cross-examination of Michael S. Downey, questions 36 to 44).

[52]            Length of Time the Trade-marks have been in Use - Paragraph 6(5)(b)

There is no dispute that this factor favours the opponent and the Registrar was correct in this finding.

[53]            Nature of the Wares - Paragraph 6(5)(c)

The nature of the wares of the parties is the same as was correctly found by the Registrar.

[54]            Nature of the Trade - Paragraph 6(5)(d)

The Registrar correctly found that the nature of the trade or the channels of trade are the same.

[55]            The Degree of Resemblance between the Trade-marks in Appearance, Sound or Ideas Suggested by Them - Paragraph 6(5)(e)

The Registrar's finding with respect to this factor was:

Considering the degree of resemblance between the trade-marks at issue [para.6(5)(e)], there is in my view little similarity in appearance and only some similarity in sounding and in the ideas suggested by the applicant's trade-mark MICHELOB GOLDEN DRAFT & Design and the opponent's registered trade-mark GOLDEN, the applicant's mark includes the entirety of the opponent's registered trade-mark as a relatively minor element thereof.

[56]            In Park Avenue Furniture Corp. v. Wiches/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.), the Court of Appeal stated at page 426:

I agree with the appellant that marks are to be considered in their entirety. On this very point, H. G. Fox says the following:

In applying these tests the first principle to be invoked is that the marks are to be looked at as totalities and not as dissected items. The idea of each mark, that is, the net impression left by the mark as a whole upon the mind is to be considered. It is the mark taken in its entirety that is to be examined and a decision then arrived at whether such mark is likely to cause confusion with one already registered... The true test is whether the totality of the mark proposed to be registered is such that it is likely to cause mistake or deception or confusion in the minds of persons accustomed to the existing trade mark. It is the combination of the marks as a whole that is to be regarded and the effect or idea of the whole that is to be compared.

In British Drug Houses, Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48, [1944] 4 D.L.R. 577, [1944] Ex. C.R. 239; affd 5 C.P.R. 71, [1946] 1 D.L.R. 289, [1946] S.C.R. 50">[1946] S.C.R. 50, the Exchequer Court of Canada was seized with a motion under the Unfair Competition Act, 1932, S.C. 1932, c. 38, then in force, to expunge the registration of the trade mark MULTIVIMS on the ground that it was similar to the petitioner's trade mark MULTIVITE. In dealing with the likelihood of confusion in the mind of dealers or users of the wares, if both marks were used at the same time and in the same area, Thorson J. said the following (at p. 60):

It is, I think, firmly established that, when trade marks consist of a combination of elements, it is not a proper approach to the determination of whether they are similar to break them up into their elements, concentrate attention upon the elements that are different and conclude that, because there are differences in such elements, the marks as a whole are different. Trade marks may be similar when looked at in their totality even if differences may appear in some of the elements when viewed separately. It is the combination of the elements that constitutes the trade mark and gives distinctiveness to it, and it is the effect of the trade mark as a whole, rather than of any particular element in it, that must be considered.

[57]            Similarily, in United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.), Linden J.A. considered the application of paragraph 6(5)(e) of the Act at pages 263 to 264:

Obviously, where the marks are identical this analysis is not needed. But where the marks are similar, the Registrar or the Court must assess the likely impression made by the marks on the public. While the marks must be assessed in their entirety (and not dissected for minute examination), it is still possible to focus on particular features of the mark that may have a determinative influence on the public's perception of it. In Ikea Ltd/Ikea Ltée v. Idea Design Ltd. (1987), 13 C.P.R. (3d) 476 (F.C.T.D.), Dubé J. Found that, while the marks IKEA and IDEA were similar phonetically, there was nevertheless no likelihood of confusion. He stated:

Only one letter in each name is different, but the letter "k" in Ikea comes out strongly and gives the mark a very strong Scandinavian flavour, whereas the mark IDEA evokes mostly a concept, or a thought. . . .        

[58]            When the mark MICHELOB GOLDEN DRAFT & Design and the Molson marks are considered in their entirety, there is very little similarity in appearance. This is seen from exhibits "C" and "D" of the Michael S. Downey affidavit. There is little similarity between these labels and Anheuser's proposed trade-mark MICHELOB GOLDEN DRAFT & Design.

[59]            In Knirps International GMB H v. S.R.O. Apparels (Canada) Inc. (1990) 28 C.P.R. (3d) 434 (F.C.T.D.), Rouleau J. stated at page 439:

The situation in the present case is similar to that in a very recent decision rendered by Mr. Justice Dubé in Molson Cos. Ltd. v. John Labatt Ltd. (T-404-89, unreported decision rendered January 18, 1990 [since reported 28 C.P.R. (3d) 457, 19 A.C.W.S. (3d) 1369]), where he upheld the decision of the Registrar that WINCHESTER GOLD for beer was not confusing with GOLDEN or MOLSON GOLDEN, the word "golden" being an inherently weak mark, descriptive of the wares and frequently appearing on the Register. It was noted therein that in making a comparison, the first portion of a trade mark deserves enhanced significance (referring to Cantine Torresella S.r.l. v. Carbo (1987), 16 C.P.R. (3d) 137, 14 C.I.P.R. 234 (F.C.T.D.)), and that one must look to the trade mark as a whole and as used by the parties, rather than limiting oneself to a comparison, as in that case, of GOLD and GOLDEN.

The same would apply in the present case where the first word of the respondent's proposed trade-mark is MICHELOB.

[60]            The Registrar found only some similarity in sound and in the ideas suggested by Anheuser's trade-mark MICHELOB GOLDEN DRAFT & Design and the opponent's registered trade-mark GOLDEN and he stated that Anheuser's mark includes the entirety of Molson's registered trade-mark but that it was only a relatively minor element thereof. My observations lead me to conclude that the Registrar was correct in his conclusions on this factor.

[61]            All the Surrounding Circumstances

Under this heading, the Registrar considered the state of the Register evidence of L. Jane Sargeant and ruled that this evidence was only relevant insofar as one can make inferences from it about the state of the marketplace and further, that you can only make these inferences where large numbers of relevant registrations are located. The Registrar considered as a surrounding circumstances the CD "Namesearch" information submitted by Ms. Sargeant pertaining to applications or registrations not owned by the opponent which contain the word "gold" or "golden". However, he gave no weight to this evidence.

[62]            Another surrounding circumstance considered was the purchases by Mr. Bailey of beer with "gold" or "golden" on the label. The Registrar ruled that the third party marks containing "gold" were relevant and the labels with the word "golden" showed use by third parties other than the opponent but not the extent of such use in Canada.

[63]            There were other examples of surrounding circumstances listed and dealt with by the Registrar.

[64]            I find that the Registrar was correct in his conclusions on all of these surrounding circumstances.

[65]            Molson argues the Registrar erred in failing to consider the importance of its "family" of GOLDEN trade-marks as a surrounding circumstance in this case. Molson submits there is a greater likelihood than otherwise that the public would consider another mark having the common characteristic of its family as designating an additional product produced by the owner of the family of trade-marks.

[66]            Molson's list of its trade-marks containing the word GOLDEN is contained in paragraph 2 of the affidavit of Kimberley Anne Lane sworn to April 18, 2001. A perusal of the list shows that the only word common to all of the trade-marks is GOLDEN a word that has been held to be descriptive. The Federal Court of Appeal has held that the word GOLDEN is an adjective, "which, like blond, amber, pale, brown and dark are merely descriptive of categories of beers to which a given brand belongs (see Molson Companies Ltd. v. John Labbatt Ltd., supra). I am not satisfied that Molson's list of trade-marks constitutes a family of trade-marks.

[67]            The Registrar found:

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Even considering that the wares and the nature of the trade of the parties are the same, I still find that there would be no reasonable likelihood of confusion between the applicant's trade-mark and any of the opponent's registered trade-marks including the registered trade-mark GOLDEN in that there is little similarity between the trade-marks at issue in appearance, in sounding or in the ideas suggested and the opponent's trade-mark GOLDEN is an inherently weak mark which has only been shown to have become well known in Canada in combination with its house mark MOLSON or MOLSON'S. Furthermore, the evidence establishes some measure of third party use of trade-marks including the word "golden" as applied to beer in the marketplace in Canada. I have therefore dismissed the opponent's remaining grounds of opposition.

I am of the view that the Registrar was correct in his finding of no reasonable likelihood of confusion between the trade-marks at issue.

[68]            Did the Registrar err in law and exceed his jurisdiction by attacking the validity of Molson's registered trade-mark GOLDEN within the scope of the opposition proceedings?

Molson seems to argue that the Registrar's ruling that the GOLDEN trade-mark was descriptive, in effect, attacked the validity of its registration. While I agree the Registrar in the context of an opposition proceeding has no jurisdiction to expunge a trade-mark from the Register, I do not agree with Molson's interpretation of the Registrar's decision in this case. An argument similar to Molson's was rejected in Canada Games Co. v. Llumar Star Kites Inc. (1995), 64 C.P.R. (3d) 1 (F.C.T.D.), aff'd (1996), 69 C.P.R. (3d) 454 (F.C.A.)). As Simpson J. ruled in Canada Games, supra, the Registrar was obliged under paragraph 6(5)(a) to consider inherent and acquired distinctiveness when assessing the likelihood of confusion between trade-marks. The ruling that "golden" is descriptive relates to the inherent distinctiveness and strength of the mark, not its validity per se. The Registrar was correct in determining that the trade-mark GOLDEN was descriptive, did not exceed his jurisdiction or rule on the validity of Molson's GOLDEN registration.

[69]            Non-distinctiveness as a Separate Ground of Opposition

Molson argues the Registrar erred in fact and law in failing to consider and dispose of the fourth ground of opposition set out in paragraph 3(d) of its amended statement of opposition, based on paragraph 38(2)(d) of the Trade-marks Act, namely that the trade-mark claimed in the application does not distinguish and is not adapted to distinguish the wares of trade-mark applied for from those of Molson. Molson contends that the grounds of confusion and non-distinctiveness are separate and distinct grounds of opposition, and should have been treated as such by the Registrar.

[70]            The jurisprudence is clear that confusion with a registered trade-mark and lack of distinctiveness of a trade-mark submitted for registration are two separate grounds of challenge. In Miss Universe, Inc. v. Bohna, supra, the Federal Court of Appeal stated at page 387:

It is worth remembering at the outset that by a combination of ss. 12(1)(d), 38(2)(b) and (d), confusion with a registered trade mark and lack of distinctiveness of a trade mark submitted for registration are two separate grounds of challenge, even though, by virtue of s. 6(5)(1), the inherent distinctiveness of a trade mark is a factor to consider in determining whether there is or is not confusion.

[71]            In Hughes, Roger T. and T.P. Ashton, Hughes on Trade Marks, looseleaf (Markham, Ont.: Butterworths, 1984), _ 32 on distinctiveness reads in part (at page 458):

An application that has been approved and advertised for opposition may be opposed on the basis that the mark lacks distinctiveness. While distinctiveness is quite often determined as part of an evaluation of whether a proposed mark is confusing with another mark, it is an independent ground for refusing registration because use of a mark by others can be use by others other than the opponent. . . .

[72]            In Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 (F.C.T.D.), Denault J. stated at page 428:

The ground of opposition considered here is set out in paragraph 38(2)(d) of the Trade-marks Act: "that the trade mark is not distinctive". "Distinctive" is defined in section 2 of the Act as:

"distinctive"... a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them.

While distinctiveness is quite often determined as part of an evaluation of whether the proposed trade mark is confusing with another trade mark within the meaning of section 6 of the Act, it is possible to refuse an application for registration on the basis of non-distinctiveness independent of the issue of confusion, provided the ground is raised in opposition. This is because of the reference to "others", meaning any other person, provided in the definition and because the material dates for determining the issues are different. The appellant argued that subsection 17(1) applied to the ground of distinctiveness such that the opponent could not rely on evidence relating to "others" who are not the opponent's predecessors in title. I must disagree. The quality of distinctiveness is a fundamental and essential requirement of a trade mark and the ground of lack of distinctiveness may be raised in opposition by any person and may be based on a failure to distinguish or to adapt to distinguish the proposed trade mark from the wares of any others.

An application for registration may be opposed and refused on the basis of non-distinctiveness independent of the issue of confusion.

[73]            Molson submits that the Registrar did not consider and dispose of the fourth ground of opposition, namely that the respondent's mark was not distinctive (paragraph 38(2)(d) of the Act). The Registrar did dispose of all of the grounds of opposition because he stated in his decision that he "dismissed the opponent's remaining grounds of opposition". The issue is whether he disposed of the paragraph 38(2)(d) ground correctly.

[74]            A review of the grounds of opposition establishes that Molson's non-distinctiveness argument was based on confusion. Ground (d) in the amended statement of opposition reads:

The Opponent bases its opposition on the ground set out in Section 38(2)(d), namely, that the trade-mark claimed in the application is not distinctive in view of the facts alleged in this Statement of Opposition and also since it is not adapted to distinguish the wares in association with which it is proposed to be used by the Applicant from the wares of others including the wares of the Opponent, and the Applicant's trade-mark is not adapted so to distinguish them.

Without limiting the generality of the foregoing, in view of the facts herein, the trade-mark is not distinctive of the Applicant. The Opponent has extensively sold brewed alcoholic beverages in Canada and advertised same in association with its aforementioned trade-marks all of which contain the word GOLDEN. At all material times, the Opponent has extensively sold brewed alcoholic beverages in Canada and advertised same, in association with the Opponent's trade-marks referred to herein. The trade-mark GOLDEN is distinctive of the Opponent and therefore the mark subject of this application cannot be distinctive of the Applicant.

[75]            The ground of opposition is that the trade-mark is not distinctive in view of the facts alleged in this statement of opposition. The only facts in the statement of opposition relate to confusion. The only evidence put forward by Molson on the non-distinctiveness ground is its use of its own trade-marks with which it states that Anheuser's mark is confusing.

[76]            The Registrar in this case assessed Molson's case for confusion at its strongest, that is, on the ground of opposition of non-registrability. This was the strongest ground for finding confusion because the matter would be disposed of based on the evidence produced at the material date of the Registrar's decision on registrability. On this date, Molson could rely on its GOLDEN registration and one of its certification marks. These could not be relied on when assessing the other two grounds of opposition under paragraphs 38(2)(c) and (d) as Molson's marks were not registered at the material dates for these grounds. The trade-mark GOLDEN was registered on July 30, 1998 and the MOLSON GOLDEN certification mark on February 13, 1997. The Registrar considered the trade-mark GOLDEN up to the date of the decision and came to the conclusion that Anheuser's mark was not confusing with Molson's marks.

[77]            As stated earlier, Molson relied on the allegation of facts for the other grounds of opposition as a basis for establishing non-distinctiveness. If there was no finding of a likelihood of confusion based on the evidence at the date of the decision (more evidence could be considered at this point in time in this case than at the material dates for non-entitlement and non-distinctiveness), there could be no finding of confusion at the material dates for non-entitlement and non-distinctiveness. The material date for assessing non-entitlement was the date of the registration application and for non-distinctiveness was the date of the filing of the opposition.

[78]            As a result of there being no confusion established by the evidence on the non-registrability ground, I agree with the Registrar that there could be no confusion found to support the non-distinctiveness ground. Confusion was the only basis put forward by Molson for its claim that Anheuser's mark was not distinctive.

[79]            Since there was no suggestion that Anheuser's trade-mark did not distinguish its wares from the wares of "others" as distinct from Molson's, the ground of non-distinctiveness could be determined as part of the determination process for the issue of confusion. Therefore, it was not an error for the Registrar to dispose of Molson's non-distinctiveness ground of opposition in the manner he did.

[80]            Molson has also raised non-entitlement pursuant to paragraph 38(2)(c) of the Act as a ground of opposition. The material date as of which to consider non-entitlement is as of the date of the application for registration of a mark. The Registrar stated that he dismissed Molson's remaining grounds of opposition which would include the non-entitlement ground. Confusion was the basis put forward for this ground of opposition as well. I would apply the same reasoning to this ground as I applied to the non-distinctiveness ground and as no likelihood of confusion was established by the evidence on the non-registrability ground, I agree with the Registrar there could be no likelihood of confusion found to support the non-entitlement ground.

[81]            The Registrar correctly noted the material date for the issue of registrability and that the remaining grounds of opposition had different material dates.

[82]            I am of the view that the appeal of Molson must be dismissed as the Registrar was correct in his findings.

[83]            Anheuser shall have its costs of the appeal.

ORDER

THIS COURT ORDERS that

1.          The appeal of Molson is dismissed.

2.          Anheuser shall have its costs of the appeal.

    "John A. O'Keefe"

                                                                                                   J.F.C.                         

FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                           T-632-01

STYLE OF CAUSE:               MOLSON CANADA

Applicant

and

ANHEUSER-BUSCH, INCORPORATED

Respondent

PLACE OF HEARING:                     OTTAWA, ONTARIO            

DATE OF HEARING:                       MAY 5, 2003

REASONS FOR ORDER

AND ORDER BY:                             O'KEEFE J.

DATED:                                              NOVEMBER 5, 2003

APPEARANCES:                               Ms. Adele Finlayson

Mr. John S. Macera     

FOR APPLICANT

Mr. Mark L. Robbins

FOR RESPONDENT

SOLICITORS OF RECORD:           Macera & Jarzyna

Ottawa, Ontario

FOR APPLICANT

Bereskin & Parr

Toronto, Ontario          

FOR RESPONDENT

FEDERAL COURT

       Date: 20031105

Docket: T-632-01

BETWEEN:

MOLSON CANADA

                                            Applicant

and

ANHEUSER-BUSCH, INCORPORATED

                                     Respondent

REASONS FOR ORDER

AND ORDER