Molson Canada v. Anheuser-Busch Inc., 2003 FC 1287

Date: 20031105

Docket: T-926-01

Citation: 2003 FC 1287

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 under Serial No. 693,432,

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 March 28, 2001. The Registrar of Trade-marks rejected Molson's opposition to the registration, by Anheuser-Busch, Inc. ("Anheuser" or "respondent"), of the trade-mark application for MICHELOB GOLDEN DRAFT, based on proposed use of the trade-mark in Canada in association with a list of wares.

[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 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. 693,432 for the trade-mark MICHELOB GOLDEN DRAFT.

[4]                The application was based on proposed use in Canada in association with a wide variety of items including clothing, sports equipment, bags, textiles, gift and novelty items, stationary items, games, soaps, jewellery, beer bread mix and chocolates. The application was also based on use and registration of the trade-mark in the United States in association with "clothing, namely gloves, shirts, jackets and hats". 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 November 12, 1991. It was amended on November 17, 1995. Anheuser claimed and was accorded a priority filing date of August 9, 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 March 3, 1993.

[7]                Molson filed a statement of opposition on July 28, 1993. An amended statement of opposition was filed on September 17, 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. Further, the applicant has not used the applied for trade-mark in the United States, as alleged. Moreover, any use or intention to use the applied for trade-mark is not as a trade-mark, but in a decorative manner.

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 was confusing with the opponent's above identified trade-marks previously used in Canada.

e) The applied for trade-mark is not distinctive of the foregoing. Further, 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. It is common in the trade for brewers such as the applicant and the opponent to market various products unrelated to beer such as the products listed in the present application. The marketing of such products is ancillary to the brewer's primary business and serves to generate additional revenue to the brewer and also to advertise its brands of beer. The opponent has extensively sold such "merchandising items" in Canada in association with its marks all of which contain the word GOLDEN. As a result of such extensive sales and advertising of such products bearing said trade-marks, consumers in Canada would recognize that the word "golden" when used in connection with such products is distinctive of the opponent. Therefore, the applied trade-mark cannot be distinctive of the applicant. Further, the trade-mark GOLDEN is distinctive of the opponent and therefore the applied for trade-mark cannot be distinctive of the applicant.

[8]                Anheuser filed a counter-statement in response to the statement of opposition on November 5, 1993.

[9]                Before the Registrar of Trade-marks, Molson submitted as its evidence, the affidavits of Katherine Davie, Blair Shier and Hui Ming Zheng. Anheuser submitted as its evidence, the affidavits of William S. Campbell, L. Jane Sargeant, Todd D. Bailey, Cynthia L. Martens, Robert W. White, Janice M. Bereskin and Isis E. Caulder.

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

[11]            By decision dated March 28, 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 subsections 30(d) and 30(e) of the Act. The Registrar found that Anheuser's evidence was not inconsistent with its claim that it intended to use its mark as a trade-mark in association with the wares covered in the present application.

[14]            With respect to the subsection 30(d) issue, the Registrar did not consider the absence of merchandising products bearing Anheuser's trade-mark from its catalogues as being "clearly" inconsistent with its claim that it has used the trade-mark MICHELOB GOLDEN DRAFT in the United States. As such, it dismissed this aspect of the second ground of opposition.

[15]            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 and its registered certification mark MOLSON GOLDEN & Design, registration No. 471,067.

[16]            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. Likewise, the Registrar found that the opponent's registered certification mark MOLSON GOLDEN & Design possesses some measure of inherent distinctiveness when considered in its entirety as applied to the wares covered in registration No. 471,067 even though the word MOLSON has a surname significance. Citing two Court of Appeal cases, the Registrar found that the opponent's registered trade-mark GOLDEN is clearly descriptive of brewed alcoholic beverages and therefore possesses little inherent distinctiveness.

[17]            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. Likewise, the Registrar noted that no evidence of use of the certification mark MOLSON GOLDEN & Design was furnished by the opponent and that it too must be considered as not having become known to any extent in Canada. 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.

[18]            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 wares differ from the brewed alcoholic beverages covered in registration No. 498,157. However, as the wares are intended to be merchandising items related to its MICHELOB GOLDEN DRAFT beer, the Registrar noted that the channels of trade associated with Anheuser's merchandising items and the opponent's brewed alcoholic beverages could potentially overlap. Further, the Registrar found that Anheuser's wares overlap the wares covered in registration No. 471,067 and that there could be potential overlap in the channels of trade associated with these wares.

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

[20]            As a further surrounding circumstance in assessing the likelihood of confusion between the trade-marks at issue, the Registrar took into consideration the affidavit evidence of Ms. Bereskin. The Registrar found that given the large number of marks containing the word GOLDEN on the Register (excluding those marks standing in the name of the opponent) from a database search of the records of the Canadian Trade-marks Office, it would be expected that a fair number of the marks would be in use and that consumers would therefore be able to distinguish such marks in the marketplace.

[21]            The Registrar also 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.

[22]            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 the opponent's registered certification mark MOLSON GOLDEN & Design, registration No. 471,067 in that there is little similarity in appearance, in sounding or in the ideas suggested by the applicant's trade-mark MICHELOB GOLDEN DRAFT and the opponent's certification mark MOLSON GOLDEN & Design when these marks are considered in their entireties. Furthermore, the state of the register evidence submitted by way of the Bereskin affidavit points to there being relatively common adoption of the mark GOLDEN in relation to various of the wares covered in the present application and in the opponent's registered certification mark.

With respect to the opponent's remaining trade-marks and, in particular, its registered trade-mark GOLDEN, I likewise find that there would be no reasonable likelihood of confusion between the applicant's trade-mark MICHELOB GOLDEN DRAFT and any of these marks in that the applicant's wares differ from the brewed alcoholic beverages associated with the opponent's marks even though, as noted above, there could be a potential overlap in the nature of the trade associated with the applicant's wares and the opponent's brewed alcoholic beverages. Moreover, there is only some similarity in appearance, in sounding and in the ideas suggested by the applicant's trade-mark and the opponent's trade-mark GOLDEN which 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 state of the register evidence submitted by way of the Bereskin affidavit points to there being relatively common adoption of the mark GOLDEN in relation to various of the wares covered in the present application. Also, the applicant's evidence establishes that there has been some measure of third party use of trade-marks including the word GOLDEN as applied to beer in the marketplace in Canada.

[23]            The appellant, Molson, submits that the Registrar erred in fact and in law in rejecting its opposition based on subsections 30(d) and (e) of the Act and holding that Anheuser had met its burden of establishing that it intended to use the word MICHELOB GOLDEN DRAFT as a trade-mark in Canada on the wares covered in the application and that it had used the trade-mark in the United States in face of evidence to the contrary.

[24]            The appellant submits that the Registrar erred in holding that the trade-mark MICHELOB GOLDEN DRAFT is not confusing with Molson's registered trade-mark GOLDEN and its family of registered trade-marks which include the word GOLDEN.

[25]            The appellant submits that the Registrar further erred in holding that the ambit of protection for Molson's family of trade-marks, which include the word GOLDEN, should be limited on the basis that this word is often used along with the house mark MOLSON or MOLSON'S.

[26]            The appellant submits that the Registrar further erred in considering state of the Register evidence on the issue of confusion as determinative when such evidence was inadmissible and irrelevant to the issues before it.

[27]            The appellant submits that the Registrar further erred in law and exceeded its jurisdiction in attacking the validity of Molson's registered trade-mark GOLDEN within the scope of the opposition proceedings.

[28]            The appellant submits that the Registrar erred both in fact and in law in failing to consider the fourth ground of opposition, namely that the trade-mark claimed in the application does not distinguish, nor is it adapted to distinguish the wares for which the trade-mark was applied from those of Molson.

[29]            The appellant submits the Registrar erred in not differentiating between the material dates for the grounds of non-registrability, non-entitlement and non-distinctiveness which are separate and distinct grounds of opposition.

[30]            The appellant 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.

[31]            In regard to compliance under section 30 of the Act, it is submitted that Molson has more than met the limited evidential burden under paragraphs 30(d) and (e) of the Act and that there is no evidence raised by the respondent to rebut the presumption raised by that evidence. It is submitted that the respondent has not met its legal burden and established that it ever had any intention of using its trade-mark in Canada in association with the wares covered in the subject application.

[32]            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. 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.

[33]            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.

[34]            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 promotional wares of the parties under their respective trade-marks are overlapping. In addition, the promotional wares are closely associated with the parties' main product, namely beer.

[35]            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.

[36]            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 respondent's trade-mark, that the average person might believe that this mark was either licenced or was another one of a series of trade-marks owned by Molson. It is submitted that the evidence of the state of the register filed by the respondent does not alter this fact and that the Registrar's reliance on the CD-ROM search constituted an error of law.

[37]            In regard to additional surrounding circumstances, the appellant submits that because Molson is the owner of a family of trade-marks there is a greater likelihood of confusion that the public would consider another mark, with a common characteristic, as a product produced or licenced by Molson's.

[38]            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". In addition, it is submitted that the evidence establishes that the respondent does not sell its promotional products, but uses them purely as a device to promote and sell its beer.

[39]            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

[40]            The respondent, Anheuser, submits that the points in issue are whether the Registrar erred in:

(a) finding that the evidence was not clearly inconsistent with Anheuser intending to use the trade-mark MICHELOB GOLDEN DRAFT in Canada;

(b) finding that the evidence was not clearly inconsistent with Anheuser having used the trade-mark MICHELOB GOLDEN DRAFT in the United States; and

©) finding no reasonable likelihood of confusion between the mark MICHELOB GOLDEN DRAFT, and Molson's GOLDEN and MOLSON GOLDEN trade-marks.

[41]            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.

[42]            The respondent submits that the state of the register evidence shows a large number of registrations for marks including the word GOLDEN covering a broad range of wares related to those covered by the application in issue. It is submitted that such evidence is admissible and that the Registrar is entitled to draw inferences about the state of the marketplace from such information.

[43]            The respondent submits that Molson's grounds of opposition under subsections 30(d) and (e) have no merit and the Registrar clearly did not err in dismissing these grounds. In regard to the subsection 30(d) ground, it is submitted that the respondent's evidence is not inconsistent with its claim to have used the mark MICHELOB GOLDEN DRAFT in the U.S. In regard to the subsection 30(e) ground, it is submitted that the respondent's evidence is not inconsistent with its claim to intend to use the trade-mark MICHELOB GOLDEN DRAFT in Canada with the promotional items covered by the application. It is submitted that there is no evidence of how the respondent intends to use the mark in Canada, and it is under no obligation to commence use of the mark until after its application is allowed by the Trade-mark Office.

[44]            Anheuser submits that for Molson to succeed on each of its grounds of opposition, the Registrar would have fo find a likelihood of 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.

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

[46]            The respondent submits that its trade-mark MICHELOB GOLDEN DRAFT 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 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", that it appropriately cited the decisions of the Federal Court of Appeal in support of this finding.

[47]            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.

[48]            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.

[49]            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.

[50]            The respondent submits 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

[51]            Should the appeal of the decision of the Registrar be allowed?

Relevant Statutory Provisions

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

Analysis and Decision

[53]            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.

[54]            I have reviewed the additional affidavit evidence filed in 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. The Registrar relied on references in volumes and internet sites to beers which included the word GOLDEN on their labels. The new evidence shows that there are no trade-mark registrations for these products. The applicable standard of review is therefore, correctness.

[55]            I agree with Molson's summary of the onus in opposition proceedings:

The legal onus on all of the issues mentioned, namely, formal compliance, registrability, entitlement and distinctiveness lies squarely with the trade-mark applicant, in this instance, on the Respondent. An opponent has an evidential onus on each of its grounds. However, once the Opponent has met its basic evidential onus, the legal onus shifts to the trade-mark applicant to establish the registrability and the distinctiveness of its trade-mark and its entitlement to registration. Where there is any doubt as to registrability or distinctiveness, that doubt is to be resolved against the trade-mark applicant and the application should be rejected.

[56]            Subsection 30(e) Ground

Subsection 30(e) of the Act states:

30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing

. . .

(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;

I agree that the evidential burden on the opponent with respect to the 30(e) ground is a relatively light one and I also note that the opponent's evidential burden can be met by reference to both its own evidence and the cross-examination transcripts and by reference to Molson's evidence. Molson stated that the following portion of the cross-examination of Mr. Campbell is sufficient to meet the initial evidentiary burden on it in relation to the subsection 30(e) ground:

Q.             All right. Now when we talk about use of the trade mark in association with items such as caps, t-shirts, and so on, how would that trade mark have been displayed on these products?

A.             The name would be very visible on the hat or the t-shirt or the golf shirt.

Q.             So it would actually be on the . . .

A.             The article.

Q.             . . . the article itself, on the body of it, in a very visible location?

A.             Yes.

Q.             What is the reason for making it so visible on these products?

A.             For purposes of making your brand aware . . . building awareness for your brand among consumers, distributors, retailers.

Q.             Would this particular trade mark appear on the label itself? For example, the label on the inside neck of the t-shirt?

A.             Not to my knowledge.

[57]            Molson argued before me that the respondent does not intend to sell the items thus it will not be using the trade-mark. References were made to the testimony of Mr. Meyer which deals with the sale of items with the trade-mark "Michelob" and not "Michelob Golden Draft". The evidence put forward by Molson does not provide any basis for saying that the respondent does not intend to use the mark MICHELOB GOLDEN DRAFT with the wares covered by this application in Canada. I acknowledge that the evidential burden on Molson is a relatively light one as the facts supporting no intention to use the mark in Canada are particularly within the knowledge of Molson. The evidence is not inconsistent with the respondent's intention to use the applied for trade-mark in Canada.

[58]            Molson also submitted before the Registrar that since Anheuser had not commenced using the proposed trade-mark in Canada by the time of the Campbell cross-examination, it had no intention to use the trade-mark in Canada. I agree that this is not correct or there is no requirement to use the proposed mark until it is approved.

[59]            I find that Molson has not met its initial evidentiary onus to show that the respondent does not intend to use the proposed mark in Canada. The Registrar was therefore correct in his conclusion on this ground of opposition.

[60]            Subsection 30(d) Ground

Section 30 of the Act reads as follows:

30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing

. . .

(d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant's named predecessor in title on which the applicant bases the applicant's right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant's named predecessor in title, if any, in association with each of the general classes of wares or services described in the application;

[61]            Molson argued that since the Michelob catalogues did not contain any reference to goods promoting the Anheuser's MICHELOB GOLDEN DRAFT mark, Anheuser did not use its proposed trade-mark in the United States. I agree that the Registrar was correct in stating that this is not inconsistent with its claim that it used the trade-mark "GOLDEN DRAFT" in the United States. Molson also submitted that since the respondent's trade-mark MICHELOB GOLDEN DRAFT was cancelled on January 11, 1999 due to failure to file an affidavit of use, this indicated that the proposed trade-mark was not used in the United States. I do not agree. This is not inconsistent with there being use in the United States as indicated by the other evidence and claims. The failure to file may simply have been an oversight.

[62]            I am of the view that the Registrar was correct when he ruled the subsection 30(d) ground failed. Molson did not meet its initial evidentiary burden.

[63]            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.

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

The Registrar stated the remaining grounds of opposition of non-registrability, non-entitlement and non-distinctiveness all turned on the issue of confusion between Anheuser's trade-mark MICHELOB GOLDEN DRAFT and the opponent's trade-marks. He further stated that the opponent's strongest ground was that based on paragraph 12(1)(d) of the Act because of Molson's registered trade-mark GOLDEN, registration No. 498,157 and its registered certification mark MOLSON'S GOLDEN & Design, registration No. 471,671, a representation of which appears below.

[65]            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;

©) 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.

[66]            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.

[67]            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 ©) 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.)

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

The Registrar found that Anheuser's trade-mark, MICHELOB GOLDEN DRAFT was inherently distinctive as applied to the wares covered in the present application. He found that the opponent's certification mark, MOLSON GOLDEN & Design had some measure of inherent distinctiveness when considered in its entirety as applied to the wares covered in registration No. 471,067. This was so even though the word "MOLSON" had a surname significance. As well, the Registrar determined that Molson's registered trade-mark "GOLDEN" was clearly descriptive of brewed alcoholic beverages and therefore possesses little inherent distinctiveness.

[69]            With respect to the Registrar's finding that the trade-mark MICHELOB GOLDEN DRAFT is inherently distinctive, I am of the view that the Registrar was correct. The trade-mark MICHELOB GOLDEN DRAFT includes the words "MICHELOB" and 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). "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.

[70]            I would also agree with the Registrar's final conclusion on the factors contained in paragraph 6(5)(a) of the Act.

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

Anheuser's trade-mark has not been used in Canada so this factor favours Molson's mark.

[72]            Nature of the Wares, Services or Business - Paragraph 6(5)©)

The Registrar found that Anheuser's wares differ from Molson's wares (brewed alcoholic beverages) with respect to the GOLDEN trade-mark. He found that Anheuser's wares overlapped Molson's wares with respect to the MOLSON GOLDEN & Design trade-mark. I agree with both of these findings.

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

The Registrar found that there might potentially be an overlapping of the channels of trade for Anheuser's wares and Molson's brewed alcoholic beverages because Anheuser's wares are intended to be merchandising items related to MICHELOB GOLDEN DRAFT beer. He also found there would be an overlapping of the channels of trade for Anheuser's wares and the wares covered by the MOLSON GOLDEN & Design registration. I agree.

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

The Registrar stated as follows about this factor:

Considering the degree of resemblance between the trade-marks at issue [para.6(5)(e)], there is little similarity in appearance, in sounding or in the ideas suggested by the applicant's trade-mark MICHELOB GOLDEN DRAFT and the opponent's certification mark MOLSON GOLDEN & Design when these marks are considered in their entireties as a matter of immediate impression. There is, however, some similarity in appearance, sounding and in the ideas suggested by the applicant's mark and the opponent's registered trade-mark GOLDEN, the applicant's mark including the entirety of the opponent's trade-mark.

[75]            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.

[76]            Similarly, 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. . . .            

[77]            When the mark MICHELOB GOLDEN DRAFT and Molson's certification mark MOLSON GOLDEN & Design are considered in their entirety, there is very little similarity in appearance when looked at in the required manner. This can be seen from looking at exhibits "C" and "D" of the Michael S. Downey affidavit.

[78]            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".

[79]            The Registrar found only some similarity in appearance, sounding and in the ideas suggested by Anheuser's trade-mark MICHELOB GOLDEN DRAFT and the opponent's registered trade-mark GOLDEN and he stated that the respondent'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.

[80]            Surrounding Circumstances

State of the Register evidence was filed by the respondent by way of affidavits of L. Jane Sargeant and Janice M. Bereskin and the appellant filed the affidavit of Lynda Palmer.

[81]            The Registrar accorded no weight to Ms. Sargeant's evidence, primarily because on cross-examination, it was revealed that her search results included expunged registrations, abandoned applications or applications involved in pending opposition proceedings. The Registrar did not err in this respect.

[82]            The affidavit evidence of Ms. Bereskin was considered by the Registrar as follows:

In her affidavit, Ms. Bereskin states that she conducted a search of the CD-NAMESEARCH database on CD-ROM compiled from the records of the Canadian Trade-marks Office to locate any active applications or registrations in International Classes 3, 6, 8, 9, 12, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30 and 34 containing the word GOLDEN in the trade-mark, but excluding those marks standing in the name of the opponent. Ms. Bereskin has annexed to her affidavit the computerized information pages generated by the computer for her search conducted in the CD-NAMESEARCH system which she printed during the course of her search. The opponent submitted that no weight should be given the computer generated printouts annexed to Ms. Bereskin's affidavit in that the affiant did not verify the accuracy of the information contained in the printouts with the actual records located in the Trade-marks Office [see Bereskin cross-examination, pages 5-6]. However, the information contained in the CD-NAMESEARCH system is that provided by and relied upon by the Trade-marks Office. In this regard, in Amway Corporation v. Nutravite Pharmaceutical Inc., a yet unreported decision of the Trade-marks Opposition Board dated February 17, 2001 involving the trade-mark NUTRAVITA, application No. 790,667, Board Member Martin commented as follows concerning the admissibility of the results of a search on the CD-NAMESEARCH system as follows:

The opponent objected to the admissibility of Ms. Harris' search results on the basis that they comprise inadmissible hearsay since the database searched by Ms. Harris is owned by a third party, CDName Search Corp. Technically, there may be some merit in the opponent's objection. However, given that the Trade-marks Office provides the information for the third party database and relies on it itself in its own public search room suggests that it is a reliable reflection of the Office records. Thus, I consider Ms. Harris' search results to be reliable and admissible.

Likewise, I am of the view that in the absence of evidence pointing to inaccuracies in the computer printouts of the results of the information contained in the database search, the printouts should likewise be admissible as evidence in an opposition proceeding.

Excluding the pending applications and those registrations for trade-marks including words which are phonetically equivalent to the word "GOLDEN", such as GOLD'N and the like, the results of Ms. Bereskin's search revealed the existence of more than 250 trade-mark registrations covering a broad range of wares related to those covered in the present application. Given the large number of marks disclosed by the search results, I would expect that a fair number of the marks would be in use and that consumers would therefore be able to distinguish such marks in the marketplace. I am of the opinion that the Registrar was correct in his assessment of this surrounding circumstance.

[83]            The same reasoning should apply to the affidavit of Patricia MacFarlane.

[84]            I have reviewed the remaining surrounding circumstances listed by the Registrar and I agree with his conclusions.

[85]            On appeal, Molson argues the Registrar erred by failing to consider the import of its "family" of GOLDEN trade-marks as a surrounding circumstance. 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.

[86]            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.

[87]            The Registrar made the following finding in relation to confusion:

In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Even considering that the nature of the wares and the nature of the trade of the parties are the same, I find that there would be no reasonable likelihood of confusion between the applicant's trade-mark and the opponent's registered certification mark MOLSON GOLDEN & Design, registration No. 471,067 in that there is little similarity in appearance, in sounding or in the ideas suggested by the applicant's trade-mark MICHELOB GOLDEN DRAFT and the opponent's certification mark MOLSON GOLDEN & Design when these marks are considered in their entireties. Furthermore, the state of the register evidence submitted by way of the Bereskin affidavit points to there being relatively common adoption of the mark GOLDEN in relation to various of the wares covered in the present application and in the opponent's registered certification mark.

With respect to the opponent's remaining trade-marks and, in particular, its registered trade-mark GOLDEN, I likewise find that there would be no reasonable likelihood of confusion between the applicant's trade-mark MICHELOB GOLDEN DRAFT and any of these marks in that the applicant's wares differ from the brewed alcoholic beverages associated with the opponent's marks even though, as noted above, there could be a potential overlap in the nature of the trade associated with the applicant's wares and the opponent's brewed alcoholic beverages. Moreover, there is only some similarity in appearance, in sounding and in the ideas suggested by the applicant's trade-mark and the opponent's trade-mark GOLDEN which 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 state of the register evidence submitted by way of the Bereskin affidavit points to there being relatively common adoption of the mark GOLDEN in relation to various of the wares covered in the present application. Also, the applicant's evidence establishes that there has been some measure of third party use of trade-marks including the word GOLDEN as applied to beer in the marketplace in Canada. In view of the foregoing, I have dismissed the opponent's remaining grounds of opposition.

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

[88]            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.

[89]            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 the 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.

[90]            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.

[91]            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. . . .

[92]            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.

[93]            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.

[94]            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 alleged to be used in the United States or 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. It is common in the trade for brewers such as the applicant and the opponent to market various products unrelated to beer such as the products listed in the applicant's application. The marketing of such products is ancillary to the brewers primary business and serves to generate additional revenue to the brewer and also to advertise its brands of beer. The Opponent has extensively sold such "merchandising items" in Canada in association with its aforementioned trade-marks all of which contain the word GOLDEN. As a result of such extensive sales and advertising of such products bearing said trade-marks, consumers in Canada would recognize that the wrod "golden" when used in connection with such products, is distinctive of the opponent. Therefore, the trade-mark subject of this application cannot be distinctive of the applicant. The trade-mark GOLDEN is distinctive of the Opponent and therefore the mark subject of this application cannot be distinctive of the Applicant.

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

[96]            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 its certification mark, MOLSON GOLDEN & Design. 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 considering 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 and the use made of the word "golden" up to the date of decision and came to the conclusion that Anheuser's mark was not confusing with Molson's marks.

[97]            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 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.

[98]            As a result of there being no likelihood of confusion established by the evidence on the non-registrability ground, I agree with the Registrar that there could be no likelihood of 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.

[99]            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.

[100]        The Registrar correctly noted the material date for considering the issue of registrability and noted that the remaining grounds of opposition had to be considered at different material dates.

[101]        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.

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

[103]        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-926-01

STYLE OF CAUSE:               MOLSON CANADA

Applicant

and

ANHEUSER-BUSCH, INCORPORATED

Respondent

PLACE OF HEARING:                     OTTAWA, ONTARIO            

DATE OF HEARING:                       MAY 6, 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-926-01

BETWEEN:

MOLSON CANADA

                                            Applicant

and

ANHEUSER-BUSCH, INCORPORATED

                                     Respondent

REASONS FOR ORDER

AND ORDER