Date: 20040316
Docket: T-1158-99
Citation: 2004 FC 384
BETWEEN:
ANCHOR BREWING COMPANY
Plaintiff
- and -
THE SLEEMAN BREWING & MALTING CO. LTD.
Defendant
REASONS FOR ORDER
(Delivered from the Bench at Toronto, Ontario
on March 10, 2004)
HUGESSEN J.
[1] This is a trade mark infringement action. The plaintiff is the owner of the registered trade mark STEAM for beer and had sued the defendant alleging infringement. The defendant has counterclaimed alleging invalidity of the trade mark and in particular of its registration. The defendant now moves for summary judgment seeking a declaration of invalidity and expungement of the trade mark. It asserts 4 grounds of invalidity, any one of which it says would be enough to support its summary judgment motion.
[2] First, it says that the plaintiff has not used its mark within the meaning of section 2 either before or since the registration of the mark. Second, it says that if the mark has been used by plaintiff, it is not being so used so as to distinguish its wares from those of others. Third, it says that any use, if there has been use, has not been in the normal course of trade. Finally, it says that the evidence shows that the plaintiff has abandoned the mark.
[3] In my view, the defendant has failed to demonstrate to my satisfaction that there is no genuine issue for trial on any of these 4 points. It is convenient to conflate the first two points and to deal with them together. The evidence is that the plaintiff's use of its mark in Canada has generally been in association with the words "Anchor" or "beer" or both together. I take the first of those words to be a short form of the plaintiff's name and the second to be merely descriptive of the product.
[4] The defendant appears to argue that only the use of the word STEAM simpliciter would suffice to constitute use of the mark STEAM in Canada. But it admits that that word, if it was distinguished from accompanying text by a difference in font or colour, might be enough as is apparently the case with the cartons in which the beer is shipped. I do not find it necessary to decide the point definitively since, in my view, assuming the defendant's view of the law to be correct, on a motion such as this, it is enough to find, as I do, that the evidence would permit a judge at trial to conclude that the plaintiff has used the mark STEAM to distinguish its wares in Canada.
[5] While the plaintiff would not necessarily win, there is here, in my view, a genuine issue for trial. I am encouraged in this conclusion by the fact that in recent proceedings under section 45 of the Trade-marks Act between the interests represented and the present action, both the registrar and a judge of this Court have concluded that there has been use of the STEAM mark by the plaintiff in Canada. While owing to the different nature of the two proceedings that finding is not strictly speaking res judicata, it is strongly persuasive of there being an issue for trial herein.
[6] This brings me to the defendant's third point. It appears to be based on the fact that up to the time the present action was launched, the plaintiff's sales in Canada were of relatively very small volumes, almost entirely through special orders placed through one or more provincial liquor authorities.
[7] The defendant has produced evidence from an expert who gives the opinion that such sales are merely token sales. Not only is that evidence contradicted, but it does not satisfy me that the sales in question were not genuine commercial sales or were fictitious even if the quantities were very small. At the very least, the evidence is contradicted and it leaves an issue for trial. There is no law that I know of requiring the owner of a trade mark to achieve a certain minimum volume or percentage of sales in order to establish and maintain his rights in his mark.
[8] What the law requires is that the owner of a trade mark use that mark in the normal course of his business in Canada. There is evidence here to suggest that the plaintiff in fact uses the mark STEAM in connection with 100% of its business in Canada. Even if that business represents only a tiny proportion of its worldwide sales, that, in my view, is quite enough to present a genuine issue for trial.
[9] The argument finally with respect to abandonment is based entirely on the fact that up until the launch of the present action, the plaintiff had made no effort to market its product aggressively in Canada and even turned down a number of approaches from potential Canadian distributors for the product. In the face of the plaintiff's vigorous denial of any intent to abandon its mark, there is simply not enough here to permit me to say that the question of abandonment is not a genuine issue which, if the defendant continues to assert it, must be decided at trial.
[10] An order will accordingly go dismissing the defendant's motion for summary judgment. Since in my view the circumstances are such that this motion ought not to have been brought, the plaintiff will have its costs to be assessed and payable forthwith and in any event of the cause.
Judge
Ottawa, Ontario
March 16, 2004
FEDERAL COURT
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-1158-99
STYLE OF CAUSE: ANCHOR BREWING COMPANY v. THE SLEEMAN
BREWING & MALTING CO. LTD.
DATE OF HEARING: March 9 and 10, 2004
PLACE OF HEARING: Toronto, Ontario
REASONS FOR ORDER OF THE HONOURABLE MR. JUSTICE HUGESSEN
DATED: March 16, 2004
APPEARANCES:
Mr. Steven Garland
Mr. Elliott Simcoe FOR PLAINTIFF
Mr. Kenneth McKay FOR DEFENDANT
SOLICITORS ON THE RECORD:
Smart & Biggar
Ottawa, Ontario FOR PLAINTIFF
Sim, Hughes, Ashton & McKay
Toronto, Ontario FOR DEFENDANT
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