Tartan Brewing Limited v. Carling Breweries (B.C.) Limited, [1970] SCR 323

Supreme Court of Canada

Tartan Brewing Limited v. Carling Breweries (B.C.) Limited, [1970] S.C.R. 323

Date: 1969-11-14

Tartan Brewing Limited (Defendant) Appellant;

and

The Carling Breweries (B.C.) Limited (Plaintiff) Respondent.

1969: November 13, 14; 1969: November 14.

Present: Cartwright C.J. and Abbott, Hall, Spence and Pigeon JJ.

ON APPEAL FROM THE EXCHEQUER COURT OF CANADA

Trade marks—Brewery using word “Pil” to describe Pilsener beer—Competitor using “Pilcan”—Whether directing attention to wares in a manner likely to cause confusion—Comparison of labels and cartons—Trade Marks Act, 1952-53 (Can.), c. 49, s. 7(b).

In 1963, the plaintiff adopted and used the unregistered word “Pil” on the bottle caps of the Pilsener beer it sold in British Columbia, and in the advertising of it in newspapers. Then in 1964, it used that word on the cartons in which it sold its Pilsener beer. In 1966, the defendant introduced canned beer to British Columbia and used the word “Pilcan” on its beer cans and cartons. During the relevant period no other competitor marketed beer in cans in that province. There was evidence that

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the defendant was also marketing beer under names similar to famous United States brands. The plaintiff brought action under s. 7(b) of the Trade Marks Act, 1952-53 (Can.), c. 49. The trial judge held that the defendant, in relation to its activities concerning “Pilcan” and the “get up” of the packaging of its canned Pilsener beer, directed public attention to its wares in such a way as to cause or be likely to cause confusion in British Columbia within the meaning of s. 7(b) of the Act. The defendant appealed to this Court.

Held: The appeal should be allowed.

On a comparison of the labels and cartons used by the defendant and the plaintiff respectively, it cannot be said that a purchaser of Pilsener beer would be deceived or confused or misled into believing that the defendant’s beer was the plaintiff’s beer. There is just no appreciable similarity in the labels or cartons that would cause or be likely to cause confusion. The plaintiff does not sell its Pilsener beer in cans. The defendant does not sell its Pilsener beer in bottles. The cartons are as unalike as two beer cartons can be, both in shape and colouring.

APPEAL from a judgment of Gibson J. of the Exchequer Court of Canada[1], maintaining an action under s. 7(b) of the Trade Marks Act. Appeal allowed.

W.J. Wallace, Q.C., for the defendant, appellant.

Christopher Robinson, Q.C., and James Kokonis, for the plaintiff, respondent.

The judgment of the Court was delivered by

HALL J.—This is an appeal from the judgment of Gibson J. in the Exchequer Court of Canada1 in which he held that the appellant, in relation to its activities concerning “Pilcan” and the “get up” of the packaging of its canned Pilsener beer, did direct public attention to its wares in such

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a way as to cause or be likely to cause confusion in British Columbia within the meaning of s. 7(b) of the Trade Marks Act, 1-2 Eliz. II, c. 49, between the appellant’s (Tartan) Pilcan Pilsener beer and respondent’s (Carling) Pil Pilsener beer.

Pilsener beer is a beer which was first brewed in the Town of Pilzen, Bohemia (now Czechoslovakia) some 125 years ago. Accordingly, neither the appellant nor the respondent had any proprietary interest in or any exclusive right to the word “Pilsener”.

The appellant and the respondent are brewers of beer in the Province of British Columbia, including Pilsener beer. The respondent’s brewery was in the Vancouver area and that of the appellant at Prince George in North Central British Columbia. They had been selling Pilsener beer in competition from the year 1962.

In the year 1963 the respondent devised and embarked upon a market program for the selling of its Pilsener beer and to assist in this undertaking, employed advertising agents, and expended substantial sums and effort. In implementing its program, it adopted and used the unregistered word “Pil” on the bottle caps of the Pilsener beer it sold in British Columbia, and in the advertising of it in newspapers. Then in 1964 it used the word “Pil” on the cartons in which it sold its Pilsener beer. And from that time on, all its Pilsener beer was sold in that way in British Columbia.

The appellant had, in the same period, been marketing its Pilsener beer in bottles under the trade name of “Tartan Pilsner”. All beer being sold in British Columbia prior to mid-1966 was being sold in bottles. In July 1966 the appellant introduced canned beer to the Province of British Columbia. During the period relevant to this litigation, no other competitor marketed beer in cans in that province.

The evidence of B.G. Ginter, the major shareholder in the appellant company as to how the

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word “Pilcan” came to be used by the appellant, was as follows:

Q. Now then, would you tell his lordship how it came about that you used the word “Pilcan” as a designation on Exhibit “A”?

A. Well, we discussed the name that we would use to come out with a canned beer onto the market, as this was something new in Western Canada, when we marketed it. Now, of course it is in Manitoba as well. But at that time it hadn’t been known of anybody manufacturing, so again I went back to the fact of trying to bring out the fact that it was a light beer as the brewmaster Mr. Zarek has often told me, that when introducing a beer no brewery has, that he has ever known of, come out with anything else but a light beer on the market first, and to identify the lightness of the beer plus the fact that it was in a can, we arrived at the name “Pilcan”.

The respondent does not suggest that in its primary meaning the word “Pil” had any connection with the respondent’s product. The evidence discloses that “Pil” was more or less a nickname for Pilsener beer both in and outside British Columbia for many years preceding 1963. The evidence did not disclose that the word “Pil” had acquired a secondary meaning nor did the learned trial judge so hold.

Gibson J. did find that:

The conclusion is, therefore, that it was the intention of the defendant to and it did, in mid-1966, in relation to its activities concerning “Pil’Can” and the “get-up” of the packaging of its canned Pilsener beer direct public attention to its wares in issue in this action, in such a way as to cause or likely to cause confusion in British Columbia within the meaning of section 7(b) of the Trade Marks Act between the defendant’s (Tartan) “Pilcan” Pilsener beer and the plaintiff’s (Carling) “Pil” Pilsener beer.

In coming to this conclusion, the learned judge was greatly influenced by evidence which had been received to the effect that in addition to marketing Pilsener beer under the label “Pilcan” the appellant was also marketing beer which it called “High Life”, “Paabs” and “Budd”, and in respect of this the learned judge said:

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Clearly the adoption of the last three names in the way such was done, was calculated to direct public attention in such a way as to cause or be likely to cause confusion between these brands of beer of the defendant’s and the respective famous brand of beers of the United States brewers’, which latter brands would be known to the buying public in British Columbia.

I doubt if this evidence was admissible at all, but in any event there was no evidence that appellant did not have a licence to use these names and the conclusion adverse to appellant which Gibson J. drew from this evidence dominated his finding as to the intention of appellant in respect of the use of “Pilcan”.

In my view this case falls to be determined from a comparison of the labels and cartons used by the appellant and respondent respectively and which are said to be so similar as to cause or be likely to cause confusion.

The labels and cartons are as in the inset.

I do not see how it can be said that a purchaser of Pilsener beer would be deceived or confused or misled into believing that the appellant’s “Pilcan” beer was the respondent’s “Pil” beer. There is just no appreciable similarity in the labels or cartons that would cause or be likely to cause confusion. The respondent does not sell its Pilsener beer in cans. The appellant does not sell its Pilsener beer in bottles. The cartons are as unalike as two beer cartons can be, both in shape and colouring.

The appeal must, accordingly, be allowed and the respondent’s action dismissed with costs here and in the Exchequer Court.

Appeal allowed with costs.

Solicitors for the defendant, appellant: Bull, Housser & Tupper, Vancouver.

Solicitor for the plaintiff, respondent: R.H. Saffrey, Toronto.