IN THE MATTER OF AN OPPOSITION
by Labatt Brewing Company Limited
to application No. 391,643 for the
trade-mark CLUB ALE & Design filed
by The Molson Companies Limited
and now standing in the name of
Molson Breweries, A Partnership
On November 17, 1975, The Molson Companies Limited filed an application to register the trade-mark CLUB ALE & Design (illustrated below) for "brewed alcoholic beverages" based on proposed use in Canada.
The application was amended to include a disclaimer to the words ALE BIERE and was advertised for opposition purposes on January 30, 1985. The application was subsequently assigned and now stands in the name of Molson Breweries, A Partnership.
The opponent filed a statement of opposition on October 15, 1985, a copy of which was forwarded to the applicant on November 5, 1985. The first ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3)(b) of the Trade-marks Act because, as of the applicant's filing date, the applied for trade-mark was confusing with the trade-mark MANITOBA'S CLUB & Design (illustrated below) for which an application had been previously filed on December 15, 1971 for "alcoholic brewery beverages" by Kiewel-Pelissier Breweries Ltd. and which was subsequently acquired by the opponent.
The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3)(a) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with "....a series of trade marks....including the word CLUB and/or the representation of a playing card club symbol" previously used in Canada with brewed alcoholic beverages by the opponent and its predecessors Kiewel-Pelissier Breweries Ltd. and Pelissier's Brewery Limited. The third ground is that, in view of the foregoing, the applied for trade-mark is not distinctive.
The applicant filed and served a counter statement. As its evidence, the opponent filed a certified copy of its application No. 348,727, two affidavits of Bernard Beasley and the affidavits of Holly Huard, James Johnston, Kimberley Gillis, David A. Poole, Reuben Abecassis, Julius Moroz and Don Kunderman. Messrs. Beasley, Poole, Abecassis, Moroz and Kunderman were cross-examined on their affidavits and the transcripts of those cross-examinations form part of the record of this proceeding. The applicant did not file any evidence. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
As for the first ground of opposition, there was an initial burden on the opponent to establish that its application was filed prior to the applicant's filing date and that, in accordance with Section 16(4) of the Act, it was pending as of the applicant's advertisement date (January 30, 1985). The certified copy of application No. 348,727 filed by the opponent establishes that the application was filed by the opponent's predecessor on December 15, 1971 and that it was still pending as of the date of certification (November 10, 1986). Thus, the opponent has satisfied its initial burden under Section 16 of the Act.
In its written argument, the applicant submitted that the opponent is precluded from relying on application No. 348,727 for the trade-mark MANITOBA'S CLUB & Design because the opponent's evidence establishes that it abandoned that mark in May of 1974. The applicant relies on paragraph 14 of Exhibit E to the first Beasley affidavit and Exhibit F to the second Beasley affidavit which indicate that the opponent's predecessor Kiewel-Pelissier Breweries Ltd. stopped using labels with the trade-mark MANITOBA'S CLUB in May of 1974 and switched to similar labels with the trade-mark CLUB & Design (illustrated below).
The short answer to the applicant's submission is that the opponent's application was still pending as of the applicant's advertisement date and that is all that the opponent is required to show. In any event, it is arguable that the opponent's predecessor did not cease using its mark MANITOBA'S CLUB & Design in May of 1974 since it would appear that use of the newer mark CLUB & Design also constitutes use of the earlier mark: see the decisions in Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R.(3d) 535 at 538 (T.M.O.B.) and Munsingwear Inc. v. Promafil Canada Ltee. (1992), 44 C.P.R.(3d) 59 (F.C.A.).
At the oral hearing, the parties informed me that the opponent's application was abandoned on November 30, 1987. The applicant's agent submitted that it would therefore be unfair and somewhat anomalous to allow the opponent to rely on an abandoned application to defeat the applicant's application. Although I do not disagree with the applicant's contention, there is nothing in the Act precluding the opponent from relying on its application since it has met the requirements of Sections 16(3) and 16(4).
Since the opponent has met its initial burden respecting the first ground of opposition, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Furthermore, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act. Finally, in accordance with the wording of Section 16(3) of the Act, the material time for considering the circumstances respecting the issue of confusion is the applicant's filing date (November 17, 1975).
As for Section 6(5)(a) of the Act, the applicant's mark is inherently distinctive. It is dominated by the words CLUB ALE and a stylized cloverleaf design. The word ALE is the name of the wares and is thus inherently non-distinctive. The word CLUB, on the other hand, is inherently distinctive although it does have at least a slight suggestive connotation since it might be perceived as referring to a place where alcoholic beverages are served such as a men's club or a nightclub: see the opposition decision in Molson Cos. Ltd. v. Hermann Kenderman, oHG (1979), 3 C.P.R.(3d) 354 at 357-358. As of the material time, I must conclude that the applicant's trade-mark had not become known at all in Canada.
The opponent's trade-mark is also inherently distinctive. It is dominated by the word CLUB and a stylized cloverleaf design. The opponent's evidence does not provide specific sales figures in respect of its trade-mark MANITOBA'S CLUB & Design. At most, I can conclude that the opponent's mark had a limited reputation within the province of Manitoba as of the applicant's filing date.
The length of time the marks have been in use favors the opponent although this is not a significant circumstance in the present case. As for Sections 6(5)(c) and (d) of the Act, the wares and trades associated with the two marks are, for all practical purposes, identical.
As for Section 6(5)(e) of the Act, I consider there to be a fairly high degree of resemblance between the marks in all respects. Both marks are dominated by the word CLUB and a stylized representation of a clover leaf. The non-distinctive word ALE in the applicant's mark does nothing to distinguish it from the opponent's registered mark. In fact, it would
seem likely that both marks could be phonetically referred to as CLUB thereby increasing the likelihood of confusion.
Although the two marks at issue have some visual differences, they are both dominated by the word CLUB. Furthermore, the evidence of record illustrates the opponent's penchant for periodically changing and updating its product labels. Given this predilection, it would seem likely that a beer consumer in November of 1975 already familiar with beer sold in association with the trade-mark MANITOBA'S CLUB & Design could easily assume that the applicant's CLUB ALE & Design mark is merely an updated version of the opponent's mark.
The degree of resemblance between the two marks at issue is greater, in my view, than the degree of resemblance between the marks CLUB ALE & Design and COUNTRY CLUB & Design in an earlier opposition between the same parties. Both the Opposition Board and the Federal Court found the degree of resemblance between the marks in that earlier case to be sufficient to support a finding of confusion: see Labatt Brewing Company Limited v. Molson Breweries, A Partnership (1992), 42 C.P.R.(3d) 481 at 488 (F.C.T.D.); revg. on other grnds. (1991), 35 C.P.R.(3d) 108 at 113 (T.M.O.B.). Such a conclusion, in my view, follows with greater ease in the present case.
As an additional surrounding circumstance, I have considered the state of the register evidence introduced in the Gillis affidavit filed by the opponent. It is surprising that the opponent has filed such evidence since, if anything, it might weaken its case. Perhaps the opponent is endeavoring to be as fair as possible and bring all relevant evidence to the Opposition Board's attention. Whatever the reason, I have considered Ms. Gillis' affidavit.
State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace: see the opposition decision in Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and the decision in Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.). Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
Ms. Gillis located a large number of registrations for trade-marks which incorporate the word CLUB. However, most of them are irrelevant as either covering unrelated wares or as not being on the register at the relevant date (i.e. - November 17, 1975). From the remaining 26 registrations standing in the name of 16 different owners, I can conclude that at least some of those marks were in use to more than a nominal extent as of the material time. Thus, to a limited extent, I can conclude that consumers were accustomed to seeing marks including the word CLUB for alcoholic beverages and would, at least to some extent, distinguish such marks on the basis of their additional features.
I have noted that the relevant registrations appended to the Gillis affidavit include only two for beer or ale, one being owned by the applicant's predecessor and the other being owned by a company apparently related to the opponent. But, as stated in Molson Companies Ltd. v. John Labatt Ltd. (1990), 28 C.P.R.(3d) 457 (F.C.T.D.) at page 463:
....distilled, brewed and fermented alcoholic
beverages are closely related wares when
analyzing the state of the register.
Nevertheless, given the paucity of registrations located for brewed alcoholic beverages (those being the wares associated with the two marks at issue) and given the public's ability to distinguish beer from distilled alcoholic beverages (see Benedictine Distillerie de la Liqueur v. John Labatt Ltee (1990), 28 C.P.R.(3d) 487 at 489 (F.C.T.D.)), I consider that the inferences that I have drawn from the state of the register evidence are of somewhat limited value in the present case.
Ms. Gillis also appended a number of registrations to her affidavit purportedly covering trade-marks which include a design of a club, a clover leaf or the like. However, almost all of those registrations are irrelevant for one reason or other. The evidence therefore does not show that club or cloverleaf designs were common elements of trade-marks registered for alcoholic beverages in general or beer in particular as of the material time.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my findings above, and particularly in view of the degree of resemblance between the marks and the identity between the wares and trades of the parties, I find that the applicant has failed to satisfy the onus on it to show that its applied for mark is not confusing with the applied for mark MANITOBA'S CLUB & Design. The first ground of opposition is therefore successful.
In view of my finding above, the remaining grounds need not be considered. In passing, however, it should be noted that although the success of the opponent's second ground of opposition was open to doubt, it appears that its third ground would have been successful. Notwithstanding the various deficiencies in the opponent's evidence, I consider that a fair reading of that evidence leads to the inference that as of the filing of the opposition (i.e. - October 15, 1985), the opponent's trade-mark CLUB & Design (as shown on page 3) had become known in western Canada to some extent, particularly in Manitoba, and its trade-mark COUNTRY CLUB had acquired a very minor reputation in Manitoba. Thus, it would appear that the applicant's trade-mark was not adapted to distinguish its wares from those of others throughout Canada as of the material time: see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 272 (T.M.O.B.).
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 31st DAY OF January , 1995.
David J. Martin,
Member,
Trade Marks Opposition Board.