IN THE MATTER OF AN OPPOSITION
by Sleeman Maritimes Ltd. to application
No. 845,490 for the trade-mark MARITIME
BEER filed by Moosehead Breweries Limited
On May 20, 1997, the applicant, Moosehead Breweries Limited, filed an application to register the trade-mark MARITIME BEER based on proposed use in Canada for the following wares:
brewed alcoholic beverages; clothing, namely sweaters, football jerseys, mesh ball caps, winter ball caps, painter hats, aprons, golf shirts, sports shirts, t‑shirts, long john shirts, 3/4 ball shirts, hockey 9 sweaters, cowboy hats, tote bags, golf bags, golf towels, beach towels, flags; glasses, mugs, cups, beer glasses; key chains, banners, mirrors, dart flights, belt buckles, crests, bar signs, playing cards
and with the following services:
services relating to the promotion and advertising of alcoholic beverages.
The application as filed included a disclaimer to the word BEER. The application was advertised for opposition purposes on November 19, 1997.
On December 19, 1997, The Maritime Beer Company Incorporated (“Maritime”), filed a statement of opposition, a copy of which was forwarded to the applicant on January 20, 1998. At a later stage in this proceeding, Maritime became bankrupt and Sleeman Maritimes Ltd. (“Sleeman”) subsequently became the opponent after filing copies of various assignment and change of name documents.
The first ground of opposition is that the applicant’s application does not conform to the requirements of Section 30(i) of the Trade-marks Act because the applicant could not have been satisfied that it was the person entitled to registration of the applied for mark because it was confusing with the opponent’s trade-name Maritime Beer Company.
The second ground of opposition is that the applicant is not the person entitled to registration of its applied for mark pursuant to Sections 16(3)(a) and (c) of the Act because, as of the applicant's filing date, the applied for mark was confusing with (1) the trade-mark MARITIME BEER previously used and made known in Canada by the opponent with beer and (2) the trade-name Maritime Beer Company previously used and made known in Canada by the opponent. The third ground of opposition is that the applied for mark is not distinctive in view of the opponent's use and making known of its trade-mark and trade-name.
The applicant filed and served a counter statement. As its evidence, the opponent submitted an affidavit of Harold H. MacKay, President and CEO of Maritime. Mr. MacKay was cross-examined on his affidavit and the transcript of that cross-examination and the subsequently filed replies to undertakings given form part of the record of this proceeding.
As its evidence, the applicant submitted an affidavit of Donna J. Harris which evidences two registrations owned by the applicant, namely registration No. 477,977 for the trade-mark MARITIME OWNED, MARITIME PROUD and registration No. 484,277 for the trade-mark LA BRASSERIE DES MARITIMES, LA FIERTE DES MARITIMES. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
At the oral hearing, the applicant’s agent submitted that the opposition could not proceed because the new opponent, Sleeman, had no standing. In this regard, the applicant’s agent reviewed the various transfer documents submitted with the November 22, 2000 request to have Sleeman recognized as the opponent in this proceeding.
A document dated June 30, 2000 entitled “Receiver Assignment” transferred various “brand names” including Maritime Beer and Maritime Beer Company from the receiver-manager for the bankrupt opponent, Maritime, to 3045632 Nova Scotia Limited. A Certificate of Name Change dated August 4, 2000 shows that 3045632 Nova Scotia Limited changed its name to Maritime Beer Company (2000) Inc. An assignment dated September 27, 2000 transfers various trade-marks identified in an attached schedule from Maritime Beer Company (2000) Inc. to Sleeman. The attached schedule does not include the trade-mark MARITIME BEER or the trade-name Maritime Beer Company relied on in the various grounds of the present opposition. The assignment also purports to assign the opponent’s rights in the present opposition.
It is the applicant’s contention that Sleeman has no standing because there is no evidence that it obtained any rights to the trade-mark and trade-name relied on in the statement of opposition. Furthermore, to the extent the first ground of opposition based on non-conformance with Section 30(i) of the Act may rely on allegations that are not personal to the original opponent, the applicant submits that such a ground is not capable of being assigned on its own to another party.
I agree with the applicant’s submissions. In order to substitute a new opponent for an opponent of record, there must be a transfer of the underlying trade-mark or trade-name rights asserted by the original opponent: see United Artists Corporation v. Pink Panther Beauty Corporation (1996), 67 C.P.R.(3d) 216 (F.C.T.D.) and Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R.(3d) 418 (F.C.T.D.). See also the unreported opposition decision in Productions Prism Inc. v. Anna Banana-Frankham (S. No. 769,757; October 25, 2000).
In the present case, Sleeman has failed to show that it acquired rights to the trade-mark MARITIME BEER or the trade-name Maritime Beer Company. Furthermore, the original opponent cannot assign a ground of non-conformance with Section 30(i) of the Act by itself. Thus, Sleeman has obtained no rights that would give it standing. The recognition of Sleeman as the new opponent was in error and the present opposition must be rejected on that basis alone. In the event that I am wrong in this finding or in the event that the original opponent, Maritime, still has standing in this proceeding, I will consider the evidence as filed and the grounds as pleaded.
In his affidavit, Mr. MacKay states that, prior to 1995, he was an employee of the applicant which is in the business of brewing and selling beer. In early 1996, he and several others decided to create their own brewery. On March 28, 1996, a name search was conducted to determine the availability of the name The Maritime Beer Company Incorporated and, on September 6, 1996, Mr. MacKay and others incorporated a Nova Scotia company under that name.
Even after Mr. MacKay resigned from the applicant in 1995, he maintained an ongoing relationship with the company in his position as the President of the Halifax Mooseheads Hockey Club. Mr. MacKay continued to have contact with Derek Oland, the Chairman of the Board of the hockey club and the President and Chairman of the applicant. In August of 1996, Mr. MacKay informed Mr. Oland of his intention to start a new brewery. He discussed that project with Mr. Oland again in September and October of that year. On November 8, 1996, he met with Mr. Oland to discuss possible investment by the applicant in Mr. MacKay’s proposed venture and Mr. MacKay recalls referring to his company name The Maritime Beer Company Inc. Mr. Oland asked for a copy of the business plan and, by letter dated November 13, 1996, Mr. MacKay wrote to Mr. Oland on letterhead featuring the name The Maritime Beer Company Inc. and forwarded a non-disclosure agreement. During subsequent conversations with Mr. Oland, Mr. MacKay repeatedly referred to his company The Maritime Beer Company Inc.
According to Mr. MacKay, during the fall of 1996 and the winter of 1997, Maritime’s promoters distributed an offering memorandum to a small group of potential investors. On April 2, 1997, a special general meeting of the shareholders of Maritime was held in Halifax followed by a press conference. Attached as Schedules E-1 to E-9 to the MacKay affidavit are media reports from March and April of 1997 that contain references to the opponent’s trade-mark and trade-name. However, there is no evidence of the circulation or audience for those reports.
As for the first ground, it is not a proper ground of opposition. The opponent did not allege that the applicant was aware that its applied for mark was confusing with the opponent’s trade-name Maritime Beer Company. As stated in the applicant’s counter statement, no known ground of opposition was disclosed by the opponent’s pleading. Thus, the first ground of opposition would have been unsuccessful.
At the oral hearing, the opponent contended that its first ground of opposition was based on alleged “bad faith” adoption by the applicant of its proposed mark. The opponent contended that the applicant could not have truthfully made the statement required by Section 30(i) as a consequence of the various conversations and meetings that took place between Mr. MacKay and Mr. Oland during which reference was made to Mr. MacKay’s company Maritime. Although Mr. MacKay was cross-examined on his affidavit, that cross-examination did not materially undermine the veracity of his testimony concerning his dealings with Mr. Oland. Thus, it is apparent that the applicant, through its President and Chairman, was well aware of the opponent’s adoption of the corporate name The Maritime Beer Company Inc. and thus the trade-name Maritime Beer Company prior to filing its proposed use application. Given the obvious confusion between that trade-name and the applicant’s proposed mark, if the opponent had adequately pleaded its first ground, it might well have met its evidential burden. In that case, the first ground might have been successful.
As for the first aspect of the second ground of opposition, there was an evidential burden on the opponent to evidence use or making known of its trade-mark MARITIME BEER prior to the applicant’s filing date. On cross-examination, Mr. MacKay conceded that, as of the applicant’s filing date, his company had not produced, sold or advertised beer nor was it in possession of any materials or facilities needed to do so. Furthermore, there had been minimal activities bringing that mark to the attention of the public. Thus, the opponent has failed to evidence use of its mark prior to the applicant’s filing date. Furthermore, it has failed to evidence making known of its mark within the meaning of Section 5 of the Act prior to that date. Thus, the first aspect of the second ground would have been unsuccessful.
As for the second aspect of the second ground, there is no provision in the Act for a ground of opposition based on prior use of a confusing trade-name. As for alleged confusion with the opponent’s previously used trade-name, the opponent did not meet its evidential burden. Although the opponent has shown that the company Maritime was incorporated prior to the applicant’s filing date, it failed to show that any business in the ordinary course of trade had been carried on in association with that corporate name or with the trade-name
Maritime Beer Company: see Mr. Goodwrench Inc. v. General Motors Corp. (1994), 55
C.P.R.(3d) 508 at 511-512 (F.C.T.D.). Thus, the second aspect of the second ground of opposition would also have been unsuccessful.
As for the third ground of opposition, the material time for considering the circumstances respecting the issue of distinctiveness is as of the filing of the opposition. The onus or legal burden is on the applicant to show that its applied for trade-mark actually distinguishes or is adapted to distinguish its wares and services from those of others throughout Canada. There is, however, an evidential burden on the opponent to prove its supporting allegations of fact.
As discussed, the MacKay affidavit provides little evidence that might point to any acquired reputation of note in Canada for the opponent’s trade-name Maritime Beer Company or its trade-mark MARITIME BEER. The distribution of a share offering document to a handful of people together with the appearance of the trade-name or trade-mark in reports in a number of publications of unknown circulation is insufficient to establish that more than a very small number of Canadians have any awareness of the opponent’s mark or name. The opponent failed to meet the evidential burden on it and the third ground would therefore also have been unsuccessful.
In view of the above, and pursuant to the authority delegated to me under Section 63(3) of the Act, I reject the opponent’s opposition.
DATED AT HULL, QUEBEC, THIS 13th DAY OF MARCH, 2001.
David J. Martin,
Member,
Trade Marks Opposition Board.