IN THE MATTER OF AN OPPOSITION by Anheuser-Busch, Incorporated to application No. 738,235 for the trade-mark ICE GOLD filed by John Labatt Limited/John Labatt Limitee (now standing in the name of Labatt Brewing Company Limited)
On September 3, 1993, the applicant, John Labatt Limited/John Labatt Limitee, filed an application to register the trade-mark ICE GOLD based on proposed use of the mark in Canada by itself and/or through a licensee in association with various wares. The applicant amended its statement of wares at the examination stage to cover:
Alcoholic brewery beverages; Wearing apparel namely: wind resistant jackets; jogging suits, ski jackets, ski pants, sweat suits, wrist bands, blouses; cardigans; coats and jackets; gloves; leg warmers; stockings; pants; skirts; shorts; sweaters; T-shirts; tank tops; shirts of all kinds; ties; belts; headwear, namely, hats, caps, visors, ear muffs, head bands; Metal goods namely: key chains and pails; jewellery namely: watches; buttons and ornamental pins and sunglasses; Paper goods and printed matter namely: pens, pencils, playing cards; bulletin boards and writing pads; Leather goods namely bags; wallets and umbrellas; Housewares and glass namely: drinking glasses, coolers and cooler bags and bottle openers; Sporting goods namely: sporting equipment bags.
The application was further amended to disclaim the right to the exclusive use of the word GOLD in respect of the following wares: Metal goods, namely key chains and pails; Jewelry namely: watches; buttons and ornamental pins and sunglasses.
The application was advertised for opposition purposes on May 10, 1995. The opponent, Anheuser-Busch, Incorporated, filed a statement of opposition on October 10, 1995. The applicant filed and served a counter statement on February 21, 1996. The opponent submitted as its evidence, affidavits from the following people:
William S. Campbell Robert White, sworn Nov.3, 1994
Andres Garin, sworn Nov. 1, 1994 Robert White, sworn Jan. 19, 1996
Andres Garin, sworn Nov. 29, 1994 Linda Joyce Elford
Andres Garin, sworn June 21, 1995 Isis Caulder, sworn Feb. 29, 1996
Douglas M. Stuve Isis Caulder, sworn May 22, 1996
Trevor Thomas I.. Caulder, sworn May 31, 1996
L. Jane Sarjeant, sworn Nov.3, 1994 C. Corriveau
L. Jane Sarjeant, sworn Feb. 29, 1996 T. Bailey, sworn May 31, 1996
Mark A. Koch, sworn Nov.3, 1994 Todd Bailey, sworn May 21, 1996
Mark A. Koch, sworn Nov.3, 1994 R.L.A. Coster, sworn Apr. 11, 1996
Angela Kim, sworn Nov. 4, 1994 Cynthia L. Martens
Angela Kim, sworn Dec. 6, 1994 Patrick Sweeney
David Heller, sworn Nov. 14, 1994 William S. Osler
The parties agreed that photocopies of affidavits filed in other opposition proceedings regarding other ICE marks could form part of the record. Mr. Campbell and Mr. Corriveau were cross-examined on their affidavits and the transcripts of those cross-examinations and exhibits and replies to undertakings form part of the record of these proceedings. The applicant submitted as its evidence the affidavit of Bernard Beasley, sworn June 9, 1995. The parties agreed to use a copy of the transcript of the cross-examination of Bernard Beasley on his affidavits sworn December 28, 1994 and June 9, 1995, which had been filed in connection with the opposition proceeding involving the same parties relating to application no. 725,543 for the mark IF IT’S NOT ICE BREWED, IT’S NOT ICE BEER. The opponent did not submit any evidence in reply.
Both parties filed a written argument and both were represented at an oral hearing.
During the opposition proceeding, the application was further amended to disclaim the exclusive use of the word ICE apart from the trade-mark as a whole.
The following are the grounds of opposition relied upon by the opponent:
(A) The application does not conform with the requirements of Section 30 of the Trade-Marks Act, R.S.C. 1985, c.T-13 (hereinafter “The Act”). The phrase ICE GOLD which is the subject of this application is not a trade-mark as defined in the Act. The phrase ICE GOLD describes a particular category, type or quality of beer and as such, cannot be monopolized by one brewer. Further, the applicant could not have been satisfied that it is entitled to use the alleged trade-mark in Canada in association with the wares described in the application for all of the reasons outlined herein.
(i) The words ICE GOLD or variations thereof are commonly used by members of the brewing industry and members of the general public, amongst others, to describe a particular type, category or quality of beer and as such cannot be monopolized by one brewer.
(ii) The words ICE GOLD or variations thereof are also commonly used in association with the wide range of goods listed in the application which includes, amongst others, wearing apparel, ski wear, head ware, metal goods, jewelry namely watches, buttons and ornamental pins and sunglasses, paper goods and printed matter, bulletin boards and writing pads, leather goods namely bags, wallets, umbrellas, housewares and glass namely drinking glasses, coolers and cooler bags and bottle openers, and sporting goods namely sporting equipment bags, all of which are merchandising items commonly used in the promotion and sale of beer. As such, the alleged trade-mark ICE GOLD cannot be monopolized by the applicant.
(iii) The applicant never intended to use the phrase ICE GOLD nor the individual words comprising the alleged trade-mark, namely the words ICE and GOLD as a trade-mark.
(B) The alleged trade-mark is not registrable pursuant to s.12(1)(b) of the Act because the phrase ICE GOLD whether depicted, written or sounded, is either clearly descriptive or deceptively misdescriptive of the character or quality of the wares covered by the application, namely alcoholic brewery beverages, or of the conditions of their production. The alleged trade-mark either clearly describes or deceptively misdescribes an alcoholic brewery beverage or beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals.
(C) The alleged trade-mark is not registrable pursuant to s.12(1)(c) of the Act because the alleged trade-mark is the name of the product with which it is to be used. The phrase ICE GOLD is the name of a particular type, category or quality of beer.
(D) The alleged trade-mark is not registrable pursuant to s.12(1)(e) since the term ICE GOLD has by ordinary and bona fide commercial usage become recognized as designating the quality of alcoholic brewery beverages. The phrase ICE GOLD is recognized as describing a particular type, category or quality of beer, namely an alcoholic brewery beverage or beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals.
(E) The alleged trade-mark is not distinctive in that it does not actually distinguish the alcoholic brewery beverages of the applicant from the wares of others nor is it adapted to distinguish them. The phrase ICE GOLD or variations thereof have been adopted by other brewers of beer and alcoholic beverages to describe a type of beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals. Also, ICE GOLD describes a type of beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals.
(F) The phrase ICE GOLD is also not distinctive in respect of the wares other than alcoholic brewery beverages listed in the application which includes, amongst others, wearing apparel, ski wear, head wear, metal goods, jewelry namely watches, buttons and ornamental pins and sunglasses, paper goods and printed matter, bulletin boards and writing pads, leather goods namely bags, wallets, umbrellas, housewares and glass namely drinking glasses, coolers and cooler bags and bottle openers, and sporting goods namely sporting equipment bags, all of which are merchandising items commonly used in the promotion and sale of beer, including ice beer, because it does not distinguish the wares of the applicant from the wares of others, including the opponent. In addition to alcoholic brewery beverages, other manufacturers of beer have used the applied for mark or variations thereof in association with wares such as those set out in the application which are or relate to merchandising items collateral to the sale and promotion of beer, including ice beer, a type of beer which is produced through a brewing process involving the creation of ice crystals. This being the case, the applied for phrase ICE GOLD cannot be monopolized by or distinguish any one manufacturer, provider or seller of brewed beverages or related merchandising items.
THE OPPONENT’S EVIDENCE
Campbell Affidavit
Mr. Campbell identifies himself as the Director of Marketing, Canada and Mexico, for Anheuser-Busch International, Inc. At paragraph 3 of his affidavit, Mr. Campbell attests that the word “ice” when used in association with beer refers to a beer which is produced through a process involving the creation of ice crystals. He states that this brewing method has long been used in Germany and that the Niagara Falls Brewing Company (hereinafter “NFB”) has produced an ice beer referred to as “EISBOCK” in Canada since 1989. He explains at paragraph 4 that in recent years, numerous brewers in Canada and the U.S. have launched ice beers, including the opponent, the applicant, Molson, Stroh, G. Heilman, Pabst and Miller. Attached to his affidavit as exhibits are two articles, one of which appeared in the September 1994 issue of Market Watch magazine and the other which appeared in the September 1994 issue of Beverage World. Both articles discuss the recent introduction and popularity of ice beers in Canada and the U.S. and the development of ice as a category of beer. Finally, Mr. Campbell states that in his opinion, the term “ice” and variations thereof such as “ice beer” and “ice brewed” are apt descriptions of beer and identify a beer category.
Campbell Cross-Examination
On cross-examination, Mr. Campbell admitted to not being a brew master or having ever been involved in the brewing of beer. His knowledge about the production of “ice” beer came through his knowledge of reading publications in Canada. He admits that consumers do not understand the process to make “ice beer”. He also states that he is not aware of any requirement by any liquor board which requires that an “ice” beer be brewed using a process involving the creation of ice crystals, nor of any definition in any government regulation which so specifies.
Garin, Stuve, Thomas, Kim and Osler Affidavits
The affidavits of Andres Garin, Douglas M. Stuve, Trevor Thomas, Angela Kim and William S. Osler all evidence various ice beer products which were purchased in Canada from October 25, 1994 to December 3, 1994. Various uses of the word “ice” on the labels of such beer products include the following: “The ice brewing process chills the beer until ice crystals form”; ice-filtered draft; ice brewed biere-beer; B.C.’s own ice beer; and ice brewed.
Sarjeant Affidavit, dated November 3, 1994
The affidavit of L. Jane Sarjeant, trade-mark agent with the opponent’s agent, evidences the existence of numerous active and inactive applications and registrations for trade-marks containing the terms “ice” and “beer” or the term “ice” in the trade-mark for use in association with beverages, including beer. As of October 24, 1994, only 3 of the marks were registered, 1 of which is owned by the applicant.
Koch Affidavits
The affidavits of Mark Koch, then student-at-law with the opponent’s agent, include as exhibits articles from various daily, weekly and monthly newspapers in which the words “ice beer” appear. Many of the articles discuss the various types of brewing and filtering processes which are used by the different breweries to create ice beer. Further, throughout the articles, “ice beers” are compared to “dry beers”, “light beers”, “draft beers” and “cold-filtered beer”. Some of these articles also discuss the introduction by NFB of its EISBOCK beer in 1989.
Kim Affidavit, dated November 4, 1994
This Kim affidavit contains references to the terms “ice”, “ice beer” and “eisbock” from a beer dictionary and other beer texts. Exhibits B,C,D, and G to this affidavit describe eisbock beer as “ice beer” and describe the brewing process used to produce ice beer. Labels for various ice beers are attached as Exhibits I to O.
Sweeney and White Affidavits
The affidavits of Patrick Sweeney and Robert White include Canadian circulation figures for some of the publications referred to in the Campbell, Koch, Kim and Caulder affidavits. These circulation figures establish that thousands of people in Canada received the various publications that were mentioned in these affidavits.
Heller Affidavit
The affidavit of David Heller contains as Exhibit A an advertisement for the applicant’s LABATT ICE BEER in which the applicant claims that only it brews real ICE BEER and that it has a unique ICE BREWING process.
Elford Affidavit
The affidavit of Linda Joyce Elford, a trade-mark searcher with Trade-Mark Reflections Ltd., includes as exhibits several articles published in 1990 and 1989 in Canada wherein the NFB EISBOCK beer is described as an “ice beer” which is produced following a German tradition of freezing beer and extracting water from it. The ice brewing process is also described in these articles.
Caulder Affidavit, dated May 22, 1996
This affidavit attaches excerpts from several beer guides and web pages in which the words “gold” or “golden” are used to describe the colour of beer.
Caulder Affidavit, dated May 31, 1996, Bailey Affidavit , dated May 31, 1996 and Sarjeant Affidavit, dated February 29, 1996
Bailey and Caulder, then both students-at-law with the opponent’s agent, and Jane Sarjeant, a trade-mark agent with the opponent’s agent, conducted market research which illustrates that brewers often use their trade-marks on beer and on various types of merchandise, including clothing and beverage accessories.
Corriveau Affidavit
Mr. Corriveau identifies himself as General Manager of NFB. His affidavit shows that NFB has brewed NFB EISBOCK, an “ice-bock” beer since 1989 following a German tradition wherein the beer is frozen to concentrate the flavour and body and therefore produces a higher alcoholic content. Attached to his affidavit are sample labels for NFB’s EISBOCK beer, brochures for EISBOCK beer and newspaper articles from publications published in the Niagara Region from 1989 which discuss the NFB EISBOCK beer.
Corriveau Cross-Examination
On cross-examination, Mr. Corriveau states that NFB is a “micro-brewery” which means that his brewery has a small volume of production. He explains that NFB’s direct sales are restricted to sales in Ontario, and the production level for the brewery is about 8,000 hectolitres.
Mr. Corriveau explains that the placement of the word “ICE-BOCK” below the word “EISBOCK” on the hang tag that the product was introduced on was intended to assist potential consumers in pronouncing the word. He further states that Eisbock is a style of “bock beer”, that it is descriptive of that style of beer, and that the word EISBOCK is not translated from German into English into the phrase “Ice Beer”. At page 61 of the cross-examination transcript, Mr. Corriveau states that “ice-brewed” is not a term of art, it is not a term that is commonly used, and that it is not a term that is used amongst people who brew beer.
Coster Affidavit
Robin L.A. Coster, a lawyer with the opponent’s agent, attaches as Exhibit A to her affidavit a certified copy of U.S. Patent 4,338,109 that issued to Douwe Egberts Koninklijke Tabasfabriek-Koffiebranderijen-Theehandel B.V. on July 6, 1982. This patent is referred to in Exhibit A to Mr. Beasley’s affidavit which is an advertisement for Labatt’s ice beer. This patent describes a process for freeze concentrating various liquids.
Caulder Affidavit, dated February 29, 1996
Attached as Exhibit A to this affidavit is an article which discusses “eisbock” beer and the process used to produce eisbock beer. Also attached to this affidavit are selected pages from the Benelux Beer Guide: Beer Styles home page wherein “ice beers” are described as beers that have been frozen after they have been fermented to raise the specific gravity and alcohol content of beer. Excerpts from other web sites in which the terms “Eisbock”, “Ice Beer” and “Ice Brew” are used in a generic sense, are also attached.
Martens and Bailey Affidavits, sworn June 4, 1996 and May 21, 1996, respectively.
The affidavits of Cynthia Martens and Todd Bailey evidence various beer products which were purchased in Canada from May 31, 1994 to January 2, 1996, which contain the word GOLD or GOLDEN on the label. Ms. Martens also reviewed a copy of the Liquor Wholesale Price List, dated October 30, 1995, wherein the following beers were listed: GREAT WESTERN GOLD, KOKANEE GOLD and ARCTIC GOLD PALE ALE. Mr. Bailey also found the listing of several other GOLD beer marks in Stephen Beaumont’s Great Canadian Beer Guide, 1994 edition and “The Field Guide to North America’s Breweries and Microbreweries”.
APPLICANT’S EVIDENCE
Beasley Affidavit & Cross-Examination
As its evidence, the applicant submitted an affidavit of Bernard Beasley, sworn June 9, 1995. Mr. Beasley identifies himself as the Intellectual Property Officer of John Labatt Limited. The applicant submits that the comments made in Mr. Beasley’s affidavit are largely irrelevant to the present proceedings since a disclaimer to the word ICE has since been entered in connection with the present application.
ANALYSIS
Section 12(1)(b)
Considering initially the second ground of opposition, the opponent has alleged that the trade-mark ICE GOLD is clearly descriptive or deceptively misdescriptive of the character or quality of a particular “ice beer” and therefore is not registrable in view of Paragraph 12(1)(b) of the Act. In support of this ground, the opponent further alleged that the applicant’s use of the words “ICE BEER” and of the word “ICE” have been in such a manner that the word “ICE” has become clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s wares, namely alcoholic brewery beverages, or of the conditions of their production. The opponent submits that the alleged trade-mark either clearly describes or deceptively misdescribes an alcoholic brewery beverage or beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals. Paragraph 12(1)(b) of the Act provides as follows:
12. (1) Subject to section 13, a trade‑mark is registrable if it is not
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
In determining whether the trade-mark ICE GOLD is clearly descriptive of the character or quality of alcoholic brewery beverages, the trade-mark must not be dissected into its component elements and carefully analysed, but rather must be considered in its entirety as a matter of immediate impression from the point of view of the average consumer of those wares (see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pp. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at p. 186)). The material date for considering the s. 12(1)(b) ground of opposition is as of the date of decision (see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)). While the legal burden is upon the applicant to show that its trade-mark ICE GOLD is registrable, there is an initial evidential burden on the opponent in respect of this ground to adduce sufficient evidence which, if believed, would support the truth of its allegations that the trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant’s alcoholic brewery beverages, or of the conditions of their production.
In the present case, the applicant’s disclaimers of the word ICE apart from its trade-mark as a whole and the word GOLD in respect of metal goods, jewelry, namely watches, buttons, ornamental pins and sunglasses are arguably admissions by the applicant that the words ICE and GOLD are either clearly descriptive of the character or quality of such wares, or otherwise are common to the trade or are the name of such wares (see Andres Wines Ltd. v. Les Vins La Salle Inc., 3 C.P.R. (3d) 272, at p. 275). In any event, the opponent’s evidence supports the conclusion that the word “ice” describes a type or category of beer (see also Molson Breweries, A Partnership v. John Labatt Ltd. (1999), 3 C.P.R. (4th) 543 (T.M.O.B) (hereinafter “EXTREME ICE”). Further, it has been well established that the term “gold” is clearly descriptive of brewed alcoholic beverages. In this regard, see the decision in Molson Companies Ltd. v. John Labatt Ltd./John Labatt Ltée (1994), 58 C.P.R. (3d) 527 (F.C.A.), wherein Létourneau, J.A. stated the following at p.528:
“The words “gold” and “golden” on which the appellant bases its contention to oppose registration of the respondent’s trade-mark WINCESTER GOLD are adjectives which, like blond, amber, pale, brown and dark are merely descriptive of categories of beer to which a given brand belongs. As our colleague Hugesson, J.A. stated in John Labatt Ltd. v. Molson Companies Ltd. (1987), 19 C.P.R. (3d) 88 at 89: “‘golden’ is a word one of whose primary meanings is to describe a colour. That colour is found in most beer...” It is not unlike the use of the qualifying adjectives “red, white, rose and yellow” for wines. All these epithets are of common use and serve to identify the nature and the category of the product, and not the trade-mark of the producer.”
However, notwithstanding that “ice” and “gold” may each be separately descriptive and not registrable, the issue with respect to this ground is whether the resultant trade-mark ICE GOLD as a whole is banned from registration. In making this determination, the question to ask is what meaning does the term ICE GOLD convey to the average consumer of beer?
Relying on the decisions in Canadian Schenley Distilleries Ltd. v. Registrar of Trade-Marks and Bodegas Rioja Santiago, S.A. (1974), 15 C.P.R. (2d) 1, and Molson Companies Ltd. v. John Labatt Ltd. (1981), 58 C.P.R. (2d) 157, the applicant submitted that when looking at the trade-mark as a whole, it is immaterial that the component parts or one or more of them are in themselves not registrable. The applicant also relied on the decision in EXTREME ICE, supra, wherein although the word “ice” was considered to represent a category of beer, the mark EXTREME ICE as a whole was found to be registrable with respect to alcoholic brewery beverages.
At the oral hearing, the applicant’s agent requested that the Registrar take judicial notice of the different dictionary definitions for the word GOLD. The applicant also pointed out the different meanings for the word GOLD as shown in some of the opponent’s own evidence including the Martens and Bailey affidavits. In addition to describing a deep yellow colour, the applicant submits that the word GOLD also describes a precious metal as well as a standard of quality. The applicant argues that when viewed in association with the word ICE, the meaning conveyed would be that of an ice beer of a higher standard or quality. The applicant further submits that the mark could refer to the fact that the beer is served ice cold, or that the beer is brewed using water from glacial ice. Therefore, it is the applicant’s submission that the use of ICE and GOLD in association with beer is a covert and skilful allusion to the character of the wares and therefore is merely suggestive, rather than clearly descriptive.
In my view, the present case can be distinguished from the decision in EXTREME ICE. In arriving at the conclusion that the mark EXTREME ICE was not clearly descriptive with respect to beer, Chairman Partington stated the following at p.552:
Considering the dictionary meanings of the word “extreme”, I do not consider that the average consumer of alcoholic brewery beverages would, as a matter of immediate impression, react to the trade-mark EXTREME ICE as being either descriptive or misdescriptive of either the character or quality of such wares, or of the conditions of their production. Indeed, the word EXTREME does not appear to convey any meaning in relation to alcoholic brewery beverages. I have therefore dismissed this ground of opposition. (Emphasis added)
In the present case, although the word GOLD may have a variety of dictionary meanings, it has been established that when used in association with beer, it is descriptive of its colour.
I also had regard to the decision of Justice Dubé in Mitel Corporation v. Registrar of Trade-Marks (1984), 79 C.P.R. (2d) 202 (F.C.T.D.) (hereinafter SUPERSET) wherein the court looked at the component parts of the trade-marks in assessing what the impression of the mark as a whole would be on the average consumer. In that decision, although the word “set” was considered on its own to have a variety of dictionary meanings, the mark SUPERSET was found to be clearly descriptive of telephone instruments. In arriving at this conclusion, Justice Dubé stated the following at p.208:
While the word "super" is clearly laudatory and descriptive, the word "set" is not as close to the mark; that word, by itself, does not necessarily focus the mind on a telephone set. The word "set" awakens many and diverse first impressions.
A reasonable man, reasonably conversant with the English language, passing by a tennis‑court would normally relate the word "set" to the game of tennis. A customer in a furniture store would associate the word "set" with a bedroom set or a dining‑ room set, depending on his intentions or the area of the store that he is in. A person interested in the purchase of a telephone might not call the equipment a "set". He would most likely, in common parlance, call it a "telephone". But in a telephone store, or glancing at advertisements of telephone sales, a customer would probably link the mark SUPERSET to the telephone sets on display and form the impression that the telephones offered for sale are of a superior quality. Much as other people would link SUPERWASH to garments that wash superbly well, or SUPERSET (in association with tools) to tools that function in a superior way, or SUPER‑WEAVE to superfine textile. In short, the mark is not to be considered in isolation; it must be perceived in connection with the wares to which it is associated.
Although I agree with the opponent that the mark ICE GOLD as a whole could convey to the average consumer of beer the idea that the beer is served ice cold or that the beer is brewed using water from glacial ice, I only consider this to be the case when the mark is sounded. As such, I do not consider the fact that the mark may not be clearly descriptive or deceptively misdescriptive when sounded to be sufficient to render it registrable. In this regard, I consider it useful to return to the wording of s.12(1)(b) which reads as follows:
12. (1) Subject to section 13, a trade‑mark is registrable if it is not
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive....(emphasis added).
In the present case, the mark as written is ICE GOLD. Given the established descriptive significance of both the word “ice” with respect to a category or type of beer, and the word “gold” with respect to the colour of beer, I consider that the average consumer of alcoholic brewery beverages would, as a matter of immediate impression, react to the trade-mark ICE GOLD as being either descriptive or deceptively misdescriptive of either the character or quality of such wares, or of the conditions of their production. That is, upon seeing the mark ICE GOLD in association with beer, they would react to the mark as being one which clearly describes or deceptively misdescribes an alcoholic brewery beverage or beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals. I therefore find that this ground of opposition is successful in relation to the applicant’s alcoholic brewery beverages.
With respect to the remaining wares in the application, the opponent’s evidence shows that breweries often apply their trade-marks to various types of merchandise, including clothing and beverage accessories. Relying on the unreported decision Anheuser-Busch Incorporated v. The Upper Canada Brewing Company Limited (December, 1998; t.m. PURE BEER TASTES BETTER, Appln. No. 754,852), it is the opponent’s submission that since the remaining wares in the application would likely be intended to promote the applicant’s beer products, they are closely associated. As such, it is the opponent’s submission that the applied for mark should be considered descriptive in respect of the remaining wares which are all associated merchandising items.
I respectfully disagree with the opponent on this aspect of this ground of opposition. The fact that the applicant’s trade-mark is clearly descriptive when applied to brewed alcoholic beverages, in my view, does not mean that the applicant’s trade-mark is likewise descriptive when applied to the remaining wares of the applicant. Although the remaining wares of the applicant may be collateral to the promotion and sale of beer, I do not consider that this fact alone renders them not registrable under s.12(1)(b). As I do not consider the applicant’s trade-mark ICE GOLD to be either clearly descriptive or deceptively misdescriptive of a “feature or essential peculiarity of those wares material or intrinsic to their composition” (see Molson Companies Ltd. v. Carling O’Keefe Breweries of Canada Ltd. (1981), 55 C.P.R. (2d) 15 at 23 and Anheuser-Busch, Inc. v. Molson Breweries, A Partnership (1995), 66 C.P.R. (3d) 111 at 116), I have dismissed this aspect of the second ground of opposition.
Section 12(1)(c) and Section 12(1)(e)
As its third ground of opposition, the opponent has argued that the applied for mark is not registrable pursuant to s.12(1)(c) of the Act because the alleged trade-mark is the name of the product with which it is to be used and the phrase ICE GOLD is the name of a particular type, category or quality of beer. As its fourth ground of opposition, the opponent argues that the alleged trade-mark is not registrable pursuant to s.12(1)(e) since the term ICE GOLD has by ordinary and bona fide commercial usage become recognized as designating the quality of alcoholic brewery beverages. The phrase ICE GOLD, in the opponent’s submission, is recognized as describing a particular type, category or quality of beer, namely an alcoholic brewery beverage or beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals.
Once again, the burden is on the opponent to establish the facts in support of these grounds of opposition. I consider the relevant date with respect to both of these grounds to be the date of decision (see The Insurance Company of Prince Edward Island v. Prince Edward Island Mutual Insurance Company (1999), 2 CPR (4th) 103 (TMOB) and Canadian Olympic Assn. v. Olympus Optical Co. (1991), 38 C.P.R. (3d) 1 (F.C.A.)).
Although the opponent has shown ample use of the words ICE and GOLD separately in association with alcoholic brewery beverages and many of the other wares covered in the present application, the only evidence that has been adduced to support the allegation that the words ICE and GOLD have together been used in association with any of the wares covered in the present application is an article attached as Exhibit B to the affidavit of Claude Corriveau dated January 3, 1990, that appeared in The Lincoln Post Express and contained the following paragraph:
Although the new ice beer is made in bock-style, Mr. Corriveau said, it is not a typical bock beer. “You can basically reverse it completely,” he said. “It’s not bitter, it’s not dark, it’s a golden amber color and it’s got a dry finish.”
In my view, although the words ICE and GOLDEN may appear in the same paragraph, the appearance of them in the same paragraph as separate words does not evidence a descriptive significance associated with the words ICE GOLD taken together (see also the decision in Allianz Life Insurance Co. of North America v. Alliance Maturité Inc. (2000), 9 C.P.R. (4th) 548 (TMOB) at 553). In my view, this evidence is insufficient to show that the term ICE GOLD
is the name of the product with which it is to be used or of a particular type, category or quality of beer. I am also not satisfied that the words ICE GOLD have become recognized in Canada by ordinary and bona fide commercial usage as designating either the type, category or quality of the applicant’s wares within the scope of Section 10 of the Act. Therefore, both of these grounds of opposition are not successful.
Section 30 Grounds
Considering next the s.30 grounds of opposition, while the legal burden is upon the applicant to show that its application complies with Section 30 of the Act, there is an initial evidential burden on the opponent to establish the facts relied upon by it in support of its Section 30 grounds (see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330). To meet the evidential burden upon them in relation of a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist (see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293, at p. 298). Further, the material time for considering the circumstances respecting the issues of non-compliance with Section 30 of the Act is the filing date of the application (see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R.(3d) 469, at p. 475). Finally, the opponent may have regard to the applicant’s evidence to meet its initial burden in relation to the Section 30 ground.
The opponent submits that “ice gold” is a generic term which is not capable of functioning as a trade-mark and cannot be monopolized by one trader. In this regard, the opponent submits that “ice gold” refers to a particular type of beer, the same way the words “cold-filtered draft”, “pale ale”, “light beer”, and “dry beer” do. Accordingly, it is the opponent’s submission that the applicant could not have been satisfied that it was or is entitled to registration of the mark.
Although the opponent has shown ample use of the words ICE and GOLD separately in association with alcoholic brewery beverages and many of the other wares covered in the present application, as previously discussed, the only evidence that has been adduced to support the allegation that the words ICE and GOLD have together been used in association with any of the wares covered in the present application is the article attached as Exhibit B to Mr. Corriveau’s affidavit. In my view, this article is insufficient by itself to show that the trade-mark ICE GOLD has been commonly used in the trade in association with beer and the other applied for wares. As I am not satisfied that the opponent has met its evidential burden, this aspect of this ground of opposition is unsuccessful.
The opponent has also argued that since the applicant did not show use of its mark, the applicant has not satisfied its onus to show that it had an intention to use this trade-mark. However, the fact that the opponent has opposed the present application may, in part, explain why the applicant has not yet commenced use of its mark in Canada. In any event, the applicant need not use its proposed trade-mark in Canada until such time as its application has been allowed. I have therefore also dismissed this aspect of the first ground.
Section 38(2)(d)
As its fifth ground, the opponent alleged that the applicant’s trade-mark is not distinctive in that it cannot distinguish the alcoholic brewery beverages of the applicant from the wares of others nor is adapted to so distinguish them. The opponent has plead that the phrase ICE GOLD or variations thereof have been adopted by other brewers of beer and alcoholic beverages to describe a type of beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals. The opponent has also submitted that the term ICE GOLD describes a type of beer which is gold in colour and which is produced through a brewing process involving the creation of ice crystals.
The material date for considering this ground is the date of opposition (see Re Andres Wines Ltd. and E.&J. Gallo Winery, 25 C.P.R. (2d) 126 (F.C.A.), at p.130; Park Avenue Furniture Corp. v. Wickes/ Simmons Bedding Ltd., 37 C.P.R.(3d) 412 (F.C.A.), at p. 424; and Molson Breweries, a Partnership v. John Labatt Ltd., 82 C.P.R. (3d) 1 (Federal Court, Trial Division, June 25, 1998); Revg 66 C.P.R. (3d) 227 (T.M.O.B.); and, while the legal burden is upon the applicant to satisfy the Registrar that its trade-mark is distinctive, there is nevertheless an evidential burden on the opponent to adduce sufficient evidence to establish the facts being relied upon by it in support of this ground.
While the material date for considering this ground is the date of opposition, the comments made in respect of the second ground are equally applicable to this ground. Consequently, the opponent has met its evidential burden in relation to this ground as it applies to the applicant’s brewed alcoholic beverages. Further, the applicant’s evidence fails to show that its mark ICE GOLD actually distinguished its brewed alcoholic beverages from those of others as of the date of opposition. As a result, this ground is successful as applied to the applicant’s “brewed alcoholic beverages”.
As its final ground of opposition, the opponent alleged that the applicant’s trade-mark is not distinctive of the wares other than alcoholic brewery beverages listed in the application because it does not distinguish the wares of the applicant from the wares of others, including the opponent. The opponent has plead as follows:
In addition to alcoholic brewery beverages, other manufacturers of beer have used the applied for mark or variations thereof in association with wares such as those set out in the application which are or relate to merchandising items collateral to the sale and promotion of beer, including ice beer, a type of beer which is produced through a brewing process involving the creation of ice crystals. This being the case, the applied for phrase ICE GOLD cannot be monopolized by or distinguish any one manufacturer, provider or seller of brewed beverages or related merchandising items. (Emphasis added)
The opponent has relied upon the Caulder Affidavit, dated May 31, 1996, Bailey Affidavit, dated May 31, 1996 and Sarjeant Affidavit, dated February 29, 1996, to meet its evidential burden in relation to the sixth ground of opposition. Although these affidavits may establish that breweries often apply their trade-marks to various types of merchandise, including clothing and beverage accessories, no evidence has been adduced to support the allegation that the words ICE GOLD and variations thereof have been used in association with any of the other wares listed in the present application. Thus, as the opponent has failed to meet its evidential burden in respect of the final ground as pleaded, I have dismissed this ground.
In view of the above, I refuse the applicant’s application in so far as it covers “alcoholic brewery beverages” and I otherwise reject the opponent’s opposition. Authority for such a divided result may be found in Coronet-Werke Heinrich Schlerf GmbH v. Produits Menagers Coronet Inc. (1986), 10 C.P.R. (3d) 482 (F.C.T.D.) at 492.
DATED AT HULL, QUEBEC, THIS 28th DAY OF May, 2001.
C. R. Folz
Member,
Trade-Marks Opposition Board