Citation: 2018 TMOB 24

Date of Decision: 2018-02-28

IN THE MATTER OF AN OPPOSITION

	Moosehead Breweries Limited	Opponent
and
	Eau Claire Distillery Ltd.	Applicant
	1,667,113 for PARLOUR GIN DESIGN	Application

Introduction

[1]  Moosehead Breweries Limited (the Opponent) opposes registration of the trade-mark PARLOUR GIN DESIGN, shown below, which is the subject of application No. 1,667,113 by Eau Claire Distillery Ltd (the Applicant):

[2]  The application is based on proposed use in Canada in association with “distilled alcoholic beverages, namely gin” (the Goods).

[3]  The Opponent alleges grounds of opposition based on non-compliance with section 30(i) of the Trade-marks Act, RSC 1985, c T-13 (the Act), confusion (section 12(1)(d)), entitlement (section 16), and distinctiveness (section 2). A key issue in the proceeding is the likelihood of confusion with the Opponent’s MOOSEHEAD Marks, which include the trade-marks MOOSEHEAD, MOOSE, various designs consisting of a head of moose (including those shown below), and marks combining these word and design elements:

[4]  For the reasons that follow, the opposition is rejected.

The Record

[5]  The application for the Mark was filed on March 10, 2014, and was advertised for opposition purposes in the Trade-marks Journal of August 27, 2014.

[6]   On July 27, 2015 the Opponent filed a statement of opposition under section 38 of the Act.

[7]  The Applicant filed a counter statement on October 8, 2015.

[8]  The grounds of opposition pleaded by the Opponent are summarized below:

(a)  The Mark is not registrable because it is confusing with any one or combination of the Opponent’s registered MOOSEHEAD trade-marks (the MOOSEHEAD Marks) listed in Schedule A.

(b)  The Applicant is not the person entitled to register the Mark in that at the date of filing of the application for the Mark and at all material dates the Mark was confusing with the Opponent’s MOOSEHEAD Marks and its trade names MOOSE, MOOSEHEAD, MOOSEHEAD BREWERIES, and MOOSEHEAD BREWERIES LIMITED (the Moosehead Names) previously used and made known in Canada.

(c)  Contrary to section 30(i) of the Act, the Applicant could not have been satisfied that it was entitled to use the Mark in association with the Goods because it was and is confusing with the Opponent’s MOOSEHEAD Marks and Names which had been previously and continuously used and made known by the Opponent. The Applicant had, and is deemed to have had knowledge of the Opponent’s previously registered and used trade-marks in Canada in association with the Opponent’s goods and services. 

(d)   The Mark neither actually distinguishes the Goods from the goods of the Opponent, nor is it adapted so as to distinguish them.

[9]  In support of its opposition, the Opponent filed the affidavits of Patrick Oland and Helene Deslauriers. In support of its application, the Applicant filed the affidavit of David Farran. No cross-examinations were conducted.

[10]  Both parties filed a written argument, and were represented at a hearing.

Onus and Material Dates

[11]   The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298].

[12]  The material dates that apply to the grounds of opposition are:

·  Sections 38(2)(a)/30 – the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984)];

·  Sections 38(2)(b)/12(1)(d) - the date of my decision [Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade-marks (1991), 37 CPR (3d) 413 (FCA)];

·  Sections 38(2)(c)/16(3) – the filing date of the application [section 16(3) of the Act]; and

·  Sections 38(2)(d)/2 – the date of filing of the opposition [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 2004 FC 1185 (CanLII), 34 CPR (4th) 317 (FC)].

Preliminary Remarks

[13]  With respect to the Applicant’s evidence, I note that in considering the affidavit of Mr. Farran, I have disregarded any assertions that I consider equivalent to an opinion on the questions of fact and law to be determined by the Registrar in this proceeding.

Missing exhibits

[14]  At the hearing I raised the issue that Exhibit K-1 and part of Exhibit Q to the affidavit of Patrick Oland are missing from the affidavit filed with the Trade-marks Office. Exhibit K-1 is described as a photocopy of the third volume of the magazine “Scoreboard – The Official Magazine of the Halifax Mooseheads Hockey Club” (Oland affidavit, paragraph 17), and the missing part of Exhibit Q is described as a bundle of “advertisements used by the Opponent in 1995 in the promotion of their Moosehead products” (Oland affidavit, paragraph 23).  Both parties confirmed that they did not have these Exhibits in their copies of the materials. Accordingly, I confirm that these exhibits are not of record. In any event, I do not consider that anything turns on these exhibits, as they are but two of a significant number of advertising and promotional materials provided in the Oland affidavit.

Admissibility of portions of the Applicant’s evidence relating to settlement

[15]  The Opponent has objected to paragraph 19 of the Farran affidavit, which “discusses settlement negotiations and what Mr. Farran says he “understood” from certain correspondence between his Trade-mark Agent and that of the Opponent”. Citing the decision in Sable Offshore Energy Inc v Amerion International Corp, 2013 SCC 37, (2013) 2 SCR 623, the Opponent submits that the content of this paragraph should be disregarded as it is subject to settlement privilege thus prima facie inadmissible. The Opponent further notes that in any event, Mr. Farran’s comments constitute hearsay and do not accurately represent the facts or actual proposed terms of settlement.

[16]  Leaving these issues aside, as I do not consider settlement negotiations between the parties to be a relevant consideration in assessing the likelihood of confusion between the Opponent’s MOOSEHEAD Marks and Names and the applied for Mark, little weight will be afforded to those portions of the Farran affidavit referencing or related to settlement negotiations [Sky Solar Holdings Co, Ltd v Skypower Global, 2014 TMOB 262 (CanLII) at paragraph 54].

Admissibility of survey conducted by the Applicant

[17]  It has been established that surveys can provide empirical evidence demonstrating consumer reactions in the marketplace which would generally not be known by the decision maker [Masterpiece Inc v Alavida Lifestyles Inc (2011), 2011 SCC 27 (CanLII), 92 CPR (4th) 361 (SCC) (Masterpiece) at paragraphs 93, 94]. In order to satisfy the R v Mohan requirement of relevance the survey must be both reliable and valid (1994 CanLII 80 (SCC), [1994] 2 SCR 9 (SCC)).

[18]  Mr. Farran states that while he is of the opinion that the Mark is “distinctive of the Eau Claire gin product and that consumers of alcohol products would not be confused with or by the Moosehead beer (or brewed) products” (an assertion I have disregarded as personal opinion on an issue going to the merit of the opposition), he elected to create a “short questionnaire on the subject and had four individuals working as retailers in the liquor industry supply their answers” (Farran affidavit at paragraphs 23-24, Exhibit D).

[19]  At the hearing, the Opponent submitted that this survey evidence is totally inadmissible given that Mr. Farran himself conducted it. Considering that Mr. Farran is the President of the Applicant and lacks impartiality, I agree that the survey evidence is inadmissible.  Further, any of the statements in the survey with respect to a lack of confusion from the four individuals are inadmissible as they are hearsay.

Analysis of the grounds of opposition

Ground of opposition summarily dismissed – Section 30(i)

[20]  Where an applicant has provided the statement required by section 30(i) of the Act, a section 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155].

[21]  In its written argument, the Opponent references paragraph 12 of the Farran affidavit, in which Mr. Farran states that he “caused our trade-mark agent in February 2014 to conduct searches for trade-marks that used the images of (various animals including) moose… that were used in association with brewed beverages, beer, gin, vodka, rye, whisky, rum, scotch, liqueurs and other distilled beverages” and that in return he “received a 580 page report identifying all of the related trade-marks that included images of those animals”. The Opponent submits that the Applicant’s search as described in the Farran affidavit, and as it relates to “moose images”, would have generated only trade-marks owned by the Opponent for any alcoholic beverages making the Applicant aware of the Opponent’s rights in their family of MOOSE trade-marks prior to the filing of the application for the Mark.

[22]  Even assuming the Applicant had been aware of the Opponent’s MOOSEHEAD Marks, the mere knowledge of the existence of the Opponent’s trade-marks does not in and of itself support an allegation that the Applicant could not have been satisfied of its entitlement to use the Mark [Woot, Inc v WootRestaurants Inc Les Restaurants Woot Inc 2012 TMOB 197 (CanLII)].  Knowledge of these trade-marks would not preclude the Applicant from truthfully making the statement required by section 30(i) inter alia on the basis that it believed its mark was not confusing with them.

[23]  In the present case, the Applicant has provided the necessary statement and this is not an exceptional case.  Accordingly, the section 30(i) ground is dismissed.

Section 12(1)(d) ground of opposition 

[24]   The Opponent has pleaded that the Mark is not registrable because it is confusing with any one or combination of the Opponent’s MOOSEHEAD Marks set out in Schedule A.  

[25]  The Opponent has filed copies of these registrations (Oland affidavit, Exhibit A) and I have exercised my discretion to check the register to confirm that all of these registrations, with the exception of TMA563,076 for MOOSEHEAD & DESIGN, are extant [Quaker Oats Co of Canada v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. The Opponent has therefore met its initial burden with respect to this ground.

[26]  As the Opponent has satisfied its initial burden, I now have to determine, on a balance of probabilities, if the Mark is likely to cause confusion with any one or combination of the Opponent’s MOOSEHEAD Marks.

Test to Determine Confusion

[27]  The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

[28]  In Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23 (CanLII), [2006] 1 SCR 824, the Supreme Court of Canada noted the approach to be taken (at paragraph 20):

The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks, and does not give pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. 

[29]  The notion of the ‘casual consumer’ was discussed by the court in Mattel, Inc v 3894207 Canada Inc (2006), 2006 SCC 22 (CanLII), 49 CPR (4th) 321 (SCC) (at paragraph 58):

A consumer does not of course approach every purchasing decision with the same attention, or lack of it.  When buying a car or a refrigerator, more care will naturally be taken than when buying a doll or a mid-priced meal:  General Motors Corp. v. Bellows, 1949 CanLII 47 (SCC), [1949] S.C.R. 678.  In the case of buying ordinary run-of-the-mill consumer wares and services, this mythical consumer, though of average intelligence, is generally running behind schedule and has more money to spend than time to pay a lot of attention to details…To those mythical consumers, the existence of trade-marks or brands make shopping decisions faster and easier.  The law recognizes that at the time the new trade-mark catches their eye, they will have only a general and not very precise recollection of the earlier trade-mark, famous though it may be or, as stated in Coca-Cola Co. of Canada Ltd. v. Pepsi-Cola Co. of Canada Ltd., 1942 CanLII 344 (UK JCPC), [1942] 2 D.L.R. 657 (P.C.), “as it would be remembered by persons possessed of an average memory with its usual imperfections” (p. 661).  The standard is not that of people “who never notice anything” but of persons who take no more than “ordinary care to observe that which is staring them in the face”:  Coombe v. Mendit Ld. (1913), 30 R.P.C. 709 (Ch. D.), at p. 717. However, if ordinary casual consumers somewhat in a hurry are likely to be deceived about the origin of the wares or services, then the statutory test is met.

[30]  In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the goods, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight [Mattel, supra; Veuve Clicquot, supra].

[31]  In Masterpiece, the Supreme Court of Canada discussed the importance of the section 6(5)(e) factor in conducting an analysis of the likelihood of confusion between the parties’ marks in accordance with section 6 of the Act (paragraph 49):

…the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatest effect on the confusion analysis … if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar… As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start…

[32]  Accordingly, I consider it appropriate in this case to begin by assessing the degree of resemblance between the parties’ marks.

Degree of Resemblance

[33]  When considering the degree of resemblance between trade-marks, they must be considered in their totality; it is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the marks [Veuve Clicquot, supra at paragraph 20].

[34]  The preferable approach when comparing trade-marks is to begin by determining whether there is an aspect of the marks that is particularly striking or unique [Masterpiece, supra at paragraph 64].

Opponent’s submissions on the degree of resemblance

[35]  The Opponent’s submissions regarding the degree of resemblance are set out in paragraphs 83-88 of its written argument. Paragraphs 86 to 88 are reproduced below:

86. The marks of the Opponent and the Applicant share one identical element, that being the design of the head of moose, which the evidence shows is distinctive to the Opponent. In comparing this element (head of the moose) of the proposed trade-mark and the Opponent’s trade-mark, this element of the mark is identical.

 

While trade-marks are to be assessed in their entirety and not dissected into their parts, it is also correct to focus on certain features of the mark which may be determinative influences on the consumer’s perception of the mark. With the exception of the addition of a clothed body the head of moose designs used are identical.

87. In Conde Nast Publications Inc v Union des Modernes (1979), 46 CPR (2d) 183, Cattanach J. stated:

“It (respondent) has appropriated the appellant’s mark in its entirety and added thereto as a suffix the words “age tender”. It is axiomatic that the first word or the first syllable in a trade-mark is far more important for the purpose of distinction. Here the first and most important word in the mark which the respondent seeks to register is identical to the mark registered by the appellant”.

88. It is submitted that with the exception of the inclusion of clothing, Applicant’s moose design is identical to the Opponent’s trade-marks. Applicant voluntarily abandoned an application to register the stand alone “Moose Character” depicted in paragraph 14 of the Farran Affidavit. In addition, as set forth in Paragraph 19 of the Farran Affidavit, notwithstanding the content of this paragraph which should be inadmissible due to settlement privilege, the Affiant does confirm that the Applicant voluntarily abandoned this “moose character” design and “removed all use of the Moose Character” from its labelling and marketing. This was all done by the Applicant voluntarily. Following this voluntary withdrawal and removal of the stand alone “moose character”, the Applicant has essentially taken that same moose which has a head of moose identical to the Opponent’s head of moose design, which has acquired distinctiveness and notoriety, and set that “Moose Character in a gin parlour having a conversation with a bear” (paragraph 15 of the Farran Affidavit). 

 

Applicant’s submissions on the degree of resemblance

[36]  The Applicant takes the position that there is very little degree of resemblance between the Mark and any one or combination of the Opponent’s MOOSEHEAD Marks.  Portions of its written argument are reproduced below: 

…

B. Analysis of any one or combination of the Opponent’s marks shows a common primary element consisting of: i) only the head of a moose, and/or; ii) The Moosehead name; and/or iii) The word “moose”; clearly suggesting, both visually and phonetically, the idea of a moose.

C. Conversely, the Mark does not contain the word “moose” anywhere in its design.

…

E. The idea suggested by the Mark is “Parlour Gin”, and a Victorian parlour, in which two characters in Victorian dress are sitting.

F. While the Trade-mark does depict a moose character, the moose has a human body which is wearing clothing, and the moose character is equally as prominent as the bear character depicted in the same way, with a clothed human body, sitting across from it.

…

H. The moose component of the Trade-mark and the moose featured in those of the Opponent’s Marks consisting of design marks are generally drawings of a moose but they are not identical drawings.

…

J. The Trade-mark’s place in the Applicant’s overall branding scheme for its spirits, which uses different animals dressed in Victorian clothing in various social situations, supports that an ordinary consumer will associate the Mark, and the Applicant’s products generally, with the idea of social Victorian animal characters, not specifically with a moose.

…

Conclusion on the degree of resemblance –the parties’ marks bear little resemblance in appearance, sound, or in the ideas suggested by them

[37]  In terms of appearance, I find the most striking element of the Opponent’s MOOSEHEAD Marks to be:

i)  The words MOOSEHEAD and/or MOOSE, for example in: MOOSEHEAD (TMA121,747); MOOSE (TMA285,467); MOOSEHEAD PREMIUM DRY (TMA442,653), and MOOSE LIGHT (TMA574,849); or

ii)  A naturalistic drawing of a head of moose (with the exception of TMA498,373 for the trade-mark MOOSE WINOOSKI’S & Design, which features a cartoon moose wearing sunglasses), for example in; MOOSEHEAD DESIGN (TMA262,156); MOOSE’S HEAD DESIGN (TMA320,108); and HEAD OF MOOSE DESIGN (TMA667,312) shown below; or

 

iii)   A combination of these word and design elements, for example in: MOOSEHEAD BEER BOTTLE LABEL DESIGN (TMA252,475); MOOSEHEAD QUALITY & TRADITION BEER & DESIGN (TMA342,204); and Head of Moose Design (TMA789,452) shown below. 

[38]  In contrast, I find the most striking elements of the Applicant’s Mark to be the “parlour scene” with two seated, formally attired anthropomorphic figures, followed by the EAU CLAIRE DISTILLERY logo, which is centered near the top of the Mark, roughly above and between the figures. To a lesser extent, I also find striking the words PARLOUR GIN at the bottom center of the Mark.

[39]  Although various of the Opponent’s MOOSEHEAD Marks and the Applicant’s applied for Mark both contain a head of moose depicted in a naturalistic style and facing the same side, I am of the view that when considered as a matter of first impression and imperfect recollection, the head of moose would not stand out from or dominate the Mark or provide the “content and punch” of the Mark [Masterpiece, supra at paragraphs 64, 83-84] but would instead simply be recognized as one of the elements comprising the parlour scene.

[40]  In other words, I consider that the average consumer’s attention would not be drawn to the head of moose depicted in the Mark, but rather to all of the elements - including the seated human bodies in formal clothing, the bear head, and the parlour furnishings – that make up the parlour scene. I also note that visual emphasis is not directed to the head of moose through the use of selective proportion, positioning (in that the anthropomorphic bear character shares roughly the same size and position) or through the use of colour.

[41]  As acknowledged by the Opponent in its written argument, trade-marks are to be assessed in their entirety and not dissected into their parts. However, by isolating from the applied for Mark only the drawing of the head of moose and considering it beside one of the MOOSEHEAD Marks (TMA320,108), this is exactly what the Opponent has achieved.

[42]  The Opponent has argued that it is correct to focus on certain features of the mark that may be determinative influences on the consumer’s perception of the mark, and submits that with the exception of the addition of a clothed body the head of moose designs used are identical. While the drawings of the heads of moose are certainly very similar, being presented in the same naturalistic style and from the same side, I do not consider that this would have an determinative influence on the consumer’s perception of the Mark since I do not find the head of moose per se to be a striking feature of the Mark. When considered in their entireties, I find the visual appearance of the parties’ marks to be quite different.

[43]  In terms of sound, various of the Opponent’s MOOSEHEAD Marks consist of or contain the words MOOSE or MOOSEHEAD in which case I consider these elements to be dominant (for example, those marks shown above at paragraphs 37(i) and (iii)). Some of the Opponent’s Marks contain no written elements (for example, those marks shown above at paragraph 37(ii)).

[44]  The applied for Mark contains the phrase “EAU CLAIRE DISTILLERY”, which I consider to act as a source identifier, as well as the words “PARLOUR GIN”. As noted by the Applicant in its written argument, the Mark does not contain the words MOOSE (or MOOSEHEAD). I thus find that the parties’ marks bear little resemblance in sound.

[45]  Regarding the ideas suggested, I find the parties’ trade-marks to be very different. I consider the Opponent’s MOOSEHEAD Marks to evoke the singular idea of a conventional moose head or moose. In contrast, I find the Applicant’s Mark to suggest the fanciful idea of animals with human torsos sitting in a parlour, and also reminiscent of an earlier era (the words PARLOUR GIN are suggestive of Victorian era “gin parlours”). I also consider that the inclusion of the Applicant’s EAU CLAIRE DISTILLERY design suggests to consumers the source of the Applicant’s Goods.

[46]  In Diageo Canada Inc. v. Heaven Hill Distilleries, Inc, 2017 FC 571 (CanLII), the court assessed the likelihood of confusion between the Admiral Nelson character and Diageo’s Captain Morgan registered trademarks, both of which were associated with rum products. The court noted (at paragraph 127):

Moreover, the degree of resemblance between the Admiral Nelson character and Diageo’s registered trademarks (other than TMA864,267) is such that, as a matter of first impression, a somewhat hurried consumer, with an imperfect recollection of the CAPTAIN MORGAN trademarks who is ordinarily cautious but does not pause to examine closely the similarities or differences between the trademarks or trade names, would likely be confused in purchasing a bottle of ADMIRAL NELSON’S rum, thinking it to be a bottle of CAPTAIN MORGAN rum. This conclusion is supported by the findings in the Corbin report as discussed above; it is also supported by the testimony of Andrew Knight, Diageo’s Director of Planning and Insights, who testified that: “an alcohol purchase is a very small part of a consumer’s life, and they tend to make the decision quite quickly and don’t have that much thought in it.”

[47]  While acknowledging that there was little scope for confusion between the marks when spoken, the Court considered that there was visual confusion between the marks from the perspective of the average consumer who would not stop to examine closely the points of similarity or difference between the marks (Diageo, supra, at paragraph 133).

[48]  In the instant case, I consider that the average consumer of the Goods would similarly not stop to examine closely the one point of similarity between the parties’ marks, namely a head of moose. When considered in their entirety, the parties’ marks bear little resemblance to one another.

Inherent distinctiveness of the trade-marks and the extent to which they have become known

[49]  The Opponent’s MOOSEHEAD Marks consist of and/or contain the words MOOSEHEAD and/or MOOSE and/or a head of moose design. I consider these marks to possess a high degree of inherent distinctiveness as there is no connection between the goods and services of the Opponent (set out in Schedule A) and moose.

[50]  The applied for Mark contains a fanciful “parlour scene” comprised of design elements with no connection to the Goods; it also includes descriptive and non-descriptive word elements. I consider the Applicant’s Mark also possesses a high degree of inherent distinctiveness.

[51]  The distinctiveness of a trade-mark may be further increased through promotion or use. In this case, the Opponent has submitted evidence showing the extensive use and reputation of the Moosehead Marks, and supporting the conclusion that the MOOSEHEAD trade-mark and head of moose design is extremely well known, if not famous, in Canada for brewed alcoholic beverages. Some of the most pertinent portions of the affidavit evidence of Patrick Oland, Chief Financial Officer and a Director of the Opponent, are summarized below:

·  Mr. Oland advises that the Opponent was incorporated in 1928 under the laws of the Province of New Brunswick and is the oldest, privately owned, independent brewery in Canada (paragraph 2).  

• Mr. Oland states that since approximately 1930, the Opponent has brewed, bottled, and packaged brewed alcoholic beverages in Canada under its trade-mark MOOSEHEAD and various designs of moose, both full body moose designs and head of moose designs (paragraph 3).

 

• Exhibits B and U include a sampling of packaging used on the Opponent’s various Moosehead beer products, including beer products currently available for sale throughout Canada (Exhibit U). The trade-marks MOOSEHEAD or MOOSE or head of moose design or some combination thereof appear on all product packaging including on boxes, cans, and bottles (embossed directly onto the glass bottles and/or on labels affixed to the bottles).

 

• Mr. Oland states that the Opponent “launched its Moosehead beer in Ontario, British Columbia, Newfoundland and Alberta in 1992 and this launch was supported by radio and newspaper advertising. In Ontario and Newfoundland the launch was also supported by outdoor advertising. During my company’s launch throughout Canada, Moosehead beer was given national coverage through Canadian hotels, Restaurants as well as Foodservices and Hospitality magazines” (paragraph 23). Exhibit Q consists of photocopies of outdoor posters, billboards and magazine advertising used by the Opponent from 1992 to 1994.Exhibit L-1 provides copies of photographs from Toronto, Ontario in the summer of 1992 displaying some of the outdoor signs used by the Opponent during its launch in Ontario (paragraph 18).

 

• Exhibit F consists of samples of promotions and newspaper advertisements bearing various of the MOOSEHEAD Marks which appeared in Manitoba and British Columbia. Mr. Oland notes that in particular, the “Spot the Moose” contest was a very successful promotion for the Opponent in Manitoba and British Columbia (paragraph 9).

 

• Mr. Oland attaches as Exhibit V a copy of a pamphlet distributed by the Opponent throughout Canada and Quebec following the launch of the Opponent’s “Moosehead” beer in Quebec in 2002 (paragraph 28). I note that the pamphlet includes the MOOSEHEAD word mark and the head of moose design.

 

• Mr. Oland provides for the years 1980 to 2015, the approximate retail sales value in Canada for “beer, consumer goods such as clothing and novelty items, which (products) are associated therewith my company’s family of trade-marks such as MOOSEHEAD (Word), and the HEAD OF MOOSE (Design)”. These sales range between $60,458,000 and $147,589,000 CAD annually (paragraph 11).Although these figures are not broken down by product category, I consider it reasonable to assume that the majority of these sales are attributable to beer.

 

• Mr. Oland also provides the approximate annual promotional and advertising expenditures “incurred by my company or its agents, when advertising beer, consumer goods and services wherein the products and services are in association with the trade-mark MOOSEHEAD and the MOOSEHEAD family of trade-marks”. For the years 1980 to 2015 (excluding the years 2000-2004, for which data was not available) promotional/advertising expenditures range between $4,213,000 and $28,753,290 CAD (paragraph 10). Again, while not broken down by product category, I consider it reasonable to assume that the majority of the advertising expenditures are directed towards the promotion and advertising of beer.

 

• Mr. Oland states that the Opponent has also advertised extensively in the United States “since it began exporting its Moosehead product there”. As an example, Mr. Oland states that in 1998 the Opponent spent approximately $4 million on US advertising, with roughly half spent on print media (such as magazines) and half on trade publications.Mr. Oland states that the Opponent purchased one page insertions for a total of approximately 66 insertions in magazines such as “Men’s Journal”, “Men’s Health”, “Outside”, “Ski”, “Backpacker”, “Mountain Biking”, “Climbing”, “Rolling Stone Magazine”, “POV”, “GQ”, and “Esquire”, and that most, if not all of these magazines are also available for sale in Canada (paragraph 12).

 

• Mr. Oland also attaches copies of articles relating to the popularity of the Opponent’s MOOSEHEAD beer in the United States in the 1980s (Exhibits I, N, and P) for which Mr. Oland confirmed that he personally reviewed and finds the information contained to be accurate.

 

• Exhibit G consists of representative samples of Point of Sale materials used by the Opponent in the promotion of its beer product in bars and restaurants where “Moosehead” beer is available throughout Canada (paragraph 13).

 

• Mr. Oland also provides information on numerous sponsorships and co-sponsorships by the Opponent for a range of charity, sporting, and cultural events both in Canada and the United States. He references events including: the 1985 Canada Games; the Peter Gzowski Invitational Golf Tournament; The Dinah Shore Invitational Golf Tournament; Skate to Care fundraiser; Beach Sweep; The Charlottetown Festival; Scotia Festival of Music; the Moosehead Grand Prix; the Harvest Jazz and Blues Festival; majority shareholder of the Halifax Mooseheads, a Quebec Major Junior Hockey League Franchise from 1995-2003, and major sponsorship of TALL SHIPS 2000 in Halifax, Nova Scotia (paragraph 14). Mr. Oland attaches as Exhibit H-1 and H-2 copies of promotional material and newspaper articles for some of these events.

 

• Mr. Oland states that the Opponent is also one of the principal sponsors of “Harbor Station” in Saint John, New Brunswick, a venue used for hosting games for the Quebec Major Junior Hockey League, as well as for many high profile concert events in New Brunswick (paragraph 29). Mr. Oland states that the Opponent also sponsors many concert events throughout the Maritime Provinces in the promotion of its beer and “Moosehead” merchandise (paragraph 30, Exhibit W).

 

• Mr. Oland states that in addition to the use of its website, print media, television, radio and sponsorship of various sporting events, teams, fundraising events, and concerts to promote its product, the Opponent also utilizes social media sites such as Twitter and Facebook (paragraph 31). Mr. Oland states that the Opponent has utilized many creative ways to promote the Moosehead brand online and through social media, and describes a 2012 promotional campaign prominently featuring the MOOSEHEAD trade-mark and spanning television, Facebook, and YouTube (paragraph 32).

[52]  In contrast, I note that the application for the Mark is based on proposed use and there is no evidence that use of the Mark has commenced or that it has become known to any extent.  

[53]  Accordingly, this factor strongly favours the Opponent.

Length of time the trade-marks have been in use

[54]  The application is based on proposed use whereas the registrations for the Opponent’s MOOSEHEAD Marks claim longstanding use in Canada; the Opponent’s earliest registration for the trade-mark MOOSEHEAD (TMA121,747) claims use in Canada since at least as early as December 4, 1928. This longstanding use is supported by the evidence of Mr. Oland.

[55]  Accordingly, this factor also strongly favours the Opponent.

Nature of the goods and trade

[56]  It is the Applicant’s statement of goods as defined in its application versus the Opponent’s registered goods and services that governs my determination of this factor [Henkel Kommanditgesellschaft auf Aktein v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); Mr. Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); Miss Universe Inc v Bohna (1994), 1994 CanLII 3534 (FCA), 58 CPR (3d) 381 (FCA)].

[57]  Many of the Opponent’s registrations for the MOOSEHEAD Marks cover brewed alcoholic beverages or beer, for example: MOOSEHEAD (TMA121,747 for ale); MOOSEHEAD CANADIAN LAGER BEER Design (TMA252,475 for brewed alcoholic beverages, namely lager beer), HEAD OF MOOSE Design (TMA320,108) and MOOSEHEAD QUALITY & TRADITION Design (TMA342,204) both for brewed alcoholic beverages. Some of the Opponent’s registrations also cover consumer goods such as clothing and novelty items (for example TMA357,860; TMA360,450; TMA364,664; TMA514,891) and/or restaurant and bar services (for example TMA503,221;TMA514,891), or organization and promotion of hockey games and associated events (for example, TMA448,398). 

[58]  The Applicant’s application is listed for use in association with “distilled alcoholic beverages, namely gin”.

[59]  While not identical, I consider the parties’ beer and gin goods to be closely related in that they fall into the same general category of alcoholic beverages. In this regard, the Federal Court has previously found that the goods beer, wine and spirits are products of one industry [Carling Breweries Ltd. v. Registrar of Trade-marks (1972), 8 CPR (2d) 247 (FCTD)]. The Registrar has also found that alcoholic beverages may be sold at the same establishments in close proximity to one another [SA de CV v Bodegas Y Vinedos Filippo Figari SA, 2013 TMOB 160 (paragraph 22)].

[60]  Mr. Oland also states in his affidavit that it has become “very common for brewers to also run distilleries or vineyards and that this trend is becoming increasingly popular”, and attaches as exhibits a number of articles and a ‘Directory of Craft Distillers in Canada’ to support his position (Oland affidavit, paragraphs 33-36, Exhibits X-AA).

[61]  Mr. Oland also asserts that the Opponent has “in fact owned and used trade-marks through licensees in the sale of distilled alcoholic beverages”, attaching copies of registrations for the design and word trade-marks MOOSE MILK (expunged for failure to renew in September 2012 and January 2014, respectively) for use with “wine, spirits, and liquors” and asserting use under license by Lang Family Distilleries (Oland affidavit, paragraphs 37, 38, 42; Exhibits BB, CC). However, without any evidence of the extent of use, I do not find this a fact which increases the likelihood of confusion because there is no evidence that a consumer would know that the Opponent has sold a distilled alcoholic beverage.

[62]  Based on the foregoing, I find that there would be significant overlap in the parties’ channels of trade. I do not consider that the Applicant’s evidence relating to labelling standards and requirements for distilleries (Farran affidavit, paragraphs 7, 8) results in a different conclusion.

[63]  Accordingly, both of these factors favour the Opponent.

Surrounding circumstance: Family of Marks  

[64]  The Opponent, in its written argument, submits that its evidence establishes that it owns a family of trade-marks which “incorporate the word “Moosehead”, “Moose”, the design of a full bodied moose and head of a moose designs for use with, inter alia, brewed alcoholic beverages, restaurant services, bar services, the operation of a retail store selling alcoholic beverages, clothing and novelty items”.

[65]  I have considered the Opponent’s family or series of marks incorporating, as the dominant or most striking feature, the word “Moosehead” and/or “Moose” and/or a head of moose design. The Opponent has shown use of many of these marks, including MOOSEHEAD (TMA121,747), MOOSE LIGHT (TMA574,849), MOOSEHEAD PREMIUM DRY (TMA442,653), and HEAD OF MOOSE Design (TMA320,108) in association with brewed alcoholic beverages/beer [McDonald's Corp v Yogi Yogurt Ltd (1982), 66 CPR (2d) 101 (FCTD)].

[66]  However, this surrounding circumstance does not favour the Opponent since I consider that the Mark does not show the common characteristic of the family of marks. While the Mark does contain within its drawing of a “parlour scene” a head of moose, I do not find that it would be seen as a dominant or striking feature. Accordingly, I find that the existence of a family of trade-marks dominated by the word “Moosehead”, “Moose”, or the design of a head of moose as incorporated in the Opponent’s marks does not increase the likelihood of confusion between the Mark and the Opponent’s MOOSEHEAD Marks [McDonald's Corp v Silverwood Industries Ltd (1989), 24 CPR (3d) 207 (FCTD) at 217].

Surrounding circumstance – State of the register

[67]  State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace, and inferences about the state of the marketplace can only be drawn where large numbers of relevant registrations are located [Ports International Ltd v Dunlop Ltd (1992), 41 CPR (3d) 432 (TMOB); and Welch Foods Inc v Del Monte Corp (1992), 44 CPR (3d) 205 (FCTD), 1991 CanLII 6755, 36 CPR (3d) 562 (TMOB); and Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA)].

[68]  The Opponent introduced state of the register evidence through the affidavit of Ms. Deslauriers, a Senior Searcher with Thomson CompuMark, an intellectual property research firm which is part of the Thomson Reuters Corporation (Deslauriers affidavit, paragraph 1).

[69]  At the request of the agent for the Opponent, Ms. Deslauriers conducted a “Canadian search dilution (How Common) of the trade-marks database maintained by Thomson Compumark for trade-marks that include the term “MOOSE” and that cover goods for “beer or brewed alcoholic beverages”” (paragraphs 3, 4; Exhibit HD-1).

[70]  The Opponent, in its written argument, submits that these results show that while third parties have secured registrations including the element MOOSE or a Moose design for various goods, including food products and non-alcoholic beverages, none of these third party marks are registered or applied for use with any alcoholic beverages. I find that this evidence establishes that the Opponent is only party holding registrations for trade-marks including the element MOOSE or a moose design and listed for use in association with beer or brewed alcoholic beverages. I thus consider this to be a relevant surrounding circumstance favouring the Opponent.

Surrounding circumstance – alleged use by the Applicant of a standalone head of moose and/or moose character

[71]  Through the Oland affidavit, the Opponent submits a copy of a T-shirt Mr. Oland asserts is “made available for sale by the applicant using the moose design as depicted in the present application no 1,667,113”. Mr. Oland states that “the head of moose in this design is identical to any one of my company’s registered trade-marks which include a head of moose design” (Oland affidavit, paragraph 39, Exhibit DD).

[72]  Mr. Oland also submits a copy of  “additional articles made available for sale by the Applicant herein which also utilize the head of moose design which is essentially identical to my company’s registered trade-marks and head of moose design which has been used by my company since 1931” (Oland affidavit, paragraph 40; Exhibit EE).

[73]  Mr. Oland also submits a copy of a “photograph of [the] Applicant’s homepage on their website” stating that “once again their use [of] a head of moose design which is identical to my company’s registered trade-mark is noted” (Oland affidavit, paragraph 41, Exhibit FF).

[74]  In response, Mr. Farran submits that he is “uncertain where Mr. Oland or his representatives obtained these images (in Exhibits DD and EE) but I expect that they were obtained from a marketing company that Eau Claire (the Applicant) had retained and subsequently fired”. Mr. Farran states that “Eau Claire has never sold T-shirts utilizing the Moose Character Design on its own, or sold any of the cube-shaped items depicting the head of the Moose Character as such an act would have been in breach of the promise Eau Claire made to the Opponent…”  (Farran affidavit, paragraph 20). I note that Mr. Farran was not cross-examined on his evidence and I accept the above explanation. I also note that the image featured on these items is not the applied for Mark but appears to be a trade-mark previously applied for by the Applicant under application No. 1,667,091 (Farran affidavit, paragraph 14).  Accordingly, I do not consider these images to be relevant to the issues before me in this proceeding.

[75]  Regarding Exhibit FF, Mr. Farran states that “notwithstanding that Eau Claire did, at one point, show only the head of its Moose Character on the webpage for its Three Point Vodka product, that reference was removed in accordance with Eau Claire’s promise made to the Opponent prior to the Opponent filing its Opposition to the PARLOUR GIN Design trade-mark” (paragraph 21). Again, I note that Mr. Farran was not cross-examined on his evidence and I accept his testimony that this reference was removed from the Applicant’s webpage for its Three Point Vodka product. Further, I do not consider the fact of the head of a moose appearing on the Applicant’s website in association with a vodka product for a limited period of time to increase a likelihood of confusion as between the applied-for trade-mark and the Opponent’s MOOSEHEAD Marks and Name.

Conclusion on the likelihood of confusion

[76]  In this case, I conclude that the Applicant has met its legal onus to prove, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Applicant’s Mark and any one or combination of the MOOSEHEAD Marks.

[77]  In reaching this conclusion, I have considered that the Opponent’s MOOSEHEAD Marks possess a high degree of inherent distinctiveness; that the Opponent has evidenced extensive use and reputation of its MOOSEHEAD Marks; and that the Opponent’s MOOSEHEAD trade-mark and head of moose design are extremely well known, if not famous in Canada for brewed alcoholic beverages. I have also considered that there is significant overlap in the nature of the parties’ goods (alcoholic beverages) and the corresponding channels of trade, and that the state of the Register also favours the Opponent.

[78]  Notwithstanding my findings on these factors, I find that there is no reasonable likelihood of confusion as the parties’ marks bear little resemblance in appearance, sound, and in the ideas suggested by them. As discussed above, the Supreme Court of Canada in Masterpiece has noted that the degree of resemblance, although the last factor listed in section 6(5) of the Act, is the statutory factor that is often likely to have the greatest effect on the confusion analysis.

[79]  Accordingly, the section 12(1)(d) ground of opposition is rejected.

Section 16(3)(a) and 16(3)(c) and 2 grounds of opposition

[80]  In this case, the material date at which the issue of confusion is assessed does not affect the result of my analysis. Even though the Opponent has met its initial onus in respect of these grounds, they all fail for reasons similar to those set out with respect to the section 12(1)(d) ground of opposition.

[81]  Accordingly, the section 16(3)(a), 16(3)(c), and 2 grounds of opposition are rejected.

Disposition

[82]   Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.

Jennifer Galeano

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

Schedule A

Reg. No	Trade-mark	Goods/Services	Use Claim
TMA121,747	MOOSEHEAD	Ale	Used in Canada since at least as early as December 4, 1928.
TMA252,475		Brewed alcoholic beverages,  namely lager beer	Declaration of Use filed October 10, 1980.
TMA262,156		Brewed alcoholic beverages	Used in Canada since at least as early as January 1, 1979.
TMA285467	MOOSE	Brewed alcoholic beverages	Declaration of Use filed August 18, 1983.
TMA320,108		Brewed alcoholic beverages	Used in Canada since at least as early as October 10, 1980.
TMA336,528		Brewed alcoholic beverages	Used in Canada since at least as early as October 10, 1980
TMA342,204		Brewed alcoholic beverages	Used in Canada since as early as April 02, 1987.
TMA346,542	MOOSEHEAD COUNTRY STORE	Aprons; bags, namely cooler bags, golf bags, hockey bags, raquet bags, tote bags; bar equipment, namely bar mirrors, barrel cooler, cigarette lighters, coasters, darts, dart boards, posters, playing cards, twist off bottle openers, wall mirror pendulum clocks, wooden barrel ends; decals, namely bumper stickers, stick decals, windshield stickers; glass/cup ware, namely beer mugs, coffee mugs, hi-ball glasses, pewter beer mugs, plastic beer cups; hats, namely ball caps, gatsby caps, painter hats, summer mesh hats, summer stripe hats, sun visors, winter corduroy hats; key chains; beach towels; crests; golf tees; golf markers; pens; clothing, namely golf shirts, polo shirts, socks, sweatshirts, t-shirts, baseball uniforms, hockey uniforms, football jerseys, neck ties, sweaters, jackets; lawn ornaments; lapel pins; golf umbrellas; patio umbrellas.   Operation of a retail store.	Used in Canada since June 29, 1987 on goods.   Used in Canada since as early as June 29, 1987 on services.
TMA354,401		Brewed alcoholic beverages.	Used in CANADA since as early as March 03, 1988. Registration is subject to the provisions of Section 67(1) of the Trade-marks Act, in view of Newfoundland Registration No. NFLD2003.
TMA357,860	MOOSEHEAD	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 sweaters, cowboy hats, tote bags, golf bags, golf towels, beach towels, glasses, mugs, trays, plastic cups, lapel pins, barrel ends, cooler bags, cooler cups, key chains, banners, mirrors, dart flights, belt buckles, crests, and bar signs.	Used in Canada since at least as early as November 1983.
TMA360,450		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 sweaters, cowboy hats, tote bags, golf bags, golf towels, beach towels, glasses, mugs, trays, plastic cups, lapel pins, barrel ends, cooler bags, cooler cups, key chains, banners, mirrors, dart flights, belt buckles, crests, and bar signs.	Used in Canada since at least as early as November 1983.
TMA364,664	THE MOOSE IS LOOSE	Posters, playing cards, decals, bumper stickers, windshield stickers, pens, tote bags, golf umbrellas, patio umbrellas, bar equipment, namely barrel coolers, bottle openers, glass/cup ware, beer mugs, coffee mugs, glass sets, hi-ball glasses, pewter beer mugs, plastic beer cups, aprons, hats, namely ball caps, painter hats, summer mesh hats, summer stripe hats, sun visors, winter corduroy hats; clothing, namely shirts, polo shirts, socks, sweatshirts, t-shirts, baseball uniforms, hockey uniforms, football jerseys, neckties, sweaters, jackets.	Used in Canada since at least as early as November 1983.
TMA390,210		Brewed alcoholic beverages.	Used in Canada since as early as March 30, 1989.
TMA442,653	MOOSEHEAD PREMIUM DRY	Brewed alcoholic beverages.	Used in Canada since as early as April 2, 1990.
TMA448,398		(1) Clothing, namely jackets, t-shirts, golf shirts, sweatshirts, caps, hats, wollen knit hats, game jerseys, rugby shirts; souvenirs, namely hockey sticks, hockey pucks, key chains, lapel pins, watches, plastic beer cups, beer mugs, athletic equipment bags, posters. (1) Organization of hockey games and the promotion of hockey teams through associated events, namely dinners, dances, fundraising events, ice skating events, family activity events.	Used in Canada since at least as early as July 9, 1994.
TMA449,179		Brewed alcoholic beverages.	Used in Canada since at least as early as December 7, 1988.
TMA457,182		Ashtrays, cigarette lighters and match books.	Used in Canada since at least as early as April 1987.
TMA457,449	MOOSEHEAD	Ashtrays, cigarette lighters and match books.	Used in Canada since at least as early as April 1987.
TMA464,562	THE MOOSE IS LOOSE	Brewed alcoholic beverages.	Declaration of Use filed August 29, 1996.
TMA488,129	MOOSE	Brewed alcoholic beverages.	Used in Canada since at least as early as August 10, 1983.
TMA498,373		(1) T-shirts, sweatshirts and hats. (2) Men's, ladies' and children's clothing and sportswear, namely, trousers, pants, shorts, coats, jackets, sweaters, bandannas, nylon jackets, scarves, suits, shirts, hooded sweatshirts, jogging pants, leggings, underwear, jogging suits, tank tops, socks, hosiery, sunglasses and belts. (1) Restaurant and bar services.	Used in Canada since at least as early as December 1993 on goods (1). Used in Canada since at least as early as November 1993 on services. Declaration of Use filed July 17, 1998 on goods (2).
TMA503,221	MOOSE	Restaurant services.	Used in Canada since at least as early as April 1989.
TMA509,504	MOOSE	Restaurant services, bar services, coffee shop services, novelty and souvenir store services.	Declaration of Use filed March 02, 1999.
TMA514,891	MOOSE	Glass/cup, namely beer mugs, coffee mugs; hats, namely ball caps; key chains; beach towels; clothing, namely golf shirts, t-shirts.	Declaration of Use filed July 07, 1999.
TMA515,518	MOOSE WINOOSKI’S	(1) Clothing, namely t-shirts, sweatshirts, and hats. (2) Men's, ladies' and children's clothing and sportswear, namely, trousers, pants, shorts, coats, jackets, sweaters, bandannas, nylon jackets, scarves, suits, shirts, hooded sweatshirts, jogging pants, leggings, underwear, jogging suits, tank tops, socks, hosiery, sunglasses and belts. (1) Restaurant and bar services.	Used in CANADA since at least as early as December 1993 on goods (1). Used in CANADA since at least as early as June 1998 on goods (2). Used in CANADA since at least as early as November 1993 on services.
TMA574,849		Brewed alcoholic beverages.	Used in Canada since at least as early as August 2000.
TMA667,312		Brewed alcoholic beverages, namely beer; novelty items namely, flags, beer fridges, portable coolers, bar stools; clothing namely, t-shirts, baseball hats, vests.	Used in Canada since at least as early as May 18, 2005.
TMA789,452		Brewed alcoholic beverages	Used in Canada since 1987.

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2017-10 -19

APPEARANCES

Jennifer McKay	FOR THE OPPONENT
Lisa Hutchinson	FOR THE APPLICANT

AGENT(S) OF RECORD

McDERMID TURNBULL & ASSOCIATES	FOR THE OPPONENT
REID SCHMIDT	FOR THE APPLICANT