The Unstable Existence of Confusing Marks on the Registrar

Elizabeth Elliott and John Macera for the Applicant, Molson Canada 2005 (‘Molson”)
Mark Robbins for the Respondent, Anheuser-Busch Incorporated (“Anheuser-Busch”)

This was an appeal filed by the Applicant to a decision made of the Trade-marks Opposition Board, which had rejected Molson’s opposition to a script label design for BUDWEISER beer, for use in association with beer, clothing, and drinking vessels. Molson’s mark is STANDARD LAGER, also written in script label design.

Molson requested a declaration that the Registrar of Trade-marks erred in rejecting Molson’s opposition, an order reversing the decision of the Registrar of Trade-marks and refusing the application, and costs. Molson’s appeal was allowed in part. The Court found that the Registrar of Trade-marks had exceeded its authority in limiting the scope of protection accorded to the STANDARD LAGER mark and that the two marks were confusing in association with beer. However, the Court allowed to stand the Registrar’s decision with regards to wares other than beer, including clothing and drinking vessels.

The application in question (which Molson had opposed) was an updated version of two labels previously registered by Anheuser-Busch. Molson owned a similar-looking beer label used in association with the name Standard Lager. The grounds of opposition were principally confusion and lack of distinctiveness.

The Court reviewed an extensive history of litigation between the parties, regarding the three registered marks, that is the Molson Standard Lager design, and the two labels previously registered by Anheuser-Busch. While confusing similarity had been found in the past, the registrations had continued to co-exist on the register as valid marks. However in 1993, Anheuser-Busch succeeded in opposing Molson’s application to register an updated version of the Standard Lager design, on the basis of confusion previously found by the Court of Appeal. In 1995 Molson was unsuccessful in opposing Anheuser-Busch’s registration of Budweiser labels for use in association with various items of merchandise, not including beer.

The application which was the subject of the appeal under discussion was opposed in February 2003, and the opposition was rejected by the TMOB in November 2008. In launching an appeal, Molson argued among other grounds that the TMOB hearing officer had:

erred in finding that the Registrar had the jurisdiction to limit the scope of protection accorded to Molson’s Standard lager mark, permitting an application for a mark which the parties agreed was confusing with another;
erred in limiting the benefit to Molson of the Standard Lager mark;
erred in “refusing to accept the Standard lager mark at its face value and in so doing, finding that an opposition proceeding is an appropriate forum for tacit amendments to the trade-marks register”; and
had ignored certain facts in evidence.

Anheuser-Busch argued the issues as being:

the appropriate standard of review;
the Court of Appeal precedent for permitting the co-existence of the two confusing marks on the register;
the questionable likelihood of confusion for non-beer wares; and
the separability of the opposition in relation to beer wares from the opposition in relation to non-beer wares.

In deciding the matter, the Court made the following notable findings:

the crux of the matter was what rights Molson could assert with respect to its own Standard Lager trade-mark registration;
Anheuser-Busch’s semantic characterization of its proposed use mark, as being an “updated” version of their old mark, could not be used to cloud the fact that it was a new application for a new mark. This observation limited the relevance of a previous Court of Appeal decision dealing with Anheuser Busch’s original marks (i.e. pre “updating”);
the Registrar had erred in assuming the jurisdiction to limit the scope of protection for Molson’s Standard Lager mark;
new evidence submitted by Molson fell within the reasonable standards of review; and
whatever the history, “the registrar is not to register a new mark if there is a confusing mark on the register.”

Since there was no disagreement that the marks were confusing in relation to beer, the court allowed the appeal with respect to beer wares. However, endorsing the Registrar’s finding that, on the balance of probabilities, there would be no reasonable likelihood of confusion between the two marks for non-beer wares, the Court dismissed the appeal with respect to non-beer wares. Due to the divided success of the parties to the matter, there was no order as to costs.

By: Ruth M. Corbin, with the assistance of Sarah Carnegie