Pacific Western Brewing Company Ltd. v Cerveceria Del Pacifico, 2015 FC 1078 (Martineau, J.)
September 17, 2015
Robert McDonelle and Yun Li-Reilly of Farris, Vaughan, Wills & Murphay LLP for the Applicant Pacific Western Brewing Company Ltd.
Monique Couture of Gowling Lafleur Henderson LLP for the Respondent Cerveceria Del Pacifico
The Applicant sought to expunge the trade-mark registration for PACIFICO & Design (the “Mark”) pursuant to section 57 of the Trade-Marks Act. The trade-mark, which protects the Mark in association with beer, was registered in 1990 and claims use since at least 1986. However, the Applicant has been using various PACIFIC trade-marks in the manufacturing and selling of beer since at least 1984.
The Applicant alleged that the Registration was invalid for two reasons: 1) the Mark was not first used in Canada as early as 1986, and this misstatement was material or fundamental; and/or 2) when the Respondent filed its application, it was not entitled to registration as its Mark was confusingly similar to the Applicant’s trade-marks, which were used prior to the first use of the Mark by the Respondent.
The Court set out the material date to consider non-entitlement pursuant to subsection 16(1) of the Act, to be the claimed date of first use of the Mark in Canada; whereas, the material date to consider invalidity based on non-registrability pursuant to paragraph 12(1)(d), to be the date of registration of the Mark in Canada.
With respect to the misstatement of use, the Court noted that an application will be held to be invalid ab initio where the misstatement in the application was intentional and fraudulent or where the misstatement was innocent but fundamental to the registration. The Court found that neither of these situations applied in this case. Rather, there was evidence to support the Respondent’s position that the claimed date of first use was accurate.
The Court also held that the test for confusion was not made out by the Applicant. While the nature of the parties’ wares, businesses and trades were essentially the same (i.e. the manufacturing and selling of beer), a dominant factor in determining the issue of confusion is the degree of resemblance of the marks. The Court found that the Respondent’s Mark was highly stylized with many distinctive elements and that the first impression of the Mark suggests a foreign origin. In comparison, the Applicant’s marks did not suggest a foreign origin nor did they resemble the Respondent’s Mark in design or colour elements.
The Court noted that there was no evidence to establish a single instance of consumer confusion between the parties’ beer products, even after nearly 20 years of coexistence. Further, the delay of almost 25 years before the Applicant attempted to invalidate the registration weighed heavily against a finding of confusion. The Court dismissed the application and the Respondent’s Mark was not expunged.
By: Jillian Brenner, Borden Ladner Gervais LLP