LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 164
Date of Decision: 2012-09-26
IN THE MATTER OF AN OPPOSITION by Heineken Brouwerijen B.V. to application No. 1,168,025 for the trade-mark HEINEKEN in the name of Robert Victor Marcon
[1] On February 18, 2003, Robert Marcon (the Applicant) filed an application to register the trade-mark HEINEKEN (the Mark), based upon proposed use of the Mark in Canada in association with the following wares: “non-alcoholic coffee-based beverages; non-alcoholic tea-based beverages; dairy products namely milk, and cream” (the “Wares”).
[2] The application was advertised for opposition purposes in the Trade-marks Journal of April 15, 2009. On April 21, 2009 Heineken Brouwerijen B.V. (the Opponent) filed a statement of opposition pursuant to the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act). A counterstatement was filed on July 8, 2009 denying all of the allegations in the statement of opposition.
[3] The Opponent filed the affidavits of Maggie Timoney, Kiernan Alexander Murphy, Susan Burkhardt, and Barbara Gallagher. The Opponent also filed certified copies of the registrations and applications relied on in its statement of opposition. The Applicant filed the affidavit of Robert Victor Marcon. No cross-examinations were conducted. Both parties filed written arguments; only the Opponent was represented at the oral hearing.
Grounds of Opposition
[4] The grounds of opposition are summarized as follows:
Section 38(2)(a) of the Act - Non-Compliance with Section 30(e) and 30(i)
• The Applicant does not have a bona fide intention to use nor does he have the belief that he is entitled to use the Mark in Canada in association with the wares described in the application. The Applicant has no legitimate business and likely intends to traffic in the trade-marks; the Applicant had knowledge of the well-known brands he applied to register, and seeks to trade on the goodwill of the brands. The Applicant is acting in bad faith and could not be satisfied of his entitlement to use the Mark.
Section 38(2)(b) of the Act – Confusion
• The application is not registrable in view of section 12(1)(d) since the Mark is confusing with the Opponent’s registrations Nos. TMA133,531, TMA443,468, TMA562,337, TMA554,809, TMA467,978, TMA585,163, TMA584,161, TMA129,846.
Section 38(2)(c) of the Act - Non-Entitlement
• Contrary to section 16(3)(a) the Applicant is not the person entitled to the registration since at the date of filing, namely February 18, 2003, the Mark was confusing with the trade marks set out above, as well as with application Nos. 1,327,891, 1,446,213, 1,440,926, and 1,293,661 all of which had been used and made known in Canada in association with “beer” by the Opponent (the HEINEKEN trade-marks).
Section 38(2)(d) of the Act - Non-Distinctiveness
• The Mark is not distinctive within the meaning of section 2 of the Act because it does not distinguish, and it is not adapted to distinguish, the wares in association with which it is proposed to be used from the wares associated with the Opponent’s HEINEKEN trade-marks in Canada as described above.
[5] With respect to the Opponent’s HEINEKEN trade-marks I note that in addition to the word marks HEINEKEN (TMA554,809) and HEINEKEN LAGER BEER (TMA584,161) that were registered in 2001 and 2003 respectively, the Opponent also relies on registrations for trade-marks that consist of the word HEINEKEN prominently displayed on a banner design. These are shown below and were registered in 1963 and 1995 respectively:
TMA133,531 TMA443,468
[6] HEINEKEN and banner design also forms part of the Opponent’s label designs; these are shown below and were registered in 1963 and 2002 respectively:
TMA129,846 TMA562,337
[7] In some cases the word HEINEKEN is registered on a black rectangular or square background with design elements. These are shown below and were registered in 1996 and 2003 respectively:
TMA467,978 TMA585163
[8] With respect to the evidence regarding use of HEINEKEN by the Opponent, in particular in the affidavit of Ms. Timoney, as discussed below, I note that most of the use demonstrated is of HEINEKEN with a star, or with a star and hop leaf design (i.e. TMA467,978, TMA585,163) as well as of the HEINEKEN label design (TMA562,337). In all cases, I consider it self-evident that the word HEINEKEN is a dominant element of each trade-mark and that therefore use of any of the HEINEKEN trade-marks by the Opponent is considered use of the word mark HEINEKEN, which is the subject of a 2001 registration based on use in Canada since 1963 (TMA554,809).
Onus
[9] 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 [see John Labatt Limited v The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
Confusion – Section 12(1)(d)
[10] The determinative issue in this proceeding is the question of likelihood of confusion. The Opponent has alleged confusion under section 12(1)(d) of the Act based on its registrations for what is, effectively, the identical trade-mark registered in association with “beer”. The key evidence that relates to this issue has been summarized within the discussion on confusion which follows.
[11] I have exercised the Registrar’s discretion and confirmed that six of the Opponent’s registrations are extant; TMA133,531 and TMA443,468 were not been renewed and have been expunged. Nevertheless, I am satisfied based on the remaining registrations that the Opponent has met its initial evidential burden. The Applicant must now demonstrate that there is no likelihood of confusion within the meaning of section 6(5) of the Act between the trade-marks at issue. The material date for determining the likelihood of confusion under section 12(1)(d) is the date of this decision [Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)].
[12] 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 wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. The purchaser in mind is described as the casual consumer somewhat in a hurry [Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.) at para. 58].
[13] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 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 wares, 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.
[14] These factors need not be attributed equal weight; rather, the weight to be given to each relevant factor may vary, depending on the circumstances [see Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.); Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)]. Furthermore, the list of factors set out is not exhaustive of matters that could be considered [see in general Mattel supra; United Artists Corp. v. Pink Panther Beauty Corp. (1988), 80 C.P.R. (3d) 247 (F.C.A.) at 263-264; Veuve Cliquot Ponsardin v. Boutiques Cliquot Ltée. (2006), 49 C.P.R. (4th) 401 (S.C.C.)].
[15] In most instances, the dominant factor in determining the issue of confusion is the degree of resemblance between the trade-marks in their appearance or sound or in the ideas suggested by them, and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145, conf. 60 C.P.R. (2d) 70 (F.C.T.D.)]. Recently, in Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), 92 C.P.R. (4th) 361 (S.C.C.), the Supreme Court of Canada considered the importance of s. 6(5)(e) in conducting an analysis of the likelihood of confusion (see para 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.
[16] In this proceeding, I consider, with regard to s. 6(5)(e), that the trade-marks at issue are identical. Accordingly, as reasoned in Masterpiece, supra, the remaining factors must be carefully considered since they take on added significance in these circumstances.
Section 6(5)(a) - Inherent distinctiveness of the trade-marks and the extent to which they have become known
[17] It is my view that HEINEKEN is inherently distinctive in both cases as the Mark has no clear connotation in association with either the Opponent or the Applicant’s wares.
[18] With respect to the extent the trade-marks have been used, clearly, the application is based on proposed use and there is no evidence that the Mark has been used in association with the wares described in the application.
[19] The Opponent, however, provides evidence of use of HEINEKEN in Canada since at least as early as 1953. Ms. Timoney, Country Manager for Heineken Canada Inc, (wholly owned subsidiary of the Opponent), states in her affidavit that all of the beer containers prominently display one or more of the HEINEKEN trade-marks on their labeling, and that this has been the case since 1953. Since 1998, Molson Canada has imported and distributed all HENEKEN brand beer in Canada under license from Heineken and together with Heineken Canada has been responsible for the marketing and promotion of HEINEKEN brand beer in Canada.
[20] Ms. Timoney provides that HEINEKEN brand beer is available for sale in over 28,900 outlets across Canada through provincial liquor control bodies, grocery and variety stores, private liquor stores and restaurants and bars. More specifically, Ms. Timoney states that HEINEKEN brand beer is the number one selling European import beer in Canada; the annual volume of sales in Canada (in terms of 330ml bottle equivalents) increased from 49.9 million in 1999 to 153 million in 2008.
[21] With respect to promotion, Ms. Timoney provides that HEINEKEN brand beer has been heavily promoted in Canada. Since 1998 both Molson Canada and Heineken Canada have promoted the beer by sponsoring special events through promotional displays at retail outlets, restaurants and bars, print advertisements in magazines, on-line advertising through an active website www.heineken.ca, as well as television and radio advertisements.
[22] For example, all of the retailers selling HEINEKEN brand beer are provided with materials to be displayed to the public. Promotional materials relate to such things as limited time offer sales, promotional contests, and giveaways. Samples of promotional materials are attached as Exhibits N to T; all of this material displays one or more of the HEINEKEN trade-marks.
[23] With respect to restaurants and bars, HEINEKEN brand beer is also promoted through the display of a variety of on premise promotional material. In addition, HENEKEN has been a major sponsor of sports events, including UEFA Champions League soccer and the Rugby World Cup. Promotional programs run in Canada in conjunction with these events; bars are provided with promotional material, for example, Scratch & Win card, posters, tent cards, banners, polo shirts, jackets, serving trays, wrist band and beverage glasses, all of which prominently display one or more of the HEINEKEN trade-marks. Samples of on premise promotional material displayed from 2007 to 2009 clearly displaying one or more of the Opponent’s HEINEKEN trade-marks are attached as Exhibits U and V.
[24] The Timoney affidavit demonstrates that since 1998, national television advertisements have been a regular component of HEINEKEN brand beer marketing in Canada. Commercials are broadcast nationally on major network channels, specialty channels and on regional channels, including: The Food Network, The Comedy Network, The Score, TSN, Much Music, OLN, Showcase and Showcase Action, TLN, Tech TV and TVtropolis. Commercials are also broadcast in Ontario on all the major networks as well as specialty channels. One or more of the HEINEKEN trade-marks is prominently featured in all television advertising; audio-visual and printed samples are provided as Exhibits CC, DD and EE.
[25] HEINEKEN brand beer has also been advertised on the radio since at least 1998 in Kitchener, London, Ottawa, and Toronto (audio and script samples are attached as Exhibits FF and GG). HEINEKEN brand beer is also promoted on its own website at www.heineken.ca where one or more of the HEINEKEN trade-marks are displayed. HEINEKEN brand beer is also advertised on-line on third party websites such as mtv.ca, ctv.ca and tsn.ca, all of which prominently feature one or more of the HEINEKEN trade-marks (sample web pages are attached as Exhibits HH).
[26] In view of all of the foregoing, I am satisfied that the Opponent’s evidence establishes that HEINEKEN has not only acquired additional distinctiveness through use in Canada, but that the trade-mark has become well known in Canada. On the other hand the subject application is based on proposed use and there is no evidence that any use has commenced. This factor is therefore heavily in the Opponent’s favour.
Section 6(5)(b) - the length of time each has been in use
[27] The evidence demonstrates that the Opponent has been using its trade-marks in Canada since at least as early as 1953; there is no evidence that the Applicant has commenced use of its mark. This factor is also heavily in the Opponent’s favour.
Section 6(5)(c) and (d) - the nature of the wares, services or business, the nature of the trade
[28] The Applicant has applied for HEINEKEN for use in association with “non-alcoholic coffee-based beverages; non-alcoholic tea-based beverages; dairy products namely milk, and cream”. The Opponent’s registrations are in respect of “beer”.
[29] I am of the view that there is some overlap in the statement of wares, since both statements relate to beverages. On the issue of the nature of the wares and their channels of trade, I refer to a similar case involving the same applicant, Mr. Marcon, and his application for the trade-mark EVIAN [Societe Anonyme des Eaux Minerale sd’Evian, S.A. v. Marcon (2010) CarswellNat 2538] and to comments made by my colleague, Member Bradbury, in Moosehead Breweries Ltd. v. Stokely-Van Camp Inc. (2001), 20 C.P.R. (4th) 181, where she stated:
The applicant's lager beer and the opponent's non-alcoholic, non-carbonated fruit-flavoured drinks belong to the same general class of wares, namely beverages. The applicant argues that the parties' wares should be considered as two different general classes of wares, namely alcoholic beverages and non-alcoholic beverages. In any event, it must be remembered that s-s. 6(2) of the Act states that: "The 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 wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class " (emphasis added).
[30] Given the Opponent’s evidence, and my finding that its HEINEKEN trade-marks are well known in Canada, I am prepared to find that the reputation of HEINEKEN would transcend the market to extend to non-alcoholic beverages.
[31] Regarding the respective channels of trade, Ms. Timoney’s affidavit clarifies the channels of trade for each province, and it is clear that not all provinces in Canada restrict the sale of alcoholic beverages to liquor and/or beer stores (e.g. Quebec). Accordingly, I am of the view that there is overlap in the retail trade associated with non-alcoholic beverages and alcoholic beverages, in that they would, in some circumstances, both appear in grocery, convenience stores and the like. Further, there would be overlap in licensed restaurants and bars since it is reasonable to assume that both types of beverages would be available to customers in those venues.
[32] As stated by member David Martin, in a similar proceeding involving alcoholic and non-alcoholic beverages, in T.G. Bright & co. V Blake (1985), 4 C.P.R. (3d) 368 (T.M.O.B.):
There would appear to be a potential overlap between the channels of trade of the parties throughout Canada in that the ware of both parties could easily be sold through bars and restaurants. The possibility of confusion arising in such circumstances would seem to be greater since it is relatively easy to envision a customer ordering a glass of Spritzig and being given a glass of the applicant’s mineral water by mistake.
[33] I am of the view that this reasoning applies to the circumstances at hand, and accordingly, this factor favours the Opponent.
Additional Surrounding Circumstance – State of the Register
[34] As an additional surrounding circumstance, the affidavit of Robert Marcon provides a sampling of trade-marks that are similar or identical to each other but owned by different owners for different classes of wares and services; in a few cases the wares or services might arguably be said to overlap. Mr. Marcon argues that some of these co-existing trade-marks are well known in Canada, but no evidence has been advanced to support this.
[35] In my view this information regarding third party trade-marks is completely irrelevant to the situation at hand; one cannot infer the state of the marketplace or the general mindset of consumers from a few identical or similar registrations in the names of two different owners. Further, the possibility of co-existence agreements between some trade-mark owners cannot be excluded. Finally, in order to appreciate any analogy between trade-marks on the register (that are identical to each other) and the current situation, I would have to accept that at least one of the identical trade-marks was well known in Canada, which I cannot do without evidence. In sum, I am unable to make any analogous inferences from this evidence to the situation at hand.
[36] The s. 12(1)(d) ground of opposition accordingly succeeds.
Non-distinctiveness
[37] Regarding the ground of opposition based on lack of distinctiveness pursuant to section 2 of the Act, to be successful under this ground, the Opponent needs to have shown that as of the date of filing of the opposition (April 21, 2009) its trade-mark had become known sufficiently to negate the distinctiveness of the applied-for mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D.), Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 at 130 (F.C.A.); Bojangles International, LLC v Bojangles Café Ltd (2006), 48 C.P.R. (4th) 427)].
[38] As outlined above, the Opponent has met its burden well; I am of the view that the HEINEKEN trade-marks are so well known in Canada for beer it is possible to infer that they would transcend the alcoholic beverage market to (at the very least) beverages in general. As I have found that the Mark is confusing with the Opponent’s trade-mark and because the difference in relevant dates does not affect my analysis, the non-distinctiveness ground of opposition succeeds.
[39] As the Opponent has succeeded on more than one ground of Opposition, it is not necessary to consider the remaining evidence or make a determination on the remaining grounds of Opposition.
Disposition
[40] In view of all of the foregoing, pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application with respect to the all the wares pursuant to s. 38(8) of the Act.
______________________________
P. Heidi Sprung
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office