Citation: 2017 TMOB 113

Date of Decision: 2017-08-28

IN THE MATTER OF AN OPPOSITION

	Drummond Brewing Company Ltd.	Opponent
and
	Moosehead Breweries Limited	Applicant
	1,675,560 for GIMMIE THAT NUTT	Application

introduction

[1]  The Applicant is a brewery located in the Province of Alberta. On May 5, 2014, it filed an application to register the trade-mark shown below (the Mark), for use in association with “beer”.

[2]  The application is based upon use of the Mark in Canada since May 2, 2014.

[3]  The Opponent is a brewery located in the Province of New Brunswick. The Opponent is the owner of the trade-marks Barking Squirrel Lager and squirrel design (registration No.TMA788,839), shown below, and BARKING SQUIRREL LAGER (registration No. TMA789,440). Both of its marks are registered for use in association with “brewed alcoholic beverages; glass/cup ware, namely beer mugs, hi-ball glasses, plastic beer cups; clothing namely t-shirts, hats; tap handles”. Both registrations claim an October 5, 2009 date of first use.

[4]  The Opponent alleges that there is a likelihood of confusion between its trade-marks and the Mark. It has therefore opposed the application for the Mark under section 38 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act). In addition to raising a number of substantive confusion-based grounds, the Opponent has also objected to the application on the basis that the Mark has not been used in Canada since the claimed date of first use in the application.

[5]  For reasons that follow, the opposition is successful.

file history

[6]  The application for the Mark was filed on May 5, 2014.

[7]  It was advertised for opposition purposes in the Trade-marks Journal dated February 11, 2015.

[8]  On March 31, 2015, the Opponent opposed it, by way of filing a statement of opposition. The grounds of opposition are based upon sections 30(b), 30(i), 12(1)(d), 16(1)(a), 16(1)(b) and 2 (distinctiveness) of the Act.

[9]  The Applicant filed a counter statement on June 9, 2015, denying the allegations set out in the statement of opposition.

[10]  As evidence in support of its opposition, the Opponent filed the affidavit of Trevor Grant, sworn October 7, 2015 and the affidavit of Caroline Mercier-Girard, sworn September 24, 2015. Neither affiant was cross-examined.

[11]  As evidence in support of its application, the Applicant filed the affidavit of Kevin Wood, sworn February 8, 2016, the affidavit of Joanne Grison, sworn February 4, 2016 and the affidavit of Kimberley Cunningham, sworn February 8, 2016. None of the affiants was cross-examined.

[12]  Both parties filed a written argument.

[13]  A hearing was held on June 14, 2017. Both parties attended.

onus

[14]  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].

material dates

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

·  sections 38(2)(a)/30(b)/30(i) - the filing date of the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB) at 475];

·  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(1)(a)/16(1)(b) – the claimed date of first use [section 16(1) 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)].

analysis of grounds of opposition

Preliminary Matter

[16]  At the hearing, the Opponent withdrew the grounds of opposition based upon sections 30(i) and 16(1)(b) of the Act. I will therefore not be addressing either of those grounds in my decision.

Section 30(b)

[17]  The Opponent has pleaded that the application does not comply with section 30(b) of the Act, in that the Mark has not been used in Canada in association with the Applicant’s goods since the May 2, 2014 claimed date of first use in the application.

[18]  The evidential burden on an opponent respecting the issue of an applicant's non-compliance with this section of the Act is a light one and can be met by reference not only to its evidence, but also to an applicant's evidence [Labatt Brewing Co Ltd v Molson Breweries, A Partnership (1996), 68 CPR (3d) 216 (FCTD) at 230; Corporativo de Marcas GJB, SA de CV v Bacardi & Company Ltd, 2014 FC 323 (CanLII) at paras 33-38]. To meet its burden, an opponent must show that an applicant’s evidence is clearly inconsistent with the claimed date of first use [Ivy Lea Shirt Co v Muskoka Fine Watercraft & Supply Co (1999), 2 CPR (4th) 562 (TMOB), at 565 -6, aff'd (2001), 2001 FCT 252 (CanLII), 11 CPR (4th) 489 (FCTD); Corporativo de Marcas, supra; Reitmans (Canada) Limited v Atlantic Engraving Ltd, 2005 CanLII 78234 (CA TMOB), 2005 CanLII 78234 (TMOB)]. If an opponent meets its evidential burden, an applicant must prove that it has used its mark as of the date claimed. 

[19]  In my view, the evidence filed by the Applicant is sufficient to put the section 30(b) ground of opposition into issue in this case.

[20]  Section 4 of the Act sets out what constitutes “use” of a trade-mark. It reads as follows:

4. (1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.

[21]  The Wood affidavit speaks to the issue of the Applicant’s promotion and use of the Mark. In paragraph 6 of his affidavit, Mr. Wood states:

Drummond first sold the GIMMIE THAT NUTT brown ale at the Calgary International Beer Festival (“CIBF”). The CIBF took place from May 2-3, 2014. Attached as Exhibit “C” is a page from www.albertabeerfestivals.com promoting the CIBF. Attached as Exhibit “D” is a picture of a booth set up at the festival. Due to the nature of the event there are no invoices showing the sale of the GIMMIE THAT NUTT beer to the event holders or consumers directly. Each of the vendors donates the beer and tickets are sold by the event holder to customers attending the event to taste the beer.

[22]  As pointed out by the Opponent, in paragraph 6 of his affidavit, Mr. Wood does not state that the Applicant’s beer was sold at the CIBF in association with the Mark. He simply states that the Applicant’s “GIMMIE THAT NUTT brown ale” was first sold at CIBF. As the Opponent has also noted, the Mark does not appear in Exhibit “C” at all and Exhibit “D” shows only what might be the lower portion of the Mark (i.e. the words “BROWN ALE” and the lower half of what appears to be a squirrel). Mr. Wood has not confirmed that the partial matter shown in Exhibit “D” is actually the Mark, nor has he explained why the Mark has not been shown in its entirety. He does not indicate whether the booth featured in Exhibit “D” is where patrons of the event would have gone to sample the Applicant’s beer, nor has he explained how the Mark was associated with the Applicant’s goods at the time of transfer.

[23]  At the hearing, the Applicant pointed out that although the Mark cannot be seen in its entirety in Exhibit “D”, it can be seen in Exhibit “F”. Exhibit “F” is identified as being a print-out from the website located at www.untapped.com, a social media website where members can post pictures and comments relating to the beer they are drinking and where they are drinking it. However, it is not clear whether the Mark as shown in the postings in Exhibit “F” is representative of how it would have appeared at the CIBF and this evidence is still not sufficient to enable me to conclude that the Mark was somehow associated with the goods at the time of transfer, as Mr. Wood has not provided any details in this regard. As pointed out by the Opponent at the hearing, there is also a hearsay issue with this evidence.

[24]  When read in conjunction with paragraph 6, paragraph 10 of Mr. Wood’s affidavit raises further uncertainty about the claimed date of first use in the application for the Mark. In paragraph 10, Mr. Wood states that the Applicant is “currently” distributing its GIMMIE THAT NUTT & DESIGN to liquor stores, wine stores and restaurants. Attached as Exhibit “H” is a copy of a sell sheet that is distributed to both customers and potential customers. The Mark is prominently displayed on beer cans and beer cartons in Exhibit “H”. While Mr. Wood makes reference to sales of “GIMMIE THAT NUTT brown ale” at the CIBF on May 2-3, 2014 in paragraph 6 of his affidavit, in paragraph 10, where he discusses current distribution of the Applicant’s beer, he references GIMMIE THAT NUTT & DESIGN. This causes one to query whether the Mark per se (i.e. the design) was used at the CIBF or whether it might have been a word or other version of the Mark on display.

[25]  Further uncertainty in this regard arises out of paragraph 14 of Mr. Wood’s affidavit. In paragraph 14, Mr. Wood states that prior to September 9, 2014, the Applicant’s GIMMIE THAT NUTT brown ale was sold on tap from its tap house “until the packaging shown in Exhibit “H” was available”. This also causes one to query how the Mark would have been associated with the Applicant’s goods prior to that date and, in particular, at the time of transfer of the goods at the CIBF.

[26]  In my view, these aspects of Mr. Wood’s affidavit, in conjunction with his failure to provide a complete image as part of Exhibit “D” or any further supporting details pertaining to how the Mark was associated with the Applicant’s goods at the time of transfer at CIBF, call into question the Applicant’s claimed date of first use. This is the sort of evidence one might reasonably expect the Applicant to be in a position to provide and it has not done so.

[27]  The evidence also creates some uncertainty as to whether the transfer of the Applicant’s goods at the CIBF was a transfer within the “normal course of trade”, as required under section 4(1) of the Act. In this case, while Mr. Wood states that the Applicant first “sold” its beer at the CIBF on May 2-3, 2014, he later also states that there are no invoices showing such sales to the event holder or consumers directly, as the vendors at the CIBF “donate” the beer and tickets are sold by the event holder to customers attending the event to taste the beer.

[28]  The Federal Court has held that, generally, the free delivery of samples does not constitute transfers in the normal course of trade [JC Penney Co v Gaberdine Clothing Co, 2001 FCT 1333 (CanLII), 16 CPR (4th) 151], except in particular circumstances.  For example, in ConAgra Foods, Inc v Fetherstonhaugh & Co, 2002 FCT 1257 (CanLII), 23 CPR (4th) 49 (FCTD), the Court accepted the free distribution of samples as a regular step in the normal course of trade in the industry where the owner of the trade-mark was seeking to develop a market.  This was supported by the fact that actual sales closely followed the relevant period in that case. In the present case, Mr. Wood has not provided any detailed information with respect to the normal course of trade for the Applicant’s goods. Moreover, the earliest invoices he has provided are dated September 9, 2014, as that is when the packaging for the Applicant’s beer became available. While Mr. Wood states that the Applicant’s beer was sold on tap at its tap house prior to the packaging becoming available, there is no indication in the evidence that it was sold in association with the Mark per se, nor is there any evidence to establish that it was sold on tap as early as the claimed date of first use.

[29]  Overall, I find that the evidence in this case is sufficient to put into issue the applicant’s claimed date of first use. In view of this, the burden shifts to the Applicant to show that the Mark has been used in Canada in association with the goods in the application from the date claimed, up to the filing date of the application [Labatt Brewing Co supra at 262]. It has not done so.

[30]  Accordingly, the section 30(b) ground of opposition is successful.

Section 12(1)(d)

[31]  With respect to a section 12(1)(d) ground of opposition, an opponent’s initial evidential burden is met if a registration relied upon in the statement of opposition is in good standing as of the date of the decision. The Registrar has discretion to check the register in order to confirm the existence of a registration relied upon by an opponent [Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)]. In this case, I have exercised that discretion and confirm that the Opponent’s registration Nos. TMA788,839 (BARKING SQUIRREL & SQUIRREL Design) and TMA789,440 (BARKING SQUIRREL LAGER)  are extant and in good standing. The Opponent has therefore met its initial evidential burden in respect of this ground. Accordingly, I must determine whether the Applicant has met the legal onus upon it to establish that there is no likelihood of confusion between the parties’ trade-marks.

[32]  My analysis will focus on the Opponent’s trade-mark registration for BARKING SQUIRREL & SQUIRREL Design, as I consider this registration to represent the Opponent’s best chance of success, in light of the design component.

Test for Confusion

[33]  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.

[34]  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, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC)].

[35]  In Masterpiece (supra), at para 49,  the Supreme Court of Canada had the following to say about conducting a confusion analysis under section 6(5) of the Act:

[…]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 more confusion analyses should start.

[36]  Bearing this in mind, I have elected to begin my confusion analysis in this case by assessing the degree of resemblance between the parties’ marks.

Consideration of Section 6(5) Factors

Degree of Resemblance

[37]  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 Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 23 (CanLII), CarswellNat 1402 at para 20].

[38]  In Masterpiece (supra), at para 64, the Supreme Court further advises that the preferable approach when comparing marks is to begin by determining whether there is an aspect of the trade-marks that is particularly striking or unique.

[39]  In the present case, I find that the most striking and unique part of both parties’ marks is undoubtedly the squirrel design. It is what stands out the most and its presence in both parties’ marks results in visual similarity between the marks, as well as similarity in terms of the suggested idea. That said, I note that the squirrel design in each of the parties’ marks does differ somewhat. The Opponent’s squirrel comes across as having a slightly angry disposition (it was characterized in the evidence as being a “slightly pissed off squirrel” – Grant affidavit, para 29; Exhibit “V”), whereas the squirrel in the Mark appears to be a rather cheerful fellow.

[40]  Notably, the presence of a squirrel is primarily all that the parties’ marks have in common. Both marks also contain a fair bit of reading matter and it differs entirely. Consequently, the marks bear no phonetic similarity to one another. The differences in the word components of the marks also results in visual differences between the marks and differences in connotation.  While it’s true that both marks give the impression of a squirrel, the Opponent’s trade-mark also includes a design component in a prominent first part of the mark featuring the name of its micro-brewery. This acts as a source identifier. Moreover, while the Opponent’s trade-mark features the words BARKING SQUIRREL LAGER, which reinforces the idea of a squirrel, and more particularly, an angry squirrel, the words GIMMIE THAT NUTT do not.

[41]  Despite the presence of a squirrel in both parties’ marks, when the marks are considered in their totality and when appearance, sound and suggested idea are all taken into account, overall, I find them to be more different than alike.

Inherent Distinctiveness and Extent to which the Trade-marks have Become Known

[42]  Both of the parties’ marks consist of a unique squirrel design, along with both descriptive and non-descriptive reading matter. I consider both of them to possess a fairly high degree of inherent distinctiveness.

[43]  With respect to the extent to which the parties’ marks have become known, the evidence establishes that the Opponent’s trade-mark is more well known that the Mark.

[44]  According to Mr. Wood, since the trade-mark GIMMIE THAT NUTT & DESIGN has been in the marketplace, the Applicant has generated approximately $60,480 in revenue and sold over 1200 cases of beer [Wood affidavit, para 15]. It is unclear from the evidence precisely when use of the Mark would have commenced in the marketplace, but I am able to infer that at the very least, it was in use by September 9, 2014. Thus, these figures presumably cover sales from that date on, but possibly from a slightly earlier date.

[45]  No advertising and promotional expenditures have been provided. The evidence suggests that since 2014, the Mark has developed a minimal presence on-line on various blogs, beer rating sites and third party sellers’ websites [Wood affidavit, paras 8, 11 and 18; Exhibits “F”, “J” and “P”]. In addition, the Applicant’s beer in association with the Mark, has been featured in City Palate magazine (January/February 2016) [Wood affidavit, para 13, Exhibit “L”]. No circulation figures have been provided. While the Applicant’s beer did win a favorite beer award at the CIBF, it is not clear that the Mark per se was associated with the beer at that time [Wood affidavit, Exhibit “E”].

[46]  The Applicant’s beer is sold through liquor stores, wine stores and restaurants [Wood affidavit, para 10]. Attached as Exhibit “I” is a list of the stores that currently sell the Applicant’s beer. It is sold in over 100 stores, all of which are located in the Province of Alberta.

[47]  Information pertaining to the Opponent’s trade-mark can be found in the Grant affidavit. I have highlighted some of the more pertinent contents of his affidavit below:

·  the Opponent was incorporated in 1928. It has brewed, bottled and packaged beer in Canada under a variety of trade-marks since that time. In September 2009, the Opponent opened a micro-brewery doing business under the registered business name Hop City Brewing Co. [paras 2-3; Exhibit “A”];

·  the Opponent’s trade-mark (or a variation thereof) appears on labels and packaging for beer, novelty items and bar accessories which have been sold by the Opponent and distributed to lounges, restaurants and pubs since October 5, 2009. Its beer is also available in grocery stores and retail liquor outlets throughout Canada [paras 5, 7 and 11-15; Exhibits “C”, “G”, “H1”-“H3”, “I”, “J” and “K”];

·  the Opponent’s trade-mark (or a variation thereof) has also appeared on various point of sale/promotional items since October 2009, including signs for restroom doors, bar signage, tent cards, t-shirts, tap handles, glassware, coasters, etc. [paras 8, 16; Exhibits “D1”-“D3” and “L”];

·   for the years of 2009-2015 (up until the swearing of Mr. Grant’s affidavit), the approximate retail sales value in Canada of the Opponent’s beer and consumer goods (e.g. clothing and novelty items) in association with its trade-mark have ranged between $75,225 and $2, 810, 583 [para 31];

·  for the years of 2009-2015, annual promotional and advertising expenditures have ranged between $152,073 and $1,600,000 [para 30];

·  the Opponent’s beer is available for sale in a number of retail liquor outlets in Canada and has been featured in association with its trade-mark on their websites. Some of the outlets in which it is sold include: Liquor Control Board of Ontario (LCBO) - available in 455 outlets in Ontario); Nova Scotia Liquor Commission (NSLC) – available in 97 outlets in Nova Scotia; New Brunswick Liquor Commission (NB Liquor) – available in 132 New Brunswick outlets; The Beer Store – available in 322 outlets in Ontario. It is also available in 132 retail liquor outlets in Alberta and 47 retail liquor outlets in British Columbia [paras 17-20; Exhibits “M-1” to “N”];

·  the Opponent’s beer has been featured in association with its trade-mark (or a variation thereof) on a number of third party beer rating websites [paras 22-24; Exhibits “O”-“Q”];

·  articles have been written about the Opponent’s beer on various websites, including the Globe and Mail newspaper website [paras 25-29; exhibits “R”-“V”]; and

·  the Opponent’s BARKING SQUIRREL LAGER is available for sale through over 500 licensees in Canada [para 33; Exhibit “W”]. The Opponent and its licensees promote the BARKING SQUIRREL LAGER brand through the internet, participation in beer festivals and sponsorship of events [paras 33-37; Exhibits ‘X1”, “X2”, “Y”, “Z” and “AA”].

[48]  The foregoing leads me to conclude that the Opponent’s trade-mark has become considerably more well-known than the Mark. In view of this, I find that this factor, which involves an assessment of a combination of the inherent and acquired distinctiveness of the parties’ marks, favours the Opponent.

Length of Time the Marks have been in Use

[49]  While it is not clear whether the Mark was in use as of the claimed date of first use, the Applicant has provided invoices dated September 9, 2014 and onwards, as well as sample sell sheets and pictures showing use of the Mark on beer cans and beer cartons [Wood affidavit, paras 9-10; Exhibits “G” and “H”]. Thus, I am able to infer that the Mark has been in use since at least that date.

[50]  Since the Opponent began using its trade-mark in 2009, this factor also favours the Opponent.

Nature of the Parties’ Goods, Services or Business and Trades

[51]  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 these factors [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); and Miss Universe Inc v Bohna (1994), 58 CPR (3d) 381 (FCA)].

[52]  There is direct overlap between the parties’ goods. The Opponent’s registration covers, inter alia, “brewed alcoholic beverages” and the application for the Mark covers “beer”.

[53]  There is also overlap in the parties’ respective channels of trade. According to Mr. Grant, the Opponent’s beer is sold through lounges, restaurants, pubs, grocery stores and retail liquor outlets [Grant affidavit, para 5]. According to Mr. Wood, the Applicant’s beer is sold through liquor stores, wine stores and restaurants, which are located in the Province of Alberta [Wood affidavit, para 10]. The Applicant has filed evidence to establish that the Opponent’s beer is sold at a number of the same locations and in fairly close proximity to the Applicant’s beer [Wood affidavit, para 19; Exhibit “Q”].

[54]  I therefore find that these factors also favour the Opponent.

Surrounding Circumstances

State of the Register

[55]  State of the Register evidence is sometimes introduced by a party to show the commonality or distinctiveness of a mark or portion of a mark in relation to the register as a whole. It has been held that 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 C.P.R. (3d) 432 (TMOB); Welch Foods Inc. v Del Monte Corp (1992), 44 C.P.R. (3d) 205 (FCTD); and Kellogg Salada Canada Inc v Maximum Nutrition Ltd (1992), 43 CPR (3d) 349 (FCA)].

[56]  Where there is a large number of trade-marks consisting of or incorporating the same term or feature on the Register, the inference drawn is that at least some are likely in use in the marketplace. It then follows that consumers would likely already be accustomed to seeing and distinguishing between them, such that small differences would suffice to enable them to do so. For this reason, such marks are sometimes said to be entitled to a narrower scope of protection.

[57]  In this case, the Opponent introduced state of the register evidence by way of the affidavit of Caroline Mercier-Girard. Ms. Mercier-Girard conducted what she refers to as a trademark design dilution (how common) search for active and inactive design marks containing a squirrel in relation to beer or brewed alcoholic beverages. Attached as Exhibit CMC-1 to her affidavit, are some of her search results. Ms. Mercier-Girard’s search reveals that there are no other active registered trade-marks consisting of a squirrel design for use in association with beer. However, as pointed out by the Applicant, Ms. Mercier-Girard did locate a number of marks containing a squirrel design which are registered for use in association with nuts or other food products.

[58]  The Applicant has also introduced state of the register evidence by way of the affidavit of Kimberley Cunningham. Ms. Cunningham performed a search of the Canadian trade-mark register for “various similar or related design trademarks applied for or registered in connection with beer and beer type beverages”. Attached as Exhibits “A1”-“A5” are trade-marks which are approved or registered for beer and beer type beverages which include or are comprised of design elements including lions, heraldic lions (“A-1”); horses, mules, men mounted on or accompanied by a horse, a mule or a donkey (“A-2”); dogs, wolves, foxes, boxers, bulldogs (“A-3”); mountains and mountain landscapes (“A-4”); and one crown (“A-50”).

[59]  Overall, the state of the register evidence shows that other than the parties’ marks, no other marks featuring a squirrel design have been registered for use in association with beer. It also shows that marks featuring the same type of design (animal or otherwise, but excluding squirrels) co-exist on the Register in the names of different parties and that marks featuring a squirrel design co-exist on the Register for nut or food related products in the names of different parties. The Applicant argues that if squirrel marks can co-exist for nuts or food, they should also be able to co-exist for beer. Likewise, it argues that if other types of design marks (e.g. horses) can co-exist on the Register for beer, then the parties’ squirrel marks should be able to as well.

[60]  The fact that squirrel marks may co-exist on the Register for nuts or food products does not lead to an automatic conclusion that they may also co-exist with beer. In any event, the Applicant has not located a large enough number of relevant active registrations on the Register standing in the name of different parties (for squirrels or otherwise) to enable me draw any inferences regarding the state of the marketplace [Mcdowell v The Body Shop International PLC, 2017 FC 581 (CanLII)]. Accordingly, I do not consider the state of the register evidence to be particularly useful to the Applicant in the present case. If anything, it helps the Opponent, as it shows that up until the Applicant came along, only the Opponent had secured a registration for a squirrel design mark in connection with beer.

Examination

[61]  As part of its evidence, the Applicant has included the file history for its application [Grison Affidavit, Exhibit A]. The file history shows that the Opponent’s trade-mark was not cited by the Examiner during examination of the application. The Applicant submits that this supports its contention that there is no likelihood of confusion between the parties’ trade-marks.

[62]  It has often been said that this Board is not in a position to explain findings by the examination section of the Trade-marks Office. The examination section does not have before it evidence that is filed by parties in an opposition proceeding and the burden is different in examination [Thomas J Lipton Inc v Boyd Coffee co (1991), 40 CPR (3d) 272 at 277 and Proctor & Gamble Inc v Morlee Corp (1993), 48 CPR (3d) 377 at 386].  I therefore do not consider this to be a surrounding circumstance which assists the Applicant.

Conclusion Regarding Likelihood of Confusion

[63]  Section 6(2) of the Act does not concern confusion of the marks themselves, but confusion of goods and services from one source as being from another source. 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 in association with the goods and/or services at a time when he or she has no more than an imperfect recollection of the Opponent’s trade-mark and does not pause to give the matter any detailed consideration or scrutiny [Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée 2006 SCC 23 (CanLII) at para 20].

[64]  In San Miguel Brewing International Limited v Molson Canada 2005, 2013 FC 156, reversing 2012 TMOB 65, the Court assessed the likelihood of confusion between the trade-mark RED HORSE & Design and the trade-mark BLACK HORSE, both of which were associated with “ale”. In doing so, the Court took into account that the relevant consumer (i.e. the beer consumer) is sensitive to the names of beers and to what they know and like, and that the confusion test is premised on that consumer – not on what might be a legal fiction of the non-beer drinking life partner who is asked to pick up beer [para 33]. The Court in San Miguel referred to the earlier decision in Carling O’Keefe Breweries of Canada Ltd v Anheuser-Busch (1982) 68 CPR (2d) 1 at 20-21 (FCTD), in which the Honourable Mr. Justice Walsh observed that regular beer drinkers will have considerable loyalty to their favourite brand. In San Miguel,  the Court concluded that one look at the parties’ labels was sufficient to dispel any notion of confusion between RED HORSE (with just a horse’s head) and BLACK HORSE (with a horse in profile) [para 34].

[65]  As noted by the Federal Court of Appeal in Dion Neckwear, supra, at page 163, the Registrar need not be satisfied beyond doubt that confusion is unlikely. Should the ‘beyond doubt’ standard be applied, applicants would, in most cases, face an insurmountable burden because certainty in matters of likelihood of confusion is a rare commodity.

[66]  In the present case, I am satisfied on a balance of probabilities, that a consumer having an imperfect recollection of the Opponent’s trade-mark would be unlikely to conclude that the Applicant’s goods originate from the same source or are otherwise related to or associated with the Opponent’s goods.

[67]  With the exception of section 6(5)(e), all of the factors set out under section 6(5), including the relevant surrounding circumstances, favour the Opponent in this case. However, as noted by the Court in Masterpiece, it is the section 6(5)(e) factor that is often likely to have the greatest effect on the confusion analysis. In the present case, I have found that the parties’ trade-marks are more different overall than they are alike. In view of this, and bearing in mind the aforementioned principles referenced above in San Miguel and Carling O’Keefe, I am satisfied that the Applicant has met the legal onus on it to show, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark.

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

Sections 16(1)(a) and 2(distinctiveness)

• [69] In the circumstances of this case, the date at which the issue of confusion is assessed does not change the result of my analysis. To the extent that the Opponent has met its initial burden in respect of these grounds, they both fail for reasons similar to those set out above with respect to the section 12(1)(d) ground of opposition.

Disposition

[70]  In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

 

Lisa Reynolds

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2017-06-14

APPEARANCES

Jennifer McKay	FOR THE OPPONENT
Lorraine Pinsent	FOR THE APPLICANT

AGENTS OF RECORD

McDermid Turnbull & Associates	FOR THE OPPONENT
MLT Aikins LLP	FOR THE APPLICANT