Molson Breweries v. Labatt Ltd. (2000), 252 N.R. 91 (FCA)
MLB headnote and full text
Temp. Cite: [2000] N.R. TBEd. FE.045
John Labatt Limited and Labatt Brewing Company Limited (appellants) v. Molson Breweries, A Partnership (respondent)
(A-428-98)
Indexed As: Molson Breweries, A Partnership v. Labatt (John) Ltd. et al.
Federal Court of Appeal
Isaac, Létourneau and Rothstein, JJ.A.
February 3, 2000.
Summary:
Molson Breweries applied to register the trademark “Export” in association with brewed alcoholic beverages. Molson claimed registrability under s. 12(2) of the Trade-marks Act, asserting that the mark had acquired distinctiveness at the application date. Labatt Brewing opposed the application, asserting that “Export” was clearly descriptive or deceptively misdescriptive (s. 12(1)(b)) and non-distinctive (s. 38(2)(d)). The Registrar of Trademarks accepted both of Labatt’s assertions and refused Molson’s application. Molson appealed.
The Federal Court of Canada, Trial Division, in a decision reported at 148 F.T.R. 281, allowed the appeal. Labatt appealed.
The Federal Court of Appeal, Isaac, J.A., dissenting, allowed the appeal.
Evidence – Topic 1553
Hearsay rule – Hearsay rule exceptions and exclusions – Statements against interest – What constitutes a statement against interest – [See
Evidence – Topic 2010
].
Evidence – Topic 2010
Special modes of proof – General – Testimony at previous trial – An applicant sought to register a trademark, asserting that it was distinctive under s. 12(2) of the Trade-marks Act – The respondent opposed the registration, claiming that the mark was not distinctive – The applicant sought to adduce evidence of the respondent’s position in another opposition proceeding that the mark was distinctive under s. 12(2) – The applicant asserted that such an admission against interest in another proceeding was admissible – The trial judge admitted and considered the respondent’s position as an admission against interest – On appeal, the Federal Court of Appeal held the respondent’s previous position should not have been treated as an admission against interest – The evidence was irrelevant to the present registration application – The respondent’s previous position did not discredit its current opposition – See paragraphs 60 to 62.
Evidence – Topic 2101
Special modes of proof – Judicial admissions – General – [See
Evidence – Topic 2010
].
Trademarks, Names and Designs – Topic 265
Trademarks – What trademarks registrable – Distinctive marks – General – The Federal Court of Appeal reviewed the standard of proof under s. 12(2) of the Trade-marks Act, which provided an exception to non-registrability of clearly descriptive terms – The court noted that the jurisprudence often referred to a “heavy onus” in a s. 12(2) application – However, it was salutary to confirm that the standard remained a proof on a balance of probabilities and that the term “heavy onus” appeared to be directed to the exceptional aspect of s. 12(2) – The applicant had to show that its trademark, although descriptive, had acquired a dominant secondary or distinctive meaning in relation to the applicant’s wares or services – There was no onus beyond the onus of addressing and satisfying the requirement of s. 12(2) – Section 12(2) did not require demonstrating the elimination of the descriptiveness of a mark – See paragraphs 30 to 32.
Trademarks, Names and Designs – Topic 265
Trademarks – What trademarks registrable – Distinctive marks – General – Section 12(2) of the Trade-marks Act provided an exception to non-registrability of clearly descriptive terms where the mark acquired distinctiveness – The Federal Court of Appeal held that the relevant date for determining distinctiveness under s. 12(2) was the date of application for registration – There was no two-stage approach in respect of s. 12(2) applications – An opposition alleging lack of distinctiveness under s. 38(2)(d) and the question of whether a mark acquired distinctiveness under s. 12(2) involved the same determination – Finally, s. 18(1)(b) dealt with invalidating a registration – A proceeding under s. 38(2)(d) was not a proceeding bringing the validity of a registered trademark into question under s. 18(1)(b) – See paragraphs 33 to 38.
Trademarks, Names and Designs – Topic 265
Trademarks – What trademarks registrable – Distinctive marks – General – Section 12(2) of the Trade-marks Act provided that a mark was registrable if it had been used in Canada so as to have become distinctive at the application date – The Registrar of Trademarks required evidence of distinctiveness throughout Canada – On appeal, the trial judge held that the trademark did not have to distinguish the wares of its owner throughout Canada, stating that: “a trademark is registrable as long as it distinguished those wares in a restricted area in which registration is sought” – The Federal Court of Appeal held that the trial judge’s approach was correct, but would limit the judge’s statement to applications under s. 12(2) and s. 13 of the Act – See paragraphs 39 to 45.
Trademarks, Names and Designs – Topic 265
Trademarks – What trademarks registrable – Distinctive marks – General – The Federal Court of Appeal opined that while exclusive use could be compelling evidence of distinctiveness, it was not required to establish distinctiveness under s. 12 of the Trade-marks Act – Distinctiveness would depend on all the circumstances – See paragraphs 46 to 48.
Trademarks, Names and Designs – Topic 265
Trademarks – What trademarks registrable – Distinctive marks – General – Molson Breweries applied to register the trademark “Export” for use in association with brewed alcoholic beverages – It asserted that the mark was distinctive under s. 12(2) of the Trade-marks Act – The evidence was that the word “Export” never appeared alone, but only in conjunction with the word “Molson” – The Federal Court of Appeal held that the evidence did not, on a balance of probabilities, show that the mark had acquired distinctiveness -The court held that, inter alia, the sale and advertising evidence did not prove that the term “Export” alone was distinctive of Molson’s product – See paragraphs 49 to 65.
Trademarks, Names and Designs – Topic 710
Trademarks – Registration – General – Evidence – [See
Evidence – Topic 2010
].
Trademarks, Names and Designs – Topic 988
Trademarks – Registration – Appeals – Scope of review of decision of registrar – The Federal Court of Appeal stated that decisions of the Registrar of Trademarks, whether of fact, law or discretion, within his area of expertise, were to be reviewed on a standard of reasonableness simpliciter – However, where additional evidence was adduced in the Trial Division that would have materially affected the Registrar’s findings of fact or exercise of discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar’s decision – See paragraph 29.
Cases Noticed:
Molson Breweries, A Partnership v. Swan Brewery Co. (1994), 58 C.P.R.(3d) 303 (T.M. Opp. Bd.), refd to. [para. 9, footnote 3].
Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. et al., [1971] F.C. 106; 1 C.P.R.(2d) 155 (T.D.), refd to. [para. 19, footnote 4].
Morris (Phillip) Inc. v. Imperial Tobacco Ltd. (1987), 8 F.T.R. 310; 13 C.P.R. 289 (T.D.), refd to. [para. 25, footnote 7].
Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp., [1969] S.C.R. 192, refd to. [para. 26, footnote 8].
McDonald’s Corp. v. Silcorp Ltd. (1989), 25 F.T.R. 151; 24 C.P.R.(3d) 207 (T.D.), affd. (1992), 139 N.R. 319; 41 C.P.R.(3d) 67 (F.C.A.), refd to. [para. 27, footnotes 9, 10].
Director of Investigation & Research, Competition Act v. Southam Inc. et al., [1997] 1 S.C.R. 748; 209 N.R. 20; 144 D.L.R.(4th) 1, refd to. [para. 28, footnote 11].
Carling Breweries Ltd. v. Molson Cos. (1984), 1 C.P.R.(3d) 191 (F.C.T.D.), affd. (1988), 93 N.R. 25; 19 C.P.R.(3d) 129 (F.C.A.), refd to. [para. 30, footnote 13].
Kellogg Co. of Canada v. Registrar of Trade Marks, [1939] 3 D.L.R. 65 (Exch. Ct.), refd to. [para. 32, footnote 15].
Crosfield (Joseph) & Sons Ltd., Re (1909), 26 R.P.C. 837 (C.A.), refd to. [para. 32, footnote 16].
Park Avenue Furniture Corp. v. Wickes/ Simmons Bedding Ltd. (1991), 130 N.R. 223; 37 C.P.R.(3d) 413 (F.C.A.), refd to. [para. 34, footnote 17].
Muffin Houses Inc. v. Muffin House Bakery Ltd. (1985), 4 C.P.R.(3d) 277 (T.M. Opp. Bd.), refd to. [para. 40, footnote 19].
Great Lakes Hotels Ltd. v. Noshery Ltd. (1968), 56 C.P.R. 165 (Ex. Ct.), refd to. [para. 42, footnote 20].
Robinson’s Camera Centre v. Black’s Photo Corp. (1993), 4 C.P.R.(3d) 439 (T.M. Opp. Bd.), refd to. [para. 43, footnote 21].
Morris v. Lisko (1982), 70 C.P.R.(2d) 254 (T.M. Opp. Bd.), refd to. [para. 44, footnote 22].
DeCaria Hair Studio Ltd. v. Massimo deBerardinis Trading as deBerardinis (1984), 2 C.P.R.(3d) 309 (T.M. Opp. Bd.), refd to. [para. 44, footnote 23].
Andres Wines Ltd. v. E. & J. Gallo Winery (1975), 11 N.R. 560; 25 C.P.R.(2d) 126 (F.C.A.), refd to. [para. 47, footnote 24].
Moore Dry Kiln Co. of Canada v. U.S. National Resources Inc. (1976), 12 N.R. 361; 30 C.P.R.(2d) 40 (F.C.A.), refd to. [para. 47, footnote 24].
S.C. Johnson and Son Ltd. and S.C. Johnson & Son Inc. v. Marketing International Ltd. (1979), 29 N.R. 515; 44 C.P.R.(2d) 16 (S.C.C.), refd to. [para. 47, footnote 24].
Mr. P’s Mastertune Ignition Services Ltd. v. Tune Masters (1984), 82 C.P.R.(2d) 128 (F.C.T.D.), refd to. [para. 47, footnote 24].
All Canada Vac Ltd. v. Lindsay Manufacturing Inc. (1990), 32 F.T.R. 259; 28 C.P.R.(3d) 395 (T.D.), refd to. [para. 47, footnote 24].
Battle Pharmaceuticals v. British Drug Houses Ltd., [1964] S.C.R. 50, refd to. [para. 58, footnote 26].
Statutes Noticed:
Trade-marks Act, R.S.C. 1985, c. T-13, sect. 12(1)(b), sect. 12(2) [para. 4]; sect. 18(1)(b) [para. 38]; sect. 19 [para. 41]; sect. 32(1), sect. 32(2) [para. 41]; sect. 38(2)(d) [para. 5]; sect. 56(1), sect. 56(5) [para. 23].
Authors and Works Noticed:
Black’s Law Dictionary (7th Ed. 1999) [para. 24, footnote 5].
Clarke, The Distinctiveness Required for the Validity of a Trade-mark (1970), 2 C.P.R.(2d) 239, pp. 245 to 247 [para. 47, footnote 24].
Fox, H.G., The Canadian Law of Trade-marks and Unfair Competition (3rd Ed. 1972), p. 36 [para. 48].
Counsel:
Nicholas Fyfe, Q.C., and Kohji Suzuki, for the appellant;
Elizabeth G. Elliott and John S. Macera, for the respondent.
Solicitors of Record:
Smart and Biggar, Ottawa, Ontario, for the appellant;
Macera & Jarzyna, Ottawa, Ontario, for the respondent.
This appeal was heard at Ottawa, Ontario, on October 28, 1999, before Isaac, Létourneau and Rothstein, JJ.A., of the Federal Court of Appeal.
On February 3, 1999, the judgment of the Federal Court of Appeal was delivered, including the following opinions:
Rothstein, J.A. (Létourneau, J.A., concurring) – see paragraphs 1 to 65;
Isaac, J.A., dissenting – see paragraphs 66 to 87.
