A recent decision of the Trade-marks Opposition Board dealt with the trade-mark "24 du 24" proposed to be used in association with alcoholic brewery beverages, signs, banners, posters and packaging for beverages, namely containers for bottles or cans of beer by Labatt Breweries of Canada ("Labatt"), which was opposed by Molson Canada 2005 ("Molson").
The Opposition
Labatt applied to register the trade-mark "24 du 24" in association with the above-noted wares based on proposed use. Molson opposed the application on the grounds, among others, that
- the trade-mark was not registrable in that it was clearly descriptive in that the wares were packaged in containers having 24 by 24 bottles or cans. If the wares were not so packaged then the trade-mark was deceptively misdescriptive;
- Labatt was not the person entitled to registration of the trade-mark since at the date of filing of the application, it was confusing with the trade-mark THE OFFICIAL BEER OF MAY 2-4 that was the subject of an application previously filed by Molson; and
- the trade-mark was not distinctive as it was not adapted to distinguish the wares in association with which it is proposed to be used by Labatt from the wares of others, including the wares of the Opponent. The Opponent, and other manufacturers of beer, advertise and sell beer in connection with descriptive terms which include the term "24" and sell beer in containers containing twenty-four bottles or cans.
Clearly Descriptive or Deceptively Misdescriptive
The hearing officer noted that the allegation that the mark was
clearly descriptive or deceptively misdescriptive was based on the
assertion that the wares are packaged in containers having 24 by 24
bottles or cans. This allegation only made sense with respect to
Labatt's alcoholic brewery beverages and was not applicable to
the other wares. In addition the reference to "containers
having 24 by 24 bottles or cans" meant containers having 576
bottles/cans (i.e. 24 × 24).
The issue of whether a trade-mark is clearly descriptive or
deceptively misdescriptive must be considered from the point of
view of the average purchaser of the applied for wares. In
addition, the trade-mark must not be dissected into its component
elements and carefully analyzed, but must be considered in its
entirety as a matter of first impression.
The hearing officer concluded on the evidence presented that it was
not apparent what the immediate impression of the trade-mark would
have been on the average Canadian beer consumer, nor was it
apparent that the trade-mark would cause consumers to be deceived
in any way. As a result, this ground of opposition was
dismissed.
Entitlement
Molson also argued the applicant was not the person entitled to
registration since the trade-mark was confusing with its previously
filed application for the trade-mark, THE OFFICIAL BEER OF MAY
2-4.
The test for confusion is one of first impression and imperfect
recollection. The Trade-marks Act (the "Act")
provides 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 associated with
those trade-marks are manufactured or sold by the same
person.
In applying this test, consideration must be given to all of the
surrounding circumstances and to a specific list of factors set out
in the Act. The hearing officer referred to the recent decision of
the Supreme Court of Canada1 which indicated that the
degree of resemblance is the statutory factor often likely to have
the greatest effect on a confusion analysis. If the trade-marks 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 trade-marks are
found to be identical or very similar. As a result, a consideration
of resemblance is where most confusion analyses should start.
Applying this test, it was found that any resemblance between the
trade-marks was minimal at best. The common features were the
numerals 2 and 4 and the numbers are not inherently distinctive but
are weak trade-mark formatives. There was no evidence that either
party's mark has been used or promoted and the fact that the
parties both sell beer, which presumably would travel in similar
channels of trade, is not a significant factor when the marks are
so different.
As a result it was found that confusion was not likely and this
ground of opposition was dismissed.
Distinctiveness
Molson argued that the fact that beer was sold in cases of 24 bottles/cans in Canada rendered the trade-mark non-distinctive. However, the hearing officer refused to accept this argument. The mark may not be an inherently strong mark but that does not mean that "24 du 24" could not distinguish the Labatt's wares from other beers that are being sold in a case of 24.
Comment
"24 du 24" does not seem to the writer to be a particularly good choice for a trade-mark as it is weak and not meaningful (primarily composed of a number that is common to the brewing trade). Presumably Molson was attempting to prevent a competitor from obtaining trade-mark rights in the mark.
Footnotes
1 Masterpiece Inc. v. Alavida Lifestyles Inc., 2009 FCA 290, 78 C.P.R. (4th) 243 (F.C.A.) reversed 92 C.P.R. (4th) 361 (S.C.C.)
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