Date: 20180619
Docket: T-1129-17
Citation: 2018 FC 630
Ottawa, Ontario, June 19, 2018
PRESENT: The Honourable Mr. Justice O'Reilly
BETWEEN:
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STEELBIRD GHETTO PROPERTIES LLC
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Applicant
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and
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BEAU’S ALL NATURAL
BREWING COMPANY LTD.
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Respondent
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JUDGMENT AND REASONS
I.
Overview
[1]
Steelbird Ghetto Properties LLC seeks an Order striking the trademark B-SIDE BREWING LABEL which is registered to Beau’s All Natural Brewing Company Ltd (Canadian Trademark Registration No. TMA950, 300). Steelbird claims that Beau’s was not entitled to register the B-Side mark because Steelbird had been using it earlier in association with wine, the mark is confusing when compared to Steelbird’s mark, and Beau’s had provided an incorrect date of its first use of the mark.
[2]
In support of its application, Steelbird has filed documentary evidence and written submissions, and made oral representations. Beau’s has not responded. Based on the materials before me, I find that Steelbird’s application should be allowed because Beau’s registered mark is confusingly similar to a mark previously used by Steelbird. Beau’s registered mark should therefore be expunged. Steelbird raised three issues:
Did Steelbird use the B-Side mark first?
Was Beau’s B-Side mark confusing when compared to Steelbird’s mark?
Did Beau’s provide an incorrect date of first use in its trademark application?
[3]
Steelhead concedes that the third issue raises a novel question relating to the interpretation of s 30 of the Trade-marks Act, RSC 1985, c T-13 (see Annex for provisions cited). Given that I do not have the benefit of opposing submissions, I decline to address the third issue and will deal only with Issues 1 and 2.
II.
Background
[4]
In 2015, Beau’s applied for the B-Side trademark for use in association with a branding exercise for Ontario craft beers. Beau’s claimed use of the mark since July 2013.
[5]
Steelbird did not oppose the registration but wrote to Beau’s in July 2016 questioning Beau’s claimed use of the mark and providing a copy of its own trademark application for B-Side. Beau’s responded by pointing out that it had used the mark in association with its Kissmeyer Nordic Pale Ale. Steelbird replied that Beau’s listings with the Liquor Control Board of Ontario did not support Beau’s claim. Rather, the LCBO web page showed a release date of November 2014 for the Kissmeyer product whose label did not, in any case, show the B-Side mark. Steelbird asked Beau’s to withdraw its application, but it did not do so. Beau’s obtained its registration in September 2016.
A.
Issue One - Did Steelbird use the B-Side mark first?
[6]
Steelbird has provided evidence in the form of invoices, sales records, and photographs of wine bottles bearing the B-Side mark. The evidence shows that Steelbird, through its licensee Don Sebastiani & Sons International Wine Negociants (DSS), has used B-Side as a trademark in Canada in association with wine since 2011, at least two years prior to any use by Beau’s. DSS sold B-Side Cabernet in British Columbia from 2011 to 2014, in Ontario in 2013 and 2015, and in Quebec in 2013.
[7]
Beau’s was not entitled to register a trademark that was confusing when compared to a mark that had been previously used by someone else (s 16(1)(a)). Given that Steelbird was previously using the B-Side mark, the next question is whether the marks were confusingly similar.
B.
Issue Two - Was Beau’s B-Side mark confusing when compared to Steelbird’s mark?
[8]
A mark is considered confusing if a “casual consumer somewhat in a hurry”
would mistakenly conclude that the parties’ products had the same source (Mattel USA Inc v 3894207 Canada Inc, 2006 SCC 22 at para 51-56). A number of the prescribed factors lead me to conclude that a rushed consumer would likely infer that Steelbird’s wine and Beau’s beer were sold by the same company (s 6(5)).
[9]
First, the B-Side mark is inherently distinctive as applied to alcoholic beverages. It does not allude either to the product or its characteristics. It is a term used in relation to vinyl records, not drinks.
[10]
Second, the B-Side mark has been used by Steelbird for several years, longer than any use by Beau’s. It may have acquired some association with Steelbird’s products in consumers’ minds.
[11]
Third, both products are alcoholic beverages and, therefore fall within the same class of goods (Mark Anthony Properties Ltd c Nichol, [2008] TMOB No 141 at para 24; Leroy SA v Alberta Distillers Ltd, [1994] TMOB No 25 at para 17).
[12]
Fourth, the parties’ goods would likely be sold in the same stores and restaurants in various provinces. For example, in 2015 and 2016, the LCBO sold both products. In addition, both products would be considered to be in the premium category given their prices; Steelbird’s wine is sold for $34 or $35, and Beau’s Kissmeyer beer is priced at $6.45 per bottle.
[13]
Fifth, there is obviously a strong resemblance between Steelbird’s B-Side mark and Beau’s registered mark. They are essentially identical.
[14]
Therefore, I find that Beau’s registered a mark that was confusing when compared to Steelbird’s pre-existing mark.
III.
Conclusion and Disposition
[15]
The evidence shows that Beau’s registered mark was previously used by Steelbird, and that the registered mark is confusingly similar to Steelbird’s mark. Therefore, I must allow Steelbird’s application and order that Beau’s mark be expunged from the trademark register. Steelbird asked to address the issue of costs after I release my judgment. I will consider any submissions from the parties on costs that are made within 10 days.
JUDGMENT IN T-1129-17
THIS COURT’S JUDGMENT is that:
The application is allowed.
The parties may make submissions on costs within 10 days.
"James W. O'Reilly"
Judge
ANNEX
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FEDERAL COURT
SOLICITORS OF RECORD
DOCKET:
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T-1129-17
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STYLE OF CAUSE:
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STEELBIRD GHETTO PROPERTIES LLC v BEAU’S ALL NATURAL BREWING COMPANY LTD.
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PLACE OF HEARING:
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Vancouver, British Columbia
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DATE OF HEARING:
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May 16, 2018
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JUDGMENT AND REASONS:
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O'REILLY J.
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DATED:
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JUNE 19, 2018
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APPEARANCES:
Paul Smith
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For The Applicant
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Unrepresented
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For The Respondent
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SOLICITORS OF RECORD:
SMITHS IP
Barristers & Solicitors
Vancouver, British Columbia
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For The Applicant
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VALADARES LAW PROFESSIONAL CORPORATION
Ottawa, Ontario
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For The Respondent
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