5 minute read
LEGAL
O’GRADY, PARTNER AT CPST, EXPLORES THE KEY FACTS AND FINDINGS FROM THREE SUCH CASES.
BELLWOODS BREWERY INC. VS. BLYTH COWBELL BREWING INC.
The first case involved two Ontario craft brewers, namely Bellwoods Brewery Inc. and Bellwoods Holdings Inc. (collectively “Bellwoods”) and Blyth Cowbell Brewing Inc. (“Blyth”). Bellwoods owned a Canadian registration for a trademark featuring a bell design (the “Bell Mark”). Blyth subsequently filed a Canadian application for a trademark featuring a cowbell design (the “Cowbell Mark”). Both trademarks are depicted below.
In response, Bellwoods commenced a proceeding before the Trademarks Opposition Board (“TMOB”) to oppose Blyth’s application. Bellwoods alleged that the Cowbell Mark was confusing with its Bell Mark, among other things.
The TMOB ultimately found that Bellwoods had established that there was a reasonable likelihood of confusion between its Bell Mark and the Blyth Cowbell Mark (see Bellwoods Brewery Inc. v. Blyth Cowbell Brewing Inc., 2021 TMOB 31). The TMOB discussed various factors in assessing the likelihood of confusion, including that:
The Cowbell Mark and the Bell Mark bear a fair degree of resemblance in terms of their appearance and the suggested ideas because they are both bell designs;
While both parties’ marks are inherently distinctive, the distinctiveness of the Cowbell Mark is inherently stronger because of the unique clapper design;
The Bell Mark had become known to a slightly greater extent than the Cowbell Mark; and
Both parties offer similar goods and services in overlapping channels of trade.
The TMOB found that the probability of confusion between the marks was evenly balanced between a finding of confusion and no confusion. However, the burden was on Blyth to establish, on a balance of probabilities, that its Cowbell Mark was not confusing with the Bellwoods Bell Mark. As the factors were evenly balanced, the TMOB held that Blyth had failed to discharge its burden. Accordingly, the Blyth trademark application was refused on the ground of likelihood of confusion with the Bellwoods Bell Mark.
Blyth launched an appeal of the TMOB decision in the Federal Court of Canada. The Federal Court dismissed that appeal in February of 2022 (see Blyth Cowbells Brewing Inc. v. Bellwoods Brewery Inc., 2022 FC 248). The Federal Court also found that there was a likelihood of confusion and, as a result, the Blyth Cowbell Mark was not registrable.
Bellwoods Bell Mark Blyth Cowbell Mark
The second case involved Regina craft brewer District Brewing Company (101217990 Saskatchewan Ltd.) (“District Brewing”) and Toronto craft brewer Lost Craft Inc. (“Lost Craft”). District Brewing had filed a Canadian application to register the trademark FIND YOUR CRAFT in connection with the goods “beer” (the “District Application”). In response, Lost Craft commenced a proceeding before the TMOB to oppose the District Application. Lost Craft did not hold any prior applications or registrations for the FIND YOUR CRAFT trademark. Rather, Lost Craft alleged that it had prior use of the identical mark.
In its decision, the TMOB refused the District Application (see Lost Craft Inc. v 101217990 Saskatchewan Ltd. dba Direct Brewing Company, 2021 TMOB 168). The TMOB found that Lost Craft had used the FIND YOUR CRAFT trademark in Canada in connection with brewery services prior to the date on which the District Application was filed. Specifically, the FIND YOUR CRAFT trademark was displayed on the LOST CRAFT delivery van starting in August of 2016.
The TMOB found there was a clear overlap between the parties’ goods and services (i.e. District Brewing’s offering of beer and Lost Craft’s offering of brewery services). In light of such overlap and the fact that the trademarks were identical, the TMOB found that there was a reasonable likelihood of confusion.
District Brewing brought an appeal of the TMOB decision before the Federal Court. The Federal Court ultimately dismissed that appeal in September of 2022 (see 101217990 Saskatchewan Ltd. (District Brewing Company) v. Lost Craft Inc., 2022 FC 1254).
In both of these cases the ultimate consequence of the TMOB and Federal Court decisions was to deny the applicants the benefits of trademark registrations. These decisions did not bar Blyth or District Brewing from using the contested trademarks. That remedy is not available in opposition proceedings before the TMOB or appeals from TMOB decisions.
Rather, in order to seek that remedy, Bellwoods and Lost Craft would need to commence trademark infringement and/or passing off actions in court and seek an injunction as part of the remedies being sought. The final case to be discussed below, was such a trademark infringement suit launched by a craft brewery against an industry giant.
LAKES OF MUSKOKA COTTAGE BREWERY INC. VS. MOLSON COORS CANADA INC. ET AL
The third case involved the Ontario craft brewer Lakes of Muskoka Cottage Brewery Inc. (“Muskoka”) which took on Molson Coors Canada Inc. and Molson Canada 2005 (collectively “Molson”).
Muskoka owned a registration for a trademark featuring a chair (sometimes referred to as a ‘Muskoka chair’ or ‘Adirondack chair’) with a beer bottle placed on the arm (the “Muskoka Mark”). The dispute arose in June of 2019 after Molson launched a promotional campaign in which free t-shirts were placed inside boxes of MOLSON CANADIAN beer. The t-shirts displayed a design of a Muskoka/Adirondack chair with a beer bottle placed on the arm (the, “Molson Chair Design”). The respective chair designs are depicted above.
Muskoka brought an action against Molson in the Federal Court alleging that the use of the Molson Chair Design infringed upon its rights in the Muskoka Mark.
In media reports Muskoka president Todd Lewin was quoted as saying: “[i]f you don’t protect your trademark, you lose it. We had to do this. …There are thousands of cases of Canadian with this T-shirt out there in the market on a long weekend.” (see Rubin, J. (2019, June 29). Whose chair is it, anyways? Muskoka Brewery sues Molson Coors over depiction of Muskoka chair. Toronto Star.)
Mr. Lewin also raised the concern that a customer would see the Molson Chair Design and assume some connection between the two brands, or perhaps that the independent brewer had been bought out by Molson. He was quoted as saying: “[w]e definitely would lose a big segment of our beer drinkers and our fans… Molson Coors has a history of acquiring independent craft breweries.” (see Edminston, J. (2019, June 28). ‘Deceived and confused’: Muskoka Brewery sues Molson for using image of Muskoka chair on t-shirt. Financial Post).
This dispute never made it to trial, however. The parties secured a dismissal order, on consent, which suggests that a settlement was likely reached.
Brewers should beware that a failure to exercise proper diligence when adopting a new trademark can give rise to costly disputes. The above cases demonstrate that such disputes can impact breweries big and small. It is therefore advisable for brewers to:
Conduct trademark clearance searches prior to adopting any new trademark to avoid infringing upon a third party’s rights;
Adopt branding that is unique and distinctive;
File applications to register any key trademarks as early as possible; and
Monitor the market and take enforcement action against any infringers.
For assistance with your brew branding needs, feel free to reach out to Sarah O’Grady or any member of the CPST IP Team www.cpstip.com.
