Pacific Western Brewing Company Ltd. v. Cerveceria del Pacifico, 2015 FC 1078

Pacific Western sought to expunge the trademark registration for PACIFICO & Design in association with beer, but was unsuccessful. The mark was filed in 1987, claiming use in Canada as early as 1986 and it issued in 1990.

Pacific Western was described as a Canadian brewery, selling beer throughout British Columbia and internationally. The Court noted that Pacific Western had been operating since 1957, and had manufactured and sold beer in association with various PACIFIC trade-marks since at least as early as 1984.

Pacific Western alleged that the Registration was invalid for two reasons: 1) the Mark was not first used in Canada as early as April 14, 1986, as stated on the register, and this misstatement was material or fundamental; and/or (b) when Cerveceria filed its application for registration of the Mark, it was not entitled to secure the registration of the trade-mark, as it was confusingly similar to Pacific Western's various trade-marks, which were used prior to the first use of the Mark by the Cerveceria.

The evidence showed, among other things, that April 14, 1986 was the date of the first wholesale transaction of PACIFICO beer in Canada. On this basis, the Court concluded that the date of first use was accurate, and accordingly there was no material or fundamental misstatement as to the claimed date of first use.

As for the allegation of confusion, the Court looked to Pacific Western's registered marks that were both used (PACIFIC GENUINE DRAFT and PACIFIC DRAFT), or adopted (PACIFIC) as of the relevant date. There were also two PACIFIC PILSNER labels in evidence. After reviewing all the evidence, the Court found that Pacific Western's marks were all comprised of additional elements that served to further distinguish them from the PACIFICO mark. Some of these elements included the use of Spanish on the label and the strong and contrasting colours and fonts that suggested a foreign origin and the impression of an imported beer originating from Mexico. This was found to contrast with Pacific Western's marks.

The Court further noted that the parties have coexisted in the marketplace for decades and noted that the 25 year delay before attempting to invalidate the Registration weighed heavily against a finding of confusion. Therefore, the mark was not expunged.