In a recent decision of the Federal Court a judge strongly differed with the decision that the Trade-Mark Opposition Board arrived at.

The Facts

San Miguel Brewing International Limited (San Miguel Brewing) filed a trade mark application for the trade mark RED HORSE Design as shown below for use in association with beer, ale, pilsner, stout and bock. Molson Canada 2005 opposed the application on the basis that is was confusing with Molson’s BLACK HORSE ALE Design trade mark which for use in the association with ale is reproduced below, and other related marks.

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Molson‘s trade mark registration had been issued originally by the Newfoundland Trade Mark authorities in 1922.

The Trade-marks Opposition Board

The Board decision focused on whether the RED HORSE & Design trade mark was confusing with the registered trade mark BLACK HORSE. The design elements were said not to be an issue. On the critical question of the degree of resemblance between the marks the hearing officer found that the most striking portion of the mark was the word HORSE. Although the applicant’s design features were noteworthy they did not outweigh the significance of the words that dominate the center of the mark RED HORSE and the unique word HORSE. As a result it was said that the ideas suggested by each mark were similar and the degree of resemblance between the marks favoured Molson. As a result, the application was dismissed.

The Appeal

San Miguel Brewing appealed to the Federal Court. Included among the additional evidence filed by San Miguel Brewing was an affidavit which stated that a number of alcoholic beverages are sold in Canada in association with trade marks that contained the word HORSE. The trial judge thought that this evidence was material as it had not been brought to the Board’s attention and could have (and) should have made a difference.

The judge began his reasons by saying that there was significant potential for the use of phrases such as “this is a horse of a different colour” or other equine or beer jokes. However, he said he would refrain from such frivolities as this was a case about beer and a case of beer is a serious matter.

The judge made reference to the appropriate authorities and said that when a confusion analysis is carried out the mark as a whole must be considered not portions of the mark. This is consistent with approaching “confusion” on the basis of first impression. Neither an expert, nor a court, should tease out and analyze each portion of the mark alone rather the court should consider the mark as it is encountered by the consumer as a whole and as a matter of first impression.

The judge said that the ordinary beer drinker is sensitive to the names of beers and to what they know and like. The test for confusion is premised on the ordinary beer drinking consumer. One look at the labels of RED HORSE and BLACK HORSE was sufficient to dispel any notion of confusion between RED HORSE (with just a horse’s head) and BLACK HORSE (with a horse in profile).

Finally, the judge said that if the hearing officer was correct Molson would be the beneficiary of a trade mark monopoly over the word HORSE of any colour in relation to beer. The breath of such an monopoly was unreasonable. As a result, it was concluded that the Board’s decision was neither correct nor reasonable.

Comment

While it is trite, in a confusion analysis it is the mark as a whole that must be considered not portions of it and on a first impression basis. However, it is a frequent occurrence in cases of this type that courts and counsel engage in a detailed analysis of each portion of the mark alone. It is also not unusual that opinions will vary.