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

  1. 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;  
  2. 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
  3. 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.