The Trade-marks Opposition Board (TMOB) in Cerveceria Modelo, S.A. de C.V. v. Marcon (2008), 70 C.P.R. (4th) 355, refused Mr. Robert Victor Marcon's application to register CORONA in association with a variety of alcoholic and non-alcoholic beverages, and beverage bottling services.
The applicant has the dubious achievement of filing over 15 applications in Canada to register well known marks such as HEINEKIN, COORS, BUDWEISER, DOM PERIGNON, CHANEL, EVIAN and NESTLE, which systematically feature wares closely related to the established brand.
The opponent owns CORONA brand beer, the leading imported beer sold in Canada. The TMOB found that a likelihood of confusion did exist, applying the test clarified by the Supreme Court of Canada.
However, the TMOB also found that the applicant failed to comply with section 30(i) of the Trade-marks Act, which requires the applicant to indicate that he is satisfied that he is entitled to use the trade mark in Canada in association with the wares and services listed in the application.
The TMOB commented that the 30(i) requirement includes both formal and substantive compliance, and is "a type of contract between the applicant and the public, establishing that all information and supporting evidence … have been submitted in good faith." As such, where there is evidence of bad faith on the part of the applicant, the application will be refused.
The TMOB found that the applicant's efforts to register so many well known marks for related wares, as well as damning testimony given during cross-examination, raised suspicion about his good faith.
Brand owners should take heart that, as a result of the CORONA decision, section 30(i) of the Trade-marks Act now has sharper teeth to sink into predatory filers, whose bad faith may now doom their applications to refusal.