Constellation Brands Inc. v. Domaines Pinnacle Inc., 2015 FC 1083
The Federal Court granted an appeal from the Trademarks Opposition Board (TMOB); quashed its decision and remitted the matter back for further determination. One of the applicants had registered the trademarks PINNACLES and PINNACLES RANCHES in association with wine. A second applicant, another winery, had used the mark PINNACLE under licence. They opposed the respondent’s application for DOMAINE PINNACLE & DESIGN in association withinter alia apple based alcoholic beverages.
The Court held that new evidence may be submitted on appeal, however the question remains: would the fresh evidence have materially affected the TMOB's findings or its exercise of discretion. That determination affects whether the Court will perform a de novo review, or consider the matter on a standard of reasonableness. In this case, the Court did not accept that the fresh evidence would have materially affected the decision.
However, the Court held that the TMOB made an error in its determination of the degree of resemblance between the marks, and that error impacted the TMOB's global analysis of the factors under the confusion test. The Court held that as long as the confusion analysis uses a registered word mark as the basis for the analysis, the teaching of the Supreme Court of Canada in Masterpiece, is pertinent and not distinguishable. In this case, the TMOB's analysis hinged on the visual element and the ideas suggested, when it should have taken into account that the registered word mark PINNACLE could have had different styles of lettering, colour or design.