A series of Canadian beer cases shows the challenge of determining whether a trade-mark is too descriptive to be registered.
Trade-marks cannot be registered in Canada, and under similar principles in other countries, if they are clearly descriptive or deceptively misdescriptive of features of the goods or services, including their character or quality or the conditions of their production or place or origin.
The line between what is descriptive and what is not can take on a beer-like cloudiness, and competing brewers are often willing to wage legal battles back and forth through this haze. I will mention five Canadian cases which illustrate the challenges.
Back in the 1970′s, an applicant named Provenzano sought to register KOLD ONE in respect of beer, but the Trade-marks Registrar refused to register on the basis of descriptiveness. This was overturned on appeal, and the Federal Court of Appeal approved of the trial judge’s finding that:
“Although a majority of people might prefer to drink their beer cold, others may prefer it at room temperature. The word “cold” in such a case can refer only to the state at which the product, namely, the beer, may or may not be sold or consumed and not to any intrinsic quality or characteristic of the product. It, therefore, is not descriptive of the beer itself.”
We then jump ahead to the next century, and four battles between Molson as applicant, with opposition from Anheuser-Busch.
In 2010 the Trade-marks Opposition Board considered Molson’s application for the mark SUPER COLD, for beer. Evidence was presented to show that at the time the public was aware of a new type of beer which required low temperatures as part of the brewing process. As a result, Anheuser-Busch successfully opposed because the mark was descriptive of the conditions of production of the beer, and the earlier Provenzano case was distinguished.
The SUPER COLD case was followed by three Opposition Board decisions of 2012, and in the first, Molson was applying for the trade-mark SUB ZERO. The Board found that the evidence did not show that the public was familiar with the term SUB ZERO in connection with a type of beer. While there was some evidence that SUB ZERO described a dispensing system to serve beer below zero temperature, the Board found it did not describe a condition of production nor an intrinsic quality or characteristic of the beer itself.
Just a month later the Opposition Board issued its next decision involving Molson’s application for COLD CERTIFIED, which was a mark applied to the beer cans and containers to indicate when the beer reached a certain cold temperature. The Board found that there was no debate that the evidence established that low temperatures are part of the brewing process, and that the public had become familiar with the phrases “cold filtering” and “ice beer”. As a result, the Board concluded:
“A member of the public who saw or heard the words “cold certified” in association with beer…would probably have regarded these words as assuring, that is certifying, that the beer was designed and manufactured to be sold at a cold temperature. It follows that the proposed mark…was clearly descriptive…of the conditions of the production of beer.”
A couple of months later we get our latest Board decision, which had Molson applying for COLD CASE in respect of beer. The Board reviewed all of the above decisions in respect of KOLD ONE, SUB ZERO, SUPER COLD and COLD CERTIFIED, and ruled COLD CASE was not descriptive, stating as follows:
“I fail to see how COLD CASE could be viewed as clearly descriptive of the conditions of production of beer. I must look at the Mark as a whole. Even though the evidence shows that low temperature is part of the brewing process, the word “cold” in the mark is used to qualify the noun “case”. .… I agree with the Applicant that the Mark could be considered as clearly descriptive of the character and quality of a container. However the Wares are not containers. As for the argument about the possibility that the average Canadian might think that the beer contained in the container bearing the Mark is cold, this does not mean that the Mark is clearly descriptive of beer….”cold” is not an intrinsic characteristic of beer.”
To summarize these five decisions:
KOLD ONE was not descriptive of beer; SUPER COLD was descriptive; SUB ZERO was not; COLD CERTIFIED was descriptive, but COLD CASE was not.
These cases show the inherent risks and (unpredictable) challenges associated with trade-marks which are either descriptive, or nearly descriptive, and the marks’ owners must be prepared to face vigorous challenges to their validity.