A February 2013 Federal Court of Canada decision in San Miguel Brewing International v. Molson Canada tells a galloping tale of a trade-mark battle between RED HORSE and BLACK HORSE.

The applicant, San Miguel Brewing, applied to register the trade-mark RED HORSE in association with certain beers.

They were opposed by Molsons who owned the trade-mark BLACK HORSE.

The Court began its decision with the following quip:

“The potential for the use of phrases such as “this is a horse of a different colour” or equine and beer jokes jump out at one. The Court will refrain from such frivolities for this is a case about beer and a case of beer is a serious matter.”

If you have been to Newfoundland and like beer, you have likely consumed a Black Horse (beer), and indeed the BLACK HORSE trade-mark has been registered in Newfoundland since 1922.  The evidence showed that  Molson sold in excess of 150,000 hectolitres and spent $13,000,000 on advertising the brand between 2000 and 2008.

San Miguel was unsuccessful before the Trade-marks Opposition Board, which found that there was a likelihood of confusion between the applicant’s RED HORSE mark and Molson’s BLACK HORSE.

San Miguel filed further evidence on appeal to the Federal Court about other trade-marks registered or in the marketplace such as LE CHEVAL BLANC, FLYING HORSE, GOLDEN HORSESHOE PREMIUM LAGER, IRON HORSE and DARK HORSE.   The Court indicated that this new evidence might have changed the outcome if it had been presented to the Opposition Board.

The Court noted that the confusion test requires one to look at the marks as a whole, and not to tease out each portion of the mark.  The Court said that confusion should be approached on the basis of first impression, from the perspective of the average person who goes to market, and common sense is required, which the court described in this case as “common sense in relation to a beer consumer”.

The Court also repeated recent Supreme Court of Canada summaries of the confusion test, including the notion of the consumer as the “ordinary, harried purchaser” – neither the careful, diligent purchaser nor the “moron in a hurry”.

The Court stated:

“Applied to the beer consumer (the relevant “ordinary person” at the bar or beer/liquor store), I am of the view that the ordinary beer drinker is sensitive to the names of beers and to what they know and like. The test is premised on the ordinary beer drinking consumer – not on what might be a legal fiction of the non-beer drinking life partner who is asked to pick up beer.”

The Court quoted from a 1982 case involving beer trade-marks where that Court stated:

“Even though the colours and designs of the two labels are somewhat similar a purchaser would have to be nearly blind, (or perhaps having consumed so much beer as to be in the same condition), not to be able to see at a glance from the label on the bottle or container, that he was getting either Plaintiff’s Standard Lager or Defendant’s Budweiser as the case might be. ….

The second major contributor to sales is of course the product itself and the flavour thereof, as regular beer drinkers will have considerable loyalty to their favourite brand.”

The Court in our Horse case stated further:

“… the question is whether an ordinary beer drinking consumer, on hearing the words RED HORSE (as in “Do you have (serve) RED HORSE?”), is likely to think that RED HORSE must be a beer made by the same company that makes BLACK HORSE.”

The Court concluded that confusion was unlikely, and stated:

“The fact that DARK HORSE [one of the competing brands highlighted in evidence] is sold without evidence of confusion with BLACK HORSE undermines any notion that Molson has secured such necessary recognition in relation to the word HORSE in relation to beer.

This is compounded by the existence of CHEVAL BLANC, which, while dismissed as of limited importance because it might be sold in restaurants, and is thus considered a different ware, shows that there is no automatic association of a horse with the Molson product. ….

The Board did not consider that what it was doing was, in effect, granting to Molson a trade-mark monopoly over the word HORSE of any colour (green, golden, brown, blue, etc.) in relation to beer. The breadth of that monopoly is unreasonable.”

The Court thus allowed the appeal and the RED HORSE trade-mark application will proceed.