Molson Breweries v. Labatt Brewing Co.
T-660-95
Heald D.J.
6/6/96
16 pp.
Appeal from Trade-marks Opposition Board's decision rejecting appellant's application for registration of trade mark "Molson Club Ale & Design"-Application first filed in 1975-Labatt's application for trade mark "Manitoba's Club and Design" pending at time of filing of Molson application and not abandoned until 1987-Registrar refusing registration on basis confusing with Labatt's applied for trade mark "Manitoba Club & Design"-Registrar not reaching conclusion on second ground of opposition-On third ground, Registrar finding mark not distinctive-When additional evidence adduced at appeal pursuant to Trade-marks Act, s. 56(5) courts accord reduced deference to Registrar's decision-Appeal proceeding as trial de novo-Appeal allowed-Molson's applied for mark merely updated version of earlier registered trade mark "Club Ale & Design"-Labatt's earlier application for "Manitoba's Club Ale and Design" abandoned-Registrar feeling constrained by wording of Act, s. 16(3)(b) requiring refusal of registration if at date of filing, confusing with "trade-mark in respect of which an application for registration had been previously filed in Canada by any other person"-Although Registrar's decision made in January 1995, Molson's application filed in 1975 when Labatt's application still pending and not yet abandoned-Absurd result could be reached by strict application of Act, s. 16(3)-Pursuant to Act, s. 6 in determining whether mark confusing, shall have regard to all surrounding circumstances-One of surrounding circumstances includes Labatt's abandonment of application for "Manitoba's Club & Design"-Therefore, Molson's mark not precluded from registration under Act, s. 16(3)(b) -Labatt's third ground of opposition, Molson mark not distinctive, must also fail-On authority of Labatt Brewing Co. v. Molson Breweries, A Partnership (1992), 42 C.P.R. (3d) 481 (F.C.T.D.), Molson mark meeting three criteria for distinctiveness-Registrar's decision set aside and matter referred back for rehearing and determination of second ground of opposition-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6, 16(3)(b), 56(5).