Anheuser-Busch awarded GOLDEN registration


In Molson Canada v Anheuser-Busch Inc, the Federal Court of Canada has dismissed the plaintiff's opposition to the registration of MICHELOB GOLDEN DRAFT. It held that although the plaintiff's series of marks featuring the word 'golden' are strong and well known in Canada, when analyzed as a whole, the two parties' marks were not of similar appearance.

US brewer Anheuser-Busch applied to register MICHELOB GOLDEN DRAFT for, among other things, beer bread mix and clothing. Molson Canada, a large Canadian brewer, opposed the application on the grounds that (i) it would cause confusion with its registered trademarks featuring the word 'golden', including MOLSON GOLDEN, GOLDEN and GOLDEN ALE and design, and (ii) the mark was not distinctive. It also argued that it had extensively sold merchandising items of a similar type to those covered by the application in association with its own marks.

The trademark registrar rejected the opposition, stating that as a matter of first impression and imperfect recollection there would be no reasonable likelihood of confusion between the respective parties' marks. Evidence from the trademark register seems to have helped the registrar reach this conclusion as, in the registrar's opinion, it pointed to "there being relatively common adoption of the mark GOLDEN in relation to various of the wares covered" by Anheuser-Busch's application.

On appeal, Molson submitted that the registrar erred in fact and law in rejecting the opposition. It argued that, among other things, the registrar had been wrong (i) to consider evidence from the register on the issue of confusion, and (ii) to hold that the "ambit of protection for Molson's family of trademarks, which include the word 'golden', should be limited on the basis that this word is often used along with the house mark MOLSON or MOLSON'S". Molson submitted that Anheuser-Busch had simply taken the whole of Molson's registered trademark GOLDEN and wedged it between the geographical term 'Michelob' and the descriptive word 'draft'.

Anheuser-Busch's reply included the submission that the term 'golden' should be available for all beer brewers to use.

The court found Molson's mark and design to be strong and well known in Canada, notwithstanding that it contained the descriptive word 'golden'. However, in applying the test that multiple element marks should be analyzed as a whole, the court agreed with the registrar and held that there was very little similarity in appearance between the two parties' marks. It also gave some weight to the evidence in the register.

Thus, Molson's appeal was dismissed with costs.

Toni Polson Ashton, Sim Hughes Ashton & McKay, Toronto

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