BUD marks famous only with respect to beer

In Anheuser-Busch Inc v Di Cicco (trading as Air Bud Productions) ([2009] TMOB 193, November 13 2009, only recently released), the Trademark Opposition Board has accepted that Anheuser-Busch Inc's BUD marks were famous, but held that they were famous only with respect to beer.
Anheuser-Busch opposed the registration of the trademark AIR BUD, arguing that its BUD and BUD LIGHT marks:

  • were famous;
  • should "benefit from a wider ambit of protection"; and
  • should thus be able to stop the registration of the trademark AIR BUD.
The AIR BUD mark was advertised for the following goods:
"clothing, namely t-shirts, sweat shirts, hats; games, namely a board game, toys, namely plush toys and squeaky toys; sports equipment, namely baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks, hockey sticks; dog food; pre-recorded video games on DVDs; paper articles, namely children's books, comic books, how-to books."
It was also advertised for "entertainment services, namely producing motion pictures and television shows". The application was based on use in Canada since February 29 1992.
The board was able to refuse the application on a technical ground - namely, that the applicant's evidence did not support its claimed date of first use. However, the board also reviewed other grounds in the statement of opposition with turned on the issue of confusion. In doing so, the board indicated that, even if it could conclude that the trademarks BUD and BUD LIGHT were famous in Canada, it would have done so only with respect to beer, and not all the collateral merchandising items that Anheuser-Busch had put forth, nor with respect to the services specified by the applicant.
However, the board found, on a balance of probabilities, that there existed a likelihood of confusion between the marks BUD and AIR BUD with respect to t-shirts, sweat shirts, hats, baseballs, basketballs, footballs, soccer balls, volleyballs, hockey pucks and hockey sticks on the basis of a "connection in the mind of the average Canadian consumer", given Anheuser-Busch's sponsorship of many sporting events and given that its marks were well known.
It is clear that the board was following the lead of the Supreme Court: fame is only one factor in determining confusion in Canada.
Toni P Ashton Sim & McBurney/Sim, Lowman, Ashton & McKay LLP, Toronto

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