Cider mark held to be deceptively misdescriptive


In the case of Verger du Minot Inc v Clos Saint-Denis Inc (2014 CF 997), the Federal Court was required to rule on appeal whether the trademark CRÉMANT DE GLACE was deceptively misdescriptive when used in association with the sale of apple cider. The application for the mark by Verger du Minot Inc had been refused previously by the Trademarks Opposition Board on the grounds that the mark was deceptively misdescriptive when used in association with the sale of apple cider.

Verger du Minot is a cider maker that bottles and sells its products under various trademarks. The CRÉMANT DE GLACE mark has been in use since 2005. The respondent, Clos Saint-Denis Inc, produced several dictionary definitions as evidence that the common meaning of the word 'crémant' is a lightly sparkling wine, and that the expression 'de glace' refers to alcohol that is produced using fruit that has been frozen. According to Clos Saint-Denis, the expression 'crémant de glace' therefore describes a lightly sparkling wine that is made from fermented grapes (as opposed to apples) that had been frozen. The board accepted this argument and rejected the application.

On appeal, Verger du Minot submitted additional evidence to demonstrate the extent and nature of its use of the mark in the normal course of business. It also filed an affidavit showing Verger du Minot’s use of two other registered marks, CRÉMANT DE POMME DU MINOT and CRÉMANT DE POMME. The appellant claimed to have a family of marks whose notoriety would prevent any risk of confusion as to the nature of the wares.

The court first considered the evidence regarding the use of the marks CRÉMANT DU MINOT and CRÉMANT DE POMME. The issue was twofold:

  1. Was there sufficient evidence to support the existence of a family of marks within the meaning of the case law?
  2. Did the existence of this family of marks affect the descriptive nature of the mark?

The appellant suggested that its use of the word 'crémant' in association with cider had rendered the mark distinctive and had made consumers accustomed to the use of the word 'crémant' in reference to cider.

The court concluded that there was insufficient evidence to establish the existence of a family of marks, firstly, because a family of marks must consist of more than two marks, and secondly, because the evidence of use did not distinguish between use of the CRÉMANT DU MINOT mark and use of the CRÉMANT DE POMME mark. Furthermore, the evidence did not provide a geographical breakdown of sales and therefore did not demonstrate sufficient market penetration to conclude that the average consumer of the wares would associate the word 'crémant' with cider. After conducting this analysis, the court concluded that the applicable standard of review was reasonableness, given the inadequacy of the additional evidence.

The court then highlighted the general applicable principles and reiterated that, in order to be rejected, the trademark must not merely be “misdecriptive”, but "deceptively misdescriptive" .The descriptive nature of the mark must therefore be such that the public would be misled as to the nature of the product associated with the mark. The mark must be analysed as a whole having regard to the wares covered by the application.

In applying the reasonableness standard, the court concluded that it was not unreasonable for the board to refer to dictionary definitions in determining the meaning of the words comprising the mark and in evaluating the descriptive character of the mark. As it was required to do, the board considered the mark as a whole in its assessment of the average consumer's perception of the mark, given the common meaning of the terms 'crémant' and 'de glace'.

The court also dismissed the argument that the word 'crémant' could have a second meaning, namely, that it could refer to the action of 'crémer' ('to cream'). According to the court, this definition appeared too far removed from the context of the wares in question. The court confirmed the reasonableness of the board's conclusions.

Further, the court rejected the argument that the mark was not deceptively misdescriptive because the label on which it appeared was required by law to include a description of the product. The court noted that the mark must be considered independently, and not with regard to the way the owner decides to use it. Regulatory requirements concerning the sale of cider have no bearing on this point.

Lastly, the court dismissed the appellant's family of marks argument. It held that there was insufficient evidence to establish the existence of a family of marks whose widespread use could have altered the average consumer's perception of the mark. In doing so, the court distinguished the present case from a previous decision regarding the use of the word 'butter' in marks such as GOÛT DE BEURRE COMME AU CINÉMA, SOUVENIRS DE BEURRE or I CAN’T BELIEVE IT’S NOT BUTTER, where the evidence appeared to have been far more convincing.

Stéphane Caron and Julia Werneburg, Gowling Lafleur Henderson LLP, Ottawa

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