Federal Court rejects transcendence of fame argument

Canada
In Wrangler Apparel Corporation v Big Rock Brewery Limited Partnership (2010 FC 477, April 30 2010), the Federal Court of Canada has dismissed Wrangler Apparel Corporation's appeal from a decision of the Trademarks Opposition Board in which the latter had rejected Wrangler's opposition to the registration of the trademark WRANGLER by Big Rock Brewery Limited Partnership for use in association with beer.

Wrangler’s position was essentially that Big Rock’s mark was confusing with its registered trademark WRANGLER for apparel.

In finding that Wrangler would not be accorded a monopoly on the word 'wrangler', the hearing officer pointed out the existence of 15 trademark applications or registrations for the word 'wrangler', alone or in combination with other words, that did not belong to Wrangler. Therefore, the hearing officer found that Wrangler’s fame in the WRANGLER mark did not transcend beyond articles of clothing, footwear and accessories. Furthermore, she held that the average consumer would not likely confuse the source of Big Rock’s beer upon seeing the WRANGLER mark.

On appeal, Wrangler filed new evidence consisting of:
  • a survey conducted among beer drinkers, which, according to Wrangler, showed that 29% of respondents, upon seeing WRANGLER-branded beer, would infer some kind of connection with Wrangler; and
  • an affidavit attesting that Wrangler was considering extending its WRANGLER-branded products to cover whiskey.
The court considered the new evidence, but found that it would not have materially affected the board's decision.

First, the court gave the survey evidence very little weight. Second, the evidence of Wrangler’s future expansion to whiskey products was similarly treated because there are no WRANGLER-branded whiskey products on the Canadian market.

Having rejected this evidence, the court reviewed the correctness of the board’s decision and found it to be correct. The situation was compared to the BARBIE Case (SCC 22 [2006] 1 SCR 772), which reached the Supreme Court of Canada. The Federal Court found that, although WRANGLER, like BARBIE, was not inherently distinctive, it had acquired strong secondary meaning which associated its use with blue jeans. However, just as BARBIE's fame did not transcend the doll marketplace to cover restaurants, WRANGLER's fame did not transcend the clothing market to cover beer. The court found that the only evidence of such transcendence was that Wrangler sponsored rodeo and other western lifestyle events alongside beer brewers, but that did not imply that the mark's fame with regard to apparel had any close association with beer.

The court also placed significant weight on the fact that many others are able to use the trademark WRANGLER for unrelated goods without confusion, noting, for example, Chrysler's use of WRANGLER for vehicles and Goodyear's use of the mark for tires.
 
Toni Polson Ashton, Sim & McBurney/Sim Lowman Ashton & McKay LLP, Toronto

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