Opposition Board takes broad approach to protection of well-known marks

Canada

In 2003 an individual by the name of Robert Marcon applied to register a number of well-known trademarks in Canada. Many of the applications made it through examination and were then opposed by the owners of the well-known trademarks. Most of those oppositions have now been resolved in favour of the well-known brand. The most recent victory was in favour of Heineken (Heineken Brouwerijen BV v Marcon (2012 TMOB 164)).

Applications filed by Marcon to register the following marks have all been refused by the Opposition Board: NESTLÉ, CHANEL, BEEFEATER, BAYER, CORONA, L’OREAL PARIS, JACK DANIEL’S, EVIAN and TIM HORTONS (an iconic Canadian brand).

In addition, Marcon applied to register, but then abandoned, applications to register ABSOLUT, SOUTHERN COMFORT, NESCAFÉ, BUDWEISER and CANADIAN CLUB. Oppositions are still pending against applications to register DOM PERIGNON, FINLANDIA and COORS, and a second application for JACK DANIEL’S.

All of these brands are well-known and the question that comes to mind is how Marcon managed to get so many of them through examination, thus necessitating lengthy oppositions. The answer is that Marcon’s applications tended to cover goods sufficiently different from those covered in the registrations for the well-known marks, such that he was able to convince the examiners at the Canadian Trademarks Office that the applications should proceed. By way of example, the application for HEINEKEN was based on proposed use in association with “non-alcoholic coffee-based beverages; non-alcoholic tea-based beverages; dairy products namely milk, and cream”.

Under Canadian law, unless the examiner is satisfied that a mark is confusing with a registered mark, the examiner must approve the application - although he/she can treat the application as a doubtful case and notify the owner of the registered mark, which is what the examiner did with Marcon’s application for HEINEKEN. 

The key issue in the opposition proceeding commenced by Heineken was the issue of confusion. In assessing the relevant criteria for determining confusion, the Opposition Board noted that HEINEKEN is well-known in Canada in association with beer. It then focused on the nature of the goods associated with the marks and noted that there was some overlap in that the marks are for use in association with beverages, even though Marcon intended to use his mark with non-alcoholic beverages. The Opposition Board concluded that “the reputation of HEINEKEN would transcend the market to extend to non-alcoholic beverages”. On that basis, the application was refused.

Having rejected the application on the basis of confusion, the Opposition Board did not feel that it was necessary to deal with the allegation that Marcon was acting in bad faith when he filed the application to register HEINEKEN.  However, in an earlier decision involving the CORONA mark, the Opposition Board had held:

I am not aware of any jurisprudence that describes what 'bad faith' is in the context of Section 30(i). While I am not sure whether this term applies in the present circumstances, I question how any reasonable person would be satisfied that he/she was entitled to file trademark applications for over 18 arguably well-known marks for arguably related wares and/or services. I also question the underlying intent of such an applicant in doing so. In my view, the activity of attempting to coat-tail on the established reputation of so many well-known marks should be the type of activity that Section 30(i) is designed to prevent. In view of the above, I find that the evidence drawn out from Mr Marcon during cross-examination is sufficient to meet the opponent's initial burden with respect to Section 30(i).

There was therefore a significant onus on Mr Marcon to show that he was satisfied that he was entitled to monopolise the applied for mark CORONA for the applied for wares and services throughout Canada. The only evidence filed by Mr Marcon 'demonstrating the sincerity of the applicant's desire to use the marks that he has applied for in Canadian commerce' include two of his inactive trademark applications for the marks NUTRADENT and ROCKLIN and his patents for dental floss and a fuel tank product.

While I appreciate that Mr Marcon may have spent a lot of time and effort in developing his products, he has not shown to me that he was satisfied that he was entitled to file the present application for the mark CORONA for the applied for wares and services, or that his intentions were bona fide when he did so. As the ultimate onus is on the applicant, and as the applicant has not provided any evidence to convince me, on a balance of probabilities, that he was satisfied as to his entitlement of the applied for mark, the Section 30(i) ground succeeds.”

While it is unfortunate that so many of these applications made it through examination, thus necessitating oppositions, it will be encouraging to owners of well-known brands in Canada that the Opposition Board has taken a broad approach to the protection of their rights.

Robert A MacDonald, Gowling Lafleur Henderson LLP, Ottawa

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