Labatt wins 12-year Oland Export dispute

Canada

In Labatt Brewing Company Limited v Molson Canada, the Federal Court Trial Division has found the term 'Oland Export', for use in association with beer, to be registrable at the national level on the basis of acquired distinctiveness. The case, which lasted for more than a decade, is the latest in a series of disputes between these two parties regarding trademarks for beer.

Labatt filed an application to register the mark in August 1990. Molson filed an opposition to the registration in September 1991. The Trademarks Opposition Board ruled in Molson's favour on the grounds that the mark was not adapted to distinguish Labatt's beer ((1997) 1 CPR (4th) 239). It stated that Labatt was seeking to register 'Oland', a surname, and 'export', a clearly descriptive term. On the basis that neither was registrable separately, the board concluded that they were not registrable in combination.

Labatt appealed to the Federal Court Trial Division, where both parties filed new evidence. Most notably, Labatt provided evidence that during the relevant period, 1976 to 1991, over 53 million 12-packs of Oland Export beer were sold in three of Canada's provinces, representing 10% of the market share. Molson, however, pointed to precedent rejecting mere evidence of sales as proof of distinctiveness. It pointed out that in Novopharm Ltd v Astra Zeneca AB ((2001) 5 CPR (4th) 327), evidence of sales alone was not sufficient to prove that a round, pink tablet had acquired distinctiveness.

In the case at hand, the Trial Division rejected Molson's argument on the basis that the market for beer is quite different, particularly because there is strong identification with brand names. Further, Labatt provided evidence that there were no other breweries operating under the name 'Oland'. Accordingly, the court ruled that Labatt had provided sufficient evidence to prove that the mark 'Oland Export' had acquired distinctiveness through use. The court ordered that the mark be registered.

For discussion of a dispute involving the OLAND EXPORT mark in the Province of Ontario, see Trademark registration is complete defence against passing-off action.

David Wotherspoon, Fasken Martineau, Vancouver

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