Cheers! Beer Company Successfully Defends Trade-mark in Expungement Application

On September 17, 2015, Justice Martineau of the Federal Court released the judgment and reasons in Pacific Western Brewing Company Ltd. v. Cerveceria del Pacifico, 2015 FC 1078. The case was an application for an expungement order respecting the trade-mark PACIFICO & design (which was filed in November 1987, registered in August 1990, and used in Canada since 1986 in association with beer).

The application was brought by PWB, an independent brewery who had been manufacturing and selling beer in association with various PACIFIC trade-marks since at least as early as 1984. The PACIFICO and two PACIFIC marks, which were taken from the judgment, are as follows:

Pacifico land pacific labels

PWB argued that the registration of PACIFICO was invalid on two grounds:

Material Misstatement

PWB alleged that the PACIFICO Mark was not first used in Canada as of April 14, 1986, as stated on the register, and that this misstatement was material or fundamental. Justice Martineau held that a registration based on a misstatement of use will be held invalid and void ab initio where the misstatement in the application was intentional and fraudulent or where the misstatement was innocent but fundamental to the registration. In this case there was evidence that wholesale transactions of PACIFICO beer began in April 1986, and this allegation was dismissed.

Confusingly Similar

PWB also alleged that when Cerveceria filed its application for registration of the PACIFICO mark, it was not entitled to secure the registration, as the mark was confusingly similar to PWB’s PACIFIC marks. Justice Martineau held that there was no reasonable likelihood of confusion between Cerveceria’s mark and PWB’s marks. Justice Martineau relied upon the factors identified in section 6(5) of the Trade-marks Act in determining whether there was confusion, and held:

  • The nature of the parties’ businesses were the same;
  • The degree of resemblance is a dominant factor in the analysis and looking at the totality of the marks, the resemblance is minimal. The court highlighted the fact that the PACIFICO mark included Spanish words (indicating a foreign origin), that the PACIFIC marks were not inherently distinctive, and that there were differences in design elements between the marks;
  • The consumers targeted by the products differ, as PACIFIC is a domestic product and PACIFICO is an import;
  • There was no evidence filed demonstrating even one instance of consumer confusion between the parties’ products; and
  • The delay of almost 25 years before attempting to invalidate registration weighs heavily against a finding of confusion.

In light of the foregoing, Justice Martineau dismissed the application for expungement.

A copy of the decision can be found here.