ottawa sign with aitken lee llc team

Inherent Distinctiveness Must Consider Potential Uses Of Marks, Not Merely Their Actual Uses

Constellation Brands Inc. and related companies appealed a decision of the Trade-Marks Opposition Board that rejected Constellation’s opposition under s. 38 of the Trade-marks Act. Constellation had opposed Domains Pinnacle Inc.’s attempt to register a trade-mark for


in association with apple based alcoholic beverages and non-alcoholic apple based products such as sparkling and not sparkling juice, sweet cider, jams and jellies.

The Board determined there was no reasonable likelihood of confusion between Constellation’s word marks PINNACLE and PINNACLES registered in association with wine and Domaines’ proposed design mark.

Constellation argued that the Board erred in fact and law by considering the degree of resemblance of the mark based on actual use rather than according to the mark’s potential uses. The Board had found the inherent distinctiveness factor favoured Domaines.

The appeal was allowed and the matter was remitted to a different member of the Board for reconsideration. Citing Masterpiece Inc v Alavida Lifestyles Inc, the Court found that the Board erred by focusing exclusively on the actual use of Constellation’s PINNACLE word mark when finding no inherent distinctiveness. The Board should have considered all potential uses of the PINNACLES mark permitted by its registration, and not merely the actual use. Justice Gagné noted that, contrary to Domaines’ argument, the word mark PINNACLE could have used different styles of lettering, colour, or design to suggest the “idea of cold and winter”, which would be similar to Pinnacle’s proposed mark, DOMAINE PINNACLE & DESIGN.

The decision is available here.