ottawa sign with aitken lee llc team

No, no, no, no, don’t PUNK with Brewdog’s Trademark

In 2024 FC 891, Justice Tsimberis dismissed PDM’s appeal of the Trademarks Opposition Board’s decision to deny PDM’s trademark (“TM”) application for BLACK PUNK in association with non-alcoholic energy drinks.

Brewdog, owner of trademark PUNK in association with beer, opposed PDM’s trademark application for BLACK PUNK based on non-entitlement under section 16(3)(a) of the Trademarks Act (TMA). The Board refused PDM’s application finding that PDM had not met its legal burden to establish there was no reasonable likelihood of confusion. PDM appealed the decision asserting the Board made ten errors.

New Evidence

On appeal, PDM filed new evidence including the file history for PDM’s trademark application and two affidavits, pursuant to s. 56(5) of the TMA. The affidavits outlined evidence of: (1) energy drinks being available in convenience stores where alcohol was not (different channels), (2) PUNK and IPA in PUNK IPA displayed in the same size and font, (3) the STEAM PUNK trademark in association with beer apparel, and (4) BRIMSTONE PUNK ROCK PILSNER being available at the LCBO in Waterloo, Ontario.

Justice Tsimberis explained that in a TMA section 56 appeal, the Federal Court acts as a first instance court for the purpose of considering materiality of new evidence and therefore attracts a de novo review of the issues relevant to that material evidence. The test for materiality is whether the new evidence would have had a material effect on the decision—a test for quality, not quantity. Justice Tsimberis found the new evidence would not have a material effect on the decision because the third party uses of PUNK in Canada in association with beer was limited and insufficient to qualify as state of the register evidence to show commonality or distinctiveness of the PUNK mark.

After carefully considering the 10 alleged errors, Justice Tsimberis rejected each of them and  dismissed PDM’s appeal.

Justice Tsimberis held the standard of review was palpable and overriding error because the new evidence was immaterial, so there were no extricable errors of law.

The full decision can be read here.