Battle of the 'moose' trademarks
While there is a fight brewing between Moosehead Breweries and District Brewery over the name of a flagship beer, Toronto intellectual property lawyer Taras Kulish says there could be another dog — or in this case, moose — in the fight.
As Canadian Press reports, the name of a popular beer in Saskatchewan has attracted the attention of Moosehead Breweries, which informed Regina's District Brewery that it opposes the name of the company’s flagship beer, Müs Knuckle.
“Moosehead says the name is confusingly similar to its own and infringes on its trademark name. District Brewery president Jay Cooke say there is no photo of a moose on its product and the name with a German touch distinguishes it from Moosehead,” the wire service reports.
“Cooke says all the right moves were conducted when it came to trademarking Müs Knuckle and his legal team is looking at options and deciding what to do,” the article states.
Kulish, a senior associate with Steinberg Title Hope & Israel LLP, says this battle of the breweries could potentially attract the attention of Moose Knuckles, the Canadian company that sells parkas as well as other outerwear and accessories.
"Perhaps Moose Knuckles would have a say in this fight as well. What is more Canadian than drinking a cold beer in a parka? It’s not inconceivable that a parka manufacturer could expand into beer production,” Kulish tells AdvocateDaily.com.
He points to the long-running legal saga of Remo Imports Ltd. v. Jaguar Cars Ltd. as an example. In that case, Jaguar Cars argued that Montreal-based Remo’s use of the mark 'Jaguar' for its luggage and related wares was confusing and depreciated the goodwill of the luxury automobile brand.
Jaguar Cars succeeded at trial in having the trademark registration for Jaguar by Remo expunged on the basis that the mark was confusing. The court also held that Jaguar Cars' registration was accorded a wider ambit of protection as a famous trademark. However, the Federal Court of Appeal concluded that while there was a likelihood of confusion in the mind of the consumer there was not enough evidence to establish a likelihood of depreciation of goodwill of Jaguar’s trademark for automobiles.
At first glance, luxury cars and luggage may not appear to be related or cause confusion among consumers, but cars and luggage are both synonymous with travel.
“That case opened up the line of thinking that marks don’t have to be in the same area to be considered confusing,” explains Kulish. “It could be considered confusing if the brands are in connected areas.”
He says while the connection may not be as close, it isn’t inconceivable that a Canadian parka manufacturer could expand its brand into beer.
“Is there a natural brand extension from parkas into beer? In Canada, there might be. What better thing to do on a cold day, maybe apres skiing or snowboarding, than to enjoy a beer?” Kulish says.
Müs Knuckle beer has been on Saskatchewan shelves since 2013 and is now available across Western Canada.
Yahoo! News reports that Moosehead has gone previously head to head with other companies over the word “moose."
“The company sued Moose Wizz root beer, and Big Sky Brewing’s Moose Drool Brown Ale was forced to change its name to Moo Droo after Moosehead took legal action,” the online news outlet reports.
“They’re very protective of the word ‘moose’ and the imagery of moose and we don’t use either,” Cooke told Yahoo!
The article notes District Brewing has until the end of March to decide its next move.