Intellectual Property

Brewer shouldn’t take Muskoka chair dispute sitting down

By Tony Poland, AdvocateDaily.com Associate Editor

When protecting your company’s valuable brand, you should be prepared to fight for it, says Toronto intellectual property lawyer John Simpson.

Simpson, principal of IP and new media law boutique Shift Law, referenced a dispute between two brewers over the use of the image of a Muskoka chair as an example of the need to be vigilant when it comes to protecting a company’s identity.

“This is an interesting case,” he tells AdvocateDaily.com. “It shows how challenging it can be to build a brand around an iconic concept.”

According to the Financial Post, an Ontario craft brewery is suing a multinational brewer for trademark infringement for using the image of a Muskoka chair on promotional T-shirts.

Lakes of Muskoka Cottage Brewery Inc., better known as Muskoka Brewery, has a registered trademark for the type of chair that is part of its logo, the Post reports.

The craft brewery wants the T-shirts destroyed or handed over, as well as the beer boxes containing them and anything else depicting the Muskoka chair, according to the newspaper.

“This use of the infringing chair mark has deceived and confused the public in Canada,” reads the statement of claim.

Muskoka Brewery’s version of the logo has a side view of the chair with a beer bottle on the arm while the version used on the T-shirts shows a head-on view of the chair on a deck with a beer bottle placed on the arm, according to the report.

For its part, the multinational beer giant tells the Post it is evaluating the trademark claim.

Simpson says the craft brewer built a “brand around an iconic concept — the Muskoka chair — and the idea of drinking a beer while sitting in this type of chair is arguably a quintessential Canadian image.”

However, companies using iconic images must be prepared to protect themselves against others who also want to make use of them, he explains.

“That’s not to say that you can’t build a brand around that, but it means that when you do, you’re going to have to be vigilant about stopping others from encroaching on it. If they do, your brand is no longer going to be distinctive,” Simpson says.

And while the T-shirt promotion may be short-lived, the craft brewer still needs to take swift action, he says.

“It’s made a decision to pursue this and to file a claim because it invested heavily and very effectively in creating this association between the iconic chair and its products. If the brewer doesn’t fight to maintain control of the company image, then there is going to be others. This is a warning shot to everyone else who would consider doing it.”

According to the Post, the company is concerned that its customers would see the chair on the T-shirt and assume some connection between the two brands and perhaps believe that another independent brewer had been bought out by a multinational brewer.

“We definitely would lose a big segment of our beer drinkers and our fans,” the president of the craft brewery tells the Post.

Simpson says “passing off” is a form of trademark infringement that can confuse the average consumer into believing there is an association between one company or product with another.

He says the craft brewer might also be able to make a case for claiming the use of the logo has damaged the goodwill it has worked tirelessly to establish with its customers.

“I think it would be able to show it has a reputation and goodwill associated with the Muskoka chair,” Simpson says. “Even if consumers aren’t directly confused or have a mistaken impression, there is an association between the two companies, and the image is being diluted.”

He says while the case will probably be settled before it goes to trial, “It would be really interesting to see a court deal with all of these issues.”

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