Michael Ford (post until Oct. 31/19)
Intellectual Property

Winemaker defeats brewer in trademark battle

Alcohol producers need to think more broadly when it comes to trademark protection as consumer tastes change, Toronto intellectual property lawyer Taras Kulish tells AdvocateDaily.com.

In a recent Federal Court decision, the judge expunged a beer manufacturer’s trademark after finding it could be confused with a similar mark already in use by a wine company before its registration for beer.

Kulish, a senior associate with Steinberg Title Hope & Israel LLP, says the result may have been different a decade ago when crossover products in the alcohol market were rare.

“It may not have been conceivable 10 or 20 years ago that a wine brand could become a beer brand, but now, with the development of consumer tastes, you see beer-wine hybrids where one is brewed to taste like the other,” he says. “You get cross-pollination in multiple sectors, and as these connected fields merge, it’s all the more reason why you need trademark protection beyond the old strict product divisions.”

The beer company in the case registered its “B-Side” mark in 2015, claiming to have used it since 2013. But the wine company challenged its assertions and provided evidence of its use of the name on bottles dating back as far as 2011.

The beer company did not participate in the Federal Court proceedings, but even after accepting that the wine company used the mark first, the judge had to be convinced that they were “confusingly similar” in order to expunge the beer-maker’s registration.

“A number of the prescribed factors lead me to conclude that a rushed consumer would likely infer that [the wine] and [the beer] were sold by the same company,” the judge wrote in expunging the registration, before laying out the reasons:

  • The B-Side mark was “inherently distinctive” as applied to alcoholic beverages, since, as a term usually applied in relation to vinyl records, it doesn’t allude either to the drink product or its characteristics.
  • The mark was used by the winemaker for longer, allowing it to acquire some association with its products in consumers’ minds.
  • As alcoholic beverages, both products fall within the same class of goods.
  • Each party sold their product in the same stores and restaurants in various provinces, such as the LCBO in Ontario. Both were also at the premium end of the market, selling for higher than average prices.
  • There's “obviously a strong resemblance” between the marks, which were “essentially identical,” the judge wrote.

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