Molson Breweries v. John Labatt Ltd.
T-162-96
Tremblay-Lamer J.
25/6/98
26 pp.
Appeal under Trade-marks Act, s. 56(1) from decision of Registrar of Trade-marks refusing appellant's application for registration of word "Export" for use in association with brewed alcoholic beverages-Application based upon use in Canada since 1903-Appellant amending application for registration in order to claim benefit of Act, s. 12(2)-Registrar rejecting application on basis word "Export" descriptive, therefore not registrable under Act, s. 12(1)(b)-Appellant arguing mark distinctive of brewed beverages, asking registration be restricted to Ontario, Quebec under Act, s. 32(2)-Where Court has benefit of considering new evidence, discretion unfettered by Registrar's previous decision-New evidence must be significant enough to warrant trial de novo-New evidence directed towards establishing word "Export" acquired distinctiveness in Ontario, Quebec-Affidavits of Blair Shier, Harold Moran providing evidence of significant advertising expenditures, sales and volume figures for "Export" brand ale in Ontario, Quebec from 1976 to 1900-Appeal should be treated as trial de novo by reason of significant additional evidence filed by parties-Trademark not registrable under Act, s. 12(1)(b) may be registrable under s. 12(2) if it has become distinctive of applicant's wares-Onus of proving trade-mark satisfies distinctive requirement of s. 12(2) on applicant-Sufficient mark be distinctive to substantial portion of relevant public-Trade-mark registrable as long as it distinguishes wares in restricted area in which registration sought-Evidence of sales in area where no registration sought immaterial-Moran, Shier affidavits confirming widespread public recognition of word "Export" with brand of beer produced by Molson-"Molson" in effect "house mark" of Molson Breweries, "Export" brand of beer sold by Molson Breweries-Evidence establishing distinctiveness of "Export" trade-mark in Ontario, Quebec-Appellant entitled to registration of mark under Act, s. 12(2)-Although legal burden remains on applicant to prove mark distinctive, opponent still has evidentiary burden of demonstrating sufficient use by itself, third parties to negate distinctiveness-Relevant date for determining question of distinctiveness date of filing opposition-Appeal granted-Trade-marks Act, R.S.C., 1985, c. T13, ss. 12(1)(b),(2), 32(2), 56(1).