North Brewing Company Ltd. v. DLA Piper: What is use of a trademark?
By Sabrina Salituro
In the recent decision of North Brewing Company Ltd. v. DLA Piper (Canada) LLP, 2023 FC 1188, the Federal Court clarifies the extent to which variations of a registered trademark will constitute use of the mark by the owner in cancellation proceedings pursuant to s.45 of the Trademarks Act.[1]
In this case, the Registrant, North Brewing Company Ltd., had a trademark registration for the word mark NORTH BREWING in association with the goods “Brewed alcoholic beverages, namely, beer, ale, lager, malt liquor; Promotional items, namely, beer glasses, mugs, bottle openers, key chains, clothing, namely, shirts, hats, jackets, and pants.”.[2]
Justice Fuhrer began her analysis on the issue of use with the leading and often cited test from Registrar of Trade Marks v CII Honeywell Bull, [1985] 1 FC 406 (“Honeywell”) to determine whether use of a modified version of a registered trademark constitutes use of the mark:
“The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin.”[3]
In her analysis, Justice Fuhrer divided the Honeywell test into two parts:
1. Whether the differences in the versions of the mark under consideration likely would deceive the public as to the origin of the applicable goods or services; and
2. If there is no possibility of deception to the public, whether the mark was used in such a way that it did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used.[4]
While applying the second part of the test, Justice Fuhrer made reference to the Promafil Canada Ltée v Munsingwear Inc, 1992 CanLII 12831 (FCA), 44 CPR (3d) 59 decision where the Court also focused on “the preservation of dominant features” of the mark.[5]
The Court found that use of the mark NORTH BREWING COMPANY constituted use of the mark NORTH BREWING as the word COMPANY is an “inconsequential or minor addition, with the domination feature, i.e. the words North Brewing, maintained”.[6] The Court also found that the variation of the mark in the logo NORTH BREWING CO. or NORTH BREWING COMPANY with images of glasses of beer – as depicted below – still maintained the mark NORTH BREWING which appears “prominently as the first or dominant element”.[7] Justice Fuhrer noted that the “depiction of partially filled and filled glasses of a yellow beverage (such as beer) are a descriptive addition to the Mark in association with brewed alcoholic beverages” and that the “the transfer of possession of the ordered beer in glassware such as these examples to customers” are in the “ordinary course of trade”.[8]
Notably, Justice Fuhrer mentioned that if there was evidence of third party brewed alcoholic beverages being sold, she may have found the contrary.[9]
In terms of the composite logos used by the Registrant on cans for brewed alcoholic beverages and invoices for beer glasses, shirts and hats – depicted below – Justice Fuhrer found that words NORTH BREWING are no longer the dominant feature of the marks, rather they are subsumed in these logos, the dominant features of which are the word NORTH in an oval superimposed on a substantial stylized compass or star design”.[10]
Similarly, evidence of a shirt displaying the image of a unicorn with the words NORTH BREWING COMPANY superimposed on a cloud beneath the unicorn design was not considered to be use of the mark NORTH BREWING, as the words NORTH BREWING were not the dominant feature of the composite mark.[11]
Ultimately, Justice Fuhrer found that the Registrant submitted evidence of sufficient use of the mark, including variations of the mark, in association with some of the goods in the registration during the relevant period.[12] The registration was maintained in part, in association the goods “ brewed alcoholic beverages, namely, beer, ale, lager; and promotional items, namely, mugs, bottle openers, key chains, clothing, namely, hats” and the goods “malt beverages, beer glasses, shirts, pants, and jackets” were deleted from the registration.
[1] North Brewing Company Ltd. v. DLA Piper (Canada) LLP, 2023 FC 1188 [“North Brewing”], at para 1 [2] North Brewing, at para. 5 [3] Registrar of Trade Marks v CII Honeywell Bull, 1985 CanLII 5537 (FCA), [1985] 1 FC 406, at para. 409 [4] North Brewing, at paras. 38-39 [5] Promafil Canada Ltée v Munsingwear Inc, 1992 CanLII 12831 (FCA), 44 CPR (3d) 59 at paras. 70-71 [6] North Brewing, at para. 51 [7] North Brewing, at para. 57 [8] North Brewing, at para. 53 [9] Ibid. [10] North Brewing, at paras. 59-60 [11] North Brewing, at para. 63 [12] North Brewing, at para. 45-46
