Carling O'Keefe Breweries of Canada Ltd. v. Anheuser-Busch Inc., (1986) 68 N.R. 226 (FCA)

• Judge: Heald, Mahoney and Stone, JJ.
• Court: Federal Court of Appeal (Canada)
• Case Date: July 03, 1986
• Jurisdiction: Canada (Federal)
• Citations: (1986), 68 N.R. 226 (FCA)

Carling O'Keefe v. Anheuser-Busch Inc. (1986), 68 N.R. 226 (FCA)

MLB headnote and full text

Anheuser-Busch, Incorporated (appellant) v. Carling O'Keefe Breweries of Canada Limited (respondent)

La Brasserie Labatt Lim, Brewing Company Limited (appellants) v. Carling O'Keefe Breweries of Canada Limited (respondent)

Anheuser-Busch, Incorporated (appellant) v. Carling O'Keefe Breweries of Canada Limited (respondent)

(A-14-83)

Indexed As: Carling O'Keefe Breweries of Canada Ltd. v. Anheuser-Busch Inc.

Federal Court of Appeal

Heald, Mahoney and Stone, JJ.

July 3, 1986.

Summary:

Anheuser-Busch used the slogan "King of Beers" in association with its Budweiser beer. Carling O'Keefe made beer under the registered trademark "Kingsbeer". Carling O'Keefe also produced its Standard Lager beer with a label very similar to the Budweiser label. The Budweiser label originated in 1886. A Canadian company registered the Standard Lager label in 1926, the rights to which Carling O'Keefe acquired in 1950. Carling O'Keefe brought a trademark infringement action against Anheuser-Busch respecting the slogan "King of Beers" and the Budweiser label.

The Federal Court of Canada, Trial Division, in a judgment reported 68 C.P.R.(2d) 1, held that the "King of Beer" slogan infringed the Kingsbeer trademark and enjoined Anheuser-Busch from its use, but refused a reference on damages. The Trial Division held that the labels were not confusing (contrary to the parties' agreement), but refused to expunge either from the trademark registry on the ground that both parties were guilty of laches and acquiescence. Anheuser-Busch appealed and Carling O'Keefe cross-appealed.

The Federal Court of Appeal dismissed Carling O'Keefe's cross-appeals, and allowed Anheuser-Busch's appeals respecting the slogan "King of Beers", dissolving the injunction and dismissing Carling O'Keefe's action. The Federal Court of Appeal held that the labels were confusing, that the Standard Lager label should not have been registered in 1926, but that the trial judge was correct in refusing to expunge either label trademark for laches and acquiescence.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - Anheuser-Busch registered a label for Budweiser beer in the United States in 1886 and used the trademark subsequently - In 1926 a Canadian company registered a very similar label in Canada for its Standard Lager beer - The label was obviously inspired by or copied from the Budweiser label - Carling O'Keefe acquired the Standard Lager label in 1950 and 30 years later challenged the Budweiser trademark - The Federal Court of Appeal held that the Standard Lager label should not have been registered in 1926 because of its similarity to a trademark already in use in the United States - See paragraphs 25 to 33.

Trademarks, Names and Designs - Topic 886

Trademarks - Registration - Expungement of mark - Grounds - Abandonment - Carling O'Keefe purchased the right to produce a beer from another brewer - The beer's label was changed only to the extent of deleting the previous brewer's name - The Federal Court of Appeal held that Carling O'Keefe did not abandon the label merely by deleting the previous brewer's name - See paragraph 38.

Trademarks, Names and Designs - Topic 888

Trademarks - Registration - Expungement of mark - Exceptions - Laches and acquiescence - Anheuser-Busch registered a label for Budweiser beer in the United States in 1886 and used the trademark subsequently - In 1926 a Canadian company registered a very similar label in Canada for its Standard Lager beer - The label was obviously inspired by or copied from the Budweiser label - Carling O'Keefe acquired the Standard Lager label in 1950 and 30 years later challenged the Budweiser trademark - The Budweiser label was registered in Canada in 1970 - Subsequently both sought expungement of registration of each other's label - The Federal Court of Appeal held that expungement was properly denied on the grounds of laches and acquiescence by both parties, notwithstanding that the Standard Lager beer label should not have been registered in 1926 - See paragraphs 33 to 37.

Trademarks, Names and Designs - Topic 1804

Trademarks - Infringement - Acts not constituting infringement - Carling O'Keefe produced a beer in Canada under the trademark "Kingsbeer" - Anheuser-Busch produced Budweiser beer and used the slogan "King of Beers" in association with it - The Federal Court of Appeal held that the slogan "King of Beers" did not infringe the Kingsbeer trademark and held that the two were not confusing, because they conveyed different notions - See paragraphs 7 to 18.

Trademarks, Names and Designs - Topic 1816

Trademarks - Infringement - Remedies - Damages - Reference respecting damages - The Federal Court of Appeal in holding that a trial judge correctly refused to order a reference respecting damages for trademark infringement stated that there is no right necessarily to nominal damages where there is no actual damage - See paragraphs 2 to 6.

Cases Noticed:

Underwriters' Survey Bureau Limited et al. v. Massie & Renwick Limited, [1938] Ex. C.R. 103, affd. [1940] S.C.R. 218, dist. [para. 4].

Underwriters' Survey Bureau Limited et al. v. Massie & Renwick Limited, [1941] Ex. C.R. 1, dist. [para. 4].

Pepsi-Cola Company of Canada Limited v. Coca-Cola Company of Canada, Limited, [1940] S.C.R. 17, appld. [paras. 13, 28].

Application by the Pianotist Co. Ltd. (1906), 23 R.P.C. 774, refd to. [para. 13].

General Motors Corporation v. Bellows, [1949] S.C.R. 678, consd. [para. 15].

Rowntree Co. Ltd. v. Paulin Chambers Co. Ltd. et al., [1968] S.C.R. 134, consd. [para. 17].

Williamson Candy Company v. W.J. Crothers Company, [1924] Ex. C.R. 183, appld. [para. 27].

Habib Bank Ltd. v. Habib Bank AG Zurich, [1981] 2 All E.R. 650, appld. [para. 36].

Taylor Fashions Ltd. v. Liverpool Victoria Trustees Ltd., [1981] 1 All E.R. 897, appld. [para. 36].

Statutes Noticed:

Federal Court Rules, rule 480(1) [para. 3].

Trade Marks Act, R.S.C. 1970, c. T-10, sect. 4(1) [para. 7]; sect. 6(1), sect. 6(2), sect. 20 [para. 8].

Trademark and Design Act, R.S.C. 1906, c. 71, sect. 4(c), sect. 11(a), sect. 11(c), sect. 13 [para. 26].

Authors and Works Noticed:

Fox, Canadian Law of Trade Marks and Unfair Competitions (3rd Ed.), p. 312 [para. 28].

Counsel:

H.L. Morphy, D.R. Bereskin and S. Block, for the appellants;

R.E. Dimock and K.D. McKay, for the respondent Carling O'Keefe Breweries.

Solicitors of Record:

Rogers, Bereskin & Parr, Toronto, Ontario, for the appellants;

Sim, Hughes, Toronto, Ontario, for the respondent.

This case was heard on June 10 and 11, 1986, at Toronto, Ontario, before Heald, Mahoney and Stone, JJ., of the Federal Court of Appeal.

On July 3, 1986, Mahoney, J., delivered the following judgment for the Federal Court of Appeal.