Coors Brewing Co. et al. v. Anheuser-Busch LLC, (2014) 460 F.T.R. 90 (FC)

• Judge: Gleason, J.
• Court: Federal Court (Canada)
• Case Date: April 15, 2014
• Jurisdiction: Canada (Federal)
• Citations: (2014), 460 F.T.R. 90 (FC);2014 FC 716

Coors Brewing Co. v. Anheuser-Busch LLC (2014), 460 F.T.R. 90 (FC)

MLB headnote and full text

[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2014] F.T.R. TBEd. JL.058

Coors Brewing Company and Molson Canada 2005 (applicants) v. Anheuser-Busch, LLC (respondent)

(T-1416-13; 2014 FC 716; 2014 CF 716)

Indexed As: Coors Brewing Co. et al. v. Anheuser-Busch LLC

Federal Court

Gleason, J.

July 18, 2014.

Summary:

Both parties used their respective trademarks in association with beer. The applicants ("Molson Coors") applied for expungement of the respondent's ("Anheuser") GRAB SOME BUDS registration, under s. 57(1) of the Trade-marks Act. Anheuser had used the trademark in both Canada and the U.S. for the last several years. Molson Coors asserted that it was not open to Anheuser to make its initial application based on intended use in Canada and then to amend its application to rely on a pending U.S. registration where it had not yet started to use the mark in the U.S. at the date it originally made its Canadian application.

The Federal Court dismissed the application.

Trademarks, Names and Designs - Topic 712

Trademarks - Registration - General - Opposition - General - [See Trademarks, Names and Designs - Topic 889.6 ].

Trademarks, Names and Designs - Topic 886

Trademarks - Registration - Expungement of mark - Grounds - General - The Federal Court summarized the law on invalidity of trademark registrations - See paragraph 38.

Trademarks, Names and Designs - Topic 889.6

Trademarks - Registration - Expungement of mark - Grounds - False declarations (incl. material omissions) - Both parties used their respective trademarks in association with beer - The applicants ("Molson Coors") applied for expungement of the respondent's ("Anheuser") GRAB SOME BUDS registration - Molson Coors asserted that it was not open to Anheuser to make its initial application based on intended use in Canada and then to amend its application to rely on a pending U.S. registration where it had not yet started to use the mark in the U.S. at the date it originally made its Canadian application - Anheuser claimed that this was an expungement application, not an opposition, and that the relevant case law required there to have been a material or fraudulent misrepresentation in the registration application before a trademark registration could be expunged - The Federal Court held that Anheuser's argument was a complete answer to the application - "[T]he bases for expungement under section 57 of the Trade-marks Act are narrower than those which might give rise to a successful opposition under section 38 of the Act, and under these narrower grounds, there is no basis for expungement in this case" - On the filing date (September 24, 2010), Anheuser's Canadian application was based on proposed use, so there was no statement that it had used the trademark in the U.S. when in fact it had not - Anheuser subsequently amended its application to withdraw the proposed use basis, added a claim of "use and registration abroad" under s. 30(d) of the Act, and filed a statement indicating that it had used the trademark in association with beer in the U.S. - At the time of that declaration the statement was true, as Anheuser had commenced actual use of the trademark in the U.S. as of September 24, 2010 - See paragraphs 32 to 42.

Cases Noticed:

Thymes LLC v. Reitmans (Canada) Ltd. (2013), 426 F.T.R. 305; 2013 FC 127, consd. [paras. 3, 25 et seq.].

WCC Containers Sales Ltd. v. Haul-All Equipment Ltd. (2003), 238 F.T.R. 45; 2003 FC 962, refd to. [para. 27].

General Motors du Canada et al. v. Décarie Motors Inc. et al., [2001] 1 F.C. 665; 264 N.R. 69 (F.C.A.), refd to. [para. 27].

Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161; 61 C.P.R.(3d) 12 (T.D.), refd to. [para. 27].

Georgia Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R.(3d) 469 (T.M.O.B.), refd to. [para. 28].

Parfums de Coeur Ltd. v. Asta (2009), 339 F.T.R. 146; 2009 FC 21, refd to. [para. 30].

Miranda Aluminum Inc. v. Miranda Windows & Doors Inc. (2010), 401 N.R. 194; 2010 FCA 104, refd to. [para. 30].

Marchands Ro-Na Inc. v. Tefal Société Anonyme (1981), 55 C.P.R.(2d) 27 (F.C.), refd to. [para. 31].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 16(2) [para. 19]; sect. 18(1) [para. 16]; sect. 30(b), sect. 30(d) [para. 20]; sect. 38(1), sect. 38(2) [para. 15]; sect. 57(1) [para. 14].

Trade-marks Act Regulations (Can.), Trademarks Regulations, SOR/96-195, sect. 32 [para. 20].

Trademarks Regulations - see Trade-marks Act Regulations (Can.).

Authors and Works Noticed:

Fox, Harold G., Canadian Law of Trade-Marks and Unfair Competition (3rd Ed. 1972), pp. 252, 253 [para. 29].

Counsel:

John S. Macera and Susan Beaubien, for the applicants;

Mark Robbins, for the respondent.

Solicitors of Record:

Macera & Jarzyna LLP, Ottawa, Ontario, for the applicants;

Bereskin & Parr LLP, Toronto, Ontario, for the respondent.

This application for expungement was heard at Ottawa, Ontario, on April 15, 2014, before Gleason, J., of the Federal Court, who delivered the following reasons for judgment and judgment, dated July 18, 2014.