March 22, 2022
The Federal Court has dismissed an appeal brought by Blyth Cowbells Brewing Inc. (“Blyth”) challenging a February 23, 2021 decision of the Opposition Board for the Registrar of Trademarks (the “Board”). The Board rejected Blyth’s trademark application no. 1,755,747 for the registration of the following mark (the “Cowbell Mark”) in association with brewery goods and services:
In Blyth Cowbells Brewing Inc. v. Bellwoods Brewery Inc., 2022 FC 248, the Federal Court upheld the Board’s decision and confirmed the protection of certain trademarks owned by the respondents, Bellwoods Brewery Inc. and Bellwoods Holdings Inc. (collectively, “Bellwoods”), namely TMA859,184 (the “Bellwoods & Bell Mark”) and TMA878,789 (the “Bell Mark”):
Blyth and Bellwoods are both craft breweries based in Ontario, Canada.
Bellwoods obtained trademark registrations for the Bellwoods & Bell Mark (which displays the words “Bellwoods Brewery”) and Bell Mark in 2013 and 2014, respectively.
Blyth filed an application for the Cowbell Mark in November 2015 (the “Application”). On January 5, 2017, Bellwoods filed a Statement of Opposition, opposing the Cowbell Mark on the following grounds:
Contrary to section 30(e) of the Trademarks Act, RSC 1985, c T-13 (the “Act”), Blyth could not have been satisfied so as to make the statement that it intended to use the Cowbell Mark in Canada in association with the proposed goods and services, in light of Bellwoods’ marks;
Contrary to section 30(i) of the Act, Blyth could not have been satisfied that it was entitled to use the Cowbell Mark in Canada in association with the goods and services described in the Application. In particular, Blyth could not have made this statement in light of Bellwoods’ use, filing, and registration of Bellwoods’ marks;
Pursuant to sections 38(2) and 12(1)(d) of the Act, the Cowbell Mark is not registrable because it is confusing with Bellwoods’ marks, which are registered; and
The Cowbell Mark is not distinctive within the meaning of section 2 of the Act.
The Board’s Decision
The Board found that Bellwoods’ strongest argument was non-registrability due to confusion with Bellwoods’ second trademark, the Bell Mark, and focused its analysis on that mark.
In rejecting Blyth’s Application, the Board considered, among other things, that both marks are bell designs and bear a fair degree of resemblance, the Bell Mark has become slightly better known in Canada than Blyth’s Cowbell Mark, and that the parties offer similar goods and services in association with their marks.
Blyth appealed the Board’s decision.
Federal Court Rejects Blyth’s Appeal
The burden of proof in an opposition proceeding rests on the trademark applicant to show on a balance of probabilities that there is no likelihood of confusion. In other words, it was up to Blyth to prove, on balance, that its Cowbell Mark was not confusing with the Bell Mark.
The Federal Court considered Justice Rothstein’s analysis in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 to be the appropriate test for determining whether a mark is confusing:
The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the [mark], at a time when he or she has no more than an imperfect recollection of the [prior] trade-marks, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks. (para. 40)
In applying the above-noted test, the Federal Court also considered the non-exhaustive list of factors set out in subsection 6(5) of the Act, including: the degree of resemblance, the length of time the marks were in use, the nature of the goods, business and trade, the inherent distinctiveness of the marks and the extent to which the marks have become known.
The Federal Court found that nearly every factor favoured Bellwoods and dismissed Blyth’s appeal.
Authors: Em Windrim and Larissa Fulop