(Disponible uniquement en anglais.)
Constellation Brands Inc. v. Domaines Pinnacle Inc., 2015 FC 1083 (Gagné, J.)
September 16, 2015
Mortimer Freiheit of Freiheit Legal and Bruno Barrette and Yann Canneva of Barrette Legal Inc. for the Applicants Constellation Brands Inc., Constellation Brands Québec Omc., Constellation Brands Canada Inc., Sumac Ridge Estate Winery Ltd., and Franciscan Wineyards Inc.
Rachid Benmokran and Robert Brouillette of Brouillette & Associés for the Respondent Domaines Pinnacle Inc.
This is an appeal brought by the Applicants, Constellation Brands Inc. et al., of a TMOB decision, wherein the TMOB decided that the Respondent, Domaines Pinnacle Inc.’s, application for the trademark DOMAINE PINNACLES & DESIGN (in association with alcoholic beverages and non-alcoholic products) was not confusingly similar to one of the Applicant’s (Franciscan Wineyards Inc.) registered trademark for the word PINNACLES (in association with wine).
The Applicants argued that the TMOB erred in fact and in law with respect to the test of confusion pursuant to subsection 6(5) of the Trade-marks Act. The Applicants also submitted new evidence in the form of: (i) adding additional paragraphs to affidavits that were previously before the TMOB; (ii) additional affidavits of Canadian consumers touching on their geographical knowledge of “Pinnacles national monument or park” in California and “Mont Pinacle” in Quebec; and (iii) sales data concerning the geographical presence of the Respondent’s product and evidence of actual use of the Respondent’s trademark on the market. In view of this new evidence, the Applicants also argued that the matter should be considered de novo.
Having regard to the nature and quality of the new evidence submitted, the Court decided that the evidence was not of such probative value as to have materially changed the TMOB’s analysis. With regard to the additional paragraphs to some of the affidavits, contradictory positions were taken by the affiant thereby decreasing the quality of the new evidence. With regard to the additional affidavits, the Court decided that they were of no probative value. The affiants of these affidavits were not duly sworn and were mostly selected by the Applicants amongst acquaintances (and therefore did not represent the average Canadian consumer). Also, these affidavits were not scientific surveys as discussed in Masterpiece. With regard to the Respondent’s sales data and actual use of the Respondent’s trademark, the Respondent’s sales data, while primarily concentrated in Quebec, were significant outside of Quebec as well. In addition, analysis should be focused on the terms of the application and what a registration would authorize the Respondent to do, not what the Respondent happens to be doing at the moment.
Having regard to whether the TMOB erred in fact and in law with respect to the test of confusion pursuant to subsection 6(5) of the Trade-marks Act, the Court decided that the TMOB erred on its “global analysis” of the factors under the confusion test. The Court found that, as long as the confusion analysis uses a registered word mark as the basis for the analysis (as is the case herein), word marks, “having bare words, could be presented in many ways under [a] registration”. Particularly, “single use [does] not reflect the entire scope of exclusive rights” granted under a trademark registration. In addition, and given that the TMOB’s analysis was based on the visual element and the ideas suggested by the trademarks, “[t]he Board should have taken into account that the registered word mark PINNACLE could have had a different style of lettering, colour or design which would have suggested, for example, the “idea of cold and winter”, similarly to the Respondent’s application.
The TMOB’s decision is quashed, and the matter is remitted back to a different member of the TMOB for reconsideration.
By: Pablo Tseng, Gowling Lafleur Henderson LLP