No Prohibition: WRANGLER Branded Beer 


Winter 2011 - (InBrief Winter 2011)

InBrief Winter 2011
In the case of Wrangler Apparel Corp. and Big Rock Brewery Limited Partnership , the Federal Court dealt another blow to brand owners seeking to enforce their famous marks outside their core area of business.
Wrangler Apparel Corporation (Wrangler) sought to reverse a decision of the Trade-marks Opposition Board rejecting Wrangler's opposition to an application for the trade mark WRANGLER, filed by Big Rock Brewery Limited Partnership (Big Rock). Big Rock filed the application based on the proposed use of the trade mark in Canada in association with brewed alcoholic beverages.
Wrangler opposed the application on three primary grounds, each of which turned on the issue of potential confusion between Big Rock's proposed use of WRANGLER with beer and Wrangler's use of its registered mark WRANGLER in association with apparel.
Subsection 6(2) of the Trade-marks Act stipulates that trade marks are confusing if it is likely that, in all the surrounding circumstances, a prospective purchaser will be led to the mistaken inference that the wares or services associated with the trade marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
The Opposition Board concluded that, on a balance of probabilities, the average consumer would not likely be confused as to the source of Big Rock's wares.
Wrangler appealed the Board's decision to the Federal Court. The only issue addressed by the Court was the likelihood of confusion.
The Court analyzed the likelihood of confusion, having regard to the enumerated factors under subsection 6(5) of the Trade-marks Act . In relation to the inherent distinctiveness and the extent to which the marks have become known and the length of time the marks have been used, the Court agreed with the Opposition Board's conclusion that these factors favoured Wrangler. While WRANGLER may be somewhat suggestive of the western apparel with which it is used, through extensive use and marketing it had acquired a strong secondary meaning, which led the public to associate the mark with Wrangler's jeans and apparel.

However, like the Opposition Board, the Court concluded that the different nature of the parties' wares and channels of trade favoured Big Rock.
Wrangler argued that because it sponsored rodeo and other western lifestyle events, alongside beer brewers, car manufacturers and telecommunications companies, there was a close association between its apparel and beer. However, neither the Board nor the Court would infer from this that there was a close association between the parties' wares.
In an effort to create a link between apparel and alcoholic beverages, Wrangler submitted several pieces of new evidence on appeal. First, Wrangler asserted that it had considered extending the WRANGLER brand to alcoholic beverages and that it had licensed a company to use the WRANGLER brand to sell whiskey in the southern U.S. and eventually the entire U.S. The licensee had not yet sold any product, but planned to start testing the product shortly. Secondly, Wrangler submitted survey evidence regarding the likelihood of confusion.
The Court disagreed with Wrangler's interpretation of its survey results and accorded little weight to the survey. The Court also accorded little weight to the evidence that Wrangler intended to expand into the beverage market by licensing its mark to a company for use with whiskey. The Court took the view that there was no basis to suggest that the ordinary Canadian consumer would associate WRANGLER brand beer with Wrangler because of its similarity to a brand of whiskey that is not yet on the market in Canada.

The Court noted that the case was very similar to the facts of Mattel , decided by The Supreme Court of Canada in 2006. In that case, the appellant owned the well-known trade mark "Barbie," which had become famous in association with dolls and doll accessories. The appellant sought to prohibit a Montreal restaurant chain from using the name. The Supreme Court of Canada did not agree that the BARBIE mark was so well known that it transcended the doll market and there would be confusion with the restaurant chain, given the significant difference in the nature of the parties' wares and services.
The Court held that the evidence only demonstrated that the WRANGLER mark was well-known in association with jeans and apparel. It did not support the claim that the fame of the mark had transcended into the market of alcoholic beverages. The Court drew a parallel with Mattel, stating:
While Wrangler may wish to leverage its well known mark WRANGLER to sell beer and a variety of other things, Canadian trade-mark law will not always clear its path from would be competitors who seek to use a word from the English language Wrangler has no monopoly over.

Finally, the Court put significant weight on the additional surrounding circumstance that many other parties used the WRANGLER mark in association with their unrelated wares without causing confusion. Chrysler used WRANGLER in association with a vehicle, Goodyear used the mark with tires and another company used the word to sell smokeless tobacco. There were 13 registrations and one allowed application standing in the name of six different owners. These supported Big Rock's contention that the Opponent does not have a monopoly on the word WRANGLER.

The Court concluded that the Board member's decision was correct. In its view, the casual consumer somewhat in a hurry with a vague recollection of Wrangler's WRANGLER mark would, on seeing Big Rock's WRANGLER branded beer, be unlikely to infer that the beer was in some way associated with Wrangler apparel. Consequently, the appeal was dismissed.

Ed.: This article appeared previously in the Toronto Law Journal.

This article appeared in the Lang Michener LLP InBrief Winter 2011.