Another Win for MBM

Another Win for MBM – Federal Court of Canada Overturns Trademark Opposition Board and Recognizes the Overlap Between Alcohol and Tobacco (Cigars) 

EMPRESSA CUBANA DEL TABACO dba CUBATABACO et al.  v. TEQUILA CUERVO, S.A DE C.V. (2013) FC 1010

Scott Miller and Jonathan Roch, October 8, 2013

127 1Factual Overview

Tequila Cuervo filed a Canadian trade-mark application for the trademark LAZARO COHIBA, disclaiming the word LAZARO.  The application was based on proposed use for “alcoholic beverages, namely rum”. The application was opposed by Cubatabaco on grounds including that LAZARO COHIBA was not registrable based on the likelihood of confusion with the COHIBA registered trademarks for cigars and tobacco.  On September 30, 2008, the Trademark Opposition Board concluded that “in view of the differences between the wares and trades of the parties and the fact that the opponents have not established an extensive reputation for their marks “ that the LAZARO COHIBA trademark was registrable. 

Following the Trademark Opposition Board decision MBM was appointed as counsel to Cubatabaco.  An appeal of the Board’s decision was filed by application to the Federal Court.  The Federal Court overturned the Board’s decision and refused the registration of the LAZARO COHIBA trademark application.

Fame (Extensive Reputation) Demonstrating Without a Survey

MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by filing new evidence to establish that COHIBA has been referenced in films, television, music and other media, such as print magazines distributed in the United States and Canada.  The fame of the COHIBA trademarks was established not by an expensive survey but by creatively revealing that pop media has used COHIBA cigars to demonstrate social status and wealth. The decision is equally important because it recognizes that for some iconic brands, personal ownership or use of the product is not essential to the awareness of the trademark. Click here to view a copy of the decision. 

Conclusion

There are multiple ways for trademark professionals to establish confusion.  While in some incidents expensive surveys may be necessary that will not always be the case.  

Please contact Scott Miller or Jonathan Roch for more information.

 

Submit to DiggSubmit to FacebookSubmit to Google BookmarksSubmit to StumbleuponSubmit to TwitterSubmit to LinkedIn

cb photo 70 563d0138742d9

DR. Stuart Bristowe

Patent Agent


Stuart’s practice focuses on the drafting and prosecution of patent applications in various areas of technology.MBM read_more_btn

MBM logo

About MBM

 The process of invention is complete only with the IP protection provided in law. That's where MBM comes in. We match our clients' creative thinking with the creative protection needed to achieve their goals.Read More About MBM

Protecting Plant Varieties in Canada

Protection for new plant varieties has been available for just over twenty years in Canada.  As new technologies are sought for increasing and improving crop production, Plant Breeders’ Rights help to encourage such innovation by rewarding plant breeders with exclusive rights to sell, and to produce for sale, the reproductive material of their new plant variety. Read More