By: Josh H. Escovedo
Another intellectual property dispute has arisen in the brewing industry. This time, however, the battle took place on Canadian soil. British Columbia based Pacific Western Brewing (“PWB”) sued renowned Mexican brewery Cerveceria del Pacifico (“CDP”), arguing the latter’s name was confusingly similar to PWB’s various brew-related trademarks. For those who do not know, Cerveceria del Pacifico is the brewery responsible for Cerveza Pacifico Clara, better known as Pacifico. Although the claim concerns numerous PWB marks, the lawsuit seems to center on the alleged similarity between their Pacific Pilsner marks and CDP’s Pacifico marks. After analyzing the merits of this case, I cannot understand why PWB felt the need to pursue this lawsuit. Aside from both marks generally using the word “Pacific,” the marks are vastly different.
First, Cerveza Pacifico Clara is clearly distinct from Pacific Pilsner. Even if you compare the commonly used name Pacifico to Pacific Pilsner, the marks are distinguishable, albeit slightly more similar. Further, the respective design marks are distinct. Pacifico’s mark is generally presented against a bright yellow background with the words appearing in red and a different shade of yellow. The logo also features a lifesaver encompassing a hill with the port city of Mazatlan’s lighthouse hill, known locally as Cerro Del Creston. In contrast, Pacific Pilsner’s mark is generally presented against a white background with the words appearing in red and iridescent blue. Although the PWB designs vary slightly, they consistently include a sailboat. Based on these descriptions, it should be clear that the marks are patently distinguishable.
Justice Luc Martineau, who presided over the case, disagreed with PWB’s assertions. Justice Martineau said the first impression given by CDP’s mark for Pacifico “is of its obviously foreign origin” and that it’s “highly stylized with many distinctive design elements, including strong and contrasting colours [sic] and font in red, gold, blue, green, and yellow.” Justice Martineau also stated that the mark “differs visually, phonetically, and semantically” from all of the marks PWB uses for its Pacific beers. According to Justice Martineau “There is no resemblance in the design or colour [sic] elements. In short, the overall impression created by the mark is that of an imported beer originating from Mexico.”
Martineau also dismissed PWB’s allegation that CDP committed a fraud on the register when it represented that Pacifico was first sold in Canada as early as April 1986. Dismissing this allegation, Justice Martineau noted that PWB failed to challenge an affidavit from CDP that it first introduced its beers to Canada in 1986, at a Mexican restaurant called Ole Cantina.
Later, in December 1989, Pacifico was first listed with the British Columbia Liquor Distribution branch. Then, in August 1990, a registration protecting the mark was issued. This is important because Justice Martineau found that PWB’s delay of almost 25 years to bring its claims weighed heavily against a finding of likelihood of confusion and eventually ruled in favor of CDP. PWB has subsequently filed an appeal of the decision in the Federal Court of Appeal, but based on Justice Martineau’s ruling, as well as the clear distinction between these marks, the trial court is unlikely to be overturned.