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On November 5, 2003, the Trial Division of the Federal Court issued a judgment confirming the Registrar’s decision in trade-mark opposition proceedings involving Molson Canada («Molson») and Anheuser-Bush Incorporated («Anheuser-Bush»)(1).

Molson opposed the registration of the trade-mark MICHELOB GOLDEN DRAFT by Anheuser-Bush on the grounds that it creates confusion with its trade-marks comprising the word GOLDEN.

An interesting question was raised before the Registrar regarding the admissibility of a search report filed with the affidavit evidence. The affiant stated that she conducted a search of the CD-NAMESEARCH database on CD-ROM complied from the records of the Canadian Trade Marks Office to locate any active applications or registrations containing the word GOLDEN in the trade mark. The computerized information pages generated by the computer for her search were printed and annexed to the affidavit.

Molson submitted that no weight should be given the printouts since the accuracy of the information was not verified with the actual records located in the Trade Marks Office.

The Registrar held that the information contained in the CD-NAMESEARCH system is provided by and relied upon by the Trade Marks Office. Citing an unreported decision of the Trade Marks Opposition Board(2), he concluded that the results of the search were reliable and admissible:

"However, the information contained in the CD-NAMESEARCH system is that provided by and relied upon by the Trade marks Office. In this regard, in Amway Corporation v. Nutravite Pharmaceutical Inc., a yet unreported decision of the Trade Marks Opposition Board dated February 17, 2001 involving the trade mark NUTRAVITA, application No. 790,667, Board Member Martin commented as follows concerning the admissibility of the results of a search on the CD-NAMESEARCH system as follows:

The opponent objected to the admissibility of Ms. Harris’ search results on the basis that they comprise inadmissible hearsay since the database searched by Ms. Harris is owned by a third party, CDName Search Corp. Technically, there may be some merit in the opponent’s objection. However, given that the Trade Marks Office provides the information for the third party database and relies on it itself in its own public search room suggests that it is a reliable reflection of the Office records. Thus, I consider Ms. Harris’ search results to be reliable and admissible."

The Registrar concluded that the existence of more than 250 trade mark registrations for the word GOLDEN, covering a broad range of wares, indicates that the average consumer would be able to distinguish these marks in the marketplace. The Federal Court confirmed his decision.

Over the last decade, Marque d’Or has invested over $6,000,000 in research to develop search engines perfectly adapted to name and trade-mark searches in Canada. This investment has led the Canadian Intellectual Property Office to select Marque d’or’s technology to conduct its official trade-mark searches before proceeding to registration. Marque d’or is now the official supplier of CIPO for all their searches.

Marque d’or, under the name of Onscope can thus offer to its clientele across Canada a thoroughly reliable service for name and trade-mark searches. Onscope offers a full range of trade-mark services from the comprehensive trade-mark report to the most advanced set of tools for IP searching that can be found online. Onscope also offers a variety of monitoring services to its clients from the status watch to the confusion watch including a competition watch.

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(1) Molson Canada v. Anheuser-Bush, Incorporated, 2003 FC 1287, Docket T-926-01, 5 November 2003, Honourable Justice O’Keefe.

(2) Amway Corporation v. Nutravite Pharmaceutical Inc., Trade Marks Opposition Board, 17 February 2001. This decision was confirmed by the Federal Court, Trial Division. The Federal Court did not specifically address the issue of admissibility but relied on the search report to reach its decision. Alticor Inc. (formerly Amway Corporation) v. Nutravite Pharmaceuticals Inc., 2003 FCT 718, Docket T-653-01, 9 June 2003, Honourable Justice Kelen.