In Steelbird Ghetto Properties LLC v. Beau's All Natural Brewing Company Ltd, Steelbird Ghetto Properties LLC sought an Order striking the trademark B-SIDE BREWING LABEL which was registered to Beau's All Natural Brewing Company Ltd.
Beau's did not respond to Steelbird's trademark expungement application, and Justice O'Reilly allowed it on the basis that Steelbird had established both prior use of the "B-Side" mark and confusion.
Justice O'Reilly determined that "the B-Side mark is inherently distinctive as applied to alcoholic beverages. It does not allude either to the product or its characteristics. It is a term used in relation to vinyl records, not drinks."
He found that Steelbird had established the use of the "B-Side" mark in association with its own wine product years before the date of first use asserted by Beau's. Applying the "casual consumer somewhat in a hurry" test from the Supreme Court of Canada's decision in Mattel, Justice O'Reilly concluded that Beau's registered mark was confusing with Steelbird's earlier mark because both marks were applied to alcoholic products in the premium category, were sold in the same store, and the marks were "essentially identical."
At Steelbird's request, Justice O'Reilly allowed 10 days to file submissions regarding Steelbird's costs award.
A copy of the decision can be found here.
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