• Original Decision Finding that the DOMAINE PINNACLE Word and Design Mark Is Not Confusing with the Registered Pinnacles Mark Is Restored on Appeal
  • January 4, 2017 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Domaines Pinnacle Inc. v. Constellation Brands Inc., 2016 FCA 302

    The Federal Court of Appeal has restored a decision of the Register of Trademarks (2013 TMOB 153) that held that an application for a word and design mark for DOMAINE PINNACLE is unlikely to cause confusion with the registered mark PINNACLES.

    Domaines Pinnacle had sought to register the word and design mark DOMAINE PINNACLE in relation with the sale of apple-based alcoholic and non-alcoholic beverages and other apple products. The Constellation respondents opposed, arguing it would be confusing with its own registered PINNACLES mark in relation with the sale of (grape) wine.

    The Trademarks Opposition Board ("TMOB") held that confusion was unlikely to occur. The Federal Court, on judicial review, determined that the Board had erred in not considering the potential uses that the respondents might have made of their registered mark, as required by Masterpiece and Pizzaiolo. That Federal Court decision (2015 FC 1083) was now found to have been made on a correctness standard, which it was not entitled to do.

    The Court of Appeal looked at the original TMOB decision on the reasonableness standard and held that the full scope of the rights granted for the registered PINNACLES mark would not permit them to use the distinctive graphic elements - the apple and snowflake design - that the Board identified as being central to the distinctiveness of the appellant's mark. (A distinction was also drawn between apple-based and grape-based beverages.)

    The Court of Appeal noted that "Pinnacle" was a commonly used term with little distinctiveness. Therefore, the Court of Appeal held that the design context must play a greater role in distinguishing the respondents' mark from the numerous other registered marks in Canada that feature the word "Pinnacle".

    As a result, the original decision of the TMOB was restored by dismissing the appeal to the Federal Court.