Canada’s Intellectual Property Firm

Product placement as evidence of a trademark’s fame

Authored byJean-Sébastien Dupont

In a recent decision, the Federal Court found the COHIBA trademarks for cigars and cigarillos to be well-known and iconic in Canada based primarily on expert evidence establishing use of the brand in media, including film, television, music and print. This led the Court to conclude that the fame of the brand extended beyond cigar smokers and to reject an application to register the trademark LAZARO COHIBA for use in association with rum, despite the differences in wares and trades.

Tequila Cuervo (“Cuervo”) applied to register LAZARO COHIBA based on proposed use in Canada in association with “alcoholic beverages, namely rum.” This application was opposed by Empresa Cubana Del Tabaco, trading also as Corporation Habanos (“Habanos”). The main ground of opposition was that the applied-for mark was confusing with Habanos’ trademarks COHIBA and COHIBA & Design (depicted below) registered for use in association with tobacco, including cigars.

 cohiba logo

The only evidence filed by Habanos before the Registrar of Trademarks (“Registrar”) to establish use and reputation of the COHIBA trademarks in Canada was “steady and not insubstantial” sales figures for 1994-1999. The Registrar rejected Habanos’ opposition concluding that the wares and trades of the parties were different and while the COHIBA trademarks had been used in Canada for many years, they were only known to some extent by a relatively small group of purchasers of cigars.

On appeal to the Federal Court (2013 FC 1010), Madam Justice Snider concluded that the COHIBA trademark was well known “to the point of being iconic—outside its sphere of users, and in the general knowledge of the public.” This finding was based on additional expert evidence introduced by Habanos on appeal showing that the COHIBA brand had been referenced widely in film, television, music and other media, such as print and magazines distributed in the United States and Canada. Habanos also adduced expert evidence establishing that smokers are more likely consumers of alcohol products and that there is a relationship in their mind between these products.

Interestingly, no additional evidence was filed by Habanos in the appeal to supplement its limited sales figures filed before the Registrar. As a result, the Court only had the same “not insignificant” sales figures for 1994-1999, that is, almost 15 years prior to its decision.

Despite this and the fact that the Court noted that Habanos could have done more to establish direct knowledge of the COHIBA brand by carrying out a survey of Canadian consumers, Madam Justice Snider was satisfied by the strength of the expert evidence and further noted that there was no doubt that television shows referred to in that evidence, such as “Sex and the City” and “The Simpsons,” were widely seen by Canadians.

Hence, the Court essentially concluded that a trademark was well-known, iconic and famous based primarily upon expert evidence showing “use” of the trademark in films, television shows and other media, despite having limited evidence of actual use of the trademark in the market place and no evidence showing direct knowledge by consumers.

This decision is a welcome development for trademark owners who are in a position to show use of their brand in popular culture because of product placement or otherwise, and who could now use this evidence in Canadian opposition or infringement proceedings to establish a brand’s reputation and strengthen its scope of protection.

We note that Cuervo has appealed the Federal Court’s decision.

If you have any questions regarding the above, please do not hesitate to contact a member of our firm’s Trademarks group.

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