Mexico brewery wins dispute

Cerveceria del Pacifico is not similar to PWB branding, judge rules

PRINCE GEORGE — A Federal Court of Canada judge has thrown out a Pacific Western Brewing Co. Ltd. bid to expunge a Mexican brewer’s trademark for a line of beer with a similar name.

PWB argued the name Cerveceria del Pacifico was confusingly similar to PWB’s various trademarks that were in use prior to the first use of the mark by Cerveceria, but in a judgment issued in September, Justice Luc Martineau found otherwise.

Martineau said the first impression given by the label Cerveceria uses for its Pacifico brand “is of its obviously foreign origin” and that it’s “highly stylized, with many distinctive design elements, including strong and contrasting colours and font in red, gold, blue, green and yellow.”

He further said the label “differs visually, phonetically, and semantically” from all of the marks PWB uses for its Pacific brands of beers.

“There is no resemblance in the design or colour elements. In short, the overall impression created by the mark is that of an imported beer originating from Mexico.”

The ruling includes images of the labels in question.

Martineau also dismissed as without merit PWB’s argument that contrary to a statement on the register, Cerveceria del Pacifico was not first sold in Canada as early as April 1986.

He noted an affidavit from Cerveceria stating the beer was introduced at Expo 86, where it was sold at a Mexican restaurant called Ole Cantina, was not challenged by PWB counsel.

By December 1989, Pacifico was listed with the B.C. Liquor Distribution branch and in August 1990, a registration protecting the mark was issued.

“The delay of almost 25 years before attempting to invalidate the registration weighs heavily against a finding of confusion,” Martineau said of PWB’s action.

According to Martineau, Pacifico was first brewed in Mexico in the early 1900s and was named as such because the first brewery was located in the Pacific Ocean port city of Mazatlan, in the state of Sinaloa.

PWB has since filed an appeal of the decision in the Federal Court of Appeal.

Inshort, the over all impression created by the mark is that of an imported beer originating from Mexico.

JUSTICE LUC MARTINEAU

FEDERAL COURT OF CANADA