‘Morons’ vs beer: Why confusion matters when talking trademark infringement

As a lawyer, I constantly throw around the term “trademark infringement” but it’s not often that I actually explain what this phrase means to our members.

I found a recent trademark case involving morons and beer and couldn’t pass up the opportunity to use it to explain what “trademark infringement” means.  So here we go.

Trademark infringement occurs if someone who is not entitled to use the trademark sells or advertises goods or services in association with a confusing trademark.  Simple, right?  Possibly, but we lawyers like to complicate things by probing deep into the meaning of words.  So what does ‘confusing’ mean?

The Trade-Marks Act provides that two trademarks are confusing if the use of both trademarks is likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person.

Boring, right?  Okay, so let’s find out what ‘confusion’ means using the beer case instead.

This case involved Molson Canada, who owns the ‘Black Horse’ trademark, and San Miguel Brewing, who owns the ‘Red Horse’ trademark.

Red Horse Beer logo.

The judge considered what a consumer would think when faced with the two trademarks and whether use of the two trademarks at the same time would cause confusion.  That consumer is, the judge established, “neither the careful diligent purchaser nor the ‘moron in a hurry’”.   The judge says:

I am of the view that the ordinary beer drinker is sensitive to the names of beers and to what they know and like. The test is premised on the ordinary beer drinking consumer – not on what might be a legal fiction of the non-beer drinking life partner who is asked to pick up beer. 

Clearly a man who knows his beer, unlike his wine drinking life partner, the judge concludes that the two trademarks are distinct from each other and that use of the two trademarks at the same time does not cause confusion.

So, what does this mean in our industry?  Well, I often get asked why we let Major League Soccer use ‘MLS’.

Applying the confusion test, we need to consider what a consumer, who is somewhat familiar with the real estate industry, would think when faced with the two trademarks.   Not being a moron, there is a very low likelihood that the consumer would confuse CREA’s MLS® trademark with the use of ‘MLS’ by Major League Soccer, especially given the fact that the goods and services  provided by Major League Soccer are not real estate related.

Therefore, the answer to this question is that use of our MLS® trademark at the same time as ‘MLS’ by Major League Soccer is not likely to cause confusion and therefore is not likely amount to trademark infringement.  This is why CREA does not take steps to prevent Major League Soccer from using ‘MLS’.

I suppose I could have just told you that short answer from the beginning, but wasn’t it more fun to do it with beer?

The article above is for information purposes and is not legal advice or a substitute for legal counsel.

Allison McLure, former Legal Counsel, provided advice to CREA, boards, and associations on intellectual property law, DDF®, and Canada’s anti-spam legislation, as well as protected CREA’s trademarks and helped members comply with federal legislation and CREA’s trademark rules.


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