Creative Trade-marks for Wine

Applications to the Canadian Trade-marks Registrar evidence the growing trend towards ever more interesting and entertaining wine labels. Witness the following marks advertised in the Canadian Trade-marks Journal over the course of the last 3 months.

  • Mighty Good Water (Application No. 1,261,728),
  • Eighty Links (Application No. 1,268,597),
  • Dancing Bull (Application No. 1,286,717),
  • Brain Storm (Application No. 1,289,532),
  • Pick Axe (Application No. 1,263,838),
  • Two Fins (Application No. 1,281,971),
  • Funky Llama (Application No. 1,289,469),
  • Fish Hoek (Application No. 1,261,072),
  • Crackerjack (Application No. 1,271,199),
  • Pizza Red (Application No. 1,270,326),
  • Monkey Trail (Application No. 1,285,774),
  • Sweet Revenge (Application No. 1,283,146),
  • Midnight Leap (Application No. 1,283,146),
  • Bad Dog (Application No. 1,223,732),
  • Leap of Faith (Application No. 1,269,547),
  • Rusty Shed, (Application No. 1,280,041).

Of these 15 marks, 6 are Australian in origin, namely, EIGHTY LINKS, PICK AXE, TWO FINS, CRACKERJACK, PIZZA RED and MIDNIGHT LEAP, 4 are sought by Canadian companies, namely, BRAINSTORM, MONKEY TRAIL, SWEET REVENGE and RUSTY SHED. The names are creative and, it would appear, distinctive.

One of the advertised marks, BAD DOG is not just for wine. The mark is also sought for use in association with various clothing, table ware and dog toys, as well as the services of “wine event sponsorships and dog event sponsorships”.

David, Goliath And Reverse Confusion

Microsoft is once again at the forefront of a trademark infringement dispute , though this time the David in the story is on a bit weaker ground – it sells construction management software under the FOREFRONT brand and MS recently announced it will begin selling security software under that same brand – so clearly the claimed goods are different, but the marks are identical and there could be overlap in the channels of trade. Reading between the lines, the earlier user here is worried about reverse confusion, which occurs where a later user floods the market with its brand, subsuming the earlier user’s more modest reputation.

Though an established cause of action in the U.S., it’s only recently been recognized as being actionable in one Canadian case – however, in that case the A&W fast food chain was unable, on the facts, to prove that it had a cause of action against McDonalds in a battle of their respective CHICKEN GRILL and CHICKEN McGRILL sandwiches.

Branding Canada: Official Marks

Noting an August 15th post on the Strategic Name Development Blog, which comments that Canada is a great brand but it needs marketing.

While we appreciate that trade-mark registration is only a small part of an overall branding and marketing campaign, it appears from the Canadian Trade-mark Register that the government organizations responsible for promoting tourism in Canada and its provinces and territories are taking steps towards developing a brand. For example, Tourism BC has a number of marks on the Canadian Trade-mark Register, including a number of variations of SUPER NATURAL BRITISH COLUMBIA. The Greater Vancouver Convention and Visitors Bureau has obtained 100 DAYS OF SUMMER, along with a number of other marks.

Other favourites include: Nunavut’s UNTAMED UNSPOILED UNDISCOVERED (which is not on the Trade-mark Register, however); Saskatchewan’s LAND OF LIVING SKIES; and Quebec’s PROVIDING EMOTIONS SINCE 1534 (FOURNISSEUR D’ÉMOTIONS DEPUIS 1534, if you prefer the French).

With the exception of UNTAMED UNSPOILED AND UNDISCOVERED, all these marks are registered as “Official Marks” under section 9(1)(n)(iii) of Canada’s Trade-marks Act, a provision that gives these “public authorities” an advantage over the average commercial enterprise seeking to register trade-marks. Registration of such marks does not involve an opposition process and does not require renewal. There are no fees to pay and no provisions regarding cancellation. The public authority may prohibit others from using the mark with all goods and services and not just those in respect of which the public authority can establish use. (For more details on official marks generally see this.) Government entities do not always resort to section 9(1)(n)(iii). The Canadian Tourism Commission has obtained Official Mark status for PURE CANADA and CANADA PUR, but has registered THE WORLD NEEDS MORE CANADA & Design as an ordinary trade-mark.

Given section 9, it is perhaps surprising that Canadians, and more particularly their public authorities, are not more aggressive about establishing brands, or at least trade-marks. We are still waiting for something as provocative as Australia’s SO WHERE THE BLOODY HELL ARE YOU?, or better yet, Las Vegas’ WHAT HAPPENS HERE, STAYS HERE.

Branding Blogs List

One of the trends that we intend to track is how trade-marks fit within the brand development process. To that end, we’ve created the list below to help explore the branding blogosphere. Do you have, or know of, a great blog that’s missing? Let us know by sending a note to Larry Munn.

Branding Blogs List:

Top 100 Brands

It seems appropriate to kick off a new trade-mark blog with some commentary on the recent BusinessWeek Online/Interbrand Top 100 Brands 2006

Not surprisingly, with 7 out of the top 10 and 51 out of the top 100, U.S. brands dominated the list, though a bit less than I thought they would – after number 70, European brands clearly dominate, though the value of those brands is much less than many of the higher ranked U.S. heavyweights. Also, the methodology used by Interbrand necessarily led to a more international result – the criteria used disqualified VISA, CNN and WALMART.

Technology brands dominate the top 6 and then are more evenly distributed farther down the list. No Canadian brand even made the list. I suppose Canada could get an honourable mention for eBay at no. 55 – the founder of that business being a transplanted Canuck.

Probably the most significant thing to note is the actual monetary value attributed to these brands – a whopping $67 billion to #1 ranked COCA-COLA for example. Helps to explain why trade-mark owners and their lawyers are so quick to enforce any perceived harm to their brands.