Dead Frog in a Clear Bottle Leaves Sleeman Seeing Red

Sleeman Breweries has reportedly filed a lawsuit against Dead Frog Brewery over Dead Frog’s use of a clear glass bottle design, in association with its beer. Sleeman is the third largest brewery in Canada; Dead Frog is a small and relatively new enterprise located in Aldergrove, BC. Invoking references to the classic David v. Goliath story, the President of Dead Frog has stated that the lawsuit is a silly waste of time, that there are many similar clear glass bottles on the market, and that the raised glass frog design on his bottles makes his products distinctive from those of Sleeman.

For its part, Sleeman will likely rely on its Canadian Trademark Registration for a distinguishing guise. A distinguishing guise is a type of trade-mark that is a distinctive shaping of goods or their containers or a mode of packaging or wrapping such goods. To obtain a registration for a distinguishing guise in Canada, an applicant must prove that the distinguishing guise is, in fact, distinctive of the applicant’s wares in Canada. This normally requires proof of significant sales and advertising in every region of the country over an extended period of time.

In 2007, Sleeman obtained a registration for the combination of a particular shape applied to a clear glass bottle with a coloured neck label. However, the claimed bottle shape includes reference to the raised characters “SLEEMAN BREWERY 1834 and Beaver Maple Leaf and Chevron Design”. (Interestingly, Sleeman had previously applied to register a clear bottle by itself, with no reference to any raised characters or any neck label, but that application went abandoned in early 2000 after objection by the Canadian Intellectual Property Office examiner.)

The question, then, will boil down to whether Dead Frog’s clear glass bottle (adorned with a frog design) is so similar to Sleeman’s distinguishing guise registration (including its distinctive words and design elements) that a court believes confusion is likely to arise in the marketplace.

We’ll keep you posted on further developments in the case.

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Neil Melliship

Neil Melliship is a Partner and co-chair of the Intellectual Property and Information Technology practice groups at the Vancouver-based Canadian law firm of Clark Wilson LLP. Neil is a lawyer and a registered Canadian Trademark Agent, who actively speaks and writes on trademark and other IP issues including those relating to the Internet, domain name disputes and e-commerce. Neil is consistently rated as a Leading Trademark Practitioner—Individuals: Prosecution and Strategy, by the World Trademark Review (WTR) 1000. Neil is also listed in the Canadian Legal Lexpert Directory as Rated Repeatedly Recommended in the area of Intellectual Property. He has also been repeatedly named by Best Lawyers in Canada in the categories of Intellectual Property Law, Technology Law and Information Technology Law.