Federal Court of Appeal Confirms Use of Pop Culture to Demonstrate Fame of a Mark



By Jonathan Roch, January 23rd, 2015

On January 21, 2015, the Federal Court of Appeal affirmed the Federal Court's decision of October 4, 2013 which refused Tequila Cuervo’s application for the mark LAZARO COHIBA in association with rum.

Federal Court

The Federal Court refused the trademark application for LAZARO COHIBA in association with the proposed use of rum on the basis that it was confusing with the registered COHIBA marks used in association with cigars and tobacco.  

MBM was able to demonstrate that the COHIBA trademarks are widely known across Canada by relying upon references in widely distributed films (Hotel Rwanda, Bad Boys II and Into the Blue), television shows (Sex in the City and The Simpsons), music (including Jay-Z, Lil Wayne, P. Diddy and Busta Rhymes) and magazines (Cigar Aficionado). 

Expert evidence was adduced to explain that the COHIBA references described above were more than the average product placement.  Rather, the COHIBA references were a means of borrowing the credibility of the brand as a symbol of status, wealth, power, intrigue, luxury and mystery and of reflecting those qualities upon the characters of the pop culture references. Expert evidence also established that smokers are more likely consumers of alcohol products and that in the minds of smokers these products are linked.  Finally, additional evidence further demonstrated an overlap in the alcohol and tobacco/cigar trades (LCBO and SAQ agency stores).

Federal Court of Appeal

In its appeal, Tequila Cuervo asserted, amongst other arguments, that the Federal Court’s determination that the COHIBA marks are iconic and/or famous ignored the Supreme Court principles for dealing with famous marks, adopted a new test to determine fame, and fundamentally changed the test for assessing a likelihood of confusion for famous marks. Moreover, they pleaded that the lower court erroneously treated the fame of the COHIBA marks as an overarching factor in the evaluation of the likelihood of confusion. The Court ruled that no errors had been committed and dismissed the appeal with costs.

This decision is significant as it is a positive acknowledgment by the Federal Court of Appeal that the notoriety of a brand may be established by references to the brand in popular culture.  This case is an example of how trademark practitioners should not be afraid to creatively use the evidence at their disposal to advance their clients’ causes.

For more information please contact Jonathan Roch or Scott Miller

Jonathan Roch, Partner 
T: 613.801.1059
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

Scott Miller, Partner 
T: 613.801.1099
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.


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