The trademark applicant, Domaines Pinnacle Inc., was a producer of apple-based alcoholic and non-alcoholic beverages and foods. The trademark opponent was a subsidiary of Constellation Brands Inc, which produced and distributed wines. The applicant applied for DOMMAINES PINNACLE & Design (depicted below).
The opponent opposed the mark based on confusion with its word mark, PINNACLES. The Federal Court of Appeal, allowed the appeal, set aside the decision of the Federal Court (2015 FC 1083), and found that the decision of the Trade Mark Opposition Board (TMOB) was reasonable. The TMOB had decided that the applied for mark was sufficiently distinctive. The apple-based design distinguished the mark from the grape-based wines of the opponent and the overall mark communicated a distinctive idea of ice and winter. Furthermore, the opponent’s trademark rights would not permit it to use the same design as the applicant since that would infringe the applicant’s copyright. The court found that when a mark employs a common word as the central element, design and context must play a greater role in distinguishing the mark from the numerous other marks which employ the same common words.