When Milk is Not Milk: Dairy Farmers of Canada v. Cytosport, Inc.

monster_product_hero_339x415_chocolate.pngBy Richard Stobbe

You can’t get a trade-mark registration for a word that will deceive consumers. Put into legalese, section 12 of the Canadian Trade-marks Act says a trade-mark is not registrable if it is either “clearly descriptive or deceptively misdescriptive … of the character or quality of the wares or services in association with which it is used or proposed to be used…”

If a trade-mark applies the word “MILK” to a non-dairy product, can that be considered deceptively misdescriptive? This question came up in the trade-marks opposition case of Dairy Farmers of Canada v Cytosport, Inc., 2014 TMOB 148 (CanLII), in which the Dairy Farmers of Canada opposed the registration of the marks the trade-marks MONSTER MILK and MONSTER MLK for use with “Dietary and nutritional supplements for use in athletic training, namely for improving body strength and building muscle, excluding ready to drink beverages.”

The Dairy Farmers essentially argued that the average consumer would believe that the drinks sold under the brand MONSTER MILK would contain “real milk”. In a wide-ranging analysis, which covered the Food and Drug Act, to consideration of Nourishing Coconut Milk Shampoo, as well as references to “milk” in the Oxford Dictionary, the Board ultimately decided that the average consumer would not be deceived, since it would not be apparent which meaning of milk would apply in the case of the MONSTER MILK brand.

This case illustrates the importance of strong affidavit evidence in opposition proceedings: here, the applicant submitted evidence from dictionary meanings, Google search results, and shopping excursions to show common uses of the word MILK in association with other non-dairy products.

Calgary – 07:00 MST

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