Supreme Court of Canada
Pugsley, Dingman & Co. Ltd. v. The Proctor & Gamble Co., [1929] S.C.R. 442
Date: 1929-04-30
In the Matter of the Petition of the Proctor & Gamble Company, and in the Matter of a Specific Trade-Mark.
Pugsley, Dingman & Company, Limited (Objecting Party) Appellant;
and
The Proctor & Gamble Company (Petitioner) Respondent.
Pugsley, Dingman & Company, Limited (Defendant) Appellant;
and
The Proctor & Gamble Company (Plaintiff) Respondent.
1929: February 28; 1929: March 1; 1929: April 30.
Present: Duff, Newcombe, Rinfret, Lamont and Smith JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Trade-mark—Suit to vary registration of specific trade-mark by restricting its use—Class merchandise of a “particular description” (Trade-Mark and Design Act, R.S.C., 1927, c. 201, s. 4)—Distinction in the trade—Nature and uses of, and course of trading in, the goods—Refusal of registration of proposed trade-mark—Alleged resemblance to existing trade-mark—Possibility of deception—Onus in attacking decision of departmental tribunal—Use on goods of name of predecessors in title.
[Page 443]
Appellant had a registered specific trade-mark “Cameo Soap” to be used in connection with the sale of soap, and for many years had manufactured and sold a yellow bar soap under that name. There is a distinction broadly observed in the soap trade between “laundry soap” and “toilet soap,” depending largely upon shape, dimensions, and convenience or indication for use; but some soaps classified as “laundry soaps” are extensively used for toilet purposes, and laundry soaps and toilet soaps are largely sold by the same dealers. Appellant’s said soap, although listed in its catalogues and price lists, and known in the trade, as a “laundry soap,” was extensively used also for toilet purposes. In February, 1927, appellant decided to produce and sell a white soap in cake form suitable for toilet purposes, and to use in connection therewith said trade-mark. This soap was first announced in its catalogue in January, 1928. Respondent had, in 1926, applied for, and in January, 1927, obtained, in the United States, registration of the word “Camay” as a specific trade-mark for “toilet soap”; and in May, 1927, applied in Canada to register “Camay” as a specific trade-mark to be used in connection with the sale of a “toilet and bath soap,” which application was refused because of appellant’s registered trademark. In an application and an action by respondent in the Exchequer Court, orders were made for registration of its trade-mark and for restricting appellant’s trade-mark to laundry soap.
Held (1): Appellant’s trade-mark should not be so restricted. Considering the nature of the goods, the uses to which they were put, and the course of the trade in them, it could not be said that “laundry soap” and “toilet and bath soap” are each a “particular description” of goods, within the meaning of the Trade-Mark and Design Act. The use by other traders of the same trade-mark in respect of any soap would be likely to give rise to deception or confusion, against which the law was intended to give protection. Edwards v. Dennis, 30 Ch. D. 454, and John Batt & Co. v. Dunnett, [1899] A.C. 428, distinguished.
(2): The refusal by the departmental tribunal to register the word “Camay” as a specific trade-mark should not be disturbed, it not being demonstrably wrong. One challenging its decision must establish affirmatively that if the proposed word is registered deception will not result. On this question it is the ultimate purchasers who are to be considered. That the word “Camay,” when vocalized, has a strong similarity to the French word “camée,” was, in view of conditions in this country, a fact to be considered.
(3): Appellant should not be held to have lost its rights by using on its yellow bar soap the name of its predecessors in title, whose assets it had purchased.
Judgment of Maclean J., [1928] Ex. C.R. 207, reversed.
APPEAL by Pugsley, Dingman & Company, Limited (objecting party in the one proceeding, and defendant in the other proceeding) from the judgment of Maclean J., President of the Exchequer Court of Canada, holding that the respondent, The Proctor & Gamble Company
[Page 444]
(petitioner in the one proceeding, and plaintiff in the other proceeding), was entitled to have registered in the Department of Secretary of State of the Dominion of Canada in the register of Trade-Marks the specific trade-mark consisting of the word “Camay” to be used in connection with the manufacture and sale of toilet and bath soaps; and that the registered trade-mark of the said appellant, consisting of the words “Cameo Soap,” should be restricted to laundry soap only, and the register of Trade-Marks be rectified accordingly.
The one proceeding was an application by the respondent to the Exchequer Court of Canada for an order for the registration of the word “Camay” as a specific trade-mark, applicable to a toilet and bath soap, the respondent’s application for registration of the same having been refused by the Commissioner of Patents; and the other proceeding was an action by the respondent for an order expunging the entry of the registration by the appellant of the specific trade-mark “Cameo Soap,” or, in the alternative, varying the said entry by restricting it to laundry soap.
The material facts of the case are sufficiently stated in the judgment now reported. As to the last point mentioned in the judgment, the reference is to the use by the appellant on its yellow bar soap of the name of its predecessors in title, a company whose assets it had purchased and which had ceased to carry on business.
The appeals were allowed, and the orders of the trial judge set aside, with costs to the appellant throughout.
R. C. H. Cassels K.C. for the appellant.
O. M. Biggar K.C. and R. S. Smart K.C. for the respondent.
The judgment of the court was delivered by
Duff J.—These are two appeals from two orders of the President of the Exchequer Court, one made in a proceeding by way of appeal from the Commissioner of Patents who rejected an application of the respondents for the registration of the word “Camay” as a trade-mark for toilet and bath soap, directing the registration of the trade-mark, the other made in an action by the respondents claiming rectification of the registry of the appellants’ trade-mark
[Page 445]
“Cameo Soap” by limiting that mark to laundry soap, granting the relief claimed. In 1900, the words “Cameo Soap” were registered in the name of the Imperial Soap Co. Ltd. as a specific trade-mark to be applied to the sale of soap. In 1902, the appellants purchased all the assets of the Imperial Soap Co. Ltd. (who thereupon ceased to carry on business), including said trade-mark, a formal assignment of which was executed in 1902 and registered in the Department of Agriculture in 1906. In December, 1925, the registration of the trade-mark having expired under the law, an application was made by the appellants to register a specific trade-mark to be used in connection with the sale of soap, consisting of the words “Cameo Soap,” and this trade-mark was registered on the 11th of January, 1926. From the date of the acquisition of the trade-mark from its immediate predecessors in title, the appellants have, down to the commencement of these proceedings, manufactured and sold a yellow bar soap under the name “Cameo Soap.” In February, 1927, the appellants decided to produce and sell a white soap in the form of a cake suitable for toilet purposes, and to use in connection with the sale thereof, their trade-mark “Cameo Soap.” This toilet soap first appeared in their catalogue in January, 1928. In August, 1926, more than twenty-five years after the registration of the mark “Cameo Soap,” the respondents applied in the United States for the registration of the word “Camay” as a specific trade-mark for “toilet soap,” and registration was granted in January, 1927. In May, 1927, the respondents applied to the Commissioner of Patents in Ottawa to register the same word “Camay” as a specific trade-mark to be used in connection with the sale of “toilet and bath soap.” This application was refused because of the presence on the register of the appellants’ trade-mark. In November, 1926, the respondents commenced to advertise widely their soap “Camay” in the United States, but did not advertise in Canada. Down to the trial in June, 1928, the respondents had not used their trade-mark “Camay” in connection with the sale of soap in Canada.
It will be convenient first to consider the order of the learned trial judge rectifying the registration of the appellants’ trade-mark. And at the outset it should be observed
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that there is by the concurrence of all parties, a distinction broadly observed in the soap trade between laundry soap and toilet soap. The distinction is largely evidenced in price lists and catalogues, and it seems to be quite clear that the term “laundry soap” is applied generally to soaps sold in bars or cakes of such shape and dimensions that they cannot be used, conveniently in washing the person, while the words “toilet soap” are used to designate soaps which are sold in cakes of suitable size, often perfumed and commonly presented in attractive form with some indication of the purpose for which they are recommended by the seller. On the other hand, the use of the term laundry soap does not indicate that the soap to which it is applied is not used for personal purposes. In truth, there is uncontradicted evidence that a number of well known brands of the commoner soaps, which are sold in bars or cakes not immediately adapted for toilet purposes are extensively used for washing the body and for all other household purposes. One soap, known as “Sunlight Soap,” is mentioned in the evidence which the principal witness for the respondent seemed to consider was sold in such a form as to bring it within the classification of laundry soap, which undoubtedly is very widely bought in this country for every purpose for which a soap can be used; and it is not disputed that the yellow bar soap to which the appellants have applied their trade-mark “Cameo Soap” for more than twenty-five years, has always been bought and used extensively for the purpose of washing the body as well as for laundry purposes. It may be observed also that Castile soap, which is used almost exclusively for toilet purposes, and which the appellants list sometimes as toilet soap, sometimes as Castile soap simply, seems to be sometimes sold in large bars and in that form advertised as toilet soap.
The learned trial judge has held that, for the purposes of trade-mark registration, toilet soap and laundry soap belong to descriptions of goods “absolutely different”; and on this ground has held, applying the principle I am about to mention, that the registration of the appellants’ trade-mark should be rectified in the manner mentioned.
By s. 4 (c) of the Trade-Mark and Design Act, “specific trade-mark” means a trade-mark used in connection with
[Page 447]
the sale of a “class merchandise of a particular description.” I shall assume for the purposes of the appeal, though I shall express no opinion whatever on the point, that the registered owner of a “specific trade-mark” is not entitled to prevent the registration of the identical trademark or a closely resembling one by another trader, where that trader does not seek registration in respect of the same description of goods, or of goods of such a like description that the subsequent registration might lead to deception or confusion.
The respondents invoke the authority of the court under s. 45 (formerly s. 42) of the Act. Under that section the court has power to expunge or vary any entry “made without sufficient cause” in the register, and this jurisdiction has been held to empower the court to expunge the registration of a trade-mark where registration ought not to have been granted, or to rectify the terms of such registration when it is of a character to which the applicant was not entitled.
The contention of the respondents, which prevailed with the learned trial judge, is that the appellants’ predecessors in title were not entitled to register their trade-mark in respect of soap generally, but only in respect of “laundry” soap. This contention is based upon a principle laid down by the Court of Appeal in Edwards v. Dennis, and afterwards by the House of Lords in John Batt & Co. v. Dunnett, in which it was held that under the English Act then in force, where a trade-mark is registered by a trader, in respect of one of the numbered classes of goods defined by that Act, and that class includes things of a variety of descriptions, and it appears that at the time of the registration the trader was dealing in only one of those descriptions of goods, and had no intention of dealing in any other, the registration of his trade-mark ought to be restricted by excluding the descriptions of goods in respect of which he was not carrying on business. Later, this principle was extended to the case in which the trader, although dealing in the particular description of goods in question, had, at the time of the registration of the trade-mark, never applied his mark to such description of goods, and had no intention of so applying it.
[Page 448]
I assume in the discussion which follows, although I wish to leave the question entirely open if it should arise for decision, that a title to a trade-mark may, under the Canadian Act, be acquired by registration under the Act, although prior to registration the trader has never made use of the trade-mark. This must, however, be subject to the qualification that a specific trade-mark cannot be acquired in respect of a “particular description of goods” within the meaning of s. 4 of the Act, where the applicant has not made use of the mark in respect of that “description of goods” and has at the time of his application no present definite intention of doing so. It is obvious enough that the application of this qualification may raise questions of some nicety as to what use of the trade-mark or intended use of one constitutes for the purpose of the rule a use in connection with a given “particular description of goods.”
The onus is, of course, on the respondents, but the facts are not really in dispute. It is not denied that neither the appellants nor the appellants’ predecessors in title, prior to the application for registration in 1900 or to the application in 1926, made use of the trade-mark “Cameo Soap” in connection with any kind of soap other than the yellow bar soap mentioned, or that at the time of either of these applications, the applicant had no present definite intention of using it in connection with any other kind of soap. This yellow bar soap was, and is, as I have said, listed by the appellants in their catalogues and price-lists as a “laundry soap,” and is known in the trade as such.
The respondents’ contention is that laundry soap is a “particular description of goods” within the meaning of the Act, that toilet and bath soap is another description of goods within the meaning of the Act, and that registration in respect of soap generally cannot be acquired by an applicant, who has used and only intends to use his trade-mark in respect of a soap which is known in the trade as laundry soap or toilet soap. The appellants, on the other hand, contend that the use of their trade-mark in connection with a kind of soap, which, though known in the trade as laundry soap, is used for all the purposes of a soap and is purchased for all such purposes, is manufactured and sold to supply a market largely including such purchasers to the
[Page 449]
knowledge of everyone who deals in it, gives them a title to that trade-mark which cannot be adequately protected when the registration is limited to laundry soap; and that the effect of the decision of the learned President of the Exchequer Court, as to the owner of trade-marks used in connection with soaps to which the appellants’ yellow bar soap belongs (soap sold in bars, a form which brings it under the trade denomination of laundry soap, but used by purchasers for all purposes), is to deprive him of the protection which the law is intended to give him.
Obviously, it is said, a soap which, though sold in a form bringing it under the description of “laundry soap” is used for toilet and bath purposes very extensively, as, for example, the evidence shows the soap known as “Sunlight Soap,” is, has a market for such purposes. It is a laundry soap according to the trade classification referred to (and that because the operation of cutting the large bars into smaller pieces suitable for toilet purposes is left to the customer), but for every other purpose it is a toilet and bath soap as well as a laundry soap. In such a case, it is argued, if you limit the registration of the trade-mark to laundry soap (soap sold in large pieces), you deprive the owner of the trade-mark of the statutory protection under s. 19, where the infringement consists in the use of the trademark in respect of soap prepared and sold in a form suited only for use as a toilet soap; and may materially limit the protection he would otherwise enjoy under the Common Law (s. 20). It would, it is said, be difficult to reconcile such a result with the fundamental considerations upon which trade-mark law rests. The rules of law in that respect are intended to protect the interest of the public in not being misled as to the source of the goods which it purchases, as well as the interest of the owner of the trademark in the market he has acquired among people for whom the trade-mark stands as a symbol of goods dealt in by him, his interest in his reputation as a producer or dealer connected with his trade-mark, and his interest in the distinctiveness of the trade-mark itself. These interests the Act also is designed to protect; and it is contended that the decision appealed from has the effect of impairing that protection.
[Page 450]
I think the respondents have failed to establish the proposition upon which their contention rests. Soaps which, according to the trade classification, fall within the designation “laundry soap” are used, purchased and sold in fact, for every purpose for which soap can be used; and such soaps are sold by the same dealers as those who sell soap used for toilet purposes exclusively. The evidence is that 85% of toilet soaps are sold by grocers. They are bought by the same persons, used in the same households, and the trade distinction does not appear to be based upon any difference in composition. It would, I think, be greatly straining the application of such cases as Edwards v. Dennis to give effect to the respondents’ contention.
The only object of limiting the registration of a trademark by excluding descriptions of goods to which it has never been applied, is to clear the field for the purpose of enabling other traders to make use of the same trade-mark or a similar trade-mark, in respect of such last mentioned descriptions of goods, or to obtain registration of some such trade-mark in respect of such goods. I find it difficult to suppose on what grounds, in view of what I have already said, the Commissioner could satisfy himself, on such an application, that the registration of the trade-mark “Cameo” in respect to toilet and bath soaps, would not create risk of confusion and deception, even when the appellants’ trade-mark is limited to laundry soap. In view of the fact that the appellants, even under the restriction, would be entitled to use their trade-mark in respect of any soap falling within the trade description, that is to say, any soap sold in forms and sizes inconvenient for personal use, although largely in fact bought for and applied to such purposes, I cannot suppose that such registration would be permitted. Nor can I understand on what ground the appellants can fairly be deprived of protection against the reasonable possibility of deception and confusion arising from the use by other traders of their trade-mark in respect of any soap whether known in the trade as laundry or as toilet soap.
The question of what degree of similarity between given descriptions of goods is calculated to give rise to deception or confusion has arisen in a great variety of cases; in these
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cases the tribunals have applied themselves to considerations as to the course of the trade in the goods in relation to sellers and purchasers, to the nature of the goods and to the uses to which they are put. In re the Australian Wine Importers’ Trade-Mark; the Motricine case (In re the Application of the Compagnie Industrielle des Petroles to Register a Trade-Mark); the Egall case (In re Application by Egg Products Ltd. for a Trade-Mark); In re Application of Gutta-Percha & Rubber Mfg. Co. of Toronto Ltd.; In re McDowell’s application; In re Shreeve’s Trade-Mark. To these various considerations I have already adverted.
The persons to be primarily considered in determining any such question, are the ultimate purchasers. In re Warschauer’s Application, and Bowden Wire Ltd. v. Bowden Brake Co. Ltd.
For these reasons, I think that the appeal from the order rectifying the appellants’ registration should succeed.
As to the other appeal, the question is a question of fact, and the view of the Departmental Tribunal is one which ought not to be interfered with unless it is demonstrably wrong. It is incumbent upon the party challenging the decision of that Tribunal to establish affirmatively, that if the proposed mark is registered, deception will not result from it. In considering this question, it is the ultimate purchaser who is to be considered, and such purchasers may largely consist of ill-informed people. The question is a practical question. I am satisfied that the appellants are on sound ground in calling attention to the fact that the proposed word, when vocalized, has a strong similarity to the French word “camée,” and that in this country there are many thousands of people who, almost every day of their lives, employ both English and French in the ordinary business of life. I am not at all prepared to say that it would be wrong to conclude that if a soap came to be well known among such people as “Cameo Soap,” it would be described indifferently as “Cameo” and “Camée.” The
[Page 452]
wrapper produced before us, which may or may not have been before the Commissioner, suggests that the word “Camay” is not in the minds of those who adopted it wholly unconnected with the idea of “Cameo.” I am unable to follow the contention that in the circumstances the French word is not to be considered.
This appeal ought also to be allowed.
Reference should also be made to a point, rather faintly suggested, that the appellants have lost their rights by the use of the name of the Imperial Soap Co. The appellants, having purchased the assets, which, prima facie, include the goodwill, of their predecessors, were entitled to make use of their predecessors’ name, unless there was something in the circumstances of the transfer to them depriving them of that right. Churton v. Douglas (1); Levy v. Walker (2). Such a point, if it was to be taken, should have been raised explicitly in the pleadings.
Both appeals should be allowed with costs here and in the Exchequer Court.
Appeals allowed with costs.
Solicitors for the appellant: Blake, Lash, Anglin & Cassels.
Solicitors for the respondent: Smart & Biggar.
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