Supreme Court of Canada
Johnson (S.C.) and Son, Ltd. et al. v. Marketing International Ltd., [1980] 1 S.C.R. 99
Date: 1979-11-20
S.C. Johnson and Son, Limited and S.C. Johnson & Son, Inc. (Plaintiffs) Appellants;
And
Marketing International Ltd. (Defendant) Respondent.
1979: March 25, 27, 28; 1979: November 20.
Present: Martland, Pigeon, Dickson, Estey and McIntyre JJ.
ON APPEAL FROM THE FEDERAL COURT OF APPEAL
Trade marks—Registered user—Mark “OFF”—Mark not distinctive—Elliptical description—Confusion with “BUGG OFF”—Trade Marks Act, R.S.C. 1970, c. T-l0, ss. 2, 12, 18, 49.
In 1957, appellant S.C. Johnson and Son, Inc. (“Johnson U.S.”) was registered as the owner of the trade mark “OFF!”—which it was already using in the United States—for a personal insect repellent. At the same time, the other appellant S.C. Johnson and Son, Limited (“Johnson Canada”), a wholly owned subsidiary of the former, was registered as the “registered user” of this trade mark. In 1975 respondent Marketing International Ltd. began marketing a repellent in Canada under the trademark “BUGG OFF”, and this led the two appellants to bring an infringement action in the Federal Court. By a counterclaim, respondent asked that the trade mark “OFF!” be expunged, alleging that it was not validly registered. The Trial Division allowed the principal action in part and dismissed the counterclaim. The Federal Court of Appeal, on the other hand, concluded that the trade mark “OFF!” was invalid, as it considered this mark was not distinct within the meaning of s. 18(1)(b) of the Trade Marks Act, solely on the ground that it is not used to identify goods of the owner of the mark, but rather the user. It accordingly reversed the trial decision and ordered the trade mark “OFF!” to be expunged from the Register of Trade Marks. Hence the appeal to this Court.
Held: The appeal should be dimissed.
Section 49(3) of the Trade Marks Act enacts that the “permitted use” has the same effect for all purposes of this Act as a use by the registered owner, and by virtue of subs. 2, “permitted use” means “the use… by a person approved as a registered user”. It follows that, in
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the application of all the provisions of the Act, “use” by a registered user is to be taken as a use by the registered owner. There is no reason for not giving full effect to this provision in relation to the definition of “distinctive” in s. 2, so that, when a trade mark is used by a registered user, “distinctive” means a mark that actually distinguishes or is adapted to distinguish the wares in association with which it is used by the registered user. This interpretation negates the only reason for which the Federal Court of Appeal found the registration of the trade mark “OFF!” invalid.
However, this Court allows the argument by respondent alleging that the trade mark “OFF!” is invalid on the ground that it is a description in English of the wares with which it is used. Although the word “off” is used elliptically with regard to a repellent, it describes the wares or their effect. Here what Johnson’s are claiming is what it has been held that no one can have, an exclusive proprietary right in relation to the word “off” as applied to an insect repellent.
Secondly, the trade mark “BUGZOFF” was registered before “OFF!” was registered. Appellants are in a dilemma. In order to succeed in their claim for infringement they must, under s. 20, establish that respondent’s use of “Bugg Off” is confusing. However, by virtue of s. 12(1)(d) “OFF!” was not validly registered if confusing with “BUGZOFF”. There is no appreciable difference between “BUGZOFF” and “BUGG OFF”, and insecticides and insect repellents are not in different categories of wares.
Breck’s Sporting Goods v. Magder, [1976] 1 S.C.R. 527; Cheerio Toys and Games Ltd. v. Dubiner, [1966] S.C.R. 206, aff’g [1965] 1 Ex.C.R. 524; Coca-Cola Co. v. Pepsi-Cola Co., [1942] 1 C.P.R. 293, aff’g [1940] S.C.R. 17; General Motors Corp. v. Bellows, [1949] S.C.R. 678; Keystone Knitting Mills Ld App. (1928), 45 R.P.C. 421 (C.A.); National Machinery Coy’s App. (1941), 58 R.P.C. 128 (C.A.); Minnesota Mining & Manufacturing Co. App. (1948), 65 R.P.C. 229; Cabin Crafts Inc’s App. (1955), 72 R.P.C. 333; Colgate-Palmolive Coy’s App., [1957] R.P.C. 25; T.A.D. Avanti v. Phone-Mate, Inc. (1978), 199 USPQ 648; Registrar of Trade Marks v. Hardie, [1949] S.C.R. 483, referred to.
APPEAL from a decision of the Federal Court
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of Appeal, reversing a judgment of the Trial Division which had allowed an infringement action in part and dismissed the counterclaim to expunge. Appeal dismissed.
James D. Kokonis, Q.C., and A.B.R. Lawrence, Q.C., for the appellants.
G.F. Henderson, Q.C., and Kent H.E. Plumley, for the respondent.
The judgment of the Court was delivered by
PIGEON J.—The appellants were plaintiffs in a trade mark infringement action in the Federal Court. The judgment of Cattanach J. maintaining the action in part2 was reversed by the Federal Court of Appeal which allowed respondent’s counterclaim and ordered appellant’s trade mark “OFF!” to be expunged from the Register of Trade Marks1.
The first appellant, S.C. Johnson and Son, Limited (“Johnson Canada”), is the registered user of the trade mark “OFF!” registered on September 27, 1957, for wares described as “a personal insect repellent”, by the other appellant, S.C. Johnson & Son, Inc. (“Johnson U.S.”), pursuant to an application dated January 17, 1957. This application states that the applicant intends to use the trade mark in Canada and is accompanied by an application for the registration of its wholly owned subsidiary, Johnson Canada, as “registered user”. This was approved at the same time as the other application was allowed.
Johnson U.S. had been using the same trade mark in the United States since November 1, 1956. It never used it in Canada and is not explicitly referred to in the labels used by Johnson Canada which refer only to the latter, although the word “Johnson’s” is also used which is said to refer to Johnson U.S. In this respect, Jackett C.J. with whom Urie and Ryan JJ. agreed, said in a footnote (at p. 72):
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4In my view, the use on the wares of the word “Johnson’s”, which is said to refer to the U.S. respondent, does not affect the matter inasmuch as the person clearly referred to by name on all the wares and advertisements in Canada is the Canadian respondent. However, if account is taken of the use of that word and its alleged reference to the U.S. respondent, the matter is not improved from the respondent’s point of view. The result would then be that the public has been educated to associate the trade mark “OFF!” with both respondents and has not been educated to regard it as indicating the wares of the owner of the trade mark who is the U.S. respondent.
On those facts Jackett C.J. held that the trade mark was invalid. He said (at pp. 71-72):
…, the relevant portions of the Trade Mark Act would appear to be the following:
2. In this Act
“distinctive” in relation to a trade mark means a trade mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;
…
“trade mark” means
(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade mark;
12. (1) Subject to section 13, a trade mark is registrable…
“…
18. (1) The registration of a trade mark is invalid if
…
(b) the trade mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;
…”
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These provisions must be read with section 19 which confers an exclusive right on the registered owner to the use of the registered trade mark (as such) and with section 20, which deems such right to be infringed by a “confusing trade mark”.
In my view, looking only at these provisions, it is quite clear that the trade mark “OFF!” is not “distinctive” because, having regard to the way in which the Canadian mark has been developed by the Canadian respondent, that trade mark does not “actually distinguish” the wares in association with which it is used by its owner (the U.S. respondent) from the wares of others (which would include the Canadian respondent) nor is it “adopted so to distinguish them”. All the evidence would appear to show that the message communicated to the Canadian public by “OFF!” is that the goods with which it is associated originate with the Canadian respondent and not the U.S. respondent. (Footnote 4, previously quoted).
Further on Jackett C.J. said (at pp. 73-74):
The question that arises here is whether a new system of licensing of trade marks that was introduced in 1953 by section 49 of the Trade Marks Act has created a system whereby a trade mark registration can be valid, notwithstanding section 18(1), even though at the time that the validity is attacked (as well as at all previous times) it “actually distinguishes” the wares in association with which it is used by the licensee from the wares of others (and is adapted so to do) and does not “actually distinguish” the wares in association with which it is used by the owner of the trade mark from the wares of others and is not adapted so to do.
As appears from a reading of section 49, it nowhere expresses, for the case where there is a registered user, such a fundamental change in the nature of trade mark as defined by the rest of the Act. The question is, therefore, whether such a consequence must be inferred from the provisions of that section.
The relevant portions of section 49 read:
49. (1) A person other than the owner of a registered trade mark may be registered as a registered user thereof for all or any of the wares or services for which it is registered.
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(2) The use of a registered trade mark by a registered user thereof in accordance with the terms of his registration as such in association with wares or services manufactured, sold, leased, hired or performed by him, or the use of a proposed trade mark as provided in subsection 39(2) by a person approved as a registered user thereof, is in this section referred to as the “permitted use” of the trade mark.
(3) The permitted use of a trade mark has the same effect for all purposes of this Act as a use thereof by the registered owner.
…
(5) Concurrently with or at any time after the filing of an application for the registration of a trade mark, an application for the registration of a person as a registered user of the trade mark may be made to the Registrar in writing by such person and by the owner of the trade mark, and the applicants shall furnish the Registrar in writing with
(a) particulars of the relationship, existing or proposed, between them, including particulars of the degree of control by the owner over the permitted use which their relationship will confer;
(b) a statement of the wares or services for which registration is proposed;
(c) particulars of any conditions or restrictions proposed with respect to the characteristics of the wares or services, to the mode or place of permitted use, or to any other matter;
(d) information as to the proposed duration of the permitted use; and
(e) such further documents, information or evidence as may be required by the Registrar.
…
(7) The Registrar may approve a person as a registered user of the trade mark for any of the proposed wares or services, subject to any conditions or restrictions that he considers proper, if he is satisfied that in all the circumstances the use of the trade mark in association with such wares or services by the proposed registered user would not be contrary to the public interest.
Jackett C.J. further went on to say (at pp. 75-76 and in a footnote):
This aspect of the matter requires some reference to another innovation in the 1953 statute. Prior to 1953, as
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I understood counsel, registration systems were for trade marks that had, by user or otherwise, already acquired the capacity to distinguish the owner’s wares from the wares of others. The 1953 Act introduced the idea of applying for a “proposed trade mark” which, by definition, is “a mark that is proposed to be used by a person for the purpose of distinguishing… wares… manufactured… by him from those manufactured… by others”. However, when an application for such a trade mark is allowed, the trade mark is not registered until the Registrar is supplied with a declaration of commencement of user. The relevance of this to the problem in hand is that commencement of user can, according to sections 39(2) and 49(2) be by a registered user7.
7Section 39(2) of the Trade Marks Act reads as follows:
(2) When an application for registration of a proposed trade mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the trade mark and issue a certificate of its registration upon receipt of a declaration that the applicant, his successor in title or a person approved as a registered user under subsection 49(7) has commenced the use of the trade mark in Canada in association with the wares or services specified in the application.
I find the problem so presented very difficult. A trade mark, by definition, distinguishes the owner’s wares from the wares of others. On the other hand, the original use for trade mark purposes may, by virtue of section 39(2) and 49(2), be by a licensee. Does it follow that Parliament, without saying so expressly, is providing, by necessary implication, that a message to the public that in fact indicates that wares associated with the trade mark originate with the licensee of the trade mark is to be deemed, as a matter of law, to be a message to the public, which it is not in fact, that wares associated with the trade mark originate with the owner of the trade mark?
I do not find any such necessary implication in the statute.
In conclusion Jackett C.J. said (at p. 77):
Whatever be the correct view as to the character of the “permitted use” under section 49, in my view, section 49 does not have the effect of deeming the activities of the Canadian respondent (which in fact had the result of making the trade mark “OFF!” a mark that
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“actually distinguishes” the wares of the Canadian respondent from the wares of others) to have had the result of making that trade mark a mark that “actually distinguishes” the wares of the U.S. respondent from the wares of others. That being so, on the facts of this case, it is clear, in my view, that the registration of the trade mark “OFF!” is invalid by virtue of section 18(1)(b) of the Trade Marks Act.
With great respect, I cannot agree with this view of the relevant sections of the Trade Marks Act. Subsection 49(3) enacts that the “permitted use” has “the same effect for all purposes of this Act” as a use by the registered owner. By virtue of subs. 2, “permitted use” means: “the use… by a person approved as a registered user”. From this it clearly follows that, in the application of all the provisions of the Act, “use” by a registered user is to be taken as use by the registered owner. I can see no reason for not giving full effect to this provision in relation to the definition of “distinctive” in s. 2 so that, when a trade mark is used by a registered user, “distinctive” means a mark that actually distinguishes or is adapted to distinguish the wares in association with which it is used by the registered user.
Counsel for the respondent argued forcefully that “distinctiveness” was a special requirement apart from “use”. Granting that it is so, it remains that “distinctiveness’ is defined by reference to “use”. I cannot agree that when it is provided that “use” by the registered user has the same effect for all purposes of the Act, this does not apply to “use” for the purpose of the definition of “distinctiveness”.
In his reasons, Jackett C.J. referred to Breck’s Sporting Goods v. Magder. In that case, Laskin C.J. said, speaking for the Court (at p. 537):
…I do not read s. 47 as permitting untrammelled assignment in gross without regard to the associative character of the assigned trade mark in identifying the
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goods as those of the assignee owner. Section 47 is distinguishable from the comparable English provision, s. 22(1) of the Trade Marks Act, 1938, which was considered in the Reuter case. The proprietary aspect of a trade mark as assignable in gross is fortified under the English Act by providing for the intervention of the Registrar to approve the assignment as not contrary to the public interest, and by providing further that an assignment not made in connection with the goodwill of the business shall not take effect unless the assignee within a prescribed time has applied to the Registrar for directions respecting the advertisement of the assignment and advertises it accordingly. The protection given by these provisions against public deception is not found in the Canadian legislation, and the burden of such protection still resides in the definition of distinctiveness in s. 2(f) and in the application of s. 18.
The situation in the present case does not turn on the application of s. 47, but of s. 49 and what was there said of the effect of the definition of distinctiveness did not have reference to a situation where subs. 49(3) comes into operation.
Counsel for the respondent referred to the judgment of this Court in Cheerio Toys and Games Ltd. v. Dubiner. In that case it was held that the agreement between the parties and the joint application to register the appellant as a registered user were indivisible. What was said for the majority by Hall J. concerning s. 49(3) is as follows (at pp. 218-19):
The appellant argued that since at the time the action was commenced it was a “registered user” on the registry of Trade Marks, it could not be an infringer while it remained on the register as a “registered user”, and relied on s. 49(3) of the Act, which reads:
(3) The permitted use of a trade mark has the same, effect for all purposes of this Act as a use thereof by the registered owner.
but this overlooks that the permitted use under this section is use in accordance with the terms of the registration.
It argued further that until it had actually been struck from the register as a “registered user” in accordance with s. 49(10), it continued to be a “registered user” and as such could not be an infringer.
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Whatever validity that argument might have as between a “registered user” and a third party, and I express no opinion on the point, I am of opinion that as between the appellant and the respondent the right to use the trade marks Yo-Yo and Bo-Lo was governed by the condition of the licence quoted above, and when, as found by the learned trial judge, that the appellant breached the “registered user” agreement by refusing the respondent “free access to the premises of the registered user to inspect the finished wares…” it forfeited whatever rights it had to use the said trade marks and after receipt of the solicitor’s letter of January 14, 1963, had no right to persist in using these trade marks and it was in consequence an infringer, if in fact the trade marks were valid.
In the present case there is no question as to the validity of the registered user agreement.
Since I have to disagree with the only reason for which the Federal Court of Appeal found the trade mark registration invalid, it is necessary to consider the other grounds of invalidity urged by the respondent. These are that:
a) “OFF!” is descriptive;
b) it was not registrable over “BUGZOFF”.
In this connection the following provisions of the Trade Marks Act are specially relevant:
18. (1) The registration of a trade mark is invalid if
(a) the trade mark was not registrable at the date of registration;
(b) the trade mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced; or…
12. (1) Subject to section 13, a trade mark is registrable if it is not
…
(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French languages of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;
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(c) the name in any language of any of the wares or services in connection with which it is used or proposed to be used;
(d) confusing with a registered trade mark; or…
In considering the descriptiveness of any trade mark it is important to bear in mind that, by virtue of the already quoted definition of trade mark, it must when used, “actually distinguish” or be “adapted to distinguish” the wares. Thus the result of the registration must be to confer a monopoly for the use of the trade mark. By virtue of para. 12(1)(c) no one may get such monopoly for the name in any language of the wares with which the trade mark is to be used, and by virtue of para. 12(1)(b), no one may obtain such monopoly for any expression that is “clearly descriptive” of those wares in English or in French.
In the Oxford Dictionary the first meaning of “off” is:
1. Expressing motion or direction from a place: To a distance, away, quite away; as in go, run, drive off. Also expressing resistance to motion towards: as in beat, hang, keep, ward off
In Webster’s Third New International Dictionary, I read under “off”:
1b: so as to prevent close approach (drove the dogs off).
It is obvious that an insect repellent is a substance that will “ward off or “drive off those pests colloquially called “bugs”. When Johnson U.S. applied for the registration there was on the register of Trade Marks since January 25, 1946 the word “BUGZOFF” for insecticides besides “GREESOFF”, “MIST-OFF”, “OZOFF”, “EASITOFF”, “EASY-OFF” and “SPRAYITOFF” for various cleaning compounds. All those expressions reveal the use of the word “off” as meaning a substance intended for getting rid of something, in other words a repellent or removing agent.
In his reasons for judgment, the trial judge said (at p. 24):
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…it seems that the word “off” is most usually used in connection with other words and derives its meaning from the context in which it is used. If the use is elliptical then because of its many uses the ellipses are many.
That being so the word “off standing alone bereft of context has no meaning readily ascribed to it and accordingly that word cannot be “clearly descriptive of the nature and quality of the wares in association with which it is used” without the explanation accomplished by additional words which are not expressed and what those words might be is left to conjecture.
Therefore, I conclude that the registration of the word “OFF!”, followed by an exclamation mark as it is, was validly registered by the Wisconsin plaintiff, that it was “adapted” to distinguish that owner’s wares and has a degree of distinctiveness capable of doing so.
With respect, I have to say that the learned trial judge was in error in the view he took of the plaintiffs’ use of the word “off”. He failed to consider the essential factor that this was an elliptical use of the word in association with an insect repellent and therefore, in that context, it was descriptive of the wares or of their effect. He also failed to consider that in applying to register this trade mark, Johnson U.S. was in effect claiming a monopoly for the use of a common word of the language, a word commonly used in connection with a variety of wares in related categories all exhibiting the common purpose of avoiding or getting rid of something. The variety and number of trade marks ending with “off” presently on the register, show its widespread use in that sense.
In Coca-Cola Co. v. Pepsi-Cola Co. Lord Russell said, affirming the judgment of this Court (at p. 299):
The Defendant put in evidence a series of twenty-two trade marks registered in Canada from time to time during a period of twenty-nine years, namely, from 1902 to 1930, in connection with beverages. They include the mark of the Plaintiff and the registered mark of the Defendant. The other twenty marks consist of two or more words or a compound word, but also containing the word “Cola” or “Kola”. The following are a few samples of the bulk: “Kola Tonic Wine”, “La-Kola”, “Cola-Claret”, “Rose-Cola”, “Orange‑Kola”, “O’Keefe’s Cola”, “Royal Cola”. Their Lordships agree with the Supreme Court in attributing weight to these
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registrations as showing that the word “Cola” (appropriate for the purpose as appears above) had been adopted in Canada as an item in the naming of different beverages.
In this Court, Davis J. had said (at p. 32):
…The only similarity between the two compound words here in question lies in the inclusion of the word “cola” in both marks. The plaintiff does not, and of course could not, claim any proprietary right in the word “cola” standing alone. None the less it is plain that the objection of the plaintiff really goes to the registration by any other person of the word “cola” in any combination, for a soft drink. If such objection is allowed, then the plaintiff virtually becomes the possessor of an exclusive proprietary right in relation to the word “cola”.
Here what Johnson’s are claiming is precisely what it was there held no one could have: an exclusive proprietary right in relation to the word “off” as applied to an insect repellent.
In the case of General Motors Corp. v. Bellows, where this Court upheld the finding that the initial registration of the trade mark “Frigidaire” was invalid because it was descriptive, Rand J. said (at pp. 688-689):
…Mr. Robinson argued that “Frigidaire” in this sense is not descriptive of the “character” of the article, but I must say I can imagine no term more so. In our mastery of environment we have devoted a great deal of attention to foods, a most important treatment of which has been their preservation against high temperatures. What is the essence of the idea of a refrigerator? Unquestionably, that of cold air for preservation; not the precise mode of operation by which the conserving effect is achieved but the effect itself, which is the functional property of the article itself; all the rest is implied. The air must obviously be held within a container, but the result, however brought about, is what is looked at. If evidence of that were needed, it is furnished by the material filed in the case. Forty-five names are shown to have appeared in the trade of which the following are examples: “Iced-Aire”, “Frigice”, “North-Eaire”, “Frostair”, “Airgard”, “Sanidaire”, “Coolair” and “Friguator”. These indicate that both words of the combination have some degree of effectiveness, and that would seem to follow from their commonness. The claim goes apparently to the monopoly of the word “aire”. The
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affidavit of Shannon asserts that the company has taken successful proceedings against the use of “Ideal-Aire”, “Filtaire”, “Governaire”; and with a similar exclusiveness of adjectives signifying coldness in combinations, the company would have successfully withdrawn from use virtually the entire group of the most apt and descriptive words for this class of goods.
These observations apply with even greater force to Johnson’s attempt to monopolize the word “off” with reference to insect repellents. They did not start with “BUGZOFF” to which someone else had already laid claim. They sought to appropriate the most meaningful part of that combination. Now that it has been abandoned by the firm which had registered it in 1946, they are trying to prevent the use of that same combination by a competitor selling the same product in different form, that is an impregnated cloth instead of a liquid, foam or aerosol. There is clearly no substantial difference between “BUGZOFF” and respondent’s “Bugg Off”, and insecticides cannot be considered as being in a different category of wares.
Out of the many trade mark cases denying valid registration by reason of the descriptive character of an elliptical expression, the following appear worthy of special mention.
In Keystone Knitting Mills Ld App. “Charm” disallowed for hosiery. “…one has to look at the word…, not in its strict grammatical significance, but as it would represent itself to the public at large…” (Per Lord Hanworth M.R. at p. 426).
In National Machinery Coy’s App., “Dex” rejected for bolts as meaning “deck bolts”.
In Minnesota Mining & Manufacturing Co. App., (Jenkins J.) “Scotchlite” disapproved for light-reflecting materials.
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In Cabin Crafts Inc’s. App, (Lloyd-Jacob J.) “Needletuft” refused for knitted fabrics and carpets.
In Colgate-Palmolive Coy.’s App., (Lloyd-Jacob J.) “Brisk” denied for dentifrices.
In T.A.D. Avanti, Inc. v. Phone-Mate, Inc., “Vox” held descriptive in respect of telephone answering units as meaning “voice actuated”.
Counsel for the respondent referred to Registrar of Trade Marks v. Hardie where this Court held that “Super-Weave” was a laudatory epithet of such common use that it could never become “adapted to distinguish” the wares of a particular trader. This is a question that does not arise in the view I am taking of this case.
I must however deal briefly with the objection founded on the prior registration of “BUGZOFF”. The basis on which the Registrar nevertheless allowed the registration of “OFF!” appears from a letter written to him on July 8, 1957 by Johnson’s agent in which the latter says:
I refer to my recent discussion with you with respect to the Examiner’s citation of the mark BUGZOFF against the application herein and as arranged I am writing to confirm my verbal comments to you.
The mark BUGZOFF is completely dominated by its first syllable which not only has a very definite meaning but whether seen or spoken is so prominent that one barely realizes that the suffix exists.
I submit that the registrant of BUGZOFF in no way has a registration to give such broad protection as to include an exclusive use of the word OFF. In this regard I refer you to consistent practice where you have allowed marks containing the suffix GLO notwithstanding the registered trade mark consisting of the word GLO.
In our discussions you advised that upon the filing of this written summary of my verbal comments the application would be allowed for advertisement. Accordingly, I enclose my firm’s cheque payable to the Receiver General of Canada for $15 in payment of the advertising fee and request that the application be advertised.
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It appears to me that the Johnsons are now in a dilemma. In order to succeed on their claim for infringement they must under s. 20 establish that respondent’s use of “Bugg Off” is confusing. On the other hand, by virtue of para. 12(1)(d) “OFF!” was not validly registered if confusing with “BUGZOFF”. As I have already said, there is no substantial difference between “BUGZOFF” and “Bugg Off”, and insecticides cannot be considered as in a different category of wares from insect repellents. The fact that “BUGZOFF” has been abandoned cannot alter that situation. If it was not confusing with “OFF!” because it was completely dominated by “BUG” this must be equally true of “Bugg Off”. As I have already noted we are in this case dealing with registrability at the date of registration, not with distinctiveness acquired by use.
Both courts below found against any claim for passing-off or infringement of common law rights and there is no reason to reconsider those concurrent findings.
I would therefore dismiss the appeal with costs.
Appeal dismissed with costs.
Solicitors for the appellants: Honeywell, Wotherspoon. Ottawa.
Solicitors for the respondent: Gowling & Henderson, Ottawa.
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