A-278-94
CORAM: MARCEAU J.A.
HUGESSEN
J.A.
DÉCARY
J.A.
IN
THE MATTER OF the Trade-marks Act
(R.S.,
c. T-10)
-
and -
IN
THE MATTER OF Trade-mark Application No.
539,577 MCBEANS
B E T W E E N :
MCDONALD'S
CORPORATION and
MCDONALD'S
RESTAURANTS OF CANADA LIMITED
Appellants
-
and -
COFFEE
HUT STORES LTD.
Respondent
Heard
at Ottawa, Ontario, Wednesday, June 5, 1996.
Judgment
rendered from the Bench, June 5, 1996.
REASONS FOR JUDGMENT OF THE
COURT
DELIVERED BY: HUGESSEN
J.A.
A-278-94
CORAM: MARCEAU J.A.
HUGESSEN
J.A.
DÉCARY
J.A.
IN
THE MATTER OF the Trade-marks Act
(R.S.,
c. T-10)
-
and -
IN
THE MATTER OF Trade-mark Application No.
539,577 MCBEANS
B E T W E E N :
MCDONALD'S
CORPORATION and
MCDONALD'S
RESTAURANTS OF CANADA LIMITED
Appellants
-
and -
COFFEE
HUT STORES LTD.
Respondent
REASONS
FOR JUDGMENT OF THE COURT
(Delivered
from the Bench at Ottawa, Ontario
Wednesday,
June 5, 1996)
HUGESSEN J.A.
This is
an appeal from a judgment of McKeown J. in which he allowed a cross-appeal by
the present respondent from a decision of the Registrar. The respondent filed
an application to register a proposed trade mark, MCBEANS, the relevant parts
of which are as follows:
3.
The applicant intends to use the trade mark in Canada in association withcoffee
makers and
accessories,
namely coffee cups, coffee mugs, coffee pots, coffee grinders, coffee filters,
electric coffee makers, souvenir coffee spoons; coffee and coffee beans;
tea,and requests registration of the trade mark in respect of such wares.
4.
The applicant intends to use the trade mark in Canada in association with the
operation of a
business
dealing in the sale of coffee makers and accessories, namely coffee cups,
coffee mugs, coffee pots, coffee grinders, coffee filters, electric coffee
makers, souvenir coffee spoons; coffee and coffee beans; tea, and
requests registration in the trade mark in respect of such services.
(Appeal Book, Vol. XVII,
page 2716)
The
Registrar dismissed an opposition by the present appellants save in respect of
the wares "coffee" and "tea" and related services. On the
appeal to the Trial Division McKeown J. allowed the respondent's cross-appeal
with the result that the appellants' opposition was dismissed in all respects.
We are
in general agreement with the reasons of the learned trial judge. We view this
case as being largely indistinguishable from the decision of Strayer J., as he
then was, in McDonald's Corp. et al. v. Silcorp Ltd./Silcorp Ltée1 , which was later approved by this Court2
.
The
appellant's two principal arguments before us turn on alleged errors by the
trial judge;
a) in looking at the respondent's actual
operations rather than at the application for the proposed trade mark; and
b) in failing to give effect to the evidence of
the appellant's use of "Mc(food)" marks and the existence and general
acceptance of "McLanguage".
With
regard to the first point we think it is clear that, even if the judge had
limited himself to a reading of the application, he could not possibly have
concluded from the language used that anything in the nature of a restaurant or
fast food business was contemplated by the applicant. Furthermore, we think
that the evidence of actual use, which necessarily would have been after the
date of the application, was nonetheless relevant. That use showed that the
promise of the application has been carried out. As Strayer J. said in McDonald's,
supra:
While
counsel for the opponents argued that much of the evidence concerning the
nature of the applicant's business in the past was irrelevant with respect to
the possibility of confusion of a proposed trade mark, I believe that that
evidence was in the main relevant with respect to these two factors involving
the nature of the wares, services, or business and of the trade in which the
two parties are engaged.
[at
page 212]
On the
second point, we are equally satisfied to adopt Strayer J's reasons in McDonald's,
supra:
The
opponents principally rely here, as I understand it, on the proposition that
they and their associated companies have over the years pursued a programme of
introducing food products and advertising their wares and services in
association with words and coined words using the prefixes "Mc" and
"Mac". There are some precedents supporting the proposition that
such a practice has identified the combination of these prefixes with the names
of edibles as referring uniquely to products or services offered by the
opponents: see, e.g., McDonald's Corp. v. Yogi Yogurt Ltd. (1982), 66
C.P.R. (2d) 101 (F.C.T.D.); McDonald's Corp. v McBagel's, Inc., 649 F.
Supp. 1268 (1986)(U.S.D.C.). But even if such linguistic confections can in a
proper case be found to be distinctive of the opponents, I do not think that
their claim to monopoly can be extended to the use of these syllables when used
as separate words either alone or in combination with other words.
[at
pages 212-213]
And
again:
I
do not believe the creation of a "family" of names, by a process of
bastardization involving the joining in one word of the Gaelic "Mac"
or "Mc" with species of the fast-food genus or with other nouns,
verbs and adjectives, can have the effect of precluding the use of those
prefixes as separate words either standing alone or in combination with other
words.
[at
page 217]
We
would only add that we can see no basis for distinguishing that case on the
ground that "Mc" or "Mac" was there being contemplated as a
separate word rather than as part of a coined word as it is here.
The
appeal will be dismissed with costs.
"James K. Hugessen"
J.A.
FEDERAL
COURT OF APPEAL
A-278-94
IN
THE MATTER OF the Trade-marks Act
(R.S.,
c. T-10)
-
and -
IN
THE MATTER OF Trade-mark Application No.
539,577 MCBEANS
B E T W E E N :
MCDONALD'S
CORPORATION and
MCDONALD'S
RESTAURANTS OF
CANADA
LIMITED
Appellants
-
and -
COFFEE
HUT STORES LTD.
Respondent
REASONS
FOR JUDGMENT OF THE COURT
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