A. Lassonde Inc. v. Canada (Registrar of Trade-Marks), docket T-1037-99

                                                                                                                               Date: 20000125

                                                                                                                          Docket: T-1037-99

BETWEEN:

A. LASSONDE INC.

Appellant

- and -

THE REGISTRAR OF TRADE MARKS

Respondent

REASONS FOR ORDER AND ORDER

BLAIS J.

[1]         This is an appeal from the decision of the Registrar of Trade Marks dated May 12, 1999 refusing the registration of the trade-mark BANANORANGE pursuant to paragraph 12(1)(b) of the Trade-marks Act, since it is descriptive of the character or quality of the wares or services in association with which it is used.

THE FACTS

[2]         On February 7, 1997, the appellant filed an application with the Registrar for registration of the trade-mark BANAORANGE on the basis of a use in Canada since June 13, 1998 in association with the general category of wares including the following specific wares: fruit juices and non-alcoholic fruit drinks.

[3]         On May 28, 1997, the Registrar refused the application, alleging that:

[Translation] The trade-mark violates the provisions of section 12(1)(b) since it is considered either clearly descriptive or deceptively misdescriptive of the character of the wares in association with which it is used since the mark, which is the phonetic equivalent of banana orange, clearly describes that the beverages taste of banana and orange.^[1]

[4]         There were a number of exchanges between the appellant's agents and the Registrar and on May 12, 1999 the Registrar issued his final decision, pursuant to paragraph 37(1)(b) of the Act, declaring that the trade-mark was not registrable.

REGISTRAR'S DECISION

[5]         The Registrar, relying on Thorold Concrete Products Ltd. v. Registrar of Trade Marks^[2] and Kirstein Sons & Co. v. Cohen Bros., Limited,^[3] maintains that paragraph 12(1)(b) provides that a trade-mark is not registrable if, as sounded, it is clearly descriptive of the character of the wares.

[6]         The Registrar explains:

[Translation] Having carefully reviewed all of the observations made by the applicant in opposition to the objection raised pursuant to the provisions of paragraph 12(1)(b), I am unable to conclude that the mark, as sounded, when used with the wares, clearly describes, as a first impression to the potential purchaser, that the applicant's juices and beverages taste like bananas and oranges.^[4]

[7]         Although the appellant had indicated an intention to disclaim the right to the exclusive use of the words "banana and orange" apart from the trade-mark, the Registrar thought it was not possible to do so, in accordance with section 35 of the Act, since the words "banana and orange" are not portions of the trade-mark for which registration is requested.

[8]         The Registrar concluded that the trade-mark was not registrable having regard to the provisions of paragraph 12(1)(b). He then refused the application under paragraph 37(1)(b) of the Act.

APPELLANT'S SUBMISSIONS

[9]         The appellant submits that the mark is not clearly descriptive or deceptively misdescriptive of the character of the wares in association with which it is used. The initial impression given by the mark is that it is a word that is contrived and whimsical.

[10]       The appellant argues that although the trade-mark might be considered the product of the combination of two words defined in the dictionary, the idea of combining the words "banana" and "orange" in one word is nevertheless original.

[11]       The appellant submits that paragraph 12(1)(b) does not prohibit the registration of a trade-mark composed of the combination of French and/or English words that are individually descriptive of the character of the wares in association with which the trade-mark is used. A trade-mark resulting from a combination of descriptive words may nonetheless be registered when the resulting trade-mark is apt to distinguish the source of the wares and/or services in association with which it is used.

[12]       The appellant refers the Court to Pizza Pizza Ltd. v. Canada (Registrar of Trade Marks),^[5] in which the Federal Court held that this trade-mark was registrable and non-descriptive.

[13]       The appellant argues that the trade-mark could suggest the whimsical idea of an orange-coloured banana or, in the mind of an English-speaking consumer, a range of juices understood as "banano...range". Accordingly, it says, the trade-mark cannot be considered clearly descriptive.

[14]       The appellant submits that BANANORANGE is suggestive of the character of the wares in association with which it is used. The trade-mark is associated with fruit juices and non-alcoholic fruit drinks, and not bananas and oranges.

[15]       The appellant argues that not only should the trade-mark not be dissected but, if the Registrar's approach were adopted, it would mean the consumer would refer to the type of wares provided in association with the appellant's trade-mark as juices tasting of "banana orange", although such syntax is unacceptable in both French and English.

[16]       The appellant further submits that the combination of the two words "banana orange" makes it a distinctive trade-mark and that the Registrar, to be consistent in his submissions, should have allowed the appellant the benefit of section 35 of the Act. The Registrar erred in law and in fact in not allowing the disclaimer of the words "banana" and "orange" apart from the trade-mark.

[17]       The appellant submitted voluminous case law in support of its submissions.

RESPONDENT'S SUBMISSIONS

[18]       The respondent submits that the trade-mark BANANORANGE is clearly descriptive of the character of the wares with which it is used and, as such, cannot be registered, pursuant to section 12(1)(b) of the Act.

[19]       The respondent submits that the word BANANORANGE refers to the two fruits that make up the juice in question. Furthermore, it is necessary to examine the trade-mark BANANORANGE in relation to the wares with which it is used. As it happens, there is a complete equation of juice with BANANORANGE. The trade-mark does not leave room for any other meaning or interpretation.

[20]       The respondent argues that a consumer who hears or even sees the trade-mark BANANORANGE can come to only one conclusion, namely, that it is a fruit mixture composed of bananas and oranges. It is unreasonable and unrealistic to think that a consumer might think it was an orange-coloured banana. It is common knowledge that bananas are yellow.

[21]       The respondent also argues that BANANORANGE is the phonetic equivalent of banana orange. Although the "e" at the end of BANAN(e)ORANGE is absent in the trade-mark, when the word BANANORANGE is pronounced, one clearly hears the words "banana" and "orange". The mere fact that the word BANANORANGE is written differently does not make it less descriptive.

[22]       In regard to the requested disclaimer as to the exclusive use of the words "banana" and "orange", the respondent is of the opinion that such a disclaimer cannot be granted given the fact that the trade-mark BANANORANGE in its entirety is not registrable. Section 3 [35] states that one cannot disclaim a portion of the trade-mark that is not independently registrable.

[23]       The respondent likewise submitted voluminous case law.

ISSUES

-            Did the Registrar err in fact and in law in deciding not to approve the trade-mark BANANORANGE on the ground that this mark is clearly descriptive of the fruit juices and non-alcoholic fruit drinks that are the subject-matter of application 836143 for registration of the trade-mark BANANORANGE?

-            Did the Registrar err in fact and in law in applying, as he did, the theory of phonetic equivalent?

-            Did the Registrar err in fact and in law in not allowing the appellant the benefit of section 35 of the Act and thereby allowing it to register a trade-mark composed of words making up the subject-matter of a disclaimer?

ANALYSIS

1.          Did the Registrar err in fact and in law in deciding not to approve the trade-mark BANANORANGE on the ground that this mark is clearly descriptive of the fruit juices and non-alcoholic fruit drinks that are the subject-matter of application 836143 for registration of the trade-mark BANANORANGE?

[24]       I will say at the outset that I agree with the respondent's counsel that the Registrar's decision cannot be set aside unless it constitutes a serious error of law.

[25]       The courts have ruled many times on the grounds for intervention by the Court.

[26]       In Benson & Hedges v. St-Regis Tobacco,^[6] the Supreme Court stated:

In my view the Registrar's decision on the question of whether or not a trade is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly.

[27]       In IVG Rubber Canada v. Goodall Rubber Co.,^[7] the Federal Court held that the burden of proof was on the appellant:

... a decision from such an expert official as the Registrar of Trade Marks ought not to be disturbed lightly. The onus on the appellant is heavy. He must show that the decision of the Registrar is so wrong as to warrant interference by this Court.

[28]       In Imperial Tobacco v. Rothmans Benson & Hedges,^[8] Madam Justice McGillis states:

Although the decision of the Registrar is entitled to be given great weight and not set aside lightly unless he has made an error, the judge hearing the appeal must determine the issue having regard to all of the relevant circumstances: see Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corp., supra; Calumet Manufacturing Ltd. v. Mennen Canada Inc. (1991), 40 C.P.R. (3d) 76 at p. 84, 50 F.T.R. 197 (F.C.T.D.). However, the burden on the appellant is not an easy one and the court must not substitute its own opinion for that of the Registrar.

[29]       Paragraph 12(1)(b) of the Trade-marks Act provides:

[30]       In Imperial Tobacco,^[9] as well, McGillis J. adds:

The test for determining whether a trade mark infringes s. 12(1)(b) of the Act is one of first or immediate impression from the perspective of the everyday consumer of or dealer in the wares. The determination must not be based on research into or critical analysis of the meaning of the words: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25 (F.C.T.D.) at p. 27, and Oshawa Group Ltd. v. Registrar of Trade Marks (1980), 46 C.P.R. (2d) 145 at p. 148, [1981] 2 F.C. 18 (F.C.T.D.). In interpreting s. 12(1)(b) of the Act, the word "clearly" is not synonymous with "accurately", but rather means easy to understand, self-evident or plain.

[31]       In Café Suprême F et P Ltée v. Registrar of Trade Marks,^[10] Dubé J. states:

That is, while the mark "Café Suprême" is clearly descriptive of the character of the services provided, it should be borne in mind that the adverb "clearly" is not synonymous here with accurately, but with apparently, in a manner capable of being readily understood. The word "character" here means the distinguishing or special feature of the product or the services.

[32]       In Wool Bureau of Canada Ltd. v. Canada (Registrar of Trade Marks),^[11] the Federal Court points out:

The appellant says SUPERWASH is neither clearly descriptive nor deceptively misdescriptive of the character or quality of the woollen wares; it is, at most, vaguely suggestive of some property of washability.

I cannot agree.

The word is a coined word. It does not appear in any dictionary, even though its two obvious components "super" and "wash" do. The fact that it has no dictionary status does not, in my view, remove it from the ambit of para. 12(1)(b).

[33]       In GWG Ltd. v. The Registrar of Trade Marks,^[12] the Court analyzed the trade-mark "Kidfitter" in association with clothing. It noted:

Being an unknown word it has no dictionary meaning as such nor any accepted meaning in common parlance.

If the components of coined words do have dictionary status then for that reason resort may be had to dictionaries for instructions as to the meanings of those components and, if possible, to ascertain the meaning of the resultant words.

To be held descriptive of the character or quality of the wares or services (as the case may be) the combined words resulting in the mark must have a combined meaning readily discernible from the combination and that can best be determined from the meanings of the components....

[34]       In The Molson Companies Limited v. Carling O'Keefe Breweries of Canada Limited,^[13] Cattanach J. notes:

I accept the premise that the decision that a trade mark is clearly descriptive is one of first impression from which it follows that it is not the proper approach to critically analyze the words of a mark but rather to ascertain the immediate impression created by the mark in association with the product. The mark must be considered in conjunction with the wares and not in isolation. ...

I also accept that the decision must be one of first impression and must not be based on research into the meaning of words.

This research into the meaning of words I think is intended to be limited to philological and etymological research.

This does not, in my view, preclude resort to dictionaries to find the meaning of a particular word in its ordinary or popular sense and that, too, must be considered in connection with the subject or occasion on which the word is used.

[35]       In the case at bar, the word BANANORANGE does not exist as such in the dictionary. However, it is clearly a combination of two words, "banana" and "orange". The dictionary Le Petit Robert defines a banana as an oblong fruit with a starchy pulp and a think yellow peel, produced by the banana tree's flower cluster, and orange as a reddish-yellow edible fruit from the orange tree.

[36]       I must at this point reject the appellant's arguments that the dictionary also provides as a definition under the word "banana", by analogy, a military medal or a twin-rotor helicopter; the least one can say is that the appellant has failed to persuade me that an individual hearing the word BANANORANGE might think, even for a moment, of military medals or a helicopter.

[37]       A potential buyer hearing or seeing the trade-mark BANANORANGE would instead have the impression it was a mixture of bananas and oranges. In my opinion, the trade-mark relates to the composition of the product, the intrinsic character of the product. It is therefore descriptive and thus not registrable under paragraph 12(1)(b) of the Act.

[38]       The Pizza Pizza case, which was referred to, is distinguishable if one adopts the Court's approach in W.R. Grace & Co. v. Union Carbide Corp.,^[14] in which the Federal Court of Appeal stated:

...it seems to me, particularly because while they may utilize words individually descriptive, combined they involve what may be termed coined phrases in contradistinction to the trade mark here in issue which at all levels was found to be a term descriptive not only in the individual words making up the term but, as well, in combination.

2.         Did the Registrar err in fact and in law in applying, as he did, the theory of phonetic equivalent?

[39]       Paragraph 12(1)(b) prohibits the registration of a trade-mark that is descriptive of the character of the wares, whether depicted, written or "sounded". The Registrar did not err in applying the theory of phonetic equivalent since the Act expressly supplies it. (My emphasis)

[40]       I must therefore dismiss this submission of the appellant, as well.

3.          Did the Registrar err in fact and in law in not allowing the appellant the benefit of section 35 of the Act and thereby allowing the appellant to register a trade-mark composed of words making up the subject-matter of a disclaimer?

[41]       Section 35 reads as follows:

[42]       The respondent rightly noted that even in the case of a disclaimer on one or another portions of a trade-mark, this does not imply that registration is automatic. The respondent referred us to part IV.9.4 of the Trade-Marks Examination Manual, which states:

IV.9.4 Marks Non-Registrable, Even with Disclaimer

In a number of circumstances, a mark, when considered as a whole, is not registrable, even though a part or each part of the mark applied for has been disclaimed. See the following paragraphs under this section.

[43]       To this effect, let us see what Dubé J. says, in Café Suprême,^[15] at page 2:

It should be noted at the outset that, while the appellant waived a right to exclusive use of the word "café" or the word "suprême" apart from the trade mark, it is the trade mark as a whole which must be considered. The word "suprême" is still an integral part thereof and is the principal distinguishing feature of the trade mark requested by the appellant, despite its waiver....

[44]       Notwithstanding the commendable efforts of the appellant's counsel in this case, and even its expressed desire to disclaim the right to the exclusive use of the word "banana" and the word "orange" apart from the trade-mark or the right to the exclusive use of the phonetic equivalent of the words "banana" and "orange" apart from the trade-mark, I conclude that section 35 contemplates the disclaimer of a portion of the mark that is non-registrable; however, in this case it is clearly the entire trade-mark that is non-registrable since it is descriptive.

[45]       The appellant has not persuaded me that the Registrar erred in refusing the application of section 35.

[46]       In conclusion, the appellant has failed to persuade me that the Registrar erred in the analysis of its application and that I must intervene in this case.

[47]       This application is therefore dismissed.

Pierre Blais

J.

OTTAWA, ONTARIO

January 25, 2000

Certified true translation

Bernard Olivier

FEDERAL COURT OF CANADA

TRIAL DIVISION

NAMES OF COUNSEL AND SOLICITORS OF RECORD

FILE NO:                                 T-1037-99

STYLE:                                     A. LASSONDE INC. v.

THE REGISTRAR OF TRADE MARKS

PLACE OF HEARING:            Montréal, Quebec

DATE OF HEARING: January 13, 2000

REASONS FOR ORDER OF BLAIS J.

DATED:                                   January 25, 2000

APPEARANCES:

Bruno Barrette                                                   FOR THE APPELLANT

Johanne Boudreau                                                         FOR THE RESPONDENT

SOLICITORS OF RECORD:

Brouillette Charpentier Fortin                             FOR THE APPELLANT

Department of Justice                                        FOR THE RESPONDENT