Imperial Tobacco Limited v. Rothmans, Benson & Hedges Inc., docket T-2392-95

     T-2392-95

BETWEEN:

     IMPERIAL TOBACCO LIMITED

     Applicant,

AND:

     ROTHMANS, BENSON & HEDGES INC.

     Respondent.

     REASONS FOR ORDER

JOYAL, J.:

     In these proceedings under Section 51 of the Trade Marks Act (the "Act"), the applicant seeks an order of the Court expunging two trade marks from the Trade Marks Register. These trade marks, both relating to cigarettes, are CLASSIC, registered in 1959 under No. TMA 112,833, and CLASSIQUE, registered in 1986 under No. TMA 321,640.

     Both marks are owned by the respondent. Furthermore, both marks are in use. That essential fact is established by the results of an application by the applicant before me, under Section 44 of the Act, for evidence of use, evidence which the respondent dutifully provided. The Registrar found, however, that the use of both marks was restricted to cigarettes, and the registrations were amended accordingly.

     In August 1995, the applicant filed its own application for the marks DU MAURIER CLASSIC, application No. 790,638, and DU MAURIER CLASSIQUE, application No. 790,639. Both are associated with manufactured tobacco products. Facing a difficult hurdle by reason of the respondent's previous registrations, the applicant now proceeds with this application to have the respondent's marks expunged.

Applicant's Position:

     The applicant contends that it is person interested and affected by the respondent's registration and has therefore the requisite status to institute the expungement proceedings. The applicant then argues that the respondent's marks were not registrable as of the dates of their registration on grounds that they were either clearly descriptive or deceptively misdescriptive of the character or quality of the wares described, namely cigarettes.

     The basic argument presented by the applicant as to status is founded on the doctrine of the "purity of the Register", as propounded by the Supreme Court of Canada in [1949] S.C.R. 678">General Motors Corporation v. Bellows, [1949] S.C.R. 678, where Kellogg J. refers to the purity of the Register as being of great importance to trade, quite apart from the merits or demerits of the particular litigants.

     Furthermore, says the applicant, there is clearly in the evidence a record that the applicant is a person interested, i.e. that there is a reasonable apprehension that it will be affected by the impugned but nevertheless registered trade marks.

     The next line of argument is on the "descriptive" and "deceptively misdescriptive" issue. Reliance, of course, is on dictionary definitions of the word "classic" and "classique". The Concise Oxford Dictionary, 1982-83, at p. 171, defines the word as: "first class", "excellence", "of Ancient Rome", "of Greek art/culture", or descriptive of style, as "simple" or "harmonious", an acknowledgment of "excellence" or "value". Webster's New Twentieth Century Dictionary, 2d Ed., 1958, at p. 334, speaks of "superior", "highest class", "having recognized worth", "representative of excellence". Le Petit Larousse, 1966 Ed., speaks at p. 318 of "première classe", "appartenant à l'antiquité grecque ou gréco-latine", "modèle du genre", "conforme à un idéal".

     The applicant also relies on the Exchequer Court decision in Standard Stokes Company v. Registrar of Trade Marks, [1947] Ex.C.R. 437 at 442, where Cameron J. found that the word "standard" falls within the category of laudatory epithets and endorsed the 1910 ruling on "standard" by the Judicial Committee, [1910] R.P.C. 789 at 795.

     As to the descriptive or misdescriptive character of a word like "classic" or "standard", the applicant refers to the following decisions:

i)      Cattanach J. in Molson Companies Ltd. v. John Labatt Ltd., 58 C.P.R. (2d) 157 " re. LABATT'S EXTRA for brewed alcoholic beverages;

ii)      Cattanach J. in Imperial Tobacco Ltd. v. Benson & Hedges Inc., 75 C.P.R. (2d) 115 " re. RIGHT for cigarettes;

iii)      Supreme Court of Canada in [1949] S.C.R. 483">Registrar of Trade Marks v. G.A. Hardie & Co. Ltd., [1949] S.C.R. 483 " re. SUPER-WEAVE for textiles;

iv)      John Labatt Ltd. v. T.G. Bright & Co. Ltd., 22 C.P.R. (3d) 466 (Opposition Board) " re. CLASSIC LIGHT for wines; and

(v)      Frisco-Finders S.A. et al v. Walker, 49 C.P.R. (3d) 361 (Opposition Board) " re. CLASSIC CUISINE for frozen foods.

     On the evidence that the trade marks have been registered for some 36 and 10 years respectively, and that the Register shows some 300 registrations involving the mark CLASSIC, the applicant refers to the case of Wool Bureau of Canada Ltd. v. [1949] S.C.R. 483">Registrar of Trade Marks, [1978] 40 C.P.R. (2d) 25, where Collier J. stated that the state of the Register is irrelevant and referred to the earlier comment of Cattanach J. in John Labatt Ltd. v. Carling Breweries Ltd., [1975] 18 C.P.R. (2d) 15 at 28:

The principle so enunciated, as I understand it, is simply that because errors have been made in the past, these [previous registrations] should not be grounds for perpetuating those errors.

Respondent's Position:

     The basic approach taken by the respondent is that the Court should be very prudent in dealing with expungement proceedings. The Court must consider that the marks were brought into question in the earlier Section 44 proceedings instituted by the same applicant, that the issue of registrability or validity was not raised and that the test of use under the Section 44 proceedings was amply met by the respondent. The respondent argues that should there be any doubt as to the marks' registrability, it should certainly be resolved in favour of the respondent-owner.

     Further, says the respondent, to be held invalid or unregistrable on grounds of descriptiveness or misdescriptiveness, a mark must describe or misdescribe the wares themselves and not just an attribute that the wares might or might not enjoy. Quoted in support is the case of Jordan & Ste-Michelle Cellars Ltd. v. T.G. Bright & Co. Ltd., [1984] 1 F.C. 964, in reference to CHILLABLE RED for wine. At 971 and 975, Heald J.A. and Stone J.A. respectively found that for a mark to lack registrability, it must be clearly descriptive and not merely suggestive. This distinction is part of trade marks jurisprudence in Great Britain and Canada, and was applied by Addy J. of the Trial Division of this Court in Provenzano v. [1949] S.C.R. 483">Registrar of Trade Marks, [1977] 37 C.P.R. (2d) 189, a decision which was later confirmed by the Federal Court of Appeal in 40 C.P.R. (2d) 288. In his decision, Addy J. stated at page 190:

In deciding whether to interfere or not in such a decision [of the Registrar], this Court is entitled to examine the state of the Register and, where, as in the present case, there have been previous decisions by the Registrar which appear to be directly contrary to the present one, it is proper to consider them before deciding the issue of whether the decision under review should or should not be reversed.

     The respondent strongly emphasizes the heavy burden borne by the applicant in its attempt to expunge the marks. This doctrine was recently stated by my colleague Denault J. in Steinberg Inc. v. J.L. Duval Ltée, 44 C.P.R. (3d) 417 at 418, as follows:

According to s. 18(1)(b) of the Act, the registration of a trade mark is invalid if the trade mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced [ ... ] It is authoritatively settled that, in expungement proceedings, the onus of proving that the registration is invalid is on the party alleging the invalidity.

     With respect to the "clearly descriptive or "deceptively misdescriptive" character of a mark, the respondent provides the Court with a number of analogous cases. There is the Provenzano case, previously cited, with respect to the mark KOLD ONE for beer. There is the judgment of McGillis J., later unanimously confirmed by the Federal Court of Appeal, in Imperial Tobacco Ltd. v. Rothmans, Benson & Hedges Inc., 45 C.P.R. (3d) 354, with respect to CUSTOM CUT and COUPE MESURE for tobacco products. There is the case of Bonus Foods Ltd. v. Essex Packers Ltd., [1965] 1 Ex.C.R. 735, with respect to the mark BONUS for food products.

     Also cited are: Riches, McKenzie & Herbert v. Pillsbury Co., 61 C.P.R. (3d) 96, a decision of a Senior Hearing Officer with respect to CLASSIC and CLASSIQUE for vegetables; Reed Stenhouse Co. Ltd. v. [1949] S.C.R. 483">Registrar of Trade Marks, 45 C.P.R. (3d) 79, with respect to PET PLAN for domestic animals' health insurance; and Rothmans, Benson & Hedges Inc. v. R.J. Reynolds Tobacco Inc. Co., 47 C.P.R. (3d) 439, with respect to THE MILD ONE for cigarette tobacco and cigarettes.

     At page 442 of this last judgment, Rothstein J. of this Court refers to the number of registrations where words like "mild", "soft", "thick", "great", "big", "slim", found in a mark like THE MILD ONE, were held to be registrable. Rothstein J. notes that refusal of one mark against the acceptance of numerous others would result in an unexplained inconsistency.

     Finally, the respondent refers to the Supreme Court of Canada decision in [1939] S.C.R. 17">Pepsi Cola Company of Canada v. Coca Cola Company of Canada Ltd., [1939] S.C.R. 17, and quotes the following comments of Davis J. at page 29:

The compound word COCA COLA was registered in Canada as early as 1905 and has been used by the plaintiff as its trade name and trade mark in connection with the sale of its beverages (whatever its ingredients may be), and the defendant's claim to have the registration of 1905 declared invalid and cancelled was not made until 1936. If there ever was any legitimate ground for impeaching the 1905 registration of COCA COLA, there has been such long delay and acquiescence that any doubt may have been resolved in its favour. It would be a matter of grave commercial injustice to cancel the registration that has stood since 1905 and which admittedly has become widely used by the plaintiff.

Findings:

     It should be evident to both parties that the main if not single issue in these proceedings is whether the words CLASSIC or CLASSIQUE are invalid on grounds that they are clearly descriptive or deceptively misdescriptive of cigarettes. Admittedly, opinion is divided on that issue, but I should nevertheless venture the following observations.

     Firstly, I believe that the seniority achieved by registered marks is material to the issue of registrability where such is otherwise in doubt. A mark may be clearly descriptive or deceptively misdescriptive, and thus its registrability is more easily determined. No so with other marks which might bear several meanings, some of them, of course, by reason of the wares or services with which they are associated. If such marks have been in use over any number of years, it is, in my respectful view, evident that no harm or prejudice has been caused during that period of time. On the evidence before me, the applicant was well aware of the respondent's trade marks in 1986 when it launched Section 44 proceedings. No issue of registrability was raised at that time and it is a fact that this mark has remained inviolate for some 37 years.

     Secondly, there is on record the evidence of some 300 registrations over the years of the marks CLASSIC and CLASSIQUE. Should the appellant's pretensions be well-founded, the status of all the other registrations would be in serious doubt, thereby turning the intellectual property field into a virtual jungle. It is true, of course, that in the Wool Bureau case as in the John Labatt v. Carling Breweries case, Cattanach J. and Collier J. respectively emphasized the need for purity of the Register and indeed, said that the state of the Register is irrelevant. On the other hand, in Pepsi Cola v. Coca Cola, the Supreme Court of Canada expressed a clearly different opinion. On the evidence that the word "cola" was descriptive, the Court cited some 26 registrations of the word "cola" or "kola", and in words which I have previously cited, ruled that whether or not there were legitimate grounds to impeach the COLA mark, its long, undisturbed existence and the acquiescence of it were such that any doubt must be resolved in its favour, otherwise a gross commercial injustice would result.

     With respect to the "purity of the Register" principle, it may be observed that if, in the history of some 300 marks registered with the word "classic", there should now be found on the strength of the applicant's argument before me that a succession of identical registered marks should now be said to be unregistrable, then the obvious conclusion is that all of these people were wrong in admitting the word "classic" or "classique" to registration. This would mean that on two singular issues, namely the Labatt v. Carling and the Molson v. John Labatt Ltd. cases (previously cited), the principles cited therein should be so absolute that it should be applied in the case at bar and find favour in the face of common sense.

     I should make a further comment on what is alleged as the basic obstruction to the impugned marks' registrability, namely the clearly descriptive or deceptively misdescriptive character of these marks. The applicant has provided the Court with what might be termed a proper selective approach to the dictionary definition of the marks as found in the Concise Oxford Dictionary, the Webster's New Twentieth Century Dictionary, and in the Petit Larousse.

     From the survey of this dictionary approach, I should suggest that the root meaning of the word "classic" derives from classical periods in the history of civilization, of literature, of music, all of them fairly didactic categories and used primarily, in my view, as quick-speak. It is because the concept of "classic" was originally so loosely drawn that the word now covers a multitude of meanings. The applicant has already outlined some of the dictionary meanings, but there are any number of meanings which have not been mentioned.

     First of all, in both the French and the English versions, "classic" and "classique" may be used as an adjective or as a substantive. The Oxford English Dictionary, Second Edition, Vol. 2, p. 281, provides the adjectival use as "first rank", "model approach", "approved or recognized", and of course, "belonging to greco-roman antiquity". Oxford also lists any number of uses in a substantive sense as a "writer", a "literary work", a "piece of art", a "student of antiquity", a "style", a "ballet", etc.

     As for the French "classique", the work entitled Trésor de la langue française, éd. 1977, vol. 5, p. 895, contains a long list of uses of the word both in a qualitative and in a nominative sense. As an adjective, the word is found in association with "la scolarité", "l'architecture", "la littérature", "la culture", "l'école", "la danse", "la sculpture", etc. As a noun, it may describe "un enseignant", "un livre", "un film", all seemingly being recognized as a model of the particular species. The Larousse Trois Volumes, 1970, vol. 1, p. 660, covers substantially the same ground in both uses and refers to "langue classique", "théâtre classique", "un classique", etc.

     The language of the statute is that a mark be neither clearly descriptive nor deceptively misdescriptive of the wares covered by the mark. My own respectful view of the marks in their descriptive application is that they are very rarely used in association with tangible properties or with wares, such as cigarettes, bathtubs or peanut butter. They have mostly been used in association with abstractions such as music, literature, or with any of the other terms denoting some attribute or state. In the case at bar, any association with cigarettes could not possibly be considered clearly descriptive or deceptively misdescriptive of the wares.

     I will go further and suggest that if the mark be interpreted in a substantive mode, it would simply be transferring a particular, non-descriptive identity to the wares. To say that a cigarette is a "classic" does no more, in a pejorative sense, than identify the product. It is very much akin to saying that a mark such as OMEGA is descriptive because it is "the last word". In my respectful view, the marks CLASSIC and CLASSIQUE are sufficiently derivative that they are not clearly descriptive or deceptively misdescriptive of the quality or character of the wares described.

Conclusion:

     I will be the first to concede that the registrability of these and other similar marks are not often an open and shut case. Nevertheless, for the reasons stated, I should dismiss the application, with costs.

     L-Marcel Joyal

     __________________________

     J U D G E

O T T A W A , Ontario

September 13, 1996.

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