Supreme Court of Canada
Registrar
of Trade Marks v. Hardie & Co. Ltd., [1949] S.C.R. 483
Date:
1949-02-01
In The Matter Of The Unfair Competition Act, 1932, And
In The Matter Of The Trade Mark "Super-Weave
Between:
The Registrar Of Trade Marks (Respondent) Appellant;
and
G. A. Hardie & Co.
Limited (Petitioner) Respondent.
1948: June 9, 10, November 18; 1949: February 1.
Present:—Kerwin, Taschereau, Rand, Kellock and Estey JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Trade Mark—Descriptive word—Laudatory epithet not
subject of monopoly—The Unfair Competition Act, 1932, (Can.) 1932, c. 38, ss.
1, 2 (d), (k), (l), (m), (o), 26, 27 and
29—Practice—The Exchequer Court Act, R.S.C, 1929, c. 34, s. 56—The Exchequer
Court Rules—rules 36, 37, 41 and 300.
[Page 484]
The respondent in proceedings taken under section 29 of The
Unfair Competition Act, 1932, to register the words "super-weave"
as its trade mark, obtained a judgment from the Exchequer Court of Canada
declaring that it had been proved to its satisfaction that the mark had been so
used by the respondent as to have become generally recognized by dealers in
and/or users of textiles as indicating that the respondent assumed
responsibility for the character and quality of wares bearing that mark.
In so doing the respondent complied with the practice of the
Exchequer Court—under r. 35 it published notice of the filing of its petition
for registration in the Canada Gazette; under r. 36 it served the
Minister with a copy of the petition and of the notice, and no one appearing to
oppose its application for registration, it then under r. 37 filed the required
affidavit with the Registrar of the Court, served the Minister with notice and
moved for a declaratory order by serving notice upon the Registrar of Trade
Marks whom it named as respondent in the style of cause. The latter then
opposed the application.
Held: that the appeal should be allowed, and that
(reversing the decision of The Exchequer Court), the petition be dismissed.
Held: also, Rand and Kellock JJ. dissenting in part,
that the compound word "super-weave" is a laudatory epithet of such
common and ordinary usage that it can never become adapted to distinguish
within the meaning of s. 2(m) of The Unfair Competition Act, 1932. It
being impossible to bring the word within the meaning of "trade mark"
as defined by s. 2(m), an application under s. 29 cannot succeed.
Rand and Kellock JJ. agreed with the majority of the Court
that the appeal should be dismissed but only on the ground that the onus of
proof imposed upon the applicant by s. 29 had not been met.
Per Rand J.—The expression "has become adapted to
distinguish" as used in The Unfair Competition Act, 1932, s. 2(m),
includes any case in which the word mark has in fact become the identifying
badge of the article to which it is attached so that when associated with goods
of a particular trade whatever primary meaning it may have had is submerged and
only the trade designation remains.
Per Rand and Kelock JJ.—When it is proposed to withdraw
an ordinary word from the common use the task of establishing the secondary
meaning becomes greater according to the extent of that use.
Per Kellock J.—By the terms of s. 20m) if the symbol
"has become adapted to distinguish" and "is used" for any
of the purposes mentioned therein that is sufficient to constitute a
registerable mark provided it is not excluded under such sections as 14, 26 and
27. The Court has no discretion to exclude any word apart from the sufficiency
of evidence adduced in support of its having become adapted to distinguish the
wares of the applicant.
A clearly descriptive word which has acquired a secondary
meaning within s. 29(1) is a word which "has become adapted to
distinguish" within s. 20m) so that in the case of such a word to satisfy
the requirements of the latter part of s. 29, is to satisfy the definition in
s. 20m).
Per Estey J.—A survey of the relevant sections and of
the Statute as a whole lead to the conclusion that the phrase "adapted to
distinguish" has the same meaning in our statute as under the statute in
Great
[Page 485]
Britain. It follows that words commonly used and appropriately
described as laudatory epithets cannot become registrable as trade marks. Also,
that the appellant having been named as a party and so treated by the Exchequer
Court, had the necessary status to appeal.
APPEAL from the judgment of the Exchequer Court of
Canada, Cameron J., (July 30, 1947), granting a declaration in the terms of s.
29(1) of The Unfair Competition Act, 1982, with respect to the compound
word "super-weave" in relation to cotton goods, woollen goods and
synthetic textiles as to the whole of Canada.
E. G. Gowling K.C. and J. C. Osborne
for the appellant.
G. H. Riches for the
respondent.
Kerwin, J.—This
is an appeal by the Registrar of Trade Marks from an Order of the Exchequer
Court made on the application of the Respondent, G. A. Hardie &
Co. Limited, under Section 29 of The Unfair Competition Act, 1932. This
section reads as follows:—
"29. (1) Notwithstanding that a trade mark is not
registrable under any other provision of this Act it may be registered if, in
any action or proceeding in the Exchequer Court of Canada, the court by its
judgment declares that it has been proved to its satisfaction that the mark has
been so used by any person as to have become generally recognized by dealers in
and/or users of the class of wares in association with which it has been used,
as indicating that such person assumes responsibility for their character or
quality, for the conditions under which or the class of person by whom they
have been produced or for their place of origin.
(2) Any such declaration shall define the class of wares
with respect to which proof has been adduced as aforesaid and shall specify
whether, having regard to the evidence adduced, the registration should extend
to the whole of Canada or should be limited to a defined territorial area in
Canada.
(3) No declaration under this section shall authorize the
registration pursuant thereto of any mark identical with or similar to a mark
already registered for use in association with similar wares by any person who
was not a party to the action or proceeding in which the declaration was made.
By the Order appealed from, the Court declared that it had
been proven to its satisfaction that the trade mark "SUPER-WEAVE" had
been so used by the respondent as to have become generally recognized by
dealers in and users of textiles including cotton goods, woollen goods and
synthetic textiles, as indicating that the respondent assumed responsibility for
their character and quality or
[Page 486]
for their place of origin. And the Court further declared that
having regard to the evidence produced, any registration of the said trade mark
"SUPER-WEAVE" in association with textiles including cotton goods,
woollen goods and synthetic textiles should extend to the whole of Canada.
The preliminary point raised by the respondent may first be
determined. Under rule 35 of the Exchequer Court Act notice of the
application was given in the Canada Gazette requiring any person desiring
to oppose the petition to file a statement of his objections with the Registrar
of the Court within fourteen days after the last insertion of the notice, and
serve a copy upon the petitioner. No objections were filed, but presumably Rule
35 was complied with by the petitioner, and a copy of the petition and notice
above mentioned was served upon the Minister charged with the administration of
the Act. Certainly the petitioner complied with Rule 37, which provides that if
no one appears to oppose the application, the petitioner may file with the
Registrar of the Court an affidavit in support thereof, and upon ten days'
notice to the Minister, and upon serving him with a copy of any affidavit so
filed, may move the Court for such Order as upon the petition and affidavit he
may be entitled to. This was done by serving a notice upon the Registrar of
Trade Marks, who was named as respondent in the style of cause, notifying him
of the application for an Order setting the date for the hearing of the application.
The Registrar of Trade Marks opposed the application, but the respondent
complains that it had no notice of the intention of the Registrar of Trade
Marks, and now takes the position that the latter never was a party to the
proceedings and has no status to appeal. This objection cannot prevail, as the
Registrar was named as a party and was so treated by the Exchequer Court.
However, I agree with the learned trial judge that the Registrar of Trade Marks
should comply with Paragraph 2 of Rule 36 and file and serve a statement of his
objections to such a petition.
The evidence on the application consisted of the affidavit
of the vice-president of the respondent, showing the nature of the latter's business and how it has progressed, and the
[Page 487]
nature of its advertising, together
with several affidavits from persons connected with the laundry business or
hospitals in different parts of Canada. The deponents were not cross-examined
and no affidavits were filed in answer. It might be pointed out that generally
speaking the advertising shows that the word "SUPERWEAVE" is overlaid
with the words "COTTONS Reg’d.", and no satisfactory explanation of
the precise meaning of this was given. However, even accepting the findings
made by the trial judge upon this evidence, I am of opinion that the appeal
should be allowed. The trial judge referred to the principle laid down in what
is known as the Perfection Case, Joseph Cros-field's & Sons Ltd.
Application , that an ordinary laudatory epithet
cannot acquire a secondary signification. He also referred to the decision of
the President of the Exchequer Court in C. Fairall Fisher v. British
Columbia Packers, Limited, known as the "Sea-Lect Case, ,
and, as a matter of fact, the trial judge, shortly after the decision in the
present case, decided in Standard Stoker Company Inc. v. The
Registrar of Trade Marks, that the word "standard" used
in connection with goods was of a laudatory nature and could not mean the
articles made by the Petitioner.
It might be added that this same principle was approved by
the House of Lords in A. Bailey & Co. Ltd. v. Clark, Son
& Morland, Ltd., and by the Privy Council in The
Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada, Ltd., et al, .
The trial judge considered that "SUPER-WEAVE" is
not an ordinary laudatory epithet such as "best", "perfect"
or "select". He would have refused an application for the single word
"SUPER", which, as he points out, is here used as an abbreviation of
the word "superior". In his opinion, "WEAVE" is descriptive
of the character of the goods as indicating that they are manufactured by the
process of weaving, and "SUPER-WEAVE" in its primary sense would
indicate a better quality of weaving. He considered that the word
"SUPER-WEAVE" was not a common or ordinary laudatory word in ordinary
use, but that it came
[Page 488]
within the statement in the judgment of the Master of the
Rolls in the Perfection Case, supra, at p. 854, that "in the case
of a peculiar collocation of words it (the Court) might be satisfied with
reasonable proof of acquired distinctiveness even though the words taken
separately might be descriptive words in common use." With respect, I am
unable to agree. The Oxford English Dictionary contains the following
definitions of "superior", "super" and "weave".
SUPERIOR, a.
6. Higher in status or quality
than; hence greater or better than * * * more or better than, above, beyond.
SUPER, sb.
6.=superfine
1881 Instr. Census Clerks (1885)
64 woolen cloth manufacture*** Super Weaver. 1885 Times (Weekly ed.) 5 June 7/2
of the power looms, 1700 are devoted to the production of extra supers and
3-ply carpets.
SUPER, a.
2.=superfine 4.
1842 Bischoff Woolen Manuf. II.
187 Long wool of the best class that is grown in Kent, which we term super
matching, or long drawing.
SUPER, prefix
6. prefixed to sbs. with adj.
force; higher in rank, quality, degree, or amount; of a higher kind or nature;
superior.
WEAVE, sb.
2. A particular method or pattern
of weaving.
The word "SUPER" is thus indicative of
"superior", or "superfine" quality especially in the
textile industry, and the word "WEAVE" is particularly apt to
describe an important characteristic of textiles. The result is that the
compound word "SUPER-WEAVE" clearly indicates and describes textiles
that have a superior or superfine weave, an attribute that is unquestionably
much desired by purchasers and users of such wares and, therefore, an attribute
which a trader in textiles would naturally wish to emphasize in offering his
wares for sale. Such a word may not be commandeered by one manufacturer and
registered under The Unfair Competition Act so as to prevent others from
claiming the same quality in their merchandise and using the same or a similar
expression to describe it.
It may be advisable to say that I am dealing only with an
application to register. The decision of the Court of
[Page 489]
Appeal in the Matter of an Application by J. & P.
Coats, Ld. for registration of a Trade-Mark
(sheen), so much relied upon by the respondent, was decided, as the Master of
the Rolls points out at p. 380, on the basis that the word "sheen"
was clearly not a merely laudatory word like "perfection", or
"best", or "classic", or "universal", or
"artistic".
It was not contended that if the Court came to the
conclusion that "SUPER-WEAVE" was an ordinary laudatory expression
the application should succeed, but, in view of the argument addressed to us,
it is advisable to state what appears to be the proper construction of section
29 of the Act. The opening words of subsection 1 "notwithstanding that a
trade mark is not registrable under any other provision of this Act"
require one to examine the definition of trade mark in section 2(m).
That definition states that "trade mark" means a symbol "which
has become adapted to distinguish". While this wording differs from
section 9 of the English Act in question in the Perfection Case, since in
section 9 "distinctive" is stated to mean "adapted to
distinguish", no distinction should be drawn between the uses of the
different tenses. Turning again to section 29, while the Court is empowered to
grant the declaration mentioned, notwithstanding that a trade mark is not
register-able under any other provision of the Act, the original idea
underlying such legislation, as it has been developed in England, should be
followed here, with the result that, if a word is held to be purely laudatory,
no amount of use or recognition by dealers or users of words as indicating that
a certain person assumes responsibility for the character or quality of the
merchandise would be sufficient to take such an expression out of the common
domain and enable the user thereof to become registered as the owner of a trade
mark under The Unfair Competition Act.
The appeal should be allowed and the Petition dismissed, both
without costs.
Taschereau, J.—The
learned trial Judge reached the conclusion that he was satisfied that the trade
mark "Super-Weave" had been so used by the respondent, as to have
been generally recognized by dealers in and users of textiles, cot-
[Page 490]
ton and woollen goods, as indicating that the respondent
assumed responsibility for their character or quality or for their place of
origin.
He also held that the same words were not ordinary laudatory
epithets and that they may constitute a trade mark so as to be entitled to
registration.
Wih due respect, I cannot agree, as I believe that the
compound word "Super-Weave" is a laudatory epithet, and is capable of
application to the goods of any one else. Of its very nature it is common
property and cannot be made the subject of monopoly. It is used for the purpose
of advertising the superior quality of the weaving of a particular commodity.
I agree with my brother Kerwin, that the appellant, having
been named as a party, and having been so treated by the Exchequer Court, has
the necessary status to lodge the present appeal.
The appeal should be allowed, but without costs.
Rand, J.—This
appeal raises questions in the interpretation of the Unfair Competition Act,
1982, of some difficulty and they exemplify again the necessity for caution
in interpreting a Canadian statute by the light of English decisions on English
statutes.
Mr. Gowling invites us to attribute to "trade
mark" the characteristic of being "distinctive" as defined in
the English Trade Marks Act, 1905, and as this involves the substance of
the contention on behalf of the Registrar it is desirable to consider briefly
the conceptions of trade mark attributes written into these statutes.
Under section 9 of the English Act certain essential particulars
are prescribed for a registrable mark and then an omnibus subsection (5)
permits under certain conditions the registration of "any other
distinctive mark". For that purpose, "distinctive" means
"adapted to distinguish the goods of the proprietor of the trade mark from
those of others"; and in determining whether a mark is so adapted the
tribunal may "in the case of a trade mark in actual use, take into
consideration the extent to which such user has rendered such a trade mark in
fact distinctive for the goods with respect of which it is registered or
proposed to be registered". From this it is seen that the determination in
[Page 491]
each case is whether the mark is "distinctive" as
defined, whether the quality and character of the word, as it is found in the
body of the language, stamp it as so adapted; and it follows that for various
reasons certain words will be excluded. The monopoly of a registered mark
appropriates from ordinary trade use words which otherwise would be open to
all; and the legislative requirement raises at once interests of the public as
well as competitors. Under the English decisions it is settled that words of
the normal vocabulary which a manufacturer or seller of goods would ordinarily
use in either describing or appraising his wares are outside the scope of the
statute; and even though by long continued and exclusive use a word may have
come actually to indicate particular goods, that fact is only evidential of the
character of the word mark which the statute requires.
On the other hand there can be this de facto
distinctiveness. It is doubtful that any word can be said to be incapable,
regardless of time or circumstance, of such an adaptation. We would say of such
a mark that it "has become distinctive"; and I find that the Lord
Chancellor in the Glastonbury case, at page 258 in dealing
with that aspect of adaptation, says: "It is not in dispute that the
respondents in the circumstances of this case were called upon to prove by
evidence that the word 'Glastonbury' or 'Glastonbury's' alone had become, at
the date of registration, adapted to distinguish their goods from those of
other persons." The Court there rejected the mark because in spite of the de facto adaptation it had not the distinctive quality
specified by the statute. The difference between the two conceptions is made
clear also by Lord Parker in the W. & G. mark case, at page
637; and by Lord Justice Hamilton in R. J. Lea Ltd., at page
463 in this language: "Further, the Act says 'adapted to distinguish'; the
mere proof or admission that a mark does in fact distinguish does not ipso
facto compel the judge to deem that mark to be distinctive. It must be
further 'adapted to distinguish', which brings within the purview of his
discretion the wider field of the interests of strangers and of the
public."
[Page 492]
With that distinction in mind, then, let us examine the
definition of "trade mark" in section 2(m) of
the Canadian Act. By this, "trade mark" means "a symbol which has
become adapted to distinguish particular wares falling within a general
category from other wares falling within the same category and is used by any
person in association with wares entering into trade or commerce for the
purpose of indicating to dealers in, and/or users of such wares that have been
manufactured, sold, leased or hired by him or, etc." The word
"distinctive" is seen to be absent; it appears only once in the
statute, in section 28(1) (d) where it is used in relation to a
foreign mark. That fact I consider significant. On the other hand, in the
definition of "distinguishing guise", section 2(d), the
expression "is adapted to distinguish" is used. There is, therefore,
no restriction to marks which are "distinctive" in the sense of the
English Act.
The expression "has become adapted to distinguish"
includes then any case in which the word mark has in fact become the
identifying badge of the article to which it is attached; that when it is
presented to the mind associated with goods of a particular trade, whatever
primary meaning it may have had is submerged, and only the trade designation
remains: J. & P. Coats, Ld., . If,
therefore, a word is used which describes or imports characteristics or
qualities of goods, that connotation must have so disappeared before it can be
said to have become so adapted; and when it is proposed to withdraw an ordinary
word from the common use the task of establishing that exclusive secondary
meaning becomes greater according to the extent of that use.
With these considerations in mind, I turn to the case before
us. The mark offered is the compound word "Super-Weave". For thirteen
years it has been used in connection with textiles, including cottons, woollens
and synthetic fabrics, and the mode of its use has taken several forms. The
elements of it are ordinary words and their sense is clearly descriptive of
quality, and for that reason it was assumed, and properly so, to be excluded
from section
[Page 493]
26; but an application was made to the Exchequer Court under
section 29, and it becomes necessary to give some: consideration to the
language of that section:—
29. (1) Notwithstanding that a trade mark is not registrable
under any other provision of this Act it may be registered if, in any action or
proceeding in the Exchequer Court of Canada, the court by its judgment declares
that it has been proved to its satisfaction that the mark has been so used
by any person as to have become generally recognized by dealers in
and/or users of the class of wares in 'association with which it has been used,
as indicating that such person assumes responsibility for their
character or quality, for the conditions under which or the class of person by
whom they have been produced or for their place of origin.
The expression "as to have become generally recognized
* * * as indicating that such person assumes responsibility for their
character or quality, etc." appears in this statute, apparently, for
the first time. It is contained also in section 2, subsections (k) and
(l) in relation to definitions of the word "similar".
"Responsibility" seems to signify only what is imported by every
trade mark, i.e. the commercial integrity and dependability of the owner of the
mark. But the proof required by the section is both the fact that the mark has
become adapted to distinguish certain goods from other goods of the same class
as required by the definition and that the owner of it has become generally
known as assuring quality or character, etc.
What, then, is the evidence of these matters offered to the
Court? There are eight affidavits by customers of the applicant who are
familiar with the wares and who say, incorporating the language of the section,
that in effect "Super-Weave" means to them the goods of the
applicant. There is also evidence of considerable advertising over the period
of its use. What is asked for is the monopoly of this mark throughout the
Dominion. The purchasers generally are laundries, dry cleaners, linen
suppliers, hotels, hospitals and other institutions; but that the exclusiveness
of the identifying sense of the word is in fact present to the minds of the
customers, apart from that part of the trade which has not spoken, is by no
means made out; and much less has it been shown to be recognized
"generally" by Canadian dealers as attaching responsibility to the
owner. Obviously, to customers purchasing these goods over some years the word
would be associated with their origin; but that is short of the identification
with the goods in which
[Page 494]
the descriptive sense of the word has disappeared. Neither that
nor the general recognition required has, in my opinion, been made out and the
application fails.
The respondent took the objection that the Registrar,
representing the Minister, had no standing to appeal because he had not, under
rule 38 of the Exchequer Court, appeared by filing a statement of objections to
the application. I agree that the rule applies to the Minister. By rule 41,
however, notice of trial must be served on the Minister. The effect of this is
that any default under rule 38 is superseded; and notwithstanding default, the
Minister continues as a party. That being so, he has a right of appeal under
section 56 of the Act.
As this is the first occasion upon which this Court has been
called upon to interpret the unusual language of this statute, the applicant
should be given leave, if it desires, to present new evidence to the Exchequer
Court to bring. itself within the section. I would therefore allow the appeal
without costs and refer the matter back to that Court.
Kellock, J.—By
the judgment of the Exchequer Court (Cameron J.) in appeal, respondent has been
granted a declaration in the terms of section 29(1) of the Unfair
Competition Act with respect to the compound word "Super-Weave"
in relation to cotton goods, woollen goods and synthetic textiles extending to
the whole of. the Dominion.
Appellant contends in the first place that as the words in
question are of a laudatory character and clearly descriptive of the said goods
they are incapable of registration under the statute. It is said that the
Canadian Statute in this respect is to all intents and purposes the same as the
corresponding provisions of the English Trade Marks Act, 1905 and that
the decisions under the last mentioned statute, excluding from registration
laudatory epithets, have equal application under the Canadian Act.
The first four paragraphs of section 9 of the English
statute provide certain essentials of a registrable trade mark but if a mark
does not come within them it may yet be registered upon order of the Board of Trade
or the court if it is "distinctive", i.e., if, as defined by the
statute, it is
[Page 495]
"adapted to distinguish" the goods of the
proprietor of the mark from those of other persons. In the determination of
that question the tribunal is authorized, if the mark has been in use, to take
into consideration the extent to which such user has rendered the mark in fact
distinctive, but it has been held that this is a purely discretionary power.
Bailey's case , is an illustration of the well
settled effect of the English statute, namely, that distinctiveness in fact is
not conclusive upon the question of registrability. One extract from the
judgment of Lord Maugham L. C. at p. 258 is sufficient:
It is not in. dispute that the Respondents in the
circumstances of this case were called upon to prove by evidence that the word
"Glastonbury" or "Glastonburys" alone had become, at
the date of registration, adapted to distinguish their goods from those of
other persons, and it is further admitted, that even if that question were
answered in the affirmative, the tribunal was not bound to allow registration.
By the terms of section 2(m) of the Canadian Statute
however, if the symbol "has become adapted to distinguish" and
"is used" for any of the purposes mentioned in the paragraph, that is
sufficient to constitute a registrable mark provided it is not excluded under
such sections as sections 14, 26 and 27. The court, in considering whether or
not any particular word satisfies the provisions of the definition section, has
no discretion under the Canadian Statute to exclude any word at the threshold
of the hearing or to refuse to hear evidence designed to establish that in fact
it has become adapted to distinguish. Section 26(1) (c) excludes all
words which are clearly descriptive or mis-descriptive of the character or
quality of the wares in connection with which it is proposed to use them and no
differentiation is made as among words or classes of words whether laudatory or
otherwise. In my opinion therefore it is not open to the court to exclude any
word apart from the sufficiency of the evidence adduced in support of its
having become adapted to distinguish the wares of the applicant.
The language used in section 2(m) is
"has become" adapted to distinguish not "is" distinctive or
"is" adapted to distinguish.
[Page 496]
In the Perfection case ,
Fletcher Moulton L. J. in discussing the provision in the English statute
enabling the court to take into consideration the extent to which user had in
fact rendered a mark distinctive, said at p. 147:
To my mind this provision can bear but one interpretation.
It recognizes that distinctiveness, i.e., being adapted to distinguish the
goods from those of other traders, is not necessarily an innate quality of the
word. It may be acquired. There may be cases in which, if the Court says,
"The word is descriptive of the goods, and cannot be distinctive solely of
your make of those goods,", the applicant may (if he can) reply thereto,
"I will shew that it can become distinctive of my make of those
goods by shewing that it has actually become so either generally
or in a particular market." To use a phrase suggested by Farwell L. J.
during the argument, the reply is of the type of 'solvitur ambulando': "It
can denote my goods because it actually does so."
In that case the learned Lord Justice was satisfied that the
evidence showed that "the past user of the word has identified it in the
eyes of the public with the goods of the applicants". Nevertheless under
the English statute although a mark has become distinctive, that fact does not
necessarily remove objection to a word itself if the word, considered as a
word, "is" not adapted to distinguish. Under the Canadian statute
however, if a word "has become" so adapted, that is sufficient.
As was said by Kindersley V. C. in Archer v. Kelly,
, at 304:
The word "become" in its usual and proper
acceptation imports a change of condition, that is the entering into a new
state or condition by a change from some former state or condition.
"Adapted" means "fitted" or
"suitable". A word not originally fitted or suitable to serve as a
trade-mark may in my view become so, and I am unable to identify the expression
"has become" with "is", although, no doubt it may well
include it.
While section 26(1) (c) is exclusionary, nevertheless
registration may be had if, on application to the court under section 29, it is
proved to the satisfaction of the court that the mark has been so used as to
have become generally recognized by dealers in and/or users of the class1
of wares in association with which it has been used as indicating that such
person assumes responsibility for their character or quality, or for the other
matters mentioned in the subsection.
[Page 497]
It is contended by the appellant that the applicant under
this subsection is met at the outset with having to establish that he has a
"trade-mark", i.e., that he must satisfy the court that the mark
meets the provisions of section 2(m). In this view, having regard to the
provisions of section 12, an applicant who is a manufacturer or vendor is
required to establish under section 2(m) that:
(a) his mark has become adapted to distinguish his
wares; and
(b) that it is used in association with the
wares for the purpose of indicating to dealers in and/or users that they have
been 'manufactured or sold by him;
and under section 29(1):
that the mark has been so used as to have become generally
recognized by dealers in and/or users as indicating that such person
"assumes responsibility for their character or quality".
The words "assumes responsibility for their character
or quality" in the above section are also to be found in sections 2(k)
and (l) and I think that these words were intended by the
draftsman to be construed as the equivalent of the words "manufactured,
sold, leased or hired by him" as used in section 2(m). Reference to
sections 26(1) (c) and 27(1) (b) would indicate that in their
context the words "the character or quality of the wares" was there
intended to serve a somewhat similar function.
In section 2(m) the use specified is use for a
purpose. In section 29(1) the use is use which has produced a result. I think
that whatever may be the situation in the case of other symbols, a clearly
descriptive word which has acquired a secondary meaning within section 29(1) is
a word which has "become adapted to distinguish" within section 2(m)
so that in the case of such a word, to satisfy the requirements of the latter
part of section 29 is to satisfy the definition in section 2(m).
While the approach to the construction of the Canadian
statute is not, in my opinion, the same as in the case of the English Statute,
nevertheless by reason of section 26(1) (c) I would employ the language
of Fletcher Moulton L. J. in the Perfection case, supra at 858:
The tribunal before whom is brought an application to
register a word under paragraph 5 is entitled to regard the word as prima
facie unsuitable by reason of its being outside the specified classes, and
it is for the applicant to show that it is proper to be registered * * * The
extent to which the Court will require the proof of this acquired
distinctiveness to go will
[Page 498]
depend on the nature of the case. If the objections to the
word itself are not very strong it will act on less proof of acquired
distinctiveness than it would require in the case of a word which in itself was
open to grave objection.
I think that the burden of proof increases in direct ratio
to the degree in which a word, or words, is in common use as descriptive of an
article of trade or laudatory thereof. In Canadian Shredded Wheat Co. v.
Kellogg, Lord Russell said at 142:
But the onus on the person who attempts to establish this
secondary meaning is a heavy one * * * Where the words are purely descriptive
and in common use it is even more difficult to conceive a case in which they
could acquire a secondary meaning.
I think this language is applicable to the present
statute.
Coming to the evidence, the respondent alleges that on
January 1, 1933, it adopted the word "Super-Weave" as a trade-mark
and applied the same to cotton, woollen and synthetic textiles) and that it has
since continuously used the said mark in Canada therewith. In the affidavit
supporting the petition, made by an officer of the respondent, it is said that
a small percentage of the goods manufactured or merchandised by the respondent
is sold to the retail trade but that sales are confined principally to
launderers, dry cleaners, linen suppliers and institutions such as hospitals
and hotels which purchase goods from the respondent either by the piece or
manufactured into articles such as laundry bags, laundry wash mats, press cover
cloths, towels, knitted padding for ironers and similar types of products.
While it is said, as above mentioned, that the respondent has continuously used
the words "Super-Weave" since its adoption on January 1, 1933, it is
significant that on the 20th of January, 1933, the respondent registered, not
the trade-mark "Super-Weave" but "Hardie's Super-Weave".
While this registration was with respect to "cotton, woollen, linen and
all other cloth materials and merchandise", and while the affidavit says
that the petitioner's wares have always been identified by the trade-mark
"Super-Weave", simpliciter, the exhibits show that what was in
part used was "Superweave" as one word with the words "Cottons
Reg'd." superimposed thereon. The affidavit also says that all stationery,
invoices, wrapping paper, packages and cartons used by the petitioner in connection
with the
[Page 499]
merchandising and distribution of
its products have the word "Super-Weave" prominently displayed
thereon but the stationery produced bears the words "G.
A. Hardie & Co. Limited Super-Weave Cotton Goods". Similarly,
the sample of wrapping paper used to package small parcels has the same words
in slightly different form and the same applies to the sample of cartons used
in the case of large packages. Again, the purchase order form and the same
applies to the sample of cartons used in the case of large packages. Again, the
purchase order form uses the words "Superweave" with the words
"Cottons Reg'd." superimposed, and the same is true of the invoice
form, the salesman's order form and the form of desk pad. The respondent's
letter-head uses "G. A. Hardie & Co. Limited
Super-Weave Cotton Goods" and the office order form uses the style "G. A. Hardie &
Co. Limited, Manufacturers and Wholesalers Super Weave Textiles".
Under the provisions of section 6 a trade-mark is deemed to
have been, or to be used, for the purposes of the Act. in association with
wares if "by its being marked on the wares themselves, or on the packages
in which they are distributed, or by its being in any other manner so
associated with the wares at the time of the transfer of the property therein
or of possession thereof in the ordinary course of trade and commerce notice of
the association is then given to the persons to whom the property or possession
is transferred". None of the exhibits produced, as mentioned above, which
would appear to come within, the contemplation of this section use the words
"Super-Weave" alone.
In In re Powell's Trade-Mark , at
401, Lindley L. J. said:
The cases which have been referred to * * * all shew that
the user as a trade-mark must be the user of that which is registered as the
trademark alone, and mot in combination with something else.
See also Richards v. Butcher .
In addition to the affidavit mentioned above, the respondent
filed an affidavit by officers of two laundries in Toronto, one in the city of
St. John, N.B., one in the city of Winnipeg, one in the city of Montreal, one
in the city of Victoria, one in the city of Calgary. There is also an
[Page 500]
affidavit of the superintendent of a hospital of the city of
Toronto. All of these affidavits are essentially in the same form. The following
are typical paragraphs:
2. That the said NEW METHOD LAUNDRY CO. (LIMITED is a firm
of launderers, dry cleaners and linen suppliers using various types of textile
goods, including laundry bags, laundry identification tags, laundry wash nets,
sheeting, press cover cloths, 'knitted padding for ironers towels and
towelling.
3. That I have been familiar with the trade mark
"Super-Weave", as used by G. A. Hardie &
Co. Limited, in association with textiles since 1933, and I am familiar with
all the products of G. A. Hardie & Co. Limited by
reason of receiving advertising literature correspondence and invoices
describing said products which are sold under the name "Super-Weave".
4. That said NEW METHOD LAUNDRY CO. LIMITED, have since 1933
purchased from G A. Hardie & Co. Limited many
hundreds of dollars worth of textile goods bearing the trade mark
"Super-Weave".
5. That the said trade mark "Super-Weave"
indicates to me that textiles, including Cotton goods, Woollen goods and
Synthetic textiles bearing the said trade mark are manufactured and sold by G. A. Hardie & Co. Limited, that they are of a defined
standard and that G. A. Hardie & Co. Limited
assumes responsibility for their character and quality. The said trade-mark has
no other meaning to me.
6. Whenever I see textiles sold under the name
"Super-Weave", I immediately associate the same with the products of G. A. Hardie & Co. Limited, and I am led to believe that
the same are manufactured and sold by the said firm."
It is obvious that these affidavits are quite insufficient
to establish the "general" recognition required by the provisions of
section 29. There must be hundreds of other laundries and there are many other
hospitals throughout the country, none of which are so much as mentioned in the
evidence.
The statement in paragraph 5 that the trade-mark upon the
goods indicates to the deponents that "they are of a defined
standard" is illustrative, in my opinion, of the weight to be given to the
affidavits themselves. By section 30, subsection 3, it is provided that if the
mark is intended to indicate that the wares are of a defined standard, the
application for registration must contain an exact definition of what the use
of the mark in association with wares is intended to indicate in respect of the
standard which such wares have attained. Nowhere in the affidavits is any
information given as to this standard which is indicated to these deponents by
the use of this trade-mark and in the absence of such information I take it
that these words
[Page 501]
were quite ignorantly used. Further, an applicant such as
the respondent is precluded by section 12 from adopting a mark to indicate its
goods are of a defined standard. In my opinion affidavits of this nature,
without any evidence as to how they were obtained and which are limited
entirely to customers of the applicant for registration, are quite insufficient
to satisfy the heavy onus resting upon the person desiring to obtain a judgment
under the provisions of section 29 in circumstances such as are here present.
The proper practice to be followed in obtaining evidence of
any weight for use on such an application as that here in question is indicated
in Hack's case, , where questionnaires had been
submitted to a large number of persons and firms for the purpose of
ascertaining by question or questions, not leading in their nature, the meaning
to the addressees of the particular trade-mark there in question. The evidence
submitted in support of the present petition falls far short of that which is
necessary under section 29.
Counsel for the respondent submitted that should the court
be of opinion that the evidence was insufficient the petition should not be
dismissed on that ground for the reason that no statement of objections was
filed in the court below on behalf of the appellant and the respondent
therefore had no notice until the actual trial that any such objection would be
taken. Moreover, there is some difference of opinion between counsel as to
whether any point was in fact made at the trial with respect to the
insufficiency of the evidence. In view of this situation, while I think the
appeal should be allowed, I think the petition should be remitted to the court
below for a rehearing and that both parties may be at liberty to adduce further
evidence. On such rehearing the actual use of the mark will require to be
considered as well as the kind of goods with respect to which it had been used
in connection with the question as to whether the use in fact made is
sufficient to satisfy the requirements of section 29.
Respondent also contends that the appellant has no right of
appeal to this court and that in any event as no statement of objections was
filed in accordance with the
[Page 502]
second paragraph of rule 36 of the
Exchequer Court rules, respondent should not be heard. It is said he is not
properly before the court.
It is not and could not, in view of the circumstances, be
contended that the appellant was not a party to the proceedings in the court
below as the respondent itself made the appellant the party respondent in those
proceedings. Section 56 of the Unfair Competition Act is accordingly
sufficient warrant for appeal.
As to the necessity for filing a statement of objections
even if this requirement applies to the Minister, which I am inclined to doubt,
rules 37 and 41 both would require, in any event, notice to be given to the
Minister of the hearing and it cannot be contended that the Minister could not
at the hearing take any ground of objection because of any failure to file
objections. Further, rule 300 authorizes relief to be given against such à failure and in my view it would be proper in the present
case to relieve against any such obligation if it in fact exists.
I think therefore, that there is no substance in the
objections of the respondent. I would allow the appeal and remit the petition
to the court below to be dealt with in accordance with the principles indicated
above upon any further evidence which may be adduced by either party.
Estey, J.—The
respondent, its head office in Toronto, manufactures and distributes textiles.
Early in 1933 it adopted and identified its merchandise by the compound word
"super-weave" or "superweave", and in 1947 commenced these
proceedings under s. 29 of The Unfair Competition Act, 1932 (S. of C.
1932, c. 38), for a declaration that might lead to the registration of this
word as a trade mark. The petition was granted in the Exchequer Court and the
appellant appeals from that decision.
S. 29 provides:
29. (1) Notwithstanding that a trade mark is not registrable
under any other provision of this Act it may be registered if, in any action or
proceeding in the Exchequer Court of Canada, the court by its judgment declares
that it has been proved to its satisfaction that the mark has been so used by
any person as to have become generally recognized by dealers in and/or users of
the class of wares in association with which it has been used, as indicating
that such person assumes responsibility for their character or quality, for the
conditions under which or the class of person by whom they have been produced
or for their place of origin.
[Page 503]
Respondent submits that "super-weave" as
normally-used is descriptive of the "character or quality" of
textiles, and therefore not registrable under s. 26(1) (c), but that
because this word "super-weave" has been continuously used since 1933
in association with its textiles, it has acquired a secondary meaning in the
sense that it has "become generally recognized by dealers in
and/users" as to justify the declaration provided for in s. 29.
The appellant submits that the word "super-weave"
as ordinarily used is a laudatory epithet and cannot "become adapted to
distinguish," and therefore not a trade mark within the definition in s.
2(m). He cites Leopold Cassella & Co., , Bailey & Co. Ld. v. Clark,
Son & Morland Ld., , and R. J. Lea, Limited .
These cases, decided under the Trade Marks Act, 1905, in Great Britain
(7 Edw. VII, c. 15, as amended in 1919) distinguish between distinctiveness in
fact and distinctiveness defined in that Act as "adapted to
distinguish." The proof of distinctiveness in fact is relevant but is not
conclusive in determining whether a trade mark is "adapted to
distinguish." In R. J. Lea, Limited, supra, Hamilton, L. J., (as he
then was) stated at p. 463:
* * * the mere proof or admission that a mark does in fact
distinguish does not ipso facto compel the judge to deem that mark to be
distinctive. It must be further "adapted to distinguish," which
brings within the purview of his discretion the wider field of the interests of
strangers and of the public.
The issue between the parties hereto involves the
construction in our statute of the definition of "trade mark" in s. 2(m), "word mark' 'in s. 2(o), s. 26 under which
registration of certain classes of word marks is prohibited, and the meaning
and purpose of s. 29 in relation to the definition and registration of trade
marks.
"Trade mark" is defined in s. 2(m):
2. (m) "Trade Mark" means a symbol which
has become adapted to distinguish particular wares falling within a general
category from other wares falling within the same category, and is used by any
person in association with wares entering into trade or commerce for the
purpose of indicating to dealers in, and/or users of such wares that they have
been manufactured sold, leased or hired by him, or that they are of a defined
standard or have been produced under denned working conditions, by a defined
class of persons, or in a defined territorial area, and includes any
distinguishing guise capable of constituting a trade mark.
[Page 504]
This definition is divided into two main parts: First, it is
required that the symbol "has become adapted to distinguish"
particular wares from others within the same category, and second, it must be
"used by any person in association with wares entering into trade or
commerce for the purpose of indicating to dealers * * *" The purpose of a
dealer in adopting a trade mark is that it distinguishes his wares from those
of all other dealers. A trade mark, therefore, in that sense must be
distinctive. The word "distinctive," however, does not appear in
definition 2(m): On the contrary, the words are
"has become adapted to distinguish." The phrase here appears for the
first time in our statute law, but the phrase "adapted to
distinguish" has been in the statute law of Great Britain since the
enactment of the Trade Marks Act, 1905. S. 9(5) of this latter statute
provides in part " 'distinctive' shall mean adapted to distinguish,"
and as above explained, this phrase has been given a meaning, as indicated by
the quotation from R. J. Lea, Limited, supra, different from that of
"distinctive in fact." The essential difference is that a symbol
which distinguishes in fact the wares of the particular person is not
sufficient to obtain registration under the British statute. It must in
addition be established that the word is "adapted to distinguish"
which involves wider considerations of the rights and interests of the public
in the words of our language and more particularly of those commonly and
ordinarily used in commendation and praise of wares. The rights of the public
in these words have long been protected and dealers prevented from obtaining
the exclusive right or monopoly in their use through the registration of them
as trade marks both in the law of Canada and Great Britain. Partlo v. Todd
.
These two phrases "adapted to distinguish" and
"distinctive in fact" were both well known in the law respecting
trade marks when the legislation here in question was enacted. It is therefore
significant that in the definition of trade mark (s. 2(m)) Parliament
adopted the phrase "has become adapted to distinguish" rather than
"has become distinctive in fact." The adoption of the latter would
have changed the law, while the fact that they adopted "has become adapted
to distinguish" would, under the circum-
[Page 505]
stances, indicate an intention not to change the law. In
view of the foregoing it would appear that the words "adapted to
distinguish" are in the phrase "has become adapted to distinguish"
the dominant and important words. These words, as Lord Justice Hamilton pointed
out, involve considerations of strangers and the public generally and are
therefore of wider import than "distinctiveness in fact."
That the interest of the public is always important was
emphasized in this Court upon a somewhat different point in Lightning
Fastener Co. Ltd. v. Canadian Goodrich Co. Ltd. , where
Rinfret, J. (now Chief Justice) stated at p. 196:
* * * and it should not be forgotten that legislation
concerning patents, trademarks and the like exists primarily in the interest
and for the protection of the public, so much so that it could be said that the
public is a third party to all patent or trade-mark litigation.
See also Eno v. Dunn, , at p.
262.
At the hearing of this appeal the two words "has
become" were emphasized and it was suggested that they involved the
conclusion that evidence of use would be sufficient to establish that the word
mark was "adapted to distinguish." If Parliament had desired to
effect so important a change in our law it would have adopted the phrase
"has become distinctive in fact" or some such words as would have
more clearly expressed such an intention. More particularly is this true as
these phrases and their separate and distinct significance were so well known.
As already indicated, the dominant words in the phrase are "adapted to
distinguish" rather than "has become." Moreover, that these
words "has become" were not intended to convey such a meaning finds
support in the position and effect of the proof of use in the definition 2(m)
and s. 29.
It is pertinent to observe that a "word mark" in
the language of s. 2(o) means "a trade mark consisting only of a
series of letters and/or numerals and depending for its distinctiveness upon
the idea or sound suggested by the sequence of the letters and/or numerals and
their separation into groups, independently of the form of the letters or
numerals severally or as a series." Distinctiveness founded upon idea or
sound is basic in this definition and indicates that it is in the word mark
itself rather than in its use that
[Page 506]
the quality of distinctiveness must be found. It would
therefore appear to be more in accord with the language of both ss. 2(m)
and 2(o) that the phrase "bas become
adapted to distinguish" refers principally to that which is inherent in
the symbol itself.
The trade mark defined in s. 2(m) is registrable
under the Act unless either its adoption or registration as such is therein
prohibited. This is made clear by the provisions of s. 39:
39. If there is no objection to the registration of a trade
mark for the registration of which a sufficient and complete application has
been made, the Registrar shall, subject as hereinafter provided, forthwith
cause such trademark to be entered in the register as of the date upon which
such application was received by him.
The statute therefore contemplates that the trade mark which
comes within the terms of the definition of 2(m) will be registered
unless within the terms of s. 39 there is an objection to the registration
within the meaning of the statute.
These objections are expressed in the Act in the main by
prohibitions against either the adoption of or the registration of the trade
mark as such. This view is emphasized by the language of these sections in
which the prohibition is always directed against a trade mark as illustrated by
the opening words of ss. 14 and 26. In this latter section these are,
"Subject as otherwise provided in this Act a word mark (a trade mark under
s. 2(o)) shall be registrable if it (a) does not contain more
than thirty letters * * * (c) is not * * * clearly descriptive or
misdescriptive of the character or quality of the wares ***(f) is not
similar to, * * * some other word mark already registered * * *." If the
registrar refuses registration either because the word mark does not come
within the definition of ss. 2(m) and 2(o) or if
within that definition then because either its adoption or registration is
prohibited by some provision in the statute, the applicant may appeal under s.
51 to the Exchequer Court.
It will be observed that all of the foregoing takes place
without reference to s. 29, and, moreover, that s. 29 does not provide an
appeal from the decision of the registrar. The opening words of this section,
"Notwithstanding that a trade mark is not registrable under any other
provision of
[Page 507]
this Act," indicate that it is dealing only with trade
marks and that it is in the nature of an overriding section which makes
possible registration otherwise prohibited. It is important to observe that s.
29 applies only where the trade mark is not registrable and therefore has no
reference to the provisions where the adoption of the trade mark is prohibited
as in s. 14.
It is, moreover, significant that Parliament in s. 29 does
not ask the Court to determine whether the symbol "has become adapted to
distinguish" as that phrase appears in s. 2(m). On
the contrary, and with equal significance, Parliament here adopts in s. 29
language more closely related to the definition of "similar" in
relation to "trade marks" in s. 2(k).
2. (k) "Similar," in relation to trade
marks * * * so resembling each other * * * in association with wares of the
same kind would be likely to cause dealers in and/or users of such wares to
infer that the same person assumed responsibility for their character or
quality * * *
The proof required in s. 29 is stated as follows:
* * * that the mark has been so used by any person as to
have become generally recognized by dealers in and/or users of the class of
wares in association with which it has been used, as indicating that such
person assumes responsibility for their character or quality * * *
The language in s. 2(k) in so far as it relates to
trade marks is not directed to any question as to whether the symbol "has
become adapted to distinguish." No question of similarity under 2(k)
arises until the symbols are trade marks within the definition 2(m).
The word "similar" as so defined appears in s. 26(1) (f)
already quoted and there the only question before the registrar is whether
registration should be prohibited because the word marks are similar and
therefore the likelihood of confusion and deception.
If registration is refused under s. 26(1) (c) (as in
this case the respondent concedes "super-weave" would be) because the
word mark is clearly descriptive, it is still open to the applicant to apply
under s. 29 and there to make such proof as to satisfy the Court that the word
mark "has become generally recognized" as in that section provided.
The effect of the declaration is that, although the word mark is within the
class which is clearly descriptive in association with these wares and therefore
not registrable under
[Page 508]
s. 26(1) (c)
this applicant has so used it in association with his wares as to cause
it to lose its significance as a word of description and that it is now
"generally recognized by dealers in and/or users of the class of wares in
association with which it has been used, as indicating that such person assumes
reponsibility for their character or quality * * *" It is in this section
that Parliament provides proof of use by the applicant and while the phrase
"distinctiveness in fact" is not here used, the declaration when made
in relation to a word mark may foe regarded as equivalent to the establishment
of "distinctiveness in fact." This evidence, it will be observed, by
the express language of s. 29, is given in relation to a trade mark as defined
in 2(m), the registration of which is otherwise prohibited.
The language and plan of our statute is substantially
different from the Trade Marks Act of 1905 in Great Britain but in
principle its provisions for registration are similar and in effect much the
same. It has always been recognized in both the common and statute law of both
countries that with respect to trade marks there are words of such common and
ordinary use that no person should be permitted to adopt them as trade marks
and thereby acquire the exclusive right or monopoly to the use thereof. Even if
in a particular instance in relation to specific wares evidence established
"distinctiveness in fact" there remained that larger consideration of
public interest which prevented their classification as words "adapted to
distinguish." No amount of use by an individual could defeat the public
interest and make possible their adoption as a trade mark. In the present
enactment Parliament has not only not indicated a change but has adopted the
phrase "adapted to distinguish" well known in the law of Great Britain
under which this very principle is protected. Its meaning and position in Great
Britain would be present to Parliament in the adoption of this phrase, and,
indeed, it might with propriety be suggested that the language was for that
very reason adopted. In any event, a survey of the relevant sections and of the
statute as a whole lead to the conclusion that the phrase "adapted to
distinguish" has the same meaning in our statute as under the statute of
Great
[Page 509]
Britain. It follows that words commonly used and
appropriately described as laudatory epithets cannot become: registrable as
trade marks.
The compound word "super-weave" contains the well-
known, commonly used laudatory epithet "super" and the equally
well-known word "weave" commonly used to describe the texture or
method of manufacture. It is a well-founded principle recognized in both the
authorities and statute law that such words (subject to a descriptive word
becoming "generally recognized" as in s. 29) should remain the common
property of dealers and users and the public generally and no person or
corporation should be granted the exclusive right to or a monopoly in the use
of such words such as registration of a trade mark bestows upon the applicant.
When these words are joined to form the compound word
"super-weave" it means, as stated by the learned trial Judge, "a
better quality of weaving," and, with respect; I think would be so
understood and commonly used by dealers and users, and as such properly
classified as a laudatory epithet.
I agree that the Registrar of Trade Marks was a proper party
to this appeal.
The appeal should be allowed, but without costs, and the
applicant's petition dismissed.
Appeal allowed and Petition dismissed without
costs.
Solicitor for the appellant: W. P. J. O'Meara.
Solicitor for the respondent: G. H. Riches.
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