Registrar of Trade Marks v. Coles Book Stores Ltd., [1974] SCR 438

Supreme Court of Canada

Registrar of Trade Marks v. Coles Book Stores Ltd., [1974] S.C.R. 438

Date: 1972-01-25

The Registrar of Trade Marks Appellant;

and

Coles Book Stores Limited Respondent.

1971: November 5; 1972: January 25.

Present: Judson, Ritchie, Hall, Pigeon and Laskin JJ.

ON APPEAL FROM THE EXCHEQUER COURT OF CANADA

Trade marks—Registration of “Coles” refused—Surname—Trade Marks Act, R.S.C. 1952-53 (Can.) c. 49, s. 12(1)(2).

Appellant refused the application of respondent to register the word “Coles” as a trade mark, on the ground that it was contrary to the provisions of s. 12(1)(a) of the Trade Marks Act. The Exchequer Court reversed this decision and declared that the word was registrable. Hence the appeal to this Court.

Held: The appeal should be allowed.

The word “Coles” is a surname that is well-known to the general public of Canada, and any person of ordinary intelligence and of ordinary education in English or French would respond to the trade mark “Coles” by thinking of it as a surname. Moreover, the dictionary meanings of the words “coles” and “cole” are largerly obsolete.

APPEAL from a judgment of the Exchequer Court of Canada, reversing a decision of the Registrar of Trade Marks. Appeal allowed.

M.A. Garneau, for the appellant.

M.D.F. Sim, Q.C. and M.R.T. Hughes, for the respondent.

The judgment of the Court was rendered by

JUDSON J.—Coles Book Stores Limited is the applicant for registration of the word “Coles” as a trade mark for use in association with printed publications. The Registrar of Trade Marks refused the application on the ground that it was contrary to s. 12(1)(a) of the Trade Marks Act of 1953 in that it was “primarily merely a surname.” On appeal, the judgment of the Excheq-

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uer Court reversed this decision and declared that the word was registrable. It is admitted by the respondent that the judgment of the Exchequer Court should have been confined to a declaration that the word was not “primarily merely a surname”. The Registrar appeals to this Court asking for a restoration of his decision. I would allow the appeal.

The learned trial judge summarized his conclusions on the evidence and the law in the following terms:

Considering the whole of this evidence, it is established that “Coles” is not “merely” a surname. It has another significance. And having another significance, the only question revolves around the word “primarily” in relation to the facts of this case.

Applying the language of the Standard Oil v. The Registrar of Trade Marks ((1968) 2 Ex. C.R., 523) to the facts of this case, the question for decision may be put in this way, viz, is the chief, main or principal character of the word “Coles” that of a surname or is it principally or equally a word invented to be used as a trade mark?

The evidence establishes that there is a fairly substantial number of persons who have the surname “Coles” but at the same time, the evidence as to the history of the meaning of the word “Cole” or the plural “Coles” (which has an origin in English from the eleventh century and which as stated, means cabbage and has other uses to wit, to cut (like off your head); to cut hay or rape; stook rape) establishes a long and substantial knowledge of it as a dictionary word in the English language.

After a careful review of the whole of the evidence, it is my view that the chief, main or principal character of the word “Coles” is equally that of a surname and of a dictionary word in the English language, namely the plural of the noun “cole” or the third person singular of the verb “cole”.

On behalf of the Registrar, counsel also relied on the judgment in the Standard Oil case. The proposed trade mark in question there was a coined word “FIOR”. The Registrar refused registration on the ground that the word had no dictionary meaning but appeared in directories in Toronto and Montreal as a surname. The

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Court held, reversing the decision of the Registrar, that the test of registrability under s. 12(1)(a) of the Trade Marks Act should depend upon an answer to a question such as this: What would be the response of the general public of Canada to the word sought to be registered? The President held that a person in Canada of ordinary intelligence and education in English or French would be just as likely, if not more likely, to think of the word “FIOR” as a brand or mark of some business as to think of it as a family name. In this particular case, the President held that FIOR was probably not “primarily a word that was a surname of an individual” and that it was certainly not “primarily merely” such a word.

In the case at bar, the evidence clearly establishes that “Coles” is a surname that is well-known to the general public of Canada. On the other hand, the dictionary meanings of the word “cole” and in its plural form “coles”, particularly as found in the Oxford English Dictionary, are largely obsolete. A customer in need of a cabbage does not ask for a “cole”. The only common use of the word that I can think of is in the word “coleslaw”. The inference I draw from the evidence concerning the dictionary definitions of the word “cole” is that it is a word of rare, if not obsolete, usage and would be little known to the general public of Canada. I do not agree with the conclusion of the learned judge of the Exchequer Court that the principal character of the word “Coles” is “equally that of a surname and of a dictionary word in the English language.” My only possible conclusion in this case is that a person in Canada of ordinary intelligence and of ordinary education in English or French would immediately respond to the trade mark “Coles” by thinking of it as a surname and would not be likely to know that “Coles” has a dictionary meaning.

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Section 12(1)(a) of the Trade Marks Act reads:

12. (1) Subject to Section 13, a trade mark is registrable if it is not

(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;

The prior legislation, s. 26(1) of the Unfair Competition Act, R.S.C. 1952, c. 274, provided for the registration of a word mark if it “(b) is not the name of a person, firm or corporation.” The wording of s. 12(1)(a) came into the legislation for the first time in 1953 and was copied from the United States legislation of 1946. The reason for this borrowing was the necessity for avoiding the niceties of application to which the old wording had given rise. It is essential that any enquiry into registrability must now begin with the new words themselves. They are common English words. Is the primary (chief) (principal) (first in importance) meaning of the word merely (only) (nothing more than) a surname?

A similar approach was taken in Kimberly-Clark Corporation v. Marzall Commissioner of Patents[1]. The problem there was defined as one of a search for a dominant characteristic. A mark, the dominant characteristic of which was to be found in a surname, was excluded.

I do not think that this Court should attempt to establish a formula of interpretation. The words mean what they say. I have no doubt that the Registrar was right in his decision that in this case the suggested mark was primarily merely a surname.

I would allow the appeal and restore the decision of the Registrar refusing registration of the proposed mark on the ground that it is primarily merely a surname. The Registrar is entitled to his costs both here and in the Exchequer Court.

Appeal allowed with costs.

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Solicitor for the appellant: D.S. Maxwell, Ottawa.

Solicitors for the respondent: McCarthy & McCarthy, Toronto.