Canadian Motorways v. Laidlaw Motorways, [1974] SCR 675

Supreme Court of Canada

Canadian Motorways v. Laidlaw Motorways, [1974] S.C.R. 675

Date: 1973-06-29

Canadian Motorways Limited, Motorways Limited, Soo Security Motorways Limited, Motorways Van Lines Limited, Motorways (Ontario) Limited, Motorways (Quebec) Limited, Canadian Motorways Limited, Motorways (Central) Limited, Motorways (Maritimes) Limited, and Canadian Motorways Management Corporation Limited (Plaintiffs) Appellants;

and

Laidlaw Motorways Limited (Defedant) Respondent.

1973: February 28; 1973: June 29.

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

ON APPEAL FROM THE COURT OF APPEAL FOR ONTARIO.

Corporations—Corporate name—“Motorways” used as corporate family23 name—Descriptiveness—Likelihood of deception—Minister’s direction for change of name—Judicial power of review—The Corporations Act, R.S.O. 1960, c. 71, s. 12.

The appellants were a group of associated companies engaged in the motor transport business and the word ‘‘Motorways” was prominent in their respective names, in their advertising and on their vehicles. The respondent was a holding company although it had operating objects, but there were associated with it other operating companies in the same business as the appellants, offering similar services to commercial shippers in the area of the appellants’ operations. The respondent was issued supplementary letters patent changing its name to “Laidlaw Motorways Limited” on April 25, 1969. Prior to that time it had not used “Motorways” in its corporate name.

The appellants invoked s. 12(2) of The Corporations Act, R.S.O. 1960, c. 71, and objected in writing to the responsible Minister to the inclusion of the word “Motorways” in the respondent’s name. Following a hearing, the Minister notified the respondent of his intention to order its name changed to some other name. The respondent initiated a review of this decision pursuant to s. 12(3) of the Act. The judge before whom the matter came set aside the Minister’s decision on the ground that the word “Motorways” fell within the classification of a generic or descriptive word and hence there could be no “deceptive

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similarity”. This decision was affirmed by the Court of Appeal. With leave, the appellants then appealed to this Court.

Held (Judson and Ritchie JJ. dissenting): The appeal should be allowed and the Minister’s decision restored.

Per Spence and Laskin JJ.: Section 12 vests an initial discretion in the administrative authority to grant, refuse or direct a change of corporate name. A “review” of the administrative decision is not a hearing de novo. The power to review, conferred by s. 12(3), does not authorize a substitution of a judicial for an administrative opinion simply on the basis of disagreement with the administrative decision. Nor does it permit a Court to come to a different conclusion merely on the basis of its conclusion as to the weight of the evidence which was before the administrative authority.

The administration, in exercising judgment on the issue of likelihood of deception (whether in granting a name originally, or in directing a change of name that is in its view objectionable), is entitled to consider the history and operations of an objecting company that asserts the likelihood of deception in a name proposed for or given to another company. Upon such consideration, it may appear that time and mode of use have stamped a corporate name with a particular identity, although it consists of or contains descriptive words, being words which do not simply describe the business of the company. An objecting company should not be able to claim an exclusive right to use as part of its name a descriptive word which merely identifies its business. But other descriptive words which do not do so—and that was the present case—may be found to deserve protection against use by competing companies.

Per Pigeon J.: The principles governing the judicial review, under statutory authority, of the decision of an administrative authority on a change of name application due to likelihood of deception should be exactly the same as on a statutory appeal from the decision of an administrative authority on an objection to a trade mark that its use “would cause confusion”. The Court should give great weight to the conclusion reached by the administrative authority but the right of appeal is unrestricted.

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If the word “motorways” was descriptive of the business carried on or the articles dealt in by the appellants the decisions of the Courts below would be correct. However, “motorways” does not describe a mode of transport, but a special kind of highways more often in this country called expressways, throughways or freeways. By stressing the single word “motorways” and de-emphasizing all the other elements of their respective corporate names, the appellants created a situation in which no distinctive feature in a corporate name that included “motorways” could really be considered as effectively preventing the likelihood of confusion or deception. If the word so used was really descriptive of the business, product or service, the appellants should not be allowed to monopolize it in this way. However, as it was merely descriptive of a thing that has no essential relation to the business, this was not objectionable.

Per Judson and Ritchie JJ., dissenting: The Courts below were right in holding that the name of the respondent was not so similar to the names of the appellants that its use “would be likely to deceive” within the meaning of s. 12(1)(a) of The Corporations Act. The word “motorways” is intended to be and is a descriptive word since it describes how the user performs its services, namely on highways by motor vehicles. Its descriptive character when used in a company name is not confined to the highway itself.

[Re C C Chemicals Ltd., [1967] 2 O.R. 248; Re Cole’s Sporting Goods Ltd. and C. Cole & Co. Ltd. and Coles Book Stores Ltd., [1965] 2 O.R. 243, referred to].

APPEAL from a judgment of the Court of Appeal for Ontario[1], dismissing an appeal from a judgment of Hartt J., whereby a direction of the Minister of Financial and Commercial Affairs requiring the respondent company to change its name was set aside. Appeal allowed, Judson and Ritchie JJ. dissenting.

S.G.M. Grange, Q.C., for the appellants.

J.J. Robinette, Q.C., for the respondent.

The judgment of Judson and Ritchie JJ. was delivered by

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JUDSON J. (dissenting)—The issue in this appeal is whether the name “Laidlaw Motorways Limited” is so similar to the names of the appellants that its use “would be likely to deceive” within the meaning of s. 12(1)(a) of The Corporations Act, R.S.O. 1960, c. 71.

The judge of first instance and a unanimous Court of Appeal have held that there was no such similarity or probability of deception. In my opinion, they were right in so holding. As both Courts said, the word “motorways” is a combination of two simple and well-known English words. It is intended to be and is a descriptive word since it describes how the user performs its services, namely, on highways by motor vehicles. Its descriptive character when used in a company name is not confined to the highway itself.

I would adopt the reasons delivered in the Ontario Courts and dismiss this appeal with costs.

The judgment of Spence and Laskin JJ. was delivered by

LASKIN J.—This appeal, brought here by leave of this Court, involves questions of law and administration arising under s. 12(1)(a), (2) and (3) of The Corporations Act, R.S.O. 1960, c. 71, now s. 13(1) (a), (2) and (3) of R.S.O. 1970, c. 89. The cited provisions read, so far as material, as follows:

12. (1) A corporation shall not be given a name,

(a) that is the same as or similar to the name of a known corporation, association, partnership, individual or business if its use would be likely to deceive, except where the corporation, association, partnership, individual or person signifies its or his consent in writing that its or his name in whole or in part be granted,…

(2) If a corporation through inadvertence or otherwise has been or is given a name that is objection-

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able, the Lieutenant Governor, after he has given notice to the corporation of his intention so to do, may direct the issue of supplementary letters patent changing the name of the corporation to some other name.

(3) A person who feels aggrieved as a result of the giving of a name under subsection 1 or the changing or refusing to change a name under subsection 2 may, upon at least seven days notice to the Minister and to such other persons as the court directs, apply to the court for a review of the matter, and the court may make an order changing the name of the corporation to such name as it considers proper or may dismiss the application.

The appellants are a group of associated companies engaged in the motor transport business, and the word “Motorways” is prominent in their respective names, in their advertising and on their vehicles. The first incorporation of one of the group was in 1930, under federal legislation, under the name Motorways Limited. This particular company became inactive in 1954 when its business was purchased by Hill Motorways Limited whose name was changed to Canadian Motorways Limited in 1956. The latter, a federally incorporated company, is now the holding company of the active Motorways group which includes Soo Security Motorways Limited, federally incorporated in 1942; Motorways Van Lines Limited, federally incorporated in 1949; Motorways (Ontario) Limited, incorporated in Ontario in 1953 and Motorways (Quebec) Limited, incorporated in Quebec in 1954. There are apparently three other companies in the group but they are inactive. It is beyond dispute that for some forty years now, and until the events giving rise to these proceedings, the word “Motorways” was used only by this associated group in connection with their Canada-wide truck transport business.

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The respondent Laidlaw Motorways Limited was, prior to the issue of supplementary letters patent on April 25, 1969, known as Laidlaw Motor Leasing Limited, an Ontario corporation, continued on April 27, 1966, by an amalgamation of Hepburn Transport Company Limited and Laidlaw Motor Sales Limited. It is at the present time a holding company although it has operating objects, but there are associated with it other operating companies, e.g. Laidlaw Transport Limited, in the same business as the appellants, offering similar services to commercial shippers in the area of the appellants’ operations. The change of name to Laidlaw Motorways Limited was in anticipation of a public offering of shares under a prospectus dated May 21, 1969. The shares are listed on the Toronto Stock Exchange.

On May 16, 1969, the appellants invoked s. 12(2) of The Corporations Act and objected in writing to the responsible Minister to the inclusion of the word “Motorways” in the respondent’s change of name. The Minister set up a hearing before the Director of the Companies Branch of his Department, at which evidence was heard on behalf of the disputing parties who were represented by counsel. Also present was the senior legal officer of the Branch, Mr. C.R.B. Salter, who was also its Deputy Director, and he presided with the Director at the hearing. It was he who summarized the proceedings and evidence in a report to the Minister in which the concluding paragraph was as follows:

The Department’s records show that the name of the objector was not taken into consideration at the time the respondent was given its present name. I am of the opinion that the granting of this name was inadvertent and that the department would not have done so if it had been aware of the corporate name of the objector and the manner and history of its use. The issue of Supplementary Letters Patent changing the name of Laidlaw Motorways Limited to some other name is therefore recommended.

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The Minister acted upon this recommendation, and by a letter of June 12, 1970, stated his intention to see that the name Laidlaw Motorways Limited was changed to some other name. The respondent initiated a review of this decision pursuant to s. 12(3) of The Corporations Act. Hartt J., before whom the matter came, set aside the Minister’s decision on the sole ground that the word “Motorways” fell within the classification of a generic or descriptive word and hence there could be no “deceptive similarity”. He also concluded that the word had, over the years, “unquestionably acquired an identification with the objector”, but was of the opinion that this secondary meaning doctrine, although applicable to passing-off cases, “is not per se adaptable to matters arising under section 12”; rather, the criteria enunciated by Kelly J.A. in Re C C Chemicals Ltd.[2] governed.

The judgment of Hartt J. was affirmed on appeal in reasons given for the Court of Appeal by Schroeder J.A. who also held that the governing principles were those enunciated in Re C C Chemicals, supra. He said of that case:

It is there laid down that the true test is whether the names of the two companies, put side by side, either visually or orally are the same or similar in the sense that the similarity of the names would probably, not possibly, deceive.

It was further emphasized that the test to be applied was not one which would be applicable in a passing-off action or an action for an infringement of a trade mark…opposing corporations come before the Minister and the Court only as they are permitted by the statute to have the question of confusion of names considered and determined conformably to the public interest.

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Schroeder J.A. was of the opinion that the word “Motorways” was, if not, strictly speaking, generic, certainly descriptive of the places where and the means by which the business of the appellant companies is carried on. In his view, “there [was] no probability of deception in the public mind, applying the visual and auditory test, when the names ‘Canadian Motorways Limited’ and ‘Laidlaw Motorways Limited’ are placed side by side”.

The C C Chemicals case arose from an objection by Construction Chemicals Ltd., incorporated on November 12, 1958, to the use by a company incorporated on March 23, 1961, and engaged in the same business, of the name C C Chemicals Ltd. The direction of the Provincial Secretary requiring a change of name was affirmed by Stewart J., but this decision was reversed on appeal under the test propounded by Kelly J.A. which was stated and applied by Schroeder J.A. in the present case. I do not think that a test which rests on the probability of the confusion of one company with another exhausts the application of s. 12 and the authority of the Lieutenant-Governor, upon the recommendation of the responsible Minister, to direct a change of name. In my view, the probability of a confusion as to the association of one company with another lies equally within the scope of s. 12 and may be acted upon by the designated authorities under s. 12.

The History of s. 12 of the Ontario Corporations Act was reviewed by Kelly J.A. in Re C C Chemicals, supra. Two matters of substance emerge from that review; first, that the Ontario provision, unlike that of its prototype in the United Kingdom, reposes statutory authority in the Court to “review the matter”; and second, that there are no express limitations upon the scope of the review by the Court. In the exercise of the power of review in the C C Chemicals case, Kelly J.A. addressed himself to the meaning of the key phrase in s. 12(1) prohibiting the giving of a name that is “the same as or

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similar to the name of a known corporation…if its use would be likely to deceive”. He regarded it as a prohibition to prevent the likelihood of deception in the public interest, but that interest was to be measured according to whether “the similarity [was] such as to cause a person who had an interest in dealing, or reason to deal, with ‘A’ to deal with ‘B’ in the belief that he was dealing with ‘A’.” He expanded on this as follows:

If this be the test, as I conceive it to be, the likelihood to deceive must be assessed by reference to the impact of the words in the name on the persons or class of persons with whom the objector seeks to have business dealings, that is his customers or prospective customers.

The Court, in the exercise of the power of review conferred by s. 12(3), is undoubtedly authorized to consider the meaning and application of the statutory standard fixed under s. 12(1). There is, however, the anterior question of the scope of the power of review which has been granted. “Review” is not a hearing de novo but is related here to a prior administrative decision. I do not read the power to review as authorizing a substitution of a judicial for an administrative opinion on no other basis than disagreement with the administrative decision. Nor do I regard it as permitting a Court to come to a different conclusion merely on the basis of its conclusion as to the weight of the evidence which was before the administrative authority.

I read s. 12 as vesting an initial discretion in the administrative authority, and I adopt in this connection what was said by Schroeder J.A. in Re Cole’s Sporting Goods Ltd. and C. Cole & Co. Ltd. and Cole’s Book Stores Ltd.[3], at pp. 249-250, as follows:

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An examination of other provisions of the Corporations Act, as e.g., those contained in ss. 3, 4, 5, 7, 8 and s. 325, makes it plain that when the Provincial Secretary, exercising the powers of the Lieutenant-Governor, grants letters patent constituting named persons a corporate body under a given name, he is exercising executive or ministerial powers of a discretionary nature, and that he retains at all times the right and power to grant or withhold a name or, having granted a name to a corporation, the power to revoke, alter or modify it, if in his opinion the public interest so requires. He is not bound by fixed standards and his action is based on consideration of policy and public convenience.

Kelly J.A. in Re C C Chemicals, supra, appeared to take a more stringent view on this question by favouring a wider basis of interference by the Courts. He said this at pp. 255-256 of [1967] 2 O.R.:

I agree with Schatz, J., that the scope of this proceeding is not limited to a consideration of whether the Provincial Secretary has exercised a discretion in accordance with a proper principle of law: the Court has the power to consider all the evidence upon which the Provincial Secretary had the right to act and to determine whether that evidence supported the Provincial Secretary’s decision: but I would go further than Schatz, J., appears to have gone and state that in my opinion the evidence upon which the Provincial Secretary had the right to act was the evidence which was in existence, though not necessarily known to the Provincial Secretary, at the time he granted the questioned name on the incorporation of the company to which it was given.

It is the fact that s. 12 does not prescribe any administrative hearing on objections to the giving or the previous granting of a corporate name, but a practice has developed to afford a hearing where a name has been given which is alleged to be objectionable. In such a case, it is entirely proper for the Court in review to consider the record of the hearing to see if a direction for a change of name or a decision refusing to direct a change has been founded or rests on grounds that have a rational relation to the statutory standard. I note here that the recently enacted Business Corporations Act, R.S.O.

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1970, c. 53, provides by s. 8(2) that a corporation covered thereby is entitled to an opportunity to be heard before an order can be made that its name be changed; and under s. 268(1) an appeal lies directly to the Court of Appeal.

In other jurisdictions where the granting or holding of a corporate name is governed by a standard of likelihood of deception or deceptive similarity, and there is statutory or other authority vested in the Courts to review administrative decisions as to corporate names, the Courts have been slow to interfere with reasonable exercises of administrative discretion: see Berdelle v. Carpentier[4]; Cranford v. Jordan[5]. Cases such as these are to be distinguished from those where a private remedy in respect of a challenged corporate name is sought under the common law or in equity. The latter kind have only a peripheral relevance in respect of the issues raised by s. 12.

It was the contention of the appellants that the Courts below did not address themselves to the proper issue raised under s. 12 by the facts of this case. Their counsel contended that when companies are in the same business in the same area and one changes its name to include in it a word used in the name of the other the public would likely consider them to be associated with each other as members of a group although no such association exists. Moreover, he contended that if the “generic or descriptive word” test was to be applied as in the passing-off cases, the full test should be used, and hence an acquired secondary meaning of a descriptive word should be protected. He did not, however, urge this test as applicable under s. 12. In any event, it was his position that “motorways” was not a generic or descriptive word in respect of the appellants’ business; it was widely understood in the United Kingdom as referring to

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motor expressways and was not a word in common use on this continent.

Additionally, counsel for the appellants contended that the Minister had acted upon a reasoned recommendation irr the exercise of a statutory power and the Courts should not readily interfere with what was essentially a matter of judgment or opinion and not a question of fact.

Counsel for the respondents submitted that it was the whole name that must be considered in determining the probability of deception and that in this respect the test was no different from that applied in the passing-off cases. He emphasized that a single word was involved here which, he contended, was a descriptive word combining two simple English words, each likewise descriptive; and, moreover, the combination of the proper name “Laidlaw” with “Motorways” made it improbable that this name would be likely to deceive.

In my opinion, the proper starting point upon a review under s. 12 is an acknowledgment of the discretionary power residing in the administrative authority which grants or refuses or directs a change of corporate name. In the exercise of that power the test propounded in the C C Chemicals case might be invoked according to the circumstances. I do not think, however, that the test can be an invariable one, even assuming that its application raises no difficulties. An administrative decision in a particular case may be rested on other considerations which are reasonably related to the prescriptions of s. 12.

Although it is a relevant factor to consider the impact of a challenged name on members of the public with whom the companies deal or might be expected to deal, there will not, generally, be

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any evidentiary basis for assessing such impact since the issue of likelihood of deception will ordinarily arise at the commencement of corporate life under the challenged name. Judgment must then be exercised by the administration on that issue, and it is entitled, in exercising that judgment (whether in granting a name originally, or in directing a change of name that is in its view objectionable), to consider the history and operations of an objecting company that asserts the likelihood of deception in a name proposed for or given to another company. Upon such consideration, it may appear that time and mode of use have stamped a corporate name with a particular identity, although it consists of or contains descriptive words, being words which do not simply describe the business of the company.

I readily subscribe to the proposition that an objecting company should not be able to claim an exclusive right to use as part of its name a descriptive word which merely identifies its business. But other descriptive words which do not do so—and that is the present case—may be found to deserve protection against use by competing companies.

There has been no suggestion in the present case that any material fact was overlooked by those in charge of the hearing or that they failed to direct themselves to the statutory standard. No error of principle relating to that standard was shown otherwise than by reference to the test laid down in the C C Chemicals case. For the reasons already given, I do not agree that the test controls the disposition of this case.

It was urged in this Court that there could be hardship in requiring a change of name at this time, particularly when shares and debentures have been issued in the existing name. This does not loom any larger here than it did when the matter was before the officials who conducted

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the hearing on the appellants’ objection and when it was before the Minister.

I would, accordingly, allow the appeal, set aside the order of the Court of Appeal and of Hartt J. and restore the Minister’s decision. In the circumstances, I would award the appellants their costs in this Court but would make no other order as to costs.

Before parting with this case, I must refer to an application made to the Court by counsel for the Minister of Consumer and Commercial Relations of Ontario to intervene in the appeal and to make submissions not limited to jurisdiction but going to the merits. The application to intervene in this Court was refused. The Minister is the authority responsible for the administration of s. 12, and it was the decision of the Minister that was directly in issue in this case.

PIGEON J.—I have had the advantage of reading the reasons for judgment of my brother Laskin. I am in full agreement with his conclusion but I wish to make the following observations.

In my opinion, the principles governing the judicial review, under statutory authority, of the decision of an administrative authority on a change of name application due to likelihood of deception should be exactly the same as on a statutory appeal from the decision of an administrative authority on an objection to a trade mark that its use “would cause confusion”. Those principles were recently stated in the decision of this Court in Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco Corpn.[6] It was there said (at p. 200):

…the Registrar’s decision on the question of whether or not a trade mark is confusing should be given great weight and the conclusion of an official whose

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daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly but, as was said by Mr. Justice Thorson, then President of the Exchequer Court, in Freed and Freed Limited v. The Registrar of Trade Marks et al. ([1950] Ex. C.R. 431 at 437):

...reliance on the Registrar’s decision that two marks are confusingly similar must not go to the extent of relieving the judge hearing an appeal from the Registrar’s decision of the responsibility of determining the issue with due regard to the circumstances of the case.

I can see no substantial difference between an unrestricted right of appeal to a court and a similarly unrestricted right to apply to a court “for a review of the matter”. There is complete similarity between a provision against a trade mark, the use of which “would cause confusion” and a prohibition against a corporate name, the use of which “would be likely to deceive”. The nature of the task to be performed by the Registrar of Trade Marks in deciding whether a trade mark is objectionable for this reason is also essentially the same as that of the duty to be performed by the Minister under The Corporations Act, in deciding whether a corporation’s name is objectionable because its use would be “likely to deceive”. It therefore appears to me that the present case is not to be decided on the basis of the weight to be given to the decision brought up for review, but on a consideration of the merits of the decision in the same way as on an appeal from a decision by a judge, always remembering that this being a specialized judge with particular experience in the matter at hand, due weight is to be given to his conclusions.

In his “Reasons for Recommendation”, the Deputy Director, Companies Branch, said:

The word “motorways” appears in the unabridged edition of the Random House and Webster’s Dictionaries referred to by counsel as follows:

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“Motorway—n. Brit.—a motor highway; esp: super-highway”.

This entry appears in the unabridged editions of these dictionaries published in the mid-1960s and I have been unable to find the word “motorway” in any edition published earlier. As well, a search through a number of abridged editions of dictionaries currently in use in Canada does not disclose any entry whatsoever for the word “motorway”; nor so far as I am aware is the word in use as a generic or descriptive term in this country. The synonyms in popular usage would seem rather to be “expressway”, “thruway” or “freeway”. It would follow then that “motorway” is not a generic or descriptive word in use in Canada.

In any event it may be noted that a House of Lords decision in Reddaway v. Banham [1896] A.C. 199 holds that a descriptive word may indeed acquire through use a secondary meaning which distinguishes the source of the product and which is entitled to protection; this principle was approved in the Cellular Clothing case mentioned above.

In my view the word “motorways” as used by the objector in the corporate names of its group of companies is not a generic or descriptive word but is rather in the class of a coined word.

In my view, the Courts below rightly disagreed with those observations. An English word cannot properly be put in the category of coined words because it is not presently in use as a generic or descriptive term in this country. As was recently said in Home Juice Co. et al. v. Orange Maison Ltée[7], English and French are international languages, they are to be considered in their entirety and not as including only the vocabulary in current use in this country.

I have grave doubts as to the propriety of ever accepting that a descriptive word may acquire a secondary meaning, so as to affect the application of the provisions of The Corporations Act concerning names the use of which “would be likely to deceive”. On that point, there is a significant difference between The Corporations Act and the Trade Marks Act in

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which specific provisions are to be found concerning distinctiveness acquired by long use. In this respect, I would like to quote the following passages from the judgment of the U.K. Court of Appeal in Office Cleaning Services, Ltd. v. Westminster Office Cleaning Association[8], at pp.270-1:

...the principles which govern what we may call the ordinary cases of passing off, where the question is whether a trade name or a trade description or a description of a particular class of goods or get up of a particular class of goods is or is not likely to deceive, are, at any rate, extremely analogous to those to be considered under the Companies Act, 1929, s. 17, when the question to be determined is whether a trade name is likely to deceive having regard to the existence of a similar name on the register of companies. The foundation of the right to restrain the user of a similar name is the principle that no one is entitled to represent his business or goods as being the business or goods of another by whatever means that result may be achieved, and it makes no difference whether the representation be intentional or otherwise; but a distinction has been and must always be drawn between cases in which the trade name or the part of it in question consists of a word or words of ordinary use descriptive of the business carried on or the article dealt in and cases in which the word or words complained of is or are of the character of a fancy word or words and primarily have no relation to such business or article but only to the person carrying on the business or dealing in the article; see per PARKER, J., in British Vacuum Cleaner Co., Ltd. v. New Vacuum Cleaner Co., Ltd. [1907] 2 Ch. 312, at p. 321. Of course, if it can be established that the descriptive word or words has or have acquired among the public, or that a class of the public likely to deal with the business or goods in question, a subsidiary or secondary meaning denoting or connoting the business or the origin of the article, the person claiming to restrain the user of that word or those words can obtain the relief he seeks. This, we think, is plainly established by the decisions in such cases as Reddaway v. Banham [1896] A.C. 199, and Cellular Clothing Co. v. Maxton [1899] A.C. 326, but the burden of establishing such fact is exceedingly difficult to discharge, as was pointed out by LORD SHAND in the last mentioned case where he said, at p. 340, in referring to Reddaway v. Banham:

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Of that case I shall only say, that it no doubt shows it is possible where a descriptive name has been used to prove that so general, I should rather say so universal, has been the use of it as to give it a secondary meaning and so to confer on the person who has so used it a right to its exclusive use or, at all events, to such a use that others employing it must qualify their use by some distinguishing characteristic. But I confess I have always thought, and I still think, that it should be made almost impossible to anyone to obtain the exclusive right to the use of a word or term which is in ordinary use in our language and which is descriptive only—and, indeed, were it not for the decision in Reddaway’s case, I should say this should be made altogether impossible.

(Emphasis added.)

If the word “motorways” was descriptive of the business carried on or the articles dealt in by the appellants, such as was the case in Re C C Chemicals[9], I would agree with the Courts below. However, with respect to those who take a contrary view, it appears to me that “motorways” does not describe a mode of transport, but a special kind of highways more often in this country called expressways, throughways or freeways. These, of course, are by no means exclusively used by the appellants any more than by any other long distance trucker.

It therefore seems to me that the situation here is essentially different from that which obtained in the Chemicals case. In that case, the objecting company, like the Office Cleaning Services Ltd. had chosen to incorporate under a name that was purely descriptive of its business, namely Construction Chemicals Limited. The Court rightly concluded (at p. 262) “that the utmost difficulty should be put in the way of anyone who seeks to adopt or use exclusively as his own a merely descriptive term”. However, I

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do not think that this can be applied beyond the point where the word is really descriptive of the business carried on or the product dealt in. Here, the word is merely descriptive of very desirable highways, which are used as often as possible but by no means exclusively and, therefore, have no necessary connection with appellants’ business. It identifies them because they have adopted it, not because it has become more descriptive of their operations than of those of their competitors. Under those circumstances, it does not appear to me that it is improper to give them a practical monopoly of its use as part of a business name in long distance trucking.

In my view, it was quite proper for the Minister, in dealing with the objection respecting respondent’s name, to take into account the fact that the appellants had established a substantial group of companies under the same control identified as such by the word “motorways” in the corporate name of each member of the group. By stressing as they do the single word “motorways” and de-emphasizing all the other elements of the respective corporate names, they have created a situation in which no distinctive feature in a corporate name that includes “motorways” can really be considered as effectively preventing the likelihood of confusion or deception. If the word so used was really descriptive of the business, product or service, I would be extremely reluctant to allow the plaintiffs to monopolize it in this way. However, as it is merely descriptive of a thing that has no essential relation to the business, this does not appear to me really objectionable.

I would also note, in considering the equities of the situation, that if the Minister’s decision was reversed, the consequence might well be that the appellants would, in fact, be deprived of the possibility of continuing the promotion of their collective business by the use of the single word “motorways” as a convenient description of their group. Such a consequence would be

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incomparably more serious than the inconvenience which the respondent will have to bear by reason of an enforced change of name. On respondent’s side, this is a risk that it took in applying for its present name under those circumstances. On the other hand, the appellants have over a long period of time established their group or corporate family name relying on a practice which had some official sanction and, in my view, they would suffer a real hardship if prevented from continuing to so use it.

Appeal allowed with costs in this Court, JUDSON and RITCHIE JJ. dissenting.

Solicitors for the appellants: McMillan, Binch, Toronto.

Solicitors for the respondent: McCarthy & McCarthy, Toronto.