Imperial Tobacco Ltd. v. Rothmans, Benson & Hedges Inc.
T-3220-91
McGillis J.
13/11/92
12 pp.
Appeal from rejection of opposition -- Respondent applied to register "Custom Cut" and "Coupe Mesure" as trade marks for proposed use in Canada in association with manufactured tobacco products -- Appellant opposed applications on basis clearly descriptive or deceptively misdescriptive of manufactured tobacco products, contrary to Trade-marks Act, s. 12(1)(b) -- Trade-marks Opposition Board member concluding from review of common dictionary definitions "custom" not explicit description of quality of manufactured tobacco products and no evidence used by other traders as description of character or quality of tobacco products -- Although "custom" might contain covert and skilful allusion to character or quality of wares as may suggest wares of standard expected of product made to personal order, not prohibited by s. 12(1)(b) -- Finding "Custom Cut" and "Coupe Mesure" not clearly describing character or quality of respondent's wares -- Trade mark must be clearly descriptive before can be found deceptively misdescriptive -- Appeal dismissed -- Whether trade mark infringes s. 12(1)(b) test of first or immediate impression from perspective of everyday consumer of or dealer in wares -- Determination must not be based on research into or critical analysis of meaning of words -- "Clearly" not synonymous with "accurately", but means easy to understand, self-evident or plain -- Trade mark merely suggestive of character or quality, not clearly descriptive or deceptively misdescriptive and not offending s. 12(1)(b) -- "Custom Cut" and "Coupe Mesure" not clearly descriptive or deceptively misdescriptive as matter of first or immediate impression to everyday consumer of or dealer in manufactured tobacco products -- No material error in Board Member's reasons -- Trade-marks Act, R.S.C., 1985, c. T-13, s. 12(1)(b).