A-207-77
Marketing International Ltd. (Appellant)
v.
S.C. Johnson and Son, Limited and S.C. Johnson
& Son, Inc. (Respondents)
Court of Appeal, Jackett C.J., Urie and Ryan
JJ.—Ottawa, February 13, 14 and 17, 1978.
Trade marks — Infringement — "Passing off' and distinc
tiveness — Canadian respondent registered user of the trade
mark "oFF!" owned by the American respondent — Product
marketed under trade mark as product of Canadian respond
ent — Appellant marketing product for similar use in Canada
under trade mark "BUGG OFF" -- Whether or not appellant
'passing off' within meaning of s. 7(b) of the Trade Marks
Act — Whether or not U.S. respondent's trade mark distinc
tive within meaning of s. 18(1)(b), and effect of Canadian
respondent's being a registered user — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 7(b), 18(1)(b), 49.
This is an appeal and cross-appeal from a judgment of the
Trial Division in an action for infringement of a registered
trade mark and for breach of section 7(b) of the Trade Marks
Act, and a counterclaim for expungement of the trade mark
registration. The U.S. respondent, S.C. Johnson & Son, Inc.,
was registered under the Trade Marks Act as owner of the
trade mark "oFF!" in respect of "a personal insect repellant",
and the Canadian respondent was registered as user of that
trade mark. The Canadian respondent marketed the product,
under the trade mark, as its own product. In 1975, appellant
began to market an insect repellant, under the trade mark
"BUGG OFF", in Canada. The Trial Division dismissed appel
lant's counterclaim for expungement, restrained appellant from
further infringing the U.S. respondent's registered trade mark,
and from selling in Canada an insect repellant in association
with the trade mark "BUGG OFF", ordered up delivery of
literature associated with that trade mark, ordered a reference
as to damages or profits, and awarded costs to the United
States respondent as against appellant. The cross-appeal is "to
the extent that the judgment did not grant relief" to either
respondent under section 7(b) of the Trade Marks Act and to
the extent that the judgment did not grant relief to the Canadi-
an respondent.
Held, the appeal is allowed. The trade mark was not "dis-
tinctive" at the time that the counterclaim was launched within
the meaning of section 18(1)(b) and there was no evidence that
appellant was "passing off' within the meaning of section 7(b).
The evidence with respect to section 7(b) speaks for itself. With
respect to the issue of distinctiveness, it is necessary to consider
the effects of the Canadian respondent being a registered user
vis-Ã -vis the situation if it were not a registered user. Section
49(3) provides that the "permitted use of a trade mark has the
same effect for all purposes of this Act as use thereof by a
registered owner". That section, however, does not expressly
deem and must not be taken by implication to deem, the actual
effect of the user of the trade mark by the licensee under its
own name (when that effect is to educate the public to associate
the trade mark with the licensee's wares) to be what it would be
if such user had been by the owner of the trade mark under his
own name (in which case, the effect would have been to
educate the public to associate the trade mark with the owner's
wares). Commencement of user, according to sections 39(2)
and 49(2), may be by a registered user. It does not follow,
however, that Parliament, without saying so expressly, is pro
viding by necessary implication, that a message to the public
that in fact indicates that wares associated with the trade mark
originate with the licensee of the trade mark is deemed, as a
matter of law, to be a message to the public, which it is not in
fact, that wares associated with the trade mark originate with
the owner of the trade mark. Section 49 does not authorize a
registered user to use, in association with wares, both the trade
mark and his own name as manufacturer in such a way as to
carry a message to the public in direct contradiction to the
Register. Despite the possible characteristics of "permitted
use", under section 49, that section does not have the effect of
deeming the activities of the Canadian respondent to have had
the result of making that trade mark a mark that "actually
distinguishes" the wares of the U.S. respondent from the wares
of others. It is therefore clear that the registration of the trade
mark "OFF!" is invalid by virtue of section 18(1)(b) of the
Trade Marks Act.
Per Urie J. concurring: The evidence disclosing the surround
ing circumstances indicates that the Trial Judge was clearly
wrong in concluding that the marks were confusing. The onus is
on the U.S. respondent to establish that the appellant is "not
entitled" to use "BUGG OFF" in, association with its wares and
that "BUGG OFF" as used with those wares is confusing or
causes confusion with U.S. respondent's wares. Although it is
not a crucial element, it is nevertheless not without significance
that respondent adduced no evidence whatsoever of any actual
confusion occurring in the market between the two marks. The
U.S. respondent failed to discharge the onus imposed on it by
section 20 to establish that "BUGG OFF" is a mark which is
confusing with the mark "OFF!".
APPEAL.
COUNSEL:
G. Henderson, Q.C., and K. Plumley for
appellant.
J. Kokonis, Q. C., for respondents.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Smart & Biggar, Ottawa, for respondents.
The following are the reasons for judgment
delivered orally in English by
JACKETT C.J.: This is an appeal and cross-
appeal from a judgment of the Trial Division in an
action for infringement of a registered trade mark
and for breach of section 7(b) of the Trade Marks
Act, R.S.C. 1970, c. T-10, and a counterclaim for
expungement of the trade mark registration.
The parties consist of the first respondent here-
inafter referred to as the Canadian respondent, the
second respondent hereinafter referred to as the
U.S. respondent, and the appellant. The Canadian
respondent is a wholly owned subsidiary of the
U.S. respondent.
In 1957 the U.S. respondent was registered
under the Trade Marks Act as the owner of the
trade mark "OFF!" in respect of "a personal insect
repellant" and the Canadian respondent was regis
tered as a registered user of that trade mark.
From 1957 until 1975, the Canadian respondent
sold in Canada insect repellant products, consist
ing at various times of cans of liquids, sprays or
foams intended for application to the user's skin,
under the trade name of "oFF!" using its own
name as manufacturer without any reference to
the U.S. respondent as trade mark owner and, in
the course of becoming the largest Canadian
manufacturer and distributor of insect repellants,
by the usual advertising and distributing methods,
made its products, in fact, well known under that
trade mark to the Canadian public.
The U.S. respondent has never used the trade
mark "OFF!" in Canada and has sold no insect
repellants in Canada.
In 1975, the appellant commenced to market in
Canada, under the trade mark "BUGG OFF", an
insect repellant product consisting of packages of
small towels impregnated with an insect repellant
substance intended to be wiped on to the user's
skin.
In August, 1975, the two respondents brought
an action against the appellant in the Trial Divi
sion for
(a) infringement of the registered trade mark,
(b) directing public attention to its insect repel
lant and business in such a way as to cause or be
likely to cause confusion in Canada between its
wares and business and the wares and business
of the Canadian respondent, and
(c) passing off its insect repellants as and for
those of the Canadian respondent,
and claimed
(i) injunctions,
(ii) delivery up, and
(iii) damages or an accounting of profits.
By its defence, the appellant, inter alia,
(a) alleged that the trade mark registration was
invalid, and
(b) denied infringement of the trade mark and
denied allegations of directing public attention
and passing off.
By a counterclaim, the appellant alleged that the
trade mark registration was invalid
(a) in that the word "OFF" is clearly descriptive
of an insect repellant contrary to section
12(1)(b) of the Trade Marks Act, and
(b) in that "OFF" is not and has not been
distinctive contrary to section 18(1)(b) of the
Trade Marks Act,
and asked that the trade mark registration be
expunged.
After trial, by a judgment dated April 4, 1977,
the Trial Division
(a) dismissed the counterclaim for expunge -
ment,
(b) restrained the appellant from further
infringing the U.S. respondent's registered trade
mark and from selling in Canada an insect
repellant in association with the trade mark
"BUGG OFF",
(c) ordered delivery up of literature, etc., con
nected with the latter trade mark,
(d) ordered a reference as to damages or prof
its, and
(e) awarded costs to the United States respond
ent as against the appellant.
The appellant appealed; and the respondents
cross-appealed "to the extent that the judgment
did not grant relief" to either respondent under
section 7(b) of the Trade Marks Act and to the
extent that the judgment did not grant relief to the
Canadian respondent.'
I have come to the conclusion that the appeal
should be allowed with costs of the trial and the
appeal payable by both respondents to the appel
lant, that the judgment of the Trial Division
should be set aside, that it should be ordered that
the trade mark registration be struck out, and that
the cross-appeal should be dismissed with costs. I
have reached this result because
(a) I have concluded that the trade mark was
not "distinctive" at the time that the counter
claim was launched within the meaning of sec
tion 18 (1) (b) of the Trade Marks Act, which
reads:
18. (1) The registration of a trade mark is invalid if
(b) the trade mark is not distinctive at the time proceedings
bringing the validity of the registration into question are
commenced; ...
' While, notwithstanding Rule 1203, the respondents filed a
document purporting to "appeal and/or cross-appeal" and a
separate court file was set up for the cross-appeal, in fact the
appeal and cross-appeal have been treated as one proceeding.
In my view, only one judgment should be given—on the appeal
file—and a copy of that judgment and the reasons therefor
should be placed on the second file.
when that provision is read with the definition of
"distinctive" in section 2 of the Act, viz:
"distinctive" in relation to a trade mark means a trade mark
that actually distinguishes the wares or services in asso
ciation with which it is used by its owner from the wares
or services of others or is adapted so to distinguish them;
and
(b) I have concluded that there was no evidence
on which it could be held that the appellant,
within the meaning of section 7(b) of the Trade
Marks Act, directed attention to its "wares" or
"business" in such a way as to cause or be likely
to cause confusion in Canada between its
"wares" or "business" and the "wares" or "busi-
ness" of the Canadian respondent. 2
In view of those two conclusions it is not, in my
view, necessary to consider the correctness of the
learned Trial Judge's findings on the other matters
dealt with by him or the merits of the other
matters that were argued in this Court.
With reference to section 7(b), I do not think
that it is necessary to discuss the evidence. It is
largely of the kind that speaks for itself. I should
say, however, that, if it were concluded that the
evidence establishes a case that falls within the
words of section 7(b), I should have thought that,
having regard to the reasoning on which the deci
sion in MacDonald v. Vapor Canada Limited' is
founded, the claim based thereon might have to be
dismissed on the ground that section 7(b) is ultra
vires. As, however, we did not have full argument
on that aspect of the matter, I should have been
inclined, in that event, to offer the parties an
opportunity of further argument with regard
thereto before disposing of this branch of the case
on that basis.
I turn finally to discuss my conclusion on the
question of distinctiveness. I think it well to deal
with the matter in two parts. In the first place, I
find it helpful to consider what the situation would
2 While I can see that there is a tenable argument for the
view that the one trade mark was confusing with the other (cf.
section 6), I can find no basis in the evidence for holding that
the appellant's wares or business were in fact passed off,
intentionally or otherwise, as those of the Canadian respondent.
3 [1977] 2 S.C.R. 134.
be if the Canadian respondent were not a regis
tered user of the trade mark. Then, I find it
necessary to consider whether the fact that the
Canadian respondent was such a registered user
affects the result that would otherwise be reached.
On the first branch of the matter, the relevant
portions of the Trade Marks Act would appear to
be the following:
2. In this Act
"distinctive" in relation to a trade mark means a trade mark
that actually distinguishes the wares or services in association
with which it is used by its owner from the wares or services
of others or is adapted so to distinguish them;
"trade mark" means
(a) a mark that is used by a person for the purpose of
distinguishing or so as to distinguish wares or services manu
factured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade mark;
12. (1) Subject to section 13, a trade mark is registrable ...
18. (1) The registration of a trade mark is invalid if
(b) the trade mark is not distinctive at the time proceedings
bringing the validity of the registration into question are
commenced; ..
These provisions must be read with section 19
which confers an exclusive right on the registered
owner to the use of the registered trade mark (as
such) and with section 20, which deems such right
to be infringed by a "confusing trade mark".
In my view, looking only at these provisions, it is
quite clear that the trade mark "OFF!" is not
"distinctive" because, having regard to the way in
which the Canadian mark has been developed by
the Canadian respondent, that trade mark does not
"actually distinguish" the wares in association
with which it is used by its owner (the U.S.
respondent) from the wares of others (which would
include the Canadian respondent) nor is it "adapt-
ed so to distinguish them". All the evidence would
appear to show that the message communicated to
the Canadian public by "OFF!" is that the goods
with which it is associated originate with the
Canadian respondent and not the U.S.
respondent. 4
At this point, I should say that, in my view, the
provisions of the Trade Marks Act to which I have
referred establish a system for protection of trade
marks as an important means for protecting busi
nessmen generally and the public from dishonest
businessmen who would "defraud" the public by
taking advantage of the good reputations of estab
lished competitors. The basic scheme is the provid
ing of legal protection to a person who has brought
about a situation whereby a certain "mark" distin
guishes his wares from the wares of others. He
may register such a mark, and, having done so, he
is entitled to protect it against infringers. It is,
however, essential to the scheme that a person is
only entitled to protection in respect of a mark if it
does, in fact, distinguish his wares from the wares
of others.
There are, however, commercially and legally
acceptable exceptions to the strict application of
such principles. For example, within limits a trade
mark may be transferred. However, even though
the provision that authorizes transfer (section 47)
does not expressly say so, the validity of the regis
tration of a trade mark after transfer is conditional
on the trade mark being "distinctive" of the wares
of the new owner.'
^ In my view, the use on the wares of the word "Johnson's",
which is said to refer to the U.S. respondent, does not affect the
matter inasmuch as the person clearly referred to by name on
all the wares and advertisements in Canada is the Canadian
respondent. However, if account is taken of the use of that
word and its alleged reference to the U.S. respondent, the
matter is not improved from the respondents' point of view. The
result would then be that the public has been educated to
associate the trade mark "OFF!" with both respondents and has
not been educated to regard it as indicating the wares of the
owner of the trade mark who is the U.S. respondent.
5 See Breck's Sporting Goods Co. Ltd. v. Magder [1976] 1
S.C.R. 527, and Wilkinson Sword (Canada) Limited v. Juda
[1968] 2 Ex.C.R. 137.
The question that arises here is whether a new
system of licensing of trade marks that was intro
duced in 1953 by section 49 of the Trade Marks
Act has created a system whereby a trade mark
registration can be valid, notwithstanding section
18(1), even though at the time that the validity is
attacked (as well as at all previous times) it "actu-
ally distinguishes" the wares in association with
which it is used by the licensee from the wares of
others (and is adapted so to do) and does not
"actually distinguish" the wares in association
with which it is used by the owner of the trade
mark from the wares of. others and is not adapted
so to do.
As appears from a reading of section 49, it
nowhere expresses, for the case where there is a
registered user, such a fundamental change in the
nature of trade mark as defined by the rest of the
Act. The question is, therefore, whether such a
consequence must be inferred from the provisions
of that section.
The relevant portions of section 49 read:
49. (1) A person other than the owner of a registered trade
mark may be registered as a registered user thereof for all or
any of the wares or services for which it is registered.
(2) The use of a registered trade mark by a registered user
thereof in accordance with the terms of his registration as such
in association with wares or services manufactured, sold, leased,
hired or performed by him, or the use of a proposed trade mark
as provided in subsection 39(2) by a person approved as a
registered user thereof, is in this section referred to as the
"permitted use" of the trade mark.
(3) The permitted use of a trade mark has the same effect
for all purposes of this Act as a use thereof by the registered
owner.
(5) Concurrently with or at any time after the filing of an
application for the registration of a trade mark, an application
for the registration of a person as a registered user of the trade
mark may be made to the Registrar in writing by such person
and by the owner of the trade mark, and the applicants shall
furnish the Registrar in writing with
(a) particulars of the relationship, existing or proposed, be
tween them, including particulars of the degree of control by
the owner over the permitted use which their relationship will
confer;
(b) a statement of the wares or services for which registra
tion is proposed;
(e) particulars of any conditions or restrictions proposed
with respect to the characteristics of the wares or services, to
the mode or place of permitted use, or to any other matter;
(d) information as to the proposed duration of the permitted
use; and
(e) such further documents, information or evidence as may
be required by the Registrar.
(7) The Registrar may approve a person as a registered user
of the trade mark for any of the proposed wares or services,
subject to any conditions or restrictions that he considers
proper, if he is satisfied that in all the circumstances the use of
the trade mark in association with such wares or services by the
proposed registered user would not be contrary to the public
interest.
Leaving aside for the moment the reference in
section 49(2) to section 39(2), what section 49
does, as I understand it, is to provide for a con
trolled system of licensing the use of a trade mark
by a person other than the owner. This was obvi
ously intended to provide for special situations
where licensing could be permitted without
detracting from the protection to the public pro
vided for by the general scheme of the Trade
Marks Act. For example, in the modern business
world, there are groups of companies carrying on,
under a single control, the same kind of business in
many different countries. In some cases at least,
these companies have their origin in the fact that,
in the process of carrying its own particular type of
product or service to other countries, the original
company decided to do so by subsidiary companies
which would use the trade mark or trade marks
that it had developed and made known. In such
kind of case, and probably others, there could be a
licensing of the use of a trade mark to legal
persons other than the one who has created and
owned it without any departure from the funda
mental idea of the function of a trade mark. In
fact, such subsidiary companies may operate under
the same control by the parent company as they
would if they were merely branches of it. To meet
the needs of such a case, and probably others,
Parliament, it appears, saw fit to permit controlled
licensing under which user of the trade mark by
the licensee would not be a contravention of the
right conferred by section 19 or fall foul of section
20. In effect, such a licensee would, with approval
under the statute, be entitled, by the use of the
trade mark, to indicate to the world that his goods
came from the owner of the trade mark. 6
Section 49(3) provides that the "permitted use
of a trade mark has the same effect for all pur
poses of this Act as a use thereof by the registered
owner". For present purposes, the question is
whether that provision not only permits user by the
licensee without contravening the owner's rights
but also, by implication, deems the actual effect of
the user of the trade mark by the licensee under its
own name (when that effect is to educate the
public to associate the trade mark with the licen
see's wares) to be what it would be if such user
had been by the owner of the trade mark under his
own name (in which case, the effect would have
been to educate the public to associate the trade
mark with the owner's wares). In my view, this
question must be answered in the negative. The
statute does not say any such thing expressly; and,
in my view, Parliament should not be taken as
completely changing, by inference, for this class of
case, the character of a trade mark from that of a
mark that distinguishes the owner's wares from the
wares of others to a mark that distinguishes a
licensee's wares from the wares of others.
However, there remains the question that I put
to one side as to whether the cross-references
between section 39(2) and section 49(2) constrain
one to the conclusion to which, as I have indicated,
I would not otherwise come.
This aspect of the matter requires some refer
ence to another innovation in the 1953 statute
[Trade Marks Act, S.C. 1952-53, c. 49]. Prior to
1953, as I understood counsel, registration systems
were for trade marks that had, by user or other
wise, already acquired the capacity to distinguish
the owner's wares from the wares of others. The
6 The effect of a use of the trade mark by the registered
owner is to distinguish the owner's wares from the wares of
others and section 49(3) provides that the "permitted use" has
the "same effect" for all purposes of the Act "as a use thereof
by the registered owner".
1953 Act introduced the idea of applying for a
"proposed trade mark" which, by definition, is "a
mark that is proposed to be used by a person for
the purpose of distinguishing ... wares ... manu
factured ... by him from those manufactured ...
by others". However, when an application for such
a trade mark is allowed, the trade mark is not
registered until the Registrar is supplied with a
declaration of commencement of user. The rele
vance of this to the problem in hand is that that
commencement of user can, according to sections
39(2) and 49(2) be by a registered user.'
I find the problem so presented very difficult. A
trade mark, by definition, distinguishes the own
er's wares from the wares of others. On the other
hand, the original use for trade mark purposes
may, by virtue of sections 39(2) and 49(2), be by a
licensee. Does it follow that Parliament, without
saying so expressly, is providing, by necessary
implication, that a message to the public that in
fact indicates that wares associated with the trade
mark originate with the licensee of the trade mark
is to be deemed, as a matter of law, to be a
message to the public, which it is not in fact, that
wares associated with the trade mark originate
with the owner of the trade mark?
I do not find any such necessary implication in
the statute. In my view, the answer is to be found
in what sort of user is authorized by section 49. As
I read it, that section does not authorize a regis
tered user to use, in association with wares, both
the trade mark and his own name as manufacturer
in such a way as to carry a message to the public
in direct contradiction to the Register, which
shows that the trade mark is used to distinguish
' Section 39(2) of the Trade Marks Act reads as follows:
39. ...
(2) When an application for registration of a proposed
trade mark is allowed, the Registrar shall give notice to the
applicant accordingly and shall register the trade mark and
issue a certificate of its registration upon receipt of a declara
tion that the applicant, his successor in title or a person
approved as a registered user under subsection 49(7) has
commenced the use of the trade mark in Canada in associa
tion with the wares or services specified in the application.
the wares of the owner of the trade mark. As it
seems to me, what must be contemplated is either
(a) user by the licensee of the trade mark with
out any indication as to who is manufacturer,
(b) user by the licensee of the trade mark with
an indication of the owner of the trade mark as
manufacturer (which misrepresentation would
be innocuous assuming that the controls contem
plated by section 49 are properly applied), or
(c) user by the licensee of the trade mark with
an indication that it is being used by a registered
user and an indication of the name of the owner
of the trade mark,
or some comparable use that is not inconsistent
with the registration of the trade mark.
Whatever be the correct view as to the character
of the "permitted use" under section 49, in my
view, section 49 does not have the effect of deem
ing the activities of the Canadian respondent
(which in fact had the result of making the trade
mark "OFF!" a mark that "actually distinguishes"
the wares of the Canadian respondent from the
wares of others) to have had the result of making
that trade mark a mark that "actually distin
guishes" the wares of the U.S. respondent from the
wares of others. That being so, on the facts of this
case, it is clear, in my view, that the registration of
the trade mark "OFF!" is invalid by virtue of
section 18(1)(b) of the Trade Marks Act.
â–
The following are the reasons for judgment
delivered orally in English by
URIE J.: I fully agree with the conclusions of the
Chief Justice and the reasoning whereby he
reached those conclusions. However, I do not wish
to leave this matter without first dealing, very
briefly, with the respondents' contention that the
trade marks "oFF!" and "BUGG OFF" are confus
ing within the meaning of section 6(2) 8 of the
Trade Marks Act.
Before doing so, however, I should point out that
the learned Trial Judge found that the trade mark
"OFF!" was not "clearly descriptive" of the nature
and quality of the wares with which it was used
and I am of the opinion that he was right in so
finding.
However, he also found that the marks in ques
tion were confusingly similar. Such a finding
requires that regard shall be had to all the sur
rounding circumstances including those set forth in
section 6(5) 9 of the Act, not the least of which is
the degree of resemblance in appearance or sound
or in the ideas suggested by them. In my view, the
voluminous evidence disclosing, as it does, the
surrounding circumstances, indicates that the Trial
Judge was clearly wrong in concluding that the
marks were confusing.
8 6. ...
(2) The use of a trade mark causes confusion with another
trade mark if the use of both trade marks in the same area
would be likely to lead to the inference that the wares or
services associated with such trade marks are manufactured,
sold, leased, hired or performed by the same person, whether or
not such wares or services are of the same general class.
9 6. ...
(5) In determining whether trade marks or trade naines are
confusing, the court or the Registrar, as the case may be, shall
have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade marks or trade
names and the extent to which they have become known;
(b) the length of time the trade marks or trade names have
been in use;
(e) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade marks or
trade names in appearance or sound or in the ideas suggested
by them.
Under section 20 10 of the Act, the onus is on the
U.S. respondent, as owner of the mark, to establish
that the appellant is "not entitled" to use "BUGG
OFF" in association with its wares and further that
"BUGG OFF" as used with those wares, namely a
pre-treated insect repelling cloth, is "confusing" or
"causes confusion" with the U.S. respondent's
wares, namely a liquid, foam or spray insect repel
lant marketed under its trade mark "oFF!".
Without reviewing the evidence here, suffice it
to say that neither a visual examination of the
packages, labelling or promotional material of
each product upon which the respective marks
appear, nor any reasonable aural appreciation of
them nor the message or idea suggested by them,
properly appreciated, could lead, in my opinion, to
any confusion between them or the inference con
templated by section 6(2). I may say that I reach
this conclusion notwithstanding the fact that it is
common ground that the product bearing the trade
mark "OFF!" was widely distributed and sold in
the market place for 18 years before "BUGG OFF"
appeared therein in 1975.
Furthermore, for whatever weight it might be
given bearing in mind the short period of time that
the two products were sold concurrently in the
market, and, while admittedly, in any event that it
is not a crucial element, it is not entirely without
significance that the respondents adduced no evi
dence whatsoever of the occurrence of any actual
confusion in the market between the two marks.
In my opinion, therefore, the U.S. respondent
failed to discharge the onus imposed on it by
1 0 20. The right of the owner of a registered trade mark to its
exclusive use shall be deemed to be infringed by a person not
entitled to its use under this Act who sells, distributes or
advertises wares or services in association with a confusing
trade mark or trade name, but no registration of a trade mark
prevents a person from making
(a) any bona fide use of his personal name as a trade name,
or
(b) any bona fide use, other than as a trade mark,
(i) of the geographical name of his place of business, or
(ii) of any accurate description of the character or quality
of his wares or services,
in such a manner as is not likely to have the effect of depreciat
ing the value of the goodwill attaching to the trade mark.
section 20 to establish that "BUGG OFF" is a mark
which is confusing with the mark "OFF!".
For these reasons, as well as those given by the
Chief Justice, I would allow the appeal.
* * *
RYAN J. concurred.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.