T-2263-78
Insurance Corporation of British Columbia
(Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.--Ottawa, September
18 and October 11, 1979.
Trade marks — Official mark of Crown corporation —
Respondent refused to give public notice to adoption and use
of official mark, the word "Autoplan" in stylized print —
Refusal based on grounds that (1) design not official for
services in association with which it had been used, (2)
respondent had a discretion to allow or refuse to give public
notice in public interest, and (3) mark adopted was either name
of services, or clearly descriptive or deceptively misdescriptive
— Appellant appeals that decision — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 2, 9(1), 12(1)(b).
Appellant, a British Columbia Crown corporation, appeals
the refusal of the Registrar of Trade Marks to give public
notice of the adoption and use of its symbol, the word "Auto-
plan" in a typography not identifiable by name but nevertheless
readily legible. Appellant's revised application, made pursuant
to section 9(1)(n)(iii) of the Trade Marks Act, stated that the
Autoplan design mark was adopted and used by appellant as an
official mark for insurance, reinsurance, repair, salvage, medi
cal and hospital services. The Registrar refused appellant's
request because (1) the design as adopted and used was not an
official mark for services in association with which it has been
used, (2) the Registrar had a discretion to allow or refuse to
give public notice of an official mark in the public interest, and
(3) the mark and design adopted by appellant and used in
association with its services is either the name of the services or
clearly descriptive or deceptively misdescriptive of the charac
ter of those services.
Held, the appeal is allowed. The mark "Autoplan" in stylized
print, is an official mark. The mark was derived from and
sanctioned by a board of directors consisting of the Minister
and other members appointed by the Lieutenant Governor in
Council and falls within the dictionary meaning of the word
"official". It does not follow that the mark may not be official
because the dignified attributes of officiality are lacking. The
Registrar's conclusion that the mark is "to regulate wares or
services" is a non sequitur for it is an attempt to bestow the
attributes of a certification mark upon an official mark. The
Registrar wrongly refused to give public notice of the adoption
and use of the official mark when requested to do so by the
appellant on the ground that he had a discretion not to do so
when he deemed it not to be in the public interest. The requests
contemplated in section 9(1)(e) and (n), despite polite usage of
the word "request", are mandatory in nature. The purpose of
the Registrar's giving public notice of the adoption and use of
an official mark is to alert the public to that adoption as an
official mark by the public authority to prevent infringement of
that official mark. It does not bestow upon the Registrar any
supervisory functions. After a public authority has adopted an
official mark, all other persons are precluded from using that
mark and, as a result, the public authority on its own initiative
can appropriate unto itself the mark so adopted and used by it
without restriction or control other than its own conscience and
the will of the electorate.
APPEAL.
COUNSEL:
Nicholas H. Fyfe for appellant.
W. L. Nisbet, Q.C. for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: The appellant was established
as a corporation to be known as the Insurance
Corporation of British Columbia by the Insurance
Corporation of British Columbia Act, S.B.C.
1972-73, c. 44, consisting of the Minister (defined
in the statute as that member of the Executive
Council charged by Order of the Lieutenant Gov
ernor in Council with the administration of the
Act) and not less than two or more than eight
other members appointed by the Lieutenant Gov
ernor in Council which members shall be directors
of the Corporation during their terms of office.
The Minister is the president and chairman of the
board of directors of the Corporation.
The Corporation is described in the statute as an
agent for Her Majesty in the right of the Province
generally for the purpose of carrying on, in the
Province, any class of insurance or insurance plan
which the Lieutenant Governor in Council may
authorize the Corporation to engage in.
By resolution at a meeting held on November 9,
1973, the board of directors adopted as a "symbol"
the word "Autoplan" in a typography which is not
identifiable by name such as "script" or "Old
English" but which is a stylized form of print
readily legible.
By letter dated January 30, 1975 and captioned
"Re Trade Mark Autoplan and Design" the appel-
lant requested the Registrar of Trade Marks to
give public notice of the adoption and use of the
"trade mark" as shown in an attached drawing.
This letter of request directly from the appellant
was enclosed in a request from an agent appointed
by the appellant to prosecute the "application"
dated February 5, 1975. There was no indication
as to the wares or services in association with.
which the mark was to be used but the agent did
indicate that the request was being made pursuant
to section 9 of the Trade Marks Act, R.S.C. 1970,
c. T-10.
That application came to naught.
On November 17, 1976 the application was
renewed by newly appointed agents.
On December 1, 1976 the Registrar invited
representations as to whether:
1. the applicant was a public authority within the meaning of
section 9(1)(n)(iii) of the Trade Marks Act,
2. the broad description "wares and services" was appropriate,
3. the mark applied for should not be examined on the same
basis as it being an application for the registration of a trade
mark under section 29 of the Act and as such not registrable
under section 12(1)(e) (This I assume would raise the consider
ation of whether the "mark" is an "official mark" and whether
publication should be forthcoming in the light of existing marks
on the register) and
4. if public notice is given of the autoplan design mark by the
Registrar what happens to existing marks on the register, do
they lose distinctiveness absolutely or is the scope of protection
lessened and to what extent.
The newly appointed agents responded to items
1, 3 and 4 raised by the Registrar by letter dated
March 15, 1977 and to item 2 by submitting a
revised application under section 9(1)(n)(iii) in
which it is stated that the Autoplan design mark
was adopted and used by the applicant as an
official mark for insurance, reinsurance, repair,
salvage, medical and hospital services.
This explains the inconsistencies in the pleadings
as to the date of the application. It is accepted by
the parties that the application is the one dated
March 15, 1977 and it is to that application that
the Registrar directed his decision.
By his decision dated April 14, 1978 the Regis
trar refused the request of the appellant on the
basis that:
1. the mark Autoplan and design as adopted and used by the
appellant is not an official mark for the services in association
with which it has been used,
2. the Registrar has the discretion to allow or refuse to give
public notice of an official mark in the public interest, and
3. the mark Autoplan and design adopted and used by the
appellant in association with the services it provides is either
the name of the services (section 12(1)(c)) or clearly descrip
tive or deceptively misdescriptive of the character of those
services (section 12(1)(b)).
It is from this decision that the appeal is
brought under section 56 of the Act.
The parties agree that the appellant is a "public
authority" within the meaning of those words as
used in section 9(1)(n)(iii). I agree with this con
clusion by counsel for the parties and that the
position initially taken by the Registrar to the
contrary was untenable.
It is expedient that section 9 be reproduced in its
entirety:
9. (1) No person shall adopt in connection with a business,
as a trade mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for
(a) the Royal Arms, Crest or Standard;
(b) the arms or crest of any member of the Royal Family;
(e) the standard, arms or crest of His Excellency the Gover
nor General;
(d) any word or symbol likely to lead to the belief that the
wares or services in association with which it is used have
received or are produced, sold or performed under royal,
vice-regal or governmental patronage, approval or authority;
(e) the arms, crest or flag adopted and used at any time by
Canada or by any province or municipal corporation in
Canada in respect of which the Registrar has at the request
of the Government of Canada or of the province or municipal
corporation concerned, given public notice of its adoption
and use;
(f) the heraldic emblem of the Red Cross on a white ground,
formed by reversing the federal colours of Switzerland and
retained by the Geneva Convention for the Protection of War
Victims of 1949, as the emblem and distinctive sign of the
Medical Service of armed forces and used by the Canadian
Red Cross Society; or the expression "Red Cross" or "Gene-
va Cross";
(g) the heraldic emblem of the Red Crescent on a white
ground adopted for the same purpose as specified in para
graph (f) by a number of Moslem countries;
(h) the equivalent sign of the Red Lion and Sun used by
Iran for the same purpose as specified in paragraph (I);
(i) any national, territorial or civic flag, arms, crest or
emblem, or official control and guarantee sign or stamp,
notice of the objection to the use of which as a commercial
device has been received pursuant to the provisions of the
Convention and publicly given by the Registrar;
(j) any scandalous, obscene or immoral word or device;
(k) any matter that may falsely suggest a connection with
any living individual;
(1) the portrait or signature of any individual who is living or
has died within the preceding thirty years;
(m) the words "United Nations" or the official seal or
emblem of the United Nations;
(n) any badge, crest, emblem or mark
(i) adopted or used by any of Her Majesty's Forces as
defined in the National Defence Act,
(ii) of any university, or
(iii) adopted and used by any public authority in Canada
as an official mark for wares or services,
in respect of which the Registrar has, at the request of Her
Majesty or of the university or public authority as the case
may be, given public notice of its adoption and use; or
(o) the name "Royal Canadian Mounted Police" or
"R.C.M.P." or any other combination of letters relating to
the Royal Canadian Mounted Police, or any pictorial
representation of a uniformed member thereof.
(2) Nothing in this section prevents the use as a trade mark
or otherwise, in connection with a business, of any mark
described in subsection (1) with the consent of Her Majesty or
such other person, society, authority or organization as may be
considered to have been intended to be protected by this
section.
I do so being mindful that in all cases the
intention of the legislature must depend to a great
extent upon the particular object of the statute, or
in some instances a particular section within the
statute, that has to be construed. Of course, that
intention is to be determined as expressed by the
words used but to understand those words it is
material to know the subject matter with respect
to which they are used and the object in view.
In modern times a statute passed by Parliament
is as recorded in the copy printed by the Queen's
Printer. That being so the rule which treats the
title of an Act, the marginal notes, and the punc
tuation, not as forming part of the Act, but merely
as temporanea expositio ought not to be applied
with its former rigidity. These were formerly
appendages useful to a hasty enquirer but in my
view they are no longer merely appendages and as
such may be useful in construing a statute or a
section.
The marginal note to section 9(1) is "Prohibited
marks". The prohibitions, with the exceptions of
those in paragraphs (j), (k) and (1), have an
heraldic or vexillological connotation designed to
prevent any semblance of royal, vice-regal, govern
mental, (whether federal, provincial or municipal)
patronage, approval or authority where none exists
as with the heraldic emblems of the Red Cross, the
Red Crescent, the Red Lion and Sun, the emblem
of the United Nations and the Royal Canadian
Mounted Police. Added to these by section 9(1)(n)
are the devices adopted by Her Majesty's Armed
Forces, any university and by any public authority.
By section 9(1)(e) it is the arms, crest or flag
adopted and used at any time by Canada, or any
province or municipal corporation in Canada that
is protected if in respect of which, at the request of
Canada, a province or municipality, the Registrar
has given public notice of its adoption.
I find this provision with respect to the arms and
crest somewhat incongruous bearing in mind that
the crest is part of the armorial bearings or arms.
The arms of Canada and every province (except
Nova Scotia) have been granted by letters patent
issuing out of the College of Heralds in exercise of
the Royal prerogative. That bestows the exclusive
right to the use of the arms so bestowed which
quite recently has been enforced on petition to the
Earl Marshal in the Court of Chivalry presided
over by Lord Goddard C.J. as his Surrogate with
Officers of Arms in attendance. (See Manchester
Corporation v. Manchester Palace of Varieties,
Ltd. [1955] 1 All E.R. 387.) Nova Scotia was
granted arms by the College of Heralds but that
Province had been the recipient of a much earlier
(and in my view a much more attractive) grant
from the Lord Lyon King of Arms which that
Province uses and has abandoned the use of the
subsequent grant.
I find it extremely difficult to conceive how the
Registrar of Trade Marks could possibly refuse to
give public notice of the arms granted in the
exercise of the Royal prerogative to Canada and
the provinces thereof or any municipality in
Canada at the request of any one of those grantees
nor, for that matter, to any university or public
authority which has been the recipient of such a
grant.
The advantage of requesting the Registrar under
section 9(1) (e) to give public notice of the grant of
arms is to give further publicity thereto and, ex
abundanti cautela, to achieve an additional and a
more practical protection of an exclusive user.
The advantage is more evident in the adoption
of bogus arms by municipalities which was a
prevalent practice at one time with ghastly heral
dic results but that practice is gradually being
abandoned with a revived knowledge of heraldry
attributable to a Society devoted to that end and
grants are being sought by legitimate exercise of
the Royal prerogative.
The words used in section 9(1)(e) are "the arms,
crest or flag" with respect to which these com
ments are directed whereas in section 9(1)(n) the
words are "any badge, crest, emblem or mark".
The only word common to both paragraphs of
the section is "crest". Clearly from the context in
which the word "crest" is used in section 9(1)(e),
as well as from the context in preceding para
graphs (a), (b) and (c) of section 9(1), that word is
being used in its heraldic meaning. A crest forms
an integral part of a coat of arms as a whole. It is
the figure or device which appears above the
wreath on the helmet which surmounts the shield.
A crest may be used separately in good taste on
seals, plate, notepaper and the like but it is a
vulgar error to refer to the arms or shields as
crests.
It is for these reasons that I conclude that the
word "crest" where it appears in section 9(1)(n)
must be used in this sense.
Likewise the word "badge" had its origin in
heraldry as meaning a distinctive device worn by
the adherents of the lord. The badge is not com
prised of the arms of the lord, which are exclusive
to him, but usually it utilizes the crest. In Scotland
the badge worn by a clansman is the crest of the
Chief within a belt and buckle with the Chief's
motto inscribed on the belt.
The word "emblem" does not have its origin in
heraldic science but in its wider sense it is used as
a symbol. It may be a figured object used symboli
cally as is a badge. Thus there are national
emblems such as the crescent, the lion, the eagle
and the sun as well as national floral emblems
such as the rose, thistle, shamrock and leek and
each province of Canada has adopted a floral
emblem such as the trillium of Ontario and the
dogwood of British Columbia. Such emblems have
a significance in that they serve to identify a
nation or a province.
There remains the concluding word "mark" in
section 9(1)(n). It does not have similar precise
connotations as do the preceding words although it
does have a minor heraldic significance in that
there are marks of cadency such as the Prince of
Wales label to signify the first son. In common
parlance however a mark is a device, stamp, label,
brand, inscription, a written character or the like
indicating ownership, quality and the like.
In section 2 of the Act "trade mark" is defined
as follows:
2....
"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;
A "certification mark", "distinguishing guise"
and "proposed trade mark" are individually and
specifically defined in the same section. The word
"mark" is not, and resort may therefore be had to
dictionaries to ascertain the meaning of the word
"mark" in its ordinary sense which is the sense in
which I think the word "mark" is used in the
context of section 9 (1) (n).
The first ground advanced by the Registrar for
refusing to comply with the request of the appel
lant to give public notice of the adoption and use
by the appellant of the mark in question was that
the mark so adopted is not an official "mark"
within the meaning of section 9(1)(n)(iii) which
for convenience I repeat here leaving out the inap
plicable language:
9....
(n) any ... mark
(iii) adopted and used by any public authority in Canada
as an official mark for wares or services,
The stylized printing of the word "Autoplan"
adopted by the appellant in association with the
services it provides exhibits no ingenuity, original
ity or thought on the part of its adopters.
Standing by itself the word signifies nothing in
addition to the primary meaning that it denotes. It
has none of the attributes, overtones or dignity of
officiality associated with arms, a crest, an heral
dic emblem, badge or emblem.
It was submitted by counsel for the Deputy
Attorney General of Canada on behalf of the
Registrar of Trade Marks that since the word
"Autoplan" printed as it is had none of these
attributes it could not be an "official" mark being
completely lacking in any connotation of official-
ity.
I completely agree with the submission made on
behalf of the Registrar in this respect but I do not
agree that it necessarily follows that because the
dignified attributes of officiality are lacking that
the mark may not be an official mark nevertheless.
It is a general principle that when particular
words are followed by general words, the latter
must be construed as ejusdem generis with the
former.
Applying the ejusdem generis doctrine to the
words "any badge, crest, emblem or mark" each of
the words has a specific meaning as has been
previously expressed in detail. Each of the words
"badge", "crest" and "emblem" has a particular
meaning. So too has the word "mark" and particu
larly since it appears in the definition of a "trade
mark" in section 2 of the Act where the word
"mark" is utilized as the progenitor of a "trade
mark".
Therefore there is no general word following the
specific words and accordingly no general expres
sion to be governed by the specific words.
Neither do I think that the doctrine "noscitur a
sociis" is applicable. That doctrine is, as expressed
by venerable authority, that where general words
are closely associated with preceding specific
words the meaning of the general words must be
limited by reference to the specific words.
However since all words have specific meanings
they are all particular words and must be given
their respective individual meanings. The conclud
ing word "mark" cannot be construed as a general
word the meaning of which must be restricted by
the words preceding. In common parlance the
word "mark" can mean an "inscription" or "writ-
ten characters" indicative of ownership or quality
which are attributes of a trade mark.
What then is an "official" mark within the
meaning of section 9(1)(n)(iii). An official mark is
not defined in the statute.
The Registrar in his reasons dated April 14,
1978 resorted to a dictionary meaning of the word
"official". One such definition was "derived from
the proper office or officer or authority".
The definition in The Shorter Oxford English
Dictionary is to like effect reading "4. Derived
from, or having the sanction of, persons in office;
hence, authorized, authoritative".
I accept either definition of the adjective "offi-
cial", but I do not accept the extension of either
definition adopted by the Registrar as that adjec
tive qualifies the noun "mark" and the meaning he
attributes to the words "official mark". He said:
Applying the definition of "official" to the adjective `official"
in subsection 9(I)(n)(iii), the words "official mark" as applied
to wares or services define a mark which when used in associa
tion with wares or services indicates that the wares or services
have been authorized pursuant to the authority vested in the
public by statute and regulation to regulate wares or services. I
have in mind the mark applied to meat by meat inspectors of
the Department of Agriculture and marks such as CMHC
approved for houses meeting CMHC requirements. There are
numerous examples of such official marks which indicate that
the wares or services officially comply with the prescribed
regulations.
An official mark of a public authority which defines wares or
services as meeting regulations of a public authority, and which
discloses to the public the approval of the wares or services by
the public authority is consistent with the other prohibitions
contained in section 9.
The appellant is a corporation which is an ema
nation of the Government of the Province of Brit-
ish Columbia and an agent of Her Majesty in the
right of the Province. It derives its powers and
capacities from the statute by which it was created
as are outlined in sections 5 and 6 thereof. It has
the power and capacity to do all acts and things
deemed necessary or required to carry out its
functions.
The board of directors consisting of the Minister
and other members appointed by the Lieutenant
Governor in Council met on November 9, 1973
and by by-law adopted the "Autoplan symbol" and
the appellant apparently proceeded to use that
symbol in association with the services it performs.
There is no question that this use is the same use
as a trade mark use. A trade mark is an asset and
by virtue of the statute incorporating the appellant
the assets and property of the appellant are assets
and property of Her Majesty in the right of the
Province.
It was within the competence of the board of
directors of the appellant to enact the by-law it
did. Thus the mark was derived from and sanc
tioned by persons in office and hence was author
ized and authorative precisely within the meaning
of the word "official".
The mark was self-bestowed but that is what
this particular public authority was enabled to do
and similar powers are bestowed on many public
authorities.
The mark so adopted falls within the dictionary
meaning of the word "official" and therefore is an
"official mark" within the meaning of these words.
This I think the Registrar accepts.
However he then continues to say that having
been authorized pursuant to the authority vested
in the public authority by statute that the mark so
adopted is "to regulate wares or services". This
conclusion from the original premise is, in my
view, a non sequitur.
What the Registrar purports to do in this pas
sage quoted from his reasons is to bestow the
attributes of a certification mark upon an official
mark contemplated in section 9(1)(n) and in my
view the language of that paragraph of the section
does not justify such an interpretation.
For the reasons expressed above I have conclud
ed that the word "Autoplan" printed in a stylized
form adopted by the appellant for use in associa
tion with services is an official mark.
This leads into the second ground upon which
the Registrar refused to give public notice of the
adoption and use of an "official mark" by the
appellant when requested to do so by the appellant
and that ground was that there is a discretion
vested in the Registrar not to do so when he deems
it not to be in the public interest to do so.
The only word in section 9(1)(n) susceptible of
importing a discretion to the Registrar is the word
"request" where it occurs in the following context:
9....
(n) any badge, crest, emblem or mark
in respect of which the Registrar has, at the request of Her
Majesty or of the university or public authority as the case
may be, given public notice .... [Emphasis added.]
The word "request" in that context governs a.
request made by Her Majesty, a university or a
public authority.
The same language appears in section 9(1)(e).
This paragraph refers to arms, crest or flag used
by Canada or any province or municipal authority
in Canada:
in respect of which the Registrar has at the request of
the Government of Canada, or any province or
municipal corporation given public notice.
I have already expressed the view that when
armorial bearings are granted to Canada, a prov-
ince of Canada or any municipality in Canada by
an exercise of the Royal prerogative it is inconceiv
able to me that the wish of Her Majesty, who is
the fount of all honours, should be stultified by a
discretion in the Registrar of Trade Marks.
The word "request" is used in both section
9(1)(e) and section 9(1)(n). Prima facie the same
word in different parts of a statute should be given
the same meaning and I can see no clear reason for
departing from this rule.
It was the view of the Registrar expressed in his
reasons that the word "request" means "to ask
someone to do something" and should not be
interpreted as a demand. Perhaps "order" would
have been a more preferable word to "demand".
The implication sought to be conveyed by him is
that "request" is discretionary whereas "demand"
would be mandatory.
It must be borne in mind that Her Majesty is
one of the persons who may make the request. The
protocol of Buckingham Palace is that Her Majes
ty never makes a "demand". She expresses the
wish or asks that something be done. That is a
request. Considering from where the request is
made all loyal subjects obey with an alacrity that
follows as a matter of course. An expression
uttered in exasperation by Henry II in the hearing
of four of his knights was interpreted by them (and
later by Pope Alexander III) as a command and
resulted in the death of Thomas à Becket and
penance by Henry.
So, too, the requests contemplated in section
9(1) (e) and the remaining sources of request in
section 9(1) (n) are made by the Government of
Canada, of a province or by a municipality and by
a university or public authority, originate from
like, but lesser, high authority and, despite polite
usage of the word "request", are likewise manda
tory in nature.
Section 9 of The British North America Act,
1867, R.S.C. 1970, Appendix II, No. 5, provides
that the Executive Government and Authority of
and over Canada is declared to be and continues to
be vested in the Queen. The legislature enacts laws
and grants supplies but does not administer.
Executive Government, which is the Crown acting
on the advice of her ministers, administers the
public affairs of the country. Therefore a request
made by the Government of Canada under section
9(1)(e) is a request by the Crown and like con
sideration would apply to a request by the govern
ment of a province of Canada. The lesser authori
ties, such as municipal corporations in section
9(1)(e) and universities and "public authorities",
in section 9(1)(n) are infused by the aura of the
bodies with which they are associated in the
context.
It is for these reasons that I conclude that there
is no discretion in the Registrar to refuse to give
public notice when requested to do so under sec
tion 9(1)(e) and section 9(1)(n) regardless of the
body mentioned in either paragraph which makes
the request.
I am confirmed in this conclusion by what I
construe to have been the particular object the
legislature had in view in enacting section 9 of the
Trade Marks Act and that object is to be deter
mined as expressed by the words used.
I should add that the conclusions in this respect
will necessarily overlap a consideration of the third
ground upon which the Registrar refused the
request of the appellant, that is to say that marks
adopted and used by public authorities which are
used as ordinary commercial trade marks should
not fall within section 9(1)(n)(iii) (in this respect
there is also an overlap with the reasons for which
I concluded that the mark adopted by the appel
lant was an "official mark") and that being so the
request should be considered by him on the same
basis as if the public authority were applying for
the registration of a trade mark and subject to the
same restrictions applicable to such an application.
Having accepted that premise the Registrar went
on to conclude that the mark was not registrable
under section 12(1) (b) because it is clearly
descriptive or deceptively misdescriptive of the
character of the services in association with which
it is used. Having reviewed the material transmit
ted by the Registrar under section 60 he may well
have concluded from the premise he adopted that
the appellant was not the person entitled to regis
tration of the mark because it is not registrable as
being confusing with a trade mark that had been
registered.
As I have said the intention of the legislation is
to be found in the language used in section 9 of the
Act.
Section 9 is a prohibition against the adoption in
connection with a business, as a trade mark or
otherwise, the list set forth in the section.
Basically they are the arms, crests, standards,
flags, words, symbols, heraldic emblems, signs,
badges and like indicia associated with Her Majes
ty, the Royal Family, the Governor General, the
Government of Canada, the Provinces of Canada
and certain named public bodies, domestic and
foreign. Section 11 prohibits the use of the devices
which section 9 prohibits the adoption of.
The logical consequence of the prohibition of the
adoption and use of any mark as a trade mark or
otherwise consisting of or resembling any of the
devices mentioned in section 9 is to reserve to the
persons and bodies mentioned the exclusive user of
those devices.
That is the basic scheme of the section to be
derived from its language.
The same applies to the arms, crest or flag
adopted or used by Canada, and any province or
municipality in Canada of which those authorities
may have requested the Registrar to give notice.
The purpose is to grant an exclusive use to these
authorities. That is the logical converse of the
prohibition.
The same, too, applies to any badge, crest,
emblem or mark adopted and used by Her Majes-
ty's Forces, any university or by any public author
ity in Canada as an official mark for wares or
services.
Clearly section 9(1) (n) (iii) contemplates the use
of an official mark which a public authority has
seen fit to adopt to be a use exclusive to that
authority. The purpose of the Registrar giving
public notice of the adoption and use of an official
mark is to alert the public to that adoption as an
official mark by the public authority to prevent
infringement of that official mark. It does not, in
my view, for the reasons previously expressed
bestow upon the Registrar any supervisory
functions.
I fully realize the consequences. A public au
thority may embark upon a venture of supplying
wares and services to the public and in so doing
adopt an official mark. Having done so then all
other persons are precluded from using that mark
and, as a result of doing so, on its own initiative,
the public authority can appropriate unto itself the
mark so adopted and used by it without restriction
or control other than its own conscience and the
ultimate will of the electorate expressed by the
method available to it.
That, in my opinion, is the intention of Parlia
ment which follows from the language of section 9
of the Act and that is the policy which Parliament,
in its omnipotent wisdom, has seen fit to imple
ment by legislation.
I do not understand what right a Court of
justice has to entertain an opinion of a positive law
upon any ground of political expediency. I think,
when the meaning of a statute is plain and clear,
the Court has nothing to do with its policy or
impolicy, its justice or injustice. The legislature is
to decide upon political expediency and if it has
made a law which is not politically expedient the
proper way of disposing of that law is by an Act of
the legislature, not by a decision of the Court. If
the meaning of the statute is plain and clear a
Court has nothing to do but to obey it—to admin
ister the law as the Court finds it. To do otherwise
is to abandon the office of judge and to assume the
province of legislation.
If the true intention of Parliament was not as I
have found it to be so expressed in section 9 of the
Trade Marks Act then the remedy lies in Parlia
ment to express its true intention in clear and
unequivocal language.
Oddly enough the Registrar seems to have con
sidered all prior requests received by him under
section 9 (1) (n) to give public notice in a manner
consistent with the conclusions I have reached.
That is not conclusive of the matter and the fact
that he considered the request of the appellant on
a different basis is susceptible of the inference that
he was wrong with respect to the prior requests
made of him with which he complied.
In the Trade Marks Journal of October 18,
1978 the Registrar gave public notice under sec
tion 9(1)(n)(iii) of the adoption and use by the
"Ministry of Finance" of the mark "CANADA SAV
INGS BONDS".
Without concerning myself with whether the
word "Ministry" was a clerical error and should
read "Minister" and if not whether a "Ministry of
Finance" exists bearing in mind that section 8 of
the Financial Administration Act, R.S.C. 1970, c.
F-10, provides that there shall be a department of
the Government of Canada called the "Depart-
ment of Finance" (not the "Ministry of Finance")
presided over by the "Minister of Finance" and
whether in the light of such circumstances an
official mark was adopted and used by a public
authority or if the request was made by a public
authority I cannot conceive of a mark which is
more clearly descriptive of the wares or services in
association with which it is used or more indicative
of their place of origin than the mark "CANADA
SAVINGS BONDS" and so not registrable by virtue
of section 12(1) (b) of the Trade Marks Act unless
it be:
1. TVOntario, published by the Registrar in the Trade Marks
Journal of February 15, 1978 at the request of The Ontario
Education Community Authority,
2. BRITISH COLUMBIA GAMES published by the Registrar in
the Trade Marks Journal of April 19, 1978 at the request of
the Ministry of Recreation and Conservation for British
Columbia,
3. NEPEAN in stylized print published by the Registrar in the
Trade Marks Journal of May 17, 1978 at the request of the
Township of Nepean,
and a host of others numbering in the hundreds.
In the examples I have given the public author
ity in the first two were emanations of provincial
governments and were unabashed in the use of the
names of the respective provinces which they were
entitled to use anyway and were unabashedly
descriptive of the services. The third is the name of
the Township which is most certainly entitled to
use its own name.
However these circumstances do not detract
from the fact that if section 12 of the Trade
Marks Act were applicable these "official marks"
would not be registrable.
The same circumstances do not apply to the
mark here in question with respect to which the
appellant requests the Registrar to give public
notice. There is nothing in it descriptive of the
place of origin of the wares or services as there
would be if there had been included with the word
"Autoplan" such words or abbreviation as "British
Columbia Autoplan" or "B.C. Autoplan". I would
conjecture that the Registrar may have given
public notice because to have done so would be
consistent with the discernible pattern in previous
requests to which he acceded. I take it that the
reason for not doing so in this instance was that he
did not consider the mark to be "official" with
which conclusion I do not agree for the reasons
already expressed on that issue.
From the documents on file in the Registrar's
office transmitted to the Court under section 60 of
the Trade Marks Act the Registrar was concerned
with the effect the prohibition following upon the
notification of the adoption and use of an official
mark would have on trade marks registered in the
normal manner with which the official mark con
flicts. This particular issue is not before me but it
appears evident to me that the normal commercial
trade mark registered by a trader must defer to the
official mark adopted and used by a public author
ity or like body because that is the legislative
intent. The remarks I have previously made that if
the true intent of Parliament was not expressed by
the language employed in the section or if Parlia
ment should conclude that the law is not politically
expedient then the remedies as before mentioned
lie with Parliament.
For the foregoing reasons the appeal is allowed
and the matter is referred back to the Registrar
for the necessary action.
In accordance with the usual practice in the case
of an appeal from the Registrar of Trade Marks as
stated by Thorson P. in Wolfville Holland Bakery
Ltd. v. The Registrar of Trade Marks ((1963-64)
25 Fox Pat. C. 169) the appellant is not entitled to
any costs although successful. The converse is
equally so.
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.