T-4922-78
Elder's Beverages (1975) Ltd. (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.—Ottawa, April 18
and 23, 1979.
Trade marks — Appellant proposed "ELDER'S" as trade
mark in association with non-alcoholic drink — Registration
of proposed mark refused by Registrar on ground that "ELD -
ER'S" is primarily merely the surname of an individual
"ELDER" both a surname and a word with dictionary meanings
— Appeal from Registrar's decision on ground of error in fact
and law — Trade Marks Act, R.S.C. 1970, c. T-10, ss.
12(1)(a), 36(1)(6).
Appellant appeals from the decision of the Registrar of
Trade Marks refusing, under section 36(1)(b) of the Trade
Marks Act, appellant's application for the registration of the
word "ELDER'S" as a trade mark in association with non
alcoholic beverages. The word had been used by appellant and
its predecessor in title since 1921. The Registrar refused regis
tration on the ground that the word is primarily the surname of
an individual and not registrable by reason of section 12(1)(a)
of the Trade Marks Act. The ground of the appeal is that the
Registrar erred in fact and law in concluding that the word
"ELDER'S" is primarily merely the surname of an individual
within the meaning of section 12(1)(a).
Held, the appeal is allowed. "ELDER" is both a surname and
a word with several dictionary meanings; it is not "merely" a
word that is the surname of an individual. The two characters
of the word "ELDER" are each of substantial significance and
therefore it cannot be said that the word is "primarily" a
surname. A person of ordinary intelligence and ordinary educa
tion in the English language would not assign to the word
"ELDER" a more dominant characteristic as a surname or as a
dictionary word.
Registrar of Trade Marks v. Coles Book Stores Ltd.
[1974] S.C.R. 438, considered. Standard Oil Co. v. Regis
trar of Trade Marks [1968] 2 Ex.C.R. 523, considered.
APPEAL.
COUNSEL:
John S. Macera and Andrew K. Jarzyna for
appellant.
David T. Sgayias for respondent.
SOLICITORS:
Macera & Jarzyna, 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 applied to the
Registrar of Trade Marks for registration of the
word "ELDER'S" as a trade mark in association
with non-alcoholic beverages the word having been
so used by the appellant and its predecessor in title
since 1921.
The Registrar refused registration of the trade
mark applied for on the ground that the word is
primarily merely the surname of an individual and
as such is not registrable by reason of section
12(1)(a) of the Trade Marks Act, R.S.C. 1970, c.
T-10 which reads:
12. (1) Subject to section 13, a trade mark is registrable if it
is not
(a) a word that is primarily merely the name or the surname
of an individual who is living or has died within the preceding
thirty years;
Having so concluded it became obligatory upon
the Registrar to refuse the application under sec
tion 36(1)(b).
It is from that decision by the Registrar that the
present appeal is made.
The ground of appeal is that the Registrar erred
in fact and law in concluding that the word "ELD-
ER'S" is primarily merely the surname of an
individual within the meaning of section 12(1)(a).
It was not contended that the word "ELDER'S" had
not lost its primary significance by virtue of long
use and so acquired a distinctive or secondary
meaning so as to denote the wares of the appellant.
As I appreciate the basis of the prohibition of
the mere surname of an individual as a trade mark
it is that, though a surname may serve to distin
guish the wares of all persons taken collectively
bearing that surname from the wares of others
bearing different surnames, it does not distinguish
the wares of an applicant from the wares of other
persons bearing the same surname.
Mr. Justice Judson pointed out in Registrar of
Trade Marks v. Coles Book Stores Ltd. [1974]
S.C.R. 438 that prior to the enactment of section
12(1)(a) of the Trade Marks Act in 1953 the
words "primarily merely" were not in the section
and were deliberately introduced to qualify the
words "the name or the surname" to avoid the
rigid rules which had restricted registration under
previous legislation and that the words "primarily
merely" were copied from the United States
Trade-Marks Act of 1946.
This was done to avoid the existence of a dic
tionary word resulting in words such as "wall",
"castle", "butcher", "moon", "green", "birch",
"swan", "drake", "porter", "gosling" and "spar-
row" (see Swallow Raincoats Ld.'s Application
(1947) 64 R.P.C. 92) which are all common sur
names, as well as hundreds of others which come
to mind, being registered as trade marks without
evidence of their having acquired distinctiveness
whereas persons with surnames which are
extremely rare and do not appear in dictionaries
would be denied registration.
Judson J. said that inquiry into the registrability
of words must begin with the new words, "primari-
ly merely". He added that they are common Eng-
lish words and he posed the question to be
answered "Is the primary (chief) (principal) (first
in importance) meaning of the word merely (only)
(nothing more than) a surname?"
In Standard Oil Co. v. Registrar of Trade
Marks [1968] 2 Ex.C.R. 523 Jackett P. (as he
then was) considered the significance of the words
"primarily merely" as they qualified the words
"the name or the surname of an individual who is
living" as they appear in section 12(1)(a) of the
Trade Marks Act.
The trade mark applied for was "FIOR", an
acronym formed from the initial letters of the
other words "fluid iron ore reduction". It has no
dictionary meaning and the word appeared in two
city directories in Canada as a surname.
Accordingly Jackett P. was satisfied on the evi
dence before him that " `FIOR' is 'a word that is
... the surname of an individual who is living' "
and accordingly the further question to be decided
was whether "FIOR" is "primarily merely" such a
word.
So far as the appellant was concerned "FIOR"
was a word invented by it for use as its trade mark
from which it followed that "FIOR" was not
"merely" (or "only" or "nothing more than" as
put by Judson J. in the Coles case (supra)) the
surname of a living person because it also had
existence as a word invented by the appellant.
The next question considered by Jackett P. was
whether "FIOR" is "primarily" the surname of a
living person. He phrased the question thus:
is the chief, main or principal character of "FIOR" that of a
surname or is it principally or equally a word invented to be
used as a trade mark?
He proposed the test to be:
what, in the opinion of the respondent or the Court, as the case
may be, would be the response of the general public of Canada
to the word.
Applying that test he said:
My conclusion is that a person in Canada of ordinary intelli
gence and of ordinary education in English or French would be
just as likely, if not more likely, to respond to the word by
thinking of it as a brand or mark of some business as to respond
to it by thinking of some family of people (that is, by thinking
of it as being the surname of one or more individuals).
He crystallized the principle he applied in a
footnote reading:
If the two characters (surname and invented word) are of equal
importance, it cannot be said that it is "primarily merely" a
surname.
If this approach were not adopted, and this was
the approach adopted by Kekewich J. in In re The
Magnolia Metal Company's Trade Marks
(1897) 14 R.P.C. 265, where he dealt with a
similar problem concerning geographic names at
pages 269-270, then all that need be done to
effectively bar the registration of a trade mark
would be to assiduously and successfully search
the world for a person bearing the surname the
same as the mark applied for.
Jackett P. also pointed out that for trade mark
purposes there are three classes of words, viz.,
dictionary words, names and invented words.
In the case before him the conflict was between
a surname and an invented word.
In Registrar of Trade Marks v. Coles Book
Stores Ltd., the conflict was between a surname
and a dictionary word. The evidence clearly estab
lished that "coLEs" is a surname. However a
resort to standard dictionaries disclosed that the
word "cole", the plural of which is "coles" appears
and means a species of cabbage.
Similarly an assiduous search of standard dictio
naries might well disclose that a surname is also a
dictionary word, as most surnames are, and so
stultify the prohibition against surnames were it
not for the adoption of the approach in the Mag
nolia case and the significance to be given to the
words "primarily merely" in section 12(1)(a).
Mr. Justice Judson, speaking for the Supreme
Court of Canada, pointed out that the dictionary
meanings of the word "cole" were rare and largely
obsolete.
He did not agree with the conclusion of the
Trial Judge that the principal character of the
word "coLEs" is "equally that of a surname and
of a dictionary word in the English language".
He applied the test propounded by Jackett P., in
the Standard Oil case by saying [at p. 440]:
My only possible conclusion in this case is that a person in
Canada of ordinary intelligence and of ordinary education in
English or French would immediately respond to the trade
mark "Coles" by thinking of it as a surname and would not be
likely to know that "Coles" has a dictionary meaning.
The facts of the case before me fall between the
two divergent poles which the facts in the Stand
ard Oil case and the Coles case presented.
Here it was established by the respondent, as he
is entitled to so establish, that a search through the
telephone directories of 21 major cities in Canada
listed 354 persons bearing the surname "ELDER".
The word "ELDER" is therefore a surname.
The appellant established that the word "ELD-
ER" has dictionary meanings, three of which
predominate:
(1) a low tree or shrub;
(2)a) a parent, a forefather, a predecessor, one who is older, a
senior (usually in the plural);
b) a member of a senate, governing body or class consisting
of men of venerable age (now chiefly historical), and
(3) in the Presbyterian churches, one of a class of lay
officers who, with the minister, compose the Session,
and manage the church affairs.
I do not think that the term "elder" is restricted
to the Presbyterian church but is popularly adopt
ed by churches of other denominations to describe
lay officers.
This being so the word "ELDER" is not "merely"
a word that is a surname of an individual.
The question therefore narrows to whether it is
"primarily" such a word.
In my opinion the two characters of the word
"ELDER", one as a surname and the other as a
dictionary word, are each of substantial signifi
cance and therefore it cannot be said that the word
is "primarily" a surname.
Accordingly my only possible conclusion in this
case is that a person of ordinary intelligence and
ordinary education in the English language would
not assign to the word "ELDER" a more dominant
characteristic either as a surname or as a diction
ary word.
For the foregoing reasons the appeal is allowed
and the matter is referred back to the Registrar
for appropriate action in accordance with these
reasons.
The appellant properly does not ask for costs
against the Registrar. Bearing in mind the nature
of the Registrar's office and duties I do not think
that an award of costs against him to be appropri
ate nor in accordance with the practice as I con
ceive it to be. Therefore each party shall bear its
own costs.
Counsel for the appellant also contended that
the word "ELDER'S" expressed as it is in the
possessive case is not a surname.
In modern English "possessive case" is a name
for the genitive which is a grammatical form to
denote that the person or thing signified by the
word is related to another as the source, possessor
or the like.
The word "ELDER" in each of its characters, as
a surname or a dictionary word, can be expressed
in the genitive merely by adding at the end of
either, used as a noun, an apostrophe and the letter
« s „
In In re the Application of R. J. Lea Ld. to
Register a Trade Mark (1913) 30 R.P.C. 216
Buckley L.J. categorically stated that a word sus
ceptible of being a surname expressed in the geni
tive is not a surname.
He said at page 223:
A second reason is that the word which the Applicants seek to
register is not a surname. The word is "Boardman's." That is a
word which obviously is used elliptically to express some state
ment of a fact relating to Boardman. It may, for instance, be
equivalent to "manufactured by Boardman" or "sold by
Boardman," or "smoked by Boardman," or to "Boardman's
Tobacco," or "Boardman's Mixture." It is some form of ellipti
cal sentence in which a surname occurs.
Counsel for the respondent invited me to con
clude that Buckley L.J. was wrong in so stating,
the case not being distinguishable from the present
case.
Because of the conclusion I have reached for the
reasons expressed, it is not necessary for me to
decide this issue and I do not do so, but it does
seem incongruous to me that the prohibition
against the registration of a word that is primarily
merely a surname as a trade mark can be circum
vented simply by adding an apostrophe "s" at its
end.
Furthermore the use of the possessive case of a
surname emphasizes and is consistent with the
purpose of a trade mark which is to identify the
source of the wares associated with the trade mark
as being a particular trader provided always that
the prohibition of a surname as a trade mark based
on lack of distinctiveness is overcome.
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.