T-899-76
T-900-76
The Oshawa Group Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.—Toronto, January
17; Ottawa, February 1, 1980.
Trade marks — Appeals from decisions of Registrar of
Trade Marks refusing to register proposed marks HYPER - FOR -
MIDABLE and HYPER - VALUE as trade marks for use in associa
tion with services connected with operation of supermarkets —
Whether terms are clearly descriptive or deceptively misde-
scriptive of character or quality of services offered by appel
lant — Appeals dismissed — Trade Marks Act, R.S.C. 1970,
c. T-10, s. 12(1)(b).
Appeals from decisions of Registrar of Trade Marks refusing
to register as trade marks the words HYPER-FORMIDABLE and
HYPER-VALUE for use in association with services connected
with the operation of supermarkets. The Registrar held that
both terms were clearly descriptive or deceptively misdescrip-
tive of the character or quality of the services offered by the
appellant contrary to paragraph 12(1)(b) of the Trade Marks
Act. Appellant operates a large supermarket, making available
to the public goods, wares and merchandise, including food.
The issue is whether the Registrar erred in finding that the
marks were not registrable by reason of paragraph 12(1)(b) of
the Act.
Held, the appeals are dismissed. The decision that a trade
mark is clearly descriptive is one of immediate impression and
must not be based upon research into the meaning of words; it
is not the strict etymological meaning of the component words
that make the combined word but the resultant meaning of that
combination. In a combination of two common English or
French words, and particularly in this instance where one is an
acknowledged prefix, both such words contribute to what the
composite word means. In ascertaining the impression that the
trade marks HYPER-FORMIDABLE and HYPER-VALUE convey to
determine if such marks are clearly descriptive, it is the impres
sion of the probable user of the appellant's services which is to
be ascertained. To ascertain that impression one must picture
the reaction of the average reasonable man to the trade marks
in question. "Hyper-value" is in all the surrounding circum
stances intended to convey to the prospective purchaser that
exceptional value might be expected and that is the meaning
that the purchaser attributes to the word. Similarly "hyper-for
midable" in the French language is intended to convey the
meaning of something more fantastic, sensational and extraor
dinary than if the word were merely "formidable" without the
prefix "hyper".
Bonus Foods Ltd. v. Essex Packers Ltd. [1965] 1 Ex.C.R.
735, applied. J. K. Smit & Sons of Canada Ltd. v. The
Registrar of Trade Marks [1946] Ex.C.R. 569, applied.
Wool Bureau of Canada Ltd. v. Registrar of Trade Marks
(1979) 40 C.P.R. (2d) 25, applied. Staffordshire Potteries
Ltd. v. Registrar of Trade Marks (1976) 26 C.P.R. (2d)
134, applied. Home Juice Co. v. Orange Maison Liée
(1971) 1 C.P.R. (2d) 14, applied. The Registrar of Trade
Marks v. G. A. Hardie & Co. Ltd. [1949] S.C.R. 483,
referred to.
APPEAL.
COUNSEL:
I. Goldsmith, Q.C. for appellant.
E. Bowie, Q.C. and D. Olsen for respondent.
SOLICITORS:
Immanuel Goldsmith, Q.C., Toronto, for
appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: As indicated in the above com
posite styles of cause there are two appeals from
two decisions of the Registrar of Trade Marks
refusing to register as trade marks the words
HYPER-FORMIDABLE and HYPER-VALUE as applied
for by the appellant for use in association with
services described as:
services connected with, inherent in, or incidental to the opera
tion of supermarkets and department stores having food and
other departments dealing in various wares, and counselling
and assisting others in all phases of like operation of supermar
kets and department stores ...
on the ground neither HYPER-FORMIDABLE nor
HYPER-VALUE is registrable in that both are
"clearly descriptive or deceptively misdescriptive
in the English or French languages of the charac
ter or quality of the ... services in association with
which" the marks are used.
Thus the issue in both appeals is the same, that
is to say, whether the Registrar was in error in
concluding that the marks in question were "clear-
ly descriptive or deceptively misdescriptive" of the
character or quality of the services offered by the
appellant contrary to paragraph 12(1)(b) of the
Trade Marks Act, R.S.C. 1970, c. T-10 and the
submissions made by counsel on behalf of the
parties were equally applicable to both appeals for
which reason they were heard together as one.
The marks in question were applied for on April
17, 1974 as proposed trade marks. Being proposed
trade marks it follows that the trade marks could
not have become distinctive at the time of the
applications for their registration by reason of use
because from the very nature of a proposed mark
there could have been no use.
Between the date of applications for registration
and the subsequent appeals such marks may have
become distinctive by reason of extensive use in
advertising in newspapers and flyers in the Mon-
treal, Quebec area, particularly Laval where the
appellant operates a large supermarket or depart
ment store. That is the services the appellant
provides to the public, that is to say making avail
able to the public goods, wares and merchandise
including food. There was no evidence that I recall
having been brought to my attention to the effect
that the appellant offered the services of counsel
ling and assisting others in all phases of the opera
tion of supermarkets and department stores which
was also a proposed use of the trade marks applied
for.
However even if the trade marks may have
become distinctive subsequent to the date of the
applications therefor the issue before me remains
the same and that is whether the marks, HYPER-
FORMIDABLE and HYPER-VALUE were not regis-
trable at that date by reason of the provisions of
paragraph 12(1) (b).
As indicated the appellant has made very sub
stantial expenditures on advertising in all instances
featuring the prefix HYPER attached to other
words and not only the words FORMIDABLE and
VALUE but also such expressions as HYPER -
AUBAINE (the French version of the English lan
guage trade mark HYPER-VALUE), HYPER-TERRIF
IC (which I take to be the English version of the
trade mark HYPER-FORMIDABLE although FORMI
DABLE is common to both languages but the pri
mary meanings in each language differ), HYPER-
SAVINGS, HYPER-EPARGNES, HYPER-SPECTACU
LAR and HYPER -SPECTACULAIRE.
The appellant is the registered owner of the
trade mark HYPER -MARCHE which if printed in
lower case letters would have an accent acute over
the concluding letter "e".
I do not construe the introduction of this evi
dence as being directed to establishing that the
trade marks HYPER-FORMIDABLE and HYPER-VAL
UE as having become subsequently distinctive.
That is not the issue. Rather this evidence is
susceptible of being considered to have been intro
duced as demonstrating the practice of the appel
lant featuring the prefix HYPER with many other
appended words. The appellant uses a series of
marks to denote the various services it offers to its
customers each of which utilizes the prefix HYPER
with other words such as "savings" and "value"
having substantially the same connotation and
with others having somewhat different connota
tions.
This most certainly would be a material con
sideration to the confusion between the marks
inter se in which event section 15 of the Trade
Marks Act could be invoked.
But again this does not detract from the fact
that the sole issue still remains whether the two
trade marks HYPER-FORMIDABLE and HYPER-VAL
UE sought to be registered are precluded from
registration by reason of their being clearly
descriptive or deceptively misdescriptive within the
meaning of the provisions of paragraph 12(1)(b).
Counsel for the appellant submitted that the
Registrar erred in concluding that the marks
HYPER-FORMIDABLE and HYPER-VALUE were
clearly descriptive or deceptively misdescriptive of
the quality of the services with which they were
associated in that:
(1) he adopted the wrong approach in dissecting the marks and
carefully analysing the component parts rather than consider
ing the marks as wholes;
(2) he wrongly used the dictionary meanings of the separate
words which had been combined to get the resultant meaning of
the combination;
(3) he was in error in concluding that the marks are laudatory,
and
(4) he erred in concluding that the marks were clearly descrip
tive or deceptively misdescriptive of the character and quality
of the services with which they are associated.
I accept without question the submission of
counsel for the appellant that the decision that a
trade mark is clearly descriptive is one of first
impression from which it follows that it is not the
proper approach to critically analyze the words of
the mark but rather to ascertain the immediate
impression created by the mark in association with
the services proffered.
I also accept the premise of counsel for the
respondent that a mark must first be found to be
descriptive before it can be found to be misdescrip-
tive (see Bonus Foods Ltd. v. Essex Packers Ltd.
[1965] 1 Ex.C.R. 735 at page 749).
I also accept the submission by counsel for the
appellant that the decision must be one of first
impression and must not be based on research into
the meaning of words.
In this respect however I think it is philological
research that must be contemplated. I share the
view expressed by Baron Pollock long ago to the
effect that grammatical and philological disputes,
and indeed all that belongs to the history of lan
guage is most obscure and leads to many doubts
and conflicting contentions but is as fascinating as
the study of law.
With respect to trade marks such as HYPER-
VALUE and HYPER-FORMIDABLE which are coined
in the sense that the well-known French and Eng-
lish prefix "HYPER" is combined with the well-
known English word "VALUE" and the word "FOR-
MIDABLE" which is a well-known word in both the
French and English languages, the resultant com
binations do not appear in any dictionary but
because those combinations do not appear it
cannot be said that they are devoid of meaning.
The components of the coined marks do have
dictionary status and for that reason I do not think
that resort might not be had to dictionaries for
instruction as to the meaning of the components
and, if possible, to ascertain therefrom the mean
ings of the resultant words. This is particularly so
when the initial word is a prefix, as HYPER is, used
with prepositional force or as an adverb or
adjective.
The Registrar of Trade Marks v. G. A. Hardie
& Co. Ltd. ([1949] S.C.R. 483), J. K. Smit &
Sons of Canada Ltd. v. The Registrar of Trade
Marks ([1946] Ex.C.R. 569) and Wool Bureau of
Canada Ltd. v. Registrar of Trade Marks ((1979)
40 C.P.R. (2d) 25) were instances where the prefix
"super" was combined with the words "weave",
"set" and "wash" respectively to produce the
words "Super-weave", "Superset" and "Super-
wash", none of which is defined in any standard
dictionary yet in each instance reference was made
to dictionaries to ascertain the meanings of the
components and in each instance the trade marks
were held to be clearly descriptive of the character
or quality of the wares in association with which
the marks were used; the last "Superwash" under
the present Act and the other two under the prior
legislation. To be held descriptive of the quality of
wares the combined words resulting in the mark
must also have had a combined meaning readily
discernible from the combination and that can best
be determined from the meanings of the
components.
In the "Super-weave" case in addition to the
compound word being found to be descriptive, it
was found to be a laudatory epithet and as such it
could not become adapted to distinguish within the
prior legislation as it read.
It was submitted by counsel for the appellant
that the Registrar was in error in concluding that
the marks were "laudatory".
As I construe the Registrar's use of that word in
the context it was used it was as a prelude to his
ultimate conclusion that the marks were descrip
tive. The reasoning of the Registrar was that if the
marks were laudatory as being expressive of praise
of the services offered by the appellant it logically
follows that the marks are descriptive.
As I construe the submission on behalf of the
appellant it was that, predicated upon the domi
nant dictionary meaning of "hyper" as being
"excessive", the trade marks prefixed by "hyper"
are not "laudatory" but are rather pejorative. An
example to illustrate his submission would be the
word "hypercriticism" which is "excessive, unduly
severe and minute criticism" and a person who
indulges in hypercriticism is an overly critical
person and is an ogre to the subjects of his criti
cism. Sight should not be lost of the fact however
that the deprecatory sense of the prefix in this
example is accentuated by the word the prefix
modifies.
The etymological meaning of a word is not
necessarily the meaning of that word in the popu
lar context in which and how it is being used. In
such circumstances it is a well-known rule of
courts of law that instruction may be obtained
from dictionaries or books on the subject as to the
meaning of words in their ordinary or popular
sense.
In the present instance this was done.
The affidavit evidence includes references to:
(1) The Shorter Oxford English Dictionary in which "hyper"
is defined as meaning, "over, beyond, over much, above meas
ure, in formations with prepositional force of `over, beyond, or
above' (what is denoted by the second element), formations
with adverbial sense of 'over much, to excess, exceedingly'."
(2) Webster's New International Dictionary in which "hyper"
was defined as "a prefix signifying over, above;—also above
measure, abnormally great, excessive.
(3) Grand Larousse de la longue française defining "hyper" as
[TRANSLATION] "used as a prefix, in compounds, where it
indicates the highest degree, an excess".
(4) Petit Robert defining "hyper" as meaning [TRANSLATION]
"which expresses exaggeration, an excess, the highest degree.
See Super-".
(5) Dictionnaire des mots nouveaux, by Gilbert, which defines
"hyper" as follows: [TRANSLATION] "first element of com
pounds (adjectives or nouns), where it expresses either a very
high degree or an excess. Sometimes hyphenated".
The evidence also includes a reference to an
extract from The Categories arid Types of Pres-
ent-Day English Word-Formation, A Synchron-
ic-Diachronic Approach, by Hans Marchand pub
lished in 1960, as to the use of the word "hyper" in
connection with the subject matter of the title to
this work.
I do not reproduce the extract in its entirety but
only pertinent portions.
It is stated that:
hyper- is formed with sbs and adjs and conveys the meaning
"over, too much, extra-ordinary(-ily), to excess".
English hyper- words occur as early as LME but are esp.
frequent in the 17th c., the majority being a nglicizations of
OGr terms of rhetoric, prosody and the like. From about 1600
on, hyper- can be considered an English formative with learned
words, chiefly adjs.
The author gives 17th century examples such as
"hyper-angelical", "hyper-physical" and com
ments that:
The sense is not necessarily the modern one of implying excess,
hyper- often merely means "that which is beyond—"
as in the examples given.
The author goes on to state:
There seem to be no coinages in the 18th c., but the 19th c. has
many. In general words the nuance implied is always that of
"too much, unduly excessive" or the like. The majority of new
formations are adjs, such as hyper-accurate, -active, -acute,
-fastidious, -idealistic, -moral" amongst many others. "Sbs
are chiefly deadjectival derivatives: hyper "-activity, -acute
ness" etc. "Occasionally we find vbs such as hyper-emphasize,
-realize, -vitalize."
In an affidavit filed by the appellant the affiant
carefully calculated the categories into which
"hyper" fell in four dictionaries consulted, two
English and two French, from which it followed
that the medical, scientific and mathematical
categories predominate but in varying degrees
dependent on the dictionary.
This is not surprising. "Hyper" was used in
Greek and Latin medical phraseology. Many Eng-
lish words are used in the neo-Latin form which
was the basis of coinage. All these coined words
denote some excessive, abnormal bodily condition.
Examples are numerous.
In Old Greek "hyper" was used in various
shades of meaning to denote position (over, above).
In English the pattern occurs only with terms of
ancient Greek and medieval music and with math
ematical terms.
In scientific phraseology it is used to denote the
highest in a series.
For this analysis I am indebted to Hans Mar-
chand's work.
There is no need to make an exhaustive search
of these works to ascertain the popular meaning of
the word "value". The well-known and wide-
spread meaning is a fair return in goods, services
and money.
In English "formidable" is that which gives
cause for fear or alarm and inspires apprehension
of defeat or failure.
This word was adopted into the English lan
guage from the French where it was an adoption
from Latin.
Accordingly at the time of its adoption from
French into English it is not surprising that at that
time the meaning in French was the same as it is
now in English.
While that may remain a classical meaning in
French it is no longer the primary meaning. "For-
midable" has come to mean in common usage,
[TRANSLATION] "Very beautiful, very remark
able, which gives rise to admiration". It is synony
mous with [TRANSLATION] "fantastic, ... admi
rable, ... marvellous, sensational, extraordinary."
(See Grand Larousse.)
Adverting to the often repeated admonition that
the decision that a trade mark is clearly descriptive
is one of immediate impression and must not be
based upon research into the meaning of words, it
is not the strict etymological meaning of the com
ponent words that make the combined word but
the resultant meaning of that combination.
In a combination of two common English or
French words, and particularly in this instance
where one is an acknowledged prefix, both such
words contribute to what the composite word
means (see Thurlow A.C.J., as he then was, in
Staffordshire Potteries Ltd. v. Registrar of Trade
Marks (1976) 26 C.P.R. (2d) 134 at page 135).
In ascertaining the impression that the trade
marks HYPER-FORMIDABLE and HYPER-VALUE
convey to determine if such marks are clearly
descriptive it is the impression of the probable user
of the appellant's services which is to be ascer
tained. As I said, in passing, during the hearing of
these appeals this is a "jury finding". To ascertain
that impression one must picture to oneself the
reaction of the average reasonable man to the
trade marks here in question. It is the ultimate
user who is to be considered and not a person
possessed of expert qualifications or specialized
knowledge.
The affidavit evidence established that the
appellant operates a large store at Laval, Quebec
and offers a variety of wares for sale in addition to
food and groceries.
It embarked upon a very aggressive advertising
campaign at a cost in excess of $800,000 for the
1976 year to attract to its premises a maximum of
customers. It was successful in doing so.
This was done by full page spreads in French
and English newspapers circulated in Montreal
and its Laval environs and by means of flyers
distributed to householders.
These advertisements feature the retail outlet
described as a HYPER -MARCHE and a HYPER-MAR
KET. The appellant applied for and was granted
registration of the trade marks HYPER -MARCHE
and HYPER-MARKET in 1973. The validity of these
marks is not here in issue but is acknowledged in
an affidavit sworn by the general manager of the
store to be "something which is over, above, exces
sive or more than a market."
The affiant then proceeds to swear that "practi-
cally, however, the trade marks HYPER -MARCHE
and HYPER-MARKET are meant to suggest and are
believed to suggest in a fanciful manner an opera
tion which is more than merely a supermarket."
Oddly the word "supermarket" is not in The
Oxford English Dictionary nor the supplements
thereto but it does appear in the Living Webster
and is defined as:
a large retail market selling food and other household items
usually operating on a self-serve, cash and carry basis.
The word "hyper-market" is not in any standard
English dictionary I have consulted but the word
"hypermarché" appears in Grand Larousse and is
defined as follows:
[TRANSLATION] hypermarché ... m. n. (from hyper- and
marché; Dec. 16, 1968, l'Express). Store operating on a self-
serve basis and having a sales floor area greater than 2 500 m2.
In Home Juice Co. v. Orange Maison Ltée
((1971) 1 C.P.R. (2d) 14) it was contended that
while the words "Orange Maison" had a definite
meaning in two dictionaries published in France
that current meaning in France was not the cur
rent meaning in Canada at the date of registration
and accordingly no account should be taken of a
recent meaning in France only.
Pigeon J. speaking for the Court rejected this
contention saying at page 16:
This contention would have serious consequences if it was
accepted. One result would be that a shrewd trader could
monopolize a new French expression by registering it as a trade
mark as soon as it started being used in France or in another
French-speaking country and before it could be shown to have
begun being used in Canada.
The registered marks HYPER -MARCHE and
HYPER-MARKET are not in issue before me and I
make mention of this to illustrate that the word
formed by the combination of the words "hyper"
and "marché" had become part of the language of
France as early as 1968 and as such had become
clearly descriptive and does not "suggest in a
fanciful manner an operation which is more than
merely a supermarket." The idea conjured up to be
fanciful must be remote. The idea conjured up
here is immediate, not remote. The word has a
recognized meaning as defined in a standard and
generally accepted French dictionary and cannot
be only suggestive.
Returning to the advertising campaign, in addi
tion to extolling the advantages of shopping at the
HYPER - MARCHE or HYPER-MARKET, the word
HYPER was emphasized as a prefix to other suf
fixes. Examples are: "Hyper-school sale", "Hyper-
mode sale", "Hyper -aubaines", "Hyper-formi
dable". On the appellant's widely distributed con
tainers and packages the words "Hyper-special",
"Hyper -épargnes", "Hyper -spectaculaire", "Hy-
per-saving", "Hyper-value", "Hyper-formidable"
and "Hyper-terrific" are prominently displayed.
I fail to appreciate that this advertising by the
appellant could possibly be taken to be pejorative
but rather it is praising the services offered by the
appellant as being something extraordinary. That,
in my opinion, was the meaning conveyed by the
words used and that was how the words were
understood by the purchasers to whom the trade
marks were directed.
With respect to the trade marks in issue,
HYPER-FORMIDABLE and HYPER-VALUE, the latter
is, in my view, in all the surrounding circum
stances intended to convey to the prospective pur
chaser that exceptional value might be expected
and that, in my view, is the meaning that the
purchaser attributes to the word. He expects to
receive value above the normal.
Similarly the trade mark HYPER-FORMIDABLE
in the French language is intended to convey the
meaning of something more fantastic, sensational
and extraordinary than if the word were merely
"formidable" without the prefix "hyper".
Accordingly for the reasons expressed there was
no manifest incongruity in the Registrar attribu
ting the meanings that he did to the proposed
trade marks HYPER-FORMIDABLE and HYPER-VAL
UE and therefrom concluding that the marks were
not registrable as being clearly descriptive or
deceptively misdescriptive in the French and Eng-
lish languages respectively of the quality of the
services with which they were proposed to be used
within the meaning of paragraph 12(1)(b) of the
Act.
The appeals are therefore dismissed. In accord
ance with the usual practice where an appeal is
from a decision of the Registrar, there will be no
costs for or against either party.
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.