T-2388-79
The Molson Companies Limited (Appellant)
v.
Carling O'Keefe Breweries of Canada Limited—
Les Brasseries Carling O'Keefe du Canada
Limitée (Respondent)
and
Registrar of Trade Marks
Trial Division, Cattanach J.—Ottawa, March 18
and April 15, 1981.
Trade marks — Appeal from decision of Chairman of the
Opposition Board rejecting appellant's opposition to respond
ent's application to register trade mark — Chairman found
the respondent's mark "TAVERN" was a proper trade mark in
association with alcoholic brewery beverages — Whether
Chairman erred in finding that the trade mark was not clearly
descriptive of the character or quality of the wares — Appeal
dismissed — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 12.
This is an appeal from the decision of the Chairman of the
Opposition Board rejecting appellant's opposition to respond
ent's application to register the word "TAVERN" as a trade
mark in association with brewed alcoholic beverages. The
Chairman found that the trade mark was not clearly descriptive
or deceptively misdescriptive of the character or quality of the
wares. The question is whether or not the word is clearly
descriptive of the character or quality of wares within the
meaning of paragraph 12(1)(b) of the Trade Marks Act.
Held, the appeal is dismissed. The proposed mark "TAVERN"
for use in association with alcoholic brewery beverages is not
clearly descriptive of those wares and the converse follows that
the trade mark is not deceptively misdescriptive of those wares.
For a word to be clearly descriptive, it must be material to the
composition of the product and descriptive of an intrinsic
character or quality of that product. A tavern is a place where
beer and other alcoholic brewery beverages are sold. Being the
name of that place of business the use of the word "TAVERN" in
association with wares there sold does not describe a feature or
;essential peculiarity of those wares material'or intrinsic to their
composition. The use of the adverb "clearly" must not be
overlooked. To be descriptive a trade mark must be self-evi
dently and plainly descriptive of the character or quality of the
wares themselves and not merely of some collateral feature.
The allusion in the use of "TAVERN" has only the remotest
possibility of a suggestion of the quality of beer.
In the Matter of an Application by Joseph Crosfield &
Sons Ld. to Register a Trade Mark (1909) 26 R.P.C. 561,
referred to. Registrar of Trade Marks v. G. A. Hardie &
Co. Ltd. [1949] S.C.R. 483, referred to. Registrar of
Trade Marks v. Provenzano (1979) 40 C.P.R. (2d) 288,
referred to. Eastman Photographic Materials Co., Ltd. v.
The Comptroller-General of Patents, Designs, and Trade
Marks [1898] A.C. 571, referred to. Fine Foods of
Canada, Ltd. v. Metcalfe Foods, Ltd. [1942] Ex.C.R. 22,
referred to. Great Lakes Hotels Ltd. v. The Noshery Ltd.
[1968] 2 Ex.C.R. 622, referred to. Deputy Attorney Gen
eral of Canada v. Jantzen of Canada Ltd. [1965] 1 Ex.
C.R. 227, referred to. Kellogg Co. of Canada Ltd. v.
Registrar of Trade Marks [1940] Ex.C.R. 163, referred
to. Standard Ideal Co. v. Standard Sanitary Manufactur
ing Co. [1911] A.C. 78, referred to. Bonus Foods Ltd. v.
Essex Packers Ltd. [1965] 1 Ex.C.R. 735, referred to. E.
& J. Gallo Winery v. Andres Wines Ltd. [1976] 2 F.C. 3,
applied. Provenzano v. Registrar of Trade Marks (1978)
37 C.P.R. (2d) 189, applied. Thermogene Co. Ltd. v. La
Compagnie Chimique de Produits de France Liée [1926]
Ex.C.R. 114, applied.
APPEAL.
COUNSEL:
John S. Macera and Andrew K. Jarzyna for
appellant.
Toni Polson Ashton for respondent.
SOLICITORS:
Macera & Jarzyna, Ottawa, for appellant.
Donald F. Sim, Q.C., Toronto, for respond
ent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an appeal from a deci
sion of the Chairman of the Opposition Board
dated March 19, 1979 given by him on behalf of
the Registrar of Trade Marks under subsection
37(9) of the Trade Marks Act, R.S.C. 1970, c.
T-10, as amended, in which he rejected the opposi
tion by the appellant to the respondent's applica
tion to register the word "TAVERN" for use as a
proposed trade mark in association with alcoholic
brewery beverages, to wit, ale, lager and the like.
The appellant opposed the proposed trade mark
so applied for before the Registrar on the grounds
that:
(1) the trade mark is not registrable in that it is "clearly
descriptive or deceptively misdescriptive ... of the character or
quality of the wares ... in association with which it is ...
proposed to be used ..." within the meaning of the above
quoted words [with omissions of words not relied upon] in
paragraph 12(1)(b) of the Trade Marks Act, and
(2) the trade mark is not distinctive, in that the word "TAV-
ERN" as applied to brewed alcoholic beverages should be
available to all traders in those wares for use in association with
their individual wares and that the word "TAVERN" is, in fact,
common to the trade.
These contentions by the appellant before the
Chairman of the Opposition Board were rejected
by him and the opposition proceedings were
resolved in favour of the applicant, the respondent
herein.
The contentions before me on behalf of the
appellant are that:
(1) the Chairman erred in finding that the proposed trade mark
applied for was not "clearly descriptive of the character or
quality of the wares" and so not registrable as contrary to
paragraph 12(1)(b) of the Act, and
(2) the Chairman erred in not deciding the issue raised by the
appellant as opponent that it is not distinctive in that it is of
such a nature that it should be open to the trade and that the
trade mark applied for is common to the trade.
In my view, while the Chairman was not specifi
cally emphatic in dealing with the question of the
"distinctiveness" of the proposed trade mark, he
did not ignore that contention advanced by the
appellant.
In section 2 of the Trade Marks Act "distinc-
tive" in relation to a trade mark is defined as
meaning a trade mark:
2....
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;
Under this definition, in the case of a trade
mark in use, the definition is fulfilled if the trade
mark actually distinguishes the wares of one trader
from those of another. This is a question of fact
and when that has been established a trade mark
that is prima facie unregistrable as a personal
name or descriptive of the character, quality or
geographical origin of the wares becomes regis-
trable unless otherwise prohibited in the Act as for
example under section 9 of the Act. The doctrine
in In the Matter of an Application by Joseph
Crosfield & Sons Ld. to Register a Trade Mark
(1909) 26 R.P.C. 561, the "Perfection" case, and
The Registrar of Trade Marks v. G. A. Hardie &
Co. Ltd. [1949] S.C.R. 483, the "Super-Weave"
case, amongst a host of others had application
under the common law of England and was
imported into Canada by paragraph 2(m) of The
Unfair Competition Act, 1932, S.C. 1932, c. 38,
(replaced by the Trade Marks Act, S.C. 1952-53,
c. 49) has now disappeared from Canadian law so
far as registrability of trade marks is concerned.
Different considerations apply to a proposed
trade mark, as is the case of the trade mark
"TAVERN" here in issue. Because it has not been
used it cannot have become distinctive in the sense
that it actually distinguishes the wares of the
respondent. In the case of opposition thereto a
proposed trade mark must, therefore, be one that
"is adapted to so distinguish".
Accordingly, in the case of a proposed trade
mark, words descriptive of the character or quality
of the wares are precluded from registration as a
trade mark under paragraph 12(1)(b),
In E. & J. Gallo Winery v. Andres Wines
Limited [1976] 2 F.C. 3, Thurlow J. (as he then
was) held that, if a trade mark is well known in an
area of Canada that is sufficient to preclude a rival
trader in that area from appropriating that trade
mark because it could not be "adapted to distin
guish" that trader's wares. This is predicated on
confusion.
Similarly, in my view, a word that is clearly
descriptive of the wares with which it is associated
cannot be registered under paragraph 12(1)(b)
and cannot be the subject of an application under
subsection 12(2) until it has been used by the
applicant so as to have become distinctive at the
time of application for registration. In this latter
case the trade mark meets the first of the two-bar
relled standard of distinctiveness of the definition
of "distinctive" in section 2 in that it has been used
so as to actually distinguish the wares. In the
absence of meeting that standard a trade mark
that is descriptive of the wares lacks the second
standard in that it is not inherently distinctive and
therefore cannot be "adapted so to distinguish" the
wares. It is the case where a common word in the
language having reference to the character or
quality of the wares in connection with which it is
used cannot be an apt or appropriate trade mark
for distinguishing the wares of one trader from
those of another.
For the foregoing reasons the issue upon which
this appeal falls to be primarily decided is whether
the proposed trade mark "TAVERN" is clearly
descriptive in the English language of the charac
ter or quality of brewed alcoholic beverages.
This was recognized by the Chairman when he
said in the reasons for his decision to reject the
opposition:
What I am required to decide here is whether the trade mark
of the applicant offends the provisions of s. 12(1)(b) of the
Trade Marks Act, and in consequence whether that trade mark
is non-distinctive and whether it may be said to be a word that
is common to the trade.
The Chairman considered himself bound by the
decision of my brother Addy in Provenzano v.
Registrar of Trade Marks (1978) 37 C.P.R. (2d)
189. That he is, if the decision is applicable.
The Chairman would be likewise bound by the
decision of Maclean P. in The Thermogene Co.
Ltd. v. La Compagnie Chimique de Produits de
France Ltée [1926] Ex.C.R. 114 which was relied
upon and cited by Addy J. in his reasons. Maclean
P. had said at page 118:
For a word to be really descriptive, it must describe something
which is material to the composition of the goods ....
The Chairman indicated that he would not be
justified in departing from the conclusions
expressed by Addy J. That is an admission by the
Chairman that the Provenzano decision was
indistinguishable.
The Chairman continued his review of that deci
sion by saying:
He refused to find that the trade mark KOLD ONE was either
clearly descriptive or deceptively misdisciiptive (sic) of beer
within the provisions of s. 12(1)(b), and it seems to me that his
conclusions would apply with greater force to TAVERN.
He therefore rejected the opposition. Hence this
appeal.
Earlier in his reasons the Chairman expressed
reservations for the rejection of the opposition by
saying:
I do not hesitate to admit that I would find the greatest of
difficulty in explaining on the basis of reason or logic a decision
finding the word TAVERN registrable for use in association with
products such as beer but Mr. Justice Addy was fully persuad
ed that the adjective "cold" when applied to beer is not in any
way descriptive of the intrinsic character or quality of the
product, and in the face of that conclusion it is not open to me
to decide that the word TAVERN in relation to beer offends the
provisions of s. 12(1)(b) of the Act.
Mr. Justice Addy had before him an appeal
from decision of the Registrar of Trade Marks
refusing the registration of the proposed trade
mark KOOL ONE (I am informed that the trade
mark sought to be registered was actually KOLD
ONE) on the ground that it was either clearly
descriptive or deceptively misdescriptive of the
character or quality of the product.
He said at page 189:
... and, for a word to be clearly descriptive, it must be material
to the composition of the goods or product ....
He continued to say on pages 189-190:
Similarly, to be "misdescriptive" the word must somehow
relate to the composition of the goods and falsely or erroneously
describe something which is material or purport to qualify
something as material to the composition of the goods when in
fact it is not.
He then considered the adjective "cold". He
said [at page 190]:
The adjective "cold", when applied to a "beer" is not in any
way descriptive of the intrinsic character or quality of the
product.
Unlike frozen food products, or appliances such
as refrigerators and stoves, subject to those and
like exceptions, he said:
... the temperature at which it [beer] might or might not be
delivered, sold or used has nothing to do with the character or
quality of the product itself ....
He added:
The word "cold" in such a case can refer only to the state at
which the product, namely, the beer, may or may not be sold or
consumed and not to any intrinsic quality or characteristic of
the product. It, therefore, is not descriptive of the beer itself.
He then considered the question of the mark
being deceptively misdescriptive. He said:
As to the mark being deceptively misdescriptive, not only
must it refer to the material composition of the beer, which it
does not, but even if misdescriptive it must be deceptively
misdescriptive; I fail to see how any member of the public who
might purchase beer known as "Kool One" could possibly
consider himself as deceived by the product as he receives it by
reason of the fact that the beer might not be cold at that time.
One would have to be deprived of ordinary intelligence not to
realize that the temperature at which it is received depends
solely and entirely on the temperature at which it was stored
immediately before delivery and not on any characteristics of
the beer itself. No one could possibly believe that the beer, by
reason of its composition or of some particular characteristic,
would remain cold at all times regardless of how it is stored.
At page 191 Addy J. recapitulated and conclud
ed by saying:
I cannot see how the proposed mark can be considered as
clearly descriptive since the words constituting it are not ma
terial to the composition of the product, nor can either of the
words be considered as deceptively "misdescriptive because no
reasonable person could possibly be deceived by their use in
conjunction with that particular product.
The Court of Appeal had no difficulty in follow
ing the reasoning and logic of Addy J. and unani
mously rejected an appeal by the Registrar by
confirming Mr. Justice Addy's conclusion that the
adjective "cold" when applied to beer is not in any
way descriptive, 'or deceptively misdescriptive of
the intrinsic quality or character of beer and they
added, as Addy J. had said, that the temperature
at which beer is used is unrelated to the character
or quality . of the beer itself. (See Registrar of
Trade Marks v. Provenzano (1979) 40 C.P.R.
(2d) 288.)
Consideration must therefore be given to the
applicability of the principles enunciated by Addy
J. to the use of the proposed trade mark "TAV-
ERN" in association with alcoholic brewery
beverages.
I accept the premise 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
a mark but rather to ascertain the immediate
impression created by the mark in association with
the product. The mark must be considered in
conjunction with the wares and not in isolation.
I also accept the premise that a mark must first
be found to be descriptive before it can be found to
bg misdescriptive.
I also accept that the decision must be one of
first impression and must not be based on research
into the meaning of words.
This research into the meaning of words I think
is intended to be limited to philological and etymo
logical research.
This does not, in my view, preclude resort to
dictionaries to find the meaning of a particular
word in its ordinary or popular sense and that, too,
must be considered in connection with the subject
or occasion on which the word is used.
Bluntly put, the question is, what meaning do
the words "Tavern beer" convey or do they convey
any meaning?
I have been supplied with extracts from numer
ous dictionaries defining the word "TAVERN".
In volume XI of The Oxford English Dictionary
the pertinent extract reads:
1. In early use, A public house or tap-room where wine was
retailed; a dram-shop; in current use = PUBLIC HOUSE.
It is also defined as synonymous with "Ind". In
the Century Dictionary a "tavern" is defined as:
A public house where wines and other liquors are sold, and
where food is provided for travellers and other guests; a public
house where both food and drink are supplied.
In Webster's New International Dictionary the
definition is:
1 b: an establishment where alcoholic liquors are sold to be
drunk on the premises 2: a house where travelers or other
transient guests are accommodated with rooms and meals: INN
In England the term "tavern" has to a great
extent been replaced by the term "public house"
which is defined as a "tavern" or "inn" and is
referred to as a "pub" as short for "public house".
A "pub" is also called the "local" to which the
residents of an area resort for entertainment,
games, conversation and where brewed alcoholic
beverages are the predominant drink sold and
served for consumption on the premises although
wines and other liquor are also available.
In my view the most apt synonym for a tavern or
pub is a tap room particularly because the bulk of
the beverages sold are those on draft drawn from a
tap although bottled beverages are also available.
There was affidavit evidence, based upon a
review of the yellow pages of the telephone direc
tories of the major cities across Canada to the
effect that the word "tavern" as an establishment
serving food and drink has been superseded by
such mundane descriptions as "restaurants",
"licensed restaurants or premises", "lounges" or
"cocktail lounges". In some provincial jurisdictions
they are called "beer parlours".
Despite this there were listings under the head
ing "tavern" in Halifax and Dartmouth, N.S.,
Quebec City, Que., Montreal, Que., Hull, Que.,
Ottawa, Ont. and Toronto, Ont.
The word is far from obsolete although the
tendency may be to reserve the word "tavern" for
the more quaint and historic inns in rural settings
to attract a more sedate and reserved clientele.
The word "tavern" remains popular in poetry
and song and taverns remain popular in college
towns or areas to cater to students.
In the Supplement to the Oxford Dictionary
"pub-crawls" are defined as a continuing and cur
rent pastime albeit for those who retain the physi
cal capability to indulge in that activity.
Thus it can be accepted that a "tavern" is an
establishment synonymous with a "pub" in which
alcoholic brewery beverages are served for con
sumption on the premises usually as draft beer but
also obtainable in bottlès.
The respondent introduced in evidence an
affidavit by an affiant knowledgeable in the trade
by which it was established that it is not the
practice in the Canadian beer industry to market a
brand of beer to be sold exclusively to licensed
establishments such' as pubs, hotels or taverns and
it is not economic to do so.
The evidence is that draft beer is marketed
principally to the licensed trade but it is sold to
that trade under the same brand names as it is sold
to the consumer packaged in bottles or cans.
The combination of the words "tavern" and
"beer" is susceptible of conveying the implication
that beer so described is a particular brew deliber-
ately designed to satisfy the taste or like demands
suitable to that trade and sold through those out
lets catering to that trade. The evidence is that
that this is not so. This' bears on the question
whether the proposed trade mark is deceptively
misdescriptive.
At its highest the impression of the use of the
word "tavern" in association with alcoholic brew
ery products is that the product so described is
brewed for sale in and is sold to the ultimate
consumer in taverns.
There can be no question that the word "tavern"
is a common word in the English language as is
"taverne" in the French language which is not
surprising since their root is identical. Neither is
there any real dispute that the word "tavern" in
the English language has in common parlance the
meaning ascribed to it in the extracts from the
many dictionaries put in evidence.
Lord Herschell most aptly expressed the limita
tions which were applicable at common law to the
use of a word in the language as a trade mark
when he said in The Eastman Photographic Ma
terials Company, Limited v. The Comptroller-
General of Patents, Designs, and Trade-Marks
[1898] A.C. 571 at page 580:
... any word in the English language may serve as a trade-
mark—the commonest word in the language might be
employed. In these circumstances it would obviously have been
out of the question to permit a person by registering a trade
mark in respect of a particular class of goods to obtain a
monopoly of the use of a word having reference to the character
or quality of those goods. The vocabulary of the English
language is common property: it belongs alike to all; and no one
ought to be permitted to prevent the other members of the
community from using for purposes of description a word which
has reference to the character or quality of goods.
If, then, the use of every word in the language was to be
permitted as a trade-mark, it was surely essential to prevent its
use as a trade-mark where such use would deprive the rest of
the community of the right which they possessed to employ that
word for the purpose of describing the character or quality of
goods.
As previously indicated the statutory limitation
in paragraph 12(1)(b) of the use of a common
word, such as "tavern", is that the word is not
clearly descriptive of the character or quality of
the wares and for the reasons also previously
expressed the issue upon which this appeal turns is
whether this proposed use of the trade mark "tav-
ern" is "clearly descriptive" of the character or
quality when used in association with alcoholic
brewery beverages. Being a proposed trade mark it
has not acquired distinctiveness in fact by use
which would entitle the owner to registration and
if it is clearly descriptive it is not adapted to
distinguish and so nit registrable.
Also, as previously mentioned, my brother Addy
has stated in the Provenzano case that for a word
to be clearly descriptive, it must be material to the
composition of the product and descriptive of an
intrinsic character or quality of that product.
A tavern is a place where beer and other al
coholic brewery beverages are sold to the patrons
of the place. Being the name of that place of
business the use of the word "tavern" in associa
tion with the wares there sold and consumed does
not, in my view, describe a feature or essential
peculiarity of those wares material or intrinsic to
their composition.
While it was not expressly raised in argument by
counsel the use of the word "tavern" may be
susceptible of suggesting the place of sale and
consumption and as such precluded from registra
tion as a trade mark being clearly descriptive of
the place of origin of the wares.
In Fine Foods of Canada, Ltd. v. Metcalfe
Foods, Ltd. [1942] Ex.C.R. 22 Maclean P. dealing
with trade marks used in association with canned
fruit and vegetables observed by way of obiter at
page 25:
I may be permitted to say respectfully that I doubt if such
marks as "Garden Patch" or "Summer Pride", or "Garden
Pride" should be registered at all, on the ground that they seem
to suggest the place or time of production.
I would assume from the language used by
Maclean P. that he was inclined to the view that
because the marks were "suggestive" it followed
that they were "descriptive".
I had occasion to consider the submission in
Great Lakes Hotels Ltd. v. The Noshery Ltd.
[1968] 2 Ex.C.R. 622 that the word "Penthouse"
being the description of the location where services
were performed was clearly descriptive of the place
of origin.
I said at page 629:
The name of a place of business or factory, however, is not
necessarily descriptive of the place of origin of wares or services
unless it can be said that such a name is indigenous to those
wares and services.
A beer or like product is not indigenous to the
tavern in which it is sold not even in the case of a
tied pub.
Consideration must revert to whether the word
"tavern" used in association with beer is clearly
descriptive of that product.
The word "tavern" describes the location at
which beer is sold and for the reasons expressed
that word is not clearly descriptive of the character
or quality of the beer there sold.
The use of the adverb "clearly" modifying the
word "descriptive" in paragraph 12(1) (b) must not
be overlooked. It is not synonymous with "accu-
rately" but rather that the meaning is "easy to
understand, self-evident or plain".
Thus the principle perpetuated in paragraph
12(1)(b) is that registrability should not be denied
to those trade marks which are merely suggestive
of the character or quality of the wares. To be
descriptive a trade mark must be self-evidently and
plainly descriptive of the character or quality of
the wares themselves and not merely of some
collateral feature.
The covert allusion implicit in the use of the
word "tavern" in association with beer is to beer
sold in taverns. That allusion has only the remotest
possibility of a suggestion of the quality of the beer
there sold. It is suggestive of the place where it is
sold.
A person confronted with the use of that trade
mark ( would be faced with a mystery as to its
connotation. Accepting as a premise that it may
mean a beer sold in a tavern it would need
imaginative reasoning to reach the conclusion that
the character or quality of the beer is described
thereby. It might be interpreted that it is an
excellent product brewed for a discriminating
clientele that frequents taverns or it is equally
susceptible of the diametrically opposite interpre
tation.
The classic examples of trade marks which were
not denied registration as being clearly descriptive
are "Waterwool" in association with swimming
apparel (see The Deputy Attorney General of
Canada v. Jantzen of Canada Ltd. [1965] 1
Ex.C.R. 227) and "Gro-Pup" as applied to dog
food (see Kellogg Co. of Canada Ltd. v. The
Registrar of Trade Marks [1940] Ex.C.R. 163).
In the first case Jackett P. [as he then was] said
[at page 233] that "[the trade mark Waterwool'
did] not describe the garment as being made of the
wool of any animal." A purchaser would hardly
envision a wool-bearing water animal.
In the second case, Angers J. did not think that
"Gro-Pup" was descriptive of dog food. He said
[at pages 170-171], "it is at the utmost suggestive
of the result which it is liable to produce."
It is significant to note the qualification made
by Lord Macnaghten in Standard Ideal Co. v.
Standard Sanitary Manufacturing Co. [1911]
A.C. 78 in commenting on In the Matter of an
Application by Joseph Crosfield & Sons Ld. to
Register a Trade Mark (supra), the "Perfection"
case when he said [at page 85]:
Without attempting to define "the essentials necessary to con
stitute a trade mark properly speaking" it seems to their
Lordships perfectly clear that a common English word having
reference to the character and quality of the goods in connec
tion with which it is used and having no reference to anything
else cannot be an apt or appropriate instrument for distinguish
ing the goods of one trader from those of another.
That qualification is in the words, "and having
no reference to anything else". If such a reference
is present then the mark is not clearly descriptive.
For the foregoing reasons I am impelled to the
conclusion that the proposed mark "TAVERN" for
use in association with alcoholic brewery beverages
is not clearly descriptive of those wares.
From that conclusion the converse follows that
the trade mark is not deceptively misdescriptive of
those wares. (See Bonus Foods Ltd. v. Essex
Packers Ltd. [1965] 1 Ex.C.R. 735 at page 749.)
The appeal is therefore dismissed with costs to
the respondent.
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.