T-3007-80
Saccone & Speed Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.—Toronto, October 5;
Ottawa, October 20, 1982.
Trade marks — Expungement for non-user — Whether
modification of trade mark label to meet bilingual require
ments resulting in loss of protection — Addition of French text
and necessary changes in design not substantial variation of
mark — Change neither confusing nor deceiving — Appeal
allowed — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 44, 60
— Unfair Competition Act, R.S.C. 1952, c. 274, s. 2(c) —
Trade Marks Act, S.C. 1952-53, c. 49 — Consumer Packaging
and Labelling Act, S.C. 1970-71-72, c. 41, s. 10 — Consumer
Packaging and Labelling Regulations, C.R.C., c. 417, s. 6(2).
To comply with the bilingual requirements of the Consumer
Packaging and Labelling Act and the Regulations thereunder,
the appellant modified its trade mark label, changing the
design as well as adding the required French text. Acting under
section 44 of the Trade Marks Act, the Registrar decided to
expunge the mark for non-user, holding the label to be substan
tially different from the original registration. The appellant
attacks that decision, arguing that the changes were made at
the express direction of government officials to comply with the
new bilingual labelling requirements.
Held, the appeal should be allowed. In order to conform to
the new bilingual requirements, the appellant merely added the
required French text and made the necessary design changes to
accommodate that text. The essential elements of the mark
were preserved, so there is no "substantial difference" between
the trade mark as used and that as registered. The deviation is
therefore not such as to cause injury or deception to anyone.
CASES JUDICIALLY CONSIDERED
APPLIED:
The Molson Companies Ltd. v. Mitches & Co. et al.
(1980), 50 C.P.R. (2d) 180 (F.C.T.D.); Honey Dew,
Limited v. Rudd et al., [1929] Ex.C.R. 83; [1929] 1
D.L.R. 449; M. Melachrino and Co. v. The Melachrino
Egyptian Cigarette Co. et al. (1887), 4 R.P.C. 215
(Ch.D.); J.H. Munro Ltd. v. T. Eaton Co. Western Ltd.
et al. (1943), 2 C.P.R. 229 (B.C.S.C.).
CONSIDERED:
In the Matter of the Application of R.J. Lea 14. to
Register a Trade Mark (1913), 30 R.P.C. 216 (Eng.
C.A.).
REFERRED TO:
Elder's Beverages (1975) Ltd. v. Registrar of Trade
Marks, [1979] 2 F.C. 735 (T.D.).
COUNSEL:
Brian W. Gray for appellant.
M. Thomas for respondent.
SOLICITORS:
Hayhurst, Dale & Deeth, Toronto, for
appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an appeal from the
decision of the Acting Registrar of Trade Marks
dated April 18, 1980 whereby the Registrar decid
ed that the appellant's trade mark registered on
May 8, 1964 under No. 135,655 would be
expunged.
The matter arose as a consequence of the Acting
Registrar of Trade Marks, on her own initiative,
giving notice dated January 23, 1979 to W.A. Ross
& Brother, Limited, the registered owner of the
trade mark in question at that time, pursuant to
section 44 of the Act [Trade Marks Act, R.S.C.
1970, c. T-10], requiring the registered owner to
furnish evidence by way of affidavit or statutory
declaration establishing use of the trade mark in
Canada with respect to the wares specified in the
registration or, if not in use, the date of last use
and the reason for absence of use since that date.
In response to that notice by affidavit of John
Graham Hare sworn on May 16, 1979, it was
established that extensive and continuous use had
been made of the trade mark in accordance with a
label attached to the affidavit throughout the prior
three years.
There is no question whatsoever that there was
use of the trade mark in accordance with the label
and that the appellant is the owner of the trade
mark by virtue of an assignment.
The reasons that the Acting Registrar decided
that she would expunge the trade mark, subject
only to an appeal being launched (as has been the
case), are as expressed in her letter dated April 18,
1980 which reads:
1. The labels submitted with the affidavit dated May 16, 1979
submitted by John Graham Hare, Company Secretary of W.A.
Ross & Brothers [sic], Limited which is the registered owner of
the trade mark ROSS'S ALOHA COFFEE LIQUEUR and Design
shows a modified trade mark on a label that is substantially
different from the original trade mark registration.
2. Even though there is sufficient evidence showing a transfer
of property of the liqueur for the three years preceding the
Section 44 notice, I am not able to conclude that the trade
mark shown in the registration is the one that was used during
the transfer of property.
Summary: In view of the reasons mentioned above I will
expunge registration number 135,655.
There is no doubt whatsoever that the label
affixed to the bottles containing the liquid patent
presently in case by the appellant has been modi
fied somewhat from the trade mark granted regis
tration of what was to the applicant on May 8,
1964 as represented by a black and white drawing
which is reproduced below.
The right to the exclusive use of all reading
matter, except the word ALOHA, was disclaimed
apart from the trade mark.
In her certification of the material forwarded to
the Court upon appeal as required by section 60 of
the Act the Acting Registrar made mention of the
trade mark "ROSS'S ALOHA COFFEE LIQUEUR"
and design having been registered.
Under the Unfair Competition Act [R.S.C.
1952, c. 274], which immediately preceded the
Trade Marks Act now in force and in force from
1953 [S.C. 1952-53, c. 49] forward, there was a
rigid and distinct division between design marks
and word marks which is preserved in trade marks
registered under the Unfair Competition Act.
A design mark was defined in paragraph 2(c) of
the Unfair Competition Act, which I paraphrase,
as a trade mark consisting of a mark or design
comprised of a representation of an object or
objects or letters or numbers or a combination of
both depending for its distinctiveness upon the
form, arrangement or colour of its several parts
independent of any idea or sound suggested by the
sequence of letters (which might form words).
A word mark was defined as a series of letters
depending for its distinctiveness upon the idea or
sound suggested by the sequence of letters, i.e., the
word so formed.
This separation into two mutually exclusive
classes of trade marks was demolished in the 1953
Trade Marks Act. It is the totality of the trade
mark which shall be the guiding element both as to
registrability and comparison.
I now revert to the black and white drawing of
the trade mark as it appears in the registration and
as is reproduced above.
Considering the trade mark to be within a rec
tangle divided into three parallel divisions of about
equal depth there appears in the top division at the
left a crest which is the head of a Great Auk
surmounted on the wreath. To the right of that
crest is the word ROSS'S printed in block high case
letters throughout with shading in black to simu
late depth and the word is in the genitive case.
All language in the trade mark except the word
ALOHA was disclaimed by the applicant.
I assume that the word "Ross" was disclaimed
by the applicant because it is a personal surname.
But in In the Matter of the Application of R.J.
Lea Ld. to Register a Trade Mark ((1913), 30
R.P.C. 216 [Eng. C.A.]) Buckley L.J. categorical
ly stated that a word susceptible of being a sur
name expressed in the genitive is not a surname.
In Elder's Beverages (1975) Ltd. v. Registrar of
Trade Marks ([1979] 2 F.C. 735 [T.D.]) I was
invited to conclude that Buckley L.J. was wrong in
so stating. This I declined to do because the case
before me was decided on other grounds. But I did
express the view that it appeared incongruous to
me that the prohibition against the registration of
a word that is primarily a surname could be
circumvented merely by adding an apostrophe "s"
at its end. Rather that circumstance would appear
to emphasize to me that the word was a personal
surname.
Even though the word ROSS is disclaimed it still
forms a very predominant feature of the appel
lant's trade mark, as registered, both visually and
otherwise.
In the second or middle division the predomi
nant feature of the trade mark is the word ALOHA.
This word means "love" in the Polynesian lan
guage of Hawaii and is used as an Hawaiian
expression of greeting or farewell. It is eminently
suitable for use as a trade mark in association with
coffee liqueur. I assume coffee beans may be
grown in Hawaii but I have had no evidence of
that fact nor may I take judicial notice thereof
even if I knew.
There is no question whatsoever in my mind that
the word ALOHA is the most prominent feature in
the appellant's trade mark.
In the bottom third horizontal division of the
trade mark appear the words "COFFEE LIQUEUR"
in high case block print letters throughout. The
words are printed on so slight a curvature as to be
barely noticeable. Those words were properly dis
claimed as being a description of the wares and are
not susceptible of being a trade mark.
In the background of the lower third division is
the scene of a beach, perhaps an Hawaiian beach.
The sea forms the horizon. Emanating from the
beach are palm trees which form the background
for and are dominated by the word ALOHA in the
middle division.
Likewise the words COFFEE LIQUEUR dominate
the beach scene which forms the background for
those words and the scene is relegated to lesser
significance to and by the words superimposed
thereon.
The appeal herein was supported by an affidavit
sworn by Richard William Treganowan pursuant
to leave granted by my brother Addy J. by order
dated March 16, 1981.
The affiant swears that from 1964 the appellant
affixed to its product a label in the exact form of
the trade mark registration granted on May 8,
1964.
However in paragraph 4 of his affidavit the
affiant swears that the registered owner departed
from the exact form of the label originally used,
and which was a reproduction of the drawing of
the registered trade mark, at the express direction
of officials of the Department of National. Reve
nue (Customs and Excise) sometime in 1976 to
comply with Canadian labelling requirements by
creating a label having both French and English.
In paragraph 6 of that affidavit Mr. Tregano-
wan swore:
6. My Company's liqueur has always been known to our
customers by the Trade Mark ROSS'S ALOHA. The GREAT
AUK'S HEAD design which is the subject of Canadian Trade
Mark Registration No. 60/14685 was also another distin
guishing feature of Ross's products.
He also testified that the modified label, conse
quent upon the legislative requirements of the
Parliament of Canada upon which the officials of
the responsible department of the Government
insisted, was that appended to the affidavit of Mr.
Hare sworn on May 16, 1979 filed in response to
the notice given by the Acting Registrar of Trade
Marks, on her own initiative, in accordance with
subsection 44(1) of the Trade Marks Act.
I reproduce that label hereunder.
Section 10 of the Consumer Packaging and
Labelling Act (S.C. 1970-71-72, c. 41) provides in
part that a label containing a declaration of net
quantity of a prepackaged product shall be applied
to the prepackaged product in such form as shall
show the identity of the prepackaged product in
terms of its common or generic name. In the
present instance that would be "coffee liqueur".
In the Consumer Packaging and Labelling
Regulations [C.R.C., c. 417] made pursuant to the
authority in the Act, section 6 ranged under the
heading "Bilingual Requirements and Exemp
tions" defines a specialty product as a prepack
aged product that is imported (and that is precise
ly what the appellant's product was).
Subsection (2) of section 6 provides:
6....
(2) All information required by the Act and these Regula
tions to be shown on the label of a prepackaged product shall be
shown in both official languages except that the identity and
principal place of business of the person by or for whom the
prepackaged product was manufactured, processed, produced
or packaged for resale may be shown in one of the official
languages.
Accordingly to comply with the statute and
Regulations thereunder the appellant was obliged
to revise its label. The consequence of not doing so
would be the risk of prosecution or, if being
imported, its product would be denied entry into
Canada.
In my view the appellant has revised its label in
consummate good taste, which while complying
with the statutory bilingual requirements, pre
served the essential elements of its trade mark.
The words ROSS'S ALOHA are preserved and
emphasized as before. So too is the crest which is
the Great Auk's head. But rather than appearing
once only to the left of the word ROSS'S it now
appears to the right as well. That gives symmetry
and balance.
The reason is readily obvious. The crest is also
the subject of a registered trade mark (see affida
vit of Mr. Treganowan). Beneath the crest on the
left is the abbreviation for the word "Registered"
in English, i.e., "Reg'd." and beneath the crest on
the right the abbreviation in French, "Enrg.", so
ensuring the use of both languages.
The departures are that the words "COFFEE
LIQUEUR" appeared below the word ALOHA in the
initial label but are now above the words ROSS'S
ALOHA and are replaced in their former lower
position by the words "LIQUEUR DE CAFÉ" which
is the generic name of the product expressed in
French in exact compliance with subsection 6(2)
of the Regulations.
The alcoholic content and volume are on the
label and are the same in French as in English.
The name of the producer and that of the company
under whose supervision the product is produced
are set forth in English only, so too are their
principal places of business. That is within the
exemption contemplated in subsection 6(2). There
is no need to print this information twice although
the words preceding the corporate names are
expressed in both French and English.
The other departure from the initial trade mark
is that the representation of a beach scene has
disappeared.
This omission, in my view, is of no significance.
Originally the scene had been contemplated as
background only and further regulated to that
purpose by the superimposition of the word "ALO-
HA" and the words "COFFEE LIQUEUR" overall.
My brother Mahoney J. in The Molson Compa
nies Ltd. v. Mitches & Co. et al. ((1980), 50
C.P.R. (2d) 180 [F.C.T.D.]) said on page 182:
It is unfortunate that the appellant did not prove the current
labelling regulations that are said to have required certain
additions to the label. It would, I think, have been arguable
that such additions ought to be completely ignored because it
would be contrary to public policy to permit compliance with
those laws to imperil the validity of a trade mark.
There was evidence before me that the appellant
revised its trade mark to comply with the require
ments of the statute and Regulations promulgated
thereunder.
Therefore I adopt the obiter dictum of Mahoney
J. and disregard the addition of the French text to
the trade mark as being a substantial variation
thereof.
The law as to when the departure from the
previous form in which the trade mark was regis
tered which would result in the registered owner's
loss of protection is set out in the decision of
Maclean P. in Honey Dew, Limited v. Rudd et al.
([1929] Ex.C.R. 83; [[1929] 1 D.L.R. 449]).
This is the leading case on the subject and has
been followed consistently since its pronounce
ment.
The President's pertinent remarks appear on
page 89 and read:
The practice of departing from the precise form of a trade
mark as registered is objectionable, and is very dangerous to
the registrant.
Here I interject that when Maclean P. so stated
the Official Languages Act [R.S.C. 1970, c. O-2],
the Consumer Packaging and Labelling Act and
Regulations thereunder had not been enacted and
that, in my view, adds still greater emphasis to the
necessity of the application of the obiter dictum
expressed by Mahoney J. which I have accepted
and apply.
Maclean P. continued on page 89:
The mark as used here is not however substantially different
from the mark as registered. Nobody has been deceived, no
injury could occur to anybody by the deviation from the form
of the registered mark, and I do not think the plaintiff should
lose his right to protection because of this.
In M. Melachrino and Co. v. The Melachrino
Egyptian Cigarette Co. et al. ((1887), 4 R.P.C.
215 [Ch.D.]) to which Maclean P. referred, Chitty
J. held that use of a coat of arms, for which
registration had been refused, in connection with
the trade mark as registered did not invalidate the
right to the protection of that portion of the label
as had been registered.
Clearly Chitty J. considered the addition as
surplusage.
In the present matter the addition of an addi
tional crest does not, in my view, invalidate the
trade mark in which it appears.
In my view the converse is equally so. The
omission of an insignificant feature such as the
background scene of an Hawaiian beach does not
make the trade mark so sufficiently different as to
cause it to lose its validity.
In J.H. Munro Ltd. v. T. Eaton Co. Western
Ltd. et al. ((1943), 2 C.P.R. 229 [B.C.S.C.])
Farris C.J.S.C. stated on page 239 that:
There can be a deviation from a specific trade mark, as is
clearly indicated by the authorities.
As authority for that statement Farris C.J.S.C.
quoted the same passage from the decision of
Maclean P. which I have quoted above.
Farris C.J. then continued and said at page 240:
The question of whether or not the use of a label deviating from
the specific label is such a deviation as would constitute a
non-user of a specific trade mark appears to be one of fact as
relating to each particular case, the principle on which such
facts shall be applied being as laid down by Maclean J. in the
Honey Dew case, viz., that the deviation shall not be such as to
cause an injury or deception to anyone.
The label was revised as a direct necessity to
comply with the provisions of the Consumer Pack
aging and Labelling Act and the Regulations
thereunder. The additional verbiage added to
ensure compliance therewith is to be disregarded.
The addition of that additional wording neces
sitated a modification of the design to accommo
date the language required to be added.
This was done but in doing so the appellant
exercised care to preserve the dominant features of
its trade mark.
The crest being the head of the Great Auk was
retained in its same position. An additional
representation of the crest was included for bal
ance. As Chitty J. said in the Melachrino case
(supra) the addition of a superfluous matter does
not invalidate the remainder of the label.
As I have said before the deletion of an insignifi
cant feature which contributes little to the overall
design should likewise not invalidate the remaining
label so long as what remains preserves the origi
nal identity.
This, in my view, the revised trade mark does.
The significant features are threefold:
1. the crest being the head of the Great Auk
which is doubly featured in the modified design;
2. the word ROSS'S which is displayed with
equal prominence and in like position as in the
initial design; and
3. the most vital part of all, the word ALOHA is
also displayed with equal prominence and in the
like position in the revised design, dictated by
necessity, as in the initial design.
The principle laid down by Maclean P. in the
Honey Dew case and consistently followed thereaf
ter is that the deviation be such as not to cause
injury or deception to anyone.
In the reasons expressed the changes dictated by
compliance with the law and the tasteful revision
of the design to do so does not detract from the
main features of the trade mark and accordingly
are not such as to confuse or deceive the public in
any way. The deviation in the present instance
does not breach the principle laid down by
Maclean P. in the Honey Dew case.
Putting and applying that test in yet another
way there is no "substantial difference" in the
trade mark as used from that as registered which
is contrary to the view expressed by the Acting
Registrar.
Accordingly the appeal is allowed and the
matter is referred back to the Registrar of Trade
Marks for appropriate administrative action.
In view of the fact that there was evidence
before me which was not before the Acting Regis
trar of Trade Marks I exercise the discretion
vested in me and decline to award costs for or
against either party herein which is consistent with
the practice which has existed since the prior
century both in Canada and in the United
Kingdom.
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.