A-470-83
Jordan & Ste-Michelle Cellars Ltd.—Les Caves
Jordan & Ste-Michelle Ltée (Appellant)
v.
T.G. Bright & Co., Limited (Respondent)
Court of Appeal, Thurlow C.J., Heald and Stone
JJ.—Toronto, March 26; Ottawa, April 18, 1984.
Trade marks — Appeal from Trial Division decision that
proposed trade mark "Brights Chillable Red" for use in
association with wines distinctive when taken as whole —
Disclaimer to "Red" filed as admittedly clearly descriptive
Trial Judge adopting Registrar's reasons for decision — Reg
istrar finding "Chillable Red" descriptive or clearly misde-
scriptive pursuant to s. 12(1)(b) of Act but applying Molson
Companies Ltd. v. John Labatt Ltd. to find "Brights Chillable
Red" not clearly descriptive — Appeal dismissed — "Chil-
lable" suggesting method of serving and not describing intrin
sic character or quality of wine — Provenzano v. Registrar of
Trade Marks where "Kool One" found not descriptive of
character or quality of bottled beer applying — S.C. Johnson
and Son, Limited et al. v. Marketing International Ltd. where
in "Off' found not registrable because: (1) common word used
in connection with variety of wares; (2) number of existing
trade marks ending with "Off'; and (3) number of dictionary
meanings of word, not overruling Provenzano for purposes of
this case — "Chillable" not common word forming part of
number of existing trade marks — Trade Marks Act, R.S.C.
1970, c. T-10, ss. 12(1)(b),(2), 37(2).
An appeal was taken from the judgment of the Trial Division
confirming a decision of the Registrar of Trade Marks. The
Trial Judge held that the trade mark "Brights Chillable Red"
for use in association with wines was distinctive when taken as
a whole. He adopted the reasoning of the Registrar who held
that "Chillable" and "Red" and "Chillable Red" are clearly
descriptive or deceptively misdescriptive of the respondent's
wares. However, he held that, in line with the Molson Compa
nies Ltd. v. John Labatt Ltd. decision, when the descriptive
words are prefaced by a name such as Labatt or Brights the
resulting trade mark is not descriptive. The respondent con
cedes that "Red" is clearly descriptive and has entered a
disclaimer to that word. The appellant submits that "Chillable
Red" when applied to wine is clearly descriptive or deceptively
misdescriptive of the character or quality of wine pursuant to
paragraph 12(1)(b) of thy Trade Marks Act. It also submits
that the Supreme Court of Canada decision in S.C. Johnson
and Son, Limited et al. v. Marketing International Ltd. ren
dered the Provenzano and earlier decisions inoperative. In the
S.C. Johnson case it was held that in seeking to register the
mark "Off", the applicant was claiming a monopoly of a
common word used in connection with a variety of wares. A
number of existing trade marks end with "Off' and there are a
number of dictionary meanings of the word. The respondent
submits that "Chillable" would, to an average consumer, only
mean that the wine was capable of being chilled, that it merely
suggested a method of presentation and that the case was not
distinguishable from Provenzano where the trade mark "Kool
One" was held to be not descriptive of the character or quality
of bottled beer.
Held (Thurlow C.J. dissenting), the appeal should be dis
missed. "Chillable" describes something which is capable of
being chilled. It suggests a method of serving or enjoying wine.
It is not descriptive of the intrinsic character or quality of the
wine and therefore is not "clearly descriptive or deceptively
misdescriptive ... of the character or quality of the wares".
The Provenzano decision applies. As to the effect of the S.C.
Johnson case, it does not alter the previous case law in so far as
the facts of this case are concerned. "Chillable" is not a
common word and it does not form part of a number of
registered trade marks. Thus the S.C. Johnson case is
distinguishable.
Per Thurlow C.J. (dissenting): The appeal should be allowed.
"Chillable" can mean not merely that the wine can be chilled
but that it is suitable for use when chilled. The fact that
"Chillable" is a coined word not found in the dictionary is not
important because in relation to a beverage its intent and
meaning are clear. The expression "Chillable Red" is an ellipti
cal expression meaning "Chillable Red Wine" which also
describes or deceptively misdescribes a quality of red wine.
Whether "Brights Chillable Red" is also clearly descriptive or
deceptively misdescriptive depends on what the trade mark as a
whole means to the average customer. The Labatt case does not
apply to the present situation. There the Trial Judge held that
"Labatt Extra" was merely indicative of the superior attributes
of a brew brewed by a particular brewer. This is plainly the
opinion of the Judge as to what the particular trade mark
indicates. Here the words of the trade mark when taken as a
whole proclaim a characteristic or quality of the wine. The
trade mark as a whole is clearly descriptive or deceptively
misdescriptive and registration is precluded by paragraph
12(1)(b) of the Act. Furthermore, the application being in
respect of a proposed trade mark, it is not registrable at this
stage under subsection 12(2).
CASES JUDICIALLY CONSIDERED
APPLIED:
Registrar of Trade Marks v. Provenzano (1978), 40
C.P.R. (2d) 288 (F.C.A.), affirming (1977), 37 C.P.R.
(2d) 189 (F.C.T.D.).
DISTINGUISHED:
S.C. Johnson and Son, Limited et al. v. Marketing
International Ltd., [1980] 1 S.C.R. 99; (1979), 44 C.P.R.
(2d) 16.
CONSIDERED:
Molson Companies Ltd. v. John Labatt Ltd. et al.
(1981), 58 C.P.R. (2d) 157 (F.C.T.D.).
REFERRED TO:
Kellogg Company of Canada Limited v. The Registrar of
Trade Marks, [1940] Ex.C.R. 163; Thomas J. Lipton,
Ltd. v. Salado Foods Ltd. (No. 3), [1980] 1 F.C. 740;
(1979), 45 C.P.R. (2d) 157 (T.D.); Home Juice Com
pany, et al. v. Orange Maison Limitée, [1970] S.C.R.
942; In the Matter of an Application of the Eastman
Photographic Materials Company, Ld., for a Trade
Mark (The "Solio" case) (1898), 15 R.P.C. 476 (H.L.).
COUNSEL:
D. F. Sim, Q.C. and T. B. Poison Ashton for
appellant.
J. C. Osborne for respondent.
SOLICITORS:
Sim, Hughes, Toronto, for appellant.
McMillan, Binch, Toronto, for respondent.
The following are the reasons for judgment
rendered in English by
THURLOW C.J. (dissenting): This appeal is
from a judgment of the Trial Division [(1983), 71
C.P.R. (2d) 138] which confirmed a decision of
the Registrar of Trade Marks [(1982), 71 C.P.R.
(2d) 132 (H.O.)] overruling the opposition filed by
the appellant to the respondent's application for
registration of "Brights Chillable Red" as a trade
mark which it proposed to use in association with
wines. By an amended application filed prior to the
appellant's opposition, the exclusive use of the
word "Red" apart from the trade mark had been
disclaimed.
The grounds of opposition' put forward by the
appellant included inter alia that, having regard to
' Subsection 37(2) of the Trade Marks Act [R.S.C. 1970, c.
T-10] provides:
37....
(2) Such opposition may be based on any of the following
grounds:
(a) that the application does not comply with the require
ments of section 29;
(b) that the trade mark is not registrable;
(c) that the applicant is not the person entitled to registra
tion; or
(d) that the trade mark is not distinctive.
paragraph 12(1) (b) 2 of the Act, the words "Chil-
lable Red" when applied to wines are clearly
descriptive or deceptively misdescriptive of the
character or quality of such wares.
With respect to this ground, the Hearing Officer
concluded that [at page 136]:
... the word "chillable" would, as a matter of first impression,
have a clear and unambiguous meaning to the average consum
er of the applicant's proposed wares, namely, that the appli
cant's wine is capable of being chilled.
Later [on the same page], he wrote:
Unlike the Provenzano case, the applicant, in the present case,
has utilized a word which is descriptive of the "intrinsic charac
ter or quality of the product". The suffix "able" of the word
"chillable", by its very nature, dictates such a finding.
He went on to conclude [at page 137]:
In summary, I find that both the words "chillable" and "red"
and the phrase "chillable red" are clearly descriptive (or decep
tively misdescriptive) of the applicant's wares. However, in line
with the LABATT EXTRA decision, it cannot be said that the
applicant's trade mark in its entirety offends either s. 12(1)(a)
or s. 12(1)(b) of the Act. Thus, the opponent's first two
grounds of opposition fail.
Earlier in his reasons the Hearing Officer had
referred to the decision of Cattanach J., in Molson
Companies Ltd. v. John Labatt Ltd. et al. 3 and
had cited two passages [at page 135] reading:
... the trade mark [LABATT EXTRA], as a whole, does not
offend against paragraph 12(1)(a) and so preclude registration
because the trade mark in its entirety is not primarily merely
the surname of an individual.
and
2 12. (1) Subject to section 13, a trade mark is registrable if
it is not
(b) whether depicted, written or sounded, either clearly
descriptive or deceptively misdescriptive in the English or •
French languages of the character or quality of the wares
or services in association with which it is used or proposed
to be used or of the conditions of or the persons employed
in their production or of their place of origin;
3 (1981), 58 C.P.R. (2d) 157 (F.C.T.D.).
... while the word `extra' alone is descriptive when that word is
prefaced with the word "Labatt" to form the trade mark
LABATT EXTRA, the resultant trade mark is not.
In dismissing the appellant's appeal the learned
Trial Judge adopted and relied on the reasons
given by the Hearing Officer for the Registrar of
Trade Marks. There are thus concurrent findings
that the words "Chillable" and "Red" and the
phrase "Chillable Red" are clearly descriptive (or
deceptively misdescriptive) of the respondent's
wares.
In responding to the present appeal, counsel
submitted that these findings are erroneous and
should not be upheld. He pointed out that the
finding of what, as a matter of first impression, the
word "Chillable" would mean to an average con
sumer was only that the wine was capable of being
chilled, that on that basis the word was merely
suggestive of a method of presentation and that
the case was not distinguishable from the
Provenzano 4 case in which the trade mark "Kool
One" was held to be not descriptive of the charac
ter or quality of bottled beer. It may also be noted
that the officer's finding that the word is descrip
tive of the "intrinsic character or quality of the
product" could be read as a conclusion based more
on the form of the word than on what the public
would take it to mean.
Notwithstanding these observations, in my opin
ion the findings are right and should be upheld.
Neither the reasons of the Hearing Officer nor the
expressions used in them should be read too criti
cally. As, in a purely physical sense, any bottle of
wine is capable of being chilled, whether or not
doing so would improve its flavour, the reasoning
is not, in my view, inconsistent with and can, I
think, be read as meaning not merely that the wine
can be physically chilled but that it is capable of
being satisfactory in use when chilled.
4 Provenzano v. Registrar of Trade Marks (1977), 37 C.P.R.
(2d) 189 (F.C.T.D.); (1978), 40 C.P.R. (2d) 288 (F.C.A.).
The fact that the word "Chillable" is not a
dictionary word but one coined by the respondent
does not in this- context appear to me to be of
importance. It might be difficult to give the word a
meaning if it were to be used in association with
something like farm machinery but in relation to a
beverage its intent and meaning are not open to
doubt.
Without evidence on the point, I should have
thought it tolerably clear that in relation to a red
wine the use of the word "Chillable" on the label
would be taken by an average purchaser to mean
that the wine would be red wine that is suitable for
use when chilled as well as when served at room
temperature. This view appears to me to derive
support from the discussion of How TO SERVE
WINE, an excerpt from a reference work entitled
Grossman's Guide to Wines, Spirits and Beers
appearing at page 179 of the case.
HOW TO SERVE WINE
What beverages are served cold? All white wines; all spar
kling wines; all pink wines; all beers; all cocktails; most mixed
drinks; certain spirits which are consumed as aperitifs such as
Vodka and Akvavit; all aperitif wines; very dry Sherry, and
very dry Madeira.
The following generally are served at room temperature: All
red wines; medium and rich Sherries, Madeira, Port, Marsala,
and all spirits when taken neat, such as whiskey, gin, rum,
brandy, and liqueurs. Exceptions are Vodka and Akvavit, men
tioned in the preceding paragraph.
Exceptions make the rule, and even a liqueur, with all its
sweetness, can be very pleasant in the summer if it is chilled. In
fact, a liqueur like Crème de Menthe is much more enjoyable if
it is well-chilled.
"Chillable", though coined by the respondent, is
thus a word which any trader might use to call
attention to and describe a quality of his wine.
And the expression "Chillable Red" which, as it
appears to me, is an elliptical expression meaning
"Chillable Red Wine" also refers to and describes
(or deceptively misdescribes) a quality of the red
wine in association with which the expression is to
be used.
The remaining question is whether the trade
mark "Brights Chillable Red" is, because it
includes the words "Chillable Red", also clearly
descriptive or deceptively misdescriptive of the
character or quality of the respondent's wines. The
answer, in my opinion, depends on what the trade
mark as a whole means to the average customer.
In the Labatt case which the Hearing Officer
purported to follow, Cattanach J., concluded that
in view of the presence of the word "Labatt" the
trade mark "Labatt Extra" as a whole was not
descriptive of the character or quality of the beer.
The learned Judge, immediately following the
second passage cited above, said: 5
At its highest it is only indicative of the superior attributes of a
brew brewed by a particular brewer bearing the surname
"Labatt".
The view so expressed is plainly the opinion of
the learned Judge as to what the particular trade
mark indicates. It has, as it seems to me, no
relevance in the present situation. Here the words
of the trade mark, when taken as a whole, pro
claim a characteristic or quality of the wine in
association with which it is to be used just as the
words "Chillable Red" by themselves proclaim
that characteristic or quality. The trade mark as a
whole is thus, in my opinion, clearly descriptive or
deceptively misdescriptive of the respondent's
wines with which it is to be associated and none
the less so because the trade mark as a whole
includes the word "Brights". Its registration is,
therefore, precluded by paragraph 12(1)(b) of the
Act. Further, as the application is in respect of a
proposed trade mark it is not registrable at this
stage under subsection 12(2).
In view of this conclusion it is unnecessary to set
out or deal with the other grounds of opposition
put forward by the appellant.
I would allow the appeal with costs, set aside the
judgment of the Trial Division and the decision of
the Registrar of Trade Marks and direct that the
opposition be upheld and the application for regis
tration refused.
* * *
5 (1981), 58 C.P.R. (2d) 157 (F.C.T.D.), at page 162.
The following are the reasons for judgment
rendered in English by
HEALD J.: I have had the advantage of reading
the reasons for judgment herein of the Chief Jus
tice. However, I find myself unable to agree with
the result which he proposes. In my view, the
appeal from the Trial Division judgment confirm
ing the decision of the Registrar of Trade Marks
should be dismissed.
The learned Trial Judge agreed with the finding
of the Registrar that the respondent's trade mark
"Brights Chillable Red" which it proposed to use
in association with wines is distinctive when taken
as a whole. Moreover, he adopted the Registrar's
reasons for decision, finding them persuasive.
While I agree with the Registrar's decision that
subject mark is registrable pursuant to the provi
sions of the Trade Marks Act, I come to this
conclusion for a different reason than that
advanced by him. The Registrar concluded that
both of the words "Chillable" and "Red" are
descriptive or deceptively misdescriptive of the
character or quality of the respondent's wares and
thus not registrable pursuant to the provisions of
paragraph 12(1) (b) of the Trade Marks Act. 6 It is
conceded that the word "Red" is clearly descrip
tive and the respondent has entered a disclaimer to
that word in its application. However, in my view,
the word "Chillable" is in a different category. It
is not a dictionary word. It would seem to me to
describe something which is capable of being
chilled or kept cool. As such, it is merely sugges
tive of a method of serving or enjoying the
respondent's wines. It is not material to the compo
sition of the goods themselves nor is it in any way
"clearly descriptive or deceptively misdescriptive
6 That subsection reads as follows:
12. (1) Subject to section 13, a trade mark is registrable if
it is not
(b) whether depicted, written or sounded, either clearly
descriptive or deceptively misdescriptive in the English or
French languages of the character or quality of the wares
or services in association with which it is used or proposed
to be used or of the conditions of or the persons employed
in their production or of their place of origin;
... of the character or quality of the wares ...".
I am unable to perceive any meaningful distinc
tion between the Provenzano decision supra and
the case at bar. In that case, the proposed mark
was "Kool One" for use in association with beer.
Mr. Justice Addy and this Court held that the
adjective "cold" when applied to beer is not in any
way descriptive of the intrinsic character or quality
of the product. Similarly, I think that the word
"Chillable" when used in association with wine is
in the same category since the temperature at
which wine may be served is completely unrelated
to the character or quality of the wine itself.
Whether wine is consumed after being kept at
room temperature or after being chilled is a com
pletely subjective matter, determined by the per
sonal preference of the consumers of the wine.
I do not think that the words "Chillable Red"
are descriptive or deceptively misdescriptive so as
to attract the prohibition contained in paragraph
12(1)(b) of the Act supra.
Counsel for the appellant conceded that if those
words are not prohibited by paragraph 12(1)(b),
then the mark "Brights Chillable Red" is
registrable.
In view of this conclusion, it becomes unneces
sary to decide whether the basis upon which the
Registrar made a determination of registrability is
sustainable in law.
The appellant's counsel submitted, however,
that the decision of the Supreme Court of Canada
in the case of S.C. Johnson and Son, Limited et al.
v. Marketing International Ltd. 8 has had the
effect of rendering inoperative the decisions in
Provenzano supra and earlier decisions of the Ex
chequer and Federal Courts. 9 With respect, I do
7 Compare: Provenzano v. Registrar of Trade Marks (1977),
37 C.P.R. (2d) 189 (F.C.T.D.) per Addy J. Judgment of Addy
J. affirmed (1978), 40 C.P.R. (2d) 288 (F.C.A.).
e [1980] 1 S.C.R. 99; (1979), 44 C.P.R. (2d) 16.
9 See for example: Kellogg Company of Canada Limited v.
The Registrar of Trade Marks, [1940] Ex.C.R. 163. See also:
Thomas J. Lipton, Ltd. v. Salada Foods Ltd. (No. 3), [1980] 1
F.C. 740; (1979), 45 C.P.R. (2d) 157 (T.D.).
not agree with that submission. In the S.C. John-
son case supra, the Supreme Court held that the
mark "Off' was not registrable because it was an
elliptical use of the word in association with an
insect repellent and was descriptive of the wares or
their effect. The Court held that in seeking to
register the mark "Off', the applicant was in
effect claiming a monopoly of a common word of
the language, a word commonly used in connection
with a variety of wares in related categories all
exhibiting the common purpose of getting rid of
something. Pigeon J. writing the judgment of the
Court enumerated a number of trade marks
ending with "Off' presently on the register to
show the widespread use of the word in that sense.
Mr. Justice Pigeon also referred to a number of
dictionary meanings of the word "Off'.
In my opinion, the factual differences which are
readily apparent in the case at bar serve to distin
guish it from the S.C. Johnson case supra. The
word "Chillable" is not a common word of the
language. Likewise, there is no suggestion that it
forms a part of a number of registered trade marks
so as to show widespread use. Accordingly, I have
concluded that the S.C. Johnson decision does not
alter the previous jurisprudence in so far as the
particular facts of this case are concerned.
For all of the above reasons, it is my view that
the within appeal should be dismissed with costs.
* * *
The following are the reasons for judgment
rendered in English by
STONE J.: As the facts which gave rise to the
questions in issue are recited in the reasons of the
Chief Justice, I will not repeat them.
The central question here is whether the pro
posed mark is registrable as not offending the
provisions of paragraph 12(1)(b) of the Trade
Marks Act 10 which reads, in part:
10 R.S.C. 1970, c. T-10.
12. (1) Subject to section 13, a trade mark is registrable if it
is not
(b) whether depicted, written or sounded, either clearly
descriptive or deceptively misdescriptive in the English or
French languages of the character or quality of the wares or
services in association with which it is used or proposed to be
used....
The wares in question is the respondent's red wine.
Since 1967 the respondent has held the trade mark
"Brights" for use in association with its wines.
The appellant argues that the inclusion of the
word "Chillable" in the proposed trade mark
would convey to the consumer something about the
character or quality of the wine itself, namely that
it is capable of being chilled. That, it claims, is
descriptive of the wine. I have difficulty in accept
ing this contention.
While I would agree that, as a matter of first
impression, the word "Chillable" in the context of
the proposed mark would indicate that the wine
can be chilled, I do not think the mark clearly
describes the character or quality of the wine
either explicitly or elliptically." The trade mark
"Brights" obviously identifies the "Chillable Red"
as wine. The inclusion of the word "Chillable"
does not in my view say anything about the inher
ent nature or make-up of the wine. Words such as
"tart", "sweet", "dry", "red" and "white" do
describe the inherent nature of wine and are
descriptive of its character. I do not think "Chil-
lable" describes the inherent nature of the wine,
but only what can be done with it in the hands of a
consumer who, obviously, must take its character
or quality as he finds it. I would regard it only as
nothing more than suggestive of the manner in
which the wine may be presented for consumption,
that is, in a chilled state instead of at room
temperature.
See S.C. Johnson and Son, Limited et al. v. Marketing
International Ltd., [1980] 1 S.C.R. 99; (1979), 44 C.P.R. (2d)
16 and Home Juice Company, et al. v. Orange Maison Limitée,
[1970] S.C.R. 942 which, to use the words of Lord Macnaght-
en in the Solio case [In the Matter of an Application of the
Eastman Photographic Materials Company, Ld., for a Trade
Mark] (1898), 15 R.P.C. 476 (H.L.) at p. 486, dealt with
proposed marks that contained "a covert and skilful allusion to
the character or quality of the goods".
The registrability of a trade mark that is merely
suggestive rather than clearly descriptive of the
character or quality of wares has been recognized
for many years. The distinction is well made by
the learned author of The Canadian Law of Trade
Marks and Unfair Competition (3rd Edition),
1972. With reference to paragraph 12(1)(b), he
said (at page 101):
In order to be denied registrability under this subsection of the
statute, a mark must be clearly descriptive. The use of those
words contemplates the acceptance of some descriptive conno
tation. This distinction between descriptive and suggestive has
been approved in the jurisprudence both of Great Britain and of
Canada where trade marks having a suggestive connotation
with the wares to which they have been applied have been held
to be good trade marks on the ground that they were not clearly
descriptive.
This distinction was made more recently by Addy
J. in Provenzano v. Registrar of Trade Marks 12
with respect to the use of "Kool One" as a trade
mark in association with beer. 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 such food products as ice cream, frozen foods,
ices or juices or appliances such as refrigerators, stoves or
toasters, the temperature at which it might or might not be
delivered, sold or used has nothing to do with the character or
quality of the product itself: see for example the word "frigi-
daire" in General Motors Corp. v. Bellows (1949), 10 C.P.R.
101, [1950] 1 D.L.R. 569, [1949] S.C.R. 678, and words
"Tastee Freeze" in Tastee Freeze [sic] International, Ltd.'s
Appin., [1960] R.P.C. 255. Although a majority of people
might prefer to drink their beer cold, others may prefer it at
room temperature. 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.
I must, therefore, disagree with the conclusion
of the Hearing Officer that "Chillable" is clearly
descriptive of the respondent's red wine. In the
result, I think the registration can stand and,
accordingly, the appeal should be dismissed with
costs.
12 (1977), 37 C.P.R. (2d) 189 (F.C.T.D.), affirmed
(1978), 40 C.P.R. (2d) 288 (F.C.A.).
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.