A-787-87
Allied Corporation (Appellant) (Applicant in the
Trade Marks Office)
v.
Canadian Olympic Association—Association
Olympique Canadienne (Respondent) (Opponent
in the Trade Marks Office)
INDEXED AS: CANADIAN OLYMPIC ASSN. V. ALLIED CORP.
(CA.)
Court of Appeal, Urie, Hugessen and MacGuigan
JJ.A.—Ottawa, December 13 and 18, 1989.
Trade marks — Registration — Appeal from trial judgment
holding appellant's trade mark not registrable — Appellant
claiming adoption and use of "Olympian" for use in connection
with type face fonts since 1977 — Public notice of respondent's
adoption and use of "Olympian" as official mark in 1980 —
Application for registration in 1982 — Trade Marks Act, s.
9(1)(n)(iii) prohibiting adoption of mark "so nearly resembling
as to be likely to be mistaken for" mark adopted by public
authority as official mark — S. 9(1)(n)(iii) not retroactively
prohibiting adoption — Prospective in operation — Mark
adopted before public notice not adopted contrary to s. 9 —S.
12(1)(e) providing mark registrable if adoption not prohibited
by s. 9 — S. 12 rendering mark unregistrable if adoption
contrary to s. 9, even if adopted and used prior to giving of
public notice — Right to register prohibited from time of
giving of public notice — Interpretation of s. 9(1)(n)(iii) in
obiter dictum in Insurance Corporation of British Columbia v.
Registrar of Trade Marks exceeding true intent of Parliament
— Appeal dismissed.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 3, 9(1), 11,
12(1)(e).
Unfair Competition Act, R.S.C. 1952, c. 274, s. 14(1)(j).
CASES JUDICIALLY CONSIDERED
CONSIDERED:
Insurance Corporation of British Columbia v. Registrar
of Trade Marks, [1980] 1 F.C. 669; (1979), 44 C.P.R.
(2d) 1 (T.D.).
COUNSEL:
Angus J. S. Davidson for appellant.
Kenneth D. McKay and Arthur B. Renaud for
respondent.
SOLICITORS:
Angus J. S. Davidson, Ottawa, for appellant.
Sim, Hughes, Dimock, Toronto, for respon
dent.
The following are the reasons for judgment
rendered in English by
MACGUIGAN J.A.: The appellant claimed,
through its predecessor in title, to have adopted
and used the trade mark "Olympian" in Canada in
connection with type face fonts as of June or July
of 1977, but when it filed an application for regis
tration of this mark in 1982, it was faced with an
opposition to its application by the respondent,
which had caused the Registrar of Trade Marks to
give public notice on March 5, 1980, of its adop
tion and use of the mark "Olympian" (along with
several other Olympic-related marks) as official
marks.
As a public authority, the respondent based its
opposition on subparagraph 9(1)(n)(iii) of the
Trade Marks Act ("the Act"), R.S.C. 1970, c.
T-10. Subsection 9(1) provides as follows:
9. (1) No person shall adopt in connection with a business,
as a trade mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for
(a) the Royal Arms, Crest or Standard:
(b) the arms or crest of any member of the Royal Family;
(c) the standard, arms or crest of His Excellency the Gover
nor General;
(d) any word or symbol likely to lead to the belief that the
wares or services in association with which it is used have
received or are produced, sold or performed under royal,
vice-regal or governmental patronage, approval or authority;
(e) the arms, crest or flag adopted and used at any time by
Canada or by any province or municipal corporation in
Canada in respect of which the Registrar has at the request
of the Government of Canada or of the province or municipal
corporation concerned, given public notice of its adoption
and use;
(J) the heraldic emblem of the Red Cross on a white ground,
formed by reversing the federal colours of Switzerland and
retained by the Geneva Convention for the Protection of War
Victims of 1949, as the emblem and distinctive sign of the
Medical Service of armed forces and used by the Canadian
Red Cross Society; or the expression "Red Cross" or "Gene-
va Cross";
(g) the heraldic emblem of the Red Crescent on a white
ground adopted for the same purpose as specified in para
graph (/) by a number of Moslem countries;
(h) the equivalent sign of the Red Lion and Sun used by
Iran for the same purpose as specified in paragraph (J);
(i) any national, territorial or civic flag, arms, crest or
emblem, or official control and guarantee sign or stamp,
notice of the objection to the use of which as a commercial
device has been received pursuant to the provisions of the
Convention and publicly given by the Registrar;
(j) any scandalous, obscene or immoral word or device;
(k) any matter that may falsely suggest a connection with
any living individual;
(I) the portrait or signature of any individual who is living or
has died within the preceding thirty years;
(m) the words "United Nations" or the official seal or
emblem of the United Nations;
(n) any badge, crest, emblem or mark
(i) adopted or used by any of Her Majesty's Forces as
defined in the National Defence Act,
(ii) of any university, or
(iii) adopted and used by any public authority in Canada
as an official mark for wares or services,
in respect of which the Registrar has, at the request of Her
Majesty or of the university or public authority as the case
may be, given public notice of its adoption and use; or
(o) the name "Royal Canadian Mounted Police" or
"R.C.M.P." or any other combination of letters relating to
the Royal Canadian Mounted Police, or any pictorial
representation of a uniformed member thereof.
Section 11 of the Act is also relevant:
11. No person shall use in connection with a business, as a
trade mark or otherwise, any mark adopted contrary to section
9....
With these provisions must be linked paragraph
12(1)(e), the relevant part of which provides that
"a trade mark is registrable if it is not ... a mark
of which the adoption is prohibited by section 9."
Finally, section 3 of the Act indicates the scope
to be given to the word "adopted":
3. A trade mark is deemed to have been adopted by a person
when he or his predecessor in title commenced to use it in
Canada or to make it known in Canada or, if he or such
predecessor had not previously so used it or made it known,
when he or such predecessor filed an application for its registra
tion in Canada.
The decision of the delegate of the Registrar of
Trade Marks, Hearing Officer Troicuk, rendered
on September 13, 1985, rejected the respondent's
opposition. On the point which is relevant on this
appeal, he stated (Appeal Book, Appendix I, at
pages 5-6):
I do not consider it appropriate to give ss. 12(1)(e) and 9(1)(iii)
a retroactive interpretation.
For each of the opponent's official marks Olympic Games,
Olympiad, Olympian, Olympic, Olympique, Summer Olym-
pics, Canada's Olympic Teams, Winter Olympics and Winter
Olympic Games, public notice of their adoption and use was
not given until March 5, 1980. Since this was after the appli
cant's date of adoption, I do not consider that they can be relied
upon by the opponent in support of its ground of opposition
based on ss. 12(1)(e) and 9(1)(n)(iii).
On appeal from the Hearing Officer's decision,
Cullen J. allowed the appeal (Cdn Olympic Assn.
v. Allied Corp. (1987), 14 C.I.P.R. 126; 16 C.P.R.
(3d) 80; 13 F.T.R. 93 (F.C.T.D.)], holding that
the appellant's trade mark was not registrable in
view of the public notice given on behalf of the
respondent under section 9 in 1980 regarding the
official mark "Olympian". The learned Trial
Judge said (at pages 131 and 133 C.I.P.R.):
... I accept without question that an application for a trade
mark which resembles (and here the word is Olympian) a s. 9
prohibited mark is not registrable over a prohibited or official
mark no matter when adopted or used.
Subsection 9(1) is an outright prohibition and how the
products or services are used is irrelevant. There was no
evidence by the respondent to suggest the mark was not used,
which might very well have shifted the onus to the appellant.
Dr. Fox [Canadian Law of Trade Marks and Unfair Competi
tion, 3rd ed. 1972, at p. 198] makes the point that it is
forbidden territory.
A person endeavouring to tread in this forbidden territory
may very well find himself with no mark if the obiter of
Cattanach J., supra, is applicable, and I believe it is.
The obiter dictum of Cattanach J. referred to is
found in Insurance Corporation of British
Columbia v. Registrar of Trade Marks, [1980j 1
F.C. 669; (1979), 44 C.P.R. (2d) 1 (T.D.), where
it was held that the Registrar does not have discre
tion to refuse to give public notice of a mark
requested by a public authority. In the course of
his reasons for decision Cattanach J. said (at pages
683-684 F.C.):
The logical consequence of the prohibition of the adoption
and use of any mark as a trade mark or otherwise consisting of
or resembling any of the devices mentioned in section 9 is to
reserve to the persons and bodies mentioned the exclusive user
of those devices.
That is the basic scheme of the section to be derived from its
language.
Clearly section 9(1)(n)(iii) contemplates the use of an offi
cial mark which a public authority has seen fit to adopt to be a
use exclusive to that authority. The purpose of the Registrar
giving public notice of the adoption and use of an official mark
is to alert the public to that adoption as an official mark by the
public authority to prevent infringement of that official mark.
It does not, in my view, for the reasons previously expressed
bestow upon the Registrar any supervisory functions.
I fully realize the consequences. 'A public authority may
embark upon a venture of supplying wares and services to the
public and in so doing adopt an official mark. Having done so
then all other persons are precluded from using that mark and,
as a result of doing so, on its own initiative, the public authority
can appropriate unto itself the mark so adopted and used by it
without restriction or control other than its own conscience and
the ultimate will of the electorate expressed by the method
available to it.
That, in my opinion, is the intention of Parliament which
follows from the language of section 9 of the Act and that is the
policy which Parliament, in its omnipotent wisdom, has seen fit
to implement by legislation.
I do not understand what right a Court of justice has to
entertain an opinion of a positive law upon any ground of
political expediency. I think, when the meaning of a statute is
plain and clear, the Court has nothing to do with its policy or
impolicy, its justice or injustice. The legislature is to decide
upon political expediency and if it has made a law which is not
politically expedient the proper way of disposing of that law is
by an Act of the legislature, not by a decision of the Court. If
the meaning of the statute is plain and clear a Court has
nothing to do but to obey it — to administer the law as the
Court finds it. To do otherwise is to abandon the office of judge
and to assume the province of legislation.
If the true intention of Parliament was not as I have found it
to be so expressed in section 9 of the Trade Marks Act, then
the remedy lies in Parliament to express its true intention in
clear and unequivocal language.
He went on (at page 686 F.C.):
From the documents on file in the Registrar's office trans
mitted to the Court under section 60 of the Trade Marks Act
the Registrar was concerned with the effect the prohibition
following upon the notification of the adoption and use of an
official mark would have on trade marks registered in the
normal manner with which the official mark conflicts. This
particular issue is not before me but it appears evident to me
that the normal commercial trade mark registered by a trader
must defer to the official mark adopted and used by a public
authority or like body because that is the legislative intent. The
remarks I have previously made that if the true intent of
Parliament was not expressed by the language employed in the
section or if Parliament should conclude that the law is not
politically expedient then the remedies as before mentioned lie
with Parliament.
It seems to me that this interpretation goes well
beyond the true intent of Parliament as expressed
by the language of subparagraph 9(1)(n)(iii) of
the statute. Subsection 9(1) is not univocal in its
prohibitions, and paragraph 9(1)(n) contains
qualifying words not found in most of the other
paragraphs. For official marks such as the Royal
Arms or various recognized emblems, there is an
absolute prohibition against adoption by others,
but the wording of paragraph 9(1)(n) is not
absolute.
Section 9 of the Act as a whole deals with
adoption, and the prohibition against adoption is in
the future tense ("No person shall adopt"). Sub-
paragraph 9(1)(n)(iii) therefore forbids the adop
tion of a trade mark "so nearly resembling as to be
likely to be mistaken for" a mark adopted by a
public authority in respect of which the Registrar
"has ... given" (past tense) public notice. Conse
quently, it does not retroactively prohibit the adop
tion of marks. It is only prospective in operation.
I do not see that this interpretation is affected
by section 11, since that provision forbids only use
of a mark adopted contrary to section 9. A mark
adopted before the giving of public notice would
not be adopted contrary to section 9.
Section 12 of the Act, dealing with registration,
speaks in the present tense ("a mark of which the
adoption is prohibited by section 9"). It therefore
renders unregistrable a not yet registered mark the
adoption of which would now run afoul of section
9, even if that mark had been adopted and used
prior to the giving of public notice under section 9.
In sum, the formulas of the adoption and regis
tration provisions are not parallel. Whatever rights
to the use of a mark may flow from its adoption
are undisturbed by the subsequent adoption and
use of a confusingly similar official mark; the right
to register the mark is, however, prohibited from
the time of the giving of the public notice.
However, since what is at issue in the case at
bar is not the continued use by the appellant of its
trade mark, but rather its registration, it is clear
from what I have said that it cannot now register
the mark. In other words, since its adoption would
not be possible now (not since March 5, 1980), its
adoption may be said to be now prohibited by
section 9, and thus it falls under the interdiction of
section 12 as to registration.
It was also argued by the appellant that the
Trial Judge erred in not deciding that the respon
dent must have demonstrated adoption and use of
its official mark before requesting public notice to
be given. But it is not necessary to go behind the
public notice, at least not, as the Trial Judge held,
in the absence of any evidence by the appellant to
suggest that the mark was not used.
The appellant also contended that the Act
should be interpreted in the light of the London
Revision of the International Convention for the
Protection of Industrial Property, which Canada
adhered to as of July 30, 1951. The provisions of
Article 6 ter of that Convention state the prohibi
tion on use of "official signs" by others "shall
apply solely in cases where the marks which con
tain them are intended to be utilized for the same
or similar classes of goods." In the case at bar the
wares are not similar. Reference was also made to
the predecessor provision of section 9, viz., para
graph 14(1)(j), of the Unfair Competition Act,
R.S.C. 1952, c. 274, which also limited the prohi
bition to similar wares. However, these contentions
cannot prevail over what I believe to be the very
explicit language of the present subparagraph
9(1)(n)(iii) to the contrary.
In the result, I would dismiss the appeal with
costs.
URIE J.A.: I agree.
HUGESSEN J.A.: I agree.
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.