IN THE MATTER OF AN OPPOSITION by Imperial Tobacco Limited to application No. 776,408 for the trade-mark GOLD LEAF filed by Rothmans, Benson & Hedges Inc.
On February 22, 1995, the applicant, Rothmans, Benson & Hedges Inc., filed an application to register the trade-mark GOLD LEAF for "manufactured tobacco products" based on proposed use. The application was advertised for opposition purposes on March 20, 1996. The applicant has disclaimed the right to the exclusive use of the word LEAF apart from the trade-mark.
The opponent, Imperial Tobacco Limited, filed a statement of opposition on April 18, 1996. The only ground of opposition is that the trade-mark is not registrable having regard to Section 12(1)(b) because the words GOLD LEAF are either clearly descriptive or deceptively misdescriptive of the character of manufactured tobacco products in that the mark clearly describes or deceptively misdescribes the wares as comprising (tobacco) leaf that is gold in colour.
The applicant filed and served a counterstatement. The opponent filed as its evidence the affidavits of Christine Genge and Margaret Kruszewski. The applicant filed as its evidence the affidavits of Janice Quinn and Stephen Dilworth. Both parties filed a written argument and an oral hearing was conducted at which both parties were represented.
The issue of descriptiveness must be considered from the point of view of the ordinary user or dealer of manufactured tobacco products. Further, in determining whether the trade-mark is descriptive, the mark must not be dissected into its component elements and carefully analysed, but rather must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25 at pp. 27-8; Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183 at p. 186]. The material date for considering descriptiveness is the date of my decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)]. Although there is a legal burden upon the applicant to show that its mark is registrable, the opponent must first adduce sufficient evidence to support its claim that the mark is clearly descriptive or deceptively misdescriptive.
Ms Genge, a student-at-law, introduces copies of articles that she located when searching for use of the words GOLD LEAF or GOLDEN LEAF in association with tobacco. Her findings are, in my view, rather sparse. She has located: a 1979 publication, apparently from the Philippines, which refers to tobacco as the Agolden leaf@; a book printed in Canada in 1968 entitled Tobacco in Canada which discusses how a new curing principle was introduced into Canada in 1900 Athat turned the normally dark air-cured leaf, to a beautiful golden yellow or rich mahogany hue@ and makes at least one reference to Agolden leaf@; a 1986 publication (which appears to emanate from an organisation in Vienna) entitled Mutation Breeding Newsletter which refers to a ASmall Golden Leaf@ variety under the heading ACell selection of tobacco mutants resistant to Phytophthora parasitic var. nicotiana@; internet listings for four publications available at foreign libraries bearing the following titles: The golden leaf; The Golden leaf: a look at tobacco=s economic impact on North Carolina; Golden reef to golden leaf: a history of Dimbulah; and Leaf of gold; the story of Rhodesian tobacco; and two abstracts concerning the resistance of tobacco that refer to Gold Leaf and Golden-leaved. The applicant has pointed out that the abstracts use the words Gold Leaf and Golden-leaved interchangeably as the translation for a single Russian word and so it is not clear which of the two is the better translation.
I rather doubt that the materials located by Ms Genge are familiar to the average Canadian consumer of manufactured tobacco products or even to the average Canadian tobacco retailer.
Ms Kruszewski has provided a copy of the prosecution file for Canadian trade-mark application No. 218,236. That application was filed in 1952 for GOLD LEAF for tobacco and smokers= supplies. It was refused on the basis that it was considered to be contrary to Section 26(1)(c) of The Unfair Competition Act. Section 26(1)(c) of The Unfair Competition Act is remarkably similar to Section 12(1)(b) of the Trade-marks Act but the Opposition Board is not bound by prior decisions of Trade-mark Examiners. Even if it were, the material date with respect to the present application differs from that in application No. 218,236 by almost fifty years. In addition, affidavit evidence has been filed with respect to the present proceedings that was not before the Examiner and references in the file of application No. 218,236 to comments received from the Department of Agriculture are inadmissible in the present proceedings as hearsay.
Does the evidence of Ms Genge and Ms Kruszewski satisfy the opponent=s initial evidential burden? If they do, they do so just barely.
Ms Quinn, a paralegal, introduces various dictionary definitions to demonstrate that the primary meaning of Agold leaf@ relates to the use of thin sheets of gold for decorative purposes. Dictionary definitions of the word Agold@ are also provided, which show that Agold@ has a colour meaning, amongst other meanings.
Ms Quinn also introduces examples of various GOLD LEAF non-tobacco products which she has purchased and articles and the like which refer to gold leaf in the decorative sense. Telephone listings for certain companies who use GOLD LEAF in their name have also been provided.
Mr. Dilworth, a trade-mark searcher, provides details of marks on the Canadian Trade-marks Register for use in association with tobacco or tobacco-related products, which include either the word GOLD or GOLDEN without a disclaimer of such words. There are 21 such GOLD marks and 18 such GOLDEN marks. The opponent itself owns the following marks: CANADIAN GOLD, GOLD BLOCK, GOLD FLAKE, OLD GOLD CIGARETTES & Design, and PLAYER=S GOLD.
Mr. Dilworth also provides details of GOLD LEAF marks on the Register for diverse wares and services.
The fact that there are many other GOLD marks registered for tobacco products without a disclaimer of the word GOLD does not decide the issue at hand. It does appear that no party can monopolize the use of the word GOLD with respect to tobacco products but the question here is whether any party ought to be able to monopolize the use of the words GOLD LEAF with respect to tobacco products. I note that in Mitel Corporation v. Registrar of Trade-marks (1984), 79 C.P.R. (2d) 202 at 206 (F.C.T.D.), the Court commented that the authorities are conflicting concerning the relevancy of the state of the Register to the issue of non-registrability based on descriptiveness.
At the oral hearing, the opponent submitted that there are three reasons why the trade-mark is objectionable under Section 12(1)(b). First, it was said that the mark refers to a variety of tobacco known as Gold Leaf or Golden Leaf. Second, it was said that the mark refers to tobacco that has been cured to a golden colour. Third, it was said that in the event that GOLD is not interpreted as referring to either a colour or a variety, GOLD has a laudatory sense that results in the mark being clearly descriptive. In my mind, the fact that there are three possible descriptive interpretations of the mark leads to a conclusion that the mark is not clearly descriptive. Bearing in mind that Aclearly@ means Aeasy to understand, evident or plain@ in the context of Section 12(1)(b) [see Thorold Concrete Products Ltd. v. Registrar of Trade Marks (1961), 37 C.P.R. 166], how can the mark=s meaning be evident if multiple meanings are attributable to it in the context of the applied-for wares? There is no basis on which I can conclude that one of the three meanings put forward by the opponent would dominate in the mind of the average dealer or consumer.
I would point out that the opponent pleaded that the applicant=s mark is not registrable because it clearly describes or deceptively misdescribes the wares as comprising (tobacco) leaf that is gold in colour. Accordingly, this opposition cannot succeed on the basis that GOLD LEAF is descriptive in some other, unpleaded way, e.g. as referring to a variety of tobacco or in a laudatory sense.
The applicant=s evidence demonstrates that the words GOLD LEAF have a combined meaning recognized in current dictionaries, namely Agold beaten into thin sheet@ or Aa sheet of gold ordinarily varying from four to five millionths of an inch in thickness that is used esp. for gilding@. Although this meaning does not relate to Amanufactured tobacco products@, it appears to be a common enough meaning as to be likely to be recognized by members of the Canadian public. Of course, anyone knowing this meaning of Agold leaf@ would not expect tobacco products to be decorated with a sheet of gold. Rather, they would likely interpret GOLD LEAF as suggesting an air of elegance or luxury.
The opponent has referred to the Federal Court Trial Division=s decision in Mitel Corporation v. Registrar of Trade-marks, supra, in support of its submission that alternate meanings are irrelevant if they are unrelated to the wares in issue. However, that decision is distinguishable in that the mark in issue there, SUPERSET, did not have a dictionary definition (apart from the definitions for its component words). Standing alone, the word SUPERSET is devoid of any specific meaning and the meaning which would be attributed to it would be largely attributable to the context in which it was perceived. This is not the case with respect to Agold leaf@ in view of its dictionary meaning.
I note that there is no evidence that it is common in the trade to refer to manufactured tobacco products by reference to either leaf or colour. In fact there is no evidence at all of the industry=s commercial practice. For reasons best known to themselves, neither party chose to introduce evidence from an individual familiar with the tobacco industry.
For all of the foregoing reasons, I find that the applicant has satisfied the onus on it to show that GOLD LEAF, when considered in its entirety as a matter of immediate impression, does not clearly describe or deceptively misdescribe manufactured tobacco products as comprising (tobacco) leaf that is gold in colour.
Having been delegated by the Registrar of Trade-marks by virtue of Section 63(3) of the Trade-marks Act, I reject the opponent's opposition in view of the provisions of Section 38(8) of the
Act.
DATED AT TORONTO, ONTARIO, THIS 1st DAY OF MARCH, 1999.
Jill W. Bradbury
Hearing Officer
Trade-marks Opposition Board