Trademark Opposition Board Decisions

 

 

 

[1].             On November 19, 2001, Du Maurier Company Inc. (the Applicant) filed an application to register the trade-mark PRINCIPAL (the Mark) based upon proposed use of the Mark in Canada in association with “manufactured tobacco products” (the Wares).

 

[2].             The application was advertised for opposition purposes in the Trade-marks Journal of December 18, 2002.

 

[3].             On May 20, 2003, Rothmans Benson & Hedges Inc. (the Opponent) filed a statement of opposition against the application. The grounds of opposition, as amended, can be summarized as follows:

a.       The Mark is not registrable, contrary to s. 12(1)(b) of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended (the Act), as 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; and

b.      The Mark is not distinctive of the Applicant as it does not distinguish the wares of the Applicant nor is it adapted so as to distinguish them.

 

[4].             The Applicant filed and served a counter statement in which it denied all grounds of opposition.

 

[5].             As its evidence, the Opponent submitted an affidavit of Perry J. Lao. The Applicant filed a single set of affidavits of Edmond Ricard, Chantal Dorais, Adamo Santoianni, Timothy Owen Stevenson, Eric Weaver, Iva Morina and Gay Owens in respect of the present opposition as well as five oppositions to other applications involving the same Applicant and Opponent. Only the aspects of evidence relevant to the present opposition will be discussed herein.

 

[6].             Each party filed a written argument. Only the Applicant was represented at an oral hearing.

 

Onus and relevant dates

 

[7].             The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is, however, an initial burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.); Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)].

 

[8].             The relevant dates for assessing the circumstances in regard to each of the grounds of opposition in the present case are the following:

 

•         Ground based on s. 12(1)(b) of the Act: the filing date of the application [see General Housewares Corp. v. Fiesta Barbeques Limited (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)]

•         Ground based on non-distinctiveness of the Mark: generally accepted as being the filing date of the statement of opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].

 

[9].             I will now analyze the grounds of opposition in regard to the evidence filed in the record.

 

Section 12(1)(b) ground of opposition

 

[10].         The Opponent contends that the Mark is not registrable, contrary to s. 12(1)(b) of the Act, since:

 

“(…) the [M]ark, when considered in the context of the [W]ares is a laudatory term, and is, whether depicted, written or sounded, clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the [W]ares (…). The word PRINCIPAL is laudatory, having a meaning of most important. PRINCIPAL clearly describes or deceptively misdescribes the Applicant’s [W]ares as being most important or superior in quality relative to other manufactured tobacco products of the Applicant or other third parties.”

 

[11].         The Opponent relies on the definitions of the word “PRINCIPAL” found in various paper and web-based dictionaries available in Canada that were filed through the Lao affidavit according to which, definitions of the word “PRINCIPAL” include the following:

 

•         excellent, choice

•         of especially fine quality

•         most important, consequential or influential

•         a matter or thing of primary importance

•         first, highest, or foremost in importance, rank, worth, or degree

•         belonging to the highest group or first rank

•         prominent, leading

 

[12].         The Applicant contends for its part that the word PRINCIPAL, when used in association with tobacco products, is susceptible of ready meanings other than the one asserted by the Opponent. More particularly, the Applicant contends that according to the very same dictionary definitions filed by the Opponent, “PRINCIPAL” may be understood as to be either a noun or an adjective and suggest any of the following:

 

•                     that the tobacco products themselves are items of primary importance owing to their rarity

•                     that the tobacco products are important owing to their value

•                     that the tobacco products are the first ones produced by the Applicant

•                     that the tobacco products impart on the smoker a sense of being important

•                     that the tobacco products are produced by, on behalf of, or are specially formulated for the tastes of, persons of controlling authority or in leading positions

 

[13].         The Applicant further contends that even if consumers would immediately associate the word with the meaning “most important”, such an interpretation does not provide such consumers with any information concerning the character or quality of the Applicant’s Wares. Specifically, the Applicant contends that knowing that some unnamed person or entity believes that these tobacco products are important does not inform the consumer as to for example, the strength of the products, the quality of the products, the colour of the products, or the style of the products. The product may be deemed to be most important for any of a large number of reasons, which reasons may or may not have some relation to the character or quality of the Wares.

 

[14].         The Applicant further relies on the state of the register evidence introduced by the Owens affidavit to support its contentions that the word “PRINCIPAL” by itself does not necessarily render the entirety of a mark clearly descriptive or deceptively misdescriptive. As of the date of the search, there were 16 active registrations for trade-marks containing the word “PRINCIPAL” where the Registrar accepted the mark for registration without any need for a disclaimer to the word “PRINCIPAL”. Eight of these registrations contain disclaimers for words other than “PRINCIPAL”. One of these registrations is for the mark PRINCIPAL by itself for use in association with financial services and another is for the mark PRINCIPALS by itself for use in association with writing instruments. While none of these registrations are for tobacco products, the Applicant contends that the Registrar’s position in respect of these marks is probative, as the allegedly clearly descriptive meaning of “PRINCIPAL” advanced by the Opponent could presumably apply to all wares. While not without merit, I disagree with the Applicant’s position.

 

[15].         The issue as to whether a trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which it is used or proposed to be used must be considered from the point of view of the average purchaser of those wares or services. The trade-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. Canada (Registrar of Trade Marks) (1978), 40 C.P.R. (2d) 25 (F.C.T.D.), at 27-28 and Atlantic Promotions Inc. v. Canada (Registrar of Trade Marks) (1984), 2 C.P.R. (3d) 183 (F.C.T.D.), at 186]. “Character” means a feature, trait or characteristic of the product and “clearly” means self-evident, plain, easy to understand [see Drakett Co. of Canada v. American Home Products Corp. (1968), 55 C.P.R. 29 (Ex. Ct.), at 34].

 

[16].          The above-mentioned meanings contended by the Applicant all refer to either the word “PRINCIPAL” taken as an adjective having the sense of first, highest, or foremost in importance, rank, worth or degree or to the word “PRINCIPAL” as a noun suggesting the idea of chief. As such, the word “PRINCIPAL” has a laudatory connotation and by its very nature has an implied ellipse which is the wares with which it is associated or is to be associated with. I wish to reproduce on this point, a few passages from Mr. Justice Pigeon in S.C. Johnson & Son Ltd. v. Marketing International Ltd. (1979), 44 C.P.R. (2d) 16 (S.C.C.), and Mr. Justice Cattanach in Imperial Tobacco Ltd. v. Benson & Hedges (Canada) Inc. (1983), 75 C.P.R. (2d) 115 (F.C.T.D.), as well as of the Canadian Trade-marks Office (CIPO)’s Examination Manual, whose reproduction, though lengthy, is necessary to fully appreciate the rationale of the line of case law that guided me in the present case:

 

In S.C. Johnson & Son Ltd. v. Marketing International Ltd.:

 

“20     In his reasons for judgment, the trial Judge said (at p. 24 [32 C.P.R. (2d)]:

... it seems that the word 'off' is most usually used in connection with other words and derives its meaning from the context in which it is used. If the use is elliptical then because of its many uses the ellipses are many.

 

That being so the word 'off' standing alone bereft of context has no meaning readily ascribed to it and accordingly that word cannot be 'clearly descriptive of the nature and quality of the wares in association with which it is used' without the explanation accomplished by additional words which are not expressed and what those words might be is left to conjecture.

 

Therefore, I conclude that the registration of the word 'off!', followed by an exclamation mark as it is, was validly registered by the Wisconsin plaintiff, that it was 'adapted' to distinguish that owner's wares and has a degree of distinctiveness capable of doing so.

 

21     With respect, I have to say that the learned trial Judge was in error in the view he took of the plaintiffs' use of the word "off". He failed to consider the essential factor that this was an elliptical use of the word in association with an insect repellent and therefore, in that context, it was descriptive of the wares or of their effect. He also failed to consider that in applying to register this trade mark, Johnson U.S. was in effect claiming a monopoly for the use 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 avoiding or getting rid of something. The variety and number of trade marks ending with "off" presently on the register, show its widespread use in that sense.”

 

In Imperial Tobacco Ltd. v. Benson & Hedges (Canada) Inc.:

 

“9     The word "right" has a plethora of dictionary meanings but in use as a trade mark in association with wares those frequent definitions are such as "held in accordance with goodness", "agreeable to a standard or principle", "fit", "suitable", "satisfying the requirements of necessity, propriety or suitably", "appropriate", "fitting", "having a genuine character", "most favourable, convenient or desired", "advantageous", "preferably". The common theme, when these definitions are reduced thereto, is "suitable, proper, desirable and satisfactory". Throughout there is the thread of meeting some standard.

 

10     In Funk & Wagnalls Handbook of Synonyms and Antonyms the synonym to "right" as an adjective are "appropriate, fitting, correct, good, proper amongst others" and the antonyms such as "bad, crooked, evil, false, improper and wrong" emphasing the contrary meaning of "right".

 

11     Thus the word "right", just as the word "extra" which was the subject of like comment in Re Molson Companies Ltd. and John Labatt Ltd. et al. (1981), 58 C.P.R. (2d) 157 at p. 160, 129 D.L.R. (3d) 201, has the laudatory connotation that wares modified thereby meet a specified standard and are desirable and satisfactory.

 

12     In commenting on this extract the hearing officer said it was held that the word "extra" standing alone was unregistrable in association with any wares but omitted to comment on the continued quotation that the word "extra" was unregistrable in association with wares because it signified an enhancement of a character or quality of the wares in a material aspect.

 

13     Words having a laudatory connotation from their very nature have an implied ellipse which is the wares with which they are associated or are to be associated with.

 

14     In the matter considered by Mr. Justice Pigeon in S. C. Johnson & Son Ltd. v. Marketing Int'l Ltd. (1979), 44 C.P.R. (2d) 16, 105 D.L.R. (3d) 423, [1980] S.C.R. 99, the word "off" was not laudatory per se and so descriptive but rather in the context of the wares with which it was associated could only have one ellipse. "Off" could not be found to be descriptive without that particular ellipse.

 

15     That was the subject of the comment made by Mahoney J. in Thomson Research Associates Ltd. v. Registrar of Trade Marks (1982), 67 C.P.R. (2d) 205.

 

16     As in the EXTRA case or Molson v. John Labatt, cited above, the word "right" has a like laudatory connotation with respect to the wares with which it is proposed to be associated and the present appeal is indistinguishable from that case.

 

17     From this it follows that the word "right" to be used as a trade mark in association with cigarettes is clearly descriptive or deceptively misdescriptive of the character or quality of these wares and as such is precluded from registration.”

 

In CIPO’s Examination Manual:

 

“IV.4.8 Character or Quality

A trade-mark is not registrable if it is 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. As to what constitutes the character of the wares or services, the examiners may be guided by the words of Cattanach J. in Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 at p. 34, where he states that "...the word 'character' as used in s. 12(1)(b) must mean a feature, trait or characteristic of the product."

(…)

In the Ultra Fresh decision, Thomson Research Associates Ltd. v. Registrar of Trade Marks (1982), 67 C.P.R. (2d) 205, the function of the wares was held to be clearly descriptive of their character. Mahoney J. stated at p. 208:

I agree with the respondent that 'ultra fresh' is clearly descriptive. It is not descriptive of the bacteriostats and fungistats themselves but it does clearly describe, or deceptively misdescribe, the condition of the products, e.g., the underwear, after treatment with those bacteriostats and fungistats.

And further:

'Ultra fresh' does not merely suggest a characteristic of the bacteriostats and fungistats at all; it clearly suggests the principal, if not only, effect of their application to other wares, in other words, their function.

Words which are common to a particular trade, such as "Fashions" or "Pack" (Pak), and which express a special or distinguishing attribute of wares or services, are seen as clearly descriptive of the character of the wares and are not registrable. However, a composite mark containing these clearly descriptive words may be registrable if a disclaimer clause is inserted in the application, and providing the composite mark, when considered as a whole, contains registrable subject matter.

(…)

Marks such as Superior, Excellent, Quality, Best, Ultra, Super, Supreme or Perfect, which laud the merits or superiority of the wares, are clearly descriptive of their quality and are not registrable except upon receipt of evidence of acquired distinctiveness or secondary meaning pursuant to subsection 12(2) or proof that the mark applied for is not without distinctive character in Canada pursuant to section 14 of the Act. See sections IV.10 and II.7.8 of this manual. However, such words may be made the subject matter of a disclaimer, providing the word is part of a composite mark, and "...there remained a distinctive feature, or a pictorial representation, which would make the mark as a whole distinctive from other marks" Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976), 31 C.P.R. (2d) 103 at p. 109.”

 

[17].         Having regard to the foregoing analysis, I find that the Opponent has discharged its initial evidential burden necessary to put into issue the allegations that the Mark is clearly descriptive or deceptively misdescriptive of the character or quality of the Wares. I further find that the Applicant has failed to show, on a balance of probabilities that the applied for Mark, on first impression, does not clearly describe, in a manner that is easy to understand, a certain characteristic of the Wares. Accordingly, the s. 12(1)(b) ground of opposition succeeds.

 

Non-distinctiveness ground of opposition

 

[18].         The Opponent contends that the Mark is not distinctive of the Applicant as it does not distinguish the Wares of the Applicant nor is it adapted so as to distinguish them. At the oral hearing, the Applicant has contended that this ground of opposition was not properly pleaded. I agree with the Applicant that the wording of that ground lacks specificity. However, considering the statement of opposition as a whole as well as the evidence filed in the record, I interpret this pleading as contending that the applied for Mark is incapable of distinguishing the Wares of the Applicant because the Mark is clearly descriptive or deceptively misdescriptive [see Novopharm Ltd. v. AstraZeneca AB et al. (2002), 21 C.P.R. (4th) 289, at 293 (F.C.A.)].

 

[19].         Having found that the Applicant’s proposed use Mark is unregistrable under s. 12(1)(b), I necessarily also find that it is not distinctive. The non-distinctiveness ground of opposition accordingly also succeeds.

 

Disposition