[2002] 1 F.C. 231
T-2583-97
2001 FCT 695
Dumont Vins & Spiritueux Inc. (Appellant)
v.
Canadian Wine Institute and The Registrar of Trade-marks (Respondents)
Indexed as: Dumont Vins & Spiritueux Inc. v. Canadian Wine Institute (T.D.)
Trial Division, Dubé J.—Montréal, June 11; Ottawa, June 22, 2001.
Judges and Courts — Stare decisis — Appeal from Trade-marks Opposition Board’s dismissal of application for registration of opaque white bottle of hoch (Alsace) type as trade-mark in association with wines — In action for injunction against Celliers du Monde Inc. based on alleged delict of passing off, Quebec Superior Court noting Dumont not establishing distinguishing guise allowing it to claim exclusivity — In injunction proceedings based on alleged passing off, F.C.A. holding issue of unregistered trade-mark res judicata — Board holding bound by principle of stare decisis — Stare decisis applies only to ratio decidendi — Quebec Superior Court deciding whether unregistered trade-mark infringed; whether Celliers committing delict of passing off — Comments re: registrability obiter at most — Board deciding registrability — Relevant findings in Board’s decision completely different from those in Federal Court, Quebec Superior Court — Board erred in relying on stare decisis — Furthermore, since registration not within jurisdiction of Quebec Superior Court, Board not bound by principle of judicial deference.
Practice — Res judicata — Appeal from Trade-marks Opposition Board’s dismissal of application for registration of opaque white bottle of hoch (Alsace) type as trade-mark in association with wines, on ground of res judicata — Rule of three identities essential to doctrine of res judicata (same cause between same parties, and same object) not complied with — Parties, object not same before Board, Superior Court — Board erred in relying on res judicata.
Trade-marks — Registration — Appeal from T.M.O.B.’s dismissal of application for registration of opaque white bottle of hoch (Alsace) type in association with wines — Definition of trade-mark including distinguishing guise — Distinguishing guise meaning shaping of wares, containers, or mode of packaging wares, appearance of which used to distinguish wares — S. 13(1) permitting registration of distinguishing guise only if so used in Canada as to have become distinctive at date of filing application for registration; and exclusive use by applicant not likely to unreasonably limit development of any art, industry — Applicant meeting burden of proving mark distinctive at date of filing application — Uncontradicted evidence at time of registration, opaque white bottle automatically associated with applicant’s product by Quebec consumers — No evidence registration would unduly limit wine marketing industry — American exhaustion of colours theory rejected — Colour combined with form, size can serve as mark — Whether colour linked to commercial origin of product question of fact.
This was an appeal from a decision of the Trade-marks Opposition Board dismissing the appellant’s application for registration of an opaque white bottle of the hoch (Alsace) type as a trade-mark in association with wines, used in Canada since October 1984. The appellant distributes wine, mostly bottled in Quebec, and sold primarily through licensed grocers. In October 1984, Dumont began marketing an opaque white bottle of wine of the hoch (Alsace) type under the mark “L’Oiseau Bleu”. The mark “L’Oiseau Bleu” was registered on August 16, 1985. In 1989 Dumont filed two applications for registration, which became the subject of three oppositions, two by Celliers du Monde Inc., a competitor, and the other by Canadian Wine Institute. Dumont and Celliers have clashed in the past over the marketing of their respective wines. In Dumont Vins & Spiritueux Inc. v. Celliers du Monde Inc., [1990] R.J.Q. 556 (S.C.) (Dumont I) an injunction was issued against Celliers because it had committed the delict of passing off, but it was noted that Dumont had not established a distinguishing guise that would allow it to claim the exclusivity of the opaque white bottle of the hoch (Alsace) type. The issue of trade-mark infringement was not formally disposed of. In October 1990, Dumont commenced new proceedings for an injunction against Celliers in the Federal Court. The Court of Appeal held (Dumont II) that the issue of the unregistered trade-mark was res judicata and that the Court had no jurisdiction to hear the matter with respect to the delict of passing off. Neither Court had to rule directly on the issue of whether the Dumont mark was registrable. The Board rejected the registration, holding that it was bound by the principle of stare decisis or res judicata.
“Trade-mark” is defined in Trade-marks Act, section 2 as including a distinguishing guise, which means a shaping of wares or their containers, or a mode of wrapping or packaging wares, the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares manufactured by him from those manufactured by others. Subsection 13(1) provides that a distinguishing guise can only be registered if it has been so used in Canada as to have become distinctive at the date of filing an application for its registration; and the exclusive use by the applicant of the distinguishing guise is not likely unreasonably to limit the development of any art or industry.
The issues were: (1) whether the doctrine of res judicata applied; (2) whether the Board was bound by the doctrine of stare decisis; and (3) whether the proposed mark was distinctive.
Held, the appeal should be allowed.
Generally, on an appeal from a decision of the Board, the Court must determine whether the Board was clearly wrong or unreasonable, taking into account the tribunal’s expertise. The Board’s decision should not be lightly set aside when it involves factual determinations, central to its specialized competence. In this case, the Board’s decision involved a question of law, and its interpretation was required to be correct.
(1) The three identities essential to the application of the doctrine of res judicata are: the demand must be based on the same cause between the same parties, and the object must be the same. Of course, the court that made the decision must have had jurisdiction to do so. The rule of the three identities was not complied with as the cause, parties and object were not the same before the Board member as they were before the Superior Court. The Board therefore erred in relying on the doctrine of res judicata.
(2) The principle of stare decisis originates in the Latin phrase stare decisis et non quieta movere, translated as “to adhere to the judge-made rules and not to challenge them by surreptitiously altering them”. In theory, the rule of stare decisis only applies to the ratio decidendi, the reasons on which the decision is based. The Quebec Superior Court had to determine whether the unregistered trade-mark had been infringed and whether Celliers committed a delict of passing-off, while the Board was required to consider the registrability of Dumont’s mark. Although the concept of distinguishing guise was relevant to the three proceedings, it had to be analyzed independently in light of the evidence filed in each case. The Quebec Superior Court found that the mark was not sufficiently distinctive to be infringed, but that it was sufficiently distinctive to be protected against a passing off. The Board refrained from any analysis, merely citing res judicata, stare decisis and judicial deference. The Quebec Superior Court did not even discuss the registrability of a trade-mark. At most, comments on this subject were obiter. The relevant findings in the Board’s decision were completely different from those in Dumont I and II. Furthermore, the Quebec Superior Court could not rule on the registrability of the trade-mark since the question was not within its jurisdiction. The Board therefore erred in relying on the doctrine of stare decisis.
Because the registration of a trade-mark is not within the jurisdiction of the Superior Court, the Board ought not to have considered itself bound by the principle of judicial deference.
(3) Dumont bore the burden of proving that the mark it used had become distinctive at the date of filing of the application, pursuant to subsection 13(1), and that burden remained the same on appeal. The person opposing the registration of a trade-mark bears initial burden of presenting evidence in support of each of its grounds of opposition. Dumont presented relevant, persuasive, uncontradicted evidence to show that its mark was distinctive at the time of its application for registration. Based on such uncontradicted evidence, at the time of the application for registration, five years after its introduction on the market, the opaque white wine bottle of the hoch (Alsace) type had acquired a second meaning in the mind of the Quebec consumer, namely that it was automatically associated with the applicant’s product, “L’Oiseau Bleu”.
The monopoly requested by Dumont concerned only Quebec. There was no evidence that the registration of the trade-mark would unduly limit the wine-marketing industry. Dumont’s use of an opaque white bottle of the hoch (Alsace) type to bottle its wine was an innovation in the wine business in which bottles are generally dark: black, dark green or amber.
Canadian Wine Institute cited the exhaustion of colours theory in support of its submission on unreasonable market limitations. That theory is derived solely from an American decision. It has never been in vogue in Canada, and no longer is in the United States. The Supreme Court of Canada has accepted that colour combined with form and size can serve as a mark, and in each case, the issue of whether the colour is linked to the commercial origin of the product is a question of fact.
STATUTES AND REGULATIONS JUDICIALLY CONSIDERED
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 “trade-mark”, “distinguishing guise”, 13(1).
CASES JUDICIALLY CONSIDERED
applied:
Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120; (1992), 95 D.L.R. (4th) 385; 44 C.P.R. (3d) 289; 143 N.R. 241; 58 O.A.C. 321.
distinguished:
Dumont Vins & Spiritueux Inc. v. Celliers du Monde Inc., [1990] R.J.Q. 556 (Sup. Ct.); Dumont Vins & Spiritueux Inc. v. Celliers du Monde Inc., [1992] 2 F.C. 634 (1992), 42 C.P.R. (3d) 197; 139 N.R. 357 (C.A.).
not followed:
Campbell Soup Co. v. Armour & Co., 175 F.2d 795 (3rd Cir. 1949).
referred to:
Young Drivers of Canada Enterprises Ltd. v. Chan (1999), 2 C.P.R. (4th) 329; 175 F.T.R. 99 (F.C.T.D.); Garbo Group Inc. v. Harriet Brown & Co. (1999), 23 Admin. L.R. (3d) 153; 3 C.P.R. (4th) 224; 176 F.T.R. 80 (F.C.T.D.); Rocois Construction Inc. v. Québec Ready Mix Inc., [1990] 2 S.C.R. 440; (1990), 31 Q.A.C. 241; 112 N.R. 241; Roberge v. Bolduc, [1991] 1 S.C.R. 374; (1991), 78 D.L.R. (4th) 666; 39 Q.A.C. 81; 123 N.R. 1; Verdun (Ville) v. Burton, [1998] A.Q. No. 3053 (C.A.) (QL); Gillette Canada Inc. v. Mennen Canada Inc. (1991), 40 C.P.R. (3d) 76; 50 F.T.R. 197 (F.C.T.D.); Triple-C-Imports Ltd. v. M & A Candy Co. (1990), 29 C.P.R. (3d) 559 (T.M.O.B.).
AUTHORS CITED
Mayrand, Albert. Dictionnaire de maximes et locutions latines utilisées en droit québécois, 3e éd. Cowansville (Qué.): Éditions Yvon Blais, 1994.
APPEAL from a decision of the Trade-marks Opposition Board (Canadian Wine Institute v. Dumont Vins & Spiritueux Inc., [1997] T.M.O.B. No. 242 (QL)) dismissing the appellant’s application for registration of an opaque white bottle of the hoch (Alsace) type as a trade-mark for use in association with wines, on the ground of res judicata and stare decisis. Appeal allowed.
APPEARANCES:
Bruno Barrette for appellant.
Paul Paradis for respondents.
SOLICITORS OF RECORD:
Brouillette Charpentier Fortin, Montréal, for appellant.
Pinsonnault Torralbo Hudon, Montréal, for respondents.
The following is the English version of the reasons for judgment rendered by
[1] Dubé J.: The appellant (Dumont) appeals from the decision by the member of the Canadian Trade-Marks Opposition Board (the Board member) dated October 1, 1997 [[1997] T.M.O.B. No. 242 (QL)], dismissing its application for registration No. 625,641 of the trade-mark “Bouteille & Dessin” (the mark) in association with wines and used in Canada since at least October 1984. That decision was made pursuant to an opposition proceeding brought by the respondent Canadian Wine Institute (Canadian Wine).
1. The Facts
[2] Dumont distributes wine, which for the most part is bottled in Quebec, and sells it primarily through the network of licensed grocers. In October 1984, Dumont began marketing an opaque white bottle of wine of the hoch (Alsace) type under the mark “L’Oiseau Bleu”, a wine that became the best-selling light white wine in Quebec. The mark “L’Oiseau Bleu” was registered on August 16, 1985.
[3] On February 16, 1989, Dumont filed two applications for registration with the Registrar of Trade-marks; they became the subject of three oppositions, two by Celliers du Monde Inc. (Celliers), a competitor of the applicant, and the other by Canadian Wine. The Trade-marks Opposition Board upheld the three oppositions on October 1, 1997. This is an appeal from the decision pertaining to the opposition by Canadian Wine and concerns only the application for registration of the aforementioned mark.
[4] Dumont and Celliers have clashed in the past over the marketing of their respective wines, and particularly over the distribution of wine in an opaque white bottle of the hoch (Alsace) type (see Dumont Vins & Spiritueux Inc. v. Celliers du Monde Inc., [1990] R.J.Q. 556 (Sup. Ct.) (Dumont I); and Dumont Vins & Spiritueux Inc. v. Celliers du Monde Inc., [1992] 2 F.C. 634 (C.A.) (Dumont II)).
[5] In Dumont I, Forget J. of the Quebec Superior Court found in favour of Dumont and issued the requested injunction against Celliers because it had committed the delict of passing off, but he noted that Dumont had not established a distinguishing guise that would allow it to claim the exclusivity of the opaque white bottle of the hoch (Alsace) type. However, he did not formally dispose of the issue of trade-mark infringement.
[6] In October 1990, Dumont commenced new proceedings for an injunction against Celliers in the Federal Court. The Court of Appeal held, in Dumont II, that the issue of the unregistered trade-mark was res judicata and that the Court had no jurisdiction to hear the matter with respect to the delict of passing off.
[7] Neither court had to rule directly on the issue of whether the Dumont mark was registrable.
2. The Board member’s decision
[8] On October 1, 1997, the Board member rejected the registration and allowed the opposition of Canadian Wine, stating as follows [at paragraph 4]:
The Court’s findings in Dumont I concerning Dumont’s claim to exclusive rights in the distinguishing guise. BOTTLE DESIGN are findings in rem and are therefore relevant in the instant proceeding. In the Cellier opposition, above, I refused Dumont’s trade-mark applications for the following reasons:
In my view, I am obliged to follow the finding in Dumont I that the applicant cannot claim exclusive rights to its BOTTLE DESIGN marks, whether under the principle of stare decisis or res judicata. Even if I were not obligated to follow Dumont I, then I would still be required to give due deference to the Superior Court of Quebec under the principle of judicial comity. The result would be the same under any of the above mentioned principles namely, that the distinguishing guise marks which are the subject of application nos. 625,641 and 625,642 were not registrable for Dumont’s wine as of the relevant date.
Applying the above reasoning to the instant proceeding, I find that the applied for distinguishing guise was not registrable for Dumont’s wines as of February 16, 1989. The subject application is therefore refused. It is therefore not necessary for me to decide the other grounds of opposition pleaded by CWI. [Emphasis added.]
3. Dumont’s submissions
[9] Dumont believes that the Board member should have given the parties the opportunity to be heard on the doctrine of res judicata instead of raising the issue of his own initiative.
[10] Dumont submits that the doctrine of res judicata does not apply in this case. Neither the operative part of the judgment in Dumont I nor the reasons refer to the registrability of the mark, an issue on which the Superior Court had no jurisdiction to rule. In fact, Dumont argues that Forget J. in Dumont I virtually acknowledged the distinctiveness of the mark by allowing the action in passing off, since distinctiveness is one of the criteria for succeeding in such an action. The three identities (cause, parties, object) necessary for the doctrine of res judicata to apply are not present in this case.
[11] The Board member also erred in stating that he was bound by the doctrine of stare decisis. Dumont contends that the Board member is not bound by a decision of the Superior Court, since that court lacks jurisdiction to hear an appeal from his decision, and is instead part of a parallel jurisdiction. Furthermore, the Board member should not have felt bound by the principle of judicial deference.
[12] As to the mark itself, Dumont submits that the evidence shows it had a distinctive character in Quebec as of the date the application was filed and that none of the evidence introduced by Canadian Wine supports the contrary view. The sales of bottles and the investment in marketing by Dumont go back prior to 1984. The evidence also shows that Dumont was the first to use the mark in connection with the sale of wine. Lastly, Dumont’s exclusive use of the mark will not unreasonably restrict the development of the wine industry in Quebec.
4. Canadian Wine’s submissions
[13] Canadian Wine submits that Dumont has not discharged its onus of proving that the mark was registrable as of the date of filing of the application for registration. Furthermore, the lack of distinctiveness of the mark has already been decided by the Superior Court in Dumont I and affirmed by the Federal Court of Appeal in Dumont II.
[14] However, Canadian Wine concedes that the doctrine of res judicata is inapplicable in the circumstances, given the absence of the three identities. But in its view, the rule of stare decisis ought to apply, even to findings of fact. It is inconceivable that Forget J., in Dumont I, could have concluded that Dumont had failed to establish the existence of a distinguishing guise regarding the mark in February 1989, and that another court or tribunal could reach the opposite conclusion in regard to the same bottle of the same date.
[15] Canadian Wine further argues that it is wrong to claim that the Superior Court lacked jurisdiction to determine whether Dumont had established a distinguishing guise that would allow it to claim exclusivity for the mark. Moreover, it is not the distinctiveness of the bottle that was recognized by the Superior Court in its analysis of the delict of passing off, but rather the fact that Celliers was attempting to pass off its goods for those of Dumont by using various characteristics of the Dumont bottle.
[16] Celliers argues that Dumont has not proved that it was using the opaque white bottle of the hoch (Alsace) type to distinguish its products from the others; rather, its use was to embellish its presentation and promote sales. There is nothing in the evidence that establishes that Dumont adopted its mark in order to distinguish its products. There is no presumption in this matter.
[17] Lastly, Canadian Wine submits that Dumont has failed to discharge its onus of establishing that no unreasonable limitation of the market is to be feared from the registration of an opaque white bottle. Canadian Wine also maintains its opposition based on the theory of exhaustion of colours.
5. Distinctiveness
[18] Section 2 of the Trade-marks Act, R.S.C., 1985, c. T-13 (the Act) defines the concept of trade-mark as follows:
2. …
“trade-mark” means
(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade-mark;
[19] This section also provides that a distinguishing guise means:
2. …
(a) a shaping of wares or their containers, or
(b) a mode of wrapping or packaging wares
the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares … manufactured [or] sold … by him from those manufactured [or] sold … by others;
[20] Subsection 13(1) of the Act stipulates that a distinguishing guise can be registered only under the following conditions:
13. (1) A distinguishing guise is registrable only if
(a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and
(b) the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of any art or industry.
[21] In this case, the relevant date for reviewing the distinctiveness of the mark in question is February 16, 1989. The injunction action in the Superior Court was brought within two weeks after the application for registration and the injunction was granted to Dumont because Celliers committed the delict of passing off.
[22] Generally speaking, the role of this Court on an appeal from a decision of the Board member is to determine whether his decision is clearly wrong or unreasonable. However, the Court must take into account the expertise of the tribunal. The Board member’s decision should not be set aside lightly when it involves factual determinations, central to his specialized competence. But in this case, it involves a question of law, and his interpretation must be correct (Young Drivers of Canada Enterprises Ltd. v. Chan (1999), 2 C.P.R. (4th) 329 (F.C.T.D.); and Garbo Group Inc. v. Harriet Brown and Co. (1999), 23 Admin. L.R. (3d) 153 (F.C.T.D.)).
5. Res judicata
[23] This doctrine is clearly defined in the case law. The three identities essential to its application are precise: the demand must be based on the same cause between the same parties, and the object must be the same. In addition to these three well-known identities, there is, of course, the requirement that the court that made the decision had jurisdiction to do so (Rocois Construction Inc. v. Québec Ready Mix Inc., [1990] 2 S.C.R. 440; Roberge v. Bolduc, [1991] 1 S.C.R. 374; and Verdun (Ville) v. Burton, [1998] A.Q. No. 3053 (C.A.) (QL)).
[24] Counsel for Canadian Wine conceded at the outset that in this case the rule of the three identities was not fully complied with. The cause, the parties and the object were not the same before the Board member as they were before the Superior Court. The Board member therefore erred in law in relying on the doctrine of res judicata.
6. Stare decisis
[25] The Board member also stated that he was bound by the principle of stare decisis. This principle originates in the Latin phrase stare decisis et non quieta movere, defined by A. Mayrand as [translation] “to adhere to the judge-made rules and not to challenge them by surreptitiously altering them”. (A. Mayrand, Dictionnaire de maximes et locutions latines utlisées en droit québécois, 3rd ed. (Cowansville: Éditions Yvon Blais, 1994), at page 493).
[26] In theory, the rule of stare decisis only applies to the ratio decidendi, the reasons on which the decision is based. A court’s obiter dictum cannot be imposed on a lower court or tribunal.
[27] The Superior Court had to determine whether the unregistered trade-mark had been infringed and whether Celliers committed a delict of passing off, while the Board member was required to consider the registrability of Dumont’s mark. Although the concept of distinguishing guise was relevant to the three proceedings, it had to be analyzed independently in light of the evidence filed in each case. Forget J. found that the mark was not sufficiently distinctive to be infringed but that it was nevertheless sufficiently distinctive to be protected against a passing off. The Board member refrained from any analysis and merely cited res judicata, stare decisis and judicial deference.
[28] In this case, it must be kept in mind that Dumont I in no way determined the parameters of the applicable law in the action: the registrability of a trade-mark was not even discussed. At most, Mr. Justice Forget’s comment on that subject was obiter; it was not part of the ratio decidendi directly explaining his decision.
[29] In this case, the relevant findings in the Board member’s decision were completely different from those in Dumont I and Dumont II. In Dumont I and Dumont II, the conclusions that were sought were the recognition of a breach of an unregistered trade-mark and the granting of an injunction for passing off. The proceeding before the Board member involved an opposition to the registration of a trade-mark. Furthermore, Forget J. could not rule on the registrability of the trade-mark since the question was not within his jurisdiction.
[30] The Board member therefore erred in law in relying on the doctrine of stare decisis.
7. Judicial deference
[31] The Board member also stated he was bound by the principle of judicial deference. The parties did not spend much time discussing this principle but, in view of my conclusions in regard to the principles of res judicata and stare decisis in this case, there is no need to dwell on the matter.
[32] Suffice it to note that because the registration of a trade-mark is not within the jurisdiction of the Superior Court, the Board member could not consider himself bound by the principle of judicial deference in this area.
[33] It is necessary, then, to consider the application for registration on its merits.
8. Analysis of distinctiveness
[34] In support of its application for registration, Dumont filed the affidavits of Gilles Mélançon, Dumont’s marketing director, and Jean-Bernard Belisle, president of Groupe Everest Inc. and of Sérum Recherches et Sondage Inc. In support of its opposition, Canadian Wine filed the affidavit of its president, John F. Corbett. At the hearing before the Board member, Dumont filed as additional evidence a second affidavit of Jean-Bernard Belisle, three affidavits of Pierre Rémillard, Dumont’s product manager, another affidavit of Gilles Mélançon and four affidavits from consumers.
[35] No reply evidence was filed by Canadian Wine and no cross-examination occurred before the Board member. Both parties filed written submissions, but only Dumont was represented at the hearing.
[36] In this Court, Dumont filed as additional evidence an affidavit of François Fréchette, a competitor of the applicant. No additional evidence was filed by Canadian Wine, and no cross-examination was held before this Court.
[37] It is clear that Dumont had the burden of proving that the mark it used had become distinctive at the date of filing of the application pursuant to subsection 13(1) of the Act, and that this burden remains the same on appeal (see Gillette Canada Inc. v. Mennen Canada Inc. (1991), 40 C.P.R. (3d) 76 (F.C.T.D.), at page 84).
[38] Moreover, it is well settled that the person opposing the registration of a trade-mark has an initial burden to present evidence in support of each of its grounds of opposition (see Triple-C-Imports Ltd. v. M & A Candy Co. (1990), 29 C.P.R. (3d) 559 (T.M.O.B.), at page 561).
[39] In my view, Dumont has presented relevant, persuasive and uncontradicted evidence to show that its mark was distinctive at the time of its application for registration.
[40] The affidavit of Mr. Corbett of Canadian Wine describes purchases made in Ontario, while Dumont’s application for registration is limited to the territory of Quebec. Furthermore, none of the photographs filed in support of Mr. Corbett’s affidavit corresponds to white wine marketed in a wine bottle of the hoch (Alsace) type combined with the opaque white colour. No evidence was filed by Canadian Wine to show the use of an opaque white bottle of the hoch (Alsace) type on Quebec territory prior to the usage by Dumont.
[41] Dumont’s evidence also shows that since 1984 it has been continuously using the same opaque white wine bottle of the hoch (Alsace) type to market its “L’Oiseau Bleu” wine. The number of bottles sold by Dumont as of the date of the application for registration exceeded four million per year. In 1996, more than ten million bottles were sold. The experts’ survey clearly shows that consumers make the connection between the opaque white bottle of the hoch (Alsace) type and the “L’Oiseau Bleu” product.
[42] Therefore, in light of the uncontradicted evidence in the record, it appears that at the time of the application for registration, five years after its introduction on the market, the opaque white wine bottle of the hoch (Alsace) type had acquired a second meaning in the mind of the Quebec consumer, namely, that it was automatically associated with the applicant’s product, “L’Oiseau Bleu”.
9. Limitations on market development
[43] Paragraph 13(1)(b) of the Act provides that the mark is registrable if it is not likely unreasonably to limit the development of any art or industry. The parties have not presented much evidence on this issue. However, the monopoly requested by Dumont concerns only Quebec territory. This monopoly is granted only for the use of an opaque white bottle of the hoch (Alsace) type. There is no evidence that the registration of this trade-mark would unduly limit the wine marketing industry. Dumont was the first to use an opaque white bottle of the hoch (Alsace) type to bottle its wine. It was an innovation in that business, where the bottles are generally dark: black, dark green or amber.
10. Exhaustion of colours theory
[44] This theory was cited by Canadian Wine in support of its submission on unreasonable market limitations. It is derived solely from an American decision, Campbell Soup Co. v. Armour & Co., 175 F.2d, 795 (3rd Ci. 1949).
[45] This theory has never been in vogue in Canada, and no longer is in the United States. On the contrary, the Supreme Court of Canada, in Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120, seemed to accept that colour combined with form and size can serve as a mark, and that in each case the issue of whether the colour is linked to the commercial origin of the product is a question of fact.
11. Conclusions
[46] In my view, the Board member erred in law in basing his decision on the doctrines of res judicata, stare decisis and judicial deference, and failed to assess the evidence before him. This Court has therefore had to weigh the evidence, and, in my view, the evidence clearly shows that the trade-mark “Bouteille & Dessin” is distinctive and ought to be registered.
[47] The appeal is therefore allowed, the decision of the Board member is overturned, and this Court orders the registration of the mark No. 625,641.