Standard Coil Products (Canada) Limited
(Appellant)
v.
Standard Radio Corporation (Respondent)
and
The Registrar of Trade Marks
Trial Division, Cattanach J.—Ottawa, June 28,
29, 1971.
Trade Marks—Application to register word "Standard"
with design for television sets, etc.—Opposition—Disclaimer
by applicant of word apart from mark—Whether word capa
ble of being distinctive—Whether confusion between two
marks—Appeal from Registrar of Trade Marks—Additional
evidence before Court—Trade Marks Act, secs. 6(2),12(2),
16(1).
Standard Radio Corp. applied to register a trade mark of
the word "Standard" together with a small design for use in
association with television sets, radios, etc, but expressly
disclaimed the right to the exclusive use of the word
"Standard" apart from the mark. Standard Coil Products
(Canada) Ltd opposed the application on the ground that at
the date of first use alleged in the application, viz March
1960, the trade mark was not registrable by virtue of s.
16(1) of the Trade Marks Act because it was confusing with
the trade mark "Standard" which had been used by the
opponent continuously in Canada since July 1955 in associ
ation with television tuners. The Registrar of Trade Marks
rejected the opposition on the ground that the evidence
before him did not establish that the word "Standard" had
become distinctive of the opponent's wares. The opponent
appealed. The opponent sold its television tuners to manu
facturers of television receivers and also to television
repairmen and had approximately 50% of the Canadian
market for television tuners, its sales averaging approxi
mately $2,000,000 a year. No evidence of actual confusion
was adduced by the opponent.
Held, the appeal should be allowed.
1. Under s. 12(2) of the Trade Marks Act the word
"Standard" although not inherently distinctive can become
distinctive if used so as actually to distinguish the user's
wares. A trade mark can be distinctive of a person's wares
even if he has a monopoly of such wares. On the material
before the court, not all of which was before the Registrar,
the opponent had discharged the onus of establishing that
the trade mark "Standard" did actually distinguish its
wares.
2. Evidence of actual confusion was not essential to a
finding that the two marks were confusing within the mean-
ing of s. 6(2) of the Act. As a matter of first impression it
must be found on the evidence that use of the two marks
was pregnant with possible confusion.
APPEAL from Registrar of Trade Marks.
John C. Osborne, Q.C., and Miss R. Perry, for
appellant.
Malcolm S. Johnston and J. T. Wilbur, for
respondent.
CATTANACH J. —This is an appeal by the
appellant herein from a decision of the Regis
trar of Trade Marks dated May 22, 1970 reject
ing the opposition of the appellant to an applica
tion by the respondent to register a trade mark
of the word "Standard" together with a design,
generally in the form of an inverted equilateral
triangle with rounded corners in which the
uppermost line of the triangle is broken to
accommodate the letters SR in block print with
the tail of the letter "R" extending into the
triangle as the representation of a lightning bolt
or electric current for use in association with
radios, tape recorders, receivers, phonographs,
television sets and parts thereof.
The respondent, in its application for registra
tion, disclaimed the right to the exclusive use of
the word "Standard" apart from the mark.
In my opinion, this disclaimer has no effect
upon the issues to be resolved. Under the
Unfair Competition Act, 1932, all trade marks
were divided into two classes, (1) those consist
ing of words, and (2) those consisting of
designs. This division of trade marks into two
mutually exclusive classes was abolished in the
Trade Marks Act. What the respondent applied
for is a composite mark and it is the trade mark
in its entirety which is to be used in comparing
one mark with another to determine whether
there is a likelihood of confusion between them.
In the trade mark applied for by the respond
ent the word "Standard" remains an integral
part and the dominant feature thereof, despite
the respondent's disclaimer to the right to the
exclusive use of that word. The design portion,
which is small in size in comparison with the
size of the word "Standard" is dwarfed into
insignificance thereby. Visually the word
"Standard" overwhelms all else.
The respondent claims use of the mark in
Canada since March 1960.
The appellant opposed the application for
registration by the respondent before the Regis
trar on the ground set out in s. 37(2)(a) of the
Act that,
(1) the application did not comply with the
requirements of s. 29 and should have been
refused by the Registrar under s. 36(1)(a)'.
(2) on the ground set out in s. 37(2)(c) that
the applicant (i.e. the respondent herein) is not
the person entitled to registration of the trade
mark claimed in the application having regard to
s. 16(1) 2 . The basis of this ground of objection
was that as at the date of first use alleged in the
application (March 1960) the trade mark
claimed was confusing with the trade mark
"Standard" which had been previously used by
the appellant continuously in Canada since July
1955, and by its predecessor in title since 1946,
in association with television tuners and compo
nents therefor and as a result of this use the
trade mark actually distinguished the wares of
the appellant.
Section 37(2) is reproduced hereunder as a
footnote. 3
In his reasons for rejecting the opposition the
Registrar said in part, as follows:
The applicant denied these allegations and contended in
support of its application that its trade mark differs visually
from the opponent's mark in that it comprises the letters
"SR" and device in combination with the word "STAND-
ARD" whereas the opponent's mark consists solely of the
word "STANDARD" which is a non-distinctive common
English word, and that the wares of the parties are distinc
tively different.
Both parties filed affidavit evidence and written argu
ments which I have carefully considered and a hearing was
held. It is clear from 'the evidence adduced that the oppo
nent has used the trade mark STANDARD prior to the use
of the applicant of its trade mark reproduced above and that
the wares of the parties are very closely related. Thus the
only issue for determination is whether the marks are con
fusing within the meaning of Section 6 of the Trade Marks
Act.
The word "STANDARD" possesses no inherent distinc
tiveness and is highly descriptive of the quality of the wares
in association with which it is used by the parties. Notwith
standing the fact that the opponent has used "STAND-
ARD" as a trade mark continuously and extensively in
Canada since at least the month of July 1955, the evidence
is insufficient to establish that "STANDARD" has become
distinctive of the opponent's wares. In the circumstances of
the case, I conclude that the grounds of opposition are not
well founded.
The opposition is accordingly rejected pursuant to Sec
tion 37(8) of the Trade Marks Act.
From the foregoing reasons it is clear that the
Registrar found upon the evidence adduced
before him that the appellant had used the word
"Standard" continuously and extensively in
Canada as a trade mark well prior to the use by
the respondent of its trade mark. He also con
cluded that the wares of the parties with which
the respective trade marks are associated are
very closely related.
He then poses the question to be answered by
himself in the following language:
Thus the only issue for determination is whether the marks_
are confusing within the meaning of Section 6 of the Trade
Marks Act.
He does not answer that question in specific
terms but he does state that the evidence before
him was insufficient to establish that the word
"Standard" had become distinctive of the
appellant's wares and accordingly rejected the
appellant's opposition to the respondent's
application for the registration of its mark.
I therefore assume that the Registrar must
have had in mind that, despite the fact he said
that the word "Standard" possesses no inherent
distinctiveness and is highly descriptive of the
quality of the wares of both parties, the long
and continued use of the word "Standard" was
capable of actually distinguishing the appel
lant's wares from the wares of others but that
the evidence before him did not establish that
the mark had become distinctive of the appel
lant's wares in fact.
Having so found I assume that the Registrar
must then have answered the question he posed
for himself as to whether the marks were con
fusing in the negative for the reason that if the
appellant's mark was not distinctive in fact
there could be no confusion with it.
The substance of the argument on behalf of
the appellant before me, as I understood it, is
summarized as follows:—
(1) that the key to the appellant's case is s.
16(1)(a) of the Trade Marks Act in that the
respondent is not entitled to registration of the
mark for which it applied since at the date on
which the respondent first used its mark, i.e.
March 1960, that mark was confusing with the
trade mark that had been previously used in
Canada by the appellant;
(2) that the appellant has successfully estab
lished its case in that it has shown by affidavit
evidence,
(a) that the appellant has used the word
"Standard" as "use" is contemplated by s.
4(1) 4 as a trade mark prior to the use of a
similar mark for the same and similar wares
by the respondent;
(b) that the word "Standard" has been used
by the appellant as a trade mark within the
meaning of s. 2(t)0) 5 and by that use the trade
mark actually distinguishes the wares in asso
ciation with which it is so used by the appel
lant from the wares of others so that the mark
has become "distinctive" within the meaning
of s. 20; 6 and
(c) that on the issue of confusion between the
two marks it is self-evident in that the appel
lant's mark is the word "Standard" and the
respondent's mark is dominated by the word
"Standard".
The principal thrust of the position taken by
the respondent before me was that
(1) the appellant did not use the word "Stand-
ard" as a trade mark;
(2) that the word "Standard" as used by the
appellant is not distinctive of the appellant's
wares at the critical time of the first use by the
respondent of its mark (i.e. March 1960)
because
(a) the word "Standard" is a laudatory epithet
and as such is incapable of being distinctive;
(b) the word "Standard" was used in associa
tion with wares produced by a person other
than appellant, i.e. its parent company in the
United States and accordingly there was not
an exclusive use by the appellant;
(c) the appellant enjoyed a monopoly in
Canada in the production and sale of televi
sion tuners prior to 1964 and accordingly the
use of the word "Standard" by the appellant
could not be distinctive of its wares since
there were no wares of others from which to
distinguish the appellant's wares;
(3) that the evidence adduced by the appel
lant falls short of establishing that the word
"Standard" as used by the appellant does in
fact actually distinguish the wares of the appel
lant; and
(4) that there is no possibility of confusion
between the conflicting marks in any event
because the wares are directed to a sophisticat
ed market and no evidence whatsoever was
adduced by the appellant directed to the likeli
hood of confusion.
The first contention of the respondent is that
the appellant has not used the word "Standard"
as a trade mark.
The Registrar in his reasons for rejecting the
appellant's opposition to the respondent's
application for registration said,
It is clear from the evidence adduced that the opponent
has used the trade mark STANDARD...
and he also said,
Notwithstanding the fact that the opponent has used
"STANDARD" as a trade mark continuously and exten
sively in Canada since at least the month of July 1955, the
evidence is insufficient to establish that "STANDARD" has
become distinctive of the opponent's wares .. .
I interpret the above language of the Regis
trar as a finding that the appellant has used the
word "Standard" as a trade mark. The respond
ent contends that he erred in doing so.
The wares of the appellant, (i.e. television
tuners) are not susceptible of having the word
marked upon them.
However the packages in which they were
distributed bore the words "In TV it's Standard
Tuners". The words "In TV its" appear on one
line in block capital letters throughout. In the
middle, or second line, the word "Standard"
appears alone in script printing and is under
lined by a line extending - fully across the carton.
In the third line the word "tuners" appears in
the same type as the initial words. It is true that
the five words when read together constitute a
legend, but the word "Standard" stands out
because it is isolated on a line devoted to the
word "Standard" alone, it is printed in a differ
ent and more striking type of print which
emphasizes the word and the word is
underlined.
The appellant inserted advertisements in
trade magazines directed to the Canadian elec
tronic trade. One such advertisement was
directed to TV technicians extolling the quali
ties of Standard Replacement Tuners. The
words "Standard Replacement Tuners" appear
seven times in various parts of the text of the
advertisement. In each instance the words are
in larger print than the surrounding print and in
each instance the word "Standard" is printed in
a different style of type from the words "re-
placement tuner" so that the word "Standard"
stands out.
On the invoices of the appellant the divisions
of its business are described as, Standard
tuners, Casco products, Grigby switches and
Anchorlok.
The respondent contends that this is not a
trade mark use of the word "Standard" because
in no instance was the word "Standard" used
alone but is followed invariably by the word
"tuner" and that in this context the word
"Standard" is used as an adjective modifying
the word "tuner".
In my opinion the Registrar was right in find
ing that the appellant has used the word "Stand-
ard" as a trade mark. I fail to follow how the
use of a generic word qualified by a distinctive
word (assuming that the word "Standard" is
distinctive) can destroy the efficacy of the use
of the distinctive word as a trade mark.
The dominant word is "Standard" both in its
visual and phonetic sense and no person would
be led to believe that it is merely an adjectival
use of the word to modify the word "tuner".
The facts of the present appeal differ sub
stantially from those before Cameron J. in
Standard Stoker Co. v. Registrar of Trade
Marks [1947] Ex.C.R. 437.
In my opinion the objection of the respondent
on this ground must fail.
The respondent next contended that the word
"Standard" is incapable of becoming distinc
tive.
The word "Standard" when used as a noun is
defined in the Shorter Oxford English Diction
ary, 3rd ed. as meaning "an authoritative recog
nized exemplar of correctness, perfection or
some definite degree of quality" and as an
adjective as meaning "having the prescribed or
normal size, amount, power or degree of
quality".
The meaning of the word was considered and
commented upon in Standard Ideal Co. v.
Standard Sanitary Mfg. Co. [1911] A.C. 78,
where Lord Macnaghten said at page 84:
Now the word "standard" is a common English word. It
seems to be used not unfrequently by manufacturers and
merchants in connection with the goods they put upon the
market. So used it has no very precise or definite meaning.
But obviously it is intended to convey the notion that the
goods in connection with which it is used are of high class
or superior quality or acknowledged merit.
The foregoing definitions and comment lead
to the inevitable conclusion that the word
"Standard" is clearly descriptive of the charac
ter or quality of the wares in association with
which it is used as well as being a laudatory
epithet in that it is in praise of the quality.
Under s. 2(m) the Unfair Competition Act
1932 defining a trade mark (which was in effect
immediately prior to the enactment of the Trade
Marks Act) it was clear that a symbol must be
distinctive in order to constitute a trade mark.
However provision was made for the case
where a mark which was originally without dis
tinctive capacity, but had by long and extensive
use come to actually distinguish the wares of a
particular trader, could be registered. There was
a difference between a mark that was distinc
tive in fact and one that was "adapted to distin
guish particular wares falling within a general
category from other wares falling within the
same category" (the words of s. 2(m)).
In Joseph Crosfield & Sons Ltd's. Applica
tion, the Perfection case, (1909) 26 R.P.C. 561,
854, the Court of Appeal held that "there are
some words which are incapable of becoming
'so adapted' such as `good', `best' and
`superfine"'.
The doctrine in the Perfection case received
the approval of the Supreme Court of Canada in
Registrar of Trade Marks v. G. A. Hardy & Co.,
the Super-Weave case [1949] S.C.R. 483. The
effect of this decision was that a word that is
not adapted to distinguish in the sense of being
both distinctive in fact and inherently adapted
to distinguish is not registrable and cannot be
regarded as a trade mark for any purpose.
By s. 2 (t)(i) of the Trade Marks Act "trade
mark" is defined as:
(i) 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 per
formed by others, ...
It will be observed that in the foregoing defi
nition a mark is a trade mark if it is used for the
purpose of distinguishing and that the words
"adapted to distinguish" which appeared in s. 2
(m) of the Unfair Competition Act do not now
appear.
By virtue of s. 12(1)(b) 7 a trade mark is not
registrable if it is clearly descriptive or decep-
tively misdescriptive of the character or quality
of the wares subject to subsec. (2) of s. 12 8
which provides that a trade mark which is not
registrable by reason of s. 12(1)(b) is registrable
if it was used by the owner so as to have
become "distinctive".
"Distinctive" in relation to a trade mark is
defined in s. 2 (f) as meaning:
... a trade mark that actually distinguishes the wares or
services in association with which it is used by its owner
from the wares or services of others or is adapted so to
distinguish them; ...
If a trade mark is a coined or invented word it
is obviously adapted to distinguish but if a trade
mark is prima facie not distinctive, as for exam
ple a laudatory epithet or descriptive of the
character of quality of the wares, then it
becomes a question of fact if the trade mark
actually distinguishes the wares.
The concluding words in s. 2(f) "or is adapted
so to distinguish them" are obviously intro
duced to cover the circumstances of a proposed
trade mark or one that has not enjoyed a long
and extensive use. The word "or", as used in
this context, is disjunctive. Therefore a word
which is a proposed trade mark or one that has
enjoyed limited use must be inherently distinc
tive to be registered, whereas a trade mark that
is not inherently distinctive may be registered if
it is established, as a fact, that it actually distin
guishes the wares of its owner. In this latter
circumstance no words are precluded from
registration as a trade mark and, in my opinion,
the Trade Marks Act has changed the law as it
existed under the previous statute and as enun
ciated in the Perfection case (supra) and in the
Super-Weave case (supra).
Accordingly I do not accept the contention of
the respondent that the word "Standard" is
incapable of being distinctive. It is open to the
appellant to establish that the word "Standard"
has been used by it so as to actually distinguish
its wares.
The respondent also contends that the appel
lant does not possess a distinctive mark for the
reason that the appellant did not have the exclu
sive use thereof to distinguish its wares but that
it also identified wares of the appellant's parent
company.
This contention is not borne out by the evi
dence. Originally the television tuners were
manufactured by the appellant's parent compa
ny, Standard Kollsman Industries Inc. and sold
by that company in Canada and elsewhere.
On July 19, 1954, the appellant was incor
porated pursuant to the laws of the Province of
Ontario with head office in Mimico, Ontario. It
is a wholly owned subsidiary of Standard Kolls-
man Industries Inc. The parent company dis
continued the sale in Canada of the television
tuners manufactured by it immediately upon the
incorporation of the appellant.
The manufacture and sale of the television
tuners in question was undertaken by the appel
lant in 1954. Some of the television tuners,
marketed as Standard tuners, were not manu
factured by the appellant but were imported
from the parent company and sold in Canada
exclusively by the appellant. From 1954 for
ward the parent company did not sell any tuners
manufactured by it directly to Canadian con
sumers. All such sales were made by the
appellant.
Accordingly such tuners were either manu
factured and sold in Canada or sold (if import
ed) exclusively by the appellant.
Therefore the respondent's objection in this
respect must also fail.
The respondent next contended that since the
appellant enjoyed a monopoly in Canada in the
production and sale of television tuners before
1964 the mark "Standard" could not become
distinctive in that there were no wares of others
from which to distinguish those of the
appellant.
I do not think that such argument is tenable.
The function of a trade mark has been
defined in numerous cases as being "to give an
indication to the purchaser or possible purchas
er as to the manufacture or quality of the goods,
to give an indication to his eye of the trade
source from which the goods come, or the trade
hands through which they pass on their way to
the market". (See Bowen L.J. in Powell's Trade
Mark, (1893) 10 R.P.C. 195 at 200).
To the same effect Gwynne J. said in Partlo
v. Todd (1888-90) 17 S.C.R. 196, at p. 212,
"The right which a manufacturer has in his
trade mark is the exclusive right to use it for the
purpose of indicating where and by whom or at
what manufactory the article to which it is
attached was manufactured".
The object of a trade mark is to identify the
wares of a particular trader and if a trade mark
does that then I think it is immaterial whether
the same article of commerce is not being put
on the market by other traders. If the mark
identifies the wares of a particular trader then it
will automatically distinguish the wares of that
trader from all others when such traders are
non-existent but subsequently become existent.
In the present instance it was by a quirk of
circumstance that the market in Canada for
television tuners, an ordinary article of com
merce, was not extensively invaded by rival
traders. There was no impediment to their doing
so if they thought it expedient.
Counsel for the respondent relied upon the
language of Fry J. in Linoleum Mfg Co. v. Nairn
(1877-78) 7 Ch. D. 834.
In that case the plaintiff used the word "lino-
leum" as part of a trade mark applicable to a
floor covering manufactured by the plaintiffs
under patents that had expired. Fry J. said at
page 837:
In my opinion, it would be extremely difficult for a person
who has been by right of some monopoly the sole manufac
turer of a new article, and has given a new name to the new
article, meaning that new article and nothing more, to claim
that the name is to be attributed to his manufacture alone
after his competitors are at liberty to make the same article.
It is admitted that no such case has occurred, and I believe
it could not occur; because until some other person is
making the same article, and is at liberty to call it by the
same name, there can be no right acquired by the exclusive
use of a name as shewing that the manufacture of one
person is indicated by it and not the manufacture of
another.
The same principle applies when the article is'
not protected by a patent. In Cellular Clothing
Co. v. Maxton & Murray [1899] A.C. 326, at p.
344, Lord Davey said
But the same thing in principle must apply where a man has
not taken out a patent, as in the present case, but has a
virtual monopoly because other manufacturers, although
they are entitled to do so, have not in fact commenced to
make the article. He brings the article before the world, he
gives it a name descriptive of the article: all the world may
make the article, and all the world may tell the public what
article it is they make, and for that purpose they may primâ
facie use the name by which the article is known in the
market.
I do not read the Linoleum case as authority
for the proposition for which the respondent
cites it. The ratio decidendi of the Linoleum
case was that the invented name designated the
patented product as distinct from a word used
to designate a product made by a particular
person.
On the, contrary if the word was not generic
or descriptive of the product there is no reason
why the trader could not adopt such a word as
his trade mark even when a monopoly subsist
ed. Authority for the foregoing proposition is to
be found in the language of Lord Russell of
Killowen in the leading case on this subject
Canadian Shredded Wheat Co. v. Kellogg Co. of
Canada (1938) 55 R.P.C. 125. By virtue of
patents the plaintiff had a monopoly for shred
ded wheat biscuits. The plaintiff obtained regis
tration of the words "Shredded Wheat" as a
trade mark. The defendant manufactured a
product which it called shredded whole-wheat
biscuits. In an action for infringement of trade
mark the defendant contended that the words
"Shredded Wheat" were descriptive. Lord Rus-
sell in delivering the recommendation of the
Privy Council said at page 141:
Had the Plaintiff during the currency of the Patent
applied to the product manufactured by it, a distinctive
trade mark duly registered, it could have effectively secured
for itself a means by which, when the patent expired, the
shredded wheat which it manufactured would be distin
guished from the shredded wheat manufactured by others,
if and when anyone chose to avail himself of the right then
open to the public of manufacturing shredded wheat.
For the foregoing reasons this objection by
the respondent also fails.
I turn now to the concluding contention on
behalf of the respondent that there was no
possibility of confusion between its mark and
that of the appellant.
At the outset I indicated that in my opinion
the disclaimer by the respondent of the rights to
exclusive use of the word "Standard" would
have no effect upon this issue, because that
word forms the dominant feature and is an
integral part of the respondent's composite
mark.
In Andres Wines Ltd. v. Richelieu, et cie
(Exporters Ltd.) (1971) 64 R.P.C. 258, an appli
cant sought to register a design, being a
representation of Cardinal Richelieu, in associa
tion with brandy. The word Richelieu and all
other reading matter was disclaimed by the
applicant. The opponent based its opposition on
its established prior use in Canada of an heral
dic design featuring the word Richelieu in asso
ciation with wines. The Trade Marks office had
held that the word Richelieu was not registrable
since it was primarily a surname.
The Registrar said that while the designs of
the parties are dissimilar, in each case the trade
marks prominently feature the word Richelieu
and the wares would be identified by the word
Richelieu in the normal course of trade. He
therefore concluded that the concurrent use of
the marks would be confusing and rejected the
application for registration.
In my view the reasoning of the Registrar was
sound and that reasoning is equally applicable
to the respondent's trade mark herein. The
word "Standard" remains as part of the mark
even though the exclusive right to that word has
been disclaimed and accordingly the inclusion
of the word "Standard" in the respondent's
trade mark is a most material factor in consider
ing the possibility of confusion within the mean
ing of s. 6(2) 9 of the Trade Marks Act.
In the present instance the appellant uses its
mark in association with television tuners. The
wares in association with which the respondent
uses its trade mark are, as outlined in the
application for registration, radios, tape record
ers, receivers, phonographs, television sets and
parts thereof. Parts of television sets include
television tuners so that in this respect the
wares are identical and the remaining wares in
association with which the respondent uses its
mark, which would include television parts
other than tuners, are in the same general class.
The market which the appellant enjoys for its
product in Canada is two-fold. The first is the
manufacturers of television receiving sets. The
appellant sells its television tuners to those
manufacturers who then install it in the sets
manufactured by them. My recollection of the
evidence is that there is only one television
receiving set manufacturer in Canada who
manufactured television tuners for installation
in its receiving sets. All others purchased and
installed tuners manufactured or sold by the
appellant. The second branch of the appellant's
market is television technicians or repairmen
who purchase television tuners for replacement
in their customers' sets.
However, even among such a sophisticated
and knowledgeable purchasing public it seems
self-evident to me that the use of a trade mark
in which the word "Standard" is the dominant
feature concurrently in the same area with the
trade mark "Standard" as applied to the identi
cal product would inevitably be likely to lead to
the inference that the products associated with
such trade marks are manufactured or sold by
the same person.
Whether a particular mark is likely to cause
confusion if used in particular circumstances is
a question the answer to which is a matter of
first impression.
Counsel for the respondent pointed out that
the appellant did not adduce any direct evi
dence of actual deception or confusion, where
as the respondent had adduced the affidavit of
one person that he would not be confused. I
attach little weight to the probative value of that
affidavit. All that he expressed was his own
personal opinion and the evidence on which he
was qualified to express that opinion was
negligible.
While direct evidence of actual deception or
confusion would be helpful in resolving the
matter, the omission of such evidence is not
fatal to the appellant's case. The inquiry is to be
directed to the likelihood of a concurrent use of
the trade marks leading to the inference that the
wares are those of the same person. To insist
upon evidence of actual confusion as a condi
tion to finding that two marks are confusing
within s. 6(2) would be tantamount to saying
that there is no likelihood of confusion until
confusion actually occurs and that is not what is
contemplated by s. 6(2). That, in my opinion, is
not the specific test.
Looking at the matter from a broad common
sense point of view, I cannot escape the conclu
sion that in the circumstances of this particular
case and as a matter of first impression that the
concurrent use of the two competing marks
here in question is pregnant with possible
confusion.
There, therefore, remains the contention of
the respondent, in contradiction to that of the
appellant, that the appellant has not adduced
evidence sufficient to establish that the trade
mark "Standard" actually distinguishes the
wares of the appellant.
This, in my view, is the crucial issue before
me upon which the matter turns and I believe
the issue upon which the matter turned before
the Registrar.
The question before the Registrar was, there
fore, whether there was sufficient evidence
adduced to establish a fact, that is, did the trade
mark of the appellant actually distinguish its
wares. There was before me new material
which was not before the Registrar.
Before the Registrar the appellant established
that its sales of television tuners in Canada
between the years 1955 to 1966 totalled
approximately $22,366,000 which represents
about 2,000,000 units and that approximately
$30,000 was expended in advertising in trade
magazines.
Before me a supplementary affidavit was
filed establishing the appellant's sales of televi
sion tuners during the years 1967 to 1970.
These sales average approximately $2,000,000
in each year and by my very rough calculation
would represent a further 80,000 product units
in that period. During these years a further
amount of approximately $20,000 was expend
ed in advertising in trade magazines.
The appellant deals in other television parts
and electronic equipment sold under trade
marks other than "Standard" but 90% of its
business is the manufacture and sale of televi
sion tuners under the trade mark "Standard"
and it was further established before me that
the appellant enjoyed approximately 50% of the
market for television tuners in Canada.
As I have intimated before, the appellant's
business in television tuners is divided into two
branches, the first of which is sales to manufac
turers of television receiving sets which is the
major portion of its business in television
tuners, and the second is the sale to television
repairmen for replacement purposes through
distributors of electronic equipment.
It is obvious that the manufacturers of televi
sion receiving sets would insist upon the tuners
which are to be installed in their product meet
ing specifications for that purpose and would be
well aware of every attribute of the product of
their supplier. There is no doubt that this par
ticular class of purchaser would also be aware
of the trade mark by which the supplier desig
nates its product. This logical inference is con
firmed by an affidavit of the general manager of
electronic engineering and manufacturing of the
electronics product division of a manufacturer
of television receiving sets who swore that
since 1955 his employer has purchased large
quantities of television tuners manufactured or
sold by the appellant for installation in televi
sion sets manufactured by his employer, that
the word "Standard" has no significance as
applied to television tuners from an engineering
standpoint and that the only significance the
word has when associated with television tuners
is that it identifies the product of the appellant.
The advertising in trade magazines on which
the appellant expended approximately $50,000
over the period between 1955 and 1970 was
directed to .television repairmen which consti
tutes the second class of the appellant's custom
ers. The appellant's product reaches these pur
chasers through wholesale distributors. Except
for the occasional individual who, because of
his hobby, training or peculiar ability, might
repair or construct his own television receiving
set, these persons are the second class of per
sons likely to deal in the appellant's product
and, as I have said before, for this purpose the
public is this narrow class rather than the gener
al public.
The appellant produced affidavits from ten
persons who are managers, assistant managers
and salesmen of companies dealing in electronic
equipment in every province or region of
Canada.
All such affidavits are to the same effect, that
is that the word "Standard" is used as a trade
mark which actually distinguishes the appel
lant's television tuner.
This evidence was not before the Registrar.
It remains for me to assess the probative
value of such evidence. In so doing I am con
scious that the onus on a person contending that
a trade mark which is descriptive or laudatory
of his wares has come to actually distinguish
those wares is a heavy one and that onus is
increased by the adoption of a word which
lacks inherent distinctiveness.
The affidavit evidence must be prepared in a
fair manner so that the real facts and the real
views of the affiants are disclosed.
I have no knowledge of how these affidavits
were prepared or the steps leading to their
preparation but I have carefully read each
affidavit and while they are all to the same
effect and tenor, nevertheless, each one con
tains a sufficient variation in language and sub
ject matter to lead me to the conclusion that the
affiants did not blindly swear to an already
prepared affidavit, but rather that these affida
vits represent the honest and real views of the
affiants.
Under the circumstances of the case I have
come to the conclusion that the appellant has
been successful in discharging the onus of
establishing that the trade mark "Standard"
actually distinguishes its product.
Accordingly the appeal is allowed with costs
and the matter is referred back to the Registrar
for appropriate action.
36. (1) The Registrar shall refuse an application for the
registration of a trade mark if he is satisfied that
(a) the application does not comply with the requirements
of section 29;
2 16. (1) Any applicant who has filed an application in
accordance with section 29 for registration of a trade mark
that is registrable and that he or his predecessor in title has
used in Canada or made known in Canada in association
with wares or services is entitled, subject to section 37, to
secure its registration in respect of such wares or services,
unless at the date on which he or his predecessor in title
first so used it or made it known it was confusing with
(a) a trade mark that had been previously used in Canada
or made known in Canada by any other person;
(b) a trade mark in respect of which an application for
registration had been previously filed in Canada by any
other person; or
(c) a trade name that had been previously used in Canada
by any other person.
3 37. (2) Such opposition may be based on any off 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.
4 4. (1) A trade mark is deemed to be used in association
with wares if, at the time of the transfer of the property in
or possession of such wares, in the normal course of trade,
it is marked on the wares themselves or on the packages in
which they are distributed or it is in any other manner so
associated with the wares that notice of the association is
then given to the person to whom the property or posses
sion is transferred.
2. In this Act,
(t) "trade mark" means
(i) 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 per
formed by others,
6 2. In this Act,
W "distinctive" in relation to a trade mark means a trade
mark that actually distinguishes the wares or services in
association with which it is used by its owner from the
wares or services of others or is adapted so to distinguish
them;
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 pro
posed to be used or of the conditions of or the persons
employed in their production or of their place of origin;
8 (2) A trade mark that is not registrable by reason of
paragraph (a) or (b) of subsection (1) is registrable if 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.
6. (2) The use of a trade mark causes confusion with
another trade mark if the use of both trade marks in the
same area would be likely to lead to the inference that the
wares or services associated with such trade marks are
manufactured, sold, leased, hired or performed by the same
person, whether or not such wares or services are of the
same general class.
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.