T-2438-77
Société des Produits Marnier-Lapostolle (Appel-
lant) (Opponent)
V.
Robert Macnish & Company Limited (Respond-
ent) (Applicant)
and
Registrar of Trade Marks (Mis -en-cause)
Trial Division, Marcean J. Montreal, November
16; Ottawa, November 28, 1977.
Trade marks — Design submitted for use with "distilled
alcoholic beverages" — Previous marks for whisky only —
Opposition summarily rejected without hearing — Whether or
not Registrar's decision to be overturned and normal opposi
tion procedure followed — Trade Marks Act, R.S.C. 1970, c.
T-l6, ss. 6(2). 12(1), 16(1). 37(4).
Appellant disputes the decision of the Registrar of Trade
Marks summarily rejecting, without hearing for lack of sub
stantive issue, its opposition to respondent's application for the
registration of a "trade mark and design". The design featured
"Grand Macnish" in Gothic letters, and was intended for use
with "distilled alcoholic beverages". The Registrar considered
this design and the one in use by appellant and decided that
there was no possibility of confusion arising. Appellant main
tains that the decision should be overturned, because it was
premature and erroneous in fact and law, and that the opposi
tion procedure should he allowed to follow its course.
Held, the appeal is allowed and the matter is referred back to
the Registrar for opposition procedure to take its course. The
registered trade marks already owned by applicant apply only
to a y'rticular type of alcoholic beverage—whisky or Scotch
whisky. The design in the new application, however, is to be
used for any kind of distilled alcoholic beverage. This informa
tion gives rise to two questions. Firstly, as a question of law,
can the owner of a trade mark associated with certain specific
wares "extend the application" of that mark by securing the
right of using for other wares a design primarily intended to
display the trade mark previously used by him? Secondly, as a
question of fact and law, if applicant intends to use its new
design for beverages of the same type as those that have long
been marketed by appellant, that is for liqueurs and in particu
lar orange liqueurs, would a possibility of confusion not occur
between the proposed mark and the appellant's mark? Once
such a possibility is admitted, must it not be regarded as
constituting an obstacle to the application as submitted? Appel
lant's opposition is not futile considered in light of all the
information on the record.
APPEAL.
COUNSEL:
Hugues Richard for appellant-opponent.
Claude Joyal for respondent-applicant and
mis -en-cause.
SOLICITORS:
Léger, Robic, Rouleau & Richard, Montreal,
for appellant-opponent.
Deputy Attorney General of Canada for
respondent-applicant and mis -en-cause.
The following is the English version of the
reasons for judgment rendered by
MARCEAU J.: The appellant disputes the deci
sion of the mis -en-cause, the Registrar of Trade
Marks, who, on April 18, 1977, pursuant to section
37(4) of the Trade Marks Act, R.S.C. 1970, c.
T-10, rejected its opposition to respondent's
application for registration of a [TRANSLATION]
"trade mark and design". Section 37(4)' author
izes the Registrar to reject summarily, without a
hearing or presentation of evidence, any opposition
that appears to him to be futile because prima
facie it raises no "substantial issue for decision".
Appellant maintains that the summary rejection of
its opposition was premature and erroneous both in
fact and in law, and that the decision should
therefore be set aside and the record returned to
the Registrar so that the opposition procedure may
follow its normal course. Respondent did not
appear before this Court; only the Registrar, as
mis -en-cause, disputed the validity of the appeal.
The following facts appear to me to be relevant.
The trade mark in question consists of a design
that frames and sets off a number of words, in
particular the words "Grand Macnish" written in
Gothic letters. In December 1975 respondent
applied for registration of this design, noting that
it had in fact been using the design for some time
and describing the wares in association with which
it intended to use the design as "distilled alcoholic
beverages". On December 23, 1976, appellant filed
'37....
(4) If the Registrar considers that the opposition does not
raise a substantial issue for decision, he shall reject it and shall
give notice of his decision to the opponent.
a formal opposition to the application for registra
tion, after obtaining an extension of the time
allowed for doing so. Appellant maintained that
the proposed mark, to be used for distilled alcohol
ic beverages, could cause confusion with its own
mark consisting of the words "Grand Marnier"
written in Gothic letters, which had been duly
registered and which it had been using for a long
time. Appellant based its opposition on the usual
grounds, namely: that the mark was not distinctive
or likely to become distinctive within the meaning
of section 6(2) 2 ; that consequently such a mark
was not registrable under section 12(1)(d) 3 ; and
that in any case under section 16(1)(a) 4 applicant
was not the person who would be entitled to secure
its registration. The Registrar considered the oppo
sition to be without substance and requested that it
be explained. He found the explanations provided
to be unsatisfactory, however, and on April 18,
1977 he decided to reject the opposition; it is this
decision that is now being appealed. This decision
is reproduced here in full, firstly because the entire
line of reasoning leading to the conclusion is
important, and secondly because the decision sets
out a number of facts that should be known if the
situation is to be properly assessed. It reads as
follows:
z6....
(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.
3 12. (1) Subject to section 13, a trade mark is registrable if
it is not
(d) confusing with a registered trade mark; ...
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 registra
tion 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;
Hull, April 18, 1977 384994
Messrs. Robic, Robic & Associates
2100 Drummond Street
Montreal, Quebec
H3G 1X5
Gentlemen:
Re: Trade Mark: GRAND MACNISH & Design
Applicant: Robert Macnish & Company Limited
Opponent: Société des Produits Marnier-Lapostolle
Your letter of March 28, 1977 has been considered carefully
but your comments do not persuade me that your statement of
opposition raises a substantial issue for decision or that the
statement should not be rejected under the provisions of s.
37(4) of the Trade Marks Act.
As you probably know the applicant is the registered owner
of the following trade mark registrations:
Regn. No.: 191,979
Regn. Date: June 22, 1973
Wares: Whisky
Trade Mark: GRAND MACNISH & Design
Regn. No.: NS 27/7640
Regn. Date: January 4, 1937
Wares: Scotch Whisky
Trade Mark: THE GRAND MACNISH
Regn. No.: NS 191/48646
Regn. Date: December 23, 1953
Wares: Whiskey
Trade Mark: MACNISH
the wares being whisky or scotch whiskey, and the trade mark
he now wishes to register is:
[Design of mark] 5
the wares being distilled alcoholic beverages.
In particular your attention is directed to Registration No.
191,979 for the mark GRAND MACNISH & Design in which the
initial letters of each word are shown in the gothic style. This
mark is based on a date of use in Canada since 1929.
[Design of mark] 5
The mark upon which the opposition is based is shown below:
[Design of mark] 5
5 The design of the mark in question, which is reproduced in
the letter, is not necessary for my purposes here.
Concerning the new mark the applicant has not applied and
indeed has no need to apply to register or to reregister the
expression GRAND MACNISH, the mark in question being an
ensemble in which the expression YE AULD FLAGON is given a
particular prominence so that my first impression of the marks
of the parties as totalities was that each has its own characteris
tic flamboyancy and applicant's application, though indexed in
the Trade Marks Office as GRAND MACNISH & Design, was
not presented for the purpose of registering applicant's "GRAND
MACNISH" design, that design having been registered, as noted
above, on June 22, 1973, No. 191,979.
The application under consideration is in fact directed to the
registration of a trade mark which when regarded as a unitary
whole bears not the slightest resemblance to the prospective
opponent's trade mark and could not possibly be confused with
it. The fact that both marks include a gothic G and M and the
word "grand" is not the proper test for determining confusion,
the marks must be considered as a whole. Although your letter
alleges a likelihood of confusion based on the similarities of the
words "Grand",, and the gothic letters G and M in Canada
since at least 1929, and that mark has been used in Canada
during the same period that the mark on which the opposition
is based has been used in Canada.
Assuming the facts alleged by the opponent to be true I find
that there is no possibility that the applicant's and opponent's
marks are likely to cause confusion in Canada. I find that the
proposed opposition could not possibly succeed.
It is therefore my decision that the prospective opposition
does not raise a substantial issue and I reject it under the
provisions of s. 37(4) of the Act.
Yours truly
R. Carson
Registrar of
Trade Marks
c.c. Fetherstonhaugh & Co.,
(Dorval)
(Ref: 349-2)
At first reading it seems difficult to fault this
decision: the facts reported are clearly set out, the
reasoning is logical and the situation as presented
certainly appears to correspond with the one
referred to in section 37(4) 6 . If one begins with the
assumption that there can be no question of dis
puting applicant's right to use the words "Grand
Macnish" written in Gothic letters because this
right has already been secured, it then becomes
clear that the possibility of confusion must be seen
in regard to the design as a whole, with all its
details and features, and that such a possibility
must be said to be non-existent. A closer look,
however, reveals that the decision is far from being
as satisfactory and convincing as it may at first
appear. This is because its basic assumption is
questionable, as it apparently fails to take into
account a piece of information contained in the
record that seems to be fundamental and that
tends to put appellant's opposition in an entirely
different perspective from that of the Registrar.
Whereas the registered trade marks already
owned by applicant apply only to a particular type
of alcoholic beverage—namely, whisky and Scotch
whisky—the design concerned in the new applica
tion for registration is to be used for any kind of
distilled alcoholic beverage. In view of the opposi
tion submitted, this essential piece of information
from the record raises problems that may be
reduced to two questions. The first is a question of
law: can the owner of a trade mark associated with
certain specific wares "extend the application" of
that mark by securing the right of using for other
wares a design primarily intended to display the
trade mark previously used by him? The second is
a question both of law and of fact: if applicant
intends to use its new design for beverages of the
same type as those that have long been marketed
by appellant, that is for liqueurs and in particular
orange liqueurs, would a possibility of confusion
not occur, as the opposition alleged, between the
proposed mark and appellant's mark; and once
such a possibility is admitted, must it not be
regarded as constituting an obstacle to the applica
tion as submitted?
6 The interpretation of section 37(4) has been dealt with
many times by this Court: see in particular Pepsico Inc., and
Pepsi-Cola Canada Ltd. v. Registrar of Trade Marks [1976] 1
F.C. 202; Canadian Tampax Corp. Ltd. v. Registrar of Trade
Marks 24 C.P.R. (2d) 187; David Creaghan, Executor of the
Estate of Thomas Cyril Creaghan v. The Queen [1972] F.C.
732; Amoco Canada Petroleum Company Ltd. v. Texaco
Exploration Canada Ltd. [1976] 1 F.C. 258.
In my view, appellant's opposition was not futile
when considered, as it should have been, in light of
all the information in the record. It raised ques
tions that deserved consideration and could not be
resolved without giving appellant an opportunity to
present its arguments and introduce evidence if it
wished to do so. It is true, as counsel for the
Registrar points out, that neither the allegations of
the initial opposition nor the subsequent explana
tions of these allegations stated clearly the real
questions raised by the opposition. This may
account for the Registrar's reaction, but the deci
sion itself, given summarily after considering only
the opposition, may nevertheless be faulted as
being based on a premise that failed to take into
account all the information in the record.
The appeal is therefore allowed, the decision
appealed from is set aside and the record is
referred to the Registrar so that the opposition
procedure may take its normal course.
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.