A-666-78
Registrar of Trade Marks (Appellant)
v.
Brewers Association of Canada (Respondent)
Court of Appeal, Pratte, Ryan JJ. and Kerr D.J.—
Ottawa, January 28 and February 16, 1982.
Appeal from Trial Division decision allowing respondent's
appeal from a decision of the Registrar of Trade Marks —
Respondent applied for registration of the shape and colour of
a bottle as a certification mark — Registrar refused the
application on the ground that what the respondent sought to
register was a "shaping of ... containers" and as such was a
distinguishing guise — Trial Judge held that the word "mark"
in the definition of certification mark includes a guise such as
the shaping of goods or their containers — Whether everything
that is registrable as a traditional trade mark (trade mark
used to distinguish wares from those of others) is also regist-
rable as a certification mark (trade mark used for the purpose
of certifying that goods meet a certain standard) — Appeal
allowed — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 13.
APPEAL.
COUNSEL:
L. P. Chambers, Q.C. and B. J. Hobby for
appellant.
J. Fogo for respondent.
SOLICITORS:
Deputy Attorney General of Canada for
appellant.
Herridge, Tolmie, Ottawa, for respondent.
The following are the reasons for judgment
rendered in English by
PRATTE J.: This is an appeal from the judgment
of the Trial Division [[1979] 1 F.C. 849] allowing
the appeal of the respondent from a decision of the
Registrar of Trade Marks rejecting the respond
ent's application for registration of a certification
mark.
The respondent is an association of Canadian
brewing companies which is engaged in the promo
tion of the brewing trade in Canada but does not
itself produce or sell brewed alcoholic beverages. It
applied to the Registrar of Trade Marks for regis
tration of a certification mark to be used for the
purpose of indicating that the wares in association
with which it was used were produced in Canada
by a Canadian brewery which was either a
member or a licensee of the respondent. That mark
was the shape and colour (dark amber) of a bottle
with the word "Canada" near its base; it was
shown in the following drawing which formed part
of the respondent's application:
The Registrar refused the respondent's applica
tion on the ground that what the respondent was
seeking to register as a certification mark was not
registrable because it was, in the Registrar's view,
a guise rather than a mark and, for that reason,
did not answer the definition of "certification
mark" in section 2 of the Trade Marks Act,
R.S.C. 1970, c. T-10.
In order to understand the Registrar's decision,
it is necessary to have in mind the definitions of
"trade mark", "certification mark" and "distin-
guishing guise" that are found in section 2:
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 manu
factured, 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;
"certification mark" means a mark that is used for the purpose
of distinguishing or so as to distinguish wares or services that
are of a defined standard with respect to
(a) the character or quality of the wares or services,
(b) the working conditions under which the wares have been
produced or the services performed,
(c) the class of persons by whom the wares have been
produced or the services performed, or
(d) the area within which the wares have been produced or
the services performed,
from wares or services that are not of such a defined
standard;
"distinguishing guise" means
(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 or services
manufactured, sold, leased, hired or performed by him from
those manufactured, sold, leased, hired or performed by
others;
The Registrar, as I read his decision, assumed
that what the respondent was seeking to register
was "a shaping of ... containers" and he held that
this was not a certification mark because, in his
view, the word "mark" in the definition of "certifi-
cation mark" must be given a narrow meaning
that excludes the "shaping of wares or their con
tainers" and the "mode of wrapping or packaging
wares".
The respondent appealed successfully from that
decision to the Trial Division. The Trial Judge
held that the word "mark" in the definition of
"certification mark" is used in a wide sense that
includes a guise such as the shaping of goods or
their containers. He accordingly allowed the
appeal, set aside the decision of the Registrar and
referred the matter back to him for decision in
order that the respondent's application be dealt
with on the basis that what the respondent is
seeking to register is a "mark" within the meaning
of that word in the definition of "certification
mark". That is the decision against which this
appeal is directed.
The definition of "trade mark" in section 2
refers to four categories of trade marks. However,
those four categories may be divided in two
classes: some trade marks are used by a person for
the purpose of distinguishing his wares from those
of other persons while other trade marks are used
for the purpose of certifying that- goods meet a
certain standard. The trade marks that fall in that
second class are now called "certification marks";
I will refer to those of the first class as "traditional
trade marks". The main issue on this appeal is
whether everything that is registrable as a tradi
tional trade mark is also registrable as a certifica
tion mark. The Trial Judge answered that question
in the affirmative because, as I understand his
judgment, he could not find any reason to conclude
that the word "mark" in the definition of "certifi-
cation mark" is not used in its widest sense or to
support the conclusion that Parliament intended to
exclude from registration as a certification mark a
guise such as the shaping of a container. With
respect, I cannot agree with that opinion.
When the definitions of "trade mark" and "cer-
tification mark" are read together, it is apparent
that while a traditional trade mark is either a
mark or a guise,' a certification mark, by contrast,
is necessarily a mark. This strongly suggests that a
guise cannot be registered as a certification mark;
otherwise the same word "mark" would be used in
two different senses in the definitions of "trade
mark" and "certification mark". That the same
word be used in two different meanings in the
same section of the Act is not impossible but is, in
my view, highly unlikely. True, in other sections of
the Act, the word "mark" is used in a very wide
sense but in all those cases the context indicates
that the word is not used in a narrow sense. Here,
it is the contrary. The context in which the word
"mark" is used in the definitions of "trade mark"
and "certification mark" seems to indicate that it
' In these reasons, I use the word "guise" as meaning "a
shaping of wares or their containers" or "a mode of wrapping
or packaging wares".
is used in a narrow sense that excludes guise.
Moreover, other provisions of the Act reveal an
intention on the part of Parliament to exclude a
guise from registration as a certification mark.
The definition of "trade mark" refers to two kinds
of traditional trade marks: the kind described in
paragraph (a) of the definition and the kind called
"distinguishing guise". This is so because the Act
contains special rules which apply to distinguishing
guises but do not apply to other kinds of tradition
al trade marks or to certification marks. Those
special rules are found in section 13:
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 such distinguishing
guise in association with the wares or services with which it
has been used is not likely unreasonably to limit the develop
ment of any art or industry.
(2) No registration of a distinguishing guise interferes with
the use of any utilitarian feature embodied in the distinguishing
guise.
(3) The registration of a distinguishing guise may be
expunged by the Federal Court of Canada on the application of
any interested person if the Court decides that the registration
has become likely unreasonably to limit the development of any
art or industry.
The reason for those rules, it seems to me, is
that serious consequences may flow from the grant
of a monopoly on the guise of goods. Now, wheth
er the guise of goods is used as a traditional trade
mark or as a certification mark, the consequences
flowing from the grant of a monopoly are the
same. If Parliament had intended that the guise of
goods be registrable as a certification mark, it
would not have restricted the application of the
rules contained in section 13 to "distinguishing
guises"; it would have made those rules applicable
also to certification marks consisting in the guise
of goods.
For those reasons, I am of opinion that a guise
cannot be registered as a certification mark.
As, in my view, the certification mark sought to
be registered by the respondent was either "a
shaping of wares or their containers" or "a mode
of wrapping or packaging wares" it follows that I
would allow the appeal, set aside the judgment of
the Trial Division and restore the decision of the
Registrar rejecting the respondent's application. I
would give the appellant his costs both in this
Court and in the Trial Division.
RYAN J.: I agree.
KERR D.J.: I agree.
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.