T-3800-78
Sunny Crunch Foods Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Mahoney J.—Toronto, April 20;
Ottawa, April 22, 1982.
Trade Marks — Chairman of Opposition Board rejected
opposition to appellant's trade mark, but required appellant to
amend disclaimer statement to include disclaimer of word
"Granola" — Appellant did not amend disclaimer statement
within prescribed time — Trade mark not registered — Dis
claimer not one of grounds enumerated in s. 37(2) for opposi
tion proceedings — S. 37(9) permits Registrar to delegate
authority under s. 37 — Registrar's power to require disclaim
er found in s. 34 not subject to delegation under s. 37 —
Chairman erred in accepting evidence directed solely to ques
tion of disclaimer and exceeded jurisdiction in requiring dis
claimer — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 34,
37(2),(9).
APPEAL.
COUNSEL:
Douglas N. Deeth for appellant.
T. L. James for respondent.
SOLICITORS:
Hayhurst, Dale & Deeth, Toronto, for
appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: The decision of the Chairman of
the Opposition Board subject of this appeal is
reported.' His material conclusions follow [at
pages 186-187]:
Whether the trade mark as a totality is distinctive of the
applicant is not a matter for decision, but most certainly
"granola" is not. That word quite evidently was in common
parlance prior to applicant's filing date and possibly by that
time had entered the vernacular, be that as it may be, "grano-
la" is a term that cannot now be monopolized by any individual
trader.
1 (1978), 40 C.P.R. (2d) 175.
For those reasons as well as in the public interest and in the
interest of the purity of the register I include in my decision the
requirement that the applicant amend his disclaimer statement
to include a disclaimer of the word "GRANOLA". If the dis
claimer statement has not been amended as required within one
month from the date on which this decision becomes final the
application will be refused.
Concerning the opposition itself it is my intention to reject it.
The opponent has failed to establish his first ground of opposi
tion, that the application does not comply with the require
ments of s. 29 of the Trade Marks Act, and as for his second
ground, that the presence of the word GRANOLA without a
disclaimer renders the trade mark offensive under the provi
sions of s. 12(1)(b) of the Act, that too has not been and cannot
be supported. On the one hand, as pointed out above, failure to
disclaim does not provide a basis for opposition, while on the
other hand, applicant's mark as a totality has not been shown to
be either clearly descriptive or deceptively misdescriptive.
The opposition is rejected under the authority of s. 37(8) of
the Trade Marks Act.
The appellant did not amend its disclaimer
statement within the time provided. The opponent,
who did not intervene in this appeal, did not appeal
the decision rejecting its opposition within the time
limited for such appeal. In a letter he expressly
characterized as a reflection of his views, rather
than a decision, the respondent, who considered
himself then functus officio, took the position that
the Chairman of the Opposition Board had been
entitled to require the disclaimer. In the result the
trade mark applied for has not been registered.
The grounds on which an opposition may be
based are enumerated in subsection 37(2) of the
Trade Marks Act. 2 That a disclaimer should be
required is not among them. 3 The authority of the
respondent, under section 34, to require a dis
claimer is not an authority which subsection
37(9) 4 permits the respondent to delegate to the
Associate Registrar and Chairman of the Opposi
tion Board. Because the authority to delegate pro
2 R.S.C. 1970, c. T-10.
3 Canadian Schenley Distilleries v. Registrar of Trade
Marks, et al. (1974), 15 C.P.R. (2d) 1 (F.C.T.D.).
4 Miscellaneous Statute Law Amendment Act, 1977, S.C.
1976-77, c. 28, s. 44.
37....
(9) In this section, "Registrar" includes such person as
may be authorized by the Registrar to act on his behalf for
the purposes of this section.
vided by subsection 37(9) is so clearly limited in
its express terms, it cannot be extended regardless
of where common sense, administrative conve
nience and the apparent absence of a policy basis
for the limitation might point.
The Chairman erred in accepting evidence
directed solely to the question of disclaimer and
exceeded his jurisdiction in requiring a disclaimer.
JUDGMENT
THIS COURT DOTH ORDER, DECLARE AND
ADJUDGE THAT the opposition of Robin Hood
Multifoods Ltd. has been rejected without condi
tion; THAT the decision of the Chairman of the
Opposition Board dismissing the application on
failure of the appellant to amend its disclaimer
statement was a nullity AND THAT the respondent
do forthwith deal with application no. 337,511 on
a basis consistent herewith.
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.