T-1124-85
Andres Wines Ltd. (Appellant)
v.
Canadian Marketing International Limited
(Respondent)
INDEXED AS: ANDRES WINES LTD. v. CANADIAN MARKETING
INTERNATIONAL LTD.
Trial Division, Joyal J.—Ottawa, November 3 and
December 18, 1986.
Trade marks — Registration — Allegation of confusion —
Confusion test not to be limited strictly to two competing
marks — Trade Marks Act, R.S.C. 1970, c. T-10, s. 6.
The appellant's opposition to the respondent's registration of
the trade mark "Newfie Duck" in association with sparkling
wine was rejected by the Hearing Officer. The appellant
alleged confusion between the proposed mark and its own
"Baby Duck" and two "Duck Design" registered marks. This is
an appeal from the Hearing Officer's decision.
Held, the appeal should be dismissed.
The pre-eminence of the "Baby Duck" marks in Canada does
not resolve the confusion issue. Since the use of the word
"Duck" in association with wines is quite extensive, the ques
tion arises as to whether the issue of confusion should be
limited strictly to the two competing marks or extended to
other marks as well. The distinctiveness of a registered mark is
considerably attenuated if, as in this case, it has historically
coexisted with similar marks covering similar wares. Further
more, since "Baby Duck" is a derivative of "Cold Duck", a
generic expression descriptive of some types of wines, it cannot
be considered a strong mark.
In this instance, as the case law allows, more weight should
be given to the considerations set out in paragraphs 6(5)(a) and
(e) of the Act. However, no high degree of inherent distinctive
ness is created in associating the word "duck" with either a
baby duck or with Newfoundland. Nor is there much resem
blance in appearance or sound. Nor can one readily fit in the
same mold the ideas conveyed by prancing birds and the
"Newfie" style. Finally, it would seem that the appellant's
marks have reached a stage where they might no longer require
protection against "newcomers".
CASES JUDICIALLY CONSIDERED
APPLIED:
General Motors Corp. v. Bellows, [1949] S.C.R. 678;
S.C. Johnson & Son Inc. v. Esprit de Corp, judgment
dated December 15, 1986, Federal Court, Trial Division,
T-2896-84, T-2897-84, not yet reported; Prairie Maid
Cereals Ltd. v. Christie, Brown & Co. Ltd. (1966), 48
C.P.R. 289 (B.C.C.A.).
DISTINGUISHED:
Rowntree Company Limited v. Paulin Chambers Com
pany Limited et al., [1968] S.C.R. 134; Benson &
Hedges (Canada) Limited v. St. Regis Tobacco Corpora
tion, [1969] S.C.R. 192; Campbell Manufacturing Co.
Limited v. Thornhill Industries Limited et al. (1953), 13
Fox Pat. C. 198 (Ex.Ct.); Henkel Kommanditgesell-
schaft Auf Aktien v. Super Dragon Import Export Inc.
(1984), 2 C.P.R. (3d) 361 (F.C.T.D.); Polysar Ltd. v.
Gesco Distributing Ltd. (1985), 6 C.P.R. (3d) 289
(F.C.T.D.); Murjani International Limited v. Universal
Impex Co. Ltd., judgment dated November 28, 1986,
Federal Court, Trial Division, T-1395-85, not yet report
ed; Leaf Confections Ltd. v. Maple Leaf Gardens Ltd.,
judgment dated November 28, 1986, Federal Court, Trial
Division, T-193-85, not yet reported.
REFERRED TO:
Sunway Fruit Products, Inc. v. Productos Caseros, S.A.
(1964), 27 Fox Pat. C. 173 (Ex.Ct.).
COUNSEL:
William R. Meredith, Q.C. for appellant.
Glen A. Bloom for respondent.
SOLICITORS:
Meredith & Finlayson, Ottawa, for appellant.
Osler, Hoskin & Harcourt, Ottawa, for
respondent.
The following are the reasons for judgment
rendered in English by
JOYAL J.: On April 7, 1981, the respondent
Canadian Marketing International Limited filed
an application to register a proposed trade mark
"Newfie Duck" in association with sparkling wine.
The application was subsequently approved by
the Registrar of Trade Marks under No. 467,666
and was advertised in the Trade Marks Journal.
On May 10, 1982, the appellant, Andres Wines
Limited, filed an opposition alleging confusion be
tween the proposed mark and the appellant's regis
tered marks "Baby Duck", "Duck Design" and
"Duck Design" registered respectively under Nos.
179,861, 189,016 and 190,306 in respect of fer
mented alcoholic beverages.
The appellant's opposition subsequently came on
to be heard before Hearing Officer Troicuk and in
his decision dated March 29, 1985, the Hearing
Officer, on behalf of the Registrar of Trade
Marks, rejected the opposition (see 4 C.P.R. (3d)
541).
The appellant appeals to this Court from that
decision. It alleges that the Hearing Officer erred
in his decision. Its arguments are based on the
following premises:
1. The appellant is the owner of three marks, the
word mark "Baby Duck" and the two "Duck
Design" marks. These three marks have been
used by the appellant in association the one
with the other for many years.
2. The use by the appellant of these three marks
has been extensive. Sales of wines carrying the
mark on their labels have increased over the
years from $800,000 to more than $10,000,000.
These wines are sold all over Canada and have
been extensively advertised and promoted in
both the print and electronic media. As a result,
the word mark "Baby Duck" and its duck
designs have become well-known to the general
public and have closely identified the appellant
with its particular products.
Based on the foregoing, the appellant alleges:
1. That the Hearing Officer failed to apply the
"confusion" tests set out in section 6 of the Act
[Trade Marks Act, R.S.C. 1970, c. T-10] and
in particular, failed to consider whether the use
of the two trade marks concerned in the same
area would likely lead to the conclusion that the
wares associated with each have a common
origin.
2. That the Hearing Officer failed to give due
regard to all the surrounding circumstances as
these are particularized in subsection 6(5) of
the Act.
3. That the Hearing Officer failed to consider the
strong element of distinctiveness which the
appellant's mark is now enjoying by reason of
its extensive promotion and sales over many
years.
4. Finally, that the Hearing Officer misapplied
the onus rule which imposes on an applicant for
a proposed trade mark the burden of disproving
any likelihood of confusion with a registered
trade mark.
I have already set in brief form the listing of the
appellant's original mark "Baby Duck" and the
two "Duck" designs with which the word mark has
been associated. These designs are representative
of a dancing duckling and of a walking duckling.
The image of these ducklings on the appellant's
labels creates an image of youthful cheer, merri
ment and informality. I also observe that in adver
tising its product under these marks, the appellant
has used captions of the same genre, i.e.
— "It's nice to have a little Baby Duck around the
house."
— "Raise a little Baby Duck and hatch a beautiful
friendship."
— "Andres Baby Duck. Waddle they think of
next."
— "It's everything it's quacked up to be."
As a result, both the visual image and the
written captions have complemented each other in
a homogeneous fashion to create a particular iden
tification of the product. Also as a result, as the
appellant claims, Andres Baby Duck is Canada's
largest selling wine.
The pre-eminence of the Baby Duck marks for
the purposes of the Trade Marks Act and of this
appeal does not, however, provide the final answer.
The issue before me must still be subjected to the
test of confusion between the appellant's trade
marks and the respondent's proposed mark "New-
fie Duck".
Counsel for the respondent argues that its pro
posed word mark meets the test of confusion. He
submits that the use of the word "Duck" in asso
ciation with wines is quite extensive. The appellant
itself is owner of the marks "Big Duck", "Spaghet-
ti Duck", "Little White Duck", "Petit Poussin",
"Bébé Canard", "Cold Duckling", among others.
These are all associated marks and their several
registrations, with the exception of "Big Duck"
and "Spaghetti Duck", indicate the particular
marketing direction taken by the appellant in iden
tifying its various wines with the egregious little
duck or duckling, standing out from the flock, so
to speak.
Other vintners have also adopted the word
"Duck" in association with fermented spirits.
There is "Brights Duck", registered on January
30, 1980 under No. 240,280, with the word
"Duck" disclaimed. There is "Daddy Duck" and
"Fuddle Duck", both of which have since been
expunged. There is also "Frosty Duck", registered
June 6, 1980 under No. 246,217, "Sparkling
Canada Duck" and several marks called "Cold
Duck".
The respondent urges me to conclude from the
state of the register that the word "Duck" in
association with fermented spirits has become gen
eric. Indeed, the appellant itself researched the
etymology of the words "Cold Duck" and in its
tent cards used in dining establishments offered
this item of information:
For many years there has been a German tradition that every
joyous party was brought to a happy ending with a night-cap.
This night-cap consisted of mixing in a large bowl all of the still
and sparkling wines remaining in the bottles. Everyone then
toasted the cold end of the evening with a cup from this bowl—
the drink became known as "COLD END" which in German is
"KALTE ENDS". When the custom was introduced to North
America a simple error in translation resulted in the "KALTE
EN DE" of old Germany becoming the "KALTE ENTE" Or "COLD
DUCK" of today. It is a delightful blend of Champagne and
sparkling Burgundy.
Whether this etymological history is accurate or
not is of minor concern. It would appear, accord
ing to the evidence, to be generally accepted in the
wine industry. It would explain the several regis
trations of various trade marks bearing the words
"Cold Duck" or variations thereof as in "Baby
Duck", "Frosty Duck", "Canada Duck" and the
like. It would explain why in the use of the word
"Duck" among various vintners, no one appears to
have objected to each other's use of it.
Well, there is always a first time. The appel
lant's obvious hold of a major market share of
"duck" wines under its trade mark "Baby Duck"
and associated designs seemingly would put it in a
position where it might now claim a more exclusive
use of it. At least, it might claim that "Newfie"
provokes the same image of youthful cheer and
merriment as dancing or strutting ducklings, a
pretention which might ruffle the feathers of some
people in the fair Province of Newfoundland.
The appellant suggests that evidence of other
marks on the register might be relevant if there
were an issue whether the appellant's trade marks
have a narrow scope. It might apply in the case of
an infringement action involving the appellant's
trade marks. Counsel states such is not the issue
before me, the sole issue being whether or not
"Newfie Duck" is confusing with its registered
marks within the sense given to "confusion" by
section 6 of the Act.
In elaborating on this, appellant's counsel
emphasizes the surrounding circumstances under
subsection 6(5) to which the Court must apply its
mind to lead to a proper inference of confusion in
accordance with subsection 6(2). He quotes the
following passage from the Rowntree Company
Limited v. Paulin Chambers Company Limited et
al., [1968] S.C.R. 134, at page 136:
It will be seen from these provisions that the essential
question to be determined in deciding whether or not a trade
mark is confusing with a registered trade mark is whether its
use would be likely to lead to the inference that the wares
associated with it and those associated with the registered trade
mark were produced or marketed by the same company.
In determing this issue, the Court or the Registrar is directed
by s. 6(5) of the Act to "have regard to all the surrounding
circumstances .... [Emphasis added.]
Counsel also refers to Benson & Hedges
(Canada) Limited v. St. Regis Tobacco Corpora
tion, [1969] S.C.R. 192 and to the observations of
Pigeon J. at pages 202 and 203 when dealing with
the test of confusion between "Gold Band" and
"Golden Circlet":
It is no doubt true that if one examines both marks carefully,
he will readily distinguish them. However, this is not the basis
on which one should decide whether there is any likelihood of
confusion.
The tribunal must bear in mind that the marks will not
normally be seen side by side and guard against the danger
that a person seeing the new mark may think that it is the
same as one he has seen before, or even that it is a new or
associated mark of the proprietor of the former mark. (Hals-
bury's Laws of England, 3rd ed., vol. 38, No. 989, p. 590).
In The Matter of McDowell's Application ((1926), 43
R.P.C. 313), Sargant L.J. said at p. 338:
Even if the very slight distinction between "Nujol" and
"Nuvol" were noticed, yet, having regard to the ordinary
practice of large producers to register a series of similar
marks to denote various grades of their produce, it seems to
me highly probable that an inference of identity of origin
would be drawn.
The practice referred to in this quotation is sanctioned by the
provisions of s. 15 of the Trade Marks Act respecting
"associated trade marks" and it should be borne in mind in
considering the issue of confusion.
In the present case there is a distinct possibility that "Golden
Circlet" would appear as a sort of diminutive of "Gold Band",
especially on account of the meaning of "circlet". This, as well
as the other considerations above stated, in my opinion, further
supports the learned President's finding that confusion would
be likely to occur.
Counsel for the appellant then check-marks the
statutory indicia set out in subsection 6(5). He
breaks them down as follows:
(a) The appellant's trade mark and designs are
inherently distinctive of the owner's wines and
have been used for a large number of years.
(b) The appellant's trade mark and design are
now well-known throughout Canada.
(c) The nature of the wares covered by the com
peting mark is identical, namely wines or
fermented spirits.
(d) The nature of the trade is also identical: both
wares would be sold in liquor and wine stores
and available in drinking and dining lounges.
(e) There is a resemblance and an obvious
similarity between "Baby Duck" and "Newfie
Duck".
Counsel for the appellant then urges me to find
that the use of the two marks side by side or in the
same area would, to paraphase subsection 6(2),
lead to the inference that the wines associated with
these trade marks are produced by the same
person.
It is a telling and learned argument and were
"Baby Duck" standing alone side by side with
"Newfie Duck", I might have less problem with it.
I would perhaps apply the reasoning in Campbell
Manufacturing Co. Limited v. Thornhill Indus
tries Limited et al. (1953), 13 Fox Pat. C. 198
(Ex.Ct.), respecting "Snow Goose" and "Blue
Goose" and the reasoning in Henkel Kommandit-
gesellschaft Auf Aktien v. Super Dragon Import
Export Inc. (1984), 2 C.P.R. (3d) 361 (F.C.T.D.),
respecting "Olicolor" and "Policolor". I am con
cerned, however, with the realities. In wine stores,
"Baby Duck" and its shelf-mate, "Newfie Duck",
would not be engaged in a pas de deux in a spirit
of mutual merriment but would perforce have to
contend with braces of somewhat more sedate
birds, e.g. "Canada Duck", "Brights Duck",
"Frosty Duck", "Kool Duck" and "Malt Duck".
The quick question then is whether or not in
applying the provisions of subsection 6(2) of the
Act, the issue of confusion should be limited strict
ly to the two competing marks or should it be
extended to other marks as well. It stands to
reason, in my view, that the distinctiveness of any
individual registered mark is considerably
attenuated if it has historically stood side by side
with similar marks covering similar wares.
I am mindful of the dictum in Sunway Fruit
Products, Inc. v. Productos Caseros, S.A. (1964),
27 Fox Pat. C. 173 (Ex.Ct.), that the state of the
register is not a reason for holding that no confu
sion exists. What the facts before me indicate,
however, is that "Baby Duck" cannot be con
sidered a strong mark in the statutory sense of the
term. Its derivative character from "Cold Duck",
an expression which I must find generic and
descriptive of some types of wines leads to no other
conclusion. I add to this as well the proliferation of
other registered marks for wines joining the word
"duck" to some other qualifying word and effec
tively constricting the area of each mark's protec
tion. It has been long established that:
... where a party has reached inside the common trade
vocabulatory for a word mark and seeks to prevent competitors
from doing the same thing, the range of protection to be given
him would be more limited than in the case of an invented or
unique or non-descriptive word ... [per Rand J. in General
Motors Corp. v. Bellows, [1949] S.C.R. 678, at p. 691.]
In a similar vein, it has been recently stated that
the more often a particular word is used as a trade
mark, the less the protection afforded. This posi
tion was taken by Cullen J. in allowing an appeal
from the Registrar of Trade Marks who had
refused to register "Esprit" for personal care prod
ucts, e.g. hair shampoos, by reason of the prior
registration and use of "Esprit de Corp" covering
high fashion women's wear. In that case, S.C.
Johnson & Son Inc. v. Esprit de Corp, Court Nos.
T-2896-84 and T-2897-84, judgment dated
December 15, 1986, unreported, Cullen J. noted
some seventeen registrations bearing the words
"esprit" or "esprite" either alone or with other
qualifying words. His Lordship relied particularly
on a British Columbia Court of Appeal decision in
Prairie Maid Cereals Ltd. v. Christie, Brown &
Co. Ltd. (1966), 48 C.P.R. 289, where he cites
Maclean J.A. at page 295 as follows:
I have already referred to the circumstances that no evidence
was called to indicate that anybody had been deceived by the
get-up of the appellant's package. In dealing with this matter
Rinfret, C.J.C., in Dastous and Rose Canned Food Products v.
Mathews-Wells Co., Ltd., 12 C.P.R. 1 at p. 6-7, 10 Fox Pat. C.
1, [1950] S.C.R. 261 said:
"It should be noted at once that there is no evidence of
confusion, or deception, by the buying public between the
products of the respective parties, and this is very material.
On this point it is stated by Kerly on Trade Marks at
p. 294:—
"Where the marks have been circulating side by side in
market where deception is alleged to be probable, the fact
that no one appears to have been misled is very material."
This principle would appear to be applicable to
the long range of "duck" wines trade marks
already on the register. There is no evidence that
they have not been flocking amicably together.
I agree with appellant's counsel that the wines
under the "Baby Duck" label have been extensive-
ly and intelligently marketed, promoted and adver
tised. The mark has also been in use for many
years and its wares are now readily identifiable in
all the communities across Canada. Wine under
the "Baby Duck" label is the single most popular
wine in the country. As such, it certainly invites a
stronger measure of protection to the extent that it
has become well-known and that it has been in use
for some time. It is also deserving of some protec
tion because the proposed mark "Newfie Duck"
covers the same wares and the nature of the trade
is identical. Were these the only indicia applicable,
I might be tempted to apply the reasoning in
Polysar Ltd. v. Gesco Distributing Ltd. (1985), 6
C.P.R. (3d) 289 (F.C.T.D.), and in Murjani
International Limited v. Universal Impex Co.
Ltd., T-1395-85, Dubé J., judgment dated Novem-
ber 28, 1986, not yet reported (F.C.T.D.) and in
Leaf Confections Ltd. v. Maple Leaf Gardens
Ltd., T-193-85, Rouleau J., judgment dated
November 28, 1986, not reported (F.C.T.D.). In
this latter decision, Rouleau J. rules out "Leaf'
and design for use in association with bubble gum
against the registered trade mark "Toronto Maple
Leafs" and a similar design, substantially on the
grounds of the registered mark's strength.
In these cases, it is established that the con-
siderata in subsection 6(5) need not have equal
weight. Rouleau J. put it this way:
Nevertheless, it is clear that in considering the elements of
subsection 6(5) of the Trade Marks Act, each element need not
be interpreted as having equal weight. A particular case might
justify greater significance being given to one criterion over
others. As previously stated, I find the respondent's mark and
design to be a strong one, well known throughout Canada.
In the particular case before me, I must give
more weight to the considerations set out in para
graph 6(5)(a) of the Act dealing with the inherent
distinctiveness of the marks and in paragraph
6(5)(e) dealing with their resemblance in appear
ance or sound or in the ideas suggested by them.
The word "duck" as applicable to wine is gener
ic and substantially descriptive. It is applied to any
number of different wines. No high degree of
inherent distinctiveness is created in associating
that word with either a baby duck or with
Newfoundland.
I must reach a similar conclusion on the issue of
resemblance or sound. The word "baby" and the
word "Newfie", in my mind, have not that degree
of phonetic or structural similarity to create confu
sion on the "first impression" test, on the "first
part of the word" test or on the "slurring" test.
There is left to consider the final criterion,
namely the ideas suggested by "Baby Duck" and
design and "Newfie Duck". The appellant makes a
strong case that the words "Baby Duck" used in
association with its designs of baby ducks suggest
the same idealized style prevalent in Newfound-
land with its informality and its abundance of
cheer, merriment and mirth.
There is of course no evidence that these attrib
utes are typical of Newfoundland. Neither is there
evidence, I might add, that the mournful state of
desolation and gloom mirrored in the play "Jacob's
Wake", is any more typical of its population.
Either way, should we enter into that debate, there
is risk of touching upon the sensibilities s of a people
whose qualities transcend the quick imagery which
either this piece of litigation or that piece of
theatre might provoke.
Certain it is that for purposes of the Trade
Marks Act, I cannot readily fit into the same mold
the ideas conveyed by prancing birds and the
Newfie style.
I well recognize the appellant's concern as
cogently articulated by counsel in assuring for
itself the continuing integrity of its trade marks
and of the product associated with them. Yet, the
appellant has not only faced and survived the
competition of wines carrying similar labels but
appears to have done handsomely as well. One
might surmise that the denial of statutory protec
tion from a new entry into the market comes at a
time when such protection might no longer be
required.
Although I might not totally agree with all the
reasoning of the Hearing Officer in his decision, I
agree with his conclusion. This appeal is therefore
dismissed with costs.
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.