T-1395-85
Murjani International Limited (Appellant)
v.
Universal Impex Co. Ltd. (Respondent)
INDEXED AS: MURJANI INTERNATIONAL LTD. v. UNIVERSAL
I MPEX CO.
Trial Division, Dubé J.—Ottawa, November 19
and 28, 1986.
Trade marks — Registration — Opposition — Registrar
finding small degree of resemblance between respondent's
mark "Jon Vanderveldt" and appellant's "Gloria Vanderbilt",
both used in association with clothing, not resulting in confu
sion — Appeal — Publicity and use enhancing degree of
distinctiveness — More than small degree of resemblance
Imperfect recollection and effect of careless pronunciation to
be taken into consideration — Resemblance in sound and
appearance striking — Letters "J" and "g" likely confusing in
bilingual setting — "Vanderveldt" obvious imitation — Spe
cial protection granted by courts to person using own name in
business — Failure by respondent to rebut presumption use of
fictitious name showing intention to create confusion to own
benefit — Appeal allowed — Trade Marks Act, R.S.C. 1970,
c. T-10, ss. 6(5), 16(3), 37(8), 56.
This is an appeal against the decision of the Registrar of
Trade Marks rejecting the appellant's opposition to the
respondent's application to register the trade mark "Jon Van-
derveldt and Design" for use in association with clothing. The
Registrar found that the respondent's trade mark was not
confusing with the appellant's marks "Gloria Vanderbilt",
"Gloria Vanderbilt Design" and "GV Design" also used in
relation to clothing. The Registrar was of the view that when
considered in their totalities and as a matter of first impression
the trade marks bore a small degree of resemblance between
them. The respective design features of the marks and the use
of different first names such as "Gloria" and "Jon" accentuat
ed the differences between the marks.
Held, the appeal should be allowed.
It is well established that surnames and letters are very weak
in terms of distinctiveness and therefore deserve little protec
tion. However, it has been held by this Court that distinctive
ness may be enhanced through publicity and use. In the present
case, there was uncontested evidence that the Vanderbilt signa
ture and the initials G.V. have achieved high distinctiveness on
the market following massive publicity campaigns in Canada
and the United States. The Court held that the word Vander-
bilt conveyed to the general public the impression of a distin
guished foreign name which carried an aura of status and
exclusivity.
On the question of the degree of resemblance between the
marks, the Court referred to the well-known remarks of Lux-
moore L.J. in the English case of Rysta. According to His
Lordship, it is not for the Court to enter into a "meticulous
comparison of the two words letter by letter and syllable by
syllable pronounced with the clarity to be expected from a
teacher of elocution". The Court must rather "make allowance
for imperfect recollection and the effect of careless pronuncia
tion" on the part of a prospective customer. On that basis, the
marks at issue bore more than a small degree of resemblance.
The resemblance in sound was striking with the first two
syllables being identical and the third one dropping off. The
letters "j" and "g" could easily lead to confusion in a bilingual
setting. Both designs appear in the form of signatures closely
resembling one another. The word "Vanderveldt", a fictitious
surname, was seen as an obvious imitation of the surname
"Vanderbilt".
Courts have granted special protection to a person using his
own name to carry out his business as opposed to the protection
granted to a trade mark bearing a fictitious name. In the case
at bar, Gloria Vanderbilt lent her own name, thereby her
personal prestige to the appellant while the respondent merely
invented a name for its trade mark thereby raising a presump
tion that by adopting such a fictitious matching name, the
respondent intended to create confusion to its own benefit. No
evidence was filed to rebut that presumption. Nor did the
respondent attempt to show that confusion was unlikely.
CASES JUDICIALLY CONSIDERED
APPLIED:
In the matter of an Application by Rysta Ld. to register
a Trade Mark (1943), 60 R.P.C. 87 (C.A.).
CONSIDERED:
Sarah Coventry Inc. v. Abrahamian et al. (1985), 1
C.P.R. (3d) 238 (F.C.T.D.); GSW Ltd. v. Great West
Steel Industries Ltd. (1976), 22 C.P.R. (2d) 154
(F.C.T.D.); Cochrane-Dunlop Hardware Ltd. v. Capital
Diversified Industries Ltd. (1977), 30 C.P.R. (2d) 176
(Ont. C.A.); In the Matter of London Lubricants (1920)
Limited.'s Application (1925), 42 R.P.C. 264 (C.A.);
Joseph Rodgers & Sons Ld. v. W.N. Rodgers & Co.
(1924), 41 R.P.C. 277 (Ch. D.); Marengo v. Daily
Sketch and Sunday Graphic Ld. (1948), 65 R.P.C. 242
(H.L.); The American Distilling Company v. Bellows &
Company, Inc., 88 USPQ 254 (Cal. C.A. 1951); British
American Bank Note Company Limited v. Bank of
America National Trust and Saving Association, [1983]
2 F.C. 778; 71 C.P.R. (2d) 26 (T.D.).
REFERRED TO:
Canadian Schenley Distilleries Ltd. v. Canada's Manito-
ba Distillery Ltd. (1976), 25 C.P.R. (2d) 1 (F.C.T.D.);
Benson & Hedges (Canada) Limited v. St. Regis Tobacco
Corporation, [ 1969] S.C.R. 192; 57 C.P.R. 1; Aristoc Ld.
v. Rysta Ld. (1945), 62 R.P.C. 65 (H.L.); Battle Phar
maceuticals v. The British Drug Houses, Limited, [ 1946]
S.C.R. 50; Imperial Tobacco Co. of Canada Ltd. v.
Philip Morris Inc. (1976), 27 C.P.R. (2d) 205; Faberge
Incorporated and Faberge of Canada Ltd. v. Holiday
Magic Ltd. (1978), 39 C.P.R. (2d) 76; Parker-Knoll
Limited v. Knoll International Limited, [1962] R.P.C.
265 (H.L.); The Hurlbut Company and The Hurlbut
Shoe Company, [1925] S.C.R. 141; Burgess v. Burgess, 3
DeG. M. & G. 896 (C.A.).
COUNSEL:
Glen A. Bloom for appellant.
No one appearing for respondent.
SOLICITORS:
Osler, Hoskin & Harcourt, Ottawa, for
appellant.
Lapointe Rosenstein, Montréal, for respon
dent.
The following are the reasons for judgment
rendered in English by
DUBÉ J.: The appellant ("Murjani") appeals
pursuant to section 56 of the Trade Marks Act'
("the Act") from a decision of the Registrar of
Trade Marks made pursuant to subsection 37(8)
of the Act rejecting the appellant's opposition to
the respondent's ("Universal") trade mark
application number 456,248 for the trade mark
"Jon Vanderveldt & Design".
The appeal is based on two grounds. Firstly, that
the Registrar erred in holding that Universal's
trade mark is not confusing with any of Murjani's
three trade marks, "Gloria Vanderbilt", "Gloria
Vanderbilt Design" and "GV Design" and second
ly that the Registrar erred in holding that Univer
sal is a person entitled to registration of the trade
mark "Jon Vanderveldt & Design".
Murjani, a British Virgin Islands corporation,
with the consent and authorization of Ms. Gloria
Vanderbilt of New York, U.S.A., has used in
Canada since 1979 the trade mark "Gloria Van-
derbilt", the trade mark "Gloria Vanderbilt
Design":
' R.S.C. 1970, c. T-10.
and the trade mark "GV Design":
t
! \ 0000 00 0.1°.°
•
•
in association with certain articles of clothing.
On July 7, 1980 Universal filed in the Canadian
Trade Marks Office its application number
456,248 to register the proposed trade mark:
(ffit tikAtir
for use in association with clothing.
During the examination of its application Uni
versal admitted that its trade mark was an inven
tion and did not, to the knowledge of Universal,
constitute the signature of any person who was
alive or had been living within the last thirty years.
Murjani opposed the application on March 25,
1981 on the grounds mentioned earlier and filed
four affidavits. On April 11, 1983 Universal's
trade mark agents notified the Registrar that it
would not be presenting any evidence. On Decem-
ber 20, 1983, Murjani filed its written arguments
in support of its opposition. Universal filed no
written arguments. On April 30, 1985, the Regis
trar rejected Murjani's opposition pursuant to sub
section 37(8) of the Act.
The agents of Universal notified the Federal
Court that they would not be attending the hear
ing of this appeal of the decision of the Registrar
and confirmed that their client "has never had any
intention of contesting this appeal". Under similar
circumstances Cattanach J. said in Canadian
Schenley Distilleries Ltd. v. Canada's Manitoba
Distillery Ltd. 2 that such a situation places the
judge in an "invidious" position which was "almost
tantamount to making him counsel for the
respondent".
It is settled law that the Registrar's decision in
the matter of confusing trade marks should be
given great weight and ought not to be set aside
lightly, but such reliance on the Registrar's deci
sion on whether two trade marks are or are not
confusingly similar must not go to the extent of
relieving the judge hearing any appeal from the
Registrar's decision of his own responsibility for
determining the issue with due regard to all the
relevant circumstances (see Benson & Hedges
(Canada) Limited v. St. Regis Tobacco Corpora
tion, at pages 199-200 S.C.R.; 8-9 C.P.R.). 3
In his decision the Registrar correctly stated
that the essential question to be determined is
whether the applicant's trade mark is confusing
with one or more of the opponent's trade mark (at
the outset of the instant appeal, counsel for Mur-
jani argued that the alleged confusion was with the
"Gloria Vanderbilt Design" and the "GV Design"
and not the "Gloria Vanderbilt" trade mark in
block letters).
The Registrar also correctly stated that the
material date for considering this question is the
date of filing of Universal's application (July 16,
1980) in the case of the ground of opposition that
Universal is not the person entitled to registration
under subsection 16(3) of the Act and the date of
filing of the statement of opposition (March 25,
1981) with respect to the ground of opposition that
the applicant's trade mark is not distinctive.
2 (1976), 25 C.P.R. (2d) 1 (F.C.T.D.).
3 [1969] S.C.R. 192; 57 C.P.R. 1.
(1985), 5 C.P.R. (3d) 115.
He also correctly pointed out that with respect
to the first ground of opposition there is an initial
burden upon Murjani to establish use of its trade
mark prior to the date of filing of Universal's
application and that Murjani had not abandoned
its trade mark at that time. On that score, he
properly ruled that the burden had clearly been
discharged by the evidence filed by Murjani.
The Registrar also found that "the nature of the
respective wares and trades are very similar". He
held that there was a "degree of resemblance
between the trade marks" and correctly described
the similarities between them as follows [at page
118]:
The first two syllables of the surnames "Vanderbilt" and
"Vanderveldt" are identical and the third syllables of each are
similar in pronunciation. Especially since the pronunciation of
the letter "g" in French is similar to the pronunciation of the
letter "j" in English and vice versa, there is a significant
resemblance between the letters "jv" and "gv".
However, he went on to say that surnames and
letters are very weak in terms of distinctiveness
and concluded on those grounds, as follows, that
Universal's trade mark is not confusing [at page
118]:
It is well established, however, that surnames and letters are
very weak in terms of distinctiveness. The average person is
accustomed to making relatively fine distinctions between dif
ferent surnames and between different letters. Because of this.
the differences between the applicant's trade mark and the
opponent's trade marks and in particular the various design
features and the use of the name "Jon" instead of the name
"Gloria" assume a relatively greater importance. When the
applicant's trade mark and the opponent's trade marks are
considered in their totalities and as a matter of first impression.
I consider the degree of resemblance between them to be small.
Because of this, despite the use and advertising by the opponent
of its trade marks in Canada and the fact that the nature of the
respective wares and trades are very similar, I am satisfied that
the applicant's trade mark is not confusing with any of the
opponent's trade marks within the meaning of s. 6 of the Trade
Marks Act. Accordingly, I reject the opponent's grounds of
opposition that the applicant is not the person entitled tc
registration and that the applicant's trade mark is not
distinctive.
The circumstances to be considered in determin
ing whether trade marks are confusing are set out
in subsection 6(5) of the Act which, for conve
nience, I am reproducing in full:
6....
(5) In determining whether trade marks or trade names are
confusing, the court or the Registrar, as the case may be, shall
have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade marks or trade
names and the extent to which they have become known;
(b) the length of time the trade marks or trade names have
been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade marks or
trade names in appearance or sound or in the ideas
suggested by them.
Before dealing separately with each paragraph
of subsection 6(5) it is important to restate the
well-known principles established by Luxmoore
L.J. In the Matter of an Application by Rysta Ld.
to register a Trade Mark: 5
It is the person who only knows the one word, and has
perhaps an imperfect recollection of it, who is likely to be
deceived or confused. Little assistance, therefore, is to be
obtained from a meticulous comparison of the two words letter
by letter and syllable by syllable pronounced with the clarity to
be expected from a teacher of elocution.
The Court must be careful to make allowance for imperfect
recollection and the effect of careless pronunciation and speech
on the part not only of the person seeking to buy under the
trade description, but also of the shop assistant ministering to
that person's wants.
(a) The inherent distinctiveness of the trade
marks and the extent to which they have
become known
At the outset, I must find that the four affida
vits filed by Murjani are to be accepted as evi
dence because the affiants were not cross-
examined. 6 In my view, Murjani's uncontroverted
5 (1943), 60 R.P.C. 87 (C.A.), at p. 108. This principle was
approved by both the House of Lords in Aristoc Ld. v. Rysta
Ld. (1945), 62 R.P.C. 65 and the Supreme Court of Canada in
Battle Pharmaceuticals v. The British Drug Houses, Limited,
[1946] S.C.R. 50.
6 See Imperial Tobacco Co. of Canada Ltd. v. Philip Morris
Inc. (1976), 27 C.P.R. (2d) 205, at p. 208; Faberge Incorpo
rated and Faberge of Canada Ltd. v. Holiday Magic Ltd.
(1978), 39 C.P.R. (2d) 76, at p. 78.
evidence establishes that "Gloria Vanderbilt
Design" and "GV Design", as a result of massive
advertising campaigns in both the United States
and in Canada, had already become widely known
in this country prior to the date of Universal's
application. As a result, sales in both the United
States and Canada were booming.
According to Hannah North, General Merchan
dise Manager of The T. Eaton Co. Ltd., "by July
1980 the Gloria Vanderbilt mark had received
widespread customer recognition in Canada" and
the use of the proposed Vanderveldt trade mark
"in association with articles of clothing would
likely cause confusion in the Canadian public as to
the source of such clothing".
According to the affidavit of Kaisar Ahmad, the
Senior Vice-President of Murjani, Murjani "was
looking for a status trade mark" and selected the
Vanderbilt name which was at that time already
widely known in the United States and elsewhere
in the world. Gloria Vanderbilt, a designer of some
renown, was the great-great-granddaughter of
Commodore Cornelius Vanderbilt, founder of a
vast railroad fortune in the United States. The sale
of Gloria Vanderbilt clothing was "an immediate
success on the U.S. market". Total sales started at
$6,700,000 U.S. in 1978 and rose to $168,750,000
U.S. in 1981. Sales in Canada for that year
reached $1,000,000 U.S. Advertising expenditures
in Canada for that year were of $400,000 U.S.
The proposition of the Registrar that surnames
and letters are weak in terms of distinctiveness and
therefore deserve little protection is well estab
lished. However, the distinctiveness of such trade
marks may be enhanced through publicity and use.
In Sarah Coventry Inc. v. Abrahamian et al.,' I
held that the trade mark "Zaréh" does not cause
confusion with the trade mark "Sarah". Relying
7 (1985), 1 C.P.R. (3d) 238 (F.C.T.D.).
on GSW Ltd. v. Great West Steel Industries Ltd.'
I also found that "the degree of distinctiveness
attributed to a weak mark may be enhanced
through intensive use".
In GSW Ltd. v. Great West Steel Industries
Ltd., above referred to, Cattanach J. said at page
167:
However a "weak" mark by long and extensive use might
become distinctive. For the reasons expressed above I am of the
opinion that the appellant has failed to establish that its mark
had become distinctive.
In Cochrane-Dunlop Hardware Ltd. v. Capital
Diversified Industries Ltd., 9 Blair, J. A. of the
Ontario Court of Appeal referred to Cattanach J.
in the above decision and remarked that in that
case the trade mark "GSW" in block letters "vir-
tually without embellishment" was weak, but
found (at page 183) that "the result might have
been different had the mark consisted not only of
letters of the alphabet but also design features
giving it greater distinctiveness". In the instance
case, of course, the Vanderbilt name and initials
are presented in the signature form and according
to the uncontested evidence aforementioned both
the Vanderbilt signature and the initials G.V. have
achieved high distinctiveness on the market follow
ing crash publicity campaigns in both countries.
There is also evidence of a spillover of the Ameri-
can advertising campaign into this country.
The word Vanderbilt conveys to me, and I
believe that would be the reaction of the general
public, the impression of a distinguished foreign
name, probably of Dutch extraction, which carries
a rich aura of status and exclusivity.
(b) The length of time the trade marks or trade
names have been in use
The "Gloria Vanderbilt Design" and the "GV
Design" marks have been used in Canada since
mid-1979 and at least as early as March 19, 1980
s (1976), 22 C.P.R. (2d) 154 (F.C.T.D.).
9 (1977), 30 C.P.R. (2d) 176 (Ont. C.A.).
respectively. There is no evidence that the "Jon
Vanderveldt & Design" mark has ever been used.
In the absence of evidence of use of the Vander-
veldt mark, there is no burden upon Murjani to file
evidence of actual confusion between the marks.
(c) The nature of the wares
The wares of both parties are articles of
clothing.
(d) The nature of the trade
According to the evidence, the wares of Murjani
are sold to the Canadian public through nation
wide retail department stores. There is no evidence
as to how and where Universal would sell its
wares.
(e) The degree of resemblance between the marks,
appearance, sound or ideas suggested
The Registrar found a "degree of resemblance"
between the marks. I would go further than that.
At first sight, the word Vanderveldt appeared to
me to be an obvious imitation of the surname
Vanderbilt. Both words look so much alike and
sound so similar that the former, not being the
surname of any person, was clearly created to
come very close to the latter without being
identical.
Moreover, both designs appear in the form of
signatures which closely resemble one another,
certainly enough in my view to create confusion at
first blush. And the initials, "JV" and "GV", are
as close as you can come in pairing similar combi
nations of two letters from the alphabet. The
letters "J" and "G" could easily lead to confusion,
as the Registrar noted, in a bilingual setting. Some
bilingual people pause before pronouncing either a
"j" or a "g" in either language so as to avoid
possible mispronunciation. I know I do.
Returning to the well-known quote of Luxmoore
L.J., it is not for the Court to enter into a "meticu-
lous comparison of the two words letter by letter
and syllable by syllable pronounced with the clari
ty to be expected from a teacher of elocution". The
Court must "make allowance for imperfect recol
lection and the effect of careless pronunciation" on
the part of a prospective customer and "also of the
shop assistant ministering to that person's wants".
The resemblance in sound between the two
marks is even more telling, with the first two
syllables being identical and the third one drop
ping off. As stated by Sargeant L.J. in In the
Matter of London Lubricants (1920) Limited.'s
Application: 10
... the tendency of persons using the English language to slur
the termination of words also has the effect necessarily that the
beginning of words is accentuated in comparison, and in my
judgment, the first syllable of a word is, as a rule, far the most
important for the purpose of distinction.
Other surrounding circumstances (subsection
6(5))
There is a substantial body of law and jurispru
dence granting special protection to a person using
his or her name to carry out his or her business, as
opposed to the protection granted to a trade mark
bearing a fictitious name. In Joseph Rodgers &
Sons Ld. v. W.N. Rodgers & Co.," Mr. Justice
Romer of the High Court of Justice of England,
discussed the law applicable to the matter and said
as follows at page 291:
Arriving at that conclusion of fact, what is the law that is
applicable to the matter? I think the law can be very simply
stated. It is the law of this land that no man is entitled to carry
on his business in such a way as to represent that it is the
business of another, or is in any way connected with the
business of another; that is the first proposition. The second
proposition is, that no man is entitled so to describe or mark his
goods as to represent that the goods are the goods of another.
To the first proposition there is, I myself think, an exception: a
man, in my opinion, is entitled to carry on his business in his
own name so long as he does not do anything more than that to
cause confusion with the business of another, and so long as he
does it honestly. It is an exception to the rule which has of
necessity been established.
In Parker-Knoll Limited v. Knoll International
10 (1925), 42 R.P.C. 264 (C.A.), at p. 279.
11 (1924), 41 R.P.C. 277 (Ch. D.).
Limited, 12 Lord Morris of Borth-y-Gest set out six
propositions which would apply to this matter. In
proposition 4 he quoted with approval Romer J.
from the above judgment and also Lord Simonds
who said as follows in Marengo v. Daily Sketch
and Sunday Graphic Ld. 13 (at page 251):
It is an unassailable general proposition that the interests alike
of honest traders and of the public require that the goods of A
should not be confused with the goods of B. But that proposi
tion is subject to the qualification that a man must be allowed
to trade in his own name and, if some confusion results, that is
a lesser evil than that a man should be deprived of what would
appear to be a natural and inherent right. But ... it is a
fantastic gloss upon this well-established qualification to say
that it justifies a trader in placing upon his goods a mark
which, however much he may intend it to signify his name, is
yet liable to suggest to reasonable men the name of another.
In The Hurlbut Company and The Hurlbut
Shoe Company, 14 the Supreme Court of Canada
[at page 147] referred to a passage in the judg
ment of Turner L.J. in Burgess v. Burgess 15 [at
page 904] which it accepted as a true principle of
law:
Where a person is selling goods under a particular name, and
another person, not having that name, is using it, it may be
presumed that he so uses it to represent the goods sold by
himself as the goods of the person whose name he uses; but
where the defendant sells goods under his own name, and it
happens that the plaintiff has the same name, it does not follow
that the defendant is selling his goods as the goods of the
plaintiff.
Finally, in The American Distilling Company v.
Bellows & Company, Inc., 16 the California District
Court of Appeal, said at page 259:
In the instant case we have the borrowed surname of an
individual who has no interest in appellant's business.
The courts will go to some lengths to protect the right of an
individual in his own surname ....
12 [1962] R.P.C. 265 (H.L.), at p. 279.
13 (1948), 65 R.P.C. 242 (H.L.).
14 [1925] S.C.R. 141.
15 3 DeG. M. & G. 896 (C.A.).
16 88 USPQ 254 (Cal. C.A. (1951)).
It must be kept in mind, therefore, that if appellant's own name
were "Fellows" it would have a right in that name that the
courts would protect to the greatest extent possible. Appellant
here, however, had an unlimited choice, and he would be under
a duty to choose a name that may not be considered a colorable
imitation of another trade mark.
In the case at bar, it must be borne in mind that
Gloria Vanderbilt lent her own name, thus her
considerable personal status and prestige, to Mur-
jani for its trade mark, whereas Universal merely
invented a name for its own trade mark thereby
raising a presumption that, by adopting such a
fictitious matching name, Universal intended to
create confusion to its own benefit. No evidence
was filed to rebut that presumption. On the other
hand, the uncontradicted evidence is to the effect
that Murjani acted honestly in carrying out its
business under its purposeful trade mark.
Had Universal appeared at this hearing, it
might have contended that where an opponent to
the registration of a trade mark relies on prior use,
the onus lies upon him to establish a reputation in
the trade in connection with a mark of some
character. That very argument was addressed by
Cattanach J. in British American Bank Note
Company Limited v. Bank of America National
Trust and Saving Association." He said as follows
(at pages 792 F.C.; 35 C.P.R.):
In my view that stark statement is much too simplified.
The onus is upon an applicant for the registration of a trade
mark to establish his right thereto and that onus is constant
upon him (see Eno v. Dunn (1890), 15 App. Cas. 252 [H.L.])
and that includes the onus of showing that confusion is
unlikely.
An onus never shifts but a burden of proof does. The applicant
may rebut the proof proffered by the opponent.
In this instance, the applicant Universal has not
even attempted to show that confusion is unlikely
and has made no effort to rebut the proof prof
fered by the opponent Murjani.
For all those reasons, the appeal is allowed with
costs.
'' [1983] 2 F.C. 778; 71 C.P.R. (2d) 26 (T.D.).
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.