1 Ex. C.R. EXCHEQUER COURT OF CANADA [19681 313 BETWEEN: Ottawa 1967 HOME JUICE COMPANY, HOME June 27 JUICE COMPANY LIMITED and APPLICANTS; Sept. 5 ,JAY-ZEE FOOD PRODUCTS LIMITED AND ORANGE MAISON LIMITÉE RESPONDENT. Trade Marks—"Orange Maison" used in association with orange juice— Whether indicating product home-made—Meaning of "maison" in French—Trade Marks Act, s. 15(1)(b). Applicants apphed to strike out the registration of the trade mark "Orange Maison" used in association with orange juice on the ground that it was clearly descriptive in French of the character or quality of the orange juice in that the word "maison" suggested home-made qualities, and that the mark was therefore non-registrable by virtue of s. 12(1)(b). Held, dismissing the application, the word "maison" does not indicate a home-made product though as used in some cases in the culinary art in France, but seldom in Quebec, it conveys a remote suggestion to that effect. The ,Solio Case (1898) 15 R.P.C. 476, referred to. ORIGINATING NOTICE to strike out registration of trade mark. Christopher Robinson, Q.C. for applicants. Gordon F. Henderson, Q.C. and K. H. E. Plumley for respondent. NOËL J.:—This is a proceeding by originating notice of motion to strike out a registration, under the Trade Marks Act, R.S.C. 1952-53, chapter 49, of the words ORANGE MAISON as a trade mark in the name of the respondent on December 9, 1960, under number 120,375 in respect to orange juice. The motion is made by the applicants on the ground that the trade mark ORANGE MAISON was not registra-ble at the date of registration in that it is clearly descriptive in the French language of the character or quality of the wares in association with which it is used and is thus contrary to section 12(1) (b) of the Act. The applicant, Home Juice Company, is incorporated under the laws of Illinois, one of the United States of 90299-1
314 1 R.C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [1968] 1967 America, the applicants Home Juice Company Limited HOME JUICE and Jay-Zee Food Products Limited, are incorporated Co , HOME JUICE CO. under the laws of Ontario, with head offices respectively in p L JAY-ZEE the Cityof Hamilton and the Cityof Windsor, and the FOOD PROD- respondent is a company incorporated under the laws of UCTS LTD. D. the Province of Quebec, having an office at 2323 Aubrey ORANGE MAISON Street, in the City of Montreal, in the said province. LIbIITLE The applicant, Home Juice Company, has before the Noël J. Trade Marks Office an application filed in 1964 to register the words HOME JUICE in Canada as a trade mark in respect of fruit flavoured drinks on the basis of intention to use it in Canada. This application has been opposed by the respondent on the ground that HOME JUICE is confusing with the respondent's registered trade mark ORANGE MAISON, No. 120,375 and that the wares of the applicant and the respondent are identical and are merchandized to the public by identical means. Furthermore, the applicants, Home Juice Company Limited and Jay-Zee Food Products Limited are defendants in an action brought against them in this Court under No. B-1455 by the respondent in respect of inter alia alleged infringement of the respondent's aforesaid registered trade mark No. 120,375. The sole wares which have been sold or otherwise used or advertised in association with the registered trade mark ORANGE MAISON No. 120,375 are orange juice bearing the mark ORANGE MAISON which has been applied to a drink composed of fresh and reconstituted orange juice with added vitamin C, the said drink being manufactured, sold and delivered directly by the respondent to the homes of customers in 64-ounce jugs. It is of some interest to note that respondent's trade mark was first used in Canada on January 16, 1954, was used for some seven years before it was registered on December 9, 1960, and has been used for about six and a half years since registration. The respondent's reply to the attack made upon its trade mark ORANGE MAISON by the applicants is twofold: (1) its trade mark is not clearly descriptive in the French language of the character or quality of the wares or
1 Es. C.R. EXCHEQUER COURT OF CANADA [1968] 315 services in association with which it is used or 1967 proposed to be used or of the conditions of or the HOME JUICE CMHO E persons employed in their production as set down in JUICE Co. section 12 ( ( 2 ) ) of the Act. LTD. & JAY-ZEE ( \ 2) If its trade mark is deesrcir itpitvivee it had acquired a Foon P q IICTS LTD . distinctive meaning at least in the Province of Que-V. ORANGE bec at the date of its registration (i.e., December 9, MAISON LIMITÉE 1960) within the meaning of section 18(2) of the Act and, therefore, because of sections 12(2) and Noël J. 31(1) and (2) of the Act this acquired distinctiveness at the date of registration established by evidence of the extent to which and the time during which its trade mark has been used in Canada, should give it in any eyent a restricted registration "to the wares or services in association with which the trade mark is shown to have been used as to have become distinctive and to the defined territorial area in Canada in which the trade mark is shown thus to have become distinctive". The position taken by the respondent is, therefore, that it would be entitled to a registration in the province of Quebec even if its trade mark was held to be descriptive. The applicants' attack of respondent's trade mark ORANGE MAISON on the ground that it is descriptive and, therefore, not registrable under section 12 (1) (b) of the Act as expressed by counsel for the applicants, is that the word "maison" in the French language has a meaning which suggests that the products sold in association therewith have the qualities of a home made product. He urged that the idea conveyed by the use of the word "maison" is that this is a home orange juice, either or both from the point of view of being home made or coming to the house (as being home delivered) and generally that by extension it expresses the idea of good quality. He indeed suggests that in French and probably in English also, the expression "maison" (or home) in relation particularly to a food or a beverage, had gone even beyond the strict meaning of home made to the idea of quality and that this meaning was , an extension from the meaning of home made and did ,not necessarily import the meaning of home made. 90299-1i
316 1 R.C. de 1'É. COUR DE L'ÉCHIQUIER DU CANADA [1968] 1967 The applicants rely on a particular meanin g of quality of HOME JUICE the word "maison" found in a few French dictionaries such Co., HOME JUICE Co. as the following: Lm. & JAY-ZEE Petit Larousse (1959) FOOD P ROD - S LTD. Adj Fam. Fait à la maison; de bonne UCT qualité; tarte maison. V. ORANGE Dictionnaire Alphabétique et Analogique de la LangueFrançaise , par MAISON Paul Robert LIMITÉE 1° T. de comm. (hôtellerie). Qui a été fait à la maison, sur place, et Noel J. non pas acheté au dehors. Pâté, tarte, vol-au-vent maison (cf. de chef). —Par ext. (le fait d'avoir été fait à la maison étant considéré comme une assurance de qualité). Pop. particulièrement réussi, soigné. Le Grand Larousse Encyclopédique-1962 Adj. Fam. De première ordre, fabriqué par une maison réputée, selon des recettes éprouvées. Une tarte maison. Pop. soigné particulièrement, même appliqué à un mot qui ne désigne pas un objet fabriqué. Un exposé maison. The above meaning of the word "maison", however, does not occur in all French dictionaries and there are several such as Littré and Quillet, where such a meaning does not appear. It does not appear either in Belisle's Dictionnaire Général de la Langue Française au Canada, 1954, nor in the Larousse Canadien Complet, 1954. As a matter of fact "maison" to anyone is essentially a place where one lives and the meaning of quality it may convey in some cases is an exotic one even in France and is restricted to the culinary art. The use of the word "maison" in this sense merely suggests that a particular victual is made by the chef of a restaurant in which one is eating such as pâté maison or tarte maison and may (but not necessarily so) because of this, be of a better quality than if it was purchased outside. The word "maison" used such as here, however, in association with the word orange (which although it is disclaimed in the registration and, therefore, cannot in any sense add anything to the strength of the trade mark) does not, in my view, indicate that the product is home made as in French one should not merely use the word "maison" to express or convey such an idea but should use the words "fait à la maison" and even if these words were used, they would in association with the word "orange" be complete nonsense as indicating home made oranges. They do not either indicate that one refers to an orange house where oranges are grown or kept as in such a case the word
1 Ex C.R. EXCHEQUER COURT OF CANADA [1968] 317 "orangerie" should be used. As a matter of fact, they do 1967 not even describe orange juice or even a quality or charac- HOME JUICE teristic thereof and if they did would be deceptively misde- JIIi a Co. scriptive of the character or quality of the wares as s Y z E being home made which is not an issue raised in these FOOD PROD- UCT5 LTD. proceedings. V. ORANGE If one, indeed, considers the respondent's trade mark in MAISON its entirety, they are not indicative of juice at all, nor do LIMITÉE they refer to a feature or essential peculiarity of that Noël J. particular product. They may at the most be suggestive of a food consumed in the house or the home but they do not, in my view, indicate some essential peculiarity or nature of the wares or some quality or character thereof. The most one can say of the respondent's trade mark ORANGE MAISON is that if one takes an exotic meaning of the word "maison" as used in some cases in the culinary art in France but seldom used in Quebec except in a few sophisticated restaurants on menus describing pâté maison (a meat paste or loaf made locally) which meaning can be found in some French dictionaries, but not in all, and which cannot be found in any French-Canadian dictionary, one may find a remote suggestion that something which deals with oranges is made at home, in the house, or has some characteristic of a home made product. This, in my view, is not sufficient to render the respondent's trade mark unregistrable as it has been held in several instances that mere suggestiveness should not deprive a trade mark of registrability even in the case where a word used skilfully alludes to the wares in association with which it is used unless, of course, it is clearly descriptive of their character or quality as contemplated by the statute. In the Solio cases at p. 486, Lord MacNaghten had this to say on this subject: ... the word must be really an invented word; nothing short of invention will do. On the other hand, nothing more seems to be regmred. If it is ... "new and freshly coined" (to adopt an old and familiar quotation), it seems to me that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods. It also appears that such a solution should also be accepted in this country, as the Trade Marks Act (section 1 (1898) 15 R P.C. 476.
318 1 R.C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [1968] 1967 12(1) (b)) seems to contemplate the acceptance of some HOME JUICE descriptive connotation. It indeed does not say any CO., HOME JUICE Co. description of any kind but one which is clearly descriptive LTD. & JAY-ZEE of the character or q q uality Y of the wares. FOOD PROD- TICTS LTD. If I had to determine here the matter of descriptiveness V. on the basis of the words used being a covert allusion to ORANGE MAISON the quality or character of the respondent's wares, I would LIMITÉE have considerable difficulty in doing so because the use of Noël J. the word "maison" with "orange" (particularly without the use of other words such as "fait à la maison" or "jus d'orange") does not, in my view, even suggest a feature or even an essential peculiarity of the respondent's wares. I cannot even accept that the word "maison" used with another word to indicate quality is in general use even in France. It is certainly not in common or current use anywhere in the world in association with the word "orange". As for this country, to the greater part of its French population, the word "maison" is certainly seldom, if at all, used in association with another word to indicate a home made product nor so far as ordinary language is concerned is the word used to denote the quality of anything. It, therefore, follows that it is not a word with which the word "orange" would be used in any country by others in the description of their products or wares nor would it be used particularly in Canada where its descriptiveness must be realistically considered for the purpose of the Act. I have, therefore, reached the conclusion that the word "maison" is not descriptive and that its registration as a trade mark is not excluded by subsection (b) of section 12(1) of the Trade Marks Act. Having determined that the respondent's trade mark ORANGE MAISON is not descriptive, there is no necessity to deal with respondent's alternative reply in that it would at least be entitled to a registration restrictive to the wares in association with which its trade mark had been so used as to have become distinctive and to the defined territorial area in Canada in which it is shown to have become distinctive. In view, however, of the possibility of an appeal herein, it may be useful to deal with this submission. Without considering the evidence submitted by the respondent, by way of affidavits, which goes beyond the
1 Ex. C.R. EXCHEQUER COURT OF CANADA [1968] 319 date of December 9, 1960 (which is the date upon which 1967 the registration of the trade mark was obtained) to which ROME JUICE Co., HOME counsel for the applicants objected on the basis that such JUICE Co. evidence, subsequent to the date of registration, was irrele- â ŸDz& vant, or the statements by some of respondent's witnesses FooD PRoD- UCTB LTD. on the very point the Court is called upon to adjudicate v. such as whether the trade mark of the respondent has ORA GE MA N I$oN become well known and distinctive of the respondent or LIMITÉE whether the said trade mark was known to persons Noël J. engaged in this business as being distinctive of the — respondent's orange juice, or was well known to competitors as being distinctive and even disregarding a letter produced by Maurice Primeau the owner of the respondent company in paragraph 25 of his affidavit relating to the expansion of his business and without, however, deciding their relevance or admissibility, I must conclude on the basis of the remaining evidence that the respondent and its predecessor, Plus 4, Limitée, has manufactured, advertised extensively and sold orange juice directly to householders in jugs in association with the mark "maison" for a considerable period of time prior to the date of registering its trade mark. This evidence indeed discloses that the first sales were in Montreal and from 1954 until the date of registration of the said mark ORANGE MAISON (i.e., December 9, 1960) orange juice was sold in association with its trade mark in Montreal and in other cities of the Province of Quebec such as Hull, Trois-Rivières, Ste-Rose, Verchères, L'Assomption, Drummondville, Quebec City, Joliette, Lachute, St-Jérôme, Valleyfield, St -Hyacinthe, St-Jean, Chaudière and Terrebonne. Since 1954 the respondent and its predecessor in title has continuously and extensively advertised in the Province of Quebec its orange juice in association with the trade mark ORANGE MAISON by product information mailed or delivered directly to household consumers, by contests concerning and advertising its orange juice on home delivery trucks, letterheads, invoices, exterior signs, posters placed on transit vehicles, cards, radio and television advertising and decals placed on store windows. There is, therefore, no question in my mind that by virtue of continuous use and extensive advertising in the Province of Quebec at the date of registration, the respondent's trade mark ORANGE MAISON had
320 1 R.C. de l'É. COUR DE L'ÉCHIQUIER DU CANADA [1968] 1967 — acquired a distinctive meaning of the orange juice of the r HOME JUICE respondent and its predecessor in title among dealers and Co., HOME JUICE Co. purcha osfe orrsangg e j uice and other fruit flavoured drinks LTD. & and non-alcoholic beverages in the Province of Quebec JAY-ZEE FOOD PROD- within the meaning of section 18(2) of the Trade Marks UCTS LTD. Act, R.S.C. 1952-53, chapter 49- V. ORANGE Having thus acquired a distinctive meaning in the Prov- MAISON LIMITÉE i nce of Quebec within the meaning of section 18(2), I must hold that the respondent's trade mark ORANGE MAI-Noël J. SON was registrable even if it had been held that it was not registrable under subsection (b) of section 12, i.e., as being "clearly descriptive or deceptively misdescriptive in the English or French languages of the character or quality of the wares" although in such a case such registration would be in accordance with section 31(2) of the Act restricted "to the wares or services in association with which the trade mark was shown to have been so used as to have become distinctive and to the defined territorial area in Canada in which the trade mark is shown thus to have become distinctive". The motion will accordingly be 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.