Digests

Cullman Ventures, Inc. v. Quo Vadis International Ltd.

T-1400-96, T-1401-96, T-1402-96, T-1403-96

Lemieux J.

26/10/00

35 pp.

Appeals from Opposition Board's refusal of applications for registration of trade marks "Day-at-a-Glance", "Week-at-a-Glance", "Month-at-a-Glance" in association with "diaries, appointment books, calendars and record books" and "Year-at-a-Glance" in association with calendars--Ruled all applications not registrable as clearly descriptive of character or quality of wares, contrary to Trade-marks Act, s. 12(1)(b)--Under s. 12(2) trade mark not registrable under s. 12(1)(a) registrable if so used in Canada as to have become distinctive at date of filing application for registration--S. 30(b) requiring application for registration to contain date from which applicant or named predecessors in title used trade mark in Canada--Opposition Board also ruled application for "Day-at-a-Glance" not registrable for calendars on ground appellant not meeting legal burden of establishing claimed date of first use contrary to s. 30--Appeals dismissed--(1) Whether all marks proposed for registration within prohibition set out in s. 12(1)(b) not registrable--According to Thomson Research Associates Ltd. v. Canada (Registrar of Trade-Marks) (1982), 67 C.P.R. (2d) 205 (F.C.T.D.): whether trade mark clearly descriptive matter of first impression; "clearly" in s. 12(1)(b) meaning easy to understand, self-evident, plain; must look at words as used in association with certain wares and to ascertain what words in context in which used would represent to public at large--In determining whether trade mark descriptive of character or quality of wares with which associated, consideration given to result brought about, effect itself--Policy underlying s. 12(1)(b) to prevent monopolies on use of word having reference to character, quality of goods so as to prevent other members of community from using them for purpose of description--Proposed marks when associated with agendas, calendars conveying specific descriptive connotation, explicit description and direct reference as opposed to covert allusion or mere suggestion as to characteristic or quality of agendas, calendars--Specific, direct references or connotations are to physical feature of wares (layout, design or openings of printed agendas) as well as function of those agendas, calendars, which is to enable user to quickly identify appointments, engagements recorded by him or her on designed layout of agendas, calendars--Opposition Board correctly approached matter as one of first impression, made no error in construing evidence--References in Grand and Toy advertising flyers to products of trade competitors supplying agendas clearly demonstrating inherent character, quality of wares in terms of physical layout, function--Inappropriate to grant one competitor exclusive use of common words, phrases, descriptive of inherent character or quality, effect or function--(2) Whether appellant correctly stated date of first use for calendar for "Day-at-a Glance"--Appellant submitting new evidence before Court, consisting of definition of calendar--Opposition Board's finding "Day-at-a-Glance" not in use with what average consumer would identify as calendars reached without reference to testimony--Arguing new evidence before Court should lead to conclusion "Day-at-a-Glance" in use with calendars at same time as in use with appointment books, diaries--Second challenge misplaced evidentiary onus--Opposition Board not misdirecting self on issue of evidentiary, legal onus in s. 30(b) challenge--Labatt Breweries Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D.) holding Registrar entitled to look at evidence in entirety in order to satisfy self mark registrable, no valid grounds of opposition--Evidence before Opposition Board supporting finding respondent discharged evidentiary burden looking at totality of evidence including affidavits, cross-examination thereon--New evidence in form of definition of calendar not altering materially finding "Day-at-a-Glance" not used in association with calendars--Evidence clear appointment books, agendas not same wares as calendars, monthly desk calendars--Not formatted same as agendas, physically different, separate from agendas--That appointment books, diaries (agendas) may sometimes have calendar in them not altering fact these wares separate--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 12(1)(b), (2), 30(b).