Bombardier Limited (Appellant)
v.
British Petroleum Co. Ltd. (Respondent)
and
Registrar of Trade Marks
Court of Appeal, Jackett C.J., Thurlow J. and
Sweet D.J.—Ottawa, April 25, 1973.
Trade mark—Confusion—"Ski-doo" used on lubricants—
Whether a distinguishing use—Whether a trade mark—
Application to use "23 Skidoo" on competitor's lubricants—
Trade Marks Act, s. 2.
The BP Co. applied for registration of the trade mark "23
Skidoo" in respect of lubricants. Bombardier Ltd. opposed
the application on the ground that it was confusing with the
word "Ski-doo" that had previously been used by its pre
decessor in title, the Castrol Oil Co., on containers of the
Castrol Co.'s lubricants. Those labels also indicated that
"Ski-doo" was someone else's trade mark.
Held, affirming Cameron DJ., the opposition must be
dismissed. The Castrol Co.'s use of the word "Ski-doo" did
not distinguish its lubricants from those of others. As used
by the Castrol Co. it indicated that the lubricant was intend
ed for use in the Ski-doo snowmobile. A word so used is not
a trade mark within the definition of "trade mark" in section
2 of the Trade Marks Act.
APPEAL from Cameron D.J.
COUNSEL:
James Kokonis and Nicholas Fyfe for
appellant.
R. G. McClenahan for respondent.
SOLICITORS:
Smart and Biggar, Ottawa, for appellant.
Gowling and Henderson, Ottawa, for
respondent.
JACKETT C.J. (orally)—I agree with the rea
sons given by the learned trial judge for allow
ing the appeal from the decision of the Registrar
of Trade Marks. He has set out the facts and the
matters in issue very carefully and I need not
repeat them.
I shall content myself with summarizing the
matter as I understand it.
The respondent applied for registration of a
proposed trade mark "23 SKIDOO" in respect of
lubricants. The appellant opposed the applica
tion on the ground that the proposed mark was
"confusing" with a "trade mark" that had been
previously used, namely, the mark "SKI-DOO",
and therefore fell within the exception in sec
tion 16(3)(a) of the Trade Marks Act, R.S.C.
1952, c. 49, as amended.
The only use relied on to support that opposi
tion was the use by Castrol of the word "SKI-
DOO" on the labels attached to containers of oil
sold by it) Ample indication that the oil in the
containers was Castrol's oil appeared on those
labels. In addition, the word "SKI-Doo"
appeared on the labels but it was there together
with words showing that "SKI-Doo" was some
one else's trade mark. I agree with the learned
trial judge's reasons for concluding that this
particular use of some one else's trade mark did
not distinguish the user's goods from the goods
of others. It seems to me that what it was
intended to show, and the message that would
be taken from the label read as a whole, was
that here was Castrol's motor oil for use in the
type of snowmobiles that are known as ski-
doos. A word so used is not a trade mark within
the definition of "trade mark" to be found in
section 2 of the Trade Marks Act, the material
part of which defines a "trade mark" to be "a
mark that is used by a person for the purpose of
distinguishing or so as to distinguish wares or
services manufactured, sold, leased, hired or
performed by him from those manufactured,
sold, leased, hired or performed by others".
I am, therefore, of opinion that the learned
trial judge's conclusion was correct and that this
appeal should be dismissed with costs.
In conclusion, I should like to add a word of
caution. It should not be overlooked that the
sole question raised by the opposition was the
question as to whether the proposed mark was
confusing with a trade mark "SKI-DoO" that had
been used previously by Castro] and that that
question is being decided against the opposition
on the ground that Castro] did not use a trade
mark "SKI-Doo" at the time in question. No
other question is being decided on this appeal.
* * *
THURLOW J. (orally)—I too am in agreement
with the reasons and conclusions of the learned
trial judge and in particular with the view
expressed in the following passage from his
reasons:
Since there is no suggestion that Castrol was a registered
user of that trade mark or had otherwise any right to use the
word as its trade mark, the clear inference is that in assert
ing that Bombardier Snowmobile Limited was the owner of
the trade mark "SKI-Doo", Castro] was in effect stating: "It
is not our trade mark; we are not the proprietors thereof and
while the word appears on our containers, we are not using
it as our trade mark and we have no right to do so as it is the
property of others". If the explanation as to ownership
means anything, it must indicate that the use of the word
"SKI-DOo" by Castro] was not a trade mark use.
I think this conclusion disposes of the matter
and I would dismiss the appeal.
* * *
SWEET D.J. concurred.
' I have not overlooked the reliance upon the invoices
used in connection with the sales of such oil but they do not
in my mind put any different complexion on the matter.
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.