A-90-74
E. & J. Gallo Winery (Appellant)
v.
Andres Wines Limited (Respondent)
Court of Appeal, Thurlow, Ryan and Le Dain
JJ.—Ottawa, December 2, 3 and 16, 1975.
Trade marks—Appeal—Registration of respondent's mark
"SPANADA" a fruit flavoured table wine—Opposed by appel
lant on ground of prior use of name in the United States since
1969 and advertised in Canada before registration by respond
ent on November 2, 1970—Confusion—Mark known in
Canada at material time as appellant's mark through adver
tising to a substantial number of Canadian television viewers
by American border stations—Trade Marks Act, R.S.C. 1970,
c. T-10, ss. 2, 37.
Respondent applied, on November 2, 1970, for registration
of the mark "SPANADA" which it proposed to use in association
with fruit flavoured table wine. On July 21, 1971, appellant
filed an opposition under section 37 of the Trade Marks Act,
alleging: that applicant was not entitled to registration because
of confusion with the mark "SPANADA" which it had previously
made known in Canada in association with its fruit flavoured
wine; that applicant has known the mark to be that of opponent
for the subject wares, and well known in Canada as such; and
that the mark is not distinctive and is not capable of distin
guishing fruit flavoured wine of applicant from wine previously
and currently advertised in Canada by opponent as wine origi
nating in it. The Registrar rejected the opposition. On appeal to
the Trial Division, appellant filed some 58 additional affidavits;
respondent raised technical objections to practically all. The
Trial Judge held that none of appellant's grounds of attack had
been substantiated and indicated that with respect to at least
the attack under section 37(2)(c), he had reached his conclu
sion taking all the affidavits at face value. Similar objections
were raised on appeal to this Court.
Held, allowing the appeal, the Registrar is directed to refuse
respondent's application. As there was no cross-examination,
save in so far as a sound objection has been shown, the
affidavits are entitled to be considered for what they say and
for what inferences may be drawn from them, and as they are
not contradicted, this Court is in as favourable a position as
was the Trial Judge to determine what conclusions should be
drawn from what they say, as well as from the failure of
appellant to produce additional support for its attacks. Tele
casts of commercials referring to appellant's Spanada wine by
United States border stations in the period between January
1970 and November 2, 1970 were received by a very large
number of viewers in Canada, and the mark "SPANADA" had
become known to many people in Canada. It has been estab
lished that the mark was known in Canada at the material time
as the mark of the appellant, widely known, if not also well
known within the meaning of section 5. Registration of the
mark "SPANADA" as the trade mark of respondent and its use
by respondent in association with its wines would be calculated
to deceive and mislead the public, and it follows that the mark
is not adapted to distinguish the wares of respondent.
Richfield Oil Corporation v. Richfield Oil Corporation of
Canada Ltd. [1955] Ex.C.R. 17; Williamson Candy Com
pany v. W. J. Crothers Company [1924] Ex.C.R. 183,
affirmed [1925] S.C.R. 377, applied. Marineland Inc. v.
Marine Wonderland and Animal Park Ltd. [1974] 2 F.C.
588, distinguished. Wian v. Mady [1965] 2 Ex.C.R. 3,
considered.
APPEAL.
COUNSEL:
J. A. Devenny for appellant.
W. R. Meredith, Q.C., and J. C. Singlehurst
for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for appellant.
Meredith & Finlayson, Ottawa, for
respondent.
The following are the reasons for judgment
rendered in English by
THURLOW J.: This appeal is from a judgment of
the Trial Division which dismissed an appeal from
a decision of the Registrar of Trade Marks reject
ing the appellant's opposition to the respondent's
application for registration of a proposed trade
mark.
The application was filed on November 2, 1970.
By it the respondent sought ' registration of the
mark "SPANADA" which it proposed to use in
association with a fruit flavoured table wine.
On July 21, 1971, following advertising of the
application, the appellant filed an opposition under
section 37' of the Trade Marks Act to the regis
tration on grounds set out as follows:
(a) The Applicant is not a person entitled to registratidn
pursuant to Section 16(3)(a) because the trade mark is, and
was on November 2, 1970, confusing with the trade mark
5PANADA which has been previously made known in Canada
by Opponent in association with its fruit flavoured wine.
(b) The application does not comply with the requirements
of Section 29(i) because on and from November 2, 1970
Applicant has known the trade mark to be the trade mark of
the Opponent for the subject wares and well known in
Canada as such.
(c) The trade mark is not distinctive because it is not
capable of distinguishing fruit flavoured wine of the Appli
cant from fruit flavoured wine previously and currently
advertised in Canada by Opponent as wine originating in it.
In October 1971, the respondent filed a reply
denying the allegations and asserting its right to
the registration. The appellant subsequently filed
an affidavit in support of the grounds of opposition
and a memorandum of argument. No evidence or
memorandum of argument was filed by the
respondent. Thereafter the Registrar on March 20,
1973, rejected the opposition after concluding that
none of the grounds of opposition had been
substantiated.
On the appeal from that decision to the Trial
Division the appellant filed some 58 additional
affidavits in support of its objections. The respond
ent adduced no evidence and did not cross-examine
any of the deponents but, as appears from the
reasons of the learned Trial Judge, raised a
number of technical objections to practically all of
the affidavits filed by the appellant. The learned
Trial Judge held that none of the appellant's
grounds of attack had been substantiated and
indicated, at least with respect to the attack under
' Subsections (1) and (2) of section 37 read as follows:
37. (1) Within one month from the advertisement of an
application, any person may, upon payment of the prescribed
fee, file a statement of opposition with the Regis
trar.
(2) Such opposition may be based on any of the following
grounds:
(a) that the application does not comply with the require
ments of section 29;
(b) that the trade mark is not registrable;
(c) that the applicant is not the person entitled to registra
tion; or
(d) that the trade mark is not distinctive.
section 37(2)(c) of the Trade Marks Act i.e., that
the respondent was not the person entitled to
registration, that he reached his conclusion taking
all the affidavits at their face value. As similar
objections were raised again on the appeal to this
Court it will be necessary to consider what the
affidavits do establish and how far the objections
to them, or parts of them, should be sustained. As
there was no cross-examination it seems to me
that, save in so far as a sound objection has been
shown, they are receivable and are entitled to be
considered for what they do say and what infer
ences may properly be drawn from them and that
as they are in no way contradicted, this Court is in
as favourable a position as was the learned Trial
Judge to determine what conclusions should be
drawn from what they say as well as from the
failure of the appellant to produce additional sup
port for its attacks.
I turn first to the attack under section 37(2)(d)
of the Trade Marks Act, that the trade mark is
not distinctive. That word is defined as follows in
section 2 of the Act:
2....
"Distinctive" in relation to a trade mark means a trade mark
that actually distinguishes the wares or services in association
with which it is used by its owner from the wares or services
of others or is adapted so to distinguish them;
As the application is for registration of a proposed
trade mark it is not possible for the mark in
question to qualify as one that actually distin
guishes the wine of the respondent from that of
others and it is only if the mark "is adapted so to
distinguish" it that the mark could be distinctive,
at the material time, of the respondent's wine. See
Fox, The Canadian Law of Trade Marks and
Unfair Competition, 3rd Edition, page 37:
Under the 1953 Act a trade mark is distinctive if it actually
distinguishes or is adapted to distinguish. In the case of a word
in actual use, it fulfils the definition of a trade mark if the
intention or the recognition of its use complies with the terms of
s.2(t) and it is distinctive if it actually distinguishes. This is, of
course, a question of fact. In the case of a proposed trade mark,
the terms of s.2(t)(i) obviously apply only to intention and not
to recognition. In case of opposition such a trade mark must,
therefore, be one that is adapted to distinguish.
The question to be determined on this attack is,
therefore, whether the mark, "SPANADA" was, at
the material time, adapted to distinguish the wine
of the respondent from that of others and as the
mark appears to have an inherent distinctiveness
the question, as I see it, becomes that of whether it
has been established by the evidence that this
inherently distinctive mark is not adapted to dis
tinguish the wine of the respondent. The basis put
forward for reaching a conclusion that the mark is
not adapted to distinguish the respondent's wine is
that it is already known as the trade mark of the
appellant in respect of similar wares. But for this
purpose it is not necessary, in my opinion, that the
evidence should be sufficient to show that the
mark is well known or has been made well known
in Canada within the meaning of section 5 or by
the methods referred to in that section. Such
proof, coupled with use in the United States,
would be sufficient to entitle the appellant to
registration and to a monopoly of the use of the
mark. But that is not what is at stake in this
proceeding. Here the respondent is seeking to
monopolize the use of the mark and the question is
that of his right to do so, which depends not on
whether someone else has a right to monopolize it,
but simply on whether it is adapted to distinguish
the respondent's wares in the marketplace. Plainly
it would not be adapted to do so if there were
already six or seven wine merchants using it on
their labels and for the same reason it would not
be adapted to distinguish the respondent's wares if
it were known to be already in use by another
trader in the same sort of wares.
On the wording of section 37(2)(d) the material
time for this purpose appears to me to be the date
of the filing of the opposition but on the facts of
the present case, as I view them, the same result
would ensue whether that or the time of the filing
of the application is taken as the material time.
I turn now to the affidavits and what they
appear to me to establish.
That of A. P. Fenderson, A-1, an executive
vice-president of the appellant company, shows
that the appellant is a company incorporated
under the laws of California and carries on busi
ness in the United States, that the word "SPANA-
DA" is a coined mark created by the appellant's
staff in 1969 and used by the company thereafter
on the labels of its fruit flavoured wine, that the
word was registered as the company's trade mark
in the United States Patent Office on January 13,
1970, that the company on November 23, 1970,
without knowing of the respondent's application of
November 2, 1970, applied for its registration
under the Trade Marks Act, that the company has
not sold its SPANADA wine in Canada but that
prior to November 2, 1970, it had made gross sales
of such wine amounting to more than $8,700,000.
I disregard paragraphs 13 and 14 and the refer
ences in paragraphs 11 and 12 to matters that
have or may have arisen since November 2, 1970.
The next three affidavits, A-2, A-3 and A-4, are
by persons concerned with trade publications. That
of Philip Hiaring, A-2, shows that he is the presi
dent of the Hiaring Company, the publisher of
Wines & Vines, a publication circulating among
members of the wine industry, that he is generally
familiar with the articles appearing in that publi
cation, the general distribution thereof and the
business records relating thereto, that an article, a
copy of which was exhibited, referring to E. & J.
Gallo Winery's SPANADA wine was published in
the February 1970 edition of Wines and Vines,
that the publication is and was in February 1970
distributed to members of the wine industry,
including dealers and users of wine products in the
United States and Canada, and that from his
business records he believes that the total Canadi-
an circulation for the February 1970 issue was
approximately 87. The article referred to is very
short and insignificant and by itself deserves little
weight. I disregard paragraphs 6, 7 and 8 and the
exhibits therein referred to as being inadmissible
hearsay.
A-3, the affidavit of LeRoy W. Page, shows that
he is the president of Industry Publications Inc.,
the publisher of Beverage Industry News Mer-
chandiser a publication circulating among mem
bers of the wine industry, that he is generally
familiar with articles appearing in that publication
and with its general distribution, that an article, a
copy of which was exhibited, referring to E. & J.
Gallo Winery's SPANADA wine was published in
the January 1970 edition of the publication and
that the publication is, and was in January 1970,
distributed to members of the wine industry,
including dealers and users of wine products in the
United States and Canada. The extent of distribu
tion in Canada of the January 1970 edition is not
stated. The exhibit shows what appears to be more
an advertisement than an article and the word
"SPANADA" appears prominently in two places on
the page.
A-4 is a similar affidavit by Charles H. van-
Kreidt the publisher of California Wineletter
showing that an article referring to E. & J. Gallo
Winery's SPANADA wine was published in the
March 25, 1970 edition of the publication which
was distributed to wine dealers and users in the
United States and Canada. Again the extent of
distribution in Canada is not stated. The article
includes a description of the wine associated with
the mark "SPANADA" and has several references to
the mark.
Next there are two affidavits, A-5 and A-6(1),
of Earnell W. Cronkite, the director of media
purchasing for the appellant company, a position
he has held since August 1957. Paragraphs 2 to 14
of the first of these affidavits read as follows:
2. I am, and have been during the full length of my tenure as
Director of Media Purchasing for Gallo, familiar with all
advertising of Gallo SPANADA wine. The first shipment of
SPANADA wine by Gallo to a wholesaler occurred on May 28,
1969. Advance spending for Gallo's advertising of SPANADA
wine started on or about September 1, 1969. Gallo's public
sales and advertising campaign for SPANADA wine started in
December, 1969. The first television advertising of Gallo
SPANADA wine occurred on January 16, 1970.
3. The word SPANADA is used on labels and in advertising
with a tilde accent over the "n" making "Spanyada" the
correct pronunciation of the word. For the sake of convenience
only, the tilde accent is omitted throughout this affidavit.
4. Starting in December, 1969, and including the period
prior to November 2, 1970, as well as thereafter, Gallo adver
tised SPANADA wine through newspapers, magazines, other
printed materials, radio, and television, the latter being the
main thrust of its advertising campaign. SPANADA wine also
received extensive publicity in wine industry trade publications
and other print media throughout the United States during the
first year after its introduction to the public in December, 1969.
5. As part of my duties as Director of Media Purchasing for
Gallo, I coordinated the development and execution of the
Gallo SPANADA wine television advertising campaign from its
inception with the advertising agencies of Young & Rubicam
West and Erwin Wasey, Inc. As shown in paragraph 6 below,
Gallo gave the SPANADA wine advertising campaign heavy
financial backing. During the year starting with the introduc
tion of SPANADA to the public in December, 1969, the goal of
this advertising campaign was to introduce SPANADA wine on
the market, to position it as a unique beverage wine, and to
create brand-awareness among dealers and users of wine prod
ucts. I believe that this goal was achieved as shown by the sales
figures for SPANADA in paragraph 12 of the affidavit of A. P.
Fenderson dated August 24, 1973, and filed in this proceeding.
Said figures also show continued success of the SPANADA wine
advertising campaign after the initial year.
6. In the period from September 1, 1969, through July 31,
1973, Gallo spent more than $5,800,000 on the advertising of
SPANADA wine. More than $2,000,000 of this amount was spent
prior to November 2, 1970. Almost all of these expenditures
were for television advertising.
7. I have read and am familiar with the photoboard affida
vit, which was signed by me on June 15, 1973, and filed in this
proceeding.
8. Photoboards for all Gallo SPANADA wine television com
mercials are attached as exhibits to the photoboard affidavit,
and the number of times in which the name SPANADA appears
visually and is mentioned aurally in each commercial is shown
in Exhibit A attached hereto.
9. I have read and am familiar with the following affidavits
filed in this proceeding: A. P. Fenderson dated August 24,
1973, Donald C. Foote, Jr., dated August 27, 1973, A. Victor
Pisani dated July 6, 1973, Bruce R. Bryant dated July 24,
1973, 46 persons representing United States television stations
close to the U.S.-Canadian border, and three persons represent
ing wine industry trade publications.
[The remainder of this paragraph having been objected to as
being argumentative, I omit and disregard it.]
10. Gallo has continued to advertise sPANADA wine heavily
on television in the U.S.-Canada border areas since November
2, 1970, and I believe that the total television household and
adult impressions of SPANADA wine commercials in Canada
have increased significantly since then, especially in light of the
information in paragraph 16 of the affidavit of Donald C.
Foote, Jr., filed in this proceeding, regarding the rising number
of television households in Canada.
11. It has been my experience that the Nielsen Television
Index is a statistically reliable measure of television viewing.
Gallo and its advertising agencies rely on it as a guide for
spending huge sums of money for advertising time. The Nielsen
Television Index is based upon the process of scientific sam
pling, which is the only practical means available for ascertain
ing information about television-viewing audiences.
12. All SPANADA wine television commercials shown in
exhibits to the photoboard affidavit were created by Erwin
Wasey, Inc., at my request and placed by Erwin Wasey, Inc.,
or Young & Rubicam West as spot or network commercials on
the television stations and at the times indicated in the affida
vits filed in this proceeding of the 46 persons representing those
television stations. The chart attached hereto as Exhibit B
compiles the information contained in the 46 affidavits of
persons representing television stations, the two affidavits of
persons representing the National Broadcasting Company and
Columbia Broadcasting System television networks, and Exhib
it A attached hereto, to show (a) how many and which United
States television stations telecast Gallo SPANADA wine commer
cials which reached Canada, (b) the cities from which the
mentioned stations telecast, (c) the areas in Canada which were
reached by the SPANADA wine telecasts, (d) which SPANADA
wine commercials (as identified in the photoboard affidavit)
were telecast by those stations into Canada, (e) the total
number of times which each SPANADA wine commercial was
telecast by each station in the period from January 16, 1970,
through May 31, 1973, (f) the number of times which each
commercial was telecast by each station in the period from
January 16, 1970, through November 1, 1970, (g) the total
number of visual appearances of the name SPANADA telecast
from each station in the period from January 16, 1970, through
May 31, 1973, (h) the number of visual appearances of the
name SPANADA telecast from each station in the period from
January 16, 1970, through November 1, 1970, (i) the total
number of audio mentions of the name SPANADA telecast from
each station in the period from January 16, 1970, through May
31, 1973, and (j) the number of audio mentions of the name
SPANADA telecast from each station in the period from January
16, 1970, through November 1, 1970.
13. The chart attached hereto as Exhibit B shows that a
total of 32 United States television stations covering every
U.S.-Canadian border state except Montana, North Dakota,
and Ohio telecast a total of 982 SPANADA wine commercials
that reached into Canadian metropolitan areas in the period
from January 16, 1970, through November 1, 1970; and a total
of 46 stations covering every U.S.-Canada border state telecast
a total of 2,222 SPANADA wine commercials into Canada in the
period from January 16, 1970, through May 31, 1973. This
latter date was an arbitrary cutoff date chosen by me, and the
Gallo SPANADA wine advertising campaign is continuing at the
present time on most of the listed stations. The chart also shows
that the mentioned telecasts produced a total of 1,201 visual
appearances and 2,198 audio mentions of the name SPANADA in
the period ending May 31, 1973.
14. The Canadian population figures attached hereto as
Exhibit C, taken from the Rand McNally & Company Com
mercial Atlas & Marketing Guide, 1973 edition, citing the
1971 Official Census of Canada, show that the major Canadian
areas reached by Gallo SPANADA wine commercials had a
potentiality of reaching at least 51.64% of the total population
of Canada in the period ending November 2, 1970, and 55.87%
of the total population of Canada in the period ending May 31,
1973. The extent to which several major metropolitan areas in
Canada were actually reached by Gallo SPANADA wine com
mercials, and the frequency with which they were reached, are
shown in the affidavit of Donald C. Foote, Jr., dated August
27, 1973, filed in this proceeding.
The other Cronkite affidavit A-6(1), referred to
as the photoboard affidavit, exhibits copies of eight
photoboards representing all the different formats
of Gallo SPANADA wine commercials televised in
the United States from January 16, 1970 to May
31, 1973.
Next there are 46 affidavits, A-7 to A-52 inclu
sive, each by the manager, sales manager or other
official of a television broadcasting station operat
ing near the United States-Canada border refer
ring to commercial advertisements depicted by the
photoboards exhibited to the Cronkite photoboard
affidavit and indicating the number of telecasts of
such advertising from the broadcasting station
prior to November 2, 1970 and from the date to
May 31, 1973. Sixteen of these affidavits show no
such telecasts prior to November 2, 1970 and can
on that account be disregarded, though the exhib
its to them or some of them may show telecasts
between that date and July 21, 1971, when the
opposition was filed. The form of these affidavits
leaves something to be desired but in almost all of
them the deponent swears, inter alia,
(1) that he is familiar with
(a) the extent of reception of his station's
telecasts by television sets in Canada;
(b) the television programming on his station;
and
(c) the station's business records relative
thereto;
(2) that said business records show that certain
identified items of the appellant's commercials
attached to the photoboard affidavit were tele
cast on his station a particular number of times
before November 2, 1970 and a further particu
lar number of times from that date to May 31,
1973, as more particularly shown on a document
attached as an exhibit to his affidavit;
(3) that the exhibit accurately states the date
and time of each such commercial telecast;
(4) that each such commercial was telecast at
that date and time; and
(5) that the signal of his station is received by
television sets via signal and/or cable in the
particular Canadian communities listed either in
the affidavit or in a further exhibit thereto and
that the station receives a significant amount of
mail and advertising purchase orders from
television receivers with Canadian addresses.
The subject matter of these affidavits, which I
have described in (2) above, appears to be open to
the observation that as proof of the contents of
business records and of the truth of matters there
in stated it does not comply with the requirements
of section 30 of the Canada Evidence Act. Assum
ing that this particular objection is sound there
still appears to me to be no valid objection to the
sworn statements described in (3) and (4), or to
the use of (2) as a description of the telecasts to
which they refer. Before making these statements
each of these deponents would have had the oppor
tunity to refresh his memory by reference to the
business records with which he says he is familiar
and in the absence of cross-examination or contra
diction I do not think the statements can or should
be disregarded. Even eliminating those in which
the exhibits have not been identified by the func
tionary taking the affidavit, these affidavits estab
lish that the appellant's commercials were broad
cast at such border television stations a total of
more than 300 times in the period between Janu-
ary 16, 1970 and November 2, 1970 at various
times of the afternoons and evenings and they thus
support in part what is set out in paragraph 13 of
the Cronkite affidavit.
Pausing here, on the admissible evidence to
which I have already adverted the balance of
probabilities weighs heavily in favour of the con
clusion that the telecasts, as a whole, of commer
cial messages referring to the appellant's SPANADA
wine by United States border television stations in
the period between January 1970 and November
2, 1970 were received in Canada not only by a few
but by a very large number of television viewers in
Canada and further that the trade mark "SPANA-
DA" had become known to many people in
Canada. I venture to think it probable that the
advertising would have a particular ring to people
who were familiar with the Spanish custom
referred to in the advertising and who would for
that reason be more likely than others to pay
particular attention to and remember the mark.
The same people would probably be more likely
than others to purchase the wine on the market.
Of the remaining affidavits I disregard in their
entirety A-53(1) and A-54(1) as hearsay and not
admissible under section 30 of the Canada Evi
dence Act as proof of the contents of business
records. I also disregard A-57 as inadmissible
hearsay. Exhibits A-55, A-56 and A-58 appear to
me to be admissible as the opinions of three per-
sons of long experience in the advertising business
as to the extent of viewing in Canada of United
States border stations. These opinions support the
conclusion I reach on the other evidence that the
SPANADA advertising commercials telecast by such
border transmitting stations were viewed by a
substantial number of Canadian viewers. The
opinions are no doubt based in part on hearsay,
some of which is set out, but the deponent being
qualified by his knowledge and experience to
express an opinion on the subject, the fact that to
some extent the opinion may be based on hearsay
goes only to its weight and not to its admissibility.
On the whole, therefore, I am of the opinion
that it has been established that the mark SPANA-
DA was known in Canada at the material time as
the trade mark of the appellant, widely known at
least, if indeed not also well known within the
meaning of section 5, and that this conclusion is
irresistible on the evidence notwithstanding the
very cogent observation of the learned Trial Judge
that there was not so much as one affidavit by a
Canadian viewer to the effect that he had seen
appellant's SPANADA advertising on any of the
United States television stations. 2
The learned Trial Judge dealt with this ground
of opposition in the following passage of his
judgment:
I propose dealing firstly with the ground of attack under
section 37(2)(d), namely, that the respondent's proposed mark
is not distinctive. Distinctive is defined in section 2 of the Act
as follows:
"distinctive" in relation to a trade mark means a trade mark
that actually distinguishes the wares or services in association
with which it is used by its owner from the wares or services
of others or is adapted so to distinguish them;
The appellant's submission is that on the evidence in this
case, substantial advertising by it of its registered U.S. mark
SPANADA on U.S. television stations near the Canadian border
with substantial reception thereof by a large portion of the
Canadian public has been established. Thus, the appellant
contends that the respondent has not established that its
(respondent's) identical mark actually distinguishes its
(respondent's) wares from the appellant's wares. However, it
was held in Lime Cola Co. v. Coca Cola Co. [1947] Ex.C.R.
2 Compare Richfield Oil Corporation v. Richfield Oil Cor
poration of Canada Ltd. [1955] Ex.C.R. 17 per Thorson P. at
page 24.
180, that evidence that a mark has been used in a foreign
country is not evidence that it is distinctive in Canada. A
similar view was expressed by Viscount Dunedin in Reddaway's
Application (1927) 44 R.P.C. 27 at page 37, where he said:
I agree with Mr. Justice Tomlin who said: "Though evi
dence of user in another country may be some evidence of an
inherent quality of distinctiveness, it cannot be evidence that
the mark is adapted to distinguish in the market of this
country."
In the case at bar, there is no evidence whatsoever that
appellant's mark has become distinctive in Canada. No affida
vits were filed from any members of the wine industry in
Canada or from members of the consuming public in Canada to
the effect that they had seen appellant's SPANADA advertise
ments on the U.S. television stations and that, as a result,
appellant's mark had become distinctive to them. There is no
evidence before me from which I could possibly conclude that
the appellant has established distinctiveness in its mark in
Canada.
Since the appellant's mark has not become distinctive in
Canada, the distinctiveness argument cannot be used as a bar
to the respondent's application for registration.
I also have the opinion that advertising by itself does not
qualify as use. It is conceded here that the appellant has not
marketed any wares in Canada. Therefore the appellant has not
used its mark in Canada within the meaning of section 4(1) of
the Act, and accordingly does not come within the definition of
"distinctive" contained in section 2 of the Act (supra).
It appears to me that what has been considered
in this passage is whether it has been established
by the evidence that the effect of the advertising
was that the trade mark was distinctive of the
appellant's wares at the material time. Having
concluded that the evidence did not establish that
the mark was distinctive of the appellant's wares
within the meaning of section 2 the learned Trial
Judge seems to have concluded that it followed
that the mark was adapted to distinguish the wine
of the respondent.
With respect, as I have already indicated, I do
not think it follows from a finding that the mark
was not distinctive of the appellant that it was
"adapted to distinguish" the goods of the respond
ent and for that reason distinctive of the respond
ent or its goods.
In Williamson Candy Company v. W. J. Croth-
ers Company' the facts, as described in the judg
e [1924] Ex.C.R. 183.
ment of Maclean J., show that the plaintiff, a
confectionery manufacturer and distributor in Chi-
cago, had adopted and used in 1920 the trade
mark "Oh Henry" to identify its goods. Registra
tion of the mark was obtained in the United States
in February 1922. In May 1922 the defendant, a
manufacturer of confectionery and biscuits at
Kingston, Ontario, sought and obtained registra
tion of the same mark under the Trade Marks and
Designs Act. The judgment went on to say [at
pages 184-185]:
The plaintiff did not attempt to prove any user of his
trade-mark in Canada, apparently no sales of his confectionery
ever having been made here. Counsel on behalf of the defend
ant admitted that the plaintiff had, prior to and since the
defendant's registration, advertised in American publications,
many of which had substantial circulation in Canada, its
confectionery under the trade-mark in question. There is no
doubt, I think, but that the plaintiff advertises very extensively.
It is not alleged that the defendant ever obtained the plaintiff's
consent to the registration of this mark.
The plaintiff sued for expungement. At pages 191-
192, Maclean, J. said:
The use of trade-marks was adopted to distinguish one person's
goods from those of another, on the market, and to prevent one
person selling his goods as those of another. The system was
designed to encourage honest trading, and the protection of the
buying public. One may safely say that our Trade-Marks Act
was not enacted to encourage in Canada the adoption of foreign
registered marks, even if there were no user by the foreign
registrant here. That would cause confusion and deception, just
the thing that trade-marks were supposed to avoid, and it would
be a fetter upon trade, another thing quite foreign to the
purposes of trade-marks. Trade-mark legislation was designed
as much for the benefit of the public, as for the users of
trade-marks.
If such a practice were knowingly permitted by all countries,
the use of trade-marks would end in hopeless confusion and
bring about a result which trade-marks were originally sup
posed to avoid. Happily the tendency is always towards the
protection of marks registered in another country. In fact a
convention exists today, to which many important countries are
parties, which provides for a system of international registra
tion. In so far as possible each country should I think respect
the trade-marks of the other country, or else international trade
and public interests would suffer. I think knowledge of foreign
registration and user, of a mark applied to the same class of
goods, as in this case, and particularly where the foreign user is
in a contiguous country using the same language, and between
which travel is so easy, and advertising matter so freely circu
lates, should in most cases be a bar to registration knowingly, of
that mark here. This should be particularly true where, as in
this case, the plaintiff's advertising, circulating substantially in
Canada, might very likely mislead the public into thinking that
the defendant's goods were the same as the advertised goods of
the plaintiff. The conspicuous presentation of the word mark on
the label would influence the eye to that conclusion, notwith
standing the less conspicuous but clearly printed matter on the
label, indicating the name of the maker of the goods. That rule
would impose no hardship on any person. Conceivably there
might be instances when this principle might well be ignored.
The case of innocent user and registration is quite a different
thing altogether and need not here be considered. Again if the
plaintiff had neglected to apply for registration here for a long
number of years after his registration in the United States
possibly a different view might be taken of the case. That might
be construed as a deliberate abandonment of this market, or of
the mark in this market. I do not think that contention can yet
fairly be made. The defendant registered the mark, in Canada,
within four months, after the plaintiff registered in the United
States.
In view of the facts before me I am of the opinion that the
registration in question was improperly made. The defendant
was not the proprietor of the mark, and was not entitled to
register the same and it should be expunged. Neither was the
defendant the first to use the mark to his knowledge. The
discretion placed in the Minister by section 11, and now in this
court, may well be exercised against the defendant's registra
tion, and I am of the opinion that the defendant's registration is
calculated to deceive or mislead the public, and for that reason
also, the defendant's registered mark should be expunged.
[Emphasis added].
The statute has been changed since this was
written but the general comments of the learned
Judge are as valid today as they were in 1924. The
significant part of this for present purposes is that
on facts which are strikingly similar in principle
the learned Judge held that having regard to the
plaintiff's advertising and the knowledge of its
mark thereby generated in Canada the defendant's
registration of the mark for use in Canada was
"calculated to deceive or mislead the public" and
for that reason should be expunged. This particu
lar finding of the learned Judge later became the
basis for the affirming of his judgment by the
Supreme Court. 4
At page 380 Anglin C.J. speaking for the
majority of the Court said:
The learned President has held that the defendant's trade
mark as registered "is calculated to deceive and mislead the
public." That finding has not been successfully impeached. The
evidence warrants it. It in turn fully supports the order made by
4 [1925] S.C.R. 377.
the Exchequer Court that the defendant's trade-mark should be
expunged as a trade-mark which the Minister in the exercise of
his discretion could properly have refused to register.
On the facts of the present case I am of the
opinion that here too the registration of the mark
"SPANADA" as the trade mark of the respondent
and its use by the respondent in association with
its wines would be calculated to deceive and mis
lead the public and that it follows from this that
the mark is not adapted to distinguish the wares of
the respondent. The opposition of the appellant
under section 37(2)(d) of the Trade Marks Act
should therefore be sustained.
In the course of argument counsel referred to
the judgment of Cattanach J. in Marineland Inc.
v. Marine Wonderland and Animal Park Ltd. 5
where a similar objection of lack of distinctiveness
was made in opposition to the defendant's applica
tion for registration of "MARINELAND" as its trade
mark in respect of services. The case, as I read it,
is one where prior to the application for registra
tion there had been use of the trade mark by the
defendant to distinguish his services in Canada
and the question fell to be resolved on the first part
of the definition of "distinctive" in section 2 of the
Act, that is to say, whether it "actually" distin
guished the services of the defendant, rather than
on the alternative expression "adapted so to distin
guish them". The case, as I read it, is thus distin
guishable from the present and is, in any event, a
decision on the particular facts, but there are in
the reasons of the learned Trial Judge certain
expressions of opinion which, if intended to be of
general application, appear to be in conflict, at
least to some extent, with the view I have formed
in the present case. To the extent that there is such
conflict I am unable to adopt or follow what was
said in that case.
This conclusion makes it unnecessary to consid
er the other grounds of opposition, that is to say,
those based on section 37(2)(c) and the standard
of proof of making a mark well known in Canada
that will serve for the purposes of section 5, and
that based on section 29, and I express no opinion
on them. With respect to section 5 there appear to
5 [1974] 2 F.C. 558.
be expressions of opinion in Wian v. Mady 6 , th(
judgment of the Trial Division in the present cas(
and in the Marineland case. I mention thes(
simply to observe that they do not appear to me tc
apply to the point on which, in my opinion, thi,
appeal succeeds.
I would allow the appeal and direct the Regis
trar of Trade Marks to refuse the respondent';
application.
The appellant is entitled to its costs in this Cour
and in the Trial Division.
* * *
RYAN J.: I concur.
* * *
LE DAIN J.: I concur.
6 [1965] 2 Ex.C.R. 3.
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.