T-3000-82
Compagnie internationale pour l'informatique CII
Honeywell Bull, société anonyme (Appellant)
v.
Herridge, Tolmie and Registrar of Trade Marks
(Respondents)
Trial Division, Addy J.—Montreal, October 4;
Ottawa, December 1, 1983.
Trade marks — Appeal to set aside expungement of trade
mark "Bull" — "Bull" used simultaneously with letters "Cii"
and screen and tree drawing, both registered trade marks, and
word "Honeywell", unregistered trade mark — All trade
marks property of appellant — Whether use of mark "Bull" in
conjunction with other marks within meaning of s. 4 of Act
Nothing in Act prohibiting use of several marks simultaneous
ly providing public not misled as to source of wares — Facts
showing that additional words, "Cii" and "Honeywell", not
misleading as words part and parcel of name of owner of mark
— Appeal allowed — Trade Marks Act, R.S.C. 1970, c. T-10,
ss. 4, 44.
This is an appeal to set aside the order of the Registrar of
Trade Marks made under section 44 of the Act to expunge the
trade mark "Bull". The issue is whether the use of the word
"Bull" in conjunction with two registered trade marks, i.e. a
screen and tree drawing and the letters "Cii", and with one
unregistered trade mark, "Honeywell", all owned and allegedly
used as a mark by the appellant, constitutes use within the
meaning of section 4 of the Act. The Registrar correctly held,
on the basis of invoices, that the words "Cii", "Honeywell" and
"Bull" were merely used as an abbreviation of the appellant's
name and were employed as a trade name identifying the trader
as opposed to a trade mark identifying the appellant's goods.
However, it was clearly established, on more ample evidence
before the Court, that those words were, when the notice to
expunge was issued, attached to the appellant's goods, and
always used in conjunction with one another.
Held, the appeal should be allowed and the mark "Bull"
restored to the register of Trade Marks.
There is nothing in the Act itself which prohibits the use of
several marks simultaneously, or in conjunction with other
words or marks, providing that that use does not mislead the
public as to the identity of the source of the wares. Upon
examination of the facts, it seems clear that the additions to the
mark "Bull" cannot be held as likely to deceive or mislead the
public as to the source of the equipment being sold as the two
additional words are part and parcel of the name of the owner
of the mark and as one of those marks is also registered in the
owner's name and the other is an unregistered mark of the
owner used by it.
CASES JUDICIALLY CONSIDERED
APPLIED:
M. Melachrino and Co. v. The Melachrino Egyptian
Cigarette Co. et al. (1887), 4 R.P.C. 215 (H.C.); Ham-
mond & Co. v. Malcolm Brunker & Co. (1892), 9 R.P.C.
301 (H.C.); Honey Dew, Limited v. Rudd et al. [1929]
Ex.C.R. 83.
DISTINGUISHED:
In re Gray Dort Motors, Limited (1921), 20 Ex.C.R.
186.
REFERRED TO:
In re Powell's Trade Mark, [1893] 2 Ch. 388; 10 R.P.C.
198 (Eng. C.A.); Richards v. Butcher, [1891] 2 Ch. 522
(Eng. C.A.); Standard Stoker Company, Inc. v. The
Registrar of Trade Marks, [1947] Ex.C.R. 437; The
Registrar of Trade Marks v. G. A. Hardie & Co. Lim
ited, [1949] S.C.R. 483.
COUNSEL:
Richard Uditsky for appellant.
Jean Trottier for respondent Registrar of
Trade Marks.
SOLICITORS:
Phillips, Halperin, Montreal, for appellant.
Deputy Attorney General of Canada for
respondent Registrar of Trade Marks.
The following are the reasons for judgment
rendered in English by
ADDY J.: The appellant seeks to have an order
of the Registrar of Trade Marks set aside which he
rendered pursuant to section 44 of the Trade
Marks Act [R.S.C. 1970, c. T-10] and by which
registration of the trade mark "Bull" is to be
expunged. The respondents, Herridge, Tolmie, did
not reply to the notice of appeal and in fact, wrote
to the Court to the effect that they were withdraw
ing and would not be contesting the matter in
Court. Counsel appeared on behalf of the Regis
trar of Trade Marks and was heard.
The issue raised is a very narrow one and in
effect, consists of determining whether the use of
the trade mark "Bull" in Canada in conjunction
with and simultaneously with two other registered
Canadian marks and one unregistered mark, all of
which were owned and allegedly used as a mark by
the appellant, is to be considered as use of the
mark "Bull" in conformity with section 4 of the
Act.
The evidence is clear that the appellant is the
owner of three distinct registered trade marks:
namely, the drawing of a screen with a tree behind
it, the letters "Cii" and the word "Bull" presently
in issue. There is also uncontested evidence that
the appellant is the owner of an unregistered mark:
namely, the word "Honeywell". There is no issue
regarding the identification of articles, supplies
and equipment in connection with which the words
were used.
As often happens, the evidence before the Regis
trar of Trade Marks was not nearly as complete as
that presented on the appeal before me and was
deficient in at least one very important respect: at
the time the decision sought to be set aside was
rendered, the physical evidence consisted of a
series of invoices in which the words "Cii",
"Honeywell", "Bull" were printed in the heading
of each invoice along with the full name and
address of the appellant. The words in no way
purported to identify the wares for which marks
had been registered. The Registrar held on that
evidence, and I believe quite rightly so, that the
words "Cii", "Honeywell", "Bull" were in fact
merely used as an abbreviation or shortening of
the appellant's name and were employed as a trade
name identifying the trader as opposed to a trade
mark identifying the goods, wares or merchandise
described in the invoices.
The evidence presented before me, on the other
hand, established quite clearly that the three words
by themselves or accompanied by the screen and
tree mark were in 1978 through to the relevant
date, namely, the 20th of October, 1980, when the
notice under section 44 was issued, attached to the
goods, samples and packaging of the articles being
sold.
It must be emphasized here that the labels did not
contain any address or any identification or refer
ence to the actual name of the appellant. This, in
my view, constitutes a use of the words as a mark
as opposed to their use as a trade name.
The word "Bull" however, was never used by
itself but only in conjunction with the words "Cii"
and "Honeywell". The three words were also at
times preceded by the screen and tree mark.
As previously stated, the question therefore
arises whether the use of the word "Bull" with the
two other registered marks and one unregistered
mark can constitute use of the mark within the
meaning of the Act or whether such use of that
particular word is inconsistent with the concept of
its use as a trade mark, which would qualify it as
such under the Act.
There is nothing in the Act itself which prohibits
a person from using two or more of its marks
simultaneously providing, of course, that the use of
several marks at the same time or the use in
conjunction with other words or marks does not
have the effect of misleading the public as to the
identity of the source of the wares. The English
cases of M. Melachrino and Co. v. The Mela-
chrino Egyptian Cigarette Co. et al.,' and Ham-
mond & Co. v. Malcolm Brunker & Co. 2 were
referred to by counsel. In both these cases, rather
complicated and elaborate marks were used in
conjunction with other designs added to the marks.
In the Melachrino case, coats of arms of countries
were added and in the Hammond case, there was a
drawing of an arm and a shield. It has held that
such additional drawings did not invalidate the use
of the mark. Counsel also referred at trial to the
case of In re Gray Dort Motors, Limited.' It was
held that the use of the words "Gray Dort",
always within the expression "Own a Gray Dort,
you will like it", constitutes a proper use of the
mark "Gray Dort". The registration of the entire
mark was ordered. I do not feel, however, that this
case is entirely relevant as the Court was con
cerned mainly with the question whether the entire
expression constituted an advertisement and
whether it should, for that reason, not qualify for
registration as a trade mark. The Judge, after
' (1887), 4 R.P.C. 215 [H.C.].
2 (1892), 9 R.P.C. 301 [H.C.].
3 (1921), 20 Ex.C.R. 186.
some hesitation, ordered the registration but did
comment that, had the words "Gray Dort" alone
been applied for, he would not have hesitated at all
in ordering registration on the basis that they were
used along with the above-mentioned words. In the
case of Honey Dew, Limited v. Rudd et a1, 4 the
words "Honey Dew" were registered as a mark in
the form of a scroll with one word above the other
and were actually used in the normal manner with
block capital letters. The Court stated that since
nobody had been deceived, no injury could occur
by the deviation from the form of the registered
mark, the plaintiff should not lose its right to
protection for that reason.
Where, as in the present case, there is no evi
dence that a mark has been used alone but always
in conjunction with other words, registration has at
times been refused. There are cases which state
that to constitute use within the meaning of the
statute, a trade mark must necessarily be used in
exactly the same form in which it is registered and
that any deviation therefrom or addition thereto
will preclude that type of use from qualifying
under the statute (refer In re Powell's Trade
Mark (the "Yorkshire Relish" case); 5 Richards v.
Butcher; 6 Standard Stoker Company, Inc. v. The
Registrar of Trade Marks;' and also the state
ment of Kellock J. which appears to be in fact
obiter in the case of The Registrar of Trade
Marks v. G. A. Hardie & Co. Limited). 8 Fox, in
his test on The Canadian Law of Trade Marks
and Unfair Competition (3d ed.) [1972], after
analysing the above cases and a similar line of
cases, states at page 62 of his text:
It is suggested that this view is unrealistic and not in harmony
with modern trade mark practice. The words of Kellock J. in
the Super-Weave case were obiter to a certain extent and it is
doubtful whether the principles expressed in the cases to which
he referred are any longer applicable in view of other decisions
that will shortly be discussed. Nor, it is submitted, is the
4 [1929] Ex.C.R. 83.
5 [1893] 2 Ch. 388 at p. 401; 10 R.P.C. 198 [Eng. C.A.].
6 [1891] 2 Ch. 522 [Eng. C.A.].
7 [1947] Ex.C.R. 437 at p. 445.
8 [1949] S.C.R. 483.
proposition put by Cameron J. in the Standard Stoker case
tenable.
and again at pages 63 and 64
... "The question of whether or not the use of a label deviating
from the specific label is such a deviation as would constitute a
non-user of a specific trade mark appears to be one of fact as
relating to each particular case, the principle on which such
facts shall be applied being as laid down by Maclean J. in the
Honey Dew case, namely, that the deviation shall not be such as
to cause an injury or deception to anyone."
A deviation from or addition to a mark as registered may
amount to a misleading representation and by constituting a
fraud upon the public debar the plaintiff from relief. But unless
an addition to or deviation from a trade mark is misleading it
cannot be seen how such use can be held not to be use of the
trade mark if, in the words of s. 4(1) of the Trade Marks Act, it
is so associated with the wares "that notice of the association is
then given to the person to whom the property or possession is
transferred." This is obviously a question of fact to be decided
upon the evidence and not by an arbitrary and meticulous
comparison of the mark as used with the mark as registered.
I consider the above to be a better view of the
law on the subject as it exists today.
On examining the facts in the case at bar, it
seems clear that the additions to the mark "Bull"
cannot be held as likely to deceive or mislead the
public in any way as to the source of the equip
ment being sold as the two additional words are
part and parcel of the name of the owner of the
mark and as one of those marks is also registered
in the name of the owner and the other is an
unregistered mark of the owner used by it. In so
far as the screen and tree design which at times is
also used with the word "Bull" and the other two
words, it is also a registered mark of the owner.
In these circumstances, the appeal will be
allowed and the mark "Bull" will be restored to
the register of Trade Marks.
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.