A-1934-83
Registrar of Trade Marks (Appellant)
v.
Compagnie Internationale pour l'Informatique CII
Honeywell Bull, Société Anonyme and Herridge,
Tolmie (Respondents)
Court of Appeal, Pratte, Marceau and Hugessen
JJ.—Montreal, May 1 and 2, 1985.
Trade marks — Appeal from Trial Division judgment
reversing Registrar's order expunging trade mark "Bull" for
non-user pursuant to s. 44 of Act — "Bull" used simultane
ously with registered trade mark "CII" and unregistered trade
mark "Honeywell" — Respondent owner of all marks —
Marks never used separately — Whether use of composite
trade mark "CII Honeywell Bull" constituting use of trade
mark "Bull" — Trial Judge holding nothing in Act forbidding
simultaneous use of several trade marks — Respondent not
deceiving public as to origin of goods — Test applicable is
comparing trade mark as used with mark as registered —
Non-user if mark used so as to lose identity, rendering
unrecognizable from registered trade mark — Trade mark
must be used in form registered — Respondent not using trade
mark "Bull" — Appeal allowed — Trade Marks Act, R.S.C.
1970, c. T-10, s. 44 (as am. by S.C. 1980-81-82-83, c. 47, s.
46).
COUNSEL:
Serge Frégeau for appellant.
Richard S. Uditsky for respondent, Compa-
gnie Internationale pour l'Informatique CII
Honeywell Bull, Société Anonyme.
No one appearing for respondent Herridge,
Tolmie.
SOLICITORS:
Deputy Attorney General of Canada for
appellant.
Phillips, Friedman, Kotler, Montreal, for
respondent, Compagnie Internationale pour
l'Informatique CII Honeywell Bull, Société
Anonyme.
Herridge, Tolmie, Ottawa, for respondent
(Herridge, Tolmie).
The following are the reasons for judgment of
the Court delivered orally in English by
PRATTE J.: This is an appeal from a judgment
of the Trial Division (Addy J.) [[1983] 2 F.C.
766] allowing an appeal made by the respondent,
Compagnie Internationale pour l'Informatique CII
Honeywell Bull, Société Anonyme, (hereinafter
referred to as CII) from an order of the Registrar
of Trade Marks expunging the registration of
CII's trade mark "Bull". That order had been
made under section 44 of the Trade Marks Act
[R.S.C. 1970, c. T-10 (as am. by S.C.
1980-81-82-83, c. 47, s. 46)] on the ground that
the trade mark in question was not in use in
Canada.
The facts are not in dispute. CII was the regis
tered owner of three trade marks: the one here in
question which consists of the word "Bull",
another one consisting of the initials CII and a
third one which was a design representing a com
puter screen and a tree. None of those marks were
ever used separately. The first two were always
used together in association with the word Honey-
well, which is a prominent part of CII's name, so
as to form the composite mark "CII Honeywell
Bull".' That composite mark was sometimes used
in conjunction with the design representing the
screen and the tree.
The sole issue on this appeal is whether CII used
its trade mark "Bull" when it used the composite
mark "CII Honeywell Bull" to identify its wares.
Addy J. answered that question in the affirmative.
After stating that there is nothing in the law that
prohibits a person from using simultaneously two
or more trade marks, he added that, normally, a
trade mark must nevertheless be used in the form
in which it is registered; the problem in this case,
as he saw it, arose from the fact that the registered
trade mark, which was the word "Bull" alone, had
never been used in that form but, rather, in asso
ciation with other words. Considering that ques
tion, he rejected the proposition, which found sup
port in some authorities, that a trade mark must
1 The affidavit furnished by CII in answer to the Registrar's
notice under section 44 stated that CII had used "the word
'Bull' as part of the composite trade mark `CII Honeywell
Bull' "
necessarily be used in the exact form in which it is
registered. He then quoted the following passage
from Fox, Canadian Law of Trade Mark and
Unfair Competition (3rd edition, 1972), 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.
Mr. Justice Addy concluded as follows:
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
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 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.
We are all of the view that this judgment cannot
stand.
The problem to be resolved is not whether CII
deceived the public as to the origin of its goods. It
clearly did not. The real and only question is
whether, by identifying its goods as it did, CII
made use of its trade mark "Bull". That question
must be answered in the negative unless the mark
was used in such a way that the mark did not lose
its identity and remained recognizable in spite of
the differences between the form in which it was
registered and the form in which it was used. The
practical test to be applied in order to resolve a
case of this nature is to compare the trade mark as
it is registered with the trade mark as it is used
and determine whether the differences between
these two marks are so unimportant that an una
ware purchaser would be likely to infer that both,
in spite of their differences, identify goods having
the same origin.
Viewing the problem in that light and applying
that test, we cannot escape the conclusion that, in
using the composite mark "CII Honeywell Bull",
CII did not use its mark "Bull".
The appeal will be allowed without costs, the
judgment of the Trial Division will be set aside and
the order of the Registrar of Trade Marks expung
ing the registration of the trade mark "Bull" will
be restored.
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.