T-1619-87
Turbo Resources Limited (Plaintiff)
v.
Petro Canada Inc. (Defendant)
INDEXED AS: TURBO RESOURCES LTD. V. PETRO CANADA INC.
Trial Division, Addy J.—Ottawa, January 11 and
22, 1988.
Injunctions — Test to be met for interlocutory injunction —
American Cyanamid (serious question to be tried test) rejected
where not merely preserving status quo but defendant
damaged — Trade mark infringement case — Prima facie
case not established — Motion denied.
Trade marks — Infringement — Plaintiff selling "Turbo"
automotive lubricants and petroleum products — Defendant
selling "Premium Turbo Tested" oil — "Turbo" weak mark
— Not established descriptive word having secondary meaning
identifying products — No evidence of consumer confusion —
Why law protecting monopoly in form of trade marks —
Purpose defeated if serious issue to be tried test in American
Cyanamid for granting interlocutory injunction applied —
Injunction denied as prima facie case not made out.
The plaintiff sells packaged automotive lubricants and
petroleum products using the name "Turbo". The defendant
Petro Canada packages oil for sale and labels its containers
using its own name, logo and the words "Premium Turbo
Tested". The plaintiff applied for an interlocutory injunction on
the ground of infringement by the defendant of its design
marks covering the words "Turbo" and "Go Turbo" and its
mark "Go Turbo". This case raises the question as to whether
there rests on an applicant for an interlocutory injunction an
obligation to establish a strong prima facie case or whether the
Court only need be satisfied that there is a serious question to
be tried. The question of the proper test to be applied had to be
dealt with at length in view of the contradictory statements
made by Canadian courts concerning certain pronouncements
by Lord Diplock in the American Cyanamid case.
Held, the motion should be dismissed.
In American Cyanamid, Lord Diplock categorically stated
that it was not necessary to establish a strong prima facie case
or even a prima facie case. His Lordship's proposition, to the
effect that the Court need not be satisfied of the plaintiff's
probability of success, would not be accepted as one of general
application in the absence of a decision binding on the Trial
Division of the Federal Court of Canada. That proposition
should not apply in cases where the granting of the injunction
would not merely preserve the status quo but would cause
actual substantive damage to the defendant. In other words,
where a defendant is likely to suffer damage pending trial, the
application for an interlocutory injunction should fail unless the
person relying on the monopoly can satisfy the court that he
has a prima facie right to the monopoly. In industrial property
cases or passing-off cases, an injunction disrupts in part or in
whole the actual business operations of the defendants; it does
not preserve the status quo as the quia timet injunction in the
American Cyanamid case did. However, in certain rare
instances, where the injunction would preserve the status quo,
where the prospective harm to the defendant would be minimal
and could be fully compensated for in damages and where the
balance of convenience would weigh in favour of the plaintiff,
an interlocutory injunction may be granted although a prima
facie case is not fully established, provided the chances of
ultimate success, although not necessarily in favour of the
plaintiff, are nevertheless judged to be fairly balanced. The
Cyanamid case test would also be applicable in cases other than
those involving industrial property or quia timet injunctions,
such as when serious permanent harm would be caused to the
plaintiff or where an important public interest is at stake. In
those cases, the court may be justified in intervening without
being satisfied of the probability of the plaintiffs eventual
success, providing there appears to be an arguable case.
The reason monopolies in the forms of trade marks, patents
and copyrights are afforded protection under the law is to
encourage and reward research, inventiveness and the risking of
capital. An inventor faced at the interlocutory stage with the
mere serious issue to be tried test would be obliged, before
proceeding with his project, to decide whether the balance of
convenience would weigh in his favour. That would impose an
unrealistic burden to be met and would defeat the purpose of
monopoly laws. Any action taken by an inventor should, gener
ally speaking, not be impeded where, in fact and in law, the
proposed action is actually free of existing monopolies. It
follows that the person holding a monopoly and seeking an
interlocutory injunction should have to show that he has a
prima facie right to it and that the defendant would probably
be infringing upon it.
Contrary to what seems to be implied in Cyanamid, it is the
duty of the judge hearing the injunction application to consider
and weigh the evidence submitted by both sides when determin
ing the question of the probability of plaintiffs success but only
to the extent that it is necessary.
The plaintiff has not established a prima facie case that the
defendant might be infringing its monopoly. The word "Turbo"
does not have the distinctiveness contemplated by paragraph
6(5)(a) of the Trade Marks Act. It constitutes a very weak
mark being a common term in both the automotive and
automotive lubrication industries. In so far as the design is
concerned, neither the colour, nor the size nor the design of the
letters in the word "Turbo" nor the design of the word itself on
the defendant's oil containers resemble any of the design marks
of the plaintiff. An exclusive right to use the expression "Go
Turbo" does not at law create any right over the word "Turbo"
taken by itself especially in view of the word's weakness.
The word "Turbo" is a descriptive word: it describes a
product (oil) intended to be used in turbo-charged motors. The
plaintiff has not met the heavy burden of establishing that this
descriptive word has attained a secondary meaning directly
identifying its products. Factors such as the length, manner and
place of use must be considered. Here, distinctiveness could be
claimed within very limited areas in Western Canada. There
was no evidence of any person having purchased a container of
defendant's product believing it to be that of the plaintiff.
Furthermore, the defendant's name and logo appear prominent
ly on the labels of its containers. There is no risk of confusion.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, s. 6(5)(a).
CASES JUDICIALLY CONSIDERED
NOT FOLLOWED:
American Cyanamid Co. v. Ethicon Ltd., [1975] A.C.
396 (H.L.).
REFERRED TO:
Supreme Aluminium Industries Ltd. v. Kenneth M.
Smith Inc. et al. (1985), 6 C.P.R. (3d) 1 (F.C.T.D.);
Syntex Inc. v. Apotex Inc., [1984] 2 F.C. 1012; 1 C.P.R.
(3d) 145 (C.A.); Chitel et al. v. Rothbart et al. (1982),
69 C.P.R. (2d) 62 (Ont. C.A.); Manitoba (Attorney
General) v. Metropolitan Stores Ltd., [1987] 1 S.C.R.
110; Philips Export B.V. et al. v. Windmere Consumer
Products Inc. (1985), 4 C.P.R. (3d) 83 (F.C.T.D.); Tele-
Direct (Publications) Inc. v. Telcor Canada Directories
Inc. (1986), 11 C.P.R. (3d) 102 (F.C.T.D.); Consumers
Distributing Co. Ltd. v. Consumers Video Ltd. et al.
(1983), 78 C.P.R. (2d) 195 (Ont. H.C.); Tavener Rut-
ledge Ld. v. Specters Ld., [1957] R.P.C. 498 (H.C.J.
Eng.); Interlego AG v. Irwin Toy Ltd. (1985), 4 C.I.P.R.
1 (F.C.T.D.); Mark's Work Wearhouse Ltd. et al. v.
Governor & Co. of Adventurers of England trading into
Hudson's Bay, known as Hudson's Bay Co. (1980), 15
C.P.R. (3d) 376 (Alta. Q.B.); Ikea Ltd. et al. v. Idea
Design Ltd. et al. (1987), 13 C.P.R. (3d) 476 (F.C.T.D.);
Ancona Printing Ltd., carrying on business as Kopy
Kwick Printing v. Kwik-Kopy Corporation et al.
(1983), 73 C.P.R. (2d) 122 (Ont. H.C.); C-Cure Chemi
cal Co. Inc. v. Olympia & York Developments Ltd.
(1983), 71 C.P.R. (2d) 153 (Ont. H.C.); International
Paints (Canada) Ltd. v. Consolidated Coatings Corp.
(1986), 10 C.P.R. (3d) 142 (F.C.T.D.); Canadian Red
Cross Society v. Simpsons Limited, [1983] 2 F.C. 372
(T.D.); Cellular Clothing Company v. Maxton &
Murray, [1899] A.C. 326 (H.L.); Hommel v. Gebrüder
Bauer & Co. (1904), 22 R.P.C. 43 (C.A.).
COUNSEL:
E. L. Bunnel and P. J. McGovern for plaintiff.
J. D. B. McDonald for defendant.
SOLICITORS:
Parlee McLaws, Calgary, for plaintiff.
Bennett Jones, Calgary, for defendant.
The following are the reasons for order ren
dered in English by
ADDY J.: The plaintiff, which had been manu
facturing and selling through its predecessor com
pany, since approximately 1967, packaged
automotive lubricants and petroleum products
using the name "Turbo", is applying for an inter
locutory injunction against the defendant in this
action in conjunction with certain trade marks
involving the word.
The plaintiff (hereinafter referred to as Turbo
Resources) is actually the registered owner of 4
marks: the first one is a design mark of the word
"Turbo" with a colour claim of a drawing of the
word lined in red and blue; the second is a claim
for the words "Go Turbo"; the third is a design
mark covering the words "Go Turbo" including
two maple leaves which are in turn disclaimed; the
fourth one, also a design mark, covers a design of
the word "Turbo" with blue letters on a white
background over a red panel with a white maple
leaf which is disclaimed.
Turbo Resources originally operated only in
Alberta but gradually expanded its business, which
includes the acquisition and operation of service
stations, to certain other portions of the other
three Western provinces and, to some very limited
extent, to western Ontario. By far, the bulk of its
business operations however are still carried out in
Alberta.
Petro Canada Inc., in January 1987, began
packaging oil for sale in its service stations, with
paper labels containing on both sides its own name
and logo and on one side in bold print the words
"Premium Turbo Tested" in English and on the
other side the words "Super Turbo Huile
Moteur—Testée dans les moteurs Turbo" in the
French language. In both cases the word "Turbo"
is coloured bright red and is in far bolder and
larger print than the remaining words of the label
including the designation Petro Canada.
Although I originally intended to issue only very
brief reasons for my decision on the present
application. I now feel that the particular circum
stances of the case when considered in the light of
certain contradictory pronouncements of Canadian
courts regarding the principles to be applied in
interlocutory injunctions, require a more detailed
consideration of the jurisprudence governing the
subject. It is to be hoped that, in so doing, further
confusion will not be added to that already caused
by the adoption by some of our courts of certain
pronouncements of Lord Diplock in the well
known case of American Cyanamid Co. v. Ethicon
Ltd., [1975] A.C. 396 (H.L.).
Counsel both referred to that case, with regard
to the controversial question as to whether in
applications for interlocutory injunctions, there is
obligation on the applicant to establish a strong
prima facie case or whether the Court must
merely be satisfied that there is a serious question
to be tried, in the sense that the action is neither
frivolous nor vexatious.
In considering the Cyanamid case, it is most
important to bear in mind that the plaintiff appli
cant was seeking a quia timet injunction: it
involved only a threatened or prospective infringe
ment of its patent by the defendant. The granting
of the injunction would merely postpone what the
latter proposed to do and would thus truly preserve
the status quo. This situation seldom occurs, espe
cially in industrial property cases or in passing-off
cases. The injunction normally interrupts and dis
rupts in part or in whole the actual business opera
tions of the defendant. It cannot, in such cases, be
said to "preserve the status quo".
There are also assertions made by Lord Diplock
which are expressed as being intended by him to
be of general application and which certainly do
not apply to the majority of cases in this country,
at least where important commercial issues are at
stake. He advances, for instance, as a general
proposition that "the evidence available at the
hearing of an interlocutory injunction is incom
plete. It is given on affidavit and has not been
tested by oral cross-examination." (The underlin
ing is mine.) This is certainly not the case here nor
in the majority of cases. In the Cyanamid case, the
Trial Judge found that there was a strong prima
facie case. The Court of Appeal disagreed and set
aside the injunction on that ground alone, without
considering the balance of convenience or dam
ages. Lord Diplock found that there was a serious
question to be tried and then, without in any way
pronouncing himself on the question of whether or
not there was also a strong prima fade case, went
on to agree with the Trial Judge's finding as to the
balance of convenience. He then criticized the
overruling by the Court of Appeal of the Trial
Judge's finding in the following terms [at page
4091:
As patent judge he [the trial judge] has unrivalled experience
of pharmaceutical patents and the way in which the phar
maceutical industry is carried on. Lacking in this experience,
an appellate court should be hesitant to overrule his exercise of
his discretion, unless they are satisfied that he has gone wrong
in law.
In the first place one is left to wonder whether
that strange statement means that an appellate
court in deciding whether or not it should overrule
the discretion of the trial judge, must first of all
consider the degree and extent of his experience in
the subject-matter of the injunction, but, more
importantly, if the Trial Judge in the Cyanamid
case had, as stated, "an unrivalled experience of
pharmaceutical patents", then that experience
would most certainly bear primarily on the issue of
whether or not a strong prima facie case has been
established regarding the monopoly afforded by
that particular pharmaceutical patent, as well as
any decision of that judge on the balance of
convenience. Furthermore, as the Court of Appeal
only dealt with the question of whether or not
there was a strong prima facie case, Lord
Diplock's above quoted admonition must be taken
to apply to that finding. It follows that, if the
Court of Appeal, in the only finding it made on the
Trial Judge's decision, was wrong in interfering,
one then is left to suppose that the latter was
correct in that finding. In the light of the above
and of the failure of the House of Lords to deal
specifically with the Trial Judge's specific finding
that a strong prima facie case was established, one
might conclude that the speech of Lord Diplock,
approved by the other Law Lords, regarding the
mere requirement, in all interlocutory injunction
proceedings, of an important issue to be tried,
might well be considered as mere obiter dictum.
It is clear that in his speech Lord Diplock stated
quite categorically that it was not necessary to
establish a strong prima facie case or even a prima
facie case. In effect, he stated that it was not
necessary for the Court to be satisfied that there
appeared to be a probability of success on the part
of the plaintiff. The relevant passage reads as
follows [at page 406]:
The purpose sought to be achieved by giving to the court
discretion to grant such injunctions would be stultified if the
discretion were clogged by a technical rule forbidding its
exercise if upon that incomplete untested evidence the court
evaluated the chances of the plaintiff's ultimate success in the
action at 50 per cent or less, but permitting its exercise if the
court evaluated his chances at more than 50 per cent.
Unless required to do so by a binding decision
from higher authority, I refuse to accept this
proposition as one of general application. It should
not apply in cases where the granting of the
injunction would not merely preserve the status
quo but would cause actual substantive damage to
the defendant. It simply does not seem acceptable
or just to me, that, where the defendant appears on
the evidence adduced on the motion for interlocu
tory relief to have a greater chance of success than
the plaintiff, I should proceed to enjoin the defen
dant merely because the balance of convenience
weighs in favour of the plaintiff. Where there
would be a serious question to be tried, in the sense
that the action is neither frivolous nor vexatious,
yet where, on the one hand, the defendant would
apparently have a greater chance of succeeding,
and where, on the other hand, the potential harm
caused to the plaintiff would exceed that caused
the defendant, I would not conclude that the
motion should then be decided in favour of the
plaintiff.
After trial of an action, the claim for an injunc
tion must necessarily fail should the plaintiff fail
to establish a right to it on a balance of probabili
ties. Since an interlocutory injunction must be
considered an exceptional remedy, as must any
other interim relief previous to a full trial on the
merits, it is difficult for me to conceive why,
generally speaking, either at law or in accordance
with the equitable principles which govern injunc-
tive proceedings, a plaintiff should be granted
interlocutory injunctive relief unless a strong
prima facie case or at the very least a prima facie
case has first been established. Put in another way,
where the defendant would be suffering actual
damage pending trial, then unless the person rely
ing on the monopoly is able to satisfy the judge at
the hearing that there is a probability of eventual
success, the application should fail.
That being said, I am inclined to agree that, in
certain rare occurrences, where the injunction
would truly preserve the status quo because the
defendant has not yet commenced to do what is
sought to be enjoined, such as occurred in the
Cyanamid case, and possibly also, where the pros
pective harm to the defendant would be extremely
minimal as compared to that of the plaintiff and
could be fully compensated for in damages and
where the balance of convenience would weigh in
favour of the plaintiff, the finding of the judge
hearing the motion would not necessarily have to
be a "compartmentalized" into the 3 classical
categories so that, even though a prima facie case
might not be fully established, the interlocutory
injunction might nevertheless be granted, provid
ing the chances of ultimate success, although not
necessarily in favour of the plaintiff, are neverthe
less judged to be fairly balanced.
My comments have been addressed primarily to
cases involving industrial property. However, one
can conceive of exceptional situations, other than
those involving industrial property or quia timet
injunctions, where the Cyanamid case test would
also be applicable, even though some harm would
be caused the defendant. For instance, where seri
ous permanent, irreversible harm would be caused
the plaintiff or where an important public interest
is at stake. In those cases, the court might at times
well be justified in intervening, without being satis
fied of the probability of the plaintiff's eventual
success, providing there appears to be an arguable
case.
As a result of the Cyanamid case our courts
have been greatly divided and, I would dare say,
often confused as to what legal test should be
applied in determining the merits of the case in
conjunction with the additional questions of the
nature of the damage and of the equitable princi
ple of balance of convenience.
Some judges feel, as McNair J. stated in
Supreme Aluminium Industries Ltd. v. Kenneth
M. Smith Inc. et al. (1985), 6 C.P.R. (3d) 1
(F.C.T.D.), at page 7, that there is no one test
applicable to any and all circumstances and that a
broad view of the matter should be taken. The
same opinion was expressed by Stone J. in Syntex
Inc. v. Apotex Inc., [1984] 2 F.C. 1012, at page
1022; 1 C.P.R. (3d) 145 (C.A.), at page 153, in
approving the statement of MacKinnon A.C.J.O.
in Chitel et al. v. Rothbart et al. (1982), 69 C.P.R.
(2d) 62 (Ont. C.A.), at page 72.
Beetz J. of the Supreme Court of Canada,
recently stated that in constitutional cases the
serious question formulation of American Cyana-
mid is sufficient in a constitutional case but
specifically refrained from expressing any view
with respect to the test to be applied in any other
type of case (refer Manitoba (Attorney General) v.
Metropolitan Stores Ltd., [1987] 1 S.C.R. 110, at
pages 127 and 128).
The following cases were decided after some
consideration was given to the traditional require
ment that the plaintiff was obliged to establish
either strong prima facie case or a prima facie
case: Philips Export B.V. et al. v. Windmere Con
sumer Products Inc. (1985), 4 C.P.R. (3d) 83
(F.C.T.D.); Tele-Direct (Publications) Inc. v.
Telcor Canada Directories Inc. (1986), 11 C.P.R.
(3d) 102 (F.C.T.D.); Consumers Distributing Co.
Ltd. v. Consumers Video Ltd. et al. (1983), 78
C.P.R. (2d) 195 (Ont. H.C.); Tavener Rutledge
Ld. v. Specters Ld., [1957] R.P.C. 498 (H.C.J.
Eng.).
In the following cases, on the other hand, con
sideration was focused on whether there was a
serious question to be tried: Interlego AG v. Irwin
Toy Ltd. (1985), 4 C.I.P.R. 1 (F.C.T.D.); Mark's
Work Wearhouse Ltd. et al. v. Governor & Co. of
Adventurers of England trading into Hudson's
Bay, known as Hudson's Bay Co. (1980), 15
C.P.R. (3d) 376 (Alta. Q.B.); Ikea Ltd. et al. v.
Idea Design Ltd. et al. (1987), 13 C.P.R. (3d) 476
(F.C.T.D.); Ancona Printing Ltd., carrying on
business as Kopy Kwik Printing v. Kwik-Kopy
Corporation et al. (1983), 73 C.P.R. (2d) 122
(Ont. H.C.); C-Cure Chemical Co. Inc. v.
Olympia & York Developments Ltd. (1983), 71
C.P.R. (2d) 153 (Ont. H.C.); International Paints
(Canada) Ltd. v. Consolidated Coatings Corp.
(1986), 10 C.P.R. (3d) 142 (F.C.T.D.); Canadian
Red Cross Society v. Simpsons Limited, [1983] 2
F.C. 372 (T.D.).
Before leaving the subject of the proper test to
be applied a further consideration is worthy of
mention. It is a practical one and relates more
specifically to injunctions pertaining to industrial
property matters.
The essential and very fundamental reason why
monopolies in matters such as trade marks, patents
and copyrights exist at all and are recognized and
afforded protection under the law, is to encourage
and reward research, inventiveness and the risking
of capital in the scientific, technical, manufactur
ing and commercial fields. If that basic purpose of
encouraging inventiveness, innovation and adven
ture in the commercial world is to be maintained,
then, when a person who has conceived of a new
projet is faced with what might appear to be a
monopoly in the same or a related field and has
subsequently taken the required technical, scientif
ic and legal advice indicating that what he pro
poses to do is not covered by the monopoly, he
should feel absolutely free to embark upon and
proceed without interruption of the proposed
course.
The advice must necessarily be related solely to
the question of whether the field of the proposed
action or endeavour is at law free of the monopoly.
Otherwise, notwithstanding the fact that his com
petitor asserting the previous monopoly would ulti
mately fail, the inventor or innovator, were he to
be faced at the interlocutory stage with the mere
test of a serious question to be tried, would, in
addition, before proceeding with his project, be
obliged to decide whether the balance of conve
nience eventually would also weigh in his favour,
at some future time, which is now undetermined
and depends entirely on whether and when the
other party institutes an action. This would be
placing an impossible and unrealistic burden upon
him or upon any expert whose advice he might
seek and would in effect run directly contrary to
the raison d'être of monopoly laws in the first
place. One of the main difficulties is that neither
the innovator nor his experts would normally have
any idea of the amount or possibly even of the
nature of the harm which might be determined to
have been suffered by the competitor at some time
in the future when an interlocutory injunction
might be applied for.
Some decisions seem to allude to it being some
how reprehensible that a person had dared enter
with open eyes, a field where there exists a
monopoly which might conceivably be related to
the proposed endeavour and might thus be
infringed. In a free market and especially in a free
and democratic society such as ours where initia
tive, inventiveness and daring has always been the
keystone of success, any such action, if taken bona
fide by a person who feels that he or she has
something of value to contribute, far from being
reprehensible, should, generally speaking, not be
impeeded where in fact and in law, the specific
area of the field of the proposed invention, action
or endeavour is actually free of existing monopo
lies. Again, speaking generally and subject to cer
tain exceptions such as those previously men
tioned, it follows that, the person who holds a
monopoly should, in order to obtain an interlocuto
ry injunction, be required to satisfy the court on
the evidence adduced in the motion, that there
exists a prima facie right to it and that it appears
that the defendant would probably be infringing
upon it.
It has been said on several occasions that the
judge hearing the injunction should refrain from
trying the case and also from commenting on the
evidence submitted except to the extent that such
comments are deemed necessary to explain the
decision. These certainly are proper comments.
However, contrary to what somehow seems to be
implied in the Cyanamid case and in other deci
sions, this does not mean that the judge is justified
in refraining from weighing and considering the
law and the evidence submitted by both sides
regarding the issue of whether there appears to be
a probability of eventual success by the plaintiff.
The court must necessarily consider and weigh
evidence which is often quite involved when decid
ing on a question of balance of convenience and on
the nature and extent of the damage to both sides.
In my view, it is not only proper but it is the duty
of the judge hearing the injunction to do so on the
issue of the plaintiff's legal position, but only of
course to the extent that it is necessary.
Finally, courts in granting interim injunctions at
times blithely refer to "maintaining the status
quo" when in fact the injunction, far from doing
so, allows the plaintiff to continue operating and
either partially or totally interrupts, prevents or
puts an end to ongoing activities or operations of
the defendant thereby causing him continuing
pecuniary damage until trial. It also seems that
some courts conclude at times that one or the other
party cannot be adequately compensated in dam
ages for the alleged tort, when, on proper analysis,
it is merely a case of damages being difficult to
calculate, determine or estimate.
Petro Canada introduced the labelling com
plained of on November 19, 1986 and the evidence
establishes quite clearly that the plaintiff Turbo
Resources became aware of this in January 1987
yet did not advise Petro Canada of its objection
until June 23, 1987. I do not consider that the
delay complained of would constitute laches or an
actual bar to the claim, but it certainly is an
indication that Turbo Resources was not too con-
cerned about the matter and that it considered the
alleged infringement as being relatively unimpor
tant since it did not warrant immediate action.
There is ample evidence that the word itself
would constitute a very weak mark as it is a
common term in both the automotive and in the
automotive lubrication industries. It is used in
Canada by- seven automotive oil manufacturers
and/or distributors in labelling their products.
There are also 14 brands of automobiles presently
sold in Canada using the word in the name of their
vehicle. It is to be found in any modern English
dictionary. In the automotive industry it is
employed to describe a super charger which is
driven by a turbine using the exhaust gases of the
engine. "Turbo Tested" means tested for use in a
turbo-charged or super-charged engine. It is only
fairly recently that turbo charged automobiles
have become very popular. The term is used by
other manufacturers and distributors of automo
tive oils such as Shell and Castrol. Turbo
Resources itself, when corresponding with Shell as
far back as 1972, when the latter was originally
objecting to its application for the design marks
covering the word, pointed out that it was used by
other oil companies for their products.
I therefore conclude that the word does not have
the distinctiveness contemplated by paragraph
6(5)(a) of the Trade Marks Act [R.S.C. 1970, c.
T-10] . Thus, the main issue reduces itself to the
consideration of whether, by reason of its promi
nence or the manner in which it is used on the
label or by reason of the design itself, the word
infringes any of the above-mentioned marks of the
plaintiff Turbo Resources.
While Turbo Resources of course uses the word
on all of its oil, petroleum and other products,
Petro Canada only uses the word in conjunction
with the word "tested" on labels of oil containers
for oils which it claims to be turbo-tested and are
intended for use in turbo-charged motors. It is thus
truly descriptive of the nature of the product being
sold by that company.
As pointed out at the outset of these reasons,
three of the marks are design marks, the only word
mark being "Go Turbo".
In so far as the design is concerned, neither the
colour, the size nor the design of the letters in the
word "Turbo" nor the design of the whole word
itself on the defendant's oil containers resembles
any of the design marks of Turbo Resources.
With regard to the word, an exclusive right to
use the expression "Go Turbo" does not at law
create any right over the word "turbo" taken by
itself especially as I have already pointed out in
view of the exceptional weakness of the word from
a trade mark standpoint in the automotive field
and in the field of automotive lubricants.
There remains the question of whether the word
has acquired a secondary meaning for the plaintiff
entitling it to special protection.
The word "Turbo" as previously stated now
describes the use for which oil is being sold and
intended to be used. It is therefore a truly descrip
tive word. There is in such cases a much heavier
burden on any plaintiff who attempts to establish
that such a word has attained a secondary mean
ing directly identifying him or his products than if
the word were merely an original word or a
"fancy" word, which is not descriptive of the prod
uct or of the person relying on the secondary
meaning (see Cellular Clothing Company v.
Maxton & Murray, [1899] A.C. 326 (H.L.)). In
such cases, it is almost impossible to prove that the
distinctiveness of a descriptive word (see Hommel
v. Gebrüder Bauer & Co. (1904), 22 R.P.C. 43
(C.A.)).
It is not only length of use which must be
considered but also how and where it has been
used. Although the plaintiff began using the word
in 1972, the use has been fairly limited having
regard to the areas where persons distributing oil
are operating. At present, the only area where
distinctiveness might be claimed is in Western
Canada, within very limited areas in the Provinces
of British Columbia and Manitoba. Turbo
Resources has established service stations in mu
nicipalities representing approximately 50% of the
population of Saskatchewan but only approximate-
ly 7% of the population of British Columbia and
6% of the population of Manitoba. There are
apparently no stations in either Vancouver, Vic-
toria or Winnipeg.
The affidavit pertaining to the issue of whether
the word "Turbo" as used by Petro Canada might
be confused with the Turbo brand of oil sold by
Turbo Resources Ltd. in Western Canada, was the
affidavit of one Warburton to the effect that he
had attended at 6 Petro Canada stations in Cal-
gary and had requested "a litre of Turbo brand
motor oil" and that, in all but one of the cases, the
attendant began to pour Petro Canada's Turbo
tested oil into his automobile. The one exception
pointed out that he did not carry Turbo brand
motor oil but only Petro Canada's Turbo oil.
Having regard to the fact that Petro Canada
stations obviously do not sell the oil of their com
petitor and would not be expected to do so and
having regard also to the fact that Petro Canada
carried a special type of oil that is Turbo tested for
use in turbo-charged cars, I am somewhat
astounded that even one of the attendants drew the
distinction. It would not have made the slightest
difference if the word "Turbo" had not been
prominently displayed on the label but merely
mentioned in the fine print on the label indicating
that it was turbo-tested. It is not contested or
alleged that Petro Canada was not fully entitled to
use the word "Turbo" where the word formed part
of a description of the purpose of the oil. There is
no evidence of any person having actually pur
chased a container of Petro Canada Turbo tested
oil believing it to be a product of Turbo Resources.
Furthermore, the label on both sides of the
container carries the name Petro Canada and the
logo of the defendant. Both are very prominent
and, although the letters spelling out Petro Canada
are not in as bold a type as the word "Turbo", they
are highly visible and distinguishable. It seems to
me that no person looking at the label would come
to the conclusion that the oil in the container is
produced by Turbo Resources and not by Petro
Canada.
The burden of establishing a prima fade case
regarding a monopoly arising out of a possible
secondary meaning of the word "Turbo" has not
been discharged.
On the affidavit evidence presented on the
motion and the cross-examinations thereon, I must
conclude therefore that there has been no prima
facie case established by the plaintiff Turbo
Resources that Petro Canada might be infringing
its monopoly. There remains of course a possibility
that this might be established by further evidence
adduced in trial.
The motion will therefore be dismissed. I
specifically refrain however from dealing with the
question of balance of convenience. Regarding the
nature of the damages, I also refrain from making
any finding except one to the effect that the harm
done to Petro Canada, had injunction been grant
ed, could have been compensated for by a mone
tary award. The cost of removal and the replace
ment of the labels on their Turbo tested oil
containers would in fact be the only damage
caused and this could fairly easily be determined.
The defendant will be entitled to costs in the
cause.
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.