American Cyanamid Company (Appellant)
v.
Record Chemical Co. Inc. (Respondent)
Trial Division, Noël A.C.J.—Montreal, Septem-
ber 21; Ottawa, October 31, 1972.
Trade marks—"Pine-Sol" registered trade mark in connec
tion with disinfectants—Whether "Pine-L" confusing there-
with—Trade Marks Act, R.S., 1970, c. T-10, s. 6(2)(5).
Appellant, the owner of the registered trade mark Pine-
Sol, which it had substantially used and advertised in
Canada for many years in connection with disinfectants so
that it had become actually distinctive of its wares, opposed
respondent's application for registration of the trade mark
Pine-L for use in association with disinfectants. The Regis
trar allowed respondent's application, holding that the two
marks were substantially different and that there was no
confusion between them.
Held, on appeal, the Registrar ought to have refused
registration of respondent's mark Pine-L. As a matter of
first impression and with the average or hurried customer in
mind, and without breaking up the marks into their undivid
ed components, and taking into account the small inherent
distinctiveness of the word "Pine" and the difference in the
two other parts of the marks "L" and "Sol", the marks
were not substantially different and, therefore, are not only
confusing within the meaning of section 6(2) of the Trade
Marks Act but also within the meaning of subsection (5)
thereof and its paragraphs.
APPEAL from Registrar of Trade Marks.
David E. Clarke for appellant.
S. Godinsky, Q.C., for respondent.
NOEL A.C.J.—This is an appeal from the
decision of the Registrar of Trade Marks, dated
February 18, 1972, accepting the respondent's
application to register the trade mark Pine-L for
use in association with disinfectants based on
use of the mark in association with disinfectants
since at least as early as January 15, 1967. The
said application was accorded serial number
305,359 by the Registrar.
The appellant is the owner of the trade mark
Pine-Sol registered in Canada on June 3, 1955
for use in association with detergents, deodo
rants, disinfecting and bleaching fluids under
number 100,773. The right to the exclusive use
of the word "Pine" was disclaimed.
The appellant opposed respondent's applica
tion for registration of its trade mark Pine-L
upon the following grounds:
(a) that under Section 37(2)(a) of the Trade Marks Act the
application did not comply with the requirements of Sec
tion 29 of the Act in that the statement of use in the said
application is not supported by the facts;
(b) that the trade mark PINE-L is not registrable in view of
Sections 37(2)(b) and 12(1)(d) of the Trade Marks Act
because it is confusing within the meaning of Section 6 of
the Trade Marks Act with Appellant's trade mark PINE -
SOL registered in Canada on June 3, 1955 for use in
association with detergents, deodorants, disinfecting and
bleaching fluids under number 100773. The application
for Appellant's said registration was filed with the Trade
Marks Office, Ottawa, on October 20,. 1954 based on
proposed use and the affidavit of use was filed with the
Registrar of Trade Marks on June 2, 1955;
(c) that the trade mark PINE-L is not registrable in view of
Sections 37(2)(c) and 16(1) of the Trade Marks Act
because it is confusing within the meaning of Section 6 of
the Act with the Appellant's trade mark PINE -SOL previ
ously used in Canada by the Appellant and/or its regis
tered user in association with the wares of the said
Registration Number 100773;
(d) that the trade mark PINE-L is not registrable in view of
sections 37(2)(d) and 2(f) of the Trade Marks Act because
it does not distinguish the wares in association with which
it is alleged to be used by the Respondent from the wares
in association with which the Appellant's trade mark
PINE -SOL is registered and used in Canada.
The appellant further submits that:
(a) on the basis of the evidence filed by the Respondent in
the Opposition, the Respondent has not used the trade
mark PINE-L in Canada in association with disinfectants;
(b) PINE-L used in Canada as a trade mark for disinfect
ants by Respondent is confusing with PINE -SOL used as a
trade mark in Canada by Appellant in association with the
wares of registration number 100773 within the meaning
of Section 6 of the Trade Marks Act and is not registrable
by virtue of the Appellant's earlier date of and continuing
use of PINE -SOL as a trade mark in Canada as aforesaid,
and by virtue of Appellant's registration of PINE -SOL as a
trade mark as aforesaid;
(c) the Respondent's trade mark PINE-L does not actually
distinguish nor is it adapted to distinguish disinfectants
sold by the Respondent in Canada from the wares of the
Appellant recited in its said Registration number 100773
and sold by Appellant and/or its registered user in Canada
in association with the trade mark PINE -SOL.
The pertinent parts of the Registrar's decision
are reproduced hereunder:
With respect to the first ground of opposition, the oppo
nent submitted in its written argument and at the hearing,
that the applicant had failed to establish that it had used the
trade mark PINE-L in association with disinfectants and since
the date specified in the application, January 15, 1967. In
support of its allegations, the opponent referred to the
affidavit filed on behalf of the applicant and in which an
officer of the applicant states that "My company com
menced the use of the trade mark PINE-L at least as early as
15th of January 1967 in association with detergents [sic].
The opponent pointed out that the applicant had not filed
any specimens of the alleged use of the alleged trade mark
and of the alleged product, and that the statement in the
affidavit evidence referred to the use of the trade mark in
association with "detergents" whereas the wares specified
in the application are "disinfectants". The opponent further
relied on its reply evidence consisting of several affidavits
wherein it is stated that the applicant's product PINE -L had
not been located in various stores across Canada.
Although it is stated in the affidavit subscribed by the
President and Executive Director of Record Chemical Co.
Inc. (the applicant) that the company "commenced the use
of the trade mark at least as early as the 15th of January
1967 in association with detergents" it would appear from
the other statements made in the affidavit that reference to
"detergents" is merely a clerical mistake and that as a
matter of fact the applicant has used the trade mark PINE -L
in association with Pine oil disinfectants. On the other hand,
the fact that the applicant's product PINE -L was not located
in various stores across Canada is not conclusive evidence
that the mark is not in use in Canada since other stores that
were not inspected on opponent's behalf might very well
have sold the applicant's products.
He then said in his conclusion:
Although the opponent's mark has been substantially
used and advertised in Canada in association with detergent,
deodorant and disinfecting fluids since at least as early as
the year 1955, the opponent cannot acquire the monopoly
of the word PINE for wares whose active ingredients include
pine oil. The only common feature between the marks of
the parties is the word "pine" which is clearly descriptive of
the character or quality of the wares detergents, deodorants,
disinfecting and cleaning fluids.
The marks PINE-L and PINE -SOL considered in their entire-
ties are substantially different and having regard to the
circumstances of the case on the basis of the admissible
evidence, I am of opinion that the marks are not confusing
within the meaning of section 6 of the Trade Marks Act and
the opposition is therefore rejected pursuant to section
37(8) of the Trade Marks Act.
The main attack launched by the appellant is
that the Registrar properly instructed in law
could not conclude as he did that they were
substantially different and, therefore, not
confusing.
Counsel for the appellant submitted that it
was obvious from a reading of the above rele
vant passages of the Registrar's decision that in
reaching his conclusion, the latter disregarded
the word "Pine" because of the emphasis he
laid on the descriptiveness of the word and his
statement that the opponent (the appellant)
cannot acquire the monopoly of the word
"Pine" for wares whose active ingredients
include pine oil.
This appears to be precisely what the Regis
trar did if one refers to the language used in the
latter part of his decision reproduced above. He
indeed made four findings:
(1) the opponent's trade mark Pine-Sol has
been substantially used and advertised in
Canada;
(2) the opponent cannot acquire the monopo
ly of the word "Pine" for wares whose active
ingredients include pine oil;
(3) the only common feature between the
marks is the word "Pine" which is clearly
descriptive, and
(4) the marks considered in their entirety are
substantially different.
I should say that the Registrar's findings that
the appellant's trade mark Pine-Sol has been
substantially used and advertised in Canada is
fully supported by the evidence even if there
was here no evidence of people in the market
place stating that such was the case. The proof
of extensive sales over a long period of time, as
contained in the James Edwin Archer affidavit
(which was not contested by the respondent) is,
in my view, sufficient to establish that appel
lant's trade mark has thereby acquired a distinc
tiveness sufficient to entitle it to registration.
The word "Pine", of course, is not an inherently
distinctive or arbitrary word. It is indeed
descriptive and under the former legislation, the
Unfair Competition Act, could not have been
registered as a trade mark as it could not then
have become distinctive of the wares of
anyone. The present Trade Marks Act, how
ever, has changed this as it appears from a
reading of the definition in section 2 which says
that:
"distinctive" in relation to a trade mark means a trade mark
that actually distinguishes the wares or services in associa
tion with which it is used by its owner from the wares or
services of others or is adapted so to distinguish them; [the
italics are mine.]
It then follows that if the appellant has estab
lished that the word "Pine" together with "Sol"
has been used by it so as to actually become
distinctive of its wares and this, as already
mentioned, is what has happened here, then its
owner can have rights in a descriptive word and
it can become such as here a perfectly valid
trade mark.
A trade mark may consist of a number of
words some of which may be what are called
weak words or less strong words than others.
The matter, however, of determining whether
the mark is confusing or not, under section 6 of
the Trade Marks Act must still be decided by
looking at the entirety of the trade mark without
breaking it up into parts and looking at one part
only and downgrading the other on the basis
that no one can obtain a monopoly in a particu
lar descriptive word. The appellant, as already
mentioned, disclaimed the word "Pine" but the
marks must still be considered in their totalities
in determining whether there is a likelihood of
confusion between them.
No doubt, in the case of weak marks or of
marks possessing little inherent distinctiveness,
small differences may be accepted to distin
guish one from the other, but this does not
mean that any such weak portions of a mark
must be discounted in so distinguishing.
With this in mind, the problem should then
here be confined to the question of confusion
uncluttered by the consideration of monopoly in
one of the words and even by the matter of
distinctiveness of the appellant's trade mark as
the latter's Pine-Sol is a registered trade mark.
However, as already mentioned, even if the
distinctiveness of the appellant's trade mark
had to be considered, the evidence as to the
appellant's use of it is sufficiently convincing to
establish that such use had definitely and actu
ally distinguished its wares.
Having regard to all of the circumstances of
this case and the fact that both marks are used
in association with the sames wares, i.e., disin
fectants (the composition of the ingredients is
the same in the Pine-L label as the active
ingredients in the Pine-Sol product) which are
items purchased by persons who do not always
examine labels, I am of the view that as a
matter of first impression and with the average
or hurried customer in mind, and without break
ing up the marks into their undivided compo
nents, and even taking into account the little
inherent distinctiveness of the word "Pine" and
the differences in the two other parts of both
trade marks "L" and "Sol", the marks are not
substantially different and, therefore, are not
only confusing within the meaning of section
6(2) of the Trade Marks Act but also within the
meaning of subsection (5) thereof and its para
graphs. It follows, of course, that the Registrar
should have refused to register the respondent's
mark Pine-L.
This conclusion would be sufficient to end
the matter. The appellant, however, submitted a
second ground of appeal which was not before
the Registrar and which is raised for the first
time in these proceedings.
The submission is that under section 29(a) of
the Act, an applicant for the registration of a
trade mark must file "a statement in ordinary
commercial terms of the specific wares or serv
ices in association with which the mark has
been or is proposed to be used", and that the
respondent here does not use the mark it alleges
it used.
Donald H. Smith, a trade mark agent, states
in his affidavit produced herein, that during the
hearing before the Registrar of Trade Marks on
January 20, 1972, he requested of Mr.
Godinsky, the respondent's counsel, a specimen
label and was given the one attached to his
affidavit and marked Exhibit A, which he says
"I understand to be a sample of the label being
used in Canada by the Applicant on which the
Applicant relies as use of the trade mark
applied for in these proceedings". The specimen
label mentioned above contains the trade mark
Pine'L, that is "Pine" with an apostrophe rather
than Pine-L with a hyphen, which is the trade
mark the respondent applied for.
Counsel for the appellant says that initially
the difference may well have been of little
significance and the applicant might have suc
ceeded in convincing the Registrar to permit an
amendment on the ground that this discrepancy
would not alter its character or identity under
section 36 of the Trade Marks Act. But this, he
says, can no longer be done after the advertise
ment provided in section 37 because the appli
cant can not, at that stage, correct the error and
justify the registration of one mark by the use
of another.
Counsel for the appellant submits that the
Registrar did not know that the trade mark used
by the applicant (the respondent) was different
from the one sought to be registered and had he
known after the advertisement of respondent's
application that the trade mark sought was not
the one used, would have refused the
application.
Counsel for the respondent, on the other
hand, took the position that Smith's label,
Exhibit A, does not indicate that that is the only
label being used although he admitted that it
was a label used in 1972 by the respondent. It is
not, he said, the exclusive type of label used as
two affidavits produced by Mr. Kuchar and
filed by the respondent, indicate that he is deal
ing with the trade mark Pine-L and not Pine'L.
Counsel for the respondent also suggests that if
counsel for the appellant found a contradiction
here, he should, he says, have attacked it by
cross-examination, which he did not do. He
added that Mr. Smith's Exhibit A does not show
that it was used in association with a disinfect
ant because, he says, it is not, but that it is used
as a cleaner. This, however, is not entirely so if
one refers to the label where the word "Clean-
er" appears immediately under the words
Pine'L, and immediately under "Cleaner" and
linked to it by a "&" the words "disinfectant
for home hygiene" appear.
The question here is what sort of difference
can be of sufficient magnitude to enable one to
say that a trade mark is really different from
another. If the applicant had made an applica
tion for registration of its trade mark Pine-L in
fancy lettering or in small case lettering or in
script, could the appellant take the position that
the respondent is not using the same trade
mark? I would not think so. If instead of using a
hyphen, an apostrophe is used such as here,
could it not be said that these words are differ
ent trade marks. The matter is more doubtful.
There is, however, in my view, no necessity to
answer that question here as I have come to the
conclusion that there is sufficient evidence in
Mr. Kuchar's affidavits and in the application
of the respondent to indicate that even if the
latter has used the word mark Pine'L on certain
labels, they have used the word mark Pine-L
also sufficiently to entitle it to apply for
registration.
In view, however, of the conclusion I have
reached on the first ground, the appeal is there
fore allowed with costs and the matter is
referred back to the Registrar for appropriate
action in accordance with these reasons.
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.