T-998-71
Marineland Inc. (Appellant)
v.
Marine Wonderland and Animal Park Limited
(Respondent)
Trial Division, Cattanach J.—Ottawa, April 2-5,
August 23, 1974.
Trade marks—Appellant company carrying on business in
the United States with display of marine and animal life—
"Marineland" used as trade mark in association with dis-
play—Respondent subsequently launching similar business in
Canada—Later changing description of display from
"Marine Wonderland" to "Marineland"—Applying for regis
tration of "Marineland" as trade mark in Canada—Opposi-
tion of appellant rejected—Trade Marks Act, R.S.C. 1970, c.
T-10, ss. 2, 4(1), 5, 7, 12, 16(1)(a), 29, 37(2).
The appellant, incorporated under the laws of Delaware,
U.S.A., acquired a Florida site and established an aquarium
to exhibit, for an admission fee, marine life in a natural
setting. From 1937, the appellant used the word "Marine-
land" as a trade mark in association with its display. Subse
quently, the respondent, incorporated under the laws of
Ontario, Canada, began business at Niagara Falls with a
display similar to that of the appellant. For the words
"Marine Wonderland" in a description of its display, the
respondent substituted the word "Marineland" and thereaf
ter applied for registration of "Marineland" as a trade mark
in Canada. The appellant's opposition to the registration was
rejected by the Registrar. The appellant appealed further to
the Trial Division.
Held, the appeal should be dismissed. The appellant failed
in the following grounds for opposition: 1. That under
section 37(2)(a) of the Trade Marks Act the application for
registration was defective for non-compliance with section
29 of the Act, in that the date of first use in Canada, given in
the application as March 15, 1966, was not in fact the date
of such use. It was true that there was evidence of use at a
prior date, but there was no reason why the applicant should
not, for greater caution, select a later date, of which he had
no doubt as to the confirmed use. 2. That under section
37(2)(c) of the Act, the respondent was not the person
entitled to registration in view of two facets of section
16(1): (a) that the trade mark "Marineland" had been previ
ously used in Canada by the appellant; (b) that the trade
mark had been previously made known in Canada by the
appellant. As for (a), this ground of opposition placed on the
appellant the onus of proving that it had not abandoned the
trade mark. Here there was long disuse since 1964, coupled
with the intention to abandon, which was to be inferred
from long disuse. As for ground (b), the evidence in support
of the appellant's making the mark known in Canada,
through the medium of advertising in various ways, failed to
meet the high standard of proof required under section 5 of
the Act. 3. That the trade mark was not distinctive of the
respondent's services at the date of first use: since the
appellant had failed to establish that its use of the trade
mark had become well known in Canada, prior to the
respondent's reception thereof, it followed that the trade
mark was capable of distinguishing the services of the
respondent from those of others.
Porter v. Don the Beachcomber [1966] Ex. C.R. 982;
Robert C. Wian Enterprises, Inc. v. Mady [1965] 2 Ex.
C.R. 3; E & J Gallo Winery v. Andres Wines Ltd.
(T-1818-73, March 2, 1973) and Registrar of Trade
Marks v. G.A. Hardie & Co. Ltd. [1949] S.C.R. 483,
applied.
APPEAL.
COUNSEL:
C. Robinson, Q.C., and D.A. Hill for
appellant.
Roger T. Hughes for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for appellant.
Donald F. Sim, Q.C., Toronto, for
respondent.
The following are the reasons for judgment
delivered in English by
CATTANACH J.: This is an appeal from a deci
sion of the Registrar of Trade Marks dated
January 12, 1970 whereby an opposition lodged
by the appellant herein to the respondent's
application for the registration of the word
"Marineland" as a trade mark used in associa
tion with the display of marine and animal life in
a reasonably natural setting was rejected by the
Registrar.
The appellant based its opposition on three
grounds in accordance with section 37(2) of the
Trade Marks Act which reads:
37. (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.
The first ground of opposition relied on by
the appellant is that outlined in section 37(2)(a)
"that the application does not comply with the
requirements of section 29".
Section 29 sets forth the matters which shall
be contained in the application amongst which is
a statement of the wares or services in associa
tion with which the mark has been used and the
date from which the applicant, in this case the
respondent, has so used the trade mark.
In the application, dated June 27, 1966, filed
with the Registrar, the appellant states that it
has used the word "Marineland" as a trade
mark in Canada in association with the wares
and services above described since March 15,
1966.
As I understand the position taken by the
appellant it is that until the application is accept
ed the statements in the application as to the
wares and services and as to the date of use
have no evidentiary value and are merely state
ments with respect to which, except in restrict
ed circumstances, the Registrar has no authority
to substantiate. After registration, when the alle
gations in the application are transposed into the
record of registration then the statements
acquire evidentiary value.
In the present instance the application for
registration by the respondent has not been
accepted as yet.
Therefore it is the position of the appellant,
that while the date of use of the mark in Canada
given by the respondent in the application for
registration cannot be questioned by the Regis
trar, it can be and is put in issue in this appeal.
The appellant submits that the evidence estab
lishes that the date of first use given in the
application for registration, that is, March 15,
1966, was not, in fact, the date of first use but
rather that use of the mark by the respondent
began after that date. On this premise the appel
lant contends that the application for registra
tion is not in accordance with section 29.
The second ground of opposition to the
application for registration by the appellant is
predicated upon section 37(2)(c) that the appli
cant therefor, that is the respondent, is not the
person entitled to registration. This ground of
opposition, in turn, depends upon section
16(1)(a) of the Trade Marks Act which is to the
effect that the respondent is entitled to registra
tion of the word "Marineland" in association
with a display of marine life unless at the date,
that is, March 15, 1966 which is the subject of
dispute in the first ground of opposition, on
which the respondent first used or made the
mark known it is confusing with a trade mark
that had been previously used in Canada or
made known in Canada by any other person.
The appellant's position is that it used the
trade mark "Marineland" in two ways,
(1) in association with a display of marine life
through the sale in Canada of entrance vouch
ers or tickets to its display in the state of
Florida, U.S.A. by travel agents and tour
organizers, and
(2) by use of the trade mark "Marineland" in
association with films of marine life produced
by it and leased and shown in Canada by
television broadcasting.
It is the appellant's position that the sale in
Canada by travel agencies and persons in cog
nate businesses of tickets of admission to its
marine life display in Florida constitutes a use
of the trade mark in Canada and that the broad
cast of the films mentioned by Canadian televi
sion stations constitutes a use of the trade mark
in association with those wares as contemplated
by section 4(1) of the Act in that the trade mark
is so associated with the wares that notice of the
association is given to whom the property or
possession is transferred.
Under this second ground of opposition to the
registration of the trade mark by the respondent
it is also the appellant's position that the trade
mark was made well known in Canada by the
appellant in accordance with section 5 of the
Trade Marks Act by reason of advertising in
publications circulated in Canada which in the
ordinary course of commerce would come to
the attention of potential viewers of the appel
lant's display in Florida.
The third ground of opposition to the registra
tion of the trade mark by the respondent is, as
outlined in section 37(2)(d), that the trade mark
was not distinctive of the respondent's services.
As I understood the appellant's contention on
this third ground it is that by reason of the sale
of admission tickets in Canada to the appellant's
display in Florida, its advertising in publications
circulated in Canada and the number of Canadi-
ans on tour who have visited the appellant's
marine life display in Florida the mark is not
distinctive in the hands of the respondent of the
services it offers because of the familiarity of
people in Canada with the appellant's use of the
mark for the reasons outlined and accordingly
those persons associate the trade mark "Marine-
land" with a person other than the respondent.
The appellant is a corporation incorporated
pursuant to the laws of the State of Delaware,
one of the States of the United States of Ameri-
ca, in 1937 and has its head office in the City of
Marineland, Florida. The appellant was original
ly incorporated under the name of Marine Stu
dios Inc. but that corporate name was changed
by appropriate instrument by the appropriate
authority to Marineland Inc. on July 14, 1969.
Immediately after its incorporation in 1937
the appellant acquired approximately 130 acres
of land located on the east coast of the State of
Florida between the Atlantic ocean to the east
and an intra-coastal waterway to the west.
On this land the appellant established an
extensive aquarium and engaged in the busi
ness of exhibiting to the public, for an admis
sion fee, marine life in a natural setting. I think
that the principal feature of the appellant's dis
play is performances by trained dolphins at
regular intervals.
In that year, 1937, the appellant used the
word, "Marineland" as a trade mark in associa-
tion with its display and has continued to do so.
In the meantime the original large aquarium
has been supplemented by ten other buildings
housing exhibits, other facilities and equipment
at a total capital cost in excess of three million
dollars and there is an operating staff in excess
of 110 persons.
The evidence is to the effect that the display
is an extremely popular tourist attraction. From
1961 forward the annual paid attendance has
been in excess of 500,000 persons.
In addition to providing exhibits of marine life
the appellant has produced films on marine life
subjects, has made its facilities available to the
conduct of scientific research in marine biology
which has resulted in the publication of scientif
ic papers and has conducted research on its own
account. This is a natural adjunct to the exhibits
maintained by the appellant and its own search
for and capture of living specimens.
Because of the success of this venture the
appellant established a subsidiary company for
similar purposes in the State of California under
the name of "Marineland of the Pacific".
There is also a like display in New Zealand
featuring the word "Marineland" which has no
relationship with the appellant.
In the numerous maps attached to exhibits to
the many affidavits tendered in evidence I
observed that Marineland is indicated thereon
as a geographic location. In paragraph 5 of the
notice of appeal it is stated that the land
acquired by the appellant in 1937 and the build
ings constructed thereon was incorporated by
the State of Florida in that same year as the
City of Marineland. The boundaries of the City
of Marineland coincide with the boundaries of
the lands owned by the appellant.
By virtue of sections 7 and 12(1) of the Act,
no person shall make use of any trade mark as
to the geographic origin of the wares or services
in association with which the mark is used.
However, while such a mark is not prima facie
registrable it may become so when it has
become distinctive in that it actually distin-
guishes the wares or services of the owner from
those of others. Section 12(2) so provides. A
trade mark which is not otherwise registrable
becomes registrable if it has been used in
Canada so as to have become distinctive at the
date of filing an application for registration.
Accordingly, with respect to the appellant
herein, the question still remains whether the
appellant has used the mark in Canada.
Under the English jurisprudence and under
the former Canadian Statutes, that is section
11(e) of the Trade Mark and Design Act [R.S.C.
1929, c. 201] and section 2(m) of the Unfair
Competition Act [R.S.C. 1952, c. 274] and the
decisions thereunder, a trade mark, in order to
be registrable must have that innate quality that
will permit the mark to acquire distinctiveness.
This concept was eliminated in the Trade Marks
Act now applicable. There is now no necessity
to inquire into the innate character of a mark to
ascertain if it is capable of becoming distinctive
but the inquiry is limited to ascertaining if the
mark is distinctive.
Accordingly, with respect to the respondent
herein, the question is whether the mark
"Marineland" is distinctive in its hands.
It was not one of the grounds of opposition
by the appellant herein to the application for the
registration of the trade mark "Marineland" by
the respondent herein, either before the Regis
trar or before me, that the trade mark was not
registrable under section 37(2)(b) quoted above.
The respondent is a joint stock company in
corporated pursuant to the laws of the Province
of Ontario under the corporate name of "Marine
Wonderland and Animal Park Limited." Follow
ing its incorporation, the respondent began busi
ness in Niagara Falls, Ontario, as the operator
of a tourist and sightseeing attraction. As is
indicated in the corporate name, with respect to
which name I offer the gratuitous opinion that it
is an attractive and satisfactory one, the busi-
ness of the respondent was to offer a display of
marine life and animal life in their respective
natural settings for which an admission fee is
charged. I think that the display of animal life
offered by the respondent may be characterized
as a zoo. It is also my recollection of the evi
dence that in the area of the zoo, there were
picnic and camping facilities available to the
public. I also think that the evidence clearly
establishes that the display of marine life had as
its principal feature performances in an aquari
um or pool by dolphins similar to the perform
ing dolphins exhibited by the appellant in Flor-
ida and California.
While the corporate name of the respondent
has remained constant throughout, the respond
ent first offered its attractions under the name
of "Marine Wonderland and Game Park."
Subsequently, the respondent abandoned the
use of the words "Marine Wonderland" as a
description of its display of marine life and
substituted the word "Marineland" therefor. In
its application for registration of the word
"Marineland" as a trade mark, the respondent
alleges the date of the change to have been
March 15, 1966. This date, the appellant dis
putes and alleges that the evidence establishes
the first use to have been subsequent to March
15, 1966, which constitutes the basis of the first
ground of its opposition which is that the
application does not comply with the require
ments of section 29 of the Trade Marks Act in
that an incorrect date of first use is given.
It was not advanced as a ground of opposition
to the respondent's application that its use of
the mark "Marineland" would be likely to have
the effect of depreciating the value of the mark
in the hands of the appellant.
Mr. Holer, who is the predominant sharehold
er in the respondent and its president and
managing director, is an aggressive and vigorous
promoter of the respondent's enterprise. He has
been successful in making it a display of quality
representing a substantial investment of capital.
While it does not equal the investment of the
appellant, nevertheless it remains very
substantial.
I have no doubt that Mr. Holer was well
aware of the appellant's use of "Marineland" in
connection with its displays both in Florida and
California and the outstanding success of these
displays. I predicate this belief upon evidence
that Mr. Holer sought out and engaged former
employees of the appellant as trainers of the
dolphins that performed in the respondent's
attraction in Niagara Falls.
Therefore, while it is impossible to feel sym
pathetic to Mr. Holer in adopting the trade mark
"Marineland" as he did, the matter is not to be
determined upon a "rotten guy" principle but
upon the question whether the respondent is
precluded from using the trade mark "Marine-
land" in association with the services it offers in
Canada by the Trade Marks Act and more par
ticularly on the grounds advanced in opposition
to the application by the respondent for the
registration of that mark.
Accordingly, I revert to those grounds of
opposition the first of which is that the applica
tion for registration does not comply with sec
tion 29 of the Act.
Section 29(b) requires that the applicant shall
insert in the application in the case of a trade
mark that has been used in Canada the date
from which the applicant has used the trade
mark in association with its services. In the
form of application, the respondent inserted that
date as being since March 15, 1966. The
instruction to the form is that the applicant
should give the earliest date when the applicant
began to use the trade mark in Canada.
The reason for this is obvious. Under section
16, the right to registration lies in the person
who first uses a trade mark in Canada or makes
it known in Canada. This right is, of course,
subject to the trade mark not having been previ
ously used in Canada by another person and
that person can oppose the application for regis
tration or have the registration expunged. The
date that determines the right to registration
between rival claimants is the date of first use in
Canada or of first making the trade mark known
in Canada.
As was pointed out in argument, the Registrar
has no authority to require the applicant to
substantiate that date except to change the date
given to an earlier date upon evidence. Upon
registration, a copy of the record of registration
is evidence of the facts set out therein by virtue
of section 54(3) of the Act. But prior to registra
tion, the statement in the application is merely a
statement and nothing more.
It was the contention before me that when the
date of first use of a trade mark in Canada is put
in issue, then the onus falls upon the applicant
to establish that date. I would think that the
usual onus might well apply and that the burden
of establishing an allegation, either positive or
negative, lies upon the side that makes the
allegation.
However, without deciding the question upon
whom the onus lies in the circumstance of this
matter, I am satisfied that there was evidence
adduced which establishes that the respondent
used the trade mark as early as September
1965. This evidence appears in an affidavit of a
temporary employee of the respondent. This
student employee began working in June 1965
at which time the respondent conducted its busi
ness in association with the words "Marine
Wonderland". A large sign in the area of the
performing dolphins' display so proclaimed.
When this student returned to the respondent's
premises in September 1965, he observed that
the sign had been repainted to replace the words
"Marine Wonderland" with the word "Marine-
land".
There was further evidence that the respond
ent had advertised its facilities from 1964 to
1969 in a magazine styled "Showcase Niagara"
devoted to events and attractions taking place in
the Niagara area. Prior to May 1966 the words
featured in the advertisement were "Marine
Wonderland" and the corporate name, "Marine
Wonderland and Animal Park Limited". In May
1966 an advertisement announced a change in
name from "Marine Wonderland and Animal
Park" to "Marineland and Game Farm". In
these advertisements the corporate name was
given as "Marineland and Game Farm Limited".
There was no evidence before me that the
appropriate authority for the Province of
Ontario had issued supplementary letters patent
so changing the corporate name. On the con
trary, the parties before me accepted as a fact,
if my recollection is correct, that the corporate
name was not changed. I can only assume,
therefore, that the use of the corporate name
"Marineland and Game Farm Limited" was an
unauthorized use of that corporate name. How
ever, the advertisements in May 1966 and sub
sequent thereto implore the public to see and
return to see "Marineland" by which was meant
the aquatic show featuring trained dolphins, sea
lions, seals and similar aquatic species.
Therefore, there was evidence of the use of
the word "Marineland" as early as September
1965 and the confirmation of that change and
continued use of the word "Marineland" as at
May 1966.
The requirement of section 29 is that the
application for registration of a trade mark must
contain the date from which the trade mark has
been used in Canada. The form of application
included as a schedule to the Rules made under
the authority of the Act states that the applicant
shall allege that the trade mark has been used in
association with specified wares or services
"since" a date to be specified. While it is possi
ble that the earliest date of use may have been
September 1965, I can see no reason why the
applicant may not, out of a superabundance of
caution, select a later date of which he has no
doubt as to the confirmed use as of that date
particularly when it is to the disadvantage of the
applicant to forego the advantage of an earlier
date in the interest of greater certainty.
Therefore, an application for registration
which does this, in my opinion, cannot be said
to fail to comply with section 29.
For this reason, I do not accept the first
ground of opposition put forward by the appel
lant as being well founded.
The second ground of opposition to the
respondent's application for registration is
based on section 37(2)(c) and is that the
respondent is not the person entitled to registra
tion. This second ground of opposition is based
on two facets which are as outlined in section
16(1),
(1) that the trade mark "Marineland" had
been previously used in Canada by the appel
lant, and
(2) that the trade mark had been previously
made known in Canada by the appellant.
The first facet of this ground of opposition is
in turn divided into use of the trade mark in
Canada in association with the same services by
the appellant in two ways,
(1) by the sale of entrance vouchers in
Canada to the appellant's attraction in Flor-
ida, and
(2) by the use of the trade mark in associa
tion with films produced by the appellant and
leased and shown in Canada.
Mr. Justice Thurlow in Porter v. Don the
Beachcomber' said at p. 985:
What has to be decided in the present appeal is thus
whether advertising in Canada of the trade mark without
physical performance in Canada of the services in respect of
which it was registered was use of the trade mark in Canada
within the meaning of the statute ...
In argument before him counsel's position
was put as follows:
Counsel's position was that because of the definition of
"use" in s. 2(v) and of the provision of s. 4(2) therein
referred to the words "in use" in s. 44(3) as applied to this
case, are to read as meaning "used or displayed in the
advertising of such services", that the affidavit of Raymond
M. Fine showed that the mark was in use in Canada within
the meaning of the definition by reason of its being dis
played in advertising in Canada of the services performed
by the respondent in the United States and that with this
affidavit before him it was plainly open to the Registrar to
conclude that it did not appear that the trade mark was "not
in use in Canada" within the meaning of s. 44(3).
In response to this contention, Mr. Justice
Thurlow said at page 986:
' [1966] Ex.C.R. 982.
I do not think this submission can prevail. In my view the
suggested incorporation of expressions from s. 4(2) into s.
44(3) produces an interpretation which does not give full
effect to the words used in either of these subsections. What
s. 44(3) refers to is not merely use of the trade mark but use
of it in Canada. The expression "trade mark" is defined in s.
2(t), in so far as the definition deals with marks in respect of
services, as meaning a mark that is used or to be used to
distinguish services performed by one person, or according
to a standard, from services performed by others, or not
according to the standard. By s. 2(v) "use" in relation to a
trade mark in respect of services means a use that by s. 4(2)
is deemed to be a use in association with services and in
order to be deemed to be used in association with services
under s. 4(2) the trade mark must be used or displayed in the
performance or advertising of the services. Two elements
are thus required to constitute "use" as defined in s. 2(v)
viz., (i) services to be distinguished by the trade mark; and
(ii) use or display of the trade mark in the performance or
advertising of the services. As a matter of construction of
the words of the statute, apart from other considerations,
the expression "in use in Canada" in s. 44(3) appears to me
to mean the carrying out in Canada of both elements
required to constitute "use" and that the carrying out of
only one of them in Canada does not amount to "use in
Canada" of the trade mark.
He then tested that conclusion by other ap
proaches. He held at p. 988:
I shall therefore hold that "use in Canada" of a trade
mark in respect of services is not established by mere
advertising of the trade mark in Canada coupled with
performance of the services elsewhere but requires that the
services be performed in Canada and that the trade mark be
used or displayed in the performance or advertising in
Canada of such services.
The position taken by counsel for the appel
lant was that the factual situation in the present
matter was different from that before Mr. Jus
tice Thurlow. He contended that the appellant
conducted an active business in Canada.
If the appellant successfully established that
there was use in Canada by the appellant of the
trade mark, "Marineland" in the actual conduct
of its business in Canada, that would conclude
the matter in the appellant's favour.
The evidence with respect to the sale of
admission tickets to the appellant's attraction at
Marineland, Florida, at a time long before the
respondent changed the name of its aquatic
attraction at Niagara Falls, Ontario, from
"Marine Wonderland" to "Marineland" was by
affidavits of managers of a retail travel agency,
a wholesale travel agency and a bus company.
The wholesale travel agency would organize
and put together a tour to Florida. This included
arrangements for travel and hotel accommoda
tion for persons who bought the tour and includ
ed as well prepaid admission to points of inter
est and attractions.
The wholesale tour so put together would
then be marketed to the public in Canada by a
retail travel agency.
The bus company did the same thing without
the intervention of either a wholesale or retail
travel agency.
In so arranging these package tours, the
wholesale travel agency and the bus company
would contract with the appellant for a specified
number of tickets at specified times for admis
sion of the customers of the tour to the appel
lant's tourist attraction. The cost of that admis
sion was included in the cost of the tour to the
customer.
The manageress of the retail travel agency in
paragraph 4 of her affidavit swore that her
company acted as "agents" for the appellant in
issuing admission tickets to the purchasers of
the package tour. A reference to an admission
voucher exhibited to the affidavit shows that it
is a reservation for named clients of the retail
travel agency.
Accordingly, the reference in the affidavit to
the travel agency acting as "agents" for the
appellant is not so in the legal sense of the
relationship of principal and agent. Any contract
for admission to the appellant's premises in
Florida was between the appellant and the
travel agency. The contract for the package tour
was between the travel agency and its customer.
That was the contract which was completed in
Canada. For the customer to enjoy the appel
lant's attraction, that customer is still obliged to
attend at the appellant's premises in Florida.
This is a different thing from a customer
taking camera films for development to a person
engaged in that business in Canada. It might
well be that the person in whose care the nega
tive films are placed in Canada may send the
films to be processed outside Canada, but the
contract is completed in Canada although the
actual processing might take place elsewhere by
arrangement between the person who accepts
the film from the customer for development and
a processor elsewhere. The customer looks
solely to the person in Canada and that custom
er is not concerned with the arrangement of
which he is not even aware that the actual
processing of the film is done elsewhere.
In the present instance, the performance of
the services proffered by the appellant must be
completed, of necessity, by the customer of the
package tour attending the appellant's premises
to witness the performance.
For these reasons, I conclude that the com
mercial activity of selling admission in vouchers
was the business of the travel agency rather
than that of the appellant and in any event, the
performance of the services by the appellant did
not take place in Canada.
However the fact that these travel agencies
sold admission tickets to the appellant's attrac
tion in Florida is a factor which must be taken
into account to ascertain if the appellant had
made the trade mark "Marineland" in associa
tion with its services well known in Canada.
The appellant also contends that there was
use by it of the trade mark "Marineland" with
respect to wares, that is films, prior to use by
the respondent.
The appellant produced a series of thirteen
films under the collective title of "Wonders of
the Sea". The films so produced were owned by
the appellant when its name was "Marine Stu
dios Inc.".
In 1958 a company with head office in New
York, N.Y., acquired the right to distribute
these films throughout the world. This com
pany, in turn, arranged for a Canadian company
to act as sub-distributor of these films through
out Canada.
This Canadian sub-distributor arranged to
have these films broadcast by the Canadian
Broadcasting Corporation.
Broadcasts, described as "first play", took
place between March 1958 and March 1959 and
"second play" broadcasts took place during the
period between June and August 1960. The last
broadcast took place in 1964. There have been
no further broadcasts of these films since 1964.
The prints of the series of films were returned
to the Canadian sub-distributor. They have so
deteriorated as to have become useless.
It was established that ten of the series of
thirteen films (apparently three episodes were
lost by the Canadian sub-distributor) were
examined. There were, in fact, eleven films
examined but one was a duplicate. That exami
nation disclosed that each of the ten films of the
series had a common opening scene and
common opening statement made by a narrator.
Each film had a common head title displaying
the written words:
Presented by MARINELAND FILMS, Marineland,
Florida.
Each of the films appears to have had at one
time a common closing scene and a closing
statement was made by the narrator, except in
one of the ten films in which no closing state
ment was made and in another there was a slight
variation of the closing statement.
The closing statement in nine of the films was
Wonders of the sea is a presentation of Marineland Films
and comes to you from Marineland, Florida.
The variation which occurred in one of the
episodes was that the narrator stated in closing:
Presentation of Marineland Films and comes to you from
Marineland, Florida.
It was part of the contract between the
Canadian sub-distributor and the Canadian
Broadcasting Corporation that both the opening
and closing sound and video credits must be
run.
Section 4(1) of the Act provides:
4. (1) A trade mark is deemed to be used in association
with wares if, at the time of the transfer of the property in
or possession of such wares, in the normal course of trade,
it is marked on the wares themselves or on the packages in
which they are distributed or it is in any other manner so
associated with the wares that notice of the association is
then given to the person to whom the property or possession
is transferred.
The first problem which arises is whether the
use of the words "Marineland Films" both visu
ally and orally as above described constitutes a
trade mark use of the word "Marineland" with
respect to wares by the appellant.
Because of the view I take of the circum
stances outlined, it is not necessary to decide
that question.
When the appellant seeks to oppose, the
respondent's application for registration on the
grounds of prior use or making known in
Canada of the same trade mark by the appellant,
the burden is on the appellant to establish that
the appellant has not abandoned the trade mark.
Assuming that the use by the appellant of the
word "Marineland" in association with films is a
trade mark use (which question I have not
decided) it is apparent from the evidence that
such films have not been produced since 1958
nor distributed for exhibition in Canada since
1964.
However, mere non-use of a trade mark is not
sufficient to create abandonment. That non-use
must also be accompanied by an intention to
abandon.
In my opinion, the intention to abandon the
use of the trade mark "Marineland" in associa
tion with films in the circumstances of the
present matter, is to be inferred from the appel
lant's long disuse. I take it from the evidence
that the appellant produced the one series of
films for distribution. It has produced no others
for exhibition and there has been no exhibition
in Canada. There has been no use by the appel
lant of that trade mark in connection with the
particular wares since 1964. I take as a premise
that the use of a trade mark with respect to
wares of different general classes as well as
with respect to services is severable, separate
and distinct.
Therefore, in the circumstances outlined, I am
of the opinion that the appellant has not dis
charged the burden of establishing that the use
of its trade mark in association with films has
not been abandoned in Canada and, accordingly,
I conclude, assuming that such trade mark use
existed, the trade mark has been abandoned in
Canada.
There remains for consideration the second
phase of the appellant's second ground of oppo
sition to the registration of the trade mark
"Marineland" by the respondent, that is that
there was use of the trade mark by the appellant
in a country of the Union, in this case the
United States of America, in association with its
services and that such services have been
advertised in printed publications circulated in
Canada as a consequence of which the trade
mark became well known in Canada in accord
ance with section 5 of the Trade Marks Act.
There was no dispute that there was use of
the trade mark by the appellant in the United
States, in association with services identical to
the services offered by the respondent in
Canada.
The dispute lies in whether by reason of ad
vertising in various ways, the appellant's use of
the trade mark had become "well known" in
Canada.
With respect to a trade mark being "well
known in Canada" it was said in Robert C. Wian
Enterprises, Inc. v. Mady 2 at page 28:
Furthermore, I think I should say that there was really no
attempt, in my view, to show that the plaintiff's trade marks
were "well known in Canada". All that was attempted was
to show that they were well known in Windsor, Ontario, and
surrounding territory. It was argued that, if they were well
known in any part of Canada, they were "well known in
Canada" within s. 5 of the Trade Marks Act. I cannot accept
' [1965] 2 Ex.C.R. 3.
this view. A thing may be regarded as known in Canada if it
is known only in some part of Canada but, in my view, it is
not "well known" in Canada unless knowledge of it per
vades the country to a substantial extent. When s. 5 speaks
of a trade mark that is "well known in Canada by reason
of ... advertising", it suggests to me such well known trade
marks as "Coca-Cola", "Esso", "Chevrolet" and "Frigi-
daire", names that are seen in magazine advertising in
homes in every part of the country, or are heard or seen on
radio or on television in every part of the country. I do not
think a trade mark can be regarded as "well known in
Canada" when knowledge of it is restricted to a local area in
Canada. In my view it must be "well known" across Canada
"among potential dealers in or users of" the wares or
services with which it is associated. In this connection I
have to refer to Registrar of Trade Marks v. G.A. Hardie &
Co. Ltd [1949] S.C.R. 483 per Kellock J. at p. 500. The
question there was whether it had been proved that a trade
mark had been so used by any person "as to have become
generally recognized by dealers in and/or users of the class
of wares in association with which it had been used" so as
to be registrable under s. 29 of the Unfair Competition Act,
1932, and Kellock J. said that the affidavits relied upon
were quite insufficient to establish the "general" recognition
required. He added "There must be hundreds of other
laundries and there are many other hospitals throughout the
country, none of which are so much as mentioned in the
evidence".
This statement was quoted and accepted by
Heald J. as establishing the standard of proof
required under section 5 of the Trade Marks
Act in E & J Gallo Winery v. Andres Wines
Ltd. (Federal Court file No. T-1818-73, decision
dated March 21, 1973).
The same evidence that was before the Regis
trar in this respect was also before me supple
mented by a plethora of further affidavits
directed to public exposure in Canada of the use
of the trade mark "Marineland" by the appellant
in association with its services for some years
prior to the respondent's date of first use, which
I take as being March 15, 1966, through printed
publications, including paid advertising and free
publicity in newspapers and magazines, by cir
culation of brochures prepared by the appellant
through travel agencies, the broadcast of films
by television, the broadcast of a film made by a
free lance broadcaster of children's programmes
at and of the appellant's premises in Florida in
which oral reference was made to "Marine-
land", group tours organized by two travel agen-
cies and a bus company in which admission
vouchers to the appellant's attraction were sold
to Canadian tourists, and the fact that a large
number of Canadian tourists visit the appellant's
premises each year.
At the hearing of this matter objections were
taken to statements made in many of the affida
vits as being hearsay, statements of belief rather
than statements of facts and conjecture. In
many instances these objections were well
founded and in other instances it was a question
of what weight should be given to the evidence.
With respect to advertising in printed publica
tions, the appellant directed its message to the
market in the United States. Except in two
isolated instances, there was no direct advertis
ing by the appellant in publications printed in
Canada and the advertising in publications origi
nating elsewhere came to segments of the
Canadian public by reason of "spill over". In
my view that advertising did not result in the
general recognition of the trade mark which is
requisite to it becoming "well known" as the
trade marks mentioned as illustrated in the
extract from Wian v. Mady quoted above.
After having given careful consideration to all
of the evidence, I am led to the conclusion that
it fails to meet the high standard of proof
required to establish that the appellant's trade
mark had become "well known in Canada" in
accordance with section 5 of the Act and as set
forth in Wian v. Mady (supra) and E & J Gallo
Winery v. Andres Wines Ltd. (supra).
The third and final ground of opposition
advanced for rejection of the respondent's
application for registration of the trade mark is
that it is not distinctive of the respondent's
services as at March 15, 1966.
The word "distinctive" is defined in section 2
of the Trade Marks Act as follows:
"distinctive" in relation to a trade mark means a trade mark
that actually distinguishes the wares or services in asso
ciation with which it is used by its owner from the wares
or services of others or is adapted so to distinguish them:
The substance of the appellant's contention,
as I understood it, was that the adoption of the
trade mark "Marineland" by the respondent
could not be distinctive of the respondent's ser
vices in Canada, quite apart from the use by the
appellant of the trade mark and the question of
that mark becoming well known in Canada, in
that by reason of the advertising of the appel
lant's services in Canada in association with that
trade mark, the sale of voucher admission tick
ets in Canada, the broadcast of films in Canada
by Canadian television stations and the appre
ciable knowledge of and familiarity with the
appellant's trade mark by the public in Canada,
the word "Marineland" does not serve to distin
guish the respondent's services from the ser
vices of others by reason of the knowledge
indicated.
There can be no doubt that the appellant
made extensive use of the trade mark "Marine-
land" in the United States but use in a foreign
country does not establish the distinctiveness of
the mark in Canada.
I fail to follow the logic of the appellant's
contention in this respect. To me it seems that
this contention is inextricably bound to the
appellant's contention that the use of the word
"Marineland" as a trade mark in association
with its wares and services has become well
known in Canada. If the appellant fails in estab
lishing that its use of the trade mark had
become well known in Canada prior to the
respondent's adoption thereof, as I have found
to be the case, then it follows as a logical
consequence of that finding, that the trade mark
is capable of distinguishing the services of the
respondent from those of others. If the appel
lant's trade mark has not become well known in
Canada, it is difficult to follow how the adop
tion of an identical mark in association with
identical wares in Canada is susceptible of con
fusion with the appellant's trade mark in the
sense that the respondent's use of the same
trade mark would lead to the inference that the
services offered by the respondent are those
offered by the appellant.
For these reasons, I find that the third ground
of objection by the appellant is not well
founded.
For the reasons expressed, it follows that the
appeal from the decision of the Registrar dated
January 12, 1970 is dismissed with costs.
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.