T-2967-78
Thomas J. Lipton, Limited (Appellant)
v.
Salada Foods Ltd. (Respondent)
Trial Division, Addy J.—Ottawa, April 10 and
September 20, 1979.
Trade marks — Clearly descriptive or deceptively mis -
descriptive — Registrar found proposed mark, `LIPTON CUP.A.
TEA", to be used in association with tea, had a "clear descrip
tive or misdescriptive connotation of the wares ..." — Appeal
from Registrar's refusal to register the proposed mark —
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 12(1)(b), 34,
37(2)(b), (d).
The appellant appeals against the Registrar of Trade Marks'
refusal to register the mark "LIPTON CUP.A.TEA" for proposed
use in association with tea. As applicant, it disclaimed the
exclusive use of the word "tea" but was not requested to
disclaim the use of the word "cup". The Registrar decided that
the proposed mark had a clear descriptive or misdescriptive
connotation of the wares in connection with which the applicant
intended to use the trade mark and held it to be unregistrable
in the light of the provisions of section 12(1)(b). The second
ground of opposition relied on by the opponent in the proceed
ings in the Trade Marks Office, that the proposed mark was
not distinctive, was not dealt with by the Registrar.
Held, the appeal is allowed. Whether or not a mark is clearly
descriptive or deceptively misdescriptive of the wares intended
to be covered is a practical question of fact to be determined
judicially. A "specific descriptive suggestion or implication" or
a "clear implication or suggestion" that a mark is descriptive or
misdescriptive is not enough to qualify it under section
12(1)(b). The concept of clearness where the word is descrip
tive and of deception where it is misdescriptive are essential
elements. The Registrar's finding that "The proposed trade
mark ... has a specific descriptive connotation ...." is based
on a manifest error of principle as it made no finding that the
word was clearly descriptive or deceptively misdescriptive. In
considering whether a word is clearly descriptive or deceptively
misdescriptive of the wares, the word must not be considered by
itself but in the context of the whole mark and in relation to the
actual wares in association with which it is intended that the
mark be used. It is a question of what impression the word in
that context would make on the mind of a normal person. The
word "cup" in the proposed mark "LIPTON CUP.A.TEA" to be
used in association with tea would not reasonably or normally
be considered as directly related to the ware itself, and there
fore cannot be considered as either describing or misdescribing
it. Further, that mark, when considered as a whole, is
distinctive.
Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco
Corp. [1968] Ex.C.R. 22, applied. Kellogg Company of
Canada Ltd. v. The Registrar of Trade Marks [1940]
Ex.C.R. 163, referred to. Globetrotter Management Ltd. v.
General Mills Inc. [1972] F.C. 1187, referred to. Deputy
Attorney General of Canada v. Jantzen of Canada Ltd.
[1965] 1 Ex.C.R. 227, referred to. In the Matter of an
Application by Evans Sons Lescher and Webb Limited for
the registration of a Trade Mark (1934) 51 R.P.C. 423,
referred to.
APPEAL.
COUNSEL:
R. G. McClenahan, Q.C. and R. S. Jolliffe
for appellant.
S. Anissimoff for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
MacBeth & Johnson, Toronto, for respond
ent.
The following are the reasons for judgment
rendered in English by
ADDY J.: The appellant appeals against the
Registrar of Trade Marks' refusal to register the
mark "LIPTON CUP.A.TEA" for proposed use in
association with tea. As applicant, it was required
to disclaim and did in fact disclaim the exclusive
use of the word "tea" pursuant to section 34 of the
Act. It was not requested to disclaim the use of the
word "cup".
The appellant filed no evidence before the Reg
istrar. The opponent on the other hand filed an
affidavit and the decision, with the consent of the
parties, was reached without oral hearing after
considering written argument filed by their
counsel.
The respondent, in the proceedings in the Trade
Marks Office, opposed the registration as provided
for in section 37(2)(b) by alleging that the mark
was not registrable on the grounds that the word
"cup" as stated in section 12(1)(b) is either clearly
descriptive or deceptively misdescriptive of the
character of the wares. It also maintained that the
mark was not registrable without the appropriate
disclaimer of the word "cup" pursuant to section
34. It also objected to the mark pursuant to section
37(2)(d), on the grounds that the proposed mark
was not distinctive of the wares.
As to the objection to registration on the basis of
non-disclaimer of the word "cup", the question of
whether a disclaimer to a proposed name has or
has not been made cannot form a ground for
opposition to the mark under section 37(2). This
was decided by Heald J. in the case of Canadian
Schenley Distillers Ltd. v. Registrar of Trade
Marks (1974) 15 C.P.R. (2d) 1 quoted in the case
of Imperial Tobacco Co. v. Philip Morris'. I fully
agree with his view of the law. Furthermore,
although the issue of non-disclaimer of the word
"cup" was stressed by counsel for the respondent
in his written argument before the Registrar, he
readily conceded on the appeal before me that it
was not a proper ground for an opposition institut
ed under section 37 to the registration of a mark
and he abandoned that ground of appeal.
Considerable weight must generally be attached
to any decision of the Registrar of Trade Marks in
granting or refusing to grant the registration of a
mark, as the subject-matter is one in which he
must be deemed to possess considerable expertise.
It has also been stated in the past that in appeals
of this nature, this Court should refrain from
interfering with and from substituting its judgment
for that of the Registrar, where there is evidence
on which the finding complained of could have
been made and where there is no error in principle
or failure to act judicially, or some other manifest
error or omission of material facts or misdirection.
(See The Rowntree Company Limited v. Paulin
Chambers Company Limited 2 ; Benson & Hedges
(Canada) Limited v. St. Regis Tobacco
Corporation 3 ; and Record Chemical Co. Inc. v.
American Cyanamid Co. 4 ) This last principle,
however, was not accepted by the Supreme Court
of Canada when the Benson & Hedges case went
there on appeal in 1968. (Refer [1969] S.C.R. 192
at pages 200-201.) It was there held that the
question of whether a trade mark was confusing
' (1977) 27 C.P.R. (2d) 205 at 209.
2 [1968] S.C.R. 134 at 138.
3 [1968] Ex.C.R. 22 at 31.
4 (1974) 14 C.P.R. (2d) 127 (F.C.A.).
involved a judicial determination of a practical
question of fact and did not involve the Registrar's
discretion and that the question remained fully
open to this Court to consider on the facts.
In my view, the same applies to the question as
to whether a mark is clearly descriptive or decep
tively misdescriptive of the wares intended to be
covered: it is a practical question of fact to be
determined judicially.
The written reasons for decision filed in the
Trade Marks Office reveal that the hearing officer
properly defined the issues as submitted to him at
that time in the following terms, namely:
The issues in the present proceedings are narrow, namely,
whether the trade mark LIPTON CUP.A.TEA is clearly descrip
tive or deceptively misdescriptive of the character or quality of
the wares in association with which it is proposed to be used. If
so, the mark is not entitled to registration because of the
provisions of section 12(1)(b) of the Act.
The second ground of opposition relied on by the opponent is
that the trade mark is not distinctive. However, it seems to me
that if the mark is not entitled to registration by reason of
Section 12(1)(b) it is incapable of distinguishing the wares of
the applicant for the same reason.
In his finding, however, on the last page of the
reasons, he asserts merely that "The proposed
trade mark . .. has a specific descriptive connota
tion ...." and then concludes as follows:
In the present instance, I am of the opinion that LIPTON
CUP.A.TEA has a clear descriptive or misdescriptive connotation
of the wares in connection with which the applicant intends to
use the trade mark. In view of the conclusion which I have
reached, I hold that the proposed trade mark is unregistrable in
the light of the provisions of Section 12(1)(b) of the Act.
In my view, the Registrar has misdirected him
self. "Connotation" means an implication or a
suggestion. Even a "specific descriptive suggestion
or implication" or "a clear implication or sugges
tion" that a mark is descriptive or misdescriptive is
not sufficient to disqualify it for registration under
section 12(1)(b). That enactment admits of no
mere implication or suggestion. Parliament used
the word "clearly" before the word "descriptive"
and "deceptively" before the word "misdescrip-
tive" and the Registrar has made no finding that
the word was either clearly descriptive or decep
tively misdescriptive. As to whether a mere sugges-
tive description suffices, one might refer to a deci
sion of the former Exchequer Court of Canada in
the case of Kellogg Company of Canada Limited
v. The Registrar of Trade Marks'.
The concept of clearness where the word is
descriptive and of deception where it is misdescrip-
tive are essential elements. The finding, therefore,
is based on a manifest error in principle. There
fore, even if the question were one regarding the
exercise of the Registrar's discretion, which it is
not, it would still be my duty to determine whether
or not the finding should stand, based on the facts
as I now find them, always bearing in mind that a
finding of the Registrar because of his expertise in
the subject-matter should not be lightly interfered
with.
Although the appellant elected to adduce no
evidence before the Registrar, two affidavits, ten
dered by its counsel, were admitted at the hearing
before me. The first one contained definitions of
the word "cup" from fourteen dictionaries and the
second one, evidence as to the state of the Register
regarding the use of the word "Lipton" in some
fifteen Lipton Marks and Designs registered since
1916.
The respondent produced no additional evidence
and relied on the affidavit originally produced
before the Registrar.
It is interesting to note that, in all of the diction
ary definitions submitted by the appellant, as well
as in the one extract from Webster's dictionary
submitted on behalf of the respondent, the primary
definition of the word "cup" relates to the vessel
itself and that it is only in a secondary or a
derivative sense that the word is used to describe
"the beverage or food contained in a cup" such as
in the case of a "fruit cup" or a "loving cup." Yet,
the latter is the only definition which the Registrar
considered. He stated in his reasons at page 5:
Exhibit C to the MacKeen Affidavit is a copy of a page of
Webster's Seventh New Collegiate Dictionary in which the
word "cup" is defined as,
"cup—a food served in a cup-shaped vessel."
5 [1940] Ex.C.R. 163 at 170 and 171.
He failed to state, or apparently consider, that
the first definition of "cup" in that very exhibit
was "an open bowl-shaped drinking vessel."
However, regardless of whether a definition
relates to a primary or to a secondary meaning of
a word, whenever one is considering whether a
word is clearly descriptive or deceptively misde-
scriptive of the wares, the word must not be con
sidered by itself but in the context of the whole
mark and in relation to the actual wares in asso
ciation with which it is intended that the mark be
used. (See Globetrotter Management Limited v.
General Mills Inc. 6 ) It is a question of what
impression the word in that context would make on
the mind of a normal person. (Refer Deputy
Attorney General of Canada v..Iantzen of Canada
Limited'.)
When considering the word "cup" in the pro
posed mark "LIPTON CUP.A.TEA" to be used in
association with tea, I cannot see how any reason
able person could feel that the word "cup" is
describing the ware intended to be sold. In other
words, no reasonable person would feel that Lipton
intends to sell actual cups filled either with loose
tea, tea bags or liquid tea as a beverage. The word
"cup" in that context could only be taken to
indicate the receptacle or vessel in which it is
intended that the ware will ultimately be con
sumed by the purchaser and not the ware itself.
Since the word would not reasonably or normally
be considered as directly related to the ware itself,
it follows that it cannot be considered as either
describing or misdescribing it. As stated previous
ly, in another context, the word "cup" might well
relate to the ware itself, that is, to the object or
some part of the object constituting the ware, or it
might relate to a substance sold together with and
contained in a cup.
I therefore conclude that, in the present case,
the word "cup" is neither clearly descriptive nor
deceptively misdescriptive of "tea" which is the
ware to be covered in the proposed mark "LIPTON
CUP.A.TEA".
6 [1972] F.C. 1187 at pages 1191-1192.
7 [1965] 1 Ex.C.R. 227.
The Registrar disposed of the question of wheth
er the mark was distinctive on the basis that a
mark which was either descriptive or misdescrip-
tive of the ware could not be distinctive. As a
result he did not, at any place in his reasons,
consider the mark as a whole to determine whether
in the event of it not being clearly descriptive or
deceptively misdescriptive, it might nevertheless be
unacceptable for registration on the basis that it
was not distinctive. It is clear that, when assessing
a trade mark to determine whether it is distinctive,
the mark must be looked at as a whole. It is not
proper to dissect it. (See Fox, Canadian Patent
Law and Practice, Third Edition, at pages 101 and
167 and In the Matter of an Application by Evans
Sons Lescher and Webb Limited for the registra
tion of a Trade Mark")
It is true that, generally speaking, the state of
the Register is irrelevant and unacceptable as evi
dence in certain cases, for instance to establish
that, because a similar mark was granted previous
ly, the one under consideration should be granted.
Each case must be judged on its merits and in
accordance with the evidence tendered. The state
of the Register, however, is perfectly admissible to
establish other relevant facts such as in the present
case, where it is tendered for the purpose of show
ing that for over sixty years the Registrar must
have consistently found that the word "Lipton"
was distinctive since it was granted in trade marks.
As to the Register being admissible for certain
purposes reference is made to the decision of the
Judicial Committee of the Privy Council in 1942
in the case of Coca-Cola Co. of Canada Ltd. v.
Pepsi-Cola Co. of Canada Ltd. 9
I do not hesitate in finding that the mark "LIP-
TON CUP.A.TEA", when considered as a whole, is
distinctive. This is even apparent from a mere
examination of the mark.
Altogether apart from the above, one might
almost be tempted, if it were proper to do so, to
take judicial notice of the distinctiveness that the
word "Lipton" has acquired in the tea industry.
8 (1934) 51 R.P.C. 423 at page 425.
9 1 C.P.R. 293 and more specifically at page 299.
Since I have found that the mark complies with
section 12(1) (b) and the opposition under section
37(2)(d) fails, the findings of the Registrar of
Trade Marks on these issues are set aside, the
order refusing registration is quashed and the
application is referred back to the Registrar for
appropriate action.
The appellant shall be entitled to its costs
against the respondent.
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.