T-1233-79
Disney Shops Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.—Toronto, October 24
and 26, 1979.
Trade marks — Appeal from decision of Registrar of Trade
Marks refusing to grant appellant's application for registra
tion of the mark "polo" in association with slacks, belts,
bathrobes, hats, handkerchiefs, socks and shorts because pro
posed mark was either clearly descriptive or deceptively mis -
descriptive — Registrar found that "polo" identified a par
ticular type of fabric in the public domain — Dictionary
definitions of "polo cloth" emphasize that that term was the
subject of a trade mark and do not justify the conclusion that
'polo" identifies a cloth in the public domain — Registration
of trade mark referred to in the definitions not found in the
Register — Appeal allowed — Trade Marks Act, R.S.C. 1970,
c. T-10, ss. 12(1)(b), 60.
APPEAL.
COUNSEL:
W. T. Howell for appellant.
B. Segal for respondent.
SOLICITORS:
W. T. Howell, Toronto, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an appeal from a deci
sion of the Registrar of Trade Marks dated Janu-
ary 12, 1979 refusing to grant the appellant's
application for registration of a trade mark of the
word "polo" for use in association with slacks,
belts, bathrobes, hats, handkerchiefs, socks and
shorts on the ground the trade mark sought to be
registered is either clearly descriptive or deceptive
ly misdescriptive of the character or quality of the
wares in association with which the trade mark is
to be used and as such is not registrable by virtue
of section 12(1)(b) of the Trade Marks Act,
R.S.C. 1970, c. T-10.
In so concluding the Registrar stated as follows
in his decision:
The Examiner has demonstrated that the word "polo" identifies
a particular type of fabric and for that reason alone no one
party can be granted the right to monopolize its use in the
manner described in s. 19 of the Trade Marks Act.
If I were to accept the Registrar's premise that
the word "polo" identifies a particular type of
fabric and which fabric is therefore in the public
domain I would be in accord with the Registrar's
conclusion as above expressed.
The conclusion that the word "polo" identifies a
particular type of fabric (as does the word
"serge") is predicated upon two definitions of the
words "polo cloth" as they appear in Fairchild's
Dictionary of Textiles and Modern Textile Dic
tionary. I have not had the opportunity to examine
the dictionaries because only extracts therefrom
were made available to me.
From the titles I would assume that they are
dictionaries of words used extensively in the textile
trade and that the extracts made available to me
were taken from the latest and most up-to-date
editions. Counsel for the respondent conceded this
assumption.
In the Modern Textile Dictionary the words
"polo cloth" are defined as follows:
Registered trademark of Worumbo Mills, Inc., Lisbon Falls,
Maine, for a popular staple used in men's and women's topcoat-
ing and polo coats. Made with one warp and one filling, the
fabric content is choice camel hair and fine wool. This facefin-
ished material, which weighs 21 ounces per yard, has consider
able nap on the surface effect. Twill weave is used to make this
smart, appealing fabric which comes in natural camel shade
and in shades of brown, blue and gray.
Polo cloth is identified by the use of a silk stripe on the back
of the cloth. There is a stripe every three inches in the texture,
and it is an actual part of the warp construction.
In Fairchild's Dictionary of Textiles the words
"polo cloth" are defined as follows:
A trademark for heavyweight coating fabric finished on both
sides with a dense nap that covers the weave. Made of soft spun
yarns and generally a tan color. These can be all wool or all
camel hair or blends.
In both definitions emphasis is placed on the
fact that the words "polo cloth" have been the
subject matter of a trade mark. That being so the
words are used to distinguish a particular cloth in
association with which the words are used manu
factured by the owner of the trade mark of these
words from cloth manufactured by other persons.
It was on the basis of the definitions in the two
dictionaries which have been reproduced above
that the Registrar concluded that the word "polo"
identifies a particular cloth for which reason no
one person can have the monopoly of that word.
The dictionary definitions do not justify the con
clusion that the word "polo" identifies a cloth in
the public domain. From the definitions the word
identifies the cloth of a particular manufacturer
but not a cloth in the public domain or that the
words "polo cloth" are generic in the sense that
"serge" and other like words are descriptive of a
particular type of cloth are generic.
On the contrary the definitions justify a conclu
sion directly opposite to that reached by the
Registrar.
A search of the Register conducted by an exam
iner, sent up by the Registrar under section 60 of
the Act, does not disclose the registration of the
trade mark referred to in the definitions. Therefore
the trade mark must be registered elsewhere and
no evidence has established the extent to which the
trade mark has become known in Canada.
Since the conclusion by the Registrar that the
words "polo cloth" are generic and so clearly
descriptive was not justified for the reasons above
expressed, I announced at the conclusion of the
hearing that the appeal was allowed and that the
appellant was not entitled to costs against the
Registrar.
At that time I undertook to reduce the reasons
verbally expressed to writing as I do now.
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.