T-1029-79
Johnny Carson (Appellant)
v.
William A. Reynolds (Respondent)
Trial Division, Mahoney J.—Ottawa, February 18
and March 7, 1980.
Trade Marks — Appeal from Registrar's decision to permit
registration of "HERE'S JOHNNY" as a trade mark to be used
in association with portable outhouses — Evidence of use of
trade mark in Canada by appellant prior to respondent's
application, and of a connection, in the public mind, between
the appellant and the phrase "HERE'S JOHNNY" - Trade
Marks Act prohibits adoption of a mark that falsely suggests
a connection with any living individual — Whether Registrar
erred in permitting registration of mark — Appeal allowed —
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 9(1), 12(1)(e).
Appeal from a decision of the Registrar of Trade Marks,
rejecting the appellant's opposition to the registration of
HERE'S JOHNNY as a trade mark to be used in association with
portable trailers and outhouses and lavatory facilities and the
rental of the same. The appellant adduced evidence that he had
used the unregistered trade mark in association with both men's
clothing and entertainment services in Canada prior to the date
of the respondent's application. He also introduced survey
evidence that demonstrated that HERE'S JOHNNY probably
suggests, to a significant number of people in Canada, a
connection with himself and claimed that paragraph 9(1)(k) of
the Trade Marks Act prohibits the adoption of any mark
consisting of, or so nearly resembling as to be likely to be
mistaken for any matter that may falsely suggest a connection
with any living individual.
Held, the appeal is allowed. An absolute prohibition, regard
less of injury or damage, extends to commercial exploitation of
a living individual under paragraph 9(1)(k). Since there is no
connection between the respondent and appellant, the appellant
being a living individual, HERE'S JOHNNY is not registrable as a
trade mark on the respondent's application without the appel
lant's consent.
Canadian Schenley Distilleries Ltd. v. Canada's Manitoba
Distillery Ltd. (1976) 25 C.P.R. (2d) 1, applied.
APPEAL.
COUNSEL:
R. C. McLaughlin for appellant.
SOLICITORS:
Macdonald, Affleck, Ottawa, for appellant.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: The appellant appeals a decision
of the Registrar that rejected its opposition to the
registration of HERE'S JOHNNY as a trade mark to
be used in association with portable trailers and
outhouses and lavatory facilities and the rental of
the same. The respondent did not appear on the
appeal and made no representations and submitted
no evidence, although he was duly served with the
notice of appeal, copies of the appellant's evidence,
the application to set the appeal down for hearing
and the order setting it down. He did make
representations to the Registrar although he
adduced no evidence there. In his representations
to the Registrar, the respondent stated that his
intention in adopting HERE'S JOHNNY as a trade
mark in association with his wares and services,
which I shall hereinafter refer to as "portable
conveniences", was "merely to provide a catchy
mark which suggests association with a "JOHN"
which in one sense means toilet". "JOHN" is also, I
understand, the accepted term, in the argot of the
North American trade, for a client of a lady of
negotiable virtue. Namesakes of the Baptist must
find these slang appropriations of their name
highly distressing. However, as the Registrar
rightly observed, the Trade Marks Act' does not
contain the more sweeping prohibition of its
United States counterpart 2 against registration of
a trade mark "which may disparage ... persons,
living or dead ...".
The appellant's basic contention is that the
phrase HERE'S JOHNNY has become so identified,
in the public mind, with him that its use in associa
tion with anything is bound to lead to an inference
that, whatever it may be, it is associated with him
and he with it. He says that the Registrar erred:
a. in finding that the use of HERE'S JOHNNY by the Respond
ent in association with portable conveniences would not be
confusing within the contemplation of subsection 6(2);
' R.S.C. 1970, c. T-I0.
2 15 U.S.C. 1052, s. 2.
b. in finding that HERE'S JOHNNY was distinctive of the
Respondent in association with portable conveniences and,
therefor, registerable [sic];
c. in failing to find that HERE'S JOHNNY is so closely
associated with the Appellant that its use by anyone in
Canada would suggest a connection with the Appellant;
d. in holding that the nature of the wares or services in whose
association a mark is used is relevant to whether its adoption
as a trade mark is prohibited by paragraph 9(1)(k) of the
Act; and
e. in failing to hold that the trade mark was not registerable
[sic] by the Respondent under paragraph 12(1)(e) of the Act
because of the prohibition of paragraph 9(1)(k).
Before dealing with the appellant's evidence and
submissions, I should say that it is obvious that I
have the benefit of considerably more evidence
than was put before the Registrar. For example,
the Registrar was unable even to find that the
appellant had used the unregistered trade mark
HERE'S JOHNNY in association with men's clothing
in Canada prior to the date of the respondent's
application. The evidence establishes clearly that it
had been so used in association with both men's
clothing and entertainment services.
The television program known as "The Tonight
Show Starring Johnny Carson" was first broadcast
on the NBC television network nationally in the
United States of America on October 2, 1962, and
has been so broadcast continually since then. Its
regular host has, throughout, been the appellant
who has been regularly introduced, at the begin
ning of each performance, by Edward McMahon.
The introduction has been distinctive. As estab
lished by a number of video tape cassette extracts
of introductions extending over the period October
5, 1965, to March 14, 1978, the words of the
introduction were: "And now, here's Johnny!" in
the early years and, more recently: "And now,
ladies and gentlemen, here's Johnny!" The distinc
tiveness lies in a conspicuous pause after the word
"now" or "gentlemen" followed by a conspicuous
prolongation of the "ere" sound in the word
"here's" and the crescendo delivery of the entire
introduction.
There is no evidence that the show has ever been
broadcast by a Canadian station but it has been
available, since its inception, to Canadian viewers
within range of American transmitters and, latter
ly, to those whose cable systems carry NBC pro
gramming. The BBM, Bureau of Measurement
surveys lead to estimates of numbers of Canadian
viewers each night, ranging from 74,600 to 262,-
300 in quarterly periods from spring, 1970, to fall,
1975.
A random survey taken by Elliot Research Cor
poration Limited in Metropolitan Toronto, in
which a card bearing only the words "HERE'S
JOHNNY" was handed those interviewed with the
oral question: "What does this mean to you?",
produced the following results:
FIRST ALL
MENTION MENTIONS
Johnny Carson/
The Johnny Carson Show 57% 63%
The Tonight Show 7% 12%
A portable toilet/
Johnny on the Spot Toilet 3% 6%
Johnny Walker/Johnny Walker
Red Label Whiskey 2% 5%
A TV show 2% 2%
A little boy 2% 2%
Ed McMahon 1% 3%
Can't Recall/Nothing 16% 16%
There were ten other responses which elicited
answers by 1% under each of the headings "First
Mention" and "All Mentions". None of these
related in any way to the appellant or to portable
conveniences.
I do not intend to review the considerable evi
dence adduced in support of the validity of both
the BBM and Elliot Research surveys. Suffice it to
say, I am entirely satisfied that both were admis
sible and that both were so conducted that their
conclusions are valid. They met the tests con
sidered and applied by my brother Cattanach in
Canadian Schenley Distilleries Ltd. v. Canada's
Manitoba Distillery Ltd. 3 The Registrar had none
of the survey evidence before him.
3 (1976) 25 C.P.R. (2d) 1 at pp. 6 ff.
The Act provides:
12. (1) Subject to section 13, a trade mark is registrable if it
is not
(e) a mark of which the adoption is prohibited by section 9
or 10.
9. (1) No person shall adopt in connection with a business,
as a trade mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for
(k) any matter that may falsely suggest a connection with
any living individual;
It is useful to set out subsection 9(1) in full:
9. (1) No person shall adopt in connection with a business,
as a trade mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for
(a) the Royal Arms, Crest or Standard;
(b) the arms or crest of any member of the Royal Family;
(c) the standard, arms or crest of His Excellency the Gover
nor General;
(d) any word or symbol likely to lead to the belief that the
wares or services in association with which it is used have
received or are produced, sold or performed under royal,
vice-regal or governmental patronage, approval or authority;
(e) the arms, crest or flag adopted and used at any time by
Canada or by any province or municipal corporation in
Canada in respect of which the Registrar has at the request
of the Government of Canada or of the province or municipal
corporation concerned, given public notice of its adoption
and use;
(j) the heraldic emblem of the Red Cross on a white ground,
formed by reversing the federal colours of Switzerland and
retained by the Geneva Convention for the Protection of War
Victims of 1949, as the emblem and distinctive sign of the
Medical Service of armed forces and used by the Canadian
Red Cross Society; or the expression "Red Cross" or "Gene-
va Cross";
(g) the heraldic emblem of the Red Crescent on a white
ground adopted for the same purpose as specified in para
graph (j) by a number of Moslem countries;
(h) the equivalent sign of the Red Lion and Sun used by
Iran for the same purpose as specified in paragraph (j);
(i) any national, territorial or civic flag, arms, crest or
emblem, or official control and guarantee sign or stamp,
notice of the objection to the use of which as a commercial
device has been received pursuant to the provisions of the
Convention and publicly given by the Registrar;
(j) any scandalous, obscene or immoral word or device;
(k) any matter that may falsely suggest a connection with
any living individual;
(I) the portrait or signature of any individual who is living or
has died within the preceding thirty years;
(m) the words "United Nations" or the official seal or
emblem of the United Nations;
(n) any badge, crest, emblem or mark
(i) adopted or used by any of Her Majesty's Forces as
defined in the National Defence Act,
(ii) of any university, or
(iii) adopted and used by any public authority in Canada
as an official mark for wares or services,
in respect of which the Registrar has, at the request of Her
Majesty or of the university or public authority as the case
may be, given public notice of its adoption and use; or
(o) the name "Royal Canadian Mounted Police" or
"R.C.M.P." or any other combination of letters relating to
the Royal Canadian Mounted Police, or any pictorial
representation of a uniformed member thereof.
Leaving aside paragraphs (j), which stands
alone, and (k) and (1), the entire subsection is
clearly aimed at the prohibition of the commercial
exploitation of a range of institutions, none of
which would appear amenable to injury in their
commercial interests, if any, by such exploitation.
It is an absolute prohibition not dependent upon
proof of injury or damage. In my view, that same
absolute prohibition, regardless of injury or
damage, extends to the commercial exploitation of
a living individual under paragraph 9(1)(k).
It is clear that HERE'S JOHNNY probably sug
gests, to a significant number of people in Canada,
a connection with the appellant. Since there is no
connection between the respondent and appellant,
the appellant being a living individual, HERE'S
JOHNNY is not registrable as a trade mark on the
respondent's application without the appellant's
consent under subsection 9(2).
It is apparent that the Registrar was not given
evidence that would have permitted him to con
clude that, in Canada, HERE'S JOHNNY falsely
suggests a connection with the appellant. In the
absence of that evidence he was not, of course,
able to reach the conclusion that I have in respect
of paragraphs 12(1)(e) and 9(1)(k). He was, in
my view, equally unable to reach any of the other
conclusions that the appellant urged upon him. For
example, the Registrar could scarcely have con
cluded that the use of HERE'S JOHNNY in associa
tion with portable conveniences was confusing with
its use in association with entertainment services in
the absence of evidence that HERE'S JOHNNY was
so generally identified with the appellant that its
use in association with anything else, however
remote from entertainment services, would be con
fusing in the sense that its use in both associations
would be likely to lead to the inference that all the
wares and services, whatever they might be, ema
nated from the appellant. Under the circum
stances, while allowing the appeal, I will make no
order as to 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.