A-13-86
Pizza Pizza Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
INDEXED AS: PIZZA PIZZA LTD. v. CANADA (REGISTRAR OF
TRADE MARKS) (C.A.)
Court of Appeal, Pratte, Urie and MacGuigan
JJ.A.—Toronto, May 25; Ottawa, June 6, 1989.
Trade marks — Registration — Appeal from judgment
dismissing appeal from refusal of registration of "967-1l11"
as trade mark of pizza take-out business — "967-1111"
telephone number of Toronto outlets — Number used on all
product boxes, in all printed advertising materials and on store
signs — Advertised extensively — Appeal allowed — Trial
Judge and Registrar erring in holding number not trade mark
within s. 2 definition — That functions as telephone number
not precluding registration — Not solely functional — Mark
highly indicative of appellant and its products — Fulfills three
requirements of trade mark in s. 2 — Trial Judge also erred in
holding telephone number not registrable — Registration of
trade mark granting monopoly only for use in association with
wares and services for which registration granted.
This was an appeal from the Trial Division decision dismiss
ing the appeal from the Registrar's refusal to register "967-
1111" as a trade mark for the appellant's pizza take-out
business. The Toronto-area outlets use "967-1111" on all prod
uct boxes, in all printed advertising and on store signs. It is also
the telephone number of all of the outlets. The Registrar and
the Trial Judge held that "967-111l" was not within the
statutory definition of trade mark. The Trial Judge further
found that a monopoly interest in a series of seven digits, which
may be a telephone number, cannot be registered. The question
is whether the numerical combination is a registrable trade
mark.
Held, the appeal should be allowed.
Per Pratte J.A.: The case law relied upon to support the
position that a telephone number is not registrable is distin
guishable. The marks that have been held to be functional were
part of the wares in respect of which registration was sought, so
that the registration of those marks would have granted the
applicants a monopoly on functional elements of their wares;
the applicants would have obtained patents under the guise of
trade marks. As the instant trade mark is not functional in that
sense, its functional character does not preclude registration.
Per Urie J.A. (MacGuigan J.A. concurring): The fact that a
telephone number functions to enable a person to contact a
predesignated instrument does not preclude registration of the
number, based upon the case law relied upon by the Registrar
and Trial Judge. "967-111l" was not solely functional. It was
not utilized merely as an indication of quality, size, grade or the
like. Although there was a functional element in its use as a
telephone number, that was not its only function. The combina
tion was deliberately chosen for its inherent suitability to
identify the source of the repondent's products and the quality
standards which are associated with those products, and the
mark is now highly indicative of Pizza Pizza Limited and its
products and distinguishes them from the products and services
of others. It meets the three requirements of the section 2
definition of a trade mark.
The Trial Judge also erred in holding that a monopoly
interest in a telephone number cannot be registered. The regis
tration of a trade mark grants a monopoly in that exact
sequence of numbers only for use in association with the wares
and services for which the registration is granted.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 12, 36.
CASES JUDICIALLY CONSIDERED
DISTINGUISHED:
Parke, Davis & Co., Ltd. v. Empire Laboratories Ltd.,
[1964] Ex.C.R. 399; (1963), 41 C.P.R. 121; aff'd [1964]
S.C.R. 351; Elgin Handles Ltd. v. Welland Vale Mfg.
Co. Ltd., [1965] 1 Ex.C.R. 3; (1964), 43 C.P.R. 20; W.J.
Hughes & Sons "Corn Flower" Ltd. v. Morawiec (1970),
62 C.P.R. 21 (Ex. Ct.); Adidas (Canada) Ltd. v. Colins
Inc. (1978), 38 C.P.R. (2d) 145 (F.C.T.D.).
REVERSED:
Pizza Pizza Ltd. v. Canada (Registrar of Trade Marks)
(1985), 7 C.P.R. (3d) 428 (F.C.T.D.).
AUTHORS CITED
Fox, H. G. The Canadian Law of Trade Marks and
Unfair Competition, 3d ed. Toronto: Carswell, 1972.
COUNSEL:
Marilyn Field-Marsham and Donna White
for appellant.
Marlene I. Thomas for respondent.
SOLICITORS:
Osler, Hoskin & Harcourt, Toronto, for
appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
PRATTE J.A.: I agree with my brother Urie that
this appeal must be allowed.
Counsel for the respondent tried to support the
decision of the Trial Division [(1985), 7 C.P.R.
(3d) 428] on only one ground, namely, that a
telephone number is not registrable as a trade
mark because, according to the jurisprudence,' a
mark that is primarily designed to perform a func
tion cannot be the subject of a trade mark. This
position, in my view, reveals a complete misunder
standing of that jurisprudence. In those cases, the
marks that were held to be functional were, in
effect, part of the wares in respect of which regis
tration was sought so that the registration of those
marks would have granted the applicants a
monopoly on functional elements or characteristics
of their wares; the applicants would, in effect, have
obtained patents under the guise of trade marks.
The situation here is entirely different. The trade
mark applied for by the appellant is not functional
in that sense; for that reason, its functional charac
ter does not make it "not registrable".
I would dispose of the appeal as suggested by
my brother Urie.
* * *
The following are the reasons for judgment
rendered in English by
URIE J.A.: This appeal is from a judgment of
Muldoon J. in the Trial Division whereby he dis
' Parke, Davis & Co., Ltd. v. Empire Laboratories Ltd.,
[1964] Ex.C.R. 399; (1963), 41 C.P.R. 121 affd [1964] S.C.R.
351.
Elgin Handles Ltd. v. Welland Vale Mfg. Co. Ltd., [1965] 1
Ex.C.R. 3; (1964), 43 C.P.R. 20.
missed the appeal of the appellant from the deci
sion of the Registrar of Trade Marks refusing the
appellant's application to register as its trade
mark, the numerical combination "967-1111". The
relevant facts, none of which were in dispute,
follow:
The appellant is in the business of owning and
operating restaurants and food take-out and deliv
ery facilities offering, among other things, pizza,
ravioli, lasagna, spaghetti and submarine sand
wiches. It also carries on the business of franchis
ing such operations. As I understand it, at the time
of trial, over 60 owned or franchised outlets exist
ed in the Metropolitan Toronto area. All of such
outlets are substantially identical and make exten
sive use of the appellant's trade mark "967-1111",
which also happens to be the telephone number of
all of the outlets, either as an owned proprietorship
or pursuant to the licence granted by the appellant
to the franchisee for the operation thereof.
According to the evidence, the trade mark "967-
1111" was adopted by the appellant with the
intention that it be used on all products and in all
advertising for the purpose of distinguishing, or so
as to distinguish, the appellant's products from
those of others. Use and advertising of the mark
has been extensive. It is used on all product boxes
used in the Toronto area, in all printed advertising
materials and on store signs in prominent print.
The respondent does not dispute that in the
manner in which the numerical combination "967-
1111" is utilized by the appellant, such combina
tion appears as a separate and distinct element,
which stands on its own, and creates an actual and
substantial distinction between the appellant and
other traders and between its products and those of
others. The sole question is, is it a registrable trade
mark under the Trade Marks Act [R.S.C. 1970, c.
T-10] ("the Act")?
The appellant, through experts in the field of
linguistics and marketing, adduced evidence that a
seven-digit number is capable of distinguishing
goods and services in the retail market place and
that, through extensive use and advertising by the
appellant, the numerical combination "967-1111"
does serve to identify the appellant and to distin
guish its wares and services from those of others.
The learned Trial Judge properly, in my view,
accorded that affidavit evidence little weight. The
function of the mark and its capability of being a
trade mark is the very issue upon which the Regis
trar is required to decide and while he may receive
evidence to assist in his determination, the weight
to be accorded the evidence, if any, is for him and,
on an appeal to the Trial Division, the Judge, is
called upon to decide.
The respondent, on January 24, 1984, refused
the appellant's application for registration of the
combination "967-1111" on the ground that the
subject of the application was not a trade mark
within the meaning of section 2 of the Act. That
section reads as follows:
2. In this Act,
"trade mark" means
(a) a mark is used by a person for the purpose of distinguish
ing or so as to distinguish wares or services manufactured,
sold, leased, hired or performed by him from those manufac
tured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade mark;
The appellant's appeal from the Registrar's
rejection of its application, was dismissed by Mul-
doon J. on December 20, 1985. He upheld the
Registrar's decision that the numerical combina
tion "967-1111" is not a trade mark within the
meaning of section 2 and further found that a
monopoly interest in a series of seven digits which
are, or might be, a telephone number, cannot be
registered. It is from that judgment that this
appeal is brought.
The finding of the Trial Judge is made in the
following excerpts from his reasons: 2
2 (1985), 7 C.P.R. (3d) 428, (F.C.T.D.) at pp. 430-431.
There are good reasons for declining to consider a telephone
number (whatever else the series of seven digits may also be) to
be a trade mark. A trade mark operates to confer a monopoly
throughout Canada. A trade mark is to be used, in this case by
a corporation, "for the purpose of distinguishing or so as to
distinguish wares or services manufactured, sold, leased, hired
or performed by [it] from those manufactured, sold, leased,
hired or performed by others", to paraphrase the definition
expressed in s. 2 of the Act. A registered trade mark gives the
owner and those claiming under or through the owner the right
to seek and the probability of obtaining stringent remedies
against anyone who infringes it, in Canada.
A telephone number represents a sequence of electrically
generated signals assigned by the operator of the telephone
utility to a subscriber whereby the subscriber's instrument may
be contacted for sound (usually talking) transmissions from any
other instrument in the telephone region, system or network. In
a very real sense that seven-digit number sequence belongs to
the telephone system, if not to its owners and operators. It is a
necessary function of the telephone system, translated into
alphabetic letters sometimes, and most often into numerical
digits, which always correspond to the electrical signals
sequence needed to contact the instrument to which the tele
phone company has assigned them.
It is apparent that neither a law of Canada, nor a federal
official, the registrar, acting within the scope of his authority
under that law, can accord a monopoly trade mark for or to a
telephone number. The telephone company (Bell Canada in
regard to the appellant's Toronto telephone No. 967-1111) due
to the exigencies of its circuits, local exchanges, regional
exchanges or interprovincial agreements may at any time have
to assign a different number to the appellant, and assign the
appellant's number to some other subscriber, or perhaps, to
eliminate the number entirely. What then becomes of the
registered trade mark? In the western provinces the telephone
utilities are owned by the Crown in right of the provinces. Are
these Crown corporations to be fettered by the appellant's trade
mark, if registered? Would every telephone company in
Canada have to reserve or revoke 967-1111, because of a
registered trade mark, lest that number be used in association
with commercial wares or services?
Those possible results would be absurd, and that is good
enough reason to support the registrar's conclusion that 967-
1 I l 1, or any other telephone number in Canada, is not a trade
mark within the meaning of the Trade Marks Act.
One cannot register a monopoly interest in a series of seven
digits which are, or might be, a telephone number, but such
pronouncement does not necessarily apply to shorter or longer
sequences of digits unless they too have the same or similar
characteristics.
The respondent Registrar in his decision
expressed his view as to why the numerical combi
nation was not registrable as a trade mark in the
following way:
Webster's New International Dictionary (3rd edition)
defines a telephone number as: "A number assigned to a
telephone instrument and used by a person to call that tele
phone." In any opinion, a telephone number, by definition,
functions to enable a person to contact a predesignated instru
ment, it cannot function to distinguish applicant's wares and
services from those of others and thus does not fall within the
statutory definition of a trade mark.
Accordingly, since the subject of this application is not a
trade mark within the meaning of the Trade Marks Act, this
application for its registration as a trade mark is refused.
Counsel for the appellant, in her factum submit
ted, first, that both the respondent and Muldoon J.
erred in holding that the definition of "trade
mark" in section 2 of the Act did not include the
numerical combination of "967-1111" which was
the subject-matter of the appellant's application,
and, secondly, that the learned Judge had erred in
supporting the Registrar's decision on the basis of
speculation about the impact on the telephone
company of permitting the subject-matter of the
appellant's application to become registered, there
being no evidence to support such speculation.
The decisions of both the respondent and the
Trial Judge appear to be based on the reasoning
that a telephone number "functions to enable a
person to contact a predesignated instrument".
There can be no doubt that this is true. But the
question then arises does this "function" preclude
registration of the number on the basis of the
jurisprudence arising from the following cases
upon which both the Registrar and the Judge
appear to have relied?
Parke, Davis & Co., Ltd. v. Empire Laborato
ries Ltd., [1964] Ex.C.R. 399; (1963), 41 C.P.R.
121, is a judgment of Noël J. (as he then was) in
the Exchequer Court wherein he found [at pages
419 Ex.C.R.; 141 C.P.R.] that the alleged mark,
which was a coloured band sealing together two
halves of a capsule containing pharmaceutical
preparations, was invalid as a trade mark because
it "... undoubtedly monopolizes ... all the forms
of the functional parts of the colour bonded sealed
capsules". (Emphasis added.)
Elgin Handles Ltd. v. Welland Vale Mfg. Co.
Ltd., [1965] 1 Ex.C.R. 3; (1964), 43 C.P.R. 20
was also a judgment of the Exchequer Court. The
mark for which expungement was sought, consist
ed of a design where there was an accentuation in
darker colouring of the grain of the wood of tool
handles, the surface of which had been fire-hard
ened, to accomplish the desired purpose. Jackett P.
(as he then was) said at pages 7 Ex.C.R.; 24
C.P.R.
I have therefore come to the conclusion on the evidence that
the fire hardening process is primarily designed to improve
wooden handles as objects of commerce and has therefore a
functional use or characteristic. It follows that the change
cannot be a trade mark. [Emphasis added.]
In both W.J. Hughes & Sons "Corn Flower"
Ltd. v. Morawiec (1970), 62 C.P.R. 21 (Ex. Ct.);
and Adidas (Canada) Ltd. v. Colins Inc. (1978),
38 C.P.R. (2d) 145 (F.C.T.D.) the alleged trade
marks—a design cut into glassware in the first
case and three stripes on sports wear in the
second—performed only ornamental functions in
each case and could not be trade marks.
All four judgments are readily distinguishable,
in my view. First, it was not alleged in this case
that the numerical combination was used for the
purpose of ornamentation. Secondly, neither could
it be said, as counsel pointed out, to be solely
functional. By that she meant that the combina
tion was not utilized solely as an indication of
quality, size, grade or the like of the appellant's
wares. If it were it would be precluded from
registration by virtue of paragraph 12(1) (b) of the
Act as being descriptive or misdescriptive of the
wares. As I see it, while undoubtedly there is a
functional element in its use by the appellant, in
that to place a telephone order for any of the
appellant's products the numerical combination
that is the telephone number allotted by the tele
phone company to the appellant must be utilized,
that is not its sole function. Rather, it is totally
unrelated to the wares themselves in the sense
that, for example, a numbered part of some prod
uct would be so related which is purely a function
al use. It is true that the selection by the appellant,
of the numerical combination that is its telephone
number cannot be said to have been fortuitous. It
was a deliberate choice made by the appellant's
now Chairman, Michael Overs, from among 20 or
30 choices offered to him "because it was inherent
ly suited to use by Pizza Pizza Limited to identify
to its customers and potential customers the source
of Pizza Pizza Limited's products and the quality
standards which have been and are now associated
with those products" 3 and the mark is now "highly
indicative of Pizza Pizza Limited and its products
and distinguishes Pizza Pizza Limited's products
and services from those of others". 4
None of the foregoing evidence was contradicted
nor even disputed. That being so, it is a trade mark
and I fail to understand why simply because it also
functions as the appellant's telephone number can
deprive it of registrability as such a trade mark. It
fulfils the requirements of the definition of "trade
mark" in section 2 of the Act in that it is
(a) a mark that is used by a person (a
corporation),
(b) that it is used for the purpose of distinguishing
wares manufactured or sold by it, and
(c) it distinguishes such wares from those sold by
others.
That being so on an application to register it, if
he is not satisfied under subsection 36(1) that the
trade mark should not be registered, the Registrar
must register it, 5 in the absence of successful oppo
sition, its registration not being precluded by sub
' Appeal Book, p. 154, para. 7.
4 Appeal Book, p. 155, para. 10.
5 Fox, H. G. The Canadian Law of Trade Marks and Unfair
Competition, 3d ed., Toronto: Carswell, 1972, p. 81.
section 12(1). 6 Even if it fails the tests of registra-
bility under that subsection, it is possible that it
might be registered under subsection 12(2) if the
mark has been so used in Canada as to have
become distinctive of the applicant.
For all of the foregoing reasons, I am of the
opinion that the Registrar erred in rejecting the
application for registration of the appellant's mark
on the grounds upon which he based the objection.
Consequently, I am of the further opinion that the
learned Trial Judge wrongly dismissed the appel
lant's appeal from the Registrar's rejection of the
application so that the appeal to this Court must
succeed.
I ought not to leave the matter without pointing
out that in my view, the Trial Judge was mistaken
when he said without qualification [at page 431]
that "One cannot register a monopoly interest in a
series of seven digits which are, or might be, a
telephone number ...". He cited no authority for
such a proposition since I suspect that no such
authority exists. More importantly, the grant of
registration of a trade mark, whether a number in
combination or not, grants monopoly in that exact
sequence of numbers, whether a telephone number
or not, only for use in association with the wares
and services for which the registration is granted.
Nor will that registration hinder in any way any of
the rights of the telephone company, as far as I am
aware. If, after this matter is referred back to him
6 12. (1) Subject to section 13, a trade mark is registrable if
it is not
(a) a word that is primarily merely the name or the surname
of an individual who is living or has died within the preceding
thirty years;
(b) whether depicted, written or sounded, either clearly
descriptive or deceptively misdescriptive in the English or
French languages of the character or quality of the wares or
services in association with which it is used or proposed to be
used or of the conditions of or the persons employed in their
production or of their place of origin;
(e) the name in any language of any of the wares or services
in connection with which it is used or proposed to be used;
(d) confusing with a registered trade mark; or
(e) a mark of which the adoption is prohibited by section 9
or 10.
the Registrar sees fit to grant the application for
registration, section 36 of the Act requires him to
advertise in the manner prescribed. The telephone
company may, as a result, make its objections to
the registration known at that time. If that com
pany is not satisfied with the Registrar's decision
to permit registration despite its objections, there
are other remedies available to it to effect rectifi
cation of such perceived wrongs.
I would, therefore, allow the appeal, set aside
the judgment appealed from and remit the matter
to the respondent for further prosecution of the
appellant's application for registration.
* * *
The following are the reasons for judgment
rendered in English by
MAcGUIGAN J.A.: I agree with the reasons for
judgment of Urie J.A. and with his proposed dis
position of the case.
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.