Matol Biotech Laboratories Ltd. v. Jurak Holdings Ltd.

Matol Biotech Laboratories Ltd. v. Jurak Holdings Ltd.
Court (s) Database
Federal Court Decisions
Date
2008-09-29
Neutral citation
2008 FC 1082
File numbers
T-2012-07
Decision Content
Date: 20080929
Docket: T-2012-07
Citation: 2008 FC 1082
Ottawa, Ontario, September 29, 2008
PRESENT: The Honourable Mr. Justice Lemieux
BETWEEN:
MATOL BIOTECH LABORATORIES LTD.
Applicant
and
JURAK HOLDINGS LTD.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1] Matol Biotech Laboratories Ltd. (Matol) attempted, by application filed with the Canadian Intellectual Property Office (CIPO) on February 5, 1999, to register KARL JURAK as a Trade-mark (the Mark) under the Trade-marks Act (the Act) in association with minerals and vitamins for therapeutic purposes (the Wares). It was successfully opposed in its endeavour by Jurak Holdings Ltd. (Holdings) principally on the grounds the Mark was not registrable under paragraph 12(1)(a) and had not become distinctive under subsection 12(2) of the Act. Those provisions read:
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;
…
(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration. [Emphasis mine.]
12. (1) Sous réserve de l’article 13, une marque de commerce est enregistrable sauf dans l’un ou l’autre des cas suivants :
a) elle est constituée d’un mot n’étant principalement que le nom ou le nom de famille d’un particulier vivant ou qui est décédé dans les trente années précédentes;
…
(2) Une marque de commerce qui n’est pas enregistrable en raison de l’alinéa (1)a) ou b) peut être enregistrée si elle a été employée au Canada par le requérant ou son prédécesseur en titre de façon à être devenue distinctive à la date de la production d’une demande d’enregistrement la concernant. [Je souligne.]
[2] Matol appeals, pursuant to section 56 of the Act, the September 14, 2007 decision of Jean Carrière, member of the Trade-marks Opposition Board (the tribunal). Matol took advantage of subsection 56(5) of the Act by filing three pieces of evidence which were not before the tribunal. Holdings did not file any additional or fresh evidence.
[3] This appeal gives rise to two issues. First, whether the tribunal erred when it found Holdings had met its initial evidentiary burden before it shifted to Matol the evidentiary burden. Second, whether, based on the new evidence before me, the Mark whose first use was said to be October 31, 1994 in association with the Wares had become distinctive so as to claim the benefit of subsection 12(2) of the Act.
[4] Both Matol and Holdings substantially agree the jurisprudence is settled on the test to be applied for the purpose of interpreting paragraph 12(1)(a) of the Act. That test, derived from the jurisprudence, (Canada (Registrar of Trade Marks v. Coles Book Stores Ltd.), [1974] S.C.R. 438; Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R. (2d) 23 and Standard Oil Company v. the Registrar of Trade Marks, [1968] 2 Ex.C.R. 523) is:
1) The first and foremost condition is whether the Mark is the name or surname of a living individual or an individual who has recently died;
2) If the answer to the first question is affirmative, then the Registrar must determine if in the mind of the average Canadian consumer the Mark is “primarily merely” a name or surname rather than something else. [Emphasis mine.]
[5] The parties do not disagree that the first part of the test was met by the evidence, i.e. the Mark is the name of an individual who died in 1993.
[6] The parties are also in agreement on the standard of review of the tribunal’s decision. It is set out by Justice Binnie in Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772, at paragraphs 40 and 41 which read:
40 Given, in particular, the expertise of the Board, and the "weighing up" nature of the mandate imposed by s. 6 of the Act, I am of the view that despite the grant of a full right of appeal the appropriate standard of review is reasonableness. The Board's discretion does not command the high deference due, for example, to the exercise by a Minister of a discretion, where the standard typically is patent unreasonableness (e.g. C.U.P.E. v. Ontario (Minister of Labour), [2003] 1 S.C.R. 539, 2003 SCC 29, at para. 157), nor should the Board be held to a standard of correctness, as it would be on the determination of an extricable question of law of general importance (Chieu v. Canada (Minister of Citizenship and Immigration), [2002] 1 S.C.R. 84, 2002 SCC 3, at para. 26). The intermediate standard (reasonableness) means, as Iacobucci J. pointed out in Ryan, at para. 46, that "[a] court will often be forced to accept that a decision is reasonable even if it is unlikely that the court would have reasoned or decided as the tribunal did". The question is whether the Board's decision is supported by reasons that can withstand "a somewhat probing" examination and is not "clearly wrong": Southam Inc., at para. 60.
41 The foregoing analysis of the proper standard of review is consistent with the jurisprudence of the Federal Court of Appeal: see in particular Molson v. Labatt, per Rothstein J.A., at para. 51; Novopharm Ltd., per Strayer J.A., at para. 4; Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51, per Malone J.A., at para. 13, and Isaac J.A., at para. 10; Christian Dior, S.A. v. Dion Neckwear Ltd., [2002] 3 F.C. 405, 2002 FCA 29 per Décary J.A., at para. 8, and Purafil, Inc. v. Purafil Canada Ltd. (2004), 31 C.P.R. (4th) 345, 2004 FC 522, per MacKay D.J., at para. 5.
[7] In Mattel, Justice Binnie referred to, with approval, Justice Rothstein’s decision when he was a member of the Federal Court of Appeal, in Molson Breweries v. John Labatt, [2000] 3 F.C. 145 at paragraph 51 (Molson/Labatt) which focused on the impact new evidence on appeal might have on the standard of review:
51 I think the approach in Benson & Hedges and McDonald's Corp. are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.
[Emphasis mine.]
[8] I take it from these two cases, the standard of review has been settled (see Dunsmuir v. New Brunswick, 2008 SCC 9, at paragraph 62). That standard is reasonableness. The Federal Court of Appeal confirmed this standard of review in its post Dunsmuir decision in Scott Paper Limited v. Smart & Biggar et al, 65 C.P.R. (4th) 303, at paragraph 11 (Scott Paper).
[9] In Dunsmuir, Justices Bastarache and LeBel provided guidance on the parameters of a reasonable decision:
47 Reasonableness is a deferential standard animated by the principle that underlies the development of the two previous standards of reasonableness: certain questions that come before administrative tribunals do not lend themselves to one specific, particular result. Instead, they may give rise to a number of possible, reasonable conclusions. Tribunals have a margin of appreciation within the range of acceptable and rational solutions. A court conducting a review for reasonableness inquires into the qualities that make a decision reasonable, referring both to the process of articulating the reasons and to outcomes. In judicial review, reasonableness is concerned mostly with the existence of justification, transparency and intelligibility within the decision-making process. But it is also concerned with whether the decision falls within a range of possible, acceptable outcomes which are defensible in respect of the facts and law.
…
49 Deference in the context of the reasonableness standard therefore implies that courts will give due consideration to the determinations of decision makers. As Mullan explains, a policy of deference "recognizes the reality that, in many instances, those working day to day in the implementation of frequently complex administrative schemes have or will develop a considerable degree of expertise or field sensitivity to the imperatives and nuances of the legislative regime": D. J. Mullan, "Establishing the Standard of Review: The Struggle for Complexity?" (2004), 17 C.J.A.L.P. 59, at p. 93. In short, deference requires respect for the legislative choices to leave some matters in the hands of administrative decision makers, for the processes and determinations that draw on particular expertise and experiences, and for the different roles of the courts and administrative bodies within the Canadian constitutional system.
…
53 Where the question is one of fact, discretion or policy, deference will usually apply automatically (Canada (Attorney General) v. Mossop, [1993] 1 S.C.R. 554, at pp. 599-600; Dr. Q, at para. 29; Suresh, at paras. 29-30). We believe that the same standard must apply to the review of questions where the legal and factual issues are intertwined with and cannot be readily separated.
[10] This jurisprudence is also clear that where questions of fact are involved, the tribunal enjoys on those questions considerable deference as expressed by Parliament in paragraph 18.1(4)(d) of the Federal Courts Act which provides a decision may be set aside if the tribunal “based its decision or order on an erroneous finding of fact that it made in a perverse or capricious manner or without regard for the material before it” (see also Mugesera v. Canada (Minister of Citizenship and Immigration), [2005] 2 S.C.R. 100, at paragraphs 37 and 38.)
Facts
[11] After Matol filed its application to register the Mark on February 5, 1999, Matol was met with an office action in which the Examiner raised a number of questions including whether the Mark was barred from registration on account of section 12(1)(a) of the Act. It was in this context Matol filed with the Examiner the affidavit of Robert Bolduc, a co-founder and president of Matol, dated March 16, 2001, with Exhibits RB-1, RB-2 and RB-3 claiming the benefit of subsection 12(2) of the Act.
[12] In that affidavit, Robert Bolduc explained that:
1) The Applicant, incorporated in March 1986, is a subsidiary of Matol Botanical International Ltd. (Botanical); the Applicant is the holder of all Canadian trade-mark registrations owned by Botanical which is the producer and marketer of the Wares in Canada;
2) The principal product marketed by Botanical is a mineral supplement in liquid form sold in Canada under the trade-mark MATOL. This mineral supplement was discovered by Dr. Karl Jurak.
3) Since October 31, 1994, the mineral supplement and other herbal products have been marketed in Canada under the trade-mark Matol in association with the trade-mark KARL JURAK;
4) Botanical’s products are not marketed in retail stores in Canada; rather they are sold by direct sales to Canadian consumers through Matol distributors.
[13] The Examiner withdrew her objection based on section 12(1)(a) on June 6, 2001 apparently on the basis of a new Office practice without providing any further details.
[14] Before and subsequent to the filing of the application for the registration of the Mark, the parties to this appeal (Matol as applicant and Holdings as opponent) were involved in related opposition proceedings before the CIPO as follows:
· Application by Matol on December 5, 1997 to register the trade-mark KARL JURAK 1904-1993 & Design; the design is a likeness of Dr. Jurak’s face. This registration was allowed by member Carrière on December 14, 2007;
· Application by Matol on February 5, 1999 to register the trade-mark KARL JURAK 1904-1993 which was allowed by member Carrière on December 14, 2007;
· Application in December 23, 1998 by Matol to register the proposed trade-mark JURAK in connection with a number of wide-ranging wares and services. This registration was allowed on March 3, 2006 by another member of the Trade-Marks Opposition Board.
[15] On October 3, 2001, Holdings filed a statement of opposition to Matol’s application to register the trade-mark KARL JURAK. That opposition was supported by the affidavit of Anthony Carl Jurak who was cross-examined. Anthony Carl Jurak is the President of Holdings since its incorporation on January 1, 1998 and the Chairman and Chief Executive Officer of Jurak Corporation World Wide Inc. since its incorporation in November 1997, of which Holdings is the majority shareholder. He is the son of Karl Jurak. He was a co-founder of Botanical and the company’s original Chairman from 1984 to 1991 when he became Co-chairman with Robert Bolduc and Sam Kalenuik. He left Botanical in 1997. Holdings markets its wares in Canada and the United States under the trade-mark JURAK CLASSIC. One of those wares is his father’s original whole body tonic formulation. Holdings raised four grounds of opposition:
· Non compliance with the requirements of section 30(i) of the Act in that “the Applicant could not have been satisfied that it was entitled to use the Mark as it had knowledge that Karl Jurak is primarily merely the name of a famous individual who died within the preceding thirty years. Holdings submitted the Mark is not registrable and is incapable of functioning as a trade-mark;
· Non compliance with section 30(b) of the Act as the Applicant has not used the Mark in Canada since October 31, 1994 in association with the wares;
· The Mark is non registrable pursuant to section 12(1)(a) of the Act for the same reasons as it mentioned in its section 30(i) ground of opposition adding: “Furthermore, although there may be less than 25 entries for the name Karl Jurak in Canadian telephone directories, evidence will show that the name is that of a famous individual.” Counsel added a comment that Matol’s application was not saved by the Practice Notice of August 16, 2000 “which the Examiner appears to have relied on in this manner”;
· The Mark is not distinctive in that it is not adapted to distinguish the Applicant’s wares from the wares or services of others as the Mark is primarily the name of a famous individual. Counsel added: “The Applicant’s section 12(2) evidence does not show use of the name Karl Jurak as a trade-mark and does not support a finding that the Mark has become distinctive at the date of the filing of the application.
[16] On April 2, 2002, Matol filed its Counter Statement to the Opposition generally denying the validity of the grounds invoked by Holdings.
[17] On May 1, 2002, Holdings filed an Amended Statement of Opposition to delete reference to Matol’s section 12(2) evidence and to the Practice Notice.
[18] On November 4, 2002, Holdings filed its evidence in the opposition proceedings namely the affidavit of Anthony Carl Jurak with Exhibits; the affidavit of Arlene E. Siderius with Exhibits and the affidavit of Glenn A. Berg with Exhibits.
[19] On April 29, 2004, Matol filed its evidence, in support of the application, the affidavit of Robert Bolduc dated April 29, 2004 and the affidavit of Jennifer Petras.
[20] On July 18, 2005, Matol filed its written argument. It pointed out that non compliance with section 12(1)(a) was Holdings’ primary grounds of opposition, namely, the Mark is a word that is primarily merely the name or surname of an individual who has died in the preceding thirty years. Matol wrote of Holdings’ theory: “Because Jurak is a very rare surname, it cannot be “primarily merely” a surname unless a given individual bearing this surname is “well-known” or famous. Therefore this is what the opponent is alleging.”
[21] Matol also submitted “Karl Jurak is not a famous individual in the minds of the average Canadians” for a number of reasons including the fact that “the vast majority of Canadian consumers don’t know Karl Jurak and his diverse accomplishments because the products are distributed only by independent distributors. There is no general publicity for the sale of these products”. Matol concluded its submission on this point by stating “in reality, there is no evidence of Karl Jurak receiving any attention in Canada” concluding that the Mark was registrable having regard to the provisions of 12(1)(a) of the Act. In terms of distinctiveness, Matol argued “this is really the same argument as that made in respect of section 12(1)(a), we therefore reiterate our arguments above”. Matol submitted Holdings had an initial evidentiary burden to establish some facts to support its allegation on non registrability and there was no sufficient evidence to support its burden.
[22] Holdings filed its written reply on November 18, 2005. On the section 12(1)(a) issue, Holdings referred to the CIPO’s Practice Notice of August 16, 2002. It argued, based on a reading of that Practice Notice, the Mark was not registrable. It stated the Practice Notice provided in part “the Examiner will only object to an application on the basis of section 12(1)(a) if there are at least 25 entries of the name in Canadian telephone directories”. Holdings wrote: “We concede that, in this case, no evidence has been filed showing that there are at least 25 entries for KARL JURAK in Canadian telephone directories.” Holdings pointed out, however, the Practice Notice provided “if research discloses the Mark consists of the name or surname of a famous individual an objection may be raised notwithstanding the existence of less than 25 entries ….”. Holdings then argued the evidence showed KARL JURAK is the name of a famous individual.
The tribunal’s decision
[23] For the purposes of this appeal, I will limit my consideration of the tribunal’s decision to its discussion of the issue of Holdings’ evidential burden in the context of the section 12(1)(a) issue of non registrability on the basis the Mark is “primarily merely the name of an individual who died within the last thirty years” and the subsection 12(2) issue of acquired distinctiveness. Holdings did not cross-appeal in this Court the two other grounds of opposition which it had raised in its statement of opposition, namely, the Matol’s non compliance with sections 30(i) and 30(b) of the Act but which the tribunal ruled Holdings had not established.
[24] In terms of burden, the tribunal stated:
The legal burden is upon the Applicant to show that its application complies with the provisions of the Act, but there is however an initial evidential onus on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once this initial onus is met, the Applicant still has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark. [See Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293 and Wrangler Apparel Corp. v. The Timberland Company, [2005] FC 722.] [Emphasis mine.]
[25] As to the relevant dates for the analysis of the registrability of the Mark under section 12(1)(a) of the Act, the tribunal stated:
- Registrability of the Mark under s. 12(1)(a) of the Act: also the filing date of the application; [See Calvin Klein Trademark Trust v. Wertex Hosiery Inc. (2005), 41 C.P.R. (4th) 552]
[26] For distinctiveness, he ruled:
- Distinctiveness of the Mark: the filing date of the statement of opposition is generally accepted as the relevant date (October 3, 2001). [See Andres Wines Ltd. and E & J Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.) and Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)]
(a) The section 12(1)(a) issue
[27] The tribunal began its discussion of this issue by stating the focus was on whether the Mark, KARL JURAK, is a word “primarily merely” the name or surname of an individual who has died in the past 30 years stating that the bulk of the evidence filed in the proceeding before it related to this issue.
[28] Based on that evidence, the tribunal ruled there was no doubt there was an individual by the name of KARL JURAK who died in 1993. It then referred to the Practice Note, issued by the Registrar on August 16, 2000, providing some guidelines on the application of section 12(1)(a) which, in his view, were not binding on the Registrar at the decision stage of an opposition in contrast to the examination stage.
[29] The tribunal then set out the test, developed from the jurisprudence, on the application of section 12(1)(a) of the Act set out in paragraph 4 of these reasons which for convenience I repeat here:
1) The first and foremost condition is whether the Mark is the name or surname of a living individual or an individual who has recently died;
2) If the answer to the first question is affirmative, then the Registrar must determine if in the mind of the average Canadian consumer the Mark is "primarily merely" a name or surname rather than something else.
[30] The tribunal ruled, as noted, the first part of the test had been met and therefore the question before him was whether the average consumer would consider the Mark, KARL JURAK, as “primarily merely” the name of an individual “or something else”. [Emphasis mine.]
[31] The tribunal commented Holdings had filed much material to establish that KARL JURAK was a famous person having determined the name Jurak was not found at least 25 times in Canadian telephone directories characterizing, in these circumstances, the argument of Holdings that if the Mark is the name of a famous person, the average Canadian consumer would automatically consider the Mark as “primarily merely” the name or surname of a person.
[32] After summarizing the evidence before him, the tribunal ruled:
With all due respect for the late Dr. Karl Jurak I do not think that the evidence described above is sufficient to conclude that he was a famous person known to the average Canadian consumer. He might be known in Tulsa, Oklahoma or even in San Antonio, Texas in view of the centres opened in these cities by The Foundation but there is no evidence that enables me to conclude that his fame in the United States is of such a magnitude that it spilled over in Canada. His whole body tonic might have been popular in the 1950's but there is no evidence that such popularity carried over the relevant dates such that Canadians when confronted with the name Karl Jurak would immediately associate the late Dr. Karl Jurak to such product. The Canadian sales figures provided were not of a magnitude that they would infer an association amongst the Canadian consumers between such trade-mark and the late Karl Jurak. [Emphasis mine.]
[33] Mr. Carrière then added and concluded:
Having concluded that the evidence filed falls short of establishing that the Mark is recognized in Canada as the name of a famous person, I do not think that such conclusion puts an end to the test applicable when s. 12(1)(a) is raised as a ground of opposition. In fact s. 12(1)(a) of the Act does not require the individual to be famous in order for the prohibition to apply. Evidence that a name would appear at least 25 times in Canadian telephone directories only gives an indication that such name could be viewed by the average Canadian consumer as a name of an individual. The absence of such proof is not fatal to an opposition based on s. 12(1)(a). In our case there is no evidence that JURAK has any other meaning.
The burden is on the Applicant to show that the Mark is registrable despite the prohibition under s. 12(1)(a). There is no evidence that would demonstrate that the combination of the given name KARL with the surname JURAK would have in the minds of the average Canadian consumer of the Wares any other meaning than the Wares originate from an individual by the name of Karl Jurak.
Given that there is evidence that Karl Jurak was an individual who has died during the preceding thirty years and the Mark would be viewed in the mind of the average Canadian consumer as "primarily merely" as a name, I conclude that the Mark is not registrable as prohibited under the provisions of s. 12(1)(a) of the Act. [Emphasis mine.]
(b) The subsection 12(2) issue and the separate distinctiveness ruling
[34] The record indicates that Holdings raised as a ground for opposition that the Mark KARL JURAK was not distinctive in that it is not adapted to distinguish the Applicant’s wares from others being primarily the name of a famous person. On the other hand, Matol claimed the benefit of subsection 12(2) which overrides the deficiency on account of 12(1)(a), if at the date of the application (February 5, 1999), the trade-mark which is applied for registration “has been so used in Canada as to have become distinctive”. As a result, two different issues related to distinctiveness arose.
[35] The tribunal, in its ruling, only dealt with the issue of distinctiveness raised by Holdings as a ground for opposition. It did not dealt with Matol’s subsection 12(2) claim because the material which it had filed with the Examiner, namely Robert Bolduc’s March 16, 2001 affidavit was not part of the opposition file, thus finding Matol’s evidence did not address the issue the Mark had acquired distinctiveness at the relevant time under subsection 12(2) of the Act.
[36] To tribunal confined its remarks to the issue of distinctiveness raised by Holdings and for this purpose considered Robert Bolduc’s affidavit dated April 24, 2004. The tribunal stated Matol had the legal onus to “show that its mark is adapted to distinguish or actually distinguishes its wares from that of the Opponent throughout Canada” and concluded “there is no evidence in the file to that effect.”
[37] Of Mr. Bolduc’s April 24, 2004 affidavit, the tribunal found:
Mr. Bolduc states in his affidavit that the Mark has been used as an associated mark with the trade-mark MATOL. The evidence described above falls short from establishing that the Mark has been used in Canada prior to the relevant date, namely October 3, 2001, in such a way that it does serve to distinguish the Applicant's Wares from the wares and services of others. As an example the Applicant failed to provide the annual sales figures from 1994 to 2002. The only reference to sales in Mr. Bolduc's affidavit is with respect to 2003. As noted earlier some of the containers bearing the trade-mark MATOL filed by Mr. Jurak and allegedly used by the Applicant since 1994 do not have any reference to the Mark. Therefore it is impossible to ascertain the percentage of the sales of the Wares in 2003 associated with the Mark as opposed to the trade-mark MATOL alone, even if such evidence was relevant. [Emphasis mine.]
[38] The tribunal observed “that the Applicant did not rely on the provisions of section 12(2) of the Act in its counter statement or in its written arguments”, stating, as noted, “the evidence filed by the Applicant at the examination stage to claim the benefit of section 12(2) of the Act does not form part of the opposition file” citing Molson Breweries, A Partnership v. The Registrar of Trade-marks (1992), 41 C.P.R. (3d) 234, expressing the view “the Applicant's evidence does not address the issue that the Mark would have acquired distinctiveness at the relevant date”.
[39] Mr. Carrière concluded as follows on this point:
As the Mark consists primarily merely the name of an individual who has died within the last thirty years and in the absence of evidence that would prove that the Mark acquired distinctiveness at the relevant date, I conclude that the Mark could not served to distinguish the Wares from the wares and services of others. The fourth ground of opposition is therefore maintained.
Analysis
(a) The standard of review
[40] This issue has been previously addressed in these reasons. The standard of review is reasonableness.
(b) The new evidence on appeal
[41] As authorized by subsection 56(5) of the Act, Matol through the affidavit of Robert Bolduc dated November 7, 2007, filed the following pieces of evidence not before the tribunal:
1) The affidavit of Robert Bolduc, dated March 16, 2001, filed with Examiner Hélène Gaudreau the same day, for the purpose of claiming the benefit of section 12(2) of the Act;
2) The search results from the internet site of Canada 411 showing that the name JURAK is found in only 22 times in Canadian telephone directories; and
3) A copy of a search report, on Google’s internet site, showing that the name JURAK is defined, according to Wikipedia, in English to mean “a Shisha pipe, also known as hookah, water pipe or argileh, is a smoking pipe.
(c) The applicable jurisprudence
(1) On the section 12(1)(a) issue of non registrability
[42] The tribunal correctly relied upon the following decisions as the leading cases on the issue of non-registrability of a trade-mark on account of its being “primarily merely the name or surname of an individual” in section 12(1)(a) of the Act (in French “… constituée d’un mot n’étant principalement que le nom ou le nom de famille d’un particulier …” were:
· The Supreme Court of Canada’s decision in Canada (Registrar of Trade Marks) v. Coles Book Stores Limited, [1974] S.C.R. 438 (Coles);
· The Exchequer Court of Canada’s decision in Standard Oil Co. v. the Registrar of Trade Marks, [1968] 2 Ex.C.R. 523 (Standard Oil);
· Gerhard Horn Investments Ltd. v. Registrar of Trade Marks, [1983] 2 F.C. 878 (Gerhard Horn).
[43] In terms of analysis of the case at hand, I would add to this list Justice Cattanach’s decision in Galanos v. Canada (Registrar of Trade Marks) (1982), 69 C.P.R. (2d) 144 (Galanos), as well as his decision in Elder’s Beverages (1975) Ltd. v. Canada (Registrar of Trade Marks), [1979] 2 F.C. 735 (Elder’s).
[44] In Coles, the contest was between a word readily recognizable as a surname (Coles) and the dictionary meanings of the word “cole” which was rare and largely obsolete. Justice Judson, on behalf of the Supreme Court of Canada, noted that section 12(1)(a) of the Act was added by Parliament in 1952, wording which was copied from U.S. legislation enacted in 1946. Justice Judson stated that it was “essential to any inquiry into registrability must now begin with the new words themselves.” He wrote:
“They are common English words. Is the primary (chief) (principal) (first in importance) meaning of the word merely (only) (nothing more than) a surname?”
[45] Referring to U.S. jurisprudence, he said the inquiry was a search for the dominant (principal) characteristic of the trade-mark and that if that dominant characteristic was to be found in a surname, it was excluded from registration, i.e. primarily merely a surname.
[46] Applying the test of what would be the response of the general public to the word sought to be registered which he acknowledged was derived from Jackett P.’s decision in Standard Oil, he concluded:
In the case at bar, the evidence clearly establishes that "Coles" is a surname that is well-known to the general public of Canada. On the other hand, the dictionary meanings of the word "cole" and in its plural form "coles", particularly as found in the Oxford English Dictionary, are largely obsolete. A customer in need of a cabbage does not ask for a "cole". The only common use of the word that I can think of is in the word "coleslaw". The inference I draw from the evidence concerning the dictionary definitions of the word "cole" is that it is a word of rare, if not obsolete, usage and would be little known to the general public of Canada. I do not agree with the conclusion of the learned Judge of the Exchequer Court that the principal character of the word "Coles" is "equally that of a surname and of a dictionary word in the English language." My only possible conclusion in this case is that a person in Canada of ordinary intelligence and of ordinary education in English or French would immediately respond to the trade mark "Coles" by thinking of it as a surname and would not be likely to know that "Coles" has a dictionary meaning. [Emphasis mine.]
[47] In Standard Oil, the conflict was between the word applied for registration for proposed use being the acronym (coined) word FIOR which had no dictionary meaning (being the first letters of the words “fluid iron ore reduction”) and the rare surname FIOR for a number of individuals (1 in Montreal, 9 in Toronto, 3 in Los Angeles, 2 in San Francisco and one in Indiana).
[48] Mr. Justice Jackett, as President of the Exchequer Court, after noting that for trade-mark purposes “there are at least three classes of "words", viz, dictionary words, names, and invented words”, stated that he was satisfied the evidence before him established “FIOR is a word that is the surname of an individual who is living”, adding however, “the further question to be decided is, whether "FIOR" is "primarily merely" such a word.” He found that it had been established by affidavit filed with the Court that the trade-mark was a word invented by the Company for use as its trade-mark. The President ruled “it follows that FIOR is not “merely” the surname of a living person because it has existence as a word invented … for trade-mark purposes. He then wrote:
The next stage in considering the problem of applying section 12(1)(a) to the word "FIOR" is to consider whether "FIOR" is "primarily" the surname of a living person (Note that the French version uses the word "principalement" where the English version uses "primarily".) In other words, is the chief, main or principal character of "FIOR" that of a surname or is it principally or equally a word invented to be used as a trade mark?
and stated the test as being:
The test, for the purposes of section 12(1)(a) is not, in my view, the reaction of either of these classes of persons [the persons with the surname FIOR or Standard Oil’s trade mark advisor who coined that word]. The test must be what, in the opinion of the respondent or the Court, as the case may be, would be the response of the general public of Canada to the word. My conclusion is that a person in Canada of ordinary intelligence and of ordinary education in English or French would be just as likely, if not more likely, to respond to the word by thinking of it as a brand or mark of some business as to respond to it by thinking of some family of people (that is, by thinking of it as being the surname of one or more individuals). Indeed, I doubt very much whether such a person would respond to the word by thinking of there being an individual having it as a surname at all.
I am, therefore, of the view that it is probably not "primarily" a word that is a surname of an individual at all, but it is certainly not primarily "merely" such a word.
I have probably been influenced in coming to the conclusion that I have expressed as to how the word "primarily" in section 12(1)(a) should be applied by the fact that applying the provision solely by reference to the existence of a dictionary meaning of a proposed trade mark would make practically every invented word vulnerable to attack as a proposed trade mark by anyone assiduous enough to pursue his searches for its use as a surname somewhere in the world (or, indeed, in a country such as Canada even if the search were restricted to Canada). I cannot believe that section 12(1)(a) was intended virtually to eliminate the creation of new words for purposes of proposed trade marks. [Emphasis mine.]
[49] In the Gerhard Horn, the contest for the registration of trade-mark MARIO PECCI, a name where there was no evidence of a living individual with that name (a fictitious or imaginary name), but where there was evidence of at least two individuals residing in Canada bearing the surname “Pecci”. A further search indicated one telephone directory listing of the surname PECCI in New York and in Paris and ten in the telephone directories of Rome and Florence.
[50] Justice Cattanach determined there was no impediment under section 12(1)(a) of the Act to the registrability of a fictitious person because the section focussed on the crucial word “individual” in the context of a person who was living or had died within the last thirty years. The problem occurred when “by chance the fictitious name coined by the applicant for registration thereof coincides with such a person”.
[51] According to Justice Cattanach, this is where to Coles/Standard Oil test came into play a test to determine whether “a word sought to be used as a trade mark is "primarily merely" the name or surname of an individual (which means a real person as contrasted to an imaginary one) or something else such as a dictionary word, an invented or coined word or the brand or mark of some business”. [Emphasis mine.]
[52] In the case before him, Justice Cattanach was of the view the Registrar (through the examiner) had erred by embarking on an analysis of what would the average Canadian would think of the proposed name. The Registrar had to find first the condition precedent to this exercise – the existence of an individual bearing the name of the trade-mark.
[53] Finally, he ruled that the discovery of one living question in Canada with the surname Pecci “was not the question here” because the trade-mark sought to be registered was not the surname Pecci but MARCO PECCI concluding “the name cannot be the name of an individual if there be no such person”.
[54] In Elder’s, the trade-mark sought to be registered was ELDER’S, the evidence showing of substantial significance ELDER is both the surname of individuals and also it had several dictionary meanings. In this context, Justice Cattanach applying the reaction of the average Canadian test found that such person “would not assign to the word "elder" a more dominant characteristic either as a surname or as a dictionary word”. As a result, the proposed Mark was registrable because it was not primarily the name or surname of an individual.
[55] In Galanos, a 1982 decision of Justice Cattanach, the trade-mark applied for was GALANOS, a word which was the surname of the applicant for registration (Mr. James G. Galanos). The evidence showed a search of telephone directories that there were 3 listings in Toronto and two in Montreal. In terms of dictionary meaning, there was none in the English and French dictionaries but the English-Spanish dictionary defined “galano” as tasteful or elegant. The census figures indicated there were over 23,000 residents in Canada whose mother tongue was Spanish. The Applicant, in that case, conceded Galanos was the name of an individual but argued the word was not primarily merely a surname because of its rarity in Canada and the fact the word had meaning in the Spanish language.
[56] Justice Cattanach referred to the three categories of words identified by Jackett P. in the Standard Oil case (dictionary words, names and invented words) and expressed the view that unknown foreign words may be another category. Based on the evidence before him, he stated Galanos is a surname but not a widely known one and is meaningless in English or French. He held being meaningless “does have a significance” – being a foreign word without meaning in English or French “it is a coined, fancy or inv