Imperial Tobacco Ltd. v. Rothmans, Benson & Hedges Inc.
T-2392-95
Joyal J.
13/9/96
11 pp.
Application to expunge trade marks "Classic" and "Classique" from Register-Applicant arguing marks either clearly descriptive or deceptively misdescriptive of character or quality of wares-Relying on dictionary definitions defining word as "first class", "excellence", "of Ancient Rome"-Also relying on Standard Stoker Co. Inc. v. Registrar of Trade Marks, [1947] Ex. C.R. 437 finding word "standard" falls within category of laudatory epithets-Applicant also arguing state of Register irrelevant on evidence trade marks registered for 36 and 10 years respectively and Register showing 300 registrations involving mark "Classic"-Respondent arguing marks brought into question in earlier s. 44 proceedings instituted by applicant and issue of validity or registrability not raised-Arguing mark must describe or misdescribe wares themselves and not just attribute wares might or might not enjoy-Respondent emphasizing heavy burden borne by applicant in expungement proceedings-Respondent also citing registrations where words like "mild", "soft", "thick", "great", "big", "slim", held to be registrable-Also citing Pepsi Cola Company of Canada Ltd. v. The Coca-Cola Company of Canada, Ltd., [1940] S.C.R. 17 as authority for proposition cancellation of registration would cause grave commercial injustice in cases of long delay and acquiescence-Application dismissed-Seniority achieved by registered marks material to issue of registrability-No issue of registrability raised at time of s. 44 proceedings-Evidence of 300 registrations of "Classic" or "Classique" also relevant-Status of all other registration in serious doubt if applicant successful-Applicant providing selective approach to dictionary definition of marks-Because concept of "classic" originally so loosely drawn word now covers many meanings-Marks used mostly in association with abstractions such as music, literature or other terms denoting attribute or state-Marks sufficiently derivative that not clearly descriptive or deceptively misdescriptive of quality or character of wares-Trade Marks Act, R.S.C., 1985, c. T-10, s. 51.