Globetrotter Management Limited (Appellant)
v.
General Mills Inc. (Respondent)
and
The Registrar of Trade Marks
Trial Division, Heald J.—Toronto, September
21; Ottawa, September 29, 1972.
Trade marks—Application for registration of "Choklit
Buttons" used with candy—Opposition by user of registered
mark `Buttons" used with corn snacks—No confusion—
Trade Marks Act, R.S.C. 1970, c. T-10, s. 6(5).
Appellant's application for registration of a proposed
trade mark "Choklit Buttons" for use in association with
candy whilst disclaiming the right to the exclusive use of the
word "Choklit", was refused by the Registrar on the ground
that it might lead to confusion with respondent's registered
trade mark "Buttons" used in association with corn snacks.
Held, applying the tests set forth in section 6(5) of the
Trade Marks Act for determining whether trade marks are
confusing, the two marks were not confusing and the Regis
trar should not have refused registration.
APPEAL from Registrar of Trade Marks.
George A. Rolston for appellant.
R. H. Barrigar for respondent.
HEALD J. This is an appeal from a decision
of the Registrar of Trade Marks refusing the
appellant's application for registration of its
proposed trade mark "Choklit Buttons" in asso
ciation with "candy bars, candy cigarettes, ice
cream, suckers, gum, candy cigars, frozen liquid
confectionary and candy pieces." The appellant
disclaimed the right to the exclusive use of the
word "Choklit" apart from the trade mark.
Respondent opposed said application on the
ground that said proposed mark was confusing
with its trade mark "Buttons" registered as No.
157,144 in association with "cereal derived
ready-to-eat corn snacks". Respondent submit
ted further that the appellant's mark is not and
cannot be distinctive of the appellant's wares.
The Registrar concluded that the two marks
were confusing within the meaning of section 6
of the Trade Marks Act and accordingly refused
appellant's application for registration.
The relevant portions of said section 6 read
as follows:
6. (2) The use of a trade mark causes confusion with
another trade mark if the use of both trade marks in the
same area would be likely to lead to the inference that the
wares or services associated with such trade marks are
manufactured, sold, leased, hired or performed by the same
person, whether or not such wares or services are of the
same general class.
(5) In determining whether trade marks or trade names
are confusing, the court or the Registrar, as the case may
be, shall have regard to all the surrounding circumstances
including
(a) the inherent distinctiveness of the trade marks or
trade names and the extent to which they have become
known;
(b) the length of time the trade marks or trade names
have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade marks or
trade names in appearance or sound or in the ideas
suggested by them.
I am required to follow the directions con
tained in section 6(5) of the Trade Marks Act
(supra) and accordingly, I propose to consider
the evidence in this case as it relates to each
paragraph of said section 6(5).
6(5)(a)—The inherent distinctiveness of the
trade marks and the extent to which they have
become known.
Neither of the marks here has any great
degree of distinctiveness. The respondent's
corn snack is sold in the form of a simulated
button. The corn snack displayed on the adver
tising filed in evidence is arranged in the form
of buttons running down the front of a shirt.
The appellant's mark "Choklit Buttons" is also
descriptive to the extent that the word "Chok-
lit" being the phonetic equivalent of the word
chocolate is, to that extent, descriptive of the
composition of the product. However, the
appellant's candy is not in itself in the form of a
button as such and therefore has, in my opinion,
a somewhat greater degree of distinctiveness,
considered as a whole, than the respondent's
mark.
Respondent's mark is simply a description of
its wares, namely a simulated button and must
therefore be considered a weak mark. Dr. Fox
in his Canadian Law of Trade Marks, 2nd ed.,
vol. 1, page 234, said:
... where the mark already registered is of the inherently
distinctive type, or what may be called the strong type,
small differences will not be significant, whereas, in the
case of weak marks or those possessing little inherent
distinctiveness small differences will serve to distinguish.
In the case of Office Cleaning Services Ltd. v.
Westminster Window and General Cleaners Ltd.
(1946) 63 R.P.C. 39 at p. 43, Lord Simonds
said:
It comes in the end, I think, to no more than this, that
where a trader adopts words in common use for his trade
name, some risk of confusion is inevitable. But that risk
must be run unless the first user is allowed unfairly to
monopolize the words. The Court will accept compara
tively small differences as sufficient to avert confusion. A
greater degree of discrimination may fairly be expected
from the public where a trade name consists wholly or in
part of words descriptive of the articles to be sold or the
services to be rendered.
In the case of General Motors Corp. v. Bel
lows (1949) 10 C.P.R. 101 at p. 116 (S.C.C.),
Mr. Justice Rand accepted the proposition that
where a party has reached inside the common
trade vocabulary for a word mark and seeks to
prevent competitors from doing the same thing,
the range of protection to be given him should
be more limited than in the case of an invented
or unique or non-descriptive word. Rand J. said
at page 116:
No doubt there is a public interest against confusion of
these marks, but on the other hand there is a like interest
in the freedom of the individual trader in ordinary trade
practices and in particular in using the main stock of the
language.
The above cited authorities apply, in my opin
ion, to the facts in this case. Here, the respond-
ent has "reached inside the common trade
vocabulary" for its word mark `Buttons" and
therefore the range of protection to which it is
entitled must be very limited indeed.
On the question as to the extent to which the
respective marks have become known, there
was no evidence before me on this point with
respect to either mark.
6(5)(b)—The length of time the trade marks
have been in use.
The respondent has used its trade mark `But-
tons" in Canada since about April, 1968. There
is no evidence that appellant has used its pro
posed mark at all.
6(5)(c)—The nature of the wares, services or
business.
The respondent's mark is used in association
with "cereal derived ready-to-eat corn snacks".
The main ingredients seem to be corn meal, rice
flour, aged cheddar cheese, wheat starch and
dry skim milk. The product is marketed in a
cardboard box and contains 5.5 oz. of product.
The box containing the product contains inter
alia the following advertising "Tastes like
Cheddar—Only Better!" The other statements
on the container makes it clear that the product
is a "cheese snack" and that it is "great with
beverages".
The appellant's mark is proposed to be used
in association with a small sugar-coated bean-
like candy with a chocolate filling. This candy is
to be sold in a small clear plastic container and
is proposed to be retailed at 25¢ per bag.
The one product is a cereal snack, the other is
candy. I have no hesitation in concluding that
the nature of the wares is so dissimilar that no
confusion could possibly arise.
6(5)(d)—The nature of the trade.
Generally speaking and certainly in supermar
kets, a candy product like this would be sold at
a separate counter from snack foods such as
respondent's product. It may be that in "corner
groceries" or similar establishments, the two
products might be stocked in proximity to each
other. However, even if this were the case, I
cannot believe that any person could possibly
confuse one product with the other or believe
that there was any connection between one
product and the other. The packaging is entirely
different—a cardboard box on the one hand, a
clear plastic bag on the other.
6(5)(e)—The degree of resemblance between
the trade marks in appearance or sound or in
the ideas suggested by them.
The only resemblance between the two trade
marks is the common use of the word `But-
tons". However, other firms have registered
marks in which the word "Buttons" is used with
other words. The firm of Libby, McNeill &
Libby have registered the mark "Buttons and
Bows" for use in association with spaghetti and
meat food products. The firm of Teenie-Weenie
Novel Products Limited have registered the
word mark `Belly-Button" for use in associa
tion with "candy" along with other products.
The firm of Christie, Brown and Company Lim
ited have registered the word mark "Peanut
Buttons" for use in association with "biscuits".
All of these marks are registered for use in
association with food products. All of them use
the word "Buttons".
It seems to me that such widespread use of
the word "Buttons" with different words would
serve to alert members of the food buying
public and thus minimize the likelihood of
confusion.
Having regard to all of the circumstances of
this case, and for the reasons stated herein, I
have concluded that the subject marks are not
confusing within the meaning of section 6 of the
Trade Marks Act and that the Registrar should
not have refused to register the appellant's
mark "Choklit Buttons". I also have the opinion
that appellant's proposed mark is distinctive of
appellant's wares within the meaning of the Act.
It seems to me that the Registrar, in his
reasons for judgment, misdirected himself as to
the effect of the disclaimer by the appellant of
the word "Choklit". Notwithstanding this dis
claimer, the marks must be considered in their
totalities. The trade mark in its entirety must be
used in comparing one mark with another to
determine whether there is a likelihood of con
fusion between them (see Standard Coil Prod
ucts (Canada) Limited v. Standard Radio Cor
poration, [1971] F.C. p. 106).
The appeal is therefore allowed with costs
and the matter is referred back to the Registrar
for appropriate action in accordance with these
reasons. The respondent did not appear, nor
was it represented by counsel at the trial before
me. However, respondent did file a reply to the
notice of appeal and filed a submission to the
effect that it in no way abandoned its position
on the appeal. Said submission stated that the
respondent was content to rely on the state of
the documentary record before the Registrar
including its written argument and to rely upon
the conclusions reached by the Registrar and
the reasons advanced by the Registrar for his
conclusions.
Counsel for the appellant moved to fix a lump
sum in lieu of taxed costs pursuant to Rule 344,
I accordingly fix the sum of $500 in lieu of
taxed 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.