A-465-77
Registrar of Trade Marks (Appellant)
v.
Ugine Aciers (Respondent)
Court of Appeal, Pratte and Le Dain JJ. and Hyde
D.J.—Montreal, June 8 and 9, 1978.
Trade marks — Registration — Registrar's decision refus
ing to register mark because of confusion with registered mark
owned by another firm in association with identical wares,
reversed by Trial Division — Respondent and owner of the
registered trade mark owned by same conglomerate — Wheth
er or not Trial Division erred in reversing Registrar's decision
— Trade Marks Act, R.S.C. 1970, c. T-10, ss. 15, 36(1).
This is an appeal from a judgment of the Trial Division
quashing the decision of the Registrar of Trade Marks refusing
respondent's application for the registration of the trade mark
UGIPLUS. The Registrar considered the mark unregistrable
because it was confusing with the trade mark UGINOX, owned
by another firm and used in association with identical wares.
Respondent and the owner of the mark UGINOX were owned by
the same financial interests.
Held, the appeal is allowed. None of the reasons the Trial
Judge gave in support of his decision stands up to scrutiny. If
the judgment is interpreted as stating that the trade mark
UGIPLUS is registrable under section 15, the judgment is based
on a manifest error, since UGIPLUS and UGINOX do not belong
to the same owner. The testimony of one witness heard by the
Judge does not place him in a better position than the Registrar
to decide the issue since this testimony does not contain any
thing relevant that was not communicated to the Registrar.
Further, that testimony cannot lead to the conclusion that the
use of trade marks beginning with the prefix uGI had never
been confusing. That other trade marks comprising the prefix
uGI were registered in circumstances and in association with
products not specified, is a consideration without relevance.
The Registrar's decision is based on a correct interpretation of
the Act: the trade mark was not registrable because it was
confusing with the trade mark UGINOX, which had been regis
tered by another company, controlled by the same financial
interests as respondent, in association with identical wares.
APPEAL.
COUNSEL:
J. M. Aubry for appellant.
H. Richard for respondent.
SOLICITORS:
Deputy Attorney General of Canada for
appellant.
Léger, Robic, Rouleau & Richard, Montreal,
for respondent.
The following is the English version of the
reasons for judgment delivered orally by
PRATTE J.: This is an appeal from a judgment
of the Trial Division R1978] 1978] 1 F.C. 626] quashing
the decision made by the Registrar of Trade
Marks, under section 36(1) of the Trade Marks
Act, R.S.C. 1970, c. T-10, refusing the application
for the registration of the trade mark UGIPLUS
that had been submitted to him by respondent.
Respondent had applied to register this trade
mark in association with the following products:
Unrefined and semi-refined common metals and their alloys,
anchors, anvils, bells, laminated and cast building materials,
rails and other metal materials for railways, non-electric metal
cables and wires, locks, metal pipes, safes and safe-deposit
boxes, steel ingots, horseshoes, nails and screws and other
non-precious metal products not included in other classes.
The Registrar refused this application on the
ground that the trade mark was not registrable
because it was "confusing with a registered trade
mark", the trade mark UGINOX, which had been
registered by another company, controlled by the
same financial interests as respondent, in associa
tion with products described as follows:
Unrefined and semi-refined common metals and their alloys;
stainless steels.
In the opinion of the Registrar, since each of the
two trade marks contained the prefix UGI and was
used in association with identical wares, it fol
lowed, under the terms of section 6(2), that the use
of these two trade marks "in the same area would
be likely to lead to the inference that the wares .. .
associated with such trade marks are manufac
tured, sold ... by the same person". The Registrar
was supported in his opinion by the fact that
respondent belonged to a large group of companies
(controlled directly or indirectly by Pechiney-
Ugine-Kuhlmann) which were all using trade
marks containing the prefix UGI, with the result
that, as counsel for the respondent had written to
the Registrar, "The public associates all these
trade marks with the French firm Pechiney Ugine
Kuhlmann ...".
This decision by the Registrar was quashed by
the judgment that is the subject of this appeal.
In making the decision on appeal, the Trial
Division relied solely on the Registrar's record and
on the testimony of one Mr. Messud, a representa
tive of the Pechiney-Ugine-Kuhlmann group in
Canada.
I have already summarized the essential facts
disclosed by the Registrar's record. The Canadian
representative of the Pechiney-Ugine-Kuhlmann
group, who was heard as a witness by the Trial
Judge, added little to this: he provided a more
detailed description of the activities of the compa
nies belonging to the group he represented, and
stated, as the Trial Judge emphasized, that he had
never heard that the use of trade marks having the
same prefix uGI by the various companies in this
group had been confusing.
The Trial Judge's reasons for quashing the Reg
istrar's decision are difficult to follow. In his rea
sons for judgment he first set out the applicable
legislative provisions in full. He then described the
organization of the Pechiney-Ugine-Kuhlmann
group as follows [at pages 628-629]:
The group is an empire of over one hundred and fifty compa
nies with, in fact and in substance, a single beneficial owner—
the company which holds, directly or indirectly, all the shares
in the subsidiaries, sub-subsidiaries and their subsidiaries.
There is, in fact, only one owner and only one ultimate benefici
ary, directly or indirectly.
The Judge then mentioned that section 15 (which
allows confusing trade marks to be registered
where they are owned by the same person) could
not be applied in the case at bar unless the group
of companies to which respondent belonged was
considered to be one and the same person. The
Judge then left this subject and concluded his
judgment as follows [at pages 629-6301:
At the hearing, I had the opportunity of hearing from Mr.
Messud, Pechiney-Ugine-Kuhlmann's top executive in Canada.
The Registrar did not have this opportunity. I believe that by
his testimony Mr. Messud threw some light on the matter, by
outlining the operation of this group of companies and explain
ing the reason for the use of UGI. This prefix is used because
the group's first steel mill was constructed and operated in the
village of Ugine, Savoie, France. UGI in itself is not a geograph
ical name, any more than the MONT in Montreal.
Learned counsel stated that the Registrar was aware of the
fact that he was dealing with a group of companies, but I doubt
that a letter could have the same impact or provide as clear an
account as Mr. Messud's testimony concerning the group, the
use of uGINox and UGIPLUS, the various products represented
by these words, and the various groups of people to whom they
are directed.
The Registrar was not able to weigh these facts in the same
manner as the Court, since he did not have the opportunity to
hear Mr. Messud, whose testimony (which was allowed by the
Court) provided greater detail and threw new light on the
matter, making it clear that the use of the prefix UGI has never
created any confusion.
The following question and Mr. Messud's answer are record
ed at page 48 of the transcript of the evidence:
Q. Mr. Messud, has anyone ever told you that the consum
ing public tends to confuse the various products marketed
by your vast enterprise and its various subsidiaries,
because the products have trade marks bearing the same
prefix "Ugi"? Have you ever been asked to look into
complaints from anyone claiming that the same prefix on
all your products was confusing?
A. I have never heard of any confusion. I believe that the
idea is to separate the various categories of products by
giving them different trade marks, while still maintaining
unity by using the "Ugi" prefix. It is the second part of
the name which usually differentiates the products, and is
applied to certain categories of products as opposed to
others. I have never heard of any confusion in this
respect.
A series of trade marks, all bearing the UGI prefix, were
listed for the Court. These included "Ugicarb", "Ugigramme",
"Ugicryl", "Ugidien", "Ugigrip" and "Ugigum", as well as the
following trade marks registered in Canada: "Ugi", "Ugigum",
"Ugicryl", "Ugibor", "Ugipren" and "Ugitex". If names such
as these have been registered, I cannot see why UGIPLUS would
not also be accepted for registration.
After considering all the factors involved, and seeing no
possible confusion, the Court allows the appeal.
This decision seems to me to be without
foundation.
A judge hearing an appeal from a decision by
the Registrar of Trade Marks has, of course, the
authority to revise the decision and, in particular,
he may substitute his own findings of fact for those
of the Registrar. However, the judge must have
reasons to justify his doing so.
In the case at bar, none of the reasons the Trial
Judge gave in support of his decision seems to me
to stand up to scrutiny.
If, as appellant maintained, the judgment must
be interpreted as stating that the trade mark UGI-
PLUS is registrable under section 15, it must be
said that this judgment is based on a manifest
error, since it is clear that the trade marks UGI-
PLUS and UGINOx do not belong to the same
owner.
Regarding the Trial Judge's statement that
having heard Mr. Messud's testimony, he was in a
better position than the Registrar to decide the
issue, I cannot believe this since this testimony did
not contain anything relevant that had not already
been communicated to the Registrar.
Moreover, the Trial Judge could not in my
opinion conclude anything from Mr. Messud's
statement that, to his knowledge, the use of trade
marks beginning with the prefix UGI had never
been confusing. Certain answers given by the wit
ness in cross-examination indicate that these trade
marks were used by the different companies pre
cisely in order to create confusion:
Q. I gather, from the testimony you gave earlier, that
"Pechiney-Ugine-Kuhlmann" decided at some point to
identify all its subsidiaries' products by a common word
"ugi" or "ugine"?
A. Yes.
Q. The intention here was, if I understood correctly, to
persuade the public purchasing the products of one or
more of these subsidiaries that they had a common origin,
that they came from the "Pechiney-Ugine-Kuhlmann"
group?
A. Yes.
Q. That they had a common origin, and that they were
produced by the same person?
A. Yes. In the case of the two companies we are concerned
with at present, I recall that the unrefined metal used by
"Ugine Guegnon", which is the subsidiary ... (interrupt-
ed).
Finally, the Judge noted that several other trade
marks comprising the prefix UGI have already
been registered in circumstances and in association
with products which he does not specify. This, I
must say, is a consideration the relevance of which
escapes me.
These reasons, which are the only ones given by
the Trial Judge in support of his judgment, thus
seem very weak to me. The decision of the Regis
trar, on the other hand, seems to me to make good
sense and to be based on a correct interpretation of
the Act.
For these reasons, the decision a quo seems to
me to be without foundation and should be
reversed.
* * *
LE DAIN J. concurred.
* * *
HYDE D.J. concurred.
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.