T-1060-77
Brewers Association of Canada (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.—Ottawa, June 15
and November 15, 1978.
Trade marks — Certification mark — Appeal from Regis
trar's refusal to register mark, the shape and dark amber
colour of a bottle — Whether or not subject matter a "mark"
within definition of "certification mark" — Trade Marks Act,
R.S.C. 1970, c. T-10 ss. 2, 36(1), 56.
This is an appeal under section 56 of the Trade Marks Act
from a decision of the Registrar of Trade Marks refusing under
subsection 36(1) the appellant's application for registration of a
certification mark in respect of brewed alcoholic beverages.
What appellant seeks to have registered as such a mark is the
shape and dark amber colour of a bottle with the word "CANA-
DA" at the base of the bottle—but disclaiming that word. The
principal question is whether the subject matter of which
registration is sought is a "mark" within the meaning of the
definition "certification mark" in section 2 of the Act.
Held, the appeal is allowed. There is no reason to be drawn
from the statute why it should be concluded that it was
intended to exclude from registration as a certification mark a
guise such as the shaping of a container, as opposed to some
other type of marking, if it is capable of carrying the intended
message. That a guise or shaping of goods or their containers
can serve to distinguish goods is recognized by the statute itself.
The word "mark" in the definition of "certification mark"
includes a guise such as the shaping of goods or their contain
ers, as well as markings that may be attached to or imprinted
on goods or their containers. Although the subject matter of
which registration is sought falls within the definition of "dis-
tinguishing guise", it may be still registered as a certification
mark, and not be confined to registration as a "distinguishing
guise" because the subject matter is not used by any member of
appellant's association as his own trade mark or for the purpose
of distinguishing his product from that of other members
entitled to use it in association with their products. The judg
ment on this appeal decided nothing with respect to appellant's
right to monopolize the word "CANADA". Further, the Regis
trar may raise and deal with any objection regarding the colour
amber.
APPEAL.
COUNSEL:
James G. Fogo for appellant.
Deen C. Olsen and Hunter Gordon for
respondent.
SOLICITORS:
Herridge, Tolmie, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an appeal under section
56 of the Trade Marks Act' from a decision of the
Registrar of Trade Marks refusing under subsec
tion 36.(1) the appellant's application, numbered
359215, for registration of a certification mark in
respect of brewed alcoholic beverages. What the
appellant seeks to have registered as such a mark
is the shape and dark amber colour of a bottle with
the word "CANADA" at the base of the bottle as
shown below:
The right to the exclusive use of the word "CANA-
DA" apart from the certification mark was dis
claimed. In paragraph 5 of the application, it is
stated that the use of the certification mark is
intended to indicate that the brewed alcoholic
beverages in association with which it is used are
"of the following defined standard:
That the wares have been produced in Canada by a Canadi-
an brewery which is either a member of the Brewers Associa
tion of Canada or a licensee of that Association."
The expression "certification mark" is defined
in section 2 of the Trade Marks Act as meaning:
"certification mark" means a mark that is used for the purpose
of distinguishing or so as to distinguish wares or services that
are of a defined standard with respect to
(a) the character or quality of the wares or services,
' R.S.C. 1970, c. T-10.
(b) the working conditions under which the wares have
been produced or the services performed,
(c) the class of persons by whom the wares have been
produced or the services performed, or
(d) the area within which the wares have been produced
or the services performed,
from wares or services that are not of such a defined
standard;
The expression "trade mark" is defined in the
same section as meaning:
"trade mark" means
(a) a mark that is used by a person for the purpose of
distinguishing or so as to distinguish wares or services manu
factured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade mark;
A certification mark is thus a trade mark within
the meaning of that expression as used in the Act.
The provision under which the appellant's
application was refused reads as follows:
36. (1) The Registrar shall refuse an application for the
registration of a trade mark if he is satisfied that
(a) the application does not comply with the requirements of
section 29;
(b) the trade mark is not registrable; or
(c) the applicant is not the person entitled to registration of
the trade mark because it is confusing with another trade
mark for the registration of which an application is pending;
and where the Registrar is not so satisfied, he shall cause the
application to be advertised in the manner prescribed.
The Registrar's reason for refusing the applica
tion was expressed in the following paragraph:
The subject matter of this application for a certification mark
is not a mark and therefore does not fall within the definition of
certification mark and is refused.
This, coupled with the penultimate paragraph
refusing the application under subsection 36(1), in
my view, must be interpreted as meaning that the
Registrar was satisfied that the trade mark was
not registrable.
Earlier in his reasons, the Registrar had referred
to a distinction between a guise and a mark and to
the fact that the definition of "distinguishing
guise" 2 in the Trade Marks Act makes no refer
ence to a mark and had held that a distinguishing
guise is not a mark. He went on to express the
opinion that
... a person of ordinary intelligence and experience in Canada
would not perceive the brown beer bottle which is the subject of
this application with the words CANADA appearing thereon as
being a mark.
After expressing his conclusion that the subject
matter was not a mark, he added the following
paragraph:
The applicant has argued that the examiner has incorrectly
characterized the subject matter of this application as a "bot-
tle". The applicant submits that the color and word CANADA
add some distinctiveness to the shape of the bottle. It is
common knowledge that beer bottles are made of colored glass
to protect the brewed alcoholic beverage from the effects of the
sun. The words CANADA have been disclaimed and in any event
are not very distinctive as applied to a beer bottle. The color of
the bottle and disclaimed word CANADA are overwhelmed in
the initial impression created in looking at the mark applied
for, that impression being that the mark applied for is a brown
beer bottle.
This paragraph, as well as the opinion that the
public would not recognize the subject matter as a
mark, as it seems to me, relate not to the question
whether what the appellant seeks to have regis
tered is a mark and registrable under the Act but
to whether it is capable of fulfilling the purpose of
2 "distinguishing guise" means
(a) a shaping of wares or their containers, or
(b) a mode of wrapping or packaging wares
the appearance of which is used by a person for the purpose
of distinguishing or so as to distinguish wares or services
manufactured, sold, leased, hired or performed by him from
those manufactured, sold, leased, hired or performed by
others;
The French language version reads:
«signe distinctifi, signifie
a) un façonnement de marchandises ou de leurs contenants,
ou
b) un mode d'envelopper ou empaqueter des marchandises,
dont la présentation est employée par une personne afin de
distinguer, ou de façon à distinguer, les marchandises
qu'elle a fabriquées, vendues, données à bail ou louées, ou
les services loués ou exécutés par elle, des marchandises que
d'autres ont fabriquées, vendues, données à bail ou louées et
des services loués ou exécutés par d'autres;
Note the comma after the word "marchandises" in paragraph
(b) and the spacing. The French language version makes it
plain that the words which follow apply both to paragraph (b)
and to paragraph (a). See also Statutes of Canada 1952-53, c.
49, s. 2(g).
distinguishing goods of the defined standard from
others. Whether it will serve that purpose well or
not is, with respect, not in point, at least at this
stage.
The principal question requiring an answer on
this appeal, as I see it, is whether the subject
matter of which registration is sought is a "mark"
within the meaning of the definition of "certifica-
tion mark" in section 2 of the Act.
The word "mark" is not defined in the Trade
Marks Act and thus, where it appears alone and
not as part of a defined expression, it must be
given its ordinary meaning. It is, however, a ver
satile word and its ordinary meaning varies with
the context in which it is found. It can, in some
cases, be used in a narrow sense, as when it means
a scar or stain, or a symbol affixed to an object,
and in other cases in a broader sense in which it
can include any identifying or distinguishing char
acteristic. In the Trade Marks Act, it appears to
me to be used in different senses in different
sections. Thus, in paragraph (a) of the definition
of "trade mark", it may be used in a narrow sense,
as there it does not appear to include a distinguish
ing guise. If it does, paragraph (c) of the definition
is redundant. On the other hand, if a narrow
meaning is given to the word in subsection 57(1),
the Act will be without a provision for expunging
the registration of a distinguishing guise. The Act
will also lack a provision for applying for registra
tion of a distinguishing guise if the word "mark"
in paragraph 29(a) is not given a broad meaning. I
do not think either of these results was intended or
that the statute should be construed so as to
produce them.
Turning to certification marks, it is to be
observed first that their purpose differs widely
from that of the three other categories included in
the definition of "trade mark" in section 2. Yet,
they too are included and are referred to when the
expression is used in the Act. It is thus to be
expected that whatever can qualify as a certifica
tion mark, whether it is a "mark" in a narrow
sense of the word or in the broad sense of a sign,
would be registrable.
Next, there appears to be no reason to be drawn
from anything in the statute why it should be
concluded that it was intended to exclude from
registration as a certification mark a guise such as
the shaping of a container, as opposed to some
other type of marking, if it is capable of carrying
the intended message. That a guise or shaping of
goods or their containers can serve to distinguish
goods is recognized by the statute itself in the
provisions with respect to distinguishing guises.
Moreover, as I have indicated, paragraph 29(a)
which provides for applications for registration
uses the word "mark" in a sense which, in my
opinion, includes distinguishing guises and, if that
view is correct, the word can include as well a
guise of which registration is sought as a certifica
tion mark.
I should add that I think this view gains support
both from the historical development of trade
mark legislation in Canada and from the consider
ation that in general the thrust or result of the
enactment of the Trade Marks Act was to increase
the area of trade mark registration and protection
rather than to reduce or restrict it. Moreover, to
borrow a phrase from the judgment of Maclean P.
in Wrights' Ropes Limited v. Broderick & Bascom
Rope Co. 3 , it appears to me that "it does not
involve any strained construction" of the language
of the statute to hold that "mark" in the definition
of "certification mark" includes a guise that is
used to distinguish. Accordingly, I shall hold that
the word "mark" in the definition of "certification
mark" has the broader meaning and includes a
guise such as the shaping of goods or their contain
ers, as well as markings that may be attached to or
imprinted on goods or their containers.
Counsel for the Registrar submitted that in fact
the subject matter of which registration is sought
falls within the definition of "distinguishing guise"
and is accordingly registrable, if at all, only as a
distinguishing guise and not as a certification
mark. Plainly this subject matter is not used by the
appellant as a distinguishing guise as defined in
the Act as the appellant does not produce or sell
goods but the contention was that the subject
matter was nevertheless a distinguishing guise
3 [1931] Ex.C.R. 143.
since it is used by the members of the appellant's
association to distinguish their goods from those of
others. It does not appear to me that this conten
tion can prevail since the subject matter is not used
by any member for the purpose of distinguishing
his product from that of other members who are
also entitled to use it in association with their
products and it is not used by any member as his
own trade mark.
It was also submitted that there was no standard
defined in the application. This is a matter that
was not raised by the Registrar in his reasons or
when the application was before him. That may be
because, while what is in the application does not
seem to define a standard, in the ordinary sense of
the word, it appears, prima facie, to do so within
the meaning of paragraphs (c) and (d) of the
definition of "certification mark" by defining both
the class of persons by whom the wares have been
produced and the area, viz. Canada, within which
they have been produced. But whether or not that
is why the matter was not raised the objection is
not open on this appeal because the procedure
required by subsection 36(2) has not been followed
with respect to it.
It appears to me that the subject matter of the
appellant's application, consisting of the shape and
colour of the bottle with the word CANADA there
on, or the combination of them, is capable of being
used to distinguish or so as to distinguish, within
the meaning of the definition of "certification
mark", the brewed alcoholic beverages in respect
of which registration is sought from those not of
the defined standard.
It follows from this and from my conclusion as
to the meaning of "mark" in the definition of
"certification mark" that the subject matter of the
appellant's application, if not otherwise open to
objection, is registrable and that the application
should not have been refused under subsection
36(1) for any of the reasons given by the Regis
trar. However, there are two points which should
be mentioned at this stage.
The first of these is with respect to the word
CANADA. Following the refusal of the application,
the appellant sought to amend it by deleting the
disclaimer, which has been mentioned earlier in
these reasons, of the exclusive use of the word
CANADA. The Registrar returned the request on
the ground that, having refused the application, he
was functus and, as the matter was before this
Court, the revised application could not be
accepted.
There is no appeal before the Court from this
refusal but, I think it is appropriate to say that the
judgment on this appeal should not be taken as
deciding anything with respect to the right of the
appellant to monopolize the word CANADA either
with or without the disclaimer which I have men
tioned or as preventing the Registrar from raising
under subsection 36(2) any objection he may con
sider should be raised in respect thereto.
The other point of objection concerns the amber
colour. The material on file shows this to be a
functional or utilitarian feature which may not be
registrable. See Parke, Davis & Company v.
Empire Laboratories Limited 4 . Again, before ad
vertising the application, it will be open to the
Registrar to raise and deal with any objection he
may see fit to raise with respect to that feature, as
well as any other objections that it appears to him
ought to be raised at this stage, other than that as
to whether the subject matter is a mark within the
meaning of the definition of "certification mark",
after affording the appellant an opportunity under
subsection 36(2) to answer them.
The appeal will be allowed and the matter will
be referred back to the Registrar to deal with the
application in accordance with these reasons.
In accordance with the practice referred to in
The Great Atlantic & Pacific Tea Co. v. Registrar
of Trade Marks 5 , the Registrar will not be
ordered to pay costs.
4 [1964] S.C.R. 351.
5 [1945] Ex.C.R. 233 at 245.
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.