Judgments

Decision Information

Decision Content

T-4311-81
Gerhard Horn Investments Ltd. (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.—Ottawa, June 8 and 24, 1983.
Trade marks — Fictitious name "Marco Pecci" found not registrable as trade mark by Registrar — Whether fact aver age Canadian might consider it name of individual precluding registration — Interpretation of s. 12(1)(a) of Trade Marks Act — Test of registrability being (1) whether word name or surname of living individual or one who died recently (2) if yes, whether word "primarily merely" such name — Appeal allowed — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 12(1)(a), 60 — Trade Marks Act, S.C. 1952-53, c. 49, s. 12(1)(a) — Unfair Competition Act, R.S.C. 1952, c. 274, s. 26(1)(b) — Patents, Designs and Trade Marks Act, 1888, 51 & 52 Vict., c. 50, s. 10 — Department of Consumer and Corpo rate Affairs Act, R.S.C. 1970, c. C-27, s. 3 — Interpretation Act, R.S.C. 1970, c. 1-23, s. 26(7).
The Registrar of Trade Marks held that the fictitious name "Marco Pecci" was not registrable as a trade mark for use in association with ladies' wear on the grounds that consumers would consider it to be primarily merely the name of an individual.
Held, the appeal from the Registrar's decision should be allowed. There is no impediment to the adoption of the name of a fictitious person as a trade mark, provided it does not coincide with the name of a living person or one who has died recently. The first test of registrability under paragraph 12(1)(a) of the Trade Marks Act is whether the word or words sought to be registered is the name of a living individual or one who has recently died. Only if that condition precedent is satisfied need consideration be given to the second test: whether the trade mark applied for is "primarily merely" a name or surname.
CASES JUDICIALLY CONSIDERED
APPLIED:
In the Matter of Holt and Co.'s Trade Mark (1896), 13 R.P.C. 118 (Eng. C.A.); Standard Oil Company v. The Registrar of Trade Marks, [1968] 2 Ex.C.R. 523; In re Mange! Stores Corporation, 165 USPQ 22 (1970).
CONSIDERED:
McDonald's Corporation v. Deputy Attorney General of Canada, [1977] 2 F.C. 177; 31 C.P.R. (2d) 272 (T.D.).
REFERRED To:
The Registrar of Trade Marks v. Coles Book Stores
Limited, [1974] S.C.R. 438; Calona Wines Limited v.
Registrar of Trade Marks, [1978] 1 F.C. 591; 36 C.P.R. (2d) 193 (T.D.); Elder's Beverages (1975) Ltd. v. Regis trar of Trade Marks, [1979] 2 F.C. 735; 44 C.P.R. (2d) 59 (T.D.); Galanos v. Registrar of Trade Marks (1982), 69 C.P.R. (2d) 144 (F.C.T.D.).
COUNSEL:
James G. Fogo for appellant. Arnold S. Fradkin 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 from the decision of the Registrar of Trade Marks cul minating and expressed in a letter dated July 7, 1981 signed by the Registrar after the application for the registration of the words "Marco Pecci" as a trade mark in association with ladies wearing apparel had been the subject of lengthy consider ation.
The application for registration was made on November 16, 1977 based upon use of the mark applied for on a date at least as early as July 1, 1976.
The initial office action dated October 4, 1978 by an examiner to which a response was invited was expressed in part in the following terms:
The mark which is the subject of this application is considered to be primarily merely the name of an individual.
In view of the provisions of Section 12(1)(a) of the Trade Marks Act, this mark does not appear registrable.
The Registrar is of the opinion that consumers are unable to discriminate between fictitious names and actual names. To the consumer, MARCO PECCI, would, therefore, be considered the name of an individual.
Any comments you may wish to submit will receive consideration.
A response dated April 4, 1979 was forthcoming from the agents for the applicant requesting recon sideration of the rejection by the examiner under paragraph 12(1)(a) [of the Trade Marks Act, R.S.C. 1970, c. T-10] which reads:
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;
It was pointed out that by reason of the inclu sion of the words "who is living or has died within the preceding thirty years" after the word "individual", a name or surname of an individual may be registered if it is not the name or surname of a living person or if the person bearing that name or surname that died within the preceding generation, which has been for convenience fixed at 30 years, there is no impediment to the registra tion of such a name or surname as a trade mark.
That is patent from the inclusion of the conclud ing words, which are quoted above, in paragraph 12(1)(a) otherwise the paragraph should have ended at the word "individual".
In the response by the applicant's agents it was reiterated, as had been pointed out in paragraph 3 of the application, that the trade mark sought to be registered was coined by the applicant no doubt to share in the acclaim accorded to foreign design ers in recognized foreign feminine fashion centres which was accomplished by the selection of the word "Pecci" as a surname which has such a connotation and prefaced that word by the word "Marco" as a forename which has a like ethnic connotation.
Thus the trade mark is a "coined" one formed by the combination of the two words. The result ant name is a fictitious one having been created by a fiction, that is to say the action of creating an imaginary being.
There has been no impediment to the adoption of the name of a fictitious person as a trade mark and the names of fictitious persons have not been precluded from registration as trade marks in any antecedent legislation.
In my opinion this is perpetuated by the lan guage of paragraph 12(1)(a) enacted in the 1953 Trade Marks Act [S.C. 1952-53, c. 49] (presently in force) which wrought substantial changes in other respects to its predecessor section in the Unfair Competition Act [R.S.C. 1952, c. 274], i.e.,
paragraph 26(1)(b) by which a word mark was registrable if it was not the name of a person, firm or corporation.
The crucial word in the language of paragraph 12(1)(a) "the name or the surname of an individu al" is the word "individual".
As to the interpretation of that word as included in the language "a name of an individual" in paragraph 10(a) [amending section 64 of principal Act] of the Patents, Designs and Trade Marks Act, 1888 [51 & 52 Vict., c. 50], Lindley L.J. had this to say In the Matter of Holt and Co.'s Trade Mark ((1896), 13 R.P.C. 118 [Eng. C.A.]) at page 122:
In metaphorical language, an imaginary person may perhaps be called an individual, but such a use of the word is unusual, and, to my mind, rather fanciful. It is hardly to be supposed that the Legislature meant "individual" to be taken in a fanciful or metaphorical sense; or meant it to denote an imaginary person who has not and never had any real existence.
What is precluded by paragraph 12(1)(a) from registration as a trade mark is the "name or the surname of an individual who is living or has died within the preceding thirty years" and the name of a fictitious person is not precluded thereby from registration except when by chance the fictitious name coined by the applicant for registration thereof coincides with the name of a living person or a person who bore such name and has been dead for less than thirty years.
Despite the representations made by the appli cant's agents the examiner of some fictitious entity described as "Consumer and Corporate Affairs Canada" rather than a department of the Govern ment of Canada called the Department of Con sumer and Corporate Affairs (see R.S.C. 1970, c. C-27, s. 3, which name has not been changed by an Act of Parliament) persisted in her opinion and stated in a letter dated April 25, 1979 that the trade mark "Marco Pecci" offends the provisions and referred the applicant's agent to the well- known test propounded by Jackett P. (as he then was) in Standard Oil Company v. The Registrar of Trade Marks ([1968] 2 Ex.C.R. 523, at page 532) to be applied 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 dic tionary word, an invented or coined word or the brand or mark of some business.
That test was approved and adopted by the Supreme Court of Canada in a judgment delivered by Judson J. in The Registrar of Trade Marks v. Coles Book Stores Limited ([1974] S.C.R. 438).
Jackett P. in the Standard Oil or Fior case (supra) . said ; [àt page 532]: "The test must be what, in the opinion of the respondent [i.e., the Registrar of Trade Marks] or the Court, as the case may be, would be the response of the general public of Canada to the word."
Applying that test he said [at pages 532-533]:
My conclusion is that a person in Canada of ordinary intelli gence 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.
The word "Fior" was an acronym created by the applicant by combining the first letters of each of the words "fluid iron ore reduction".
It is a rare surname. The Registrar himself swore and filed an affidavit in evidence that a search of the city directory of Montreal, P.Q. disclosed one person bearing that surname, the city directory of Toronto, Ontario disclosed nine per sons of that name and the telephone directories of the State of Illinois and the cities of Los Angeles and San Francisco disclosed a total of six such persons.
. The test propounded by Jackett P. and approved by Judson J. with respect to surnames has been followed and applied in Calona Wines Limited v. Registrar of Trade Marks ([[1978] 1 F.C. 591]; 36 C.P.R. (2d) 193 [T.D.]) in which it was shown that 41 individuals in all of Canada had the sur-
name "Fontana", in Elder's Beverages (1975) Ltd. v. Registrar of Trade Marks ([[1979] 2 F.C. 735]; 44 C.P.R. (2d) 59 [T.D.]) in which the Registrar established that a search through the telephone directories of 21 major cities in Canada listed 354 persons bearing the surname "Elder", and in Galanos v. Registrar of Trade Marks [(1982), 69 C.P.R. (2d) 144 (F.C.T.D.)] in which a search of the telephone directories of the cities of Montreal and Toronto showed the listings of two persons in Montreal and three persons in Toronto bearing the surname of "Galanos" and the surname of the applicant was also "Galanos".
The only prior instance in which the name of a person consisting of both a surname and a fore name occurred in McDonald's Corporation v. Deputy Attorney General of Canada ([[1977] 2 F.C. 177]; 31 C.P.R. (2d) 272 [T.D.]) in which the Registrar rejected an application for the regis tration of "Ronald McDonald" as a trade mark as a proposed mark for use in association with food services on two grounds only, the first of which is material here and was that the applicant had failed to establish that the name "Ronald McDo- nald" was not "primarily merely the name ... of an individual who is living or has died within the preceding thirty years".
There was evidence before my brother Addy who heard the matter that the name was used to identify a fictitious clown.
While it is not apparent from the reasons of Addy J. there was evidence in the material before him consisting in part of all documents on file in the office of the Registrar relating to the proceed ings under appeal which were transmitted to the Court pursuant to section 60 of the Trade Marks Act that there were living individuals in Canada bearing the name of Ronald McDonald.
Mr. Justice Addy concluded that the evidence before him failed to establish that paragraph 12(1)(a) had been complied with to satisfy the test propounded by Jackett P. in the Standard Oil or Fior case (supra) in that, and this is my interpola-
tion, the response of the general public in Canada to the words would be to think it is the name of a living individual rather than by thinking of the words as the brand or mark of some business and it is in fact, the name of living individuals in Canada.
In response to this office action, if that is what it was, dated April 25, 1979 the applicant's agents responded by a memorandum dated October 25, 1979 in which issue was taken with the examiner's rejection of the application for registration of the trade mark "Marco Pecci" on two points:
(1) that the examiner has not established a proper statutory basis for rejection of the application, in that having accepted the premise that MARCO PECCI is a fictitious and invented designation created for use as a trade mark and the examiner has offered no evidence that persons living or dead within the last thirty years, of that name have been found in any directory, and
(2) even if the words could be shown to be a rare name possessed by a living person or one who had died within thirty years prior, the principal character of the words can be equally that of a coined word and as such comply with the test enunciated in the Standard Oil case by Jackett P.
This evoked a response dated February 21, 1981 in which the examiner continues in and expresses her opinion that "Marco Pecci" offends the provi sions of paragraph 12(1)(a) of the Trade Marks Act but at long last condescends to state to the applicant's agents that :
The surname PECCI appears in the following telephone directories:
Toronto — 1 listing
Manhattan l listing
Paris — 1 listing
The Italian Embassy advised the examiner that PECCI is a surname and on checking only the Rome and Florence tele phone directories, they discovered approximately 10 listings of this surname.
In the light of that information the examiner repeated the opinion still held by her:
that a person in Canada of ordinary intelligence and of ordi nary education in English or French would be to think of the words MARCO PECCI as being primarily merely the name of an individual.
which is, in substance what was said in the office action dated April 25, 1979 and in more varied terms in the action dated October 4, 1978, already quoted.
The applicant's agents responded again once more reiterating what appears to be the material facts
(1) the name "MARCO PECCI" has not been shown to be the name of any person living or dead within the last thirty years, and
(2) the name PECCI as a surname is not shown to be more than unique in Canada to one person or family, one person or family in all Manhattan and that listing has now disappeared and extremely rare in the two most populous cities in Italy, Rome and Florence.
It seems odd that the listings in the telephone directories of those cities could not be counted with accuracy and should be described as "approx- imately 10" in number.
This response elicited a decision contained in a letter dated July 7, 1981 signed by the Registrar which bears reproduction particularly the express language utilized in the second, fourth, fifth and sixth paragraphs:
Reference is made to the application for registration of the above described trade mark.
The examiner objected to the mark under the provision of Section 12(1)(a) of the Trade Marks Act on the grounds that MARCO PECCI is primarily merely the name of an individual.
The applicant responded stating that the name MARCO PECCI "is not the name of any real person ... but is fictitious, an invented designation created for use as a trade mark."
The examiner had earlier point (sic) out that consumers are unable to discriminate between fictitious names and actual names. To the consumer, MARCO PECCI would be considered to be the name of an individual.
Notwithstanding the fact that PECCI is not a common surname, as noted in the office letter dated February 21, 1980, but prefaced with the masculine given name MARCO, it is my opinion that the reaction of the great majority of Canadians to the words MARCO PECCI would be that of the name of an individual.
Accordingly, I consider "Marco Pecci" to be primarily merely the name of an individual and not registrable having regard to the provisions of Section 12(1)(a) of the Trade Marks Act. The application is therefore refused pursuant to Section 36(1)(b) of the same Act.
Under Section 36 of the Trade Marks Act, an appeal from this decision lies to the Federal Court of Canada within two months from the date of this notice or within such further time as the Court may allow either before or after the expiry of two months.
That is the decision which is appealed.
In order for the Registrar to be satisfied that a trade mark is not registrable, as the Registrar in
this instance found the trade mark "Marco Pecci" not to be having stated in his letter dated July 7, 1981 that the application was refused, it follows that the registration of the mark sought to be registered must be precluded by a provision of the Trade Marks Act.
The provision relied upon by the examiner and ultimately by the Registrar is paragraph 12(1)(a) which is again reproduced for convenient proximi ty:
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;
By subsection 26(7) of the Interpretation Act, R.S.C. 1970, c. I-23, the word "word" expressed in the singular may be read in the plural as well and must be so read in this instance because the name of an individual normally in present times consists of more than one word.
Paragraph 12(1)(a) does not preclude the regis tration of fictitious names, as "Marco Pecci" is established to be, for the reasons previously expressed.
Lindley L.J. in the extract from Holt and Co.'s Trade Mark previously quoted expressed the view that an individual is not meant to denote an imagi nary person who has had no real existence but rather denotes real persons.
Thus the impediment to the registration of a fictitious name as a trade mark is that the choice of such a name happens to coincide with a name borne by someone now living or was borne by someone who has died within the last thirty years.
That is what is clearly provided by the language of paragraph 12(1)(a).
If that were not so the paragraph should have ended at the word "individual" but it does not and it is elementary that no language in a statute or the section of a statute can be ignored.
The first and foremost consideration is whether the word or words sought to be registered is the name or surname of a living individual or an individual who has recently died.
It is when that condition precedent is satisfied, and only then, that consideration need be given to the question whether the trade mark applied for is "primarily merely" a name or surname rather than something else.
Jackett P. made that abundantly clear in the Standard Oil case (supra) when he said at page 531:
That brings me to the position that I am satisfied that, on the evidence before the respondent and the evidence before me, "FIOR" is "a word that is ... the surname of an individual who is living". The further question to be decided is, whether "FIOR" is "primarily merely" such a word.
First he was satisfied that the word was the surname of a living individual and on being so satisfied he then proceeded to the application of the test he propounded.
From first to the end of the office action on the application for the registration of "Marco Pecci" the examiner and ultimately the Registrar deliber ately refrained from commenting upon the necessi ty that the words "Marco Pecci" formed the name of a living, or recently dead, individual despite the fact that repeated representations to that require ment had been made to them.
At the outset the examiner on October 4, 1978 uttered the non sequitur:
The Registrar is of the opinion that consumers are unable to discriminate between fictitious names and actual names. To the consumer, MARCO PECCI, would, therefore, be considered the name of an individual.
It is quite true that the consuming public might experience difficulty in discriminating between names bestowed upon imaginary persons and real persons. Scarlett O'Hara might well be considered by a person who had not read the novel, "Gone with the Wind", or seen the film made from the book as the name of a real person. But it remains the name of an imaginary person and as such is subject to registration unless shown to be a name of a living individual.
It is not enough that the fictitious name may resemble the name that could be borne by an actual person or might be thought by the public to be names or surnames. That thought only becomes material when it is established by evidence that
there is a living person of the name or surname in question.
Representations to that effect by the applicant's agent fell upon deaf ears.
The examiner responded by quoting the test enunciated as to what is "primarily merely" a name or surname of an individual who is living completely overlooking that the condition prece dent to embarking on that consideration is that there must be evidence that an individual bearing that name is living or recently died.
Without any indication whatsoever that such evidence was in her possession the examiner applied the "primarily merely" test and said:
The Examiner feels the reaction of a person in Canada of ordinary intelligence and of ordinary education in English or French would be to think of MARCO PECCI as the name of an individual.
Again there is a studious avoidance of any refer ence to a "living" individual.
Jackett P. has said in the Standard Oil case (supra) that the Registrar was entitled to conclude from city directories that "Fior" was the name of ten living persons in Canada. Before him the evi dence was to like effect in an affidavit sworn by the Registrar.
In this instance if any such evidence was in the possession of the Registrar or the examiner no reference whatsoever was made to its existence.
The fallacy of the approach adopted by the examiner is to reverse the approach approved and followed in the Standard Oil case. What the test contemplates is that the general public of Canada would think the words to be the name of a living individual if there be a living individual of that name and not because the general public so thinks that makes it the name of a living individual.
Paragraph 12(1) (a) prohibits the registration of a word that is the name of a living individual not one that "resembles" or one that the public thinks
is the name of an individual but rather that it is, in fact, the name of a living individual.
It was not until February 21, 1980 that the examiner indicated that she was in possession of information that there was one listing of the name "Pecci" in Canada.
That is susceptible of being evidence that there is at least one living person in Canada who bears the surname "Pecci".
In fact the appellant, not the Registrar, found and produced an affidavit on appeal establishing that there were two such listings in Canada, one in Toronto, Ontario of Mario Pecci and one in St. Catherines for a G. Pecci.
That evidence would be sufficient to launch consideration of the question whether the rarity of the surname would warrant the conclusion that it is principally if not exclusively a surname rather than the brand or mark of a business.
On the basis of the Fior case, the result with regard to "Pecci" as a surname might be the same but that is not the question here in issue.
The trade mark sought to be registered is not "Pecci" but "Marco Pecci".
"Marco Pecci" is susceptible of being considered the name of a living individual but before it can be accepted as such to warrant the application of the test to determine whether "Marco Pecci" is the name of a living individual there must be evidence to that effect. The name "Marco Pecci" cannot be the name of an individual if there be no such person.
Despite the repeated representations that para graph 12(1)(a) requires the words to be the name of a living individual or one who had died within the preceding thirty years the examiner persisted in her opinion that the great majority of Canadi- ans would react to the words "Marco Pecci" as being the name of an individual and completely disregards the necessity of that individual being a living individual or one recently dead. This too was
adopted by the Registrar as the basis of his decision.
That being so the Registrar has failed to bring the matter within the provisions of paragraph 12(1)(a) so as to render the trade mark not regis- trable and accordingly erred in so deciding.
The necessity of there being a living individual bearing the name sought to be registered was never mentioned in any one of the many rejections or in the ultimate decision by the Registrar.
Persons are presumed to mean what they write and especially so when those persons are in posi tions which demand care and precision.
Accepting the proposition advanced and alleged in paragraph 3 of the statement of defence, which is not supported by nor consistent with the facts, that both the Registrar and the examiner were well aware that the relevant provision of the Trade Marks Act requires the name to be that of a living individual and that the failure to refer to a "liv- ing" individual but only to an "individual" despite the language of paragraph 12(1)(a) was careless or shoddy workmanship, which ought not be coun tenanced, nevertheless there was no evidence before the Registrar to warrant the conclusion that there was a living individual bearing the name "Marco Pecci".
There was evidence before him of at least two living persons in Canada bearing the surname "Pecci".
But the trade mark sought to be registered is not "Pecci". It is "Marco Pecci". That is a forename and a surname and as such is much more readily susceptible as being looked upon as the name of an individual.
Apparently the examiner had referred to a book entitled, "A Dictionary of Modern British and American Given or Christian Names" which listed "Marco" as a masculine forename.
There was no evidence, however, that any of the few male persons bearing the surname "Pecci" also bear the given name "Marco".
Certainly not in Canada because an affidavit Celia Laframboise submitted on behalf of the appellant rebuts that possibility. A "Mario" did not respond to "Marco".
It is, however, within the remote possibility that one of the very few individuals bearing the sur name "Pecci" elsewhere in the world who may well be married and has sired a male child upon whom the forename "Marco" has been conferred. That being the case the matter is subject to the de minimis rule from which it follows that the Regis trar did not have before him any suitable evidence of the existence of a person bearing the name of "Marco Pecci".
Judson J. in the Coles Book Stores case (supra) pointed out that the wording of paragraph 12(1) (a) was introduced into Canadian legislation for the first time in 1953 and was a direct copy of the United States legislation of 1946. The law in the United States and in Canada as to the inter pretation and applicable tests is identical as is to be seen in comparable decided cases.
For that reason I pay deference to decisions in the United States.
In re Mangel Stores Corporation (165 USPQ 22 (1970)), which was an appeal from an examin er of Trade Marks to the Patent Office Trade marks Trial and Appeal Board comprised of a panel of three members, the examiner had refused registration of the word "Presscott" as a trade mark on the ground that it is primarily merely a surname.
In this respect the examiner said [at page 22]:
"PRESCOTT" is a common surname and adding an addi tional "s" thereto does not change the sound or the significance of the name, nor does it change the appearance thereof to any substantial degree. It has the impact of a surname, and it is believed it would be recognized primarily and merely as a surname by the purchasing public.
To this the Appeal Board replied [at same page] :
The question of whether or not applicant's mark "PRESS- COTT" is a surname is one of fact, and it is not enough for an affirmative finding in this regard that it looks and sounds like a recognized surname. It is interesting to note, moreover, that the examiner at the oral hearing held in this case admitted that
after making an extensive search she was unable to find a single usage of "PRESSCOTT" as a surname.
The decision of the examiner was accordingly reversed [on that ground].
This result is in accord with the conclusion I have recorded.
For the foregoing reasons the appeal is allowed and the matter is referred back to the Registrar for the appropriate administrative action.
The appellant in its notice of appeal did not ask for costs nor did the Registrar in his reply. The solicitors for the parties did not do so in deference to the practice of which both were well aware of not awarding costs for or against the Registrar of Trade Marks in the Court of first instance on appeal. The practice may differ in the Appeal Division.
Since the successful party, which is the appel lant, did not ask for its costs there will be no award of costs against the Registrar.
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