T-5250-80
British American Bank Note Company Limited
(Appellant)
v.
Bank of America National Trust and Saving Asso
ciation, B A Cheque Corporation and B.A. Finan
cial Services Limited' (Respondents)
Trial Division, Cattanach J. Ottawa, May 19,
June 2, 3, 4, 1982; March 2, 1983.
Trade marks Appeal from Registrar's decision refusing
registration of trade mark used in connection with highly
specialized printing services — Registrar deciding mark
undistinctive and confusing, given previous use by respondents
of similar marks and names — First respondent's Canadian
business mostly marketing travellers cheques — Whether
appellant's mark confusing with mark or name previously
used or made known in Canada by respondents — Applicant
having unshifting onus of establishing right to registration and
that confusion unlikely — Opponent alleging prior use must
show trade reputation linked to potentially confusing mark —
Opponent's responsibility may shift and therefore burden of
proof — Trader cannot appropriate general words describing
business for trade name — General words indicate objects but
made distinctive by adding distinguishing feature — Appellant
disclaiming all words in mark, leaving only letters
Nonetheless must consider trade mark as whole re possibility
of confusion Opposition of second and third respondents
negated because appellant's date of first use preceding com
mencement of second's Canadian operations and incorporation
of third — S. 29 requiring only simple statement regarding
date of first use — Whether appellant's mark likely to pro
duce inference appellant's services provided by same person
supplying travellers cheques bearing first respondent's mark
— "Weak mark" if consists only of letters — Should be given
less protection — Small variations will prevent confusion —
First respondent's allegedly confusing mark attenuated by
subordination to other mark used concurrently — Cheques
marketed among travelling public while appellant's highly
specialized services supplied to certain groups who know
appellant Appeal allowed Trade mark must be used for
services of owner alone, even if another closely related -
"Single organization" concept referred to by Angers J. in Good
Humor case rejected, unless partnership — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 2, 6, 16, 29, 37(2) (b), (c), (d), (9) (as am.
by S.C. 1976-77, c. 28, s. 44), 49 — Trade Marks Regulations,
C.R.C., c. 1559, Schedule II, Form 1.
' The foregoing spelling of the corporate names of the
respondents has been adopted as being the most consistent
usage but there are variations throughout the material.
Judicial review — Statutory appeals — Appeal from Regis
trar's decision refusing registration of trade mark because
undistinctive and confusing, given previous use by respondents
of similar marks and names — Notwithstanding Act, Supreme
Court in Rowntree establishing Federal Court may overturn
Registrar's discretionary decision only if proceeded on wrong
principle or unjudicially — Registrar's assessment of likeli
hood of confusion adjudication on facts, not exercise of discre
tion — Court therefore having authority to overrule — Appeal
allowed — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 6,
16, 37(2)(b),(c),(d).
This was an appeal from the decision of the Registrar of
Trade Marks, who rejected the appellant's application for
registration of the trade mark THE B A BANK NOTE
GROUP. The appellant was engaged in the business of printing
highly specialized documents by a steel-engraving method. It
was one of seven companies that constituted The B A Bank
Note Group (the Group). Over the years, the appellant had
marked the material which it had printed with several variants
of its corporate name. There had been no real consistency in its
use of these inscriptions; nonetheless, since January 1, 1973, it
had used the mark in question as a trade mark, in connection
with its printing services. The three respondents opposed the
application for registration. The first of them, Bank of America
National Trust and Saving Association (BANTSA), had been
incorporated in the United States. It was the registered owner
of a U.S. trade mark composed of the letters "BA" and of those
letters in a stylized form, which trade mark appeared, together
with other marks, on "Bankamerica" travellers cheques. The
marketing of those cheques comprised the bulk, and perhaps
the whole, of BANTSA's business in Canada, even though it
described its objects as being those of a "full service national
bank". The second respondent, B A Cheque Corporation
(BACC), also incorporated in the United States, concerned
itself with the "marketing, distributing and servicing" of the
travellers cheques issued by BANTSA, but it did not engage in
these activities in Canada until well into 1973. B.A. Financial
Services Limited (BAFSL) was in the business of loaning
money. It was incorporated in Quebec in 1974, and like
BANTSA, it was a subsidiary of Bank American Corporation.
The Registrar upheld the opposition on both of the grounds
advanced by the respondents: namely, that the trade mark in
question was not distinctive of the appellant's wares or services,
given the respondents' previous use in Canada of similar,
though unregistered, trade marks and trade names; and that
the appellant was not the person entitled to registration,
because the mark in question was confusing with the marks and
names previously used by the respondents.
Held, the appeal should be allowed.
The key issue is whether the trade mark in question is
confusing with a trade mark or trade name previously used or
made known in Canada by the respondents. The appellant has
asserted that when the opposition to an application for registra
tion is based upon the previous use of a mark or name with
which the applicant's mark is allegedly confusing, the opponent
bears the onus of establishing a reputation in the trade in
association with a mark that is of the same character as the
applicant's mark. This view, however, is too simple. The appli
cant incurs the responsibility of establishing his right to regis
tration, and thus of showing that confusion is unlikely. This
responsibility never shifts from the applicant; therefore, it is an
onus. In contrast, the opponent who objects on the ground of
prior use has only a burden of proof: he does have to establish a
reputation linked to a potentially confusing mark, but this
obligation may shift. The applicant may rebut the proof sub
mitted by the opponent.
In choosing a corporate or trade name, no trader may
appropriate for its exclusive use general words descriptive of
the business in which it is involved. Words of that kind do serve
to indicate the trader's purposes and objects; nevertheless,
distinctiveness should be imparted to the name by supplement
ing the general words with some distinguishing feature.
At the direction of the Registrar, the appellant disclaimed
the words THE, BANK, NOTE and GROUP, because such
words are in the public domain and are available to all traders.
This leaves only the letters "B" and "A"; however, it is still the
trade mark as a whole which must be considered in determining
whether confusion with other trade marks might result.
In light of the date on which the appellant began to use its
trade mark, the opposition of BACC and BAFSL cannot be
maintained. BACC commenced its Canadian operations, and
BAFSL was incorporated, only after that date. Consequently,
their use in Canada of the trade names "B.A. Financial Ser
vices Limited" and "B A Cheque Corporation" could not have
occurred prior to the appellant's date of first use. The same
would be true in regard to BACC's or BAFSL's use or making
known of any trade mark incorporating the letters "B A".
The officer who heard the application did raise a question as to
the appellant's compliance with the section 29 requirements
concerning date of first use; nonetheless, section 29 obliges an
applicant to make only a simple statement in this regard, no
verifying affidavit being necessary, and the appellant has pro
vided the requisite statement.
With respect to the opposition of BANTSA, the issue in this
case reduces to whether the appellant's trade mark, used in
connection with its highly specialized printing services, is likely
to produce the inference that those services are provided by the
same person who supplies travellers cheques bearing the letters
`BA".
A trade mark which consists only of letters of the alphabet,
without the accompaniment of any distinguishing indicia, lacks
inherent distinctiveness. It is a "weak mark", and should not be
given protection as broad as that accorded a unique mark.
Comparatively small variations from this weak mark will suf
fice to prevent confusion, and the public may be expected to
exercise a greater degree of discrimination with regard to such
a mark.
On BANTSA's travellers cheques, the letters "BA", printed
in pale yellow against a darker yellow, form part of a subdued
background. They also appear in the borders and corners of the
cheques, but in very small type. Other words dominate: "Bank-
america Travelers Cheque" on some cheques; "Bank of Ameri-
ca" on earlier issues. While the additional inscription "B of A
Travelers Cheque" appears on one issue, this too is in type
much smaller than that of the dominant words. The "BA"
imprint is thus subordinated to the trade mark "Bankamerica",
and such subordination to another mark which appears concur
rently serves to attenuate the "BA" mark.
Furthermore, subsection 6(5) of the Act requires the Court
to consider the nature of the services associated with the
allegedly confusing trade marks. Thus, on the one hand,
BANTSA's travellers cheques are marketed among a large
group: that part of the general public which travels. On the
other hand, the services provided by the appellant consist of
highly specialized printing, and are supplied to certain groups
of technicians and professionals, who know precisely with
whom they are dealing.
Accordingly, the confusion objected to by BAFSL does not
exist.
If the Court's decision turned upon a point which was a
matter for the Registrar's discretion, its authority to overturn
the ruling of the Registrar might be open to question. Although
the Act says that the Court may exercise any discretion vested
in the Registrar, the decision of the Supreme Court of Canada
in Rowntree establishes that this Court may replace the Regis
trar's view with its own only if, in exercising his discretion, the
Registrar proceeded upon some wrong principle or failed to
exercise his discretion judicially. However, the Registrar's
assessment of the likelihood of confusion is an adjudication
upon facts, not the exercise of a discretion. Hence the Court
does have authority to overrule his judgment on that point.
The appellant must take great care to prevent its trade mark
from losing its distinctive characteristics. A trade mark must be
used to distinguish the services of its owner alone. The other six
companies involved in the Group might become registered users
of the trade mark, or they might have a contractual relation
ship with the appellant whereby they solicit and perform print
ing work on the appellant's behalf, but aside from such pos
sibilities, the use of a trade mark with respect to the services of
a company other than its owner constitutes infringement, even
if the user is a subsidiary of, or otherwise closely related to, the
owner. There is no place for the concept of a "single organiza
tion", referred to by Angers J. in the Good Humor case, unless
the seven companies in the Group have formed a partnership;
however, if that were so, the partnership, not simply the
appellant, would have applied for the registration.
CASES JUDICIALLY CONSIDERED
APPLIED:
Silhouette Products Limited v. Prodon Industries Ltd.,
[1965] 2 Ex.C.R. 500.
NOT FOLLOWED:
Good Humor Corporation of America v. Good Humor
Food Products Limited et al., [1937] Ex.C.R. 61.
DISTINGUISHED:
Rowntree Company Limited v. Paulin Chambers Com
pany Limited, [1968] S.C.R. 134.
CONSIDERED:
Re W & G du Cros Ltd.'s Application (1913), 30 R.P.C.
660 (H.L.); Benson & Hedges (Canada) Limited v. St.
Regis Tobacco Corporation, [1969] S.C.R. 192.
REFERRED TO:
Office Cleaning Services, Ld. v. Westminster Window
and General Cleaners, Ld. (1946), 63 R.P.C. 39 (H.L.),
affirming (1944), 61 R.P.C. 133 (C.A.); Eno v. Dunn
(1890), 15 App. Cas. 252 (H.L.).
COUNSEL:
P. D. Blanchard for appellant.
R. D. Gould for respondents.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Smart & Biggar, Ottawa, for respondents.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an appeal from a deci
sion of the Registrar of Trade Marks, dated Sep-
tember 18, 1980, the Registrar having acted
through a member of an opposition board as he is
authorized to do by subsection 37(9) of the Trade
Marks Act, [R.S.C. 1970, c. T-10, as am. by S.C.
1976-77, c. 28, s. 44,] whereby the appellant's
application for the registration of the trade mark
THE B A BANK NOTE GROUP was refused.
In doing so the Registrar maintained the opposi
tion thereto by the three respondents on the two
fold grounds that:
(1) the trade mark applied for was not distinctive
of the applicant's services, and
(2) the applicant (the appellant herein) was not
the person entitled to registration of the trade
mark.
That is an invocation by the Registrar of the
grounds for opposition set out in paragraphs
37(2)(c) and (d) of the Trade Marks Act with
overtones from paragraph 37(2)(b).
The opposition to the application for the regis
tration before the Registrar was and still is on
appeal: (1) that the trade mark is not distinctive of
the appellant's wares or services because of the use
of unregistered trade marks in Canada by one or
more of the respondents and of trade names fea
turing the letters of the alphabet "B" and "A" in
that sequence as both unregistered trade marks
and trade names; and (2) that the appellant is not
the person entitled to registration because of such
prior use by one or other of the respondents.
The basis of the ground of opposition in the
second contention is that contained in section 16 of
the Act.
By paragraphs 16(1)(a) and (c) an applicant for
the registration of a trade mark that has been used
or made known in Canada by the applicant or his
predecessor in title in association with wares or
services is entitled to registration of the trade mark
in respect of such wares or services unless on the
date of first use or making known of the trade
mark it was confusing with:
(1) a trade mark that had been previously used in
Canada or made known in Canada by any other
person, or
(2) a trade name that had been previously used in
Canada by any other person.
This second contention must also be read with
the definition of "confusing" in section 2 of the
Trade Marks Act which reads:
2....
"confusing" when applied as an adjective to a trade mark or
trade name, means a trade mark or trade name the use of
which would cause confusion in the manner and circum
stances described in section 6;
Because of the inclusion in the definition of
"confusing" of section 6 by reference, section 6 is
reproduced in its entirety:
6. (1) For the purposes of this Act a trade mark or trade
name is confusing with another trade mark or trade name if the
use of such first mentioned trade mark or trade name would
cause confusion with such last mentioned trade mark or trade
name in the manner and circumstances described in this
section.
(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.
(3) The use of a trade mark causes confusion with a trade
name if the use of both the trade mark and trade name in the
same area would be likely to lead to the inference that the
wares or services associated with the trade mark and those
associated with the business carried on under such trade name
are manufactured, sold, leased, hired or performed by the same
person, whether or not such wares or services are of the same
general class.
(4) The use of a trade name Causes confusion with a trade
mark if the use of both the trade name and the trade mark in
the same area would be likely to lead to the inference that the
wares or services associated with the business carried on under
such trade name and those associated with such trade mark 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;
(e) 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.
Subsections 6(2) and 6(3) are pertinent in that
confusion is caused between one trade mark and
another and between a trade mark and a trade
name in both subsections if the use of both trade
marks and a trade mark and a trade name
in the same area would be likely to lead to the inference that
the wares or services associated [with such trade marks in the
case of trade marks and in the case of a trade name the wares
or services associated with the business carried on under the
trade name] are manufactured, sold, leased, hired or performed
by the same person, whether or not such wares or services are
of the same general class.
I revert to the first contention that the trade
mark sought to be registered by the appellant was
not "distinctive" because of the use and making
known of unregistered trade marks and trade
names in Canada by the respondents as an objec
tion to the appellant's application in the light of
paragraph 37(2)(d), to which prior reference was
made and which reads:
37....
(2) Such opposition may be based on any of the following
grounds:
(d) that the trade mark is not distinctive.
Paragraph 37(2)(d) must be read in conjunction
with the definition in section 2 of the Act which is
as follows:
2....
"distinctive" in relation to a trade mark means a trade mark
that actually distinguishes the wares or services in association
with which it is used by its owner from the wares or services
of others or is adapted so to distinguish them;
The appellant is a joint stock company incorpo
rated by statute in 1866, a year prior to Confed
eration in 1867, under the name of British Ameri-
can Bank Note Company with head office at
Montreal, Quebec and has been engaged in the
printing of steel-engraved documents since that
date.
The explanation of the selection of the name
was that the engravers employed were citizens of
the United States of America, popularly called
Americans even at that time, and the printers
employed were of British Anglo-Saxon stock.
In 1909 the appellant company elected to
become subject to the predecessor statute to the
Canada Corporations Act, [R.S.C. 1970, c. C-32,]
as if incorporated thereunder, and accordingly the
corporate name became British American Bank
Note Company Limited. The change was the addi
tion of the concluding word "Limited" in full as
part of the corporate name, the use of that word or
alternatively its abbreviation "Ltd." being manda
tory under the statute then in effect.
In corporate names the use of general words
descriptive of the business in which the company is
engaged cannot be monopolized by one trader just
as is the case with trade marks. If such is done the
protection offered to such a corporate or trade
name is negligible. The general words descriptive
of the business should be made distinctive by the
use of a distinguishing feature (see Office Clean
ing Services, Ld. v. Westminster Window and
General Cleaners, Ld. (1946), 63 R.P.C. 39
[H.L.]).
But the use of general words descriptive of a
business in conjunction with a distinguishing prefix
serves as an indication of the purposes and objects
for which a company so named has been incorpo
rated to carry on.
Also indicative of the business in which the
appellant is engaged are the wares and services
with which the trade mark, THE B A BANK NOTE
GROUP, is associated as set forth on the application
for registration dated February 10, 1977, amended
on December 7, 1977, and further amended on
February 14, 1978. The services are therein
described as follows:
Printing services, namely, the printing of currency, stock cer
tificates, bonds, stamps, lottery tickets, debentures, annual
reports, prospectuses, trust deeds, proxies and banking forms.
The corporate name and the services which the
appellant provides are a clear indication of the
business in which the appellant is engaged, that is
to say the printing of highly specialized documents
by a steel-engraving method to provide the utmost
security in the resultant documents with every
precaution taken to prevent counterfeiting and
ensure durability by the use of high-quality paper,
as well as intricate design and the like.
On application for registration of the trade
mark, THE B A BANK NOTE GROUP, the words
THE, BANK, NOTE and GROUP were disclaimed at
the direction of the Registrar because such words
are in the public demesne to be available to all
traders, leaving only the letters of the alphabet B
and A as not being in that category.
While all words in the trade mark applied for
have been disclaimed, nevertheless it is the trade
mark, THE B A BANK NOTE GROUP, as a whole and
in its entirety that must be considered in determin
ing the possibility of confusion with other trade
marks.
In the application dated February 10, 1977 for
registration of this trade mark, the appellant
stated that the mark "had been used in association
with the services described therein," that is print
ing services particularly the printing of currency,
stock certificates, bonds, stamps, debentures and
the like since January 1, 1973.
This date of first use is not made an issue in the
pleadings but it was raised by the hearing officer
of the opposition board in his reasons when he said
"[the] applicant's [the appellant herein] own evi
dence opens the question as to whether the appli
cant has indeed satisfied the provisions of section
29 in respect of its date of first use".
By virtue of section 29 an applicant for registra
tion of a trade mark shall file an application the
content of which is specified in the section and in
the form of application (Form 1) in the Trade
Marks Regulations, [C.R.C., c. 1559, Schedule
II]. All that is required is a statement that the
trade mark "has been used" in association with the
services provided since a date to be specified. That
information is not required to be verified by
affidavit.
That being so the applicant for registration
would be entitled to registration of the trade mark
applied for if registration were not precluded
otherwise.
In the present instance registration as a matter
of course is impeded by the opposition under sec
tions 16 and 37 quoted above.
The issues so raised and in my view the crux of
the present appeal is whether the trade mark, THE
B A BANK NOTE GROUP, sought to be registered is
confusing with a trade mark previously used or
made known in Canada by the respondents or a
trade name used by the respondents in Canada.
The appellant filed affidavit evidence which
establishes a variety of devices used over its busi
ness history to identify the source of its highly
specialized printed material.
The letters "B A" were used on excise stamps
printed in 1934 for use by the Federal government
and die proofs on which the letters "B A B N" are
displayed.
The words and letters "B A Bank Note Co."
and "B A Bank Note" are printed on interest
coupons attached to Government bonds on the face
of which is printed the corporate name of the
appellant, "British American Bank Note Company
Limited" and the legend, "Printed in Canada B A
Bank Note Ottawa".
Also used are such expressions as "Engraved B
A Bank Note Co.", "BABN Co. Ltd." and "B A
Bank Note Group".
This, at the most, demonstrates that over the
years a plethora of variations of the appellant's
corporate name designed in some way to identify
the source of its printed material in an abbreviated
form without real consistency other than the use of
the letters "B A", `BABN" and the words "Bank
Note" in conjunction with the letters "B A".
The respondent Bank of America National
Trust and Savings Association was incorporated
under the laws of the United States of America
pertaining to national banking on November 30,
1930, with head office in San Francisco, Cali-
fornia, U.S.A. and is a wholly-owned subsidiary of
Bank American Corporation.
The purposes and objects of this particular
respondent are described as those of a "full service
national bank" (whatever that means) in the State
of California and other "specialized services"
referred to, and with particular reference to
Canada are the marketing of travellers cheques; 2
otherwise its activities are the provision of banking
services which must, of necessity, be very special
ized and limited in Canada.
The respondent B.A. Financial Services Limited
is a joint stock company incorporated pursuant to
the laws of the Province of Quebec by letters
patent dated October 30, 1974. Having been so
incorporated its head office must be situate in that
province. It may have a place of business in other
provinces. To swear that it has "a principal place
of business" at 11 King Street West, Toronto,
Ontario is a misapprehension of terminology by
the affiant who applies foreign concepts to Canadi-
an corporations.
Whatever purposes and objects this company
has been authorized to carry on are those implicit
in its corporate name, that is the business of
supplying "financial services" to prospective
customers.
It provides credit and loans to enterprises in
need thereof in exchange for payment of interest
on such loans.
This company is also a wholly-owned subsidiary
of the Bank American Corporation which is the
source of its funds to be laid out either on long or
short terms.
The third respondent is B A Cheque Corpora
tion, incorporated under the laws of the State of
Delaware, one of the United States of America, on
October 27, 1972. This respondent engaged in the
business of "marketing, distributing and servicing
of travellers cheques"—that is, those issued by the
first respondent.
z Note the word "travellers" as it precedes the word
"cheques" is so spelled to conform with the preferred spelling in
this jurisdiction although in the specimen forms and other
material filed by the respondents the version prevalent in the
United States ("travelers cheques") is consistently used, except
that in The Living Webster the words are spelled "traveler's
cheques".
This respondent did not begin to "market, dis
tribute and service" BANKAMERICA travellers
cheques in Canada until well into 1973.
There is no question that the business engaged
in by B.A. Financial Services Limited differs
widely from that of the appellant, as too does the
business engaged in by B A Cheque Corporation.
Despite this, accepting as I do the premise that
the appellant first used the trade mark THE B A
BANK NOTE GROUP on January 1, 1973 it follows
that any use of the trade names "B.A. Financial
Services Limited" and "B A Cheque Corpora
tion", or use by these entities of the letters "B A"
in a context other than in their trade names, was
well subsequent to the use of the trade mark
registration of which was applied for by the
appellant.
Thus the trade names of those two respondents
or any trade-mark use by them of the letters "B
A" was not previous to the use by the appellant
nor could any trade mark have been previously
made known by them.
Therefore such use, being subsequent to that by
the appellant, cannot constitute an obstacle to
registration of the appellant's trade mark as con
trary to section 16 of the Trade Marks Act.
There thus remains the opponent to the appel
lant's application for registration of THE B A BANK
NOTE GROUP as a trade mark, Bank of America
National Trust and Savings Association, which
conducts a "full service" banking business in the
United States. Perhaps it conducts some interna
tional banking business in Canada but the evi
dence is overwhelming that its business in Canada
is in travellers cheques which it markets through
the branches of chartered banks across Canada in
denominations of $10, $20, $50, $100, $500 and
$1,000.
This respondent is the registered owner of the
Canadian trade marks of BANK OF AMERICA and
BANKAMERICARD.
The Registrar of Trade Marks in the reasons for
his decision now under appeal said with respect to
these trade marks that he rejected the opposition
based thereon:
... because there is nothing in the evidence to suggest any
likelihood of confusion between the trade mark applied for and
the registrations held by the opponents.
I am in complete agreement with the Registrar's
conclusion in this respect and that finding by him
has not been the subject of appeal.
The Bank of America National Trust and Sav
ings Association is also the registered owner of a
trade mark in the United States consisting of the
letters "B A" and of those letters in a stylized
form. It does not appear to be the registered owner
of a trade mark of "B of A" but that device has
been utilized by it upon its travellers cheques.
There have been introduced in evidence fac
similes of BANKAMERICA travellers cheques mar
keted in Canada by this respondent.
On the face of the instrument the words
"BANKAMERICA TRAVELERS CHEQUE"
predominate.
On prior issues, some of which are still in circu
lation, the words BANK OF AMERICA predominate.
This particular issue also displayed the words in
much smaller type "B of A TRAVELERS
CHEQUE".
Worked into the paper upon which the travellers
cheques are printed, which is pale yellow in colour,
are the letters "BA" in a design form printed in a
darker yellow. This forms the subdued background
and appears to me to be in the nature of
water-marks.
In the borders and in the corners the design
formed by the letters "BA" appears in very small
type.
Of course this same device is also worked into
the paper upon which the banking instruments
essential to carrying on a full service bank, such as
letters of credit and the like, are printed.
Counsel for the appellant has contended that
when an opponent to the registration of a trade
mark applied for relies on prior use of a trade
mark or trade name with which the mark applied
for is confusing, the onus lies upon the opponent to
establish a reputation in the trade in connection
with a mark of the same character.
In my view that stark statement is much too
simplified.
The onus is upon an applicant for the registra
tion of a trade mark to establish his right thereto
and that onus is constant upon him (see Eno v.
Dunn (1890), 15 App. Cas. 252 [H.L.]) and that
includes the onus of showing that confusion is
unlikely.
But before an opponent can base an objection on
prior use under section 16, the opponent must
establish a reputation in the trade under a style
with which confusion may result. That to me is not
an onus but a burden of proof. An onus never
shifts but a burden of proof does. The applicant
may rebut the proof proffered by the opponent.
Shorn of all subtleties this appeal, in my view,
falls to be determined upon the crucial issue
whether the trade mark THE B A BANK NOTE
GROUP applied for by the appellant for use in
association with highly specialized printing ser
vices would likely lead to the inference that those
services are provided by the same person who
supplies travellers cheques upon which the letters
"BA" appear.
From Lord Shaw's decision, in Re W & G du
Cros Ltd.'s Application (1913), 30 R.P.C. 660
[H.L.], a trade mark consisting only of letters of
the alphabet, without any accompanying distinc
tive indicia, is a trade mark that lacks inherent
distinctiveness. Accordingly such a trade mark is
characterized as a "weak mark".
In short, where a trader has appropriated letters
of the alphabet and seeks to prevent others from
doing the same thing, the range of protection to be
given that trader should be more limited than in
the case of a unique trade mark and comparatively
small differences are sufficient to avert confusion
and a greater degree of discrimination may fairly
be expected from the public in such instances (see
remarks concerning trade names in Office Clean
ing Services, Ld. v. Westminster Window and
General Cleaners, Ld. (1944), 61 R.P.C. 133
[C.A.] at page 135).
The appellant's trade mark is THE B A BANK
NOTE GROUP as contrasted with the use of the
first-named respondent in the style of cause of the
letters "BA", a design formed by these letters and
"B of A" in rarer instances. All words in the
appellant's trade mark have been disclaimed
except the letters B A but that does not detract
from the fact that the trade mark must be looked
at in its entirety.
Added to this the use by the first-named
respondent of the letters "BA" and in its stylized
form upon travellers cheques, which constitute the
bulk of its business in Canada, is issued in con
junction with its trade mark BANKAMERICA in a
very prominent position. The letters "BA" are
used as background and as such fade into relative
insignificance.
Noël J. has said in Silhouette Products Limited
v. Prodon Industries Ltd., [1965] 2 Ex.C.R. 500, a
trade mark is somewhat diluted and attenuated by
simultaneous use, one of which is subservient to a
more dominant trade mark. The use of "BA" is
certainly subjected to the trade mark, BANK-
AMERICA.
I have reproduced at the outset subsection 6(5)
of the Trade Marks Act in which factors to which
regard shall be had in determining if one trade
mark is confusing with another are set out, para
mount amongst which is the nature of the services
and the business or trade.
Regard must be had to the class of services to
which the trade mark is applied.
Bearing those considerations in mind the
travellers cheques marketed by the first respondent
are directed to the travelling public at large and
are widely available. The purchaser is one who is
taking a trip and wishes to conserve his funds in a
manner affording security to him.
On the other hand the appellant provides highly
specialized printing services, currency for foreign
governments, bonds, debentures, share certificates
and like investment securities. Its services are sup
plied to technical and professional people such as
those floating issues of stocks and bonds. That
being so those people know precisely with whom
they are dealing and any risk of confusion is most
remote.
It is for the foregoing reasons that I disagree
with the conclusion reached by the member of the
opposition board that the trade mark applied for
by the appellant is confusing with the initials,
"BA", as used by the first respondent.
In so concluding I do so on the authority of the
decision of the Supreme Court of Canada in
Benson & Hedges (Canada) Limited v. St. Regis
Tobacco Corporation, [1969] S.C.R. 192, which is
based upon the function the Registrar was per
forming in the matter under review.
While the Trade Marks Act provides that on
appeal the Court may exercise any discretion
vested in the Registrar, Ritchie J. said in Rowntree
Company Limited v. Paulin Chambers Company
Limited, [[1968] S.C.R. 134,] that this is not to be
taken as meaning that the Court is entitled to
substitute its view for that of the Registrar unless
it could be shown that he proceeded upon some
wrong principle or that he failed to exercise his
discretion judicially.
But when the Registrar arrives at a decision on
the question of the likelihood of confusion he is
deciding a question of fact and is exercising a
function of adjudication and not of discretion.
In differing with the decision of the Registrar in
this case I am differing from him on a point which
is a matter of adjudication upon the facts and not
a matter of the exercise of a discretion.
This being so the Supreme Court was unani
mous in its decision that the appellate Court can
substitute its judgment for that of the Registrar.
There was one matter which arose incidentally
in the course of the hearing and upon which I did
not have a full factual explanation nor argument
thereon.
In a brochure appended to an affidavit THE B A
BANK NOTE GROUP was described as consisting of
seven corporate entities listed as follows:
1. British American Bank Note Company Limited
(the appellant herein and the applicant for the
registration of that trade mark),
2. Atlantic Banknote Limited,
3. Yvon Boulanger Limited,
4. The Franklin Press Limited,
5. Winnipeg Banknote Company Limited,
6. Alberta Security Printing, and
7. Security Printing Corporation Ltd.
In my view a trade mark must be used only to
distinguish the services of the owner of the trade
mark and it is infringement to use it for the
services of a closely related company, even the
subsidiary of the registered owner of the trade
mark.
It is possible that should the appellant become
the registered owner of the trade mark the other
six companies might become registered users
thereof under section 49 of the Trade Marks Act
provided always that they qualify to do so.
It may also be that the six other companies have
entered into a contractual relationship with the
appellant to solicit printing business on its behalf
and perhaps to accept on a farm-out basis that
printing obtained by the appellant which it cannot
fulfil itself.
I do not accept the concept of a "single organi
zation" such as conceived by Angers J. in the
Good Humor case [Good Humor Corporation of
America v. Good Humor Food Products Limited
et al.] [1937] Ex.C.R. 61 (at page 74) unless there
is a partnership of all seven companies in the
Group in which instance the partnership would be
the applicant for registration and not the
appellant.
I mention this matter in passing to alert the
appellant to the extreme care to be exercised to
prevent the trade mark from losing its distinctive
characteristics essential to a valid trade mark, a
matter I am not called upon to decide nor do I
decide.
For the foregoing reasons the appeal is allowed
and the appellant shall be entitled to its taxable
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.