A-603-86
Mr. Submarine Limited (Appellant) (Plaintiff)
v.
Amandista Investments Limited carrying on busi
ness as Mr. Subs'N Pizza and Mr. 29 Minite
Subs'N Pizza (Respondent) (Defendant)
INDEXED AS: MR. SUBMARINE LTD. V. AMANDISTA INVEST
MENTS LTD.
Court of Appeal, Thurlow C.J., Urie and Desjar-
dins JJ.—Halifax, November 25; Ottawa, Decem-
ber 16, 1987.
Trade marks — Infringement — Appellant registered owner
of trade mark "Mr. Submarine" — Denied injunction to
prevent respondent from using trade marks "Mr. Subs'N
Pizza" and "Mr. 29 Minite Subs'N Pizza" — Infringement
claim based on ss. 19 and 20 Trade Marks Act — Right of
action for infringement based on taking of part of registered
mark not maintainable under s. 19 alone — Must arise, if at
all, under s. 20 or 22 — No taking or use by respondent of
appellant's mark — Marks manifestly similar in some
respects — Likelihood of confusion — Appeal allowed.
The appellant, registered owner of the trade mark "Mr.
Submarine", specializes in the sale of submarine sandwiches. It
sought, but was denied, an injunction to prevent the defendant
from using the trade marks "Mr. Subs'N Pizza" and "Mr. 29
Minite Subs'N Pizza" in relation to the sale of submarine
sandwiches and pizza. The facts show that the appellant's mark
has been used and advertised extensively, that its business
focusses on walk-in trade while that of the respondent focusses
on telephone orders, and that both businesses have been operat
ing since 1976 in the Halifax-Dartmouth area. The appellant
submits that by using "Mr. Subs" as part of its trade mark, the
respondent has taken an essential element of the appellant's
trade mark, thereby infringing section 19 of the Trade Marks
Act which gives to the owner of a registered trade mark the
exclusive right to the use of that mark. The appellant also
submits that the Trial Judge erred in finding that the respond
ent's marks were not confusing with those of the appellant.
Held, the appeal should be allowed.
The appellant's submission that its exclusive right has been
infringed by the respondent on the basis of section 19 alone is
rejected. It would appear that only the taking of a trade mark
as registered can maintain an action based solely on section 19,
without reference to any likelihood of confusion (section 20) or
depreciation of goodwill (section 22). A right of action based on
the taking of a part of the registered mark or on the use of a
similar trade mark must arise, if at all, under section 20 or 22.
Support for this view could be found in the reasoning of Noël J.
(as he then was) in Schaeren, (Mido G.) and Co. S.A. v.
Turcotte et al., [1965] 2 Ex.C.R. 451. That issue was not
finally determined since it was clear from the facts of the case
that the trade mark "Mr. Submarine" had neither been taken
nor used by the respondent.
The Trial Judge was wrong in emphasizing the differences
between the trade marks rather than considering their similari
ties from the point of view of a consumer with an imperfect
recollection of the appellant's mark or business. The Trial
Judge also erred in taking into account the parties' different
business systems (telephone and delivery system as opposed to
walk-in trade), and the fact that the respondent's business is
predominantly that of selling pizza. Furthermore, he should not
have taken into account the style of lettering, the colouring of
the signs and the appearances of the marks on signs, boxes, etc.
The latter are relevant considerations in a passing off action.
They are irrelevant in a proceeding for infringement of a
registered trade mark. They should be given no weight in
determining the issue of confusion.
Reference was made to subsection 6(5) of the Act to deter
mine the issue of likelihood of confusion. Although no instance
of actual confusion had come to light, it was nevertheless found
that the use of the marks in the same geographical area was
likely to lead to the conclusion that the marks are in some way
associated with one another. While the degree of resemblance
between the marks is small when the marks are considered as a
whole, there are respects in which they are manifestly similar,
in particular in the combination of "Mr." with "Submarine"
and "Mr." with "Subs". They have partial similarity in appear
ance, whether written or printed, in sound, and in ideas sug
gested by them. All the marks suggest a business in which
submarine sandwiches are sold. Both "Mr. Submarine" and the
respondent's marks depend for their distinctiveness in whole or
in part on the association of a word meaning a submarine
sandwich with the courtesy title "Mr.". The respondent is
enjoined from using the word "Mr." in association with the
word "submarine" or "subs" or any other word suggestive of
submarine sandwiches.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 6(1),(2),
(4),(5), 19, 20.
CASES JUDICIALLY CONSIDERED
APPLIED:
Schaeren, (Mido G.) and Co. S.A. v. Turcotte et al.,
[1965] 2 Ex.C.R. 451.
DISTINGUISHED:
Saville Perfumery Ld. v. June Perfect Ld. and Wool-
worth (F.W.) & Co. Ld. (1941), 58 R.P.C. 147 (H.L.).
AUTHORS CITED
Fox, H. G. The Canadian Law of Trade Marks and
Unfair Competition, 3rd ed. Toronto: The Carswell
Company Limited, 1972.
COUNSEL:
Gregory A. Piasetzki and Robert Wilkes for
appellant (plaintiff).
William M. Leahey and Craig R. Berryman
for respondent (defendant).
SOLICITORS:
Rogers, Bereskin & Parr, Toronto, for appel
lant (plaintiff).
Burton, Lynch, Armsworthy, Ward &
O'Neill, Halifax, for respondent (defendant).
The following are the reasons for judgment
rendered in English by
THURLOW C.J.: This appeal is from a judgment
of the Trial Division [(1986), 9 C.I.P.R. 164; 11
C.P.R. (3d) 425; (1987), 6 F.T.R. 189] which
dismissed the appellant's action for infringement
of three registered trade marks.
The issue in the appeal is whether the learned
Trial Judge erred in failing to find infringement
either by the taking and using of an essential part
of the appellant's registered trade marks or by
using a trade mark or trade name that is confusing
with the appellant's marks. On the first point the
appellant relied' on section 19 of the Trade Marks
Act [R.S.C. 1970, c. T-10] and on the second on
section 20. The validity of the appellant's registra
tions is not in issue.
The sections referred to provide:
19. Subject to sections 21, 31 and 67, the registration of a
trade mark in respect of any wares or services, unless shown to
be invalid, gives to the owner the exclusive right to the use
' At the opening of the trial counsel stated that the appellant
was not relying on section 7 or on section 22 of the Trade
Marks Act.
throughout Canada of such trade mark in respect of such wares
or services.
20. The right of the owner of a registered trade mark to its
exclusive use shall be deemed to be infringed by a person not
entitled to its use under this Act who sells, distributes or
advertises wares or services in association with a confusing
trade mark or trade name, but no registration of a trade mark
prevents a person from making
(a) any bona fide use of his personal name as a trade name,
or
(b) any bona fide use, other than as a trade mark,
(i) of the geographical name of his place of business, or
(ii) of any accurate description of the character or quality
of his wares or services,
in such a manner as is not likely to have the effect of depreciat
ing the value of the goodwill attaching to the trade mark.
As no issue was taken as to the facts as found by
the learned Trial Judge, it will be convenient to
repeat her summary of them [at pages 165-167
C.I.P.R.; 426-428 C.P.R.; 190-192 F.T.R.]:
The plaintiff seeks an injunction to prevent the defendant using
the trade marks "MR. SUBS'N PIZZA" AND "MR. 29
MIN. SUBS'N PIZZA". The plaintiff is the registered owner
of the trade mark MR. SUBMARINE, registered December
29, 1972 for use in relation to sandwiches (registration No.
187,539) and registered September 26, 1975 for use in relation
to services connected with the operation of restaurants, or the
counselling and assisting of others in the operation of restau
rants (registration No. 209,714). The first registration was
based on use in Canada at least as early as March 15, 1968, the
second on use from October 1, 1971. The plaintiff also holds a
design registration dated September 1, 1978. It shows the trade
mark MR. SUBMARINE in "Cooper Block" lettering dis
played in a horizontal format similar to its appearance above. It
is registered in relation to sandwiches, cooked or prepared
meats such as salami, the operation of restaurants and the
counselling and assisting of others in the operation of
restaurants.
The plaintiff's business specializes in the sale of submarine
sandwiches: an oversized elongated bread roll which is filled
with various combinations of meats, vegetables and sauces. The
term "submarine" and its diminutive "subs" are generic terms
used to describe this particular type of sandwich.
The plaintiff commenced business, with one location, in
Toronto in 1968. By 1975 there were 78 locations: 48 in the
Toronto area, 24 in Ontario but outside the Toronto area, 5 in
Western Canada, 1 in Quebec and none in the Atlantic prov
inces. Some of the stores were owned and operated by the
plaintiff itself; most, however, were franchise operations.
In 1975 a Mr. Murphy began operating a "subs and pizza"
business in Dartmouth, Nova Scotia, at a Windmill Road
location. This was eventually to become what is now the
defendant's business. The business was run under the name
"subs and pizza". It concentrated on delivering those products
to customers in response to telephone orders. Some time after
1975 but before 1977 the name was changed to MR. SUBS 'N
PIZZA because the Nova Scotia Companies Branch refused to
register, as the name of a business, the words "subs and pizza"
by themselves; both those words are generic. At approximately
the same time that the defendant started calling its business
MR. SUBS 'N PIZZA the plaintiff opened a Mr. Submarine
franchise on Main Street, in Dartmouth. The two stores are
and were approximately 3 miles apart.
It is unclear as to exactly when the name MR. 29 MINITE
(Sometimes MIN., sometimes MINIT) SUBS'N PIZZA was
adopted but it is clear that by at least 1981 both that and the
earlier name, MR. SUBS'N PIZZA, were being used in con
nection with defendant's Windmill Road business. In 1983 the
defendant opened a second store, at a Quinpool Road location,
in Halifax; a third and fourth were opened in 1985. One of
these is located at the Woodlawn Shopping Centre in Dart-
mouth, three-quarters of a mile distant from the plaintiff's
Main Street location.
The plaintiff, at the present time, continues to have only one
franchise location in the Halifax-Dartmouth area, that on Main
Street, although several other locations (Herring Cove and
Quinpool Road) would appear to have been in operation during
the years 1980 to 1983. On a country-wide basis the plaintiff
now has 234 locations: 73 in the Toronto area; 98 in Ontario
but outside the Toronto area; 51 in Western Canada; 6 in
Quebec and 6 in the Atlantic provinces (4 of these are in St.
John's, Newfoundland, 1 in Saint John, New Brunswick and 1
at the Main Street location in Dartmouth). In general the
plaintiff's stores do not deliver the food products they sell to
customers. Certainly the Dartmouth operation does not do so.
The plaintiff's business is that of selling submarine sandwiches,
beverages, etc. to walk-in customers.
As noted above the bulk of the defendant's business comes
through telephone orders, not from walk-in trade. The focus of
its business is on the speedy delivery of the items ordered. This
explains the significance of the "29 min." element of the
defendant's trade mark. The defendant promises to deliver an
order within 29 minutes from the time at which the telephone
order is received. The sale of pizza is a much more significant
part of the defendant's business than is the sale of submarine
sandwiches. About 70 to 75 per cent of the revenue of the
defendant's business comes from the sale of pizza.
It is common ground that the plaintiff's registration gives it
the exclusive right, throughout Canada, to the use of its mark
in association with the wares and services described in the
registration: s. 19 of the Trade Marks Act, R.S.C. 1970, c.
T-10. An infringement of that right occurs when a person uses
a trade name or a trade mark which causes confusion with the
registered mark.
Further facts which appear from the evidence
and which were stressed by the appellant were that
the trade mark "Mr. Submarine" has been used
and advertised extensively and has become very
well known particularly in Toronto and the rest of
Ontario and in Western Canada, that sales of
sandwiches and drinks by the appellant and its
licensees using the trade mark amounted in 1985
to some $58,000,000 and that the Mr. Murphy
who began operating the "subs and pizza" business
in Dartmouth in 1975 knew of "Mr. Submarine"
when in that year he adopted the trade name and
trade mark "Mr. Subs'N Pizza".
The appellant's first submission was that, by
using "Mr. Subs" as part of its trade mark or
trade name, the respondent had taken "an actual
or substantial copy of the appellant's trade mark"
or "an essential element" of it, that it has thereby
infringed the exclusive rights conferred by section
19 and that in such a case it is unnecessary to
show a likelihood of confusion. Simply put, the
submission is that liability follows from the
respondent having done without permission what
the appellant had the exclusive right to do.
In support of the submission counsel referred to
the following passage from the third edition of The
Canadian Law of Trade Marks and Unfair
Competition 2 but conceded that there is no
Canadian case law to support it.
The taking of an actual or substantial copy of the plaintiffs
mark is the easiest method by which infringement may be
shown. In such case the plaintiff proves his case by the produc
tion of his certificate of registration under s. 53 of the Act.
Section 19 gives him the exclusive use of such mark and s. 20
prohibits infringement. It is unnecessary to show that actual
deception of customers has taken place or that the use is
calculated to deceive. Where the action is based upon appro
priation of the plaintiffs mark as registered the plaintiffs
action is based on the infringement of his property right and
2 Fox, The Canadian Law of Trade Marks and Unfair
Competition, (3rd ed., 1972), at pp. 374-375.
upon the provisions of s. 19 of the Act, giving to the owner of a
registered trade mark "the exclusive right to the use throughout
Canada of such trade mark". There is no necessity for proving
probability of deception but only that the trade mark or a
similar trade mark has been used without authorization.
Where the trade marks and the wares of the parties are
identical it is not necessary to refer to the catalogue of factors
in s. 6 of the Act for the purpose of determining the issue of
"confusing". It may be noted in passing that the statute law has
adopted the criterion of the common law on this particular
point. In every case of infringement except that of mere
copying, there must be either deception in fact or the reason
able probability of deception. Even copying of parts of a mark
will not amount to infringement unless there is such a resem
blance as to make the copy a confusing mark although it is a
matter to be considered in arriving at a decision. [Emphasis
added.]
The authority cited by the learned author for
what I have italicized is Saville Perfumery Ld. v.
June Perfect Ld. and Woolworth (F. W.) & Co.
Ld., 3 a case that turned on the effect of amend
ments to the English statute law made in 1938, the
language of which, at least on the point under
consideration, differs materially from that of the
Canadian statute though perhaps not materially in
the end result. It refers to infringement by the use
of an identical mark or a mark so nearly resem
bling it as to be likely to deceive or cause confu
sion. I have not been able to discern in the reason
ing of Sir Wilfrid Greene in that case any support
for the italicized portion of the learned author's
sentence either in the English or the Canadian law.
It will be observed that the author first refers to
the appropriation of the trade mark "as regis
tered" as giving rise to a right of action based on
the infringement of the exclusive property right
conferred by section 19 but that in the next sen
tence what is referred to is expanded to include the
taking of "the trade mark or a similar trade
mark".
This expansion appears to me to be at variance
with both what had been said earlier in referring
to the taking of the trade mark "as registered" and
in what follows in the paragraph, and to have no
basis in section 19. The extent of the exclusive
3 (1941), 58 R.P.C. 147 (H.L.), at p. 161.
right given by section 19 is defined by the mark as
registered. The ambit of protection for it is
expanded by section 20 when what is done by
another is likely to cause confusion and by section
22 when what is done is likely to depreciate the
value of the goodwill attached to the trade mark.
If, indeed, a right of action for infringement arises
under section 19 on the taking of the registered
mark, without reference to any likelihood of confu
sion or of such depreciation, it seems to me that it
is only the taking of the mark as registered on
which such an action could be maintained and that
any right of action for infringement that the regis
tered owner may have in the taking of a part of the
registered mark or in the use of a similar trade
mark must arise, if at all, under section 20 or
possibly under section 22. Support for this view
may be found in the reasoning of Noël J. (as he
then was) in Schaeren, (Mido G.) and Co. S.A. v.
Turcotte et a1. 4 where, in an action for infringe
ment of the trade mark "Mido", registered for
clocks, watches and parts thereof, by the use of the
trade mark "Vido", Noël J. said [at pages
455-456]:
It seems clear that there was no infringement of the plain
tiffs trade mark in the sense that the defendants did anything
which only the plaintiff was entitled to do. Section 19 does not
give the plaintiff an exclusive right to use "VIDO" as a trade
mark in association with watches.
At the hearing the argument between the parties and the
only point at issue in connection with the infringement of
plaintiffs rights, as well as the evidence presented, was limited
to the single question of whether, as a consequence of s. 20 of
the Trade Marks Act, the trade mark "VIDO" is deemed to be
an infringement of the plaintiff's trade mark "MIDO".
It accordingly appears that the only point to be decided is
whether the plaintiffs registered mark should be regarded as
having been infringed pursuant to s. 20 when the defendants
sold their watches in association with the trade mark "VIDO".
The answer to this question will depend on the answer I give to
another question, namely whether the trade mark "VIDO" is,
in relation to the trade mark "MIDO", a trade mark "creating
confusion" within the meaning of the phrase used in s. 20.
4 [1965] 2 Ex.C.R. 451.
In the result the use of "Vido" was held to be
confusing with "Mido" and thus to infringe the
plaintiff's rights.
Assuming, without deciding, that an action for
infringement may be based on section 19 alone, on
the facts of this case it is apparent that the trade
mark "Mr. Submarine" has not been taken or used
by the respondent. Accordingly I would reject the
appellant's submission that on the basis of section
19 alone its exclusive rights have been infringed by
the respondent.
This brings me to the second issue, that of
whether on the facts the learned Trial Judge erred
in failing to find infringement by the respondent
by the use of a confusing trade mark or trade
name.
On this issue the appellant's submissions were
that the learned Trial Judge erred in emphasizing
the differences between the trade marks rather
than considering their similarities from the point
of view of a consumer with imperfect recollection,
in emphasizing the lack of evidence of actual
confusion having occurred and the differences in
the manner of delivery of the goods and services
associated with the trade marks instead of consid
ering the likelihood of confusion if the two busi
nesses were carried on in the same area in the
same manner.
Save with respect to the absence of evidence of
actual confusion I am of the opinion the appel
lant's criticism of the reasons of the learned Judge
is warranted.
In the course of her reasons the learned Trial
Judge said [at pages 169 C.I.P.R.; 429-430
C.P.R.; 193 F.T.R.]:
I accept counsel's argument that in this case the distinctive
ness of the plaintiffs mark resides in the use of the courtesy
title MR. in conjunction with the descriptive term SUBMA
RINE ... However, I cannot conclude that, in the context of
this case, what the defendant has done is merely appropriate
the plaintiffs mark in total and add, as a suffix, additional
words thereto. The use of the diminutive "subs" and not the
word "submarine" lends force to that conclusion. Also, the use
of the diminutive "subs" does not create confusion, when
pronounced orally, with the word submarine. Such confusion
pertained in the Conde Nast case, supra. It seems to me the
defendant's mark (either version thereof) is clearly distinguish
able from that of the plaintiff.
Here the learned Judge finds the respondent's
marks to be clearly distinguishable from those of
the appellant. That is without doubt true. But it is
not a test of whether the respondent's trade marks
or trade names are similar. It says nothing of their
similarities or of whether they are likely to be
distinguished by an ordinary person having a
vague recollection of the appellant's mark or
business.
Later the learned Judge said [at pages 169-170
C.I.P.R.; 430 C.P.R.; 193 F.T.R.]:
In considering whether the defendant's mark is confusing
with that of the plaintiff, it is not sufficient to merely focus on
the courtesy title MR. and the initial word SUBS. One must
consider the mark as a whole. In doing so I cannot find any
implication arising from the defendant's mark which would
lead one to think that the goods sold by the defendant were
those of the plaintiff. The defendant's mark gives the appear
ance of being descriptive of an entirely different business from
that of the plaintiff.
This conclusion is reinforced by the fact that while there is
some overlap between the two businesses in that they both sell
submarine sandwiches, the defendant focuses on telephone
orders; the plaintiff focuses on the walk-in trade. Also, the
defendant's business is predominantly that of selling pizza. The
sale of submarine sandwiches is not its major enterprise.
In this passage the learned Judge first finds that
no implication from the respondent's mark would
lead one to think that its goods were those of the
appellant and then goes on to conclude that the
respondent's mark gives the appearance of being
descriptive of an entirely different business from
that of the appellant. In the next paragraph, how
ever, she concedes some overlap of the businesses
(so they are not entirely different) and cites in
support the focussing of the respondent on tele
phone orders in contrast to the appellant's "walk-
in" trade and the sale of pizza in the respondent's
business. In my opinion, neither the difference in
systems employed nor in the focussing by the
respondent on the sale of pizza is relevant in this
context and neither should have been given weight.
In a further passage the learned Judge wrote [at
pages 171 C.I.P.R.; 432 C.P.R.; 194 F.T.R.]:
With respect to the degree of resemblance between the
names in appearance or sound or in the ideas suggested by
them, I did not understand any argument to be made that there
was a similarity of visual appearance. Nor could any convinc
ingly be made. There is no similarity in the style of lettering
used: the plaintiff uses "Copper [sic *] Block" lettering; the
defendant's signs are in "hot dog" style. More recently a
stylized script logo has been adopted by the defendant for many
uses such as on boxes and menus. The plaintiff's signs consist of
red-orange lettering on a white background; those of the
defendant comprise and yellow and white lettering on an
orange background. Indeed, to my eyes the most dominant part
of the defendant's signs is the word PIZZA, not the other
elements. The appearance of the two marks as actually used on
signs, boxes etc., is quite different.
At this point the learned Judge considered and
appears to have taken into account that there was
no similarity in the style of lettering used and the
colouring of the signs of the parties and that the
appearances of the two marks as actually used on
signs, boxes etc., is quite different. These in my
opinion would be very relevant considerations if
the proceeding were a passing off action at
common law. They are irrelevant in a proceeding
for infringement of a registered trade mark and
should have been given no weight in determining
whether the trade marks and trade names in issue
are confusing with the appellant's registered mark.
As the facts on which the appeal is to be deter
mined do not depend on the credibility of witnesses
and are not in dispute, this Court is in as good a
position as was the learned Trial Judge to draw
what it considers to be the proper inferences from
those facts and to make a finding as to the likeli
hood of confusion of the trade marks and, in view
of the errors to which I have referred, in my
opinion the Court should proceed to do so.
The relevant provisions of the Act are:
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.
* Editor's Note: The word "Copper" should read "Cooper".
(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.
(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.
Before addressing these considerations it should
be noted that the appellant's right to the exclusive
use of "Mr. Submarine" is not confined to those
parts of Canada in which the appellant and its
licensees have carried on business but extends
throughout Canada. The appellant is thus entitled
to its exclusive use in any additional outlets for its
sandwiches that it may see fit to establish. Nor is
the appellant's exclusive right confined to the sale
of sandwiches by the methods it now employs or
has employed in the past. Nothing restricts the
appellant from changing the colour of its signs or
the style of lettering of "Mr. Submarine" or from
engaging in a telephone and delivery system such
as that followed by the respondent or any other
suitable system for the sale of its sandwiches.
Were it to make any of these changes its exclusive
right to the use of "Mr. Submarine" would apply
just as it applies to its use in the appellant's
business as presently carried on. Whether the
respondent's trade marks or trade names are con-
fusing with the appellant's registered trade mark
must accordingly be considered not only having
regard to the appellant's present business in the
area of the respondent's operations but having
regard as well to whether confusion would be
likely if the appellant were to operate in that area
in any way open to it using its trade mark in
association with the sandwiches or services sold or
provided in the operation.
I turn now to the circumstances to be considered
as enumerated in subsection 6(5) of the Act.
(a) The appellant's trade mark consists of two
words, one of which is descriptive and is dis
claimed apart from the trade mark, the other of
which is what is referred to as the courtesy title
"Mr.". The evidence discloses that the same
courtesy title is in common use as the first word of
a large number of other trade marks or trade
names. Examples from the telephone directories in
evidence are Mr. Filter, Mr. Ice, Mr. Ice Cube,
Mister Muffler, Mister Muffler Limited, Mr.
Plumber, Mister Transmission, Mr. Groom Prod
ucts Distributor, Mister Donut, Mr. Doner, Mr.
Fish, Mister Mac's Pharmacy Ltd., Mr. Seamless,
Mr. Vinyl, Mr. European Boutique for Men,
Mister Carpet Ltd., Mr. Handy Man Services,
Mister Sweeper, Mr. Cobbler Shoe Repair, Mr. I
Got It, Mr. M's Warehouse Limited, Mr. Renova
tor. On the face of it at least two of these, Mr.
Fish and Mister Donut, are related to food prod
ucts and the latter to prepared food. In my view,
neither word of the appellant's trade mark should
be regarded as its dominant or distinctive feature.
The essence of the trade mark, that which alone
gives it distinctiveness, is the combination of the
two common and by themselves quite undistinctive
words.
This trade mark has been extensively advertised
and used and a large volume of sandwiches has
been sold in association with it. It is I think to be
inferred that the trade mark has become very well
known in Toronto and the rest of Ontario and in
Western Canada and it is known to a lesser extent
in Eastern Canada and in particular in the Hali-
fax-Dartmouth area where the respondent present
ly carries on its business.
As "Mr. Subs'N Pizza" is also composed of
common words, a common courtesy title together
with words descriptive of the respondent's wares,
its inherent distinctiveness, as well, in my opinion,
arises solely from the combination of its several
elements. In my view, because of its elements and
its length, it is not as distinctive as "Mr. Subma
rine". "Mr. 29 Minite Subs'N Pizza" is also com
posed of common undistinctive words and as in the
other cases its distinctiveness in my view arises
from the combination but in this case it arises as
well from the suggestion of fast service that it
includes. Though both trade marks are probably as
well or better known in the Halifax-Dartmouth
area than "Mr. Submarine" it is unlikely that
either is known to any substantial or practical
extent elsewhere.
(b) The appellant's trade mark has been in use
in Canada since 1968 and in the Dartmouth area
since about 1976. The use of the respondent's
trade mark or trade name "Mr. Subs'N Pizza" has
been in use in the Dartmouth area since about
1976, that of "Mr. 29 Minit Subs'N Pizza" since
1981.
(c) The nature of the wares is the same with
respect to sandwiches. It differs only in that the
respondent also sells pizzas. The nature of the
services being rendered differs in that the appel
lant does not provide a telephone ordering and
delivery service which the respondent does. The
nature of the business, that of the sale of prepared
food, is the same.
(d) The nature of the trade, as I see it, is the
sale at the retail or consumer level of food pre
pared for eating, in the case of the appellant, in a
restaurant setting, in the case of the respondent, at
the address to which the purchaser asks that the
food be delivered. In both cases the area from
which customers are likely to be attracted for any
one outlet is comparatively small, though probably
larger for the respondent's business because of the
telephone call and delivery system.
(e) The degree of resemblance is, in my opinion,
small when the marks are considered as a whole.
But there is resemblance and in my view it cannot
be ignored.
Neither the mark of the appellant nor either of
those of the respondent consists of the same group
of words but one of the words is common to all
three trade marks. The marks do not look alike
when written or printed but they have the word
"Mr." in common. When spoken they do not
sound alike, save for the sound of "Mr.". The ideas
suggested by them, as well, are not the same in
total but what both of the respondent's marks
suggest includes the elongated bread roll sand
wiches which the appellant's mark suggests.
Having regard to the circumstances disclosed I
reach the conclusion, and this notwithstanding the
very weighty fact referred to by the learned Trial
Judge that in the ten years of operation of both
businesses in the Dartmouth area prior to the trial
of the action no instance of any actual confusion
had come to light, that the use by the respondent
of its trade marks or trade names "Mr. Subs'N
Pizza" and "Mr. 29 Min. Subs'N Pizza" and of
"Mr. Submarine" by the appellant in the same
area is likely to lead to the conclusion that the
wares and services of the respondent are sold or
performed by the same person as those sold by the
appellant. While the marks are manifestly differ
ent in many respects there are also respects in
which they are manifestly similar, in particular in
the combination of "Mr." with "Submarine" and
"Mr." with "Subs". The marks, in my view, have
at least partial similarity in appearance, whether
written or printed, in sound, and in ideas suggested
by them. All three suggest a business in which
submarine sandwiches are sold. Both "Mr. Subma
rine" and the respondent's marks depend for their
distinctiveness in whole or in part on the associa
tion of a word meaning a submarine sandwich with
the courtesy title "Mr.". In my view it is not
unlikely that someone, whether vaguely or even
precisely, familiar with "Mr. Submarine" on look
ing for it in a telephone directory where it is not
listed (examples are to be found at pages 81, 83
and 89 of the case) and finding "Mr. Subs'N
Pizza" could mistakenly conclude that the name, if
not indeed that of the appellant, was in some way
associated with "Mr. Submarine" as licensee or
otherwise. The same applies where they appear
close together in ordinary telephone listings. It is
also not unlikely that such a person would draw a
similar conclusion from seeing "Mr. Subs'N Piz
za" on a sign whether in the original or the
29-minute version and in either case conclude as
well that the business was that of "Mr. Subma
rine" or one of its licensees with a variation to
indicate that at the particular outlet it had pizza
for sale as well as submarine sandwiches. It follows
in my view that the appellant's trade mark is
infringed by the respondent's use of its trade
marks and trade names.
I would accordingly allow the appeal and enjoin
the respondent from using the word "Mr." in
association with the word "submarine" or "subs"
or any other word suggestive of submarine sand
wiches. The appellant is also entitled to an order
for destruction or delivery up, under oath, of the
respondent's signs, packages, napkins and other
articles on which the words "Mr. Subs" appear. In
the particular situation, having regard to the fact
that no instance of actual confusion has been
established, in my opinion, the discretion of the
Court to order an account of profits should be
exercised by refusing it. The appellant is entitled
to a reference to assess damages but at its option it
may have judgment for $300 as damages without a
reference. If the appellant requires that a reference
be held and recovers $300 or less the respondent's
costs on the reference as between solicitor and
client should be paid by the appellant.
The appellant should have its costs in the Trial
Division and of this appeal.
URIE J.: I agree.
DESJARDINS J.: I agree.
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.