T-702-87
Borden, Inc. (Appellant)
v.
Hostess Food Products Limited and the Registrar
of Trade Marks (Respondents)
INDEXED AS: BORDEN, INC. V. HOSTESS FOOD PRODUCTS
LTD. (T.D.)
Trial Division, McNair J.—Toronto, June 20;
Ottawa, November 29, 1989.
Trade marks — Registration — Opposition — Prior use
and non-abandonment not established — Evidence not sup
porting argument opponent's trade marks "known in Canada".
Trade marks — Practice — Appeals and new trials —
Evidence — Although new evidence may be adduced pursuant
to s. 56(5) of Act, such must be in relation to facts material to
issues previously before Registrar — To that extent, appeal
somewhat of trial de novo.
This was an appeal from the decision of the Registrar of
Trade Marks rejecting the opposition to the respondent's
application to register the trade mark "Doodles".
The appellant's trade marks "Dipsy Doodles" and "Cheez
Doodles" had been registered in the United States in 1959 and
1957 and in Canada in 1960 and 1961 by its predecessor in title
in association with "corn chips" and "cheese flavoured corn
curls" respectively. First use was claimed for "Dipsy Doodles"
since 1965 and for "Cheez Doodles" since 1958. These trade
marks were expunged in November 1980 pursuant to the
respondent's application under section 44 of the Trade Marks
Act. In June 1980, the respondent applied to have the trade
mark "Doodles" registered in association with "corn meal
based snack foods". Opposition proceedings ensued on grounds
the respondent trade mark was not registrable pursuant to
subsection 16(3) as confusing and for lack of distinctiveness
pursuant to paragraph 37(2)(d) of the Act. The Registrar
found the respondent company had satisfied the onus of estab
lishing its proposed trade mark was adapted to distinguishing
its wares from those of others, the opponents having failed to
satisfy the evidentiary burden of showing prior use and non-
abandonment. New evidence was submitted on appeal.
Held, the appeal should be dismissed.
The Registrar was not wrong in concluding there had been
no prior use of appellant's trade marks within the meaning of
section 4 of the Trade Marks Act. The onus being on the
applicant: British American Bank Note Co. v. Bank of Ameri-
ca, and "use" being as defined in Plough (Canada) Ltd. v.
Aerosol Fillers Inc., the evidence establishes no use whatever of
the trade marks "Dipsy Doodles" and "Cheez Doodles" in
association with wares from 1960 to 1988 in the first instance
and from 1961 to 1988 in the second.
The Registrar made no error in concluding that the appellant
had failed to establish non-abandonment of its trade marks as
of the date of advertisement of respondent's application. Evi
dence showing substantial sales in the United States was not
indicative of the fact that there was no intention of abandon
ment in Canada. The words of subsection 17(1) of the Act read
in their grammatical and ordinary sense, in context with section
16 and the scheme of the Act as a whole, clearly limit the range
of abandonment of the confusing trade marks to Canada:
Stubart Investments Ltd. v. The Queen.
The evidence does not establish that the appellant's trade
marks were at the material time "known in Canada" within the
meaning of the phrase as explained in E. & J. Gallo Winery v.
Andres Wines Ltd., sufficient to justify the conclusion that the
respondent's trade mark was not adapted to distinguishing its
wares.
There is no evidence that the appellant foreign trade marks
were so widely known in Canada as to justify the conclusion
that the respondent's application to register the "Doodles"
trade mark was calculated to deceive and mislead the public.
There was no evidence that the respondent was aware of the
registrations and use of the appellant's trade marks in the
United States.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 4, 6(5),
16(3)(a),(b), 17(1), 37(2)(d), 44, 54(I),(2),(3), 56(5).
Trade Marks Regulations, C.R.C., c. 1559, s. 46(5).
CASES JUDICIALLY CONSIDERED
APPLIED:
Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco
Corp., [1969] S.C.R. 192; (1968), 1 D.L.R. (3d) 462; 57
C.P.R. 1; 39 Fox Pat. C. 207; Standard Oil Co. v. The
Registrar of Trade Marks, [1968] 2 Ex.C.R. 523;
(1968), 55 C.P.R. 49; 38 Fox Pat. C. 127; Johnson (S.C.)
& Son, Inc. v. Esprit de Corp. et al. (1986), 13 C.P.R.
(3d) 235; 11 C.I.P.R. 192; 8 F.T.R. 81 (F.C.T.D.);
Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1981] 1
F.C. 679; (1980), 53 C.P.R. (2d) 62; 34 N.R. 39 (C.A.);
Stubart Investments Ltd. v. The Queen, [1984] 1 S.C.R.
536; (1984), CTC 294; 84 DTC 6305; 53 N.R. 241.
DISTINGUISHED:
Algonguin Mercantile Corporation v. Dart Industries
Canada Ltd. (1984), 1 C.P.R. (3d) 242 (F.C.T.D.); E. &
J. Gallo Winery v. Andres Wines Ltd., [1976] 2 F.C. 3;
(1975), 25 C.P.R. (2d) 126; 11 N.R. 560 (C.A.); Orkin
Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. et
al. (1985), 50 O.R. (2d) 726; 19 D.L.R. (4th) 90; 30
B.L.R. 152; 34 CCLT 1; 5 C.P.R. (3d) 433; 10 O.A.C. 14
(C.A.).
CONSIDERED:
British American Bank Note Co. v. Bank of America
National Trust and Saving Association, [1983] 2 F.C.
778; (1983), 71 C.P.R. (2d) 26 (T.D.); Marineland v.
Marine Wonderland & Animal Park Ltd., [1974] 2 F.C.
558; (1974), 16 C.P.R. (2d) 97 (T.D.).
COUNSEL:
Kenneth D. McKay for appellant.
Robert A. MacDonald for respondents.
SOLICITORS:
Sim, Hughes, Dimock, Toronto, for appellant.
Cowling, Strathy & Henderson, Ottawa, for
respondents.
The following are the reasons for judgment
rendered in English by
MCNAIR J.: This is the appeal of Borden, Inc.
from the decision of the Registrar of Trade Marks
dated January 30, 1987 whereby he rejected the
appellant's opposition to the respondent's applica
tion to register the trade mark "Doodles" in asso
ciation with "corn meal based snack foods". Battle
is joined on the appeal only in respect of the
appellant's trademarks "Dipsy Doodles" and
"Cheez Doodles", and its related trade mark,
"Nutty Doodles", which was also a matter of
contestation before the Registrar, is no longer in
issue. The Registrar is not opposing the appeal.
The facts are relatively complex and a summary of
the events leading to this appeal might prove
useful.
On September 15, 1960 the appellant's prede
cessor in title, Old London Foods, Inc., applied for
registration of the trade mark "Dipsy Doodles".
The application stated that the trade mark had
been used in Canada in association with "corn
chips" since April 6, 1960. The trade mark was
registered on February 24, 1961 as No. 121,297.
The same trade mark had been registered in the
United States on December 22, 1959 as No.
690,326.
On March 2, 1961 Old London Foods, Inc.
applied for registration of the trade mark "Cheez
Doodles", claiming use of the trade mark in
Canada in association with "cheese flavoured corn
curls" since February 15, 1961. The trade mark
was registered on September 8, 1961 as No.
123,502. Similarly, the same trade mark had been
registered in the United States on April 30, 1957
as No. 644,839.
On March 11, 1980 the respondent wrote the
Registrar of Trade Marks requesting the issuance
of expungement notices under section 44 of the
Trade Marks Act [R.S.C. 1970, c. T-10] against
the trade marks "Dipsy Doodles" and "Cheez
Doodles". Expungement was also sought in respect
of the trade mark "Nutty Doodles", but this is no
longer relevant. The appellant did not respond to
the expungement notices with the result that the
registrations of the trade marks "Dipsy Doodles"
and "Cheez Doodles" were expunged on
November 26 and November 27, 1980 respective
ly.
On June 26, 1980 the respondent, Hostess Food
Products Limited, filed an application to register
the trade mark "Doodles" based on its proposed
use in Canada in association with "corn meal
based snack foods". The application for registra
tion was advertised on September 2, 1981. The
appellant filed a statement of opposition on
December 23, 1981. This was followed by a revised
statement of opposition dated January 14, 1982,
which was directed to the respondent on February
2, 1982. The grounds of opposition were: (1) that
the proposed trade mark was not registrable
because it was confusing with the appellant's trade
marks, having regard to the provisions of subsec
tion 16(3) of the Trade Marks Act; and (2) that
the proposed trade mark was not distinctive within
the meaning of section 2 and paragraph 37(2)(d)
of the Act in that it did not actually distinguish the
wares of the respondent from those of others, and
more particularly, in view of the fact that the said
trade mark was confusing with the appellant's
trade mark "Cheez Doodles" made known in
Canada through media advertising received in
Canada.
The respondent filed a counter statement on
February 25, 1982 in which it denied the appel
lant's allegations and noted that the trade mark
registrations for "Cheez Doodles" and "Dipsy
Doodles" had been expunged pursuant to section
44 of the Act. The appellant's evidence in the
opposition proceeding consisted of the affidavits of
Robert V. Boyer, Director of Marketing of the
Consumer Products Division of the appellant, and
Robert G. Tritsch, Secretary of the appellant.
Both affiants were cross-examined on June 6, 1983
and the transcripts of their cross-examinations
form part of the record of the present appeal. In
support of its application for registration of the
trade mark "Doodles", the respondent filed the
affidavits of Bill Douglas, its Ontario Sales
Manager, and William E. McKechnie, its Market
ing Manager. Both affiants were cross-examined
thereon but, having failed to reattend a further
cross-examination as ordered, their affidavits were
deemed not to be part of the record on appeal,
pursuant to subsection 46(5) of the Trade Marks
Regulations [C.R.C., c. 1559]. Both parties filed
written arguments, and were represented by coun
sel at an oral hearing before the member of the
Trade Marks Opposition Board, David J. Martin,
on December 4, 1986. Mr. Martin's decision on
behalf of the Registrar was handed down on Janu-
ary 30, 1987.
With respect to the first ground of opposition,
the Registrar found that the appellant had failed
to satisfy the evidentiary burden of showing prior
use and non-abandonment of its trade marks. As
to the second ground of opposition, the Registrar
was unable to find sufficient evidence of reputation
in Canada for the appellant's trade marks, where
by he concluded that the respondent had satisfied
the onus of establishing that its proposed trade
mark was adapted to distinguish its wares from
those of others.
The appellant's notice of appeal, which was filed
on March 30, 1987, raised two grounds of appeal:
firstly, that the Registrar erred in fact and law in
rejecting the appellant's grounds of opposition with
respect to confusion within the meaning of subsec
tion 16(3) and non-distinctiveness in the sense that
the respondent's proposed trade mark did not dis
tinguish its wares from those of others; and,
secondly, that the Registrar erred in his interpreta
tion of law as it applies to the test of distinctive
ness of trade marks which the respondent knew, or
ought to have known, to be used in the United
States and to be registered as trade marks of
another in the United States prior to any adoption
and use in Canada. The appellant filed new evi
dence in the form of an additional affidavit of
Robert G. Tritsch, sworn October 1, 1987. Two
affidavits of Chris A. Abernathy, Vice-President,
Marketing, for Snacks and International Consum
er Products, were also filed, as were affidavits of
R. Scott MacKendrick, of the appellant's law firm,
and William A. Stimeling, Manager, Marketing
Services, for Snacks and International Consumer
Products, a division of the appellant.
Section 56 of the Trade Marks Act deals with
appeals to this Court from any decision of the
Registrar. Subsection 56(5) of the Act specifically
provides as follows:
56....
(5) On the appeal evidence in addition to that adduced
before the Registrar may be adduced and the Court may
exercise any discretion vested in the Registrar.
In my view, the provision for adducing addition
al evidence on an appeal would be meaningless
unless the Court could make a judicial determina
tion of the issues before the Registrar with due
regard to the circumstances of the case and in light
of this additional evidence. Clearly, the Court is
entitled to substitute its conclusion for that of the
Registrar, if satisfied that the latter "has gone
wrong". To a limited extent, the appeal takes on
something of the appearance of a hearing de novo,
but with this qualification. While the Court is not
limited in its right to hear new evidence, it is my
opinion that such new evidence must be in relation
only to facts material to the same issues that were
before the Registrar: Benson & Hedges (Canada)
Ltd. v. St. Regis Tobacco Corp., [1969] S.C.R.
192; (1968), 1 D.L.R. (3d) 462; 57 C.P.R. 1; 39
Fox Pat. C. 207, per Ritchie J. at pages 199-200
S.C.R.; Standard Oil Co. v. The Registrar of
Trade Marks, [1968] 2 Ex.C.R., 523; (1968), 55
C.P.R. 49; 38 Fox Pat. C. 127, per Jackett P. at
pages 55-56 Ex. C.R.; and Johnson (S.C.) & Son,
Inc. v. Esprit de Corp. et al. (1986), 13 C.P.R.
(3d) 235; 11 C.I.P.R. 192; 8 F.T.R. 81 (F.C.T.D.),
per Cullen J. at pages 242-243 C.P.R. In any
event, this is how I propose to treat the present
appeal.
Preliminary Objections
Counsel for the respondent raised the prelim
inary objection that the notice of appeal failed to
"set out full particulars of the grounds on which
relief is sought" in accordance with subsection
59(1) of the Trade Marks Act. He cited in support
of this the case of Algonquin Mercantile Corpora
tion v. Dart Industries Canada Ltd. (1984), 1
C.P.R. (3d) 242 (F.C.T.D.), wherein Muldoon J.
held that an allegation that the prothonotary had
erred in law and in fact in making his order was
inadequate as a ground of appeal in that it failed
to comply with Rule 336(5) of the Federal Court
Rules [C.R.C., c. 663]. The grounds of appeal in
the present case are specified with more par
ticularity than in Algonquin Mercantile. The alle
gation of the Registrar's error in rejecting the
opposition is made in reference to specific grounds
of error, namely, confusion under subsection 16(3)
and distinctiveness within the meaning of section 2
and paragraph 37(2)(d) of the Trade Marks Act.
Moreover, the notice of appeal further alleged that
the Registrar erred in his interpretation of the law
as it applied to the test of distinctiveness with
respect to trade marks registered in the United
States. Consequently, I consider that the notice of
appeal sufficiently sets out the particular grounds
thereof.
Counsel for the respondent also objected to the
introduction by appellant's counsel of paragraph
16(3)(b) as a new ground of opposition for pur
poses of this appeal. The argument is simply that
the appellant's applications for registration of
trade marks had been previously filed at the date
of filing of the respondent's application and that
this is another legitimate ground beyond the prior
use situation contemplated by paragraph 16(3)(a)
of the Act. Obviously this issue had not been
raised before the Registrar. Based on my previous
comments, I consider that it would be totally
inappropriate to hear argument on this point on
the appeal.
By the same token, I see no merit in the objec
tion of respondent's counsel that the matter of the
United States trade mark registrations for "Cheez
Doodles" and "Dipsy Doodles" was something new
that was not in issue before the Registrar. These
foreign registrations were referred to in the affida
vits of Mr. Boyer and Mr. Tritsch, both of whom
were cross-examined thereon, and their affidavits
and the transcripts of cross-examinations formed
part of the record in the proceedings before the
Registrar.
Confusion and Previous Use
The first ground raised by appellant's counsel is
that the respondent is disentitled to registration of
its trademark "Doodles" because it was confusing
with the appellant's trademarks "Dipsy Doodles"
and "Cheez Doodles" that had been previously
used in Canada or made known therein, contrary
to paragraph 16(3)(a) of the Trade Marks Act.
The section on which he relies reads as follows:
16....
(3) Any applicant who has filed an application in accord
ance with section 29 for registration of a proposed trade mark
that is registrable is entitled, subject to sections 37 and 39, to
secure its registration in respect of the wares or services speci-
fied in the application, unless at the date of filing of the
application it was confusing with
(a) a trade mark that had been previously used in Canada or
made known in Canada by any other person;
He submits that at the date of the respondent's
application on June 26, 1980, which is the material
date, there was clear evidence of previous use in
Canada of the appellant's trade marks "Dipsy
Doodles" and "Cheez Doodles", provable by certi
fied copies of the registrations thereof, and that it
is immaterial for purposes of the statutory provi
sion that these trade marks were afterwards
expunged.
The applications for Canadian registration
claim use of the appellant's trade marks "Dipsy
Doodles" and "Cheez Doodles" in Canada since
April 6, 1960 and February 15, 1961 respectively.
Appellant's counsel submits that certified copies of
these applications are evidence of the facts set out
therein, by virtue of subsection 54(2) of the Trade
Marks Act. Counsel for the respondent submits in
response that it is subsection 54(1) which is appli
cable, providing, as it does, for the production of
copies certified to be true by the Registrar. Both
counsel seem to ignore subsection 54(3) of the Act,
which provides that a certified copy of the regis
tration of a trade mark is evidence of the facts set
out therein. On the basis of these certified copies, I
find as a fact that the appellant's trade marks had
been previously used in Canada as of the dates
hereinbefore mentioned. Counsel for the respon
dent admitted as much when he stated:
There may have been use in '61. There must have been. They
filed the applications claiming use, and we are not suggesting
that anything improper was done.
There must have been use in '61, but nobody can recall any use,
at all.
The Registrar reviewed the affidavit evidence of
the appellant and concluded that the appellant had
"failed to evidence prior use and non-abandonment
of its three trade marks". He based this conclusion
on the lack of evidence of any sales of the appel
lant's wares and the fact that such sales were
effected in the normal course of trade, from which
he concluded that there had been no prior use of
the appellant's trade marks "within the meaning of
section 4 of the Act".
The Registrar did not specifically address him
self to the statutory criteria for determining the
issue of confusion as set out in subsection 6(5) of
the Trade Marks Act, nor was this argument
pressed before me. The main thrust of the appel
lant's first ground of appeal was directed to the
previous use of its rival trade marks in Canada and
the fact that they had not been abandoned. I take
it to be common ground that there is no question
about the degree of resemblance between the rival
trade marks.
Respondent's counsel argues strenuously that in
order to succeed under subsection 16(3) of the
Act, the appellant must show: (1) prior use of its
trade marks in Canada; (2) non-abandonment at
the date the application for registration was adver
tised; and (3) some measure of reputation in the
trade. In his submission, the appellant has failed to
do so. Respondent's counsel makes the further
point that none of the appellant's affiants could
recall any use of the trade marks "Dipsy Doodles"
and "Cheez Doodles" in Canada at the time of
their respective registrations or thereafter.
In British American Bank Note Co. v. Bank of
America National Trust and Saving Association,
[1983] 2 F.C. 778; (1983), 71 C.P.R. (2d) 26
(T.D.), Cattanach J., dealing with the matter of
onus in an opposition proceeding, said at page 792
F.C.:
The onus is upon an applicant for the registration 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.I)
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.
In Plough (Canada) Ltd. v. Aerosol Fillers Inc.,
[1981] 1 F.C. 679; (1980), 53 C.P.R. (2d) 62; 34
N.R. 39 (C.A.), which was an appeal from an
expungement of trade mark, Thurlow C.J. said at
page 685 F.C.:
But the use of which evidence is required is trade mark use, in
the case of wares, use of the kind referred to in section 4 by the
mark being marked on wares or their packages or associated
with wares at the time of their sale or delivery in the normal
course of trade and for the purpose of distinguishing the wares
as those manufactured or sold by the owner of the trade mark
from the goods of others.
In my opinion, the selfsame concept of "use" is
applicable to the present case. Clearly, the Regis
trar adopted this approach in concluding that
there was insufficient evidence of prior use of the
appellant's trade marks within the meaning of
section 4 of the Trade Marks Act.
Evidence of prior use of the appellant's trade
marks "Dipsy Doodles" and "Cheez Doodles" in
Canada is contained in paragraph 2 of the Tritsch
affidavit, which reads in part as follows:
2. The opponent has, in the past sold snack food products in
Canada under the trade marks DIPSY DOODLES since at least
1960, ... and CHEEZ DOODLES since at least 1961.
Mr. Tritsch stated under cross-examination that
he had no personal knowledge of the use of the
trade marks "Dipsy Doodles" and "Cheez Doo
dles" in the Canadian marketplace. The Director
of Marketing, Mr. Boyer, who had been associated
with the appellant's snack food products since
1976, stated on cross-examination that he was not
aware of any sales of the appellant's wares in
Canada under the trade marks "Dipsy Doodles" or
"Cheez Doodles". Neither of the other affiants,
Messrs. Stimeling and Abernathy, could recall any
use of the appellant's trade marks in Canada prior
to 1988. The only evidence of use in Canada in
relation to the sale of wares is contained in an
answer given by Mr. Tritsch in response to an
undertaking given on cross-examination, wherein
he stated that an investigation of the appellant's
records showed sales in 1988 of "Cheez Doodles"
products totalling $573.08 and "Dipsy Doodles"
products totalling $171.76.
The evidence in its entirety establishes that
there has been no use whatever of the trade mark
"Dipsy Doodles" in association with the wares
from 1960 until at least February of 1988 and that
the same situation pertained with respect to the
trade mark "Cheez Doodles" from 1961 until the
same date in 1988. Under the circumstances, I am
satisfied that the Registrar did not go wrong in
concluding that there had been no prior use of the
appellant's trade marks within the meaning of
section 4 of the Trade Marks Act.
Abandonment
This brings me to the issue of abandonment,
which forms the second facet of the first ground of
appeal. Counsel are agreed that, by virtue of the
combined effect of subsections 16(5) and 17(1) of
the Trade Marks Act, it is incumbent upon the
appellant to establish on the evidence that it had
not abandoned its trade marks "Dipsy Doodles"
and "Cheez Doodles" at the date of advertisement
of the respondent's application on September 2,
1981. The said subsections read as follows:
16....
(5) The right of an applicant to secure registration of a
registrable trade mark is not affected by the previous use or
making known of a confusing trade mark or trade name by
another person, if such confusing trade mark or trade name was
abandoned at the date of advertisement of the applicant's
application in accordance with section 36.
17. (1) No application for registration of a trade mark that
has been advertised in accordance with section 36 shall be
refused and no registration of a trade mark shall be expunged
or amended or held invalid on the ground of any previous use or
making known of a confusing trade mark or trade name by a
person other than the applicant for such registration or his
predecessor in title, except at the instance of such other person
or his successor in title, and the burden lies on such other
person or his successor to establish that he had not abandoned
such confusing trade mark or trade name at the date of
advertisement of the applicant's application.
The appellant's affiant, Mr. Abernathy, deposed
in his first affidavit that the snack food products
associated with the trade marks "Dipsy Doodles"
and "Cheez Doodles" were confined to a viable
market area having a radius of approximately 300
miles from the producing plant by reason of pack
aging, shipping charges and shelf life limitations.
Paragraph 16 of the affidavit states as follows:
16. The results of the above research and development and
market limitations is that it has not been viable to service the
Canadian market with existing snack food plants owned and
operated by Borden, Inc. in the United States of America
although it has always been the intention of Borden, Inc. to do
so.
In his second supplementary affidavit, Mr.
Abernathy states that the appellant purchased
Humpty Dumpty Foods Limited on February 2,
1988, that the vendor is a major producer of snack
foods in eastern Canada whose 1987 sales exceed
ed $120,000,000, and that Borden proposes to
market its "Dipsy Doodles" and "Cheez Doodles"
products by utilizing the distribution and sales
network of the Humpty Dumpty acquisition.
Counsel for the respondent argues that the rea
sons given by Mr. Abernathy for not having
exploited the Canadian market for some twenty
years and upwards cannot be taken by any stretch
of the imagination to justify non-use of the trade
marks "Dipsy Doodles" and "Cheez Doodles" in
Canada. In his submission, the decision not to sell
in Canada was purely voluntary and not something
dictated by special circumstances over which the
appellant had no control. He relies particularly on
the case of Marineland v. Marine Wonderland &
Animal Park Ltd., [ 1974] 2 F.C. 558; (1974), 16
C.P.R. (2d) 97 (T.D.), wherein the Court dis
missed an appeal from the Registrar's dismissal of
an opposition to the registration of a trade mark
on the ground, inter alia, that the respondent's
rival trade mark had been abandoned. Cattanach
J., dealing with this point, said at pages 574-575
F.C.:
When the appellant seeks to oppose the respondent's applica
tion for registration on the grounds of prior use or making
known in Canada of the same trade mark by the appellant, the
burden is on the appellant to establish that the appellant has
not abandoned the trade mark.
Assuming that the use by the appellant of the word "Marine-
land" in association with films is a trade mark use (which
question I have not decided) it is apparent from the evidence
that such films have not been produced since 1958, nor dis
tributed for exhibition in Canada since 1964.
However, mere non-use of a trade mark is not sufficient to
create abandonment. That non-use must also be accompanied
by an intention to abandon.
In my opinion, the intention to abandon the use of the trade
mark "Marineland" in association with films in the circum
stances of the present matter, is to be inferred from the
appellant's long disuse. I take it from the evidence that the
appellant produced the one series of films for distribution. It
has produced no others for exhibition and there has been no
exhibition in Canada. There has been no use by the appellant of
that trade mark in connection with the particular wares since
1964....
Therefore, in the circumstances outlined, I am of the opinion
that the appellant has not discharged the burden of establishing
that the use of its trade mark in association with films has not
been abandoned in Canada and, accordingly, I conclude,
assuming that such trade mark use existed, the trade mark has
been abandoned in Canada.
The point that is being pressed is simply this: if
disuse of the appellant's trade mark for a period of
ten years in Marineland justified the inference
that it had been abandoned, then the same conclu
sion must be reached in the present case of disuse
for a period, of twenty years or more.
Appellant's counsel argues that Borden's failure
to file evidence of use in response to the section 44
notice does not bespeak abandonment, but rather
simply evinces that there was no use of the appel
lant's trade marks in Canada at the date of the
expungement notice. He further argues that the
affidavit evidence of total sales of $465,000,000
for "Dipsy Doodles" and "Cheez Doodles" prod
ucts in the United States as at the date of filing of
the opposition is indicative of the fact that the
appellant had no intention of abandoning its trade
marks. In his submission, subsection 17(1) of the
Trade Marks Act speaks only of abandonment
generally and not in particular reference to aban
donment in Canada. Appellant's counsel also rests
his case on the evidence of Mr. Abernathy with
respect to the present barriers against exploitation
of the Canadian market.
I am unable to accede to the submission that the
reference to abandonment in subsection 17(1) has
some global significance and must be construed to
mean abandonment in general and not merely in
Canada. True, the words "in Canada" do not
appear in subsection 17(1). However, section 16 of
the Act uses the words "in Canada" repeatedly
with respect to the issue of confusion. Applying the
modern rule of statutory interpretation, it is my
opinion that the words of subsection 17(1) impos
ing the burden on an opponent of establishing
"that he had not abandoned such confusing trade
mark ... at the date of advertisement of the
applicant's application", read in their grammatical
and ordinary sense in context with section 16 and
the scheme of the Act as a whole, clearly limit the
range of abandonment of the confusing trade mark
to abandonment in Canada: Stubart Investments
Ltd. v. The Queen, [ 1984] 1 S.C.R. 536; (1984),
CTC 294; 84 DTC 6305; 53 N.R. 241, per Estey
J. at page 578 S.C.R.
Considering the evidence in its entirety, I find
that the appellant had abandoned its trade marks
"Dipsy Doodles" and "Cheez Doodles" in Canada
as at the date of advertisement of the respondent's
application. That being the case, I am unable to
attribute any error to the Registrar in concluding
that the appellant had failed to establish the non-
abandonment of its trade marks.
Distinctiveness
This brings me to the appellant's second ground
of appeal which is that the respondent's trade
mark is not distinctive, pursuant to paragraph
37(2)(d) of the Trade Marks Act. The word "dis-
tinctive" is defined in section 2 of the Act 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.
As the respondent's application is for registration
of a proposed trade mark, it is the latter part of
this definition which pertains, and the question
becomes that of whether the respondent's trade
mark "Doodles" was adapted to distinguish its
snack food products from those of the appellant at
the material time. In my view, the material time
for this purpose is the date of filing of the opposi
tion on December 23, 1981. It is undisputed that
the appellant's trade marks "Cheez Doodles" and
"Dipsy Doodles" had been registered in the United
States showing first use since May 1, 1956 and
August 25, 1958 respectively. In the circum
stances, both counsel are agreed that the question
of distinctiveness falls to be determined according
to the principles enunciated by the Federal Court
of Appeal in E. & J. Gallo Winery v. Andres
Wines Ltd., [1976] 2 F.C. 3; (1975), 25 C.P.R.
(2d) 126; 11 N.R. 560 (C.A.).
In , the Andres Wines Ltd. case, supra, the
respondent, a Canadian company, filed an applica
tion for registration of the trade mark "Spanada"
for use in association with wines. The appellant, a
United States corporation, opposed the application
on the grounds that the proposed trade mark was
confusing with the appellant's trade mark made
known in Canada in association with its fruit
flavoured wine, that the respondent knew the
appellant's trade mark was well known in Canada
as such, and that the trade mark was not distinc
tive as it was incapable of distinguishing the
respondent's wine from that previously and cur
rently advertised in Canada by the appellant. The
Registrar rejected the opposition after concluding
that none of these grounds had been substantiated.
The appellant appealed to the Trial Division and
filed some fifty-eight additional affidavits in sup
port of its objections. The respondent adduced no
evidence and did not cross-examine any of the
appellant's proponents, but simply took exception
to the affidavits on technical grounds. The Trial
Judge held that none of the appellant's grounds of
attack had been substantiated and dismissed the
appeal. The Federal Court of Appeal upheld the
appeal and directed the Registrar to refuse the
respondent's application on the principal ground
that the respondent's trade mark was not adapted
to distinguish its wines from that of others as of
the date of the opposition. Thurlow J. [as he then
was], dealing with the issue of distinctiveness, said
at page 7 F.C.:
The question to be determined on this attack is, therefore,
whether the mark, "SPANADA" was, at the material time,
adapted to distinguish the wine of the respondent from that of
others and as the mark appears to have an inherent distinctive
ness the question, as I see it, becomes that of whether it has
been established by the evidence that this inherently distinctive
mark is not adapted to distinguish the wine of the respondent.
The basis put forward for reaching a conclusion that the mark
is not adapted to distinguish the respondent's wine is that it is
already known as the trade mark of the appellant in respect of
similar wares. But for this purpose it is not necessary, in my
opinion, that the evidence should be sufficient to show that the
mark is well known or has been made well known in Canada
within the meaning of s. 5, or by the methods referred to in that
section. Such proof, coupled with use in the United States,
would be sufficient to entitle the appellant to registration and
to a monopoly of the use of the mark. But that is not what is at
stake in this proceeding. Here the respondent is seeking to
monopolize the use of the mark and the question is that of his
right to do so, which depends not on whether someone else has
a right to monopolize it, but simply on whether it is adapted to
distinguish the respondent's wares in the marketplace. Plainly,
it would not be adapted to do so if there were already six or
seven wine merchants using it on their labels and for the same
reason it would not be adapted to distinguish the respondent's
wares if it were known to be already in use by another trader in
the same sort of wares. [Emphasis added.]
The learned Judge then turned to a careful
consideration of the evidence. There was affidavit
evidence of gross sales of more than $8,700,000 for
the appellant's wine sold in Canada prior to the
date of the opposition. There were three affidavits
of persons concerned with trade publications show
ing the publication and general distribution of
articles and related business records in respect of
the appellant's "Spanada" wine as proof of the
Canadian circulation thereof. There were, in addi
tion, forty-six affidavits of managers, sales manag
ers or other officials of television broadcasting
stations operating near the U.S.-Canada border
referring to broadcasts of the appellant's commer
cials. Each of these affiants swore, inter alia, that
he was familiar with the extent of reception of his
station's telecasts by television sets in Canada and
the number of times each commercial was telecast,
with the respective dates and times thereof. There
were also two affidavits of the appellant's Director
of Media Purchasing, wherein he compiled all the
information contained in the forty-six affidavits
into a chart showing the total number of United
States television stations covering almost every
U.S.-Canadian border state and the number of
wine commercials telecast into Canada. The
affidavits further deposed that these wine commer
cials had the potentiality of reaching fifty-one per
cent of the Canadian populace. Expert opinion
evidence on the part of persons of long experience
in the advertising business as to the extent of
viewing in Canada of United States border stations
was ruled admissible, despite the fact that some of
the opinions expressed were based on hearsay. On
the basis of all this the learned Judge concluded at
page 14 F.C.:
On the whole, therefore, I am of the opinion that it has been
established that the mark SPANADA was known in Canada at
the material time as the trade mark of the appellant, widely
known at least, if indeed not also well known within the
meaning of section 5, and that this conclusion is irresistible on
the evidence notwithstanding the very cogent observation of the
learned Trial Judge that there was not so much as one affidavit
by a Canadian viewer to the effect that he had seen appellant's
SPANADA advertising on any of the United States television
stations.
I have already touched on some features of the
appellant's affidavit evidence bearing on the other
issues, and thus will endeavour to confine my
reconsideration of the same to an encapsulation of
matters pertaining to distinctiveness.
The first affidavit of Robert G. Tritsch refers to
the registration in Canada of the appellant's trade
marks "Dipsy Doodles" and "Cheez Doodles" and
their subsequent expungement, and states addi
tionally that the appellant is owner of trade mark
registrations in the United States for these trade
marks as well as "Fruit Doodles", "Yankee Doo
dles", "Nutty Doodles" and "Sunny Doodles".
The affidavit further deposes that the appellant
acquired its "Sunny Doodles" and "Yankee Doo
dles" registrations through Drake Bakeries, an
operating division of the appellant and a principal
competitor in the United States of the respondent,
and that the respondent "is therefore well aware of
the long and extensive use by the appellant of its
"Doodles" family of trade marks in association
with snack food products". The second affidavit of
Mr. Tritsch deals primarily with the appellant's
involvement in opposition proceedings with respect
to the respondent's applications for the trade
marks "Hostess Cottage Fries" and "Hostess
Home Fries". I consider this evidence to be irrele
vant for purposes of the present appeal.
Mr. Boyer's affidavit makes reference to the
widespread sales of the appellant's "Dipsy Doo
dles" and "Cheez Doodles" snack food products
throughout the whole area of the eastern seaboard
of the United States as far south as Florida, and
particularly in such vacation areas as Orlando and
Miami as well as in the States of Texas and
Louisiana. He gives figures for the yearly retail
sales of "Dipsy Doodles" and "Cheez Doodles"
products in the United States for the years from
1975 to 1982, amounting to millions of dollars.
The affidavit also sets out the total advertising
expenditures for these products in the United
States in the period from 1977 to 1982. Again, the
amounts are substantial. Paragraphs 6, 7, 8 and 9
of the Boyer affidavit deal with the nature and
extent of television commercials telecast by sta
tions in the Albany, Buffalo and Rochester areas
that would have been received in Canada and seen
by Canadians living in the Toronto, Barrie, Peter-
borough, Kitchener, Sudbury, Kingston and
Ottawa areas. This was all based on information
received from an account executive with the appel
lant's advertising agency. It was not based on the
firsthand knowledge of persons engaged in the
operation of those television stations in proximity
to the United States-Canada border, as was the
case in Andres Wines Ltd. In my view, the evi
dence of overspill advertising contained in these
paragraphs of the Boyer affidavit is inadmissible
as hearsay evidence.
Finally, Mr. Boyer refers to three exhibits
annexed to his affidavit. The first is a page from a
December 1981 issue of Mademoiselle magazine
containing an article "The best (and worst) of
times". Passing reference is made in one sentence
to "Cheez Doodles" snack foods. The affiant
deposes that the magazine "has a circulation in
Canada, and is therefore read by Canadians". The
second exhibit in the Boyer affidavit is a cartoon
referring to "Cheez Doodles" which appeared in
the magazine Esquire in January of 1961. Similar
ly, the affiant reiterates that the magazine has a
circulation in Canada and is read by Canadians.
The third exhibit is an article by a news commen
tator which appeared in the Daily News newspaper
on May 17, 1982 in which the appellant's "Cheez
Doodles" product featured prominently. The news
commentary is irrelevant, in my view, as being
after the date of filing of the opposition on Decem-
ber 23, 1981, which is the material date for pur
poses of resolving the issue of distinctiveness.
Next comes the affidavit of William A. Stimel-
ing, Manager, Marketing Services, of a snack food
division of the appellant since 1957, who was
responsible for the marketing and advertising of
snack food products sold in the United States
under the trade marks "Cheez Doodles" and
"Dipsy Doodles". As part of his responsibility, the
affiant reviews and relies upon compilations of
television advertising data prepared by outside
agencies. Paragraph 3 of the Stimeling affidavit
gives a number of television commercial spots
shown in the Albany, Buffalo and Rochester
market areas during the months from June 1981 to
September 1981 and their cost in terms of Canadi-
an dollars, as well as for the period from February
1982 to September 1982. The commercial spot
advertising for the subsequent period is, in my
view, irrelevant. The affiant further deposes that
television advertisements for "Cheez Doodles"
products were placed in the same markets prior to
1981, and particularly during the years 1979 and
1980, but there appears to be no record of such
advertisements. The last paragraph of Mr. Stimel-
ing's affidavit reads as follows:
5. Commercials shown by Albany market stations would be
seen by Canadians in Eastern Ontario. Commercials shown by
Buffalo market stations would be seen by Canadians in South
Western and South Central Ontario. Commercials shown by
Rochester market stations would be seen by Canadians in
South Central and Eastern Ontario. In having television com
mercials aired on Albany, Buffalo and Rochester market televi
sion stations, Borden, Inc. was aware that those commercials
would be seen by Canadians.
The purpose of all this evidence is to establish
that the appellant's trade marks "Dipsy Doodles"
and "Cheez Doodles" were, at the material time,
"known in Canada" within the meaning ascribed
to that phrase in E. & T. Gallo Winery v. Andres
Wines Ltd., supra. As previously mentioned, there
were in the Andres Wines case forty-six affidavits
of border television station officials giving details
of television broadcasts that were received in
Canada. There was also affidavit evidence that the
television commercials had the potentiality of
reaching fifty-one per cent of the population of
Canada. Thurlow J. was thus able to conclude at
page 13 F.C.:
... the telecasts, as a whole, of commercial messages referring
to the appellant's SPANADA wine by United States border
television stations in the period between January 1970 and
November 2, 1970 were received in Canada not only by a few
but by a very large number of television viewers in Canada and
further that the trade mark "SPANADA" had become known
to many people in Canada. [Emphasis added.]
I am unable to draw any such conclusion from
the evidence in the present case. As I see it, the
evidence relating to spill-over television advertising
is largely hearsay. Mr. Boyer admitted on cross-
examination that he was not personally aware that
any of the television commercials were actually
shown in Canada. Likewise, Mr. Stimeling had no
personal knowledge that the appellant's television
commercials were actually broadcast into Canada.
The statement in his affidavit to the effect that the
appellant's commercials would be seen by Canadi-
ans in Ontario appears to have been founded on his
personal recollection of listening to United States
television shows while camping in Canada as well
as on Federal Communications Commission maps
showing the reach of broadcast signals. It was
brought out in cross-examination that these maps
give no indication of the actual extent of viewer
participation, and the extent to which the affiant
actually consulted these maps is left very much in
doubt. To Mr. Stimeling's knowledge, the appel
lant had never inquired of border television sta
tions as to whether the television commercials
reached Canadian markets by way of direct signals
or cable broadcasts. Mr. Abernathy confirmed on
cross-examination that the appellant had never
studied or investigated the extent of spill-over ad
vertising into the Canadian market. When ques
tioned specifically as to the basis for his statement
that the appellant had promoted "Cheez Doodles"
products by spill-over advertising as early as 1981,
he replied:
I think anyone who is familiar with the Toronto, Montreal,
Ontario markets, is aware that measured media broadcast from
one country very readily crosses into the other. It's common for
U.S. stations to be seen in Toronto. I saw a number of them on
television in my hotel room last night.
In my opinion, the evidence of the spill-over
effect from television commercials in the United
States falls far short of proving that the appellant's
trade marks "Dipsy Doodles" and "Cheez Doo
dles" were known in Canada at the material time.
Moreover, no evidence was adduced as to the
extent of circulation in Canada of the magazines
Mademoiselle and Esquire and Mr. Boyer could
only say under cross-examination, "I guess I was
advise[d] that they have circulation in Canada".
Presumably, I can take judicial notice of the fact
that these publications enjoy some circulation in
Canada. However, it would be improper to specu
late as to the extent thereof. The reference to
"Cheez Doodles" in the Mademoiselle magazine is
very brief and essentially innocuous. As for the
Esquire cartoon, I find that it would have little
weight or significance from the standpoint of a
Canadian reader.
It remains to consider the evidence supporting
the submission that many Canadians are exposed
to the appellant's trade marks in their travels to
the United States, particularly in the eastern sea-
board and Florida areas. The Boyer affidavit
deposed that many Canadians travelling in United
States vacation areas are aware of the "Cheez
Doodles" products of the appellant. When ques
tioned on cross-examination as to the basis for this
statement, Mr. Boyer replied: "I suspect it would
be the assumption of mobility of people within the
United States and Canada as well". The evidence
of Mr. Abernathy with respect to Canadian travel
patterns in the United States was limited to
reports from a fellow sales and marketing
employee, and to his own observations of Canadian
licence plates on U.S. highways. No direct evi
dence was adduced to establish the actual number
of Canadians travelling in the states in which the
appellant's snack food products are advertised, or
the extent of their exposure to these advertise
ments.
In the result, I find that the appellant's trade
marks have not become known sufficiently in
Canada to justify reaching a conclusion that the
respondent's trade mark "Doodles" was not adapt
ed to distinguish its wares in the marketplace from
those of others. I do not propose to elaborate on
the case of Orkin Exterminating Co. Inc. v. Pestco
Co. of Canada Ltd. et al. (1985), 50 O.R. (2d)
726; 19 D.L.R. (4th) 90; 30 B.L.R. 152; 34 CCLT
1; 5 C.P.R. (3d) 433; 10 O.A.C. 14 (C.A.), cited
by appellant's counsel, inasmuch as the case is
distinguishable as one involving a passing-off
action and an injunction. Moreover, the case is
further distinguishable by the fact that there was
direct evidence of Canadian customers that the
plaintiff's trade mark in relation to pest control
meant to them services of the plaintiff.
Deception or Misleading the Public
The crux of the appellant's case on this point is
that respondent's knowledge of the appellant's
registration and use of the "Doodles" family of
trade marks in the United States, and more par
ticularly the registrations for "Dipsy Doodles" and
"Cheez Doodles", should preclude the respond-
ent's registration of its proposed trade mark in
Canada. Counsel for the appellant argues that the
respondent was fully aware of the appellant's sales
activities in the United States with respect to its
snack food products, but nevertheless blatantly
copied the trade mark "Doodles". Appellant's
counsel points to the difficulty encountered by the
fact that Messrs. McKechnie and Douglas refused
to submit themselves to further cross-examination,
with the result that their affidavit evidence was
struck from the register. In his submission, their
refusal to reattend for cross-examination justifies
the inference that they had knowledge of the
appellant's registration and use of its trade marks
in the United States, which they were fearful of
disclosing.
Counsel for the respondent submits that there is
no cogent evidence that the respondent knew about
the U.S. registrations in respect of the appellant's
trade marks "Dipsy Doodles" and "Cheez Doo
dles". Respondent's counsel also argues that mala
fides is not relevant to the issue of distinctiveness,
and submits that the respondent's applications for
"Hostess Cottage Fries" and "Hostess Home
Fries" are irrelevant to the present appeal.
In the Andres Wines case, Thurlow J. quoted
extensively from the judgment of Maclean J. in
Williamson Candy Co. v. W.J. Crothers Co.,
[1924] Ex.C.R. 183, and came to the following
conclusion at pages 17-18 F.C.:
The statute has been changed since this was written but the
general comments of the learned Judge are as valid today as
they were in 1924. The significant part of this for present
purposes is that on facts which are strikingly similar in princi
ple the learned Judge held that having regard to the plaintiff's
advertising and the knowledge of its mark thereby generated in
Canada the defendant's registration of the mark for use in
Canada was "calculated to deceive or mislead the public" and
for that reason should be expunged. This particular finding of
the learned Judge later became the basis for the affirming of
his judgment by the Supreme Court. [1925] S.C.R. 377;
[[1925] 2 D.L.R. 844.]
At page 380 [S.C.R.], Anglin, C.J., speaking for the majori
ty of the Court said:
The learned President has held that the defendant's trade
mark as registered "is calculated to deceive and mislead the
public". That finding has not been successfully impeached.
The evidence warrants it. It in turn fully supports the order
made by the Exchequer Court that the defendant's trade
mark should be expunged as a trade-mark which the Minis
ter in the exercise of his discretion could properly have
refused to register.
On the facts of the present case I am of the opinion that here
too the registration of the mark "SPANADA" as the trade
mark of the respondent and its use by the respondent in
association with its wines would be calculated to deceive and
mislead the public and that it follows from this that the mark is
not adapted to distinguish the wares of the respondent. The
opposition of the appellant under s. 37(2)(d) of the Trade
Marks Act should therefore be sustained.
'In my view, the present case is distinguishable
from the Andres Wines case by the fact that there
is no evidence that the appellant's foreign trade
marks "Dipsy Doodles" and "Cheez Doodles"
were so widely known in Canada as to justify the
conclusion that the respondent's application to reg
ister the "Doodles" trade mark was calculated to
deceive and mislead the public. In any event, I find
that there is no real evidence that the respon
dent was aware at the material time of the regis
trations and use of the appellant's trade marks
"Dipsy Doodles" and "Cheez Doodles" in the
United States. Moreover, section 5 of the Trade
Marks Act was neither pleaded nor argued. Conse
quently, this ground of appeal based on deception
must also fail.
For the foregoing reasons, the appellant's appeal
is dismissed, with 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.