T-3125-90
The Clorox Company (Appellant)
v.
Sears Canada Inc. (Respondent)
INDEXED AS: CLOROX CO. V. SEARS CANADA INC.. (TD)
Trial Division, Joyal J.—Ottawa, February 5 and
March 25, 1992.
Trade marks — Registration — Appeal from refusal to regis
ter mark "K.C. Masterpiece" and design in association with
barbecue sauce — Respondent alleging confusing with own
mark "Masterpiece" for cakes and chocolates — Registrar fol
lowed step-by-step procedure leading to conclusion applicant
failed to establish no likelihood of confusion — Procedure cre
ating technical approach to Act, s. 6(5), not giving due regard
"to all the surrounding circumstances" — Various areas of
enquiry not to be given equal weight — Decision-
making process not to be reduced to mathematical calculation
— "Masterpiece" common word deserving narrow protection,
user may not unfairly monopolize word — Comparatively
small differences sufficient to avoid confusion — Same general
class test of limited value concerning supermarket products —
Likelihood of confusion to be addressed in light of surrounding
circumstances.
This was an appeal from the refusal to register the trade
mark "K.C. Masterpiece" and design in association with a bar
becue sauce because the Registrar found, on balance, that the
applicant had not established no likelihood of confusion with
the respondent's registered mark "Masterpiece" used in associ
ation with cakes and chocolates, particularly fruitcakes, sold
only at Sears stores. The Registrar followed a step-by-step pro
cess, considering the factors enumerated in Trade-marks Act,
subsection 6(5), and the surrounding circumstances. She found
"Masterpiece" was suggestive of the quality of the wares and
that "K.C. Masterpiece" and design possessed a higher degree
of distinctiveness because of the design. The Registrar con
ceded that the nature of the wares and their channels of trade
were such that the products would not compete, although they
were both food products normally found in the same outlets. In
applying the principle of first impression and imperfect recol
lection, the Registrar concluded that if a determinate conclu
sion on the confusion issue could not be made, that issue had
to be decided against the applicant.
Held, the appeal should be allowed.
The danger in the Registrar's approach is that it tends to cre
ate a technical approach to the provisions of subsection 6(5)
and to supersede the opening words of subsection 6(5), namely
that regard must be had "to all the surrounding circumstances".
The paragraphs of subsection 6(5) were not meant to circum
scribe the limits of the surrounding circumstances, but to focus
the mind of the decision-maker on the more specific fields of
enquiry to be addressed. Those fields of enquiry are not
exhaustive, nor is each individual area of enquiry to be given
equal weight. Otherwise the decision-making process would be
reduced to a mathematical calculation. The weight to be given
to the individual tests under the various paragraphs of subsec
tion 6(5) should be balanced with the more unfettered consid
eration of all surrounding circumstances. A decision on the
issue of confusion under subsection 6(5) cannot be the sum of
the individual tests in the paragraphs which follow. The sur
rounding circumstances are overriding.
The Registrar failed to analyze some of those circumstances.
(1) As a common dictionary word, "Masterpiece" deserves a
narrow ambit of protection. It is descriptive of the quality of
the wares. (2) "Masterpiece" is a house brand used exclusively
in Sears stores. (3) The user of a mark deserving of limited
protection cannot unfairly monopolize the word. Compara
tively small differences are sufficient to avoid confusion. That
the appellant's mark had a slightly higher level of distinctive
ness may be sufficient to avoid confusion. (4) The narrow pro
tection doctrine applies to the similarity of wares test. There
are so many different products available in supermarkets that
courts should be wary of giving too much weight in some cir
cumstances to the "same general class" test. Otherwise, the
application of such a test alone could result in a weak mark
gaining a monopoly over a dictionary word, which the courts
are reluctant to accept. (5) Finally, the likelihood of confusion
in subsection 6(2) must not be addressed in the abstract, but in
the light of surrounding circumstances. It is unlikely that the
wares would appear side by side on the same shelf in the same
retail store. The test resulting from a literal application of the
rule would be more a possibility, rather than a likelihood, of
confusion.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 6(2),(5),
12(1)(d).
CASES JUDICIALLY CONSIDERED
APPLIED:
General Motors Corp. v. Bellows, [1949] S.C.R. 678;
(1949), 10 C.P.R. 101.
CONSIDERED:
Park Avenue Furniture Corp. v. Wickes/Simmons Bedding
Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Office Cleaning
Services Ltd. v. Westminster Window & General Cleaners
Ltd. (1946), 63 R.P.C. 39 (H.L.).
REFERRED TO:
Canadian Schenley Distilleries Ltd. v. Canada's Mani-
toba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D.);
Mission Pharmacal Co. v. Ciba-Geigy Canada Ltd.
(1990), 30 C.P.R. (3d) 101; 34 F.T.R. 176 (F.C.T.D.);
Mitac Inc. v. Mita Industrial Co. Ltd., T-236-90, Denault
J., judgment dated 9/1/92, F.C.T.D., not yet reported;
Maximum Nutrition Ltd. v. Kellogg Salada Can. Inc.
(1987), 11 C.I.P.R. 1; 14 C.P.R. (3d) 133; 9 F.T.R. 136
(F.C.T.D.); Panavision, Inc. v. Matsushita Electric Indus
trial Co. Ltd., T-2728-89, Joyal J., judgment dated
14/1/92, F.C.T.D., not yet reported; Freed & Freed Ltd v.
Registrar of Trade Marks et al., [1950] Ex.C.R. 431;
[1951] 2 D.L.R. 7; (1950), 14 C.P.R. 19; 11 Fox Pat. C.
50.
AUTHORS CITED
Fox, Harold G. The Canadian Law of Trade Marks and
Unfair Competition, 3rd ed., Toronto: Carswell Co.
Ltd., 1972.
APPEAL from refusal to register trade mark and
design (1990), 33 C.P.R. (3d) 489 (Opp. Bd.). Appeal
allowed.
COUNSEL:
David J. McCruder for appellant.
R. Scott Jolliffe for respondent.
SOLICITORS:
Barrigar & Oyen, Ottawa, for appellant.
Gowling, Strathy & Henderson, Toronto, for
respondent.
The following are the reasons for judgment ren
dered in English by
JOYAL J.: This is an appeal by the appellant from a
decision of the Registrar of Trade-marks refusing to
register the trade-mark "K.C. Masterpiece" and
design in association with a barbecue sauce. The
application, under No. 490,598, is based on use and
registration in the United States. The mark and
design are as follows:
The respondent opposes the registration of the
trade-mark on the grounds that it was not registrable
pursuant to paragraph 12(1)(d) of the Trade-marks
Act [R.S.C., 1985, c. T-13] as it is confusing with the
respondent's own registered mark "Masterpiece",
registration number 154,632, for wares covering
"cakes and chocolates". The respondent alleges fur
ther that the applicant is not entitled to registration in
view of the respondent's prior use of the "Master-
piece" trade-mark. Finally, the respondent claims that
the applicant's trade-mark is not distinctive.
OPPOSITION BOARD DECISION
In her considered reasons for decision, the Opposi
tion Board Member (hereinafter the Registrar),
reviewed the application before her as well as the evi
dence adduced by the parties. She refused the appli
cation. The full text of her reasons may be found in
(1990), 33 C.P.R. (3d) 489 (Opp. Bd.).
In arriving at this conclusion, the Registrar found
as follows:
1. The onus of establishing no reasonable likeli
hood of confusion between the proposed trade
mark and the registered trade-mark rests on the
applicant.
2. In so doing, regard must be had for the indicia
found in subsection 6(5) of the Trade-marks Act
and including an enquiry into all the surrounding
circumstances.
3. The registered trade-mark "Masterpiece" pos
sesses some degree of inherent distinctiveness
though somewhat suggestive with respect to the
quality of the wares. On the other hand, the pro
posed mark "K.C. Masterpiece" and design pos
sesses a higher degree of distinctiveness in view of
the design feature.
4. Concerning the nature of the wares and their
channels of trade, the Registrar conceded that bar
becue sauce on the one hand and cakes and choco
lates on the other are not competing products and
by their dissimilar nature would not be expected to
emanate from the same source; nevertheless, con
sideration had to be given to the fact they are all
food products normally found in the same outlets.
5. Although there was evidence that the registered
mark "Masterpiece" covered wares available only
through Sears retail outlets and were generally pro
moted at Christmastime, the Registrar noted that
no such restrictions apply to the respondent's state
ment of wares and the wares involved, being food
products, could very well find themselves on the
same shelf in the same store.
6. Although the proposed mark has a higher degree
of distinctiveness by reason of its design features,
the word "Masterpiece" is its more striking ele
ment. In applying the principle of first impression
and imperfect recollection, the Registrar concluded
that if a determinate conclusion on the confusion
issue could not be made, that issue had to be
decided against the applicant.
7. Finally, the Registrar considered the use on the
trade-marks register and in trade names and corpo
rate names of the word "Masterpiece". She found
that not much weight could be given to this. The
wares and services covered by registered marks
were quite dissimilar and the use of the word in
corporate name inconclusive. In fact, the wares of
the parties belong to the same general class and it
is on this basis that the issue should be decided.
THE CASE FOR THE APPELLANT
Appellant's counsel argues that the Registrar came
to the wrong conclusion and that it is well within the
Court's jurisdiction on an appeal of this nature to
form its own opinion as to whether or not the two
competing marks are confusing. In more specific
terms, counsel submits as follows:
1. An assessment of the confusion issue requires
that the totality of the mark must be considered as
a matter of first impression by a person of average
intelligence acting with ordinary caution, i.e.
would the use of both trade-marks in the same area
likely lead to the inference that the wares involved
have a common source. The appellant urges the
Court to follow Park Avenue Furniture Corp. v.
Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.
(3d) 413 (F.C.A.); Canadian Schenley Distilleries
Ltd. v. Canada's Manitoba Distillery Ltd. (1975),
25 C.P.R. (2d) 1 (F.C.T.D.); H. G. Fox, The Cana-
dian Law of Trade Marks and Unfair Competition,
3rd ed., 1972, pages 167-169.
2. The registered mark "Masterpiece" is a very
weak mark. It is a common dictionary term, a
seemingly laudatory or descriptive word and com
monly adopted as a trade-mark. Such marks are
entitled to only a narrow ambit of protection. There
is quoted in that regard the words of Lord Simonds
in Office Cleaning Services Ltd. v. Westminster
Window & General Cleaners Ltd. [0946), 63
R.P.C. 39 (H.L.)] as repeated by Rand J. in Gen
eral Motors Corp. v. Bellows, [1949] S.C.R. 678,
at page 691:
It comes in the end, I think, to no more than this, that where
a trader adopts words in common use for his trade name, some
risk of confusion is inevitable. But that risk must be run unless
the first user is allowed unfairly to monopolize the words. The
Court will accept comparatively small differences as sufficient
to avert confusion. A greater degree of discrimination may
fairly be expected from the public where a trade name consists
wholly or in part of words descriptive of the articles to be sold
or the services to be rendered.
Appellant's counsel also refers to Harold G. Fox
(op. cit.), at page 173 as follows:
When it is contended that two words are confusing by reason
of the fact that they suggest the same idea regard should be had
to the nature of the words. If the words are distinctive, in the
sense of being invented words, small differences will not be
sufficient to distinguish them, whereas if the words are com
mon or descriptive in meaning, they must be taken with their
disadvantages. No person is entitled to fence in the common of
the English language and words of a general nature cannot be
appropriated over a wide area. [Underlining added.]
3. Appellant's counsel argues, on the facts before
the Registrar, that although the respondent's mark
"Masterpiece" was limited to cakes and chocolates,
its use became even more limited when at the
material date, the respondent had effectively
restricted its use to fruitcake. In terms of the
"material date", the Federal Court of Appeal in the
case of Park Avenue Furniture Corp. (op. cit.) has
now made it quite clear that on the issue of confu
sion, the material date is the date of the disposition
of the opposition proceedings. In the interim, of
course, more "Masterpiece" registrations have
found their way into the register and as a result, the
distinctiveness of the mark has become more
diluted. Indeed, a trade-mark "Meaty Masterpiece"
for cat food has been allowed for registration and
there is common evidence that in the food busi
ness, cat food is regarded as an ordinary food prod
uct.
4. A further result of the foregoing is that although
the competing marks both cover food products
generally, regard should be had to an inherent,
common or well-understood distinction between a
condiment, such as barbecue sauce on the one hand
and a confectionery, such as fruitcake, on the
other.
5. Appellant's counsel suggests that the Registrar
did not adequately respond to the evidence of use
by the respondent over the years 1981 to 1985.
"Masterpiece" is a house brand of the respondent
and the product sold exclusively in Sears outlets.
Products under that mark are found in candy coun
ters and a mere 0.65% of all the respondent's floor
space is devoted to all its food products. This sug
gests, says counsel, a very limited exposure of the
respondent's mark. This implies, he says, that not
much distinctiveness attaches to it.
THE CASE FOR THE RESPONDENT
Respondent's counsel draws the Court's attention
to the carefully drafted reasons in the Registrar's
decision. Counsel suggests that the Registrar's
approach indicates to what extent she considered the
various indicia in subsection 6(2) and subsection 6(5)
of the Trade-marks Act to arrive at her conclusion.
An analysis of her decision discloses the following:
1. The Registrar notes the weakness of the "Mas-
terpiece" trade-mark.
2. She recognizes that the onus is on the applicant
to prove that as between the two marks "Master-
piece" and "K.C. Masterpiece" and design, there is
no likelihood of confusion.
3. She notes the respondent's use of its trade-mark
stretching over a number of years, its advertise
ments in Sears catalogues and its identification
with Sears confectionery products.
4. She applies the test of first impression and
imperfect recollection to conclude that the word
"Masterpiece" predominates.
5. She finds that both marks are in association with
the same class of wares, namely food products.
6. She finds that although the wares are dissimilar,
they both cover food products which could nor
mally be found in the same outlets.
7. Finding herself unable to make an unqualified
determination as to whether or not there is a likeli
hood of confusion, she rightly relies on the onus
provision to allow the opposition and refuse regis
tration.
Respondent's counsel states that the Registrar cov
ered the whole field of statutory enquiry under sub
section 6(5) in her decision. No material fact on the
issues is overlooked. Every point raised by the appli
cant is traversed. No error can be found in her rea
soning and consequently the Court should be
extremely loath to intervene.
In support, respondent's counsel refers to com
ments of this Court in Mission Pharmacal Co. v.
Ciba-Geigy Canada Ltd. (1990), 30 C.P.R. (3d) 101
at page 107; Mitac Inc. v. Mita Industrial Co. Ltd.,
T-236-90, judgment dated January 9, 1992, Denault
J. (F.C.T.D.), not yet reported; Maximum Nutrition
Ltd. v. Kellogg Salada Can. Inc. (1987), 11 C.I.P.R. 1
(F.C.T.D.), at pages 3-4; Panavision, Inc. v. Matsu-
shita Electric Industrial Co. Ltd., T-2728-89, Joyal J.,
judgment dated January 14, 1992 (F.C.T.D.), not yet
reported (but against which an appeal has been filed).
All of these cases suggest that this Court should
not intervene against a Registrar's decision in opposi
tion proceedings unless it is clearly satisfied that the
Registrar came to the wrong conclusion on the facts.
Respondent's counsel also refers to Freed & Freed
Ltd. v. Registrar of Trade Marks et al., [1950] Ex.
C.R. 431, a 1950 decision of Thorson P. in the
Exchequer Court of Canada, where it was said that
although a judge hearing an appeal from a Registrar's
refusal to register a mark is not relieved from the
responsibility of determining the issue with due
regard to the circumstances of the case, the onus on
an appellant does not shift. Further, on the issue of
confusion, it is not the likely effect of the use of two
marks on the mind of the judge that is in issue, it is
whether there is likelihood of confusion in the minds
of dealers in and/or users of the goods on which the
marks are used.
FINDINGS
I should certainly agree with respondent's counsel
that the Registrar's decision is well-structured. She
faced what both parties will recognize as a difficult
situation. To deal with it, she properly followed a
step-by-step procedure and found that on balance, the
applicant had not quite succeeded in establishing no
likelihood of confusion.
Yet, if otherwise correct, there is always a risk in
that procedure. It tends to create a technical approach
to the provisions of subsection 6(5) of the statute and,
in the decision-making process, to supersede the
more generic provision of the opening words of sub-
section 6(5), namely that regard must be had "to all
the surrounding circumstances". The paragraphs of
subsection 6(5), in my respectful view, are not meant
to circumscribe the limits of these surrounding cir
cumstances but more to focus the mind of the deci-
sion-maker on the more specific fields of enquiry
which he or she must necessarily address. Doctrine in
trade-mark matters, however, is quite clear that those
fields of enquiry are not exhaustive, nor for that mat
ter, is each individual area of enquiry to be given
equal weight. To argue otherwise would simply
reduce the decision-making process to a mathemati
cal calculation.
I should not suggest by these comments that such
is the virus which may be found in the Registrar's
decision. Far from it. I repeat, on a reading of that
decision, no particular fault may be found in any of
the observations she made under paragraphs 6(5)(a),
(b), (c), (d) and (e). Each of them has merit and, in
isolation, each of them might otherwise invite
endorsement by the Court.
On the other hand, it seems quite clear to me that a
decision on the issue of confusion under subsection
6(5) cannot be the sum of the individual tests in the
paragraphs which follow. The opening words of sub
section 6(5) speak of "all the surrounding circum
stances". The surrounding circumstances are overrid
ing. It is in regard to those circumstances which are
not didactically enumerated in the paragraphs that the
case before me merits some findings which are not
specifically analyzed in the impugned decision.
Firstly, it is admitted that the mark "Masterpiece"
is a common dictionary word which should only be
given a narrow measure of protection. More than this,
as the Registrar stated, the mark is suggestive, I
would say descriptive, of the quality of the wares.
Indeed, the Sears catalogues represent Masterpiece
fruitcake as "the finest", the top-of-the-line so to
speak.
Secondly, the respondent's mark "Masterpiece" is
a house brand used exclusively in Sears stores in
Canada and, as the volume of sales of products under
that brand indicates, there has been relatively limited
exposure. As a house brand, of course, it would not
be expected or there is very little likelihood that Sears
would peddle its Masterpiece fruitcakes through
independent outlets.
Thirdly, if the mark "Masterpiece" itself is deserv
ing of limited protection, the law is clear, on the
strength of the General Motors case (op.cit.) that its
user cannot be allowed unfairly to monopolize the
word. "[C]omparatively small differences", the Court
quoted in that case [at page 6911 , are deemed "suffi-
cient to avoid confusion." It is noted that the appel
lant's mark is composed of both the mark "K.C. Mas
terpiece" and its design features incorporate not only
a stylized border on its label but the words "People
Crave it!" and "The Barbecue Sauce". The fact as
found by the Registrar that the word "Masterpiece"
predominates on the mark and design, inviting the
first impression and imperfect recollection test, does
not detract from the principle or doctrine I have just
quoted. The Registrar herself characterized the appel-
lant'smark as_havinga- slightly higher level of dis
tinctiveness" and so it might he suggested that this
minimal level is all that is required to avoid confu
sion.
Fourthly, I should observe that in my view, the
"narrow protection" doctrine applies equally when
dealing with the similarity of the wares test. It is
quite true that fruitcake and barbecue sauce may be
said to belong to the general category of foodstuffs,
but the test cannot be applied on a black or white
basis. One only needs to look at the thousands of dif
ferent foods, meats, condiments, confectioneries,
cereals and what-not found in some supermarkets to
be wary of giving too much weight in some circum
stances to the "same general class" test. Otherwise, in
the case of a weak mark like "Masterpiece", the
effect of the test standing alone would be to grant a
monopoly over a particular dictionary word, a status
which the courts have historically challenged.
Lastly, I should refer to the likelihood of confusion
under subsection 6(2) of the Trade-marks Act. Again,
the weight to be given to that test by any decision-
maker must be related to all the surrounding circum
stances. The rule speaks of likelihood of confusion if
the wares covered by competing marks, as in the
classic scenario adopted in trade-mark cases, were
placed side by side on the same shelf in the same
retail store. In my view of the case before me, this
would be a very unlikely occurrence. The respon
dent's wares have certainly not been known to have
been marketed outside its own premises. Indeed, the
Registrar commented on that particular feature of the
case but observed that the respondent's statement of
wares did not contain any restrictions in that regard
and there was therefore no bar to the use of the mark
outside Sears outlets.
I should remark, however, that subsection 6(2)
speaks of the likelihood of confusion and such a like
lihood must not be addressed in the abstract but in the
light of surrounding circumstances. Otherwise, an
unqualified or literal application of the rule imposes
more of a test of possibility of confusion than a test
of a likelihood of confusion.
There is of course the possibility of the respon
dent's mark being assigned to any person to be used
in association with fruitcake and chocolates. It is my
view, nevertheless, that the distinguishing guise of
the appellant's mark would still avoid the likelihood
of confusion.
CONCLUSIONS
I have attempted to traverse the several grounds
covered by the Registrar in her decision and I should
repeat here that she has covered these grounds care
fully. If I should express disagreement with her, it is
not with her fact-finding on each of the several
grounds but with the ultimate conclusion she has
drawn. In that regard, it might be said that her reluc
tance to make a determination of the confusion issue
was that she could not consider at the date of her
decision that the Federal Court of Appeal in the Park
Avenue Furniture case (supra), would extend consid
erably the material date when the facts become fixed,
and that the mark "Meaty-Masterpiece" covering cat
food was admitted to registration. Her view of the
case might otherwise have been somewhat different.
In any event, I should prefer to balance the weight
to be given to the individual tests under the various
paragraphs of subsection 6(5) of the statute with the
more unfettered consideration of all surrounding cir
cumstances. In the result, it might be said to be the
application of the well-known aphorism that on the
issue of confusion, the general provision in subsec
tion 6(5) is greater than the sum of its individual
parts.
With respect, therefore, I should come to a deci
sion which is more favourable to the appellant and
conclude that the burden on it to establish no reasona
ble likelihood of confusion has been met. The appel
lant is entitled to the registration of its mark and
design.
The appellant is also entitled to its 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.