A-279-90
Canadian Olympic Association—Association
Olympique Canadienne (Appellant) (Plaintiff)
v.
Konica Canada Inc. (Respondent) (Defendant)
INDEXED AS: CANADIAN OLYMPIC ASSN. V. KONICA CANADA
INC (C.A.)
Court of Appeal, Hugessen, MacGuigan and Linden
JJ.A.—Toronto, November 12 and 13; Ottawa, Nov-
ember 22, 1991.
Trade marks — Infringement — Appeal from dismissal of
action for permanent injunction — Notice of adoption and use
of "Olympic" etc. as official marks in 1980 — Respondent
sells films and cameras — As sub-licensee of Guinness, brewer
and publisher of Guinness Book of Olympic Records since
before 1980, acquired right to publish and distribute own edi
tion thereof prior to 1988 Olympics — Book included in pro
motional package with film — Trial Judge erred in holding
respondent not using appellant's official marks as trade marks
— As essential part of distinguishing guise, "Olympic" used as
trade mark — "Olympic" also used as trade mark in associa
tion with books, films, and cameras as association between
mark and wares so close and so clearly related to sale (deemed
use under s. 4) — Guinness only entitled to use "Olympic" as
trade mark with respect to beer and books — Licensee limited
to same use — Cannot use mark to promote films and cameras.
Constitutional law — Distribution of powers — Trade-marks
Act, ss. 9 and 11 prohibitions referring to trade marks or oth
erwise — Respondent arguing "or otherwise" ultra vires as
unlimited in application and could restrict freedom of speech
and exercise of civil rights within provinces — Plain words of
ss. 9 and 11 in context restricting scope to official marks or
one so nearly resembling it as to be likely to be mistaken for it
in connection with business.
Copyright — Infringement — Respondent pleading right as
licensee to copyright in title Guinness Book of Olympic
Records — Nothing in Copyright Act touching disputed right to
use "Olympic" as trade mark in association with films and
cameras.
This was an appeal from the judgment of Denault J. dis
missing an action for a permanent injunction and damages.
Trade-marks Act, subparagraph 9(1)(n)(iii) prohibits the adop
tion in connection with a business as a trade mark or otherwise
any mark adopted as an official mark in respect of which the
Registrar has given public notice. Notice of the adoption and
use of "Olympic", "Winter Olympics" and "Summer Olym-
pics" as official marks was given in 1980. Prior vested rights
are undisturbed by subsequent adoption and use of a confus
ingly similar mark. The Guinness Company, brewers of beer,
had been publishing the Guinness Book of Olympic Records for
many years prior to 1980. The respondent sells films and cam
eras. As a sub-licensee of Guinness, it acquired the right to
publish and distribute in Canada its own edition of the Guin-
ness Book of Olympic Records which consisted of the entire
text of that publication with distinctive Konica spine, front and
back covers, and first and last pages. The respondent added to
the book advertising and discount coupons for its films and
cameras. The book was included in a promotional package,
shrink-wrapped with three rolls of Konica film. The package
was to be sold as a package of film, with the book as a pre
mium. The appellant obtained an interlocutory injunction
prohibiting distribution of the package. The Trial Judge held
that the respondent had not used the appellant's official marks
as trade marks, but that it had done so "otherwise" and "in con
nection with a business" so as to bring it within the prohibition
of sections 9 and 11. But he dismissed the action on the ground
that the adoption and public notification of the appellant's offi
cial marks could not have retrospective effect. He held that
Guinness, rather than Konica, had adopted the marks.
Held, the appeal should be allowed.
The Trial Judge erred in holding that the respondent had not
used "Olympic" as a trade mark. He appears to have over
looked paragraph (c) of the definition under which "trade-
mark" can mean a distinguishing guise. "Distinguishing guise"
includes a mode of packaging wares, the appearance of which
is used to distinguish wares from those of others. As the
shrink-wrapped package bound the book and film inseparably
together, and given that the words "Olympic Records" are gold
and noticeably larger than any other characters on the package,
"Olympic" was an essential part of a distinguishing guise used
by the respondent to distinguish its wares. Second, and even
more important, the publication and distribution of the book,
independent of its shrink-wrapped packaging with the film,
constituted use of the word "Olympic" as a trade mark. Since
the prohibition in both sections 9 and 1 l relate to use, it was
necessary to look at the definition thereof. There is deemed use
in association with wares if, at the time of sale the trade mark
is marked on the wares or packages so that notice of the associ
ation is given. "Wares" includes printed publications.
"Olympic" was therefore used as a trade mark in association
with the books—it was marked on the books for the purpose of
distinguishing them—but also in association with films and
cameras, given that the book was a promotional item and con
tained advertising for the respondent's films and cameras. The
association between the mark and the wares was so close and
so clearly related to their sale (notably in the coupons offering
discounts on the price of the wares) that the mark was used by
the respondent as a trade mark in association with them.
The finding that Konica's use of the official marks was
"otherwise" than as a trade mark is not incompatible with the
view that the uses indicated constituted use as a trade mark.
Denault J. also erred in failing to inquire into the extent of
Guinness' vested rights to which the respondent was a licen
see. Those rights, including the right to use the word
"Olympic" as a trade mark, were not affected by the appel
lant's public notification of its official marks. "Use" as a trade
mark is use in association with specific wares or services.
Although conceived to advertise the Irish brew, the Guinness
Books of Records now exist independent of the brewery. The
trade mark "Guinness Book of Olympic Records" is also used
in association with the books themselves as wares. Beer and
books were the only wares in association with which Guinness
had used the word "Olympic" as a trade mark prior to 1980. As
Guinness' rights to the trade mark "Olympic" were limited to
use of that mark in association with beer and books, so were
the licensee's (Konica). It could not use the mark to promote
films and cameras.
The respondent pleaded its right as licensee to the copyright
in the title Guinness Book of Olympic Records. The question of
copyright was a red herring. What was at issue was the right to
use "Olympic" as a trade mark in association with films and
cameras. Nothing in the Copyright Act touches that right in
any way.
The respondent alleged that "or otherwise" in sections 9 and
11 were ultra vires of Parliament as they were unlimited in
application and could restrict freedom of speech and restrain
the exercise of ordinary civil rights within the provinces. A
reading of the plain words of those sections in their context
restricts their scope to use of an official mark, or one so nearly
resembling it as to be likely to be mistaken for it, in connection
with a business.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Copyright Act, R.S.C., 1985, c. C-42, s. 2.
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2, 3, 4,
9(1)(n)(iii), 11, 20.
CASES JUDICIALLY CONSIDERED
REVERSED:
Canadian Olympic Assn. v. Konica Canada Inc., [1990] 2
F.C. 703; (1990), 69 D.L.R. (4th) 432; 30 C.P.R. (3d) 60;
35 F.T.R. 59 (T.D.).
CONSIDERED:
Canadian Olympic Assn. v. Allied Corp., [1990] 1 F.C.
769; (1989), 26 C.I.P.R. 157; 28 C.P.R. (3d) 161; 105
N.R. 388 (C.A.).
REFERRED TO:
Clairol International Corp. et al v. Thomas Supply &
Equipment Co. Ltd et al, [1968] 2 Ex.C.R. 552; (1968),
38 Fox Pat. C. 176; Wembley Inc. v. Wembley Neckwear
Co., [1948] O.R. 341; [1948] 3 D.L.R. 109; (1948), 8
C.P.R. 132; 7 Fox. Pat. C. 244 (C.A.); Francis Day &
Hunter, Ld. v. Twentieth Century Fox Corporation, 14.,
[1940] A.C. 112 (P.C.); Asbjorn Horgard A/S
v. Gibbs/Nortac Industries Ltd., [1987] 3 F.C. 544;
(1987), 38 D.L.R. (4th) 544; 17 C.I.P.R. 263; 14 C.P.R.
(3d) 314; 12 F.T.R. 317; 80 N.R. 9 (C.A.).
COUNSEL:
Kenneth D. McKay and Arthur B. Renaud for
appellant (plaintiff).
D. H. Jack, Susan A. Goodeve and Karen E.
Crombie for respondent (defendant).
John S. Tyhurst for intervenor.
SOLICITORS:
Sim, Hughes, Dimock, Toronto, for appellant
(plaintiff).
McDonald & Hayden, Toronto, for respondent
(defendant).
Deputy Attorney General of Canada for inter-
venor.
The following are the reasons for judgment ren
dered in English by
HUGESSEN J.A.: In this appeal we are again called
upon to explore the reach of the protection accorded
to an official mark described in subparagraph
9(1)(n)(iii) of the Trade-marks Act: 1
9. (1) No person shall adopt in connection with a business,
as a trade-mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for,
(n) any badge, crest, emblem or mark
(iii) adopted and used by any public authority, in Canada
as an official mark for wares or services,
in respect of which the Registrar has, at the request of Her
Majesty or of the university or public authority, as the case
may be, given public notice of its adoption and use; or
In Canadian Olympic Assn. v. Allied Corp., 2 we
decided that:
Whatever rights to the use of a mark may flow from its adop
tion are undisturbed by the subsequent adoption and use of a
confusingly similar official mark; the right to register the mark
is, however, prohibited from the time of the giving of the pub
lic notice.
Today, we define in greater detail the line of
demarcation between the prior vested rights which
are "undisturbed" by the adoption and use of an offi
cial mark and the rights accruing to the public author
ity for whose benefit the official mark exists.
The appellant has caused public notice to be given
with respect to a number of official marks of which
"Olympic", "Summer Olympics" and "Winter Olym-
pics" are the most important for present purposes.
Notice of the adoption and use of such marks by the
appellant was given by the Registrar March 5, 1980.
For many years prior to 1980, the Guinness Com
pany, who were originally and are still brewers of
beer in Ireland, have published books of "records",
being chronicles of achievements in various fields of
endeavour. One of such books, issued periodically in
cycles corresponding approximately to the Olympic
cycle, has for many years had the title Guinness Book
of Olympic Records. Appellant does not contest and
no issue is raised as to the right of Guinness to pub
1 R.S.C., 1985, c. T-13.
2 [1990] 1 F.C. 769 (C.A.), at p. 775.
lish its book of Olympic records and to use the word
"Olympic" in the title thereof; our holding in Allied
Corp., supra, would in any event foreclose any such
issue.
The respondent, Konica Canada Inc., sells films
and cameras. As a sub-licensee of Guinness, it
acquired the exclusive right to publish and distribute
in Canada its own special "premium" edition of the
Guinness Book of Olympic Records to be issued in
anticipation of the 1988 winter and summer olympi-
ads. That edition consists of the entire text of the
Guinness Book of Olympic Records with distinctive
Konica spine, front and back covers (inside and out),
and first and last pages. The material added by the
respondent displays its name prominently in bold
print and includes advertising and promotional mate
rial and discount coupons for films and cameras sold
by it. The title of the publication, as it appears on the
spine and outside front cover, is KONICA Guinness
Book of OLYMPIC RECORDS. A sub-text on the
front cover reads: The Complete 1988 Winter & Sum
mer Olympic Schedule. PLUS—Valuable Discount
Coupons PLUS All the Record Holders and Medal
Winners PLUS—Hundreds of Fascinating Feats and
Facts.
The book, as published by the respondent, was
designed to be used by it as a premium in a promo
tional package. That package consisted of three rolls
of Konica colour film which were carded and plastic
"shrink-wrapped" together with the book in such a
way that only the outside front cover of the book and
the outside of the three cartons of film could be seen.
This package was then promoted and sold as a pack
age of film, with the book as a premium. In popular
terms the book was a "give away".
The promotion never really got going. As soon as
the appellant learned of it in November 1987, it
sought and obtained an interlocutory injunction
prohibiting the distribution of the book in the
"shrink-wrapped" package. Many months later, and
long after the 1988 Olympics, both winter and sum-
mer, had passed into history, the matter came on for
trial on the merits before Denault J. [[1990] 2 F.C.
703]. The present appeal is from the latter's judgment
dismissing the appellant's action for a permanent
injunction and for damages.
Denault J. found as a fact [at page 709] "that the
title and subtitle of the defendant's book so nearly
resemble as to be likely to be mistaken for some of
the official marks registered by the plaintiff." That
finding has not been put in issue on this appeal. He
then went on, however, to find that the respondent
had not made use of the appellant's official marks "as
trade-marks", but that it had done so `otherwise" and
"in connection with a business" so as to bring it
within the prohibition of sections 9 and 11 of the
Act. 3 He said [at pages 711-712]:
The defendant Konica however is a manufacturer of photo
graphic equipment and wares; its foray into the field of Cana-
dian publishing, it may safely be assumed, is primarily in order
to promote its own products. Thus it is a use "in connection
with a business" albeit otherwise than as a trade mark. The
defendant was required under its licensing agreement to use
the title and sub-title it did, containing as they do words which
may appear to be the official marks of the plaintiff. The
defendant's use of the word "Olympic" or of other words
resembling the plaintiff's marks is not a use as a trade-mark, as
that word is defined in the Act. It is evident to me that Konica
has not adopted the words "Olympic" or "1988 Winter & Sum
mer Olympic Schedule" as trade marks. Rather they have been
adopted in connection with a business otherwise than as trade
marks.
While the point may appear to some to be aca
demic, since the learned Trial Judge did, in the final
analysis, conclude that the respondent's activities
could be reached by the prohibitory words of sections
9 and 11, it is in my view important that we indicate
that he was mistaken in doing so on the sole basis of
adoption and use "otherwise" than as a trade-mark.
To put the matter another way, I think, with respect,
3 See s. 9(1) supra. S. 11 reads:
11. No person shall use in connection with a business, as
a trade-mark or otherwise, any mark adopted contrary to
section 9 or 10 or this Act....
that the Trial Judge was wrong to find that Konica's
use of the word "Olympic" was not used as a trade
mark.
In support of his conclusion the learned Trial
Judge quoted only the definition of "trade-mark" in
section 2 of the Act:
2....
"trade-mark" means
(a) a mark that is used by a person for the purpose of distin
guishing or so as to distinguish wares or services manufac
tured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(c) a distinguishing guise, or
(d) a proposed trade-mark;
In the first place, the learned Trial Judge appears to
have overlooked paragraph (c) of the quoted defini
tion of "trade-mark" which defines such a mark as
including a distinguishing guise:. This latter term is
itself defined in section 2 as follows:
2....
"distinguishing guise" means
(a) a shaping of wares or their containers, or
(b) a mode of wrapping or packaging wares
the appearance of which is used by a person for the purpose of
distinguishing or so as to distinguish wares or services manu
factured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others;
Given that the respondent's "shrink-wrapped"
package had the effect of binding the book and the
cartons of film inseparably together (at least until
purchased) and given the size and colour of the print
ing of the words "Olympic Records" (they are in
gold and are noticeably larger than any characters
appearing anywhere else on the entire package), I
find it impossible to say that the word "Olympic" is
not a significant and essential part of a distinguishing
guise being used by the respondent to distinguish its
wares.
Second, and even more important, however, it
seems to me that the publication and distribution of
the book itself, and quite independent of its "shrink-
wrapped" packaging with the film, constitutes use of
the word "Olympic" as a trade-mark within the
meaning of the Act. In this connection, it is not
enough to do as the learned Trial Judge and simply
quote the definition of "trade-mark".
The prohibition in section 9 is against "adoption",
which may be shortly described as first use in
Canada. 4 The prohibition in section 11 is against
"use". Thus, under either section, the definition of
"use" is critical:
2....
"use", in relation to a trade-mark, means any use that by sec
tion 4 is deemed to be a use in association with wares
or services;
That definition refers us to section 4, subsection
(1) of which reads:
4. (1) A trade-mark is deemed to be used in association with
wares if, at the time of the transfer of the property in or posses
sion of the wares, in the normal course of trade, it is marked on
the wares themselves or on the packages in which they are dis
tributed or it is in any other manner so associated with the
wares that notice of the association is then given to the person
to whom the property or possession is transferred.
Finally, reverting again to the definition section it
should be noted that:
2....
"wares" includes printed publications.
In so far as the wares distributed by the respondent
are the books themselves, there can simply be no
question that the word "Olympic" is used as a trade
mark within the meaning of subsection 4(1): it is
marked on the wares themselves for the purpose of
distinguishing them. Given, however, that the book is
a promotional item and contains on its inside front
4 S. 3 reads:
3. A trade-mark is deemed to have been adopted by a per
son when that person or his predecessor in title commenced
to use it in Canada or to make it known in Canada or, if that
person or his predecessor had not previously so used it or
made it known, when that person or his predecessor filed an
application for its registration in Canada.
cover and inside and outside back covers advertising
for the respondent's films and cameras, and in so far
as the latter are wares dealt in by the respondent, I
think that the word "Olympic" is being used in asso
ciation with those wares as well. If the appellant's
marks were registered, as opposed to official, marks,
the respondent's advertisements would clearly be
caught by section 20. While not all use in advertising
is use "in association with" wares "so as to distin
guish" them, 5 some such uses are. 6 Here the associa
tion between the mark and the wares is so close and
so clearly related to their sale (notably in the coupons
offering discounts on the price of the wares) that I am
satisfied that the mark is used by the respondent as a
trade-mark in association with them.
I conclude, therefore, on this aspect of the matter,
that the respondent has used the appellant's official
marks as a trade-mark for its books and for its films
and cameras and that such use has been in connection
with the respondent's business.
As indicated earlier, the learned Trial Judge found
that Konica's use of the official marks in connection
with its business was "otherwise" than as a trade
mark. I would simply indicate here that I would not
wish to be taken as necessarily disagreeing with that
finding; it is not incompatible with my further view
that the uses that I have indicated constituted use as a
trade-mark as well.
Notwithstanding his view that the respondent's
activities were within the reach of sections 9 and 11,
the learned Trial Judge dismissed the appellant's
action because he was of the view that the adoption
and public notification of the appellant's official
5 See Clairol International Corp. et al v. Thomas Supply &
Equipment Co. Ltd. et al, [1968] 2 Ex.C.R. 552. It may be
noted, however, that the interpretation of s. 4(1) given in that
case does not appear to have taken account of the French ver
sion of the statute.
6 See Wembley Inc. v. Wembley Neckwear Co., [1948] O.R.
341 (C.A.).
marks could not have retrospective effect. In this, of
course, he was quite correct as he was bound by our
judgment in Allied Corp., supra. It was his further
view, however, that the respondent itself had not
"adopted" the marks in question because it stood in
the rights of Guinness and that it was the latter which
had done so. He said [at pages 712-713]:
The defendant's central argument in this case was that sub-
paragraph 9(1)(n)(iii) cannot be given retrospective effect. The
defendant claimed that the marks were not adopted by it since
they had been adopted and used by Guinness well before Kon-
ica distributed its book. The defendant states it did not adopt
the mark, since it was already adopted. Counsel for the defen
dant referred the Court to section 3 of the Act which provides
as follows:
3. A trade-mark is deemed to have been adopted by a per
son when that person or his predecessor in title commenced
to use it in Canada or to make it known in Canada or, if that
person or his predecessor had not previously so used it or
made it known, when that person or his predecessor filed an
application for its registration in Canada. [Emphasis by
Denault J.]
I think the defendant's argument on this score is well
founded. The uncontradicted evidence of the defendant is that
Bantam Books had been publishing the Canadian edition of the
Guinness Book since the late 1960s, many years before the
adoption by the plaintiff of its official marks.
And again [at page 715]:
Only by clearly expressed statutory language could Parlia
ment override the vested rights of Guinness Books and its
licensees such as Konica. The statute makes no such provision;
in fact it leaves no room for ambiguity and is expressly drafted
in terms which, in accordance with well known interpretive
rules, cannot be given retrospective effect. Consequently, sale
and distribution of the Konica edition of the Guinness Book of
Olympic Records and the shrink wrapped film and book pack
age do not violate the Canadian Olympic Association's official
marks.
In my view, and with respect, the learned Judge
was wrong. The source of the error, as it seems to
me, is in his failure to inquire into the extent of Guin-
ness' vested rights to which the respondent was licen
see. 7 Those rights, which the Trial Judge rightly held
7 The appellant devoted some time and effort to arguing that
the respondent, as a licensee, was not a successor in title to
Guinness and therefore could not claim the latter as predeces
sor in title within the meaning of s. 3. This is quite simply a
(Continued on next page)
were not affected by the appellant's public notifica
tion of its official marks, included the right to use the
word "Olympic" as a trade-mark.
"Use" as a trade-mark, however, is not use in a
vacuum or at large. Both the definition section and
section 4 previously quoted make it plain that "use"
as a trade-mark is use in association with specific
wares or services.
The Guinness Company started life as a brewer
and it is still in that business. It may be safely
assumed that the Guinness Books of Records initially
saw the light of day as a means of promoting the
product of the Dublin brewery. Indeed, there was evi
dence before the learned Trial Judge that as late as
1976, (the last olympiad before the registration of the
appellant's official marks) the Guinness Book of
Olympic Records contained advertising for Guinness
beer. 8
Clearly, the child has outgrown the parent, or at
least come to have equal importance with it. We can
take notice today of the fact that Guinness Books of
Records are widely circulated and have an existence
quite independent of any association with the brew
ery. 9 It is clear, therefore, that the trade-mark "Guin-
ness Book of Olympic Records" is also used in associ
ation with the books themselves, as wares.
Beer and books. These, on the evidence, are the
only wares in association with which Guinness had
used the word "Olympic" as a trade-mark prior to
1980. That trade-mark is, of course, unregistered but
even if it had been registered it is very doubtful that
(Continued from previous page)
non-issue. Whatever rights the respondent has, it has acquired
them from Guinness and the terms of its licence are not in
question. The inquiry in reality, therefore, is not as to the
extent of the respondent's rights but rather of Guinness' in
whose shoes the respondent stands.
R For the purist, more properly stout.
9 Indeed, one member of the present panel admitted at the
hearing to his innocence of knowing that the Guinness of the
books was a brewer.
Guinness could have prevented its adoption and use
by others in association with wares as radically dif
ferent as cameras and films. Equally, in my view,
Guinness, as the proprietor of an unregistered trade
mark used by it in association with beer and books,
could not prevent the adoption, use and registration
of a similar trade-mark for use in association with
cameras and films and could not, in the event of such
registration, assert its prior rights to use that mark in
association with those wares. The appellant, as the
beneficiary of an official mark, is in at least as good a
position as the owner of a registered mark would be
vis-Ã -vis Guinness.
It follows, in my view, that Guinness' rights to the
trade-mark "Olympic" cannot be anything more than
the right to the use of that mark in association with
beer and books. It could not use that mark to sell or
promote other unrelated wares or services. 10 If
Guinness could not do so, neither could the respon
dent, its licensee.
We are not dealing here with a simple case of the
respondent purchasing wares which properly bear the
trade-mark "Olympic" and then giving those wares
away as a premium or promotion for its own business
purposes. If the respondent had simply purchased
copies of the Guinness Book of Olympic Records (or
for that matter anything else which properly bore the
name "Olympic", whether or not on license from the
appellant) and given them away as a promotion, the
case would be a very different one. Here, however, as
I have attempted to demonstrate, what the respondent
has done is to take the Guinness Book of Olympic
Records and to convert and transform it into the
Konica Guinness Book of Olympic Records used
10 Guinness is not a party to this action. If it were, we might
be required to explore the question whether its trading on its
rights to use the word "Olympic" in association with beer and
books by conveying those rights to others to be used in asso
ciation with other wares was a use `otherwise" than as trade
mark. On the state of this record, that question must wait for
another day.
manifestly for the promotion of Konica film and
cameras. That, in my view, it could not do.
Two final points need to be mentioned.
In the first place, the respondent has pleaded its
right as licensee to the copyright in the title Guinness
Book of Olympic Records. The matter was not
pressed with any vigour at the hearing and properly
so. There is no indication in the material as to who
the author of the title Guinness Book of Olympic
Records may have been or when it was first pub
lished. Given the alleged antiquity of the publica
tions, it is by no means impossible that any copyright
in the title would by now have expired. Even if such
copyright were still in being, however, its extent is
limited by the definition of the word "work" in the
Copyright Act [R.S.C., 1985, c. C-42, s. 21:
2....
"work" includes the title thereof when such title is original
and distinctive; [Emphasis added.]
Apart from the word "Guinness" there is nothing
that is original or distinctive in the title Guinness
Book of Olympic Records. It is in fact a good deal
less original and distinctive than the title "The Man
Who Broke the Bank at Monte Carlo", with respect
to which the Privy Council held use as the title of a
film did not infringe copyright in a song of the same
name.tt
Finally on this aspect of the matter, the whole
question of copyright is, in my respectful opinion, a
red herring. Whether or not the respondent has
acquired the copyright to the title Guinness Book of
Olympic Records, what is at issue in the present case
is not copyright at all but rather the right to use the
word "Olympic" as a trade-mark in association with
films and cameras. Nothing in the Copyright Act
touches that right in any way. 12
11 See Francis Day & Hunter, Ld. v. Twentieth Century Fox
Corporation, Ld., [1940] A.C. 112 (P.C.).
12 By way of example, an artist who painted a picture of
someone's trade-mark would have copyright in his work but
(Continued on next page)
In the second place, the respondent alleged that the
words "or otherwise" as they appear in sections 9 and
11 of the Trade-marks Act were ultra vires of the Par
liament of Canada as they are unlimited in applica
tion and can operate so as to restrict freedom of
speech and to restrain the exercise of ordinary civil
rights within the provinces. The Attorney General of
Canada sought and obtained leave to intervene on
this point but we did not find it necessary to call upon
him. In my view, a reading of the plain words of sec
tions 9 and 11 in their context restricts the scope of
the words "or otherwise" to use of an official mark,
or one so nearly resembling it as to be likely to be
mistaken for it, in connection with a business. When
so read, the prohibition is functionally related to the
regulatory scheme of the Act as a whole. Its purpose
is manifestly to round out and complete that scheme
and it is not ultra vires. 13
I would allow the appeal, set aside the judgment of
the Trial Division and issue a permanent injunction
prohibiting the respondent from selling, offering, dis
tributing, advertising or exhibiting its edition of the
Konica Guinness Book of Olympic Records; I would
order the respondent to deliver up all copies of the
said book and related materials. As it is not clear
from the present state of the record whether the
appellant still has or wishes to assert a claim for dam
ages, I would give it liberty to move in the Trial Divi
sion for a reference to determine such damages, if
any. The appellant is entitled to its costs in the Trial
Division as well as on appeal.
(Continued from previous page)
that would not allow him to use the work as a trade-mark. Con
versely, the owner of the trade-mark could not reproduce the
work without the authority of the owner of the copyright. The
two rights are quite distinct.
13 See, in the same vein, this Court's decision with regard to
another section of the Act in Asbjorn Horgard A/S v.
Gibbs/Nortac Industries Ltd., [1987] 3 F.C. 544.
MACGUIGAN J.A.: I agree.
LINDEN J.A.: 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.