T-3687-76
Calona Wines Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
•
Trial Division, Marceau J.—Montreal, June 1;
Ottawa, June 17, 1977.
Trade marks — Appeal from decision of Registrar rejecting
application for registration of mark "Fontana Bianco" —
Whether "Fontana" primarily name or surname of a person
who is living or who has died within the preceding thirty years
— Word not normally associated in Canada with family name
— Appeal allowed — Trade Marks Act, R.S.C. 1970, c. T-10,
s. 12(1)(a).
The Registrar of Trade Marks rejected the appellant's
application for the registration of the trade mark "Fontana
Bianco"—a mark to be used in Canada in association with
wine. The Registrar was satisfied that "Fontana" was primarily
the name or surname of an individual who is living or who has
died within the preceding thirty years.
Held, the appeal is allowed. The Court is not convinced that
the purchasing general public of Canada would respond to the
word "Fontana", used in conjunction with the word "Bianco"
on the label of a bottle of wine, by spontaneously thinking of it
as being the surname of an individual. A Canadian of ordinary
intelligence and of ordinary education in English or French
would be just as likely, if not more likely, to respond to the
word by thinking of it as a brand or mark of some business, or
else as a geographical name, or even more simply as an
invented word for fountain or fontaine, as to respond to it by
thinking of it as the name of some Canadian family.
Standard Oil Co. v. The Registrar of Trade Marks [1968]
2 Ex.C.R. 523, followed; Registrar of Trade Marks v.
Coles Book Stores Ltd. [1974] S.C.R. 438, followed.
APPEAL.
COUNSEL:
Daniel Lack for appellant.
Claude Joyal for respondent.
SOLICITORS:
Ogilvy, Cope, Porteous, Montgomery,
Renault, Clarke & Kirkpatrick, Montreal,
for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
MARCEAU J.: This is an appeal from a decision
of the Registrar of Trade Marks rendered on
September 14, 1976 rejecting the application by
the appellant for the registration of the trade mark
FONTANA BIANCO on the basis of its proposed use
in Canada in association with wines.
The respondent refused the application because
he was satisfied "that the mark is not registrable
by virtue of paragraphs (a) and (c) subsection (1)
of Section 12 of the Trade Marks Act since the
word `Fontana' is a word that is primarily merely
the name or surname of individuals who are living
or have died within the preceding thirty years".
These paragraphs of section 12 read as follows:
12. (1) Subject to section 13, a trade mark is registrable if it
is not
(a) a word that is primarily merely the name or the surname
of an individual who is living or has died within the preceding
thirty years;
(b) whether depicted, written or sounded, either clearly
descriptive or deceptively misdescriptive in the English or
French languages of the character or quality of the wares or
services in association with which it is used or proposed to be
used or of the conditions of or the persons employed in their
production or of their place of origin;
(c) the name in any language of any of the wares or services
in connection with which it is used or proposed to be used;
It must be pointed out that while the objection
based on section 12(1)(a) of the Act is quite
understandable and clearly explained in the
respondent's communications to the appellant as
well as in the pleadings herein, nowhere is there to
be found any indication as to how and why section
12(1)(c) would also apply and counsel for the
respondent, at the hearing, could not be more
specific. Assuming that the objection based on
section 12(1)(c) referred to the part of the trade
mark formed by the word "Bianco" which, accord
ing to the new Encyclopedia of Wines by Alexis
Lachine, is a word sometimes used in Italy for
"white wine", the appellant has formally accepted,
as a solution to the objection, a disclaimer of the
word apart from the trade mark as a whole, pursu
ant to section 34 of the Trade Marks Act, R.S.C.
1970, c. T-10. I consider that such a disclaimer
(which is acknowledged by the respondent in his
statement of facts filed in reply to the notice of
appeal) renders inoperative the objection based on
section 12(1)(c).
We are therefore left with the main objection
based on section 12(1)(a) which applies to the part
of the trade mark being the word "Fontana". The
issue is whether the respondent was justified in
deciding that the word Fontana was "primarily
merely" the surname of an individual within the
meaning of section 12(1)(a), so that the trade
mark of which it was to be a part was not
registrable.
It seems clear to me that the respondent's con
clusion was essentially based on two facts, the first
being that the word "Fontana" has no dictionary
meaning either in French or English and the
second that it has been found to be the surname off
a certain number of people in Canada. Were these
facts decisive and sufficient to support the conclu
sion? I don't think so.
The principles according to which section
12(1)(a) of the Act was to be construed and
applied have been discussed and set out by Presi
dent Jackett (as he then was) in the well-known
case of Standard Oil Co. v. The Registrar of
Trade Marks [ 1968] 2 Ex.C.R. 523. At pages
532-533 he says:
The test must be what, in the opinion of the respondent or the
Court, as the case may be, would be the response of the general
public of Canada to the word. My conclusion is that a person in
Canada of ordinary intelligence and of ordinary education in
English or French would be just as likely, [if the two characters
(surname and invented word) are of equal importance, it
cannot be said that it is "primarily merely" a surname], if not
more likely, to respond to the word by thinking of it as a brand
or mark of some business as to respond to it by thinking of
some family of people (that is, by thinking of it as being the
surname of one or more individuals).
I have probably been influenced in coming to the conclusion
that I have expressed as to how the word "primarily" in section
12(1)(a) should be applied by the fact that applying the
provision solely by reference to the existence of a dictionary
meaning of a proposed trade mark would make practically
every invented word vulnerable to attack as a proposed trade
mark by anyone assiduous enough to pursue his searches for its
use as a surname somewhere in the world (or, indeed, in a
country such as Canada even if the search were restricted to
Canada). I cannot believe that section 12(1)(a) was intended
virtually to eliminate the creation of new words for purposes of
proposed trade marks)
' See also The Registrar of Trade Marks v. Coles Book
Stores Ltd. [ 1974] S.C.R. 438.
The word "Fontana" in the subject mark is by
no means a common surname in Canada: the
Office Action emanating from respondent dated
February 20, 1975 shows a mere 41 people, in the
whole of Canada, bearing it as their family name.
Fontana may be the name of some people but it is
as well, as was established, the name of several
geographic locations in the world; and if the
present appeal succeeds, it may also become a
fanciful word selected by the appellant to use it in
conjunction with the word "Bianco" to carry the
suggestion to Canadians of a white fountain. Now,
applying the test, I cannot convince myself that
the purchasing general public of Canada would
respond to the word "Fontana", used in conjunc
tion with the word "Bianco" on the label of a
bottle of wine, by spontaneously thinking of it as
being the surname of an individual. My conclusion
is that a Canadian of ordinary intelligence and of
ordinary education in English or French would be
just as likely, if not more likely, to respond to the
word by thinking of it as a brand or mark of some
business, or else as a geographical name, or even
more simply as an invented word for fountain or
fontaine, as to respond to it by thinking of it as the
name of some Canadian family.
It is my opinion that the respondent was wrong
in deciding that the trade mark FONTANA BIANCO
was not registrable by virtue of paragraphs (a) and
(c) of subsection (1) of section 12 of the Trade
Marks Act on the ground that the word "Fontana"
was primarily merely the name or surname of
individuals.
The appeal will therefore be allowed.
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.