T-4595-76
Ugine Aciers (Appellant)
v.
Registrar of Trade Marks (Mis -en--cause)
Trial Division, Decary J.—Montreal, March 31;
Ottawa, June 24, 1977.
Trade marks — Registration — Refusal to register mark
because of confusion with registered trade marks — Prefix
used for all products of companies held by conglomerate —
Other marks with same prefix registered without giving rise to
complaints — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 6,
12(1), 15(1), 36(1).
Appellant appeals from the Registrar of Trade Marks' refus
al to register the word "UGIPLUS" as it was confusing with
registered trade marks. The prefix "um" was used by the
companies of a conglomerate beneficially-owned by one holding
company.
Held, the appeal is allowed. Section 15 of the Act permits
registration of confusing marks if the applicant is the owner of
all such trade marks. The testimony of the holding company's
top executive in Canada provided more detailed information
about the operation of the group of companies than was
available to the Registrar and pointed out that the use of the
prefix "uGI", common to all products produced by this group,
had never created confusion.
APPEAL.
COUNSEL:
H. Richard for appellant.
J. M. Aubry for mis -en-cause.
SOLICITORS:
Léger, Robic, Rouleau & Richard, Montreal,
for appellant.
Deputy Attorney General of Canada for
mis -en-cause.
The following is the English version of the
reasons for judgment rendered by
DECARY J.: The question is whether the Regis
trar of Trade Marks was correct in refusing to
register the word "UGIPLUS" by virtue of his dis
cretionary power under section 36 of the Trade
Marks Act'.
Section 36 reads in part as follows:
36. (1) The Registrar shall refuse an application for the
registration of a trade mark if he is satisfied that
(b) the trade mark is not registrable; or
The Registrar must take the provisions of sec
tion 12(1)(d) into consideration:
12. (1) Subject to section 13, a trade mark is registrable if it
is not
(d) confusing with a registered trade mark; or
The expression "confusing" is defined in
section 2:
2. In this Act
"confusing" when applied as an adjective to a trade mark or
trade name, means a trade mark or trade name the use of
which would cause confusion in the manner and circum
stances described in section 6;
The Act therefore provides that even the possi
bility of confusion is sufficient to consider a trade
mark confusing for purposes of section 6.
Subsections 6(1) to (4) describe cases where
confusion may arise, and subsection 6(5) lists the
circumstances which must be taken into account
when deciding whether confusion is possible or not:
6. (1) For the purposes of this Act a trade mark or trade
name is confusing with another trade mark or trade name if the
use of such first mentioned trade mark or trade name would
cause confusion with such last mentioned trade mark or trade
name in the manner and circumstances described in this
section.
(2) The use of a trade mark causes confusion with another
trade mark if the use of both trade marks in the same area
would be likely to lead to the inference that the wares or
services associated with such trade marks are manufactured,
sold, leased, hired or performed by the same person, whether or
not such wares or services are of the same general class.
(3) The use of a trade mark causes confusion with a trade
name if the use of both the trade mark and trade name in the
same area would be likely to lead to the inference that the
' R.S.C. 1970, c. T-10.
wares or services associated with the trade mark and those
associated with the business carried on under such trade name
are manufactured, sold, leased, hired or performed by the same
person, whether or not such wares or services are of the same
general class.
(4) The use of a trade name causes confusion with a trade
mark if the use of both the trade name and the trade mark in
the same area would be likely to lead to the inference that the
wares or services associated with the business carried on under
such trade name and those associated with such trade mark are
manufactured, sold, leased, hired or performed by the same
person, whether or not such wares or services are of the same
general class.
(5) In determining whether trade marks or trade names are
confusing, the court or the Registrar, as the case may be, shall
have regard to all the surrounding circumstances including
(a) the inherent distinctiveness of the trade marks or trade
names and the extent to which they have become known;
(b) the length of time the trade marks or trade names have
been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade marks or
trade names in appearance or sound or in the ideas suggested
by them.
The provisions of section 6(1) to (4) are
designed to avoid situations where it is suggested
that only one person is involved, when there are
actually different persons involved. Subsection
6(5) provides that, inter alia, the nature of the
wares and the degree of resemblance between the
trade marks or trade names, or in the ideas sug
gested by them, must be taken into account.
With respect to section 6(1) to (4), it should be
noted that it has been shown that the owner of the
UGIPLUS trade mark is part of a group of compa
nies whose shares are owned, directly or indirectly,
by Pechiney-Ugine-Kuhlmann. In this group, in
each sector of activity there is one subsidiary
which also acts as a holding company for all the
shares of each of the subsidiaries operating within
that sector. In addition, there are sub-subsidiaries
with their own subsidiaries. There may therefore
be several "generations" in the Pechiney-Ugine-
Kuhlmann group. The group is an empire of over
one hundred and fifty companies with, in fact and
in substance, a single beneficial owner—the com
pany which holds, directly or indirectly, all the
shares in the subsidiaries, sub-subsidiaries and
their subsidiaries. There is, in fact, only one owner
and only one ultimate beneficiary, directly or
indirectly.
It would seem clear that one conclusion, which
was not mentioned at the hearing, can be drawn
from this situation: if the legislator's specific intent
in section 50 of the Act was to exempt related
pharmaceutical companies from the registration
exclusion, it follows that other companies not deal
ing in pharmaceuticals may not benefit from the
same privilege.
Regardless of the legislator's reason for includ
ing this exception in the Act, there is no similar
provision applying to the case at bar, unless the
group is considered a person, excepted under
section 15 of the Act, which reads as follows:
15. (1) Notwithstanding section 12 or 14, confusing trade
marks are registrable if the applicant is the owner of all such
trade marks, which shall be known as associated trade marks.
At the hearing, I had the opportunity of hearing
from Mr. Messud, Pechiney-Ugine-Kuhlmann's
top executive in Canada. The Registrar did not
have this opportunity. I believe that by his testimo
ny Mr. Messud threw some light on the matter, by
outlining the operation of this group of companies
and explaining the reason for the use of UGI. This
prefix is used because the group's first steel mill
was constructed and operated in the village of
Ugine, Savoie, France. UGI in itself is not a geo
graphical name, any more than the MONT in
Montreal.
Learned counsel stated that the Registrar was
aware of the fact that he was dealing with a group
of companies, but I doubt that a letter could have
the same impact or provide as clear an account as
Mr. Messud's testimony concerning the group, the
use of UGINOX and UGIPLUS, the various products
represented by these words, and the various groups
of people to whom they are directed.
The Registrar was not able to weigh these facts
in the same manner as the Court, since he did not
have the opportunity to hear Mr. Messud, whose
testimony (which was allowed by the Court) pro
vided greater detail and threw new light on the
matter, making it clear that the use of the prefix
UGI has never created any confusion.
The following question and Mr. Messud's
answer are recorded at page 48 of the transcript of
the evidence:
Q. Mr. Messud, has anyone ever told you that the consum
ing public tends to confuse the various products marketed
by your vast enterprise and its various subsidiaries,
because the products have trade marks bearing the same
prefix "Ugi"? Have you ever been asked to look into
complaints from anyone claiming that the same prefix on
all your products was confusing?
A. I have never heard of any confusion. I believe that the
idea is to separate the various categories of products by
giving them different trade marks, while still maintaining
unity by using the "Ugi" prefix. It is the second part of
the name which usually differentiates the products, and is
applied to certain categories of products as opposed to
others. I have never heard of any confusion in this
respect.
A series of trade marks, all bearing the UGI
prefix, were listed for the Court. These included
"Ugicarb", "Ugigramme", "Ugicryl", "Ugidien",
"Ugigrip" and "Ugigum", as well as the following
trade marks registered in Canada: "Ugi", "Ugi-
gum", "Ugicryl", "Ugibor", "Ugipren" and "Ugi-
tex". If names such as these have been registered,
I cannot see why UGIPLUS would not also be
accepted for registration.
After considering all the factors involved, and
seeing no possible confusion, the Court allows the
appeal.
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.