T-6076-79
IVG Rubber Canada Ltd. (Appellant)
v.
Goodall Rubber Company (Respondent)
Trial Division, Dubé J.—Ottawa, April 2 and 9,
1980.
Trade marks — Appeal from decision of Registrar of Trade
Marks rejecting appellant's opposition to respondent's
application to register trade mark — Registrar found that
respondent's mark, a helical stripe running the length of a
flexible hose, was a proper trade mark, and stood for much
more than an ornamentation, a grade designation, or a func
tionality — Respondent's hoses come with a variety of
coloured stripes, each colour representing the purpose, type
and construction of the hose — Whether the Registrar erred in
finding the mark distinctive and in failing to find that the
colour coding was used functionally to indicate the usage, and
in failing to find that the registration of ten colours constituted
a monopoly — Appeal dismissed — Trade Marks Act, R.S.C.
1970, c. T-10, s. 2.
Parke, Davis & Co., Ltd. v. Empire Laboratories Ltd.
[1964] Ex.C.R. 399 (affirmed by Supreme Court of
Canada [1964] S.C.R. 351, distinguished. Wrights' Ropes
Ltd. v. Broderick & Bascom Rope Co. [1931] Ex.
C.R.143, applied. Beverley Bedding & Upholstery Co. v.
Regal Bedding & Upholstering Ltd. T-1470-73, applied.
APPEAL.
COUNSEL:
B. H. Wilson, Q.C. for appellant.
R. Scott Jolliffe and R. G. McClenahan, Q.C.
for respondent.
SOLICITORS:
B. H. Wilson, Q. C., Ottawa, for appellant.
Gowling & Henderson, Ottawa, for respond
ent.
The following are the reasons for judgment
rendered in English by
DUBÉ J.: The appellant appeals from the deci
sion of the Registrar of Trade Marks rejecting its
opposition to the respondent's application to regis
ter the trade mark shown below on the grounds
that the Registrar erred in finding that it is dis
tinctive and that he failed to apply the dictum in
Parke, Davis & Co., Ltd. v. Empire Laboratories
Limited.'
The Registrar found that the above mark,
described as a helical stripe running the length of a
flexible hose, constitutes a proper trade mark that
the respondent is using and has used continuously
since 1953 to distinguish its wares from those of
others; that the appellant is a late-corner into the
field; that the appellant failed to establish that the
trade mark is simply ornamental or functional; and
that it is in fact distinctive within the meaning of
section 2 of the Trade Marks Act, R.S.C. 1970, c.
T-10 and constitutes much more than ornament
ing, or a grade designation, or a functionality.
In his judgment the Registrar referred to the
decision of Noël J. in Parke, Davis (supra),
affirmed by the Supreme Court of Canada, but
found it to be readily distinguishable. In Parke,
Davis the plaintiff registered ten trade marks each
consisting of a gelatin coloured band circling a
capsule made of the same substance. He held the
ten registrations to be invalid and found that the
utilitarian use of the coloured band around the
middle of the capsule which seals both halves of
the capsule, monopolizes the functional role of the
I Parke, Davis & Co., Ltd. v. Empire Laboratories Limited
[1964] Ex.C.R. 399 (affirmed by Supreme Court of Canada
[1964] S.C.R. 351).
coloured band and therefore renders the trade
mark invalid.
The Registrar adopted the view that the instant
trade mark constitutes considerably more than a
mere painted stripe or band and stands for much
more than an ornamentation, a grade designation,
or a functionality. He found the decision of
Maclean P. in Wrights' Ropes Limited v. Brode-
rick & Bascom Rope Co. 2 a more cogent author
ity. Maclean P. decided [at page 144] that "a
yellow coloured strand running through a length of
wire rope" was a registrable mark.
Learned counsel for the appellant concedes that
the respondent has used and is using the mark to
distinguish its wares from those of others, but he
asserts that because the mark covers the whole
spectrum of colours and because it has a functional
use, therefore those two elements together out
weigh the distinguishing factor and the mark is not
valid.
The Goodall hoses come with a variety of
coloured stripes, each colour serving a distinctive
purpose. For instance there are three different
colours of stripes to differentiate air hoses, four
different colours for steam hoses, four different
colours for fuel hoses, etc., each colour of stripe
being used not only to indicate the end purpose of
the hose but also its type and construction. The
affidavit evidence shows very clearly that the pur
chasers, mostly large industrial firms, are very
much aware of the colour schemes and the high
quality of the Goodall hoses.
In the Parke, Davis decision Noël J. found that
the registration of ten different colours constituted
a monopoly and that the band sealing the two
portions of the capsule performed a function.
Those are the two elements of that decision which
counsel for the appellant seeks to apply to this
case. He alleges that the colour coding is used
functionally by Goodall to indicate the usage, and
since all colours come with the trade mark and the
spiral stripe runs endlessly around the hose, there
is no further place for other marks: thus a
monopoly.
2 Wrights' Ropes Limited v. Broderick & Bascom Rope Co.
[1931] Ex.C.R. 143.
In my view, however, the helical stripe on the
Goodall hose does not play the same type of
functional use as the band on the Parke, Davis
capsule. In the latter case the gelatin band fulfils
an essential physical function as well as a distin
guishing feature. The band physically holds the
capsule together. Without the band the capsule
would fall apart. On the other hand, the spiral
stripe running along the Goodall hose is not physi
cally essential to the hose. It merely distinguishes
it from other wares. While the trade mark is
registered in black and white only, it is common
ground that this opens up the full range of colours.
As pointed out recently by Cattanach J. 3 a
decision from such an expert official as the Regis
trar of Trade Marks ought not to be disturbed
lightly. The onus on the appellant is heavy. He
must show that the decision of the Registrar is so
wrong as to warrant interference by this Court.
No satisfactory evidence has been adduced to
show that this type of Goodall spiral stripe on
hoses has been employed by any other manufac
turer, except by the appellant since 1968. The bulk
of the evidence is to the effect that Goodall hoses
are easily identifiable by knowledgeable purchas
ers because of the stripes and that respondent has
spent close to one million dollars in recent years to
advertise its wares.
Under the circumstances, I cannot find that the
Registrar erred in his decision. This appeal there
fore is dismissed with costs.
3 Beverley Bedding & Upholstery Co. v. Regal Bedding &
Upholstering Ltd. T-1470-73 dated March 6, 1980.
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.