T-2855-84
101482 Canada Inc. (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Joyal J.—Montreal, May 7;
Ottawa, September 30, 1985.
Trade marks — Appeal from refusal to register "Le Bif-
thèque" in connection with restaurant services and meat coun
ters — Registrar holding mark clearly descriptive in French of
nature or quality of services — Appellant arguing Registrar
not sufficiently considering context in which mark used —
Also arguing use of "Le" and whole phrase "Le Bifthèque"
sufficiently different in nature to shield it from statutory
prohibition — Respondent relying on 'first impression" prin
ciple — Court not to substitute its judgment for Registrar's
unless evidence in record not considered by Registrar —
Registrar permitting registration of "Beef -Teck" in connection
with restaurant and butcher services and "La Bifthèquerie" in
connection with restaurant services — Equivalence in official
languages creating new dimension in implementing provisions
of s. 12(1) of Act — More considerations to apply to each
situation — Appeal dismissed — State of register irrelevant to
validity of application — Registrar free to amend even if erred
previously — Trade Marks Act, R.S.C. 1970, c. T-10, s. 12.
CASES JUDICIALLY CONSIDERED
APPLIED:
Wool Bureau of Canada Ltd. v. Registrar of Trade
Marks (1978), 40 C.P.R. (2d) 25 (F.C.T.D.); Sherwin
Williams Co. of Canada v. Commissioner of Patents,
[1937] Ex.C.R. 205; [1938] 1 D.L.R. 318; Labatt (John)
Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R. (2d) 15
(F.C.T.D.).
DISTINGUISHED:
Pizza Pizza Ltd. v. Registrar of Trade Marks (1982), 67
C.P.R. (2d) 202 (F.C.T.D.).
CONSIDERED:
The Drackett Co. of Canada Ltd. v. American Home
Products Corp., [1968] 2 Ex.C.R. 89; 38 Fox Pat. C. 1;
Home Juice Company et al. v. Orange Maison Limitée,
[1970] S.C.R. 942; Provenzano v. Registrar of Trade
Marks (1977), 37 C.P.R. (2d) 189 (F.C.T.D.).
REFERRED TO:
Thomas J. Lipton, Ltd. v. Salada Foods Ltd., [1980] 1
F.C. 740; (1979), 45 C.P.R. (2d) 157 (T.D.).
COUNSEL:
François Guay for appellant.
David Lucas for respondent.
SOLICITORS:
Lapointe Rosenstein, Montreal, for appellant.
Deputy Attorney General of Canada for
respondent.
The following is the English version of the
reasons for judgment rendered by
JOYAL J.: Since early 1981 the appellant has
operated a business in Montreal known as "Le
Bifthèque". This business includes a large restau
rant on the Chemin de la Côte de Liesse and
counters for the sale of various meats. The restau
rant itself is known for its steaks but its menu is
not limited to beef. It serves seafood, such as
lobster and shrimp, and the whole range of foods
found in any restaurant.
According to the evidence in the record, the
business has prospered from the outset. Its restau
rant services and meat counters were quickly and
effectively marketed. Between January and
November 1984, the business had a turnover of
some $6,000,000, and an advertising budget of
approximately $250,000.
All its operations were under the name "Le
Bifthèque". In 1982, the appellant filed an
application to register the words "Le Bifthèque"
with the Registrar of Trade Marks. This applica
tion was denied, according to the Registrar,
because of the provisions of subsection 12(1) of the
Trade Marks Act, R.S.C. 1970, c. T-10.
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;
(d) confusing with a registered trade mark; or
(e) a mark of which the adoption is prohibited by section 9
or 10.
According to the Registrar, the proposed mark
is clearly descriptive in the French language of the
nature or the quality of the services in association
with which it is used. This bar to registration has
been rooted in our statutes and judicial decisions
for a long time. The Act could not allow an
individual to monopolize a word descriptive of its
products or services and thereby eliminate it from
the vocabulary of common usage.
The name "Le Bifthèque" is certainly suggestive
of beef. The term "bifteck" is recognized as such
in French. In this sense, it can be seen that the
mark "Le Bifthèque", even with a variation in its
second syllable, is descriptive of the nature or the
quality of the services to which it refers.
However, in its argument the appellant main
tained that the Registrar's decision did not suf
ficiently take into account the context in which the
mark would be used. It is perhaps true to say that
"Bifthèque" as pronounced means beef, but the
mark is not intended to describe a product such as
beef or other food, but a restaurant service which
also has counters for the sale of selected meats.
The appellant further argued that the article "Le"
before the word "Bifthèque", and the whole phrase
"Le Bifthèque", is sufficiently different in nature
to shield it from the statutory prohibition. The
appellant cited, inter alia, Pizza Pizza Ltd. v.
Registrar of Trade Marks (1982), 67 C.P.R. (2d)
202 (F.C.T.D.), in which my brother Rouleau J.,
reversing a decision of the Registrar of Trade
Marks on the same grounds as in the case at bar,
concluded that the mark "Pizza Pizza" was not to
promote the sale of pizzas in general, but to pro
mote the sale of the plaintiff's product to particu
lar suppliers by identifying the plaintiff with its
distinctive trade mark. While the courts have
upheld distinguishing the descriptive part of a
trade mark when the mark in fact describes the
product, the case law can also permit a distinction
when the descriptive part is actually derivative or
suggestive.
The respondent, for its part, cited the principle
as stated in the decision of Cattanach J. in The
Drackett Co. of Canada Ltd. v. American Home
Products Corp., [1968] 2 Ex.C.R. 89; 38 Fox Pat.
C. 1, that "the first impression" of a mark should
be decisive in determining its descriptiveness. Fur
ther, as regards the "bifteck" variation in the word
"bifthèque", the respondent referred to the deci
sion of the Supreme Court of Canada in Home
Juice Company et al. v. Orange Maison Limitée,
[1970] S.C.R. 942, where Pigeon J. asserted that
the corruption of a word in the language does not
destroy its descriptiveness.
There is no doubt that the determination of
whether "Le Bifthèque" is a descriptive term is not
an easy matter. The final judgment arrived at, in
light of the provisions of the statute and the case
law, will often reflect subjective considerations. It
may be that to some extent in such cases, one
person's judgment will be as good as another's.
In such circumstances, a court should hesitate to
substitute its own judgment for that of the Regis
trar of Trade Marks, unless it finds evidentiary
material in the record which was not considered by
the Registrar, or that the Registrar misinterpreted
the Act or the decided cases, or that it is right and
proper in general for the court to intervene. Need
less to say, a court should prima fade accord a
certain respect to a decision by the Registrar.
This principle is certainly put to the test when
the record now before the Court indicates that,
though he denied registration of the mark "Le
Bifthèque", the Registrar did not object to regis
tration of the mark "Beef -Teck", application No.
494053, in connection with restaurant and butcher
services. Moreover, on March 8, 1985, the Regis
trar allowed as No. 300740 registration of the
mark "La Bifthèquerie" in connection with restau
rant services.
I observe that "Beef -Teck" is only a corruption
of "bifteck", though by use of the word "teck" the
descriptiveness is moderated. The word "Beef', of
course, is itself descriptive in English. The entire
name "Beef -Teck" is phonetically equivalent in
French to "bifteck". Bearing in mind that the
word "Bifthèque" when pronounced in English is
not descriptive, it may well be asked in the circum
stances where the correspondence or conformity
lies.
Etymological or phonetic equivalence in either
of our two official languages creates a new dimen
sion in implementing the provisions of subsection
12(1) of the Trade Marks Act. A mark under
paragraph 12(1)(b) may be descriptive in one
language and not in another. It may be descriptive
because of the way it is written or the way it is
pronounced. Under paragraph 12(1)(d), a mark
may create confusion in one language but not in
the other. The legal rule and the "first impression"
principle in one language do not necessarily affect
a mark pronounced in the other. The result is that
the considerations which must be applied to a
particular situation are more numerous and in fact
impose a double and reciprocal test.
I must conclude that a conflict exists between
admissibility of the mark "Beef -Teck" on the one
hand and inadmissibility of the mark "Le Bif-
thèque" on the other. How should a court resolve
this conflict?
In the appellant's favour there is the opinion of
my brother Addy J., in Provenzano v. Registrar of
Trade Marks (1977), 37 C.P.R. (2d) 189
(F.C.T.D.), where he says [at page 189]:
To be objectionable as descriptive under s. 12(1)(b) the word
must be clearly descriptive and not merely suggestive and, for a
word to be clearly descriptive, it must be material to the
composition of the goods or product.
This opinion is repeated in Thomas J. Lipton,
Ltd. v. Salada Foods Ltd., [1980] 1 F.C. 740;
(1979), 45 C.P.R. (2d) 157 (T.D.). There are in
fact many decisions in which the requirement of
paragraph 12(1)(b) on this point has been
emphasized.
On the other hand, it appears to me that the
mark "Le Bifthèque" is clearly descriptive of the
steak retailing services at the counters managed by
the appellant. Judging from the many pieces of
advertising material included in the record, the
appellant is engaged equally in the sale of steak
and in restaurant services. Furthermore, the ser
vices in connection with which it applied for regis
tration of the mark "Le Bifthèque" include both of
these.
There is also the case of Pizza Pizza Ltd. (cited
above). In my humble opinion, this case deals only
marginally with the prohibition contained in para
graph 12(1)(b). It is actually concerned with sub
section 12(2) of the Act, which reads as follows:
12....
(2) A trade mark that is not registrable by reason of para
graph (1)(a) or (b) is registrable if it has been so used in
Canada by the applicant or his predecessor in title as to have
become distinctive at the date of filing an application for its
registration.
It may be noted that this subsection can only
create an exception to the "descriptive" rule in so
far as a mark has become distinctive at the date of
filing an application. I cannot find sufficient evi
dence in the record to indicate that, as in Pizza
Pizza, the exception created by subsection 12(2) of
the Act should be applied. The Act does not
permit a finding of fact in 1984-1985 when dealing
with an application made in 1982.
I come now to the final point. In Wool Bureau
of Canada Ltd. v. Registrar of Trade Marks
(1978), 40 C.P.R. (2d) 25 (F.C.T.D.), my brother
Collier J. said at page 28:
It was contended, for the appellant, that the Court is entitled
to examine the state of the register to determine whether a
pattern of registrability exists. The state of the register is, I
think, irrelevant. It cannot affect the validity or otherwise of
the appellant's application.
In a case dating from 1937, Sherwin Williams
Co. of Canada v. Commissioner of Patents, [1937]
Ex.C.R. 205; [1938] 1 D.L.R. 318, Angers J. said
at page 207 Ex.C.R.; at page 320 D.L.R.:
It was submitted on behalf of the appellant that the registrar
had allowed the registration of certain word marks ("Flo-
Glaze," "Satinamel," "Satin-Glo," "Semiplast") and that the
word "Semi-Lustre" is no more descriptive of the quality or
character of paints, varnishes and enamels than the word-marks
aforesaid. I do not know the conditions and circumstances in
which these word-marks were allowed to be registered; there
may have been particular reasons in support of their registra
tion. Assuming, however, that there were not, the fact that the
registrar might have granted word-marks which were descrip
tive of the character or quality of the wares in connection with
which they were supposed to be used cannot affect the validity
or lack of validity of the present application. Supposing that the
registrar may have erred on previous occasions, he is surely at
liberty to amend!
This principle was upheld in Labatt (John) Ltd.
v. Carling Breweries Ltd. (1974), 18 C.P.R. (2d)
15 (F.C.T.D.), where Cattanach J. said, at page
22:
The clear purport of this evidence adduced by the respondent
is to the effect that since the Registrar saw fit to register the
trade mark NO. 1 on past occasions, and also on this occasion,
he must have considered that the trade mark was not descrip
tive and the decision of the Registrar, while not conclusive,
must carry considerable weight with any Court which has to
review his decision. This evidence also leads to the submission
that the state of the Register is a factor to be given weight in
determining registrability.
Cattanach J. concluded, at page 23, that:
The principle so enunciated, as I understand it, is simply that
because errors may have been made in the past these [prior
registrations] should not be grounds for perpetuating those
errors.
In view of this very special situation, I feel I am
obliged to follow existing principle and dismiss the
appeal.
The whole without 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.