VOL. XX. EXCHEQUER COURT REPORTS. 207 IN THE MATTER OF THE PETITION OF U 1920 THE PACIFIC LIME COMPANY, PETITIONER . Nov. 26. LIMITED Argument of Counsel. Trade-Mark—Geographical name—Secondary signification—Registration. Held; That a geographical name is not ordinarily the subject of a trade-mark and is not per se registerable; but when by long user' . thereof the name has acquired a secondary signification in deroga- . tion of its primary geographical meaning and has' become the trade designation of a manufactured article, such a name may be registered. APPLICATION by petitioners herein to have the words `Blubber Bay Lime" registered as their trademark. November 16th, 1920. Application before the Honourable. • Mr. Justice Audette at Ottawa. L. P. Sherwood, for petitioners. • No one, appeared for Commissioner of Patents. . L. P. Sherwood: I would refer to section 5 and part of section 11 of the Trade-Mark and Design Act (cli. 71 R.S.C. 1906). The Act contains no precise definition of a trademark, but it is to be remarked that section 5 states that names may be "considered and known as trademarks." Section 11 (e) "the essentials necessary 'to constitute a trade-mark properly speaking," it is submitted, must mean the essentials of a Common Law trade-mark as modified by the Canadian TradeMark Act.
208 EXCHEQUER COURT REPORTS. VoL. XX. . 1 920 The various English Acts have little or no bearing In Re PArc L uray upon the Canadian Act. See New York Herald Co. Co. L1 AERD . S y. TRADE -A Ottawa Citizen Co. (1). Acanment of In the United States a large proportion of trade- Cot neel. marks granted consist of surnames of manufacturers or producers, but geographical names have also been registered, as, for instance, "Winchester" for rifles, and "Yale" for locks. • The law in regard to names is understood to be that whilst they are not primarily the subject of a trademark, they may nevertheless by use in connection with the goods of a certain individual, acquire a secondary meaning as a trade-mark, and may be registerable under the Canadian Trade-Mark Act. See Horlick's Malted Milk Company case, decided in the Supreme Court, 1st May, 1917 (2) ; Canada Foundry Company v. The Bucyrus Company (3); See also English cases, Wetherspoon v. Currie, The Glenfield Starch case (4), and particularly the remark of Lord Westbury at p. 251. See also Seixo v. Provezende (5), and In re National Starch Company's application (6), for registration of word "Oswego." I submit that the case of Grand Hotel Company, of Caledonia Mineral Springs v. Wilson and others (7), can be distinguished and does not adversely affect the present application (See particularly Lord Davey at p. 113). In the present application, the evidence which is submitted, shows that the words "Blubber Bay Lime" have acquired' a secondary meaning as distinguishing the product of the Pacific Lime Company, and as (1) 41 S.C.R., 229 at p. 232. (4) 5 H.of L.(E. & L App.) 508. (2) 35 D.L.R. 516. (5) [1865[ 14 L.T. (N.S.) p. 314. (3) [1912] 47 S.C.R. 484. (6) [1908] 2 Ch. D. 698. (7) [1904] A.C. 103.
VOL. XX. EXCHEQUER COURT REPORTS. 209 such, in accordance with the authorities referred' to, xt the words have become a trade-mark which is properly /nit.. PA registerable. Furthermore, the words are not in use 19.1041. % . as a distinguishing feature or as a trade-mark by any Rea sane for other individual, firm or ,corporation in connection Juagm'• with the sale of lime. It is submitted therefore, that the applicants are entitled to have registered in their name as a trademark the words "Blubber Bay Lime" for the reason that the evidence shows these words to have acquired a secondary meaning as a trade-mark distinguishing the product of the applicants, and that the evidence shows that the words are not in use by any other person. The facts are stated in the reasons for judgment. AUDETTE J. now (Tovember 25, 1920) delivered • judgment. This is an application, by the petitioners, who carry on the business of manufacturers or producers of lime, to register as their trade-mark the words "Blubber Bay Lime." Blubber Bay is a small place situate in the electoral district of Comox-Alberni, in the province of British' Columbia. Therefore, it appears that the word "Blubber Bay" is, in its ordinary signification, a geographical name, and, per se, is not subject to registration as a trade-mark. (Columbia Mill Co. v. Alcorn (1) . The Canadian Act does not contain a definition of trade-marks capable of registration.. To find what trade-marks in Canada are subject to registration, one must read together sections 5 and 11 of the Act. (1) 150 U.S. 460.
210 EXCHEQUER COURT REPORTS. VOL: XX. 1920 Section 5 provides what may be the subject of a Re PACIFIC ML T E trade-mark, but that section must also be read with Co. LIMITED the provisions of sec. 11 whereby, among other things, TRADE-MARK. Reasons for it is set out what the minister may refuse to register. Judgment. Sub-section (c) of that section reads as follows :— "(c) if the so-called trade-mark does not contain the essentials necessary to constitute a trade-mark, properly speaking." And as said in the Standard Ideal Co.. v. Standard Sanitary Co. (1) : "the Act does not define or explain the essentials of a trade-mark, it does not provide for taking off the register an alleged trade-mark which . does not coniain the requisite essentials. In applying the Act the Courts in Canada appear to consider themselves bound or guided mainly by the English law of trade-marks and the decisions of the courts of the United Kingdom." By sub-sections 4 and 5 of section 9 of the English Act of 1905, it is provided that a geographical name cannot be registered as a trade-mark, unless upon an order of the Board of Trade, or the Court. The words `Blubber Bay Lime" standing by themselves may not, strictly speaking, have reference to the character or quality of the lime as derived from the strata of-the stone or the formation of the soil; but will not the registration of these words precludé any other resident of Blubber Bay, who migth choose to manufacture lime, to use that name? Nothing could prevent him from manufacturing lime, if he so saw fit. Would not also that mark appear tô be generic, in its very nature? Does it not convey the idea that Blubber Bay lime is the product of one individual residing at Blubber Bay, while it may also designate (1) [1911] A. C. 78.
VoL. XX. EXCHEQUER, COURT 'REPORTS. 211 • the product of many hundred manufacturers or 1920 residents of Blubber Bay, , to whom the trade-mark In Re Pe c~aic L~ E sought to be registered would equally apply? Would c Lin~Tnn TR °• n n~Mnxs. not the mark, in such a case, cease to be distinctive Reasons for and therefore become objectionable? ; • Judgment. Wood, V. C., in the Anatolia liquorice case (McAndrew v. Bassett (1) said that: "the plaintiffs had established beyond all doubt the connection of their name with that mark,, that was beyond dispute," and that "he could not treat the word as being otherwise than a designation mark, which the plaintiff had caused to be attached to that particular article of liquorice which they so manufactured, and which they had a right to consider, in that qualified sense, property." See Sebastian, 5th Ed. at p. 87. (Abstract recited.) Lord Westbury, C., in that case strongly confirmed the opinion of the Vice-Chancellor; avid in the later case of Wetherspoon v. Currie (2), where the subject of the dispute was the word "Glenfield," applied to starch, he stated that the word had acquired a secondary signification or meaning in connection with a particular manufacture; in short, it had -become the trade designation of the starch made by the appel-, lants. It was wholly taken out of its ordinary meaning, and in connection with the starch had acquired that peculiar secondary signification to which he had referred. The word "Glenfield," therefore, as a denomination of starch, had become the property of the appellants. It, was their right and title in connection with the starch. (1) 33 L.J., Ch. 561; 4 DeG.J.& S. (2) 5 H. of L. (E. & Z. App.) 508. 380 (App.).
212 EXCHEQUER COURT REPORTS. VOL. XX. 1920 In view of the liberal modifications in previous In Re PI. In AME jurisp rudence, together with the legislation, introduced TienS ARK. by sub-sec. 5 of section 9 of the English Trade-Mark Reasons for Act of 1905, and the decision above referred to,— Judgment. would it not be attaching an excessive regard to the geographical aspect of this mark to refuse its registration? The American law upon the present subject would' appear to be the same. See Paul, on Trade-Marks, pp. 101 to 104 inclusively, and pp. 434 et seq. (Abstracts from these pages were here given at length.) At p. 103 he states that geographical names, designating districts of country are incapable .of appropriation as trade-mark and concludes by. saying (p. 104) that one must avoid, in selecting devices for trade-mark, "geographical names which are descriptive of the local origin of the goods, if other persons have the right to deal in goods of a similar origin." The words "Blubber Bay Lime" may not suggest to ordinary observers a geographical origin and may, therefore, remain special and distinctive. In re Magnolia Metal Company (1). The user of these words for the period mentioned in connection with the lime manufactured or sold by the petitioners has given such words a secondary signification in derogation of their primary geographical meaning and has become the trade designation of the lime manufactured by them. It would appear that if a word is strictly geographical according to its ordinary signification, that, where it is not calculated or likely to deceive, it may still be registered in a proper case by the leave of the court. (1) [1897] 2, Ch. Div. 371.
VOL. XX. EXCHEQUER COURT REPORTS. 213 In re Appollinaris Brunnen (1); In re The National 1 920 Starch Co. (2) ; and In re California Fig Sirup Co. (3) ; p A cit I ME The Stone Ale case (Montgomery v. Thompson (4) • ~ co.Lm, TRdDID-MARS. The Bucyrus Company (5). Reasons for • Judgment. It appears from the allegations of par. 5 of the — petition that the application for registration made to, and refused by, the Minister of Trade and Commerce, was for a general. trade-mark. It is obvious 'that the petitioners are applying for the registration of this trade-mark for the use of the same in connection with the sale of a class merchandise of a particular description,—namely, lime. In such a case they are not entitled to a general, but only to a specific tràde-mark. Therefore, I have come to the conclusion, under the circumstances of the present case, but' not without some hesitation,—after considering the de facto distinctiveness arising from fairly long and exclusive user in the past,—although the words are originally geographical, to allow the registration of the same as a specific trade-mark to be used in connection with the sale or manufacture of lime or of that class of merchandise coming within that particular description. The granting of an order for the registration of this trade-mark does not conclude the validity of the trade-mark, should an action be hereafter brought contesting it. It amounts to no more than al prima facie decision, open to being varied or set aside upon evidence produced by opponents. In re Crosfield (6); In re Akt. Hjorth (7). In re Christie (8) the présent (1)2 4 R.P.C. 436. (5) 14 Ex. C.R. 35, 47, S.C.A. 484. (2)2 5 R.P.C. 802. & [1908) (6) 26 R.P.C. 561, 837. 2, Ch. D. 698. (7) 27 R.P.C. 461. (3)2 6 R.P.C. 846. (8) 20 Ex. ,C.R. 119. (4) 1 891 A.C. 217.
214 EXCHEQUER COURT REPORTS. VOL. XX. 1920 decree does not declare that the mark ought to be In Re PACIFIC LIME registered because it is a good mark but merely Co. LIM ITED T MARK. allows and permits its registration under the cir- RADE-Rea — sons for cumstances of . the case. Such order, it would seem, Judgment. ought to be decreed when there is a sufficient prima facie case made out 'establishing a reasonably long user of the trade-mark. Sebastian, 5th Ed., p. 370. Judgment accordingly.
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.