Rowntree Company Limited v. Paulin Chambers Company Limited et al.

J.:-This is an appeal from a judgment of Mr. e

Justice Gibson of the Exchequer Court of Canada allowing the respondent's appeal from a decision by which the Registrar of Trade Marks had refused the respondent's application of September 13, 1961, for registration of the trade mark SMOOTHIES in respect of candy.

The Registrar's refusal was based on the ground that the trade mark applied for was "confusing" with the appellant's trade mark SMARTIE as applied to biscuits and candy and SMARTIES as applied to confections which had been registered on March 6, 1928, and March 7, 1940, respectively.

The effect of s. 12(1) (d) of the Trade Marks Act, 1952- 53 (Can.), c. 49, (hereafter called "the Act") is that a trade mark is not registerable if it is "confusing with a registered trade mark" and the question of whether it is confusing or not is to be determined in accordance with the standard fixed by s. 6(2) of the Act which reads as follows:

It will be seen from these provisions that the essential question to be determined in deciding whether or not a trade mark is confusing with a registered trade mark is whether its use would be likely to lead to the inference that the wares associated with it and those associated with the registered trade mark were produced or marketed by the same company.

In determining this issue, the Court or the Registrar is directed by s. 6(5) of the Act to "have regard to all the surrounding circumstances including

(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. It is expressly admitted, and was found by the learned PAULIN trial judge, that the trade mark SMARTIES is inherently Co.LrD. distinctive and as of September 16, 1961, the date of the application, had been used for a very long time in compari- RitchieJ. son to the length of time that SMOOTHIES had been used, and it is further admitted, in accordance with the trial judge's finding, that the nature of the trade in which the wares SMOOTHIES and SMARTIES are sold is the same and for the purpose of this appeal the respondent admits also that the wares sold under the two marks are the same. Under these circumstances, the learned Registrar of Trade Marks directed himself, in determining the question of confusion between the marks, in accordance with the provisions of s. 6(2) of the Act and concluded:

I have considered the evidence on file and also the representations of counsel for both parties at a hearing held in my Office November 19th, 1963. The nature of the wares and the nature of the trade in both cases is identical and the wares are distributed through the same channels of trade. Both marks are slang terms commonly used to describe a 'smart aleck' or a 'smooth operator'. After carefully reviewing the evidence, I have arrived at the conclusion that there is a strong possibility that the concurrent use of both marks would lead to the inference that the wares of the applicant and those of the opponent emanate from the same source. The italics are my own.

In reaching the opposite conclusion, it will be observed that the learned trial judge did not expressly apply the standards fixed by s. 6(2) and based his conclusion on his view of the meaning of the two words SMARTIES and SMOOTHIES. His finding reads as follows:

... that there is no resemblance between the trade marks in appearance, sound or in the idea suggested by them. There was no dispute between the parties that there is no appearance or sound resemblance, but there was a dispute as to whether there was a degree of resemblance in the idea suggested by them. As to the latter, however, it is clear that the meaning of these words are entirely dissimilar. Webster's Third New International Dictionary defines 'smarties' and 'smoothies' as follows: smart or smartie . . one that tries in a callow fashion to be witty or clever: smart aleck.

smoothy or smoothie 1a: a person with polished manners b: one who behaves or performs with deftness, assurance, easy competence ... All of which, on balance, leads to the conclusion, in my view, that there is no probability of confusion within the meaning of section 6 of the Trade Marks Act of 'Smoothies' with 'Smarties'.

119681 In the factum filed on behalf of the respondent, it is submitted that "It is the degree of resemblance between the two trade marks in appearance or sound or in the ideas suggested by them (s. 6(5) (e) of the Trade Marks Act) Lr.

that is the essential question to be decided on the issue of confusion". As I have indicated, the learned trial judge determined this question by reference to the meaning attributed to the words in question by Webster's Third New International Dictionary and his conclusion is based on the finding that "the meaning of these words are entirely dissimilar".

On the other hand, I am, as I have stated, of opinion that the essential question to be determined is whether the use of the word SMOOTHIES by the respondent would be likely to lead to the inference that the wares associated with that word and those associated with the registered trade marks of the appellant were produced or marketed by the same company and I do not think that this necessarily involves a resemblance between the dictionary meaning of the word used in the trade mark applied for and those used in the registered trade marks. It is enough, in my view, if the words used in the registered and unregistered trade marks are likely to suggest the idea that the wares with which they are associated were produced or marketed by the same person. This is the approach which appears to me to have been adopted by the Registrar of Trade Marks.

It is contended on behalf of the respondent that the conclusion reached by the learned trial judge should not be disturbed having regard to the terms of s. 55(5) of the Act which provides that "on the appeal ... the Court may exercise any discretion vested in the Registrar". 1 do not, however, take this as meaning that the Court is entitled to substitute its view for that of the Registrar unless it can be shown that he proceeded on some wrong principle or that he failed to exercise his discretion judicially.

In this latter regard I would adopt the approach outlined by Lord Evershed In the Matter of Broadhead's Application for Registration of a Trade Mark , where he was speaking of a case in which the Court of first instance had overruled a finding of the Registrar of Trade Marks as to whether a trade mark was distinctive or not and the Court of Appeal approved the Court's judgment. At the time of this decision the English Trade Marks Act, 1-2 Co.LrD. Geo. 6, 1938, c. 22, was in force, s. 22 of which provides that "the Court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar". Lord Evershed there said at page 213:

Ritchie J. It has been argued that, the question being one of the discretion of the Registrar, there is at any rate a strong case against interference with that discretion by the Court. Like all discretions, the Registrar's discretion must be judicially exercised; and such an exercise of discretion is, according to the principle recently laid down in the House of Lords in Evans v. Bartlam (1937) 53 Times L.R. (689), liable to review on grounds which are well understood. There can be added the further consideration that the subject matter in such a case as this is one with which the Registrar and his assistants are peculiarly well versed, and the greatest weight should, therefore, be attached to their experience in such matters. In the case of Edward Hack's Trade Mark (1941) 58 R.P.C. (91) Morton J., as he then was, referred to the well known statement of Lord Dunedin in the case of George Banham & Coy. v. F. Reddaway & Coy. Ltd. Lord Dunedin said: 'Now it is true that an appeal lies from the decision of the Registrar, but, in my opinion, unless he has gone clearly wrong, his decision ought not to be interfered with. The reason for that is that it seems to me that to settle whether a trade mark is distinctive or not-and that is the criterion laid down by the statute-is a practical question, and a question that can only be settled by considering the whole of the circumstances of the case.'

In my view the Registrar of Trade Marks in the present case applied the test required of him by the statute and I do not think that grounds were established justifying the learned judge of the Exchequer Court in interfering with his conclusion. For all these reasons I would allow this appeal and restore the decision of the Registrar of Trade Marks refusing the respondent's application S.N. 264951. The appellant will have the costs of this appeal.

Appeal allowed with costs.