Sim, Donald F.

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York University, Osgoode Hall Law School

Osgoode Hall Law JournalVolume 18, Number 2 (August 1980) Article 4S.C. Johnson & Son v. Marketing International Ltd.Donald F. SimFollow this and additional works at: http://digitalcommons.osgoode.yorku.ca/ohljCommentaryThis Commentary is brought to you for free and open access by the Journals at Osgoode Digital Commons. It has been accepted for inclusion inOsgoode Hall Law Journal by an authorized editor of Osgoode Digital Commons.Citation InformationSim, Donald F.. "S.C. Johnson & Son v. Marketing International Ltd.." Osgoode Hall Law Journal 18.2 (1980) : 295-300.http://digitalcommons.osgoode.yorku.ca/ohlj/vol18/iss2/4Case CommentS.C. JOHNSON & SON v.MARKETING INTERNATIONAL LTD.By DONALD F. SIM, Q.C.Certainty in the law is a laudable goal in the eyes of most legal practi-tioners and academics. Nevertheless, it remains an elusive objective as aresult of such factors as changing social values and differing judicial interpre-tations of statutes. The latter element, inconsistent interpretative glossesapplied by courts over time, has made for much uncertainty in the practice oflaw. One area -where this phenomenon has recently been apparent is the lawof trademarks, as manifested by the series of judgments culminating in thedecision of the Supreme Court of Canada in S. C. Johnson & Son v. Market-ing International Ltd.'At issue in the action was the validity and infringement of the trademark OFF! as applied to insect repellant and registered by S. C. Johnson &Son, Inc. of Racine, Wisconsin. The trade mark was used in Canada by awholly owned subsidiary of the trade mark owner, S. C. Johnson & Son Ltd.,which had also been registered as a permitted user of the trade mark pur-suant to section 49 of the Trade Marks Act.2 The labels on the product asmarketed in Canada bore the registered trade mark and the name of theCanadian company.Mr. Justice Cattanach of the Trial Division of the Federal Court ofCanada held (1) that the trade mark was valid, and (2) that it had been in-fringed by the defendant company, which had applied the trade mark BUGOFF to its insect repellent product.3In the Federal Court of Appeal, former Chief Justice Jackett, withwhom the rest of the panel concurred, reversed the finding of the trial judgeon the grounds that the trade mark OFF! was invalid and unenforceable forlack of distinctiveness.4It is, of course, well accepted that the essence of a trade mark is that itdistinguishes the goods or services of a particular trader from those of its© Copyright, 1980, D. F. Sim.1 (1979), 29 N.R. 515, 44 C.P.R. (2d) 16 (S.C.C.).2 R.S.C. 1970, c. T-10.3 [1977] 2 F.C. 618, 32 C.P.R. (2d) 15 (T.D.).4 [1979] 1 F.C. 65, 20 N.R. 451, 41 C.P.R. (2d) 35 (C.A.).OSGOODE HALL LAW JOURNALcompetitors and that loss of that distinctiveness will result in loss of trademark rights. 5 Furthermore, it has long been recognized that trade marks maylose their distinctiveness by a variety of circumstances such as licensing out-side the permitted user provisions of the Trade Marks Act,6 the trade mark'sbecoming generic (becoming known as the name of the product rather thanas a trade mark) 7 or the owner's failure to restrain infringements.8In the Johnson case, however, Chief Justice Jackett found the trademark OFF! had lost its distinctiveness because the use of the trade mark inCanada was associated, on the labels and packaging for the product, with thename of the Canadian company not the trade mark owner.[I]t is quite clear that the trade mark "OFF!" is not "distinctive" because, havingregard to the way in which the Canadian mark has been developed by the Canadianrespondent, that trade mark does not "actually distinguish" the wares in associationwith which it is used by its owner (the U.S. respondent) from the wares of others(which would include the Canadian respondent) nor is it "adapted so to distinguishthem." All the evidence would appear to show that the message communicated tothe Canadian public by "OFF!" is that the goods with which it is associated origi-nate with the Canadian respondent and not the U.S. respondent.9Moreover, the Chief Justice found that the situation was not cured bythe fact that the Canadian company was a permitted user of the trade markin question notwithstanding section 49(3) of the Trade Marks Act, whichprovides: "(3) The permitted use of a trade mark has the same effect for allpurposes of this Act as a use thereof by the registered owner."' 0His Lordship offered, by way of direction, some guidelines for propertrade mark use by someone other than the owner:(a) user by the licensee of the trade mark with any indication as to who is manu-facturer;(b) user by the licensee of the trade mark with an indication of the owner of thetrade mark as manufacturer (which misrepresentation would be innocuousassuming that the controls contemplated by s. 49 are properly applied), or(c) user by the licensee of the trade mark with an indication that it is being usedby a registered user and an indication of the name of the owner of the trademark.... 1Understandably, this judgment caused great consternation among trademark owners and users. It is not unusual for a registered trade mark in Can-ada to be used by an American or other foreign parent and for the Canadiansubsidiary that is using the mark to be registered as a permitted user. Relying5 Fox, The Canadian Law of Trade Marks and Unfair Competition (Toronto: Cars-well, 1972) at 285.6 Cheerio Toys and Games Ltd. v. Dubiner, [1966] S.C.R. 206, 55 D.L.R. (2d) 313,48 C.P.R. 226; Wilkinson Sword (Canada) Ltd. v. Juda, [1968] 2 Ex. C.R. 137, 34 FoxPat. C. 77, 51 C.P.R. 55.7 Aladdin Industries Inc. v. Canadian Thermos Products Ltd., [1969] 2 Ex. C.R. 80,41 Fox Pat. C. 26, 57 C.P.R. 230.8 Cheerio Toys and Games Ltd. v. Dubiner, supra note 6.9 Supra note 4, at 71-72 (F.C.), 458 (N.R.), 41 (C.P.R.).10 R.S.C. 1970, c. T-10, s. 49(3).11 Supra note 4, at 77 (F.C.), 462 (N.R.), 45 (C.P.R.).[VOL. 18, No. 2Case Commenton the provisions of section 49(3) of the Act, few trade mark users hadthought it necessary to show the name of the trade mark owner on labels,packaging or the like, or to indicate the status of the Canadian company as apermitted user thereof.Reaction to the Federal Court of Appeal judgment varied. While label-ling requirements made the first two of the Chief Justice's alternatives im-possible, some companies scrambled to adopt the third by such methods asthe printing of a legend on all packages and advertisements; for example,"ACME and the ACME design are registered trade marks of Acme Inc., ofwhich Acme Canada Ltd. is a registered user." Other companies assumedthat the Supreme Court of Canada would hear the Johnson appeal and putmatters right, and thus chose to ignore the Federal Court of Appeal's decision.Those in the former category faced many practical problems. The legendin question is difficult to put legibly on physically small products (hearing aidbatteries and phonograph needles, for example) and, of course, the questionof where the notice had to be placed remained unanswered. For example, if thesales representatives of Acme Canada had calling cards bearing the trade marks,was it necessary to put the legend on the cards, on the letterhead, or alternativelyto advise all prospective accounts of the relative status of the Canadian com-pany to the American company with relation to the trade mark registration?Those in the latter category had the easier administrative task, but no doubtattended church or synagogue with greater faithfulness pending the leave pro-cess and the hearing of the appeal.Leave was granted and the appeal was heard by the Supreme Court ofCanada. Much to the relief of trade mark owners, Mr. Justice Pigeon, whowrote the reasons with which the coram12 concurred, put right the matter ofdistinctiveness:Subs. 49(3) enacts that the "permitted use" has "the same effect for all purposes ofthis Act" as a use by the registered owner. By virtue of subs. (2), "permitted user"means: "the use ... by a person approved as a registered user". From this it clearlyfollows that, in the application of all the provisions of the Act, "use" by a regis-tered user is to be taken as use by the registered owner. I can see no reason fornot giving full effect to this provision in relation to the definition of "distinctive"in s. 2 so that, when a trade mark is used by a registered owner, "distinctive" meansa mark that actually distinguishes or is adapted to distinguish the wares in associa-tion with which it is used by the registered user.13It therefore appears quite clearly that a registered trade mark in Canadaowned by one party but used by a registered user or his predecessors will notlose distinctiveness by reason of association in the marketplace with the tradename of the permitted user in advertisements, labels, etc.In its judgment, however, the Supreme Court of Canada confirmed theresult of the Federal Court of Appeal's decision on a ground contrary tofindings of all four judges in the courts below, namely that the registration ofthe trade mark OFF! was invalid and unenforceable because it was, contrary12 Martland J., Dickson J., Estey J. and McIntyre I.13 Supra note 1, at 522 (N.R.), 22 (C.P.R.).19801OSGOODE HALL LAW JOURNALto section 12(1) (b) of the Trade Marks Act, "clearly descriptive or decep-tively misdescriptive of the character or quality of the wares or services inassociation with which it is used.'4The provisions of section 12(1) (b) reflect a reasonable public policy.Everyone must be free to describe his goods and their quality without beingrestrained by a trade mark owner. As Mr. Justice Rand stated in GeneralMotors Corp. v. Bellows:No doubt there is a public interest against confusion of these [descriptive] marks,but on the other hand there is a like interest in the freedom of the individual traderin ordinary trade practices and in particular in using the main stock of the language.If the latter interest is disregarded, a single word might effect a wholesale appro-priation of the only apt language available. 15It is accepted that the "strength" or registrability of a trade mark is ininverse ratio to its descriptiveness. However, it was well settled law thatsuggestive words-that is, words that bear some allusion to characteristics ofthe wares on which they are used, but which fall short of being clearly de-scriptive-are not to be denied registration. Many valuable trade markssuggest such a reference while falling short of being descriptive.The practical problem for trade mark users is to predict whether a markwill be held to be merely suggestive and hence registrable, or descriptive andhence unregistrable or invalid. As the test is a subjective one, it is by nomeans easy to predict the court's attitude in borderline cases. However, theRegistrar of Trade Marks, the officer required to make the first assessmentof descriptiveness leading to registration or rejection of a trade mark applica-tion, has consistently adopted a more relaxed attitude towards what is pro-hibited than have the courts. This is evinced by the case of Home Juice v.Orange Maison,'a in which Mr. Justice Pigeon held the trade mark ORANGEMAISON to be descriptive of orange juice. The situation has not changedsince 1973.In 1979 the Registrar allowed the following to be registered as trademarks:COURIER PAK for a small package air freight service,BIO-ORGANIC for health foods,INTRUDALARM for a security warning system,O.J. for orange and other fruit juices,FUEL GUARD for thermal insulation, andGENTLE ADVENTURES for guided and outfitted wilderness trips.The courts, on the other hand, (apart from one notable departure from thetrend, where KOLD ONE was held by the Federal Court of Appeal not tobe descriptive of the character or quality of beer) 1'7 have consistently adopted14 R.S.C. 1970, c. T-10, s. 12(1) (b).15 [1949] S.C.R. 678 at 691, [1950] 1 D.L.R. 569 at 582-83, 10 C.P.R. 101 at 116.16 [1970] S.C.R. 942, 16 D.L.R. (3d) 740, 1 C.P.R. (2d) 14. See also Sim, Comment(1973), 11 Osgoode Hall L.J. 344.17Registrar of Trade Marksv. Provenyano (1978), 40 C.P.R. (2d) 288.[VOL. 18, No. 2Case Commenta much more severe test, holding, for example, FRIGIDAIRE descriptive ofrefrigerators,"' NO. 1 descriptive of beer,19 ONCE A WEEK descriptiveof floor polish 20 and SUPERWASH descriptive of clothing.2 'Recognizing this dichotomy between administrative practice and judicialreview, the profession as a whole has been content to rely upon the qualify-ing word "clearly" in section 12(1) (b) and upon the fact that it is onlywords descriptive of the character or quality of goods and not of the effectto be obtained from the product which are to be denied registration (forexample, GRO-PUP was allowed by the courts for pet food).22Under such circumstances, most would have considered the word OFF!to be unobjectionable. Certainly it suggests an effect to be obtained from theuse of the repellent, but surely it falls short of being clearly descriptive of thecharacter or quality of such a product. Alas, this was not the view of theCourt. In finding this trade mark to be invalid as contrary to section 12(1) (b),Mr. Justice Pigeon held:In the Oxford Dictionary the first meaning of "off" is:Off 1. Expressing motion or direction from a place: To a distance, away,quite away: as in go, run, drive off.Also expressing resistance to motion towards: as in beat, hand, keep,ward off.In Webster's Third New International Dictionary, I read under "Off"Off 1 b: so as to prevent close approach (drove the dogs off).It is obvious that an insect repellent is a substance that will "ward off" or "driveoff" those pests colloquially called "bugs". When Johnson U.S. applied for theregistration there was on the register of Trademarks since January 25, 1946 theword "BUGZOFF" for insecticides besides"GREESOFF","MIST-OFF", "OZOFF","EASITOFF", "EASY-OFF" and "SPRAYITOFF" for various cleaning com-pounds. All those expressions reveal the use of the word "off" as meaning a sub-stance intended for getting rid of something, in other words a repellent or removingagent.In his reasons for judgment, the trial judge said:... it seems that the word "off" is most usually used in connection with otherwords and derives its meaning from the context in which it is used. If the useis elliptical then because of its many uses the ellipses are many.That being so the word "off" standing alone bereft of context has nomeaning readily ascribed to it and accordingly that word cannot be "clearlydescriptive of the nature and quality of the wares in association with whichit is used" without the explanation accomplished by additional words whichare not expressed and what those words might be is left to conjecture.Therefore, I conclude that the registration of the word "OFF!", followedby an exclamation mark as it is, was validly registered by the Wisconsin plain-tiff, that it was "adapted" to distinguish that owner's wares and has a degreeof distinctiveness capable of doing so.18 Supra note 15.19 John Labatt Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R. (2d) 15.2 o Drackett Co. of Canada v. American Home Products Corp., [1968] 2 Ex. C.R. 89,38 Fox Pat. C. 1, 55 C.P.R. 29.21 Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d)25.2 Kellogg Co. of Canada v. Registrar of Trade Marks, [1940] Ex. C.R. 163, [1939]3 D.L.R. 65.1980]OSGOODE HALL LAW JOURNALWith respect, I have to say that the learned trial judge was in error in the viewhe took of the plaintiffs' use of the word "off". He failed to consider th2 essentialfactor that this was an elliptical use of the word in association with an insect repel-lent and therefore, in that context, it was descriptive of the wares or of their effect.He also failed to consider that in applying to register this trade mark, Johnson U.S.was in effect claiming a monopoly for the use of a common word of the language,a word commonly used in connection with a variety of wares in related categoriesall exhibiting the common purpose of avoiding or getting rid of something.2-[Emphasis added.]The Oxford English Dictionary defines "ellipsis," inter alia, as "omissionfrom a sentence of words needed to complete [its] construction or sense."' 4Pigeon J. obviously used the word in this sense: that OFF was an ellipticalreference to BUG OFF and that the latter, in describing, however collo-quially, the effect of the user of the defendant's product, offended section12(1) (b). The use of the term "clearly" in section 12(1) (b) and the com-mon general knowledge that OFF per se is an elliptical reference to common(some very common) phrases other than BUG OFF did not seem to troubleMr. Justice Pigeon nor the rest of the Court who concurred in his opinion.In one pithy phrase, therefore, the jurisprudence substitutes for the clearand long standing words of the statute "clearly descriptive of character orquality," the phrase "an elliptical reference to the effect to be obtained."This is an unfortunate and potentially far-reaching judgment. Surelyevery suggestive trade mark, in alluding to the product, can be held to con-tain an elliptical reference to it. If character or quality includes a referenceto a property or result to be achieved through use of the product, what isthe status of most "suggestive" marks? Are only the few coined or arbitrarywords in use as trade marks to enjoy unquestioned validity?While doing the profession and trade mark users a service on the ques-tion of distinctiveness by labelling, the Supreme Court of Canada has in thiscase clearly increased manifold the severity of any test of descriptivenessheretofore imposed. It has not only limited future choices of trade marks, buthas cast a serious cloud over many old and well-established marks nowcommon in the marketplace.23 Supra note 1, at 525-26 (N.R.), 24-25 (C.P.R.).24 The Concise Oxford Dictionary 6th ed. (Oxford: Clarendon Press, 1976) at 335.[VOL. 18, No. 2

S.C. Johnson & Son v. Marketing International Ltd.

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S.C. Johnson & Son v. Marketing International Ltd.

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