Sim, Donald F.

English

York University, Osgoode Hall Law School

Osgoode Hall Law JournalVolume 11, Number 2 (August 1973) Article 11Home Juice Co. v. Orange Maison LteeDonald 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.. "Home Juice Co. v. Orange Maison Ltee." Osgoode Hall Law Journal 11.2 (1973) : 344-348.http://digitalcommons.osgoode.yorku.ca/ohlj/vol11/iss2/11OSGOODE HALL LAW JOURNALand that it should be compensated by receiving an amount equal to the totalsalaries of the executives plus 15% of the net profit of the contractingcompany which it would use to purchase shares from the shareholder. Thethree executives became officers of the management company and resignedas employees of the contracting company although they retained their respec-tive titles so there was no ostensible change in the operations. It will beobserved that although this arrangement resulted in a saving of income taxcompared with the amount that would have been payable had the 15% ofprofits been divided among the three executives as individuals, the evidence,accepted by the trial judge, was that the primary purpose was not tax avoid-ance but the design of an efficient method by which these executives, andpossibly others later on, could acquire a share interest in the contractingcompany. Notwithstanding this finding, the Minister characterized the wholetransaction as a sham and assessed the individuals in disregard of the manage-ment company. Having failed in the Exchequer Court, the Minister carriedhis submissions to the Supreme Court of Canada where he also lost. Perhapsif the scheme had been held to be for the purpose of tax avoidance he mighthave succeeded.Terence Sheard, Q.C.** Member of the Ontario Bar, Toronto.Home Juice Co. v. Orange Maison LteTRADE MARKS - ADMINISTRATIVE PRACTICE AND JUDICIAL DETERMINATION- "DESCRIPTIVE"The gulf between administrative and quasi-judicial practice on the onehand, and judicial determination respecting that practice on the other handhas existed as an enigma to practitioners and will undoubtedly continue tWexist in future creating in effect a "two-tier" practice.A recent decision of the Supreme Court of Canada illustrates a goodcase in point. In Home Juice Co. v. Orange Maison Lte,1 an appeal from adecision of Mr. Justice Noel of the Exchequer Court of Canada,2 Mr. JusticePigeon expressed the unanimous view of the Court in allowing the appeal.1 (1971), 16 D. L.R. (3d) 740.2 [1968] 1 Ex. C.R. 313.[VOL. 11, NO. 2Case CommentAn issue for determination was whether or not the words Orange Maison,registered in the Canadian Trade Marks Office for use in Canada in associ-ation with the sale of orange juice, were or were not validly under theprovisions of the Trade Marks Act,3 particularly section 12(1)(b) of that Actwhich permits of registration of a word if it is not:(b) whether depicted, written or sounded, either clearly descriptive or deceptivelymisdescriptive in the English or French languages of the character or qualityof the wares or services in association with which it is used or proposed to beused or of the conditions of or the persons employed in their production or oftheir place of origin;This definition admits of a subjective test. The "strength" or "registrability"of a trade mark is clearly inverse ratio to its descriptiveness. It is well settledlaw that only descriptive words and not merely suggestive words are to bedenied registration. There exist many trade marks which bear an allusion orreference to desirable characteristics of the product to which they are applied.Examples are Talon for slide fasteners, Halo for shampoo and Xerex for anti-freeze. The problem is, of course, to predict whether any given or proposedtrade mark is or will be considered to be merely suggestive or clearlydescriptive.The Registrar of Trade Marks, who is the person responsible for admin-istration of the Trade Marks Act and the person in the first instance requiredto consider the registrability of trade marks under the Act, appears to set alow standard in assessing this question. The Registrar seemingly allows tobe registered many marks which, could clearly under a more severe view ofsection 12(1)(b) be considered to be descriptive of the character or qualityof the wares or services. The Registrar has allowed for registration for example,the following:Litter Green for animal litter,Acne-Biotic for acne treatment preparations,The Country Cheese, for cheese,Grape Plus for a fruit drink,Slimmers Glove for a massage glove,Datekeeper for calendars, diaries and appointment records,Stik Strip for adhesive,A La Cat for cat food,Trash Masher for a garbage compactor, andGround Pounder for earth compactors.What test then is applied by the Courts as to "descriptiveness"? It wouldappear from the Home Juice case, that a much different and a much moresevere test is imposed.The words Orange Maison were registered by the Registrar of Trade,Marks, for use in Canada in association with the sale of orange juice. Thatregistration was attacked by the appellant in the Supreme Court as being"descriptive" contrary to section 12(1)(b). Mr. Justice Pigeon found that3 1952-53 S.C., c. 49, now 1970 R.S.C. c. T-10.1973]OSGOODE HALL LAW JOURNALOrange Maison was descriptive of orange juice and expunged the registration,except in the province of Quebec where it had acquired a "secondarymeaning".It was argued by the trade mark owner that Orange Maison was distinc-tive, that orange did not mean orange juice, and maison was, in this context,merely fanciful.As to the meaning of "orange", Mr. Justice Pigeon found that the words"jus de" could be read in by implication, hence making Orange read in effect,orange juice. He said:Here, the trade mark is composed of two French words and this is not at all a caseof a covert allusion but that of an explicit description indeed. The omission of thewords "jus de" (juice) in no way prevents the word "Orange" from being descriptiveof the character of the wares, because those words are clearly understood throughthe association with a liquid product. It must also be noted that respondent tookcare, in his application for registration, to disclaim any right to the exclusive useof the word "orange" by itself. It must therefore be said that the distinctive characterof the trade mark is claimed exclusively for the combination "Orange Maison".But, as we have seen, the word "maison" thus placed clearly becomes an adjectivedescriptive of quality.With respect to "maison" the appellants asserted that it meant, in France,"home-made" or "of good quality". The Court summarized:In this Court, as in the Exchequer Court, the appellants in support of their conten-tion as to the meaning of "Orange Maison" relied especially on two dictionariespublished in France in 1959: the Petit Larousse and the Robert. In both the definitionof the word "maison" used as an adjective is given as (translation): "that which hasbeen made at home" and also (translation): "of good quality."The Court rejected an argument that these meanings of "maison" werefound only in France and not Quebec. He held that section 12(1)(b) precludeduse of words of the French language having meaning only in France, evenif no such meaning existed in Quebec.Respondent has contended that the current meaning in France is not to be con-sidered, that regard must be had only to the meaning current in Canada and that,in the absence of any evidence, whether by dictionaries or otherwise, that themeaning in question was current in Canada at the date of registration, no accountshould be taken of a recent meaning found in France only. This contention wouldhave serious consequences if it was accepted. One result would be that a shrewdtrader could monopolize a new French expression by registering it as a trade markas soon as it started being used in France or in another French-speaking countryand before it could be shown to have begun being used in Canada.In my opinion, the wording of s.12 does not authorize such a distinction. It refersto a description "in the English or French languages". Each of these two languagesis international. When they are spoken of in common parlance they are consideredin their entirety and not as including only the vocabulary that is extremely difficultto define especially in these days when communication media are not longer confinedwithin national boundaries.He found therefore that Orange Maison meant, even if only in rareinstances in the French language as used in France, "home-made orange juice"or "orange juice of good quality", hence was unregistrable as descriptive ordeceptively misdescriptive of the character or quality of the product.Therefore, when the meaning of the trade mark is analyzed in respect of the goodsto which it is affixed, the only possible conclusion is that the first word is an ellipticaldescription of their character and the second an explicit description of their quality.[VOL. 11, No. 2Case CommentIt appears from this decision that the Supreme Court is prepared to goto some lengths to hold that a trade mark is merely descriptive.This should not be surprising for it can be seen that Canadian juris-prudence on the subject has to set a consistently high standard as to whetheror not a trade mark was descriptive or distinctive. In Fine Foods of CanadaLimited v. Metcalfe Foods Limited4 Maclean J. was commenting on trademarks used in association with the sale of canned vegetables. He said atpage 25:I may be permitted to say respectfully that I doubt if such marks as "Garden Patch"or "Summer Pride", or "Garden Price" should be registered at all, on the groundthat they seem to suggest the place or time of production.The Exchequer Court over the years has found "Finishing Engineer"to be descriptive of periodical publications,5 "Thor-o-Mix" descriptive ofready made concrete, 6 "Sea-lect" descriptive of quality of canned fish andlobster,7 "Superset" descriptive of drilling tools s "True Confessions" descrip-tive of magazines, 9 and "Once a Week" descriptive of floor polishes.10The Supreme Court of Canada moreover held "frigidaire" to be descrip-tive of refrigerators (with two dissents). 1And finally in Silhouette Products Ltd. v. Prodon Industries Ltd.12 wefind Noel J. holding that a silhouette of a woman's head is prima facie non-distinctive of hair care products, at page 138.Moreover, I am of the opinion that a reproduction of a human head, closely relatedsuch as here to wares used for the care of the hair, is prima facie non-distinctive.The judgment of Mr. Justice Pigeon therefore, appears only to becarrying on a well established tradition apparently not coinciding with thepractice at the administrative or quasi-judicial level in the Trade Marks Office.It is interesting to note that all the trade marks I have cited as having beenallowed for registration by the Registrar, were allowed well after the OrangeMaison decision of the Supreme Court had been reported and presumablyconsidered by the Trade Marks Office.What course should be adopted in face of this dichotomy? Should onecontinue to advise clients based on the practice of the Trade Marks Office4 [1942] Ex. C.R. 22.5 The Association of Professional Engineers of the Province of Ontario v. TheRegistrar of Trade Marks (1960), 19 Fox Pat. C. 69 (Ex. Ct.).6 Thorold Concrete Products Ltd. v. The Registrar of Trade Marks (1962), 21 FoxPat. C. 206 (Ex. Ct.).7 C. Fairall Fisher v. B. C. Packers Limited (1945), 5 Fox Pat. C. 50 (Ex. Ct.).8 J. K. Smit & Sons of Canada Ltd. v. The Registrar of Trade Marks (1946), 5 FoxPat. C. 167 (Ex. Ct.).9 Fawcett Publications Inc. v. Alexander Valentine (1950), 10 Fox Pat. C. 203.10 The Drackett Co. of Canada Ltd. v. American Home Products (1968), 38 FoxP.C. 1 (Ex. Ct.).11 General Motors Corporation v. Bellows (1948), 7 Fox Pat. C. 130 (Ex. Ct.); 9 FoxPat. 0.78 (S.C.C.).12 (1965), 35 Fox Pat. C. 129 (Ex. Ct.).1973]348 OSGOODE HALL LAW JOURNAL [VOL. 11, NO. 2and continue to seek registration of arguably or even obviously descriptivewords; or should one take a more cautious approach and advise the adoptionand registration only of trade marks which appear to meet the stricter testsimposed by the courts?The problem is by no means a new one. Francis Bacon in his Essay"Of Judicature" in 1625 reminded "Therefore it is a happy thing in a statewhen kings (Registrars ?) and states do often consult with judges . . . whenthere is matter of law intervenant in business of state. For many times thethings deducted to judgment may be meum and tuum when the reason andconsequence thereof may trench to point of estate". To this many practitionersin the trade marks field would say Amen.Donald F. Sim, Q.C.*Member of the Ontario Bar, Special Lecturer, Osgoode Hall Law School of YorkUniversity.

Home Juice Co. v. Orange Maison Ltee

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Home Juice Co. v. Orange Maison Ltee

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