Date: 19990830
Docket: T-1112-98
BETWEEN:
RIVERSIDE PAPER CORPORATION
Applicant
AND:
FIRST BASE INC. and
THE REGISTRAR OF TRADE MARKS
Respondents
REASONS FOR ORDER
ROULEAU, J.
[1] This is an application for an order requiring the Registrar of Trade Marks to expunge trademark registration No. 467,634 for mark "granite bond" & design and registration No. 451,077 for mark "marble bond", or alternatively to amend such registrations to disclaim the exclusive right to the terms "granite bond" and "marble bond" respectively, apart from the trade marks, or, in the further alternative to amend such registrations to disclaim the exclusive right to the terms "granite" and "marble".
[2] The applicant, Riverside Paper Corporation ("Riverside) is a corporation existing under the laws of the State of Wisconsin, U.S.A. It produces a broad range of specialty bond papers, construction paper, and technical papers in various colours, textures and basic weights. For a number of years, Riverside has been the primary supplier of coloured paper for the Costco chain of stores. Five Costco store in Ontario currently carry the applicant's marble and granite bond paper, and have done so since June 1997.
[3] The respondent, First Base Inc. ("First Base"), is a paper converter. Paper converters are companies which buy bond and specialty papers from paper manufacturers such as Riverside, and then repackage the paper, usually in smaller packages, or purchase bond and specialty paper packaged and labelled with their own labels from the manufacturer.
[4] On December 1, 1995, First Base registered its MARBLE BOND trade mark as Registration No. 415,077. It subsequently registered its GRANITE BOND & Design trade mark as Registration No. 467,634 on December 13, 1996.
[5] The applicant now seeks to have the trade marks expunged on the grounds that neither mark was registrable at the date of their registration. It submits that each trade mark is clearly descriptive of the character or quality of the wares in association with which they are used and that the marks are the names in English of the wares in association with which they are used. Riverside further submits that neither mark was distinctive at the time this proceeding commenced on June 1, 1998, in that neither mark was capable of distinguishing the granite bond and marble bond paper products of First Base from those offered by other specialty distributors.
[6] At the commencement of the hearing before me there was some dispute between the parties with respect to the admissibility of the affidavit of Karen Lau Cardinell sworn June 16, 1998. I agree with the applicant's submissions in this regard and am allowing the affidavit to be tendered as evidence. Given the contents of the affidavit, which sets out as exhibits three affidavits sworn on behalf of Riverside in the Ontario Court proceedings, First Base cannot claim to be surprised nor in any way prejudiced by the admission of this evidence.
[7] I turn now to the merits of the application. In accordance with paragraph 12(1)(b) of the Trade Marks Act, R.S.C. 1985, c. T- 13, a trade mark is unregistrable where it is clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in question. The test of clear descriptiveness is to be applied as of the date the application for registration of the trade mark was filed. In determining whether a mark is clearly descriptive, the key consideration is the common meaning of the words comprising the marks as they are used in association with the wares at issue.
[8] It is well established by the jurisprudence that individuals do not have the right to create trade marks out of words which clearly describe the inherent qualities and character of the products with which the mark is associated. This is a long recognized principle of law as evinced by the following comments of Lord Herschell in Eastman Photographic Material Co., Ltd. v. Comptroller-General of Patents, Designs and Trade Marks, [1898] A.C. 571 at p. 580:
| The vocabulary of the English language is common property: it belongs alike to all; and no one ought to be permitted to prevent other members of the community from using for purposes of description a word which has reference to the character of quality of goods. |
[9] In S.C. Johnson & Son, Ltd. v. Marketing Int'l Ltd., [1980] 1 S.C.R. 99, Pigeon J. made similar comments at p. 109:
| In considering the descriptiveness of any trade mark it is important to bear in mind that, by virtue of the already quoted definition of trade mark, it must when used, "actually distinguish" or be 'adapted to distinguish', the wares". Thus the result of the registration must be to confer a monopoly for the use of the trade mark. By virtue of para. 12(1)(c) no one may get such monopoly for the name in any language of the wares with which the trade mark is to be used, and by virtue of para. 12(1)(b), no one may obtain such monopoly for any expression that is "clearly descriptive" of those wares in English or French. |
[10] In determining whether a mark is clearly descriptive, the primary consideration is the common meaning of the words comprising the mark as they are used in association with the wares at issue. In John Labatt Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R. (2d) 15, this Court stated as follows at p. 19:
| It is not a proper approach to the determination of whether a trade mark is descriptive to carefully and critically analyze the words to ascertain if they have alternate implications or alternate implications when used in association with certain wares but rather to look at the words as they are used in association with certain wares and to ascertain what those words in the context in which they are used would represent to the public at large who will see those words and who will form an opinion as to what those words connote. |
(emphasis added)
[11] Applying these principles of law to the facts before me, I am satisfied that the words "marble" and "granite" used in conjunction with the term "bond" clearly describe the nature of First Base's marble and granite bond paper products. The term "bond" is a conventional term in the paper industry used to describes a type of paper; namely, paper of a superior quality usually with high cotton fibre content. The terms "marble" and "granite" are descriptive of the marbled and granitized appearance of the paper. In other words, the marks are an exact description of the product with which they are associated. Indeed, other paper manufacturers who sell the same product do not give the paper any special name; it is simply referred to as marble bond and granite bond. As such, the terms "granite bond" and "marble bond" are highly descriptive of the wares with which they are associated and are not registrable trade marks.
[12] Nor am I persuaded that the marks have acquired distinctiveness either through use in the market or because they possess any inherent distinctiveness. Trade marks which consist of a striking, inventive name or an original design are inherently distinctive and are considered to be a strong mark deserving of protection. If a mark lacks exceptional qualities in design or wording, it is considered an inherently less distinctive and weaker mark and is accordingly, afforded less protection.
[13] Where a trade mark is clearly descriptive of the character or quality of the wares in association with which it is used, the mark is prima facie not distinctive. Here, the trade marks "granite bond" & design and "marble bond" are not inherently distinctive since both marks use common terms to describe certain kinds of products in the specialty paper industry. Nor is there any evidence that the marks have become distinctive through usage. First Base has not filed any survey evidence or consumer affidavits which support a finding that its trade marks "marble bond" and granite bond" & design have acquired a secondary meaning or distinctiveness.
[14] For these reasons I am granting the application and ordering the Registrar of Trade Marks to expunge trade mark registration No. 467,634 for the mark "granite bond" & design and registration No. 451,077 for the mark "marble bond". Costs to the applicant.
JUDGE
OTTAWA, Ontario
August 30, 1999