Toronto, Ontario, May 30, 2006
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
Applicant
and
THE REGISTRAR OF TRADE-MARKS and
AIRD AND BERLIS LLP
Respondents
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an appeal brought by way of application under Rule 300(d), from a decision of a Hearing Officer respecting a registered trade-mark in a proceeding brought under the provisions of section 45 of the Trade-marks Act, R.S.C. 1985, c.T-13. In that decision the Hearing Officer removed the wares "men's and women's overalls" from the registration. The Applicant challenges that decision and has filed further evidence in support. I am of the opinion, for the reasons set out, that those wares must be restored to the registration.
[2] The sole issue is the meaning of the word "overalls" and what is to be done as the meaning of that word has changed over the fifty years since the mark was registered. The registration at issue, number UCA 44368, comprises in brief, a design of a Red Tab on which the word LEVI'S appears, sewn on a visible part of a garment. The mark was originally registered in 1950 for use in association with wares described as:
"Clothing, namely, men's, women's and children's overalls and similar garments especially garments and overalls of the patch pocket type"
[3] A notice was issued under the provisions of section 45 of the Act, at the instigation of a Toronto law firm, on December 9, 2002 requesting that the Applicant provide evidence of use of the trade-mark in respect of the wares set out in the registration. In response, an affidavit of Ellen Baker, a trade-mark specialist with the Canadian subsidiary and licencee of the Applicant, was filed. The matter came before a Hearing Officer appointed by the Registrar of Trade-marks for this purpose. Several issues were raised and disposed of by the Hearing Officer and are no longer at issue here.
[4] The critical issue remaining is that of the meaning of "overalls". The evidence filed demonstrated that children's garments comprising trousers with a bib and shoulder straps had been sold at the relevant time. This evidence was accepted by the Hearing Officer as sufficient to sustain the registration for children's overalls. The evidence further showed use of the mark, in the relevant period of time, on what was described as "men's and women's jeans"; these are trousers but without a bib or shoulder strap. The Hearing Officer held that this did not support a use for "overalls". At pages 7 and 8 of the Reasons the Officer said:
As for "men's and women's overalls", the evidence is completely silent concerning the use of the trade-mark with such wares.
It is true that the Baker affidavit shows use of the trade-mark in association with "men's and women's jeans" and that Ms. Baker has indicated in paragraph 5 of her affidavit that when the trade-mark registration was obtained the word "overalls" was used to refer to garments including pants and bib overalls. However, in my view, it is how the word be understood today that matters and in my opinion "overalls" would be understood as referring to "trousers with a bib and shoulder straps". As the use shown with "overalls" namely trousers with a bib and shoulder straps is only with "children's (i.e. boys') overalls", I conclude that only the wares "children's overalls especially overalls of the patch pocket type" are to be maintained on the registration.
Concerning the reference to "similar garments" in the statement of wares, I am of the view that the term "similar garments" is not clear and as I am not prepared to accept that "jeans" for which use has been shown would be covered by such term, I conclude that the phrase "similar garments especially garments" appearing in the statement of wares ought to be deleted.
[5] Further evidence, as permitted by section 56(5) of the Act, was filed in this appeal. It took the form of an affidavit of Lynn Downey, a historian employed by the Applicant. Her job is to conduct historical research, obtain vintage clothing and gather, arrange and preserve historical data relating to the Applicant. She has a Master's Degree in Library and Information Studies, is a past president of the Society of California Archivists and has written and lectured on historical matters including that related to the Applicant's clothing products. I accept her evidence as expert evidence in the area of clothing history and language relating thereto.
[6] The Downey evidence establishes in summary that:
1. In the late 19th century, the word "overalls" was generally used to refer to clothing worn over other clothing or more generally to protective work clothing.
2. As time went on, people commenced wearing "waist overalls" as everyday apparel, as opposed to only as work wear. As of the 1920s, when consumers asked for "overalls" they would be provided with a pair of what would now be referred to as jeans.
3. Generally, until about 1960, the Applicant used the traditional term "overalls" or "waist overalls" as "jeans".
4. By the late 1950s, some customers, primarily teenagers, began to refer to "waist overalls" as "jeans".
5. It was not until approximately 1960 that the Applicant's catalogue and advertising materials began to use the term "jeans".
[7] The requesting party, did not file any evidence in this Court or below nor, did it participate in this appeal. Neither did the Registrar of Trade-marks.
[8] The new evidence of Downey, not before the Hearing Officer, is material and requires that I consider the matter de novo.
[9] Put briefly, the issue is what to do when the commonly accepted meaning of a word used in the definition of wares set out in the registration of a trade-mark has changed from the time of its registration to the time when use of the trade-mark is challenged.
[10] This issue is almost unique to Canada. Most other countries have adopted a system whereby trade-marks are registered for wares in accordance with a national or international classification, thus in the international classification established by the Nice Agreement to which many countries adhere, the trade-mark could simply be registered for wares in Class 25 which comprises "clothing, footwear, headgear". These classifications are themselves periodically updated.
[11] Canada, however, has not acceded to the Nice Agreement and remains a country where wares and services must be specifically set out in the registration. Over the years certain practices have developed, whereby the Trade-marks Office will accept certain general terms so as to broadly describe a class of goods. This practice, however is not followed by all, and, in the case of an older registration, such as the one at issue, descriptions in accordance with older accepted practices remain.
[12] A sense of the current practice in Canada can be gained from the User Guide in the current Wares and Services Manual used by the Canadian Trade-marks Office. Sections 1.2 and 1.2.1 state:
1.2 Wares
Wares are listed in alphabetical order and an explanatory legend appears at the top of the first page of each letter. Wares shown in bold are acceptable without further specification. The wares shown in italics are not acceptable without further specification. However, a description of wares listed as unacceptable in the Manual, but that can be understood as being sufficiently specific when read in the context of the entire statement of wares/services, may be acceptable (see section 1.2.3).
1.2.1 Acceptable Wares Listed in Bold
Where a general category of wares is listed in bold, the individual wares, included in that category are usually not listed in the Manual. For example, the general category "casual clothing" is listed in the Manual as acceptable, therefore individual items in this category such as blouses, skirts and pants do not appear in the Manual. Similarly, "dairy products" is an acceptable general category, therefore individual wares in this category such as cheese, milk, butter and yogurt, do not appear in the Manual. In other words, even though items within an acceptable category of wares are not individually listed in the manual, each of the items is considered acceptable. As a general rule, wares that are more specifically described than an entry listed in bold, will be considered acceptable.
[13] It is possible, but impractical, to amend a registration so as to revise the statement of wares. To require an owner to review every registration for every description and update it to what may be current linguistic usage on some periodic basis is not a real world possibility. Thus we are left, as we are here, with a case by case review when registrations are forced to be reviewed, for instance by section 45 proceedings.
[14] Starting from basic principles stated by the Supreme Court of Canada in Kirkbi AG v. Ritvik Holdings Inc. (2005), 43 C.P.R. (4th) 385 at paragraphs 28 to 31, trade-mark rights arise in common law from usage and the goodwill that arises when the public associates a trade-mark with the wares as services where it is used. Registration of a trade-mark is a recognition of that good will arising out of such use, but it is more, it gives the exclusive right to such use throughout Canada, to an action for infringement of those rights and does away with the need, in such actions, to prove the existence of those rights beyond the provision of proof of registration.
[15] As Justice LeBel for the Court said at paragraph 30 "Nevertheless, marks remain marks, whether registered or unregistered, because their legal characteristics are the same".
[16] In this case the evidence shows that the Applicant used the trade-mark at issue since before 1990 on wares that we would now describe as "jeans" that is, trousers commencing at the waist, without a bib or shoulder straps, although the trade-mark was also used on the bib and shoulder strap version as well. These wares were appropriately described in 1950 as "overalls". Over the years use continued to the point where, more recently the use has been directed only to "jeans" that is, trousers commencing at the waist without a bib or shoulder straps. To refer to such trousers as "overalls" is, at best, archaic. Nonetheless the use of the trade-mark on the same wares has continued, it is the language that has changed.
[17] The case law consistently states that one is not to be astutely meticulous when dealing with language used in a statement of wares. For instance the age old debate as to whether a tomato is a fruit need not be resolved at a trade-mark level, use on tomatoes can sustain a registration for fruit (see Countryside Canners Co. Ltd. v. Registrar of Trade-marks (1981), 55 C.P.R. (2nd) 25 (FC)), even use of corn can sustain a registration including fruit (ConAgra Foods Inc. v. Fetherstonhaugh & Co. (2002), 23 C.P.R. (4th) 49 (FC)).
[18] A section 45 proceeding is intended to be a simple, expeditious proceeding to get rid of deadwood (Meredith & Finlayson v. Berg Equipment Co. (Canada) Ltd. (1998), 40 C.P.R. (3rd) 409 (FCA) per Hugessen J.A. for the Court at p.412). Such proceedings are not the place for engagement of what the Supreme Court of Canada said at paragraph 48 of Whirlpool Corp. v. Camco Inc, [2000] 2 S.C.R. 1067 in quoting from the House of Lords in Catnic Components Ltd. v. Hill & Smith Ltd, [1982] R.P.C. 183 "the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge."
[19] For the purpose of this proceeding arising from section 45 of the Act it is sufficient to say that use of trade-mark in respect of "overalls" has been established.
[20] Therefore the appeal will be allowed and the statement of wares in respect of Registration No. UCA 44368 will read:
"Clothing, namely, men's, women's and children's overalls especially overalls of the patch pocket type"
[21] In accordance with the usual practice, no costs will be awarded.
JUDGMENT
UPON THIS APPEAL, brought by way of application from a decision of the Hearing Officer dated June 30, 2005, in respect of section 45 proceedings relating to Trade-mark Registration No. UCA 44368;
AND UPON reviewing the Records filed herein and hearing counsel for the Applicant, no one appearing for either Respondent;
AND FOR the Reasons delivered herewith;
THIS COURT ADJUDGESthat:
1. The appeal is allowed;
2. The statement of wares in respect of Registration UCA 44368 shall be:
"Clothing, namely, men's, women's and children's overalls especially the patch pocket type."
3. There is no order as to costs.
"Roger T. Hughes"
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1491-05
STYLE OF CAUSE: LEVI STRAUSS & CO.
Applicant
And
THE REGISTRAR OF TRADE-MARKS and AIRD AND BERLIS LLP
Respondents
PLACE OF HEARING: Toronto, Ontario
REASONS FOR JUDGMENT
APPEARANCES:
| Brian Isaac
|
|
| No appearance |
SOLICITORS OF RECORD:
| Smart and Biggar Toronto, Ontario |
|
|
Aird and Berlis LLP Toronto, Ontario
John H. Sims, Q.C. Toronto |
FOR THE RESPONDENT (Aird and Berlis LLP)
FOR THE RESPONDENT (The Registrar of Trade-Marks) |