Home Juice Company et al. v. Orange Maison Limitée

SUPREME COURT OF CANADA

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The judgment of Court was delivered by PIGEON J.–

Since 1954 respondent has been selling orange juice in the Province of Quebec under the trade mark ORANGE MAISON and, since December 9, 1960, this trade mark has been registered at the Trade Marks Office. After objecting to an application for registration of the trade mark HOME JUICE filed by appellant Home Juice Company, respondent brought an action against the other two appellants claiming infringement of its own trade mark. Appellants then moved in the Exchequer Court to strike out the registration of respondent’s trade mark on the ground that it is clearly descriptive in the French language of the character or quality of the wares in association with which it is used.

By his judgment of September 5, 1967, Noël J. dismissed the motion, adding that even if he had come to a different conclusion, he would have held, nevertheless, that, at the date of registration, the trade mark had become distinctive, within the meaning of subs. 2 of s. 18 of the Act and, consequently, that the registration should be considered valid, but, in accordance with subs. 2 of s. 31, restricted to the wares and territorial area of such use, that is, in the premises: orange juice in the Province of Quebec. At the hearing, appellants declared that they did not challenge the correctness of this subsidiary conclusion and consequently the only issue on this appeal is the principal question.

In this Court, as in the Exchequer Court, the appellants in support of their contention as to the meaning of ORANGE MAISON relied especially on two dictionaries published in France in 1959: the Petit Larousse and the Robert. In both, the definition of the word “maison” used as an adjective is given as: [TRANSLATION] “that which has been made at home” and also [TRANSLATION] “of good quality”.

Respondent answered that this meaning is not found in dictionaries published in Canada, namely, the Bélisle and the Larousse Canadien Complet both published in 1954. In my view, this argument is not valid. Positive evidence drawn from the works of lexicographers who give a certain meaning is in no way destroyed by the fact that others do not report it. A work of this kind is never absolutely complete and negative evidence is always in itself weaker than positive evidence.

Respondent has contended that the current meaning in France is not to be considered, 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 the meaning in question was current in Canada at the date of registration, no account should be taken of a recent meaning found in France only. This contention would have serious consequences if it was accepted. One result would be that a shrewd trader could monopolize a new French expression by registering it as a trade mark as soon as it started being used in France or in another French-speaking country and 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 refers to a description “in the English or French languages”. Each of these two languages is international. When they are spoken of in common parlance they are considered in their entirety and not as including only the vocabulary in current use in this country, a vocabulary that is extremely difficult to define especially in these days when communication media are no longer confined within national boundaries. On this point, I should like to quote what Evershed J. said concerning the word “Oomph” in a case in which he held that “Oomphies” could not be considered as descriptive of the character or quality of shoes (In the Matter of an Application by La Marquise Footwear, Inc., [1968] 1 Ex.C.R. 313, 53 C.P.R. 71, 36 Fox Pat. C. 179:

I should perhaps add this: much argument was addressed upon the footing that, after all, the word, in so far as it is in current use, however short and brutish a life it may have, is American slang rather than, as we would say, part of our own native tongue. That is a matter upon which one might have debate for hours—whether it is the fact that the English tongue as spoken in these islands and the English tongue as spoken in the United States or in Canada or in Australia or in other parts of the globe is or is not one and the same language. I do not propose to throw any light upon any possible answer to the question, save to say that, where, as here, the word is primarily employed in the film industry, and, as is well known, the products of the American film industry, are shown and seen by hundreds of thousands of people throughout the whole of the English-speaking world, I think that it would be an affectation to say that a word which has gained any currency as an American slang word ought to be treated in these islands, in the absence of any evidence one way or the other, as a foreign word.

The trial judge seems to have considered it of great importance that respondent’s trade mark includes only the two words “ORANGE MAISON” while its wares are orange juice, not oranges. He quoted the following words of Lord MacNaghten in the Solio case(1898), 15 R.P.C. 476 at 486:

… the word must be really an invented word; nothing short of invention will do. On the other hand, nothing more seems to be required. If it is … “new and freshly coined” (to adopt an old and familiar quotation), it seems to me that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods.

With respect, it must be emphasized that this was said of an invented word. Here, the trade mark is composed of two French words and this is not at all a case of a covert allusion but that of an explicit description indeed. The omission of the words “jus de” (juice) in no way prevents the word “ORANGE” from being descriptive of the character of the wares, because those words are clearly understood through the association with a liquid product. It must also be noted that respondent took care, in his application for registration, to disclaim any right to the exclusive use of the word “orange” by itself. It must therefore be said that the distinctive character of the trade mark is claimed exclusively for the combination “ORANGE MAISON”. But, as we have seen, the word “maison” thus placed clearly becomes an adjective descriptive of quality.

Therefore, when the meaning of the trademark is analyzed in respect of the goods to which it is affixed, the only possible conclusion is that the first word is an elliptical description of their character and the second an explicit description of of their quality.

In Kirstein Sons & Co, v. Cohen Bros., (1907), 39 S.C.R. 286, this Court held that the trade marks “Shur-on” and “Sta-zon” were descriptive of the frames of eye-glasses to which they were affixed and considered them as mere corruptions of descriptive words. If the corruption of a word of the language does not destroy its descriptive character, why should an ellipse do it? This is what appears to have been held in Channell Co. v. Rombough, [1924] S.C.R. 600, [1925] 1 D.L.R. 233, where Mignault J. speaking for the majority in this Court said (at p. 604):

… a common English word having reference to the character and quality of the goods cannot be an apt or an appropriate instrument for distinguishing the goods of one trader from those of another. And the mere prefixing of the letter “O” to such a word as cedar certainly does not make it so distinctive that registration gives to the appellants the right to complain of the use of it by another manufacturer to describe a polish whereof oil of cedar is one of the ingredients.

It having been held that the word “cedar” should be considered as descriptive of a product that included only a small quantity of cedar oil, a fortiori the word “orange” should be considered as descriptive of “orange juice”.

For these reasons, I would allow the appeal with costs, set aside the judgment of the Exchequer Court, allow appellants’ motion without costs and order that the registration made for respondent in the Register of trade marks under number 120,375, on December 9, 1960, be amended by restricting it to the territorial area of the Province of Quebec.

Appeal allowed with costs.

Solicitors for the appellants: Smart & Biggar, Ottawa.

Solicitors for the respondent: Gowling, MacTavish, Osborne & Henderson, Ottawa.

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