A recent unreported decision of the Federal Court raises some interesting issues concerning the protection of the title of a book.

The Facts

A dispute arose between the author of a religious text and the owners of the intellectual property rights relating to earlier religious texts.

The books in issue related to the Grail Movement (the "Movement"). The Stiftung Gralsbotschaft ("Stiftung") is a recognized charitable corporation whose mission it is to protect, promote and disseminate the works of Oskar Ernst Bernhardt and other works relating to the Movement. The Foundation of the Grail Movement – Canada is a not-for-profit corporation which serves the same purpose as Stiftung in Canada. Stiftung owned a registration for the mark IN THE LIGHT OF TRUTH for use in association with a literary work and publications as well as services relating to the public presentation of the literary work and lectures.

Yvon Drolet was originally a participant in the Movement but withdrew. He published his own version of the grail message in French in three volumes. One of the volumes bore a title which was the French translation of the words IN THE LIGHT OF TRUTH.

When Stiftung and the Foundation learned of Mr. Drolet’s activities, they took the position he was infringing their registered trade mark. In response, Mr. Drolet instituted proceedings under the Trade-marks Act (the "Act") to have the registration of the trade mark IN THE LIGHT OF TRUTH expunged. The defendants responded by initiating a counterclaim for infringement and passing off.

Expungement Proceedings

The grounds under which a trade mark may be expunged include the fact that it was not registrable at the date of its registration. The burden of proof in a proceeding seeking expungement is on the applicant. The registrant benefits from a presumption that its registration is valid, but this presumption has been characterized as weakly worded, adding little to the onus already resting in the usual way on the applicant.

Clearly Descriptive

The Act provides that a trade mark is not registrable if it is, whether depicted, written or sounded, clearly descriptive in the English or French language of the character or quality of the wares or services in association with which it is used. The underlying policy concerning the limitation is that traders should be prevented from monopolizing descriptive words to stop competitors from using those words to describe their products.

In order to determine whether a trade mark is either clearly descriptive or deceptively misdescriptive, a court considers the first impression of such a trade mark upon the ordinary user or such wares or services. It is not a appropriate to carefully or critically analyze the trade mark. The common meaning of words in their ordinary and popular sense must be determined, which may not be their etymological meaning.

The Trial Judge said that the mark had nothing in common with the types of marks that the Courts had previously found to be descriptive. The title was much less explicit and conveyed much less information than marks previously found to be clearly descriptive. The average consumer would likely see the title as a clear indication of the content of the work and there was no ambiguity in this regard. Finally, the trade mark did not have any generic qualities.

The Judge said that a title of a literary work is inherently descriptive, not because it conveys information about the content of the work but because it is the only way to identify the book in question. The title cannot be disassociated from the work itself. For example, a publishing house can only identify a book it publishes by its title. Reference was made to US decisions to support this approach.

The Judge referred to the fact that in the US, the owner of the title of a literary work is limited to bringing an action for the equivalent of passing off. In order to do so, the owner must prove that the title has acquired a secondary meaning and that the use of the title by someone else would likely create confusion.

As a result, the judge found that the registration of the title was not valid and expunged it.

The Copyright Act

The Judge also made reference to the Copyright Act since the works of Oskar Ernst Bernhardt had entered into the public domain as the copyright had expired. The Judge said that a trade mark owner could not indirectly broaden the scope of protection of the copyright in the book by registering a trade mark relating to the title.

Comments

It is clear that in Canada, the title of a work may be protected by the common law cause of action known as "passing off" or its statutory codification contained in the Act.

So long as a title is not clearly descriptive as set out in the Act, it should be registrable. The approach taken in the US cases does not seem helpful in deciding this issue under the Act. "Inherently descriptive" is not the same as "clearly descriptive."

Copyright protection is not generally available in Canada concerning the title of a work by itself. In addition, the Copyright Act provides that a work includes the title when the title is original and distinctive. As a result, obtaining a trade mark registration relating to a title does not appear to broaden the scope of copyright protection in the book.