McGILL LAW JOURNAL
[Vol. 15
Trade Mark Expungement under Canadian Law *
Philip Thomas Mitches *
A –
INTRODUCTION
It has been over a decade since the present Trade Mark Act’
was enacted. Since that time it has withstood most of the winds
of controversy and recommendations for change, 2 but not all., Never-
theless, it would be worthwhile to review certain of the provisions
of the Act for inconsistancies, especially those dealing with maintain-
ing valid registrations of trade maxks.
Some suggestions have been made for amendments. 4 It has been
pointed out by one advocate5 of change that trade mark applicants,
who base their applications for registration on foreign use, are
at a distinct advantage to the Canadian applicant. On the other
hand, it has been noted6 that Canada is bound to give foreign
This paper has been revised and updated since its original appearance in
(1968), 58 T.M. Rep. 521. 0 Philip Thomas Mitches, 1968, 1969.
** Mr. Mitches is of the Ontario Bar and has been a special guest lecturer in
Industrial and Intellectual Property at the Faculty of Law, University of
Western Ontario and is a partner in the law firm of Mitches and Mitches,
and Patent Agent firm of Mitches & Co., London, Ontario. He is entitled to
practise before the Canadian Patent Office and the Canadian Trade Mark
Office and in patent and trade mark matters before the United States Patent
Office.
11-2 Eliz. II, S.C. 1952-53, c. 49, proclaimed in force July 1, 1954.
2 House of Commons Report on Drug Costs and Prices, (Harley Report),
1.966-67, Royal Commission on Health Services, (Hall Commission), 1964;
Restrictive Trade Practices Commission concerning the Manufacture, Distribution
and Sale of Drugs, (Combines Report), 1,961.
3 Bill C-102 of the first Session of the 28th Parliament of Canada, 17 Eliz. II
19,68-69, provides among other things that one will not infringe the trade
mark of a registrant by importing into Canada pharmaceuticals which bear
that trade mark and which were made by a company which is, vis-h-vis the
registrant, a “related company”, pursuant to section 2(r) of the Trade Marks Act.
4 Maybee’s Centennial Project for the Patent and Trade Mark Institute,
April 1,967, Bulletin of the Patent and Trade Mark Institute of Canada; Robinson:
Counter-proposal, pp. 107-108, August 1967, Bulletin of the Patent and Trade
Mark Institute of Canada; Mr. Maybee’s letter to the Editor of The Bulletin
of the Patent and Trade Mark Institute of Canada, April 1968 issue, p. 173.
5 Mr. Maybee, loc. cit., supra, n. 4.
6 Mr. Robinson, loc. cit., supra, n. 4.
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
393
applicants the rights they now possess since this Nation is a signatory
to the International Conventions.7
Reflecting on the divergent views, justice to both might be
achieved if we were to direct our attention to what constitutes a
valid registration rather than to restrict ourselves to the more obtuse
consideration of who has the right to apply for registration of a
trade mark. In some instances, it might well be that he who has
the dominant right to apply for registration might be the pertinent
consideration. On the other hand, irrespective of who has the right
to apply, if the rights are improperly exercised, the right to ekclusive
use may vanish with the accruing susceptibility that the mark might
be expunged from the Register.
B – MODES OF CANCELLING OR ALTERING
TRADE MARK REGISTRATIONS SUMMARILY
1. Registrations prior to 1 July, 1954
(a) Section 43, Trade Marks Act, Notices –
re-define wares
Prior to July 1, 1954, The Unfair Competition Act” was in force.
Under that Act,9 “a concise description, expressed in such terms
as are ordinarily and commercially used by the applicant, of the
(was) commercially concerned”
wares with which the applicant
was required to accompany the application for registration of a
Trade Mark. Also required was “a concise description in like terms
of the specific wares in association with which the applicant has
used the mark.”
Under the present Trade Marks Act, “a statement in ordinary
commercial terms of the specific wares or services in association
with which the mark has been used or is proposed to be used”
is required. 10 Although these two Acts appear to le substantially
identical as to the extent which wares are to be defined, they are
of course different as to services since marks directed to services
were not registerable under The Unfair Competition Act.”
7 Convention of the Union of Paris made on March 20, 1893, and amendments,
particularly the London text of 1934, and the Lisbon text of 1958. Canada
has not acceded to the Lisbon text.
822-23 Geo. V, S.C. 1932, c. 38, assented May 13, 1932; also R.S.C. 1952, c. 274.
9 The Unfair Competition Act, loc. cit., Sec. 30(2),
10 Trade Marks Act, loc. cit., Sec. 29(a).
11 No provision was made in either the definition of trade mark, word mark
or design mark which would permit its use with services. In fact, each of
that
the definitions, see ss. 2(m) and
the marks distinguish “particular wares falling within a general category
respectively required
(3).
(n) and
(c)
McGILL LAW JOURNAL
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Prior to 1932, The Trade Mark and Design Act 12 was in force,
and Trade Marks were of two general classes, general trade marks
and specific trade marks. The former were in connection with the
sale of various articles in which the proprietor (dealt) with in
his trade, business, occupation or calling generally; 13 the latter were
to be used in connection with the sale of a class of merchandise
of a particular description. 14 The wares to which the marks were
to be applied were not further defined in the Act. It might be said
in summary, that the Trade Mark and Design Act required either
a generic description of the wares, if the wares, irrespective of what
they were, were to have applied to them a trade mark, or, a specific
description of the wares. The specific description of the wares would
be appropriate where a manufacturer wished to identify one of his
products by a trade mark more commonly called a product or
commodity mark, such as ASPIRIN 5 Accordingly, in order to bring
to whether
the
(b)
from other wares falling within the same category.” See also ss. 2(k),
to the same effect, wherein what is “similar” is defined to relate to wares
associated with trade marks, trade names, or distinguishing guises. No mention
is made of services. Another major distinction between the two Acts has been
exposed by Green, Young & Co. Ltd. v. Kimberly-Clark of Canada Ltd., (1969),
40 Fox P.C. 1.88, 57 C.P.R. 81 (Ex. Ct.) affirming (.1967), 35 Fox P.C. 84,
(1968), 52 C.P.R. 2f79. In that case the President noted, at p. 194, (1.969), 40
Fox P.C.’ (at p. 88, 57 C.P.R.), that:
two marks were
“The test being applied [in General Motors Corporation V. Bellows, [1949]
S.C.R. 678, 9 Fox P.C. 78, 10 C.P.R. 101, a case under The Unfair Competi-
‘similar’, was whether the
tion Act] as
two marks were marks ‘so resembling each other or so clearly suggesting
the idea conveyed by each other’ that their contemporaneous use in the
same area with wares of the same kind ‘would be likely to cause dealers
to infer that the same person assumed
in and/or users of such wares
responsibility for their character or quality…’ The test in s. 6(2) does
not limit a finding of confusion to cases where a resemblance between the
marks or the suggestion by the marks of the same idea results in persons
in the market being led to infer a common origin. The test requires a finding
of confusion whenever the contemporaneous use of the two marks would,
having regard to all the surrounding circumstances, lead to such a conclusion.
Care must therefore be exercised in applying the authorities under the provision
under consideration in the General Motors case to the application of s. 6(2).
12 Trade Mark and Design Act, 31 Viet., S.C. 1868, c. 55 consolidating the
various trade mark statutes of the several provinces of the Dominion of
Canada. The Act was amended by 3839 Vict., S.C. 1870, c. 35; re-enacted 42
Vict., S.C. 1879, c. 22; consolidated R.S.C. 1886, c. 63; amended, 54-55 Vic.,
S.C. 1891, c. 35; consolidated R.S.C. 1906, c. 71; R.S.C. 1927, c. 201; amended
18-19 George V, S.C. 1.928, c. 10; repealed by The Unfair Competition Act,
supra, note 8.
13 Trade Mark and Design Act, Sec. 4(a).
‘4 Trade Mark and Design Act, Sec. 4(b).
15 A registered trade mark of the Bayer Company # 29/6889; 182/40220.
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
395
previous registrations, which were made either under The Unfair
Competition Act, or The Trade Mark and Design Act, into accord
with the requirements of The Trade Marks Act, section 43 of the
Trade Marks Act permits the Registrar to issue a notice to a
registrant requiring him to provide a statement of particulars which
contain all the elements which an applicant for registration would
be required to provide if a registration were made under the present
Trade Marks.16 If the mark is not now used for certain wares for
which it was originally registered, then the Registrar may alter
the Register, and expunge from the Register those wares with which
the mark is no longer used. 17 On the other hand if no statement
is received from the registrant, the whole registration may be ex-
punged.18
It should be particularly noted that the Registrar has the
discretion to send out a Section 43 notice at any time; 19 on the
other hand, he is compelled to send out a notice if “any person”
pays the prescribed fee of $5.00.20 Reconsidering the requirement
to describe wares, it is interesting to note that the Office takes
the view that the present Trade Mark Rules21 require more precise
description of the wares with which the trade mark is used than
the description of the wares which was required to be made under
The Unfair Competition Act. 22 This view is tenuous, but prevails.
16 Trade Marks Act, Sec. 43.
“(1) The Registrar may at any time, and shall at bhe request of any person
who pays the prescribed fee, by notice in writing require the registered owner
of any trade mark that was on the register at the date on which this Act
comes into force, to furnish to him within three months from the date of the
the
notice the information that would be required on an application for
registration of such trade mark at the date of such notice.
in accordance with
the
(2) The Registrar may amend
the registration
information furnished to him under subsection (1).
(3) Where the information is not furnished, the Registrar shall by a further
notice fix a reasonable time after which if the information is not furnished,
he may expunge the registration of the trade mark.”
1iLoc. cit. Sec. 43(2).
‘5Loc. cit. Sec. 43(3).
19Loc. cit. Sec. 43(1).
(Section 23(2) of The Unfair Competition Act
was of identical wording except the time interval allowed was four months
from the date of the Registrar’s notice rather than the present three months.)
20 Ibid., also Schedule 1, Part 1, item 13 under Rule 13 of the Trade Mark
Rules, SOR/54-4172.
21 See forms 1 through 7 of Schedule II, Trade Mark Rules, supra, n. 20.
22 The Unfair Competition Act required “a concise description expressed in
such terms as are ordinarily and commercially used …
the wares.”
The present Act requires “a statement in ordinary commercial terms of the
in
specific wares”;
the rules under the present Act require a description
(on) …
MCGILL LAW JOURNAL
[Vol. 15
In ABBY CELLAR 23 the Registrar forwarded a section 43 notice
and after suitable interval of time, the registrant responded with a
statement that the mark, a word mark, “has been used since July
1, 1938, for alcoholic beverages,” which were the wares shown on
the Register. The registrar responded that he required to kmow
whether the alcoholic “beverages are distilled, brewed or fermented.”
The registrant advised that the wares were “distilled alcoholic
beverages” and the Register was amended accordingly.
(b) Word marks or design marks
Rules are established 24 by which marks, which were on the
Register on the coming into force of the present Act, 25 were classified
ordinary commercial terms of all the specific wares (services) with which
the mark is, or is to be, used. The Oxford Dictionary defines concise as true,
brief, and specific as characteristic of a thing or kind, definite. As can be
seen, these adjectives mean the same. Ons should not confuse the adjective
specific with the verb specify. The verb means state definitely in detail.
23 Unreported decision of the Registrar of Trade Marks, N.S. 35/9750 of
July 26, 1938, serial number 173,796 filed July 26, 1938. One wonders why
to
the Registrar did not make a further demand for greater particulars
define the distilled alcoholic beverages as whisky, rum, gin, etc.
24 Trade Marks Act, Sec. 26, reads as follows:
“(4) Trade marks on the register at the date of the coming into force of
the Unfair Competition Act, 1932, shall be treated as word marks or as design
marks as defined in that Act according to the following rules:
(a) any trade mark consisting only of words or numerals or both without
any indication or a special form or appearance shall be deemed to be
a word mark;
(b) any other trade mark consisting only of words or numerals or both shall
be deemed to be a word mark if at the date of its registration the words
or numerals or both would have been registerable independently of any
defined special form or appearance and shall also be deemed to be a
design mark for reading matter presenting the special form or appearance
defined;
(c) any trade mark including words or numerals or both in combination
with other features shall be deemed
(i)
to be a design mark having the features described in the application
therefor but without any meaning being attributed to the words or
numerals, and
to be a word mark if and so far as it would at the date of registration
form or
have been registerable
appearance and without being combined with any other feature; and
(d) any other trade mark shall be deemed to be a design mark having the
independently of any defined
(ii)
features described in the application therefor.
(5) Trade marks registered under The Unfair Competition Act, 1932, or
The Unfair Competition Act, Chapter 274 of the Revised Statutes of Canada,
1952, shall, in accordance with their registration, continue to be treated as
word marks or design marks as defined in that Act.”
25 July 1, 1954.
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
397
either as word marks, design marks, or what shall be called in this
paper “composite marks”, that is, maxks possessing word mark
features and design mark features.2 As we shall see, this statutory
distinction between design marks and word marks has in recent
years sometimes been overlooked.2 7
2. Registrations prior to July 1, 1954 and subsequent thereto
(a) Section 44, Trade Marks Act, Notice –
to determine extent of
use of the mark.
Firstly, we should observe that the Registrar is obliged to forward
a section 44 notice if requested, “unless he sees good reason to the
contrary”. 28 It appears that this phrase is interpreted as in the
26 The Unfair Competition Act, loc. cit., ss. 2(c) (v) ; 23(5) ; 27; 28; particularly
section 31 which required an applicant to classify his mark as a word mark
(5) classified all
or design mark. Note that the effect of section 23(1) and
trade marks which had been made under The Trade Mark and Design Act
as word marks or design marks according to the rules therein set down. These
rules are the same as those of section 26(5) of the Trade Marks Act, supra,
n. 24. Section 23(1) of The Unfair Competition Act made all trade marks
registered under The Trade Mark and Design Act part of the Register under
The Unfair Competition Act.
27 lnfra, p. 405.
28 Trade Marks Act, Sec. 44.
“(1) The Registrar may at any time and, at the written request made after
three years from the date of the regisration by any person who pays the
prescribed fee shall, unless he sees good reason to the contrary, give notice
to the registered owner requiring him to furnish within three months an
affidavit or statutory declaration showing with respect to each of the wares
or services specified in the registration whether the trade mark is in use in
Canada and, if not, the date when it was last so in use and the reason for
the absence of such use since such date.
(2) The Registrar shall not receive any evidence other than such affidavit
or statutory declaration, but may hear representations made by or on behalf
of the registered owner of the trade mark or on behalf of the person at whose
request the notice was given.
(3) Where, by reason of the evidence furnished to him or the failure
to
furnish the evidence, it appears to the Registrar that the trade mark, either
with respect to all of the wares or services specified in the registration or
with respect to any of such wares or services, is not in use in Canada and
that the absence of use has not been due to special circumstances that excuse
such absence of use, the registration of such trade mark is liable to be
expunged or amended accordingly.
(4) When the Registrar reaches a decision as to whether or not the registration
of the trade mark ought to be expunged or amended he shall give notice of his
decision with the reasons therefor to the registered owner of the trade mark
and to the person at whose request the notice was given.
(5) The Registrar shall act in accordance with his decision if no appeal
therefrom is taken within the time limited by this Act or, if an appeal is
taken, shall act in accordance with the final judgment given in such appeal.”
McGILL LAW JOURNAL
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Patent Act,29 and virtually every request is followed by the dispatch
of a notice. This is exemplified in re: SLEEPING BEAUTY.30 The
Registrar, having received an affidavit pursuant to a section 44
notice, forwarded a second notice pursuant to a request by another,
some 19 months later.
The facts in re: SLEEPING BEAUTY, may be summarized as
follows: A section 44 notice was forwarded August 24, 1964 and the
exclusive sales agent for the registrant advised, by affidavit, that the
mark was in use in Canada for some of the wares against which it
was registered but not in use for others. The deponent contemplated
that the mark would be used with all the wares registered as soon as
the movie “Sleeping Beauty” was re-released sometime in 1965 or
1966. In March 1966, the Registrar considered the explanation satis-
factory and decided not to expunge the certification mark. Some 19
months later, on November 15, 1966, the Registrar forwarded a
second section 44 notice pursuant to the request by a party different
from that who had requested the first section 44 notice. The reply
indicated that the mark was in use only on a small list of wares
which were not quite identical with the wares in use in late 1964;
that the re-release of the motion picture “Sleeping Beauty” was
re-scheduled to be re-released in the fall of 1967 or 1968. The Regis-
trar expunged from the Register those wares which were not in
use at the date of the affidavit file pursuant to the notice of
November 15, 1966.
Two things should be carefully noted of this decision. Firstly,
the Registrar did not strike out those wares which were not in use
29 Section 43 of the Patent Act, R.S.C. 1952, c. 203, as amended provides that the
Commissioner of Patents shall grant compulsory licenses to manufacture food
or medicine unless he sees good reason to the contrary. Every applicant which
has requested compulsory license has been granted one except in but two cases.
A license was refused in the Borden Co. v. Salada – Sheriff – Horsey, (1960),
34 C.P.R. 238, 20 Fox P.C. 169 (C. of P.) because the grant would not increase
the consumption of potatoes generally.
(The patent was for a method of
manufacturing instant mash potatoe products and to the product itself.) In
the other case, Gilbert Surgical Supply Company Limited v. Park Davis and
Company, (1958), 30 C.P.R. 21, 18 Fox P.C. 62, the Commissioner of Patents
refused to grant a license in respect of a drug product where the applicant
was not prepared to manufacture the medicine in Canada. To do otherwise
would be to grant a license to import and this would be contrary
to the
compulsory licensing provisions of section 67 and subsequent of the Patent Act
which permit a compulsory license to be granted where the Canadian demand
is supplied solely by importation.
32oRegistration # 174;811 of September 22, 1959, S.N. 249,897 of March 13,
1059, being a registration in favour of Walt Disney Productions for the
certification mark registered against a long list of wares.
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
399
at the time the affidavit was filed in response to the first notice,
because as the Registrar said “the absence of use on the remainder
of wares specified in the registration is due to special circumstances
that excuse such absence of use.” The deponent, in response to
the first notice, described the circumstances of non-use and implied 31
that re-release of the motion picture would have the effect of
revitalizing promotional campaigns and the use of the certification
mark. However, because the revitalization of the mark had not
taken place by 1966, as originally undertaken, the Registrar expunged
those wares from the Register which were not in use at the time
the affidavit was filed pursuant to the second notice. Secondly, it
should be noted, that the affidavits filed and accepted were those
of the exclusive sales agent for the registrant. Initially, when the
first affidavit was filed in response to the first notice, the Registrar
objected that the person other than the registrant was the deponent
of the affidavit. The attorney for the registrant noted32 that the
Act does not mention who may depose the information required under
the section. As the attorney said, the exclusive Canadian sales agent
was in a better position to know the extent of the use of the certifi-
cation mark in Canada than the registrant, which was an American
Company.
“Special circumstances excusing non-use” 33 justify the Regis-
trar in exercising his discretion not to expunge a registration.
This discretion was exercised, as we have seen in re: SLEEPING
BEAUTY after the first notice was sent but not after the second
notice.3 4 Special circumstances appear to include instances where
the supply of the product to which the trade mark applies is
31 His affidavit reads in part as follows:
“That the motion picture Sleeping Beauty was released by Walt Disney
Productions in 1959. The release of this picture was accompanied and followed
by an intensive promotional campaign during which licensees sold in Canada
in association with the certification mark SLEEPING BEAUTY wares for
which the certification mark is registered. This campaign was at its peak at
the time of release of the motion picture and immediately thereafter and is
still in existence but on a lesser scale, the primary reason for this being that
since 1959 other motion pictures have been accompanied by intensive promotional
campaigns involving similar wares and different certification marks. In view
of the limited Canadian market quite naturally most emphasis has been given
to campaigns associated with the most recent motion picture releases.”
“I am aware that the motion picture “Sleeping Beauty” is scheduled for
re-release in 1968 and in the fall of 1967 a new promotional campaign will be
undertaken to publicize the re-release of this film.” (Specimens were attached.)
32 Supra, n. 31.
33 Trade Marks Act, loc. cit., sec. 44(1) and (3), supra, n. 28.
34 Supra, n. 30.
McGILL LAW JOURNAL
[Vol. 15
beyond the registrant’s control and unobtainable. Thus in re: B. Q.
-6x, 35 the registrant, Drakes Agency Limited, in response
to a
section 44 notice dispatched October 11, 1963, filed an affidavit
that the mark was last used in Canada on the 5th of October 1963
by reason of the fact that supplies of the pharmaceutical were
unavailable from the sole manufacturer of the product. Through
further correspondence with the Registrar, the registrant advised
that it intended to use the mark and that use was contemplated
within 90 days thereof; namely, before October 21, 1964. On
January 8, 1965, the Registrar sent on his own initiative, a
further request to the Registrant asking whether the mark had
been put to use. (The originator of the request for the section
44 notice objected to the delay of the Registrar in expunging the
mark for non-use saying that the Registrar was not entitled,
under s. 44, to consider future use of an unused trade mark.
The Registrar rejected his contention).3 6 The Registrar took cog-
nizance of the statutory declaration subsequently filed indicating
that the registrant had no intention to abandon the mark; that
use of the trade mark had taken place in Canada up to six days
before the dispatch of the section 44 notice; namely, up to October
5, 1963, and also during the interval between November 8, 1963
and September 3, 1964, when supplies were available from the
American supplier; that the supplier had stopped manufacture
of the pharmaceutical product but an arrangement with another
supplier was being made as soon as the clearances were obtained
from the Department of Health and Welfare; Food and Drug
Division. The mark was not expunged.37
Similarly in re: JAMAICA DIAMOND,38 the trade mark was not
used at the time of the section 44 notice, but this was due to un-
availability of supply. Evidence was submitted that abandonment
was not intended and that new supplies would become available
35 Registration Number 119,632 of September 27, 1960, wherein the application
was filed August 21, 1959, as Serial Number 252,517, based on use since
December 31, 1054.
36 The Registrar said: “It
is not agreed that section 44 does not permit the
owner of a registration to rely on any future use of its trade mark. Evidence
has been furnished that the trade mark is now used. That evidence
is not
complete and an extension of time has been granted until April 10, 1965, within
which a satisfactory response”.
37 An appeal was filed in the Exchequer Court of Canada, June 2, 1965. The
action is still pending.
38An unreported decision of the Registrar concerning registration #113,012
of January 23, 1,959, filed January 28, 1958, as serial number 244,772, for
JAMAICA RUM in association with Rum.
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
401
shortly. The Registrar accepted the excuse but stated that he would
issue a second section 44 notice in six months time. A notice was
duly forwarded and evidence, amn affidavit and exhibits illustrating
use of the mark, were subsequently furnished showing use of
the mark with the wares. The registrar did not amend or expunge
the mark from the Register.
Similarly, special circumstances excusing non-use appear to lie
if the registrant is unable to do business by virtue of being bank-
rupt 39 or if the use is performed by a licensee even though he
is not a registered user.40 In re: PHANTOM,41 the registrant became
bankrupt prior to the dispatch of a section 44 notice. At the date
39 Registration number 55/14,650 of September 9, 1940, for the word mark
PHANTOM for hosiery amended in 1952 to include slips, half slips and night-
gowns, brassieres, panties and kindered lingerie products, (originally filed Sep-
tember 1050, serial number 178,197). The Registrar said in his decision to sustain
the registration that: “I am still of the opinion that the registration should not
be amended or expunged. I agree with your comment”
(the comment of the
originator of the section 44 notice objecting to the tentative decision not to
expunge), “that the trade mark was not in use by the registered owner at the
date of the section 44 notice but feel that the absence of use is due to special
circumstances that excuse such absence of use, namely the registered owner
went into receivership”.
Further the Registrar said: “As to the allegation that the use by Susan Hosiery
Limited is an improper use which in law operates to invalidate the registration,
I am of the opinion that the Registrar has not jurisdiction to expunge a trade
mark in such circumstance”.
40Registration completed on May 12, 1059, filed May 9, 1058, serial number
247.261 for the mark BEER NUTS as applied to shelled and salted peanuts. The
evidence filed by the registrant indicated that one Bruster Nut Shops was
exclusive Canadian licensee of the mark and the terms of the license were
generally spelled out. The Registrar rejected the suggestion that the mark was
not validly being used, as use was by an exclusive licensee, even though not
a registered user. The trade mark was not expunged because as the Registrar
said: “In my opinion the provisions of section 44 of the Trade Marks Act
does not impower the Registrar to govern the validity or the gravity of the use of
the mark. Section 44 may provide that the Registered owner must furnish
evidence whether the mark is in use in Canada. Use in relation to a trade
mark is defined under section 2(v) as meaning any use that by section 4 is
deemed to be use in association with wares or services. Under section 4, a trade
mark is deemed to be used in association with wares if, at the time of the
transfer of the property of the possession of the wares in the normal course
of trade, it is marked on the wares themselves”. See also supra, n. 39.
In this particular case, satisfactory evidence was produced that the trade mark
BEER NUTS is in use in Canada within the meaning of section 2(v) and
section 4 of the Trade Mark Act in association with the wares specified in the
registration –
the registration should not be expunged. Bruster Nut Shops
were later registered as registered users after the Registrar had rendered his
decision not to expunge the mark.
41Supra, n. 39.
McGILL LAW JOURNAL
[Vol. 15
of the notice, the registrant was not using the mark, but the Trustee
in Bankruptcy was making arrangements to grant an exclusive
license to use the mark to one Susan Hosiery for five years with
the rights to renew. Susan Hosiery filed, by affidavit, evidence
that it was not a registered user at that time but that it had acquired
the exclusive rights to use the mark and that a registered user
application would be filed shortly; further, that PHANTOM was used
by the registrant up to two months after bankruptcy and that Susan
Hosiery had been using the mark, under license since.
“Circumstances not excusing non-use” of a trade mark include
the argument that tariff barriers prohibit economic sale of imported
wares in Canada provided no wares have in fact been sold in Canada,
or that the market is insufficient to warrant sale in Canada.42
“The evidence of use must be by way of affidavit or statutory
declaration and should include exhibits which show with respect to
4 2 Registration 114,928 of August 12, 1959, for GOLDEN FRY based on use
since 1948, was expunged June 2, 1965, because the excuse that resumption of
the use of the mark in Canada was delayed owing to a tariff barrier imposed
by the Canadian Government was not a satisfactory reason. Similarly, Registration
110/25,953 of January 2, 1920, for the word ALLIGATOR filed January 2, 1920,
as serial number 98,981 was expunged May 17. 1,965, because the Registrar did
not consider the excuse “that the mark had not been used in Canada since 1061
as a result of unfavourable tariff structure and rates of exchange was satis-
factory”.
Registration number 120,435 of December 13, 1960, filed April 10, 1059 as
serial number 250,365 for mark B- P for surgical blades, knives, dental equip-
ment, etc. The affidavit filed with supporting exhibits on September 8, 1967
indicated that the mark was in use at the date of the section 44 notice and
afterwards on some wares but not on X-ray attachments, surgical scissors, pipe
ends and hemalogical sets because of the lack of demand. These wares were
expunged from the registration. In Kurb Side, infra, n. 46, however, the Regis-
trar said:
“I have carefully considered the evidence submitted and the representations
made and I have come to the conclusion that while the mark KURB SIDE was
not in use in Canada on July 22, 1965, the date the notice under section 44 of
the Trade Marks Act was sent, the absence of use was due to the high Canadian
tariff on aluminium truck bodies (the wares in association with which the trade
mark KURB SIDE is registered). I am therefore satisfied that the absence
of use of the mark was due to special circumstances that excuse such absence
of use within the meaning of subparagraph 3 of section 44 of the Trade Marks
Act. Furthermore it appears that the mark was used October 1965, that arrange-
ments were concluded with General Motors Products of Canada Ltd. to import
the truck bodies manufactured by J.B.E. Olson Corporation (the registrant)
under the trade name KURB SIDE and that a Canadian subsidiary of J.B.E.
Olson Corporation was incorporated in 1966. As a matter of fact, some seventy-
five truck bodies were sold in Canada during the year 1967.
In the circumstances, my decision is that the registration of the trade mark
KURB SIDE ought not to be amended or expunged.”
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403
each of the wares and services specified in the registration whether
43 In re: JESCO, 44 statements
the Mark is in use in Canada.. .
by the agent of record about use of the mark in Canada which
were not in affidavit form, were not considered, while in Don the
Beachcomber,45 non-use of a mark in Canada related to services
not performed in Canada was no excuse even though the mark
was known in Canada.
In re: KURB SIDE,46 the same question of showing use was in
issue. The Registrar stated, after filing of the affidavit by the
registrant, that:
An affidavit stating that the mark was in use in Canada does not in my
opinion, meet the requirements of the Act. The affidavit should recite the
circumstances of use or non-use of the trade mark in Canada at the date
of the notice and, if the mark is in use, a specimen exhibiting the trade
mark as used should be submitted with the affidavit.
Invoices and actual labels, containers or displays showing the trade mark
as used could be acceptable.
A subsequent affidavit was filed setting out the facts of use
and non-use and the reasons for non-use at the date of the Section
43 The relevant parts of a standard form of section 44 notice read: “Pursuant
to section 44 of the Trade Marks Act, which is reproduced on the attached
sheet, the Registrar hereby requires the owner of the trade mark referred to
above to furnish within three months from this date an affidavit or statutory
declaration in duplicate showing, with respect to each of the wares or services
specified in the registration, whether the trade mark is in use in Canada at
the date of this notice and, if not, the date when it was last so in use, and
the reason for the absence of such use since such date. If the trade mark is in
use, a specimen exhibiting the trade mark as used must be furnished”
44 An unreported decision of the Registrar expunging Registration number
104,62/7 of October 1,
1956, filed June 17, 1,955, as S.N. 230,978 relating to
the mark JESCO for surgical instruments. Two affidavits were filed and the
Registrar dismissed both saying: “The first affidavit does not satisfy the require-
ments of section 44 of the Trade Marks Act and it does not establish that the
mark was or is used in Canada in association with each of the wares specified
in the registration. The second affidavit is not acceptable as it is based on
information obtained from a distributor in the U.S.”.
It should be noted that the first affidavit did not set out facts of use but
made statements of use and that shipments of wares bearing the mark were
being shipped from Germany. A single exhibit was filed of one class of wares
bearing the trade mark. The refusal to accept the affidavit of the U.S. distributor
should be compared with In re: Sleeping Beauty where the affidavit of the
exclusive Canadian sales agent was accepted when it was explained he was
better qualified to depose than the Registrant.
45 Porter v. Don the Beachcomber, (1.966), 33 Fox P.C. 79, (Ex. Ct.),
(1067),
48 C.P.R. 280.
46 Registration # 127,017 of June 26, 1,962, filed October 3, 1959, as S.N. 247,655
as to mark KURB SIDE as applied to aluminum truck bodies. The Registrar’s
comments appear consistent with court decisions; see infra, pp. 411-412.
McGILL LAW JOURNAL
[Vol. 15
44 notice. At the date of filing of the affidavit, December 1967,
the trade mark had been applied to some 75 truck bodies sold in
Canada during that calander year. The decision of the Registrar
is still pending.
The affidavit must provide “evidence of use as of the date of
the notice or of the special circumstances justifying excuse for
non-use.” 47 Further “exhibits must be filed.” 48 These demands by
the Registrar require review. As we have seen, the words of the
section 44 notice follow closely the terminology of section 44(1).
The notice 49 uses the phrase “at the date of this notice” and “from
this date” whereas Section 44(1) uses the phrase “whether the
trade mark is in use in Canada.” Considering, that the words
“in use” in the subsection are in the present tense, rather than
the past and that the terminal part of the subsection provides
for an explanation for non-use, if the mark is not being used,
it would appear that the Registrar is justified in his interpretation
that use must be shown at the date of the notice.
It is recognized that there may be a valid argument to sustain a
view opposite to that of the Registrax; namely, that the Registrar
has no authority to demand evidence of use at the date of the notice
(3) of section 44 is not so restricted. Further,
since subsection
a recent judicial review of the provision of Section 44 made no
mention of the fact that use had to be shown at the date of
the notice. The court did take cognizance of evidence showing
plans for rendering services in Canada in the future in association
with the mark.50
As to the requirement for exhibits, the court has taken cog-
nizance of them.51 The Registrar 52 demands exhibits, presumably
(1) of Section 44 requires an affidavit or
because subsection
statutory declaration showing use in Canada. But showing is not
limited to the presentation of exhibits for the word showing includes
exposing to view, explaining, proving.53 Obviously, in cases of design
marks or marks having deisgn features, exhibits of the mark as
used are the best evidence for corroborating the affidavit evidence.
Exhibits are also probably the best evidence for determining whether
47 Supra, n. 44; also re: KURB SIDE, to the same effect.
48 Ibid.
4 9 Supra, n. 43.
5OKURB SIDE, supra, n. 46.
5UPorter v. Don the Beachcomber, per Thurlow, J., 33 Fox P.C. at p. 86.
52 Re: KURB SIDE; re: JAMAICA RUM; re: JESCO, op. cit.
5OThe Shorter Oxford Dictionary.
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
405
a registered design mark is the actual design mark in use.54 In the
case of word marks exhibits of the mark as used are not as
relevant and should not be mandatory. Any other evidence, such as
an affidavit from an uninterested third party, is just as satisfactory
for corroborating purposes in explaining the use of the mark. It
should be recalled that third party affidavits are accepted as evidence
of use of a mark when secondary meaning of the mark is being
established under Section 12(2).
Erroneously, no distinction is made by the Registrar between
use of a word mark and the use of a design mark or of a composite
mark. 5 Thus in Swift’s FLEUR DE LYS 56 trade mark, the design
mark features as appear on the Register were abandoned but the
mark was not expunged. A section 44 notice was requested on the
15th day of December 1964. After authorized extensions, an affi-
davit was filed stating that SWIFT CANADIAN COMPANY
LIMITED “is using the trade mark Fleur De Lys and design in
Canada in association with lard, shortening, cooking oils and mar-
garine and that a specimen showing the trade mark as used by Swift
Canadian Company Limited in association with lard is hereto
attached.” The exhibits also indicated that only the words FLEUR
DE LYS were used, and only on a small number of wares 57 against
which the original registration stood. The Register indicates a reg-
istration for the words FLEUR DE LYS along with the conventional
registration of a Fleur de Lys.
The Registrar expunged, from the Register, those wares for
which no evidence of use of the design mark was before him. s He
allowed the registration to stand, unaltered in other respects, against
those wares for which a use has been shown,59 even though the
mark used was not identical or even similar with that mark appearing
on the Register. 6 The fact that the Registrar did not take into
64 See re: FLEUR DE LYS, infra, n. 56.
55 Supra, p. 397.
56 An unreported decision of the Registrar of Trade Marks relating to a mark
FLEUR DE LYS and the conventional representation of the Fleur de Lys
represented as 163/36,585 on October 31, 1024 in favour of Swift Canadian
Company Limited bearing serial number 120,919 and filed October 8, 1,924 for
the wares of ham, bacon, lard, shortening, cooking oil, sausage, butter, cheese,
eggs, poultry, mince meat, canned fish. Under the rules for word marks and
design marks, the mark as originally registered is a design mark.
5 7 Ham, bacon, lard, shortening, cooking oil and sausages.
5 Struck from the register were the following wares, namely, butter, eggs,
cheese, poultry, mince meat, and canned fish.
59 Supra, n. 57.
00 The mark registered was the word FLEUR DE LYS along with the con-
ventional representations of a Fleur de Lys. The mark used was but the words
McGILL LAW JOURNAL
[Vol. 15
account that the form of use of the registered mark had materially
changed from that in which the registration stood would appear to
be an unwarranted extension of the THERMOS principle.01 (The
THERMOS principle was strictly confined to a determination by the
Registrar, -during opposition proceedings, of whether two marks
were “confusing”).
3. Appeals form Decisions of the Registrar
Although it is clear that the Exchequer Court has exclusive
jurisdication to expunge a registered trade mark because it has
become generic or non-distinctive or even abandoned ;02 this ground
should not be confused with the Registrar’s two fold responsibilities
under sections 43(3) and 44(5),3 and those during opposition
proceedings. The Registrar’s obligation under section 43 and 44
Fleur de Lys. The Register indicates that only one trade mark existed on the
register for the words FLEUR DE LYS at the time of the application by Swift
in 1924 and that was for use with Perfumes, registration #229/4628. Several
composite marks were on the register in 1.924 for the words FLEUR DE LYS
along with a diagramatic representation thereof; namely, #4/6717
for flour;
24/5642 for confectionary; 26/6128 for tobacco; 35/9751 for whisky; and others;
but none for any of the wares for which Swift originally obtained registration.
It would therefore appear the mark is really a composite mark rather than a
design mark.
61 Canadian Thermos Products Ltd. v. Crown Machine and Toll Company,
(1963), 24 Fox P.C. 15 (Reg. of T M.). The opponent Canadian Thermos Products
was registered owner of the mark THERMOS for containers and vacuum bottles,
and opposed Crown Machine’s application for registration of the mark THERMOS
for use with plastic cups, cartons, containers since June 24, 1,948. The applicant
provided evidence which indicated that Thermos had become generic for vacuum
bottles. The Registrar refused to consider evidence disputing the validity of the
opponent’s mark. McCaffery, the former Registrar, said: “I feel that I have no
jurisdiction to consider the matter of the validity of the opponent’s registration”.
Ibid., at p. 1-6.
It should be noted that by s. 2(o) a “registered trade mark” means a trade
mark that is on the register; further by s. 12(1) (d), a mark is not registerable
if it is confusing with a registered trade mark, but see sections 24, 25, and 15.
The Act does not state that registered trade marks, which are invalid, must not
be cited in opposition proceedings. All registered marks, valid and invalid are
citable not only in opposition proceedings but in applications for registration.
See also sections 16, 17, 18, 21, 29, 30, 33, 43, and 44.
02The combined effect of sections 56 and 18(b). Infra, p. 17.
63 Supra, n. 23; section 44(5) uses the terminology “the Registrar shall act
in accordance with his decision … or if an appeal is taken, shall act in accordance
with the final judgment given”. There is absolutely no discretion. Section 43(2)
is different; the Registrar has discretion for he “may amend the registration” if
information of use is furnished, or lie “may expunge” the registration “of the
trade mark.., when the infirmation (which need not be by affidavit) is not
furnished”.
No. 3] TRADE MARK EXPUNGEMENT UNDER OANADIAN LAW
407
determine if special circumstances excuse the non-use. In instances
where the mark existed in the Register prior to July 1, 1954, the
Registrar must also determine whether the mark is a word mark or
a design mark or a composite mark having word mark features as well
as design mark features, according to the statutory rules.6 4 In order
for a composite mark to remain on the Register, appropriate evidence
should have to be submitted to show use of both the word mark
and design mark features. In
instances where the design mark
features are no longer used the mark should properly remain validly
on the Register only as a word mark. The Register should be
amended accordingly. On the other hand if the composite mark has
also lost its word mark features it should not validly stand even
as a word mark, and it must be expunged completely from the
Register. This is consistant with the holdings of the Court in the
Silhouette case 5 and comments of the court in GOLDEN CIRCLET.66
Now once a decision of the Registrar is rendered, his authority
becomes defunct and two avenues are available to the applicant.
In one, an appeal to the Exchequer Court is in order, pursuant to
the provisions of section 55 or an original application may be made
to the Exchequer Court pursuant to section 56(2) of the Act.6 7
6 4Supra, n. 24.
O5 Silhouette Products Ltd. v. Prodon Industries Ltd., [1965] 2 Ex. C.R. 500,
(1965), 30 Fox P.C. 129, (1966), 47 C.P.R. 1.3. One of the grounds of invalidity
of the plaintiff’s registered design mark was that the design which was registered
was not the design which it used on its products although they were both quite
similar. The ground appears to be synonymous with that of abandonment. On
appeal (1061), 51 C.P.R. 804, the Supreme Court of Canada affirmed the decision
expressing no opinion on whether the registered trade mark was invalid because
it was not distinctive at the time the proceedings had commenced or because it
had become abandoned.
6 Benson & Hedges (Canada) Limited V. St. Regis Tobacco Corporation and
the Registrar of Trade Marks, (1968), 37 Fox P.C. 3, Jackett, P., at pp. 85
and 86 said: “I should mention a contention of the respondent that the appellant
could not rely on its registered design mark and could not rely on its registered
word mark except in association with cigars because it must be taken to have
abandoned them inasmuch as the design mark had not been used by the appellant
for at least twelve years and the word mark had not been used except in associa-
tion with cigars for at least twelve years… In my view, this contention fails”.
67 Sec. 54: “The Exchequer Court of Canada has jurisdiction to entertain any
action or proceeding for the enforcement of any of the provisions of this Act
or of any right or remedy conferred or defined thereby.”
Sec. 55: “(1) An appeal lies to the Exchequer Court of Canada from any deci-
sion of the Registrar under this Act within two months from the date upon which
notice of the decision was despatched by the Registrar or within such further
time as the Court may allow either before or after the expiry of the two months.
(2) The appeal shall be made by way of notice of appeal filed with the
Registrar and in the Exchequer Court of Canada.
McGILL LAW JOURNAL
[Vol. 15
These propositions are exemplified in the Wolfville and Noxema
cases.0 8 In the former, it was held that once the Registrar has issued
his order under section 44 expunging a trade mark by the reason
of the fact that there had been no statutory declaration or affidavit
filed within three months showing use of the trade mark in respect
to the wares specified in such registration, the Registrar was unable
to extend time under section 46, to allow the registrant to file
such affidavit of user. The registrant had only one way of proceeding
and that was by way of appeal to the Exchequer Court under
section 55.
On the other hand, in the Noxema. case, it was held that the
applicant was not precluded to commence original proceedings under
section 56(2) to expunge a registered trade mark on the basis that
the registered trade mark had become abandoned, even though the
applicant to those proceedings had previously requested the issuance
of two section 44 notices. The defendant in both instances had filed
affidavit evidence indicating that the use of the trade mark had
resumed. The President concluded that section 56(2) of the Trade
Marks Act does not preclude the applicants instituting a proceeding
under section 56(2) for expungement on the grounds of abandon-
ment. He pointed out that section 44 of the Trade Marks Act does
not provide a summary procedure for determining whether a trade
mark has been abandoned, but merely calls upon the Registrar to
consider whether it appears to him, that the trade mark is not
in use or whether absence of such use is due to special circumstances,
(3.) The appellant shall, within the time limited or allowed by subsection (1),
send a copy of the notice by registered mail to the registered owner of any
trade mark that has been referred to by the Registrar in the decision complained
of and to every other person who was entitled to notice of such decision.
(4) The Court may direct that public notice of the hearing of the appeal
and of the matters at issue therein be given in such matters as it deems proper.
(5) On the appeal evidence in addition to that adduced before the Registrar
may be adduced and the Court may exercise any discretion vested in the Regis-
trar.”
Sec. 56: “(1) The Exchequer Court of Canada has exclusive original jurisdiction
on the application of the Registrar or of any person interested, to order that
any entry in the register be struck out or amended on the ground that at the
date of such application the entry as it appears on the register does not accu-
rately express or define the existing rights of the person appearing to be the
registered owner of the mark.
(2) No person is entitled to institute under this section any proceeding
calling into question any decision given by the Registrar of which such person
had express notice and from which he had a right to appeal.”
68 Re Wolfville Holland Bakery Ltd., (1965), 42 C.P.R. 88, (1963-64), 25 Fox
P.C. 169 (Ex. Ct.); Noxema Chemical Company of Canada Limited v. Shoran
Manufacturing Limited et al., (1968), 38 Fox P.C. 89, 55 C.P.R. 147.
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
409
etc. In other words, the court did not consider the action to expunge
a trade mark based on abandonment to be a proceeding calling into
question any decision which the Registrar rendered as a result of
his statutory duties pursuant to section 44 because the Registrar
had, in compliance with the Act, expressed no decision as to aban-
donment.
In instances where appeals are made from decisions of the Regis-
trar to the Exchequer Court the same appear to be de novo, for “the
court may exercise any discretion vested in the Registrar.” 19 In
Whitehall Laboratories Ltd. V. Ultravite Laboratoire Ltd.,70
the
editor notes that the Court is not reluctant to asserts its own first
impression for that of the Registrar.7 1
In Tooke Brothers,7 2 the Registrar dispatched a notice under s.
44(1) but the same appears never to have been received by the
registrant, because of removal of their offices to another city, nor
by their trade mark agents. As a result, the Registrar exercised
his discretion and cancelled the registration. The registrant then
appealed under section 55 within two months of the decision and the
court reversed the decision of the Registrar. The Court said:
It is sufficiently apparent that the Registrar reached this decision to cancel
registration, for no other motive than failure on the appellant’s part to put
in an appearance as required by the Act. This omission having previously
been explained [to the court and set out in the report], the Court believes
that the appellant is not to blame under the circumstances. 73
In opposition proceedings there appears to be a different view
exposed by recent decisions.74 In GOLDEN CIRCLET,75 Jackett, P.,
would have come to a conclusion opposite to that of the Registrar
and allowed the opposition but he refused to reverse the Registrar
saying:
I have, however, come to the conclusion that it is not open to me, in the
circumstances of this case, to substitute my conclusion for that of the Regis-
69 Sec. 55(5), supra, n. 67.
70 [1964] Ex. C.R. 913, 42 C.P.R. 3, 26 Fox P.C. 171, 44 D.L.R. (2d) 343,
reversed (1967), 31 Fox P.C. 547 (S.C.C.).
71 Loc. cit., 42 C.P.R., at p. 4.
72 (163-64), 25 Fox P.C. 176, (1066), 45 C.P.R. 162 (Ex. Ct.).
73 At pp. 176177 (at p. 163, C.P.R.).
74 Benson & Hedges (Canada) Ltd. v. St. Regis Tobacco and the Registrar of
Tradv Marks, supra, n. 66, a judgment of Jackett, P., with respect to an opposi-
tion to the application for registration of GOLDEN CIRCLET wherein he
followed the dicta of the Supreme Court of Canada in the Rowntree Company v.
Pautin Chambers Co. Ltd., (1968), 37 Fox P.C. 77 (Ex. Ct.) and affirming
(1063-64), 25 Fox P.C. 182 (R. of T.M.) herein called “Smarties v. Smoothies”.
75 Benson & Hedges V. St. Regis Tobacco and the Registrar of Trade Marks,
supra, n. 66.
McGILL LAW JOURNAL
[VCol. 15
trar, having regard to the nature of this Court’s duty on any appeal of
this kind as established by the decision of the Supreme Court of Canada
in the Rowntree Company Limited v. Paulin Chambers Co. Ltd. ot al.,
rendered on November 28, 1967 [(1968), 37 Fox P.C. 77]. In that case, as in
this, there was an appeal from a decision of the Registrar on an application
for registration of a trade mark. In that case, this Court substituted its
view on an issue as to whether two trade marks were confusing for that
of the Registrar, there was an appeal to the Supreme Court of Canada.
and that Court, by a unanimous judgment delivered by Ritchie, J., allowed
the appeal and restored the Registrar’s decision. The part of the reasons
for judgment which, as I understand it, contain the reasoning by which
the Court reached its decision, is the following:
“It is contended on behalf of the respondent that the conclusion reached
by the learned trial judge should not be disturbed having regard to
the terms of S. 55(5) of the Act which provides that “on the appeal…
the Court may exercise any discretion vested in the Registrar”. I do
not, however, take this as meaning that the Court is entitled to substitute
its view for that of the Registrar unless it can be shown that he pro-
ceeded on some wrong principle or that he failed to exercise his discretion
judicialy.75a
In my view the Registrar of Trade Marks in the present case applied
the test required of him by the statute and I do not think that grounds
were established justifying the learned judge of the Exchequer Court
in interfering with his conclusion.”
I would allow this appeal and restore the decision of the Registrar
of Trade Marks refusing the respondent’s application S.N. 264,951.
In this ease, no submission has been made that the Registrar proceeded
on a “wrong principle” or “that he failed to exercise his discretion judicially”
and I know of no basis upon which any such submission could have been
made. Not only is there no indication that he failed to follow the requirements
of any provision in the statute, but there is no room for suggesting that he
left out of account any material fact or came to any conclusion on the facts
5a For a very similar approach, see Union Carbide & Carbon Corporation’s
Application, (1952), 69 R.P.C. 306, per Lloyd-Jacob, J., at page 308, where he
said:
“If I were satisfied that in arriving at that decision the Hearing Officer had
observed the right approach, having regard to the language of the Statute and
the guidance given by the decided cases, the mere fact that his conclusion would
not necessarily be that at which I myself would have arrived without his assist-
ance is no reason whatever for interfering with his decision. Indeed, I think it
would be true to say that, even if I came to the conclusion, as I think I might,
that his conclusion was fanciful, and indicated failure to appreciate the un-
substantial nature of the objection posed, none the less, except upon the footing
that in exercising his discretion the Hearing Officer had failed to exercise it
judicially, I should not be justified in interfering with his conclusion. Accordingly
I have given the closest attention to the language in which he has framed his
conclusion and indicated his mental process, in order that I should be in a position
to determine whether or not there has been any departure from the principles
which it is incumbent upon those dealing with these matters to bear fully in mind.”
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
411
that could not be supported on the evidence. Certainly, there is no room
for suggesting that he did not act judicially. That being so, there is no
occasion for this Court to interfere with his conclusion and substitute its
decision for his.
The appeal is dismissed with costs.7 6
Now the effect of the GOLDEN CIRCLET decision might be to
immune any decision of the Registrar, from attack, by way of appeal.
Hence it might be concluded that the court, though empowered to
“exercise any discretion vested in the Registrar”, will not do so
unless a condition precedent is satisfied; namely, that additional
evidence is adduced before the court, which was not adduced before
the Registrar,7 7 or unless the record indicates that the Registrar
based his decision on an error in law.78 Such an error in law was
found by Cattanach, J., in the Drackett79 case.
Drackett was on appeal from the Registrar’s decision, in op-
position proceedings by the opponent, Drackett, to the respondent’s
application for registration of a proposed trade mark ONCE-A-
WEEK to be used in association with a “Floor Cleaner”. The op-
ponent, Drackett, alleged the respondent’s application was confusing
with the opponent’s unregistered trade mark “Once in Every Week
DRAINO in Every Drain” which the opponent alleged had been used
in Canada, and had become known in Canada prior to the date of
the application for registration by the applicant-respondent.
In Drackett Cattanach, J.,s1 said:
In the present appeal counsel for the appellant did submit that the Registrar
had proceeded on a “wrong principle”, that “he failed to exercise his
discretion judicially”, that his conclusion on the facts could not be supported
on the evidence before him and that he gave no reasons for his decision
as it was his obligation to do by virtue of section 37(8).
In contradiction, counsel for the respondent submitted since the issues
of whether a proposed trade mark is clearly descriptive of the character or
quality of the wares with which it is to be associated and whether a proposed
mark is adapted to distinguish those wares are both matters of first im-
pression and accordingly the Registrar could say no more than he did. He
further submitted that there was evidence before the Registrar upon which
he could reasonably find as he did and, therefore, his decision cannot be
reviewed.
76 At pp. 90-92.
77 Supra, n. 69.
78 Per Jackett, P., in the GOLDEN CIRCLET case, supra. The practice of the
Registrar to render curt decisions not explaining the basis of his decisions,
especially in opposition proceedings, makes the possibility of successful appeal
to the court very remote, especially if the view of Jackett, P., in the GOLDEN
CIRCLET case, is upheld by the Supreme Court.
79 The Drackett Co. of Canada Ltd. v. American Home Products, (1968), 38
Fox P.C. 1, 55 C.P.R. 29.
80 At p. 8, Fox P.C., p. 36, C.P.R.
McGILL LAW JOURNAL
[Vol. 15
I have looked at the language employed by the Registrar in stating
his conclusion in an attempt to ascertain whether he attached the weight
he should have to the material before him, or whether he rejected material
which he should have considered and in short to determine if he arrived
at his conclusion judicially.
I have been unable to obtain any assistance therefrom. After identifying
the proposed trade mark and the product with which it was to be associated,
reciting the three grounds of opposition to its registration and stating that
he considered the evidence on file, the written and oral representations on
behalf of the respective parties, he then announced his conclusion that “the
grounds of opposition are not well founded” and rejected the opposition.
Other than that he did not elaborate upon the grounds by which he reached
that conclusion.
Having regard to the nature of the application, the simple question that
the Registrar had to decide under section 12(1) (b) of the Act was whether
the expression “ONCE-A-WEEK” used in association with a “floor cleaner”
would be clearly descriptive or deceptively misdescriptive of the character
or quality of the floor cleaner. Making every allowance for the possibility
of different minds reacting differently to the same set of circumstances, I
cannot escape the conclusion that the Registrar erred in law in not holding
that it would be. Just as no person, properly addressing himself to the
question to be decided, could come to any conclusion with reference to a
word such as “tender” used in association with meat, except that it
is
clearly descriptive or deceptively misdescriptive within the meaning of sec-
tion .12(1) (b), so, in my opinion, no person, properly addressing himself to
the question to be decided, could come to any conclusion with reference to
the expression “ONCE-A-WEEK” used in association with a floor cleaner,
except that it is clearly descriptive within the meaning of section 12(1) (b).
It follows that I must conclude that the Registrar misconceived the
question that he had to decide when considering that branch of the case and
is manifestly wrong.
Having reached that conclusion, there is no need to decide whether the
other attack on the application for registration, that is, that the proposed
trade mark is not capable of being adapted to distinguish the respondent’s
product and is therefore not distinctive, should have succeeded.
The appeal is allowed with costs and the matter is referred back to
the Registrar for appropriate action in accordance with these reasons.
As was noted above (n. 78), the Registrar habitually renders
summary decisions. It appears that the Court may now take the
view that such practice by the Registrar is tantamount to notice to
the Court that he, the Registrar, proceeded on a “wrong principle”
or “that he failed to exercise his discretion judicially” with the
appending result that the decision becomes reviewable by the Court.
In summary, Golden Circlet and Smarties V. Smoothies indicate
that the court will not; in opposition proceedings, review the deci-
sion of the Registrar when it is not manifestly wrong, where there
was no error in law or in the exercise of judicial discretion. But
when there is, Drackett and Tooke Brothers indicate the court will
intervene and impose its own view; on the other hand, in view of
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
413
Noxzema and Woftville, it would appear that proceedings under
section 56(2) are always possible even when the Registrar has made
a decision, whether in opposition proceedings or under sections 43
and 44, provided the ground for expungement is not one to which
the Registrar has given consideration. Open is the issue as to whether
successful appeal can be launched from the decision of the Registrar
rendered under the authority of section 43 (3) or 44(5).
C – MODES OF CANCELLING OR
ALTERING TRADE MARK APPLICATIONS AND REGISTRATIONS
(a) Opposition Proceedings
Although opposition proceedings are not strictly procedure for
expunging trade marks, they are procedures which prevent applica-
tions for registered marks from maturing into registered trade marks.
The Act clearly sets out the procedure. A mark is published in the
Trade Marks Journal for opposition. Any person, upon payment of
the prescribed fee, may file a statement of opposition, 81 setting out
the ground for opposition. The applicant may file a counter state-
ment 82 and the opponent may then file evidence. 1 The deponents
may be cross-examined on their affidavits, 84 and then the parties
may present oral argument before the Registrar. 85 The Registrar
then renders his decision 86 which is appealable to the Exchequer
Court.87 But one may avoid opposition proceedings and attack the
mark as soon as registration ensues without sacrificing any rights.88
In the MacEachern 89 case, the court noted that there was nothing
which obligates one to oppose a trade mark when the mark is
published for opposition, prior to the granting of registration.
Reciting section 37(1), 90 the court said that “this I believe clearly
81 Trade Marks Act, Sec. 37(1).
82 Ibid., Sec. 37(6).
83 Ibid., Sec. 37(7).
84 Trade Mark Rules, supra, n. 20, rule 46.
85 Trade Marks Act, Sec. 3f7(7),
86 Ibid.
87 Loc. cit., Sec. 55, 56(2), supra, n. 67.
88The grounds for successful attack of a registered trade mark are discussed
below, infra, pp. 22-36, see also, supra, n. 67. One of the grounds for attack is
that the mark should not have been registered.
(8).
89 Gordon A. MacEachern Ltd. v. National Rubber Co., [1964] Ex. C.R. 135,
(1964), 41 C.P.R. 149, (1963), 24 Fox P.C. 117, 39 D.L.R. (2d) 668.
00 Sec. 37(1): “Within one month from the advertisement of an application any
person may upon payment of the prescribed fee, file a statement of opposition
with the Registrar”.
McGILL LAW JOURNAL
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implies that the (opposition) procedure contemplated is not com-
pulsory”.
In the DINKY 9′ case, the opponent Smit had filed an opposition
to the granting of registration of a trade mark DINKY which had
been advertised for opposition in the Trade Marks Journal under
section 37 (1) for wares comprising diamond drills. The court found
that the opposition of Smit had arrived at the Trade Marks Office
on the last day allowable under section 37(1), which provides for
a one-month opposition period. The opposition, however, was with-
out the $10.00 statutory (opposition) fee. It was held by the Regis-
trar and confirmed by the court that such opposition, without fee,
was null and void. The Registrar, therefore, allowed registration of
DINKY as if no opposition had been filed, which action the court
approved. Smit then instituted proceedings by way of Notice of
Motion in the Exchequer Court pursuant to 56(1) on the basis
of section 17(1)
that the registration granted to Packsack for
DINKY should be expunged. The court held that in view of the
fact that the Applicant had not filed an opposition with fee within
one month of publication in the Trade Marks Journal, he was not
precluded by section 56 (2) from commencing expungement proceed-
ings by way of Notice of Motion under section 17 because he was
never a party to the opposition proceedings, which in fact never
existed. The applicant thus had no right to appeal the Registrar’s
decision but he nevertheless maintained his right to apply for ex-
pungement under sections 17 and 56(2).
Probably the only true advantage to an opponent of a mark
which is published for opposition for entering opposition proceedings
is the summary procedure by which these proceedings are carried
out. These may result in a saving of substantial costs of formal
litigation before the Exchequer Court and of time. Nevertheless,
these might well be acceptable prices if one fears an adverse deci-
sion by the Registrar which is, except in rare instances, unappealable.
91 J. K. Smit and Sons International Ltd. v. Packsack Diamond Drills Ltd.,
[1964] Ex. C.R. 226, (1963), 24 Fox P.C. 146, (1963), 40 D.L.R. (2d) 46, (1964),
41 C.P.R. 158; affirmed without reasons, (1965), 28 Fox P.C. 115, 43 C.P.R.
188 (S.C.C.).
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
415
(b) Expungement in the Exchequer Court
(i) Procedure
The “Exchequer Court of Canada has exclusive jurisdiction to
expunge a registered trade mark”.9 2 The registered trade mark may
be expunged under three separately originating procedures; namely,
(a) by way of originating notice in the Exchequer Court, (b) by
way of counterclaim in an action for infringement, or (c) by way of
statement of claim in an action claiming additional relief under the
Act.93 Whichever mode of expungement is selected, the ground of
expungement is common and that is that at the date of the applica-
tion for expungement, the registration as it appears on the register
does not accurately define the existing rights of the person appear-
ing to be the registered owner of the mark.9 4
It is to be noted that the originating procedures are more exten-
sive in their grounds for expungement than the appeal procedures.9 5
We therefore should carefully examine them to determine under
what circumstances the Register does not accurately express or
define the existing rights of the owner. These rights are set out
in the Act 95 but they are applicable only if the mark is valid.97
The rights,9 8 which are granted under the Act, include exclusive
92 Sections 54, 56, supra, n. 67.
See also Elgin Handles Ltd. v. Welland Vale Mfg. Co. Ltd., [1965] 1 Ex.
C.R. 3, (1965), 27 Fox P.C. 168, 43 C.P.R. 20, where Jackett, P., held that the
combined effect of sections 56 and 54 confer jurisdiction on the court to entertain
any proceedings for the enforcement of any remedy defined or conferred by the
Act; that the Court had jurisdiction to strike out a registered trade mark
because it was not a trade mark within the meaning of the Act. It was observed
that if a person is registered as the owner of a trade mark when he does not
own it, the entry “does not accurately express or define the existing rights of
the person appearing to be the registered owner of the mark”, and section 56
of the Act confers jurisdiction to order its expungement. See infra, n. 97.
93 Supra, n. 67.
94 Sec. 56(1), supra, n. 67.
9 Supra, pp. 397-8, supra, n. 67.
90 See. 10, 20, 91, 31, and 65.
97 Sec. 18, 17, 12, 13, 14, 15, 16; prohibited registrations Sec. 9, 10, and 11.
98 Sec. 19: “Subject to sections 21, 31, and 65, the registration of a trade mark
in respect of any wares or services, unless shown to be invalid, gives to the
owner the exclusive right to the use throughout Canada of such trade mark
in respect of such wares or services.”
Sec. 20: “The right of the owner of a registered trade mark to its exclusive
use shall be deemed to be infringed by a person not entitled to its use under
this Act who sells, distributes or advertises wares or services in association with
McGILL LAW JOURNAL
[Vol. 15
use of a registered trade mark in Canada,59 except if three con-
(1) a prior user has had use of the trade mark
ditions prevail;
in good faith in some region of Canada; 00
(2) a previously reg-
istered trade mark was originally registered because of the use of
that mark in a defined area of the country under Section 12(1) (d) by
virtue of the fact that use was shown to exist and distinctiveness
thereof proven at the time of registration; 101 (3) a previous mark
was registered pursuant to Newfoundland law prior to union of that
a confusing trade mark or trade name, but no registration of a trade mark
prevents a person from making
(a) any bona fide use of his personal name as a trade name, or
(b) any bona fide use, other than as a trade mark,
(i) of the geographical name of his place of business, or
(ii) of any accurate description of the character or quality of his wares
or services,
in such a manner as is not likely to have effect of depreciating the value of
the goodwill attaching to the trade mark.”
99 Sec. 19.
100 See. 21 (1).
101 Sec. 3(1) : “(1) An applicant who claims that his trade mark is registerable
under subsection
(12) or under section 13 shall furnish the
Registrar with evidence by way of affidavit or statutory declaration establishing
the extent to which and the time during which the trade mark has been used in
Canada and with any other evidence that the Registrar may require in support
of such claim.
(2) of section
(2) The Registrar shall, having regard
to the evidence adduced, restrict
the registration to the wares or services in association with which the trade
mark is shown to have been so used as to have become distinctive and to the
defined territorial area in Canada in which the trade mark is shown to have
become distinctive.’
Sec. 12: “(1) Subject to section 18, a trade mark is registerable if it is not
(a) a word that is primarily merely the name or the surname of an individual
who is living or has died within the preceding thirty years;
(b) whether depicted, written or sounded, either clearly descriptive or
deceptively misdescriptive in the English or French languages of the
character or quality of the wares or services in association with which it
is used or proposed to be used or of the conditions or the persons employed
in their production or of their place of origin;
the name in any language of any of the wares or services in connection
with which it is used or proposed to be used;
(c)
trade mark; or
(d) confusing with a registered
(e) a mark of which the adoption is prohibited by section 9 or 10.
(2) A trade mark that is not registerable by reason of paragraph (a) or (b)
of subsection
it has so been used in Canada by the
applicant or his predecessor in title as to have become distinctive at the date
of filing an application for its registration.”
is registerable if
(1)
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
417
Province with Canada. 0 2 Barring the three noted exceptions, a
registrant has the exclusive use of the registered trade mark in
Canada.
0 3
In order to obtain these rights the registered trade mark must
not be one of the class known as prohibited marks; 04 nor may one
of the following four aspects prevail; 05 namely, (a> the mark was
not registerable at the time of registration; or, (b) the mark has
lost its distinctiveness at the date the mark is attacked; or (c) the
mark has become abandoned; or, (d) the mark was superceded in
use (a prior use) by a confusing trade mark.
102The Province of Newfoundland, formerly an independent colony of the
United Kingdom, entered into Confederation with Canada effective April 1,
1049. By the Act of the Union of Newfoundland, 13 Geo. VI, S.C. 1049, vol. 1, c. 1,
the terms of the Union were ratified. As to trade marks the following was
provided:
TRADE MARKS
21. (1) Canada will provide that the registration of a trade mark under
the laws of Newfoundland prior to the date of Union shall have the same
force and effect in the Province of Newfoundland as if the Union had not
been made, and all rights and privileges acquired under or by virtue thereof
may continue to be exercised or enjoyed in the Province of Newfoundland, as
if the Union had not been made.
(2) The laws of Newfoundland existing at the date of Union shall continue
to apply in respect of applications for the registration of trade marks under
the laws of Newfoundland pending at the date of Union and any trade marks
registered upon such applications shall, for the purposes of this Term, be
deemed to have been registered under the Laws of Newfoundland prior to
the date of Union.
103 Supra, n. 98.
1o4 Supra, n. 97.
105 These result from the provisions of Sections 18 and 17.
Sec. 18: “(1) The registration of a trade mark is invalid:
(a) the trade mark was not registerable at the date of registration.
(b) the trade mark is not distinctive at the time proceedings bringing the
(c)
validity of the registration to question are commenced; or
the trade mark has been abandoned; and subject to section 17, it
is
invalid if the applicant for registration was not the person entitled to
secure the registration.
(2) No registration of a trade mark that had been so used in Canada by
the registrant or his predecessor in title as to have become distinctive at the
date of registration shall be held invalid merely on the ground that evidence
of such distinctiveness was not submitted to the competent authority or tribunal
before the grant of such registration.”
Sec. 17: “(1) No application for registration of a trade mark that has been
advertised in accordance with section 36 shall be refused and no registration
of a trade mark shall be expunged or amended or held invalid on the ground
of any previous use or making known of a confusing trade mark or trade
name by a person other than the applicant for such registration or his
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(ii) Grounds of Attack
1. Not Registerable
If a mark is attacked on the ground that it was not registerable
at the date of registration, the basis on which the application was
made for the registration must be determined. 100 Thus in HEEL
PRUF,107 the ground of attack against the registration of HEEL-
PRUF, registered for use in association with rubber matting, was that
the registrant was not entitled to the registration because of the prior
use of the mark HEEL PRUF also used in association with matting.
The concurrent use of the two marks was alleged to be confusing.
the attack on the registration of DINKY for
diamond drills was successful on two grounds. Firstly because the
mark DINKY had never been used on “Diamond Drills” generally,
but only on “portable electric diamond drills used in prospecting”.
The court explained that the registrant was not entitled to have
the registration in respect of Diamond Drills as a general class
because the mark “had never been used in Canada or made known
in Canada as a mark used by the respondent for the purpose of
distinguishing its diamond drills generally from those of others”.
In DINKY,105
predecessor in title, except at the instance of such other person or his successor
to establish that he had not abandoned such confusing trade mark or trade
name at the date of advertisement of the applicant’s application.
(2) In proceedings commenced after the expiry of five years from the date
of the registration of a trade mark or from the date of the coming into force
of this act whichever is the later no registration shall be expunged or amended
or held invalid on the ground of the previous use or making known referred
to in subsection (1), unless it is established that the person who adopted the
registered trade mark in Canada did so with knowledge of such previous use
or making known.”
106 Sec. 18(1), supra, n. 105, sets the relevant date as the date of registration;
Section 16 sets out, in negative terms, 4 basis of registration. Registration is
permissible if there is no confusion with:
(a) previous use or previously made known in Canada of a trade mark.
(b) trade mark application previously filed in Canada.
(c) trade name previously used in Canada provided however there is actual
use of the mark on the date of registration, see Sec. S8 and 39.
Under Section 34 of the Trade Marks Act:
“A trade mark is deemed to have been adopted by a person when he or his
predecessor in title commenced to use it in Canada or to make it known in
Canada or, if he or such predecessor had not previously so used it or made
it known, when he or such predecessor filed an application for its registration
in Canada.”
o0TSupra, n. 89. See editor’s annotations at 24 Fox P.C. 117.
‘OsSupra, n. 90.
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
419
2. Distinctiveness
The second ground for expunging DINKY was that it was clearly
descriptive of the character of the wares, which were small or dinky
diamond drills, and was thereby contrary to section 12(1) (b).”09
Distinctiveness must be considered at the date that the action was
commenced, not otherwise,1 1 0 and distinctiveness cannot reside in
functional features, barring the creation of a secondary meaning
for the mark. M Thus in the Park Davis case,” 2 colour bands on
pharmaceutical tablets were deemed to be functional because the
plaintiff had obtained a patent for the use of colour rings on phar-
maceutical tablets. Since no secondary meaning had developed by
which manufacturers, suppliers, and the public identified the plain-
tiff’s wares by the colour bands, a secondary meaning had not been
established at the time the proceedings were commenced and the
registration was invalid because it was not distinctive.
Similarly in the Elgin Handle case,” 3 the registration of a trade
mark consisting of the accentuation in darker colouring of the grain
of the wood of tool handles the surface of which had been hardened
to accomplish such purpose was held non-distinctive because of the
process of fire hardening, which was primarily designed to improve
wooden handles had a functional use or characteristic. It was also
held that the change in appearance of the goods, by fire hardening,
being a normal result of a process having functional use or charac-
teristics could not be a trade mark.
In ORANGE MAISON, n 4 the court held that a mark, to be
contrary to S. 12(1) (b) as descriptive or deceptively misdescrip-
tive, and thus unregisterable at the time of the registration, must
be clearly descriptive or deceptively misdescriptive. The registered
mark ORANGE MAISON was for orange juice and was “applied to
drink composed of fresh and reconstituted orange juice with added
vitamin C, the said drink being manufactured, sold and delivered
directly by the (registrant) to the home of customers in 64-ounce
jugs”. The court reviewed the meaning of the word “maison” which
‘O9 Supra, n. 101.
110 Parke, Davis and Co. v. Empire Laboratories Ltd., [1964] S.C.R. 351,
(1965), 27 Fox P.C. 67, 43 C.P.R. 1,
45 D.L.R. (2d) 97; affirmed
[1964J Ex. C.R. 399, (1963), 24 Fox P.C. 88, (1964), 41 C.P.R. 121,
(1963),
38 D.L.R. (2d) 694. But see annotations at 27 Fox P.C. 67, at pp. 67-69 for a
discussion of functional colours used as trade marks.
(1964),
111 Ibid.
112 Ibid.
113 Supra, n. 92.
“14 Home Juice Co. v. Orange Maison Ltie, (1968), 36 Fox P.C. 179, 53 C.P.R.
71. (Ex. Ct.).
MCGILL LAW JOURNAL
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means “made by a reputable house” said, after quoting from rele-
vant French language dictionaries:
The above meaning of the word “maison”, however, does not occur in all
French dictionaries and there are several such as Littr6 and Quillet, where
such a meaning does not appear. It does not appear either in Belisle’s
Dictionnaire Ggniral de la Langue Fran~aise, 1954, nor in the Larousse
Canadien Complet, 1954. As a matter of fact “maison” to anyone is essen-
tially a place where one lives and the meaning of quality it may convey in
some cases is an exotic one even in France and is restricted to the culinary
art. The use of the word “maison” in this sense merely suggests that a
particular victual is made by the chef of a restaurant in which one is eating
such as pat6 maison or tarte maison and may (but not necessarily so)
because of this, be of a better quality than if it was purchased outside.
The word “maison” used such as here, however, in association with the
word orange (which although it is disclaimed in the registration and, there-
fore, cannot in any sense add anything to the strength of the trade mark)
does not, in my view, indicate that the product is home made as in French
one should not merely use the word “maison” to express or convey such
an idea but should use the words “fait h la maison” and even if these words
were used, they would in association with the word “orange” be complete
non-sense as indicating home made oranges. They do no either indicate that
one refers to an orange house where oranges are grown or kept as in such
a case the word “orangerie’ should be used. As a matter of fact, they do
not even describe orange juice or even a quality of characteristic thereof
and if they did would be deceptively misdescriptive of the character or quality
of the wares as being home made which is not an issue raised in these
proceedings.. 115
I cannot even accept that the word ‘maison’ used with another word
to indicate quality is in general use even in France. It is certainly not in
common or current use anywhere in the world in association with the word
‘orange’. As for this country (Canada), to the greater part of its French
population, the word ‘maison’ is certainly seldom, if at all, used in associa-
tion with another word to indicate a home made product nor so far as
ordinary language is concerned is the word used to denote the quality of
anything. It, therefore, follows that it is not a word with which the word
‘orange’ would be used in any country by others in the description of their
products or wares nor would it be used particularly in Canada where its
descriptiveness must be realistically considered for the purpose of the
Act.116
The court then went on to consider if the mark had in fact become
distinctive at the date of registration, 9 December 1960.
It concluded that the maxk had become so distinctive, at let
within the Province of Quebec, by reason of extensive use of the
mark. The court said:
Since 1954 the respondent and its predecessor in title has continuously and
extensively advertised in the Province of Quebec its orange juice in associa-
15 At pp. 182483 (at pp. 74-75, C.P.R.).
116 At p. 184 (at pp. 76-77, C.P.R.).
No. 3]
TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
421
tion with the trade mark ORANGE MAISON by product information mailed
or delivered directly to household consumers, by contests concerning and
advertising its orange juice on home delivery trucks, letterheads, invoices,
exterior signs, posters placed on transit vehicles, cards, radio and television
advertising and decals placed on store windows.
There is, therefore, no question in my mind that by virtue of continuous
use and extensive advertising in the Province of Quebec at the date of
registration, the respondent’s trade mark ORANGE MAISON had acquired
a distinctive meaning of the orange juice of the respondent and its prede-
cessor in title among dealers and purchasers of orange juice and other fruit
flavoured drinks and non-alcoholic beverages in the Province of Quebec
within the meaning of section 1.8(2) of the Trade Marks Act, R.S.C. 1052-53,
Chapter 49.117
In Aladdin Industries v. Canadian Thermos Products Limited and
the Registrar of Trade Marks,n s the Court found that the registered
trade mark THERMOS had, since its registration in 1960 as a reg-
istered trade mark, acquired a degree of common usage as a generic
word in speech and writing but, nevertheless, was distinctive to a
significant portion of the people who buy and sell vacuum bottles;
Kerr, J., stated:
It is also my opinion that when the proceedings were commenced the trade
mark registered in 1960, and the other trade marks whose expungement
is sought, were distinctive of the respondent’s bottles to a substantial portion
of the consumer public throughout Canada, to many and not only to a few,
although I cannot put percentage figures on the portion to which the trade
mark was then distinctive and the portion to which it was not. Therefore,
notwithstanding my conclusion as to the generic and descriptive use of the
word “thermos”, I do not think that the trade marks should be found to be
invalid under section 18(1) (b).
S. Use (make Known)
Actual use 1 9 may be an insufficient use, in trade mark law.
Thus, in the HOSPITAL WORLD trade mark, 120 the mark HOSPI-
117 At pp. 185-186 (at p. 78, C.P.R.).
118 Unreported decision of the Exchequer Court of Canada.
119 The Trade Marks Act, defines “use” as follows:
Section 4: “(1) A trade mark is deemed to be used in association with wares
if, at the time of the transfer of the property in or possession of such wares,
in the normal course of trade, it is marked on the wares themselves or on
the packages in which they are distributed or it is in any other manner so
associated with the wares that notice of the association is then given to the
person to whom the property or possession is transferred.
(2) A trade mark is deemed to be used in association with services
is used or displayed in the performance or advertising of such services.
(3) A trade mark that is marked in Canada on wares or on the packages in
which they are contained is, when such wares are exported from Canada, deemed
to be used in Canada in association with such wares.”
120 [1967] R.P.C. 595.
if it
McGILL LAW JOURNAL
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TAL WORLD, with associated design, was held not to be register-
able as a mark which had been used in association with “periodical
publications” because the mark, had not, in law, been used. The wares,
a journal, to which the mark was affixed, were not sold in the nor-
mal course of trade, but were given to the public free of charge.
The Assistant Registrar of Trade Marks said:
The issue is whether the free distribution of the journal can be regarded
as using the trade mark within the definition contained in section 68 of the
Trade Marks Act which is as follows: –
“‘Trade mark’ means, except in relation to a certification trade mark,
a mark used or proposed to be used in relation to goods for the purpose
of indicating, or so as to indicate, a connection in the course of trade
between the goods and some person having the right either as proprietor
or as registered user to use the mark, whether with or without any
indication of the identity of that person…”
Under section 17(1) of the Act it is incumbent on a person applying
for the registration of a trade mark and claiming to be the proprietor
thereof to assert that it is used or proposed to be used by him. Thus it
seems to me that in claiming to be the proprietors of the mark propounded
used in relation to periodical publications, the applicants must be able to
show that they have used it as a trade mark in relation to those goods
within the definition contained in section 68 of the Act.
Whilst there is evidence that the applicants have spent large sums on
the production and circulation of the journal, the free distribution of it
does not, in my opinion, amount to marketing. It is necessary in the present
case to refer to the observations of Lord Wright in Aristoc v. Rvstal Ltd.,
(1945), 62 R.P.C. 65. In considering the definition of a trade mark in section
68 he said (from 82, line 48, to 83, line 1): –
“The limitation in the Act of 1938, ‘in the course of trade’, sufficiently,
in my opinion, preserves the essential and characteristic function of
the mark. The proprietor is required to be a trader who places the
goods before the public as being his goods. That is the vital connection,
not some later partial and ephemeral attribution to someone else. ‘Trade’
is a very wide term: it is one of the oldest and commonest words in the
English language. Its great width of meaning and application can be
seen by referring to the heading in the Oxford English Dictionary. But
it must always be read in its context. That gives it the special conno-
tation appropriate to the particular case. In the Act of 1938, the context
shows that ‘trade’ refers to selling or otherwise trading in the goods
to which the mark is applied. Thus, in section 26(.2) (b) we find the
words ‘goods to be sold or otherwise traded in’; the same collocation
of words is found in section 3.1; and again in section 68 in the definition
of limitations. These instances show that ‘trade’ is here used in the
particular sense of merchanting, selling or the like which would now-
adays include the more modern practices of hire purchase, leasing (for
example of valuable machines), letting out for public use, exporting, etc.”
The free distribution of a journal containing matters of interest to
prospective customers and others who come in contact with the applicants
in their main business as manufacturers of surgical and medical dressings
No. 3]
TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
423
and hospital supplies, is undoubtedly an aid in their general public relations
and helps to create goodwill in the firm; but I do not think that the free
distribution can be regarded as trading in the goods of the application
within the context of the definition of a trade mark. The goods are not
being put on the market for people
to buy as a matter of choice in
preference to someone else’s publications. The persons who receive the
free copies, are, I think, most likely to regard them as part of the applicants’
publicity and advertisement campaign concerned with the sales of dressings
and hospital supplies rather than the products of a business of publishers.
I have come to the conclusion, therefore, that the applicants’ mark has
not been used in relation to periodical publications for the purpose of
indicating a connection in the course of trade within the definition of a
trade mark in section 68 of the Act; so that the use of the mark as shown
by the evidence cannot be taken into account in deciding whether, under
section 9(3) of 10(2), it has acquired distinctiveness or the capacity to
distinguish by reason of use.
In the result I find that the applicants have not used their mark
as a trade mark within the definition contained in section 68 of the Act.
The Siscoe case 121 is also of interest in determining the kind of
“use” acceptable. In this case it was held that the mere sending of
samples to one Company in Canada and the bringing to it or its
subsidiary of samples of the respondent’s products was neither a
distribution of wares as contemplated by The Unfair Competition
Act, nor was it sufficient to establish that by reasons thereof
the mark was known in Canada. It was further found, that what
was contemplated by the statute (The Unfair Competition Act) was
such distribution of the wares bearing a trade mark and in such
quantities as would serve to make the mark known by persons en-
gaged in trading in such wares in Canada or their customers. It was
found that there were no sales of the products in association with
the trade in Canada in the ordinary course of trade and accordingly
there was no use of the trade mark prior to registration, as was
required under the Act. The Court noted; (a) that the only use
was the act of bringing into Canada wares possessing the trade
mark, which wares were left in the offices of the Petitioner in
Canada; (b) that no further evidence of use of the trade mark by
the respondent, with any wares before or after filing a trade mark
application as given during the proceedings; (c) nor was evidence
of making known by distribution or by advertisement in Canada
in any printed publication presented (that is, no “distribution of
such wares in Canada or their advertisement therein among poten-
tial dealers in or uses of such wares in Canada”).
121 Siscoe Vermiculite Mines v. Munn et al., [1959] Ex. C.R. 455,
(1958-59),
18 Fox P.C. 160, (1959), 31 C.P.R. 6.
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In ORANGE MAISON 122 we have seen that the mark was
extensively used on a broad range of items even though it was
registered only for orange juice. This extensive use, the court found,
was sufficient to establish the mark as being distinctive even if it
were to be assumed that it was not inherently distinctive.
In Don the Beachcomber,123 the court considered use in respect
of services and said:
I shall therefore hold that “use in Canada” of a trade mark in respect of
service is not established by mere advertising of the trade mark in Canada
coupled with performance of the services elsewhere but required that the
services be performed in Canada and that the trade mark be used or displayed
in the performance or advertising in Canada of such services.124 (Emphasis
added).
Explaining the holding the court said:
In my view the suggested
incorporation of expressions from s. 4(2)
into s. 44(3) produces an interpretation which does not give full effect
to the words used in either of these subsections. What s. 44(3) refers to
is not merely use of it in Canada. The expression “trade mark” is defined
in s. 2 (t) in so far as the definition deals with marks in respect of services,
as meaning a mark that is used or to be used to distinguish services
performed by one person, or according to a standard, from services performed
by other, or not according
to the standard… Two elements are thus
required to constitute “use” as defined in s. 2(v):
(i) services to be
distinguished by the trade mark; and (ii) use or display of the trade
mark in the performance or advertising of services. As a matter of
construction of the words of the statute, apart from other consideration,
the expression “in use in Canada” in s. 44(3) appears to me to mean
the carrying out in Canada of both elements required to constitute “use”
and that the carrying out of the only one of them in Canada does not
amount “to use in Canada” of the trade mark… (Emphasis added).
… [B]y approaching the problem of interpretation of the subsection
[Sec. 44(S)] on the assumption that the essential attributes of trade marks
in respect of wares would also be required in trade marks in respect of
services and for this reason would require that the services in respect of
which a trade mark is registered be services that are performed in Canada
in the course of the registrant’s trade. 125
In CRAZY HORSE SALOON, 20 the plaintiff had, since 1951,
extensively publicized their Paris business in the United Kingdom
but they carried on no activities of any kind in the United King-
dom. The Court held that they were not entitled to restrain the
defendant from starting and carrying on a place of business in
122 See infra, pp. 419-420.
i23Supra, n. 45.
124 At p. 85 (at p. 287, C.P.R.).
125At p. 83-84 (at p. 285-286, C.P.R.).
12OAlain Bernardin et Compagnie v. Pavilion Properties Ltd., [1967] R.P.C.
581 (Oh. D.).
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
425
the United Kingdom under the name “Crazy Horse Saloon”. The
Court further said that:
[A] trader cannot acquire goodwill in this country for the purposes of a
passing off action without a user of some sort. Although in certain cases
slight activities might suffice, the mere dissemination of material advertising
the plaintiff’s business activities abroad could not constitute user in the
United Kingdom sufficient
to acquire a reputation in the sense of a
passing off action, and an interlocutory injunction would therefore not
be granted.
that the statement
Observed, from the Head Note:
in Kerly on
Trade Marks (9th ed. (1,966) paragraph 7T9) that: “If in fact the plaintiff
has the necessary reputation in this country, it does not matter whether
it was acquired by user here or in any other way”, was difficult to reconcile
with the authorities binding on the court.
The Court, in CRAZY HORSE SALOON, distinguished that case
from the Sheraton 127 case. They noted that in the Sheraton case,
although no actual services of innkeeper were performed in the United
Kingdom, there were sufficient ancillary services which were per-
formed in the United Kingdom, which, along with a make known 128
of the trade mark in the United Kingdom by advertising, was suffi-
cient to establish a good will in the United Kingdom and hence a
right of action for any passing off.
In King Features Syndicate 129 the court considered the evidence
which constitutes a make known and said:
The plaintiffs have led evidence intended to establish that about 1985 a
watch made by Montgomery Ward & Co. under license from the Hearst
Corporation was distributed in Canada and was therefore known in Canada
within section 3(b)
the Unfair Competition Act]. W. J. O’Neil,
Secretary-Treasurer of Paramount Film Service Ltd., states that about
that year his firm received from the parent company –
Paramount
Pictures Inc. of New York – a small number of watches similar to Exhibit
[of
127Sheraton Corporation of America V. Sheraton Motels Ltd., [1964] R.P.C.
202.
128 Sec. 5. “A trade mark is deemed to be known in Canada by a person only if
it is used by such person in a country of the Union, other than Canada, in
association with wares or services, and
(a) such wares are distributed in association with it in Canada, or
(b) such wares or services are advertised in association with it in
(i) any printed publication circulated in Canada in the ordinary course
of commerce among potential dealers in or users of such wares or
services, or
(ii) radio broadcasts, as defined in the Radio Act, ordinarily received in
Canada by potential dealers in or users of such wares or services.
and it has become well known in Canada by reason of such distribution or
advertising.”
129 King Features Syndicate Inc. et al. V. Lechter, (1949-50), 10 Fox P.C. 144
(Ex. Ct.), at pp. 152-153.
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22 for distribution gratis among his firm’s employees in Toronto for
advertising purposes in connection with “Popeye” film cartoons, and the
dial bears the name “Popeye” in red ink adjacent to the figure. There
is no evidence that the “Popeye” watch was ever advertised or sold in
Canada. I am of the opinion that the very limited use of that dial in
that way does not constitute such distribution of the wares in Canada
as to bring the name “Popeye” used in connection therewith, within the
ambit of s. 3(b).
In Robert Win v. Mady 130 the facts were as follows. The de-
fendants were owners of the registered trade mark “Big Boy Drive In”
in respect of a service, namely, “the dispensing of various food and
especially a hamburger”. The mark had been used in Canada since
12 April, 1955, as had the mark “Big Boy” in association with
“hamburgers”. The plaintiff was the registrant, since 11 August,
1952, in the United States of the mark “Big Boy” for “hamburgers”.
The defendants operated their shops in Windsor while the plaintiffs
operated their shops in Detroit. The plaintiff attempted to expunge
the registered trade mark of the defendants, which was alleged to
be “confusing”” 1 with that of the plaintiff because as the plaintiff
alleged, his mark “Big Boy” had become well known in Canada
before the Defendant had applied for registration of his trade-
marks.
The Court held that was “no confusion” of the plaintiff’s and
of the defendant’s identical marks “Big Boy” even though the wares,
“hamburgers”, were identical. This was because the defendant’s
mark “Big Boy” was not known throughout Canada to an appre-
ciable extent, although it was known appreciably in the City of
Windsor, Ontario. The Court said:
A thing may be regarded as known in Canada if it is known only in
some part of Canada but, in my view, it is not ‘well known’ in Canada unless
knowledge of it pervades the country to a substantial extent. When section
5 speaks of a trademark that is “well known in Canada by reason of…
advertising” it suggests to me such well known trademarks as “Coca-Cola”,
“Esso”, “Chevrolet”, and “Frigidaire”, names that are seen in magazine
advertising in homes in every part of the country, or heard or seen on
radio or on television in every part of the country. I do not think a
trademark can be regarded as “well known in Canada” when knowledge
of it is restricted to a local area in Canada. In my view it must be “well
known” across Canada “among potential dealers in or users of” the wares
or services with which it is associated.1 32
130Robert C. Wian Enterprises Inc. v. Mady, (.1965), 29 Fox P.C. 37, 49
D.L.R. (2d) 65, (1966), 46 C.R.P. 147 (Ex. Ct.).
131 Sec. 2(b) : ” “Confusing” when applied as an adjective to a trade mark or
trade name, means a trade mark or trade name the use of which would cause
confusion in the manner and circumstances described in section 6;” (Supra, n. 77).
132 Supra, n. 130, at p. 169 (at p. 59, Fox P.C.).
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
427
Non-use of a trade mark may imply abandonment but the better
view would appear to be that an extended period of non-use would
be required 133 in order to satisfy an intention not to use the mark.
In England, the Court has taken the view that in order that there
be an abandonment of a trade mark, along with any non-use, there
must be a manifested intention not to use. In NODOZ,134 the Court
said, “there never has been an intention not to use or to abandon
the mark”. 13 5
A continual repetitive use over a long period of time rebuts
abandonment, and may establish prior user. Thus in the MacEachern
case, 13 the court distinguished the facts from NODOZ. In the NODOZ
case one single transaction (sale) of a trade marked ware which
was not even satisfactorily proven to the Court, was deemed not
to be a use of the mark. The mark was expunged. On the other hand,
in MacEachern, invoices containing references to the registered mark
and to sales in Canada of wares possessing the mark where accepta-
ble in establishing use of the mark in Canada. The supporting affi-
davit, which set out the facts of prior use by the applicant for
expungement, stated that since the date of first use of the mark
HEEL PRUF which use itself was supported by two invoices show-
ing use of the trade mark in sales, the applicant “has since that
time made substantial sales”. The court held that such expression
“implied sales going on at the time of the signing of the affidavit
and that these sales have been made over the period between the
time of the first sale to the time that the affidavit was sworn to”.
The court went on to say:
Mr. MacEachern’s sworn statement that substantial sales were made by
his company therefore establishes that many transmutations of property
were made from his company to a number of buyers and the normal
inferences to be drawn from this is that sales having been made for a
price, the goods sold as well as the invoices must have been delivered.
Now, had respondent required further particulars with respect to the
evidence contained in the affidavit and the two invoices, he could have,
under R. 165 of the Exchequer Court Rules, cross-examined Mr. MacEachern
with respect to the broad statement he made as to the substantial sales
133 Section 18(1) supra, n. 109. In the Silhouette case, abandonment of the
registered trademark was presumed because the registrant did not actually
use the mark which was registered but rather a confusing mark. In Golden
Circlet, the Court agreed with Counsel when it was suggested that because a
design mark had not been used for twelve years it must be presumed to be
abandoned. But see infra, p. 405 as to the Registrar of Trade Marks position
regarding non-use of trade marks.
134 Re: Nodoz, [1962] R.P.C. 1 (Ch. D.).
135 Supra, n. 184.
136SUpra, n. 89.
McGILL LAW JOURNAL
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made by his company as well as require production or examination of the
original invoices…
[T~he applicant [for expungement] has established
the necessary
transfers of property, in the normal course of trade; the evidence indicates
that we have here not one isolated sale but many sales and the invoices
with the trade mark indicated thereon in association with its wares which
invoices, as we have seen, by inference must be to have been received
by the buyers are sufficient satisfaction, under s. 4(,)
of the Act to
establish use. The applicant has also established continuous use through
to the time of 80 March 1960 as well as showing that it at no time intended
to abandon the mark.137
Referring to the facts in this case, the owner of an unregistered
mark HEEL PRUF, which had been in use since January 1959, for
wares such as floor matting made a motion on May 27, 1960 to
expunge the registered trade mark HEELPRUF. The application
for HELLPRUF as a proposed trade mark, had been filed Novem-
ber 19, 1959, and was subsequently granted and used in association
with wares describes as “rubber matting”. Mr. Justice Noel ex-
plained the law as follows:
Section 16, (3)(a), (4) and (5) of the Trade Marks Act provides that
if one files an application of a proposed trade mark, then he is entitled
to obtain its registration, if, at the date he has filed the trade mark he
applied for, it was not confusing with:
“(a) a trade mark that had been previously used in Canada or made
known in Canada by any other person”.
The trade marks of the respondent and of the applicant here are not
only confusing, but practically identical except that in the case of the
respondent, the letters are spelled out in one word whereas in the applicant’s
case, there is a space between
‘Pruf’ and because of this
they are certainIly confusing with s, 6 of the Trade Marks Act…
‘Heel’ and
As this was an application for registration of a proposed trade mark,
the critical date under s. 16(3) of the Trade Marks Act is the date
the application was filed, i.e., November 18, 1059. If on that date there
had been no prior use of a confusing mark, the respondent’s registration
would be good; however, if there had been prior use by the applicant as
it so contends here, the respondent’s registration would not be good… 1 8
Now use in the Trade Marks Act is defined as follows: “s. 4(1) A
trade mark is deemed to be used in association with wares if, at the time
of the transfer of the property in or possession of such wares, in the
normal course of trade, it is marked on the wares themselves or on the
packages in which they are distributed or it is in any other manner so
associated with the wares that notice of the association is then given
to the person to whom the property or possession is transferred.”…
S. 18(1) of the Act provides that a registration is invalid in the case
(c) and “subject to s. 17… if the applicant for registration
of (a), (b),
was not the person entitled to secure the registration”. The applicant submits
here that the respondent was not entitled to secure the registration of the
13At p. 158 (C.P.R.), at p. 12
1 8 At pp. 150-151 (C.P.R.), at pp. 117-118 (Fox P.C.).
(Fox P.C.).
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TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
429
trade mark as it did because at the time it applied, the applicant company
had used the trade mark.
S. 18 referred to above is, however, as we have seer, subject to s.
17(1) of the Act which provides in effect that a registration will not be
expunged on
the ground of a prior use by somebody else unless the
applicant for expungement is the person who has previously used or
made known the confusing trade mark or trade name and that person
must show that he had not abandoned the trade mark at the date of
advertisement of the respondent’s application.’ 3 9
4. Improper User
Although it
is not intended to deal with improper user in
detail, 140 since this is really beyond the scope of this paper, the
CHEERIO cases, 141 are a fountain of cheer and gloom for the trade
mark user. The facts of the cases may be summarized as follows:
A Company, Cheerio Toys and Games Limited, was incorporated in
1938 and later assigned, in 1955, certain trade marks including
CHEERIO: YO-YO: BO-LO: etc. to one Dubiner. The mark CHEE-
RIO had come into existence with the incorporation of the company
in 1938. The Company, on assigning its marks to Dubiner, obtained
the right to use them under a registered user license.142 The license
139At pp. 152-153 (C.P.R.), at p. 120 (Fox P.C.).
14oFor further discussion of improper uses, see Mitches, New Look to Law
Affecting Trade Marks and Names, (1969), 34 Bus. Q. 79.
‘4’ Cheerio Toys and Games Ltd. v. Cheerio Yo-Yo and Bo-Lo Co., [1965] 1
Ex. C.R. 562, (1,65), 28 Fox P.C. 40, (1966), 44 C:P.R. 109 (appeal to the
Supreme Court of Canada, refused); Cheerio Toys and Games Ltd. V. Samuel Du-
biner et al., [1265] 1 Ex. C.R. 578, (1965), 28 Fox P.C. 34, 43 C.P.R. 11; Samuel
Dubiner v. Cheerio Toys and Games Ltd., [1965] 1 Ex. C.R. 524, (1.965), 28
Fox P.C. 1, (1961), 44 C.P.R. 124, affirmed [1966] S.C.R. 206, 32 Fox P.C.
37, 48 C.P.R. 226. The results of the judgments seemed to indicate that the
Court takes a very “hard” view if there is a co-existing use of a registered
trade maxk by a third party, which is co-extensive with the exclusive rights to
use of the proprietor of that mark. If there is such co-existing co-extensive use, or
probably more correctly, some overlapping use by the proprietor and by the
third party, the registration will be expunged because of invalidity due to
what the Courts call a “loss of distinctiveness”, which in essence is a “presumptive
abandonment”. (These are but three of the more relevant Cheerio cases).
142 The relevant parts of section 49 are:
“(1) A person other than the owner of a registered trade mark may be
registered as a registered user thereof for all or any of the wares or services
for which it is registered.
(2) The use of a registered trade mark by a registered user thereof in
accordance with the terms of his registration as such in association with wares
or services manufactured, sold, leased, hired or performed by him, or the use
of a proposed trade mark as provided in subsection (2) of section 99 by a
person approved as a registered user thereof, is in this section referred to as
the “permitted use” of the trade mark.
(3) The permitted use of a trade mark has the same effect for all purposes
of this Act as a use thereof by the registered owner.”
McGILL LAW JOURNAL
(Vol. 15
(2)
was later revoked by Dubiner because the company refused to give
him access to plant facilities and to books, in accordance with the
terms of the license. Nevertheless, the company continued to use
the marks. A series of legal actions ensued but the net result of
the complex litigation was; (1)
that the license had been properly
revoked because of a breach thereof;
that the trade mark
CHEERIO was held to be invalid because, though its use by the
Company was deemed to be a use, in law, by Dubiner (by virtue
of the registered user license) ; its use, as such over the same period
of time, being the same as that of the mark CHEERIO in the trade
name of the Company, Cheerio Toys and Games Ltd., which latter
use was a user by the company on its own account, was sufficient
to negate exclusivity and distinctiveness in that mark because of
the co-existent concurrent use by two different entities;
that
the other trade mark, i.e. YO-YO and BO-LO etc. were held to be
valid because the trade marks had been used, by the company in
accordance with the terms of the license, principally as trade marks
and they had not become generic because the marks had always been
accompanied by the symobol R, and in advertising, the marks had
been referred to as trade marks.
(3)
In the Wilkinson Sword case,14 3 it was held that the mark
WILKINSON SWORD and a design mark based thereon were not
validly registered because the marks had been recently assigned in
gross to Wilkinson Sword (Canada) Ltd., the Canadian Company,
from the English parent, Wilkinson Sword Limited, without any
corresponding assignment of any good will or business. Razor Blades
as manufactured and packaged by the English Company, and as
manufactured by the English Company and packed by the Canadian
Company, each bearing the identical marks were concurrently availa-
143 Wilkinson Sword (Canada) Ltd. V. Arthur Juda, (1967), 34 Fox. P.C. 77,
51 C.P.R. 55. See also Sarco Canada Ltd. v. Sarco Co. Ino., (1969), 56 C.P.R. 80,
(1968), 38 Fox P.C. 165, a decision of the Exchequer Court of Canada, rendered 19
June, 1968, wherein it was ordered that a registered trade mark “Sarco” be
expunged from the Register because it was not distinctive. In that case, the
plaintiff was entitled under an agreement with the defendant-registrant, to use
the trade mark. It was proved that the mark was in use by both plaintiff and
defendant on wares which they’ respectively manufactured and subsequently
sold in the Canadian market; that Canadian purchasers knew “Sarco” represented
either wares manufactured by the plaintiff or wares manufactured by the
defendant.
Although the court did not mention the registered user provisions of section
49 of the Act, it would appear that if the “agreement” had been registered
pursuant to that section the use by the plaintiff would have been deemed to
have been use by the defendant and distinctiveness of the mark would not
have been lost.
No. 3]
TRADE MARK EXPUNGEMENT UNDBR CANADIAN LAW
4W
ble on the market to the Canadian public. The Court found that
the English Company had assigned (and hence abandoned) its mark
to the Canadian Company but because the Canadian Company had
not also received an assignment of the goodwill and business of
the English Company, for Canada, the assignment was void on
public policy because the marks had become, on assignment, a badge
or identification of a source (Canadian) other than that source
(English) which they had up to that time represented. The marks
would thus be confusing to the Canadian public as not properly
identifying source especially since blades from both sources (Cana-
dian and English) were currently on the market and the public
could not distinguish one from the other because not only were the
same marks used but the packages were identical in adl material
respects.
It can be appreciated from Wilkinson Sword and CHEERIO that
improper user implies an abandonment on the part of the proprietor.
Nevertheless, as we have seen, there is no identity between abandon-
ment and non-use. The former implies an intention to surrender or
give up control while the latter may imply it.
The distinction between abandonment and use can be better
appreciated when the meanings of those words are carefully com-
pared. 144 The act or fact of using, holding, or possessing land or
property so as to derive revenue, profit or other benefit is a con-
tinued use, exercise, or enjoyment of a right, which may be pre-
sumptive right arising from use; but non-use is not a presumptive
abandonment but rather a, neglect to use a right, by which it may
become void. Abandon is the act of abandoning, that is, the act
of surrendering or relinquishing a claim. It may take the form of
an act of ceasing to hold, use or practice something. It
is for
144 The Shorter Oxford Dictionary provides the following definitions:
The act or fact of using, holding, or possessing land or other property so as
to derive revenue, profit, or other benefit from it.
User
Continued use, exercise, or enjoyment of a right; presumptive right arising
Use
from use.
Non-user
Abandon
Neglect to use a right, by which it may become void.
To give up to the control of another, surrender to another. (Transitive sense).
To relinquish a claim to underwriters. To cease to hold, use, or practise; to
give up, renounce.
Abandonment
The action of abandoning, or the condition of being abandoned; abandoning
an interest or claim.
McGILL LAW JOURNAL
[Vol. 15
that reason the mark CHEERIO was lost because Dubiner relin-
quished control of it and ceased to hold it exclusively when he
omitted to make the use of that word in the trade name of Cheerio
Toys and Games Ltd., a condition and term of the registered user
agreement.
It is for this reason, non-use can be excused if there is a con-
tinuing intention by the proprietor to use, which is frustrated by
external uncontrolable events.
D – NEWFOUNDLAND REGISTRATIONS
“Marks which were registerable
in Newfoundland prior
to
Confederation still enjoy the privileges of former Newfoundland
Law”. 145 One of these privileges is that marks once registered exist
in perpetuity.146 There is no requirement to renew a register trade
mark nor to actively use it. However, it appears that in order for
a mark to have become capable of registration it must have been
adopted and it “must (have been) registered for particular goods
or classes of goods”. 14 7 Nevertheless, a registered trade mark is
subject to expungement, either at the request of the registered
proprietor, to the Colonial Secretary’ 48 (now the Registrar of Trade
Marks in Ottawa), or, by a person agrieved to the Court.149 “Any
entry wrongly remaining on the register” may be attacked in Court,
but a registration “which has subsisted for seven years from the
date of the original registration… shall… be taken to be valid
in all respects, unless such original registration was obtained by
fraud or unless the trade mark offends ‘150 one of the following
conditions:
‘ 45 Supra, n. 102. See also Sec. 65 and 66 of the Trade Marks Act.
146 Trade Marks and Registration Act, Consolidated Statutes of Newfoundland,
(3rd Series), Chapter 154 amended, by the Trade Marks (Amendment) Acts
of 1943 and 1948, Statutes of Newfoundland.
Sec. 28 reads: “A trade mark once registered and destined to be the sign
in trade of the proprietor thereof, shall endure without limitation.”
147 Sec. 21. Trade Marks and Registration Act, Newfoundland. See also Sec.
24, 9, 30.
4 8 Loc. cit., Sec. 36(1) (c).
1
149Ibid, Sec. 32(a) as enacted by the Trade Marks (Anendment) Act, New-
foundland 1948, the subsection reads:
“(a) The Court may, on the application of any person aggrieved by the
non-insertion in or omission from the register of any entry, or by any
entry made in the register without sufficient cause, or by any entry
wrongly remaining on the register, or by any error or defect in any
entry in the register, make such order for making, expunging or
varying such entry, as it may think fit.”
150 Ibid.
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
43,3
(a)
(b)
(c)
(d)
is identical to a previous registered mark, or
is calculated to deceive or mislead the public, or
contains any immoral or scandalist figure, or
does not contain the essentials necessary to constitute a
trade mark properly speaking. 151
The Act also defines essential particulars which a trade mark
must possess but these do not include the requirement that the mark
be actually used..52 This is demonstrated by the THERMOS case 53
wherein Mr. Justice Kerr concluded that the only question with
respect to Newfoundland regulations was whether it was registerable
when it was registered in 1908; lack of distinctiveness at the time
the proceedings were commenced did not afford a good ground
for finding the registration invalid having regard to the way in
which the relevant legislation was set up. The registration was
thus held valid.
It
is inconsistent that Newfoundland
registrations are not
required to be actively used in order to remain on the register
especially in view of the use provisions under the Trade Marks Act.
151 These are the conditions for registration of a mark under section 26 of
the Newfoundland law.
15 2 Sec. 20(1) : “For the purposes of this Chapter, a trade mark must consist
of or contain at least one of the following essentials particulars:
(a) A name of an individual or firm printed, impressed, or woven in some
particular and distinctive manner; or
(b) A written signature or copy of a written signature of the individual
or firm applying for registration thereof as a trade mark; or
(c) A distinctive device, mark, brand, heading, label or ticket; or
(d) An invented word or invented words; or
(2) There may be added to any one or more of the essential particulars
mentioned in this section, any letters, words or figures, or any of them; but
the applicant for registration of any such additional matter must state in
his application the essential particulars of the trade mark, and must disclaim
in his application any right to the exclusive use of the added matter, and a
copy of the statement and disclaimer shall be entered on the register.
(3) Provided as follows:
(a) A person need not under this section disclaim his own name or the
foreign equivalent thereof, or his place of business; but no entry of
any such name shall affect the right of any owner of the same name
to use that name or the foreign equivalent thereof;
(b) Any special and distinctive word or words, letter, figure or combination
of letters or figures, or of letters and figures used as a trade mark
before the coming into force of these Consolidated Statutes, may be
registered as a trade mark under this Chapter.”
See. 21: “A trade mark must be registered for particular goods or classes
of goods.”
153 Supra, n. 118.
McGILL LAW JOURNAL
[Vol. 15
Under the terms of Union, 54 term 18(1) provides that the laws
of Newfoundland in force immediately prior to the date of the Union
shall continue therein as if the Union had not been made, subject
nevertheless to be repealed, abolished or altered by the Parliament
of Canada. Whether this term in fact overrides term 21 which
permits the status quo to remain vis-a-vis Newfoundland Trade
Mark registrations made before the date of Union, even though
Newfoundland is now part of the Dominion of Canada is one for
discussion by constitutional authorities. Nevertheless,
it would
appear that by the combined effect of term 21 and the fact that
trade marks are in the exdlusive jurisdiction of the Dominion, 1 ‘
the Parliament of Canada has the authority and the power to alter
the Newfoundland trade mark law. If the Newfoundland Act were
altered to require a use of a registered trade mark, the major
inconsistencies between the Newfoundland Trade Marks Act and
the Trade Marks Act would be circumvented. This would also give
an applicant or registrant under the Trade Marks Act some ability
to challenge the validity of a Newfounland registration and hence
to expunge it for non-use, which in turn would make available the
possibility of obtaining a registration which would apply to all
Provinces of the Dominion including Newfoundland. For example,
assume that an applicant applies for the registration of a trade mark,
which he has used extensively in Ontario, Quebec and Manitoba.
Assume also that the identical mark was registered in Newfoundland
in 1930 but has not been used since 1935. Since the Newfoundland
trade mark register does not form part of the Register kept under
the Trade Marks Act,156 a trade mark registered in Newfoundland
is not a “registered trade mark” as defined by the Trade Marks Act.
As a result, there is no absolute bar to obtaining registration of the
mark under the Trade Marks Act and hence the mark will issue
into a registration applicable to all Provinces except Newfoundland.
If the Newfound-land registration is not in fact used there is no
logical reason why there should not be some procedure to expunge
154 Union of Newfoundland Act, 13 Geo. VI, S.C. 1949, c. 1.
55British North America Act, 1867-1949, as found in R.S.C. 1952, Volume 4;
‘
particularly as to “the regulation of trade and commerce” of section 91 of
the 1867 Act, per Lord Aitkin in Attorney General for Canada et al, [1037]
A.C. 405, at p. 417.
156 The Trade Marks Act, Sec. 26
(1) defines the Register as the register
maintained pursuant to the Trade Marks Act as well as the register which
was maintained pursuant to The Unfair Competition Act. Section 23(1) of
The Unfair Competition Act defines the register as the register maintained
pursuant to that Act and the register existing under the Trade Marks and
Design Act.
No. 3] TRADE MARK EXPUNGEMENT UNDER CANADIAN LAW
435
the mark in order that a fegistration under the Trade Marks Act
could become all inclusive in each Province of Canada.
If an amendment were made to the Newfoundland Trade Marks
Act it would also be advisable for the legislation to indicate which
Court had jurisdiction in expungement proceedings.
is now
certain’157 that, by virtue of the Union, the “Court” referred to in
the Newfoundland Act would now be the Exchequer Court of Canada
but careful reading of the terms of Union does not exclude the
possibility that the relevant Court might also be the Supreme Court
of Newfoundland.
E – CONCLUSIONS
It
Although a foreign applicant may have preferred rights to obtain
registration of a trade mark in Canada, the registration if granted,
would be liable to expungement if the mark were not in fact used
in Canada in some way. Advertising, per se is not a use of a
trade mark in Canada but may amount to a “make known”. But a
make known must be an extensive knowledge of the mark throughout
Canada rather than an extensive knowledge in a part or region
of Canada. In any event, a “make known” is not a “use”.
If, on the other hand, there is some service which is performed
in Canada, which is related to the wares or to the services with
which the mark is ordinarily used outside of Canada, and there is
a “make known” as by extensive advertising in Canada, there would
appear to be a sufficient “use” of the mark to validly sustain the
registration. This is because those services which are in fact
performed in Canada, though not the services for which the mark
is extensively known, are sufficient, along with the extensive know-
ledge of the trade mark, to establish a good will and reputation
of that mark, which the owner thereof is entitled, at common law,
to protect in a passing off action.
Although use is the dominant requirement in order to sustain
a valid registration, non-use of the mark will not invalidate the
registration if there is no intention to abandon the mark. Corre-
spondingly, if there are special circumstances that excuse such
absence of use, a registered mark will not be expunged.
There is no identity between abandonment and non-use. The
former implies an intention to surrender or give up control while
the latter may imply it. On the other hand, non-use may be excused
where there is along with the proprietor’s continuing intention to
use, there is a frustration of that intention, as by external uncon-
trollable forces.
157 In Thermos, supra, n. 118. Mr. Justice Kerr rejected the contention that
the Exchequer Court had no jurisdiction in relation to Newfoundland registrations.
