Supreme Court of Canada
DeKuyper v. Van Dulken and Van Dulken v. DeKuyper (1895) 24 SCR 114
Date: 1895-01-15
John DeKuyper & Son (Plaintiff)
Appellants
And
Van Dulken, Weiland & Co. (Defendants)
Respondents
Van Dulken Weiland & Co. (Defendants)
Appellants;
and
John De Kuyper & Son (Plaintiff)
Respondents
1894: Oct. 2, 3; 1895: Jan. 15.
Present:—Sir Henry Strong C.J., and Taschereau, Gwynne, Sedgewick and King JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA.
Trade mark—Jurisdiction of court to restrain infringement—Effect of—Rectification of register.
In the certificate of registration the plaintiffs' trade mark was described as consisting of "the representation of an anchor, with the letters 'J. D.K. & Z.' or the words 'John DeKuyper & Son, Rotterdam, & Co.' as per the annexed drawings and application," In the application the trade mark was claimed to consist of a device or representation of an anchor inclined from right to left in combination with the letters "J.D.K. & Z." or the words "John DeKuyper &c., Rotterdam," which, it was stated, might be branded or stamped upon barrels, kegs, cases, boxes, capsules, casks, labels and other packages containing geneva sold by plaintiffs. It was also stated in the application that on bottles was to be affixed a printed label, a copy or facsimile of which was attached to the application, but there was no express claim of the label itself as a trade-mark. This label was white and in the shape of a heart with an ornamental border of the same shape, and on the label was printed the device or representation of the anchor with the letters "J. D. K. & Z." and the words "John De Kuyper & Son, Rotterdam," and also the words "Genuine Hollands Geneva" which it was admitted were common to the trade.
[Page 115]
The defendants' trade mark was, in the certificate of registration, described as consisting of an eagle having at the feet "V. D. W. & Co." above the eagle being written the words "Finest Hollands Geneva;" on each side are the two faces of a medal, underneath on a scroll the name of the firm "Van Dulken Weiland & Co." and the word "Schiedam," and lastly at the bottom the two faces of a third medal, the whole on a label in the shape of a heart (le tout sur une étiquette en forme de cœur). The colour of the label was white.
Held, affirming the judgment of the Exchequer Court, that the label did not form an essential feature of the plaintiffs' trade mark as registered but that, in view of the plaintiffs' prior use of the white heart-shaped label in Canada, the defendants had no exclusive right to the use of the said label, and that the entry of registration of their trade mark should be so rectified as to make it clear that the heart shaped label formed no part of such trade mark. Taschereau and Gwynne JJ. dissenting on the ground that the white heart shaped label with the scroll and its constituents was the trade mark which was protected by registration and that the defendants' trade mark was an infringement of such trade mark.
Appeals from a decision of the Exchequer Court of Canada by John De Kuyper & Son, the plaintiffs in the action, and by Van Dulken, Weiland & Company, the defendants.
The action was begun in the Exchequer Court by statement of claim, on 19th January, 1892, after the coming into force of the Acts chaptered 26 and 35 of the Parliament of Canada, passed in 1891.
The plaintiffs complain in their action that the defendants' registered trade mark is an infringement and an imitation of that of the plaintiffs, and that the registration of the defendants' trade mark was improvidently allowed to be made, and they ask for a declaration and judgment accordingly, as well as for the cancellation of defendants' trade mark and for an injunction and for damages, and also for a declaration of ownership in favour of plaintiffs, apart from the registered title.
The pleadings are fully stated in the report of the case in the Exchequer Court Reports (1.)
[Page 116]
In 1875 plaintiffs applied for the registration of their trade mark under the Act then in force, viz., the Trade Mark Act of 1868.
The application was as follows:—
To the Minister of Agriculture,
Ottawa.
Sir,—I, John De Kuyper for and on behalf of the firm of John De Kuyper & Son, carrying on business as distillers in Rotterdam, Kingdom of the Netherlands, hereby furnish a duplicate copy of a trade-mark, which I verily believe is the property of our firm on account of having been the first to make use of the same.
The said trade-mark consists of a device or representation of:
On the casks containing our Geneva is marked near or under bung,
hot iron brand.
J. D. K. & Z.
and on one head is painted in black letters
ROTTERDAM.
On the cases and boxes on the fore-side right hand is painted, in white letters,
[Page 117]
and amid at the foot, in an unpainted spot, in hot iron brand
J. D. K. & Z.
On the bottles is affixed a printed label
and the corks green waxed and sealed with the seal
J. D. K & Z.
[Page 118]
The whole or any part thereof forming our trademark. The said device may be branded or stamped upon barrels, kegs, cases, boxes, capsules, corks, labels and other packages containing Geneva sold by us, and I hereby request the said trade-mark to be registered in accordance with the law.
In testimony thereof I have signed in the presence of the two undersigned witnesses at the place and date hereunder mentioned.
Witnesses:
(Sgd.) Charles De Kuyper. (Sgd.)
" Jacob Van der Plas. JOHN DE KUYPER.
ROTTERDAM, 3rd March, 1875.
The trade mark was duly registered and the Minister through his deputy forwarded to plaintiffs the following certificate of registration:—
This is to certify that the trade-mark which consists of the representation of an anchor with the letters J. D. K. & Z or the words John de Kuyper, Rotterdam, &c., &c., as per the annexed drawings and application has been registered in
"The Trade Mark Register No. 4, Folio 666," in accordance with the "Trade-Mark and Design Act of 1868." By John de Kuyper, one, and on behalf of the firm
JOHN DE KUYPER & SON,
of Rotterdam, Kingdom of the Netherlands, on the 21st day of April, 1875.
Department of Agriculture,
Ottawa, Canada, this 21st (Sgd.) J. C. TACHE,
day of April, A.D. 1875. Deputy Min. of Agr.
The defendants applied for registration of their trademark, under the Act of 1879, as follows:
[Page 119]
Au Ministre de l'Agriculture,
Branche des marques de Commerce et des droits; d'Auteurs,
Ottawa.
Je, Damase Masson, de la Cité de Montreal, Comté d'Hochelage, un des représentants au Canada de la maison Van Dulken Weiland & Co. de Rotterdam, I Hollande, et autorisé par eux, transmets ci-joints copies en double d'une Marque de Commerce Spéciale (conformément aux clauses 9 et 10 de l'Acte des Marques de Commerce et des Dessins de Fabrique de 1879) dont je réclame la propriété parce que je crois sincèrement qu'ils en sont les véritables propriétaires.
Cette marque de Commerce Spéciale consiste en un Aigle ayant à ses pieds VD W. & Co. au-dessus de l'aigle sont écrits les mots "Finest Hollands Geneva;" de chaque côté sont les deux faces d'une médaille; en dessous sur une guirlande le nom de le maison "Van Dulken, Weiland & Co." puis le mot "Schiedam" et enfin au bas les deux faces d'une troisième médaille. Le tout sur une étiquette en forme de cœur.
Je demande par ces présents l'enrégistrement de cette marque de commerce spéciale conformément à la loi.
J'inclus un Mandat de Poste No. 7852, montant de la taxe de $25 requise par la clause 12 de l'Acte précité.
En foi de quoi j'ai signé en présence de deux témoins, soussigné aux lien et date ci-dessous mentionnés. Montréal, 27 Mars, 1884.
Témoins:
(Sgé.) L.P. PELLETIER.
H.P. BRUYÈRE.
Ottawa, 7th January, 1893. Attested,
J. LOWE,
Dep. of the Min. of Agr.
[Page 120]
This also was duly registered, and the following certificate of registration forwarded to defendants:—
"Canada:
Les présentes sont à l'effet de certifier que la Marque de Commerce (Spéciale) laquelle consiste en un aigle ayant à ses pieds VD. W. & Co., au-dessus de l'aigle sont écrits les mots 'Finest Hollands Geneva'; de chaque côté sont les deux faces d'une médaille; endessous, sur une guirlande, le nom de la maison 'Van Dulken Weiland & Co.,' puis le mot 'Schiedam,' et enfin au bas les deux faces d'une troisième médaille, le tout sur une étiquette en forme de cœur tel qu'il appert par l'étiquette et la demande ci-contre.
A été enrégisté au 'Régistre des Marques de Commerce No 10, Folio, 2242.' Conformément à 'l'Acte des Márqués de Commerce et Dessins de Fabrique de 1879,' par Van Dulken, Weiland & Co., de Rotterdam, Hollande, ce 2ème jour d'avril A.D. 1884.
Ministère de l'Agriculture, (Branche des
Marques de Commerce et Droits d'Auteurs.
J. LOWE,
Deputy of the Minister of Agriculture.
Ottawa, Canada, ce 7ème jour de janvier A.D. 1893.
[Page 121]
The Exchequer Court held that the heart-shaped label was not an essential part and feature of plaintiffs'; registered trade mark, and that defendants were not entitled to claim or to register a heart-shaped label as an essential feature of their trade mark (which the judgment declared they had done);' and ordered that the registration of their trade mark should be varied by I striking out therefrom the words "en forme de cœur"; and further ordered the defendants to pay the general costs of the action and of the issue upon which the variation of defendants' registration was directed; but giving no other relief to the plaintiffs.
The plaintiffs appealed from the whole judgment, and the defendants from that portion of it which directs the registration of their trade mark to be amended, and which orders them to pay the general costs of the action; and they also appealed from the judgment on the question raised by the demurrer in the first instance and again at the trial as to the jurisdiction of the court and the insufficiency in law of the case as alleged by the plaintiffs.
The two appeals were argued together.
Abbott Q.C., Campbell with him, for the plaintiffs.
We appeal from that part of the judgment of the Exchequer Court which holds that the plaintiffs' trade mark cannot be protected except so far as registered, and that all that was registered was the anchor and the name of the firm; and we also claim that more of the defendants' label should have been cancelled.
In the first place, the most striking feature in the whole device is the shape and arrangement. The heart-shaped scroll is of itself unusual, whether upon a label cut of that shape or not. Then the scroll-work, it will be observed, is parallel to the cut border of the label, and therefore accentuates its effect. In the second place, the scroll work itself is constructed in a peculiar
[Page 122]
and identical way in the two labels, that is to say, it consists of a similar alternation of one oval and two round links. The next point of similarity is the way in which in one case the words "Genuine Hollands," and in the other the words "Finest Hollands" are placed in a curve in the upper portion of the label in identical type and with a scroll beneath. Then the printing of the word "Geneva" is in similar type, and the type itself is of an unusual character, that is to say, whilst the letters are in black, there is a line of shading drawn around the margin of each letter at a certain distance from it, which undoubtedly has the effect of catching the eye. Then the name of the makers is affixed on a curved scroll or ribbon similarly arranged and in the same position in each label. In fact, all the constituent parts of the labels occupy the same relative positions in each with the result that the tout ensemble or general appearance of the two labels constitutes a striking resemblance with part differences in the details which would not be noticed by an ordinary purchaser. To sum up, the defendants' label is of the same shape, the same colour, the same size and the same general design as the plaintiffs' and contains similar words and devices, which, though differing in detail, are combined in such a manner as to give the same appearance.
An examination of the two labels will show the marked similarity, not only in general effect but in detailed work, between them.
The statute authorized the plaintiffs to register a label and in the present case they did actually produce a label.
The label is far more explicit than any descriptive words. The actual drawings and written description, however, to-day stand registered in the books of the department, as appears by the evidence of the
[Page 123]
custodian of the original. This evidence is sufficient to clear away the ambiguity of the deputy minister's certificate relied on by the court below, if any there be, for if the minister register, as he was bound to do under the statute, and as this certificate shows he did in this case, neither he nor his deputy, by limiting the form of the certificate, could take away the rights of the parties. Nothing could give to any person examining the books a better idea as to what the plaintiffs' label really was than the label itself, and this was actually attached to and formed part of the description and is the best drawing possible. It is therefore erroneous to say that the certificate limits them to their name or initials and the anchor, or that they have accepted any such limitation, if by acceptance is meant that they have acquiesced and are in some way estopped now from rejecting it. See Fouillet on trade marks, No. 37.
Further, upon a strict application of the rules of pleading as enforced under the Judicature Acts, which are the rules in force in the Exchequer Court, the issue raised by the defendants did not go to the question of the actual registration of the label, and it must be held to be admitted that all they say is that we are not entitled to the exclusive right of issuing this white heart shaped label.
Under the circumstances, looking at both labels which are in evidence, we cannot come to any other conclusion than that any ordinary incautious person would be deceived; that we are "an aggrieved person" and entitled to contend that the defendants' label was wrongly on the register and that a judgment should be entered ordering the cancellation of the defendants' trade mark.
[Page 124]
Powell v. Birmingham Vinegar Co..
Ferguson Q.C. and Merrill for defendants.
Our first point is that the heart-shaped label of the plaintiffs was not registered, and that issue has been clearly raised by our defence. This point has been found in our favour, but the court went further and held that under the Exchequer Amendment Act of 1891 our trade mark should be corrected, as the heart-shape was in public and common use, and that part of the judgment we object to by our appeal. The jurisdiction of the Exchequer Court is confined to causes of action arising out of registered trademarks or with regard to trade marks which it is sought to register or to amend the registration of.
Infringement or imitation by defendants of the plaintiffs' trade mark must, in order to create a cause of action over which this court would have jurisdiction, be an infringement or imitation of plaintiffs' registered trade mark. The only imitation or infringement in reality complained of by the plaintiffs is the adoption by the defendants of a heart-shaped label as part of their registered trade mark and the use of it by them in their business.
There is no statement by any witness that the plaintiffs were the owners, or were the first to use the heart-shaped label. No member of plaintiffs' firm gave any evidence at all in the case; and the declaration filed on their application to register their trade mark does not state that they were the sole owners of the right to use this shape of label as a trade mark, or as a part thereof, or that they had first used it; whilst, on the other hand, there is ample evidence to show that such a shaped label had been used by other manufacturers of gin for years, without question or objection on plaintiffs' part.
[Page 125]
The court should not by implication or inference read into the claim for, or record of the registration of, a trade mark elements or features not expressly claimed in the application for registration as a part of the mark, or not expressly mentioned in the certificate of registration as being a part of the trade mark.
There is not the slightest reference in the certificate granted by the department to a label of any kind as being a part of the trade mark, but the mark is referred to as consisting of "the representation of an anchor," with certain letters and words. The anchor is apparently the essential and really the only distinctive device in the trade mark, the words or letters being merely descriptive and used in connection with the anchor, the only reference to a label being the same as is made to stamping or branding, that is to indicate how the trade mark may be put upon bottles to take the place of branding or stamping in applying it to other packages.
Apart from the heart-shape of the label the plaintiffs do not seriously pretend that the defendants' registered trade mark is an imitation or infringement in any respect of the plaintiffs' trade mark.
The learned counsel referred to R.S.C. ch. 63, sec. 19.
The judgment of the majority of the court, the Chief Justice and Sedgewick and King JJ., was delivered by:
KING J.—This is an action in the Exchequer Court to restrain defendants from infringing plaintiffs' trade mark. Both parties reside in Holland and are distillers of gin.
In 1875 plaintiffs applied for the registration of their trade mark under the Act then in force.
[Page 126]
In 1884 the defendants applied for registration of their trade-mark under the Act then in force.
What is in contest in this action is the label as used by the respective parties upon the bottles containing their gin.
The plaintiffs contend that their registered trade mark, as applied to bottles, consists in a heart-shaped label "upon which, around and parallel to the border is printed a scroll, also heart-shaped, with at the top, in the semi-circle at each side of the heart, the word "genuine" on the one side, and "Hollands" on the other, with a slight scroll underneath each word; across the top of the centre of the label the word "Geneva," in large letters, beneath which are the anchor and letters as in the hot iron brand with a flourish on each side of the anchor, and on the bottom part of the centre of the label the words "John De Kuyper & Son," below which is the word "Rotterdam," and below that a leaf pattern.
They complain that defendants' label is in its essential particulars the same as the said trade mark of plaintiffs, and is an infringement on and an imitation of the registered brands and trade marks of the plaintiffs, and so resembles the same as to be likely or calculated to deceive and to mislead the public, both by reason of its shape and colour (white), and the scroll, garland and words upon it, and its general appearance, and because that the registration of it conflicts with the registration of the brands and trade marks of plaintiffs, and was made without sufficient cause.
The defendants deny that the plaintiffs are entitled to the exclusive right to use a heart-shaped label either by virtue of the registration of their trade mark or by prior ownership, and allege that heart-shaped labels were in common and general use in the spirit trade
[Page 127]
long prior to plaintiffs' registration. They also allege that the essential features of plaintiffs' trade mark, and those by which plaintiffs' Holland gin was known, are the design of the anchor and the name "De Kuyper," while the essential and distinctive features of defendants' trade mark are the design of the eagle and the name "Weiland," and that neither the heart-shape of the label or the scroll, either separately or together, are essential features by which either plaintiffs' or defendants' gin is known or asked for in the market. They allege that the essential features of the trade marks are different, and that defendants' trade mark is in no respect calculated to mislead or deceive the public, &c.
The learned judge of the Exchequer Court was of opinion that the essential particular of plaintiffs' trade mark is the anchor in combination with the letters J. D. K. & Z., or with the words, John De Kuyper & Son, Rotterdam, and that the plaintiffs had not claimed to register a label, or claimed the form of the label as part of the trade mark.
He also thought that the differences between the labels were such as to prevent persons of reasonable care and caution from mistaking one for the other, while at the same time holding that "the fair inference from the facts and circumstances disclosed by the case is that the defendants, while not perhaps attempting to sell their Geneva as that of the plaintiffs, thought to gain a trade advantage by adopting and using a label which in shape and colour resembled that used by the plaintiffs, though otherwise distinguishable from it."
The learned judge therefore declined to give plaintiffs the relief asked for, but at the same time declared that the defendants were not entitled to claim or to register as an essential feature of their trade mark a
[Page 128]
heart shaped label, as they had done in their application, and ordered that the entry of the registration of defendants' trade mark be varied by striking therefrom the words "en forme de cœur." Ordering also that defendants pay the general costs of the action and of the particular issue involved in the paragraph respecting the form of defendants' trade mark.
Both parties have appealed, each from so much of the order as is against them respectively.
First as to plaintiffs' appeal. What is plaintiffs' registered trade mark? And has it been infringed by defendants? A label is a vehicle for a common law trade mark rather than a common law trade mark of itself. But by 31 Vic. c. 55, the Trade Mark Act of 1868, it is enacted that "for the purposes of the Act all marks, names, brands, labels, packages or other business devices which may be adopted for use by any person in his trade, &c., for the purpose of distinguishing any manufacture, product or article by him manufactured, produced, &c., packed or offered for sale, no matter how applied, whether to such manufacture, product or article or to any package, parcel, case, box or other vessel or receptacle containing the same shall be considered and known as a trade mark and may be registered, &c."
The conditions and mode of registration are defined in sec. 1. The minister of agriculture, it is enacted, shall keep a trade mark register in which any proprietor of a trade mark may have the same registered by depositing with the minister a drawing and description in duplicate of such trade mark together with a declaration that the same was not in use to his knowledge by any other person than himself at the time of his adoption thereof, and the minister on receipt of the fee thereinafter provided shall cause the trade mark to be examined to ascertain whether it resembles any other
[Page 129]
trade mark already registered; and if he finds that such trade mark is not identical with, or does not so closely resemble as to be confounded with, any other trade mark already registered, he shall register the same and shall return to the proprietor thereof one copy of the drawing and description with a certificate signed by the minister or his deputy to the effect that the trade" mark has been duly registered in accordance with the provisions of the act, &c."
The fee referred to is provided by sec. 28, and is the sum of $5 on every application to register a (design or) trade mark including certificate.
The Act seems to contemplate that but one trademark shall form the subject of any single application. The plaintiffs' contention is that at least two distinct trade marks formed the subject of their application, that consisting of the anchor with name or initials, and that consisting of the label.
As already stated, the Act authorizes the registration of a label as a trade mark. In such case it would appear requisite that the label should, in analogy with the general law of trade marks, have a distinctive character. It would be only thus that the person could be said to be proprietor of it.
In the case of a label registered as a trade mark the trade mark does not he in each particular part of the label, per Lord Esher in Pinto v. Badman, but in the combination of them all.
In the case before us, if the plaintiffs have registered their label they are to be protected against any imitation with mere colourable variations of the label as a whole. If it is registered and if it has been imitated in a way calculated to deceive ordinary purchasers of the article, the rights of the plaintiffs as the holders of the registered trade mark are to be protected.
[Page 130]
I must say that from looking at the two labels I am inclined to go further than the learned judge, and to hold that defendants' label is calculated to deceive persons into thinking that they are purchasing the goods of the plaintiffs. Upon the evidence I think that the defendants' label was prepared for the purpose of coming as closely as defendants thought they could safely come to that of the plaintiffs. Although Anderson's evidence was broken down to some extent, the fact that defendants sought and obtained a commission for the express purpose of contradicting it, and then did not follow it up, leads me to place some reliance upon it. The learned judge has himself said that defendants sought to get a trade advantage by using a label which in shape and colour resembled that used by plaintiffs. What trade advantage would there be in it unless the shape and colour were associated in the minds of the ordinary purchasers with goods of the plaintiffs?
In my opinion courts ought not to hesitate to defeat tricks of trade whenever brought in question.
But then comes the most serious question in the case, viz., whether the plaintiffs' label was registered as a trade-mark.
That they intended to register the anchor with name or initials there can be no question. Did they also intend to register another trade mark, i.e. the label? And if so, did they meet the requirements of the Act in reference thereto?
The application wherever it uses definite language points to a single trade mark as its subject. Thus the applicant, one of the plaintiff firm, says: "I hereby furnish a duplicate copy of a trade mark which I verily believe is the property of our firm on account of having been the first to make use of the same."
[Page 131]
Then it is said in the application that "the said trade mark consists of a device or representation." I omit for the present a reference to what is so shown as a device or representation, merely drawing attention to what is stated in plain language. Then it is added that "the whole or any part thereof forms our said trade mark," and that "the said device may be branded or stamped upon barrels, kegs, cases, boxes, capsules, corks, labels, and other packages containing Geneva sold by us, and I hereby request the said trade mark to be registered in accordance with law." All this points to a single device, a single representation, a single trade mark; and the affirmation required by the statute is of the firm's ownership and first use of a trade mark, not of two or more trade marks. It is true that a representation is given of the label, which is heart-shaped, and has certain words and scrolls arranged in a certain way upon it, and it is not entirely easy to see why this should have been represented at all if it was not intended to register the label. But, on the other hand, the label has shown upon it the distinctive device of the anchor, with initials and name, which form the essential feature of the trade mark indisputably intended to be registered for use at least on casks, cases, boxes, &c., and it may be that the label was shown as indicating the way in which the anchor trade mark was accustomed to be, and was proposed to be, used upon bottles, just as the colour of the wax on the corks is mentioned: "and the corks green waxed and sealed with the seal
JOHN DE KUYPER & SON,
J. D. K. & Z."
At all events, the applicant has left the matter in some doubt as to what he intended. This being so let us see how it was treated by others and by himself. The minister gave a certificate of registration, treating
[Page 132]
the application as one for the registration of a single trade mark, describing it as an anchor with the name or initials, and the plaintiffs acquiesced in this for years. This has a clear bearing on the question of intention.
But further, the Act requires as a condition of registration that the applicant shall deposit with the minister a drawing and description, in duplicate, of such trade mark. Two things are required, a drawing and a description. The section speaks twice of both a drawing and a description. Here there is a drawing but no description, for the word description, as distinguished from drawing, means a verbal description. It is true that in many cases a drawing would be self-explanatory and of itself quite as plain as a verbal description, but in other cases this might not be so, and the statute in all cases requires both drawing and description.
It is true, as I mentioned to counsel on argument that such objection would appear to be against the anchor as a trade mark as well as the label. But really this is no answer. It was sufficient for Mr. Ferguson to say that he was not attacking the anchor as a trade mark. The objection is one of substance, for it is an objection that the Act has not been complied with. And further, if the proposed trade mark or trade marks had been described there would have been no doubt as to what was intended, and if the label as a proposed trade mark had been described we should have seen that, notwithstanding the apparent intention to claim one trade mark what was sought to be registered was not a single trade mark but two trade marks.
But this was not done. The omission to give a description was apparent at once in the certificate of the minister. He took it that what was intended to be registered was the anchor and name or initials, and
[Page 133]
again, I beg leave to repeat, the plaintiffs have for years acquiesced in this departmental view of it. I conclude, therefore, that the label as a trade mark was never duly registered, and that plaintiffs' appeal should be dismissed.
Next, as to the cross-appeal by defendants. The case of Powell v. Birmingham Vinegar Co., cited by Mr.] Abbott, shows that the plaintiffs are within the proper meaning of the term aggrieved parties. As to the other points involved in the cross-appeal, I am upon the whole inclined to think that the order should not be disturbed.
By reason of its merely colourable variation from a known, though not registered, label of plaintiffs I think that the defendants were not really proprietors of it.
In the result both appeals should, in my opinion, be dismissed.
TASCHEREAU J.—This case comes up upon appeals by the plaintiffs and defendants respectively.
The parties are both gin manufacturers in Holland and large exporters to Canada. The matter in dispute between them is the question of the right to a trade mark. Since the year 1865, the plaintiffs have used upon the ordinary square black bottle, in which Holland gin is sold in this country, a white, heart shaped label which is undoubtedly a striking label used in the way in which it is. On the 21st April, 1875, they registered this label under the Act of 1868. The defendants at one time used an entirely different shaped label, but on the 2nd April, 1884, they registered under the Act of 1879 a white, heart shaped label which the plaintiffs say is an infringement upon their trade marks.
The two labels are as follows:—
[Page 134]
The plaintiffs set forth in their statement of claim the deposit by them in duplicate with the minister of agriculture, in the usual way, of the drawings and description in duplicate of their trade mark, and allege that they were the sole proprietors of the mark for years previously, and acquired by the registration a further exclusive statutory right to the same, and that the label was well known and of great advantage to them in their business, that in 1884 the defendants registered their mark, which plaintiffs say is in its essential features the same, and so resembles the plaintiffs' mark as to be likely or calculated to deceive and mislead the public, both by reason of its shape and colour, and the work upon it and its general appearance, and they allege that the registration of it was made, in the words of the statute, without sufficient cause. They ask to be declared the owners, that the defendants' label be declared an infringement, that an injunction issue against them, that the judgment order the cancellation of the defendants' trade mark, and that they have such other relief as may seem just.
The defendants answer that the plaintiffs have not got an exclusive right to the heart shaped label by virtue of the registration of their said trade mark, or by prior ownership of such heart shaped label, alleging that heart shaped labels were in common and general use in the spirit trade long prior to the alleged registration by the plaintiffs of their trade mark. They go on to say that only in respect of the shape of the label and the words "Hollands" and "Geneva" do the marks resemble each other, and that those words are descriptive; that the essential features of the trade mark of the plaintiffs is really the design of the anchor and the name of De Kuyper, whilst the distinctive features of their trade mark are the design of the eagle and the name "Weiland," and that neither the heart
[Page 135]
shape of the label, the colour of the label or the scroll are essential features; and they deny that their mark is calculated to deceive. They allege that they are entitled to the full enjoyment of their mark, which they have enjoyed, they say, for more than twenty-five years, and they allege knowledge on the part of the plaintiffs, and laches and delay in seeking relief.
By their reply the plaintiffs say that they are entitled to the exclusive use of the heart shape, as set forth in their claim, and deny that labels of that shape were in common and general use in the spirit trade prior to the registration. They further say that the whole label, as described by them, is essential, and that their gin was and is particularly known by the shape of its label, but that the essential and distinguishing feature by which the defendants' gin is known was the design of the eagle and the name, but say that by the adoption of the white heart shape with the scroll, in the plaintiffs' statement of claim referred to, the same has become liable to be sold in the place of the plaintiffs' Holland gin, and the public thereby deceived and misled.
I may here incidentally remark that no attempt has been made by the defendants to prove their allegation that heart-shaped labels were in common and general use in the spirit trade prior to the registration by the plaintiffs of their trade mark, or that they themselves have used the heart-shaped label for upwards of twenty-five years.
These two allegations must, therefore, be dropped out of consideration.
By the evidence, it appears that the way this gin trade is carried on and how the plaintiffs suffer from the defendants' dealing, is as follows:—
The gin is shipped out from Holland in wooden cases containing a dozen or more bottles. On the
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outside of these cases there is nothing to show what sort of label is on the bottles. The cases are generally branded with initials and some kind of mark, the plaintiffs branding one of their registered brands on their boxes, and the defendants an eagle on theirs. In the wholesale trade, therefore, attention is not called to the labels. The different qualities of the gin are distinguished by the colours of the boxes, and the goods are known by their names. It is not contended by the plaintiffs that the wholesale trade are liable to be deceived. What they say is, that the goods, when taken out of the cases and exposed for sale are liable to be mistaken one for the other. A given number of bottles of their gin are more expensive than a similar number of bottles of the defendants' gin, and contain more gin, leaving aside the question of quality. The gin is sold by the retailers in two ways, first, by the whole bottle, and secondly by the glass. When sold by the glass it is usual to hand down the bottle to the customer. Sometimes gin from casks is put into bottles with the labels affixed and handed down in that shape. The retailers have two distinct interests in passing off the defendants' gin instead of the plaintiffs'; in the first place, if they sell it by the bottle, they have paid less for the bottle than they would for similar bottles of the plaintiffs' gin. The bottles look as if they contain the same quantity but as a fact, the defendants' bottles contain less, and therefore, the retailer makes more money by the transaction than he otherwise would do; secondly, if the goods are sold by the glass, over the counter, the cheaper quality of the defendants' gin gives him a greater profit, if he can get the same price for it per glass, and as long as he sells the defendants' gin in the defendants' bottles, under their label, he avoids committing an offence which he
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would commit, were he to sell the defendants' gin in the plaintiffs' bottles.
The judgment of the Exchequer Court finds that there might be, and probably was, a number of the purchasers of gin who would be likely to be misled and deceived, by the general resemblance of the two labels; that the plaintiffs' was well-known and had acquired a reputation throughout the province, and was known in some sections and amongst some classes by the heart-shaped label; and that the fair inference from the facts and circumstances disclosed by the case, is, that the defendants, while not perhaps attempting to sell their Geneva as that of the plaintiffs', thought to gain a trade advantage by adopting and using a label which in shape and colour resembles that used by the plaintiffs, though otherwise distinguishable from it. The court, however, concluded that it had no jurisdiction to restrain the defendants unless the use of the labels or devices constituted an infringement of a registered trade mark, and upon a consideration of the registered documents, determined that the shape had not been claimed by the plaintiffs as a part of their marks. The injunction was therefore refused, but a rectification in the entry of the defendants' trade mark was ordered by striking out therefrom the words en forme de cœur. Is the heart shape of the label a registered part of the plaintiffs' trade mark? is the question raised by them on their appeal. I am of opinion that it is; that the heart shape is an essential feature of it and that there is error in that part of the judgment of the Exchequer Court, which holds that nothing was registered by the plaintiffs but the anchor and the names or initials of their firm. The most striking feature in the whole device of the plaintiffs' trade mark, it seems to me is the shape and arrangement. The heart shaped
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scroll of itself is unusual whether upon a label cut of a that shape or not. Then the scroll work is parallel to the cut border of the label, and therefore accentuates its effect. And the scroll work itself is constructed in a peculiar and identical way in the two labels, that is to say it consists of a similar alternation of one oval and two round links.
The next point of similarity is the way in which in one case the words "Genuine Hollands" and in the other the words "Finest Hollands" are placed in a curve in the upper portion of the label in identical type and with a scroll beneath. Then the printing of the word "Geneva" is in a similar type, and the type itself is of an unusual character, that is to say, whilst the letters are in black there is a line of shading drawn around the margin of each letter, at a certain distance from it, which undoubtedly has the effect of catching the eye, Then the name of the makers is affixed on a curved scroll or ribbon similarly arranged and in the same position in each label. In fact, all the constituent parts of the labels occupy the same relative positions in each, with the result that the ensemble or general appearance of the two labels constitutes a striking resemblance, with part differences in the details which would not be noticed by an ordinary purchaser. To sum up, the defendants' label is of the same shape, the same colour, the same size, and the same general design as the plaintiffs', and contains similar words and devices, which, though differing in detail, are combined in such a manner as to give the same appearance.
An examination of the two labels will show the marked similarity, not only in general effect but in detailed work, between them.
Now, when the plaintiffs deposited that heart-shaped label to register a trade mark, they clearly, it seems to me, claimed the shape as a part of their trade mark.
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The Act 31 Vic. ch. 55, under which the plaintiffs proceeded, provides that the proprietor of a trade mark might have the same registered by depositing with the minister a drawing and description, in duplicate, of such trade mark, together with a declaration that the same was not in use to his knowledge by any other person than himself at the time of his adoption thereof. The minister was to cause the trade mark to be examined, to ascertain whether it resembled any other trade mark already registered, and if he found that the same was not identical with and did not so closely resemble as to be confounded with any other mark already registered, he should register the same. By section two, he had power to make regulations and adopt forms for the purposes of the Act, and all documents executed according to the same and accepted by the minister were to be held valid so far as relates to the official proceedings under the Act. By section three, for the purposes of the Act, marks, names,, brands, labels, packages or other business devices which might be adopted for use by any person in his trade * * * for the purpose of distinguishing any manufacture * * * should be considered and known as trade marks, and might be registered for the exclusive use of the party registering the same, and thereafter he was to have the exclusive right to use the same. It is to be noted that the depositing of the drawing and description is the only act required of the party effecting registration, except the declaration that the same was not used by any one else. It is a condition precedent apparently that the party registering is to be the proprietor of the mark. The minister's duties are to examine the trade mark, and if he finds that it is not identical with, and does not closely resemble, any other he is bound to register it. No provision is made for his altering
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or modifying it in any way. In the present instance the defendants sought to make an argument out of the words of the deputy minister's certificate. It is true that the deputy minister certified to the registration of this mark in terms that at first sight appear to be ambiguous. It reads as follows:—"This is to certify that this mark which consists of the representation of an anchor with the letters J. D. K. & Z. or the words John De Kuyper & Son, Rotterdam, &c., &c., as per annexed drawings and application, has been registered, &c., &c." The actual drawings and written description however to-day stand registered in the books of the department, as appears by the evidence of the custodian of the original. This evidence is sufficient to clear away the ambiguity of the deputy minister's certificate, if any there be, for if the minister register, as he was bound to do under the statute, and as this certificate shows he did in this case, neither he nor his deputy, by limiting the form of the certificate, could take away the rights of the parties. Nothing could give to any person examining the books a better idea as to what the plaintiffs' label really was than the label itself, and this was actually attached to and formed part of the description and is the best drawing possible. An examination of the drawings and description and of the certificate, however, show that there is no ambiguity.
The certificate, in fact, says that all the trade mark as it appears by the drawings is registered and that, in my opinion, includes the shape of it. By the very fact of presenting the unusual shape of a heart the plaintiffs gave notice that they claimed that shape as a part of their trade mark. In the case of the Leather Companies, great stress was laid in the House of Lords on the fact that the shape of the trade mark
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there impeached was different from the shape of the plaintiffs' trade mark. The case of Wotherspoon v. Currie is no authority for the proposition that the shape of a mark may not be registered as a part thereof.
In my opinion the plaintiffs have made a clear case. The defendants have used and registered a mark so I nearly resembling the mark of the plaintiffs as registered as to deceive unwary purchasers. Barsalou v. Darling. They should be restrained from doing so, and the rectification in the registration of their trade mark ordered by the judgment appealed from should also of course be maintained.
GWYNNE J.—I entirely concur in this judgment.
Appeals dismissed with costs.
Solicitors for DeKuyper & Son: Abbotts, Campbell, & Meredith.
Solicitors for Van Dulken, Weiland & Co.: Duhamel & Merrill.
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