In Re "Vulcan" Trademark, (1915) 51 SCR 411

Supreme Court of Canada

In Re "Vulcan" Trademark, (1915) 51 S.C.R. 411

Date: 1915-05-04

In the Matter of the “Vulcan” Trade Mark.

Bergeron, Whissell & Co. (Respondents) Appellants;

and

Jonkopings Och Vulcans Tandsticksfabriksak Tiebolag (Petitioners) Respondents.

1915: February 18, 19; 1915: May 4.

Present: Sir Charles Fitzpatrick C.J. and Davies, Idington, Duff, Anglin and Brodeur JJ.

ON APPEAL FROM THE EXCHEQUER COURT OF CANADA

Trade mark—Registration—Rectification of register—Jurisdiction of Exchequer Court—Construction of statute—“Trade Mark and Design Act,” R.S.C., 1906, c. 71, ss. 11, 12, 13, 42—“Exchequer Court Act,” R.S.C., 1906, c. 140, s. 23.

Under the provisions of sections 11, 12, 13 and 42 of the “Trade Mark and Design Act,” R.S.C., 1906, ch. 71, and the twenty-third section of the “Exchequer Court Act,” R.S.C., 1906, ch. 140, the Exchequer Court of Canada has jurisdiction to order the rectification of the register of trade marks, at the suit of any person aggrieved, notwithstanding that the matter has not been referred to the court by the Minister under the provisions of the “Trade Mark and Design Act.” Duff J. dissented.

The judgment appealed from (15 Ex. C.R. 265) was affirmed.

APPEAL from the judgment of the Exchequer Court of Canada[1], granting the petition of the respondents, with costs.

The circumstances of the case are stated in the judgments now reported.

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St. Germain K.C. and J. A. Ritchie for the appellants.

J. F. Edgar for the respondents.

The Chief Justice.—I am of opinion that this appeal should be dismissed with costs.

Davies J.—The only doubt I have entertained in this case arises out of the contention of Mr. Ritchie that the Exchequer Court had not jurisdiction to hear and determine it. That contention was based upon the limited construction placed by him upon the sections of the “Trade Marks and Designs Act” applicable, namely, sections 11, 12 and 13, and section 42.

An application had been made by the respondent company to the Minister for the registration of the trade mark “Vulcan” to be used in connection with the sale of their matches.

The application was refused on the ground that the word “Vulcan” had been registered as a trade mark in January, 1894, in the name of Quintal & Sons and now stood in the name of appellants, Bergeron, Whissell & Co., and that without their consent further action could not be taken by the Department.

The appellants’ contention on this branch of the case was that it was absolutely in the power of the Minister under the 12th section of the Act to refer, or decline to refer, the matter of such an application to the Exchequer Court of Canada and that unless and until such reference was made that court had no jurisdiction to deal with the matter.

Section 42 of the Act is as follows:—

42. The Exchequer Court of Canada may, on the information of the Attorney-General, or at the suit of any person aggrieved by any

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omission, without sufficient cause, to make any entry in the register of trade marks or in the register of industrial designs, or by any entry made without sufficient cause in any such register, make such order for making, expunging or varying any entry in any such register as the court thinks fit, or the court may refuse the application.

* * * * *

3. The court may, in any proceedings under this section, decide any question that may be necessary or expedient to decide for the rectification of any such register.

It was contended that this section was only for the correction of errors in the registry and that it does not extend to errors made by the authority of the Minister, but, if I understood the argument correctly, is limited to clerical errors, or errors which had crept in without the Minister’s authority. As to clerical errors, the section clearly does not refer to them. They are provided for by section 40. As to the limitation upon the section that the errors are to be confined to those made without the Minister’s authority, I cannot see any justification for it in reason or in the statute.

The error complained of in this case was in the making of an entry of the trade mark “Vulcan” in the name of Quintal & Sons in an unlimited form, which covered “matches,” as to which plaintiffs had acquired a right to a trade mark, as well as other articles about which there is no contention. It was a substantial and not a technical or clerical error and was made, as the decision in this case shews, “without sufficient cause,” within my construction of those words in the section.

The effect of the decisions under the English Act is that the words “any person aggrieved” used in both statutes embrace any one who may possibly be injured by the continuance of the mark on the register in the form and to the extent it is so registered. Re Rivière’s

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Trade Mark[2], and on further hearing[3]; Re Apolinaris Co.’s Trade Mark[4]; Re Trade Mark of Wright, Grossly & Co.[5]. Quite apart from these decisions I should have been prepared to hold that the plaintiffs are quite within the words of the section “any person aggrieved,” and are not, as suggested by Mr. Ritchie, mere “outlaws” not within the purview of the Act at all.

Then it was contended on the authority of an observation made by Lindley L.J., in Re Trade Mark “Normal”[6], at page 245, that the words “without sufficient cause” in the sections of both Acts are the controlling words and do not cover the error or mistake the plaintiff in his action seeks to have rectified. But it seems to me the observation of the Lord Justice had reference only to the question before him in the case and under the English statute he was then dealing with, namely, whether a person whose application to register a trade mark had been refused by the comptroller, could appeal direct to the court from such refusal as a person aggrieved by the omission of his name from the register under section 90 of the “Patents, Designs and Trade Marks Act, 1883,” or must take the special course prescribed by section 62 of appealing to the Board of Trade from the comptroller’s decision. The court held that the latter was his proper remedy and that an appeal did not lie to the court.

The sections in the English Act and in the Dominion Act are not at all the same. Nor is the scheme for

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the registration and control of trade mark in the Dominion analogous to that in Great Britain. Under the English Act an appeal lies from the decision of the comptroller to the Board of Trade and that body may, if they think fit, hear it themselves or may refer it to the court for hearing and in the case of such reference the court has jurisdiction to enter upon and determine all questions arising upon the objections, including, in a case where the comptroller has already registered the mark, the question whether the mark has been rightly admitted on the register. Re Arbenz’ Application[7]. An observation made by Lindley L.J., at page 264, of that case, is in point as applicable to the argument here. He says, dealing with the argument of want of jurisdiction:—

The consequence of adopting that conclusion, as was candidly admitted, would be that we shall be precluded from doing what is right upon evidence, simply because the comptroller has done what he thought was right without evidence, a state of things which would be utterly intolerable. I have no doubt whatever that on the true construction of section 69 the whole case is properly before the court, and that being so, and the conclusion at which I have arrived from the evidence being what it is, I have no hesitation in saying that, in my opinion, this appeal ought to be allowed.

Under the Dominion Act there is no appeal from the Minister’s decision and counsel for the appellants conceded that, if the Minister refused an application to register a trade mark under the 11th section of the Dominion Act and did not choose to refer to the Exchequer Court the matter of the application, the applicant, no matter how much aggrieved he might be, would be without any remedy. Lord Justice Lindley simply held that section 90 of the English Act did

not apply to the case which was for the comptroller subject to the superior control of the Board of Trade to determine.

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His reasoning would not apply to our statute which does not give any appeal from the registration of the trade mark or from the refusal to register, and if the court was without jurisdiction to give an aggrieved party a remedy there would arise what Lord Lindley calls “a state of things which would be utterly intolerable.”

Sections 11 and 42 of the “Trade Marks Act” must be read in conjunction with section 23 of the “Exchequer Court Act” which conferred jurisdiction upon that court inter alia,

in all cases in which it is sought * * * to have any entry in any registry of copyrights, trade marks or industrial designs made, expunged, varied or rectified.

The jurisdiction conferred by the words of this section is broad and general, quite sufficiently so to cover the case now before us and I decline to read a limitation into the language of Parliament which would confine that jurisdiction either to references made to the court by the Minister under section 12 of the “Trade Marks Act,” or to omissions in entries, or entries made without sufficient cause in the register of trade marks under section 42, if any such limited meaning is to be given to the words “without sufficient cause,” as counsel suggest. Such a suggested limitation would in a large measure operate to defeat the object and purpose of the “Trade Marks Act” and the jurisdiction section of the “Exchequer Court Act” above quoted.

The two statutes were passed at the same session of Parliament. The plaintiff in this case is clearly a “person aggrieved” within the words of section 42, as appears by the decisions I have referred to above and in my opinion the court had jurisdiction either under it or under section 23 of the “Exchequer Court Act,”

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to hear and determine plaintiffs’ application to have the register of the appellants’ trade mark rectified by limiting it in the manner it has done.

In Canada Foundry Co. v. Bucyrus Co.[8], a case similar to that now at bar, both in the Exchequer Court and in this court, jurisdiction was entertained without doubt or question.

As to the facts and merits of the case, 1 have only to say that I concur in the disposition of the case made by the learned judge of the Exchequer Court and with his reasoning.

The appeal should be dismissed with costs.

IDINGTON J.—If we observe the historical development of the Exchequer Court jurisdiction relative to registration of trade marks I think no difficulty in regard thereto exists in this case. Originally the Minister had been entrusted with absolute discretion free from other judicial supervision of what he might do in the course of granting or refusing registration. This was continued down to the time of the Revised Statutes of Canada, in 1886, ch. 63. By section 11 of the said chapter, formerly section 15 of 42 Vict. ch. 22, the Minister of Agriculture and his deputy were given limited judicial powers of determining the rights of rival claimants.

Evidently this, after some years’ experience in its use, had been found unsatisfactory and was repealed by 53 Vict. ch. 14, sec. 1, which substituted therefor a section giving the Minister power in such cases to defer his decision till the matter in question had been passed upon by the Exchequer Court, which was

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empowered, by section 2, to bear such cases as the Minister had found a difficulty in dealing with. The Minister was to be guided by the order of the Exchequer Court. As a precautionary measure it was declared this new section should not be held to take away or affect the jurisdiction of any other court.

The scheme provided thereby in a rather clumsy manner seems to have been found unsatisfactory. The next step was taken, in 1891, by the enactment of 54 & 55 Vict. ch. 35, sec. 1, which repealed sections 11, 12 and 32 of the Revised Statutes of Canada, ch. 63, as it then stood amended by the foregoing Act.

In substitution therefor there was enacted a judicial code, as it were, for dealing with the whole matter.

It is quite clear to my mind that there was provided by this later statute just what it enacts, that the Minister if he thought fit might refer the matter of what he is entrusted with by the first sub-section, to the Exchequer Court which in such case was empowered to hear and determine any matter so referred.

In any case so falling under that sub-section of this lastly amending Act or of the entire provision above referred to of the previous session, the argument addressed to us relative to the jurisdiction of the Exchequer Court should have been entitled to prevail.

But over and above all that, section 12 of the Act thus amended created an entirely new and independent jurisdiction in the Exchequer Court.

That section 12 is now, slightly amended, section 42 of the Act as in the Revised Statutes of Canada, 1906, and reads as follows:—

42. The Exchequer Court of Canada may, on the information of the Attorney-General, or at the suit of any person aggrieved by any omission, without sufficient cause, to make any entry in the register

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of trade marks or in the register of industrial designs, or by any entry made without sufficient cause in any such register, make such order for making, expunging or varying any entry in any such register as the court thinks fit; or the court may refuse the application.

2. In either case, the court may make such order with respect to the costs of the proceedings as the court thinks fit.

3. The court may, in any proceedings under this section, decide any question that may be necessary or expedient to decide for the rectification of any such register.

There does not seem to me any room for doubt as to the intention to create thus a jurisdiction wholly independent of the will of the Minister and that thereunder the Exchequer Court has the power to make such an order as made herein provided always the evidence warrants such an order being made and that from such order an appeal will lie here.

I can understand the contention that the facts do not warrant such an order as made herein, but I cannot quite understand any one appealing here trying to deny the jurisdiction of the court and yet appealing here.

If the contention is right appellants need not concern themselves with the result. Besides there has been in such case no final judgment. There may be an obvious fallacy in this suggestion, but 1 think it is quite as arguable as that there is no independent jurisdiction created.

On the merits of this case there seems to me to be but one rather serious difficulty, and that is that the predecessor in title of the appellant got without fraud a general trade mark registered and that the respondents failed to question it for at least sixteen years thereafter.

The effect of this under ordinary circumstances would perhaps be fatal to such a suit as this. For usually any business firm having adopted a trade mark uses it. But if we accept the learned judge’s

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view of the facts this firm, which registered what appellants now claim, never used the mark in connection with their dealings in matches. Nor did appellants until three or four years before this action.

It was so easy, if this finding is not correct, to have put the matter beyond the shadow of doubt that the finding must stand so far as I am concerned.

The match manufacturer who departs from the use of his own trade mark and fill orders for a wholesale grocer to put up matches under the latter’s trade mark I imagine does so reluctantly and only under well guarded stipulations relative thereto and tempted by better profit than he can make by adhering to his own trade mark. Such a dealing is not an ordinary everyday transaction such as a housewife ordering home a few bunches or boxes of matches in a way liable to be forgotten.

That no further proof of actual use of the trade mark was attempted than this record shews is most suggestive. That was the crucial point of this case. In it appellants fail. If they or their predecessors ever so habitually used, in relation to the selling of matches, this trade mark, they could have proved it up to the hilt and thereby invoked the authorities which might have maintained in a case so made out the abandonment of all claims on the part of respondent to interfere therewith.

The term “general trade mark” is so indefinite that I am not quite fully prepared to accept what seems to be the view of the learned trial judge that because the dealing in a particular article may properly fall within the ordinary course of a business classified as, for example, “wholesale grocers,” therefore, every possible article within that class must, for

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the purposes of this Act, be held covered by the trade mark adopted and used by a wholesale grocer.

The wholesale grocer may, in fact, confine his trade to a few articles; and he may expand or contract his list just as his capital and facilities for and perhaps necessities of business may demand.

Without going further than this to illustrate my meaning I think the course of dealing and of use of a general trade mark in relation thereto for a number of years after registration of such a trade mark may well be looked at as the measure of what was claimed and intended to be registered. If a firm having registered as herein such a general trade mark for ten or twelve or more years, never used it but for limited purposes and then assigned to another, I think that other got nothing beyond that which its assignor by use and mode of dealing had thus and thereby rendered definite.

If it had been shewn that the firm registering had prior thereto in fact used the trade mark more extensively, in the sense of covering a greater variety of kinds of articles and dealings, than it chose to apply it to later than the registration, 1 by no means think it would have lost its property therein. It is possible to lose by abandonment property of any kind. But it is not the case of abandonment by the firm registering we have to deal with so much as the finding of what the firm really intended to register.

I would measure that in such a vague and uncertain notice of registration as in evidence here and, no evidence being given of the use of such trade mark anterior thereto, by the conduct of those registering.

So looked at I cannot find the appellants ever had in law that which they claim herein. There is another

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and probably much more powerful reason for holding they never had that which they claim.

The respondent had beyond any doubt used most extensively the said trade mark all over the world, including Canada. The use thereof in Canada was not extensive, but clearly anterior to the registration, and such as to preclude the claim of the predecessor of appellants to register as regards matches, or by terms comprehensive of that which they had no legal property in or right to use.

It certainly was the property of respondent when the appellants’ predecessors appropriated it to describe what they wanted in way of a general trade mark, and any such claim as made thereby must be limited accordingly.

The registration is of that and only that which at the time of registration was the property of him registering. Clearly this registration if to be interpreted as covering the selling of matches was void, for the property therein was then in respondent and, to use the language of section 42, the entry was made “without sufficient cause.”

I must wholly dissent from the view urged so well by Mr. Ritchie that this registration creates a right not only akin to but also identical in kind with that created by a patent. The right of property always existed in a trade mark and was after much difference of opinion in regard to its being property finally so recognized about the time when our Act relative to trade marks was first passed. See the case of Leather Cloth Co. v. The American Leather Cloth Co.[9]. It is the purpose of procuring a system of registration

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of such property that is the design of the Act now in question and for the convenience and security of business men is enforced by restricting, as section 20 of the Act does, the right in law to assert the right of protecting such property.

It is just there that the necessity exists for an independent authoritative jurisdiction such as section 42 creates in order to protect those who may inadvertently have been thus primâ facie deprived of the protection in the enjoyment of their property.

I conclude that the respondent is a part thus aggrieved by the registration of something which appears to deny its right and hence entitled to invoke the powers given in said section.

The use of the trade mark by the respondent, may not have been extensive, but it was continuous from 1882 down to 1896 and cannot within the principles upon which the case of Mouson & Co. v. Boehm[10] proceeded, be held to have been abandoned toy non-use in Canada in later years.

The appeal should, therefore, be dismissed with costs.

Duff J. (dissenting).—I have been unable to satisfy myself that the Exchequer Court possesses the jurisdiction it has exercised in this case and on that ground I should allow the appeal. My learned brothers are, however, unanimous in thinking otherwise and as the point of jurisdiction involves no question of general principle, but only the construction of particular statutory provisions with respect to which the decision of this court in this case will be conclusive,

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there seems to be no object in entering at large upon my own particular views.

Anglin J.—I concur in the judgment of Mr. Justice Davies.

Brodeur J.—The respondents are manufacturers, in Sweden, of matches on which they have been using since 1870, throughout the world, the trade mark “Vulcan.” From that period to 1894 they have shipped to Canada some cases of their goods bearing that trade mark.

In 1894, the assignors of the appellants, Quintal & Sons, wholesale grocers in Montreal, had the trade mark “Vulcan” registered in connection with their business and they have been using extensively that trade mark since. Later on the firm of Quintal & Sons was dissolved and the appellants acquired the assets of that firm, including that trade mark.

The respondents, in 1910, sought to secure registration of their trade mark in Canada to be used in connection with the sale of matches. This was refused by the Minister of Agriculture because there had already been such a trade mark registered for the appellants.

The Swedish manufacturers then applied to the Exchequer Court, under section 42, to have their trade mark registered as far as matches are concerned and to expunge and vary the trade mark registered in favour of the appellants. The Exchequer Court maintained the petition and ordered that the trade mark “Vulcan” should be registered in favour of the Swedish manufacturers as far as matches were concerned and prevented the appellants using their general trade mark on matches.

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The main contention of appellants is that the Exchequer Court had no jurisdiction to deal with the matter and they rely on section 42 of the “Trade Mark and Designs Act,” which reads as follows:—

The Exchequer Court of Canada may, on the information of the Attorney-General, or at the suit of any person aggrieved by any omission, without sufficient cause, to make any entry in the said register of trade marks or in the register of industrial designs, or by any entry made without sufficient cause in any such register, make such order for making, expunging or varying any entry in any such register as the court thinks fit; or the court may refuse the application.

I am unable to agree with that proposition that the Exchequer Court was without jurisdiction.

Formerly, the Minister of Agriculture was the only authority that could decide whether a trade mark should be registered or not. (R.S.C., 1886, ch. 63, sec. 11.) Provision was made also that if there was any contest as to the rights of parties to use a trade mark, the matter could be settled by the Minister.

It was found evident that the exercise of such judicial functions was more or less advisable to be made by the Minister and, in 1890, the law was amended and it was provided that if the Minister was not satisfied that the person was entitled to the exclusive use of the trade mark, he should cause all persons interested to be notified that the question should be decided by the Exchequer Court and the entry should be subsequently made in the register after the decision of that court. Then the matter could be brought up before the Exchequer Court upon information of the Attorney-General of Canada and at the relation of any party interested (53 Vict. ch. 14, sees. 1 and 2).

The same Act of 1890 provided also that if there were errors in registering a trade mark and oversight

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in regard to conflicting registration, that could be remedied and corrected by the Exchequer Court. In 1891, Parliament dealt again with that question of jurisdiction. In proceeding to amend the “Exchequer Court Act,” it was stated that that court had jurisdiction in all cases of conflicting applications for any trade mark, or in which it was sought to impeach or annul any entry in any register of trade marks, or in cases of infringement (54 & 55 Viet., ch. 26, sec. 4).

In the same year, by the Act of 54 & 55 Vict., ch. 35, secs. 1 and 2, it was at first provided that the Minister could refuse a trade mark and then power was given to him to refer the matter to the Exchequer Court and, then, a section was enacted corresponding word for word with the above section 42 that we find in the Revised Statutes of 1906.

The history of that legislation convinces me very conclusively that the matter which was at first exclusively in the hands of the Minister and under his judicial control could now be dealt with by the Exchequer Court. The Minister can register any trade mark, or refuse registration, but that would not prevent the Exchequer Court deciding whether the trade mark had been properly registered, or whether the omission of registration had been properly decided by the administrative authority.

I am, therefore, of opinion that the Exchequer Court had jurisdiction in the premises and could give the order which has been given.

Now the evidence shews that the trade mark “Vulcan” had been used in Canada by the Swedish manufacturers before the general trade mark of the appellants was registered. Then, when Quintal & Sons applied for the registration of a general trade mark, if

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all the facts had been known, the Department would have rejected their application.

For those reasons, the judgment a quo should be confirmed with costs.

Appeal dismissed with costs.

Solicitors for the appellants: Belcourt, Ritchie & Chevrier.

Solicitor for the respondents: J. F. Edgar.