Supreme Court of Canada
Partlo v. Todd, (1888) 17 S.C.R. 196
Date: 1888-06-14
William Partlo (Plaintiff) Appellant;
and
Thomas Todd and Martin N. Todd (Defendants) Respondents.
1888: March 22; 1888: June 14.
Present: Sir W.J. Ritchie C.J., and Strong, Fournier, Taschereau and Gwynne JJ.
ON APPEAL FROM THE COURT OF APPEAL FOR ONTARIO.
Trade mark—Infringment of—Effect of registration—Exclusive right of user—Property in descriptive words—Rectification of registry.
It is only a mark or symbol in which property can be acquired, and which will designate the article on which it is placed as the manufacture of the person claiming an exclusive right to its use, that can properly be registered as a trade mark under the Trade Mark and Design Act, 1879 (42 V. c. 22.)
A person accused of infringing a registered trade mark may show that it was in common use before such registration and, therefore, could not properly be registered, notwithstanding the provision in s. 8 of the act that the person registering shall have the exclusive right to use the same to designate articles manufactured by him. Taschereau J. dissenting.
Where the statute prescribes no means for rectification of a trade mark improperly registered the courts may afford relief by way of defence to an action for infringement.
Per Gwynne J.—Property cannot be acquired in marks, &c., known to a particular trade as designating quality merely and not, in themselves, indicating that the goods to which they are affixed are the manufacture of a particular person. Nor can property be acquired in an ordinary English word expressive of quality merely though it might be in a foreign word or word of a dead language.
APPEAL from a decision of the Court of Appeal for Ontario affirming the judgment of Mr. Justice Proudfoot, by which the plaintiff’s action was dismissed.
This was a suit for damages for infringing the plaintiff’s trade mark, and claiming an injunction. The
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trade mark was used by the plaintiff to designate a particular brand of flour manufactured and sold by him and consisted of a label on the barrels of flour as follows:—
The defendants were commission merchants and had been selling the plaintiff’s flour on commission. They was desirous of securing the sole right to sell the plaintiff’s flour in the Maritime Provinces which the plaintiff refused to give them, and they thereupon purchased flour from other millers and branded it as follows:—
and sold it with such brand on the barrel. This, the
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plaintiff claims, is an infringement of his trade mark for which he brings this suit.
The defendants claim that their brand is sufficiently unlike that of the plaintiff to prevent purchasers from being deceived, and also deny the plaintiff’s right to the exclusive use of such trade mark alleging user of the words “gold leaf” on barrels of flour by other parties.
The cause was heard before Mr. Justice Proudfoot who upheld the defendants’ contention as to user and dismissed the suit. The Court of Appeal affirmed this judgment. The plaintiff then appealed to the Supreme Court of Canada.
W. Cassels Q.C. and Hegler for the appellant.
The plaintiff rests his claim for an injunction on two grounds. First, that under the statute he has an exclusive right to the use of this trade mark and—secondly, if not, the evidence is not sufficient to destroy his right to such use.
If the plaintiff has a right to the use of the trade mark the infringement by the defendants is clear on the evidence.
The statute gives plaintiff an exclusive right to the use of the trade mark which right is absolute until the registry is cancelled.
Somerville v. Schembri and Barsalou v. Darling were cited.
McCarthy Q.C. and Moss Q.C. for respondents. Re Edwards’ Trade Mark and McAndrew v. Bassett, show that there must be property in the words constituting the trade mark to make the trade mark itself property.
Unless such property is acquired there can be no exclusive right of user conferred by registration.
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SIR W.J. RITCHIE C.J.—The defendants are simply in this position as public millers that they have the right to use this term “Gold Leaf” as a brand for patent flour of a particular description, as being “common to the trade,” that is in common use by the trade, as a distinctive term applied to flour of a particular description; a common property which anyone in the trade had the right to use; a common mark and publici juris; in other words, that it had been public property; no doubt under sec. 7 the certificate signed by the Minister or his deputy to the effect that the said trade mark had been duly registered in accordance with the provisions of this section and stating the date, month and year of the entering thereof in the register shall be received in all courts of law or equity in Canada as primâ facie evidence of the facts therein alleged without proof; but does not the very fact of the act making this certificate primâ facie evidence show that this primâ facie case may be rebutted by showing that there has been no legal registration? And this section 8, which is relied on as giving an absolute exclusive use, must be read in connection with the other provisions of the statute and it is quite clear that this exclusive use is only to attach when there is a legal registration If, then, there has been no legal registration there can be no exclusive use.
Then the question arises: Had the plaintiff any right to register this mark as his trade mark? For whom is this register to be kept? As to this the first section of the act is most explicit.
The 1st sect. of the 42 Vic. ch. 22, declares that a registry of trade marks shall be kept in the office of the Minister of Agriculture in which any proprietor of a trade mark may have the same registered by complying with the provisions of this act. Does not this clearly show that the applicant must be the proprietor
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of the trade mark he desires to have registered? And sec. 6, which provides that the proprietor of a trade mark may have it registered, requires 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.
When the applicant under the provisions of the 6th sec. signs a declaration that the same was not in use to his knowledge by any other person, he no doubt makes out a primâ facie case for registration; but does not this inferentially involve that if he did know it was in use by any other person it would not be proper that it should be registered? And does it not necessarily follow that though he may not have known that it was so in use, if in reality, as was shown in this case, it was and had been for years in common use as a mark or brand in the very article in reference to which he desires to claim an exclusive use, upon principle should he be permitted to have that exclusive use when, if the fact as it existed had been brought to the knowledge of the officer, the registration would have been refused, or to claim that simply because he had obtained an improper registration he had obtained an indefeasible exclusive right to its use? I think the learned judge was right in receiving evidence to show the invalidity of the plaintiff’s alleged trade mark.
It is not the registration that makes the party proprietor of a trade mark; he must be proprietor before he can register; so we see by sec. 17 “a suit may be maintained by any proprietor of a trade mark against any person using his registered trade mark, or any fraudulent imitation thereof, &c.”
Now, when did this plaintiff become proprietor of this trade mark, to entitle him to register it and to claim under such registration an absolute indefeasible ex-
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clusive right to it for all time to come as is claimed in this case?
I think the term “proprietor of a trade mark” means a person who has appropriated and acquired a right to the exclusive use of the mark, and where a party has a trade mark he can institute no proceedings to prevent its infringement until and unless such trade mark is registered in pursuance of this act; but this by no means implies that one man can copy and register a trade mark belonging to another or a trade mark in common use.
McAndrew v. Bassett. Lord Westbury:—
The essential qualities for constituting that property (property in a trade mark) probably would be found to be no other than these: first, that the mark has been applied by the plaintiff’s properly, (that is to say) that they have not copied any other any other person’s mark, and that the mark does not involve any false representation; secondly, that the article so marked is actually a vendible article in the market; and, thirdly, that the defendants, knowing that to be so, have imitated the mark for the purpose of passing in the market other articles of a similar description.
I think the evidence in this case shows that the name Gold Leaf had before the registration of plaintiff become public property, and that the plaintiff had not any exclusive right to the use of that term, a term which had been for years before such registration a well-known and convenient name or brand by which the article of patent flour was defined.
I think the learned judge was right in following the authority of McCall v. Theal which, in my opinion, was rightly decided.
As a public user of this trade mark previous to plaintiff’s registration, defendants were not shut out from continuing its use it by reason of plaintiff’s registration.
I think the defendants had a perfect right to question the validity of plaintiff’s claim to this trade mark, and
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to show that his ex parte proceedings in obtaining registration thereof were not justified. This is not a case between two conflicting claimants, each claiming to be entitled to this trade mark or brand, but by one of the public who claims, not the exclusive right to the trade mark but the right to use the mark or brand as being the common property of the public at large engaged in the manufacture or sale of patent flour.
The following cases show that the defendant plainly had this right:
In re J.B. Palmer’s application.
Jessel M.R.—It is clear that the 3rd section does not expressly say that the application under the 5th section shall not be made after five years, but the respondents contend that the words which I am about to read impliedly have that effect. “The registration of a person as first proprietor of a trade mark shall be primâ facie evidence of his right to the exclusive use of such trade mark, and shall after the expiration of five years from the date of such registration be conclusive evidence of his right to the exclusive use of such trade mark.” Now what is the meaning of the words, “the registration of a person as first proprietor of a trade mark?” Does it mean his registration as proprietor of “a mark,” or does it mean what it says, his registration as proprietor of “a trade mark?” I think the literal meaning is to be preferred. It is true that the registrar ought not to enter anything which is not capable of being a trade mark but he may be deceived, and that is alleged to be the case here.
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It appears to me that reason and convenience are entirely in favor of the construction which we put upon this act of Parliament. I am glad to see (though I do not know whether it ought to influence us either way) that the well known writer, Mr. Sebastian, takes the same view of the act, so that our decision will be no surprise to anyone. He says (Sebastian on Trade Marks): “The registration as a trade mark of a name of this description will somewhat complicate the question, as such registration is to be primâ facie evidence, and after five years registration conclusive evidence, of the right of the registered owner to the exclusive use of such trade mark, but this enactment does not preclude a defence on the ground that the name so registered
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is in fact no trade mark, and was registered or is continued on the register by error.” So Mr. Bryce says (Bryce on the Trade Marks Registration Acts, 1875 and 1876): “After the expiry of five years the right of the registered proprietor becomes absolute, and cannot be disputed by a defendant. But it is apprehended that after, no less than before, the expiry of the five years, the right of the registered proprietor may be contested on any ground going to show that the mark ought never to have been registered at all, for example, that it is not a trade mark within the meaning of the act.” So both writers on the subject take the same view, and go so far as to think that if a description which is not capable of being a trade mark is registered, a person who sells goods under that description, and is sued, may defend himself on the ground that it is not a trade mark, though it has been five years on the register. The question has not been argued before us, and we have not to decide it, but I am not by any means prepared to say that those distinguished writers are wrong, because the act only says that after five years the person who has registered a trade mark shall be entitled to the trade mark, but does not say that the mark as registered shall be deemed to be a trade mark.
Lindley L.J.—After careful examination of sections 3, 5 and 10, of the Trade Marks Registration Act, 1875, I am satisfied that a mark which is not a trade mark, and which therefore ought never to have been registered, does not become a trade mark by being on the register for five years.
In re Lloyd & Son’s Trade Mark. Lloyd v. Bottomley.
CHITTY J.—On the evidence it is plain that this so-called mark was common in the trade, inasmuch as it was in use by more than three persons before the application to register, and, if so, it was not a distinctive mark or device, but was common in the trade, inasmuch as it had been publicly used by more than three persons on the same or a similar description before the application to register. If so, goods having this mark on them had no distinctive mark such as was required by section 74. In re Hyde & Co’s. trade mark, the late Master of the Rolls on motion ordered the registration which had been made to be struck out. Reliance, however, has been placed on the argument on behalf of the respondents on an observation of the Master of the Rolls, which was to be found in the shorthand notes of the argument in that case. But the Master of the Rolls reconsidered the matter afterwards In re J.B. Palmer’s application, and at best it was a mere dictum. I hold, therefore, that it is competent to the applicants, notwithstanding
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the expiration of five years from the date of registration, to show that the thing called a trade mark is not a trade mark at all, and ought not to have been registered.
In re Wragg’s Trade Mark.
The registration of a mark as a trade mark and the lapse of five years do not, under sec. 76 of the Trade Marks Act, 1883, confer on the person who has made the registration an indefeasible title to the use of the mark as a trade mark if, by reason of its being at the time of registration in common use in the trade, it ought not to have been registered.
PEARSON J.—I come, therefore, to the conclusion that in the year 1876, when Mr. Wragg registered this device, it was a device which had been publicly used up to that time by more than three persons, “and had become common to the trade in such goods.”
But it is said that, because Mr. Wragg has registered, he has got an exclusive right to it. To my mind he could get an exclusive right only to that which he was authorized to register under the act, and it is quite plain that no person can with propriety go to the Comptroller and ask to register as his exclusive property a mark which is common to all persons engaged in the same trade.
I hold, therefore, that when Mr. Wragg registered this mark he registered that which he had no right whatever to register, and that he has acquired no title whatever by the lapse of time, and, inasmuch as the mark was not properly registered when it was registered in 1876, it ought to come off the register now. It ought to come off for this reason that, so long as it remains on the register, it apparently gives the person who has registered it an exclusive right to use it; it enables him, if he is minded to do that which is unjust and fraudulent, to terrify other persons by informing them that they have no right to use that which is common to the trade, because he has chosen improperly to register it as his own. I am of opinion that the five years’ registration cannot by any possibility make good that which was invalid in its inception, and on that ground I order this mark to be taken off the register, with cost to be paid by the respondent.
Edwards v. Dennis.
Bacon V.C.—The meaning of the act of Parliament is obvious enough. The whole object is that persons in the enjoyment of what are called “trade marks” shall, if they register those trade marks in the manner prescribed so that entire publicity may be given to their alleged rights, have an indefeasible right to them. That is the general scope and object of the statute.
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The Vice-Chancellor quoted the following from the judgment In re Palmer’s Application:
The Master of the Rolls proceeds to read the 3rd section of the act, and then he says: “Now what is the meaning of the ‘words the registration of a person as first proprietor of a trade mark? Does it mean his registration as proprietor of ‘a mark,’ or does it mean what it says, his registration as proprietor of ‘trade mark?’ I think the literal reading is to be preferred. It is true that the registrar ought not to enter anything which is not capable of being a trade mark, but he may be deceived, and that is alleged to be the case here. The registrar of trade marks cannot know nor can the commissioners know the meaning of all technical terms used in a trade.” Then, after dealing with the name ‘braided fixed stars,’ and with the contention of the respondents, his lordship takes the case of a man selling palm oil soap under the name of ‘palm oil soap,’ and he says: “suddenly somebody comes down against him and says, ‘I registered those words five years ago as a trade mark. I therefore change by the force of act of Parliament those words which are ordinary words of description into a trade mark, and now I am entitled to restrain you from using them.’ If this were to be allowed it would be allowing a man who had taken an improper advantage of the ignorance of the registrar, and of the commissioners if it came before them, as to the use of the technical terms of the trade, to lay a trap for an honest tradesman who had done nothing but sell his goods under their proper description.”
Cotton L.J.—In the first place what is the object of that act? Speaking generally, its object is, not to give new rights, but to place restrictions on the bringing of actions for infringement of trade marks by requiring that a trade mark shall be registered before any action to prevent its infringement can be brought. That is provided for by the first section of the act as amended by the subsequent act of 1876. Another object of the act is to facilitate evidence of title to trade marks by means of registration; for the 3rd section of the act provides that registration of a person as first proprietor of a trade mark shall be primâ facie evidence of his right to the exclusive use of the trademark, and that five years registration shall be conclusive evidence of his right to such exclusive use.
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No doubt the intention of the Act is to give a right to what is on the register so as to enable a person who has been registered for five years as the proprietor of a trade mark to maintain an action against any other person taking or infringing that trade mark;
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The 3rd section contains this provision: “The registration of a person as first proprietor of a trade mark shall be primâ facie evidence of his right to the exclusive use of such trade mark, and shall, after the expiration of five years from the date of such registration, be conclusive evidence of his right to the exclusive use of such trade mark.”
Then the 4th section continues the title of the first proprietor in the hands of a subsequent proprietor. I am not now considering how far the fact of Mr. Edwards and his predecessor having been on the register for five years is an answer to this application, though, in my opinion, it is not. It appears to me that the 3rd section is intended to afford assistance to a person who is bringing an action against another person of passing off his goods as the goods of the person who brings the action. In such a case, if the plaintiff shows that he has been on the register for five years, that dispenses with the necessity of his adducing evidence of exclusive user of his trade mark. But the third section is no bar to an application under the 5th section for rectification of the register, and in the case of such an application the court is bound to consider—as the Court of Appeal held In re Palmer’s Application—whether the trade mark is properly on the register; for, although it may have been on for five year, if it ought not to have been on at all, then it can be taken off. So that, on the question whether a trade mark is properly on the register, the 3rd section is no bar to an application to rectify the register.
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A trade mark is a mark used in trade to distinguish the goods of the person who uses it; and the act appears to contemplate a user of the particular mark contemporaneously with, if not before, registration. The first section places a restriction on actions being brought for infringement of trade marks for it says that “From and after the 1st day of July, 1876, a person shall not be entitled to institute any proceeding to prevent the infringement of any trade mark as defined by this Act until and unless such trade mark is registered in pursuance of this Act.” The person with whom the Act is dealing is a person who would have been entitled under the old law to bring an action for the infringement of his trade mark, that is to say, a trade mark actually used by him. The first section therefore assumes that it is dealing with a person who is using his trade mark.
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Lindley L.J.:
Then with regard to the five years’ registration. When we come to look at sections 3 and 5 it is clear that they do not depend on one
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another, sec. 5 not being consequent on section 3. The meaning of the sections is this: when a man brings an action for infringement, if he has been on the register for five years, sec. 3 is conclusive as to his right to bring the action, and in that particular action such registration is conclusive evidence of his right to the exclusive user of his trade mark; but having regard to section five it appears to me that the register can be rectified in respect of that trade mark, notwithstanding the five years registration, if proper proceedings are taken for that purpose.
I can discover no analogy whatever between this and a crown grant. If the legislature has not provided a special remedy to meet this case in my opinion not the courts but the law clearly gives the remedy by enabling the defendant to say: ‘You claim by virtue of a registration which, I will show, is no legal registration and therefore confers on you no rights and, therefore, I have the right to ask for a rectification of the register, and cancellation thereof, on the ground that the trade mark never should have been on it at all and should now be taken off. I entirely repudiate the idea, that this is legislation in the courts or anything else than the proper administration of the law by affording to the parties that remedy which, in my opinion, the law clearly gives him.
STRONG J.—I am of opinion that this appeal should be dismissed for the reasons given by the majority of the judges in the Court of Appeal.
FOURNIER J. concurred in the judgment of the majority of the court dismissing the appeal.
TASCHEREAU J.—I would allow this appeal for the reasons given by Burton J., dissenting, in the court below.
GWYNNE J.—The plaintiff, in his statement of claim, alleges that he is a miller engaged in the manufacture
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of flour at the town of Ingersoll, in the county of Oxford, and that some time prior to the month of October, 1884, he had perfected a certain brand of roller process flour at his mills, which he named “gold leaf” and that in order to secure the said brand of flour, so designated, from being imitated by others, and to give notice that the designation, “gold leaf,” as applied to this particular brand of flour was his sole property, he, upon the 19th of December, 1884, procured to be registered in the Department of Agriculture, at Ottawa, the said specific trade mark, to be applied to the sale of flour, which trade mark consists of the words “Gold leaf,” surrounded by the numbers 196, within a circle and, underneath the said designation, the word “flour” and the registrant’s name, the whole surrounded by the words “Ingersoll Roller Mills, Ontario, Canada.” That, since the 3rd of December, 1884, the defendants, who are commission merchants, residing and carrying on business at the town of Galt, in the county of Waterloo, have branded their flour of an inferior quality with a mark similar to the trade mark of the plaintiff, and have sold the same as purporting to be the “gold leaf” of the plaintiff, and have thereby caused the plaintiff great loss. That the flour of the plaintiff has acquired a good reputation all over the Dominion of Canada and is in great demand, and there is a large sale therefor, and that the defendant, well knowing this to be the case, and with the object and intent of selling flour of an inferior brand and less value as the flour of the plaintiff, have branded their flour with a mark similar to that of the plaintiff, and that the similarity of the said marks enables the defendants to deceive and mislead the public by selling their said flour as the flour of the plaintiff, and that the defendants do, in fact, fraudulently put their flour in the market as the flour of the plaintiff,
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to his great prejudice. That the plaintiff has suffered damage by the defendants.
1st. Destroying the sale of the plaintiff’s said flour.
2nd. Destroying the character of the said flour and deteriorating its value in the eyes of flour dealers, who, prior to this time, had dealt in “Gold leaf,” and by loss of market; that from the infringement of the said trade mark and from the facts before stated, the plaintiff has suffered great loss and the plaintiff claimed $3,000 damages and prayed that the defendants may be restrained by injunction from using said trade mark, and from selling the said flour of the plaintiff and from so branding or marking the same so as to enable others to deceive the public.
The defence of the defendants to this complaint is, in short substance that the words “Gold leaf” used in the label registered by the plaintiff, were words well known in the flour trade, and in common use by traders other than the plaintiff, and that the same was not capable of registration by the plaintiff and that the plaintiff falsely stated that the same was a new and original word or design of his own in order to obtain registration of the same, and the defendants denied that they had infringed any rights, if any were acquired by the plaintiff by such registration as in the statement of claim is alleged.
The learned judge before whom the case was tried has found as a fact, and the evidence abundantly supports his finding, that the term “Gold leaf” was a common brand for a superior class of flour made by what is called a “patent process” or “roller process,” well known by and in use in the trade for some years prior to and at the time that the plaintiff registered his label. The practice appears to be for millers, and dealers in flour upon commission also, to keep different brands of the same quality of flour. That which is
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manufactured by “patent” or “roller” process, is known to some purchasers both at home and abroad as “Ruby,” by others as “Egmont,” by others as “Nyphos” and by others as “Gold leaf,” and when a purchaser orders one or other of these brands, it is put on the flour by the miller from whom it is bought or by the commission merchant through whom it is ordered, if ordered through a commission merchant, and the brand simply designates, and is known as designating, only the quality of the flour, and as made by “patent” or “roller” process, and not at all that the flour is the manufacture of any particular mill or miller. In the autumn of 1883 the plaintiff altered his mills into “roller” mills, and then he procured one Alderdyce to cut for him a “Gold leaf” brand, but what if anything other than these words was on the brand then cut by Alderdyce does not appear, for that brand has not been produced and this brand, whatever was upon it, appears to have been the only brand with the words “Gold leaf” upon it which the plaintiff used from the 10th December, 1883, until he registered the label which has been produced upon the 19th December, 1884; but during that same period he sold to and through the defendants the same quality of flour under the brands “Ruby,” “Nyphos” and “Egmont,” and in the month of June, 1884, he sold to them for the first time the same quality of flour with the brand “Gold leaf” upon it. In the month of October, 1884, the defendants procured for themselves a brand with the words “Gold leaf” upon it. This brand the defendants had cut with the intent of making some arrangement with the plaintiff as to dealing with him and that the defendants’ said brand should be put upon all flour bought from the plaintiff by or through the defendants, but no arrangement having been come to, the defendants kept the brand, together with others which they had, and it
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is their use of this brand which is relied upon by the plaintiff as an infringement of what the plaintiff calls his trade mark.
From the above facts, which the evidence disclosed, it is apparent that every one of the material allegations, upon which the plaintiff in his statement of claim rests his case, was disproved. The term “Gold leaf” was not first introduced into use by the plaintiff as a brand of flour, nor did the term by itself ever indicate, nor was it supposed to indicate, that flour so branded was manufactured by the plaintiff or at his mills. On the contrary, when the plaintiff first converted his mills into “roller” mills and first manufactured flour by what is known in the trade as roller mill or patent process, the term was well known and in use as a brand designating a particular quality of flour manufactured by what was known in the trade as “patent process” or “roller mill process” wherever or by whomsoever the same should be manufactured; the term had no connection whatever with any particular person or mills.
Such being the purpose for which the brand was in use when the plaintiff registered his label, he had not acquired, and could not have claimed, any property in the term “Gold leaf” as a brand for flour. What constitutes, therefore, his property in the label registered by him as his trade mark is that part only of the label which indicates that flour having upon it the well known brand “Gold leaf” (which designates quality only) was manufactured by the plaintiff at his mills—namely, the words “Ingersoll Roller Mills, Ont., Can.” and “Wm. Partlo”—and it is apparent that flour having upon it the label in use by the defendants bears no indication or representation whatever that flour so branded was manufactured by the plaintiff, and the use of it, therefore, by the defendants can give to the plaintiff no cause of action or ground of complaint
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whatever. The right which a manufacturer has in his trade mark is the exclusive right to use it for the purpose of indicating where and by whom or at what manufactory the article to which it is attached was manufactured. A man may mark goods of his own manufacture either by his name or the initials of his name, or by using for the purpose any symbol or emblem, however unmeaning it may be in itself, and, if such symbol comes, by use, to be recognized in the trade as the mark of the goods of a particular person, no other person has a right to stamp his goods of a like description with a mark so resembling the mark of the former as to be likely thereby to induce incautious purchasers to believe that the goods were the manufacture of the former; but no person can acquire property in any marks, names, letters or symbols, which are known in the trade as designating quality merely, wholly irrespective of the goods to which they are affixed being the manufacture or stock-in-trade of any particular person. All manufacturers of the same description of goods have equal right to use such marks, names, &c., as are known in the trade as designating quality, and each in such case can only acquire property in some name or mark used by him in connection with such indicia of quality, as aforesaid, as will indicate that the particular article of the designated quality is of his manufacture; and if an article originally manufactured by a particular person comes to be known in the trade by the name of such person, not as expressing the maker of the particular specimen, but as describing the nature of the article by whomsoever made, every person has a right to manufacture the article bearing such name and to sell it by that name. This was one of the canons laid down by Lord Kingsdown in the American Leather Cloth Company case.
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So, likewise, no property can be acquired by any person in an English word, which is expressive of quality merely, stamped upon goods of his manufacture; this was the case of Raggett v. Findlater, in which it was held that a person could acquire no property or trade mark in the words “nourishing” stout or “nourishing” London stout, but that words added showing the name of the dealer in the article and the words, “analysed and reported on by Dr. Hassall” were words in which the party originally using them on the stout sold by him might acquire property as his trade mark. But a foreign word or a word in a dead language not known to people in general, because it is not understood, may become the trade mark of the person who first uses it upon a particular article sold by him; this was the case of McAndrew v. Bassett; so in Wotherspoon v. Currie, where the plaintiff had first applied the word “Glenfield” to starch, and under that name had introduced into the market starch manufactured by him, which, under that name, had acquired celebrity in the trade, it was held that he had thereby acquired a property in the word “Glenfield” as applied to starch. Upon the same principle the court proceeded in Braham v. Bustard, with regard to the “Excelsior White Soft Soap,” and in Ford v. Foster, with regard to the “Eureka” shirts. All these cases are commented upon, and the principle upon which they proceeded explained by Malins, V.C. in Raggett v. Findlater20.
In Seixo v. Provezende, the principle upon which relief is granted as for infringement by one of the trade mark of another is stated to be that one trader cannot
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offer his goods for sale representing them to be the manufacture of a rival trader. If what is relied upon as the trade mark by the complainant is a word or mark two questions arise:—1st. Whether the word or mark is known in the trade as specially designating the goods to which it is affixed to be the manufacture or property of the complainant; and 2nd. Whether the mark or word as used by the defendant is so similar to that used by the complainant as to be likely to induce incautious purchasers to believe that the goods offered for sale by the defendant are the manufacture or property of the complainant.
In Cocks v. Chandler, although the first manufacturer of a sauce which came to be known in the trade as “Reading sauce” had not acquired any property in the word “Reading,” and could not restrain another person from selling sauce manufactured by him under that name, yet it was held that the first manufacturer had acquired property in the word “original” prefixed to the words “Reading sauce.”
In Lee v. Haley, where the plaintiff had established his place of business on Pall Mall for selling coal where he had for many years carried on the business under the name of the “Guinea Coal Company” and the defendant many years afterwards opened a place of business upon Pall Mall also where he offered coal for sale under the name of the “Pall Mall Guinea Coal Company” it was held, although the plaintiff had not and could not have acquired any property in the words “Guinea Coal Company” as constituting his trade mark, because those words were known in the trade to designate a particular quality of coal sold at a guinea per ton, and there were a number of companies calling themselves “Guinea Coal Companies,” that the defendant should be restrained
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from using the name “Pall Mall Guinea Coal Company” on Pall Mall because it manifestly appeared on the evidence that the defendant’s object in transferring his business from where he had before carried it on to Pall Mall and in opening an office there was to obtain possession of the custom or a part of the custom which the plaintiff had established there by having had his place of business there for many years.
The relief appears to have been granted in that case not for any infringement of a trade mark but for actual fraud in the defendant offering his goods for sale and selling them under circumstances calculated to induce and which had induced persons accustomed and intending to deal with the plaintiff to believe that they were in point of fact dealing with him.
So no property can be acquired in the letters X,XX. or XXX. applied to beer as a trade mark for these letters are known to be used in the trade as designating merely the strength of the beer to which they are affixed, wholly irrespective of the person by whom the beer has been manufactured. So neither can property be acquired in the use of a crown or horseshoe or any marks or words in connection with manufactures in iron which are used in the iron trade to designate a particular description or quality of the manufacture in iron on which they are stamped, but the names or initial letters of the name of a firm which manufactures or deals in the article, in connection with any symbol designating the description or quality of the iron used in the manufacture of the article, will constitute good trade marks, as they will also when used in connection with the letters X., &c., on beer.
So far as the letters, symbols or words claimed are descriptive of quality they cannot be trade marks—no property can be acquired therein,—but when they are connected with the initials of the firm or the name of
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the works where the article is manufactured the whole combination constitutes one trade mark. In re Barrows Trade Marks.
Now, the evidence establishes that at the time the plaintiff registered his label, the words “Gold leaf” used on flour never did indicate that the flour upon which they were stamped, was manufactured by the plaintiff. They indicated merely that the flour was of a particular quality manufactured by what was known as “patent process” or “roller mill process,” by whomsoever manufactured; they gave no indication whatever as to the particular mills where, or as to the person by whom, it had been manufactured. They were, therefore, words in which the plaintiff could not have, and has not, acquired any property whatever, unless he has acquired it under and by force of the provisions of the Dominion Statute, 42 Vic. c. 22. Accordingly, it has been contended that, although these words “Gold leaf” were in common use as designating merely a particular description or quality of flour, the effect of the act is to have enabled the plaintiff by becoming the first to register a label having those words upon it to take them out of the common use to which they had been applied—to divest them of the meaning and character which, by such common use, they had acquired, and to make them his special property and, thereafter, to represent that the flour on which they are stamped is manufactured by him alone.
The argument in support of this singular contention is this—the statute, as is contended, gives to every person who first registers any mark as his trade mark a right to the exclusive use thereof, whether such mark was or not, prior to the registration thereof, capable of being recognized in law as a trade mark.
The effect of this contention, if sound, would be
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that any brewer who should first register a label with his name upon it in connection with the letters X.,XX.,XXX. would thereby acquire exclusive right to use those letters upon beer. The argument is sought to be supported by a reference to the Imperial Statute 38-39 Vic. c. 91, the 3rd section of which enacts that:
The registration of a person as first proprietor of a trade mark shall be primâ facie evidence of his right to the exclusive use of such trade mark, and shall, after the expiration of five years from the date of such registration, be conclusive evidence of his right to the exclusive use of such trade mark, subject to the provisions of this Act as to its connexion with the goodwill of a business.
and the contention upon this point is that as our statute provides (as is contended that it does in its 8th section) that immediately upon registration the person registering shall have an exclusive right to the use of the mark or label as registered by him to designate articles manufactured or sold by him without any delay of five years as is provided in the English act, and as there is in our act no clause similar to the 5th section of the English act which provides for rectification of the registry in the event of an entry upon it of a mark, &c., which could not in law be recognized as a trade mark, and in which therefore the person registering had not acquired any property, the result is that no relief can be given to any person except a person claiming a right to register as his own trade mark a mark or symbol which had been taken by another and already registered as his, and that in this latter case the party claiming to be the true owner of the trade mark registered by another can obtain relief only in the manner pointed out in the 15th section by petition to the Minister of Agriculture.
If this contention be sound there is no mode by which any relief can be obtained in a case where one trader should succeed in getting upon the registry as his trade mark a word, letter, or symbol in common
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use in the trade for the purpose of designating the nature, description or quality of an article upon which it is stamped, and in which word, letter or symbol, the principles of law established by decisions have laid down that no trader can acquire property as his trade mark. This, in fine, is the contention that to an action brought for infringement of any mark which has been registered as a trade mark, no defence whatever which calls in question the validity of the registrant’s right to the exclusive use of it can be entertained, whatever may be the law upon that point as applied to the English act, in which ample provision is made sufficient for the rectification of every case of erroneous registration. The fact that like ample provision is not made in our act would rather seem to require that the court should hold that redress can be obtained in the form of defence to an action for infringement, rather than that the statute had rendered remediless a grievous wrong. There is no case, however, in which it has been adjudged in England that the procedure provided by the English statute is the only mode in which the registrant’s title to the mark as registered by him can be disputed, and that it can not be disputed by way of defence to an action for alleged infringement. The only authority bearing upon the point would seem to lead rather to the conclusion, that in a case where a mark gets upon the registry as a trade mark which cannot, in accordance with the established principles of decided cases, be recognized as a trade mark a defendant in an action for alleged infringement of such a registered mark may call in question the registrant’s title to the exclusive use of it as his property.
Sir George Jessel, M.R. in Palmer’s trade mark case quotes with approbation the observations of
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Sebastian and Bryce, text writers upon the subject of trade marks and their registration, as follows:—
Sebastian says:—
The registration as a trade mark of a name of this description (which could not be a trade mark) will sometimes complicate the question, as such registration is to be primâ facie evidence, and after five years’ registration conclusive evidence, of the right of the registered owner to the exclusive use of such trade mark, but this enactment does not preclude a defence on the ground that the name so registered is in fact no trade mark and was registered or is continued on the register by error.
So Mr. Bryce says:
After the expiry of five years the right of the registered proprietor becomes absolute and cannot be disputed by a defendant. But it is apprehended that after, no less than before, the expiry of the five years, the right of the registered proprietor may be contested on any ground going to show that the mark ought never to have been registered at all, for example that it is not a trade mark within the meaning of the Act.
So both writers on the subject take the same view and go so far as to think that if a description which is not capable of being a trade mark is registered, a person who sells goods under that description and is sued may defend himself on the ground that it is not a trade mark though it has been five years on the register. That question has not been argued before us and we have not to decide it, but I am not by any means prepared to say that those distinguished writers are wrong, because the Act only says that after five years the person who has registered a trade mark shall be entitled to the trade mark but does not say that the mark as registered shall be deemed to be a trade mark.
And Lindley J. says:—
I will only add that I have availed myself of the opportunity afforded by the adjournment of the court of looking into some of the cases which have been decided upon similar provisions in other acts which render certificates conclusive. Thus the Companies’ Act, 1862, makes the Registrar’s certificate conclusive of the incorporation of a company, but that has been held to be confined to companies capable of being registered. There are other similar enactments which have received a similar construction. After careful examination of Secs. 3, 5 and 10 of the Trade Marks’ Registration Act, 1875, I am satisfied that a mark which is not a trade mark and which, therefore, ought never to have been registered does not become a trade mark by being on the register for five years.”
Lord Justice Cotton concurred in the judgment of the Master of the Rolls.
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Such being the opinion of those learned judges I cannot doubt that if the question had come before them in an action they must have decided that the objection taken to the registration of the words “braided fixed stars” could have been raised by the defendant in such action, for if the statute does not authorise the registration of any name or mark which is not capable of being a good trade mark, it must be only in a trade mark authorised by the statute to be registered that the statute confers on the proprietor thereof the exclusive use. Registration of a word or symbol which is not authorised by the statute to be registered as a trade mark cannot confer upon the registrant thereof a benefit which the statute annexes only to trade marks and the proprietors thereof. Eventually, in 24 Ch. D. 514, it was held that the words “braided fixed stars” were not words which the statute had authorised to be registered as a trade mark and, for that reason, the registration was ordered to be expunged.
When it appears that the word registered is not capable of being a trade mark and, for that reason, the statute had not authorised it to be registered, being registered in defiance of the authority of the statute, the statute surely cannot be appealed to as annexing to it a property which it only annexes to what it has authorised to be registered—namely, good trade marks; and, therefore, to an action complaining of an illegal use by the defendant of such a word so illegally registered, the defence that the use by the defendant was not illegal because, the word not being one which the statute had authorised to be registered, the statute had annexed no benefit to its registration, must be open.
That it is open under our statute is, in my opinion, the reasonable and necessary and, indeed, literal construction of the statute. The language of Lord Selborne
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in Leonard and Ellis v. Wells with respect to the word “Valvoline” is quite applicable to the present case; he there says:—
So long as the word “valvoline” is not used in such a manner as to represent that the article sold under that name is manufactured by the plaintiffs or by persons identified in business with the plaintiffs, it seems to me that the use of it cannot be restrained.
So, likewise, is the language of Fry L.J. in the same case; he says at p. 305:—
Then, upon the application for an injunction, the real question is this: ‘Are the defendants selling their manufacture as and for the manufacture of the plaintiffs?’ Now if the word “Valvoline” had come to mean that the article so designated was manufactured by the plaintiffs they, primâ facie, would have been entitled to an injunction.
As, however, the defendants were using the term not as meaning an oil made by the plaintiffs, but a particular kind of oil, it was held that they could not be restrained from using the word but were at liberty to manufacture that kind of oil, and to sell it under that name. So, likewise, the language of Lord Justice Cotton, in Edwards v. Dennis, is exceedingly appropriate to the present case, where he says—
A trade mark is a mark used to distinguish the goods of the person who uses it, and the act appears to contemplate a user of the particular mark contemporaneously with, if not before, registration.
And again:—
The person with whom the act is dealing is a person who would have been entitled under the old law to bring an action for infringement of his trade mark, that is to say, a trade mark actually used by him.
Construing now the Dominion statute, 42 Vic. c. 22, by the right of the principles established by these decisions, we find by the first section that the register authorised to be kept is of “trade marks” only; and that it is only a proprietor of a “trade mark” who is authorised to have his trade mark registered. That section provides the proceedings to be adopted by “the proprietor of a trade mark” to have it registered.
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By the 7th section the Minister of Agriculture is authorised only to register the trade mark of a proprietor thereof and by the 8th section 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 for the purpose of distinguishing any manufacture, product or article by him manufactured, &c., &c., shall be considered and known as trade marks and may be registered for the exclusive use of the party registering the same in the manner herein provided.”
Then by the 17th section it is the “proprietor of a trade mark” who is given an action against any person using his registered trade mark, or any fraudulent imitation thereof, and by the 4th section it is enacted that:
No person shall be entitled to institute any proceeding to prevent the infringement of any “trade mark” until and unless such “trade mark” is registered in pursuance of this Act.
We see, therefore, that the statute expresses, sufficiently clearly as I think, that the only action which the statute authorises to be brought as for an infringement of a trade mark is one which must be brought by the “proprietor of the trade mark” who has registered under the provisions of the statute the “trademark” of which independently of registration he was the “proprietor,” and that no name, brand, &c., &c., which may not be adopted by a trader for the purpose of distinguishing his goods from the goods of a rival trader, shall be considered to be a trade mark or capable of being registered for the exclusive use of the party registering.
Now, as the words “Gold leaf” stamped on flour was a brand in common use in the trade for the purpose of designating the quality merely of the flour, and the process by which it was manufactured, namely, by
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“roller mill process” or “patent process,” and not at all for the purpose of distinguishing the manufacture of the plaintiff, or of any miller in particular from the manufacture of any other, that word could not have been adopted by the plaintiff as his special property or trade mark; and it was not a trade mark within the meaning of the statute, and could not be registered for the exclusive use of the person registering, Registration therefore of such word could not vest in the plaintiff a right to the exclusive use of it as if it were a trade mark. The plaintiff’s contention, that by registering the word he could take it out of its common use and make it his own special property, (to use the language of Sir George Jessel In re Hyde’s trade mark, applied to somewhat similar facts), is not the law. The defendants in the present case do not dispute the plaintiff’s right to have adopted as his trade mark, and to have registered as such in connection with the words “Gold leaf” (as descriptive of quality), the words on his label, which are adequate to distinguish flour of his manufacture of the known description, or quality of “Gold leaf” from that of all other manufacturers, namely, “Ingersoll Roller Mills, Ont., Can.,” and “Wm. Partlo.” On the contrary, this is what the defendants contend is precisely what he has done, and as appears by his application for registry, wherein he says, in effect, that the words “Gold leaf” designate “a particular brand of flour denoting the quality thereof,” not that they are used to distinguish the manufacture of the plaintiff from that of other manufacturers of flour of the same description and quality. The evidence, however, shows that the defendants have not, upon any flour sold by them, ever used any part of these words which the plaintiff has used on his label as distinguishing his manufacture from the manufac-
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ture of other persons, and that in point of fact they never have sold any flour under circumstances which could induce any persons to suppose that they were purchasing the manufacture of the plaintiff.
The appeal, therefore, in my opinion, must be dismissed with costs.
Appeal dismissed with costs.
Solicitors for appellant: Hegler & Jackson.
Solicitors for respondents: Ball & Ball.
33 L.J. Ch. 567; 4 DeG. J. & S. 384.
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