Supreme Court
of Canada
Kirstein Sons &
Co. v. Cohen Bros., (1907) 39 S.C.R. 286
Date: 1907-06-24
E. Kirstein Sons
& Company (Plaintiffs) Appellants;
and
The Cohen Brothers,
Limited (Defendants) Respondents.
1907: May 30, 31; 1907: June 24.
Present: Fitzpatrick C.J. and Davies,
Idington, Maclennan and Duff JJ.
ON APPEAL FROM THE COURT OF APPEAL FOR
ONTARIO.
Trade-mark—Infringement—Inventive term—Coined word—Exclusive use—Colourable imitation—Common idea—Description of goods—Deceit and fraud—Passing-off goods.
The hyphenated
coined words “shur-on”
and “staz-on”
are not purely inventive terms but are merely corruptions of words descriptive
of the goods (in this case, eye-glass frames) to which they were applied,
intending them to be so described, and, therefore, they cannot properly be the
subject of exclusive use as trade-marks. A trader using the term “sta-zon” as descriptive of such goods, is not
guilty of infringement of any rights to the use of the term “shur-on” by another trader as his trade-mark,
nor of fraudulently counterfeiting similar goods described by the latter term;
nor is such a use of the former term a colourable imitation of the latter term
calculated to deceive purchasers, as the terms are neither phonetically nor
visually alike.
The judgment
appealed from (13 Ont. L.R. 144), was affirmed.
APPEAL from the
judgment of the Court of Appeal for Ontario,
affirming the judgment of Mulock C.J. at the trial,
by which the plaintiffs’ action was dismissed without costs.
The action was
brought to restrain the defendants from continuing an alleged infringement of
the trade-
[Page 287]
mark “shur-on” claimed by the plaintiffs as their
registered trade-mark as applied to eye-glass frames, sold by them as traders
in optical goods, by the use of the coined word or term “sta‑zon,” as applied to similar optical goods
sold by the defendants, and to restrain them from fraudulently counterfeiting
the plaintiffs’ goods and from selling such similar
goods with the brand, label or description “sta-zon,” for an account in the usual manner and for damages.
At the trial,
Mulock C.J. held that there was no similarity in the terms in question
calculated to mislead the public and that there had been no infringement of a
trade-mark. This decision was affirmed by the judgment of the Court of Appeal
for Ontario from which the present appeal is asserted by the plaintiffs.
The questions at
issue on the present appeal are stated in the judgment of His Lordship,
Mr. Justice Davies, now reported.
Cassels K.C. and McIntosh for the
appellants.
J.H. Moss and C.A. Moss for the
respondents.
THE CHIEF JUSTICE.—I am of opinion that the appeal should be dismissed for
the reasons given in the court below.
DAVIES J.—I am for dismissing this appeal on both grounds on which
it was sought to be supported, viz.—the infringement of a trade-mark and
the fraudulent counterfeiting of plaintiffs’
goods. I do not think either of the words or distortions of words “Shur-on”
[Page 288]
or “Sta-zon” is merely an inventive word which could be used as a
trade-mark.
On the contrary, I
hold these terms to be merely corruptions of words descriptive of the eye‑glass
frames to which they were intended to be applied—and
that they were intended to be so descriptive. They cannot therefore be properly
trade-marks.
I agree with Mr.
Justice Osler that neither visually nor phonetically are these words, or
distortions of words, alike, and I do not think that the mere use of “Sta-zon” as applied to their eye-glass frames
by the respondents was calculated to mislead purchasers into the belief that
they were buying plaintiffs’ goods, which they had advertised
under their trade-mark or tradename of “Shur-on.”
The idea intended to be conveyed by the use of these corruptions of words may
have been the same, but the fact that there is a common idea underlying the use
of both words or corruptions and intending to describe some special merit in
the article would not of itself be sufficient to enable plaintiffs to maintain
the action. He could not pre-empt nor claim the exclusive use of the idea
descriptive of some merit in the article. The very fact of it being descriptive
and not inventive would be fatal to its validity as a trade-mark, while, if not
descriptive, his only claim, on the ground of the fraudulently passing off of
defendants’ goods as his, lay in the use of a
word which, as I agree, is neither visually or phonetically like the word he
claimed as his trade-mark or name, and is not calculated to mislead the
purchasing public into the belief that they were obtaining plaintiffs’ eye-glass frames.
In many of the
cases cited the question as to the passing off of one man’s goods for those of another turned upon the appearance
of the goods or the pack-
[Page 289]
ages in which they
were wrapped as they were put upon the market or upon other misleading methods
adopted.
And if the
defendants here had by advertising or otherwise adopted means which would
mislead the public into the belief that in buying their goods they were really
buying plaintiffs’, they would have brought themselves
within the well-known rule relating to passing off goods.
But the case turns
entirely upon the use of the word “Sta-zon”
instead of “Shur-on”
and the contention that the use of the former word would mislead the public
into the belief that they were purchasing the plaintiffs’ goods known under the name of “Shur-on.”
For the reasons
given I do not think it would.
IDINGTON J.—I think, for the reasons assigned by Mr. Justice Osler,
in the court below, which though brief cover all the grounds upon which the
action might, by any possibility, on the evidence before us, have been rested
in either alternative put before us, this appeal should be dismissed with
costs.
MACLENNAN J.—I agree in the opinion stated by Mr. Justice Davies.
DUFF J.—I concur in dismissing the appeal for the reasons stated
by Mr. Justice Davies.
Appeal
dismissed with costs.
Solicitors for the appellants:
Macdonald & Macintosh.
Solicitors for the respondents:
Aylesworth, Wright, Moss & Thompson.
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