Supreme Court of Canada
Canada Foundry Co. v. Bucyrus, (1913) 47 S.C.R. 484
Date: 1913-02-18
The Canada Foundry Company (Respondents) Appellants;
and
The Bucyrus Company (Petitioners) Respondents.
In the Matter of the Trade-mark “Canadian Bucyrus.”
1912: November 15; 1913: February 18.
Present: Sir Charles Fitzpatrick C.J. and Davies, Idington, Duff and Brodeur JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA.
Trade-mark—Geographical name—Right to register—Interference.
a manufacturing company in the United States adopted the word “Bueyrus,” the name of a town in Ohio, as a trade name to designate their goods, but did not register it as a trade-mark nor protect their manufactures by patent. They sold their goods in the United States and Canada for many years, and they became well-known as “Bucyrus” manufactures.
Held, affirming the judgment of the-Exchequer Court (14 Ex. c.r. 35), that the company was entitled to register the word “Bucyrus” in Canada as a trade-mark for use in connection with such manufactures.
A Canadian company for some years manufactured and sold “Bucyrus” goods as agent for the makers thereof and built up a good business for the same in Canada. When their agency terminated they sold similar goods of their own manufacture under the name of “Canadian Bucyrus,” which they registered as their trade-mark for such goods.
Held, affirming the judgment below, that such trade-mark should be expunged from the register.
APPEAL from a judgment of the Exchequer Court of Canada in favour of the respondents.
[Page 485]
Two questions arose on this appeal. First, whether or not the respondents were entitled to register as a trade-mark the geographical term “Bucyrus,” which for many years had been applied to the goods they manufactured and under which name said goods had become widely known in the United States and Canada; secondly, whether or not the appellants, manufacturing similar goods in Canada, could register the words “Canadian Bucyrus” as their trade-mark. By the judgment of the Exchequer Court the first question was answered in the affirmative and the second in the negative.
J. K. Kerr K.C. and J. A. Paterson K.C. for the appellants. We are entitled to use a trade name similar to that of the respondents so long as we take effective steps to prevent the public from being deceived as we have done. See Grand Hotel Co. of Caledonia Springs v. Wilson; Orr Living & Co. v. Johnston & Co.; Singer Machine Manufacturers v. Wilson; Pabst Brewing Co. v. Ekers.
The word “Bucyrus” is a geographical as well as an historical term and cannot be registered as a trademark. In re Salt & Co.; Elgin National Watch Co. v. Illinois Watch Case Co..
D. L. McCarthy K.C. for the respondents referred to Partlo v. Todd, at page 199; Richards v. Butcher; Leather Cloth Go. v. American Leather Cloth Co.; In re Rivière & Co.’s Trade Mark.
J. K. Kerr K.C. and J. A. Paterson K.C. for the appellants
D. L. McCarthy K.C. for the respondents
[Page 486]
The Chief Justice.—This is an appeal from a judgment rendered on an application made by the respondents to the judge of the Exchequer Court, to expunge from the register, the words “Canadian Bucyrus,” registered by the appellants as their trade-mark. That application was made necessary by reason of the refusal to register the word “Bucyrus” as the trademark of the respondents and the validity or propriety of that refusal falls also to be considered on this appeal.
Two questions therefore arise: (a) Should the appellants’ trade-mark be removed from the register? (b) Is the word “Bucyrus” registrable as a trademark under the circumstances? The facts as to which there is practically no dispute, stated in their chronological order, lead irresistibly, in my opinion, to the conclusion that the first question must be answered affirmatively. There may be some doubt as to whether the word “Bucyrus” can be registered as a valid trademark; but on that question also I agree with the learned judge of the Exchequer Court.
The petitioners, now respondents, are an American corporation engaged, since 1879, in the manufacture and sale in the United States and Canada, and other parts of the world, of particular types of wrecking cranes, pile drivers, shovels and other railway appliances, and during the greater part of that period they adopted the name “Bucyrus” to distinguish their manufactured products.
Those railway appliances speedily became known under the name of “Bucyrus” and the business of the company grew rapidly, their machinery obtaining a wide celebrity. It was sold invariably and solely under the name of “Bucyrus.” All the machinery so
[Page 487]
sold had been prominently marked with the word “Bucyrus,” printed on a name-plate. The respondents began to sell their machinery in Canada, and on the first of October, 1904, they entered into an agreement with the appellants by which the latter were appointed sole and exclusive agents to make, manufacture and sell iii Canada, the railway appliances described in the agreement as “Bucyrus” specialties. It was expressly stipulated that all such specialties manufactured under that contract should be
characterized and distinguished under the name “Bucyrus,” that this name shall appear prominently on the complete machines, and that the method and system of marking adopted by the Bucyrvs Company on its own apparatus in the United States shall be followed as closely as practicable.
This contract remained in force until 1909 when, in the month of November of that, year, it was cancelled by the appellants, who continued thereafter, as they had done before, to sell steam shovels, cranes, etc., with the name “Bucyrus” upon them. As the appellants say in their factum, by judicious advertising and adopting energetic business methods they established a large and prosperous business for the sale of products manufactured under that agreement. And in these circumstances they, in the month of February, 1911, obtained permission to register as their trade-mark the words “Canadian Bucyrus,” to be applied to steam shovels, wrecking cranes and other railway appliances of their own manufacture. On or about the 7th July, 1911, the respondents also applied to register the word “Bucyrus” as their trade-mark, to be applied to their specialties, which are the same as those manufactured by the appellants and that application was refused because of the prior registration obtained by the appellants. Hence this application
[Page 488]
to expunge from the register the trade-mark “Canadian Bucyrus” and to register the word “Bucyrus” as the trade-mark of the respondents.
The respondents claimed and proved that in Canada, as elsewhere, the word “Bucyrus” had become (and was at the date of their agreement with the appellants) specially and exclusively distinctive of the railway specialties manufactured by them, and that it had always distinguished such specialties from those of all other makers whatsoever and that the use of the word “Bucyrus” conveyed to the minds both of the trade and the public in Canada and elsewhere, that the specialties to which it was applied had been manufactured by the respondents, or by the appellants under their license and by no other company, firm or person. On the evidence it appears to me conclusively established that the word “Bucyrus” has a particular signification and indicates the origin or manufacture of the thing to which it is attached. From the very first the word has been used to distinguish the machinery manufactured by the respondents from the machinery of other persons; it has been on the name-plate attached to the machinery sold by them under the designation of “Bucyrus” railway specialties. I am consequently of opinion that the word “Bucyrus” is a good trade-mark (section 5) and registrable as such.
To the objection that a geographical name is not a good trade-mark I reply by referring to: Rey v. Lecouturier, page 268; The Karlsbad Case, page 162.
That the respondents’ goods had been upon the market for many years and were known under the
[Page 489]
name of “Bucyrus” specialties is not an objection (see National Starch Go. Application).
To refuse to expunge from the register the trademark “Canadian Bucyrus” would be to encourage unfair dealing. The object of a trade-mark is not to distinguish particular goods, but to distinguish the goods of a particular trader. It is reasonably clear by the terms of the contract between the parties that the “Bucyrus” specialties meant to the ordinary public, machinery used in the construction of railways, made by a particular firm or company and that the respondents guarded themselves carefully against the contingency which has arisen. The appellants argue here that in their advertisements they are careful to say that the goods they sell are manufactured by them in Canada, but this is not a case of passing off. The question here is: Have the appellants the right to register as their trade-mark the word “Bucyrus” either alone or in combination with the word “Canadian”? The principle which, in my opinion, ought to govern in the case of an application of this kind is to prevent the use by two companies of names so nearly resembling one another as to be calculated to deceive. In my opinion, the use of the word “Canadian Bucyrus” is calculated to cause confusion. This is evident from the mere comparison of the two names. There is also abundant evidence that confusion would result from the use of both names. The word “Bucyrus,” as I have already said, had long before this application been adopted by the respondents to distinguish the goods of their manufacture and by that name they were identified and known to the public. The appellants contend that they have under license from the
[Page 490]
respondents contributed to make a market for these goods in Canada. In that argument I find a complete answer to their case because it involves the admission that the word “Bucyrus” was to the public at the time of their application, a distinctive word and meant the goods of a particular maker of whose good name and reputation they seek to get the benefit.
For all these reasons I would confirm with costs.
Davies J.—I would dismiss this appeal with costs for the reasons given by Mr. Justice Cassels in the Exchequer Court.
Idington J.—When the contract of agency between the parties concerned herein was put an end to, the Canada Foundry Company had no higher right than any one else to register as its trade-mark, one embodying the name of the Bucyrus Company.
Such a trade-mark was within the meaning of section 11, sub-section (c) of the “Trade-Mark and Designs Act,” calculated to deceive or mislead the public and hence properly expunged by the judgment appealed from.
The respondent company seems clearly to have used the mark the judgment gives it a right to register.
The fact that “Bucyrus” is the name of a town in Ohio, does not of absolute necessity in law prevent its registration.
The use of a geographical or other name might in some circumstances be good ground for refusing registration of a trade-mark containing such name. But the facts in this case disclose no such state of
[Page 491]
circumstances as to preclude either its use or the registration of the trade-mark containing it.
The appeal must be dismissed with costs.
Duff J.—The evidence establishes that the use of “Canadian Bucyrus” as descriptive of steam shovels, railway wrecking cranes or pile drivers manufactured by the appellants would be calculated to work a deception on the public. I think that is prima facie sufficient ground for cancelling the registration. As to the respondents’ right to have the term “Bucyrus” registered as their trade-mark there are only two points to consider.
1st. It is contended that the word “Bucyrus” being a geographical name is incapable of being registered as a trade-mark. That objection is met by the evidence, which shews that it has acquired a secondary signification as designating steam shovels, railway wrecking cranes and pile drivers manufactured by (or from the designs and plans in current use by) the respondents or their predecessors.
2nd. The agreement of 1904 unquestionably gave the appellants a license to use the term “Bucyrus” as descriptive of objects manufactured by them under the provisions of the agreement; but the respondents did not by virtue of this license lose their exclusive property in the name “Bucyrus” as descriptive of articles of the kinds mentioned for these reasons: (a) The appellants acquired the right to use the term “Bucyrus” as descriptive of such articles as the agent of the respondents only and on the termination of the agency the license came to an end except it may be as regards articles already produced or in process of manufacture at the time the agreement was cancelled.
[Page 492]
(b) Under the agreement the appellants became entitled to the use of all the plans, designs and engineering data of the respondents relating to the manufacture of the articles governed by the agreement as well as the fullest inspection of and information relating to the respondents’ processes of manufacture and the respondents became bound to furnish the appellants with advice as to all improvements and changes in type or style; the intention of the agreement obviously being that the articles manufactured and sold by the appellants should from time to time conform in all substantial respects to those which the respondents were then producing. It cannot be successfully argued that the effect of such an agreement was to make the term “Bucyrus,” as applied for trade purposes to articles of the kinds in question, a term publici juris; because the license was a license to the respondents’ agents and it was a license to use the mark only in respect of articles which in the only relevant sense were intended to be in substance the respondents’ own productions.
BRODEUR J.—I am of the opinion that the appeal should be dismissed. I concur in the reasons given by Mr. Justice Cassels in the Exchequer Court.
Appeal dismissed with costs.
Solicitors for the appellants: Kerr, Davidson, Paterson & McFarland.
Solicitors for the respondents: McCarthy, Osier, Hoskin & Harcourt.
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