Magazine Repeating Razor Company of Canada Ltd. et al. v. Shick Shaver Ltd., [1940] SCR 465

Supreme Court of Canada

Magazine Repeating Razor Company of Canada Ltd. et al. v. Shick Shaver Ltd., [1940] S.C.R. 465

Date: 1940-05-21

Magazine Repeating Razor Company of Canada Limited and Magazine Repeating Razor Company (Plaintiffs) Appellants;

and

Schick Shaver, Limited (Defendant) Respondent.

1940: March 4, 5; 1940: May 21.

Present: Duff C.J. and Rinfret, Kerwin, Hudson and Taschereau JJ.

ON APPEAL FROM THE EXCHEQUER COURT OF CANADA

Trade mark—Action for alleged infringement—Use of surname—Plaintiff's registration of specific trade mark to be applied to named kinds of articles including articles not manufactured or sold by plaintiff but later manufactured and sold by defendant—Effect of agreements—Amendment of trade mark—Right of defendant to use of name—Word mark or design mark—"Design mark"—Condition for reliance upon trade mark as word mark—Distinction of goods—Similarity of goods—Conduct of parties—Production of certified copy of record of registration cs conclusive evidence of certain facts—Unfair Competition Act, 1932 (Dom.), c. 38, ss. 2 (c), 2 (k), 2 (l), 18, 19, 23 (1), 23 (5) (c), 52; Trade Mark and Design Act, R.S.C. 1927, c. 201, ss. 11 (e), 42 and Rules 10, 11, made under s. 42.

Plaintiff company, which had assignments of patents and patent applications from, and agreements with, one Schick, an inventor, registered in Canada on August 3, 1927 (on application dated March 21, 1927), under the Trade Mark and Design Act (R.S.C. 1927, c. 201), a

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specific trade mark "'Schick', as per the annexed pattern and application," to be applied to the sale of razors and other articles, including " shaving machines." " Shaving machines" (operating by electric motor and without a blade) were patented by Schick (and called "Schick dry shavers") in November, 1928; there had been and were subsequently agreements between Schick and plaintiff in respect thereto; but plaintiff never manufactured or sold "shaving machines." In 1930 Schick, who had been released by plaintiff from all obligations relative to shaving machines, assigned his interest in patents and patent applications relating to shaving machines, and granted the sole and exclusive right to use the name "Schick" in connection with shaving machines, to a company then recently incorporated, which rights, defendant claimed, were subsequently acquired by defendant, Schick Shaver Ltd. Defendant manufactured and sold shaving machines and used the word " Schick " in association therewith. Plaintiff (and its co-plaintiff, to which it had assigned its said trade mark) brought action in 1938, claiming that defendant had infringed its trade mark. Defendant, by counterclaim, asked (inter alia) that plaintiff's trade mark be modified to exclude therefrom shaving machines. By the judgment in the Exchequer Court (Maclean J., [1939] Ex.C.R. 108) the registration of plaintiff's trade mark was amended by striking therefrom the words "shaving machines"; plaintiff's action was dismissed, except that defendant was restrained from using the word " Schick" otherwise than in a way specified. Plaintiff appealed from the judgment. Defendant cross-appealed, asking removal of said restraint.

Held: Plaintiff's appeal should be dismissed and defendant's cross-appeal allowed.

Per the Chief Justice and Hudson J.: Plaintiff could not rely upon its trade mark as a word mark unless, at all events, it had established that the word " would at the date of registration have been registrable independently of any defined form or appearance and without being combined with any other feature" (Unfair Competition Act, 1932, c. 38, s. 23 (5) (c)). No attempt was made to comply with that condition. Moreover, of the Rules made under authority of s. 42 of the Trade Mark and Design Act (R.S.C. 1927, c. 201), it is not seriously open to dispute that the registration of plaintiff's trade mark was a registration under R. 11 (of surname " presented in a distinctive form, or accompanied by a distinctive device ") and not under R. 10 (registration of surname upon evidence that the mark has " through long-continued and extensive use thereof in Canada acquired a secondary meaning, and become adapted to distinguish the goods of the applicant"); it would have been difficult to the point of practical impossibility to show that the surname " Schick" had in its very brief period of use prior to the application for the trade mark become distinctive' in Canada of the applicant's wares in the sense of R. 10. R. 10 was validly made and was intended to, and did, give effect to s. 11 (e) of the Trade Mark and Design Act, which provided for refusal of registration " if the so-called trade mark does not contain the essentials necessary to constitute a trade mark, properly speaking" and thus imposed a condition for valid registration (Canadian Shredded Wheat Co. Ld. v. Kellogg Co. of Canada Ld., 55 R.P.C 125). It follows that plaintiff's mark was only a "design mark having the features described in the application therefor but

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without any meaning being attributed to the words" (s. 23 (5) (c) of the Unfair Competition Act, 1932)—" a trade mark consisting of an arbitrary and in itself meaningless mark or design" (s. 2 (c) of that Act, defining "design mark"); it is in this sense only that plaintiff could have any exclusive rights in respect of its trade mark; it has no exclusive rights in respect of the use of the surname "Schick" because for the purpose of determining its rights the letters in its mark are to be emptied of all such meaning; the design is the only thing which plaintiff is entitled to have protected; and defendant is entitled to. use the name "Schick," provided that its design is not the same or "similar" (as defined in s. 2 (k) of that Act) to plaintiff's design; and the evidence quite failed to establish such sameness or similarity.

On the evidence, "shaving machines" are recognized by the trade as entirely distinct from any goods made or sold at any time by plaintiff and it cannot be rightly affirmed that at the date of registration of plaintiff's mark it was carrying on or had any intention of presently carrying on any business which included the manufacture or sale or dealing in or with such machines in the trade mark sense. The trade mark registered was a specific trade mark and, as the trade mark of plaintiff, it could not, in the circumstances, have any meaning as applied to such machines. Plaintiff could not have a trade mark in respect of such machines within the meaning of the provisions of said Trade Mark and Design Act, and consequently its registered mark was not valid in relation to such goods.

It was not established (as a basis for alleged infringement of plaintiff's mark, even as amended by striking out "shaving machines") that " shaving machines" are goods similar to the goods in which plaintiff deals, within the tests of similarity set forth in s. 2 (l) of the Unfair Competition Act, 1932.

Moreover, as regards the whole issue of infringement, plaintiff's conduct in permitting until a quite recent date the Schick companies to use the name "Schick" in connection with their goods justifies the conclusion that it was not seriously apprehensive of any risk of confusion that could be of any commercial importance.

With regard to plaintiff's contention based on ss. 18 and 23 (1) of the Unfair Competition Act, 1932, that the production of a certified copy of the record of registration was conclusive evidence of certain facts, questions as to the meaning and effect of those enactments were discussed; but decision on those questions was deemed unnecessary because (1) plaintiff's argument left untouched the point that its mark was &, design mark and the consequences thereof; and (2) ss. 18 and 19 cf said Act must be read together, and as "it appears" (s. 19) from the undisputed facts that plaintiff was not entitled to register its mark as a trade mark for shaving machines, effect must be given to s. 19 against plaintiff's contention.

Per Kerwin J. Even if plaintiff was entitled to rely upon s. 18 of the Unfair Competition Act, 1932, s. 18 must be read in conjunction with s. 19. Defendant is entitled to succeed on its counterclaim that said registration of plaintiff's trade mark should be amended by striking therefrom the words "shaving machines" and therefore the foundation of plaintiff's action disappears. It appears from the history and

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the agreements (discussed in the judgment) of Schick, plaintiff company, and the companies bearing Schick's name, that plaintiff's registration " does not accurately express or define " (s. 52 of said Act) plaintiff's existing rights with reference to shaving machines, and that the rights to manufacture and sell shaving machines and use the name " Schick " as a trade mark in connection therewith is now vested in defendant company, which is, therefore, an interested party under s. 52 of said Act and is entitled to the order made by the Exchequer Court amending the plaintiff's registration as aforesaid.

Per Tascheretau J.: In view of the fact that the articles which were understood to be referred to by the words "shaving machines" were not patented until after registration of plaintiff's trade mark, and in view of the agreements (discussed in the judgment) between Schick and plaintiff company and of the transactions of Schick and the companies bearing his name, plaintiff's registration, in so far as it covers "shaving machines," is irregular and should be amended by striking those words from it, and defendant has the right to use the word " Schick " in connection with such machines.

APPEAL by the plaintiffs from the judgment of Maclean J., President of the Exchequer Court of Canada[1], dismissing their action and also directing an amendment of their registered trade mark in question. The plaintiffs claimed that the defendant had infringed the plaintiffs' rights in a certain registered trade mark, and asked for an injunction, damages, etc. The defendant, in addition to disputing the plaintiffs' claim, counterclaimed, asking (inter alia) that the registration of the trade mark should be declared invalid and expunged, or modified to exclude therefrom shaving machines.

By the formal judgment in the Exchequer Court it was ordered and adjudged that the action be dismissed ("except as herein ordered"); that the registration of the trade mark be amended by striking therefrom the words " shaving machines" (and that otherwise defendant's counterclaim be dismissed); but, by paragraph 4 of the judgment, that

the defendant, its officers, servants, agents and workmen, be and they are hereby perpetually restrained from using the said trade mark " SCHICK " on or in association with, or in connection with, the manufacture and/or distribution and/or sale and/or advertisement of mechanical razors or shaving machines unless it be immediately preceded or succeeded by some other word having the same number of letters as the name " SCHICK " in letters of a size at least equal to that of the letters composing the word " SCHICK " and of the same style of type.

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The plaintiffs appealed to this Court. The defendant cross-appealed, asking that the judgment in the Exchequer Court be varied by striking out said paragraph 4 therefrom.

The material facts of the case are sufficiently stated in the reasons for judgment in this Court now reported. The plaintiffs' appeal to this Court was dismissed and the defendant's cross-appeal allowed with costs throughout.

O. M. Biggar K.C. and R. S. Smart K.C. for the appellants.

J. D. Kearney K.C., E. G. Gowling and J. D. MacKay for the respondent.

The judgment of the Chief Justice and Hudson J. was delivered by

The Chief Justice.—The appellants' trade mark was registered on the 3rd of August, 1927, when the Act respecting Trade Marks and Industrial Designs (which I shall refer to as the Trade Marks Act) was still in force. Some enactments of the Trade Marks Act and of the Rules made under that Act will have to be noticed.

Section 42 of the Act is in these words:

42. The Minister may, from time to time, subject to the approval of the Governor in Council, make rules and regulations and adopt forms for the purposes of this Act respecting trade marks and industrial designs; and such rules, regulations and forms circulated in print for the use of the public shall be deemed to be correct for the purposes of this Act.

(2) All documents executed according to the said rules, regulations and forms, and accepted by the Minister, shall be deemed to be valid so far as relates to official proceedings under this Act.

Of the Rues made under the authority given by this section, Rules 10 and 11 are material. They are as follows:

10. A Trade Mark consisting either of a surname, a geographical name or adjective, or a word having a direct reference to the character or quality of the goods in connection with which it is used, may be registered as a Specific Trade Mark upon the filing of the prescribed application and payment of the prescribed fee, and upon furnishing the Commissioner with satisfactory evidence, either by statutory declaration or by affidavit, that the mark in question has, through long-continued and extensive use thereof in Canada acquired a secondary meaning, and become adapted to distinguish the goods of the applicant.

11. A Trade Mark consisting of the name of an individual, a firm, or a company, or of a surname, if presented in a distinctive form, or accompanied by a distinctive device, may be registered as a Trade Mark upon compliance with the requirements of the Act, Rules and Forms.

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The application of the Magazine Repeating Razor Co., dated the 21st of March, 1927, is as follows:

We, Magazine Repeating Razor Company, a corporation organized and existing under the laws of the State of New Jersey, United States of America, located at Sound Beach, State of Connecticut, U.S.A., hereby request you to register in our name a Specific Trade Mark to be used in connection with the sale of razors of all kinds; safety razors of all kinds; mechanical, automatic, and magazine razors; shaving machines; razor blades; razor blade holders; stroppers for razor blades; magazines, containers, and receptacles for razor blades; cutlery of all kinds, safety razor sets; machinery for making razors and razor blades; shaving brushes; shaving soaps, creams and powder; pharmaceutical products, including antiseptics, talcum powder, face lotions, cold cream, perfumery, toilet preparations and toilet articles, which we verily believe is ours on account of having been the first to make use of the same.

We hereby declare that the said Specific Trade Mark was not in use to our knowledge by any other persons than ourselves at the time of our adoption thereof.

The said Specific Trade Mark consists of the word

"SCHICK"

A drawing of the said Specific Trade Mark is hereunto annexed.

Signed at New York City, this 21st day of March, 1927, in the presence of the two undersigned witnesses.

MAGAZINE REPEATING RAZOR COMPANY.

By Orlando B. Willcox,

Vice-President.

Witnesses:

Edward G. McLaughlin

William H. Crawford

To the Minister of Trade and Commerce,

Ottawa, Ontario.

The certificate filed in proof of the registration of the trade mark is in these words:

SCHICK

CANADA

This is to certify that this Trade Mark (Specific) to be applied to the sale of Razors of all kinds, Safety Razors of all kinds, Mechanical, Automatic, and Magazine Razors, Shaving Machines, Razor Blades, Razor Blade Holders, Stroppers for Razor Blades, Magazines, Containers, and Receptacles for Razor Blades, Cutlery of all kinds, Safety Razor Sets, Machinery for making Razors and Razor Blades, Shaving Brushes, Shaving Soaps, Creams and Powder, Pharmaceutical Products, including Antiseptics, Talcum Powder, Face Lotions, Cold Cream, Perfumery, Toilet Preparations and toilet articles, and which consists of the word:

"SCHICK"

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as per the annexed pattern and application has been registered in The Trade Mark Register No. 191, Folio 42001, in accordance with "The Trade Mark and Design Act," by

Magazine Repeating Razor Company,

a Corporation, of Sound Beach, State of Connecticut, United States of America, on the 3rd day of August, A.D. 1927.

Patent and Copyright Office (Copyright and Trade Mark Branch), Ottawa, Canada, this 3rd day of August, A.D. 1927:.

(Sgd.) Thos. L. Richard, Acting Commissioner of Patents.

It is not seriously open to dispute that the registration of this trade mark is a registration under Rule 11. Subsection 5 (c) of section 23 of the Unfair Competition Act, 1932, shows the effect to be given to the registration of a mark such as that of the appellants where the registration took place before that statute came into force. The subsection is in these words:

23. * * *

(5) Marks registered before the coming into force of this Act shall be treated as word marks or as design marks according to the following rules:—

****

(c) Any mark including words and/or numerals in combination with other features shall be deemed to be a design mark having the features described in the application therefor but without any meaning being attributed to the words or numerals, which shall, however, also be deemed to constitute a word mark if and so far as they would at the date of registration have been registrable independently of any defined form or appearance and without being combined with any other feature.

It is perfectly clear that the appellants cannot rely upon their trade mark as a word mark unless, at all events, they have established that the word "would at the date of registration have been registrable independently of any defined form or appearance and without being combined with any other feature." If this condition had been fulfilled I assume for our present purposes that the word could have been so relied upon. No attempt has been made to comply with the condition. It appears (See the American application) that the use of the word "Schick" as a trade mark by the applicants began only a week or two before the date of the application and it would have been difficult to the point of practical impossibility to show that the surname "Schick" had in that brief period become distinctive in Canada of the applicants' wares in

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the sense of Rule 10. Rule 10, in my opinion, was validly made under section 42 and was intended to give effect to section 11 (e) which is in these words:

11. The Minister may refuse to register any trade mark or union label

****

(e) if the so-called trade mark does not contain the essentials necessary to constitute a trade mark, properly speaking.

This section imposes a condition and a trade mark which does not conform to the condition cannot validly be registered (Canadian Shredded Wheat Co. Ld. v. Kellogg Co. of Canada Ld.[2]. I repeat, I think regulation 10 is intended to give effect to section 11 (e) and in my opinion it does so. The registration of a surname which had not acquired a secondary meaning, in such a manner as to become adapted to distinguish the goods of the applicant, would be wanting in the essential elements of a trade mark within the contemplation of section 11. That, I think, was the law governing the registration of trade marks under the Trade Marks Act.

It follows that the appellants' mark is only a "design mark having the features described in the application therefor but without any meaning being attributed to the words " (s. 23 (5) (c)). In the language of section 2 (c) which defines "design mark," such a mark means "a trade mark consisting of an arbitrary and in itself meaningless mark or design." It is in this sense only that the appellants can have any exclusive rights in respect of their trade mark. They have no exclusive rights in respect of the use of the surname "Schick" because for the purpose of determining their rights the letters in their mark are to be emptied of all such meaning.

This appears to me to be quite conclusive upon the issue of infringement. The appellants, relying upon the Unfair Competition Act, 1932, must bring themselves within the terms of that statute. By the combined operation of sections 3 and 10 they must establish that their mark, or a similar mark, has been taken by the respondents as a trade mark for the respondents' wares or similar wares.

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I do not propose to enter upon the evidence. It is not even suggested that the respondents have taken the appellants' trade mark as a design mark and I think the evidence quite fails to establish that they have adopted a trade mark similar in the sense of section 2 (k) to the appellants' mark as a design mark. The only thing charged against them is the use of the name " Schick." They are entitled to use the name " Schick" provided that the design, because that is the only thing the appellants are entitled to have protected, has not such a similarity with the design of the appellants that the contemporaneous use of the two in the same area and in association with wares of the same kind would be likely to lead to confusion. In my opinion, the evidence fails to establish that. No confusion has arisen from any such similarity of design.

But there is another limitation to which the appellants' trade mark is subject. It is a specific trade mark and ex facie as registered it is to be applied to "shaving machines" among other articles. It is not disputed that the appellants have never at any time sold or manufactured or in any manner dealt in the class of goods designated by the phrase "shaving machines,"—machines, that is to say, in which the operation of removing hair from the human face is performed by a machine operated by an electric motor and without a blade. The plaintiff had no right to register a trade mark in respect of such goods. They are, I think the evidence establishes, recognized by the trade as entirely distinct from any goods made or sold at any time by the appellants and it cannot be rightly affirmed that at the date of registration the appellants were carrying on or had any intention of presently carrying on any business which included the manufacture or sale or dealing in or with such machines in the trade mark sense. The trade mark registered is a specific trade mark and, as the trade mark of the appellants, it could, in the circumstances, have no meaning as applied to such shaving machines. It is very clear to me that they could not have a trade mark in respect of such articles within the meaning of the provisions of the Trade Marks Act and that, consequently, their registered trade mark was not a valid registered trade mark in relation to such goods.

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It is necessary, however, to consider the provisions of the Unfair Competition Act, 1932. It was argued that "shaving machines" are goods similar to the other goods in which the appellants deal and have always dealt within the test of " similarity " laid down in the Unfair Competition Act (s. 2 (l)); and accordingly it is contended that, assuming the original registration was invalid as respects shaving machines, nevertheless, since the appellants are entitled to protection in respect of the use of their design mark in association with shaving machines as being wares similar to the wares to which they are entitled to apply that mark, their case for infringement is made out, on the assumption, of course (with which, as I have just explained, I do not agree), that the respondents are using a design mark similar to theirs. In other words, it is contended that the appellants' trade mark amended, as the learned trial judge has amended it, by striking out "shaving machines" is infringed. This appears to me to be a question of fact and, I think, when section 2 (l), which sets forth the tests of similarity in respect of wares, is properly understood, the proper conclusion is that the appellants fail.

I have not overlooked Mr. Biggar's argument touching the case of Edwards v. Dennis[3], but I think Lord Justice Cotton in his judgment in that case puts the test in a few words: The appellants must establish that the respondents " have done or are doing " something " calculated to mislead the public into thinking that their goods are the goods of the " appellants. I think for the purposes of this case that sums up the rule embodied in section 2 (l) and, in my opinion, in this the appellants have failed.

As regards the whole issue of infringement, I think it is important to consider the conduct of the appellants. I think their conduct in permitting the Schick companies to use the name " Schick" in connection with their goods justifies the conclusion that they were not seriously apprehensive of any risk of confusion that could be of any commercial importance. If they thought of it at all they

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treated it as a case of de minimis. They were, I am satisfied, quite content until a quite recent date to allow these companies to make use of the name " Schick."

For these reasons the appellants fail on the issue of infringement; and the learned trial judge, moreover, was right in amending the register by striking out "shaving machines" from, the record of the appellants' trade mark.

The appellants rely on section 18 and the first subsection cf section 23 of the Unfair Competition Act, 1932. These enactments are in these words:

18. (1) In any action for the infringement of any trade mark, the production of a certified copy of the record of the registration of such trade mark made pursuant to the provisions of this Act shall be prima facie evidence of the facts set out in such record and that the person named therein is the registered owner of such mark for the purposes and within the territorial area therein defined.

(2) Such a certified copy shall also, subject only to proof of clerical error there in, be conclusive evidence that, at the date of the registration, the trade mark therein mentioned was in use in Canada or in the territorial area therein defined for the purpose therein set out, in such manner that no person could thereafter adopt the same or a similar trade mark for the same or similar goods in ignorance of the use of the registered mark by the owner thereof for the said purpose in Canada or in the defined territorial area within Canada.

23. (1) The register now existing under the Trade Mark and Design Act shall form part of the register maintained pursuant to this Act, and, subject as hereinafter provided, all entries therein shall hereafter be governed by the provisions of this Act, but shall not, if properly made under the law in force at the time they were made, be subject to be expunged or amended only because they might not properly have been made hereunder.

By force of section 18, the appellants contend, the certified copy of the record of the registration of the appellants' trade mark is conclusive evidence that, at the date of its registration in August, 1927, it was in use in Canada in the manner stated in the second subsection of section 13. I think it is open to serious doubt whether the registration of the appellants' trade mark, which was effected, as we have seen, under the Trade Marks Act before the Unfair Competition Act came into force, is a registration "made pursuant to the provisions of" the Unfair Competition Act within the meaning of section 18. The statute, in legislating with regard to registrations effected under the Trade Marks Act in the first and fourth subsections of section 4, for example, uses precise language. In subsection 1 such trade marks are described as trade

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marks " recorded in the register existing under the Trade Mark and Design Act at the date of the coming into force of this Act." Where, as in subsection 4, trade marks registered under the Trade Marks Act and then registered under the Unfair Competition Act are both included, the phrase again is precise: " unless such trade mark is recorded in the register maintained pursuant to this Act."

I do not think that the words of section 23 (1), which provides that the register now existing under the Trade Marks Act shall form part of the register maintained pursuant to the Unfair Competition Act and that all entries in that register " shall be governed by the provisions of the Unfair Competition Act," would alone be sufficient to bring registrations under the Trade Marks Act within the description " registrations made pursuant to the Unfair Competition Act." On the other hand, it must be admitted that the phrase " registered pursuant to the provisions of this Act "is very loosely used in more than one place in the statute, and in some cases (it could be argued with a good deal of force) with the plain intention of denoting registrations under the earlier Act, as well as those effected under the. Unfair Competition Act.

It is not necessary to decide the point for the purposes of this appeal. In the first place, accepting Mr. Biggar's argument as he puts it, it leaves untouched the point that the appellants' mark is a design mark and the consequences thereof. In the second place, sections 18 and 19 must be read together. Neither of the two sections is at all happily expressed, and it may be that, when read together, the only effect of subsection 2 is to create a legal presumption on the production of the certified copy of the record of the registration.

However that may be, "it appears " in this case from the undisputed facts that the appellants' predecessors were not entitled to register their trade mark as a trade mark for shaving machines and effect must be given to section 19 accordingly.

It was agreed by counsel on both sides that paragraph 4 of the formal judgment of the Exchequer Court cannot be sustained and the judgment ought to be modified accordingly.

The appeal should be dismissed and the cross-appeal allowed with costs.

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Rinfeet J.—I would dismiss the appeal with costs and I would dispose of the cross-appeal in the manner indicated in his reasons by my brother Kerwin.

Kerwin J.—The plaintiffs in this action are Magazine Repeating Razor Company, a United States company, hereinafter referred to as the Magazine Company, and Magazine Repeating Razor Company of Canada, Limited, a company incorporated under the laws of the Dominion of Canada. The defendant is Schick Shaver, Limited, a company incorporated in the Bahamas but licensed to do business in the Province of Quebec. The action was brought in the Exchequer Court of Canada for infringement of a Canadian trade mark "SCHICK," granted to the Magazine Company and assigned by the latter to its co-plaintiff, In addition to denying the validity of the trade marie and the allegation of infringement, the defendant counter-claimed to have the registration expunged or modified.

The registration of the trade mark was ordered to be amended by striking therefrom the words " shaving machines." With one exception, the claims in the action were dismissed. The exception appears in clause 4 of the judgment which, although the President had in his reasons expressed doubt as to his power so to do, restrains the defendant from using the trade mark on or in association with, or in connection with, the manufacture and/or distribution and/or sale and/or advertisement of mechanical razors or shaving machines unless it be immediately preceded or succeeded by some other word having the same number of letters as the name " SCHICK " in letters of a size at least equal to that of the letters composing the word "SCHICK" and of the same style of type. The plaintiffs now appeal and the defendant cross-appeals and asks that clause 4 of the judgment be stricken out. Counsel for the appellants admitted that, if they could not succeed on the main appeal, the respondent was entitled to the relief claimed by its cross-appeal.

The trade mark in question was applied for March 21st, 1927. It was granted August 3rd, 1927, and according to the record in the Trade Mark Office it was

to be applied to the sale of Razors of all kinds, Safety Razors of all kinds, Mechanical, Automatic, and Magazine Razors, Shaving Machines,

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Razor Blades, Razor Blade Holders, Stroppers for Razor Blades, Magazines, Containers, and Receptacles for Razor Blades, Cutlery of all kinds, Safety Razor Sets, Machinery for making Razors and Razor Blades, Shaving Brushes, Shaving Soaps, Creams and Powder, Pharmaceutical Products, including Antiseptics, Talcum Powder, Face Lotions, Cold Cream, Perfumery, Toilet Preparations and toilet articles.

It consisted of the word "SCHICK," in accordance with the application and pattern annexed.

The registration was made pursuant to the provisions of the Trade Mark and Design Act, R.S.C. 1927, c. 201, and at the trial the appellants produced a certified copy of the record. By the time the action was brought, The Unfair Competition Act, 1932 (c. 38 of the Statutes of 1932), was in force. By section 23, the register existing under the old Act is to form part of the register maintained pursuant to the new Act and " all entries therein shall hereafter be governed by the provisions of this Act," but even if the appellants were entitled to rely upon section 18 of The Unfair Competition Act, that section must be read in conjunction with section 19. The two sections are as follows:

18. (1) In any action for the infringement of any trade mark, the production of a certified copy of the record of the registration of such trade mark made pursuant to the provisions of this Act shall be prima facie evidence of the facts set out in such record and that the person named therein is the registered owner of such mark for the purposes and within the territorial area therein defined.

(2) Such a certified copy shall also, subject only to proof of clerical error therein, be conclusive evidence that, at the date of the registration, the trade mark therein mentioned was in use in Canada or in the territorial area therein defined for the purpose therein set out, in such manner that no person could thereafter adopt the same or a similar trade mark for the same or similar goods in ignorance of the use of the registered mark by the owner thereof for the said purpose in Canada or in the defined territorial area within Canada.

19. If it appears to the court that a registered trade mark was not registrable by the person by whom the application for its registration was made, the owner thereof shall not be entitled to any remedy or relief in an action for the alleged infringement of such mark without other evidence of his rights than the mere production of a certified copy of the record of the registration.

It is unnecessary to express any opinion upon various defences to the claim for infringement raised by the respondent, as it is entitled to succeed on its counter-claim that the registration of the Canadian trade mark should be amended by striking therefrom the words "shaving

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machines" and the foundation of the action therefore disappears. Section 52 of The Unfair Competition Act provides:

52. (1) The Exchequer Court of Canada shall have jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of such application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.

(2) No person shall be entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which such person had express notice and from which he had a right to appeal.

As will appear from the history of one Jacob Schick, various companies bearing his name, and the Magazine Company, the registration here in question does not actually express or define the appellants' existing rights with reference to shaving machines. Schick was an inventor and the owner of certain United States letters patent and of other applications for United States letters patent relating to a certain safety razor and blades to be used therein. On March 18th, 1925, he assigned all his right and interest in the letters patent and applications to Sharp Manufacturing Corporation (by which name the Magazine Company was previously known). On October 8th, 1926, the Magazine Company applied for, and on March 1st, 1927, was registered in the United States as the owner of, a trade mark as shown in an accompanying drawing. It is stated in the application that " the word 'Schick' is disclaimed apart from the mark as shown," and:

The class of merchandise to which the trade mark is appropriated is Class 23, Cutlery, machinery, and tools, and parts thereof, and the particular description, of goods comprised in said class upon which said trade mark is used is: SAFETY RAZORS AND RAZOR BLADES.

The "mark as shown" in the United States trade mark is in a form different from that which appears in the Canadian trade mark in question, which, it will be recollected, was applied for on March 21st, 1927, although not granted until August 3rd, 1927. On March 31st, 1927, the Magazine Company filed in the United States Trade Mark Office another application to be registered as the owner of the trade mark " Schick" shown in the accompanying drawing, stating that such mark had been used continuously in the Company's business since March 12th,

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1927. This drawing corresponds to the one appearing in the Canadian trade mark. The disclaimer of the word "Schick" does not appear in this United States application but the class of merchandise to which the trade mark is to be appropriated is the same as that described in the prior United States trade mark. Registration was not granted until April 24th, 1928.

In the meantime, on May 1st, 1927, an agreement was entered into between Schick and the Magazine Company whereby, after a recital that Schick had filed certain other applications for letters patent in the United States, Schick agreed to assign and transfer them to the Magazine Company and agreed that the Company "may use the name 'Schick' in connection with the razors, blades and other articles, on the sale of which royalties are payable." Paragraph XI provided that if, while there were in effect any letters patent or applications for letters patent of the United States, acquired by the Magazine Company under this or the prior agreement of March 18th, 1925, and while the agreement was not terminated, Schick should make any invention or discovery relating to the " art of shaving," other than inventions or discoveries relating to razors or blades or machinery or process for the manufacture thereof, he would disclose the same to the Company and make and file applications for letters patent thereon of the United States and such foreign countries as he might deem advisable and would assign and transfer such applications to the Company on such terms as should be fixed by agreement of the parties or by arbitration as therein provided.

A reorganization of the Magazine Company apparently being contemplated, Mr. Willcox, a director of and counsel for the Magazine Company, wrote Jacob Schick on October 25th, 1927, for a letter confirming the statement that the Company was the

sole owner of all the patents and patent rights of the United States and all foreign countries covering all inventions of said Jacob Schick relating to razors and razor blades and the machines, tools and processes employed in making the same.

Mr. Willcox concluded by stating:

I understand, of course, that the shaving machine, which does not employ blades and which is not properly classified as a razor, is not included in such assignments.

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On January 1st, 1929, the Magazine Company released Schick from all claims, demands, obligations and liabilities which then existed or which might at any time exist under or by reason of paragraph XI of the agreement of May 1st, 1927, in so far as it applied to shaving machines or designs thereof, or machinery, tools or process for the manufacture thereof, or inventions, discoveries, letters patent or applications for letters patent relating to shaving machines, or machinery, tools, or process for the manufacture thereof. This was done as part of an arrangement, the remainder whereof was taken care of by an agreement of the same date whereby Schick granted to the Magazine Company an exclusive licence to make and sell in the United States, its territories and possessions, during the existence of the agreement, under the name of "SCHICK", shaving machines embodying the inventions described in certain letters patent of the United States and the letters patent which might be issued upon applications for letters patent of the United States, or any thereof. By one of the recitals:

the expression "Schick Dry Shavers" is hereinafter used to designate shaving machines which are characterized by a thin slotted shear plate engaging the skin and a moveable cutter behind the plate, the slots being narrow and open at both ends and the slots and the cutter being so shaped and proportioned that the operation of the cutter shaves close to the skin without cutting the skin, and the expression "shaving machines " is hereinafter used to designate all kinds of shaving machines, including Schick Dry Shavers;

Clause 16 of this agreement provides, inter alia, that, if the Magazine Company should terminate the agreement in accordance with clause 14 thereof, it would assign, transfer and deliver to Schick:

(1) the entire business or businesses of manufacturing and selling shaving mac] lines then conducted by the Licensee, or any agent of the Licensee, the good will thereof and all trade marks and trade names used exclusively in connection therewith, the exclusive right to use the name of " Schick " upon or in connection with shaving machines, and the exclusive right without compensation to use in connection with the manufacture and sale of shaving machines all inventions acquired or controlled by the Licensee, or any agent of the Licensee, which relate directly to shaving machines or machinery or process for the manufacture thereof, and

(2) all the special machinery and all the tools, jigs and fixtures acquired or controlled by the Licensee, or any agent of the Licensee, and designed or used exclusively for the manufacture of shaving machines or parts thereof, including special machinery, tools, jigs and fixtures adequate for the manufacture of slotted shear plates and cutters for Schick Dry Shavers at the rate of at least five hundred per day.

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On March 26th, 1930, in accordance with clause 14 of this agreement, the Magazine Company exercised its option to terminate the arrangement provided for by clause 16 and thereby the agreement would cease to operate on July 1st, 1930, as regards shaving machines. Before the expiration of that period, a release and agreement dated May 14th, 1930, was entered into between the parties. By it the sum of $14,000 was paid by the Company to Schick as remuneration for its inability to deliver to him special machinery, tools, jigs and fixtures adequate for the manufacture of slotted shear plates and cutters at the rate of at least five hundred per day. Schick released and discharged the Company from all claims and demands under the agreement of January 1st, 1929, and the Company

hereby releases and discharges Schick from all claims, demands, obligations and liabilities which now exist or which might at any time exist under said agreement dated January 1, 1929, and the Company further agrees that any and all rights relative to Schick Dry Shavers and shaving machines, including all rights in connection with the machinery or processes for the manufacture thereof, heretofore granted to it by Schick under said agreement dated January 1, 1929, is now terminated and at an end.

Pausing here, for a moment, in the narrative, it is clear that the Magazine Company was under no misapprehension as to what was included in the term " shaving machines" and that it had divested itself of all rights relating to them in favour of Schick. As between him and the Magazine Company there could be no question of his right to use his own name as a trade mark as applied to those machines. It is unnecessary to state categorically the proceedings which Schick might be entitled to take against the Company in order to secure the transfer to him of the Company's interest in the Canadian trade mark as applied to shaving machines. The release and agreement is dated May 14th, 1930,—prior to the coming into force of The Unfair Competition Act. The connection between Schick and the respondent company must now be traced.

On April 30th, 1930, a company known as Schick Dry Shaver Incorporated had been incorporated under the laws of the State of Delaware. The fact of this incorporation was known to the Magazine Company, as appears from a letter of August 22nd, 1930, to its Treasurer, written by a

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Mr. Bonbright, and from the reply thereto, of September 5th, 1930, written by the Secretary of the Company. On October 24th, 1930, Schick entered into an agreement with Schick Dry Shaver Incorporated, assigning his interest in certain letters patent and applications for letters patent in the United States and other countries, relating to shaving machines, and also granted to the Company the sole and exclusive right, throughout the entire world, to own, use and enjoy, and to register in its name, the name "Schick" in such form or forms, and with such designs or devices as the Company might from time to time elect, as trade marks and/or trade names, in connection with shaving machines.

The first recorded order for a shaving machine from the United States was received by Schick Dry Shaver Incorporated on October 28th, 1930, and the machine was shipped by the Company on March 18th, 1931. So far as Canada is concerned the first shaving machine was ordered in March, 1931, and shipped in June of that year; 1,944 shaving machines were sold in Canada from 1931 to December, 1933, during which period no machine was made in this country.

By agreement dated December 28th, 1933, Schick Dry Shaver Incorporated transferred to Schick Limited, an intervening company incorporated in the Bahamas on November 16 th, 1933, certain letters patent and applications therefore,—presumably those it had acquired from Jacob Schick. No mention is made of trade mark rights in the agreement but the objects of Schick Limited were to manufacture and sell shaving machines and their parts and accessories. As a matter of fact it sold 25,513 machines in Canada from January 1st, 1934, to February, 1936, when it ceased to do business. It has since been wound up and its charter surrendered. The respondent, Schick Shaver Limited, sold 35,359 shaving machines in Canada in 1936, 1937, and down to August 1st, 1938.

The rights to manufacture and sell shaving machines and use his own name as a trade mark in connection therewith, being vested in Jacob Schick on May 14th, 1930, under the agreement of that date, it has been shown that Schick transferred all such rights, on October 24th, 1930, to Schick Dry Shaver Incorporated. The result of the

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evidence indicated above, together with the evidence as to the holdings of the capital stock in the various Schick companies, which need not be detailed, is that Schick Dry Shaver Incorporated transferred all such rights to Schick Limited, and that the latter, in turn, transferred them to Schick Shaver Limited, the respondent. It follows that the respondent is an interested party under section 52 of The Unfair Competition Act, and that it is entitled to the order made by the Exchequer Court amending the registration of the appellants by striking therefrom the words " shaving machines."

The appeal is therefore dismissed, the cross-appeal allowed, and the judgment below amended so as to dismiss the action and amend the registration in the manner indicated, with costs throughout.

Taschereau J.—In March, 1925, Jacob Schick entered into an agreement with Sharp Manufacturing Corporation, whereby in consideration of the assignment by Schick of certain patents on safety razors and blades, the Company agreed to pay Schick $50,000 and an annual royalty. This agreement contained amongst other things:

* * * and Schick has granted and hereby grants to the Corporation the exclusive right to manufacture, use, offer for sale and sell said safety razor and blades throughout the entire world, and hereby grants to the Corporation all rights to all patents, trade marks, trade names and other privileges relating to said safety razor and blades throughout the entire world, * * *

Later, on the 1st of May, 1927, the Corporation, then operating under the name of Magazine Repeating Razor Company, and Jacob Schick, modified and supplemented the former agreement of March, 1925, and additional patents relating to razors and blades were assigned to the Company. An important clause of this second agreement is the following:

Schick agrees that the Corporation may use the name "Schick" in connection with the razors, blades and other articles on the sale of which royalties are payable under the provisions of this paragraph IV, and that such razors, blades or other articles may be marked or associated with the name of "Schick".

It is worth while to note that the right for the Company to use the word "Schick" applies only to the razors, blades and other articles on the sale of which royalties are payable.

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Subsequently, on the 6th of November, 1928, Schick registered and became the owner of new letters patent relating to shaving machines called " Schick Dry Shavers " which were not included in the previous agreements. A new agreement was therefore signed by the parties on January 1st, 1929, which embodied the following clauses:

The Licensor grants and agrees to grant to the Licensee an exclusive licence to make and sell in the United States, its territories and possessions, during the existence of this agreement, under the name of "Schick" shaving machines embodying the inventions described and claimed in said letters patent of the United States and the letters patent which may be issued upon said applications for letters patent of the United States, or any thereof.

****

The Licensee [The Magazine Repeating Razor Company] agrees that if the Licensor [Jacob Schick] shall terminate this agreement in accordance with paragraph 11, paragraph 12 or paragraph 13 hereof, or if the Licensee shall terminate this agreement in accordance with paragraph 14 hereof, the Licensee will assign, transfer and deliver to the Licensor the entire business or businesses of manufacturing and selling shaving machines then conducted by the Licensee, or any agent of the Licensee, the good will thereof and all trade marks and trade names used exclusively in connection therewith, the exclusive right to use the name of " Schick" upon or in connection with shaving machines * * *

The Magazine Repeating Razor Company gave notice on March 26th, 1930, that the agreement would come to an end, and on the 14th of May, 1930, Schick received the sum of $14,000 and each party released the other from all obligations and claims existing in relation to the Schick Dry Shavers as defined in the agreement of January 1st, 1929.

As a result of the execution of this release which embodies the following clause,

* * * and the Company further agrees that any and all rights relative to Schick Dry Shavers and shaving machines, including all rights in connection with the machinery or processes for the manufacture thereof, heretofore granted to it by Schick under said agreement dated January 1, 1929, is now terminated and at an end.

the Company ceased to have any rights relative to Schick Dry Shavers, but its rights on razors and blades governed by the former agreements were still in existence.

Jacob Schick then proceeded to organize a Company called " Schick Dry Shaver, Inc." to which he assigned his rights on the 24th of October, 1930, and later Schick Shaver Limited, the respondent, acquired these same rights. The defendant proceeded to manufacture shaving machines,

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using the word "Schick", which had formerly been registered as a trade mark by the appellants on the 3rd day of August, 1927. The registration included: safety razors of all kinds, mechanical, automatic and magazine razors, shaving machines, razor blades, etc., etc. The appellants then took action for infringement of their statutory rights under the Unfair Competitions Act, 1932, and claimed an injunction to restrain the defendant from infringing the plaintiffs' trade mark and from selling, distributing or advertising in Canada any manufactured razors or shaving machines not of the plaintiffs' manufacture in association with the word " Schick ", or any other word so similar to the trade mark " Schick " as to be calculated to cause confusion. They also claimed damages in the sum of $100,000. This action was dismissed by Mr. Justice Maclean and this is an appeal from that judgment.

The recital of the various agreements shows that originally in 1925 and 1927, Jacob Schick assigned to the appellants patents for razor and blades and the right to use the word " Schick ", but only for the sale of these articles on which a royalty was payable. However, the appellants registered the word " Schick " as a trade mark and this registration covered razors, blades and shaving machines. It was only on the 6th of November, 1928, that " Schick Dry Shavers" were patented by Schick and could not therefore have been transferred in 1925 nor in 1927. It was by the agreement of January 1st, 1929, that the appellants acquired rights on these patents and the right to use the word " Schick " in respect of the sale of these machines. This agreement of January, 1929, came to an end by mutual consent, and the release signed by the parties on the 14th of May, 1930, covered this last agreement only and, consequently, the rights to manufacture these shaving machines and to use the word " Schick " reverted to the respondent. The appellants remained the owners of the patents affecting razors, which are quite different from the dry shavers, and have the right to use the word " Schick " only for the sale of the former.

The registration of August 3rd, 1927, in so far as it covers shaving machines is irregular, and I am of the opinion that Maclean, J., was right in ordering that the

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registration of the trade mark " Schick" made at folio 42001 be amended by striking therefrom the words: "shaving machines". I believe also that the judgment below should, be varied to allow the respondent to use the word "Schick" in association with the manufacture and sale of its shaving machines without restriction.

Appeal dismissed and cross-appeal allowed with costs.

Solicitors for the appellants: Smart & Biggar.

Solicitors for the respondent: Ralston, Kearney & Duquet.