Jean Patou Inc. v. Luxo Laboratories Ltd.
T-713-97
Lutfy J.
30/12/98
22 pp.
Application for expungement of trade-mark "Booster" in association with beauty, hair salon products-Jean Patou Inc. seeking to market in Canada certain wares under trade-mark "Booster"-Respondent Luxo Laboratories Ltd. manufacturing, distributing, selling hair care products, aftershave, bath, other beauty products-Current registered owner of trade-mark "Booster"-Trade-mark first registered in Canada in 1920 by Canadian Booster Company Ltd.-In 1989, Luxo acquired rights to registration by way of assignment from immediately previous registrant-Trade-marks Office notifying Patou application not registrable as confusing, under Trade-marks Act, s. 12(1)(d), with Luxo's mark-Patou filing application under Act, s. 57 for order: (1) expunging Luxo's trade-mark "Booster"; (2) amending entry in register by adding words "for the hair salon market" to description of Luxo's wares-Distinctiveness essence of any protectable trade-mark, foundation of trade-mark law-Act, s. 12(1)(b) providing trade-mark not registrable if clearly descriptive of character or quality of wares with which used-On evidence, Patou has not established word "booster" clearly descriptive term for type of hair care products described in Luxo's list of wares-No evidence "Booster" describes action of any of Luxo's products-Mark not used in descriptive manner-Dictionary entries introduced by parties not defining "booster" in relation to hair products-Word "Booster" not clearly descriptive-Nothing in definition of "distinctive", in Act, s. 4(1) requiring registered owner of trade-mark to identify itself on label of products with which it associates trademark-No evidence of second source of Booster products-Luxo's use of "The Canadian Booster Company" reflecting Luxo's own registration of trade name in December 1995-Even if respondent mere distributor, trade-mark "Booster" registrable by it as long as distinctive of wares-No evidence mark "Booster" distinctive of wares of entity other than Luxo-Abandonment question of fact to be determined according to circumstances of each case-"Booster" dominant image communicated by Luxo's labels-Addition of "Canadian", tiger-head design to label minor-Public would perceive mark "Booster" as being used despite addition of other words, graphics to label-No evidence Luxo abandoned trade-mark through non-use, ever intended to do so-Court having broad supervisory power over register of trade-marks, may expunge, amend entry on register which ceases to "accurately express, define existing rights" of apparent owner-Luxo's existing statement of wares also preventing Patou from registering own trade-mark, exposing Patou to action for infringement under Act, s. 20-By limiting use of Luxo's trade-mark in manner sought by Patou, Court would be fettering Luxo's rights in way not contemplated by Act, ss. 19, 57-Power to amend register as set out in s. 57(1) only to be exercised when trade-mark otherwise open to expungement-Circumstances of present case not warranting amendment sought by Patou to limit Luxo's rights to certain markets-Application dismissed-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4, 12(1), 20, 57(1).