Friendly Ice Cream Corporation (Plaintiff)
v.
Friendly Ice Cream Shops Limited (Defendant)
Trial Division, Heald J.—Ottawa, June 22 and
26, 1972.
Practice—Trade marks—Pleadings, adequacy of—Passing
off—Distinctiveness of plaintiff's mark in defendant's mar-
ket-place—Procedure to obtain expungement—Trade Marks
Act, sections 7, 37, 57.
1. A statement of claim in a passing-off action under
section 7 of the Trade Marks Act or at common law must
allege facts to show that plaintiff's trade mark was distinc
tive in the defendant's market-place or the likelihood of
confusion or deception in that place with the defendant's
mark.
2. Section 37 of the Trade Marks Act contains a com
plete code of procedure governing oppositions to registra
tions of trade marks, and the Court has no authority to
abridge or by-pass those provisions.
3. The jurisdiction of the Court under section 57 of the
Trade Marks Act to strike out or amend an entry in the
register on the ground of inaccuracy does not enable the
Court to substitute the name of one person as owner for
that of the person registered.
MOTION to strike out statement of claim.
G. R. W. Gale for plaintiff.
G. E. Macklin for defendant.
HEALD J.—This is an application by the
defendant to strike out the whole of the state
ment of claim herein pursuant to Rule 419 on
the grounds that:
(i) it discloses no reasonable cause of action;
(ii) it is immaterial or redundant;
iii) it is frivolous or vexatious;
(iv) it is otherwise an abuse of the process of
the Court.
The defendant further applies, in the alterna
tive, for the plaintiff to supply particulars of a
number of paragraphs of the statement of claim.
The statement of claim alleges that plaintiff
has operated Friendly Ice Cream Shops since
1935; that plaintiff registered the trade mark
Friendly Ice Cream in 1954 in the United
States' Trade Mark Office and that as of 1970
plaintiff was operating 314 shops selling its
products which include ice cream, hamburgers,
soups, sandwiches, french fries, fountain bever
ages, etc. There is the further allegation that
defendant registered in Canada a trade mark for
the name Friendly Ice Cream for use in associa
tion with dairy products and that defendant
operates an ice cream and sandwich shop in the
City of St. Thomas, Ontario.
In the statement of claim, plaintiff purports to
set up four different causes of action and asks
for relief in respect of all said causes of action.
The main cause of action is a passing-off
action under the provisions of section 7 of the
Trade Marks Act (R.S.C. 1970, c. T-10). Said
section 7 reads as follows:
7. No person shall
(a) make a false or misleading statement tending to dis
credit the business, wares or services of a competitor;
(b) direct public attention to his wares, services or busi
ness in such a way as to cause or be likely to cause
confusion in Canada, at the time he commenced so to
direct attention to them, between his wares, services or
business and the wares, services or business of another;
(c) pass off other wares or services as and for those
ordered or requested;
(d) make use, in association with wares or services, of
any description that is false in a material respect and
likely to mislead the public as to
(i) the character, quality, quantity or composition,
(ii) the geographical origin, or
(iii) the mode of the manufacture, production or
performance
of such wares or services; or
(e) do any other act or adopt any other business practice
contrary to honest industrial or commercial usage in
Canada.
Thus, section 7 describes the class of facts
giving rise to the cause of action. The Rules
require that a statement of the material facts be
made in such a way that a reading of the materi
al facts pleaded would inevitably lead to the
conclusion that they fall in the class described
in the statute. The burden upon a plaintiff in a
passing-off action was concisely stated in J. B.
Williams Co. v. H. Bronnley & Co. (1909) 26
R.P.C. 765 at p. 771 as follows:
What is it necessary for a trader who is plaintiff in a
passing-off action to establish? It seems to me that in the
first place he must, in order to succeed, establish that he has
selected a peculiar—a novel—design as a distinguishing
feature of his goods, and that his goods are known in the
market, and have acquired a reputation in the market, by
reason of that distinguishing feature, and that unless he
establishes that, the very foundation of his case fails....
I am satisfied from a reading of section 7 that
the plaintiff must allege facts to show that its
trade marks or get-ups are distinctive in the
market. In the context of this case and in the
context of section 7, I believe this means—
distinctive in the defendant's market-place—
which is St. Thomas, Ontario.
Plaintiff has not pleaded one material fact to
establish that its marks are distinctive in
Ontario, Canada or to establish the likelihood of
confusion or deception in the market in which
the defendant carries on business.
The pleadings allege that plaintiff has operat
ed Friendly Ice Cream Shops since 1935 but it
does not say where—whether in the United
States or Canada or Japan. They further allege
that plaintiff's products are well known to the
public generally under the trade name Friendly
Ice Cream but it does not say where this "pub-
lic" is located. They say that plaintiff has 314
shops selling these products but, again, no loca
tion of any of the shops is given. If these shops
are all in the southern or western United States
or in a European or Asian country, then the
plaintiff would be hard put, indeed, to establish
distinctiveness and the likelihood of confusion
in Ontario, Canada. Nowhere in the pleadings is
there an allegation of distinctiveness in Ontario,
Canada (italics mine) or the likelihood of confu
sion in Ontario, Canada (italics mine). The only
reference to confusion is contained in para
graph 14 which reads as follows:
14. The plaintiff did not receive notice of the application
for the registration of the trade mark "Friendly Ice Cream"
and such Canadian trade mark is confusing with the plain
tiff's trade mark which has been made known in Canada.
Paragraph 14 contains no details as to where
plaintiffs's mark "has been made known in
Canada" or how as set out in section 5 of the
Trade Marks Act. (Italics mine).
I have accordingly concluded that the state
ment of claim has not pleaded the necessary
material facts to establish its passing-off action
under section 7 of the Trade Marks Act.
Learned counsel for the plaintiff submitted,
however, that his pleadings were framed in such
a way as to invoke the common law and that he
has sufficiently pleaded the ingredients of the
common law action of passing-off. The Ontario
case of Hughes v. Sherriff 12 C.P.R. 79 held
that the corresponding section of The Unfair
Competition Act was a codification of the
common law. This decision was cited with
approval by Chief Justice McRuer in Eldon
Industries Inc. v. Reliable Toy Co. 44 C.P.R.
239. However, in this case, whether or not
section 7 is a codification of the common law
makes little difference because, in my view,
plaintiff has not met the test of either section 7
or the common law.
I come now to the second cause of action
which plaintiff seeks to establish by these pro
ceedings. In paragraph 3, plaintiff alleges that in
addition to the name'Friendly Ice Cream Shops,
the plaintiff also uses the food designations
"Big Beef" and "Fribble". In paragraph 6,
plaintiff alleges that defendant is seeking trade
mark registrations in Canada for the words "Big
Beef" and of the word and a design for
"Fribble" by applications dated September 22,
1970 and October 2 respectively. By paragraph
4, plaintiff alleges United States' trade mark
registration in 1968 by it of "Fribble" and regis
tration or pending application for both
"Fribble" and "Big Beef" in twelve state juris-
dictions in the United States. Based on these
allegations and no others, plaintiff, in paragraph
16(d) asks for the following relief:
16. (d) A declaration that the defendant is not entitled to
seek and shall not be granted registration of the words "Big
Beef" or the word and design "Fribble" as trade marks
under the Trade Marks Act under its pending applications in
that regard referred to in paragraph 6 above;
I have no difficulty whatsoever in concluding
that this portion of the statement of claim must
be struck out. Section 37 of the Trade Marks
Act provides the way in which applications for
trade marks may be opposed. Said section con
tains a complete code of procedure in such
circumstances which has to be followed. I know
of no authority which would allow the Court to
abridge or by-pass these statutory provisions.
This, in effect, is what the plaintiff is asking the
Court to do in paragraph 16(d) of the statement
of claim.
The third cause of action which plaintiff
seeks to establish in this statement of claim is
set out in subparagraph (c) of paragraph 16, the
prayer for relief, as follows:
(c) An order under section 20 of the Federal Court Act,
1970-71 S.C. chapter 1, and under section 57(1) of the
Trade Marks Act, R.S.C. 1970, chapter T-10 as amended
by section 64(2) of the Federal Court Act, that the entry
in the Register of Trade Marks recorded as Registration
No. 174,266 in the name of Friendly Ice Cream Shops
Limited in respect of the trade mark "Friendly Ice
Cream" be amended by substituting as the owner of the
said trade mark the plaintiff Friendly Ice Cream Corpora
tion, or alternatively an order expunging the said Regis
tration from the Register;
This allegation appears to be an attempt to
have the Court exercise its jurisdiction under
section 57 of the Trade Marks Act which reads
as follows:
57. (1) The Exchequer Court of Canada has exclusive
original 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 is entitled to institute under this section
any proceeding calling into question any decision given by
the Registrar of which such person has express notice and
from which he had a right to appeal.
First of all, plaintiff asks the Court to amend
the trade mark registration by substituting its
name in the trade mark register for that of the
defendant. I know of no such authority enabling
the Court to make such an order. Then, alterna
tively, paragraph 16(c) asks for expungement of
defendant's registration. To become entitled to
expungement, the plaintiff would have to plead
facts which bring it within the provisions of
section 57. The plaintiff has not done this in
these pleadings. First of all, plaintiff must plead
facts necessary to show that it is "a person
interested" within the meaning of section 57.
This - it has not done. Then, plaintiff has not
pleaded any facts establishing any of the
grounds for expungement which are set out in
the Trade Marks Act such as loss of distinctive
ness, confusing similarity with another regis
tered mark, etc.
The statement of claim is defective in that it
fails to disclose any grounds on which defend
ant's registered mark could be expunged from
the register.
This third alleged cause of action in the state
ment of claim therefore fails.
The fourth cause of action alleged in the
statement of claim is contained in paragraph 15
thereof and reads as follows:
15. The plaintiff says that the defendant is using the
trade mark "Friendly Ice Cream" contrary to Sections 10
and 11 of the Trade Marks Act in that it is being used in a
way likely to mislead the public into believing that they are
purchasing the wares and services of the plaintiff whereas
in fact such is not occurring.
Section 9 of the Trade Marks Act lists a
number of prohibited marks. Section 10 is a
public interest section. Section 11 prohibits all
persons from using trade marks covered by
sections 9 and 10. It seems to me that these
three sections are not intended to cover a case
like this. If the mark Friendly Ice Cream comes
within the ambit of these sections, then, neither
plaintiff nor defendant could use it.
I am also of the opinion that plaintiff has not
pleaded any material facts that would bring it
within the provisions of sections 10 and 11 of
the Act, assuming they were applicable.
For all of the above reasons, I conclude that
the statement of claim herein cannot be allowed
to stand in its present form.
There will therefore be an order:
1. That the statement of claim herein be
struck out;
2. That the plaintiff be granted leave to apply
for leave to substitute another statement of
claim for the one so struck out;
3. That, if no such application be made
within four weeks from the date of this order,
the defendant may apply to have the action
dismissed;
4. That the defendant have the costs of this
application to strike out in any event of the
cause.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.