SO2 . EXCHEQUER COURT REPORTS. [VOL XIV.. IN THE MATTER OF THE PETITION OF THE .1913 AUTOSALES GUM AND CHOCOLATE COM- March 4. PANY, to expunge from the Trade-Mark Register, Number 23, Two Trade-Marks registered at folios Numbers, 5352 and 5353, respectively, in the name of THE FAULTLESS CHEMICAL COMPANY. Trade-Marks—Abandonment—Rectification—Non-user and no bondi fide Intention to use—Expunging—Jurisdiction. The Exchequer Court has jurisdiction, on the application of any party aggrieved, to order the rectification of the register of trade-marks by expunging therefrom a mark that, through non-use or abandonment, remains improperly thereon to the •embarrassment of trade. T HIS was a petition asking to expunge two trademarks registered in the Department of Agriculture. The facts of the case are stated in the reasons for judgment. February 26th, 1913. The case was heard at Ottawa. M. H. Ludwig, K.C., for the petitioners; R. S. Smart, for the Faultless Chemical Company. CAssELs, J., now (March 4th, 1913) delivered judgment. A pétition was filed in the Exchequer Court on behalf of the Autosales Gum and Chocolate Company asking to expunge from the Trade-Mark Register Number 23, two trade-marks• registered at folios, numbers 5352 and 5353, respectively, in the name of The Faultless Chemical Company. The Faultless Chemical Company appeared and filed a statement of objections to the application of the petitioners.
VOL. XIV.] EXCHEQUER COURT REPORTS. 303 The petitioners set out that on the 3rd July, 1895, xV the said Faultless Chemical Company caused to be In re AVTOSALEB registered at the City of Ottawa, in the Copyright and GUM AND CHOCOLATE Trade-Mark branch: I Co. "1. A Specific Trade-Mark to be applied to the â âg,en "sale of Chewing Gum consisting of the word"Chips" "registered in the Trade-Mark Register Number 23, "Folio 5352. • "2. A specific Trade-Mark to be applied to thé "sale of Chewing Gum, consisting of the words "The "Gum That's" combined with a circle line enclosing "the word "Round", registered in the Trade-Mark "Register Number 23 1 Folio 5353." The allegation of the petitioner is that it is the successor and owner of the business formerly carried on. by the Colgan Gum Company, a corporation incorporated under the laws of the State of Kentucky. The petitioner alleges that as the successor of the said Colgan Gum Company, it carries on in the United States, Canada, and elsewhere, as a part of its business, the manufacture and sale of chewing gum, in the form of discs, which it advertises and ,describes by means of the words "Violet Chips," "Mint Chips," and "The Gum That's Round." The allegation in the 4th paragraph of the petition is that for a short period of time the said Faultless Chemical Company as a side line of its.business carried on in the United States, but not in Canada, the manufacture and sale of chewing gum, but the said trade-marks were never. used in connection with chewing gum in Canada by the said Faultless Chemical Company. The allegation in' the 5th paragraph of the pétiticn is 'that in or , about the year 1899, that part of the business of the Faultless Chemical Company, which
304 EXCHEQUER COURT REPORTS. [VOL. XIV. 1913 consisted in the manufacture and sale of chewing gum, In re AUTOSALES was wholly discontinued, and that branch of its said GUM AND GinocoLATE business has never since been carried on by the said co . company, and the machinery which had been used by n Ju n d e g a m 's en o t " . e for the said Faultless Chemical Comp anyin the said chewing gum business, was sold and removed from the premises of the said company by the purchasers thereof. Paragraph 6 alleges that since the said chewing gum business of the said Faultless Chemical Company was wholly discontinued as aforesaid, the said trade-marks have never been. used by the said Faultless Chemical Company anywhere, but in fact have been entirely • abandoned; and the petitioner prays that the said trade-marks may be expunged from the said Trade- . Mark Register. The Faultless Chemical Company filed a statement of objections to the petition. Among other objections the second is as follows: "The registrations of the Trade-Marks referred to `tin the Petition were not made without sufficient "cause, as required by Section 42 of the Trade-"Mark and Design Act to bring the matter within "the jurisdiction of this Court." If .there is no jurisdiction to entertain the petition on the facts set out, of course the petition would have to be dismissed. If on the other hand there is jurisdiction, witnesses on behalf of the petitioners and probably on behalf of The Faultless Chemical Company, would have to be brought from a distance at considerable expense for the trial of the petition. Counsel for the petitioner, and counsel for the Faultless Chemical Company, appeared before me and asked that the question of jurisdiction should be argued and first determined as a matter of law.
VOL. XIV.] EXCHEQUER COURT REPORTS. The case was argued • before me on the 26th February, 1913. Since the argument, I have considered the cases Gu cited and am of opinion that it is expedient on the facts as stated that the reg g is ter should be rectified b expunging these two trade-marks. It is unnecessary to mention that I am merely dealing with it as if all the facts in the petition were admitted to be true. The counsel for the, petitioner rested his case mainly on the ground' that subsequent to the registration of the trade-marks in question there was a complete abandonment, and that therefore the register should be rectified. Counsel, on the• other hand, for The Faultless Chemical Company contended that if an entry had been made rightfully in the first instance there was no jurisdiction in this • court to interfere with the registration. I may point out that section 4 of the petition which I have quoted, goes somewhat beyond the allegation of proper registration, and the subsequent abandonment of the trade-marks. The effect of this allegation is that the trade-marks were never used in connection with chewing gum in Canada by the Faultless Chemical Company. Section 23 of The Exchequer Court Act, "23. The Exchequer Court shall have jurisdiction "as well between subject and subject as otherwise,--"(b) in all cases in which it is sought to impeach or "annul any patent of invention, or to have any entry "in any register of copyrights, trade-marks or "trial designs made, expunged, varied or rectified." Section 42, of Chapter 71, R.S. of • Canada, 1906, the Trade Mark and Design Act, reads as follows: "Procedure as to ,Rectification and Alteration. "42. The Exchequer Court of Canada may, on the 305 . day, of 1913 ° in re A TOSALES ArrD CH n O n CO LATE CO• y $ a e u a a a ~ a . n n e e n f r o ,. r enacts that indus-
:306 . EXCHEQUER COURT REPORTS. [VOL. XIV. . 1913 ~ "information of the Attorney-General, or at the suit In re "of any person aggrieved b a y n o y m ission, without AUTOSALES GUM AND "sufficient cause, to make any entry in the register CHOCOLATE Co. "of trade-marks or in the register of industrial designs, Reasons for " o .Judgment. r by any entry made without sufficient cause "in any such register, make such order for making, "expunging or varying any entry in any such register "as the Court thinks fit; or the Court may refuse the application. "2. In either case, the Court may make such order "with respect to the costs of the proceedings as the . "Court thinks fit. "3. The Court may in any proceedings under this "section, decide any question that it may be necessary " or expedient to decide for the rectification of any :such register." This section is practically identical with section 90 • of the English Patents, Designs, and Trade Marks Act, • of 1883. The section is to be found in Sebastian's Law of Trade-Marks (1). The case generally referred to is that of J. Batt & Co. (2) which came before Mr. Justice Romer. That was a case in which an application was made to expunge certain trade-marks from the register. In that case an application was also made to have . registered a trade-mark on behalf of the applicants. In the case before me, the only application is an application to rectify the register by having the two trade-marks referred to expunged. There is no application on the part of the petitioner to have a trademark similar to the registered trade-marks registered by them. It is apparent, however, that the petitioner is aggrieved by permitting the entry of these trademarks if they ought not properly to be on the register, (1) 5th Ed., p. 630. (2) (1898) 2 Ch. D. 432, 701; (1898) 15 R. P. C. 262. .-11111 111
• VOL. XIV.] EXCHEQUER COURT REPORTS. 307 -it is certainly embarrassing to it to say the least, 1913 and in my opinion the petitioner is a party entitled to Itt re AIITOBALE$ make the application. GUM AND C HOCOLATE In the Batt case the ground of the decision in the Co. court below was that at the date of the registration there i[easons for Judgment. was no bona fide intention on the part of the firm to -use the trade-marks. The Batt case was appealed (1). The Court was composed of Lindley, M. R., and Chitty and Collins, L. JJ. The Master of the Rolls in giving judgment (at page -441) puts a construction upon the statute as follows: "It remains only to consider' whether s. 90 of the "Act of 1883 (the rectification section) is applicable "to this case. We are of opinion that it is. The `applicants are parties aggrieved; for thé trade `mark they desire to have registered is kept off the 'register by reason of the presence on it of the 'marks of J. Batt' & Co. The entry of these 'marks is "an entry made' without sufficient cause '"in the register." We are not disposed to 'put a 'narrow construction on this expression, nor to read "it as if the word "made" were the all important 'word, and as if the words "made without sufficient cause" were "made without sufficient causé at the "time of registration," so as to be confined to that "precise time. If any entry is at any time on the -"register without sufficient cause, however it. got -",there, it ought in our opinion to be treated as 'covered by the words of the 'section. The con-'"tinûance there can answer no legitimate purpose; -"its existence is purely baneful to trade, and in our '"opinion in the case supposed the Court has power • -"•to , exp.iinge or vary it." ,_(1) (1898) 2 Cb. D. 439; (1898) 15 Rep. Pat: Cas. 534.
308 EXCHEQUER COURT REPORTS. [VOL. XIV. 1913 This case was taken on appeal to the House of Lords In re (1). The Earl of Halsbury, L.C., in giving judgment AUTOSALES Gum AND says (2) CHOCOLATE Co. "My Lords, whatever may be the ultimate decision Reasons for Judgment. "on the abstractr p o p os ition as to whether or not "there can be a keeping back for a long time of a "trade-mark which originally was bona' fide intended "to be used, but which from accident or some other "cause has not been. used, I purpose giving no "opinion upon it at present for this reason, that it "does not arise in this case." The result is the statement approved of by the Judges in the Court of Appeal, Lindley, M. R., and Chitty and Collins, L.JJ., has not been disturbed (3). While it may be that it was not necessary to place a construction upon section 90 of the Act of 1883, as set out in that part of the judgment which I have quoted, nevertheless it is needless to say that they are •j udgments of three well-known jurists which carry great weight. Moreover, there is a great deal to be said in favour of such a construction. The third sub-section of section 42 provides that the court may decide any question that may be expedient té decide for the rectification of the register. It seems to me that under the circumstances alleged in this petition, if the facts are substantiated, it is very inexpedient if people are permitted to retain upon the register of trade-marks, marks that are embarrassing and baneful to trade. The case of Re Smollens' Trade-Mark, to which I was referred in the Weekly Notes- of 3rd February, 1912, at page 35, is reported in full in 29 Rep. Pat. Cas. (4). I do not think that case furnishes any help in the case before me. It was an application made under The (1) (1899) A. C. 428. (3) (1898) 2 Ch. D. 439. (2) Id., p. 429. (4) At p. 158. ~ ~
VOL. XIV.] EXCHEQUER COURT REPORTS. 309 Trade-Marks Act, 1905. The 'statute' had been altered 1913 by amending the old section 90 of the statute of 1883, In re Ass and by inserting the words "or by any entry wrongly Guar AND CHOCOLATE remaining on the register," which placed the question co. of jurisdiction beyond doubt (1). Furthermore, the Reasons for Judgment. provisions of the English Trade-Marks Act, 1905, section 37, made the thing quite clear. There is no case in our courts that I know of which deals with the question. As I have previously stated, no application has been made on the part of the petitioner to register these words as its own trade-mark. It was cdnceded before me that notwithstanding the prior user of the trade-marks, if such trade-marks hàve been abandoned and not' used by others for a, period of years it would be no .bar to the registration of the same words, assuming them to be the . subject-matter of a trade-mark, by another. I do not wish to pass upon the question as to whether or not a trademark Could not be registered if in point of fact the party applying for registration could show that notwithstanding the prior registration such trade-mark had been abandoned for such a length of time as to entitle the other to adopt it as his own and have it placed upon the register. It may be that if the owner of the registered trade-mark had in point of fact abandoned it, in any action brought by him to enforce such trademark a defence could be set up of abandonment; and it may be that such a case could be made on the. application to register by the subsequent adopter of the trade-mark, assuming him to be entitled thereto. On this point, however, I pass no opinion as the case has .not been argued before me. I think the legal (1) See sec. 35 (1), Trade Marks Act, 1905.
310 EXCHEQUER COURT RETORTS. [VOL, XIVV. 1913 objection must be overruled with costs of the appli- In re cation to the petitioner in any event. AUTOSALES GUM AND CHO C CO o. L ATE Judg g m ent according ly. Bensons for Judgment. Solicitors for the petitioners: .Ritchie, Ludwig and Ballantyne. Solicitors for the party objecting: Fetherstonhaugh c&c Smart.
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.