A-135-73
Phil Borden Limited (Appellant)
v.
Uarco Incorporated (Respondent)
Court of Appeal, Jackett C.J., Thurlow and Urie
JJ.—Ottawa, October 29 and 31, 1975.
Trade marks—Application to register U.S. trade mark in
Canada—Prior application by competitor—Whether trade
mark previously used in Canada—Sale of U.S. wares in
Canada—Whether 'use"—Trade Marks Act, R.S.C. 1970, c.
T-10, ss. 2, 4.
Respondent, a Delaware corporation which had been in
business in the United States since 1894, used the United
States registered trade mark "UARCO" in association with
wares it manufactured, viz., business form stationery and
machines. On November 5, 1968, it applied for registration of
the trade mark in Canada. The application was opposed by
appellant who had filed an application for registration of the
same mark on July 18, 1968. The Registrar of Trade Marks
dismissed respondent's application on the ground that respond
ent had not used the mark continuously in Canada prior to the
date of its application within the meaning of section 4 of the
Trade Marks Act and therefore the mark was confusing with
the mark applied for by appellant. On appeal to the Trial
Division, respondent established that in 1963 it had sold a
machine bearing the mark "UARCO" to a Canadian company
and that in 1967 and 1968 it had shipped wares from its United
States' plants to Canadian customers in boxes or cartons bear
ing the mark "UARCO". The Trial Division held that the mark
was "used" by respondent in Canada prior to July 18, 1968,
within the meaning of sections 2, 4 and 16 of the Act, and
respondent was therefore entitled to registration.
Held, the appeal is dismissed. The trade mark of the
respondent was used in Canada within the meaning of the
Trade Marks Act in association with the wares sold to Canadi-
an customers and shipped to them in Canada.
Uarco Incorporated v. Phil Borden Limited [1973] F.C.
650, affirmed.
APPEAL.
COUNSEL:
J. O'Grady for appellant.
W. Meredith and J. C. Singlehurst for
respondent.
SOLICITORS:
Soloway, Wright, Greenberg, O'Grady,
Morin, Ottawa, for appellant.
Meredith and Finlayson, Ottawa, for
respondent.
The following are the reasons for judgment
delivered orally in English by
JACKETT C.J.: This is an appeal from a judg
ment of the Trial Division' in a trade mark matter
in which the only question that was in issue be
tween the parties in this Court was whether the
respondent had established that it had used the
trade mark "UARCO" in Canada prior to the
appellant's application, on July 18, 1968, for regis
tration of that mark as a proposed trade mark.
The learned Trial Judge expressed his conclu
sions on that issue in the part of his reasons for
judgment that read as follows:
The evidence establishes, in my appreciation of it, that the
appellant sold and shipped the burster above mentioned to the
Ford Company at Oakville, Ontario, in May 1963 and also sold
and shipped other of its wares through the years 1967 to 1972
from its plants in the United States for delivery to Canadian
customers in Canada, that the customers paid for the wares,
and that the wares and the packages in which they were
shipped bore the appellant's trade mark UARCO. There is proof
that the Ford Company received the burster at Oakville and
used it there and at Windsor, and there is also a reasonable
inference that the Canadian customers received the other wares
in Canada in the normal course of international trade between
the two countries, and there was, in my opinion, a direct chain
(cf. Manhattan Industries case [4 C.P.R. (2d) 6]) of selling
and delivering the wares, in the normal course of trade, from
the shipment of the wares from the appellant's plants in the
United States to their physical reception by the Canadian
customers in Canada, and substantial general trading of such
wares by the appellant in Canada prior to July 18, 1968, and
thereafter to and including the year 1972. On that appreciation
of the evidence the trade mark was "used", within the meaning
of sections 2, 4 and 16 of the Trade Marks Act, by the
appellant in Canada prior to July 18, 1968.
I am in agreement with that part of the learned
Trial Judge's reasons and would accordingly be
prepared to dismiss the appeal without saying
anything further in connection with this appeal.
However, in order to avoid any misunderstand
ing as to my position with regard to section 4 of
the Trade Marks Act, and out of respect for the
argument of counsel for the appellant, I deem it
advisable to make some further comments with
[1973] F.C. 650.
regard to the legal question that was discussed in
this Court.
For the purpose of my discussion it will be
sufficient to refer to the following provisions in the
Trade Marks Act, viz:
2. In this Act
"trade mark" means
(a) a mark that is used by a person for the purpose of
distinguishing or so as to distinguish wares or services manu
factured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others,
(b) a certification mark,
(r) a distinguishing guise, or
(d) a proposed trade mark;
"use" in relation to a trade mark, means any use that by section
4 is deemed to be a use in association with wares or services;
4. (1) A trade mark is deemed to be used in association with
wares if, at the time of the transfer of the property in or
possession of such wares, in the normal course of trade, it is
marked on the wares themselves or on the packages in, which
they are distributed or it is in any other manner so associated
with the wares that notice of the association is then given to the
person to whom the property or possession is transferred.
(2) A trade mark is deemed to be used in association with
services if it is used or displayed in the performance or advertis
ing of such services.
(3) A trade mark that is marked in Canada on wares or on
the packages in which they are contained is, when such wares
are exported from Canada, deemed to be used in Canada in
association with such wares.
The view commonly taken of section 4(1), read
with the definition of "use" in section 2, would
appear to be that it requires that there must have
been a transfer of property or possession in the
wares involved in Canada before it can be conclud
ed that a trade mark was used in Canada. There is
much to be said for that view of the provisions in
question and, if it is correct, on the findings of fact
of the learned Trial Judge, I am of opinion that
this appeal must be dismissed for the reasons given
by him. However, I wish to reserve my opinion as
to the correctness of that view as the result of this
appeal would be the same even if an alternative
view as to the meaning of section 4 that occurs to
me is the better view. That alternative view, which
will, as I see it, require to be considered in an
appropriate case, may be summarized as follows:
1. What would be "use" of a trade mark in the
sense of that word in the statute, as determined
by reference to the definition of "trade mark", is
any utilization of the trade mark by the owner
"for the purpose of distinguishing or so as to
distinguish" his wares or services from those of
another;
2. however, by virtue of the definition of "use",
where that word is used in the statute in relation
to a trade mark, it is restricted to the sort of
utilization, in association with wares or services,
that is contemplated by section 4;
3. section 4(1) provides, inter alia, that a "trade
mark is deemed to be used in association with
wares if ... it is marked on the wares
themselves". 2
If that were all that had to be considered, the
result would be that, where the statute refers to
use of a trade mark in association with wares, it
refers to any utilization of it by one of the methods
set out in section 4(1) for the purpose set out in
the definition of "trade mark", namely, to distin
guish the wares originating with the owner of the
trade mark from wares originating with someone
else, and, on that view, which I am inclined to
think has some merit, the respondent would be
successful in this case, inasmuch as goods sold by
it to persons in Canada have the trade mark on
them after their arrival in Canada and that is the
normal method of using a trade mark to indicate
the origin of wares.
However, the difficulty with that alternative
view, and the reason why I do not desire to express
any unnecessary opinion with regard thereto at
this time, is the presence in section 4(1) of the
words "at the time of the transfer of the property
in or possession of such wares, in the normal
course of trade". I have to admit to experiencing
great difficulty in fitting those words grammatical
ly with the rest of section 4(1) and in giving them
any effect that advances the general scheme of the
z There are two alternative methods that need not be men
tioned for present purposes.
Trade Marks Act as I appreciate it. 3 It seems
clear enough that the words in question are intend
ed to require that the trade mark be on the wares
at the time of the sale or transfer of possession by
the trade mark owner. They do not seem to require
that "use" in Canada involves such a sale or
transfer in Canada. I do not, however, feel any
confidence as to the purpose of the requirement
and I, therefore, deem it advisable to reserve
expressing any opinion concerning the precise
meaning of section 4(1) until such time as it
becomes necessary to do so.
* * *
The following are the reasons for judgment
delivered orally in English by
THURLOW J.: I agree with the learned Trial
Judge that on the facts as he found them and for
the reasons he gave the trade mark of the respond
ent was used in Canada within the meaning of the
Trade Marks Act in association with the wares
sold to Canadian customers and shipped to them in
Canada.
In the law relating to the sale of goods, the
transfer of the property in the goods may, in such
situations, pass in the United States and the deliv
ery of the goods by the manufacturer to a carrier
in the United States for carriage to the customer
may constitute delivery of the goods to the custom
er. But, as I see it,_ legal theory or rationalization
with respect to sales of goods is not what is
involved in the present case. The case is concerned
with the use of a trade mark in the market in a
transaction the features of which extend across the
international boundary.
In the case of each of the sales by the respond
ent to Canadian purchasers there was a commer
cial transaction which, from the point of view of
trade mark use, began with an order from Canada
to a manufacturer in the United States who filled
the order by shipping goods bearing his trade mark
As of yet, I have not been able to conceive why utilization
of trade marks on the wares prior to sale or delivery would not,
in some cases, be an appropriate use (e.g., at trade fairs, on
display counters, etc.), nor why use of the trade mark on wares
would not be appropriate unless it was affixed at the time of
sale or delivery (e.g., sales in bulk under arrangements for the
trade mark to be attached by the purchaser after sale).
to the Canadian customer, and the goods, with the
trade mark on them, were thereupon transported
to the customer in Canada. That, in my view,
constituted a use of the mark in Canada within the
meaning of section 4 of the Act.
This appears to me to be sufficient to dispose of
the present case and like the Chief Justice I would
express no concluded opinion on the problems of
interpretation of section 4 of the Act which were
discussed in the course of the argument.
I would dismiss the appeal.
* * *
The following are the reasons for judgment
delivered orally in English by
URIE J.: I agree with the disposition of the
appeal proposed by the Chief Justice and Mr.
Justice Thurlow for the reasons expressed by each.
In particular, I wish to associate myself with Mr.
Justice Thurlow's views on the relationship -of the
law of the sale of goods to the matters in issue in
this trade mark action.
The Chief Justice in his reasons has succinctly
brought into focus some of the problems inherent
in the interpretation of section 4 of the Trade
Marks Act. I have formed no firm opinion on the
question of the appropriate interpretation of this
section but, in view of the findings of the Trial
Judge, it is unnecessary for me to do so.
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.