VoL. XX. EXCHEQUER COURT REPORTS. 405 BETWEEN 1921 February 28. THE BILLINGS AND SPENCER COMPANY, OF HARTFORD, PETITIONERS; CONNECTICUT, U.S. AND CANADIAN BILLINGS AND SPEN- CER, LIMITED, AND CANADIAN FOUNDRIES AND FORGINGS, LIMITED. OBJECTING PARTIES. Trade-Mark--Petition to expunge—Effect of misrepresentation in application for Trade-Mark. Held: In the interests of trade, public order, and the purity of the Register of Trade-marks, the Court will exercise its discretion by ordering the removal from the register of any entry made thereon under misrepresentation and "without sufficient cause." 2. Where .a trade-mark is registered upon the statement of the applicants that they verily believe the same to be theirs "on account of having been the. first to make use of the same," such statement being a misrepresentation of fact the - court should order that such trade-mark be expunged. Quaere? Will the fact that a trade-mark has been simultaneously used by two persons, each having knowledge of the user by the other, amount to a dedication of the mark to the public? THIS. WAS A PETITION for an Order expunging trade-mark registered by the objecting party from the Canadian Register of Trade-marks. January 7th, Sth, and 10th, 1921. The matter was now heard before the Honourable Mr. Justice Audette at Ottawa.
406 -EXCHEQUER COURT REPORTS. Vol,. XX. 1921 Russel S. Smart and J. L. McDougall for petitioners. THE BILLIN(3â AND SPENCER A. W. Anglin K.C. and J. A. Hutchison for Object- COMPANY, OF HARTFORD, ing Parties. CONNECTICUT, U.S.A. v. CANADIAN The facts are stated in the reasons for judgment. BILLINGS AND SPENCER, LIMITED, AND CAN ADIIN AUDETTE J. now (28th February, 1921) delivered Fou ND RIES judgment. ORA Nx is, LIMITED. This is an application, by the petitioners, to expunge Reasons for Judgment. from the Canadian Register of Trade-marks the Audette J. above mentioned specific trade-mark, as applied to the manufacture and sale of machinery, tools and forgings, and registered in Canada, on the 27th Febru-ary, 1907. . This court is given jurisdiction over such matters both under section 23 of the Exchequer Court Act, and under section 42 of the Trade-mark and Design Act. .It appears from the evidence that the petitioners for many years prior to the date of such registration— for a period extending as far back as 1871—were the proprietors of this mark, and made use of it throughout Canada and the United States, in respect of the class of goods above mentioned. They had a large business connection in Canada, and their goods had acquired a large and valuable repute. In the view I take of the case, based as it is upon the terms of the statute, it will be sufficient without more to say that, notwithstanding the negotiations which took place between the officers of the companies, so far as the evidence before me discloses, there was no formal embodiment in writing of any sale or assignment of the trade-mark along with the good will.
Vol,. XX. EXCHEQUER COURT REPORTS. The registration of the trade mark was duly made, in February, 1907, upon an application which reads .as follows "To the Minister of Agriculture, "(Trade Mark and Copyright Branch) Ottawa, Ont. "We, Canadian Billings & Spencer, Limited, a company incorporated under the Ontario Companies Act, with head office at the town of Brockville, in the county of Leeds, and province of Ontario, hereby furnish a duplicate copy of a specific trade-mark to be applied to the sale of machinery, tools and forgings in accordance with sections 4 and 9 of "The Trade Mark and Design Act" which we verily believe is ours on account of having been first to make use of same." "The said specific trade-mark consists of an equilateral triangle with a large letter `B' inside of same and we hereby request the said specific trade mark to be registered in accordance with the law. "We forward' herewith the fee of $25.00 in accordance with section 10 of the said act. "In testimony whereof we have caused our manager and treasurer (being the duly authorized officers for the purpose) to sign in the presence of the two undersigned witnesses at the place and date hereunder mentioned, and to attach our corporate seal hereto. "Dated at Brockville this 7th day of February, 1907. "Witnesses (Sgd.) R. Bowie, "(Sgd.) W. S. Buell, `(Sgd.) J. H. Botsford. (Sgd.) J. Gill Gardner, (Seal) . 407 1921 BITni G S AND SPENCER COMPANY, 07 HARTFORD, CONNECTICUT, U.S.A. CANADIAN BILLINGS AND SPENCER, LIMITED, AND AN ENS NNDR AND FÔROINGS, LIMITED. Reasons for Judgment. Audette J. Treas. "' Mgr.
408 EXCHEQUER COURT REPORTS. VoL. XX. 1921 It will be noticed that the application is made upon B GS the representation by the company that they "verily THN AND SPENCER believe (the trade-mark) is ours on account of having COMPANY, OF HARTFORD, been first to make use of same." CONNECTICUT, U.S.A. In support of their application they also filed a letter CANADIAN reading as follows: BILLINGS AND SPENCER, LIMITED, AND "Hartford, Conn., Jan.. 29th, 1907. CANADIAN FOUNDRIES AND "To the Minister of Agriculture, , ÎImiTED. Ottawa, Canada. Reasons for Trade-mark Judgment. — Dear Sir:— Auc~ette J. "This is to advise you that we have no objection to the Canadian Billings & Spencer, Limited, registering in Canada the trade-mark used by this company in our business, and as shown by the above letter head.. Yours respectfully, "The Billings & Spencer Company, "F.C. Billings, V.P. and Supt. "Patent and Copyright Office, "(Copyright and Trade Mark Branch) "Ottawa, Canada, this 6th day of January, A.D. 1921. "Attested, "Geo. F. O'Halloran, "Commissioner of Patents. This document does not bear the seal of the com- pany, and the vice-president and superintendent who signs it, does not show any authority of the company by resolution to F. C. Billings to make this waiver of objection to the defendant company's registration of the mark in dispute. This officer, assuming to represent the American company, was also receiving
VOL. XX. EXCHEQUER COURT REPORTS. as a bonus, a number of shares in the Canadian comp- any. This placed him in the equivocal position of having to decide between his duty and hi% interest This document is no more formal than any letter which an officer of the company might have written to a customer relating •to the sale or purchase of goods manufactured by the company. The rights and powers exercisable by the executive officers and servants of a company would appear to end where the exclusive rights and powers of the- company, as a corporate body, begin which are only Re exercisable by by-laws and resolution. The officers of a company may extend their bounty and benevolence only to the extent authorized by the nature of their mandate as such officers; they cannot bind the company by anything done in excess of their express or reasonably implied powers. They cannot bind the company by -their personal act in a matter where thé company, as a corporate body, can alone' speak—that is to say, by by-laws and resolutions. In this view it would be idle to contend that an officer of a company,—(a vice-president in the cae)—could ex mero motu and. without a resolution and a document of transfer under the deal of the company sell the company's- trade-mark and good will. However, it is s not necessary, in respect of the letter of consent,ex hibit "B," to do more than repeat what witness Ritchie—heard on behalf of the objecting parties,—said at the trial, that he would have registered the trade-mark without that letter. The letter was not necessary since the applicants asserted • "the trade-mark 'was theirs - on account of having been first to make use of same," , That last allegation was in compliance with ' the requirements of the law. The letter had nothing to do with the registration. 409 19 9 211 B Tx~ ILLINGS . AND SPENCER COMPANY, OF HARTFORD, CONNECTICUT, U.S.A. V. CANADIAN BILLINGS AND SPENCER, LIMITED, AND CANADIAN FOUNDRIES AND LIMITED. 3 dg as u m tin e s . a fo •t r Audette J. présent
410 EXCHEQUER COURT REPORTS. VoL. XX. 1921 The Canadian Trade-mark Act does not contain a BnT.I,HIE definition of trade-marks capable of registration, but AND SPENCER provides by sec. 11, that the registration of a trade- COMPANY, OF HARTFORD, mark may be refused if the so-called trade-mark does CONNECTICUT, v. , s . . A. not contain the essentials necessary to constitute a trade-CANADIAN mark properly speaking (1). This same sec. 11 further BILLING$ AND SPENCER, provides, that the applicant should be -undoubtedly LIMITED, AND CANADIAN entitled to the exclusive use of the trade-mark (2). FOUNDRIES Fo Sec. 13 of the Act provides that the applicant may i xos, LIMITED. have his trade-mark registered upon forwarding a Jud gm f en r t . r declaration that it "was not in use to his knowledge Audette J. by any other person than himself at the time of his adoption thereof." Then sec. 42 (R.S.C. 1906, Ch. 71) provides, among other things, for expunging, at the suit of any aggrieved person, the entry of any trade-mark, on the register, without sufficient cause. It was alleged at bar that the petitioners were not persons aggrieved. With that view I cannot agree. The petitioners had been using their trade-mark both in Canada and the United States for a great many years, to distinguish their goods; and if such registration is allowed to stand the Canadian Company would be the ostensible owners of the mark with the right to the exclusive use of the same. Surely the petitioners under such circumstances would be "persons aggrieved." That is the conclusion at which I lave arrived, and I think my conclusion is in conformity with the following decisions of Baker v. Rawson (3), the Autosales Gum & Chocolate Company (4), and Batt & Co's Trade-mark (5). (1) The Standard Ideal Co. vs. The (3) 8 R.P.C. 89, at 98. Standard Sanitary Manufactur- (4) 14 Ex. C.R. 302. ing Co., C.R. (1911) A.C. 259. (5) [18981 2 Ch. D. 432. (2) Rogers' Trade Mark. 12 R.P.C. 149; and Bush Manufacturing Co., 2 Ex. C.R. 557.
VoL. XX. EXCHEQUER COURT REPORTS. Now, whatever may be said upon numerous other • questions raised at bar, I have come to the conclusion BirrHrras ' that when the Canadian Billings and Spencer Co., Limited, filed their application for registration, they were guilty of making a misrepresentation of fact when they stated to the Minister of Agriculture that "they verily believed that the mark was their own on account of having been first to make use of same." It is inconceivable that one knew better than they did that such a statement was untrue, because they were in the most intimate rela • during the considerable period that the mark had been used both in Canada and the Unted States • by the petitioners (1). The very document with which they accompanied their application (Ex. B) is cogent proof of this. They obtained the `registration of this trade-mark through false statements and misrepresentation. Their conduct in doing so was most reprehensible and all arguments at bar invoking equity cannot avail, because he who seeks equity must come into court with clean hands. Whatever might have been the demerits of the applicants, the court in a matter of this kind where the interests of trade, public order, and the purity of the register of trade-marks are concerned, should always exercise its .discretion to order the removal from the register of the entry made "without sufficient cause." (2). (1) Smith v. Fair, 14 Ont. R. 729. (2) The Bucyrus Co., 35; 47 S.C.R. 484; Cloth Co., v. Rawson, Appollinaris Co., at 160, 161 and 163, of Trade Mark, 21799-20 tian 411 1921 COMPP ENC OP HARTFORD, CON NECTICUT, U.s.A. v. IAN LTABNILA L D I N(3â AND SPENCE R, IMITED, A ND CANADIAN Fov ND RIE$ FORNIHas, LIMITED. t ions with the petitioners R J e u a dsgomnse f n o t . r Audette J. The Canada Foundry Co. v. 14 Ex. C.R. The Leather 11 H.L.C. 523; Baker 8 R.P.C. 89; The 8 R.P.C. 137; Kerly's Lau; 318, 320; Sebas- 236, 403, 520, 600.
412 EXCHEQUER COURT REPORTS. VOL. XX. 1921 Having come to the conclusion that the discretion THE S of the court should be exercised in the manner above BILLING A , ND SPENCER OP set forth which gives effect to the statutory require- NY, HARTFORD, CONNECTICUT, ment of ownership as an indispensable condition of U.S.A. the right to register, it becomes unnecessary to labour v. CANADIAN many questions raised at bar, and such as to whether BILLINGS AND SPENCER, or not the fact of this mark having been used in Canada LIMITED, AND CANADIAN Fouismuzs by both parties, to their respective knowledge, did FoRNDae not thereby dedicate the trade-mark to the public (1). LIMITED. There will be judgment ordering to expunge from Reasons for Judgment. the Canadian Register the trade-mark in question Audette J. registered by the Canadian Billings do Spencer 'Co., Limited, on the 27th February, 1907, under No. 48, folio 11715,—the whole with costs. Judgment accordingly. (1) 5 Official Gazette, U.S. 337-338.
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.