Jesse Magder, trading as Sportcam Company, or
Sportcam Co. (Appellant)
v.
Breck's Sporting Goods Co. Ltd. (Respondent)
and
Sportcam Co. Limited (Appellant)
v.
Breck's Sporting Goods Co. Ltd. (Respondent)
Court of Appeal, Jackett C.J., Thurlow J. and
MacKay D.J.--Ottawa, April 9, 10 and 11,
1973.
Trade marks—Infringement—Foreign wares sold under
Canadian trade mark by Canadian distributor and competi-
tors—Trade mark not distinctive of wares sold by Canadian
distributor—Trade Marks Act, section 2(f) and (t).
A French manufacturer of fishing lures applied the word
"Mepps" to lures manufactured by it to distinguish them
from those manufactured by others. Its lures were sold
under that name in Canada commencing in 1951 and did
actually distinguish the French manufacturer's wares from
those of others. The trade mark "Mepps" was registered in
Canada in 1956 by the exclusive distributor of the Mepps
lures in Canada. In 1959 respondent became exclusive dis
tributor of Mepps lures in Canada and also the registered
assignee of the trade mark "Mepps". Appellant imported
Mepps lures from France and sold them in Canada under the
"Mepps" trade mark. Respondent brought an action against
appellant for infringement.
Held, reversing Gibson J., the action must be dismissed.
The registration of the trade mark in Canada was invalid.
The trade mark "Mepps" did not actually distinguish lures
sold by respondent from those of others as required by
section 18(1)(b) of the Trade Marks Act, having regard to
the definitions of "distinctive" and "trade mark" in the Act.
There was no evidence to support the trial judge's finding
that commencing in 1956 the mark "Mepps" actually came
to distinguish Mepps lures sold by respondent in Canada.
The Hotpoint Electric (1921) 38 R.P.C. 63, considered.
APPEAL from Gibson J.
COUNSEL:
G. F. Henderson, Q.C., and K. H. E. Plum-
ley for appellant.
W. F. Green and J. M. Shearn for
respondent.
SOLICITORS:
Gowling and Henderson, Ottawa, for
appellant.
W. F. Green, Toronto, for respondent.
JACKETT C.J. (orally)—This is an appeal from
a judgment of the Trial Division finding
infringement of a registered trade mark and
dismissing a counterclaim for a judgment strik
ing out the registration and a cross-appeal
against the dismissal of a claim for breaches of
sections 7 and 22 of the Trade Marks Act, S.C.,
1952-53, c. 49.
The trade mark is the word "Mepps" and is
registered in respect of "Fishing tackle ..." It
was registered first in the name of Boehm-Shel-
don Inc. on June 29, 1956. On September 1,
1959, an assignment to the respondent, whose
name was then Sparkling Products Company,
Ltd., was registered. On November 22, 1965,
the respondent changed its name to its present
name.
After reading the evidence as a whole, I have
come to the conclusion that "Mepps" is a word
used as the trade mark under which fishing lures
manufactured by a certain company in France
are sold and that, to a person in Canada who
buys fishing lures for his own use, the trade
mark simply means that lures sold in association
with it have been manufactured by a particular
French manufacturer.'
Boehm-Sheldon Inc. had, during the time it
was the registered owner of the trade mark,
contractual arrangements with the French
manufacturer, under which it was entitled to be
the exclusive distributor of the "Mepps" lures in
the United States and Canada. During that time,
the respondent or its predecessor in business
was, under a contractual arrangement with
Boehm-Sheldon Inc., the sub-distributor in
Canada.
In or around 1959, these contractual arrange
ments were changed so that the respondent
acquired, by virtue of a contractual arrangement
with the French manufacturer, the right to be
the exclusive distributor of the "Mepps" lures in
Canada.
It is common ground that the appellants, prior
to the institution of the actions, imported
"Mepps" lures from suppliers in France, who
acquired them directly or indirectly from the
French manufacturer, and sold them in Canada
under the "Mepps" trade mark so that, if the
respondent's registration of that trade mark has
not been shown to be invalid, there has been
established an infringement of the exclusive
right vested in the respondent by section 19 of
the Trade Marks Act, which reads as follows:
19. Subject to sections 21,31 and 65, the registration of a
trade mark in respect of any wares or services, unless
shown to be invalid, gives to the owner the exclusive right to
the use throughout Canada of such trade mark in respect of
such wares or services.
My first reaction to the question of the validi
ty of the respondent's registration of the trade
mark is that it is invalid by virtue of that part of
section 18(1) of the Trade Marks Act that reads
as follows:
18. (1) The registration of a trade mark is invalid if
(b) the trade mark is not distinctive at the time proceed
ings bringing the validity of the registration into question
are commenced; .. .
when that provision is read with the following
definitions in section 2 of that Act:
(f) "distinctive" in relation to a trade mark means a trade
mark that actually distinguishes the wares or services in
association with which it is used by its owner from the
wares or services of others or is adapted so to distinguish
them;
(t) "trade mark" means
(i) a mark that is used by a person for the purpose of
distinguishing or so as to distinguish wares or services
manufactured, sold, leased, hired or performed by him
from those manufactured, sold, leased, hired or per
formed by others,
If the trade mark registration is invalid for that
reason, it becomes unnecessary to consider the
other attacks that were made on it.
In my view, a reading of the evidence given in
this case shows that the trade mark "Mepps"
was used in Canada, prior to its registration, to
show that lures sold under that name came from
a certain French manufacturer and that those in
Canada who came to know that trade mark so
understood it; and that, notwithstanding its
registration in the name of distributors, it never
had any other significance in fact . 2
if I am right in so appraising the evidence, it
follows that, at the time the actions in question
were instituted, the trade mark "Mepps" did not
actually distinguish "wares" in association with
which it was used by the respondent (its "own-
er" by virtue of the registration) from "wares"
of persons other than the respondent. In par
ticular, use by the respondent at that time of the
trade mark "Mepps" in association with goods
would not have distinguished such goods from
goods of the French manufacturer.' I conclude,
therefore, that the trade mark was "not distinc
tive" (within the meaning of the word "distinc-
tive" as defined by the Act) at the time that the
proceedings bringing the validity of the registra
tion into question were commenced and that the
registration is therefore "invalid" by virtue of
section 18(1)(b).
I have reached the conclusion that the trade
mark "Mepps" was not, at the relevant time,
"distinctive" only after anxious consideration of
the learned trial judge's findings on this aspect
of the case. He made a finding that "from 1956
until July 7, 1959, the Canadian trade mark
`MEPPS' distinguished within the meaning of sec
tion 2(f) of the Trade Marks Act the lures sold
in Canada by the plaintiff company (manufac-
tured in France) from the lures of others, even
though the plaintiff was not a registered user of
the said trade mark; and from July 7, 1959, to
date, the Canadian trade mark `MEPPS' similarly
distinguished the lures sold by it in Canada".
When he finds that, as of the times to which he
refers, the trade mark distinguished, within the
meaning of section 2(f), the lures sold in Canada
by the respondent from the lures of others, he
makes a finding that that trade mark was at
those times a trade mark that "actually distin
guishes the wares ... in association with which
it is used by its owner from the wares ... of
others or is adapted so to distinguish them". In
other words his finding would seem to be that,
when the "Mepps" mark appeared on lures
during the relevant time, it conveyed to the
buying public the message that such lures were
lures sold by the respondent. Starting with the
fact, as found by the learned trial judge and as
amply supported by the evidence, that, prior to
1956, the trade mark "Mepps" distinguished,
within the meaning of section 2(f), the lures of
the French manufacturer from the lures of
others, I can find no evidence that, commencing
in 1956, anything was done to make it convey to
the market some other message. In this connec
tion, I adopt what was said by P. 0. Lawrence J.
in The Hotpoint Electric case ((1921) 38 R.P.C.
63 at page 71):
It is quite true that a mark can indicate the seller or
selector of the goods and need not necessarily indicate the
manufacturer, but if the reputation of the mark has been
gained owing to its being used by the manufacturer, and it
has become known as the manufacturer's mark, I think it
might very well cause deception and confusion, if it were
used afterwards, without something on the mark itself, for
the purpose of indicating only the seller of the goods which
were being manufactured by somebody else.
I am of the view that it is important to bear in
mind that a trade mark is only "distinctive"
within the meaning of that word as used in the
Trade Marks Act if it "actually distinguishes"
the wares with which it is used by its owner
from the wares of others . 4
It follows from my conclusion that the regis
tration was invalid by virtue of section 18(1)(b)
that, in my opinion, the appeal should be
allowed with costs, because, in my view, the
infringement actions should have been dis
missed and there should have been judgment on
one of the counterclaims striking the registra
tion from the Register.
In so far as the cross-appeal is concerned,
once the conclusion that I have reached as to
the significance of the trade mark "Mepps" in
the Canadian market is accepted, there is no
basis for a claim under section 7 of the Trade
Marks Act and, if the registration of the trade
mark is invalid, there can be no claim under
section 22. I am therefore, also, of the view that
the cross-appeal should be dismissed with costs.
* * *
THURLOW J. (orally)—On the facts of this
case there is no doubt that throughout the
period commencing in 1951, when fishing lures
bearing the mark "Mepps" first appeared on the
market in Canada, and continuing up to the time
in 1969 when the counterclaims for expunge -
ment in these proceedings were filed, the mark
"Mepps" had been applied to such fishing lures
by the French company which supplied them,
that is to say, Manufacture d'Engins de Préci-
sion pour Pêches Sportives. There is also no
doubt that the French company applied the
mark to the lures for the purpose of distinguish
ing its wares from those of others. The word
"Mepps", has thus been, throughout the rele
vant period, a trade mark, within the meaning of
the definition of "trade mark" in section 2 of
the Trade Marks Act, used by that company to
identify its goods.
To my mind it is also clear that throughout
the relevant period the trade mark "Mepps"
actually distinguished lures of the French com
pany from those of others within the definition
of "distinctive" in section 2 and that the French
company had applied the mark to the goods in
the exercise of its right to do so as owner of the
mark and not as agent for the respondent.
The respondent's case as I understand it does
not challenge these facts but is based on the
proposition that in Canada at one and the same
time the trade mark "Mepps" can distinguish
the goods of the French manufacturer and the
goods of the distributor of them and thus be
"distinctive" of both. In my opinion this is not
possible under the statute and in view of the
unchallenged facts which I have outlined it
appears to me to follow that the trade mark
could not be distinctive of the respondent's
wares within the meaning of the statute when
the counterclaims for expungement were filed.
The learned trial judge found that the mark
was distinctive of the French company from
1951 to 1956 and thereafter was distinctive of
the respondent company but with respect I am
unable to agree that the mark was ever distinc
tive of the respondent in the sense of the defini
tion of section 2, that is to say, that the mark
was a trade mark used by the respondent as
owner thereof to distinguish its goods from
those of others and which actually distinguished
its goods from those of others. The respondent
never applied the mark to lures of the French
company or to other lures of its own. Nor did
the French company apply the mark to them as
the respondent's agent. Moreover, as between
itself and the French company, the respondent
had no right to use the mark in association with
goods other than those of the French company.
The respondent merely resold in Canada lures
to which the French company had applied its
mark as the owner thereof, and at no time took
steps to inform the market that the mark had
ceased to be that of the French company and
had now become its trade mark. I do not think
therefore that a finding that the mark was dis
tinctive of the respondent's wares from 1956 to
1959, a time when neither the respondent nor its
predecessor had any claim whatever to owner
ship of the mark, is supportable or that the
finding that the trade mark was distinctive of
the respondent following the purported assign
ment of it should be upheld.
I would allow the appeal and dismiss the
cross-appeal as proposed by the Chief Justice.
MACKAY D.J. concurred.
' Whether or not the individual members of the purchas
ing public were aware of the French manufacturer's name is
immaterial—the theory is that those who had shown a
preference for the goods sold under the marks had learned
to have confidence in the manufacturer of such wares
regardless of whom he might be. See Wotherspoon v. Currie,
L.R. 5 E. & I. App. 508, per Lord Hatherley, L.C. at pages
514-15: "Therefore the name `Currie' ought to be distinct,
as I believe it is, and the name of the article again, if it has
acquired a name, should not, by any honest manufacturer,
be put upon his goods if a previous manufacturer has, by
applying it to his goods, acquired the sole use of the name. I
mean the use in this sense, that his goods have acquired by
that description a name in the market, so that whenever that
designation is used he is understood to be the maker, where
people know who the maker is at all—or if people have been
pleased with an article, it should be recognized at once by
the designation of the article, although the customers may
not know the name of the manufacturer. It may very well be
that hundreds of people like Glenfield Starch, and order it
because they think that it is the best starch that they ever
used, without having heard the name of Mr. Wotherspoon,
and without knowing him at all. They say, I want the thing
that bears that name, the thing made in a particular way,
made by the manufacturer who makes it in that way, and
there being only one manufacturer who does make it in that
way, I want the article made by that manufacturer."
z' Throughout the whole period of its user in Canada until
after the actions in question here had been instituted, words
were regularly used in conjunction with the "Mepps" trade
mark making it clear that the lures being sold under it were
the well-known lures of French manufacture.
Compare Impex Electrical Ld. v. Weinbaum, (1927) 44
R.P.C. 405 per Tomlin, J. at page 410: "If a manufacturer
having a mark abroad has made goods and imported them
into this country with the foreign mark on them, the foreign
mark may acquire in this country this characteristic, that it
is distinctive of the goods of the manufacturer abroad. If
that be shown, it is not afterwards open to somebody else to
register in this country that mark, either as an importer of
the goods of the manufacturer or for any other purpose. The
reason of that is not that the mark is a foreign mark
registered in a foreign country, but that it is something
which has been used in the market of this country in such a
way as to be identified with a manufacturer who manufac
tures in a foreign country. That, I venture to think, is the
basis of the decision in the Apollinaris case ([1891] 2 Ch.
186). It seems to me to be the basis of the decision in the
case before Mr. Justice Clauson of Lacteosote Limited v.
Alberman (44 R.P.C. 211) and it seems to me to be conso
nant with good sense." Contrast J. Ullmann & Co. v. Leuba,
(1908) 25 R.P.C. 673 (P.C.) where the Hong Kong trade
mark denoted in Hong Kong the goods of the Hong Kong
retailer and not the goods of the foreign manufacturer who
supplied them to him. Compare also Wilkinson Sword
(Canada) Ltd. v. Juda, [1968] Ex.C.R. 137.
In reality, as I understand the facts, a use by the respond
ent of the trade mark "Mepps" on goods sold to sports
fishermen in Canada at the time of the commencement of
these actions would not have been a use of the mark as a
trade mark of the respondent because, by definition, supra,
a trade mark means "a mark that is used by a person for the
purpose of distinguishing or so as to distinguish wares .. .
manufactured, sold (etc.) ... by him from those manufac
tured, sold (etc.) ... by others". If the respondent had used
the trade mark "Mepps" on goods of the French manufac
turer that it sold in Canada, it would certainly not have
distinguished such goods from goods manufactured by such
French manufacturer and, if the respondent had used the
trade mark "Mepps" on goods that did not come from the
French manufacturer, it would have been a false representa
tion that they were manufactured by the French
manufacturer.
As put to us, the respondent's case depends upon the
proposition that a trade mark can, at one and the same time
and at the same place, distinguish the goods of two different
persons. Having regard to the definition of "trade mark", I
am of opinion that that proposition is fallacious.
Possibly because I have failed to appreciate the true
significance of it, I must express my reservation as to the
correctness of what is implied by the following paragraph of
the judgment appealed from:
In my view, it is sufficient that the origin in Canada of
these lures be established. The fact that the origin of
manufacture in France of the lures was known by some
persons in Canada in this case, is irrelevant, in that this is
a claim in respect to a trade mark used only in selling
wares in Canada.
As I understand the Trade Marks Act, there is no justifica
tion for ignoring the message of a trade mark that wares are
manufactured by a foreign manufacturer and treating it as a
message that the wares are sold by a Canadian who imports
and sells them in Canada. In my view, having regard to the
words in section 2(D, the question is one of fact as to what
message the trade mark "actually" conveys to the public. I
am sure that the learned trial judge did not mean anything
different by the above passage but it seems to me to be open
to another interpretation.
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.