Uarco Incorporated (Appellant)
v.
Phil Borden Limited (Respondent)
Trial Division, Kerr J.—Ottawa, May 1 and
June 11, 1973.
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, secs. 2, 4, 16.
Appellant, 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 respondent which had filed an application for registration
of the same mark on July 18, 1968. The Registrar of Trade
Marks dismissed appellant's application on the ground that
appellant 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 respondent. On
appeal to this Court, appellant 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 bearing the mark UARCO.
Held, the trade mark was "used" by appellant in Canada
prior to July 18, 1968, within the meaning of sections 2, 4
and 16 of the Trade Marks Act, and appellant was therefore
entitled to registration of the mark.
APPEAL from Registrar of Trade Marks.
COUNSEL:
W. R. Meredith, Q.C., and John C. Sin-
glehurst for appellant.
M. J. O'Grady for respondent.
SOLICITORS:
Meredith and Finlayson, Ottawa, for
appellant.
Soloway, Wright, Houston, Killeen and
Greenberg, Ottawa, for respondent.
KERR J.—This is an appeal from a decision of
the Registrar of Trade Marks dated December
6, 1971, allowing the respondent's opposition
and refusing the appellant's application for
registration of the trade mark "UARCO" pursu
ant to section 37(8) of the Trade Marks Act.
The appellant's application for registration of
the trade mark was filed on November 5, 1968,
and amended on December 11, 1968. The
respondent had previously, on July 18, 1968,
filed an application for registration of the same
trade mark. The Registrar found that the critical
dates were those dates July 18 and November 5,
1968, that it was not established that the appel
lant had used the trade mark in Canada prior to
July 18, 1968, and that the appellant is not the
person entitled to registration of the trade mark
under section 16 of the Act because the mark is
confusing with the respondent's trade mark in
respect of which its application for registration
had been previously filed in Canada on July 18,
1968.
The major issue in this appeal is whether the
appellant used the trade mark in Canada in
association with wares prior to July 18, 1968.
There is no issue of confusion within the mean
ing of section 6 of the Act, for the trade mark is
the same in both applications for registration
and the wares with which it is associated are
practically the same, including business form
stationery such as interleaved order forms and
equipment and machines for handling the forms,
one such machine being a "burster" (which
separates form lengths .from continuous form
stationery), another is a "deleaver" (which
extracts carbon paper from between the pages
of forms) and another is a machine that handles
credit cards.
The appellant is a Delaware Corporation, a
successor in title to an Illinois Corporation of
the same name. Its history goes back to 1894
when it was incorporated as United Autographic
Register Company; later it changed its name to
Uarco Incorporated in 1945 to bring its trade
mark into its name. It has been in business in
the United States for 78 years and has several
manufacturing plants in Michigan, Illinois, Con-
necticut, Texas, California and Oregon, and sub
sidiaries and affiliated companies in other coun
tries. It obtained United States trade mark
registration of the trade mark TARCO in 1913,
1923, 1943, 1949, 1950 and on November 10,
1964, according to the affidavit of its Vice-
President, Burton L. Hinman. In its application
it referred to its registration of the trade mark in
the United States on November 10, 1964, and
its use of the trade mark in Canada from as far
back as November 1958, and its intention to use
it in Canada.
The respondent is a Canadian Corporation,
incorporated on December 12, 1962, with head
office in Montreal. Its principal officers are Mr.
Phil Borden and Mr. Louis Bloom. Its applica
tion for registration of the trade mark (Exhibit
R-11) stated an intention to use it in Canada.
The appellant applied for registration of the
trade mark in association with the following
wares:
1) continuous business form stationery, based on use of the
mark in Canada since November 1958;
2) sets of business form stationery, based on use of the
mark in Canada since January 1960;
3) forms handling equipment, namely bursters, based on use
of the mark in Canada since May 1963;
4) autographic registers, with and without cash receptacles,
based on use of the mark in Canada since May 1967;
5) continuous form envelopes, based on use of the mark in
Canada since April 1968;
6) forms handling equipment, namely deleavers, business
form stands, imprinters, forms carriers, trimmers, pin feed
platens with and without line selectors and label dispensers;
forms design rulers; stationery binders; stationery holders;
and carbon paper, based on proposed use in Canada;
7) autographic registers, with and without cash receptacles;
forms handling equipment including bursters, deleavers,
business forms stands, imprinters, forms carriers, trimmers,
multi-use carbon holders for non-interleaved forms for type
writers, pin feed platens with and without line selectors and
label dispensers; form feeders for tabulating machines and
forms design rulers; desk files for stationery; continuous
business form stationery; sets of business form stationery;
stationery binders; stationery holders; data tape; continuous
form envelopes; pencils and carbon paper, based on use of
the mark in the United States of America and registration in
respect of these wares in the United States of America on
November 10, 1964, under No. 779831.
The opponent (the respondent in this appeal)
filed a statement of opposition on the ground
that the application does not comply with the
requirements of section 29 of the Trade Marks
Act in that the dates of first use in Canada given
in the application are false and on the further
ground that the applicant (the appellant) is not
the person entitled to registration of the trade
mark for the reason that at the date of filing of
the application (namely November 5, 1968), the
applicant had not used the mark in Canada and
therefore at that date the trade mark was con
fusing with the trade mark UARCO that had been
previously used in Canada by the opponent and
for which an application for registration had
been filed by the opponent on July 18, 1968,
under application No. 314811. The opponent
takes the position that, on the basis of this lack
of prior use by the applicant, the application
should be considered as an application for regis
tration of a proposed mark, and on the basis of
the prior user and prior application of the oppo
nent, the applicant is not the person entitled to
registration of the trade mark under the provi
sions of section 16 of the Trade Marks Act.
Both parties filed affidavit evidence and writ
ten arguments before the Registrar of Trade
Marks and were heard at an oral hearing.
The appellant's evidence before the Registrar
was an affidavit of Mr. Adolph Pocius, dated
February 10, 1970. In that respect the Registrar
said in his decision:
... The evidence filed on behalf of the applicant is to the
effect that some products were shipped to customers in
Canada in 1963, in 1967 and in 1968. The exhibits attached
to the affidavit consist of the following documents:
A) Blueprint for a "burster" under date of 23rd of August
1963, on which appears the word UARCO: this does not
constitute evidence of use of the trade mark UARCO within
the meaning of Section 4 of the Trade Marks Act.
B) Advertisement sheet showing a register and forms with
the word UARCO allegedly shipped on May 15, 1967. The
same remark applies as for document "A".
c) and E) References to these exhibits was deleted.
D), F), G) and H), register forms, control punch forms and
convelope forms shipped on May 29, 1967, April 26,
1968, April 30, 1968, April 22, 1968.
The affiant merely states that the above products were
shipped to the customers on the dates indicated (which are
prior to the opponent's date of filing). Evidence of use of a
trade mark is a simple question of fact which may be easily
established by unequivocal assertions supported by the
filing of duplicates of invoices, orders, bills of lading or
other material. The probationary value of the applicant's
evidence is so weak that I cannot conclude that the mark
UARCO was used in Canada by the applicant as a trade mark
within the meaning of Section 4 of the Trade Marks Act
continuously since the dates mentioned in the affidavit.
In his decision the Registrar dealt with the
evidence of the respondent as follows:
The affidavit of Phil Borden filed as evidence on behalf of
the opponent is to the effect that the opponent caused the
firm name and style of "UARCO BUSINESS SYSTEMS" to be
registered under the Quebec Partnership Declaration Act on
June 10, 1968 at Montreal; that the said business name
appeared on the opponent's instructions in the Montreal
Telephone Directory for 1968; that the opponent has made
the name "UARCO" well-known in the City of Montreal and
elsewhere in Canada since at least February 10, 1968, at
which time advertising and carrying on of business under
that name was commenced by the opponent; that the oppo
nent carries and has carried on uninterruptedly the business
of buying, selling and otherwise dealing in office and busi
ness forms and equipment on a reasonably large commercial
scale since early in 1968; that the opponent has purchased
supplies from 39 firms whose names appear on a list
appended to the affidavit; that the opponent has sold under
the name "UARCO BUSINESS SYSTEMS" to more than 100
business firms in Canada and has established a clientele,
goodwill and a reputation under the name UARCO; that the
principal officers of the opponent have carried out extensive
investigations as to the use in Canada by the applicant of the
trade mark UARCO, and drawing upon their own extensive
experience in the industry have been unable to locate any
firm or person engaged in the industry in Canada with any
knowledge that the applicant has been using the trade mark
UARCO in Canada or that the said trade mark is associated by
Canadians active in the industry with the wares or services
of the applicant. The only exhibit to this affidavit is the list
of 39 Montreal suppliers to UARCO BUSINESS SYSTEMS.
In my opinion, the registration of the trade name UARCO
BUSINESS SYSTEMS under the Quebec Partnership Declaration
Act and the listing of the trade name in the Montreal
Telephone Directory do not prove that the opponent has
used UARCO as a trade mark within the meaning of the Trade
Marks Act. On the other hand the opponent's assertions that
after extensive investigations, they have been unable to
locate any firm or person with any knowledge that the
applicant had been using the mark UARCO in Canada is
merely hearsay evidence and I attach no evidentiary value
to these statements. Thus the opponent has failed to sub
stantiate its allegation of prior use of the mark UARCO.
On the appeal to this Court the respondent
relied mainly on the priority of its application,
and not on any prior use of the trade mark.
On the appeal additional affidavit evidence on
behalf of the appellant as to its use of the trade
mark in Canada 'was received, consisting of
affidavits of the following persons:
William E. Lorenzen —Exhibit A-1
Noel Wakelin —Exhibit A-2
Douglas Gordon —Exhibit A-3
James J. Vollinger —Exhibit A-4
Burton L. Hinman —Exhibit A-5
Russell C. Schulke —Exhibit A-6
William R. Fesselmeyer —Exhibit A-7
The Associate Chief Justice gave leave to the
respondent to cross-examine Mr. Hinman on his
affidavit, and cross-examination was conducted
in Chicago, Exhibit R-10. The Trade Mark's
office file covering the appellant's application
was also received in evidence.
The affidavit of Adolph Pocius states that he
has been employed by the appellant for approxi
mately 20 years and is the Manager of its
Mechanical Products Plant in Chicago. He is
familiar with plant records and he recently
reviewed plant records of different plants to
determine shipments of products to Canada, and
he found that the following products were
shipped, blueprints or samples of which are
shown in exhibits to the affidavit:
Date Stripped Customer Product
Exhibit "A" May 16, 1963 Ford Motor Forms
Company, equipment
Oakville, Ontario.
Exhibit "B" May 15, 1967 Tom House, Registers
Wallserville, Ont.
June 9, 1967 Tom House, Registers
Wallserville, Ont.
Exhibit "D" May 29, 1967 Tom House, Register forms
Wallserville, Ont.
Exhibit "F" Apr 26, 1968 Massey-Ferguson, Control Punch
Toronto, Ont. forms
Exhibit "G" Apr 30, 1968 Massey-Ferguson, Control Punch
Toronto, Ont. forms
Exhibit "H" Apr 22, 1968 Canadair Ltd, Convelope forms
Montreal, P.Q.
Exhibit "A" is a blueprint of a burster, model
1740. Exhibit "B" shows the word UARCO on
the machines. Exhibits "D", "F", "G" and "H"
have the word UARCO on the forms.
The affidavit of William E. Lorenzen states
that he is the appellant's National Contract
Coordinator and has been employed with the
Company continuously since 1945. He kept a
file on the burster, serial no. 20142, sold and
delivered to Ford Motor Company, Canada,
Ltd, Oakville, in 1963, referred to in the Pocius
affidavit, because it has been serviced through
the years from the appellant's offices in Detroit.
Copies of the invoice, notice of shipment,
instructions to install the machine, order for
replacement parts, and other documents relating
to the machine are attached as exhibits to the
affidavit. The machine was later moved from
Oakville to the Ford Company's plant at Wind-
sor, Ontario, where he has seen it in use and it
has had UARCO in metal letters on its side panel
since 1963, and he believes it has been contin
uously in use in Canada ever since May 1963.
The affidavit of Burton L. Hinman states that
he is Vice-President of Manufacturing and
International Operations of the appellant and
has been in the employ of the Company for 25
years. The following paragraphs from his affida
vit are repeated here verbatim:
5. Business forms stationery products in 1967 and 1968,
as well as presently, have been shipped to customers in
cardboard or corrugated boxes or cartons most of which are
printed with the trademark "UARCO" in bold letters. Each
carton receives and did receive from 1967 through 1968 and
presently a paste-on label which bears in visible letters the
trademark "UARCO". Each piece of forms handling equip
ment bears the trademark "UARCO" upon a highly visible
portion of the equipment, such mark being on a plate or in
metallic letters. Each piece of forms handling equipment has
been shipped in a carton which bears either upon its surface
or upon labels attached to the carton the trademark
"UARCO".
6. All during the years 1967 and 1968, as well as both
prior thereto and since that time, stationery products of the
company and forms handling equipment have been sold to
Canadian Nationals directly from the United States with
shipment from the States to the Canadian customer at his
respective Canadian addresses. In the records of the com
pany, sales to Canadian customers have not been segregated
from sales to customers in other countries including U.S.A.
so that a retrieval from the records of all sales to all
Canadian customers is not believed practicable.
7. The following is a partial tabulation of sales of busi
ness form stationery to indicated Canadian customers:
(The tabulation includes some 27 orders of
forms sold to customers in various parts of
Canada, including Canadair, Massey-Ferguson,
Ford Motor Company and Avco-Delta Corpora
tion, ranging in amounts from $50.80 to
$1,786.47).
8. Uarco Incorporated has used its trademark "UARCO"
on goods, packages for goods, on invoices, shipping docu
ments and all of the usual paperwork connected with com
mercial transactions with Canadian customers during the
years 1967 and 1968 and in each year subsequent thereto to
date.
11. That Uarco Incorporated has obtained United States
Trademark registration on the trademark "UARCO" as per
copies attached to this my affidavit:
Registration No. 93,137, Registered Aug. 19, 1913
" 174,663, Oct. 23, 1923
" 402,927. Aug. 24, 1943
" 518,311, Dec. 6, 1949
" 533,148, Nov. 7, 1950
" 779,831, Nov. 10, 1964.
On cross-examination Mr. Hinman indicated,
inter alia, that his specific knowledge of the
extent of the use of the Company's trade mark
in Canada was only to the degree of the transac
tions extracted from the office records. Some of
the invoices exhibited indicated that the ship
ments were to points in the United States and
not directly to points in Canada. The appellant
has owned Drummond Business Forms, of
Drummond, in the Province of Quebec, since
April 15, 1970, and that Company sells products
under its own name, except for equipment pro
duced for it by the appellant and handled and
sold by the subsidiary under the UARCO name.
The appellant's operations in Canada since it
acquired that subsidiary have been carried on to
a large extent through the subsidiary, but there
is a significant amount of equipment, and busi
ness forms that the subsidiary does not produce,
going to Canada from the appellant's operations
in the United States. Prior to acquiring the
Drummond Company the appellant's salesmen
had contact with Canadian customers, but did
not have sales offices in Canada.
The affidavit of Russell C. Schulke states that
he has been continuously employed with the
appellant since 1946, and in 1967 and 1968 was
Sales Administration Manager, that business
forms manufactured by the Company have been
packaged in boxes clearly marked with the trade
mark UARCO, and photos of such boxes appear
ing in various advertisements, brochures and
publications were attached as exhibits to the
affidavit.
The affidavit of William R. Fesselmeyer
states that he has been Plant Manager of the
appellant's Watseka, Illinois, plant since 1957
and has been employed by the Company since
1936, that at least since 1957 cartons of busi
ness forms manufactured in that plant have
been shipped by it directly into Canada to
Canadian customers and paid for by them. The
factory records show, in respect of the shipment
of convelope forms to Canadair referred to in
the Pocius affidavit, a purchase order, export-
er's declaration for nine cartons, and bill of
lading, packaging memorandum and invoice for
same; also that the trade mark has been on
cartons of business forms shipped into Canada
and received by the company's customers in
Canada continuously throughout each of the
years 1967 to 1972.
The affidavit of Noel Wakelin states that he
was working for the Ford Motor Company in
Oakville in 1963 and he ordered and received a
model 1740 burster, serial no. 20142, from
UARCO at Oakville, which was put in use there
until it was moved to Windsor, and UARCO was
on the side of the machine in metal letters.
The affidavit of Douglas Gordon states he is
Manager of the Data Center for Ford at Wind-
sor and that there is in use there a UARCO model
1740 burster, serial no. 20142.
The affidavit of James J. Vollinger states that
he is Credit Manager for the appellant and has
been employed by the Company continuously
since 1955, that the Accounts Receivable His
torical Record of the Company is accurate and
it shows that on July 2, 1963, Ford paid the
Company $1300 for the burster above
mentioned.
The respondent contends that the affidavits
on behalf of the appellant do not establish that
the trade mark was "used" in any meaningful
sense within the meaning of the Trade Marks
Act, by the appellant in Canada prior to the
filing of the respondent's application for regis
tration on July 18, 1968. In that respect counsel
submitted that the appellant never had any busi
ness organization in Canada and never carried
on business in Canada in any real sense in its
own name; if there were any shipments of its
wares to Canada they were small in number and
value and isolated and sporadic; there was
insufficient proof of delivery in Canada of the
appellant's wares or of packages bearing the
trade mark as such, and as regards the ship
ments that were sent f.o.b. from points in the
United States by common carriers by highway,
the transfer of the property in and the posses
sion of the wares took place at the point of
shipment in the United States and there was no
such transfer by the appellant in Canada; the
burden of proof is on the appellant to show that
the Registrar's decision is wrong, and the ad
ditional material filed on the appeal does not
add materially to the evidence that was before
the Registrar.
Counsel for the appellant urged that substan
tial use of the trade mark by the appellant in
Canada as a definite part of its operations and
sales for some years prior to the filing of the
respondent's application (at least as far back as
1963) has been clearly shown by the affidavits;
there were numerous shipments by the appellant
of its wares to customers in Canada and transfer
of possession in Canada of such wares in the
normal course of trade, and the wares and pack
ages bore the trade mark; there was a chain, in
the normal course of international trade, of
ordering by Canadian customers of the appel
lant's wares, shipment of the wares by the
appellant, delivery and transfer of possession of
them in Canada, and payment for them by the
Canadian customers; and there is a marked con
trast between the business and rights of the
appellant and its unusual trade mark UARCO, on
the one hand, and the recent and flimsy position
of the respondent, on the other hand. Counsel
for the appellant also adopted, as part of his
argument, the editorial note in the report of
Manhattan Industries Inc. v. Princeton Manu
facturing Ltd. in 4 C.P.R. (2d) 6, a decision of
Mr. Justice Heald of this Court'.
Section 2 of the Trade Marks Act provides
that "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.
Sections 4(1) and 16(1) and (3) read as
follows:
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.
16. (1) Any applicant who has filed an application in
accordance with section 29 for registration of a trade mark
that is registrable and that he or his predecessor in title has
used in Canada or made known in Canada in association
with wares or services is entitled, subject to section 37, to
secure its registration in respect of such wares or services,
unless at the date on which he or his predecessor in title first
so used it or made it known it was confusing with
(a) a trade mark that had been previously used in Canada
or made known in Canada by any other person;
(b) a trade mark in respect of which an application for
registration had been previously filed in Canada by any
other person; or
(e) a trade name that had been previously used in Canada
by any other person.
(3) Any applicant who has filed an application in accord
ance with section 29 for registration of a proposed trade
mark that is registrable is entitled, subject to sections 37 and
39, to secure its registration in respect of the wares or
services specified in the application, unless at the date of
filing of the application it was confusing with
(a) a trade mark that had been previously used in Canada
or made known in Canada by any other person;
(b) a trade mark in respect of which an application for
registration had been previously filed in Canada by any
other person; or
(e) a trade name that had been previously used in Canada
by any other person.
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 Com
pany received the burster at Oakville and used it
there and at Windsor, and there is also a reason
able 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
(supra)) 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 apprecia
tion 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. Therefore, on the
majority issue of prior use of the trade mark in
Canada the appellant succeeds; and it is entitled
to registration of the trade mark, there being no
issue of confusion and little, if any, contention
by the respondent on the appeal that the Regis
trar's decision that the respondent had failed to
substantiate its allegation of prior use of the
trade mark was wrong. Furthermore, I am in
agreement with the Registrar's finding that the
respondent has failed to substantiate prior use
of the trade mark.
The second ground of appeal put forward by
the appellant is that the respondent filed a dec
laration under the Quebec Partnership Declara
tion Act dated June 3, 1968, in the Prothono-
tary's office of the District of Montreal on June
10, 1968, that it intends to carry on the business
of buying, selling and dealing in office business
forms and equipment under the firm name and
style of UARCO BUSINESS SYSTEMS, but that
subsequently, on July 11, 1968, it filed in the
said Prothonotary's office a declaration as
follows:
DISSOLUTION
PHIL BORDEN LTD, hereby declares that it has ceased to carry
on business under the firm name and style of UARCO BUSI
NESS SYSTEMS Montreal, on July 11, 1968.
and that on the same date, July 11, 1968, Phil
Borden and Louis Bloom registered a declara
tion in the said office declaring that they intend
to carry on business from July 11, 1968, as
manufacturers, distributors and dealers in busi-
ness and commercial forms of all accounts and
descriptions, as well as general printers under
the firm name and style of UARCO BUSINESS
SYSTEMS; all of which was prior to the adver
tisement of the applicant's application for regis
tration of the trade mark, and the appellant
contends on the basis of the said declarations
filed on July 11, 1968, which were not before
the Registrar of Trade Marks, that the respond
ent cannot discharge the burden provided in
section 17(1) 2 of the Trade Marks Act that it
"... had not abandoned such confusing trade
mark or trade name at the date of advertisement
of the applicant's application", and that the
respondent's application is not for a "proposed
trade mark" within the definition' in section 2
of the Act in view of the declaration that the
respondent ceased to carry on business under
the name UARCO BUSINESS SYSTEMS on July 11,
1968, and on the same day Phil Borden and
Louis Bloom made a declaration that they
intend to carry on business under that trade
name.
In answer to that argument, the respondent
filed an affidavit of Louis Bloom, Exhibit R-12,
sworn on February 28, 1973, in which he states,
inter alia, as follows:
3. A dissolution of the said registration was caused to be
registered on or about the 11th day of July, 1968, at which
date a further registration of declaration to carry on busi
ness at the said address under the firm name and style of
Uarco Business Systems was made in the names of myself
and Phil Borden, who is also an officer and director of Phil
Borden Ltd. The said Phil Borden Ltd., is a company
incorporated under Part 1 of the Canada Corporations Act,
and is controlled by the said Phil Borden and myself.
4. That it was always the intention of the said Phil Borden
and myself that all rights in Canada to the trade mark
"UARCO" being the trade mark at issue in the within appeal,
should remain the property of Phil Borden Ltd., but that the
trade name comprised in part of the word "UARCO" should
be used actively in Canada by a partnership consisting of the
said Phil Borden and myself, and that the said partnership
would use the trade mark "UARCO" in Canada pursuant to a
registered user agreement to be entered into between the
said partnership and the said Phil Borden Ltd. This decision
was arrived at solely for business reasons, and not because
it was the intention at any time that ownership rights in the
trade mark "UARCO" as such should be in any company,
partnership, or individual other than the respondent Phil
Borden Ltd.
5. In July of 1968 it was the intention, and at the date
hereof it remains the intention, of the said Phil Borden and
myself to enter into a registered user agreement with the
said Phil Borden Ltd., pursuant to the provisions of the
Trade Marks Act in that respect, and thereafter to make use
of the said trade mark in Canada on behalf of the said Phil
Borden Ltd., if in fact the application of the said Phil
Borden Ltd., for the registration of the said trade mark is
granted by the Registrar of Trade Marks?
The respondent submitted that the said regis
trations were for a trade name, not a trade
mark, and that if the respondent were success
ful in obtaining registration of the trade mark it
would thereupon be in a position to use it or to
enter into arrangements for permitted use.
Section 49 of the Act sets up a system for
permitted use of trade marks by registered
users, and subsection (5) provides for filing an
application for the registration of a person as a
registered user of the trade mark concurrently
with or at any time after the filing of an applica
tion for the registration of the trade mark. The
Registrar is vested by subsection (7) with a
discretion to approve or disapprove an applica
tion for permitted use.
The respondent's application for registration
of the trade mark was not accompanied by an
application for registration of the partnership or
of any other person as a registered user, and it
contains a statement that the applicant intends
to use such trade mark in Canada, apparently in
accordance with section 29(e).
The affidavits, Exhibits R-12 and R-13, of
Bloom and Borden, the principal officers and
directors of the respondent, are open to an
interpretation that the intention in July 1968
was that the use of the trade mark in Canada
would be by the partnership consisting of those
two officers, and not by the respondent except
in permitting its use by the partnership. If that
was the use intended by the respondent, I think
it should at least have been disclosed to the
Registrar. In Fox's The Canadian Law of Trade
Marks, 3rd ed., the following is stated at page
274:
... Under the British practice, trafficking in a trade mark in
the sense of registering it without intention to use it but
merely for the purpose of transferring it or permitting its use
solely for the purpose of receiving a profit from such
permission, is looked on with disfavour as being contrary to
the public interest. Presumably the Registrar would regard
such procedures as being contrary to the public interest
within the meaning of s. 49(7).
The respondent's entitlement to registration
of the trade mark on any such limited intended
use basis is doubtful, in my opinion, but I am
not aware of any authoritative Canadian deci
sion or practice on this point and as I am
determining the appeal on the merits of prior
use of the trade mark in Canada I do not find it
necessary to give a definitive judgment on this
secondary point of intended use.
In the result, the appeal is allowed with costs,
the decision of the learned Registrar of Trade
Marks in this matter is reversed and the matter
is referred back to him for appropriate action in
accordance with these reasons.
I The editorial note states in part as follows:
This judgment gives recognition to the realities of interna
tional trade and the real meaning of a trade mark. The wares
sold f.o.b. the United States for the Canadian market
indicated as the origin of those wares the United States
vendor, manufacturer. In the market place the wares distin
guished the United States supplier. It would be contrary to
the principles of international trade to deny the owner of the
mark whose wares cross the border for sale in this country
the benefits of trade mark use in this country. Many interna
tionally known marks are sold through distributors in
Canada. The mark is still that of the original supplier not
that of the distributor. Jaczynski et al. v. Lemieux (1951), 15
C.P.R. 57, 12 Fox Pat. C. 109; Wilkinson Sword (Canada)
Ltd v. Juda (1966), 51 C.P.R. 55, [1968] 2 Ex.C.R. 137, 34
Fox Pat. C. 77.
The technical position asserted by the respondent had it
prevailed would have placed many valuable and important
trade marks in jeopardy. On the technical interpretation of
the Act, s. 4 requires an association of mark and wares at
the time of transfer of possession or property of the wares.
It does not contain the added requirement that the transferor
be the owner of the mark at the time of transfer in Canada.
The first part of s. 16(3) requires that the mark be used in
Canada. It is suggested that it does not require that the
owner of the mark be the transferor in Canada. The mark is
used if in fact the wares emanated from the owner of the
mark and there is a transfer of possession of property in
Canada in the normal course in respect of such wares. It is
sufficient if there is an association of mark and wares at the
time of transfer of possession or property.
The question is not who is using the mark but whose mark
is being used. As long as the wares originate from the owner
it is suggested that his mark is being used even if no sales in
Canada are directly made by that owner. The wares destined
for the Canadian market were sold by the trade mark owner.
In the normal course of trade the wares were placed on the
market by the trade mark owner.
z 17. (1) No application for registration of a trade mark
that has been advertised in accordance with section 36 shall
be refused and no registration of a trade mark shall be
expunged or amended or held invalid on the ground of any
previous use or making known of a confusing trade mark or
trade name by a person other than the applicant for such
registration or his predecessor in title, except at the instance
of such other person or his successor in title, and the burden
lies on such other person or his successor to establish that
he had not abandoned such confusing trade mark or trade
name at the date of advertisement of the applicant's
application.
2. ... "proposed trade mark" means a mark that is
proposed to be used by a person for the purpose of distin
guishing or so as to distinguish wares or services manufac
tured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others;
' An affidavit of Phil Borden, Exhibit R-13, is to the same
effect.
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.