Kayser-Roth Canada (1969) Limited (Plaintiff)
v.
Fascination Lingerie Inc. (Defendant)
Trial Division, Noël A.C.J., Montreal, April 27;
Ottawa, May 7, June 16, 24, 1971.
Trade Marks—Infringement—Pleadings—Amendment—
Corporate name of defendant, whether infringement of plain
tiff's trade mark—Corporate name not a "personal" name—
Defendant's right to order permitting use of mark in defined
area—Trade Marks Act, 1953, c. 49, secs. 17(1), (2), 20(a),
21(1).
Plaintiff sued defendant, a company incorporated in
Quebec in 1969, for infringement of the trade mark Fasci
nation registered by plaintiff in 1968 in respect of lingerie.
Defendant pleaded prior use and, pursuant to leave granted,
also sought an order under s. 21(1) of the Trade Marks Act
authorizing it to use its confusing trade mark in Quebec.
Held: (1) It was no defence to the action that under the
Quebec Companies Act defendant was entitled and obliged
to operate under its corporate name. Boston Rubber Shoe
Co. v. Boston Rubber Co. of Montreal (1901-02) 32 S.C.R.
315, followed.
(2) A corporate name is not a "personal" name within the
meaning of s. 20(a) of the Trade Marks Act.
(3) The court could not grant defendant the order sought
under s. 21(1) of the Trade Marks Act. An order can only
be made under s. 21(1) if a registered trade mark is entitled
to the protection of s. 17(2), viz, if (1) it was registered more
than 5 years before proceedings are commenced, and (2)
plaintiff adopted it without knowledge of previous user.
Neither condition obtained here. Furthermore, the fact that
the registration of plaintiff's trade mark could be held
invalid under s. 17(1) if defendant had sought that relief did
not enable defendant to obtain the relief it claimed under
secs. 21(1) and 17(2).
ACTION for infringement of registered trade
mark.
This judgment was delivered in two parts, the
first part on May 7, 1971, the second part on
June 24, 1971.
Christopher Robinson, Q.C., for plaintiff.
Vincent Drouin for defendant.
NOËL A.C.J. [May 7, 1971]—The plaintiff,
Kayser-Roth Canada (1969) Ltd, a company
incorporated and subsisting under the laws of
Canada, with its principal place of business at
London, Ontario, prays for the issuance of an
injunction restraining the defendant, Fascina
tion Lingerie Inc., a company incorporated and
subsisting under the laws of Quebec, with its
principal office in the city of Montreal, P.Q.
from further infringing its trade mark Fascina
tion, registered under number 157,447, in
respect of lingerie, on June 28, 1968. Although
plaintiff alleged that the defendant had
infringed two other trade marks, that it had
passed off its goods for those of the plaintiff
and had done acts and adopted a business prac
tice contrary to honest industrial and commer
cial usage in Canada, Mr. Robinson, plaintiff's
counsel, at the trial stated that his client was
content to rely only on the alleged infringement
by defendant of that trade mark bearing number
157,447, thereby abandoning the other causes
of action. He also stated that plaintiff had no
intention of pressing for damages.
Defendant in its defence merely prays for the
dismissal of plaintiff's action on the basis of
prior use of the word "fascination" in associa
tion with lingerie. He indeed relies on the fact
that one Maurice Bagdoo, with whom Claude
Lapierre, the owner of the defendant corpora
tion, was associated in business, had caused a
clothing manufacturing firm to be registered on
October 21, 1966, with the protonotary of the
Superior Court, in Montreal, under the name of
Lingerie Fascination Enr. On April 18, 1967,
Bagdoo assigned all his rights to Claude
Lapierre who, on the same day, registered the
name of the firm in his own name. On January
3, 1969, letters patent were issued under Part I
of the Quebec Companies Act, R.S.Q. 1964, c.
271, whereby the defendant was incorporated
under the name of Lingerie Fascination Inc.,'
Claude Lapierre having authorized the incorpo
ration and being one of its principal sharehold
ers. Since the incorporation of the defendant
corporation, Bagdoo's lingerie business of
manufacturing and selling lingerie has been con
ducted under the corporate name, defendant
alleging that such business has been carried out
in the Province of Quebec. It also points out in
its defence that the plaintiff does not, to the
knowledge of the defendant's officers, use the
trade mark Fascination lingerie in Quebec but
sells its products under the name of "Kayser
Lingerie". Defendant says that it never tried to
profit, nor in fact profited, from the reputation
of the plaintiff and that the consumers or mer
chants have never confused the respective
products of the parties involved. Defendant
finally alleges that it is a small manufacturer
who has built up locally a reputation under the
name Fascination which the plaintiff appears to
want to profit by. Defendant, as already men
tioned, then prays for the dismissal of the
action with costs.
From the evidence produced at the trial, it is
clear that the plaintiff is the registered owner of
the trade mark Fascination for lingerie and in
virtue of s. 19 of the Trade Marks Act "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". Further
more, there is no question that defendant has
used and is using the same word "fascination"
for the same goods, lingerie. The defendant's
invoice forms carry indeed the heading "Manu-
facturers of fine lingerie" and Fabricant de fine
lingerie in French and three forms of packaging
of defendant, Exhibits P-2, P-3 and P-4, have
the word "fascination" inscribed thereon. The
packaging of Ex. P-2 also carries the word
"Lingerie" and Ex. P-3 the words "lingerie
Inc.". The label of Ex. P-2 carries the words
"Fascination Lingerie Montreal", the label of
Ex. P-3 carries the words "fascination Lingerie
Inc." and the label of Ex. P-4 carries the words
"Fascination Lingerie Montreal".
There is, therefore, ample evidence that the
defendant has, in selling its products, infringed
plaintiff's registered trade mark Fascination
and the latter would, therefore, be entitled to
obtain judgment unless, of course, defendant
has raised a valid defence.
The defendant, at the trial, merely established
the facts alleged in paragraphs 10, 11, 12, 13,
14, 15 and 16 of its plea that Bagdoo had
caused a registration at the protonotary's office,
in Montreal, of the firm name of "Lingerie
Fascination Enr.", that he had assigned all his
rights to Claude Lapierre who had in turn regis
tered the firm name with the protonotary at
Montreal on April 18, 1967, and that Lapierre
had, on January 8, 1969, incorporated a Quebec
company under the name of Lingerie Fascina
tion Inc. Defendant did not allege, however, the
exact area where it has sold or sells its prod
ucts, Lapierre merely stating in his evidence
that his company's products are sold through a
department store, Dupuis & Frères, and other
similar outlets in the city of Montreal. There
was indeed no evidence that the defendant sells
beyond the city of Montreal.
Counsel for the defendant relies on three
propositions. His first is that defendant's corpo
rate name is the only one under which it is
legally entitled and obliged to operate under the
Quebec Companies Act and that the only
manner in which one can complain of any pre
judice caused by the use of the name is the
procedure whereby the name of the corporation
can be modified under s. 19 of the Quebec
Companies Act, R.S.Q. 1964, c. 271. I am
afraid that the position taken here by counsel
for the defendant cannot be sustained. In
Boston Rubber Shoe Co. v. Boston Rubber Co.
of Montreal (1901-02) 32 S.C.R. 315, the
Supreme Court of Canada decided that defend
ant's use of its corporate name was an infringe
ment of plaintiff's registered trade mark' and
should be enjoined. Although the Court in that
case decided that the infringement was fraudu
lent, there is authority for the proposition that
even an innocently adopted trade name or trade
mark will be enjoined (cf Fox, Canadian Law of
Trade Marks, vol. II, pp. 850 and 851 and the
authorities there referred to).
The defendant's second proposition is that its
corporate name is really its personal name and
that in virtue of s. 20(a) 2 of the Trade Marks
Act, no registration of a trade mark can prevent
a person from making a bona fide use of his
personal name. This argument also is not valid.
There is, first of all, to my knowledge, no
authority to the effect that a corporate name is
a personal name. Furthermore, the ordinary
meaning of both words together, "personal"
and "name", is that of an individual person or
self (cf Shorter Oxford Dictionary where "per-
sonal" is said to pertain to, to concern or to
affect the individual person or self and where
"name" is said to be "the particular combina
tion of vocal sounds employed as the individual
designation of a single person, animal, place or
thing".)
I now come to defendant's third proposition
which is based on s. 21 read with s. 17(2) of the
Trade Marks Acta which is that because of prior
use in good faith of the trade mark Fascination
by defendant or its authors in the Province of
Quebec, this Court should, as it is entitled to do
under s. 21(1), permit defendant the continued
use of the confusing trade mark or trade name
in a defined territorial area, i.e., in the Province
of Quebec, concurrently with the use of the
registered trade mark or trade name subject to
such terms as it deems just and with an ade
quate specified distinction from the registered
trade mark.
Section 21, however, can only operate with
respect to a registered trade mark which is
entitled to the protection of subsec. (2) of s. 17
of the Act. This last subsection deals with trade
marks which could have been, were it not for
this section, declared invalid because of prior
use. Under the Unfair Competition Act, the
attack on the basis of prior use was available.
Since the adoption of the Trade Marks Act
(1953) such an attack is no longer possible
"after the expiry of 5 years from the date of
registration of a trade mark or from the date of
the coming into force of the present Act, which
ever is the later . .. unless it is established that
the person who adopted the registered trade
mark in Canada did so with knowledge of such
previous use or making known".
Section 21(1) indeed refers only to those
registrations of trade marks entitled to the pro
tection of subsec. (2) of s. 17 of the Act and in
order to be able to avail oneself of the rights
contained in s. 21(1), one must allege and prove
whatever material facts are necessary to estab
lish that the trade mark is one protected under
the subsection as well as all material facts
required under subsec. (1) of s. 21 to enable the
Court to appreciate and determine whether it
can give effect to the order sought. It is then, of
course, also necessary to pray for the relief
sought for, Le., a declaration such as this Court
is authorized to issue under subsec. (1) of s. 21
of the Act.
It is clear here that such a course of action
can be adopted only if the defendant is author
ized to amend its pleadings as well as its prayer.
Leave to amend at this stage of the proceed
ings, particularly when it is not asked for,
should be given only if the Court is of the view
that such amendments are necessary for the
purpose of determining the real question or
questions in controversy. I feel that we have
here such a situation. Leave, however, to
amend should be granted only on such terms as
are just and plaintiff should be fully protected
so far as discovery and preparation for trial are
necessary to meet whatever new or amended
allegations defendant may supply. Pursuant to
Rule 119 of the Rules of this Court, defendant
is therefore hereby authorized to make what
ever amendments are required, such amend
ments to be made, however, within 15 days of
the date of the present reasons for judgment,
otherwise the defendant shall be precluded
from doing so and plaintiff may apply for judg
ment. The defendant will also be required to
pay all costs arising from the failure to plead
properly in the first instance. I indeed feel that
this is an instance where the infliction on plain
tiff of the costs and pain of a new trial can be,
and should be, compensated adequately by tax
able costs.
* * *
NOEL A.C.J. [June 24, 19711—Subsequent to
the reasons for judgment issued on May 7,
1971, and after the defendant had, by appropri
ate amendments, alleged certain facts essential
to the recourses it intended to exercise, and
after praying for the relief claimed, the parties
came back before the Court where both pre
sented arguments of law and fact. Furthermore,
the defendant had to request in open court the
permission to amend allegation 20 of its
defence in order to enable it to meet with the
requirements of s. 21(1) of the Act. This per
mission was granted under reserve of plaintiff's
rights. This allegation, as amended, now reads
as follows:
The defendant, or its predecessors or assigns, has used in
good faith the trade mark Fascination Lingerie and Lin
gerie Fascination before the date of filing of the applica
tion for such registration by the plaintiff of this trade
mark.
Plaintiff's counsel stated that he was pre
pared to continue arguing this case on the alle
gation as amended and on the evidence already
produced in the file and the parties, by their
counsel, submitted to the Court their respective
views.
It is clear that notwithstanding the defend
ant's allegations, it is impossible to grant its
request and give it the right to use the trade
mark Fascination in the Province of Quebec
where, according to an admission produced in
the file on May 28, 1971, counsel for the plain
tiff stated that
... the defendant has used in good faith in the province
of Quebec the trade marks Fascination Lingerie and
Lingerie Fascination before June 28, 1968, the date of
registration by the plaintiff of the trade mark Fascination
for use in respect of lingerie.
It appears to me that the procedure contained
in s. 21(1) of the Act which permits, in certain
cases, the use of two similar trade marks, in a
certain area, with an adequate distinction, is
possible only in the case of a registered trade
mark of which the registration is entitled to the
protection of subsec. (2) of s. 17 of the Act. A
reference to subsec. (2) of s. 17 shows that they
must be trade marks registered for more than
five years and that the person who has adopted
in Canada the registered trade mark, did not do
so with knowledge of such previous use or
making known of such trade mark. It, therefore,
is clear that we cannot find here the conditions
required to permit a restrictive use by the
defendant of the trade mark Fascination as, in
the first place, the proceedings were com
menced before the expiry of five years from the
date of its registration. Furthermore, there is no
allegation and no proof that the plaintiff regis
tered its trade mark with the knowledge of such
previous use or making known of such trade
mark. It is useful to point out here that the
procedure contained in s. 21(1) only applies
exceptionally as it has the effect of allowing the
use of two similar trade marks in the same area
and in association with similar wares which, of
course, is contrary to the principles of the
Trade Marks Act. It therefore follows that this
article can be taken advantage of only if one
conforms with all its requirements.
Counsel for the defendant still submits, how
ever, that his client has the right to this restric
tive use to an area on the principle, he says, that
"he who can ask for more, can ask for less" and
he refers first to the right, that his client may
have under s. 17(1) of the Act, to request that
within five years of the registration of a trade
mark, plaintiff's said trade mark be declared
invalid on the ground that it was previously
used or made known by a person other than the
applicant for such registration or his predeces
sor in title.
I am afraid that I cannot accept this point of
view. We are indeed dealing here with a statute
and, therefore, the only recourses available are
those prescribed by the Act. As the defendant
has chosen in his proceedings to claim under s.
21(1) and s. 17(2) whatever rights he has must
be determined under these sections. There are,
however, other obstacles which prevent the
defendant from obtaining the remedy prayed
for under s. 21(1) of the Act. It is only in the
case where "one of the parties to the proceed
ings" has used the trade mark in Canada before
the date of filing of the application for such
registration, that such a party, and that party
only, can take advantage of the remedy con
tained in s. 21(1). (The use before the date of
the filing and not of the registration comes from
the fact that under s. 16 of the Act, the ultimate
date to establish prior use is the date of filing of
the application). In the present case, however,
the evidence discloses not only that the defend
ant did not use the trade mark before the
application for registration, but also that neither
the predecessors of the defendant, nor Bagdoo,
nor the firm name, nor even the defendant, had
done so. As a matter of fact, the first use of the
bags, on which the word Fascination appears,
was on March 15, 1968, i.e., after the applica
tion for registration of the trade mark which
took place on January 25, 1967. Mr. Lapierre
admits that the plaintiff used the trade mark
only after the month of April 1967.
The defendant had the burden of establishing
that it had a right to take advantage of s. 21(1)
and, unfortunately, it has not been able to do
so. I have no alternative, under the circum
stances, but to reject defendant's defence as the
latter, for reasons which I do not have to
appreciate, decided not to attack the validity of
the registration of the plaintiff's trade mark. I
really have no choice. I do so, however, with
regret, as the judgment rendered in this case
will surely affect the activities of the defendant
and require it to cease using the trade mark
Fascination.
Plaintiff's action is therefore maintained and
an injunction shall therefore be issued restrain
ing the defendant, its directors, officers, agents
and employees, from further infringing plain
tiff's trade mark registration No. 157,447 by
using the word Fascination in association with
the sale, distribution and advertisement of lin
gerie. This injunction, however, will become
effective only within six months of the formal
judgment to be rendered in this case, in order to
give defendant the necessary time to effect
whatever changes and modifications are neces
sary and enable it thereby to conform to the
present injunction.
The plaintiff may prepare an order in con
formity with this decision which it shall, how
ever, submit to the defendant. If the defendant
does not accept the draft order as proposed, the
parties may present themselves before the
Court in order to cause its terms to be deter
mined. Plaintiff will be entitled to taxed costs
including whatever costs were caused by the
amendments of the defendant effected after
trial.
' See also Acme Vacuum Cleaner Co. v. Acme Vacuum
Cleaner Co., 11 Fox C.P.C. 167.
2 20. The right of the owner of a registered trade mark to
its exclusive use shall be deemed to be infringed by a
person not entitled to its use under this Act who sells,
distributes or advertises wares or services in association
with a confusing trade mark or trade name, but no registra
tion of a trade mark prevents a person from making
(a) any bona fide use of his personal name as a trade
name, or
21. (1) Where, in any proceedings respecting a regis
tered trade mark of which the registration is entitled to the
protection of subsection (2) of section 17, it is made to
appear to the Exchequer Court of Canada that one of the
parties to the proceedings, other than the registered owner
of the trade mark, had in good faith used a confusing trade
mark or trade name in Canada before the date of filing of
the application for such registration, and the Court consid
ers that it is not contrary to the public interest that the
continued use of the confusing trade mark or trade name
should be permitted in a defined territorial area concurrent
ly with the use of the registered trade mark, it may, subject
to such terms as it deems just, order that such other party
may continue to use the confusing trade mark or trade name
within such area with an adequate specified distinction from
the registered trade mark.
17. (2) In proceedings commenced after the expiry of five
years from the date of registration of a trade mark or from
the date of the coming into force of this Act, whichever is
the later, no registration shall be expunged or amended or
held invalid on the ground of the previous use or making
known referred to in subsection (1), unless it is established
that the person who adopted the registered trade mark in
Canada did so with knowledge of such previous use or
making known.
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.