T-999-76
Benjamin Weider and Weider Sports Equipment
Co. Ltd. (Plaintiffs)
v.
Beco Industries Ltd., Sydney Pinchuk and Samuel
Schwartz (Defendants)
Trial Division, Mahoney J.—Ottawa, May 20, 21,
1976.
Patents—Jurisdiction—Action for infringement—Motion to
strike out parts of statement of claim—Jurisdiction of Court
to deal with action for passing off based on section 7(b) of
Trade Marks Act—Trade Marks Act, R.S.C. 1970, c. T-10,
ss. 7, 53, 55.
This infringement action was based on the claim that defend
ants proposed to import, offer for sale and sell an exercising
device similar to plaintiffs' device. No prior infringement was
alleged. Defendants sought to strike out parts of the statement
of claim, which application called into question the jurisdiction
of this Court, in the circumstances, to deal with an action for
passing off founded on section 7(b) of the Trade Marks Act.
Defendants claimed that those portions exclusively germane to
passing off were "immaterial, prejudicial, embarrassing and
dilatory of the fair trial of the action and an abuse of the
process of the Court".
Held, the application is allowed. The only substantial basis
for the application is the jurisdiction of the Court to entertain
the passing off action. The question ensues logically upon the
recent decision of the Supreme Court of Canada in MacDonald
v. Vapor Canada. Parliament has, by sections 7, 53 and 55 of
the Trade Marks Act, created a number of causes of action and
vested this Court with jurisdiction to adjudicate them. Apply
ing the Vapor Canada decision, it cannot be said that section
7(b) of the Trade Marks Act rounds out the regulatory scheme
prescribed by Parliament in the exercise of its power to legislate
in respect of patents. (British North America Act, s. 91(22).)
The Patent Act provides causes of action and remedies for the
enforcement and protection of rights. It is entirely unnecessary
to the scheme of the Patent Act to go outside it, to section 7(b)
of the Trade Marks Act for such a cause of action, or to section
53 for a remedy.
MacDonald v. Vapor Canada (1976) 22 C.P.R. (2d) 1,
applied.
APPLICATION.
COUNSEL:
G. A. Macklin for plaintiffs.
R. Uditsky for defendants.
SOLICITORS:
Gowling and Henderson, Ottawa, for
plaintiffs.
Greenblatt, Godinsky, Resin & Uditsky,
Montreal, for defendants.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: The defendants' application to
strike out portions of the statement of claim calls
into question the jurisdiction of this Court, in the
circumstances of this action, to deal with an action
for passing off founded on section 7(b) of the
Trade Marks Act'. The invention in question is an
exercising device employing ropes with loops and
pulleys to coordinate the arm and leg movements
of a person using it in a combination in respect of
which Canadian Patent 980,376 was issued,
December 23, 1975, to the individual plaintiff on
the basis of an application dated February 1, 1973.
The corporate plaintiff is the exclusive licensee for
the distribution and sale of the device in Canada.
The action for infringement is based on the allega
tion that the corporate defendant, of which the
individual defendants are officers and sharehold
ers, proposes to import into Canada and to distrib
ute, offer for sale and sell here a similar exercising
device. There is no allegation that the defendants
had, in fact, prior to the commencement of the
action, infringed the patent; only that they propose
to do so. The application before me does not raise
any question directly related to that cause of
action.
The defendants did not, as they might, introduce
evidence in support of the application and accord
ingly I must deal with it entirely on the record on
the basis that the allegations of fact contained in
the statement of claim are true. The grounds upon
which the order is sought are that the portions
exclusively germane to passing off are "immateri-
al, prejudicial, embarrassing and dilatory of the
fair trial of the action and an abuse of the process
of the Court". These grounds for striking out are
set forth in paragraphs (b),(d) and (J) of Rule
419(1). Having heard the argument, I am satisfied
' R.S.C. 1970, c. T-10.
that the only substantial basis for the application is
that initially stated: this Court's jurisdiction, in the
circumstances, to entertain the passing off action
at all.
It is apparent that the question ensues logically
upon the recent decision of the Supreme Court of
Canada in MacDonald v. Vapor Canada Ltd. 2 The
portions of the statement of claim sought to be
struck out are paragraphs 6, 7, 8, 10, 11, 12, 14,
15, 16, 17, 25, 26, 27, parts of 32 and 33 and
subparagraphs (a) and (b) of 36. These are fully
set out in the Appendix "A" hereto with the
portions of paragraphs 32 and 33 sought to be
struck out underlined and subparagraph (c) of 36
included by way of illustrating that subparagraphs
(a) and (b) are clearly redundant in the context of
the infringement action only. The relevant provi
sions of the Trade Marks Act are sections 7, 53
and 55.
7. No person shall
(a) make a false or misleading statement tending to discredit
the business, wares or services of a competitor;
(b) direct public attention to his wares, services or business
in such a way as to cause or be likely to cause confusion in
Canada, at the time he commenced so to direct attention to
them, between his wares, services or business and the wares,
services or business of another;
(c) pass off other wares or services as and for those ordered
or requested;
(d) make use, in association with wares or services, of any
description that is false in a material respect and likely to
mislead the public as to
(i) the character, quality, quantity or composition,
(ii) the geographical origin, or
(iii) the mode of the manufacture, production or
performance
of such wares or services; or
(e) do any other act or adopt any other business practice
contrary to honest industrial or commercial usage in Canada.
53. Where it is made to appear to a court of competent
jurisdiction that any act has been done contrary to this Act, the
court may make any such order as the circumstances require
including provision for relief by way of injunction and the
2 (1976) 22 C.P.R. (2nd) 1.
recovery of damages or profits, and may give directions with
respect to the disposition of any offending wares, packages,
labels and advertising material and of any dies used in connec
tion therewith.
55. The Federal Court of Canada has jurisdiction to enter
tain any action or proceeding for the enforcement of any of the
provisions of this Act or of any right or remedy conferred or
defined thereby.
It is trite law that this Court has no jurisdiction
except that which the Parliament of Canada,
acting within its legislative competence, has given
it. I take it also that there is no question that
pleading a cause of action that is beyond the
Court's jurisdiction to adjudicate is a clear abuse
of its process. Parliament has, by sections 7, 53
and 55 of the Trade Marks Act, created a number
of causes of action and vested this Court with the
jurisdiction to adjudicate them. The question,
then, is whether, given the facts alleged in the
statement of claim, the cause of action created by
section 7(b) is one on which Parliament is com
petent to legislate. In the Vapor Canada case, at
page 34, the Chief Justice, in a judgment in which
a majority of the Court concurred, stated:
The position which I reach in this case is this. Neither s. 7 as
a whole, nor s. 7(e), if either stood alone and in association only
with s. 53, would be valid federal legislation in relation to the
regulation of trade and commerce or in relation to any other
head of federal legislative authority. There would, in such a
situation, be a clear invasion of provincial legislative power.
Section 7 is, however, nourished for federal legislative purposes
in so far as it may be said to round out regulatory schemes
prescribed by Parliament in the exercise of its legislative power
in relation to patents, copyrights, trade marks and trade names.
The subparagraphs of s. 7, if limited in this way, would be
sustainable, and certainly, if s. 7(e) whose validity is alone in
question here, could be so limited, I would be prepared to
uphold it to that extent.
As applied to the facts alleged in the statement
of claim, it cannot be said that section 7(b) of the
Trade Marks Act rounds out the regulatory
scheme prescribed by Parliament in the exercise of
its power, under section 91(22) of the British
North America Act, to legislate in respect of pat
ents. The Patent Act 3 provides the plaintiffs with
causes of action and remedies for the enforcement
and protection of the rights granted them under it.
It is entirely unnecessary to the scheme of the
Patent Act for them to go outside it, to section
3 R.S.C. 1970, c. P-4.
7(b) of the Trade Marks Act for such a cause of
action or to section 53 for a remedy.
ORDER
The application is allowed with costs to the
defendants in any event of the cause.
APPENDIX "A"
6. The plaintiff, Ben Weider, has been engaged in the field of
physical fitness and exercising and body building devices since
the year 1937 when he and his brother, Joe Weider, com
menced promoting physical fitness from their home in the City
of Montreal, Quebec.
7. From 1937 to 1947, the plaintiff, Ben Weider and his
brother Joe Weider, manufactured physical fitness and body
building devices on a modest scale in the City of Montreal for
sale in the Montreal area and elpewhere in Canada.
8. From the year 1947 to December 30, 1959, the plaintiff Ben
Weider carried on business through the firm of Weider Sports
Equipment Co. as a manufacturer and distributor of physical
fitness and body building equipment.
10. The plaintiff, Ben Weider, since at least the year 1947, has
been actively engaged in the promotion and encouragement of
physical fitness and body building in Canada and throughout
the world to the extent that the plaintiff, Ben Weider, and the
name "Weider" are synonymous with physical fitness and body
building generally.
11. Through the personal efforts of the plaintiff, Ben Weider,
the plaintiff, Weider Sports, is recognized in Canada and
throughout most of the world as the leading and most respected
distributor of quality physical fitness and body building aids
and devices and the product line of "Weider" physical fitness
and body building aids and devices is sold by most major
department stores and sports equipment retailers in Canada
and approximately eighty other countries throughout the world.
12. The plaintiff's brother, Joe Weider, has achieved similar
recognition in the United States of America where he has
resided and carried on business for nearly thirty years.
14. The said exercising device, which is lightweight and port
able, employs ropes with loops and pulleys to coordinate move
ment between the legs and arms of a person while exercising,
thus permitting a person to carry out a daily regimen of
exercise without requiring elaborate and heavy exercising
equipment.
15. Prior to and following the introduction of the "Total Body
Shaper" exercising device into the marketplace, the plaintiff
Weider Sports conducted or caused to be conducted, studies to
test the effectiveness of the Total Body Shaper as a physical
fitness and body development aid.
16. Upon and following the introduction of the Total Body
Shaper into the marketplace, the plaintiff Weider Sports with a
number of its major customers, engaged in an extensive publici
ty and advertising campaign to acquaint the public with the
Total Body Shaper as a new "Weider" physical fitness and
body development aid.
17. As a result of the efforts of the plaintiffs Ben Weider and
Weider Sports, and the customers of Weider Sports, in promot
ing the Total Body Shaper as a fitness and body development
aid, the said Total Body Shaper exercising device has become
identified in the minds of the buying public in Canada with the
plaintiffs, Ben Weider and Weider Sports.
25. The exercising device proposed to be imported, distributed,
offered for sale and sold by the defendant Beco in Canada is a
colourable and inferior imitation of the plaintiffs' Total Body
Shaper exercising device and the offering for sale and sale of
the said device will cause confusion among members of the
Canadian buying public between the plaintiffs' Total Body
Shaper exercising device and the device proposed to be import
ed by the defendant Beco.
26. The sale in Canada by the defendant Beco of a colourable
and inferior imitation of the plaintiffs' Total Body Shaper
exercising device will cause irreparable harm and damage to
the goodwill and reputation of the plaintiffs in Canada includ
ing its reputation for producing and selling high quality and
reliable fitness and exercising products and devices.
27. The activities of the defendant Beco recited in paragraphs
25 and 26 hereof constitute illegal acts of unfair competition
contrary to honest commercial practice and contrary to Section
7(b) of the Trade Marks Act.
32. The scheme so embarked upon by the defendant Beco at
the express direction of the defendants Pinchuk and Schwartz
has been done deliberately and recklessly by the defendants
Pinchuk and Schwartz for the purpose of using the defendant
Beco as a vehicle for infringing the rights of the plaintiffs in the
Total Body Shaper exercising device and for the purpose of
creating confusion among members of the Canadian buying
public between the plaintiffs' Total Body Shaper exercising
device and the device to be imported by the defendant Beco,
and to trade on the goodwill and reputation of the plaintiffs in
Canada, all for the purpose of making a profit from the sale of
the said exercising devices in Canada at the expense of the
plaintiffs.
33. By virtue of the activities of the defendants Pinchuk and
Schwartz aforesaid, the defendants Pinchuk and Schwartz are
liable for the actions of the defendant Beco in infringing the
rights granted by Canadian patent 980,376 and for the acts of
unfair competition of the defendant Beco referred to in para
graphs 25, 26 and 27 hereof.
36. The plaintiffs therefore claim:
(a) an interim order enjoining the defendants or any of them
from importing, advertising, offering for sale or selling in
Canada, an exercising device of the type described in para
graph 28 of this Statement of Claim, or equivalent thereof,
until final Judgment of this Honourable Court;
(b) an interim order enjoining the defendants or any of them
from importing, advertising, offering for sale or selling in
Canada, an exercising device which is the same as, or a
colourable imitation of, the plaintiffs' Total Body Shaper
exercising device;
(c) an interim order enjoining the defendants or any of them
from infringing Canadian patent 980,376 or any claim there
of by the importation, offering for sale or sale in Canada of
an exercising device of the type described in paragraph 23 of
this Statement of Claim, or equivalent thereof, until final
Judgment of this Honourable Court;
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.