T-415-76
Ron MacKenzie (Applicant)
v.
Busy Bee Enterprises International Ltd.
(Respondent)
Trial Division, Mahoney J.—Vancouver, Novem-
ber 23; Ottawa, December 22, 1976.
Trade marks—Application to strike two entries from regis-
ter—Whether first mark registrable—Whether second mark
can stand on its own Public policy—Trade Marks Act,
R.S.C. 1970, c. T-10, s. 57(1).
Applicant seeks an order that two entries be struck from the
register of trade marks on the ground that they do not accu
rately express or define the rights of their owner.
Held, the application is allowed. The first trade mark is in
respect of services only and, not being distinctive of the owner's
services, was not registrable and should be expunged. The
second mark, in so far as it pertains to the services of the
owner, cannot stand on its own once the first mark has been
expunged since it would constitute a monopoly to traffic in the
trade mark itself, which is contrary to public policy.
APPLICATION to strike out trade marks.
COUNSEL:
T. D. Devitt for applicant.
D. A. Race for respondent.
SOLICITORS:
Barbeau, McKercher, Collingwood & Hanna,
Vancouver, for applicant.
Goldman, Kemp & Craig, Vancouver, for
respondent.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: The applicant seeks an order
under section 57(1) of the Trade Marks Act, that
the entries of numbers 183,692 and 195,822 be
struck from the register of trade marks on the
ground that they do not accurately express or
define the existing rights of their registered owner,
the respondent. The date as of which that determi
nation of fact is to be made is the date of the
application, January 27, 1976; however, one of the
grounds for such a finding is that the trade mark
in question was not registrable in the first place.
Trade mark 183,692 was applied for by Garfin
& Wener Enterprises Ltd. on June 16, 1971. That
company, hereinafter called G & W, sold all of its
rights in the trade mark to the respondent March
17, 1972. Registration issued June 9, 1972. No.
183,692 is for the phrase BUSY BEE ONE HOUR
CLEANERS in respect of services only with right
to the exclusive use of the last three words dis
claimed apart from the trade mark. The services in
respect of which it is registered are: "cleaners,
pressers, dryers, launderers and repairers of cloth
ing, fabrics, goods and household furnishings".
Trade mark 195,822, applied for by the respond
ent September 21, 1972 and registered November
30, 1973 is for the phrase busy bee 1 Hour Clean
ers together with a logogram representing a bee to
distinguish both wares and services. The exclusive
use of the numeral and words "1 Hour Cleaners"
are disclaimed apart from the trade mark. The
services in respect of which it is registered are:
"granting of licences, leases, concessions or fran
chises to others for the operation of cleaners,
pressers, dryers, launderers, repairers of clothing,
fabrics, goods and household furnishings". It is
unnecessary to detail the wares which No. 195,822
distinguishes; no evidence whatever was adduced
in support of the application that dealt with the
trade mark as it relates to the wares.
The respondent was incorporated June 21, 1966
under the name Busy Bee Enterprises Ltd. and on
April 2, 1970, duly adopted its present corporate
name. From its inception it has actively engaged in
the business of opening dry-cleaning stores in Brit-
ish Columbia. Its avowed modus operandi is to sell
a store once set up and to enter into a franchise
agreement with the purchaser.
The evidence leads to the inference that the
respondent and G & W were, in some way, relat
ed; there was some community of their corporate
officers, however, the precise relationship is not
disclosed. The respondent sold its first five stores
to G & W in 1966. It sold five more to G & W
prior to September, 1969. It also sold stores direct
to third parties. G & W, in turn, sold stores or
interests in stores to third parties. In the case of
the G & W stores, actual ownership of each
appears to have been vested in a distinct corporate
entity, no doubt, initially a wholly owned subsidi
ary of G & W, with the third parties obtaining
their interests by purchasing shares in the subsidi
aries from G & W.
Well before G & W's application that led to
registration of trade mark 183,692 either or both
G & W and the respondent had permitted a
number of third parties to use the words "Busy
Bee" in a variety of combinations in connection
with their operation of dry cleaning establish
ments. The trade mark was not distinctive of G &
W's services when it applied to register it and was
not then registrable; it should be expunged.
Strictly speaking, as the respondent argues,
there is no satisfactory evidence that anyone, other
than the respondent, has used trade mark 195,822
in connection with the services it covers, that is,
the licensing, etc. of the operation of dry cleaning
establishments. That said, I do not think that, as it
pertains to those services, No. 195,822 can stand
on its own once No. 183,692 is expunged. A
monopoly on the use of "Busy Bee" in connection
with the licensing, leasing, franchising and so on of
dry cleaning stores, where the same monopoly does
not exist in respect of the services offered to the
public by those stores, is nothing more than a
monopoly to traffic in the trade mark itself and
void, being contrary to public policy.
In the result, trade mark 183,692 will be
expunged from the register and the entry of trade
mark 195,822 will be amended by striking out the
services in respect of which it was registered. It is
an appropriate, in the circumstances, for the par
ties to bear their own costs.
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.