Meritt Realty Co. Ltd. v. Brown

in support of than against the judgment here appealed from.

O'CoNon The appeal must be dismissed with costs.

WALRoN.

Durr J.-The principle of law governing this appeal is not in dispute or doubt. In Californian Copper Syndicate v. Harris (1), it was laid down that the test to be applied is whether the sum in dispute was " a gain made in an operation of business in carrying out a scheme for profitmaking." That test was adopted by the Judicial Committee in Commissioners of Taxes v. Melbourne Trust, Limited (2), which decision was followed in this court in Anderson Logging Company v. The King (3), the decision of this court being subsequently affirmed by the Judicial Committee of the Privy Council (4). The test was reaffirmed by the Houses of Lords in Ducker v. Rees (5).

I see no reason for disagreeing with the finding of the Court of Revision, affirmed by the Court of Appeal, that the profits in question were profits acquired in a scheme for profit-making, which the appellant company was putting into effect as part of its business. When the facts proved are taken into consideration, there seems to me no real ground for doubting that the properties in which the company dealt were acquired for the purpose of turning them to account to the profit of the company, by sale, if necessary. Indeed, I think it is virtually admitted that the possibility of turning its properties to account by selling them at a profit was contemplated by the company from the beginning. This, in itself, is sufficient to bring the case within the decision in Anderson Logging Company v. The King (1), as well as the judgment of Lord Buckmaster in Ducker v. Rees (2).

The appeal should be dismissed with costs.

LIGHTNING FASTENER COMPANY,

LIMITED ......................

J CANADIAN GOODRICH COMPANY,

LIMITED ........................

CANADIAN GOODRICH COMPANY,

LIM ITED .........................

' LIGHTNING FASTENER COMPANY,

~

LIM ITED slide fasteners. The slide fasteners were manufactured by L. Co. which supplied all of them that were so used by G. Co. In 1927 L. Co. applied for registration of the word " Zipper" as a specific trade- Co.

mark in connection with the sale of slide fasteners. Subsequently G. Co. applied for registration of the word as a specific trade-mark in connection with the sale of slide fasteners and all articles containing the same. The Commissioner of Patents refused both applications, notifying the parties that, in view of certain conflicting applications, no further action could be taken "until the rights of the different parties have been determined either by mutual agreement or by a court of competent jurisdiction." L. Co. then petitioned in the Exchequer Court, and G. Co. (objecting party) counter petitioned, each for an order for registration as applied for. Maclean J. ([19311 Ex. C.R. 90) dismissed both petitions, holding that the word had become descriptive of slide fasteners in such degree as to preclude its registration as a trade-mark. Both parties appealed, both contending that the judgment below was made upon an issue not properly before the court, and that, in any case, the evidence was insufficient to support the holding, and each claiming an exclusive right to the use of the word for its purpose as applied for.

Held (1): It was within the competence of the Exchequer Court (and of this Court on appeal) to pass upon said ground taken in the judgment below.

On proceedings such as those taken in this case, the court has jurisdiction to enquire into all reasons wherefor, under the Trade Mark and Design Act, the registration should be permitted or refused; its powers are co-extensive with those conferred on the Minister in s. and (in the absence of surprise to the parties) its investigation should cover the same field (s. 45 of said Act cited and discussed; also s. 22 of the Exchequer Court Act, as amended by 18-19 Geo. V, c. 23). (Quaere whether, on a reference by the Minister to the Exchequer Court under s. 12 of the Trade Mark and Design Act, the court's jurisdiction may not be limited to the determination of the question involved in the reference).

(2): The evidence, however, was not such as to establish that, at the time of the applications in question, the word " Zipper " had become descriptive, so as to justify refusal of registration on that ground. To deny registration of a word on the ground that it is descriptive, it must appear that, at the date of the application, it was a name, in current use, descriptive of the article itself.

(3): G. Co.'s petition should be refused.

A specific trade-mark can only be registered "in connection with the sale of a class merchandise of a particular description " (s. 4 (c) ); and the " merchandise of a particular description " which G. Co. sold was an overshoe, not the fastener with which it was equipped; nor did G. Co. indicate any present intention of manufacturing or selling slide fasteners separately (Batt. & Co.'s Trade Marks, 15 R.P.C. 262 and 534 (at 538), [18991 A.C. 428; Bayer Co. v. American Druggists' Syndicate, [1924] Can. S.C.R. 558, at 569-570; Pugsley, Dingman & Co. v. Proctor & Gamble Co., [1929] Can. S.C.R. 442, at 448, referred to in this connection).

Further, although G. Co. had used and registered the word in connection with footwear, it had never used it in connection with fasteners (and the exclusive right to a mark is restricted to the class of goods to which it has been attached: Somerville v. Schembri, App. Cas. 453); and its application for registration was posterior to that of L. Co. Also its