Sequa Chemicals, Inc. v. United Colour and Chemicals Ltd.
T-1478-91
Teitelbaum J.
5/8/92
10 pp.
Motion for order expunging "Sunrez" for use in association with "resins, paper coating insolubilizers" from register on ground entry not accurately expressing existing rights of registered owner at date of application -- Alleging United not entitled to registration as Sequa Chemicals and predecessor in title using "Sunrez" prior to United's first use; "Sunrez" trade mark belonging to Sequa; not distinctive of United's wares -- From 1981 to 1984, United distributor of "Sunrez" to paper mills in Canada for Sun Chemical Corp. (later renamed Sequa Corp.), U.S. parent company of Sequa Chemicals -- Applied for registration of "Sunrez" in 1985 based on first use in April 1984 -- Sequa Corp. registered "Sunrez" trade mark in U.S. in 1970 -- Registration assigned to Sequa Chemicals in 1987 -- Applied to register "Sunrez" in Canada, but refused based on United's prior registration -- Applicant "person interested" according to definition in Wilhelm Layher GmbH v. Anthes Industries Inc. (1986), 8 C.P.R. (3d) 187 (F.C.T.D.) -- Application allowed -- Trade-marks Act, s. 16 requiring trade mark not be "confusing" with trade mark "previously used" or "made known" in Canada by another to secure registration -- Marks not only confusing, but identical -- Use by distributor constituting "use" by manufacturer: Manhattan Industries Inc. v. Princeton Manufacturing Ltd. (1971), 4 C.P.R. (2d) 6 (F.C.T.D.) -- "Sunrez" previously used in Canada by applicant within meaning of s. 16 -- S. 18 stipulating trade mark may be invalid if owner of mark not entitled to secure its registration, subject to s. 17 -- S. 17 stipulating registration of trade mark not invalid based on first use of confusing trade mark if previous user subsequently abandoned mark -- Applicant never abandoned "Sunrez" mark since continued to use mark in U.S. -- No evidence of intention to abandon mark -- Sequa Chemicals entitled to registration of "Sunrez" in Canada -- S. 17 not barrier to expungement -- United, as distributor, not entitled to registration in Canada of "Sunrez" -- Applicant also discharging onus of proving trade mark "Sunrez" not adapted to distinguish United's product made known in Canada by applicant -- Evidence establishing mark made known in Canada coupled with use in U.S. sufficient to show trade mark non-distinctive of another party: E. & J. Gallo Winery v. Andres Wines Ltd., [1976] 2 F.C. 3 (C.A.) -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2, 4, 16, 17, 18.