T-2194-85
Ralph H. Long (Plaintiff)
v.
Richard Hayden Tucker, Pacific Northwest
Enterprises Inc., Trent Industries, Inc., Altman,
Kahn, Zack, Hammerberg & Ehrlich (Defendants)
Trial Division, Strayer J.—Vancouver, October 28
and 31, 1985.
Trade marks — Practice — Application by plaintiff for
interlocutory injunction prohibiting defendants from dealing
with trade mark "Unicure", for order directing Registrar to
amend register by entering interlocutory injunction against
mark and for order striking out Trent Industries, Inc. as owner
and restoring Pacific Northwest Enterprises Inc. as owner —
Application by defendants to strike out statement of claim as
abuse of process — Plaintiff having unsatisfied judgment
against Pacific Northwest Enterprises Inc. — Pacific assigning
trade mark to Trent Industries, Inc. — Mark registered under
new owner — Action pending in Supreme Court of British
Columbia for declaration transfer void — Supreme Court of
British Columbia granting interim injunction enjoining
defendants from transferring trade mark — Vexatious to
grant interim injunction in same terms as one already granted
in another jurisdiction — No authority for order entering
injunction in register — S. 57(1) permitting amendments in
respect of inaccuracies, or corrections where assignment void
— Purpose of register not to otherwise authenticate beneficial
ownership of trade mark — Inappropriate for Court to direct
amendments to register of beneficial interests of non-regis
tered owners when Act not requiring Registrar to record docu
ments of this nature — Statement of claim struck out — S. 58
permitting application under s. 57 by statement of claim in
action claiming "additional relief under this Act" — No such
additional relief claimed — Interlocutory injunction not relief
under Act — S. 53 authorizing injunctive relief where act done
contrary to Act — Act not regulating alleged wrongdoing —
Plaintiff's motion dismissed — Plaintiff having possible cause
of action after determination assignment void by provincial
superior court — Trade Marks Act, R.S.C. 1970, c. T-10,
ss. 53, 57, 58 — Federal Court Act, R.S.C. 1970 (2nd Supp.),
c. 10, s. 20.
CASES JUDICIALLY CONSIDERED
REFERRED TO:
Auer Incandescent Light Mfg. Co. v. Dreschel, et al
(1897), 5 Ex.C.R. 384; Remi Rivet Fast Foods Ltd. v.
Nemo Foods Ltd. et al. (1981), 59 C.P.R. (2d) 174
(F.C.T.D.).
COUNSEL:
Brian Corbould for plaintiff.
Gary Letcher for defendant Pacific Northwest
Enterprises Inc.
M. Lithwick for defendant Altman, Kahn,
Zack, Hammerberg & Ehrlich.
SOLICITORS:
Milne, Selkirk, Nordman, Corbould & Todd,
New Westminster, B.C., for plaintiff.
Edwards, Kenny & Bray, Vancouver, for
defendant Pacific Northwest Enterprises Inc.
Altman, Kahn, Zack, Hammerberg & Ehr-
lich, Richmond, B.C., for defendant Altman,
Kahn, Zack, Hammerberg & Ehrlich.
The following are the reasons for order ren
dered in English by
STRAYER J.: The plaintiff applies for an inter
locutory injunction prohibiting the defendants
from selling or otherwise dealing with the trade
mark "Unicure" until further order of this Court,
and for an order directing the Registrar of Trade
Marks to amend the trade mark register by enter
ing this interlocutory injunction "against the mark
Unicure". The defendants apply to have the state
ment of claim struck out on the basis that it
discloses no reasonable cause of action or is frivol
ous and vexatious or an abuse of the process of the
Court. The two motions were argued together, the
latter one by consent on short notice.
According to the statement of claim in the
present action in which these motions were made,
the plaintiff, who is a barrister and solicitor, com
menced an action in the Supreme Court of British
Columbia in May, 1984 against certain of the
parties who are defendants in the action in this
Court, namely Richard Hayden Tucker and Pacif
ic Northwest Enterprises Inc. That action was for
recovery of legal fees. It ultimately resulted in a
decision being rendered in favour of the plaintiff
on February 19, 1985, which was formally entered
as a judgment on April 23, 1985, in the amount of
$229,000. Again, according to the statement of
claim, that judgment remains unsatisfied.
In August, 1984, Pacific Northwest Enterprises
Inc. executed an assignment of its trade mark
"Unicure" to Trent Industries, Inc., one of the
defendants in the present case. According to the
statement of claim, this assignment was submitted
by the defendant law firm, Altman, Kahn, Zack,
Hammerberg & Ehrlich, to the Registrar of Trade
Marks for registration in May, 1985 and the trade
mark was as a result registered in the name of
Trent Industries, Inc. in June, 1985. The plaintiff,
apparently having reason to believe that Pacific
Northwest Enterprises Inc., the former owner of
the trade mark, had few if any other assets to
satisfy the judgment against it of April, 1985 in
favour of the plaintiff, commenced action in the
Supreme Court of British Columbia in August,
1985 against the same parties as are defendants in
this present action in the Federal Court. The new
action now pending in the Supreme Court of Brit-
ish Columbia seeks a declaration that the transfer
of the trade mark from Pacific Northwest Enter
prises Inc., to Trent Industries, Inc. was void and
of no effect as against the plaintiff. Immediately
after commencement of this action in the Supreme
Court of British Columbia, the plaintiff sought
and obtained there an interim injunction against
the defendants which enjoins them from "transfer-
ring or otherwise dealing with the Trademark
`UNICURE' including its goodwill". This injunc
tion is still in effect.
The action in the Federal Court was then com
menced on October 7, 1985. The statement of
claim recites these allegations and facts and seeks
the following relief: an interlocutory injunction
restraining the defendants from dealing with the
trade mark as described above; the order directing
the entry of the said interlocutory injunction in the
trade mark register as noted above; an order strik
ing out the entry of the defendant Trent Indus
tries, Inc. as the owner of the trade mark; and an
order restoring Pacific Northwest Enterprises Inc.
as registered owners thereof.
I have concluded that the remedies sought by
the plaintiff on his motion should not be granted
and that, further, the statement of claim should be
struck out.
The injunction which is being sought is essen
tially the same as the one already granted in the
Supreme Court of British Columbia. While it is
not beyond the jurisdiction of this Court to issue a
similar injunction, I believe it would be vexatious
to the defendants and the discretion of the Court
should be exercised against it: see Auer Incandes
cent Light Mfg. Co. v. Dreschel, et al (1897), 5
Ex.C.R. 384.
In fact the injunction was being sought essen
tially as underpinning for the order which the
plaintiff also seeks requiring the Registrar of
Trade Marks to amend the register by "entering"
that injunction against the trade mark "Unicure".
Even if there were such an injunction issued, I do
not believe that such an order can be made. Coun
sel have been unable to direct me to any clear
authority on this matter one way or the other. It
appears to me from general principles, however,
that this would not be a proper amendment of the
register to be ordered by this Court pursuant to
section 57 of the Trade Marks Act, R.S.C. 1970,
c. T-10. Subsection 57(1) provides as follows:
57. (1) The Federal Court of Canada has exclusive original
jurisdiction, on the application of the Registrar or of any person
interested, to order that any entry in the register be struck out
or amended on the ground that at the date of such application
the entry as it appears on the register does not accurately
express or define the existing rights of the person appearing to
be the registered owner of the mark. [Emphasis added.]
In my view the underlined words indicate that
such amendments can be ordered in respect of an
inaccuracy in the register with respect to the
description of the trade mark, or the words or
services in connection with which it is used by the
registered owner, etc. They may also provide a
means for correcting the record where the regis
tered owner should not have been registered as
such because the assigment was e.g. void for fraud
or lack of authority in the assignor, although no
jurisprudence was brought to my attention on this
latter point. But I do not understand the purpose
of the register to be to demonstrate or authenticate
otherwise the beneficial ownership of the trade
mark. Instead, the purpose of the register is to
record the name of the registered owner, the pre
cise trade mark claimed, and the nature of the
goods or services in respect of which it is to be
used.
Any other conclusion would mean that the Reg
istrar should accept for inclusion with the registra
tion of a trade mark a variety of documents
indicating the beneficial interests of non-registered
owners in respect of the trade mark: for example,
holders of liens, caveats, mortgages, conditional
sale agreements, etc. I do not understand that to
be the purpose of the register and I can find no
indication in the Trade Marks Act that the Regis
trar is obliged to record such instruments on the
title of the registered owner. If he is not so obliged,
it would not be appropriate for the Court under
subsection 57(1) to direct "amendments" to the
register of this nature.
Having considered that the remedies sought by
the plaintiff on this interlocutory motion are not
available, I would go further and direct that the
whole statement of claim be struck out. The only
remedies sought in that statement of claim are the
interlocutory injunction and the orders with
respect to expungement and amendment of the
register. It appears to me that by virtue of section
58 of the Trade Marks Act this proceeding cannot
be brought by statement of claim. Section 58
provides as follows:
58. An application under section 57 shall be made either by
the filing of an originating notice of motion, by counterclaim in
an action for the infringement of the trade mark, or by
statement of claim in an action claiming additional relief under
this Act. [Emphasis added.]
Assuming, without deciding, that the orders
based on invalidity of the assignment which are
being sought with respect to correction of the
register do come within subsection 57(1), such
remedy can only be sought under section 58 by
statement of claim if the statement of claim also
claims "additional relief under this Act". There is
no such additional relief claimed in this action.
The only other relief is that of the interlocutory
injunction to prevent dealing with the trade mark
prior to a judgment for the rectification of the
register. Ignoring the fact that I have already
rejected this remedy, and assuming that it is a
remedy which could be given by this Court in a
proper case pursuant to section 20 of the Federal
Court Act, R.S.C. 1970 (2nd Supp.), c. 10, it is
not relief under the Trade Marks Act. I can find
no provision for such relief in the Act. While
section 53 authorizes the Court to, inter alia, give
relief by way of injunction where "any act has
been done contrary to this Act", the alleged
wrongdoing of the defendants in the present action
amounts to a conveyance of assets by a judgment
debtor supposedly to defeat its judgment creditor
in respect of a judgment obtained in a provincial
Superior Court in an action for contract. The
Trade Marks Act does not purport to, nor could it,
regulate such matters.
It would therefore be an abuse of the process of
the Court to proceed with this action on the basis
of this statement of claim. I am not prepared to
say, however, that the plaintiff has no reasonable
cause of action in this Court. If he has such cause
of action it would arise after there has been a
determination in the action in the Supreme Court
of British Columbia that the assignment of the
trade mark by Pacific Northwest Enterprises Inc.
to Trent Industries, Inc. was void. If such should
be determined, then it may be possible for the
plaintiff to seek a correction of the register of
trade marks, but that will have to be done by
originating notice as provided in section 58 of the
Trade Marks Act. See Remi Rivet Fast Foods
Ltd. v. Nemo Foods Ltd. et al. (1981), 59 C.P.R.
(2d) 174 (F.C.T.D.).
ORDER
The plaintiff's motion for an interlocutory
injunction and for an order of direction to the
Registrar of Trade Marks is dismissed. The state
ment of claim is struck out on the grounds that it
is an abuse of the process of the Court. The
defendants are entitled to costs of the action.
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.