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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.
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