Robert Crean & Co. v. Dobbs & Co.

Robert Crean & Co. v. Dobbs & Co.

The appellant's registration of 'Dan Dobbs' was expunged because the mark was a colourable imitation likely to deceive given long prior use in Canada of the prominent element 'Dobbs' on hats; the respondent was a 'person aggrieved' under s.45, but the respondent's separate application to register 'Dobbs' in Canada could not succeed because the respondent had not established proprietary rights in Canada (use belonged to Crofut & Knapp), could not truthfully make the s.13 declaration, and had acquiesced in the use/licensing arrangement that would misrepresent goods as the respondent's.

Citation
[1930] SCR 307
Parties
Appellant (objecting Party): Robert Crean & Company, Limited; Respondent (petitioner): Dobbs & Company
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
4 February 1930
Procedural Posture
Trade Mark / Intellectual Property Appeal / On Appeal From Exchequer Court of Canada to Supreme Court of Canada; Final Judgment on Appeal
Outcome
Appeal allowed in part: Supreme Court confirmed expunging of appellant's 'Dan Dobbs' registration and refused leave for respondent to proceed with registration of 'Dobbs' in Canada.
Legal Topics
Registration of Trade Marks, Expunging of Trade Marks, Person Aggrieved, Passing Off/misrepresentation, Licensing and Use by Third Parties, Requirement of Use in Jurisdiction, Statutory Declaration Under S.13, S.45 Actions for Expunging
Source Language
English
Intellectual Property Trade Mark Law Registration of Trade Marks Expunging of Trade Marks Person Aggrieved Passing Off/misrepresentation Licensing and Use by Third Parties Requirement of Use in Jurisdiction +2 more

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Parties

Robert Crean & Company, Limited

Appellant (objecting Party)

Dobbs & Company

Respondent (petitioner)

Procedural Posture

Trade Mark / Intellectual Property Appeal / On Appeal From Exchequer Court of Canada to Supreme Court of Canada; Final Judgment on Appeal

Legal Issues

  1. 1 Whether respondent was a "person aggrieved" under s.45
  2. 2 Whether appellant's registered mark 'Dan Dobbs' should be expunged as a colourable imitation likely to deceive
  3. 3 Whether respondent was entitled to register 'Dobbs' in Canada given use of the mark in Canada by Crofut & Knapp and the licensing/acquiescence arrangements

Ratio Decidendi

The appellant's registration of 'Dan Dobbs' was expunged because the mark was a colourable imitation likely to deceive given long prior use in Canada of the prominent element 'Dobbs' on hats; the respondent was a 'person aggrieved' under s.45, but the respondent's separate application to register 'Dobbs' in Canada could not succeed because the respondent had not established proprietary rights in Canada (use belonged to Crofut & Knapp), could not truthfully make the s.13 declaration, and had acquiesced in the use/licensing arrangement that would misrepresent goods as the respondent's.

Court Disposition

Appeal allowed in part: Supreme Court confirmed expunging of appellant's 'Dan Dobbs' registration and refused leave for respondent to proceed with registration of 'Dobbs' in Canada.

Orders

  • Expunge registration of the trade-mark 'Dan Dobbs' (No. 147, fol. 33279) from the Register of Trade-Marks of the Dominion of Canada.
  • Refuse leave to the respondent to continue or proceed with its application for registration of the trade-mark 'Dobbs' in Canada.