Lightning Fastener Co., Ltd. v. Canadian Goodrich Co., Ltd.

Lightning Fastener Co., Ltd. v. Canadian Goodrich Co., Ltd.

The Exchequer Court properly had jurisdiction under s.45 to consider descriptiveness and other statutory objections; the evidence did not establish that "Zipper" had become descriptive of slide fasteners at the relevant dates, but Goodrich's application to register the mark for fasteners fails because its registered and actual merchandise was overshoes (not fasteners) and it showed no present intention to sell fasteners separately; Lightning's application fails because its adoption came too late given Goodrich's prior extensive use, the existence of other similar registrations, and the likelihood of public confusion; accordingly both petitions for registration were refused and the...

Citation
[1932] SCR 189
Parties
Appellant and Respondent: Lightning Fastener Co., Ltd.; Appellant and Respondent: Canadian Goodrich Co., Ltd.
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
22 December 1931
Procedural Posture
Intellectual Property Trade Mark Appeal From Exchequer Court / Supreme Court of Canada Final Judgment on Cross Appeals
Outcome
Appeal and cross-appeal dismissed; judgment of the Exchequer Court refusing registration of "Zipper" for slide fasteners affirmed
Legal Topics
Registrability of Trade Marks, Descriptive Marks, Conflicting Applications, Likelihood of Confusion, Scope of Goods Covered by a Specific Trade Mark
Source Language
English
Intellectual Property Trade Mark Law Civil Procedure Registrability of Trade Marks Descriptive Marks Conflicting Applications Likelihood of Confusion Scope of Goods Covered by a Specific Trade Mark

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 5 Authorities cited 11 Party arguments 2
Sign in to unlock

Parties

Lightning Fastener Co., Ltd.

Appellant and Respondent

Canadian Goodrich Co., Ltd.

Appellant and Respondent

Procedural Posture

Intellectual Property Trade Mark Appeal From Exchequer Court / Supreme Court of Canada Final Judgment on Cross Appeals

Legal Issues

  1. 1 Whether the Exchequer Court had jurisdiction to decide grounds beyond mere conflict between applications
  2. 2 Whether the word "Zipper" had become descriptive of slide fasteners at the date of application
  3. 3 Whether Goodrich could register "Zipper" for slide fasteners when its use was for overshoes only

Ratio Decidendi

The Exchequer Court properly had jurisdiction under s.45 to consider descriptiveness and other statutory objections; the evidence did not establish that "Zipper" had become descriptive of slide fasteners at the relevant dates, but Goodrich's application to register the mark for fasteners fails because its registered and actual merchandise was overshoes (not fasteners) and it showed no present intention to sell fasteners separately; Lightning's application fails because its adoption came too late given Goodrich's prior extensive use, the existence of other similar registrations, and the likelihood of public confusion; accordingly both petitions for registration were refused and the...

Court Disposition

Appeal and cross-appeal dismissed; judgment of the Exchequer Court refusing registration of "Zipper" for slide fasteners affirmed

Orders

  • Both petitions to register "Zipper" as a specific trade-mark for slide fasteners refused
  • Appeal and cross-appeal dismissed with costs