Crothers Co. v. Williamson Candy Co.

Crothers Co. v. Williamson Candy Co.

Majority held that the United States registrant, by virtue of its US registration and extensive advertising in publications with substantial Canadian circulation, was a "person aggrieved" under s.42 because the appellant's Canadian registration, while standing, would prevent the respondent from using the mark in Canada and deprive it of the benefit of its advertising; the Exchequer Court's finding that the appellant's registered mark was calculated to deceive and mislead the public supported expungement under s.11(b); accordingly the appellant's registration must be expunged and the appeal dismissed.

Citation
[1925] SCR 377
Parties
Defendant/appellant: W. J. Crothers Company; Plaintiff/respondent: Williamson Candy Company
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
27 March 1925
Procedural Posture
Trade Mark Expunging Action / Appeal to Supreme Court of Canada From Exchequer Court
Outcome
Appeal dismissed with costs.
Legal Topics
Registration, Prior User, Person Aggrieved, Expungement, Advertising, Deceptive Trade Marks
Source Language
English
Intellectual Property Trade Mark Law Registration Prior User Person Aggrieved Expungement Advertising Deceptive Trade Marks

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 25 Party arguments 2
Sign in to unlock

Parties

W. J. Crothers Company

Defendant/appellant

Williamson Candy Company

Plaintiff/respondent

Procedural Posture

Trade Mark Expunging Action / Appeal to Supreme Court of Canada From Exchequer Court

Legal Issues

  1. 1 Whether a foreign prior user/registration and foreign advertising confer standing or proprietary rights in Canada
  2. 2 Whether the plaintiff is a "person aggrieved" under s.42 of the Trade-Mark and Design Act
  3. 3 Whether the defendant's Canadian registration was "calculated to deceive or mislead the public" under s.11(b)

Ratio Decidendi

Majority held that the United States registrant, by virtue of its US registration and extensive advertising in publications with substantial Canadian circulation, was a "person aggrieved" under s.42 because the appellant's Canadian registration, while standing, would prevent the respondent from using the mark in Canada and deprive it of the benefit of its advertising; the Exchequer Court's finding that the appellant's registered mark was calculated to deceive and mislead the public supported expungement under s.11(b); accordingly the appellant's registration must be expunged and the appeal dismissed.

Court Disposition

Appeal dismissed with costs.

Orders

  • Expunge from the Canadian register the defendant's trade-mark "Oh! Henry" (registration No. 137, Folio 31320)
  • Appeal dismissed with costs