Hurlbut Co. v. Hurlburt Shoe Co.

Hurlbut Co. v. Hurlburt Shoe Co.

Majority held the appellants failed to prove the name HURLBUT had acquired the requisite secondary meaning in the relevant trade area and that there was insufficient evidence that the respondents used their own surname dishonestly or with the effect of passing off the appellants' goods; consequently the respondents were permitted to continue using their name subject to reasonable qualifying measures to avoid confusion.

Citation
[1925] SCR 141
Parties
Appellant (plaintiff): The Hurlbut Company; Respondent (defendant): The Hurlburt Shoe Company
Court
Supreme Court of Canada
Jurisdiction
Canada
Judgment Date
3 February 1925
Procedural Posture
Intellectual Property — Trade Mark / Passing Off / Appeal to Supreme Court of Canada From Exchequer Court Judgment (final Disposition on Appeal)
Outcome
Appeal dismissed with costs (majority). Dissent would have allowed appeal and granted injunction/expungement.
Legal Topics
Secondary Meaning, Use of Surname as Trade‑mark, Passing Off, Intent to Deceive, Expungement, Injunction, Trade‑mark Variation
Source Language
English
Intellectual Property Trade‑mark Law Passing Off Unfair Competition Secondary Meaning Use of Surname as Trade‑mark Intent to Deceive Expungement +2 more

Case Brief

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Parties

The Hurlbut Company

Appellant (plaintiff)

The Hurlburt Shoe Company

Respondent (defendant)

Procedural Posture

Intellectual Property — Trade Mark / Passing Off / Appeal to Supreme Court of Canada From Exchequer Court Judgment (final Disposition on Appeal)

Legal Issues

  1. 1 Whether the plaintiff's surname had acquired a secondary meaning identifying its shoes exclusively
  2. 2 Whether the respondents' use of the name 'Hurlburt' amounted to passing off the respondents' goods as those of the appellants
  3. 3 Whether a defendant may use his own surname as a trade‑mark when the name is similar to an existing trade‑mark

Ratio Decidendi

Majority held the appellants failed to prove the name HURLBUT had acquired the requisite secondary meaning in the relevant trade area and that there was insufficient evidence that the respondents used their own surname dishonestly or with the effect of passing off the appellants' goods; consequently the respondents were permitted to continue using their name subject to reasonable qualifying measures to avoid confusion.

Court Disposition

Appeal dismissed with costs (majority). Dissent would have allowed appeal and granted injunction/expungement.

Orders

  • Respondents to undertake in advertisements and circulars to state they have no connection with the appellants and to amend their trade‑mark by attaching the name of the proprietor (Frank H. Hurlburt) to avoid confusion
  • Appeal dismissed with costs to respondents