All Canada Vac Ltd. v. Lindsay Manufacturing Inc.

• Jurisdiction: Federal Jurisdiction (Canada)
• Court: Court of Appeal (Canada)
• Judge: Mahoney, Stone and Desjardins, JJ.A.
• Citation: (1990), 134 N.R. 231 (FCA)
• Date: 12 December 1990

All Can. Vac Ltd. v. Lindsay Mfg. Inc. (1990), 134 N.R. 231 (FCA)

MLB headnote and full text

All Canada Vac Limited (appellant/applicant) v. Lindsay Manufacturing Inc. (formerly known as Vacu-Maid Inc.) (respondent)

(A-185-90)

Indexed As: All Canada Vac Ltd. v. Lindsay Manufacturing Inc.

Federal Court of Appeal

Mahoney, Stone and Desjardins, JJ.A.

December 12, 1990.

Summary:

An American company (Lindsay) regis­tered the trademark "ASTRO-VAC" in Canada for its central vacuum cleaner sys­tem. Lindsay sold its "ASTRO-VAC" sys­tem in Canada through licensed distributors since 1970. The trademark and associated wares were well known in Canada through advertising in trade publications, journals, magazines and by the distributors. All Canada Vac Ltd. entered a distributorship agreement with the American company in 1975 for the Ontario market. Since 1976 All Canada carried on its business using the "ASTRO-VAC" name. The distributorship agreement was terminated in 1986. All Canada thereafter manufactured its own system and used the "ASTRO-VAC" name. Lindsay obtained an interim injunction against All Canada in the Ontario Supreme Court to restrain All Canada from using the trademark. All Canada applied to expunge registration of the trademark on the ground that it was not distinctive.

The Federal Court of Canada, Trial Divi­sion, in a judgment reported 32 F.T.R. 259; 28 C.P.R.(3d) 385, dismissed the application. The court referred to the principle that abuse of another's registered trademark did not afford a valid basis for attacking the distinc­tiveness of the trademark. The court held that the trademark was "used" in Canada under s. 4 of the Trade Marks Act and that the trademark was sufficiently distinctive to distinguish Lindsay's wares from those of others. All Canada appealed.

The Federal Court of Appeal dismissed the appeal.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctive­ness - The Federal Court of Appeal held that, where the wares in association with which a trademark is registered by their nature require installation and will in the ordinary course of events require periodic servicing and parts replacement, the use of that trademark by a distributor in associa­tion with its installation and maintenance does not render the trademark not distinc­tive of the wares.

Counsel:

F. Farfan and T. Bortolin, for the appel­lant/applicant;

G. Piasetzki and A. Trister, for the re­spondent.

Solicitors of Record:

MacBeth & Johnson, Toronto, Ontario, for the appellant/applicant;

Rogers, Bereskin & Parr, Toronto, Ontario, for the respondent.

This case was heard on December 11 and 12, 1990, at Toronto, Ontario, before Mahoney, Stone and Desjardins, JJ.A., of the Federal Court of Appeal.

On December 12, 1990, Mahoney, J.A., orally delivered the following judgment for the court.