Wilhelm Layher GmbH v. Anthes Industries Inc., (1986) 1 F.T.R. 82 (TD)

• Judge: McNair, J.
• Court: Federal Court (Canada)
• Case Date: January 13, 1986
• Jurisdiction: Canada (Federal)
• Citations: (1986), 1 F.T.R. 82 (TD)

Wilhelm Layher GmbH v. Anthes Ind. (1986), 1 F.T.R. 82 (TD)

MLB headnote and full text

Wilhelm Layher GmbH v. Anthes Industries Inc.

(No. T-2696-84)

Indexed As: Wilhelm Layher GmbH v. Anthes Industries Inc.

Federal Court of Canada

Trial Division

McNair, J.

January 13, 1986.

Summary:

A German company sold scaffolding under the trademark ALLROUND throughout the world. In April 1980, Anthes became the exclusive Canadian distributor. In July 1980, Anthes applied to register the trademark ALLROUND in Canada and continued to sell ALLROUND scaffolding for the German company. The German company applied under s. 18 of the Trade Marks Act for expungement of the trademark registration by Anthes.

The Federal Court of Canada, Trial Division, allowed the application and ordered expungement of the mark. The court held that the registration was invalid, because Anthes was not the person entitled to secure the trademark registration and there was a lack of distinctiveness within the meaning of s. 18(1)(b) of the Act.

Trademarks, Names and Designs - Topic 265

Trademarks - What trademarks registrable - Distinctive marks - Trade Marks Act, R.S.C. 1970, c. T-10, s. 18(1)(b) - A German company sold scaffolding throughout the world under the trademark ALLROUND - Three months after becoming the exclusive Canadian distributor, Anthes applied to register the trademark ALLROUND in Canada - After the distributorship agreement terminated in 1982, the German company continued to sell ALLROUND scaffolding in Canada through another company - The Federal Court of Canada, Trial Division, held that the registration of the trademark was invalid under s. 18(1)(b), because the trademark was not distinctive at the time proceedings challenging the validity of the registration were commenced - See paragraphs 39 to 41.

Trademarks, Names and Designs - Topic 885

Trademarks - Registration - Expungement of mark - Who may apply for expungement - Section 57(1) of the Trade Marks Act required that a person applying to have a trademark expunged be a "person interested" - A German company sold scaffolding throughout the world under the trademark ALL-ROUND - Three months after becoming the exclusive Canadian distributor, Anthes applied to register the trademark ALLROUND in Canada - The German company's application to register the trademark ALLROUND was rejected, because of Anthes' prior registration - The Federal Court of Canada, Trial Division, held that the German company was a "person interested" and therefore had status to seek expungement - See paragraphs 17 to 18.

Trademarks, Names and Designs - Topic 886

Trademarks - Registration - Expungement of mark - Grounds - A German company sold scaffolding under the trademark ALLROUND in Canada through Anthes as exclusive distributor - Anthes registered the trademark ALL ROUND in Canada - The Federal Court of Canada, Trial Division, ordered the expungement of the mark, because the German company, not Anthes, was the person entitled to procure the registration - The court held that Anthes deliberately and consciously pirated the trademark to deceive and mislead the public into thinking that the trademark was used in association with goods manufactured by Anthes - See paragraphs 13 to 38.

Trademarks, Names and Designs - Topic 890

Trademarks - Registration - Expungement of mark - Evidence and proof - The Federal Court of Canada, Trial Division, referred to the onus of proof in expungement proceedings - See paragraph 31.

Cases Noticed:

Gordon A. MacEachern Ltd. v. National Rubber Co. Ltd., 41 C.P.R. 149 (Ex. Ct.), refd to. [para. 18].

Waxoyl A.G. v. Waxoyl Canada Ltd., 3 C.P.R.(3d) 105, refd to. [para. 26].

Manhattan Industries Inc. v. Princeton Mfg. Ltd. (1971), 4 C.P.R.(2d) 6 (F.C.T.D.), refd to. [para. 26].

Williamson Candy Company v. W.J. Crothers Company, [1924] Ex. C.R. 183, affd. [1925] S.C.R. 377, refd to. [para. 28].

Andres Wines Ltd. v. E&J Gallo Winery (1975), 11 N.R. 560; 25 C.P.R.(2d) 126 (Fed. C.A.), refd to. [para. 30].

Breck's Sporting Goods v. Magder et al., [1976] S.C.R. 527, refd to. [para. 40].

Royal Doulton Tableware v. Cassidy's Limited (1984), 1 C.P.R.(3d) 214 (F.C.T.D.), refd to. [para. 40].

Statutes Noticed:

Trade Marks Act, R.S.C. 1970, c. T-10, sect. 2 [paras. 20, 39]; sect. 4(1) [para. 21]; sect. 16(3)(a) [para. 22]; sect. 18(1)(b) [para. 23].

Authors and Works Noticed:

Fox, Canadian Law of Trade Marks and Unfair Competition (3rd Ed.), pp. 304-305 [para. 17]; 310-311 [para. 31].

Counsel:

R.H. Barrigar, Q.C., for the applicant;

A.K. Jarzyna and P.H. Sprung, for the respondent.

This application was heard before McNair, J., of the Federal Court of Canada, Trial Division, who delivered the following judgment on January 13, 1986.