The Bayer Co. v. American Druggists Syndicate

The Bayer Co. v. American Druggists Syndicate
Collection
Supreme Court Judgments
Date
1924-06-08
Report
[1924] SCR 558
Judges
Idington, John; Duff, Lyman Poore; Mignault, Pierre-Basile; Malouin, Arthur Cyrille Albert; Maclean
On appeal from
Canada
Subjects
Intellectual property
Decision Content
Supreme Court of Canada
The Bayer Co. v. American Druggists Syndicate, [1924] S.C.R. 558
Date: 1924-06-08
The Bayer Company, Limited Appellant;
and
The American Druggists Syndicate, Limited Respondent.
1924: March 24, 27-28; 1924: March 31; 1924: April 1-3; 1924: June 8.
Present: Idington, Duff, Mignault and Malouin JJ. and Maclean J. ad hoc.
IN THE MATTER OF THE TRADE MARK "ASPIRIN" ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Trade-Mark—Descriptive term—Mode of selling product—Acquiring distinctiveness—Validity of mark—Validity at registration—Subsequent right of public user—Removal from register—Trade-Mark and Design Act, R.S.C. [1906] c. 71, s. 42.
A trade-mark properly registered cannot be expunged under the provisions of section 42 of the Trade-Mark Act if it ceases to be used as a trade-mark and becomes merely descriptive of the article to which it has been applied. The authority to expunge "any entry made without sufficient cause" means without sufficient cause at the time of registration.
Judgment of the Exchequer Court ([1923] Ex. C.R. 65) reversed, Idington and Malouin JJ. dissenting.
APPEAL from a decision of the Exchequer Court of Canada[1] ordering that the entry of "Aspirin" as a trade-mark be removed from the registry.
In 1899 the Bayer Company of Germany registered in Canada the word "Aspirin" as a trade-mark to be applied to pharmaceutical preparations, and in 1913 assigned all its Canadian trade-marks to the Bayer Company of New York which assignment was registered in Canada in 1819 and the New York company shortly after assigned the trade-mark "Aspirin" and the goodwill and business connected therewith to the appellant Bayer Co., Ltd., of Canada.
The respondent applied to the Exchequer Court to have this trade-mark expunged from the registry and the court so ordered. The main question to be decided on the appeal from the judgment was whether or not the trademark, having been valid when registered, could afterwards be expunged because it had lost its distinctive character and become incapable of registration then.
Nesbitt K.C. and Christopher Robinson K.C. for the appellant. Aspirin is a distinctive word as describing the compound manufactured by the appellant and after the long period of user all presumptions will favour its validity; moreover if there is doubt the appellant should have the benefit of it, the onus being on respondent to prove that it should not have been registered. See Wellcome v. Thompson[2] at pages 749, 750, 757; In re Cheese-borough's Trade-Mark "Vaseline"[3] at page 8.
If "Aspirin" was distinctive when registered it cannot be expunged if it ceases to be so. See remarks of Parker J. in In re Gramophone Company's Application[4] at page 436. Chipman K.C. and Smart for the respondent. Aspirin was always used as the name of the article, not the product. See Linoleum Mfg. Co. v. Nairn[5].
The appellant's product is merely a form of acetyl salicylic acid which has been patented by name in the United States. The patent having expired aspirin as describing the patented article has become publici juris. Linoleum Case5. And the same holds where the article is itself publici juris; Leonard & Ellis Trade-Mark v. Wells[6]. And see Philippart v. Wm. Whiteley, Ltd.[7].
Nesbitt K.C. and Christopher Robinson K.C. for the appellant.
Chipman K.C. and Smart for the respondent.
Idington J. (dissenting).—This is an appeal from the judgment of Mr. Justice Audette of the Exchequer Court of Canada whereby that court directed that the specific trademark registered on the 28th April, A.D. 1899, by Farbenfabriken vormals Friedrich Bayer and Company of Elberfeld, Kingdom of Prussia, Empire of Germany, in the Department of Agriculture, now the Department of Trade and Commerce, in Register No. 29, Folio 6889, consisting of the word "Aspirin" as applied to the sale of pharmaceutical preparations, should be expunged.
On the hearing of this appeal the argument was allowed to extend beyond the usual limits and indeed gave us every opportunity the evidence affords of understanding the basis of the respective contentions on each side.
I have given the case, since then, much serious consideration, and have come to the conclusion that for the reasons assigned by the learned trial judge this appeal should be dismissed with costs.
I am not disposed to write a treatise on the several subjects presented for consideration, but may be permitted to add to the foregoing a few remarks.
It would have been much more satisfactory to me had proof been adduced that one Bayer, in Germany, had invented "Aspirin," or its mode of production, and then coined this word "Aspirin" (as we have been told was the case) to represent it by way of a registered trademark, and if, as is likely, a patent was got in Germany for the invention, and has probably expired, and all that had been proven, such facts would, in all probability, have ended this long-drawn-out story by the application of the law both here and in England as well as in the United States.
By reason of want thereof I do not attach quite as much importance as the learned trial judge does in his reasons so far as founded upon a United States patent brought into this case, and the legal consequences flowing from its expiration.
In many indirect ways, however, that story is very important as showing how others of that early period thought it for their interest to register the word "Aspirin" in Washington, as a trade-mark.
How did he who registered the trade-mark now in question herein allow such a thing to be done?
Why did he not, by a little energy, get the counterpart of the one in question herein registered in Washington, and thereby forestall the Farbenfabriken of Elberfeld Company of New York, who deposited theirs in the Washington office on the 3rd of April, 1899, though only registered on the 2nd of May, 1899.
Meantime the trade mark "Aspirin" was on its way from the German Farbenfabriken Company to be registered in Canada, and got so, on the 28th of April, 1899, as above stated.
Shortly before, on the 1st August, 1898, one Felix Hoffman of Elberfield, Germany, the home town of the said company which registered the trade-mark in question herein and where it manufactured "Aspirin," was pushing his way to get a patent from the United States for the manufacture of "Acetyl salicylic acid," and got it on the 27th February, 1900, and assigned it to the said Farbenfabriken of Elberfeld Company of New York.
What is the true inside meaning of all these movements?
Was the registration now in question herein but a part of a scheme of the German company to get control of the entire American market, including Canada?
On his examination for discovery Frederick Weiss, the president of the appellant company, testifies as follows:—
Q. What is the nature of the business of the company?—A. The manufacture and sale of Bayer Tablets of Aspirin.
Q. Is that their only business?—A. They are acting as agents for the Winthrop Chemical Company of New York. Q. That is the only manufacturing business you carry on?—A. Yes, that is the only manufacturing business we carry on.
Q. You have a plant?—A. Yes.
Q. Where is that?—A. Windsor, Ontario.
Q. How long have you had that plant?—A. Well, you mean how long have we owned the property?
Q. How long have you operated the plant?—A. Since the beginning of the company.
Q. Did the company succeed to the business of any other firm or corporation?—A. No; it was organized.
Mr. Osier: That is rather ambiguous.
Q. Did they succeed to the active manufacturing or selling business of any other company?—A. No.
******
Q. What line of business were you in previous to that?—A. I was employed by the Sterling Products Inc.
Q. Dealing with a different line of goods?—A. Yes.
Q. And in a different market?—A. In the United States.
Q. Who are the other officers of the Canadian Company at the present time?—A. Mr. William A. Sloan, he is just a director, Mr. B. W. Tobin, he is a director of the company, and he also acts as salesman for the Bayer Company Limited.
Q. Any others?—A. Just the three directors.
Q. What shareholders besides the directors, are in the Bayer Company Ltd.?—A. Just the qualifying shareholders in Canada.
Q. Who owns the stock?—A. The Bayer Company Inc., of New York.
Q. During the last two years you have been carrying on an advertising campaign in Canada with reference to the Bayer Aspirin, have you not?—A. The company has.
Q. The representations contained in the advertisement are the representations which the Bayer Company are making to the public at the present time, and during that campaign?—A. I do not see anything there as being different from the representations made.
******
Q. That leaflet, Exhibit 3, contains the phrase: "Only tablets with the Bayer Cross are Aspirin—no other"—has that always been on?—A. Yes.
Q. Since when?—A. Ever since we started using the circular.
Q. That was at the beginning of the company two and one-half years ago?—A. Well, I would not say positively that we have been using them that long—we have been using them for quite a while.
Q. Has that phrase: "If it is not Bayer, it is not Aspirin" always been on since you have been president of the company?—A. Yes.
Q. Has this further phrase: "'Get genuine Bayer tablets of Aspirin in a Bayer package, plainly marked with a Bayer Cross because the Bayer Cross is your only way of knowing you are getting genuine Aspirin prescribed by physicians for over 19 years, and proved safe by millions," been on this circular since your connection with the company?—A. Since the circular was used.
Q. I observe at the bottom of the circular it refers to the product as Monoasceticacidester of Salicylic acid—can you tell me whether that product is the product described in United States patent 644074 to Felix Hoffman of February 27, 1900—copy of which I shew you? (Exhibit 4).— A. I am not a chemist, but it is my understanding that it is identical with the Bayer Manufacture.
Q. Who is your chemist?—A. The chemist of the Sterling Products Limited.
Q. Not of the Canadian company?—A. We have no chemist.
Q. Who supervises the manufacture in Canada?—A. Of what?
Q. Of Bayer's Aspirin?—A. Tablets?
Q. Yes?—A. It is manufactured under the druggist or—the registered 3 man is B. W. Tobin.
Exhibit No. 8.—Copy of United States Patent (Hoffman) No. 644077, being said Exhibit No. 4 on examination of Mr. Weiss.
Q. That is the patent which described the process under which Bayer Tablets of Aspirin are made?
Mr. Osier: The Aspirin; not Bayer Tablets. The tablets are the tablet form of the Salicylic Acid which is called Aspirin when manufactured by the Bayer Company as we like to put it.—A. We do not say Bayer Aspirin—we say Bayer Tablets.
And the suspicion is not only strengthened by this evidence as to the identity of the goods patented by Hoffman with those for which protection is now being sought by the use in an advertising campaign of what is practically an amended edition of the registration now in question, which to me seems bordering on fraud.
Is the appellant to be permitted to manufacture in Canada such goods as advertised and pass them off as if manufactured by those who got the registration in the first place?
Nor does the story end there, for later on he testifies as follows:—
Q. Is all your product which you sell in Canada, manufactured in Canada?
Mr. Osier: You mean everything they sell?
Mr. Smart: No; all the Bayer Tablets of Aspirin.—A. Yes.
Q. None of it is purchased from any other firm?—A. No.
Then let us come to the actual wording of the claim for registration and what was done by the claimant thereof and see what, if anything, done thereunder, and goodwill, if any, is assignable.
In specifying, its claim is written thus:—
The Farbenfabriken vormals Freidrich Bayer and Company * * * hereby furnishes a duplicate copy of a specific trade-mark to be applied to the sale of pharmaceutical preparations in accordance with sections 4 and 9 of the "Trade-Mark and Design Act," which mark belongs to the Farbenfabriken vormals Friedrich Bayer & Company, by reason of said company having been the first to make use of the same.
The said specific trade-mark consists of the arbitrary word "Aspirin." This has been generally arranged as shewn in the accompanying facsimile, in which it appears in plain block letters arranged on a horizontal line; but other forms or type may be employed, or the word may be differently arranged or coloured.
The manufacturing, if any, was supposed to have been carried on in Germany but it is to be observed that it does not say, as the terms of section 5 of the Act seem to imply it should, in what way applicable
to the manufactured product or article of any description manufactured, produced, compounded, packed or offered for sale by him, etc.
And when we come to consider the assignment by said company to the Bayer Company Inc. of New York on the 12th day of June, 1913, we find appended thereto a list of articles with numbers and dates of which "Aspirin, No. 6889, dated April 28, 1899," appears the fourth in said list.
This seems to me to indicate that the parties concerned do not seem to have understood the meaning of the trademark in question as covering all pharmaceutical preparations, as it professes to do. And moreover, that it in truth may have been intended to cover only the goods known as "Aspirin" at the time.
If the latter, then it would seem void ab initio as an attempt to forestall all others then dealing in aspirin and hence void.
If it was intended to cover only "aspirin" of its own manufacture, it should have been so designated as section 5 of the Act seems to contemplate and provide, and hence is not protected by the Act.
I make these observations as worthy of consideration, in passing on to the story of the alleged goodwill.
The German company pretending to register something, never carried on business in Canada, either as manufacturers of Aspirin or selling it there.
I asked appellant's counsel and they could only refer to the following evidence of Hargreaves, a witness, who testifies as follows:—
Q. Have you ever at any time met that acetyl salicylic referred to under any other term than the chemical name?—A. Well, yes. We handled aspirin and recognized it was the same composition, the same chemical.
Q. And where did you get your aspirin?—A. We got it first, to the best of my recollection, through John Taylor & Co. At that time they were the Canadian agents for the Bayer people.
His Lordship: For the Bayer people?—A. For the Bayer people—that would be prior to 1905 first. The only goodwill, if any, that the German company could have to assign was derived from and founded upon orders sent it direct from Canada and filled by it with goods manufactured by it in Germany.
Can anything therein be a foundation for helping the appellant to acquire the trade-mark of said German company, and use it for goods not manufactured by it, but by appellant in Canada, of same kind as made by virtue of the Hoffman patent, and common to all the world?
I take it that there must be a goodwill passed to render an assignment of a trade-mark valid.
Section 15 of the Act is pointed to as of so general a character as to entitle the transfer of that which covers nothing—but the decisions cited to us clearly decide otherwise. A collection of those, and many others, appears on page 9 of Sebastian, 5th ed.
Anything done as herein by way of ordering from the German company some of its make of aspirin, would not, I submit, constitute, even if acted on then, such a goodwill in it as to lay a foundation for the assignment of 12th June, 1913, under which alone appellant can claim.
Indeed the privilege would exist in common with all others in the appellant to enable it to make such orders without such assignments.
That is not what it wants, but to terrorize others from doing likewise and, by virtue thereof, palm off upon the Canadian public its own aspirin manufactured in Canada.
I submit the continuation of a trade-mark for such a purpose is not within the scope of the Act, and seems to me such an improper use of it as to alone justify the expunging of the trade-mark as directed by the judgment complained of.
The appellant seems to desire to register its own mark, as I understand it has done, and cover it up by the trademark of another. Surely that involves a clear abandonment of the original claimant.
I am only making the foregoing several suggestions as result of my consideration of a curious case lest some of them may not have been presented at the same angle in the reasons of the learned trial judge, adopted as above.
Duff J.—This is an appeal from a judgment of Audette J., in proceedings commenced by the respondent, the American Druggists' Syndicate, Limited, 'by a petition praying for an order expunging from the register of trademarks the trade-mark "Aspirin," of which the appellant, the Bayer Company, Limited, is the registered owner. This trade-mark was registered on the 28th April, 1899, as a specific trade-mark on the application of Farbenfabriken vorm. Fried. Bayer & Co., which may be referred to as the Bayer Company of Germany, under which the applicant asked for the registration of a specific trade-mark, consisting of the arbitrary word "Aspirin," to be applied to the sale of pharmaceutical preparations. The Bayer Company was engaged in a large way in the business of manufacturing dyes and chemicals at Elberfeld and Leverkusen, in Germany. It and its successors entitled to the Canadian trade-mark have used the mark almost entirely in connection with a preparation made and sold by many others, a chemical compound of which the name is acetyl salicylic acid. On the 12th June, 1913, the Bayer Company of Germany assigned its Canadian trade-marks and the goodwill and business in connection therewith to the Bayer Company, Inc., a corporation incorporated in the State of New York, the trade-marks so assigned including the trade-mark "Aspirin." In October, 1914, an application was made for the registration of this assignment, but the assignment was not then registered, and by arrangement was retained by the Department of Agriculture for action after the termination of the war. On the 12th December, 1918, the Alien Property Custodian of the United States sold all the issued capital stock of the Bayer Company, Inc., to the Sterling Products, Inc., an American corporation. On the 26th March, 1919, the assignment from the Bayer Company, Inc., was registered in the Canadian Trade-Mark office. In May, 1919, the appellant, the Bayer Company, Limited, was incorporated as a Dominion company, and the whole of the issued capital stock of the company is owned by the Bayer Company, Inc. On the 30th May, 1919, the Bayer Company, Inc., assigned to the appellant the Canadian trade-mark "Aspirin" and all the goodwill and business in connection therewith; and on the 31st May, 1919, this assignment was recorded in the Canadian register. In the United Kingdom the Bayer Company of Germany obtained, on the 22nd October, 1899, registration of the word "Aspirin" as a trade-mark. In the United States, the Farbenfabriken of Elberfeld, a company incorporated in the State of New York, applied on the 3rd April, 1899, and obtained on the 2nd May, 1899, the registration of the word "Aspirin" as a trade-mark under the provisions of the United States Trade-Mark Act. On the 1st August, 1898, Felix Hoffman applied in the United States for a patent for acetyl salicylic acid of which he had invented, as he stated in his specification, a new and a useful improvement. This patent was issued on the 22nd February, 1900, to the Farbenfabriken of Elberfeld of New York, to which Hoffman had previously assigned his rights.
Acetyl salicylic acid does not appear to have been manufactured in a commercial way until the year 1899. Early in that year the commercial manufacture of the product appears to have begun, the Bayer Company of Germany being one of the earliest of the manufacturers. The article first appeared in Canada in the form of a powder or crystals; later it was sold in the form of compressed tablets; and in recent years its use in the latter form has far exceeded its use in the form of a powder. For many years it was used either as powder or in tablet form in dispensing medical prescriptions, but after the appearance of the article in tablet form a trade which is described by the witness as "over the counter trade" began; the customers, that is to say, began to prescribe for themselves and to buy from the druggist without a physician's prescription. The evidence shows that various words have been coined and used as trade names to distinguish a particular manufacture of acetyl salicylic acid; Burroughs Wellcome Co., for example, using the word "Empirin," having formerly used the word "Xaxa"; Charles E. Frosst & Co., the word "Acetophen;" the National Drug Company, "Seetosal"; Henry Wampole & Co., "Ceteloyd."
In 1915, the Board of Trade cancelled the registration of the trade-mark "Aspirin" in the United Kingdom as from the 22nd December, 1914, under the provisions of special war legislation; and on the 27th February, 1917, Hoffman's patent expired. Thereafter the word "Aspirin" came to be used freely by English and American manufacturers as designating acetyl salicylic acid. On the 8th March, 1919, the registration in the United States of the trade-mark "Aspirin" was cancelled by the United States Commissioner. After the termination of the war, upon the registration in 1919 of the assignment to the appellant, the appellant began to advertise extensively the sale of acetyl salicylic acid on the Canadian market under the trade name "Aspirin" and to assert its rights to the exclusive use of that name as a trade name.
Audette J. gave judgment in favour of the respondents, expunging the trade-mark. He identified the German Bayer Company, the predecessor of the appellant, with the American company, who became proprietors of the Hoffmann patent, and took the view that from its origin the word "Aspirin" had by the Bayers been applied to designate the product protected by the Hoffman patent. The trade, he said, and the public, as a consequence of the issue of the patent, treated the word "Aspirin" as a word descriptive of acetyl salicylic acid, a word which he thought had become a common English word. In his view, this was the state of facts at the time of the application of the appellant's predecessors in Canada; and consequently the word "Aspirin" was incapable of being registered as a trademark. "No man can get a monopoly of the English language," he says.
He also held that the case came within the principle that the word, having been applied by the owner of a patent to designate the product protected by the patent, and the name having thus become descriptive of the thing, everybody in Canada and the United States and elsewhere became entitled in point of law, upon the expiration of the patent, to employ the word to designate the substance. Further, the learned trial judge took the view that the evidence sufficiently established an intention on part of the appellant to abandon "Aspirin" as a trade-mark.
The Trade-Marks Act provides for a register of trademarks. Sec. 5 describes "trade-mark" for the purposes of the Act, and is in these words:—
5. All marks, names, labels, brands, packages, or other business devices, which are adopted for use by any person in his trade, business, occupation or calling, for the purpose of distinguishing any manufacture, product or article of any description manufactured, produced, compounded, packed or offered for sale by him, applied in any manner whatever either to such manufacture, product or article, or to any package, parcel, case, box or other vessel or receptacle of any description whatsoever containing the same, shall, for the purposes of this Act, be considered and known as trademarks.
The applicant for registration must declare that the trademark
was not in use to his knowledge by any other person than himself
at the time of his adoption of it. By sec. 11, the Minister may refuse to register a trade-mark on certain specified grounds, the only material ones being, first, if ho is not satisfied that the applicant is undoubtedly entitled to the exclusive use of such trade-mark; and secondly, if the so-called trade-mark does not contain the essentials necessary to constitute a "trade-mark properly speaking." By sec. 13, the applicant, on complying with the provisions of the Act, may
have such trade-mark registered for his own exclusive use.
By the same section it is provided that upon registration the
proprietor shall have the exclusive right to use the trade-mark to designate articles manufactured or sold by him.
By sec. 17, a specific trade-mark, when registered, is to endure for the term of twenty-five years, but is renewable from time to time for the like term. By sec. 19, a right of action is given to the proprietor against any person who "uses the registered trade-mark of such proprietor" or who sells any article bearing the trade-mark; and by sec. 20 it is provided that nobody shall institute any proceedings to prevent the infringement of any trade-mark unless such trade-mark is registered in pursuance of the Act. It is sufficiently clear that a trade-mark, in order to be registrable under the Act, must be something which the applicant is entitled to adopt as distinguishing the articles to which it is applied as his own; and it was not disputed on argument that the trial judge was entirely right in assuming that words merely descriptive at the time of the application could not properly be registered as a trade-mark. Adoption by the applicant for the purpose of distinguishing his goods is the ruling condition. There must, moreover, be adoption for use as a distinguishing mark implying a present bona fide intention to use the mark for such purposes; and indeed the affidavit in the form prescribed by the rules could hardly be made by an applicant who has not, in however limited a degree, actually made use of the mark in respect of which the application is made. If the learned trial judge has correctly appreciated the effect of the evidence adduced in holding that the respondents have established that the word "Aspirin" at the time of the application had been given to the world by the applicant as exclusively descriptive of the article and that at that date the word was in fact a word in common use as such, then he was indubitably right in his conclusion that the entry ought to be expunged as having been made without sufficient cause.
In considering this question it is not a little important to remember that the onus is upon the respondents. Many decisions might be cited in support of this, but it will be sufficient to mention two: Cheeseboro's Case[8]; Wellcome v. Thomson[9]. It is for the respondents to establish to the satisfaction of the tribunal of fact that for the reasons relied upon the trade-mark was registered "without sufficient cause"; that is to say, it is for the respondents to show that "Aspirin" had not been adopted as a distinctive name in the relevant sense, but was a descriptive name in current use designating the compound to which the appellants seek to apply it as a trade name. If, as Stirling L.J., says in the case last cited,
any doubt exists, the doubt must be resolved in favour of the trade-mark.
The respondents have not, I think, acquitted themselves of this onus.
The evidence bearing directly on the state of affairs in 1899 is, as might be expected, very meagre, but there is a mass of evidence derived from the practice of the trade from 1900 or 1902 to 1915, and from medical and pharmaceutical literature published during that period, and from this evidence I draw the conclusion that during that period, to the medical profession, to the wholesale dealers and to manufacturers, "Aspirin" was known as a trade name for acetyl salicylic acid, and a trade name owned by the Bayers. There is a good deal of ground, no doubt, for the contention that during the later part of the same period "Aspirin" in a loose way was often used as designating the product itself; but nevertheless I think the evidence does establish the proposition that during this period, among the classes of persons I have mentioned, "Aspirin" was always known to be, and was recognized as, the trade name of the Bayers.
Important evidence is given by wholesale dealers to the effect that Bayers' product, and Bayers' product only, was sold by them under the name of "Aspirin," down to the time when, during the war, the stock of Bayers' product became exhausted. In their price lists, acetyl salicylic acid was listed at one price and "Aspirin" at another price, the price of "Aspirin" being very much greater, some of the witnesses say four or five times as great, as the price of acetyl salicylic acid. The evidence of Mr. Grant, the Canadian manager of Parke, Davis & Company, and of Mr. Lang, the Canadian manager of Burroughs Wellcome, should be mentioned specially. Parke, Davis & Company did not manufacture acetyl salicylic acid in Canada. They acquired the compound from various sources and compressed it into tablets for the retail trade. It was first bought under the name of "Aspirin" in 1906 from the Bayer Company of Germany, and in 1908 acetyl salicylic acid was bought under that name. Down to 1916, when the stock of the Bayer product became exhausted, they listed in their price lists "Aspirin" and acetyl salicylic acid. Since then they have listed only acetyl salicylic acid. Mr. Grant says that "Aspirin" was recognized as the trade name of the Bayers and scrupulously respected as such. Out of 45,000,000 tablets compressed by them for the Canadian market, only 6,000,000 have been composed of the Bayer product. These have been listed and sold as "Aspirin," the remainder being listed and sold as acetyl salicylic acid, at a much lower price. Mr. Lang says that Burroughs Wellcome Co. from 1906 have listed and sold in Canada tabloid aspirin. These tablets were made exclusively from the Bayer product of acetyl salicylic acid. They sold acetyl salicylic acid during the same period in tabloid form under their own trade name, "Xaxa." Since 1915 they have struck Aspirin from their price list, and replaced it by their own manufacture of acetyl salicylic acid, under a trade name of their own, "Empirin." Other witnesses are quite explicit in the same sense. These witnesses agree that the distinction was well recognized in the trade, as indeed it could hardly fail to be, having regard to the difference in price.
The respondents rely chiefly upon the evidence of retail dealers, some of whom say that aspirin and acetyl salicylic acid were used convertibly; that they were accustomed to order acetyl salicylic acid from the wholesalers and get it under the name "Aspirin "; that when aspirin was prescribed, acetyl salicylic acid was used to fill the prescription. They also say that in the "over the counter trade," from about 1908 onwards, customers did not distinguish between aspirin and other products. This, however, must be observed, the evidence given by the wholesale dealers referred to shows that when aspirin was ordered from them, aspirin and aspirin only was supplied except in the few cases where it was plain that what was really wanted was acetyl salicylic acid, and not necessarily aspirin. With hardly an exception, the wholesale dealers who gave evidence say that they did not sell acetyl salicylic acid, other than the Bayer product, under the name of aspirin. Moreover, all of the retail dealers but one purchased from Parke, Davis & Co., and had Parke, Davis & Co's. price lists, and must have known that aspirin was sold at a much higher price than other manufactures of acetyl salicylic acid. The practice of the other large dealers was similar. It is highly improbable, if, indeed, it is at all credible, that a dealer to whom the distinction between aspirin and acetyl salicylic acid was of no importance would knowingly order aspirin and pay the higher price for it, or that the distinction was not perfectly well understood by the retail dealers, as well as the wholesale dealers. Moreover, the price lists filed show in nearly 'half of them aspirin distinguished from acetyl salicylic acid, with widely differing prices. In the others, aspirin alone is given, but at prices which, when compared with the others, suggest, in a large number of these, that it is the Bayer product which is indicated. As to prescriptions, a majority of prescription druggists undoubtedly do say that they used the product of any manufacturer to fill a prescription. About one-third of them, however, declare that they used the Bayer product so long as it was available. Most of the retailers say that their first knowledge of acetyl salicylic acid was of the Bayer product, which they received in one-ounce packages of powder, marked "Bayer & Co.," and "Aspirin." Many of these witnesses say that very shortly afterwards, almost simultaneously, they acquired a knowledge of other manufactures of acetyl salicylic acid, while the remainder, with two or three exceptions, say that they acquired that knowledge from two to three years afterwards. There is another observation which must be made with regard to the evidence of these witnesses: It is quite plain that a marked change took place after the commencement of the war, and especially after the cancellation of the British trade-mark and the expiry of the Hoffman patent. From that time on, in England and the United States, as well as in Canada, the free use of the word "Aspirin" no doubt greatly expanded; in Canada the German company was still the registered owner of the trade-mark and could not, of course, maintain during the war an action for infringement; and all the witnesses were speaking under impressions derived from the experiences of the preceding-five to eight years. Allowance must be made for this; indeed, all the evidence of these witnesses must be read in light of it. Even then it should be observed that one of the respondents' witnesses, Henry Willis, who has been in business for twenty-two years in Quebec and is one of the Board of Commissioners of the Pharmaceutical Society, says that every druggist knows that "Aspirin" is only a trade name or coined name, applied to acetyl salicylic acid. The conclusion which I draw from the evidence given from the practice of the wholesale dealers, the book of publications and the price lists, is, as I have stated above, that "Aspirin" was understood to be a distinctive name for the Bayer product; that other producers recognized it as such, and adopted their own distinctive names; that, generally, the distinction must have been known to the medical profession. In the early years, that is to say before 1908, it must also, I think, have been recognized by the retail dealers. Although there is some disagreement, there is a preponderance of evidence by such dealers pointing to the year 1900 as marking the beginning of the period when acetyl salicylic acid began to be widely known to the trade in Canada. As I have said, these witnesses usually say that it was through the Bayer product, and under the name "Aspirin," that acetyl salicylic acid was first brought to their attention.
As already observed, the onus is upon the appellants to establish their contention that at the date of registration, in the year 1899, "Aspirin." was a term descriptive of the compound acetyl salicylic acid, and as such, incapable of being registered as a trade-mark. The general recognition of the name as the trade name of the Bayers by the classes of persons specially interested in the subject over a considerable period of years beginning soon after registration, coupled with the lapse of time, greatly augments the weight of the presumption which the respondents must overcome.
There is some evidence that acetyl salicylic acid was imported from Switzerland under the name "Aspirin," but the source of production is not identified, and the evidence as to date is very vague and unreliable. Two witnesses mentioned the year 1898 as the year of their first acquaintance with the Word "Aspirin" as designating a.s.a. The testimony of these witnesses is most unsatisfactory, and there is not a scrap of documentary or other evidence to support their recollection. The only label of the earlier years which is connected with a European product other than Bayers' is one of the year 1904, a label for the product of a Swiss firm in Bâsle; and on it the word "Aspirin" does not appear. Generally it may be said, as to the evidence by retail witnesses who speak of sales of acetyl salicylic acid, other than the Bayer product, under the name "Aspirin," that besides the difficulty of drawing anything like a confident conclusion as to dates, there was the circumstance that few of the witnesses saw the drug so labelled in the original package, and the original source of supply is consequently left in doubt. The evidence is altogether too vague and unsatisfactory to form the basis of a judicial decision that the respondents have established the use of the name as a descriptive name prior to registration in 1899 or have established that the appellants' predecessors were not the first to adopt and use "Aspirin" as a trade name.
In deciding that, at the time of the application the name "Aspirin" was descriptive of the thing in such a way as to exclude distinctiveness in the pertinent sense, the learned judge bases his view mainly upon the Hoffman patent. The fact that the patent having been granted in the year in which application for the Canadian trademark was made, appears to the learned judge to be conclusive against the appellants in two ways: First, as establishing conclusively the fact that the name "Aspirin" was at the date of the application descriptive of the drug in such a way as to exclude distinctiveness; and secondly, as bringing into operation a supposed rule of law that in such circumstances the appellant is in point of law precluded from asserting proprietorship of the name.
Neither in the application for the Hoffman patent nor in the specification is there any reference to the word "Aspirin." The patent is a patent for acetyl salicylic acid. Even in the United States, the territory in which the patent ran, I do not think it would have been theoretically impossible for the patentee to assert and maintain his right to the exclusive use of "Aspirin" as a trade name. The practical difficulty, of course, might have been insuperable, but if they could have succeeded in controlling the use of the word "Aspirin" and the signification attached to it by the public generally in such a way that, while signifying acetyl salicylic acid, it at the same time connoted the fact that it was made by the patentee—in other words, if he had succeeded in controlling the use of the word in such a way that in the minds of people seeing the word, it denoted acetyl salicylic acid, made by them—I do not know why, at the expiration of the patent, he should not be still entitled to say that this word was his word. Parker J., said in Burberry v. Cording & Co.[10]
I do not agree with the argument that a word cannot be at the same time both descriptive and distinctive.
If "Aspirin" had been the only word which could be used for the purpose of denoting the patented article, the respondents' contention might have been well-nigh unanswerable. But here we are confronted by a very different state of facts. Both in the application and in the specification, the name given to the patented compo