Lord Russell of Killowen.:-

These are consolidated appeals from a judgment of the Supreme Court of Canada delivered on appeal from a judgment of the Exchequer Court of Canada in an action for the alleged infringement of a registered trade mark, 43/10433. The Exchequer Court held the defendant to have infringed the mark, but dismissed a counter claim by the defendant for cancellation of its registration. The Supreme Court reversed this judgment on infringement and dismissed the action, but affirmed the dismissal of the counter claim. Both parties have appealed to His Majesty in council, the plaintiff from the dismissal of the action, and the defendant from the dismissal of the counter claim. At the conclusion of the arguments of counsel in support of the plaintiff's appeal, their Lordships intimated that they did not require to hear counsel on behalf of the defendant; and thereupon the defendant's counsel stated that the defendant did not wish to proceed with the appeal on the counter claim, but would submit to having it dismissed with costs. Their Lordships are, accordingly, only concerned with the question of the alleged infringement.

It will be convenient in the first place to state the relevant facts. The plaintiff's mark consists of the words Coca and Cola joined by a hyphen and written, not in block letters, but in a script form with flourishes. It was applied to beverages and syrups, and was used for that purpose in Canada from the year 1900 (or perhaps earlier) by a company formed in the State of Georgia and called the Coca-Cola Company. It was registered by that company under the Trade Mark and Design Act of Canada on 11th November 1905. The mark was assigned in the year 1922 by the Georgia company to a company formed in the State of Delaware, and called also Coca-Cola Company. The Canadian business of the last mentioned company was acquired in the following year by the plaintiff, and an assignment by the Delaware company of the mark to the plaintiff was registered on 7th March 1930. The plaintiff then renewed the registration of the mark for a period of 25 years from 11th November 1930. There is no doubt that the plaintiff has carried on and is carrying on in Canada under its registered mark a large business in the manufacture and sale of a non-alcoholic beverage known as Coca-Cola. The scale of its trade is sufficiently indicated by the fact that in the year 1936 it owned some 20 bottling plants, and in addition had contracts with some 80 independent bottlers.

The defendant was incorporated on 29th May 1934, and began to sell in Canada a non alcoholic beverage called Pepsi-Cola, under a mark consisting of the words Pepsi and Cola joined by a hyphen land written in a script form with flourishes. Whether the defendant had acquired the goodwill of any business, and whether the defendant was properly on the register in respect of a mark which differs slightly from the mark actually in use by the defendant, were matters much discussed by plaintiff's counsel. These matters however seem to be irrelevant to the only question which their Lordships have to decide viz., whether the mark which the defendant uses, infringes the plaintiff's registered mark. The respective rights of the parties are now governed by the Unfair Competition Act 1932 to which more detailed reference must be made. By S. 3 (c) of that Act it is provided that no person shall knowingly adopt for use in Canada in connection with any wares any trade mark which is similar to any trade mark which is in use in Canada by any other person and which is registered pursuant to the provisions of that Act as a trade mark for the same or similar wares. There is no dispute that the mark which the defendant uses is subject to the above prohibition if it is "similar" to the plaintiff's registered mark. The other requirements as to "knowingly" and similarity of wares are admittedly fulfilled. The word "similar" in relation to trade marks is defined by the Act (unless the conte