Date: 20031210
Docket: 03-T-46
Citation: 2003 FC 1442
BETWEEN:
TALL SHIPS ART PRODUCTIONS LIMITED
Applicant
- and -
BLUENOSE II PRESERVATION TRUST SOCIETY and
THE REGISTRAR OF TRADE-MARKS
Respondents
Docket: 03-T-49
AND BETWEEN:
THE ATTORNEY GENERAL OF NOVA SCOTIA
representing Her Majesty the Queen in Right of the Province of Nova Scotia
Applicant
- and -
THE BLUENOSE II PRESERVATION TRUST SOCIETY, a body corporate, and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDERS AND ORDER ON COSTS
MacKAY J.
[1] These are reasons for orders issued in relation to two Court files which raise similar issues and were heard together. The Orders arose from proceedings concerning three interrelated stages of preliminary proceedings relating to judicial reviews, in file 03-T-46 initiated by Tall Ships Art Productions Limited ("Tall Ships"), a commercial corporation incorporated in Nova Scotia, and in 03-T-49 initiated on behalf of the Province of Nova Scotia by the Attorney General of the Province, in both cases against the respondents Bluenose II Preservation Trust Society ("Bluenose Trust" or the "Trust") and the Registrar of Trade-marks as respondents.
[2] The orders issued concern:
i) the dismissal of a motion by Bluenose II Preservation Trust Society, heard by telephone conference on October 15, 2003, to adjourn the applicant Tall Ships' motion in 03-T-46 for an extension of time, set for hearing in Halifax on October 16, 2003;
ii) the allowance of motions by the applicant Tall Ships and by the applicant Attorney General of Nova Scotia, each for an extension of time to file an application for judicial review of the decision of the respondent, Registrar of Trade-marks, and the Registrar's publishing on November 7, 2001, of public notice of the adoption and use by Bluenose Trust of three official marks each of which contained the word "Bluenose". Extensions of time were granted by Orders dated October 23, 2003, and subsequently a schedule, recommended by counsel for the applicants and for the respondent, Bluenose Trust, was set by Order, for preparations to perfect the applications for judicial review;
iii) an order for costs, now issued, in relation to these preliminary proceedings.
After a brief review of the background, I deal with each of these preliminary proceedings in turn.
The Background
[3] Tall Ships, incorporated in Nova Scotia in 1978, is a distributor of a variety of merchandise to retail and hospitality establishments through Nova Scotia and other Atlantic Provinces. Since 1978, it has marketed a number of products, including some featuring prints of the Bluenose II, a schooner owned by the province of Nova Scotia and operated as a tourist attraction and goodwill ambassador by the respondent Bluenose Trust under an agreement with the province.
[4] By letter dated January 23, 1996 Tall Ships was informed by Bluenose Trust that the use of prints and references to Bluenose or Bluenose II were considered to infringe the Trust's copyright in these images. A further letter of September 27, 2002 is said to have been sent by Bluenose Trust to Tall Ships with further allegations of infringement. On May 6, 2003, Tall Ships received a further letter from the Trust requesting that it cease commercial use of the Trust's intellectual property rights, that is, copyright in images of the Bluenose and Bluenose II. On June 24, 2003, Tall Ships received a further letter from counsel for the Trust alleging infringement not only of copyright but also of trade-marks, including certain official marks, the first notice to Tall Ships that Bluenose Trust claimed official marks. Counsel for Tall Ships wrote to the Trust on July 3, 2003 to advise that he had been retained.
[5] On July 15, 2003, Bluenose Trust filed a statement of Claim in the Nova Scotia Supreme Court against Tall Ships, alleging infringement of copyright and rights in certain official marks. It appears that the claimed official marks were published by the Registrar of Trade-marks in the Trade-marks Journal on November 7, 2001, more than 20 months before the action was commenced in the Nova Scotia Court. In preliminary proceedings in that action, the Trust took the position that its status as a public authority, an essential criterion for one claiming an official mark, was not justicable in the Nova Scotia action.
[6] Tall Ships then sought judicial review in this Court, a proceeding that required leave of the Court in view of the passage of time from the date of public notice of the official marks in question and from the date when Tall Ships first learned of the official marks, on June 24, 2003. The application for an extension of time to commence proceedings for judicial review of the decision of the Registrar was filed in September (Court file 03-T-46) and set down for hearing on October 16, 2003 in Halifax.
[7] Before that date arrived, the Attorney General of Nova Scotia had applied successfully to intervene in the action in the Nova Scotia Court and had determined to file an application for an extension of time to commence proceedings for judicial review of the Registrar's decision concerning the official marks attributed to Bluenose Trust. There were preliminary discussions between representatives of the Trust and of the Province of Nova Scotia and an agreement between them to seek to resolve by November 28, 2003, any differences between them concerning the Trust's claims to official marks, and perhaps other intellectual property rights.
The Motion for Adjournment
[8] On October 14, 2003, the Court received an urgent request on behalf of Bluenose Trust for a hearing by telephone, two days in advance of the hearing date fixed for consideration of Tall Ships' motion, a motion that Tall Ships' application be adjourned to a hearing date after November 28, 2003, particularly in view of the discussions proposed between the Trust and the province. Tall Ships objected to the adjournment. The Attorney General of Nova Scotia, whose application for an extension of time was by then filed, did not oppose the proposed adjournment. In view of their respective positions, the Court scheduled a telephone hearing of the motion to adjourn Tall Ships' application. That matter was heard on October 15, 2003.
[9] At the conclusion of the telephone conference, I dismissed the motion to adjourn, primarily because Tall Ships had applied for an extension of time and set the matter down on a regular motions day, October 16, a date it opposed changing. Its interests were not clearly intended to be resolved in discussions between the province and the Trust. Further, it seemed to me more expeditious and clearly in the interests of justice to resolve whether or not an extension of time would be allowed rather than have that issue carry over when one primary purpose of judicial review, if it were to proceed, is to do so as expeditiously as possible.
[10] Having dismissed the application to adjourn the scheduled proceedings for some six weeks as proposed, after consultation with counsel and with counsel for the Attorney General of Nova Scotia, and counsel for the respondent Registrar of Trade-marks who took no position in regard to the motion to adjourn or any other matter before the Court, I ordered that hearing of the similar motions for an extension of time filed by Bluenose Trust and by the Attorney General of Nova Scotia would be heard together on October 17, 2003 in Halifax.
[11] For purposes of record, I confirm the oral orders issued on October 15, 2003.
Motions for Extensions of Time
[12] When the motion by Tall Ships (03-T-46) and that of the Attorney General of Nova Scotia (03-T-49) came on for hearing on October 17, 2003, the Court was advised that the respondent Bluenose Trust consented to the latter motion but not to the similar motion by Tall Ships. Consent, of course, is not a reason for the Court to order an extension of time, but before the hearing ended, having heard counsel for the Attorney General of Nova Scotia, the Court concluded that an extension of time was warranted for the province to commence proceedings for judicial review, in view of the particular interest of the province as owner and its interests in the operations of the Bluenose II. Moreover, in view of the limited opportunity to question the process or the results of an application for publication of official marks, and because the public notice of official marks in this case appears to have been without consideration of the interests of the province in the use of the name of the vessel for commercial or advertising/goodwill purposes, an extension of time serves the interests of justice, regardless of the lapse of time since the action by the Trust was begun in the Nova Scotia Court. By Order dated October 23, 2003, I allowed the motion by the Province for an extension of time to commence proceedings for judicial review and a schedule for perfection of preparations for hearing that application was later set by separate order.
[13] At the same hearing, submissions from counsel for Tall Ships and from counsel for Bluenose Trust were received, and by Order dated October 23, 2003 I allowed the motion by Tall Ships for an extension of time to commence proceedings for judicial review of the decision and publication of notice of official marks. The same schedule for perfecting the application as ordered to apply in relation to the proceedings initiated by the province, was subsequently set by Order. Both applications should be heard together, in due course, if that be necessary.
[14] My reasons for allowing an extension of time for Tall Ships to initiate proceedings for judicial review may be summarized as follows.
(i) Judicial review provides the preferred process for questioning validity of a decision to publish a claim to official marks (see Magnotta Winery Corp. v. Vintners Quality Alliance of Canada (1999), 1 C.P.R. (4th) 68 (F.C.T.D.) and Canadian Jewish Congress v. Chosen People Ministries et al. [2003] 1 F.C. 29 (T.D.)).
(ii) I accept that publication of Bluenose Trusts' claimed official marks did not come to the attention of Tall Ships until after inquiries were made following receipt of the notice of the alleged infringement of trade-marks in June 2003, and in particular, after the action in the Nova Scotia Court initiated in July raised a claim related to official marks. Thereafter, there was, in my opinion, no inexcusable delay in initiating the application for an extension of time. In this case, efforts to raise the validity of the claim to official marks as a defence in the Nova Scotia action were rebuffed by the Trust in its response to Tall Ships' defence.
(iii) While the motion was not heard until mid-October, it was served and filed in September for hearing at the next regular motions day in Halifax. Any delay on the part of Tall Ships was without any prejudice to the Trust which was aware of the applicant's determination to raise the issue of the validity of the Trust's claim to official marks. In Tall Ships' view, Bluenose Trust is not a public authority, a criterion for a claimant to official marks. That view raises an arguable issue concerning the eligibility of Bluenose Trust to claim official marks (see Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario, [2003] 1 F.C. 331, [2002] F.C.J. No. 813 (C.A.)).
(iv) The process for application for and publication of claims for official marks, differing markedly from that applying to trade-marks, does not specify an opportunity to question the application only after publication of the official marks may they be questioned by judicial review. The decision to publish is a decision subject to judicial review in the normal course, and in this case the Trust has consented to judicially review proceedings initiated by the Province. The applicant, Tall Ships, has different interests from those of the Province and, in my opinion, the interests of Tall Ships warrant opportunity, in the interest of justice, for judicial review of the decision in question.
Costs
[15] Following the issue of Orders on October 23, 2003, allowing extensions of time and later establishing schedules for preparation for hearing of these judicial reviews, Tall Ships requested a telephone hearing concerning costs. Counsel for Tall Ships and for Bluenose Trust were heard by telephone on November 24, 2003. Counsel for the Attorney General of Nova Scotia was in attendance for this conference but made no submissions.
[16] Costs were not sought by the Province in file 03-T-49 and no order is made concerning costs in that proceeding. Each party is responsible for its own costs.
[17] After consideration of the detailed submissions on behalf of Tall Ships and Bluenose Trust in file 03-T-46, I order that:
(i) with respect to the telephone hearing on October 15 of the Trust's motion to adjourn Tall Ships' application from October 16 until after November 28, 2003:
Costs should follow the result and Bluenose Trust shall pay Tall Ships' costs and disbursements in the fixed sum of $1,200, payable forthwith since, in my view, the motion to adjourn, raised virtually on the eve of the scheduled hearing, could better have been raised, if appropriate, at commencement of that hearing;
(ii) with respect to the hearing of applications for extensions of time, bearing in mind Rule 410 which provides that costs of a motion for an extension of time shall be borne by the party bringing the motion unless the Court orders otherwise, since in my opinion the motion seeks to raise an arguable issue, and a similar issue is raised by the separate motion of the Province of Nova Scotia to which the Trust consents, I order that each of the parties should bear its own costs of the applications and hearing for an extension of time;
(iii) with respect to the separate telephone hearing on the matter of costs, neither of the parties in 03-T-49 requested costs related to the separate hearing, and the Court considers this was a continuation of the earlier hearing with respect to the applications for an extension of time. No costs are awarded for the separate telephone hearing, and each party shall bear its own costs.
[18] These directions on costs are set out in the Order following the conclusion of these Reasons.
Conclusion
[19] Orders have already issued, orally in respect to the motion to adjourn heard on October 15, 2003, in writing in allowing the application for an extension of time to file an application for judicial review in each of files 03-T-46 and 03-T-49, and in writing establishing a schedule for preparation for hearing the applications for judicial review.
[20] All parties are urged to settle their claims in respect of the official marks as published by the Registrar. That would, I am confident, produce arrangements to best serve their respective interests. If that cannot be accomplished, the applications in files 03-T-46 and 03-T-49 should be heard together.
[21] A copy of these reasons should be filed on each of the files 03-T-46 and 03-T-49.
ORDER
[22] IT IS ORDERED that:
1. In file 03-T-49, no costs were sought and none are awarded. Each party shall bear its own costs.
2. In file 03-T-46:
(i) costs associated with the application by Bluenose Trust for an adjournment, heard by telephone October 15,2 003, are payable forthwith by Bluenose Trust to Tall Ships in the amount of $1,200.
(ii) each party shall bear its own costs associated with the application for an extension of time on October 17, 2003 and those associated with the telephone hearing on the matter of costs.
"W. Andrew MacKay"
J.F.C.
Ottawa, Ontario
December 10, 2003
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: 03-T-46 and 03-T-49
STYLE OF CAUSE: TALL SHIPS ART PRODUCTIONS LTD. v. BLUENOSE II PRESERVATION TRUST SOCIETY AND OTHERS (03-T-46) and THE AG OF NOVA SCOTIA v. BLUENOSE II PRESERVATION TRUST SOCIETY AND OTHERS (03-T-49)
PLACE OF HEARING: HALIFAX and OTTAWA
DATE OF HEARING: OCTOBER 17, 2003 and NOVEMBER 24, 2003
REASONS FOR ORDERS AND ORDER ON COSTS OF MacKAY J.
DATED: DECEMBER 10, 2003
APPEARANCES:
MS. STEPHANIE CHONG FOR APPLICANT (03-T-46)
MR. STEPHEN T. MCGRATH FOR APPLICANT (03-T-49)
MS. DANIELA BASSAN FOR RESPONDENT - BLUENOSE II PRESERVATION TRUST SOCIETY
MR. REINHOLD ENDRES FOR RESPONDENT - THE REGISTRAR OF TRADEMARKS
SOLICITORS OF RECORD:
JOHNSTON AVISAR WASSENAAR FOR APPLICANT (03-T-46)
Toronto, Ontario
DOUGLAS KEEFE FOR APPLICANT (03-T-49)
Deputy Attorney General of Nova Scotia
STEWART McKELVEY STIRLING SCALES FOR RESPONDENT -
Halifax, Nova Scotia BLUENOSE II PRESERVATION TRUST SOCIETY
MORRIS ROSENBERG FOR RESPONDENT - THE
Deputy Attorney General of Canada REGISTRAR OF TRADEMARKS