Toronto, Ontario, February 9, 2006
PRESENT: The Honourable Mr. Justice von Finckenstein
BETWEEN:
and
THE REGISTRAR OF TRADE-MARKS and AJIT NEWSPAPER ADVERTISING, MARKETING AND COMMUNICATIONS, INC.
REASONS FOR ORDER AND ORDER
[1] This is an application for an extension of time to file an appeal under s. 56 of the Trade Marks Act, RSC 1985 as amended ("TMA").
[2] The facts are as follows:
[3] The Respondent filed an application to register the trade mark AJIT WEEKLY Design ("Ajit Application") for use in association:
1. printed and electronic publications and
2. the operation of a website on January 20, 2004.
The application was assigned application No. 1,203,672 from the Registrar of Trademarks (the "Registrar") and was advertised on November 10, 2004.
[4] The Applicant decided to oppose the Ajit Application and on December 23, 2004 sent a letter to the Registrar requesting an extension from the January 10, 2005 deadline for filing oppositions until April 10, 2005.
[5] No reply to this request for an extension was ever received by the Applicant. There is no dispute between the parties that the notice was received by the Registrar. There is absolutely no evidence as to what happened to the request and why no response was given.
[6] No opposition was filed by January 10, 2005 and on January 28, 2005 the Registrar issued a notice of allowance regarding the Ajit Application. On March 3, 2005, the Registrar registered the AJIT WEEKLY Design Trademark.
[7] On March 31, 2005 the Applicant issued a Statement of Opposition. In the covering letter, counsel stated:
...[w]e respectfully submit that this Opposition is being filed in a timely manner. A check of the Strategis Trade-marks Office Database shows an error, that the trade-mark has been registered prematurely. Steps are being taken to have the Trade-mark Office records corrected. ...
A.R. Tab 2 D page 30
[8] On May 19, 2005 the Applicant brought a motion asking:
a) for extension of time to commence judicial review, and once granted;
b) that the Court to quash the Notice of Allowance and the Registration; and
c) that the Court direct that the Registrar proceed with the opposition application filed on March 31, 2005.
[9] Upon being acquainted by counsel of the Respondent of the case of Oy v. Canada(Registrar of Trade Marks) (1990), 33 C.P.R. (3d) 304, the application was discontinued on June 7, 2005.
[10] On September 27, 2005 the Applicant then brought the present application under s. 56 of the TMA asking for:
"an extension of time to issue and serve the Notice of Application ...appealing the decision of the Registrar of Trademarks ...dated March 3, 2005 to register the trade-mark AJIT WEEKLY Design ...to ten days from the date of granting the requested extension of time."
[11] The relevant sections of the TMA provide:
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
(2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.
(3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trade-mark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision.
(4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper.
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
(2) No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.
[12] The Applicant contends that:
i) it is the victim of a bureaucratic error;
ii) the Registrar never responded to it, nor gave it a copy of the notice of allowance or the trade mark registration;
iii) the trade mark should have never been registered;
iv) it filed its notice of opposition, albeit late, to evidence its intention to oppose the Respondent's trade mark application;
v) while it originally started on the wrong road for relief by initiating a judicial review action, it never abandoned its intention to seek relief; and
vi) it should not have to incur the costs of an expungement action where it has the burden of proof; rather, it is entitled to the summary relief by way of appeal under s.56 of the TMA where the burden rests with the Respondent.
[13] The Respondent opposes this application arguing:
a) This is not a proper subject matter for a s. 56 application; rather, the Applicant should proceed to seek expungement under s.57 of the TMA; or
b) In the alternative, that the Applicant has not met the test for an extension as set out in Sim v. Canada (1996), 67 C.P.R. (3d) 334.
[14] The Applicant relies on the decision of Justice Pinard in Oy, supra where he observed:
I am of the opinion that the Registrar's decision to register the trade mark constitutes a decision subject to appeal to the Federal Court under s. 56(1) of the Trade-marks Act.1 56(1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.1 Indeed, the Registrar's decision, from which undoubtedly flow legal rights and obligations (see for example ss. 19, 20 and 22 of the Act), cannot be seen as merely an incidental decision.
[15] It strikes me that the Applicant focuses on the wrong issue. There is no decision of the Registrar vis à vis the Applicant. The Applicant made an application for an extension to file a notice of opposition. It never received a reply nor even an acknowledgement. When the January 10, 2005 deadline approached, the Applicant could have checked with the Registrar or filed a notice of opposition. Instead, it did nothing as it considered the request for extension "a routine request of the sort that is invariably granted by the Registrar". (Applicant's Supplementary Motion Record Tab 5 para 9).
[16] This expectation that the extension would be routinely granted and a letter would be forthcoming is based on Practice Notice regarding 'Procedure before the Trade-marks Opposition Board' clauses v) and vii) as found under the heading 'Extensions of Time'. These provide as follows:
v) In respect of the first request for an extension of time at a particular stage of an opposition, the following lengths of extension will be granted: to file a statement of opposition- 3 month; ...
vii) When a first extension of time is granted at each stage of an opposition, the Office letter granting the extension will include a notice ...
[17] I note however two things:
a) the request for extension did not comply with clause iv) which requires that an initial request for extension for time specify the date the trade-mark was advertised in the Trade-marks Journal, and
b) that the guidelines have no force of law but rather contain the following specific disclaimer. "The provisions of this practice notice are general guidelines only, are not binding in any particular case, and are subject to change."
[18] The existence of the guidelines does not alter the fact that the Applicant has no right to render the TMA to an extension. In addition the request was only non-compliant with the guidelines.
[19] However, all this is beside the point. The Registrar under the TMA does not have to grant an extension and in this case, for whatever reason, no extension was granted. The Applicant had until January 10 to file a notice of opposition and it failed to do so.
[20] Thus, there is no decision of the Registrar affecting the Applicant to review. The Registrar acted on the request for registration by the Respondent. If the Applicant, who did not file an opposition until registration had taken place, wishes to attack the registration, it has no choice but to proceed by way of expungement proceedings under s.57 of the TMA. There is simply no room for an application of s.56 of the TMA in these circumstances. Similarly, as there was no decision of the Registrar with respect to the Applicant's request for an extension, the exception in set out s.57(2) of the TMA does not come into play.
[21] As far as the decision of Oy, supra is concerned, there are simply not enough facts to conclude that the situation was analogous to the one at hand. I note that Justice Pinard was far from categoric, but rather made an observation in the event s.56 is not applicable. He stated:
In any case, if I were to consider that the production of registration certificate no. 364,485 in support of the affidavit of Marie Pinsonneault cannot constitute express notice within the meaning of s. 57(2) of the Trade- marks Act, which it is not necessary for me to decide, or even if I were to accept, which is not the case, the submission of counsel for the applicant to the effect that that the Registrar's decision to register the mark does not constitute a decision subject to appeal under s. 56, the applicant would then have to appeal in accordance with the particular prescriptions of ss. 57, 58 and 59 of the Act, as well as those of Rules 702 to 706 of this court, since its ultimate objective necessarily entails the expungement of the registration of the above mark sought by the respondent, le Groupe RO-NA Inc., on the ground that such registration "does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark". This application obviously does not conform with these prescriptions. (Emphasis added)
[22] As stated by Pinard J., where s.56 of the TMA is not applicable (and I so found above) the Applicant has to proceed by s. 57 of the TMA. Accordingly, this application cannot succeed.
ORDER
THIS COURT ORDERS that this application be dismissed with cost being awarded in favour of the Respondents.
"K. von Finckenstein"
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: 05-T-65
STYLE OF CAUSE: SADHU SINGH HAMDARD TRUST
APPLICANT
and
THE REGISTRAR OF TRADE-MARKS and AJIT NEWSPAPER ADVERTISING, MARKETING AND
COMMUNICATIONS, INC.
RESPONDENTS
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: FEBRUARY 6, 2006
AND ORDER: von FINCKENSTEIN J.
APPEARANCES:
Andrea Rush
Mark Edward Davis FOR THE APPLICANT
Brian D. Edmonds
Tamara Ramsey FOR THE RESPONDENT (AJIT NEWSPAPER
ADVERTISING, MARKETING & COMMUNICATIONS, INC.)
No appearance FOR THE RESPONDENT (THE REGISTRAR OF
TRADE-MARKS)
SOLICITORS OF RECORD:
Heenan Blaikie LLP
Toronto, Ontario FOR THE APPLICANT
McCarthy Tétrault LLP
Toronto, Ontario FOR THE RESPONDENT (AJIT NEWSPAPER ADVERTISING, MARKETING &
COMMUNICATIONS, INC.)
John H. Sims, Q.C.
Deputy Attorney General of Canada FOR THE RESPONDENT (THE REGISTRAR OF TRADE-MARKS)