Royal Roads University v. R., 2003 FC 922

Date: 20030725

Docket: T-185-03

Citation: 2003 FC 922

BETWEEN:

                                                       ROYAL ROADS UNIVERSITY

                                                                                                                                                          Plaintiff

                                                                              - and -

                                                        HER MAJESTY THE QUEEN

                                                                                                                                                      Defendant

                                                        REASONS FOR JUDGMENT

MacKAY J.

[1]                 In this action commenced by the Plaintiff in January 2003, after the filing of the Statement of Defence by Her Majesty the Queen, both of the parties seek an order for summary judgment.

[2]                 The Plaintiff is a university constituted under the laws of the Province of British Columbia. In the spring of 1999 the university adopted and used, in its advertising campaign for educational services, the positioning line "You can get there from here". That line was used in newspaper ads commencing on May 29, 1999, and in magazines and television and radio advertising. The university arranged for testing of the line and those responsible were satisfied that its use contributed to the promotion of the university programs.

[3]                 Canada Investment and Savings, a specialized agency of Her Majesty the Queen, is responsible for design, marketing and management of retail savings and investment products on behalf of the Government of Canada. That agency markets Canada Savings Bonds ("CSBs") and Canada Premium Bonds ("CPBs") to the Canadian public under the brand "New Canada Savings Bonds". That brand has been used extensively in every marketing campaign of the agency since the fall of 1999. The agency began using the tag, or positioning line, "You can get there from here" in promoting the sale of "New Canada Savings Bonds" during the 2001-2002 sales and marketing campaign. It was used in television commercials produced early in 2001 and aired in October to December 2001 and later, during the 2002-2003 sales and marketing campaign, it was also used in print advertising that was prepared in March 2002 and was distributed in July of that year.

[4]                 The Defendant's CSBs and CPBs, marketed under the brand "New Canada Savings Bonds", are advertised under that brand which was advertised in the Trade-marks Journal as an official mark, pursuant to section 9(1)(n)(iii) of the Trade-marks Act, on September 8, 1999.

[5]                 In December 2001, representatives of the Plaintiff noted the use of the tag line "You can get there from here" by Canada Investment and Savings in the marketing of bonds. The university subsequently applied for and on May 29, 2002, the Registrar of Trade-marks gave public notice under section 9(1)(n)(ii) of the Trade-marks Act of the adoption by the university of the mark "You can get there from here". In September 2002, the university gave formal notice to the Defendant of the publication of its official mark and requested the Defendant cease and desist from using it. The Defendant declined to do so and thereafter the Plaintiff commenced its action by Statement of Claim.

[6]                 In an affidavit sworn in support of the Defendant's application for summary judgment, the Vice-president Marketing Services of the government agency notes that in preparing advertising materials for its 2003-2004 sales and marketing campaign the Defendant is not including the tag line at issue, i.e., "You can get there from here", and it does not intend to use that in this marketing campaign.

[7]                 In its application for summary judgment the Plaintiff seeks an injunction against use by the Defendant of the Plaintiff's official mark "You can get there from here", an order for disposition of any and all offending materials containing that mark, and costs. In its Statement of Claim it also sought damages, a remedy which it no longer seeks. In its application for summary judgment the Defendant seeks judgment dismissing the Plaintiff's claim in its entirety and costs of its motion.

The Legislative Framework

[8]                 Under the Trade-marks Act, R.S.C. 1985, c. T-13, as amended (the "Act") relevant provisions are as follows:

[9]                 For the Plaintiff it is urged that since it had used the mark and adopted it prior to the use of the mark by the Defendant, it is entitled under well-established common law principles to exclusive use of the mark. Whatever common law rights the Plaintiff claims were not dealt with in argument and are not here further considered. When the matter was heard, argument related solely to the university's interests as protected under the Act.

[10]            The Plaintiff further submits that even if the Defendant's use of the mark prior to May 29, 2002, the day the publication of notice of its adoption as an official mark by the Plaintiff, does not offend s. 9(1)(n)(ii) of the Act, the Defendant's subsequent use of the mark contravenes sections 9 and 11 of the Act. It is the Plaintiff's view that in the Defendant's business each year a new series of bonds is marketed to the Canadian public. Each new annual series bears a different rate of return, and presumably different identification numbers, which constitute a new product, available only for a limited time. Thus, distribution of its advertising material after May 29, 2002, for use in advertising the bonds issued in 2002-2003, constituted a new use by the Defendant of the Plaintiff's official mark.

[11]            For the Defendant it is urged that its prior use of the mark, before the date of publication of the official mark, gave the Defendant a continuing right to use of the mark for its products. Those products, in the Defendant's view, were essentially similar from year to year with only the rate of interest, apart from identification marks, distinguishing the annual series. In argument both counsel compared the CSBs and CPBs to mortgages which were renewable periodically, though counsel for the Plaintiff urged that each renewal resulted in a new mortgage, while counsel for the Defendant urged that where the only terms of the mortgage changed on renewal concerned interest rates and payments reflecting those, a mortgage was essentially the same product until it is ultimately paid off.

[12]            In my opinion, the mortgage comparison is not particularly helpful. I prefer to consider the circumstances here under the relevant provisions of the Act. As I read s. 3, it seems clear that the Plaintiff is deemed to have adopted the mark in question in 1999, while the Defendant's adoption and use of the same mark dates from 2001. The Defendant's later adoption did not offend s. 9(1)(n)(ii) at least so long as it's use occurred prior to May 29, 2003. That is one matter settled by MacGuigan J.A. for the Court of Appeal in Canadian Olympic Assn. v. Allied Corp. [1990] 1 F.C. 769 at 774-775 (C.A.). He also commented in that case, in obiter, that the publication of an official mark and its registration differ, so that in this case while the Defendant's prior use did not offend s-s. 9(1)(n)(iii) [a provision comparable to 9(1)(a)(ii)], that provided no ground for the Defendant to register the mark after the Plaintiff's application for notice of its adoption as an official mark. Once that notice is published, the user of the official mark trumps all other users in future, but not any who establishes its adoption and use prior to publication of the notice.

[13]            In the course of argument the parties essentially agreed that the issue in this case is whether the Defendant's use of the mark after May 29, 2003, was in relation to the same product sold both before and after that date.

[14]            In my opinion s. 9(1)(n)(ii) precludes adoption by another, after publication of notice of an official mark, in this case, of the Plaintiff university "in connection with a business, as a trade mark or otherwise" of an official mark. Both before and after May 29, 2002, the Defendant carried on the same business, marketing of CSBs and CPBs under the official mark "New Canada Savings Bonds". Both before and after that date the products sold by the Defendant were in essence similar, though for the years in question, the annual series might differ only in interest rates and identification numbers. In my opinion, the Defendant's adoption and use of the mark prior to its publication as an official mark of the Plaintiff was not a violation of s-s. 9(1)(n)(ii) and that publication did not result in, and did not cause, any change in the Defendant's business with which it continued to use the mark for its advertising in 2002-2003.

[15]            Indeed, the position of the Defendant is in some respects comparable to that of the Plaintiff. The latter uses the mark in question in promotion of a variety of courses, which may change annually or more often. Those changes provide no basis for argument that the claim to the official mark by the Plaintiff can only be in relation to those courses offered at the time that notice of the mark was published. That is because, as I see it, the essence of the "business" or activity associated with the Plaintiff's use of its mark is the offering of academic courses by innovative methods.

[16]            I have commented elsewhere that the protection under s. 9 for a prior user of an official mark does not extend to the marketing of a new and different product developed by the user after publication of the mark (see Magnotta Winery Corporation et al. v. Vintners Quality Alliance [2001] FCT 1491). Assuming that is an apt statement of the law, I distinguish the circumstances in this case by determining that annual series of basically similar bonds, differing in interest rates, are not new products within the business of the Defendant.

[17]            Thus, I dismiss the Plaintiff's application for summary judgment, I allow the Defendant's application for summary judgment and I dismiss the Plaintiff's action.

[18]            Both parties asked for costs though they agreed that costs would ordinarily follow the outcome of the of the proceedings. On that principle I award costs to the Defendant, in an amount which I fix at $1,500.00.

[19]            I add this note of gratuitous advice, clearly obiter. Two agencies, each serving the public in different ways and with different programs, should be able to work out arrangements necessary to discuss contemplated uses of a single mark, to which I find each has some entitlement under the Act, particularly where the continuing programs and products of each differ from one another and are intended for consumers or audiences which, on the whole, are likely to be discrete. It may be that, in the long run, the Defendant's continuing use of the mark, among many "tag lines" it uses, is likely to be less important for its overall success than the continuing use of the mark will be to the Plaintiff university.

(Sgd.) "W. Andrew MacKay"

Judge

Vancouver, B.C.

July 25, 2003

                                       FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                   T-185-03

STYLE OF CAUSE: ROYAL ROADS UNIVERSITY v.

HER MAJESTY THE QUEEN

PLACE OF HEARING:                                   Vancouver, BC

DATE OF HEARING:                                     July 21, 2003

REASONS FOR JUDGMENT:                     MacKAY J.

DATED:                                                              July 25, 2003

APPEARANCES:

Ms. Natexa Verbrugge                                                     FOR PLAINTIFF

Mr. Sean Gaudet                                                  FOR DEFENDANT

SOLICITORS OF RECORD:

Verbrugge & Co. Law Corporation                    FOR PLAINTIFF

Victoria, BC

Morris Rosenberg                                                 FOR DEFENDANT

Deputy Attorney General of Canada