Date: 20041222
Docket: T-1230-02
Citation: 2004 FC 1774
Ottawa, Ontario this 22nd day of December 2004
Present: The Honourable Madam Justice Heneghan
BETWEEN:
COLLEGE OF CHIROPODISTS OF ONTARIO
Applicant
and
CANADIAN PODIATRIC MEDICAL ASSOCIATION
Respondent
REASONS FOR ORDER AND ORDER
INTRODUCTION
[1] The College of Chiropodists of Ontario (the "College") seeks judicial review of the decision of the Registrar of Trade-marks (the "Registrar") to publish the mark "PODIATRIST" as an official mark pursuant to the Trade-marks Act, R.S.C. 1985, c. T-13, as amended (the "Act"). The request for publication was made by the Canadian Podiatric Medical Association (the "CPMA"). The College seeks the following relief;
(a) an order quashing or setting aside the Registrar's Decision;
(b) an order declaring that the Registrar's Decision was invalid or unlawful;
(c) an order declaring that the public notice in the Trade-marks Journal dated September 5, 2001 that resulted from the Registrar's Decision was ineffective to give rise to any rights or prohibitions under s. 9 of the Trade-marks Act;
(d) an order directing the Registrar of Trade-marks to publish notice in the Trade-marks Journal of the orders requested in (b) and (c) above;
(e) if necessary, an order under s. 18.1(2) of the Federal Court Act extending the time to make this application to the date of issuance of this notice of application, or such other date as is necessary to permit this application to proceed;
(f) if necessary, an order under Rule 306 or 312 of the Federal Court Rules, 1998 permitting the applicant to serve and file evidence in addition to the material that was before the Registrar of Trade-marks;
(g) its costs of this proceeding; and,
(h) such further and other relief as counsel may request and this Honourable Court permit.
BACKGROUND
[2] On February 5, 2001, the CPMA filed a request that the Registrar give public notice of its use and adoption of the mark "PODIATRIST" as an official mark for services, pursuant to section 9(1)(n)(iii) of the Act. The Registrar issued an Examiner's Report dated March 16, 2001, stating that the CPMA did not appear to be a public authority for the purposes of the Act, on the grounds that it was not subject to a sufficient degree of government control.
[3] The CPMA filed supplementary information to answer that criticism. Subsequently, the Examiner withdrew the objection. On September 5, 2001, the Registrar gave public notice of the adoption and use of the mark "PODIATRIST" as an official mark of the CPMA.
[4] An application for judicial review was filed by the College on July 31, 2002. On August 14, 2002, the CPMA sought directions on the manner of proceeding, stating that the application for judicial review had been filed later than the thirty day period prescribed by section 18.1(2) of the Federal Courts Act, R.S.C. 1985, c. F-7, as amended.
[5] By Direction issued on August 15, 2002, the Court directed the CPMA to file its Notice of Appearance by August 16, 2002. The CPMA did so on August 15, 2002.
PARTIES
[6] The College is the regulatory body in Ontario for chiropodists and podiatrists, as defined in its governing statute, that is the Chiropody Act, 1991, S.O. 1991, c. 20. It is also subject to the Regulated Health Professions Act, 1991, S.O. 1991, c. 18.
[7] The CPMA is a private professional association that was incorporated as a non-profit corporation by Letters Patent in 1924 as "The Canadian Association of Chiropodists". In 1958, its name was changed to "The Canadian Podiatry Association". In 1996, the name was changed to the current name. It is a national organization with members from British Columbia, Alberta, Ontario, Quebec, Nova Scotia and Newfoundland and Labrador. In British Columbia and Alberta, members of the provincial regulatory association are required to be members of the CPMA. Membership is optional for the members of the provincial regulatory associations in Ontario and Quebec. Since there are only podiatrists in both Nova Scotia and Newfoundland and Labrador, respectively, these individuals have been accepted as members of the CPMA.
[8] The CPMA is governed by By-laws. These By-laws are ratified by the membership without any government participation.
THE EVIDENCE
[9] The evidence in this application consists of a certified copy of the Trade-marks Office file relative to the official mark "PODIATRIST", the affidavit of Ms. Carol Shapiro, sworn on September 9, 2002, and the affidavit of Dr. Robert Chelin, sworn on October 24, 2002. The deponents were cross-examined on their respective affidavits in December 2002 and the transcripts of these cross-examinations are included in the application records. As well, the CPMA submitted as new evidence, a certified copy of an official mark for "PODIATRIST" that has been issued to the College subsequent to the publication of the official mark here in issue, and a certified copy of a recently advertised trade-mark application for "PODIATRISTS' SECRET".
[10] The material before the Registrar consisted of the application for a section 9(1)(n)(iii) mark, submitted by counsel in a letter dated February 5, 2001. That letter provides some background about the creation of the CPMA and describes it as the only body representing the interests of podiatric medicine at the national and international levels. It says that its activities are conducted for the benefit of the Canadian public as illustrated by its efforts to impose uniform professional standards across the country. The letter also refers to various committees of the CPMA and notes the authority, in the By-laws, to establish a Government Affairs Committee.
[11] The letter also refers to the consulting activities of the CPMA, including its indirect involvement with the insurance industry in Canada by means of an Insurance Liaison Committee involved with the Canadian Health and Life Insurance Association (the "CHLIA"), and its role as the representative of Canadian podiatrists in negotiations to amend the North American Free Trade Agreement Between the Government of Canada, the Government of Mexico and the Government of the United States, 17 December 1992, Can. T.S. 1994 No. 2, 32 I.L.M. 289 (enacted into force 1 January 1994) ("NAFTA") with the American Podiatric Medical Association and Mexico. The letter also speaks of encouragement from the International Federation of Podiatrists/Fédération Internationale des Podologues (the "FIP") for membership of Canada via the CPMA.
[12] On the basis of these representations, the CPMA presented itself as a public authority and entitled to the "protection available under section 9(1)(n)(iii) of the Act." Attachments to this letter included an extract from the National Occupational Classification (the "NOC") for the occupation of podiatrist in Canada, a copy of an undated letter from Human Resources and Development Canada ("HRDC") concerning interprovincial labour mobility and the Agreement on Internal Trade, and a copy of a letter, dated January 27, 1995 from HRDC to the CPMA inquiring about the availability of podiatrists in Canada in response to a request for employment of an American podiatrist at an Edmonton clinic.
[13] By letter dated March 16, 2001, the Examiner responded and advised that, in her opinion, the CPMA did not qualify as a public authority. Her letter provides, in part, as follows:
The documentation submitted does not establish that the requesting party is a public authority as it does not appear to be subject to a sufficient degree or [sic] government control. In this respect, I draw your attention to the Canadian Olympic Association decision, 67 CPR (2d) 59 at p. 69:
"From the authorities earlier referred to it seems that one of the elements the Courts have examined in determining the public character of a body is the degree of control exercised by the appropriate government."
The only suggestion made in your correspondence with respect to government control is related to the fact that the requesting party is a not-for-profit organization and that there have been consultations between the requesting party and various government bodies. That is not considered sufficient to conclude that the requesting party is a public authority.
[14] Counsel replied by letter dated June 28, 2001 and repeated, in part, some of the submissions made in the application of February 5, 2001, concerning the degree of government control that applied to the CPMA, that is regulation by the government of non-profit organizations in general, and the various consulting activities undertaken by the CPMA with government departments.
[15] Further, the response provided the following detail about the relationship between the CPMA and provincial regulatory bodies, as follows:
Since our February 5, 2001 letter, Canada now is a member of FIP, via the CPMA. In addition, we advise that the CPMA is the only umbrella or coordinating body regarding the podiatric medical profession in a number of provinces, including British Columbia, Alberta and Québec. In each of these provinces, the regulatory (i.e. licensing) body and the professional association are combined in one organization. The Ontario professional association is a member of the CPMA as well. Manitoba and Saskatchewan also have applied for membership in the CPMA. Manitoba is in the process of adopting new legislation dealing with the regulation of podiatric medicine. The regulatory organization (non-profit) in that province will be responsible for licensing and the enforcement of compliance with the legislation. The President of each provincial member organization sits on the CPMA executive as a Vice President.
[16] It was noted that payment of fees to podiatrists by governments "represents a significant degree of government control over the doctors and, hence, the CPMA".
[17] On September 5, 2001, publication of the official mark "PODIATRIST" was made in the Trade-marks Journal.
[18] According to the evidence of Ms. Shapiro, the College regulates the practice of chiropody in Ontario. Up to 1993, the members of the College were entitled to describe themselves either as "chiropodists" or "podiatrists". The designation related to their training. However, since 1993, no members of the College can use the term "podiatrist"; use of that term is limited to those who held that designation prior to 1993.
[19] Ms. Shapiro addressed the role of the College as the regulatory body in Ontario for the profession of chiropody. The "Health Professions Procedural Code" (the "Code"), enacted pursuant to the Regulated Health Professions Act, 1991, supra is incorporated in the Chiropody Act, 1991, supra. According to section 3 of the Code, the objective of the College, together with other colleges named in that provision, is the regulation of the practice of the profession.
[20] Section 1 and Section 2(2) of the Chiropody Act, 1991, supra, define "profession" as the profession of chiropody. Section 3 defines the class of podiatrists. Section 4 outlines the scope of the practice of chiropody. Subsection 5(2) deals with the performance of podiatry. Upon comparison of sections 4 and 5, the scope of podiatry is broader than the practice of chiropody as podiatrists are authorized to communicate a diagnosis and to cut into sub-cutaneous and bony tissues.
[21] According to the Chiropody Act, 1991, supra, the use of the term "podiatrist" to describe a person practising as a podiatrist is limited to those persons who were members of the class of podiatrists as of July 31, 1993. Section 3(1) of that statute identifies the class of podiatrists with the limitation imposed by section 3(2) as follows:
| Podiatrists
3. (1) There shall be a class of members called podiatrists.
Limitation on class
3(2) No person shall be added to the class of members called podiatrists after the 31st day of July, 1993.
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Podiatres
3. (1) Est constituée une catégorie de membres appelés podiatres.
Admission limitée dans la catégorie
3(2) Nul ne peut venir s'ajouter à la catégorie de membres appelés podiatres après le 31 juillet 1993.
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[22] Ms. Shapiro deposed to the steps undertaken by the College to enforce this restriction. From her experience, if she became aware of the use of the term "podiatrist" by unauthorized persons, a "cease and desist" letter would be sent by the College.
[23] She described the CPMA as a national association of podiatrists that exists to promote the interests of its members, without exercising a regulatory function. She acknowledged that promotion and protection of its interests may coincide with promotion of the public interest.
[24] The College creates standards of practice for its members and provides a Code of Ethics. It is governed by a Council comprised of six elected chiropodists, three elected podiatrists, and seven members of the public who are appointed by the Lieutenant-Governor in Council and two appointed academic members. As of September 9, 2002, membership in the College consisted of 317 chiropodists and 88 podiatrists. Between the end of December 2001 and September 2002, the number of podiatrists had declined from 91 to 88.
[25] Ms. Shapiro deposed that she first became aware that the CPMA had filed a trade-mark application for the term "PODIATRIST" sometime in June 2002. On June 27, 2002, she retained counsel to conduct a trade-mark search and was advised on July 2, 2002 that the CPMA had caused a section 9 notice to be published. Following a meeting with the executive of the College on July 12, 2002, she instructed counsel to bring this application for judicial review.
[26] Dr. Chelin is the President of the CPMA and has held that position since 1998. He is qualified as a Doctor of Podiatric Medicine. In his affidavit, he provided some background about the development of the CPMA and its activities. He described the CPMA as an agent for developing public policy across Canada concerning the role of podiatrists. The CPMA has been consulted, on occasion, by Health and Welfare Canada and HRDC, as well as by the insurance industry.
[27] The CPMA has also consulted with parallel organizations in the United States of America and the United Kingdom. In addition, Dr. Chelin is a member of the FIP and he has represented the CPMA at international meetings.
[28] Dr. Chelin acknowledged that the CPMA is independent of the College, which exercises regulatory authority over podiatrists in Ontario. At the same time, in his cross-examination, he said that the CPMA exercised some authority over that profession as follows:
58.
...
A. I would say the answer is sort of no. We do have somewhat statutory authority through our membership.
We have three members that sit on the College Council who are members of CPMA who are members of OPMA, and certainly indirectly we do have - somehow we do have members who sit on the College Council if we are required, who have some sort of control over College activities.
As a matter of fact, the past president of the College of Chiropodists of Ontario was a - I don't know was, or if he still is - was a podiatrist.
59. Q. Does the CPMA hold itself out to have statutory authority to regulate podiatrists in Ontario?
A. No, we don't.
60. Q. Because it has no statutory authority to regulate podiatrists in Ontario.
A. Because no national organization has statutory regulatory authority to regulate their members.
Our regulatory authority happens through our sum of our parts. [sic] all our partners, one way or the other, have regulatory authority in their provincial jurisdictions. As a matter of fact ---
[29] He pointed out that the Registrar of the regulatory body in Alberta is the Treasurer of the CPMA, one vice-president is the president of the regulatory body in Quebec and another vice-president is the Registrar in British Columbia. He claims that the presence of these individuals confers a regulatory aspect to the activities of the CPMA.
[30] In response to a question about the benefits of the CPMA as a result of obtaining an official mark, Dr. Chelin replied that the official mark allows the CPMA to approach governments and jurisdictions where podiatrists are not registered. He said the following:
131. Q. What you believe is that you now can bring a lawsuit to prevent people from doing that, holding themselves out in the way you just described?
A. In jurisdictions where there are no regulations, certainly we feel that we have certainly a chance to go to the governments and basically make them aware of what we have, and what we are, and there are people running around those provinces who are a danger to the public, if we see fit.
132. Q. So, are you saying, then, that you can step in where the government isn't - - -
A. Well, how about advise?
133. Q. - - - controlling those people?
A. How about advise and direct, possibly? I can't say - - we can't stop governments. None of us can stop governments, but certainly we can make our point known.
We'll go on the public record, and if something happens, the public gets harmed, so be it, we told you.
[31] Dr. Chelin does not believe that the College, as the regulatory body in Ontario, is affected by the CPMA holding this official mark. He said the following:
143. Q. Well, all I'm saying, really, is - - and I don't think we disagree - - is that the College is affected by your adoption of the Section 9 mark.
A. I don't believe they are.
144. Q. You don't think it has any effect on the College, whatsoever?
A. I think our members in Ontario can handle themselves more or less, and if they do have a problem, certainly they have a big brother to help them out if there is a situation.
I don't know there will be any situation, or foresee a situation. I understand these two organizations and the two professions are working together to a better end in this province to solve the country's problem.
And - - you know, they're going to solve their own problem. So, I don't think we're stepping in on the College, but let's put it this way, I mean, you just said about overlap - - -
145. Q. Yes.
A. - - - everything has overlap. Government creates overlap. Government creates overlap in health care, in podiatrists, as we speak, so do dermatologists, so do medical doctors, so do nurses.
Overlap is basically checks and balances to keep us all in place.
[32] Dr. Chelin spoke about the role of the CPMA in promoting education for its members. There is an education fund which is funded by an annual assessment of members. The assessment had been $100.00 per annum per member from 1985 until 2000, when it was reduced to $50.00.
[33] He spoke about a "chain of command" in which members of the Executive Board report back to their respective provincial organizations, as follows:
211. Q. It sounds like you're saying that the Exec. Board could just decide to do that without - - -
A. No. I think, well, the Exec. Board certainly takes it back to their Provincial Boards, and the Provincial Boards bring it back to the Exec. Board. Remember, that's how the chain of command works.
The Executive has to take it back. The president of each province sits on the Board of Directors. Each president has to take everything back at a meeting or conference call, whatever takes place, back to his or her Executive at the local level, and then it comes over back to the Executive level at the national.
So, no decisions are made independently without going through the proper chain in command about a typical decision.
212. Q. But, then the decision is by the Exec. Board; correct?
A. After affirmation by the Provincial Boards.
[34] The CPMA provides endorsements for certain products. Dr. Chelin said that the CPMA will give its "seal" of endorsement to products that are, in its opinion, "safe for the public to use".
[35] The CPMA works through committees. The Executive can decide to create a committee. There is no formal mandate for the creation of committees. The committees include an Insurance Liaison Committee and a Brochure Committee.
[36] As well, the CPMA can decide to release a person from membership, without any limits on its discretion in that regard. There is no right of appeal if a member is discharged.
[37] The CPMA replies to requests for information from members of the public. There is no written policy about responding to requests for information.
[38] According to Dr. Chelin, the government of Canada invited the CPMA to participate in "Friendship Protocols" related to negotiations to amend NAFTA. Apparently, this invitation was extended at the suggestion of the American Podiatric Medical Association, the representative of podiatrists in the United States. The CPMA was asked to participate as a resource. However, Dr. Chelin made it clear that the friendship protocols were between national organizations. This was not an issue for the governments of Canada and the United States but an issue for the national organizations.
[39] The CPMA was motivated to look into the matter of obtaining an official mark following the participation of Dr. Chelin at an international meeting in Europe where the matter was under discussion. The decision to apply for the official mark was made at the executive level without consulting with the membership. The CPMA, however, did consult with its American counterpart. The CPMA decided to apply for the official mark as a means of "protecting the rights of podiatrists in Canada".
[40] At the time Dr. Chelin was cross-examined, the CPMA was using the Code of Ethics of its parallel organization, the American Podiatric Medical Association. A Code of Ethics for the CPMA was in the process of being finalized, subject to further submissions to the Council of the CPMA.
[41] The assets of the CPMA, in the event of a winding up, would be distributed among its members, and not the public.
[42] The education function of the CPMA is in the process of being transferred to a separate committee, that is the "Canadian Podiatric Education Fund". The purpose of that step was explained by Dr. Chelin as follows:
332.
...
A. This application has been made to the Government of Canada, the bylaws are being written - - are being worked on here, this has been a year in the making through lawyers, and I know that some parts - - I can't tell the full status of it because I haven't had a report in about two or three months.
But I know that they were - - the intention was to have Federal Government approval from the Federal Government to be able to accredit podiatry schools, podiatry continuing education, create a national boards exam for podiatrists in this country where jurisdictions would like to have a national exam that's Canadian and not American, and to help students with ...
I mean, the funding of the students in terms of loans and all that would then move from CPEF within the CPMA as opposed to the CCPME, so that would be arms-length, they would be separately appointed, and I believe in their bylaws there also is going to be lay people within that organizational structure.
[43] The CPMA encourages its members to use the term "podiatrist". It also purports to "permit" use of the term and to disallow its use. Dr. Chelin explained how the CPMA could deny permission to use the term as follows:
338. Q. Could you deny them permission?
A. I guess technically, according to the mark, we could, but I think certainly - - you know, we, as an organization, we, as a profession.
339. Q. Focusing on the period prior to the publication of the Section 9 Notice, could the CPMA deny permission?
A. Yes.
340. Q. How?
A. We could go to our corporate members, to all the provincial regulatory people, and perhaps we could discuss with them issues as far as the permission of use of the term "podiatrist," and they have the powers to be.
341. Q. Does the CPMA control those corporate members?
A. No. Certainly they take all of our expert opinion and all of our wisdom under advisement.
[44] However, in answer to a subsequent question, he indicated that the CPMA did not have the authority to regulate use of the term in Ontario:
346. Q. My question is: Does the CPMA have the power under its Section 9 rights, assuming they're valid, to prevent people, individuals from using the term "podiatrist" in Ontario?
A. Legislation has prevented anyone from using the term "podiatrist," basically, because of legislation. As far as - - -
347. Q. Which legislation?
A. RHPA.
348. Q. My question is: Does CPMA take the position that under its Section 9 rights, assuming they're valid, it has the power to prevent individuals from using the term "podiatrist" in Ontario?
A. I would say no.
349. Q. Why not?
A. I'd say unless the podiatrists in Ontario advise us otherwise.
At the end of the day, the podiatrists in Ontario have to agree, in Ontario, if anyone else will be able to use the word "podiatrist" until all of us are dead.
[45] In his affidavit, Dr. Chelin addresses the ways in which the CPMA had adopted and used the official mark "PODIATRIST". Attached as Exhibit "T" to his affidavit was a brochure produced by the Ontario Podiatric Medical Association (the "OPMA") in 1996. He said that the Brochure Committee of the CPMA consulted with the OPMA in the production of this brochure. He also said that the CPMA does not control the manner in which the OPMA uses the term "PODIATRIST".
[46] Exhibit "U" to Dr. Chelin's affidavit is a supplement to the National Post, May 25, 2002 page JV1. This article was also produced by the OPMA. According to Dr. Chelin he considers these uses of the term by the OPMA to be "examples" of the way the CPMA used the mark. He also pointed out that the CPMA "practically funded" the publication in Exhibit "T". He acknowledges the use of the mark in Exhibit "U" is use by the OPMA which produced that article.
[47] Later, Dr. Chelin said that the government of Ontario, and not the College, controls the use of the term "podiatrist". The government, not the College, can change the rules concerning the use of the term.
[48] The CPMA, in Dr. Chelin's opinion, exercises a regulatory function through the activities of its corporate members who regulate the profession in their respective provinces. Membership in the CPMA is compulsory in British Columbia and Alberta. Dr. Chelin explained the situation as follows:
422. Q. No, my question is: Is the CPMA listed members publicly available? Is it private, or not?
A. It's available through our web site.
423. Q. I don't think it is on the web site.
A. If you look through the web site and you click on OPMA, you'll get it through the OPMA.
424. Q. And you'll get the OPMA members.
A. But the OPMA members are the members of the CPMA. We're going go in circles on that. Members of the APA are members of the - - - you know, first of all - - -
425. Q. And they're automatically members?
A. In B.C., in Alberta they're automatically members. In Quebec it's not. In Ontario, its's not mandatory.
It's mandatory by law in B.C. and Alberta to be a member of your provincial association.
[49] The membership of the CPMA is available on its website. Dr. Chelin described this as being a public document. In Ontario, membership in the OPMA is not mandatory but all members of the OPMA are members of the CPMA pursuant to a by-law of the OPMA. Membership in the provincial associations in Alberta and British Columbia is mandatory. In response to question 440, he said the following:
440. Q. So, your position is that every podiatrist who is a member of the CPMA - - -
A. - - - is a member of their own provincial association or regulatory - - whatever you want to call it, because different provinces call it something different - - are members of their own provincial organization before they're members of the national organization, except, and the exceptions to the rule are provinces where there is no association, because there isn't enough people for one person to create an association.
ISSUES AND SUBMISSIONS
[50] Five issues arise in this application. They are whether the College has standing to bring this application, whether the application for judicial review is untimely because of delay, whether the Registrar erred in finding that the CPMA is a public authority within the meaning of the Act, and whether the CPMA has adopted and used the mark "PODIATRIST". As well, there is the issue of the applicable standard of review, that is, whether the standard of reasonableness simpliciter applies or the standard of correctness.
[51] The College argues that it has standing because, pursuant to its status as the regulatory body for chiropodists and podiatrists in Ontario, it is "directly affected" by the Registrar's decision to allow the CPMA to publish, as an official mark, the mark "PODIATRIST". In this regard, the College relies on the decision of the Federal Court in FileNET Corp. v. Canada (Registrar of Trade-marks) (2001), 13 C.P.R. (4th) 402 (T.D.).
[52] The College submits that it commenced this application for judicial review within thirty days after becoming aware of the publication of "PODIATRIST" as an official mark. Accordingly, it argues that this application was commenced within the time limit specified in the Federal Courts Act, supra for bringing an application for judicial review. Alternatively, the College argues that the Court has discretion to extend the time and that it meets the test for the positive exercise of discretion in that regard.
[53] The College argues that the CPMA does not meet the criteria of a public authority, and relies, in this regard on the decisions in FileNET, supra and Canadian Jewish Congress v. Chosen People Ministries, Inc. (2002), 19 C.P.R. (4th) 186, (T.D.), aff'd. (2003), 27 C.P.R. (4th) 193 (F.C.A.).
[54] Finally, the College argues that the CPMA has failed to establish adoption and use of the mark "PODIATRIST". The most it has shown is use by the OPMA.
[55] The CPMA takes the position that the College has no standing because use of the title "podiatrist" is being phased out in Ontario. It is not directly affected by the decision of the Registrar. As well, it argues that the College has failed to show that the Court should exercise its discretion to extend the time.
[56] It further submits that once the Registrar had decided that the CPMA was a public authority, he had no residual discretion to refuse publication of the mark. It also argues that the decision as to the status of the CPMA, as a public authority, should be reviewed on the standard of reasonableness simpliciter since there was no substantial new evidence that would have materially affected his decision.
DISCUSSION
[57] This application concerns the decision of the Registrar to publish the mark "PODIATRIST" as an official mark pursuant to section 9(1)(n)(iii) of the Act which provides as follows:
| 9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
...
(n) any badge, crest, emblem or mark
...
(iii) adopted and used by any public authority, in Canada as an official mark for wares or services,
in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;
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9. (1) Nul ne peut adopter à l'égard d'une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit_:
...
n) tout insigne, écusson, marque ou emblème_:
...
(iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services,
à l'égard duquel le registraire, sur la demande de Sa Majesté ou de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi;
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[58] In Techniquip Ltd. v. Canadian Olympic Assn. (1998), 80 C.P.R. (3d) 225 (T.D.), aff'd. (1999), 3 C.P.R. (4th) 298 (F.C.A.), at page 233 of the trial decision the Court described the purpose of section 9 as follows:
In my view, the intent of section 9 is to remove all the kinds of marks as listed above from the field of trade or business. It is to preclude any person from capitalizing on any well-known, respected public symbols and adopting it for his or her own wares or services. These emblems, badges or crests are associated with public institutions, not involved in trade or business, but which nevertheless are deemed to be invested with respectability, credibility and other civic virtues. Section 9, in a sense, ensures that these symbols do not become pawns of trade or proprietorship.
[59] The effect of the giving of public notice under this provision was described by the Federal Court of Appeal in Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario (2002), 19 C.P.R. (4th) 417 (F.C.A.) at page 429 as follows:
An important effect of the giving of public notice under para. 9(1)(n)(iii) is that, from that date, other persons are prevented from using any mark "as a trade-mark or otherwise" that is likely to be mistaken for the official mark (s. 11), except in connection with goods or services with which the mark was used before public notice was given of the official mark: Canadian Olympic Assn. v. Konica Canada Inc., [1992] 1 F.C. 797, 39 C.P.R. (3d) 400, 85 D.L.R. (4th)719 (C.A.) at paras. 21-23. Moreover, the Registrar may not refuse to give public notice of the adoption and use of a mark as an official mark for wares or services on the ground that it is merely descriptive, is not distinctive of the public authority's wares or services, or is liable to be confused with another's mark. Indeed, the Registrar has virtually no discretion to refuse to give notice of the adoption and use of a mark as an official mark, once the body making the request establishes that the statutory criteria have been met: Mihaljevic v. British Columbia (1988), 22 F.T.R. 59, 23 C.P.R. (3d) 80 at 88- 89 (T.D.), affirmed (1990), 34 C.P.R. (3d) 54 (F.C.A.).
[60] The CPMA requested publication of an official mark in its capacity as a public authority. The Examiner initially rejected the CPMA's claim to be a public authority but upon receipt of further submissions, changed her mind. The question now is whether the recognition of the CPMA as a public authority is sound. Since there is new evidence submitted on this application which was not before the Registrar, the applicable standard of review is correctness. In this regard, see Canadian Jewish Congress, supra, at page 192 where the Court said the following:
21. In Molson Breweries, a Partnership v. John Labatt Ltd., [2000] F.C.J. No. 159 (QL) [reported 5 C.P.R. (4th) 180], the Federal Court of Appeal stated that the appropriate standard applicable to the Registrar's decisions where there is new evidence is that of correctness. Molson, supra, establishes that where additional evidence would have materially affected the Registrar's findings of fact or exercise of discretion, the trial judge must come to their own conclusion as to the correctness of the Registrar's decision, at which point a trial de novo is appropriate.
[61] Neither the affidavits of Ms. Shapiro and Dr. Chelin, respectively, nor the transcripts of the cross-examinations were before the Registrar when the mark was published. These affidavits and the transcripts of the cross-examination constitute "new evidence" which, in my opinion, would have materially affected the decision of the Registrar. Accordingly, the standard of correctness should apply.
[62] From my review of the material that is contained in the Trade-marks Office file, the significant difference between the initial and supplementary submissions concerning the status of the CPMA as a public authority is the degree of government control imposed upon it. Initially, the representations related to the fact that the CPMA was created by Letters Patent and had been consulted periodically, by the federal government in matters relating to employment opportunities, the NAFTA amendment negotiations and Health and Welfare Canada.
[63] The supplementary submissions began with reference to the genesis of the CPMA, pursuant to Letters Patent but went on to refer to the composition of the Association as including provincial regulatory bodies and the payment of fees to podiatrists by governments.
[64] According to Dr. Chelin's affidavit, these provincial regulatory bodies are members of the CPMA, that is L'Ordre des podiatres du Québec, the Alberta Podiatric Medical Association and the British Columbia Association of Podiatrists. He deposed that "provincial groups representing the podiatric profession in Manitoba and Saskatchewan have applied for membership in the CPMA". At the time of swearing his affidavit, there were no provincial bodies in Newfoundland and Labrador, New Brunswick, Nova Scotia or Prince Edward Island representing the "interests" of podiatrists.
[65] In his cross-examination, Dr. Chelin suggested that the regulatory functions exercised by some members of the CPMA gave a regulatory function to the CPMA itself. In my opinion, that statement is without foundation. The elements of "government control" that characterize a public authority were discussed in Ontario Assn. of Architects, supra at page 436 as follows:
A comparison with the Architects Act reveals the kinds of government control often included in Ontario legislation creating self-regulatory professional bodies. For example, s. 6 confers powers on the relevant Minister to review the activities of the OAA's Council; to request Council to undertake activities that, in the Minister's opinion, are necessary and desirable for implementing the intent of the Act; and to advise Council on the implementation of the statutory scheme. In addition, the Council's regulation-making power is exercisable with the approval of the Lieutenant Governor in Council: s-s. 7(1). The Lieutenant Governor in Council also has the power to appoint between three and five members of the Council (para. 3(2)(b)); a member of the Complaints Committee (para. 29(1)(b)) and the Discipline Committee (para. 33(1)(b)); and the Complaints Review Councillor (s-s. 31(1)).
[66] Membership in the CPMA is governed by Article III, section 1 of the By-laws. Article III, 1), A provides as follows:
A. Active Membership may be granted to any person who:
(i) is a good moral character,
(ii) is a duly qualified Doctor of Podiatric Medicine, legally licensed to practice Podiatry in a province of Canada in which legislation exists relating to the practice of the profession of Podiatry and the licensing of Podiatrists,
(iii) has submitted application for approval by the Executive Board of the Association, and
a) is a member in good standing of the Podiatry Association of the Province in which he practices, or
b) is a resident of a province of Canada which does not have legislation relating to the practice of the profession of Podiatry and the licensing of a Podiatrist who is a member in good standing of the recognized Podiatry Association of that province; or is duly qualified and legally licensed to practice Podiatry in a state in the United States of America.
c) Active membership can only be attained by means of membership in, application by, and payment of dues by the relevant Provincial Podiatry Association where said applicant is licensed and practices Podiatry unless no such Provincial Association exists.
[67] There is no limit on the discretion of the Executive Board of the CPMA in deciding to suspend or revoke membership. There is no right of judicial review. Dr. Chelin said that the CPMA has "stringent membership" requirements according to paragraph 20 of his affidavit as follows:
20. The CPMA has strict membership requirements. Article III of the CPMA By-Laws states that CPMA members must be members in good standing with their provincial podiatry association, whether or not that province has legislation relating to the practice of podiatry and the licensing of podiatrists. Alternatively, the CPMA member must be duly qualified and legally licensed to practice podiatry in a state of the United States of America.
[68] In my opinion, a requirement of membership in a provincial podiatry "association" that may or may not exercise regulatory authority does not lead to a conclusion that the CPMA is a public authority. In my review of Dr. Chelin's affidavit and the transcript of his cross-examination, the CPMA is more accurately discharging the role of a professional association that promotes or lobbies for the interests of its members, without being subject to any government control.
[69] According to the decision of the Federal Court of Appeal in Ontario Assn. of Architects, supra, the critical defining characteristics of a public authority under the Act are government control and public benefit. At the time the Registrar decided to publish the official mark, a three-part test was considered, as set out in Registrar of Trade Marks v. Canadian Olympic Association, [1983] 1 F.C. 692. That test was discussed in Big Sisters Assn. of Ontario v. Big Brothers of Canada (1997), 75 C.P.R. (3d) 177 at page 215, as follows:
The first is the issue of whether or not the parties to this litigation are "public authorities" for the purposes of section 9 of the Act. In Canada (Registrar of Trade Marks) v. Canadian Olympic Assn., Mr. Justice Urie, speaking for a three-member panel of the Federal Court of Appeal, impliedly adopted the argument that, to be regarded as a public authority, a body must be under a duty to the public, must be subject to a significant degree of governmental control and must be required to dedicate any profit earned for the benefit of the public and not for private benefit....
[70] In Ontario Assn. of Architects, supra the Federal Court of Appeal recast the test in terms of governmental control and public benefit. In my opinion, the evidence does not support the conclusion that the CPMA is a public authority.
[71] There is no evidence that the government of Canada can review or "intervene" in the operations of the CPMA. The assets of the CPMA are not available to the public in the event that it is wound-up pursuant to the applicable legislation. The affairs of the CPMA are not subject to any statutory control or regulation. The findings of the Court in Canadian Jewish Congress, supra at page 199 of the trial decision are apposite here:
CPM is not subject to any similar or analogous government control. CPM's property is not to be disposed of at the direction of the government. The CPM is not funded by the Government of Canada or the United States and is in no way subject to monitoring by the government in any shape or form.
To the contrary, as suggested by the CJC counsel, the Government of Canada cannot intervene in any way with how churches or charitable organizations like CPM conduct their affairs.
[72] I see difficulty, as well, in the Registrar's conclusion that the CPMA had demonstrated adoption and use of the official mark "PODIATRIST". According to the cross-examination of Dr. Chelin, the brochure entitled "What You Should Know About Podiatrists" at Exhibit "T" to his affidavit was produced by the OPMA, but with advice and funding from the CPMA. The article published by the National Post, produced at Exhibit "U" was wholly the work of the OPMA. Use by the OPMA is not adoption and use by the CPMA.
[73] In the result, I conclude that the Registrar erred in recognizing the CPMA as a public authority. It is not such an entity and is not entitled to the protection of the Act.
[74] I turn now to the issues of standing and timeliness.
[75] The issue of standing arises because the College was not a party to the decision of the Registrar. Section 18.1(1) of the Federal Courts Act, supra provides as follows:
| 18.1 (1) An application for judicial review may be made by the Attorney General of Canada or by anyone directly affected by the matter in respect of which relief is sought.
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18.1 (1) Une demande de contrôle judiciaire peut être présentée par le procureur général du Canada ou par quiconque est directement touché par l'objet de la demande.
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[76] The CPMA argues that because use of the term "podiatrist" in Ontario is now restricted to those persons who were a member of the class of podiatrists up to July 31, 1993, then the College, as a regulatory body, is not "anyone directly affected" by the decision of the Registrar here in issue. It also submits that the government of Ontario, not the College, controls the use of the term "podiatrist" and suggests that this element of control further militates against a finding that the College has standing.
[77] I reject this argument. I agree that the government of Ontario ultimately controls the use of the term "podiatrist" but observe that, to the extent that the government of Ontario has enacted the Chiropody Act, 1991, supra, and the Regulated Health Professions Act, 1991, supra it has given authority to the College to regulate the use of the term for the purposes of those statutes.
[78] The College is the regulatory body in Ontario for those professionals identified in the Chiropody Act, 1991, supra. On that basis, it is directly affected by the publication of the official mark "PODIATRIST". The number of persons in the class of podiatrists, pursuant to section 3(2) of that statute may be diminishing, but as of the date of Ms. Shapiro's affidavit, there were still 88 members of that class subject to the regulatory authority of the College. In my opinion, the College has standing to bring this application.
[79] There remains the issue of timeliness. This application for judicial review was filed on July 31, 2002, nearly eleven months after publication of the official mark but within thirty days after the College became aware of that publication, according to the evidence of Ms. Shapiro.
[80] Section 18.1(2) of the Federal Courts Act, supra, assigns a time limit of thirty days for the commencement of an application for judicial review. It provides as follows:
| 18.1(2) An application for judicial review in respect of a decision or an order of a federal board, commission or other tribunal shall be made within 30 days after the time the decision or order was first communicated by the federal board, commission or other tribunal to the office of the Deputy Attorney General of Canada or to the party directly affected by it, or within any further time that a judge of the Federal Court may fix or allow before or after the end of those 30 days.
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(2) Les demandes de contrôle judiciaire sont à présenter dans les trente jours qui suivent la première communication, par l'office fédéral, de sa décision ou de son ordonnance au bureau du sous-procureur général du Canada ou à la partie concernée, ou dans le délai supplémentaire qu'un juge de la Cour fédérale peut, avant ou après l'expiration de ces trente jours, fixer ou accorder.
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[81] When did that thirty day time period begin to run? In Magnotta Winery Corp. v. Vintners Quality Alliance of Canada (2000), 1 C.P.R. (4th) 68 (T.D.) the Court addressed the question of timeliness and whether an extension of time should be granted.
[82] In that case, the Registrar published notice of the mark in the Trade-marks Journal dated May 27, 1998. The applicants learned of this on August 20, 1998 and immediately contacted the respondent to communicate their objection to their receipt of an official mark. Subsequently, the applicants sought direction from the Court as to the proper procedures to be followed in challenging the decision of the Registrar.
[83] At page 78, the Court made the following observations concerning the lack of knowledge by the applicants about the publication of the official mark:
... I would not characterize Magnotta's failure to notice the publication in the Trade-marks Journal of May 27, 1998, as "going to sleep" as counsel for the VQA argues. There was a certain amount of subterfuge involved in the VQA's application for, and obtaining of the publication of adoption and use of ICEWINE as its official mark without notice to Magnotta. Not every person, nor every counsel, continually checks the publications in the Trade-marks Journal, particularly if they have no reason to suspect that it might contain information relevant to them or their clients' situation, which if the VQA is not a public authority, Magnotta's counsel could not be expected to find. The cases state that notice in that journal is public notice to all the world, but surely there has to be some reasonable likelihood that the person to whom the notice is thereby given should expect to find information relevant to their situation in the journal before it can be relied upon as notice to them.
[84] The Court also reviewed the factors to be considered in granting an extension of time, that is an adequate explanation for the delay in commencing the application for judicial review, due diligence in proceeding after becoming aware of the decision, prejudice if barred from proceeding with their challenge to the decision, and a "seriously arguable case".
[85] In the present case, I am not persuaded that I should find that the decision was "first communicated" to the College on July 2, 2002, in view of the reference in Magnotta, supra to the effect that notice in the Trade-marks Journal is public notice to the world. However, in my opinion, this is a proper case for the exercise of discretion, pursuant to section 18.1(2) of the Federal Courts Act, supra, to extend the time for commencing this application for judicial review.
[86] Unlike the factual situation in Apv Canada Inc. et al. v. Minister of National Revenue (2001), 208 F.T.R. 81 (T.D.), where the Court declined to grant an extension of time due to lack of evidence of a continuing intention to pursue a remedy after a delay of eight years, the delay here is of some ten months.
[87] I am satisfied that the College has provided an adequate explanation for its delay in pursuing a remedy. According to Dr. Chelin, there was no consultation by the Executive Council of the CPMA concerning the decision to request an official mark, except with the American Podiatric Medical Association.
[88] The College did not delay in pursuing a remedy. Ms. Shapiro instructed counsel to conduct a trade-mark search and she reported to the College Council upon receiving the results of that search of July 2, 2002. The decision to proceed was made on July 12, 2002 and counsel were instructed to proceed. This application was issued on July 31, 2002. In my opinion, these steps were reasonable and demonstrate "due diligence" in proceeding.
[89] There will be prejudice to the College if the decision is allowed to stand. The College, not the CPMA, regulates podiatrists. That authority undoubtedly applies only to the province of Ontario, not the nation, but it is still significant. Likewise, the fact that the number of podiatrists in Ontario is diminishing does not change the fact that there are still podiatrists practising in Ontario who are subject to the regulatory authority of the Applicant. The College is a person "directly" affected by the grant of an official mark to the CPMA.
[90] Finally, the College has advanced a "seriously arguable case". According to the decision in Ontario Assn. of Architects, supra, at page 64, section 9(1)(n)(iii) should not be given an expansive interpretation in the recognition of a public authority.
[91] In my opinion, the recognition of the CPMA as a public authority on the basis of its activities as described in the evidence submitted, in particular the cross-examination of Dr. Chelin, would amount to an expanded interpretation of the meaning of "public authority". The CPMA is a professional organization, lobbying with various bodies including the federal government, on behalf of its members. It is not a regulatory body. The mere presence on its Executive Council of persons who are employed with provincial regulatory bodies cannot and does not give any regulatory power to the CPMA. The provincial associations are regulated by provincial law and exercise their authority within the boundaries of the provinces.
[92] It is an unrealistic exaggeration to say that those regulatory powers are "somehow" exercised by the CPMA. In my opinion, the Examiner was correct when she initially rejected the application for publication of the mark "PODIATRIST" as an official mark. The further information submitted by the CPMA in the letter of June 28, 2001 added details about the activities of the CPMA but does not raise matters of substance. The CPMA does not meet the criteria of a "public authority" and that is the serious issue raised in the College's application for judicial review.
CONCLUSION
[93] The application for judicial review is allowed with costs to the Applicant.
[94] The decision of the Registrar is quashed and the public notice of the official mark "PODIATRIST" is ineffective to give use to any rights or prohibitions under sections 9 and 11 of the Act.
ORDER
The application for judicial review is allowed with costs to the Applicant.
The decision of the Registrar is quashed and the public notice of the official mark "PODIATRIST" is ineffective to give use to any rights or prohibitions under sections 9 and 11 of the Act.
"E. Heneghan"
J.F.C.
FEDERAL COURT OF CANADA
Name of Counsel and Solicitors of Record
DOCKET: T-1230-02
STYLE OF CAUSE: COLLEGE OF CHIROPODISTS ONTARIO v. CANADIAN PODIATRIC MEDICAL ASSOCIATION
DATE OF HEARING: April 26, 2004
PLACE OF HEARING: Toronto, Ontario.
REASONS FOR ORDER AND
ORDER BY: Heneghan J.
DATED: December 22, 2004
APPEARANCES BY: Mr. Mark L. Robbins
For the Applicant
Ms. Janet M. Fuhrer
For the Respondent
SOLICITORS OF RECORD: Mr. Mark L. Robbins
Bereskin & Parr
Scotia Plaza, 40th Floor
40 King Street West
Toronto, Ontario.
M5H 3Y2.
For the Applicant
Ms. Janet M. Fuhrer
Ridout & Maybee LLP
150 Metcalfe Street
19 th Floor
Ottawa, Ontario.
K2P 1P1.
For the Respondent
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