Filenet Corp. v. The QueenL, 2001 FCT 865

Date: 20010807

Docket: T-425-00

Neutral Citation: 2001 FCT 865

BETWEEN:

FileNET Corporation

Applicant

- and -

THE REGISTRAR OF TRADE-MARKS,

HER MAJESTY THE QUEEN IN RIGHT OF CANADA

AS REPRESENTED BY THE MINISTER OF NATIONAL REVENUE

Respondents

                                            REASONS FOR ORDER AND ORDER

BLAIS J.

[1]                 This is an application for judicial review pursuant to section 18.1 of the Federal Court Act, R.S.C. 1985, c. F-7, for a declaration that the decision of the Registrar is unlawful and invalid and an order quashing the decision of the Registrar to accept for publication and to publish on behalf of the respondent, notice of the section 9(1)(n)(iii) official mark for Netfile, File No. 911,345, published in the Canadian Trade-marks Journal dated December 29, 1999, at page 155.

[2]                 FileNet Corp. (the "applicant") also filed an appeal pursuant to section 56(1) of the Trade-marks Act, R.S.C.1985, c. T-13 (the "Act"), of the Registrar of Trade-marks' (the "Registrar") decision to give public notice of the Netfile & Design mark, on the grounds that Her Majesty (the "respondent" or the "Canada Custom and Revenue Agency" or the "Agency") had not adopted and used the mark Netfile & Design in association with its services prior to submitting its request to the Registrar.

[3]                 This appeal will be addressed by another decision rendered August 7, 2001 in File No. T-48-00. The parties have agreed to present their oral and written submissions in both files at the same time but two separate decisions are rendered.

FACTS

[4]                 The applicant is the licensee of Filenet Canada Inc., the owner of the trade-mark FILENET in Canada, which is the subject of Canadian trade-mark registration TMA352,209. FILENET was registered in 1989 for use in association with "computer hardware, software and peripherals; automated office systems for the storage retrieval, handling and processing of business documents".

[5]                 In 1993, the Canada Custom and Revenue Agency (then the Department of National Revenue) instituted nationally a program entitled "EFILE" (in English), which permitted taxpayers to file their tax returns electronically. In 1998, the Agency nationally instituted a similar program entitled "TELEFILE" (in English), which permitted the filing of individual tax returns via the telephone.

[6]                 A third similar program, permitting the filing of individual tax returns via the Internet, was scheduled by the respondent to commence in the 2000 filing season for the 1999 taxation year. The names "Netfile" (in English) and "Impôtnet" (in French) were chosen for this program about the end of May 1999.

[7]                 A search conducted in June 1999 did not reveal any records in the trade-marks registry identical to "Netfile" or "Impôtnet".

[8]                 In June 1999, the Director General of the Communications Branch of the Agency approved the use of the names "Netfile" and "Impôtnet" for the program, and from that time on, those words were used internally to refer to the project.

[9]                 On June 15, 1999, a news release was issued by the Agency to the public. The news release, which appeared both in print and on the respondent's website, discussed Internet filing. At that time, the word "Netfile" appeared in the "Universal Resource Locator" ("URL") for the page of the Canada Customs and Revenue Agency website containing this news release.

[10]            Following internal approval of the use of the words "Netfile" and "Impôtnet" for this project, the Agency contracted with a registered trade-mark agent to do an official search in Canada of the words "Netfile" and "Impôtnet". The purpose was to establish the availability of these words for use as official marks by the Government of Canada and to provide a search report.

[11]            The agent's report, provided to the respondent in July 1999, indicated that the words "Netfile" and "Impôtnet" were available for use and registration in Canada under section 9 of the Act.

[12]            On August 10, 1999, the Agency sought to obtain the domain names "netfile.gc.ca" and "impôtnet.gc.ca" in order to ensure exclusive use of these words as Internet addresses.

[13]            On August 11, 1999, a request was made to the Client Services Directorate of the Information Technology Branch of the Agency, asking that the proposed "Netfile" and "Impôtnet" logos be added to the Agency's existing public website.

[14]            The logos were first visible on the public Agency's website on August 31, 1999. By the next day, the Netfile logo on the Agency's website had been accessed or used ("hit") 196 times.

[15]          On August 30, 1999, the respondent submitted its request to the Registrar that public notice be given of the mark Netfile & Design pursuant to section 9(i)(n)(iii) of the Act.

[16]            The request stated that the Minister of National Revenue ("MNR") had adopted and used the Netfile & Design mark in Canada in association with "filing of tax related information with Revenue Canada or the Canada Customs and Revenue Agency".

[17]            On October 8, 1999, the Trade-mark Office officially accepted the Agency's applications under section 9 of the Act in respect of the logos "Netfile" and "Impôtnet". The applications were thereafter accepted for publication on November 23, 1999. The Registrar gave public notice of the Netfile & Design mark on page 155 of the Trade-marks Journal on December 29, 1999.

ISSUES

[18]            1 -        Should this proceeding be brought as an appeal or a judicial review?

2 -        Is the applicant affected by the notice given under subparagraph 9(1)(n)(iii) of the Act, so as to give the applicant any standing in this proceeding or to render the proceeding effective?

3 -        Is the validity of a notice given under subparagraph 9(1)(n)(iii) dependent upon the adoption or use of the mark in question by the public authority?

4 -        If so:

(a)        At what point in time, in relation to the giving of the notice, must the adoption and use have occurred?

(b)        Had the Agency adopted and used the "Netfile" mark by that point in time?

ANALYSIS

1-        Should this proceeding be brought as an appeal or a judicial review?

[19]            This issue was not raised explicitly by the parties. However, the applicant brought two applications, an appeal under the Act and a judicial review application of the Registrar's decision. It appears from the jurisprudence that the proper way for the applicant to bring the present proceeding was by way of judicial review.

[20]            In Maple Leaf Meats Inc. v. Consorzio Del Prosciutto Di Parma (2000), 9 C.P.R. (4th) 485 (F.C.T.D.), O'Keefe J. reviewed the jurisprudence on this issue and stated:

[...] The appellant was not a party to the proceedings before the Registrar. The question now becomes - Does the appellant have a right to appeal the Registrar's decision to publish the mark pursuant to subparagraph 9(1)(n)(iii) of the Act via an appeal under section 56 of the Act?

One of the major difficulties facing the appellant is that it was not a party to the proceedings before the Registrar. This case is not about an appeal pursuant to section 56 by an applicant who was refused publication under subparagraph 9(1)(n)(iii), but is an appeal by a third party purportedly affected by the publication.

This Court has discussed the mechanisms of a review or appeal of the decision of the Registrar made pursuant to subparagraph 9(1)(n)(iii) in a number of decisions. In Canadian Olympic Association v. USA Hockey Inc. (1999) 3 C.P.R. (4th) 259 (F.C.A.) at page 260, Desjardins J.A. stated:

Whether the appropriate procedure for the appellant was an appeal or an application for judicial review need not be decided. We are satisfied that the bringing of an action to challenge the implicit decision of the Registrar that the Respondents USA BASKETBALL and USA HOCKEY INC. were "public authorit[ies]" for the purposes of subparagraph 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13, was not the correct procedure.

And in Magnotta Winery Corp. v. Vintners Quality Alliance of Canada (1999) 1 C.P.R. (4th) 68 (F.C.T.D.) Reed J. stated at pages 75 and 76:

Counsel for the VQA responded that: (1) Magnotta could not proceed under section 57 to have the official mark expunged from the Register because it is not a mark that is on the Register; (2) Magnotta had no right to appeal the Registrar's decision under section 56 of the Trade-marks Act because it was not a party to the Registrar's decision, and in any event it was out of time to launch such an appeal; (3) Magnotta could not proceed for judicial review under section 18 of the Federal Court Act, R.S.C. 1985, c. F-7 because it did not have a legal interest in the decision at the time the decision was made, and it was in any event out of time for filing such an application.

It is not as clear whether an appeal by the applicants might lie under section 56 of the Trade-marks Act. Subsection 56(1) states:

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.

In Canadian Olympic Assn. V. USA Hockey Inc. (1997), 74 C.P.R. (3d) 348 (F.C.T.D.) At p. 350, Associate Chief Justice Jerome stated that there was no provision allowing for the revocation of an official mark, nor for rescinding a Registrar's decision to give public notice of the adoption and use of an official mark. He continued however, "any remedy which the plaintiff might have had with respect to the Registrar's decision, assuming it had standing, was to launch an appeal". A similar statement is found in Canadian Olympic Assn. V. USA Basketball, [1997] F.C.J. No. 825 (QL) (June 13, 1997) para. 7 [summarized 72 A.C.W.S. (3d) 345]. At the same time, in the text previously referred to, Hughes on Trade-marks, at pp. 453-7, note 27, it is noted that these statements are believed to be in error since there is no proceeding concerning a paragraph 9(1)(n) notice that a person other than the applicant for that notice could appeal.

And at page 79:

I return then to the question whether a judicial review application is in any event the appropriate procedure. It is my understanding that other applicants have commenced actions by appeal under section 56 (e.g. T-2127-98). As noted above, it is not clear whether this is the correct procedure. Certainly, a judicial review application is well suited to a situation in which no notice has been given to an interested party and I note that courts have implied such requirements into legislative procedures when they have not been statutorily required. Counsel for the applicants if of the view that a section 18.1 judicial review application is the more legally correct way to proceed. I have no doubt that what is correct will not be decided by this Court. It will be for the Court of Appeal to decide. There may, therefore, be merit in having applications instituted pursuant to both routes proceeding simultaneously. Insofar as the need for a legal interest to commence a judicial review application is concerned, I am not persuaded that only those who have participated in the proceeding leading to the decision that it is sought to be reviewed have such an interest. This is so at least in the situation in which the interested person has not been given notice of, nor an opportunity to participate in, that process.

The final decision which deals with the appeal or review of the decisions of the Registrar made under subparagraph 9(1)(n)(iii) is Ontario Association of Architects v. Association of Architectural Technologists of Ontario, [2000] F.C.J. No. 1743, (October 26, 2000), Docket No. T-1157-99 (F.C.T.D.) (the "Architects' case"). In that case, the applicants sought an order reversing a decision of the Registrar of Trade-marks whereby the Registrar gave public notice pursuant to subparagraph 9(1)(n)(iii) of the Act of the use and adoption by the respondent, Association of Architectural Technologists of Ontario, of certain official marks. As is obvious from the decision of McKeown J. the application, although stated at the hearing to be under section 56 of the Act, made no specific reference to section 56 in the application itself. In the end, McKeown J. ruled that the matter was before him by way of judicial review. He stated at pages 5 - 6 of the decision:

The Applicant brought this matter before the Court by way of an application. The Applicant stated in its submissions that the application was brought by way of an appeal under section 56 of the Trade-marks Act and Rule 300 of the Federal Court Rules which requires that an appeal under section 56 be brought by way of an application. However, the application itself makes no reference to an appeal under section 56.

The application seeks "an order reversing the decision of the Registrar of Trade-marks ... to give public notice of the adoption and use by the Respondent" of the official marks and further, "that the publication of the official marks ... in the Trade-marks Journal dated April 28, 1999 was void ab initio and has no force or effect."

The Applicant was not a party to the matter before the Registrar and in my view has no standing to proceed by way of appeal. However, the Applicant certainly has an interest in these official marks. Indeed, the Applicant has an interest in the Registrar's decision because section 11 of the Trade-marks Act prohibits any person from using, as a trade-mark or otherwise, any official mark. As such, where no other avenue of appeal is available, judicial review will be available. In my view, the matter is properly before me as an application for judicial review pursuant to section 18.1 of the Federal Court Act.

Although the right of appeal granted by subsection 56(1) of the Act is not limited to any person, this does not mean that any person can file a notice of appeal. As Pinard J. of this Court stated in Les Restaurants Pacini Inc. (successor in title to Groupe Resto Inc.) v. Pachino's Pizza Limited, [1994] F.C.J. No. 1607, (October 28, 1994), Docket No. T-3149-92 (F.C.T.D.) at page 4:

In my view, although the statutory appeal provided for by s. 56(1) is not expressly reserved to anyone in particular, that does not mean that any person may exercise this exceptional right. The following comments by the Supreme Court of Canada on the exceptional nature of the right of appeal are worth recalling:

We think that an appeal, which is unknown to the common law, must be given by statute in such clear and explicit language that the right to appeal cannot be doubted.

...

The right of appeal is an exceptional right. That all the substantive and procedural provisions relating to it must be regarded as exhaustive and exclusive, need not be expressly stated in the statute. That necessarily flows from the exceptional nature of the right.

I agree with the finding of McKeown J. in the Architects', supra case where he found that the appellant did not have standing to pursue an appeal under subsection 56(1) of the Act as he was not a party to the matter before the Registrar. I would therefore hold that the appellant in this case does not have the standing to pursue an appeal, under subsection 56(1) of the Act, of the Registrar of Trade-marks' decision to publish the official mark of the respondent pursuant to subparagraph 9(1)(n)(iii) of the Act.

[21]            The above decision of O'Keefe J. was appealed but the appeal has not been heard yet.

[22]            In light of the above decision, the relevant application in the case at bar is the application for judicial review filed by the applicant.

2. Is the applicant affected by the notice given under subparagraph 9(1)(n)(iii) of the Act, so as to give the applicant any standing in this proceeding or to render the proceeding effective?

[23]            Subparagraph 9(1)(n)(iii) of the Act provides:

[24]            The respondent submits that Parliament's intent for the use of this provision was to ensure that a public authority using an official mark could rely on the provision to prevent others from adopting the mark.

[25]            The respondent explains that while the provision will operate to prohibit the subsequent adoption of the official mark by another party, it cannot affect that party's rights in respect of pre-existing use of the mark. The respondent relies on the decision of the Federal Court of Appeal in Assoc. Olympique Canadienne c. Allied Corp., [1990] 1 F.C. 769 (F.C.A.) where it was held:

Section 9 of the Act as a whole deals with adoption, and the prohibition against adoption is in the future tense ("No person shall adopt"). Subparagraph 9(1)(n)(iii) therefore forbids the adoption of a trade mark "so nearly resembling as to be likely to be mistaken for" a mark adopted by a public authority in respect of which the Registrar "has ... given" (past tense) public notice. Consequently, it does not retroactively prohibit the adoption of marks. It is only prospective in operation.

I do not see that this interpretation is affected by section 11, since that provision forbids only use of a mark adopted contrary to section 9. A mark adopted before the giving of public notice would not be adopted contrary to section 9.

Section 12 of the Act, dealing with registration, speaks in the present tense ("a mark of which the adoption is prohibited by section 9"). It therefore renders unregistrable a not yet registered mark the adoption of which would now run afoul of section 9, even if that mark has been adopted and used prior to the giving of public notice under section 9.

In sum, the formulas of the adoption and registration provisions are not parallel. Whatever rights to the use of a mark may flow from its adoption are undisturbed by the subsequent adoption and use of a confusingly similar official mark; the right to register the mark is, however, prohibited from the time of the giving of the public notice.

[26]            R.T. Hughes & T.B. Ashton, in Hughes on Trade Marks (Toronto: Butterworths, 1984) ("Hughes on Trade Marks") at paragraph 29, explain:

The prohibition applies only to uses adopted after notice was given of the adoption of the mark by the public authority. Parties having prior use, or claiming under those having prior use, may continue to use, but only with those wares and not others. A date of adoption cannot be proven by simple reliance on the date of publication of the notice in the Trade-marks Journal. Where challenged, a party alleging a date of adoption must prove it by cogent evidence.

[...]

In the case of a section 9(1)(n), however, the prohibition is against marks adopted by a public authority and therefore, there is no retroactive prohibition against such public authority marks, except that it prohibits registration of marks even if previously used but not yet registered. A right to use may thus continue but the right to register is prohibited.

[27]            Thus, according to the respondent, subparagraph 9(1)(n)(iii) would normally be used only if the Agency attempted to prevent subsequent adoption of a mark closely resembling the logo "Netfile". In such a case, the validity of the notice might be challenged by the party against which the Agency was proceeding.

[28]            Absent such circumstances, it is submitted by the respondent that such a challenge is unnecessary and of no practical effect. It might be argued that a prudent business entity, prior to adopting a particular mark, could be permitted to pursue a proceeding to seek the invalidation of an existing official mark. Even if the Court was to accept that as a possibility, according to the respondent, the applicant here has provided no evidence of an intention to "adopt" or register any mark; rather, the evidence simply shows an intention to continue to use a mark previously adopted and registered.

[29]            In addition, the respondent maintains that the applicant has presented no evidence or argument that its mark so nearly resembles the official mark as to be likely to be mistaken for it.

[30]            Although the respondent did not raise the issue of standing under section 18.1 of the Federal Court Act, the respondent stated that it is trite law that only an affected party may initiate a proceeding. The respondent's submissions are relevant to the question whether the applicant is directly affected by the matter in respect of which it seeks relief pursuant to section 18.1 of the Federal Court Act, which provides:

[31]            In Magnotta Winery Corp. v. Vintners Quality Alliance of Canada (1999), 1 C.P.R. (4th) 68 (F.C.T.D.), the applicant sought to have reviewed the decision of the Registrar of Trade-marks to accept the work ICEWINE as an official mark used by the respondent. Reed J. held:

There is no doubt that the applicants have an interest in the Registrar's decision and are prejudiced thereby. Five of the Magnotta companies manufacture and sell icewine. A sixth intends to do so in the future. A seventh manufactures a distilled alcohol product, Icegrappa, made from icewine grapes. The applicant, Magnotta Winery Corporation, controls the other applicants and is in turn controlled by Magnotta Family Holdings, a private corporation controlled by Mr. Magnotta and his wife. The Magnotta Winery Corporation, since its beginning, has been and continues to be a member of the VQA. The applicant will be referred to collectively as Magnotta.

There are provisions that allow for existing uses of an official mark to continue despite the adoption of such by a public authority. Nevertheless the applicants' ability to sell their icewine through the L.C.B.O. is affected by the Registrar's decision, as is the group's ability to expand. The applicants assert that Magnotta was the market leader in Canada in the production and sale of icewine at the time of the application for the official mark and they allege that the subtext of the application by the VQA to "register" the name ICEWINE, as its official mark, is the desire of Magnotta's competitor (Inniskilin) to regain the market share it previously held (Inniskilin is owned by Vincor International Inc. which allegedly, together with Andres Wines, dominates the VQA).

[...]

[...] Insofar as the need for a legal interest to commence a judicial review application is concerned, I am not persuaded that only those who have participated in the proceeding leading to the decision that it sought to be reviewed have such an interest. This is so at least in the situation in which the interested person has not been given notice of, nor an opportunity to participate in, that process.

[32]            I cannot agree with the respondent that the applicant is not affected by the adoption of the official mark only because the official mark cannot affect the applicant's rights in respect of pre-existing use of the mark. Although a mark that has been used before the adoption of the official mark can continue to be used after the adoption of the official mark, as was stated in Hughes on Trade-marks, "Parties having prior use, or claiming under those having prior use, may continue to use, but only with those wares and not others". Therefore, the applicant's ability to expand can be stoped by the adoption of the official mark. Furthermore, if the official mark is confusing with the applicant's mark it does affect the applicant.

[33]            The applicant submitted that to allow a public notice to remain where it is not valid is contrary to public interest as it may serve to weaken the distinctiveness of the applicant's trade-mark registration, or in alternative situation, it may prevent the adoption and use of marks that would otherwise be available, but for the record of the official mark that is invalid.

[34]            I am of the opinion that the applicant has shown that it is directly affected by the adoption of the official mark by the respondent and that it has standing to bring this judicial review application.

[35]            The respondent submitted that in any event, even if this Court was to order that the notice be declared void on the grounds argued by the applicant, there is nothing to prevent the respondent from making a new request to the Registrar to give public notice again. As the Agency has now unquestionably adopted and used the mark, the Agency's capability to utilize subparagraph 9(1)(n)(iii) would be in no way prejudiced.

[36]            I cannot agree with the respondent that because, it would be entitled to make a new request to the Registrar, the present issue is moot.

[37]            As was stated in Unitel International Inc. v. Canada (Registrar of Trade-marks), (2000), 260 N.R. 95 (F.C.A.) by the Federal Court of Appeal:

Here, the trade-mark in question is "UNITEL" and the appellant concedes there is confusion between its trade-mark and that of Canadian Pacific Telecommunications Inc. (CP). The application by CP to register its trade-mark preceded the appellant's application and was, therefore, pending when the appellant's application was filed. In the circumstances, the Registrar was obliged to refuse the appellant's trade-mark application under paragraph 37(1)(c).

The Court has been advised that in opposition proceedings in respect of the CP application, the Registrar refused registration of CP's UNITEL trade-mark. The appellant will not be prejudiced by reason of its original application having been refused. The registrability of CP's UNITEL trade-mark has been adjudicated and the appellant was successful in those proceedings. The appellant may now re-file its UNITEL application.

In their reasons, the Registrar and the Trial Judge referred to the alleged dates of first use in the two applications. We would observe that the dates of first use are not a relevant consideration under paragraph 37(1)(c). The only issue is whether there is confusion between an applicant's trade-mark and a trade-mark for which an application for registration is already pending.

The appellant seems to be concerned that the procedure under paragraph 37(1)(c) leads to delay and a multiplicity of proceedings. If this is so, the remedy lies with Parliament and not the Court.

[Emphasis added]

[38]            In my view the issue is not moot and the applicant has standing to bring this issue to Court.

3- Is the validity of a notice given under subparagraph 9(1)(n)(iii) dependent upon the adoption or use of the mark in question by the public authority?

[39]            It seems that it is not clear whether a mark can be declared invalid or revoked. In Hughes on Trade-marks it was stated:

It is doubtful that a section 9 mark can be revoked by an action in the courts, since there is nothing in the Act providing for revocation of such mark.

[40]            A. D. Morrow in G.F. Henderson, Trade-marks Law of Canada (Toronto: Carswell, 1993), states at page 388:

There is no provision in the Act for expunging, cancelling or otherwise annulling the effect of the publication of an official mark under subparagraph 9(1)(n)(iii), or any other publication which may be a condition precedent to the application of other paragraphs of the section. It has been said that section 9 "registrations" are practically invulnerable. In practice, the Registrar of Trade-marks is prepared to publish notices of retraction of section 9 official marks, but it is not known whether this practice has any legal significance.

[41]            A. D. Morrow continues and explains:

It is probably incorrect to speak of the "validity" or "invalidity" of a section 9 official mark publication. Publication is simply one element of protectability. If, in requesting publication, a public authority had misrepresented any of the conditions precedent, such as that it is a public authority, or its adoption or use of the official mark for wares or services, the publication would be without legal effect. It is submitted that the court must have the power to make a declaration that, because of the failure of the alleged public authority to comply with the requirement of paragraph 9(1)(n)(iii), the publication has no effect to prohibit subsequent adoption, use or registration of similar marks. In that sense, the courts must have the power to control the legal effect of official marks. While there is no provision for, and no need for, "cancellation" of a publication, there should be some mechanism whereby a judgment declaring the publication to be without legal effect would be indexed and therefore discoverable by a searcher at the Trade-marks Office.

[42]            In Canada Post Corp. v. Post Office, [2001] 2 F.C. 63 (F.C.T.D.), Tremblay-Lamer J. declared ineffective a public notice of an official mark because the respondent had not adopted and used the mark in Canada:

The appeal is granted. The Registrar erred in accepting that the respondent has adopted and used the mark in Canada. The public notice of the official mark "Mailsort" is ineffective to give rise to any rights or prohibitions under sections 9 and 11 of the Act.

[43]            In Hearst Communications v. The Agora Cosmopolitan National New Magazine, Inc. (May 2, 2000), File No. T-1845-99 (F.C.T.D.), a motion for default judgment was brought and the Court declared that an official mark was invalid and unenforceable, and a notice to that effect appeared in the Trade-marks Journal.

[44]            I believe that if the Registrar has been mislead on issues such as adoption and use, the official mark is "invalid" in the sense that it can be declared ineffective to give rise to any rights or prohibitions under sections 9 and 11 of the Act as was ordered in Canada Post Corp. supra. I do not believe that it would only be unenforceable by a public authority. I would therefore answer yes to the question.

[45]            In Techniquip Ltd. v. Canadian Olympic Association (1998), 80 C.P.R. (3d) 225 (F.C.T.D.), section 9 of the Act was interpreted as "imposing on a public authority the burden of providing evidence of adoption and use whenever a case of conflict occurs."

4- If so:

(a)       At what point in time, in relation to the giving of the notice, must the adoption and use have occurred?

[46]            In Ontario Association of Architects v. Association of Architectural Technologists of Ontario, [2001] 1 F.C. 577, (F.C.T.D.), McKeown J. held:

Finally, I must determine whether the Respondent adopted and used its marks as required under s. 9 of the Trade-marks Act. An official mark takes precedence over any provision in any Act. It is important to note the difference between a trade-mark and an official mark. An official mark is not defined under the Act. It is not a trade-mark and there is no deemed adoption or deemed use as under the trade-mark sections of the Trade-marks Act. Official marks must be actual marks and cannot be proposed marks. Accordingly, on requesting that the Registrar give public notice of the adoption and use of an official mark in association with wares or services, the applicant must actually have adopted and used the official mark in association with wares or services.

[47]            In Big Sisters Association of Ontario v. Big Brothers of Canada (1997), 75 C.P.R. (3d) 177 (F.C.T.D.), appeal dismissed by the Federal Court of Appeal, (1999), 86 C.P.R. (3d) 504, Gibson J. held:

The remaining question on the issue of enforceability relates to whether or not BSAO adopted and used the mark BIG SISTERS OF CANADA before the Registrar of Trade-marks gave public notice of its adoption and use in accordance with paragraph 9(1)(n) of the Act. As indicated earlier in these reasons, in Canadian Olympic Assn. v. Donkirk International, Inc., [39] Mr. Justice Teitelbaum wrote [at p. 307]:

On the basis of the submissions made, counsel for both plaintiff and defendant agree that in order for a mark to receive the protection of section 9, the mark had to be adopted and used in Canada before the registrar gave public notice of the mark's adoption and use.

On the facts of the matter before him, Mr. Justice Teitelbaum found that the marks in issue were adopted and used before the publication of adoption and use. Impliedly, he appears to have accepted the submissions of counsel on this question. I can reach no other conclusion on the plain wording of paragraph 9(1) (n) of the Act that adoption and use as an official mark for wares and services prior to publication by the Registrar of public notice of adoption and use is a condition precedent to enforceability. The mere publication of notice of adoption and use is not, I conclude, conclusive before this Court of such adoption and use. Further, I conclude, the onus was on the Plaintiffs to establish such adoption and use in a trade-mark sense. The evidence before me fails to discharge that onus. In the result, I conclude that the mark Big Brothers and Sisters of Canada is unenforceable as against the Defendant.

[48]            Therefore, the respondent has to show that it adopted and used the official mark in Canada before the Registrar gave public notice of the mark's adoption and use on December 29, 1999.

(b)       Had the Agency adopted and used the "Netfile" mark by that point in time?

[49]            The applicant submits that the respondent had not adopted and used the mark Netfile & Design prior to December 29, 1999. The applicant asserts that the respondent had not adopted or used Netfile & Design as an official mark until at least February 2000 since it did not receive the first tax return until the necessary system was up and running on February 7, 2000.

[50]            The tax forms that were used in association with the Netfile & Design mark were not issued until January, 2000. In fact, the Netfile & Design mark first appeared on the government website on August 31, 1999 which was after the date the request was made. As noted above, the associated services were not available however, until the year 2000.

[51]            The respondent alleges that the mark was adopted and used prior to December 29, 1999, notwithstanding that the service to which the mark refers (the acceptance of 1999 tax returns filed via the Internet) could obviously not be made available before 2000; the mark was used both internally and publicly in relation to the services before then.

[52]            The evidence shows that the name Netfile was chosen for the filing of individual tax returns via the Internet program at the end of May 1999.

[53]            A search was conducted in June 1999, and the Director General of the Communication Branch of the Agency approved the name for the program in June 1999. From that time on, those words were used internally to refer to the project.

[54]            A news release was issued by the Agency to the public on June 15, 1999. The word Netfile appeared in the "Universal Resource Locator" (URL) for the page of the Agency's website containing the news release.

[55]            The Netfile logo was first visible on the Agency's website on August 31, 1999. By the next day, the Netfile logo on the Agency's website had been accessed or used ("hit") 196 times.

[56]            On September 2, 1999, the Government Technology Information Service informed the Agency that the subdomain "netfile.gc.ca" was approved for use as per the Agency's applications.

[57]            As of October 9, 1999, 3957 hits had been made to the Netfile logo on the Agency's site.

[58]            The Act defines the term adopt as follows at section 3:

[59]            Use is defined as follows in the Act:

[60]            Section 4 of the Act indicates:

[61]            Although these sections pertain to trade-marks and not official marks, it can assist in the interpretation of the terms "adopt" and "use" by a public authority in subparagraph 9(1)(n)(iii) of the Act.

[62]            A.D. Morrow, in Trade-marks Law of Canada, stated, at page 383, on the issue of adoption and use of an official mark:

The meaning of the word "adopt" has been discussed above. It should be noted that section 3, which states when a trade-mark is deemed to have been adopted, does not apply to official marks, except perhaps by analogy. Consequently, we may consider the general meaning of the word "adopt" as referred to above. However, to be protected, an official mark must not only be adopted, it must also be used. Section 4 of the Act assists in determining what is use in relation to a trade-mark, but it is not exhaustive, and in any event has no necessary application to official marks. In ordinary speech, the term "use" is very broad, being equated to "employ" or "avail oneself of". It is difficult to understand how a mark may be used without being adopted. Possibly use that is transient with no pretence at exclusivity is not adoption. In any event, the ambit of these words remains to be explored in the jurisprudence. On the face of it, they seem very broad, and it is arguable that whenever a public authority "employs" a mark, this will meet the requirement of adoption and use for the purposes of this section.

[63]            I believe that the question to be decided here is whether an official mark can be considered adopted and used before public notice of its adoption and use is given by the Registrar, if it is advertised in relation to services, even if the service can only be provided after public notice of the adoption and use is given by the Registrar.

[64]            In my opinion, the mark Netfile was adopted and used as an official mark before the public notice of the adoption and use was given by the Registrar on December 29, 1999.

[65]            I believe that the fact, that the mark was advertised and accessed on the respondent's website prior to the public notice being given is sufficient to establish that the mark was adopted and used by the respondent. I do not believe that the official mark could only be considered adopted and used if the tax forms were effectively issued.

[66]            An analogy can be drawn with official marks adopted for Olympic games. The official marks are considered adopted and used before the games actually take place. The fact that the games are only being held four years, and sometimes later, after the official mark is used in advertisement and made known to the public, does not have for consequence that the official mark cannot be adopted and used prior to the games being held. If such an approach was accepted, official marks for Olympic games would only be able to be considered adopted and used when the games actually begin.

[67]            In the case at bar, the respondent was not proposing use of the official mark, it was using it in connection with the services when it advertised it and made it known to the public.

[68]            Consequently, this judicial review is dismissed with costs in favour of the respondent.

Pierre Blais                                          

Judge

OTTAWA, ONTARIO

August 7, 2001