Date: 20020828
Docket: T-717-02
Neutral citation: 2002 FCT 919
Toronto, Ontario, Wednesday, the 28th day of August, 2002
PRESENT: The Honourable Mr. Justice Blanchard
BETWEEN:
MATTEL, INC.
Applicant
- and -
3894207 CANADA INC.
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an appeal from the Order of Prothonotary Roger Lafrenière dated June 20, 2002,
in which the Prothonotary dismissed a motion on behalf of the Applicant for an order that "the true and correct opponent in this proceeding and before the Registrar is and always has been "Mattel Inc." and this proceeding shall continue with "Mattel, Inc." as the Applicant.
[2] In his order, the Prothonotary stated:
... the Applicant having failed to establish that the relief requested, which is essentially to correct an alleged misnomer of the opponent's name before the Registrar of Trade Marks, is obtainable by way of interlocutory motion;
AND UPONbeing satisfied, at this stage of the proceeding, that there is no need to amend the style of cause, the Applicant not alleging misjoinder;
IT IS ORDERED THAT:
1. The motion is dismissed, without prejudice to "Mattel, Inc." continuing as Applicant in this proceeding.
[3] The Applicant argues that the Prothonotary erred in law in dismissing the Applicant's
motion and in concluding that the relief was not available by way of interlocutory motion.
[4] The Applicant essentially argues that his motion was properly before the Court in that the
main proceeding in which the motion was brought is an appeal under section 56 of the Trade Marks Act, R.S.C. 1985, c. T-13. Subsection 56(5) of the Trade Marks Act, provides that the Federal Court may exercise any discretion vested in the Registrar of Trade Marks.
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
...
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
[5] The Applicant further submits that Regulation 40 of the Canadian Trade Marks
Regulations (1994) SOR/96-195, as amended SOR/99-292, provides that amendments to a statement of opposition may be allowed with leave of the Registrar of Trade Marks and on such terms as the Registrar determines to be appropriate. Consequently, the Applicant argues that if the Registrar could exercise his discretion on an interlocutory basis in the opposition proceeding, similarly, the Federal Court may exercise its discretion on an interlocutory basis in the appeal proceeding.
[6] I do not agree with the Applicant's submission. The relief being sought is in the nature of
a declaration correcting an alleged misnomer of the opponent's name before the Registrar of Trade Marks. I am of the view such a remedy is in the nature of an extraordinary remedy provided for in subsection 18(1) of the Federal Court Act. Subsection 18(3) of the Act provides that such remedies "... may be obtained only on an application for judicial review made under section 18.1".
[7] In the case before me, no such application for judicial review has been commenced which
would allow the Court to consider granting the interlocutory relief sought. The main application is an appeal under section 56 of the Trade Marks Act and not an application for judicial review as contemplated under section 18(1) of the Federal Court Act.
[8] I am also of the view that the extraordinary remedy sought, cannot be properly
characterized as interim relief, the purpose of which is to preserve or restore the status quo. The remedies identified in section 18(1) of the Federal Court Act, contemplate providing the Applicant with a remedy, not interim relief pending a final determination. [See Attorney General of Canada and Solicitor General of Canada v. Robert Gould [1984] 1 F.C. 1133 (F.C.A.)]
[9] Discretionary orders of prothonotaries ought not to be disturbed on appeal unless they are
wrong, in the sense that the exercise of the discretion was based upon a wrong principle or misapprehension of the facts, or they raised questions vital to the final issue of the matter, in which case the reviewing judge ought to exercise his discretion de novo. (Canada v. Aqua Gem Investments Ltd. [1993] 2 F.C. 425).
[10] I have considered the evidence before the Court and I have reviewed the Order of the
Prothonotary and in particular the above cited paragraphs of the Order. On the evidence, I cannot find that this order is clearly wrong. The Prothonotary did not err in the exercise of his discretion based on a wrong principle of law or upon a misapprehension of the facts.
[11] In conclusion, I would have exercised my discretion in the same manner as did the
Prothonotary.
[12] The appeal will therefore be dismissed.
ORDER
THIS COURT ORDERS THAT:
The appeal of the Order of Prothonotary Lafrenière dated June 20, 2002 is dismissed.
"Edmond P. Blanchard"
J.F.C.C.
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
DOCKET: T-717-02
STYLE OF CAUSE: MATTEL, INC.
Applicant
- and -
3894207 CANADA INC.
Respondent
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: MONDAY, AUGUST 26, 2002
REASONS FOR ORDER BY: BLANCHARD J.
DATED: WEDNESDAY, AUGUST 28, 2002
APPEARANCES BY: Mr. Dan Hitchcock
For the Applicant
No appearance
For the Respondent
SOLICITORS OF RECORD: Mr. Dan Hitchcock
1800-2 Bloor Street East
Toronto, Ontario
M4W 3J5
For the Applicant
Ms. Paule Hamelin
Desjardins Ducharme Stein Monast
Barristers & Solicitors
600 De La Gauchetiere West
Suite 2400
Montreal, Quebec
H3B 4L8
For the Respondent
FEDERAL COURT OF CANADA
Date: 20020828
Docket: T-717-02
BETWEEN:
MATTEL, INC.
Applicant
- and -
3894207 CANADA INC.
Respondent
REASONS FOR ORDER
AND ORDER
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