Date: 20100630
Docket: T-1203-08; T-1204-08; T-1205-08
Citation: 2010 FC 719
Ottawa, Ontario, June 30,
2010
PRESENT:
The Honourable Mr. Justice de Montigny
BETWEEN:
THE MINISTRY OF COMMERCE AND
INDUSTRY
OF THE REPUBLIC OF CYPRUS
Applicant
and
LES PRODUCTEURS LAITIERS DU CANADA,
AGROPUR COOPÉRATIVE AGRO-ALIMENTAIRE
AND
INTERNATIONAL CHEESE COUNCIL OF CANADA
Respondents
REASONS FOR ORDER AND ORDER
[1]
These
are three different appeals by the Applicant, The Ministry of Commerce and
Industry of the Republic of Cyprus, under section 56 of the Trade-Marks
Act (R.S.C. 1985, c. T-13; the “Act”) from three decisions by the
Registrar of Trade-Marks (the “Registrar”) dated April 29, 2008. The
decisions allowed the oppositions of the respondents les Producteurs Laitiers
du Canada (“Producteurs Laitiers”), Agropur Coopérative Agro-Alimentaire (“Agropur”)
and the International Cheese Council of Canada (“Cheese Council”) by dismissing
the Applicant’s application for registration of the certification mark of
HALLOUMI cheese (application No. 795,511, the “Mark”). On September 4, 2008, the
respondent Agropur withdrew from these proceedings.
[2]
In
accordance with a decision by Prothonotary Richard Morneau dated August 24,
2009, these three cases were heard together. Accordingly, a copy of these
reasons will be placed in each of dockets T-1203-08, T-1204-08 and T-1205-08.
I. Facts
[3]
On
or about October 23, 1995, the Applicant filed an application to register the
Mark in association with cheese on the basis of an allegation that the Mark had
been used in Canada since
October 19, 1995. This application for registration was published in
the Trade-marks Journal on November 28, 2001.
[4]
Since
a certification mark was involved, the standard for which the use of the Mark was
intended was described as follows in the Trade-marks Journal:
The use of the certification mark is
intended to indicate that the specific wares listed above in association with
which it is used are of the following defined standard: the defined standard
prescribes that the cheese is produced only in Cyprus using the historic method
unique to that country, namely: traditionally, it has been produced from sheep’s
and/or goat’s milk. In case of mixtures, cow’s milk is also allowed. Raw materials
which are used for its production include rennin, mint leaves and salt. See
file for information about quality characteristics, chemical characteristics
and maturation.
[5]
Following
the publication of the Mark, a number of oppositions were filed. On March 8, 2002,
Les Producteurs Laitiers and Agropur filed statements containing four grounds
of opposition, which the Registrar forwarded to the Applicant on May 21, 2002. Then,
on April 4, 2002, the Cheese Council filed a statement of opposition
containing five grounds, which the Registrar forwarded to the Applicant on
April 30, 2002. Since that statement essentially incorporates the other two
respondents’ grounds, it is helpful to reproduce it here:
1. Pursuant
to Section 38(2)(a) of the Act . . . the Application does not comply
with the provisions of Section 30 of the Act, and specifically:
(a) The
Application does not comply with Section 30(a), because no licensee of the
Applicant has used HALLOUMI as a certification mark in Canada since the date set
out in the Application, namely October 19, 1995, or, if HALLOUMI was used as a
certification mark, such use has ceased;
(b) The
Application does not comply with Section 30(f) of the Act, because the
Application does not set out particulars of the defined standard that the use
of the certification mark HALLOUMI is intended to indicate;
(c) The Application does not
comply with Section 30(f) of the Act, because the Applicant cannot state that
it is not engaged in the manufacture or sale of the wares in association with
which the certification mark is used in Canada;
2. Pursuant
to Sections 38(2)(b) and 12(1)(b) of the Act, HALLOUMI is not a registrable
trade mark, because it is clearly descriptive of the character of the wares
associated with the mark.
3. Pursuant to
Sections 38(2)(b) and 12(1)(c) of the Act, HALLOUMI is not a registrable trade
mark, because it is the name, in a language, of the goods associated with the
trade mark;
4. Pursuant
to Sections 38(2)(b), 12(1)(e) and 10 of the Act, the adoption of HALLOUMI as a
trade mark is prohibited, because HALLOUMI has by ordinary and bona fide
commercial usage become recognized in Canada as designating a kind or quality
of cheese.
5. Pursuant to
Sections 2 and 38(2)(d) of the Act, HALLOUMI is incapable of functioning as a
certification mark in Canada, namely a mark used for the purpose of
distinguishing or so as to distinguish wares of a defined standard with respect
to character, quality, working conditions, class of producers or area of
production, because HALLOUMI has been used in Canada prior to the Applicant's
date of first use, namely October 19, 1995, and subsequently, by persons not
licensed by the Applicant, to describe cheeses which do not meet the standards set
out in the Application.
[6]
On
May 28, 2002, the Applicant filed a counter statement of opposition in support
of its application for registration in which it denied each of the respondents’
grounds of opposition.
[7]
On
February 23, 2003, les Producteurs Laitiers and Agropur filed their opposition
evidence. The Cheese Council did the same on December 24, 2002, and January 28,
2003. The Applicant filed its evidence in support of its application for
registration on June 23, 2004.
[8]
All
of the Applicant’s and respondents’ deponents were cross-examined, and their
testimony was filed with the Registrar of Trade-Marks. Each party submitted
written arguments and requested a hearing, which was scheduled jointly for the
three oppositions for April 2, 2008.
[9]
Two
weeks before the hearing, on March 18, 2008, les Producteurs Laitiers and the Cheese
Council filed a motion to amend their last ground of opposition. The proposed
amendment sought to add the following to the last ground of opposition:
More particularly, it was admitted by
Yannakis Pittas in his June 21, 2004 affidavit filed as part of the
Applicant’s evidence, that the Applicant does not itself license others to use
the HALLOUMI certification mark in accordance with the defined standard but
that such licenses of use are granted by third parties, namely the Minister of
Health and/or the Department of Veterinary Services of the Minister of
Agriculture and Natural Resources.
[translation]
Applicant’s Record (T-1205-08), tab 114.
The amendment proposed by Les Producteurs
Laitiers was similar in every respect: see Applicant’s Record (T-1203-08), tab
30.
[10]
The
motion was put over for adjudication at the hearing, which took place on April
2 before Mr. Jean Carrière, member of the Trade-marks Opposition Board and the
Registrar’s delegate under section 63(3) of the Act. The Applicant, les
Producteurs Laitiers and the Cheese Council were present at the hearing and made
submissions; however, Agropur was not represented.
[11]
At
the outset, the Registrar refused to amend the respondents’ last ground of
opposition because the motion was filed late with no explanation. However, he
allowed the oppositions dated April 29, 2008, in part, thereby refusing
the Applicant’s application for registration.
II. Impugned
decisions
[12]
In
the three impugned decisions, the Registrar rejected out of hand the grounds of
opposition set out in paragraphs 1b) and c), 2 and 3 of the Cheese Council’s
statement of opposition (see paragraph 5 of these reasons) or their equivalent
in the two other statements. These grounds were dismissed because the
respondents did not argue them, either in writing or orally, and thus did not
discharge their initial burden of establishing the facts on which they based
their opposition. The Registrar took the opportunity to specify, based on the
evidence before him, that the word “halloumi” is derived from the Greek word
“halmi”, which means “salty”; therefore, paragraphs 12(1)(b) and (c) were not
applicable to this case.
[13]
Furthermore,
the opponents put forward three other arguments to support their claim that the
Mark had not been used as alleged in the application and had not been used as a
certification mark (ground 1a) of the Cheese Council’s statement or the
equivalent in the two other statements). First, they stated that there was no
evidence that the Mark had been used by licensees of the Applicant from the alleged
date of first use. Second, the opponents argued that there was no evidence that
the cheese sold in Canada was manufactured in accordance with the defined
standards in the application. Last, they took the position that the Applicant was
not the authority that issued licences to the producers of wares bearing the
Mark and, therefore, could not claim that the Mark was used by these licensees.
[14]
Despite
the opponents’ lack of evidence on these issues, the Registrar admitted that an
opponent to an application for registration may rely on the Applicant’s evidence
to argue compliance issues since the information the opposing party needs to meet
its initial burden of proof is in the hands of the Applicant most of the time.
[15]
On
the basis of the Applicant’s evidence, in particular, the affidavits of Mr. Yannos
Pittas, co-owner of a dairy located in Cyprus; Mr. Eric Moscalhlaidis, owner of
an American distribution company that imports cheese from Cyprus bearing the
Mark and redistributes it in Canada; and various Canadian retailers, the
Registrar was satisfied with the use of the Mark and the manufacturing
standards applied to Halloumi cheese in Cyprus. However, he found that the Applicant
did not discharge its initial burden of proving that it was in fact the
authority that issued licences authorizing the use of the Mark in association
with the wares. Relying specifically on Mr. Pittas’ affidavit, the
Registrar concluded that it was the Ministry of Health in collaboration with
the Department of Veterinary Services of the Ministry of Agriculture, Natural
Resources and the Environment that issued licences authorizing the use of the
Mark in association with the wares. He wrote the following in this regard:
It would appear that various Ministries
of the Republic of Cyprus are involved in the supervision of the manufacture
and exportation of cheese bearing the Mark and have different responsibilities
depending on the stage reached in the manufacturing or exportation of the
Wares. It might be that ultimately, under the parliamentary structure of the Republic of Cyprus, the Applicant delegated its
authority to the Ministries of Health and of Agriculture, Natural Resources and
the Environment but we have no evidence to support such [sic] hypothesis.
[16]
Accordingly,
the Registrar concluded that the opponents had met their initial burden and
that any “use” of the Mark in Canada could not be deemed to be use by the Applicant
under subsection 23(2) of the Act because the evidence established that the
users of the Mark did not obtain their right to use the Mark from the Applicant
itself but from another governmental body. Since the Applicant was not the Republic of
Cyprus
but a specific ministry, the ground of opposition 1(a) should be accepted.
[17]
The
second ground of opposition that the Registrar accepted dealt with the
registrability of the Mark. The respondents argued that the Mark was not
registrable because it had by ordinary and bona fide commercial usage
become recognized in Canada as designating a type of cheese, thereby
contravening section 10 and paragraph 12(1)(e) of the Act (ground of opposition
(4) cited above).
[18]
After
stating that the relevant date of reference for determining this ground of
opposition was the date of the Registrar’s decision, he noted the consensus that
the particular characteristic of the cheese bearing the Mark that is
manufactured in Cyprus is that it does not melt when exposed to heat
during cooking. The cheese manufactured in Canada bearing a
visual or phonetically similar mark such as HALLOUM, HALLOOM, HALOUMI or HALOMI
does not have this characteristic.
[19]
Having
said that, the Registrar pointed out that no one could obtain the monopoly over
a term or word under pretext that it is a certification mark if the mark has
been used extensively in Canada by others prior to the relevant date such that it
has become recognized in Canada as designating the kind, quality, value, or
place of origin of the wares. Based on those principles, he reviewed the respondents’
evidence in this regard.
[20]
The
Registrar concluded that the evidence filed by les Producteurs Laitiers and
Agropur did not establish that the Mark had become recognized in Canada by
ordinary and bona fide commercial usage as designating a type of cheese.
However, in his view, the Cheese Council’s evidence was conclusive on this
point.
[21]
The
Cheese Council filed the packaging or photos of packaging from cheese purchased
in various cities in Quebec and in Ottawa bearing inscriptions
such as LE BÉDOUIN, HALLOOM, CLIC HALLOOM, DORÉ-MI or HALOUMI. The packaging
indicates that these products originated from various sources: Les Produits
Phoenicia Inc. of Montréal (HALLOOM); La Fromagerie Polyethnique Inc. of
St-Robert, Quebec (LE BÉDOUIN HALOUMI), Clic Import Export (CLIC HALLOOM), Les
Aliments Karine Inc. of Montréal (HALLOOM), Saputo Cheese Division Fromage
(Canada) (DORÉ-MI) and Fromagerie Marie Kadé of Boisbriand, Quebec (HALLOOM).
[22]
However,
representatives from Produits Phoenicia Inc. and Fromagerie Polyethnique swore
affidavits that were entered in evidence. They stated that they had been
selling cheese designated as HALLOOM, HALOUMI, or LE BÉDOUIN since 1995 and
filed documents from their company, some dating back to August 2002, confirming
sales of cheese designated by one of those names. Other affidavits and
cross-examinations showed that the name HALLOUMI is used in Canada to designate
a kind of cheese.
[23]
On
this evidence, the Registrar found that the word HALLOUMI could not be used as
a trade-mark in Canada. The Registrar rejected the argument that the
evidence revealed that the words HALLOOM, HALOUMI or HALLOUM were used rather
than the Mark HALLOUMI to identify a type of Mediterranean cheese, noting that
section 10 of the Act is aimed at both the adoption or use
of a mark “ . . . so nearly resembling that mark as to be likely to be
mistaken therefor”. He wrote the following in this regard:
There is a close resemblance between
HALLOUMI on [sic] one hand and HALOUMI, HALLOUM and HALLOOM on the other
hand. Moreover they all appear on cheese packaging and as mentioned above in
some instances they are substituted one for the other. Under these
circumstances I fail to see how the Applicant could get the exclusive use of
the Mark in Canada where the evidence shows that there has been bona fide
commercial usage of the Mark or similar terms such that it is recognized in Canada as designating a kind of
cheese. Therefore I maintain the fourth ground of opposition.
[24]
Finally,
the last ground of opposition accepted by the Registrar dealt with the Mark’s lack
of distinctiveness. Regarding that ground of opposition, the respondents needed
only to show that, at the relevant date, i.e. the date the statement of
opposition was filed, a confusingly similar trade‑mark had become
sufficiently known to negate the distinctiveness of the mark applied for. The
Registrar dismissed this ground in the oppositions filed by les Producteurs
Laitiers and Agropur for want of sufficient evidence; however, he ruled that
the Cheese Council’s evidence was more substantial and allowed this ground of
opposition in that docket.
[25]
The
Registrar indicated that most of the Cheese Council’s evidence on the use of
the term “HALLOUM” or “HALLOOM”, discussed under the registrability ground of
opposition, was subsequent to the relevant date. However, the Registrar accepted
this ground because of the evidence provided by the Applicant itself that the
Mark had been used in Canada by entities that had not been licenced by the Applicant
itself, as discussed in the review of the first ground of opposition alleging
that the application did not comply with the provisions of section 30 of the
Act.
[26]
On
August 4, 2009, the Applicant filed notices of application in this Court appealing
the Registrar’s decisions in the three dockets that are the subject of this proceeding,
based on the grounds of opposition that were maintained. As subsection 56(5) of
the Act permits, the Applicant entered as additional evidence two affidavits of
Mr. Aristos Constantine, Trade Commissioner for the Republic of Cyprus in
New
York,
sworn November 19, 2008, and January 15, 2009. I will return to these
affidavits in my analysis below.
III. Issues
[27]
This
appeal raises the following three issues:
A. What is the appropriate
standard of review for decisions by the Registrar?
B. Did the Registrar err
by finding that the application for registration did not comply with the
requirements of section 30 and paragraph 38(2)(a) of the Act?
C.
Did the
Registrar err in his findings on the registrability of the
Mark under paragraphs 38(2)(b)
and 12(1)(e) and section 10 of the Act?
IV. Analysis
A. What
is the Appropriate Standard of Review for Decisions by the Registrar?
[28]
There
is no disagreement among the parties about the appropriate standard of review on
appeal from decisions by the Registrar of Trade-marks. Generally, questions of
fact or law that are within the Registrar’s expertise are reviewable against
the reasonableness standard; in other words, this Court will only intervene if
the Registrar’s decision is clearly wrong. However, it is different where
additional evidence is filed with the Court and the evidence is relevant insofar
as it fills a gap or remedies deficiencies identified by the Registrar. In that
case, the Court may come to its own conclusion and will apply the standard of
correctness. However, this will only occur where the fresh evidence is
substantial and adds to what has already been submitted; if the fresh evidence
is repetitive and does not enhance the probative value of the evidence already
adduced, the standard of reasonableness will continue to apply. The following
passage from the decision of Justice Marshall Rothstein for the
majority in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145
(C.A.), at paragraph 51, summarizes the situation well:
Having regard to the Registrar’s expertise, in the absence
of additional evidence adduced in the Trial Division, I am of the opinion that
decisions of the Registrar, whether of fact, law or discretion, within his area
of expertise, are to be reviewed on a standard of reasonableness simpliciter.
However, where additional evidence is adduced in the Trial Division that would
have materially affected the Registrar's findings of fact or the exercise of
his discretion, the Trial Division judge must come to his or her own conclusion
as to the correctness of the Registrar's decision.
See also: Christian Dior, S.A. v. Dion Neckwear
Ltd., 2002 FCA 29, [2002] F.C.J. No. 95, at para.8; Canadian Tire Corp. v.
Accessoires d’Autos Nordiques Inc., 2007 FCA 367, [2007] F.C.J. No. 1555 at
paras. 29-30; Shell Canada Ltd. v. P.T. Sari Incofood Corp., 2008
FCA 279, [2008] F.C.J. No. 1320 at paras. 27-29; Minolta-QMS, Inc. v. Tsai,
2006 FC 1249, [2006] F.C.J. No. 1574 at paras.25-27.
[29]
On
the other hand, the jurisprudence seems to recognize situations where the
standard of correctness applies even in the absence of fresh evidence. This
will happen where the issue is purely legal and does not involve facts or the Registrar’s
expertise. By way of illustration, reference may be made to Telus Corp. v.
Orange Personal Communications Services Ltd., 2005 FC 590, [2005] F.C.J. No.
722 at paragraph 41 (affirmed at 2006 FCA 6, [2006] F.C.J. No. 14) and Big
Apple Ltd. v. BAB Holdings Inc., 2002 FCT 72, [2002] F.C.J. No. 89 at paragraphs
7-8, where identifying the burden of proof that the parties must meet and determining
the relevant date for deciding a ground of opposition were reviewed on the
correctness standard.
[30]
Accordingly,
with these principles in mind, I will examine the arguments raised by the
Applicant as well as the fresh evidence filed in this Court.
B. Did the Registrar Err by Finding
that the Application for Registration Did Not Comply with the Requirements of Section
30 and Paragraph 38(2)(a) of the Act?
[31]
In
its written representations, the Applicant submitted that the Registrar erred
by accepting the arguments presented orally by the les Producteurs Laitiers and
the Cheese Council and thus maintaining the ground of opposition based on
paragraph 38(2)(a) and 30 of the Act in Agropur’s opposition even though it had
chosen to not be represented at the hearing. The Applicant contended that the
arguments presented by the two other parties were not before the Registrar in Agropur’s
opposition record and that the Registrar could not consider them in making his
decision.
[32]
This
argument appears to me to be without merit because the Registrar’s decision did
not rely on the evidence submitted by any of the opponents but on testimony
provided by the Applicant itself. As previously mentioned, the relevant paragraph
in the Applicant’s application for registration states:
The applicant has granted a license to
use the certification mark in association with all the specific wares listed
hereafter that meet the defined standard set out below, and the certification
mark has been used by the licensee in Canada
accordingly in association with such wares.
[33]
The
exact wording of this ground of opposition in Agropur’s statement reads as
follows:
[translation]
1. The opponent bases its opposition
on section 38(2) of the Act, i.e. that the application for registration under
opposition does not comply with the requirements of section 30 of the Act in
that:
(a) The Mark was not used as
stated in the application; as well, it was not used as a certification mark.
[34]
It
is clear that the representations made at the hearing by counsel for les
Producteurs Laitiers and the Cheese Council undoubtedly supported the ground of
opposition based on section 30 and paragraph 38(2)(a) by drawing the Registrar’s
attention to the passages in Mr. Pittas’ affidavit stating that the Applicant was
not the authority that issued the licences to use the Mark. The fact remains
that the Registrar had before him all the evidence needed to make that finding.
The evidence existed in all three dockets because, again, it came from the
Applicant itself. In those circumstances, it was open to him (and I would even
say he was required) to make the finding he did on this point in the three dockets.
[35]
On
the other hand, the Applicant took the position that the Registrar erred by
considering the oral representations by les Producteurs Laitiers and the Cheese
Council that were exactly to the same effect as the amendment they had tried
unsuccessfully to make to their ground of opposition based on section 2 and
paragraph 38(2)(d) of the Act. The Applicant noted that the Registrar not only
agreed to hear these representations but also accepted them in his final
decisions in that he maintained the grounds of opposition based on paragraphs
39(2)(a), 30(b) and 38(2)(d) and section 2 of the Act. In doing so, the
Registrar prejudiced the Applicant by permitting indirectly what he had refused
when he dismissed the motion to amend the grounds of opposition.
[36]
If
we ignore the amendment that the Registrar dismissed and the oral representations
to the same effect, the Applicant continues, the grounds of opposition relied
on by the respondents were not set out in sufficient detail to enable the Applicant
to respond, as required by paragraph 38(3)(a) of the Act. According to the Applicant,
the grounds of opposition based on paragraphs 38(2)(a), 30(b) and 38(2)(d) and
on section 2 of the Act do not deal at all, even indirectly, with the substance
of the amendment that the Registrar dismissed. By not referring to subsection
23(2) of the Act or to the Mark’s lack of distinctiveness based on the fact
that the licences had been granted by a ministry other than the Applicant, it
was taken by surprise and could not introduce before the Registrar the affidavit
of Mr. Constantine that it filed in this Court.
[37]
Even
if the appropriate standard of review is correctness because these are
questions of law that do not fall within the Registrar’s particular expertise,
as the Applicant maintains, I cannot accept its arguments essentially for the reasons
stated above in relation to the first ground raised by the Applicant.
[38]
I
would like to specify at the outset that the respondents’ argument that the
amendment sought only clarified the ground of opposition based on subsections
38(2)(d) and 2(d) of the Act appears unconvincing to me. Accepting it would
result in form prevailing over substance. It goes without saying that the
Registrar would also have concluded that the amendment was late had the
respondents tried to introduce it in their opposition based on subsections
38(2)(a) and section 30 of the Act.
[39]
That
being said, les Producteurs Laitiers and the Cheese Council were entitled to
argue that the authority responsible for issuing the licences to use the Mark
in association with cheese manufactured in accordance with the established
standard was not the Applicant but another ministry of the Cypriot government,
even in the absence of a formal amendment to the grounds of opposition. In deciding
that the Applicant had met its burden of demonstrating that its application for
registration complied with the requirements of section 30 of the Act, the
Registrar was required to consider the precise wording that the opponents had used
in their statement of opposition.
[40]
The
first ground of opposition based on subsection 38(2) and section 30 specified
that the Mark had not been used “as a certification mark”. The certification
mark provisions are found in sections 23 to 25 of the Act. As provided in
subsection 23(1) of the Act, a certification mark may be adopted and registered
only by a person who is not engaged, inter alia, in the manufacture or
sale of wares with which the Mark is used. On the other hand, subsection 23(2)
provides that only the owner of a certification mark may authorize others to
use the mark in association with wares that meet the defined standard; in that
case, the use of the mark will be deemed to be use by the owner.
[41]
It
is therefore clearly apparent from these two subsections of section 23 that the
identity of the authority that had the power to authorize the use of the Mark in
association with cheese manufactured in accordance with the established
standard was at the very heart of the requisite conditions for determining
whether the Mark had been used in Canada as a certification mark. The Applicant
was required to establish that it or persons it had authorized had used the
Mark in Canada in
association with cheese manufactured in accordance with the standard. To the
extent that the Applicant could not establish that it had the power to
authorize certain producers to use the Mark, it could not benefit from the
presumption in subsection 23(2).
[42]
Accordingly,
the Applicant cannot contend that the respondents’ arguments took it by
surprise. The issue of whether it had the legal authority to issue licences to
use the Mark was inherent in its application for registration and in the concept
of a certification mark. It was therefore not necessary to specifically mention
in the grounds of opposition that the Applicant did not have the authority to
issue licences to use the Mark. By maintaining that the Applicant’s application
for registration did not comply with section 30 of the Act because the Mark was
not used as stated in the application for registration and that it was not used
as a certification mark, it appears to me that the respondents complied with
subsection 38(3)(a) of the Act and provided sufficient details to the Applicant
to enable it to reply to this ground of opposition. This is particularly true
since this flaw in the Applicant’s application was evident to the Registrar from
simply reading the evidence it submitted, specifically the affidavit of Mr.
Pittas; in this context, it was open to the respondents to draw the Registrar’s
attention to this issue at the hearing. In doing so, they were not raising a
new ground; they were only clarifying one of the grounds they had argued.
[43]
That
being so, the Applicant filed with this Court two uncontradicted affidavits of
Mr. Aristos Constantine, Trade Commissioner for the Republic of Cyprus in
New York. These affidavits clearly were intended to explain the internal
operation of the Cypriot government in terms of the responsibility for monitoring
the use of the Mark and thus were aimed at filling the gaps identified by the Registrar
in this regard (see excerpts from the decision at paragraph 15).
[44]
In
my view, Mr. Constantine’s affidavits clearly constitute additional evidence
that could have had an impact on the Registrar’s findings, and as such, the
Court is justified in drawing its own conclusions from them as to the
correctness of the Registrar’s decision. Accordingly, the standard of review on
this issue is correctness.
[45]
The
evidence shows without any ambiguity that the laws of the Republic of Cyprus designate
the Ministry of Commerce and Industry (the Ministry) as the ministry
responsible for monitoring the use of the certification mark Halloumi in
association with cheese. However, the Ministry delegated the responsibility for
monitoring compliance with the manufacturing standards for Halloumi cheese to
the Ministry of Health and the public servants in the Department of Veterinary
Services. These entities are not legally distinct from the Ministry but are all
part of the Government of the Republic of Cyprus. The
following paragraphs from Mr. Constantine’s affidavit are, in my view, the most
relevant to respond to the questions the Registrar raised in his decision:
7. The purpose of the present Affidavit
is therefore to confirm that it is indeed the Ministry of Commerce and Industry
of the Republic of Cyprus (hereinafter referred to as “The Ministry”) that is
the authority that has been designated within the Government of Cyprus to be
responsible for the supervision of the use of the certification mark HALLOUMI
in association with cheese.
9. Pursuant to the Cyprus Standards and
Control of Quality Laws of 1975 to 1996 (section 9), the Minister heading the
Ministry was the only authority within the Government of Cyprus responsible for
the designation, issuance and publication of the compulsory Standards for HALLOUMI
cheese and for the appointment of officers authorized to control and/or inspect
the proper implementation of said compulsory Standards. . . . As we
will see hereafter, the Department of Veterinary Services of the Ministry of
Agriculture, Natural Resources and the Environment (hereinafter “The Veterinary
Services”) and the Public Health Services of Department of Medical and Public
Health Services of the Ministry of Health (hereinafter “the Public Health
Services”) were afterwards appointed by the Minister heading the Ministry,
under the Cyprus Standards and Control of Quality Laws of 1975 to 1996 to
monitor, only, the implementation and compliance of the compulsory Standards
for HALLOUMI cheese.
22. As it can be seen from the above,
both the Veterinary Services and the Public Health Services control and certify
the compliance with legal requirements that apply to all food products or
animal food products and not specifically to HALLOUMI cheese. One has to
understand that a producer of HALLOUMI cheese could have received the relevant
authorizations and licenses from the Public Health Services and/or the Veterinary
Services, but would still not be entitled to use any longer the certification
mark HALLOUMI because while his production facilities respect sanitary
requirements and he is allowed to export his specific products, the cheese that
it produces, can no longer qualify as HALLOUMI cheese because one or the
other of the production criteria referred to in the Standards, is not
respected.
23. As regards the compulsory Standards
for the production of HALLOUMI cheese, the primary legal competence both
for the issuing of the Standards and supervising the controls for compliance
therewith belongs to the Minister heading the Ministry. The Veterinary
Services and the Public Health Services have competences in that respect only
as a result of appointments made by the said Minister, to act on his behalf.
[46]
These
allegations, which rely on the relevant legislation and regulations attached to
Mr. Constantine’s affidavit, appear to fully respond to the questions
posed by the Registrar in his reasons. Again, the respondents did not see fit
to cross-examine Mr. Constantine, and therefore his testimony must be
accepted as true. Consequently, I am of the view that the additional evidence justifies
allowing the Applicant’s appeal in the three dockets as regards the ground of
opposition based on section 30 of the Act. This evidence is also sufficient to
overturn the Registrar’s finding in the Cheese Council’s docket on the
distinctiveness of the Mark (sections 38(2)(d) and 2 of the Act) since this
finding was based on the same lack of evidence about the authority monitoring
the use of the Mark.
C. Did the Registrar Err in
His Findings Regarding the Registrability of the Mark Under Paragraphs 38(2)(b)
and 12(1)(e) and Section 10 of the Act?
[47]
The
Applicant took the position that the Registrar erred by ruling that the
relevant date for purposes of determining whether the Mark could be registered
under paragraphs 38(2)(b) and 12(1)(e) was the date of the Registrar’s decision.
While acknowledging that the Applicant itself had pleaded this date in its
written representations before the Registrar, its counsel noted that a decision
of this Court issued the day after the hearing before the Registrar called into
question the choice of that date. He also argued that the Court of Appeal
decision that was the leading case in this matter until that decision was issued
dealt with oppositions where paragraph 12(1)(e) was invoked in conjunction with
section 9(1)(n)(iii), not in conjunction with section 10, as in this case.
[48]
In
my view, these arguments cannot succeed for a number of reasons. First, I note
that the Applicant does not mention this ground at all in its notice of appeal from
the Registrar’s decision. However, rule 301 clearly states in subsection (e)
that the Applicant must set out a complete and concise statement of the grounds
intended to be argued in support of its application, including a reference to
any statutory provision or rule to be relied on. Even a careful review of the
notice of application does not afford a basis for inferring this ground by
implication, as the Applicant argues. In such circumstances, the jurisprudence
of the Court is clear: an Applicant will be precluded from making an argument that
has not been pleaded in the notice of application (see, for example AstraZeneca
AB v. Apotex Inc., 2006 FC 7, [2006] F.C.J. No. 46, at paragraphs
17-18). This argument by the Applicant must therefore be dismissed on that
ground alone.
[49]
In
any event, the Applicant’s argument could not succeed even if the Court agreed
to consider it. The Court of Appeal decision that is the leading case on this
point states that the relevant date is that of the Registrar’s decision and makes
no distinction as to whether the ground of opposition is based on paragraph 9(1)(n)(iii)
or section 10: see Canadian Olympic Assn. v. Olympus Optical Co. (1991),
38
C.P.R.
(3d) 1 (F.C.A.), pp. 3-4. However, Justice Sean Harrington’s comments in Scotch
Whisky Assn. v. Glenora Distillers International Ltd., 2008 FC 425, [2008] F.C.J.
No. 872, which counsel for the Applicant relies on to argue that the Court of
Appeal decision is no longer good law, seems much too cryptic to me to be
interpreted in this way. At the very most, Justice Harrington stated that it
was not necessary for him to discuss this issue to dispose of the case before
him:
The additional evidence is such that it
is not necessary to ponder over the relevant date for determining whether the
proposed trade-mark is clearly descriptive or deceptively misdescriptive or
exactly when a mark had become recognized by ordinary and bona fide commercial
usage.
[50]
In
my view, this comment is clearly insufficient to claim that the Court of Appeal
decision in Olympus Optical, above, should no longer be followed,
particularly since this Court is bound by a decision of the Court of Appeal until
that Court itself has re-evaluated it.
[51]
On
the merits, the Applicant argued that the Cheese Council had not met its
initial evidentiary burden before the Registrar. Its counsel took the position
that the Registrar relied only on some cheese packaging that four witnesses
obtained in five retail stores in Quebec and Ottawa after asking
for “halloumi” cheese, and on the sales figures of a cheese manufacturer that
sells almost all its cheese to a supplier that re-sells 40% of it to only one
company. The Applicant also submitted that the evidence did not establish
whether the inscriptions on the packaging (LE BÉDOUIN, HALLOOM, CLIC HALLOOM,
DORÉ-MI, HALOUMI) were used as a trade‑mark or a type of cheese. Last, the
Applicant contended that the Registrar erred in admitting the testimony on
cross-examination of two of its witnesses who stated that the term “Halloum“ or
“Halloumi” describes a type of cheese; this, according to the Applicant, shows
a misapprehension of section 10 of the Act and of the concept of a
certification mark as defined in section 2 of the Act.
[52]
First
of all, it should be noted that the Applicant did not submit any additional
evidence on this ground of opposition; consequently, and in accordance with the
remarks made earlier in paragraph 28 of these reasons, the appropriate standard
of review is reasonableness.
[53]
However,
it is settled law that an opponent has only an initial evidentiary burden: at most,
it must introduce sufficient evidence to support a prima facie finding
that there is a factual basis for the ground of opposition. Where an opponent satisfies
this initial burden, it is up to the person applying to register a mark to
persuade the Registrar that the grounds of opposition should not impede its
application: see, for example, Institut National des Appellations D'Origine v.
Vincor (Québec) Inc. (2003), 32 C.P.R. (4th) 279 (T.M.O.B.).
[54]
To
meet this initial burden in its opposition based on subsections 38(2)(b) and
12(1)(e) and section 10 of the Act, the Cheese Council had to demonstrate that the
Mark (or any other mark “so nearly resembling that mark as to be likely to be
mistaken therefor”, to use the language of section 10) was used extensively
in Canada by others prior to the relevant date to designate a type of cheese,
and that the Mark had an accepted definition or meaning in the industry: see Sealy
Canada Ltd. v. Simmons I.P. Inc. (2005), 47 C.P.R. (4th) 296,
at paragraphs 35 to 37 (T.M.O.B.).
[55]
I
believe that the Registrar correctly identified the respondent’s burden of
proof and, after carefully reviewing the evidence, I am also of the view that
the facts before him supported his finding that, at the date he issued his
decision, the Mark had become recognized in Canada as
designating a type of cheese. In his reasons, he pointed out that, in order to
satisfy its burden of proof, the respondent had to adduce “sufficient evidence”
to demonstrate that the Mark had become recognized in Canada, and also noted
that “one would not be able to obtain the monopoly
over a term or word under pretext that it is a certification mark if such mark
has been used
extensively in Canada” by others prior to the relevant
date. In my view, this method of dealing with the evidence complies in all
aspects with the state of the law on this subject.
[56]
The
Cheese Council established that it was possible to procure cheese from various
sources whose packaging bore the names HALLOOM, HALLOUM or HALOUMI in different
cities in Quebec and in Ottawa in 2002 and
2003. The Cheese Council also adduced evidence that a number of Canadian
producers have sold substantial quantities of cheese designated as HALLOOM in Canada since 1995. Finally,
a number of stakeholders in the industry testified that the term “halloumi”
designated a type of cheese and was used generically.
[57]
In
my view, the Registrar’s decision was reasonable in light of the evidence that
was before him. The Cheese Council discharged its initial burden, which consisted
of establishing that the term “halloumi” or terms so nearly resembling it as to
be likely to be mistaken therefor, was used extensively in Canada by others to
designate a type of cheese. On the basis of that evidence, it was open to the
Registrar to find that the term “halloumi” could not be used exclusively by one
person or entity. His decision, to quote Dunsmuir v. New
Brunswick,
2008 SCC 9 (at paragraph 47), fell within a range of “possible, acceptable
outcomes which are defensible in respect of the facts and law.”
[58]
In
this Court, the Applicant attempted to challenge the Registrar’s assessment by objecting
to the geographic area in which the Mark is recognized and by minimizing the sales
figures. As mentioned previously, the applicable criterion is not quantitative
but qualitative. What the opponents had to establish was that the term “halloumi”
had by ordinary and bona fide commercial usage become extensively
recognized in the industry. Again, the evidence before the Registrar permitted
him to maintain this ground of opposition.
[59]
On
the other hand, les Producteurs Laitiers also took the position that the
Registrar erred in dismissing the same ground of opposition in its docket. I
agree with the respondent that it could rely on the Applicant’s appeal from the
decision to submit all the arguments of fact or law against the Registrar’s
reasons. Indeed, the respondent itself could not appeal the decision since an
appeal can only address the impugned decision, not the underlying reasons for
it: see Rogerville v.
Canada (The Public Service Commission Appeal Board), 2001 FCA 142,
[2001] F.C.J. No. 692; GKO
Engineering v. Canada, 2001 FCA 73;
[2001] F.C.J. No. 369, Canada (Attorney General) v. Pépin, 2006
FC 950, [2006] F.C.J. No. 1209.
[60]
That
being said, I believe that the Registrar could reasonably conclude that the
evidence adduced in that docket was not sufficient to establish that the Mark
had by ordinary and bona fide commercial usage become recognized in Canada as
designating a type of cheese. The Registrar carefully examined the evidence
submitted by les Producteurs Laitiers and explained why, in his view, it was inadequate
to support its submissions that the Mark infringed section 10 of the Act. Moreover,
I note that counsel for this respondent did not vigorously argue this ground at
the hearing before this Court. In short, there is nothing that would justify
the Court’s intervention in this regard.
[61]
In
conclusion, I would allow the Applicant’s appeals in les Producteurs Laitiers docket
(T-1203-08) and the Agropur docket (T-1204-08), in light of the additional
evidence it submitted showing that the application for registration complied with
sections 38(2)(a) and 30(b) of the Act. I would also allow the Applicant’s
appeal on the same basis in the Cheese Council docket (T‑1205‑08). However,
in that docket, the Applicant’s appeal with respect to the registrability of the
Mark is dismissed. Since one ground of opposition is sufficient to have the Applicant’s
application for registration dismissed, this application for registration cannot
be reinstated.
ORDER
THE COURT ORDERS
that
the appeals in dockets T-1203-08 and T-1204-08 are allowed and the appeal in
docket T-1205-08 is dismissed. The Applicant is entitled to costs in docket
T-1203-08, and the respondent International Cheese Council of Canada is
entitled to costs in docket T-1205-08. Since the respondent Agropur Coopérative
Agro-Alimentaire withdrew from the proceedings, there will be no costs in
docket T-1204-08.
“Yves
de Montigny”
Certified
true translation
Mary
Jo Egan, LLB
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