Date: 20091015
Docket: T-1057-08
Citation: 2009 FC 1035
Ottawa, Ontario, October
15, 2009
PRESENT: The Honourable Madam Justice Simpson
BETWEEN:
MAPLE
LEAF FOODS INC.
Applicant
and
CONSORZIO DEL PROSCIUTTO DI PARMA
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT AND
JUDGMENT
[1]
Maple Leaf
Foods Inc. (Maple Leaf) produces a variety of food products including
ham. It became the owner of a trademark (Registration No. TMA179637) for the
word “PARMA” (the PARMA Word
Mark) which was registered on November 26, 1971 for use in association with a
variety of meats including ham. The Consorzio unsuccessfully challenged this
trademark. Maple Leaf has also filed a trademark application (Application No.
0765376) for a proposed design mark showing the word PARMA resting on a
ribbon and topped with a crown (the PARMA Design Mark). The application for
registration was filed on October 3, 1994 with a claim of proposed use in Canada. It remains
outstanding.
[2]
Against
this background Maple Leaf seeks judicial review of a public notice given by
the Registrar of Trade-marks (the Registrar) on February 11, 1998 (the
Notice) under the Trade-marks Act, R.S.C 1985, c. T-13 (the Act). The
Notice was predicated on the Registrar’s view that the Respondent, Consorzio
Del Prosciutto Di Parma (the Consorzio) was a public authority within the
meaning of subparagraph 9(1)(n)(iii) of the Act. The Consorzio is a group
of approximately 210 Italian ham producers in the province of Parma in Italy.
[3]
The Notice
dealt with the Consorzio’s adoption and use of the PARMA Ducal Crown Design
mark (the Consorzio Design Mark) as an official mark. The Notice was published
in the Trade-marks Journal, Volume 45, Issue 2259 on February 11, 1998. Earlier, in 1984,
the Consorzio had filed trademark applications based on the proposed use of the
Consorzio Design Mark and for the word mark PARMA HAM. These applications
remain active.
[4]
On
April 9, 1998, Maple Leaf appealed the Notice to the Federal Court, pursuant to
subsection 56(1) of the Act. In the appeal, Maple Leaf sought declarations that
the Consorzio was not a “public authority” and that the Notice was of no force
and effect. The matter was heard over two days by Mr. Justice John A. O’Keefe, who issued a
decision on November 28, 2000. At paras. 12-13, Justice O’Keefe described
Maple Leaf’s submission as follows:
The appellant submits that the consortium
is not a public authority within the meaning of the Act. Case law has
determined factors to be considered in this assessment:
whether the body is under a
duty to the public;
whether there exists a
significant degree of governmental control; and
whether there is any
requirement to dedicate profit to public good rather than private benefit.
According to the appellant, the
consortium does not meet these tests: it operates for private benefit, has no
duty to the Canadian public and any governmental control is foreign
governmental control. The Court should be cautious about recognizing a “foreign
commercial trade organization” as a public authority.
[5]
Justice
O’Keefe held that Maple Leaf did not have standing to appeal the Notice.
However, he did not foreclose the possibility of allowing Maple Leaf to apply
for an extension of time to file a judicial review application, or to make a
motion to convert its appeal to an application for judicial review. Given his
disposition of the appeal on the issue of standing, Justice O’Keefe concluded
that it was not necessary to decide whether the Consorzio was a public
authority.
[6]
On
December 20, 2000, further to Justice O’Keefe’s decision, Maple Leaf moved for an
order granting it leave to convert its appeal into a judicial review (the
Motion to Convert) and for an extension of time to file a Notice of
Application.
[7]
On
December 28, 2000, Maple Leaf also appealed Justice O’Keefe’s decision to the
Federal Court of Appeal. The Consorzio filed a cross-appeal on the same day.
[8]
On
February 13, 2001, Maple Leaf sent the Federal Court a letter asking that its Motion
to Convert be adjourned and made returnable on its request following the disposition
of the appeal and cross-appeal. The letter noted that “[t]he resolution of the
appeals may render the current motion moot” and that “[t]he parties hope to
have the appeals heard together and as soon as practicable.” Prothonotary
Lafrenière therefore adjourned the Motion to Convert sine die.
[9]
However, on
April 25, 2002, Maple Leaf discontinued its appeal and stated in a letter to
the Court:
Based in part on recent developments in
the law which approve the use of judicial review as the procedural avenue to
challenge s. 9 official marks, the appellant is now of the view that the
decision and reasons of Justice O’Keefe were correct.
[10]
The
Consorzio’s cross-appeal
was heard on May 1, 2002 and dismissed with costs.
[11]
Notwithstanding
the discontinuance of its appeal, Maple Leaf never brought its Motion to Convert back on
for a hearing.
[12]
Instead,
Maple Leaf commenced this application for judicial review on July 8, 2008, ten
years after the Notice was given and seven years after Justice O’Keefe’s
decision. These periods will be described as the “Gap.”
[13]
During the
Gap, the interpretation of the term “public authority” was altered by Madam
Justice Anne Mactavish’s decision in Canada Post. On the basis of her decision,
which was upheld on appeal, Maple Leaf wrote the Registrar and asked him to
withdraw the Notice. The letter said:
It is now clear that a Public Authority
must be under the control of the Canadian government; a party under the
control of a foreign government does not qualify as a Public Authority under
Section 9 of the Act. (Canada Post Corp. vs. United States Postal Service
(2005) 47 C.P.R. (4th) 117 (F.C.T.D.), affirmed (2007) 54 C.P.R. (4th)
121 (F.C.A.), leave to appeal to S.C.C. denied)
[14]
However, on
February 5, 2008, the Registrar wrote to Maple Leaf informing it that the
Consorzio’s official mark remained in good standing, and stating that:
the
Registrar has no authority, after giving public notice of the adoption and use
of an official mark by a public authority, to reconsider the decision to give
public notice of adoption and use of the official mark [...]. Any remedies
regarding the status of the cited official mark would be within the Federal
Court’s jurisdiction.
[15]
This
response by the Registrar prompted the present application for judicial review
of the Notice.
THE ISSUES AND ANALYSIS
[16]
Against
this background the issues are as follows:
1. Is this application
time-barred by s. 18.1(2) of the Federal Courts Act in the absence of a
request for an extension of time?
2. Is the Applicant barred from
prosecuting this application by the doctrine of res judicata?
3. Is the Applicant barred from
prosecuting this application by the doctrine of abuse of process?
4. Did the Registrar commit a
reviewable error in publishing the Notice?
Issue 1 Timing
[17]
Maple
Leaf’s present Notice of Application for Judicial Review describes the Notice
as the subject of this application for judicial review.
[18]
However,
in his oral submission and in his factum, counsel for Maple Leaf suggested that
Maple Leaf was actually seeking judicial review of an ongoing problem, namely
the Registrar’s continuing refusal to withdraw the Notice after the Federal
Court’s decision in Canada Post made it clear that the Consorzio is not a
public authority under the Act.
[19]
Maple
Leaf relied on Krause v. Canada, [1999] 2 F.C. 476, 86 A.C.W.S. (3d) 4 as
authority for the proposition that the limitation under s. 18.1(2) of the Federal
Courts Act does not apply in cases where “an application for judicial
review is sought for an order in the nature of mandamus, prohibition or
declaratory relief for redress against a state of affairs that is by its very nature
continuing and on-going and is alleged to be invalid or unlawful.”
[20]
The
difficulty is that Krause is not applicable on the facts of this case because,
according to the Notice of Application, which has not been amended, it is the
Notice and not the Registrar’s conduct which is the subject of the application
for judicial review. Further, the Federal Court of Appeal has held that a
notice of an official mark is a “decision” and that the 30-day time limitation period for judicial
review applies:
Ontario Assn. of Architects v. Assn. of Architectural Technologists of
Ontario, [2003] 1 F.C. 331, 2002 FCA 218 (F.C.A.) at para. 32.
[21]
Maple
Leaf further says that, because Justice O’Keefe concluded that it is not a
party to the Notice, it is not subject to the time limitation under s. 18.1(2),
which refers to “the party directly affected.”
[22]
However,
in my view, Justice O’Keefe’s conclusion about Maple Leaf’s lack of standing on
an appeal from the Notice is not relevant to a proper interpretation of
subsection 18.1(2). Subsections 18.1(1) and (2) both deal with directly
affected parties and there is no doubt that Maple Leaf is directly affected by
the Notice. It therefore had thirty days from the giving of the Notice to seek
judicial review. Failing that, it was obliged to seek an extension of time. It
has not done so.
Issue 2 Res
Judicata
[23]
Henderson v. Henderson (1843), 3 Hare 100, 67 ER.
313 [Henderson] at 114-115 reads:
In trying this question I believe I state
the rule of the Court correctly when I say that, where a given matter becomes
the subject of litigation in, and of adjudication by, a Court of competent
jurisdiction the Court requires the parties to that litigation to bring forward
their whole case, and will not (except under special circumstances) permit the
same parties to open the same subject of litigation in respect of matter which
might have been brought forward as part of the subject in contest, but which
was not brought forward, only because they have, from negligence, inadvertence,
or even accident, omitted part of their case. The plea of res judicata
applies, except in special cases, not only to points upon which the Court was
actually required by the parties to form an opinion and pronounce a judgment,
but to every point which properly belonged to the subject of litigation, and
which the parties, exercising reasonable diligence, might have brought forward at
the time.
[24]
The
Consorzio argues that the requirements of the doctrine of res judicata
outlined in Beattie v. The Queen, 2001 FCA 30, at para. 19 are satisfied
in this case. Those
requirements are:
(a) there must be a
final decision of a court of competent jurisdiction in the prior action;
(b) the
parties to the subsequent litigation must have been parties to or privy with
the parties to the prior action;
(c) the cause of action
in the prior action must not be separate and distinct; and
(d) the
basis of the cause of action in the subsequent action was argued or could have
been argued in the prior action if the parties had exercised reasonable
diligence.
[25]
Having
reviewed the originating document and the written submissions before Justice
O’Keefe, as well as his description of Maple Leaf’s arguments on this issue in
his decision, I am satisfied that items (b), (c) and (d) above are met. The problem
is that Justice O’Keefe did not issue a final decision on the merits. He simply
made it possible for Maple Leaf to take steps to obtain such a decision. For
this reason, I have concluded that the doctrine of res judicata does not
apply.
Issue 3 Abuse of
Process
[26]
In Sauve
v. Canada, 2002 FCT 721, 115 A.C.W.S. (3d) 205, at para. 19, the Court
described the doctrine of abuse of process as follows:
(1)
it is a flexible
doctrine, not limited to any set number of categories;
(2)
its purpose is a
public policy purpose used to bar proceedings that are inconsistent with that
purpose;
(3)
its application
depends on the circumstances and is fact and context driven;
(4)
its aim is to protect
litigants from abusive, vexatious or frivolous proceedings or otherwise prevent
a miscarriage of justice;
(5)
a particular scheme
of the rules of court may provide a special setting for its application.
[27]
Although,
as in this case, the plaintiff in Sauve had not had his claim adjudicated on the
merits, Justice Lemieux found that the plaintiff’s disregard of the Court’s case management rules
constituted an abuse of process. He noted particularly that the plaintiff
had been given ample opportunity to advance his case to an adjudication on its
merits and had provided no justifiable reason for failing to do so.
[28]
The
doctrine of abuse of process is applied to preserve the integrity of the
court’s process and procedure, and to prevent parties from conducting
themselves in a manner which would bring the administration of justice into
disrepute. In Toronto (City) v. C.U.P.E (Local 79), [2003] 3
S.C.R.77, at para. 37, the Supreme Court of Canada noted some of the instances in
which the doctrine has been applied:
Canadian courts have applied the doctrine
of abuse of process to preclude relitigation in circumstances where the strict
requirements of issue estoppel (typically the privity/mutuality requirements)
are not met, but where allowing the litigation to proceed would nonetheless
violate such principles as judicial economy, consistency, finality and the
integrity of the administration of justice.
[29]
In
C.U.P.E, at para. 38, the Court elaborated the relationship between res
judicata and abuse of process by relitigation as follows:
It
is true that the doctrine of abuse of process has been extended beyond the
strict parameters of res judicata while borrowing much of its rationales
and some of its constraints. It is said to be more of an adjunct doctrine,
defined in reaction to the settled rules of issue estoppel and cause of action
estoppel, than an independent one (Lange, supra, at p. 344). The policy
grounds supporting abuse of process by relitigation are the same as the essential
policy grounds supporting issue estoppel (Lange, supra, at pp. 347-48):
The
two policy grounds, namely, that there be an end to litigation and that no one
should be twice vexed by the same cause, have been cited as policies in the application
of abuse of process by relitigation. Other policy grounds have also been cited,
namely, to preserve the courts' and the litigants' resources, to uphold the integrity
of the legal system in order to avoid inconsistent results, and to protect the
principle of finality so crucial to the proper administration of justice.
[30]
Maple
Leaf abandoned its appeal by a written request and abandoned its Motion to Convert
by failing to bring it on for hearing after being granted an adjournment. The merits
of Maple Leaf’s claim that the Notice was invalid because a public authority under
the Act had to be Canadian, could have been decided but was not, because for
reasons which have not been explained, Maple Leaf chose not to proceed with its
Motion to Convert. In these circumstances, the current application for judicial
review of the Notice is an abuse of process.
Issue 4 The
Validity of the Notice
[31]
In view of
my conclusion that this application is an abuse of process, it is not necessary
to consider this issue.
JUDGMENT
THIS COURT ORDERS AND
ADJUDGES that, for the reasons given
above, the application is hereby dismissed with costs.
“Sandra
J. Simpson”
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