Date: 20110202
Docket: T-233-10
Citation: 2011 FC 118
[UNREVISED ENGLISH
CERTIFIED TRANSLATION]
Ottawa, Ontario, February 2, 2011
PRESENT: The
Honourable Madam Justice Bédard
BETWEEN:
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LE MASSIF INC.
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Applicant
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and
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STATION TOURISTIQUE MASSIF DU
SUD (1993) INC.
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Respondent
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REASONS
FOR JUDGMENT AND JUDGMENT
[1]
This
is appeal, presented in accordance with subsection 56(1) of the Trade‑marks
Act, R.S., 1985, c. T‑13 (Act), of a decision dated
December 9, 2009, by a member of the Trade-marks
Opposition Board (Board) refusing the application for the registration of
the trade‑mark submitted by the applicant.
[2]
At
the beginning of the hearing, I informed the parties that the proceeding’s originating
document was irregular in that it noted that it was an application for judicial
review in accordance with sections 18 et seq. of the Federal
Courts Act (FCA) and not an appeal under subsection 56(1) of the Act
and Rule 300 of the Federal Courts Rules, SOR/98‑106 (Rules).
However, it is useful to note that, in their respective memorandums, the
parties properly identified the proceeding as being an appeal of the Board’s
decision and not an application for judicial review, which would have been
inadmissible under section 18.5 of the FCA in any case. Counsel for the applicant
made an oral motion based on Rules 56 and 57 of the Rules and counsel for the
respondent did not object to the motion.
[3]
Rule 57
of the Rules stipulates the following: “An originating document shall not be
set aside only on the ground that a different originating document should have
been used.” This is clearly a case in which, in my opinion, Rule 57 must
apply. A similar situation occurred, albeit in a different context, in Chu v.
Canada (Minister of Citizenship and Immigration), 2003 FCT 174, 120
A.C.W.S. (3d) 567, and Justice Snider allowed the application for judicial
review to be converted into an appeal. As I indicated during the hearing, the
application for judicial review filed by the applicant in this proceeding is
therefore converted into an appeal of the Board’s decision dated December 9, 2009,
and the style of cause is amended to strike the Registrar of Trade-marks as respondent.
Background
[4]
Le
Massif inc. (applicant) operates a ski resort in the Charlevoix region. The
evidence shows that the applicant was incorporated in 2002 and that it acquired
the business operated under the le Massif trade name in 2002. The evidence
also shows that, before 2002, the ski resort was operated by the Société de
développement du Massif de Petite‑Rivière‑Saint‑François.
[5]
On
March 31, 2004, the applicant filed an application to register the
trade-mark “LE MASSIF” based on its use of this name in Canada since at
least 1982 in offering wares and services related to the operation of a tourist
ski resort. On May 5, 2004, the applicant requested that the review of its
application be expedited. The application for registration was published in the
Trade‑Marks Journal on September 1, 2004.
[6]
On
January 28, 2005, the company Station Touristique Massif du Sud (1993) inc.
(respondent) filed a statement of opposition based on the following grounds:
- The
application does not meet the requirements of paragraph 30(a) of
the Act in that it does not include a statement in ordinary commercial
terms of the specific wares and services in association with which the
mark has been used;
- The
application does not meet the requirements of paragraph 30(b) of
the Act in that the trade-mark for which registration is sought has not
been used in Canada by the applicant since 1982, as stated in its application
for registration;
- The
trade-mark is not registrable under paragraph 12(1)(b) of the
Act because the mark for which registration is sought [translation] “describes an aspect that
is often associated with the wares and services described in the application
[that is,] [t]he word “massif” is a word that designates in the broader tourism
industry products and services related to mountain activities, such as
downhill skiing, snowboarding, hiking and other outdoor sports and
recreational activities”;
- The
trade-mark is a mark of which the adoption is prohibited by section 10;
- The
trade-mark is not distinctive of the wares and services mentioned in the
application (subsection 38(2) and section 2 of the Act).
[7]
The
parties then submitted their respective evidence and the transcript of certain cross‑examinations
of affiants. The respondent also produced a written argument.
[8]
After
a hearing, the Board rendered a decision on December 9, 2009, allowing the
respondent’s opposition based on non-compliance with paragraph 30(b) of
the Act and refusing the applicant’s application for registration. The Board
found that the application for registration was not compliant with paragraph 30(b)
of the Act because it did not describe the use of the mark by the applicant’s predecessor
in title during the period claimed, that is, since at least 1982.
[9]
The
Board also refused to accept the affidavit of Jean‑Luc Brassard, the ski
resort spokesperson, as expert evidence. The Board found that Mr. Brassard,
whose affidavit contained his opinion on the fame and distinctiveness of the
mark, was not an expert in trade-marks, marketing or any other subject
qualifying him to give the opinion sought. Even if the Board had recognized his
expertise, it would not have accepted his opinion because Mr. Brassard did
not have the necessary independence to form an opinion as an expert witness
because he has worked for the applicant since 2005.
Issues
[10]
The
applicant’s criticisms of the Board’s decision raise the following two issues:
1) Did
the Board base its decision on a ground of opposition that was not raised by
the respondent in its opposition and, if such is the case, did it act beyond
its jurisdiction or render an unreasonable decision?
2) Did
the Board err in deciding to not accept the testimony of Mr. Brassard as
an expert?
[11]
For
the following reasons, I believe that the first issue must receive an
affirmative response. As this finding is determinative of the outcome of this
appeal, it is unnecessary for me to discuss the second issue.
Applicable standard of
review
[12]
The
respondent argued that, in the absence of new evidence, the standard of review
that the Court must apply with respect to the Board’s decision is
reasonableness, and it cited Molson Breweries v. John Labatt Ltd.,
[2000] 3 F.C. 145, 180 F.T.R. 99 (Molson Breweries).
The applicant, which had not addressed the standard of review in its
memorandum, stated that is was in agreement with the respondent’s statement.
[13]
In Molson Breweries, Justice Rothstein described the
standard of review that must apply to Registrar decisions when no new evidence
is produced before the Court as follows:
51 . . . Even though there is an
express appeal provision in the Trade-marks Act to the Federal Court,
expertise on the part of the Registrar has been recognized as requiring some
deference. 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.
[14]
With
respect, I think the first issue concerns the jurisdiction and authority conferred
on the Registrar by the Act, and the decision by the Board, which acted on
behalf of the Registrar, must be reviewed on the standard of correctness. In Dunsmuir v.
New Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190, the
Supreme Court described the standard of review applicable to jurisdiction
questions as follows, at paragraph 59:
Administrative bodies must also be
correct in their determinations of true questions of jurisdiction or vires. . . . “Jurisdiction” is intended in
the narrow sense of whether or not the tribunal had the authority to make the
inquiry. In other words, true jurisdiction questions arise where the
tribunal must explicitly determine whether its statutory grant of power gives
it the authority to decide a particular matter. The tribunal must interpret the
grant of authority correctly or its action will be found to be ultra vires
or to constitute a wrongful decline of jurisdiction: D. J. M. Brown and J. M.
Evans, Judicial Review of Administrative Action in Canada (loose‑leaf),
at pp. 14-3 to 14-6.
. . .
[15]
I
believe that these principles must apply in this case, even if this is an
appeal and not a judicial review. I also wish to specify that my findings would
have been the same if I had applied the standard of reasonableness.
Positions of
the parties
[16]
The
applicant claims that the Board based its decision on a non-compliance with
paragraph 30(b) of the Act, which is different from that raised in
the respondent’s opposition. It alleges that, in support of its opposition, the
respondent raised a lack of evidence on the mark’s use since 1982 and not the applicant’s
failure to indicate in its application for registration the use of the
trade-mark by its predecessor in title. The applicant’s counsel insisted on the
fact that the respondent never raised or cited the absence of a reference to
the applicant’s predecessor in title in the application for registration.
[17]
The
applicant maintains that, in doing so, the Board acted beyond its jurisdiction
and exceeded the authority conferred on it by the Act by refusing its application
for registration on a ground that was not raised in the statement of opposition.
[18]
The
respondent contends that the ground of opposition accepted by the Board was
included in its statement of opposition and that it was raised in a satisfactory
and detailed manner. The respondent submits that its opposition, which is based
on a non-compliance with paragraph 30(b) of the Act, had two
aspects: lack of a reference to the predecessor in title in the application for
registration and lack of evidence on the mark’s use since the date of use claimed,
that is, since 1982. The respondent contends that it was not required to particularize
its statement of opposition because the non‑compliance of the application
for registration due to a failure to identify the predecessor in title is
apparent simply by reading the application for registration and that its
statement of opposition must be read in conjunction with the application for
registration and paragraph 30(b) of the Act.
Reasons
[19]
I
feel, for the following reasons, that the Board committed an error that
warrants the intervention of the Court.
[20]
The
opposition process is set out in section 38 of the Act:
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Statement
of opposition
38. (1) Within two months after
the advertisement of an application for the registration of a trade‑mark,
any person may, on payment of the prescribed fee, file a statement of
opposition with the Registrar.
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Déclaration
d’opposition
38. (1) Toute personne peut, dans
le délai de deux mois à compter de l’annonce de la demande, et sur paiement
du droit prescrit, produire au bureau du registraire une déclaration
d’opposition.
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Grounds
(2)
A statement of opposition may be based on any of the following grounds:
(a)
that the application does not conform to the requirements of section 30;
(b)
that the trade‑mark is not registrable;
(c)
that the applicant is not the person entitled to registration of the trade‑mark;
or
(d)
that the trade‑mark is not distinctive.
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Motifs
(2)
Cette opposition peut être fondée sur l’un des motifs suivants :
a) la demande ne satisfait pas
aux exigences de l’article 30;
b) la marque de commerce n’est
pas enregistrable;
c) le requérant n’est pas la
personne ayant droit à l’enregistrement;
d) la marque de commerce n’est
pas distinctive.
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Content
(3)
A statement of opposition shall set out
(a)
the grounds of opposition in sufficient detail to enable the applicant to
reply thereto;
and
(b)
the address of the opponent’s principal office or place of business in
Canada, if any, and if the opponent has no office or place of business in
Canada, the address of his principal office or place of business abroad and
the name and address in Canada of a person or firm on whom service of any
document in respect of the opposition may be made with the same effect as if
it had been served on the opponent himself.
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Teneur
(3) La
déclaration d’opposition indique :
a) les motifs de l’opposition,
avec détails suffisants pour permettre au requérant d’y répondre;
b) l’adresse du principal bureau
ou siège d’affaires de l’opposant au Canada, le cas échéant, et, si
l’opposant n’a ni bureau ni siège d’affaires au Canada, l’adresse de son
principal bureau ou siège d’affaires à l’étranger et les nom et adresse, au
Canada, d’une personne ou firme à qui tout document concernant l’opposition
peut être signifié avec le même effet que s’il était signifié à l’opposant
lui‑même.
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Frivolous
opposition
(4)
If the Registrar considers that the opposition does not raise a substantial
issue for decision, he shall reject it and shall give notice of his decision
to the opponent.
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Opposition
futile
(4) Si
le registraire estime que l’opposition ne soulève pas une question sérieuse
pour décision, il la rejette et donne avis de sa décision à l’opposant.
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Substantial
issue
(5)
If the Registrar considers that the opposition raises a substantial issue for
decision, he shall forward a copy of the statement of opposition to the
applicant.
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Objection
sérieuse
(5) Si
le registraire est d’avis que l’opposition soulève une question sérieuse pour
décision, il fait parvenir une copie de la déclaration d’opposition au
requérant.
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Counter
statement
(6)
The applicant shall file a counter statement with the Registrar and serve a
copy on the opponent in the prescribed manner and within the prescribed time
after a copy of the statement of opposition has been served on the applicant.
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Contre‑déclaration
(6) Le
requérant doit produire auprès du registraire une contre‑déclaration et
en signifier, dans le délai prescrit après qu’une déclaration d’opposition
lui a été envoyée, copie à l’opposant de la manière prescrite.
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Evidence
and hearing
(7)
Both the opponent and the applicant shall be given an opportunity, in the
prescribed manner, to submit evidence and to make representations to the
Registrar unless
(a)
the opposition is withdrawn or deemed under subsection (7.1) to have
been withdrawn; or
(b)
the application is abandoned or deemed under subsection (7.2) to have
been abandoned.
. . .
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Preuve
et audition
(7) Il
est fourni, de la manière prescrite, à l’opposant et au requérant l’occasion
de soumettre la preuve sur laquelle ils s’appuient et de se faire entendre
par le registraire, sauf dans les cas suivants :
a) l’opposition est retirée, ou
réputée l’être, au titre du paragraphe (7.1);
b) la demande est abandonnée, ou
réputée l’être, au titre du paragraphe (7.2).
[...]
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Decision
(8)
After considering the evidence and representations of the opponent and the
applicant, the Registrar shall refuse the application or reject the
opposition and notify the parties of the decision and the reasons for the
decision.
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Décision
(8)
Après avoir examiné la preuve et les observations des parties, le registraire
repousse la demande ou rejette l’opposition et notifie aux parties sa
décision ainsi que ses motifs.
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[21]
The
respondent claims that its statement of opposition included the ground on which
the Board based its decision. I do not think the material in the record supports
this submission. It is true that the respondent based one of its grounds of
opposition on a non-compliance with paragraph 30(b) of the Act, but
the basis of its opposition concerned the use of the mark since 1982, not the
identity of the user of the mark or the applicant’s failure to mention the name
of its predecessor in title in its application for registration.
[22]
The
respondent contends that the wording of its opposition was broad enough to
include the ground on the failure to refer to the predecessor and that on the lack
of evidence on the mark’s use since the date of use claimed in the application.
At first glance, this proposal appears reasonable. In its statement of
opposition, the respondent stated its opposition as follows based on paragraph 30(b)
of the Act:
[translation]
. . . application number 1,212,361 does
not meet the requirements of paragraph 30(b) of the Act in that the
trade-mark for which registration is sought has not been used in Canada by the Applicant,
such as described in its application for registration, since 1982.
[23]
However,
the respondent chose to submit a written argument detailing its grounds of
opposition. In its argument, it assessed and commented on Marc Deschamps’ affidavit,
the exhibits submitted in support of his affidavit and the transcript of his
cross‑examination, among other things. Mr. Deschamps has participated
in operating the applicant’s ski resort since 2002; he was director of the Société
de développement du Massif de Petite‑Rivière‑Saint‑François
from 1982 to 2000 and has been the applicant’s administrator since 2003. Mr. Deschamps’
cross-examination concerned the periods the trade-mark was used in association
with the wares and services covered by the application without any distinction
as to the identity of the mark’s user. In its argument, the comments made by
the respondent on the evidence in the record also address the dates the mark
was used in association with the wares and services, but no comment was made as
to the user of the mark (the applicant or its predecessor in title). After
discussing the evidence, the respondent articulated its opposition as
follows:
[translation]
7. ARGUMENT
The following is an overview of the opponent’s
arguments. The opponent will complete its arguments and expand on them during
the hearing.
1. Content of the application for
registration
First, as mentioned in the opponent’s statement
of opposition, the applicant’s application for registration does not meet the
requirements of section 30 of the Trade-marks Act in that the mark
for which registration is sought has not been used in Canada by the applicant
since the date indicated in its application for registration, that is, 1982, in
relation to the products and services described in the application.
In fact, during Marc Deschamps’
cross-examination, he candidly admitted that almost all of the wares and services
described in the application had not been used since 1982. See section entitled
“Cross-examination of Marc Deschamps” in this written argument.
As mentioned above, this ground of
opposition alone, which concerned the admissions of Mr. Deschamps, is enough
to refuse the application for registration, which contained irregularities from
the time it was produced.
(Emphasis added.)
[24]
In
my opinion, it is apparent from the respondent’s written argument that its opposition,
which was based on paragraph 30(b) of the Act,
had not two, but only one ground of opposition, and that this ground did not
concern the failure to mention the applicant’s predecessor in title, but rather
the lack of evidence on the mark’s use during the period claimed.
[25]
It
is also apparent from the following passage of the decision that it was the
Board, and not the parties, that raised the fact that the application for
registration did not specify the name of the predecessor in title. The Board
also indicated that, given its decision in this respect, it was unnecessary to
rule on the respondent’s opposition:
[32] According to the Opponent,
the gaps in the evidence of use presented at paragraphs 6 to 17 of
Mr. Deschamps’s affidavit, as well as his admissions under
cross-examination, demonstrate that the evidence is clearly inconsistent with
the alleged use of the Mark by the Applicant since 1982. During the
hearing, the Applicant’s agent correctly pointed out that the Applicant did not
bear the initial burden of proving use of the Mark in association with the
wares and services listed in the application since the date of first use
claimed. In any case, the Applicant’s agent submitted that the evidence
demonstrates use of the Mark by the Applicant and its predecessor in title
since the date of first use claimed in the application.
. . .
[35] It has been clearly established in the
case law that an application for registration shall identify any predecessor(s)
in title that have used the applied for trade-mark. . . .
[36] The application for registration does not
describe the use of the Mark by the Applicant’s predecessor in title during the
period of use claimed in the application, a fact I pointed out to the
parties during the hearing. The Applicant’s failure to list the name of its
predecessor in title in the application for registration means that the
application is not compliant with paragraph 30(b) of the Act. Accordingly,
it is not necessary for me to consider the parties’ submissions on the evidence
of use to find that the Applicant’s evidence is clearly inconsistent with its
claimed used of the Mark in association with the wares and services identified
in the application since at least as early as 1982.
[37] In view of the above, I find
that the Opponent has failed to meet its burden of proof with respect to the
ground of opposition based on non-compliance with paragraph 30(b) of the
Act.
[26]
Subsection 38(3)
of the Act requires the statement of opposition to set out the grounds of
opposition with “sufficient detail to enable the applicant to reply thereto”. In
this case, the statement must be read in light of the details that were given
by the respondent in its argument. As this argument refers to only one ground
of opposition set out in paragraph 30(b) and this ground has
nothing to do with an irregularity in the application for registration, I
believe that the Board allowed the opposition based on a ground that was not
raised by the respondent.
[27]
It
is settled law that the Board is not authorized to allow an opposition on the
basis of a ground that has not been raised by the opposing party. In Imperial
Developments Ltd. v. Imperial Oil Ltd., 26 A.C.W.S. (2d) 155,
79 C.P.R. (2d) 12 (Justice Muldoon), the Court stated that an
organization such as the Registrar of Trade-Marks is a creature of statute and that
it has no inherent or extrinsic jurisdiction in its constituting legislation. The
Court also stated that the Registrar called on to dispose of an opposition could
not base its decision on a ground that had not been stated in the statement of
opposition.
[28]
More
recently, in Procter & Gamble Inc. v. Colgate‑Palmolive
Canada Inc., 2010 FC 231, 364 F.T.R. 288,
at paragraph 26, Justice Boivin also adopted this jurisprudential principle:
. . . The Respondent submits
it is settled law that there is no jurisdiction to deal with an issue not found
in a Statement of Opposition and this Court does not have jurisdiction to
entertain issues that were not raised before the Board (McDonald’s Corp. v.
Coffee Hut Stores Ltd., (1994), 76 F.T.R. 281, 55 C.P.R. (3d) 463, aff’d
(1996), 199 N.R. 106, 68 C.P.R. (3d) 168 (F.C.A.)). I agree with the Respondent. . . .
[29]
I
agree with these principles. In this case, even if the Board refused the application
for registration on the basis of a failure to meet the requirements of paragraph
30(b) of the Act and the respondent’s opposition had also been based on
the failure to respect this paragraph, the respondent’s opposition referred to
a “failure” that is different from that on which the Board based its decision.
[30]
In
accordance with section 37 of the Act, the Registrar has the authority to refuse,
on the Registrar’s own motion, an application for registration that does not
meet the requirements of section 30 of the Act. A reading of subsection 37(1)
together with subsection 39(1) of the Act demonstrates, however, that this
power can only be exercised before the application is advertised. These
provisions are as follows:
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When
applications to be refused
37. (1) The Registrar shall
refuse an application for the registration of a trade‑mark if he is
satisfied that
(a)
the application does not conform to the requirements of section 30,
. . .
and
where the Registrar is not so satisfied, he shall cause the application to be
advertised in the manner prescribed.
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Demandes
rejetées
37. (1) Le registraire rejette une
demande d’enregistrement d’une marque de commerce s’il est convaincu que,
selon le cas :
a) la demande ne satisfait pas
aux exigences de l’article 30;
[...]
Lorsque
le registraire n’est pas ainsi convaincu, il fait annoncer la demande de la
manière prescrite.
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Notice
to applicant
(2)
The Registrar shall not refuse any application without first notifying the
applicant of his objections thereto and his reasons for those objections, and
giving the applicant adequate opportunity to answer those objections.
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Avis
au requérant
(2) Le
registraire ne peut rejeter une demande sans, au préalable, avoir fait
connaître au requérant ses objections, avec les motifs pertinents, et lui
avoir donné une occasion convenable d’y répondre.
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Doubtful
cases
(3)
Where the Registrar, by reason of a registered trade‑mark, is in doubt
whether the trade‑mark claimed in the application is registrable, he
shall, by registered letter, notify the owner of the registered trade‑mark
of the advertisement of the application.
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Cas
douteux
(3)
Lorsque, en raison d’une marque de commerce déposée, le registraire a des
doutes sur la question de savoir si la marque de commerce indiquée dans la
demande est enregistrable, il notifie, par courrier recommandé, l’annonce de
la demande au propriétaire de la marque de commerce déposée.
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When
application to be allowed
39. (1) When an application for
the registration of a trade‑mark either has not been opposed and the
time for the filing of a statement of opposition has expired or it has been
opposed and the opposition has been decided in favour of the applicant, the
Registrar shall allow the application or, if an appeal is taken, shall act in
accordance with the final judgment given in the appeal.
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Quand
la demande est admise
39. (1) Lorsqu’une demande n’a pas
fait l’objet d’une opposition et que le délai prévu pour la production d’une
déclaration d’opposition est expiré, ou lorsqu’il y a eu opposition et que
celle-ci a été décidée en faveur du requérant, le registraire l’admet ou, en
cas d’appel, il se conforme au jugement définitif rendu en l’espèce.
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[31]
According
to subsection 39(1), after the advertisement of the application for
registration, the Registrar’s authority is strictly directed: the Registrar may
either allow the application for registration (if the application has not been
opposed) or dispose of the opposition.
[32]
In
this case, the irregularity of the application for registration was apparent
even before the Registrar had advertised it. On May 5, 2004, the applicant’s
counsel filed, with the Registrar, a request to expedite the review accompanied
by a statement signed by the applicant’s president, Daniel Gauthier. In his
statement, Mr. Gauthier clearly identified the applicant’s predecessor in
title and indicated that the trade-mark had been used by the applicant’s
predecessor in title starting in 1982, and by the applicant itself since 2002. This
statement therefore contained information showing the application’s irregularity.
The Registrar did not identify the irregularity and advertised the application
for registration on September 1, 2004. The Registrar was then bound by the
statement of opposition and could refuse the application only on grounds raised
by the opponent.
[33]
For
all of these reasons, I believe that the Board acted beyond its jurisdiction in
allowing the opposition based on a non-compliance with paragraph 30(b) on
the basis of a ground that was different from that raised by the respondent.
[34]
Given
this finding, it is unnecessary for me to rule on the second ground of appeal.
JUDGMENT
THE COURT ORDERS AND ADJUDGES that
1. The
application for judicial review be converted into an appeal of the Board’s decision
dated December 9, 2009.
2. The style
of cause be amended and the Registrar of Trade-marks be struck as respondent.
3. The appeal be allowed,
the Board’s decision be set aside and the matter be referred to another Board
member for redetermination on the grounds of opposition raised by the
respondent.
WITH
COSTS.
“Marie-Josée Bédard”
Certified
true translation
Janine
Anderson, Translator
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