See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee, 2007 FC 406

 

 

 

Date: 20070418

Docket: T-2016-04

Citation: 2007 FC 406

Ottawa, Ontario, April 18, 2007

PRESENT:     The Honourable Mr. Justice Phelan

 

 

BETWEEN:

SEE YOU IN - CANADIAN ATHLETES FUND CORPORATION

Applicant

and

 

CANADIAN OLYMPIC COMMITTEE

Respondent

 

REASONS FOR JUDGMENT AND JUDGMENT

 

I.          OVERVIEW

[1]               The Applicant, See You In – Canadian Athletes Fund Corporation (SYI Fund), had used and filed for trade-mark applications marks using the words “SEE YOU IN TORINO”, “SEE YOU IN BEIJING” and “SEE YOU IN VANCOUVER”. Despite these pending registrations, the Registrar of Trade-Marks decided that the Respondent Canadian Olympic Committee (COC) was a public authority under s. 9 of the Trade-marks Act (the Act) and to publish several official marks in the Trade-marks Journal in COC’s name. These official marks also used the words “SEE YOU IN TORINO”, “SEE YOU IN BEIJING” and “SEE YOU IN VANCOUVER”. This is the judicial review of the Registrar’s decision to publish the notice of the official marks which effectively granted the official marks to the COC.

 

II.         BACKGROUND

[2]               The SYI Fund was created in 1997 as the “See You In Sydney” fund. It later incorporated in Ontario on October 25, 2002 under its current name. It raises money to support Canadian athletes in international competitions.

 

[3]               Since 1997, SYI Fund and its predecessor organization have raised more than $2 million in campaigns such as “See You In Sydney”, “See You in Salt Lake” and “See You in Athens”.

 

[4]               On October 24, 2003, the SYI Fund filed four trade-mark applications:

(a)        SEE YOU IN ATHENS (Serial Number 1,193,872)

(b)        SEE YOU IN TORINO (Serial Number 1,193,873)

(c)        SEE YOU IN BEIJING (Serial Number 1,193,874)

(d)        SEE YOU IN VANCOUVER (Serial Number 1,193,875)

 

[5]               Ten months later, on August 2, 2004, the COC requested that public notice under s. 9 of the Act be given to certain marks. These were:

(a)        SEE YOU IN TORINO (File # 916,057)

(b)        SEE YOU IN BEIJING (File # 916,058)

(c)        SEE YOU IN VANCOUVER (File # 916,059)

 

[6]               On October 13, 2004, the Registrar gave public notice pursuant to s. 9(1)(n)(iii) in the Canadian Trade-marks Journal of the adoption and use of the official marks above.

 

[7]               In support of COC’s request, the COC filed with the Registrar substantive evidence that COC was a public authority. As to adoption and use, it filed nothing more than a letter from its counsel stating that the respective mark “has been adopted and used as an official mark by the Canadian Olympic Committee for wares and services in Canada”.

 

[8]               The effect of publication by the Registrar is to preclude registration of the previously adopted and used marks of the SYI Fund trade-mark applications. To the extent that SYI Fund used the trade-marks as of the publication date, it could continue to do so in association only with the same wares and services but would not be able to secure a trade-mark or expand the use to other wares and services. In practical terms, if the mark was used on pens as of the publication date, SYI Fund could continue to use the mark on pens but not on key chains (as an example).

 

[9]               The decision at issue is the Registrar’s decision to publish notice of COC’s official mark. The publication is the only written evidence of the decision.

 

[10]           There are five major issues in this judicial review:

1.         Can the Applicant bring forward evidence not before the Registrar?

2.         Can the Court (and should the Court) draw an adverse inference from the COC’s failure to answer relevant questions, particularly as to adoption and use?

3.         Has the COC adopted and used the COC marks other than as a licensee?

4.         Is the COC a licensee (agent or trustee) of the IOC and if it is, has it adopted and used the marks?

5.         Is the COC a public authority?

 

III.       ANALYSIS

A.        Legislation/Practice

[11]           The pertinent provision of the Act is s. 9(1)(n)(iii) which reads (the whole of section 9 is attached in the Annex at the end of these Reasons):

 

[12]           In most instances, decisions of the Registrar are governed by s. 56(1) of the Act:

 

[13]           In respect of the Office of the Registrar, it is its practice to accept unsworn, unsubstantiated statements of adoption and use without any further inquiry but to probe more deeply the question of whether the entity is a “public authority”.

 

B.         Standard of Review

[14]           The standard of review is well set out by Décary J.A. in Christian Dior, S.A. v. Dion Neckware Ltd. (C.A.), [2002] 3 F.C. 405 at paragraph 8:

8.         Decisions of the Registrar, whether of facts, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter, which is synonymous to “clearly wrong”. Where additional evidence is adduced in the Trial Division that would have materially affected the Registrar’s decision, a judge must come to his or her conclusion as to the correctness of the Registrar’s decision (see Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), per Rothstein J.A., at page 168: Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4^th) 51 (F.C.A.), per Malone J.A., at paragraph 13 and Isaac J.A., at paragraph 10; Garbo Creations Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4^th) 224 (F.C.T.D.) per Evans J., at page 234).

 

The later comments are made in respect of any appeal from the Registrar, not in respect of judicial review.

 

[15]           Therefore, the standard would normally be reasonableness except where additional evidence is admitted at the Federal Court, in which event, it is correctness.

 

[16]           For reasons given later, I have concluded that the evidence which the Applicant attempted to introduce is admissible. However, in this case, it does not matter whether the standard of review is correctness or reasonableness, the result is the same.

 

C.        New Evidence

[17]           As part of the Applicant’s case, it filed an affidavit of its officer Jane Roos. The affidavit addresses issues principally as to its use of the “See You In” trade-marks, its interest in this proceeding and other information about the corporation. It also attaches as exhibits evidence related to COC as a “public authority” including the Olympic Charter, the COC’s General By-law and a copy of the multi-party agreement between COC and different governments.

 

[18]           The Applicant did not seek leave to file the affidavit in accordance with Rule 312 until the hearing of the judicial review. However, the Respondent filed a rebuttal affidavit and the parties conducted cross-examinations without reserving any objection to the evidence.

 

[19]           At the hearing of this judicial review, the Respondent sought to strike the affidavit evidence while the Applicant argued that it was necessary, proper and sought leave to adduce the evidence under Rule 312. I reserved judgment on the motion to strike and proceeded to hear the judicial review on the basis that all the evidence was admitted.

 

[20]           In Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 19 C.P.R. (4^th) 417, relied on by the Respondent, Evans J.A. discussed the difference between a judicial review and an appeal under s. 56 of the Act. From paragraphs 27 to 32 the Court of Appeal discusses the differences between s. 56 appeals and judicial review under the Federal Courts Act. However, the Court of Appeal did not hold that a person who was not a party before the Registrar has no rights of redress under s. 56 or by judicial review. The s. 56 proceeding was converted to a judicial review by the Applications Judge, a procedure which the Court of Appeal held to be correct (paragraph 39).

 

[21]           On the specific issue of the admissibility of evidence not before the Registrar, the Court of Appeal did not conclude that such evidence could not be adduced on judicial review. At the most, the Court suggested that such evidence would be admissible on issues of procedural fairness and jurisdiction with leave of the Court.

 

[22]           In the subsequent case of FileNET Corp. v. Canada (Registrar of Trade-marks) (2002), 22 C.P.R. (4^th) 328 (F.C.A.), the Court of Appeal commented further on the right to adduce evidence and specifically concluded that in a judicial review, the party seeking judicial review may adduce evidence that the official mark was not adopted or used.

8.         In determining whether the statutory criteria are met, the Registrar is entitled but not bound to rely on the representations submitted with the request for publication. If the Registrar decides to give the public notice as requested, a person who seeks judicial review of the Registrar’s decision may adduce evidence that the official mark was not adopted or used. In that event, the party that requested the public notice has the burden of proving that the official mark was adopted and used by the date of the public notice.

 

[23]           This Court, in subsequent decisions, has admitted evidence in respect to both adoption and use (Canadian Rehabilitation Council for the Disabled d.b.a. Easter Seals/March of Dimes National Council v. Rehabilitation Foundation for the Disabled d.b.a. Ontario March of Dimes (2004), 35 C.P.R. (4^th) 270 at paras. 11-12) and in respect of public authority status (College of Chiropodists of Ontario v. Canadian Podiatric Medical Association (2004) 37 C.P.R. (4^th) 219).

 

[24]           The effect of the Registrar’s decision to give public notice is to curtail the ability to use the marks which a third party has used to date. These third parties have an interest (if not a right) in the Registrar’s decision and a legitimate right to challenge that decision.

 

[25]           It would be unfair to prevent them from putting forward evidence which challenges the conclusions of the Registrar particularly where they had no prior ability to do so.

 

[26]           If one examines that affidavit evidence, firstly it addresses the procedural unfairness of the Registrar’s process by which the Registrar gives only the most cursory consideration of the issue of a requestor’s adoption and use and no consideration of the use by third parties. Secondly, that evidence also highlights just how devoid of real evidence of adoption and use the Registrar’s decision is – an issue as to jurisdiction of the Registrar. Thirdly, the evidence puts the Respondent’s actual adoption and use in issue.

 

[27]           In my view, that evidence addresses the issues upon which new evidence may be admitted under both the Ontario Association of Architects decision and the FileNET Corp. decision.

 

[28]           Leave to file such evidence should have been obtained. However, the parties proceeded without reservation to deal with the affidavit evidence of the Respondent. This is an appropriate case where leave to adduce this evidence should be granted.

 

[29]           The Registrar’s anomalous procedures regarding official marks invites the very type of issues dealt with here. In regard to “public authority”, it is the Registrar’s practice to inquire into that matter and to require some evidence. As to “adoption and use”, the Registrar makes no inquiry and relies solely on an unsworn statement of counsel that the mark has been adopted and used. The legislation does not create a reason for such differential treatment nor a justification for such differentiation.

 

[30]           If the “public authority” issue deserves some inquiry, similarly so does “adoption and use”. The potential effect on third parties of the Registrar’s decision to publish certainly justifies some better level of diligence.

 

D.        Adverse Inference

[31]           The Respondent’s witness stated in his affidavit that the COC employees and consultants used the marks verbally in correspondence, e-mails and memoranda. In addition, the witness stated that the marks were used on promotional items such as pens and flashlight gifts. An invoice for the pens and flashlights was attached to the affidavit indicating an order date of August 31, 2004.

 

[32]           In cross-examination the Respondent’s witness indicated that the marks were used internally starting in January 2004 by COC personnel for strategic and business planning discussions.

 

[33]           On the instructions of counsel, the witness refused (a) to produce any other invoices for other promotional items; (b) to produce any correspondence, e-mails or memoranda evidencing use of the marks; (c) to indicate what the wares or services were on which the marks were used or to which they were associated; and (d) the number of promotional items actually used outside COC.

 

[34]           These were relevant questions. As Sharlow J.A. held in FileNET Corp., where an applicant for judicial review adduces evidence that the official marks were not adopted or used, the other party has the burden of proving that the official mark was adopted and used by the date of the public notice.

 

[35]           The timing of the order for the pens/flashlights is sufficient to highlight the importance of the questions. The order was placed two days before the request for publication was made to the Registrar. The Applicant suggests that based on the notations on the invoice, the items were received around November 5, 2004, a few days after the publication of the notice, which is the date by which the marks had to be adopted and used.

 

[36]           The Applicant asks this Court to draw a negative inference from the Respondent’s refusal to answer questions which are so germane to the issue of “adoption and use”.

 

[37]           In my view, this case is similar to that of Piscitelli v. Ontario (Liquor Control Board) (T.D.), [2002] 1 F.C. 247, where the issue was the adoption and use of an official mark after publication. The Court recognized that it was far easier for a respondent to bring forward evidence of use than for an applicant to prove that a respondent had not used or adopted the mark. In Piscitelli the Court held that “a negative inference could be drawn from the respondent’s failure to provide details pertaining to the adoption and use”.

 

[38]           The negative inference is that if the Respondent had produced the information, it would have shown that the Respondent had not adopted and used the marks by the publication date.

 

[39]           If it were necessary to draw a negative inference, I would. However, this issue can also be resolved in terms of the burden of proof referred to by Sharlow J.A. in FileNET Corp. The absence of any evidence of adoption and use, save for the unsupported assertion of the witness, adversely affects the Respondent’s ability to meet that burden.

 

E.         Adoption and Use

[40]           The issue of “adoption and use” by the Respondent can be approached from two perspectives. The first is whether there was evidence before the Registrar upon which it could conclude that the Respondent had adopted and used the marks. The second is, given the evidence now available, could or should one reach the same conclusion.

 

[41]           As to this “evidence” before the Registrar, it consisted solely of a statement of the Respondent’s counsel:

This mark has been adopted and used as an official mark by the Canadian Olympic Committee for wares and services in Canada.

 

[42]           This is in sharp contrast to the consideration of whether the COC is a “public authority”. There, the Registrar received hundreds of pages of material to establish this criterion. The Registrar entered into an inquiry of the facts and engaged the Respondent in a dialogue to justify the contention that it was a public authority.

 

[43]           As indicated earlier, if a requestor for an official mark is required to establish that it is a “public authority”, it must also establish its “adoption and use”. The Registrar is not simply a rubber stamp in the process of securing an official mark by way of adoption and use.

 

[44]           Not only was there insufficient evidence before the Registrar upon which to conclude that COC had adopted and used the mark, the Registrar had four trade-mark applications from the Applicant using the words “See You In …”, two of which were identical to the official marks sought – “SEE YOU IN BEIJING” and “SEE YOU IN TORINO”.

 

[45]           At the very least, this should have led the Registrar on a chain of inquiry on this issue. Therefore, the Registrar’s decision to publish notice was neither correct nor reasonable.

 

[46]           As to the evidence which subsequently was available through this judicial review, the Applicant says that it does not establish adoption and use. The Respondent counters that its use of the pen and flashlight kits as well as the unsubstantiated internal use in correspondence, e-mails and memoranda is sufficient to establish adoption and use.

 

[47]           The Act does not define “adoption” or “use” in regards to official marks under s. 9. There is a definition in respect of trade-marks as follows:

 

[48]           While an official mark is not used for commercial purpose or in the course of trade, ss. 3 and 4 assist in the interpretation of those words. A common feature of both “use” and “adoption” is that there is an element of public display, of which there was none established in this case.

 

[49]           If internal discussion, memoranda, etc. which preceded a request for publication constituted adoption and use, the phrase would be meaningless because, in that instance, no request could be sent in without the mark being deemed to be previously adopted and used; the very act of requesting or the internal correspondence on whether to request publication would, theoretically, constitute “adoption and use”.

 

[50]           In the present case the Respondent refused to even establish internal use except for the pen and flashlight ordered for which there was no evidence of use.

 

[51]           Therefore, the Registrar erred in concluding that there was adoption and use and further such a conclusion was unreasonable.

 

F.         Public Authority

[52]           In respect of the issue of whether the COC is a public authority, the Registrar conducted a substantial inquiry. The inquiry as to its status goes back to at least November 2002 (but not in respect of these official marks). There is also substantial case law which has recognized COC’s status: (See Registrar of Trade-Marks v. Canadian Olympic Association (1982), 67 C.P.R. (2d) 59).

 

[53]           The Registrar inquired into whether COC was beneficial to the public and whether there was sufficient degree of control by the government to reinforce the public character of the entity.

 

[54]           In the course of making a determination as to “public authority”, the Registrar engaged in a balancing of factors, some favourable to COC, some not so. It is the very type of activity, when done properly, for which the Registrar is entitled to deference.

 

[55]           The Applicant has argued that, even if there was adoption and use, it was not done by a “public authority” because COC is a licensee of the IOC and therefore the use is by or for the benefit of the licensor; that IOC cannot be a “public authority” because it is not a Canadian public authority; that COC is not sufficiently controlled by government or otherwise operated for the public benefit. However, the overriding issue is the reasonableness of the Registrar’s conclusion that the COC is a public authority.

 

[56]           There are features of the COC-IOC relationship which are in the nature of a licensor-licensee relationship, most particularly the IOC’s ownership of all property rights to the Olympic Games, the requirement imposed on COC to obtain the benefit of protection of those property rights for the IOC, and the requirement that the COC use those rights as instructed by IOC (see Rule 7 of the Olympic Charter and By-law to Rule 7-14). However, there are features which are not consistent with a licensor-licensee relationship. Rule 7 specifically reserves to IOC the right to license all or part of those rights – no such license was granted, indicating an absence of intent to grant the COC a license either expressly or by implication.

 

[57]           While the precise categorization of the right to adopt or use (if it had occurred) is difficult to determine, any adoption and use would have been authorized, if authorization were necessary. The relationship is somewhat like trustee/beneficiary, with IOC as the beneficiary. It is sufficient to conclude that there would have been no illegal use by COC such as to vitiate the legal effect of the use/adoption.  The more fundamental question remains whether COC is a public authority.

 

[58]           If the adoption and use was in reality or in law that of IOC, then COC could not obtain a notice. Quite apart from this is the issue of whether a non-Canadian entity can be a public authority. There are conflicting decisions in this Court (see Canada Post Corp. v. Post Office (2001) 15 C.P.R. (4^th) 267, decided before the Court of Appeal’s decision in Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 19 C.P.R. (4^th) 417 and Canada Post Corp. v. United States Postal Service, [2005] F.C.J. No. 2004 (QL)).

 

[59]           The Federal Court of Appeal in Ontario Association of Architects, at paragraph 50-51, has set out a two fold test for determining whether the relevant organization is a “public authority”:

·                    there must be a significant degree of public control; and

·                    the organization must exist for the public benefit.

 

[60]           The test of public control was not an “absolute control” test, it required a finding of “sufficiently significant degree of government control”. The test does not specify whether such control be direct or indirect.

 

[61]           In reaching its conclusion, the Registrar examined such key documents as the Program of the COC, the Contribution Agreement, the MOU specifying areas of cooperation, the Multiparty Agreement and the Covenants of Canada, British Columbia, City of Vancouver and Whistler. The financial result, quite apart from areas of input from government, is that 30% of the funding for the Olympic Games comes from government. Obviously, absent government, the Games would not be viable.

 

[62]           The Registrar was also aware of past decisions of this Court and the Federal Court of Appeal in respect of other circumstances but where the COC’s activities and the level of government involvement have not significantly changed. In those decisions, the Courts confirmed not only the public benefit but the “significant degree of control”.

 

[63]           The fact that the government funding goes to the Organizing Committee rather than the COC does not alter the issue of control. Control is both a legal and factual matter exercisable both directly and indirectly. Given the covenants, the cooperation, the funding and the overall involvement of government, the element of control exists at the COC level even if it is exercised more directly in other related organizations. More importantly, it was not unreasonable for the Registrar to reach its conclusion that there was a sufficiently significant degree of control.

 

[64]           I can find no basis for concluding that the COC does not exist for the public benefit even if it were arguable that certain of its actions were not beneficial to the public; such as attempting to take away the Applicant’s trade-mark rights. The COC as an organization must be considered more globally and certainly no private benefit (as opposed to public benefit) has been identified as governing the COC.

 

[65]           The Applicant cannot succeed on this aspect of its judicial review.

 

IV.       CONCLUSION

[66]           For the reasons given in respect of the finding of “adoption and use”, this judicial review is granted and the Registrar’s decision to publish is quashed; the public notice is of no force and effect. The Applicant shall have its costs at the usual level on a party and party basis.

 

 

JUDGMENT

            IT IS ORDERED THAT this application for judicial review is granted and the Registrar’s decision to publish is quashed; the public notice is of no force and effect. The Applicant shall have its costs at the usual level on a party and party basis.

 

 

 

“Michael L. Phelan”

 

 

ANNEX

 

 

Trade-marks Act, R.S., 1985, c. T-13

 

 

 

FEDERAL COURT

 

NAME OF COUNSEL AND SOLICITORS OF RECORD

 

 

 

DOCKET:                                          T-2016-04

 

STYLE OF CAUSE:                          SEE YOU IN - CANADIAN ATHLETES FUND CORPORATION

 

                                                            and

 

                                                            CANADIAN OLYMPIC COMMITTEE

 

 

PLACE OF HEARING:                    Toronto, Ontario

 

DATE OF HEARING:                      December 12 and 13, 2006

 

REASONS FOR JUDGMENT

AND JUDGMENT:                          Phelan J.

 

DATED:                                             April 18, 2007

 

 

 

APPEARANCES:

 

Mr. Terrance J. McManus	FOR THE APPLICANT
Mr. Kenneth McKay	FOR THE RESPONDENT

 

SOLICITORS OF RECORD:

 

MILTON, GELLER LLP Barristers & Solicitors Ottawa, Ontario	FOR THE APPLICANT
SIM, LOWMAN ASHTON & McKAY Barristers & Solicitors Toronto, Ontario	FOR THE RESPONDENT