Docket:
T-1416-13
Citation: 2014 FC 318
Vancouver, British Columbia, April 1, 2014
PRESENT: The
Honourable Mr. Justice Harrington
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BETWEEN:
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COORS BREWING COMPANY AND
MOLSON CANADA 2005
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Applicants
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and
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ANHEUSER-BUSCH, LLC
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Respondent
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REASONS FOR ORDER AND ORDER
(Delivered from the
Bench at Vancouver, April 1, 2014
the Court reserving
the right to correct errors in grammar,
if any, and to
complete citations)
[1]
The Applicants seek the expungement of the Canadian
trade-mark “Grab Some Buds” registered by the Respondent. The International
Trade-Mark Association sought leave pursuant to Rule 109 of the Federal
Courts Rules to intervene. By order dated March 11, 2014, Prothonotary
Lafrenière dismissed that motion. This is the appeal therefrom.
[2]
Interventions are governed by Rule 109 of the Federal
Courts Rules. The Court may give leave to intervene. Thus the decision is
discretionary in nature.
[3]
Appeals from decisions of prothonotaries are
governed by Rule 51 of the Federal Courts Rules and the considerable
body of jurisprudence that has developed in relation thereto. In Merck &
Co v Apotex Inc, [2004] 2 FCR 459, the Federal Court of Appeal held
that a discretionary order of a prothonotary should only be reviewed de novo
if the questions raised in the motion are vital to the final issue in the case,
or the orders are clearly wrong in that the exercise of discretion was based
upon a wrong principle or upon a misapprehension of the facts. A decision on a
motion for leave to intervene is not vital to the final issue in the case. Thus
the question is whether the decision was based upon a wrong principle or upon a
misapprehension of facts.
[4]
There are number of factors the Court should
take into account in determining whether or not a third party intervention
should be permitted. Prothonotary Lafrenière correctly identified the factors
set out by the Federal Court of Appeal in Canadian Union of Public
Employees (Airline Division) v Canadian Airlines International Ltd, 2000 FCJ
No 220, 95 ACWS (3rd) 249 [CUPE].
[5]
The factors set out by the Court in that CUPE
decision are:
a. Is the proposed intervener directly affected?
b. Does there exist a justiciable issue or a veritable public interest?
c. Is there an apparent lack of any other reasonable means or efficient
means to submit the questions to the Court?
d. Is the position of the proposed intervener adequately defended by
one of the parties to the case?
e. Are the interests of justice better served by the intervention? and
f. Can the court hear and decide the case on the merits without the
help of the proposed intervener?
[6]
When the application of Coors Brewing Company
and Molson Canada 2005 is heard on the merits, the Court will have to
consider the interpretation of subsections 30(d) and 16(2) of the Trade-Marks
Act. The proposed intervener is a leading international association of
trade-mark owners, professionals and academics. It claims that it would be
uniquely situated to provide the Court with a balanced international
perspective on important issues of law and policy raised in the application.
Had I been deciding this matter in the first instance, I may well have granted
leave as I did in Canadian Generic Pharmaceutical Association v The
Governor in Council, The Minister of Health and The Attorney General of Canada,
2007 FC 154. Some of Canada’s international treaty obligations may well be in
issue. That case dealt with Article 1711 of NAFTA. I said at para 30:
[30]… Nevertheless, the treatment of
Article 1711 of NAFTA in the United States and in Mexico, both by regulation
and in the case law, may be of considerable importance. In Foscolo, mango
& Co, Ltd et al v Stag Line Ltd [1932] AC 328, 41 Lloyd’s List LR
165, the House of Lords noted that domestic legislation giving effect to a
treaty has, to use the words of Lord MacMillan “an international currency”.
[7]
However, the issue is not what I would have
decided; the issue is whether Prothonotary Lafrenière got it wrong.
[8]
The six factors enumerated by the Court of
Appeal in CUPE are not such that a failure to meet one of the tests is fatal to
the motion to intervene. Prothonotary Lafrenière’s major point was that INTA
had failed to demonstrate that its proposed intervention would add to the
debate, a factor that is absent. It seems to me that holding was reasonable.
The parties to the application are substantial corporations and are both
represented by expert advocates in the field of intellectual property. The
position of the proposed intervener certainly can be adequately defended by one
of the parties. The Court is certainly able to hear and decide the case on its
merits without the proposed intervention.
[9]
There is also the issue of the interests of
justice, a point which has come up following the Prothonotary’s decision. The
application on the merits is now set down for hearing in Ottawa on April 15,
2014. What is at stake is the possible expungement of one trade-mark and if I
were in a position to exercise my discretion anew, given that timeline I find
that the interests of justice would not be better served by allowing an
intervention at this late date.
[10]
With respect to costs, the proposed intervener
made the appeal presentable in Vancouver notwithstanding that counsel for the
Applicants reside in Ottawa and counsel for the Respondent in Toronto. The Respondent
has not appeared but consents to the intervention. In the circumstances, it is
neither entitled to nor burdened with costs.
[11]
However, the Applicants had to have counsel come
to Vancouver from Ottawa. Costs normally follow the event and I see no reason
to depart from that rule. Costs shall be at mid-level Column III and shall
include reasonable disbursements in counsel for the Applicants having to
displace herself from Ottawa to Vancouver.
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