Docket: T-1737-14
Citation:
2015 FC 839
Ottawa, Ontario, July 9, 2015
PRESENT: The
Honourable Mr. Justice Brown
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BETWEEN:
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ENGINEERS CANADA/
INGÉNIEURS CANADA
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Applicant
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and
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MMI-IPCO, LLC
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Respondent
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JUDGMENT AND REASONS
I.
Overview
[1]
This is an appeal pursuant to ss. 56 and 38 of
the Trade-marks Act, RSC, 1985, c T-13, as amended [the TMA] from
a decision of the Trade-marks Opposition Board [the Board], made under a power,
duty or function delegated by the Registrar of Trade-marks [the Registrar],
dated June 12, 2014, dispatched on the same day, and reported at 2014 TMOB 119,
wherein the Registrar rejected the opposition filed by Engineers
Canada/Ingénieurs Canada [the Applicant] to Application Serial No. 1,368,809 by
MMI-IPCO, LLC [the Respondent] for the trade-mark POLARTEC ECO-ENGINEERING
DESIGN [the Mark] as shown below:
[2]
In my opinion, the matter is moot for the
reasons set out below.
II.
Facts
[3]
The Applicant is the national federation of the
provincial and territorial associations of professional engineers, which
regulate the profession of engineering in Canada and licence the country’s more
than 234,000 professional engineers. The Respondent is an American fabric
company that describes itself as “a world leader in
technical performance fabrics”.
[4]
On October 15, 2007, the Respondent filed a
trade-mark application to register the Mark based on proposed use in Canada,
use and registration in the United States, and for use in association with the
following goods:
Textile fabrics for use in the manufacture
of clothing, home furnishings, upholstery, furniture, housewares furnishings,
carpets, floor coverings, wall coverings, curtains, furniture covers, blankets,
pillows, bed linens, bath linens and kitchen linens; Textile fabric piece goods
sold as a component of clothing, namely coats, jackets, parkas, raincoats,
pullovers, shirts, sports jerseys, trousers, pants, dresses, skirts, pajamas,
underclothing, scarves, shawls, gloves, mittens, headwear, namely hats, caps,
headbands, and visors, footwear, namely sport and leisure shoes, slippers,
socks, tights, stockings, and hosiery.
[5]
In accordance with s. 38 of the TMA, on
July 26, 2010, the Applicant filed a Statement of Opposition to the Application
on the basis that the Respondent is not registered to practice engineering in
any jurisdiction in Canada, nor does it employ licensed engineers in any
Canadian jurisdiction.
[6]
The Respondent’s Counterstatement, dated
September 27, 2010, denied all of the grounds set out in the Statement of
Opposition.
[7]
On June 12, 2014, the Board found that the Mark
was not deceptively misdescriptive, and found that the Mark was distinctive.
Therefore it dismissed the opposition.
[8]
By virtue of a Notice of Application dated
August 12, 2014, the Applicant appealed the Decision of the Registrar to this
Court pursuant to section 56 of the TMA.
[9]
Thereafter, the parties exchanged pleadings,
including affidavits and exhibits, conducted cross-examinations and other
related proceedings which resulted in the Applicant filing nine volumes of its
Record, and the Respondent filing an additional two volumes of its Record.
[10]
The Applicant in bringing its appeal filed new
evidence, as permitted by subsection 56(5) of the TMA, making a new
argument to establish that the Respondent’s goods are technical in nature and
to rebut the finding by the Board that the Respondent’s goods were “simple” goods.
[11]
The hearing of the appeal was set for Monday,
June 1, 2015.
[12]
However, the Respondent withdrew its application
for registration of the trade-mark by sending a letter to the Registrar on May
14, 2015. Thereafter, on May 21, 2015 the Respondent moved under Rule 369 of
the Federal Courts Rules, SOR/98-106 requesting an order dismissing the Applicant’s
appeal on the basis of mootness. The Applicant did not consent, and I directed
that the mootness motion be argued before me on the date set for hearing the
appeal, June 1, 2015.
[13]
On May 28, 2015, the Respondent sent a Notice of
Abandonment to the Court in which it wholly abandoned its motion to dismiss.
Also on May 28, 2015, the Respondent advised it would not be opposing the Applicant’s
appeal “on the basis that the Applicant, Engineers
Canada/Ingénieurs Canada, has consented not to seek costs of the appeal as
against the Respondent”. The Respondent further advised that counsel of
record would not be appearing at the hearing of the appeal.
[14]
The Court subsequently advised the Applicant that
it wished to hear submissions on the issue of mootness at the beginning of the
hearing. Having heard argument on the issue of mootness, I reserved judgment
which is now the subject of this Judgment and Reasons. In my view the appeal is
moot. Further, the discretion to hear the appeal notwithstanding its mootness
should not be exercised.
III.
Issues
[15]
This matter raises the following issues:
A. Is the appeal moot?
B. If so, should the Court exercise its discretion and hear the appeal
notwithstanding its mootness?
IV.
Submissions of the Applicant and Analysis
A.
Is the appeal moot?
[16]
The Applicant submitted that the appeal was not
moot, and that if it was, this Court should exercise its discretion and hear
the appeal notwithstanding. In doing so, it followed the two-step analysis
outlined by the Supreme Court of Canada in Borowski v Canada (AG), [1989]
1 SCR 342 [Borowski].
[17]
However, the Applicant is confronted with the
decision of Justice Cullen in Dura Undercushions Ltd v BASF Corp (1998),
154 FTR 233 (FC) [Dura], where, in a materially identical situation,
this Court held the appeal then before it moot, and in which this Court declined
to exercise its discretion to hear an appeal notwithstanding mootness. The Applicant
argues that Dura is distinguishable. As will be seen, I disagree.
[18]
In Dura at paras 1-3, this Court outlined
the situation then before it:
[1] This is an appeal of the decision
of the Registrar of Trade-Marks (the Registrar), dated July 31, 1997, in which
the Registrar rejected the opposition of Dura Undercushions Ltd. (Dura) to the
registration of the trade-mark DURAPLUSH, serial No. 700,883 (the trade-mark)
for use in association with carpet underlay.
[2] The respondent, BASF Corporation
(BASF), is no longer pursuing its application to register the trade-mark. BASF
advised the Registrar by letter dated December 1, 1997 that it was abandoning
its application. On January 21, 1998, the Registrar confirmed that the
application was being treated as withdrawn or discontinued. In these
circumstances, BASF advised the court on July 30, 1998 that it would not be
represented at this hearing.
[3] Dura still pursues its appeal of
the Registrar’s decision of July 31, 1997 on the grounds that the Registrar
made errors of fact and law in rejecting its opposition to BASF’s application,
which should not be permitted to stand. Dura filed a unilateral application for
an order fixing the time and place of hearing, dated December 23, 1997, which
was granted by order of Mr. Justice Hugessen on March 13, 1998.
[19]
Just as in the case at bar, there was an
application for registration of a trade-mark, the trade-mark was advertised, and
there was an opposition proceeding that resulted in a decision by the Board to
reject the opposition. In Dura, as in the case at bar, there was an
appeal under the TMA to this Court, followed by the Respondent’s
abandonment of its application for a trade-mark. This Court found the appeal
moot and declined to exercise its discretion to hear it.
[20]
I consider the circumstances in this case in all
material respects the same as those in Dura and that, on the first
branch of the Borowski test, this appeal is moot. In this connection, Borowski
at 353-54, 357 sets out the law:
Mootness
The
doctrine of mootness is an aspect of a general policy or practice that a court
may decline to decide a case which raises merely a hypothetical or abstract
question. The general principle applies when the decision of the court will not
have the effect of resolving some controversy which affects or may affect the
rights of the parties. If the decision of the court will have no practical
effect on such rights, the court will decline to decide the case. This
essential ingredient must be present not only when the action or proceeding is
commenced but at the time when the court is called upon to reach a decision.
Accordingly if, subsequent to the initiation of the action or proceeding,
events occur which affect the relationship of the parties so that no present
live controversy exists which affects the rights of the parties, the case is
said to be moot. The general policy or practice is enforced in moot cases
unless the court exercises its discretion to depart from its policy or practice.
The relevant factors relating to the exercise of the court’s discretion are
discussed hereinafter.
The approach in recent cases
involves a two step analysis. First it is necessary to determine whether the
required tangible and concrete dispute has disappeared and the issues have
become academic. Second, if the response to the first question is affirmative,
it is necessary to decide if the court should exercise its discretion to hear
the case. The cases do not always make it clear whether the term “moot” applies
to cases that do not present a concrete controversy or whether the term applies
only to such of those cases as the court declines to hear. In the interest of
clarity, I consider that a case is moot if it fails to meet the "live
controversy" test. A court may nonetheless elect to address a moot issue
if the circumstances warrant.
When is an Appeal Moot? -The Authorities
The first stage in the analysis
requires a consideration of whether there remains a live controversy. The
controversy may disappear rendering an issue moot due to a variety of reasons,
some of which are discussed below.
In King ex rel. Tolfree v.
Clark, [1944] S.C.R. 69, this court refused to grant leave to appeal to
applicants seeking a judgment excluding the respondents from sitting and
exercising their functions as members of the Ontario Legislative Assembly.
However, the Legislative Assembly had been dissolved prior to the hearing
before this court. As a result, Duff, C.J., on behalf of the court, held at p.
72:
It is one of those cases where, the
state of facts to which the proceedings in the lower courts related and upon
which they were founded having ceased to exist, the substratum of the
litigation has disappeared. In accordance with well-settled principle,
therefore, the appeal could not properly be entertained. [Emphasis and comment
in original]
[…]
Is this Appeal Moot?
In my opinion, there is no
longer a live controversy or concrete dispute as the substratum of Mr.
Borowski’s appeal has disappeared.
[21]
In my opinion, there is no live controversy
between the Applicant and the Respondent. There is no longer an application for
the trade-mark that gave rise to this litigation. This is a classic case where
the substratum of the litigation has disappeared. I find, as did Justice Cullen
in Dura at para 14, that:
[14] In the present appeal, the
application for registration of the trade-mark, which forms the basis of this
litigation, has been abandoned. There is no longer any source of dispute, nor
can the rights of either Dura or BASF be affected by the outcome of this
appeal. In short, there is no longer any application or trade-mark in suit.
[22]
The Applicant argues that there is a live issue
because the Respondent’s withdrawal of its Application does not equate to
abandonment of the Mark. As such, the Respondent may still use the trade-mark
POLARTEC ECO-ENGINEERING DESIGN in Canada. The Applicant argues that a tangible
dispute remains, namely whether or not the trade-mark POLARTEC ECO-ENGINEERING
DESIGN is deceptively misdescriptive and thus susceptible of misleading the
public when used. By this argument the Applicant seeks to distinguish this case
from Dura. With respect, I am unable to find a point of difference.
[23]
First, the Applicant’s submission is premised on
the untenable argument that there is a difference between this case and Dura
because Dura involved an abandonment while in this case the Respondent withdrew
its trade-mark application. I find there is no material difference between the
two.
[24]
The Applicant may be correct in asserting that the
Respondent may still use the trade-mark POLARTEC ECO-ENGINEERING DESIGN in
Canada. However, the very same argument was made and rejected by Justice Cullen
in Dura at para 22:
[22] The appellant also argues that the
case is not moot because the Respondent’s licensee, Woodbridge Foam Corporation
(“Woodbridge”) continues to use the subject trade-mark, and the Registrar’s
decision that the subject trade-mark is not confusing with that of the
applicant is res judicata . In my respectful opinion, there are two
issues to contemplate in this regard. Firstly, would a Court’s decision
overturning the Registrar’s refusal to accept the appellant’s opposition to the
Respondent registering the trade-mark prevent Woodbridge from using the
trade-mark? The original application for registration of the subject trade-mark
lists the Respondent as the applicant rather than Woodbridge. Therefore, Woodbridge is not a party in this action and its continued use of the trade-mark is not in
issue. Only if an eventual Court order prevented the Respondent and all
of its licensees from using the trade-mark would the appellant’s reasoning be
logical. To prevent Woodbridge from using the trade-mark, the appellant can
commence a trade-mark infringement action against Woodbridge, where both
parties would be represented by counsel, releasing the judge from an invidious
position.
[25]
Applying Dura’s reasoning to this case,
where I note there is no licensee issue, the answer to the possibility of
infringing use argument is that if a court order is required to prevent the
Respondent from using an unregistered mark, if faced with infringing use, the Applicant
may bring a trade-mark infringement action and if successful, it will obtain
such an order.
[26]
The Applicant’s ability to protect its Mark from
infringing use by the Respondent through an infringement action is also the
answer to the Applicant’s allegation that the Respondent has not renounced
POLARTEC ECO-ENGINEERING DESIGN as a trade-mark, and the Applicant’s complaint
that the Respondent has not given an undertaking that it will not use the Mark
or that it will refrain from reapplying for registration.
[27]
The Applicant argues that unless reversed, the
incorrect decision of the Board will survive and support an argument that
POLARTEC ECO-ENGINEERING DESIGN may be lawfully used as a trade-mark in Canada.
It argues this will also encourage or facilitate the adoption and use of other
misleading trade-marks featuring the word “engineering”,
thereby compromising the ability of the Applicant to successfully oppose and
take action against unauthorized adoption and use of trade-marks featuring the
words “engineering” and “engineer”,
to the detriment of the overall public interest.
[28]
With respect, I disagree. This is a variant on
another argument made but rejected by this Court in Dura at para 20,
where Justice Cullen stated in words which again I adopt in this case:
[20] […] Although in its first ground
of argument, Dura alleges that the Registrar in effect “impeached” its
trademarks, there is no declaration to this effect, nor would this have been a
viable remedy in the circumstances. Indeed, the idea that the Registrar’s
decision will prejudice Dura in respect to its DURA marks in the future, is
highly suspect. Dura presumes that the decision it appeals is in some way
determinative of future rights or prejudicial as a precedence in subsequent
applications or oppositions, whereas, I think it is proper to presume that the
Registrar would consider any future applications or oppositions on the
particular merits and in accordance with the Act. There is, therefore, no
practical effect the appeal has on the rights of Dura or BASF.
[29]
The passage just quoted from Dura is
equally applicable to the Board’s decision in this case.
[30]
In case there is any doubt as to the legal effect
of the present decision, I wish to make it clear that the Court is dismissing
this appeal as a result of mootness. These reasons are not, and should not be
taken in any way as a decision on either the merits of this moot appeal or of
the Board’s decision.
[31]
Therefore, I conclude that this appeal is moot.
B.
Should the Court exercise its discretion and
hear the appeal notwithstanding its mootness?
[32]
I now consider whether in its discretion the
Court should hear the appeal notwithstanding it is moot. In this connection,
the Applicant made several arguments.
[33]
Borowski
establishes criteria to be considered and applied in arriving at a decision
respecting the exercise of the discretion to hear a moot appeal notwithstanding
its mootness, namely i) the existence of an adversarial context (“[t]he requirement of an adversarial context is a
fundamental tenet of our legal system and helps guarantee that issues are well
and fully argued by parties who have a stake in the outcome” Borowski
at para 31), ii) a concern for judicial economy (“the
court’s decision will have some practical effect on the rights of the parties”
Borowski at para 35, and “recurring nature but
brief duration”), and iii) the absence of public importance (“cases which raise an issue of public importance of which a
resolution is in the public interest” Borowski at para 37). These
were summarized by the Federal Court of Appeal in Sherman v Pfizer Canada
Inc, 2015 FCA 107 at para 15 as “existence of an
adversarial context, judicial economy, the likelihood of the question
reoccurring, and the absence of any public importance”.
[34]
I also note that the Supreme Court of Canada in Borowski
at para 30 said that the exercise of the discretion is “departing
from a usual practice”.
[35]
There is no longer any adversarial context. Not
only has the entire substratum of the dispute disappeared, but the Court is
asked to set aside a decision in a moot matter without hearing from opposing
counsel. I have the same concerns as expressed by Justice Cullen in Dura
at para 16:
[16] […] However, I have some concern
that the merits of this appeal, which is to some degree de novo, will not be
fully explored, since BASF has chosen not to make representations. Although the
court will hear appeals in which the respondent is not represented, for this
reason, it does so with great reluctance: Bally Schuhfabriken AG v. Big Blue
Jeans (1992), 41 C.P.R. (3d) 205 (F.C.T.D.) at pages 214 and 215. In Bally,
Mr. Justice Rouleau had regard to the observations of Mr. Justice Cattanach in Canadian
Schenley Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd. (1976), 25
C.P.R. (2d) 1, at pages 4 and 5:
“It is incumbent upon the appellant
to establish that the Registrar was in error in deciding as he did. That places
the Judge in the invidious position of ensuring that counsel for the appellant
does so without the advantage of representations by counsel for the respondent.
The Judge is therefore obliged to raise matters favourable to the respondent
and unfavourable to the appellant requiring counsel for the appellant to meet
the matters so raised by the Judge, as is the duty of the Judge to do so. To
place the Judge in the position in which he is required to do this is almost
tantamount to making him counsel for the respondent and that is why I have
termed the position into which I was forced by the respondent’s decision not to
be represented as ‘invidious’.”
[36]
The record in this case is large and the case is
of some complexity. There are no interveners to carry the Respondent’s case:
see Borowski at para 33. In my opinion it would be undesirable to hear this
appeal in the absence of an adversarial context.
[37]
The Applicant points to collateral consequences.
This argument has already been considered and rejected. It argues that future
litigation is highly likely and suggests that a multiplicity of proceedings may
be avoided. However it offers no evidence, only speculation in this regard. The
Applicant points to Canada Post Corporation v Mail Boxes Etc. USA, Inc
(1997), 144 FTR 215 (FC), in which a moot appeal was heard. In my opinion,
Justice Cullen correctly distinguished Canada Post in Dura at
para 21 in noting that “there were other pending
proceedings between the parties, to which the subject proceedings were directly
relevant”. There are no other proceedings here, nor were there any in Dura;
therefore this point has no merit.
[38]
The Applicant argues that not hearing this
appeal would green-light infringing use of the word “engineering”.
This point is another variant on those disposed of above and, again, it is
simply not sustainable given the Applicant’s ability to pursue an infringement
action if and when it considers necessary. In addition the Applicant may oppose
subsequent trade-mark applications as it chooses.
[39]
The Court’s concern for judicial economy further
militates against exercising discretion in this case. I have found this decision
will have no practical effect on the parties. Nor is this a recurring case of
brief nature such as considered in Borowski: it is unique litigation
between two parties in respect of a trade-mark application that no longer
exists. The interests of judicial economy lie against the Applicant.
[40]
Finally, this case does not, in my respectful
opinion, raise an issue of such public importance that its resolution is in the
public interest. I respect that the Applicant represents the provincial and
territorial professional associations of professional engineers, who in turn regulate
the engineering profession. However, the trade-mark they opposed is withdrawn. This
case, while important to the Applicant, has insufficient impact on the public
at large to warrant hearing this appeal.
V.
Conclusion
[41]
The appeal is moot, and the Court declines to
exercise its discretion to hear this moot appeal notwithstanding.
[42]
As noted, the Applicant and Respondent have agreed
there would be no order as to costs.
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