Docket: T-212-16
Citation:
2016 FC 431
Ottawa, Ontario, April 19, 2016
PRESENT: The
Honourable Mr. Justice Annis
|
BETWEEN:
|
|
VIORGANICA
LABORATORIES INC.
|
|
Applicant
|
|
and
|
|
SOCIÉTÉ DE
PRODUITS NESTLÉ
|
|
Respondent
|
ORDER AND REASONS
[1]
The Respondent, Société de Produits Nestlé
[Nestlé] brings this motion for an order striking the secondary relief sought
in paragraph 2 of the notice of application [the application] brought by the
Applicant, Viorganica Laboratories Inc. [Viorganica].
[2]
The primary relief sought in paragraph 1 of the
application is an appeal of the Registrar of Trademarks’ [Registrar] decision dated
July 23, 2015 expunging Viorganica’s trademark BELLA FLORA registered under
Registration Number TMA663,029.
[3]
The secondary relief sought in paragraph 2 of
Viorganica’s application is for “[a]n Order refusing
the Application No. 1,645,153, for registration of the trade-mark BELLA.”
[4]
This application by Nestlé is presently the
subject of a pending opposition brought by Viorganica pursuant to section 38 of
the Trade-marks Act, RSC, 1985, c T-13 [the Act] before the Registrar.
[5]
In regards to the opposition proceeding,
Viorganica argues that Nestlé has no case in seeking to register its trademark
BELLA. It submits that it would not be distinctive and would be confusing with
its BELLA FLORA trademark, use of which it claims Nestlé has purportedly
admitted. The Court was not directed to any evidence in support of Viorganica’s
argument.
[6]
Nestlé argues that because the question of
whether BELLA will be registered is still before the Registrar, the Court has
no jurisdiction to issue an order refusing its trademark registration
application. It therefore submits that Viorganica’s claim in paragraph 2 of the
application seeking refusal of the trademark registration should be struck. I
agree.
[7]
I am satisfied that the Court has the
jurisdiction to strike or summarily dismiss all or part of a notice of
application where the matter is “so clearly improper as
to be bereft of any possibility of success”: David Bull Laboratories
(Canada) Inc. v Pharmacia Inc. [1994] FCJ No 1629 (FCA) citing with
approval Cyanamid Agricultural de Puerto Rico, Inc. v Commissioner of
Patents (1983), 74 CPR (2d) 133 FC TD [Cyanamid]. In Cyanamid,
Justice Mahoney dismissed an application “for want of
jurisdiction in the Trial Division to grant any of the relief sought.”
[8]
The Registrar has the jurisdiction pursuant to
subsection 38(8) of the Act to make a decision with respect to Viorganica’s
opposition to the BELLA registration. Pursuant to subsection 39(1) of the Act,
if the opposition has been decided in favour of the Applicant, the Registrar
shall allow the application. The Registrar’s decision would then be subject to
an appeal to the Federal Court pursuant to section 56 of the Act.
[9]
I conclude that the Court does not have
jurisdiction to refuse the registration of the BELLA mark because it does not
have original jurisdiction over trademark registration in Canada. This
jurisdiction is bestowed exclusively on the Registrar by the Act. The Court’s only
jurisdiction is in respect of an appeal from the Registrar’s decision to
register a trademark.
[10]
The Applicant is in effect attempting to
challenge a decision over which the Court has no jurisdiction because the decision
has not yet been made.
[11]
I further conclude that the Court’s jurisdiction
could not somehow be implicitly based upon section 57 of the Act. It bestows
jurisdiction on the Court “to order that any entry in
the register be struck out.” Until Nestlé’s BELLA mark is registered,
there is no mark for the Court to strike out.
[12]
Even if I am incorrect in respect of my
conclusion that the Court does not have jurisdiction to hear the issue refusing
the BELLA trademark, I would nevertheless strike the impugned paragraph of the
application in the exercise of my discretion based on my conclusion that an
adequate alternative remedy exists in the form of the ongoing opposition
proceedings: Harelkin v University of Regina, [1979] 2 S.C.R. 561; Fast v
Canada (Minister of Citizenship and Immigration), 2001 FCA 368. Among other
factors, it would be a waste of judicial resources to refuse a decision that
may eventually turn out to be in the Applicant’s favour.
[13]
Accordingly, I allow the Respondent’s motion to
strike paragraph 2 in the application described above.
[14]
I further allow Nestlé an extension of time of
30 days from the issuance of this order for service of its evidence in this
application.
[15]
Nestlé is entitled to its costs in this matter,
which upon hearing the parties, I fix at $1,000.
Email this Content