Docket: T-1104-15
Citation:
2016 FC 605
Ottawa, Ontario, May 31, 2016
PRESENT: The
Honourable Mr. Justice Annis
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BETWEEN:
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CONSTELLATION
BRANDS QUEBEC INC
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Applicant
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and
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SMART &
BIGGAR and DALLEVIGNE S.P.A
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Respondents
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ORDER AND REASONS
[1]
The Applicant, Constellation Brands Quebec Inc.
[CBQ] appeals two orders of Prothonotary Morneau [the Prothonotary], both dated
February 5, 2016. In this matter, CBQ appeals the decision joining the
Respondent, Dallevigne S.p.A. [Dallevigne] as a party to the proceedings
pursuant to Rules 104(1)(b) and 303(1)(a) of the Federal Courts Rules
[the Rules], or alternatively allowing it to intervene under Rule 109(1) of the
Rules.
[2]
In the second related matter heard at the same
time by the Prothonotary and this Court, under docket number T-2125-15, CBQ
appeals the Prothonotary’s order granting Dallevigne’s motion to stay the
proceedings pending a decision on the merits in file T-1104-15 pursuant to
paragraph 50(1)(b) of the Federal Courts Act, RSC, 1985, c F-7.
[3]
For the reasons that follow, this motion is
dismissed, as is the motion appealing the stay in accordance with separate but
related reasons provided in matter T-2125-15.
I.
Background
[4]
The application in this matter is an appeal from
a decision of the Registrar of Trade-marks [Registrar] to expunge the DA VINCI mark,
registration number TMA303,667 [DA VINCI mark], from the register of trade-marks
for non-use under section 1 of the Trade-marks Act, RSC 1985, c T-13 [the
TMA].
[5]
The Respondent, Smart & Biggar is the representative
of Casa Vinicola Botter Carlo & Co. [Botter]. It applied for the DIVICI
trademark bearing application number 1,522,162 [DIVICI mark]. CBQ commenced
opposition proceedings to the DIVICI mark on June 1, 2012, relying on its
previously registered DA VINCI mark.
[6]
On February 21, 2013, CBQ also commenced
opposition proceedings against Dallevigne’s application for the CANTINE
LEONARDO DA VINCI [the CANTINE mark]. These proceedings are the subject matter
of the related proceeding stayed by the Prothonotary in docket T-2125-15.
[7]
On April 5, 2013, Smart & Biggar commenced a
section 45 proceeding by sending a request to the Registrar to expunge CBQ’s DA
VINCI mark for failure to use it in association with the registered goods,
namely “boissons alcoolisées distillées; liqueurs.”
[8]
On June 20, 2013, Dallevigne filed a
counterstatement in respect to CBQ’s opposition to the registration of the
CANTINE mark. Dallevigne contends that by that time it could not move to
expunge the DA VINCI mark because the Canadian Intellectual Property Office’s [CIPO]
Practice Notice in Section 45 Proceedings [the Practice Notice] indicated that
the Registrar would not issue a section 45 Notice where it had “good reason”
not to do so. Good reason included where “[t]he
trade-mark registration is already the subject of a section 45 proceeding
pending before the Registrar or on appeal before the Federal Court of Canada.”
[9]
On April 28, 2015, the Registrar granted Smart
& Biggar’s section 45 request, which resulted in the DA VINCI mark being expunged
[Section 45 decision] and which is the subject matter of this appeal.
[10]
On July 2, 2015, CBQ appealed the Registrar’s Section
45 decision. As a result of the appeal, the DA VINCI mark remains on the
register.
[11]
On September 3, 2015, the Registrar denied CBQ’s
opposition and granted Botter’s DIVICI mark. CBQ has not appealed the
Registrar’s decision. This impacted on Smart & Biggar’s decision not to
oppose CBQ’s appeal of the expungement of its mark in this matter.
[12]
On October 14, 2015, Dallevigne’s application to
register the CANTINE mark was refused by the Trade-mark Opposition Board [the
TMOB refusal] on the basis that it would create confusion with CBQ’s DA VINCI
mark, which was still on the register.
[13]
In the same decision, the Trade-mark Opposition
Board rejected CBQ’s alternative argument based on section 16(3)(a) of the TMA
that its mark had been previously used or made known in Canada. Both issues are
before the Court in the related file T-2125-15. If the section 45 expungement
of the DA VINCI mark is upheld, only the section 16(3)(a) issue will remain to
be decided in the related matter.
[14]
On December 17, 2015, Smart & Biggar gave
notice of its decision not to proceed to defend CBQ’s appeal of the Section 45
decision as a result of the outcome of the DIVICI opposition. On the same day,
Dallevigne moved to be joined to the appeal of the Section 45 decision, which the
Prothonotary allowed and is the subject matter of this appeal.
[15]
On December 21, 2015, Dallevigne appealed the
TMOB refusal to allow the registration of the CANTINE mark in file T-2125-15.
[16]
On January 25, 2016, CBQ denied Dallevigne’s
request to consent to stay the appeal of the TMOB refusal in file T-2125-15 if
its joinder in this proceeding was allowed. As a result, on January 26, 2016,
Dallevigne moved to stay the appeal in T-2125-15 pending the outcome of the section
45 appeal.
[17]
On February 2, 2016, the Prothonotary heard both
Dallevigne’s motion for joinder as respondent in CBQ’s appeal of the Section 45
decision proceedings (T-1104-15), and the motion to stay the appeal of the TMOB
refusal (T-2125-15) pending the outcome of the appeal of the Section 45
decision in file T-1104-15.
[18]
On February 5, 2016, the Prothonotary ordered, inter
alia, that Dallevigne be joined as a respondent to the T-1104-15
proceedings pursuant to Rules 104(1)(b) and 303(1)(a), or alternatively
allowing it to intervene pursuant to Rule 109(1) of the Rules. In addition,
Dallevigne was granted leave to cross-examine Ms. Valérie Masse on her
affidavit filed with the Registrar, along with other procedural steps to allow
Dallevigne to fully participate in the appeal.
[19]
The Prothonotary further ordered that the
proceedings in file T-2125-15 be stayed pending a decision on the merits in file
T-1104-15 pursuant to paragraph 50(1)(b) of the Federal Courts Act.
II.
Impugned Decision
[20]
The Prothonotary concluded that to be added as a
party pursuant to Rule 104(1)(b), Dallevigne should have been named as a
respondent pursuant to Rule 303(1)(a), whereby CBQ was required to name as a
respondent every person “directly affected” by the order sought in the
application. On the basis of the Court of Appeal decision in Forest Ethics
Advocacy Association v Canada (National Energy Board), 2013 FCA 236 [Forest
Ethics], the Prothonotary concluded that Dallevigne was “directly affected”
by CBQ’s application within the meaning of Rule 303(1)(a), thereby meeting the
requirements of both Rules.
[21]
In particular, the Prothonotary noted that the
Registrar had relied upon the deemed continued registration of CBQ’s DA VINCI
mark to conclude that it was confusing with Dallevigne’s CANTINE mark. He
indicated that Dallevigne was “directly affected” by the outcome of CBQ’s
appeal of the Registrar’s decision expunging the DA VINCI mark because success
in CBQ’s appeal “would cause real, tangible prejudice
to Dallevigne, and affect its legal rights beyond a mere general
inconvenience.” He similarly accepted Dallevigne’s argument that the
expunged trade-mark, deemed to be maintained on the registry by the effect of
CBQ’s appeal in this proceeding, represented “Dallevigne’s
only current obstacle to the registration and national protection of its legal
rights in the CANTINE mark.”
[22]
As a second ground, the Prothonotary further
accepted Dallevigne’s argument that it was a “necessary” party pursuant to Rule
104(1)(b). Dallevigne argued that because CBQ filed new evidence in the
expungement appeal, and because it did not appeal the DIVICI opposition
decision, CBQ will be in a position to present its expungement appeal without
any potential challenge by cross examination, or submissions from Smart &
Biggar. The Prothonotary accepted that Dallevigne’s participation is “necessary therefore to bring a balanced perspective to the
Court.”
[23]
As a third ground, the Prothonotary concluded
that Dallevigne should be accorded intervener status based on the same grounds
that supported its joinder, while Dallevigne also met the factors for
intervening described by Justice Stratas, sitting as a single judge, in Canada
(Attorney General) v Pictou Landing First Nation, 2014 FCA 21 [Pictou
Landing].
[24]
The Prothonotary distinguished his earlier
decision refusing an intervention of a party in somewhat similar circumstances,
as upheld by Justice Harrington in Bauer Hockey Corp. v Easton Sports Canada
Inc., 2014 FC 853 [Bauer FC] on two bases. First, that contrary to
the Bauer decisions, where there were separate proceedings between Bauer
and CCM, the DA VINCI mark was not being contested in the opposition
proceedings involving CBQ and Dallevigne. Second, he concluded that no parallel
procedure to expunge the DA VINCI mark was available to Dallevigne because of CIPO’s
Practice Notice.
III.
Legislative Framework
[25]
The relevant provisions applicable in these
proceedings are attached hereto as Appendix A.
IV.
Issues
[26]
This application raises the issues as to whether
the Prothonotary was clearly wrong,
1.
in adding Dallevigne as a respondent pursuant to
Rules 104(1)(b) and 303(1)(a) as a person “directly affected” or a necessary
party, or
2. alternatively, in allowing Dallevigne to intervene pursuant to Rule
109(1).
V.
Standard of Review
[27]
The parties agree on the applicable standard of
review of a prothonotary’s discretionary decision by a motion’s judge established
in Z.I. Pompey Industrie v ECU-Line N.V., 2003 SCC 27, and reformulated
by the Federal Court of Appeal in Merck & Co. v Apotex Inc., 2003 FCA
488 at paragraph 19 as follows:
Discretionary
orders of prothonotaries ought not be disturbed on appeal to a judge unless:
a) the questions raised in the motion
are vital to the final issue of the case, or
b) the orders are
clearly wrong, in the sense that the exercise of discretion by the prothonotary
was based upon a wrong principle or upon a misapprehension of the facts.
VI.
Analysis
A.
Adding Dallevigne as a Respondent
[28]
CBQ argues that the
Prothonotary erred in relying upon Forest Ethics because that matter was
in respect of a joinder in an application under Rule 300a) pertaining to
section 18.1 of the Federal Courts Act, as distinct from an appeal
under section 56 of the TMA pursuant to Rule 300d).
[29]
CBQ advances this distinction
because it wishes to rely upon the Federal Court of Appeal’s decision in Ontario
Association of Architects v Association of Architectural Technologists of
Ontario, 2002 FCA 218 [Association of Architects]. CBQ referred to
paragraphs 40-42 in Association of Architects which held that appeals
are limited to the parties and interveners, as follows:
[40] Normally,
rights of appeal are limited to the parties to and, sometimes, to interveners
in the proceedings leading to the decision under appeal. Appellate courts may
permit an intervention in an appeal launched by a party, even though the
intervener had not participated in the proceedings below. However, that is not
our case. The OAA seeks to bring an appeal in its own name, not to intervene in
an appeal brought by another.
[…]
[42] In the absence of any authority on
point, I see nothing in the scheme of subsection 9(1) that would justify a
departure from the normal principle that a person who was neither a party to
nor an intervener in the proceedings below has no standing to exercise a
statutory right of appeal.
[Emphasis added]
[30]
The issue in Association
of Architects was the appropriate proceeding,
be it by appeal or application, that an interested person must employ to challenge
the public notice given by the Registrar of an official mark under
subparagraph 9(1)(n)(iii). The decision did not concern Rule 303(1)(a) which only applies to joinder of respondents. Moreover, the passage quoted left some leeway for
situations which were not “normal.” I reject CBQ’s submission that the case
forms the basis to conclude that the principles enunciated in Forest Ethics
only apply to applications pursuant to Rule 303(1)(a).
[31]
It seems clear from the
introductory words of Rule 300 that “[t]his Part [5] applies to [300] a) …; … [300] d) …” and therefore includes Rule 300(d).
Accordingly, a person who shall be named respondent to an appeal under section
56 of the TMA refers to those persons who are “directly affected by the order sought in the application.” The word “application” is the generic term
applied to all Part 5 proceedings, as indicated in Rules 300 and 301.
[32]
I am therefore satisfied
that the Prothonotary did not err in relying upon Forest Ethics to
prescribe the proper principles for the requirement to join respondents as
parties to an appeal under section 56 of the TMA. The issue is therefore
whether Dallevigne ought to
be added as a respondent to CBQ’s section 56 appeal as a person who may be
“directly affected” by the order pursuant to Rule 303, and thereby ought to be
made a party under Rule 104.
[33]
That said however, I am satisfied
that the Prothonotary was clearly wrong in misapplying the principles
enunciated in Forest Ethics as to what constitutes a party being
“directly affected” by the order sought in the appeal.
[34]
Justice Stratas,
speaking for the Court in Forest Ethics, provided an explanation for the
words “directly affected” at paragraphs 18 through 21 of the decision. At paragraph
18 the Court indicates that “Rule 303 restricts
the category of parties who must be added as respondents to those who, if the
tribunal’s decision were different, could have brought an application for
judicial review [for an appeal under section 56] themselves.” If Smart & Biggar’s request to expunge had been denied,
I cannot see how Dallevigne could have
appealed the decision to the Federal Court. Association of Architects,
were it to apply, limits appeals under section 56 to the parties or
intervenors.
[35]
I also am of the opinion
that the Prothonotary’s statement that CBQ’s appeal “would cause real, tangible prejudice to Dallevigne and
affect its legal rights beyond a mere general inconvenience” does not
convey the sense of being directly affected as described by Justice Stratas in Forest
Ethics.
[36]
In paragraph 20, Justice Stratas “translates”
the application of Rule 303 into the following question: “whether the relief sought in the application for judicial
review will affect a party’s legal rights, impose legal obligations upon it or
prejudicially affected in some direct way [emphasis added].” I do
not agree with Dallevigne’s submission that the party need only be “prejudicially affected in some way,” without
reference to the effect being “direct.” The term “direct,” I find to be determinative
in interpreting the phrase.
[37]
As noted, the Prothonotary accepted Dallevigne’s
argument that the expunged trade-mark, deemed to be maintained on the register by
the effect of CBQ’s appeal in this proceeding, represented “Dallevigne’s only current obstacle to the registration and
national protection of its legal rights in the CANTINE mark.” However,
directly affecting other litigation that determines the rights of a
party, I do not understand to be directly affecting or prejudicing the party in
a direct manner for the purposes of Rule 303(1)(a).
[38]
Justice Stratas referred to the concept of a
party having a “direct interest” in reliance upon examples from previous
jurisprudence. In Cami International Poultry Inc. v Canada (Attorney
General), 2013 FC 583 [Cami International], the Court rejected the
application of the parties to be joined as respondents because “they will not be bound by any of the relief that Cami
has sought and that may be granted by the Court (Havana House Cigar &
Tobacco Merchants Ltd v Jane Doe, [1998] FCJ No 411 (QL), at para 4; Early
Recovered Resources v Gulf Log Salvage Co-operative Assn, [2003] FCJ No 716
(QL), at paras 6-7)”, [emphasis added]. Dallevigne will not be bound by
this appeal, but will only seek to apply it in its opposition proceedings.
[39]
Cami International also made reference to the Nu-Pharm Inc. v Canada (Attorney
General), 2001 FCT 973 [Nu-Pharm] where the Court concluded that the
proceeding can be set aside because the person who ought to have been a party
was not provided with an opportunity to participate in the events. There, Merck
was added as a party because, as the owner of the patent and exclusive licenses
for the drug enalapril, it was found to have a direct, pressing and legitimate
interest in the proceedings. The Court also made reference to the situation
where “the absent party had agreed to be bound in
appeal by the record in the Trial Division” as an example of being
directly affected, citing the decision of Société des Acadiens du
Nouveau-Brunswick Inc. and Association de Conseillers Scolaires Francophones du
Nouveau-Brunswick v Minority Language School Board No. 50 (defendant) and
Association of Parents for Fairness in Education, Grand Falls District 50
Branch (intended intervenor) (1984), 54 NBR (2d) 198 (CA), at page 210.
[40]
Justice Stratas also referred to the decision of
Reddy-Cheminor Inc. v Canada (Attorney General), 2001 FCT 1065. In that
matter, AstraZeneca had shown that in the judicial review proceedings initiated
by Reddy-Chemicor, a matter arose that affected AstraZeneca's patent protection
rights provided for in the Notice of Compliance Regulations. Again, this
was a case of legal rights or interests being directly adversely affected by a
decision. It was not a situation involving the application of a decision in one
matter to ensure the protection of legal rights in another.
[41]
I believe that I have seen similar examples in
employment law where the legality of an employer’s staffing process is
challenged by one employee that directly affects the legal entitlement of the
successful employee to fill the position, such that the latter employee’s legal
rights are directly affected to add it as a respondent.
[42]
I conclude that the Prothonotary failed to apply
the proper principles of what constitutes a person who may be directly affected
by an application, such as to require the person to be named as a respondent
pursuant to Rule 303. I further find that as Dallevigne is not a person
directly affected under Rule 303, there is no basis to add Dallevigne as a
party pursuant to Rule 104.
B.
Necessary Party
[43]
As was described above, the Prothonotary
considered Dallevigne’s participation in the appeal “necessary” as that term is
used in Rule 104, in order to bring “a balanced perspective to the Court.” He
accepted Dallevigne’s argument that because CBQ filed new evidence in the
expungement appeal, and because it did not appeal the DIVICI opposition
decision, CBQ will be in a position to present its expungement appeal without
any potential challenge by cross examination, or submissions from Smart &
Biggar. The Prothonotary cited no law in support of his conclusions.
[44]
The meaning of a necessary party was considered
by Justice Snider in the matter of Laboratoires Servier v Apotex Inc.,
2007 FC 1210, [Laboratoires Servier] at paragraphs 16 and 17, as
follows, with her emphasis noted:
[16] The question
of joinder was further considered by the Court of Appeal in Shubenacadie
Indian Band v. Canada (Minister of Fisheries and Oceans) (2002), 299 N.R.
241 at para. 8 (F.C.A.). Although Shubenacadie involved an appeal from a
motions judge dismissing a motion to remove defendants as parties, the
Court quoted the following passage from Amon v. Raphael Tuck & Sons,
[1956] 1 Q.B. 357 with approval as to when a person should be considered a
“necessary” party:
What makes a person a necessary
party? It is not, of course, merely that he has relevant evidence to give on
some of the questions involved; that would only make him a necessary witness.
It is not merely that he has an interest in the correct solution of some
question involved and has thought of relevant arguments to advance and is
afraid that the existing parties may not advance them adequately. ... The
only reason which makes it necessary to make a person a party to an action is
so that he should be bound by the result of the action, and the question to be
settled therefore must be a question in the action which cannot be effectually
and completely settled unless he is a party.
[17] The following principles also apply
when determining whether a person is a necessary defendant:
• The
fact a person has evidence relevant to the plaintiff’s statement of claim is
not sufficient to make them a necessary defendant (Shubenacadie, above
at para. 7).
• The
fact that a person may be adversely affected by the outcome of the litigation is
not sufficient to make them a necessary defendant (Shubenacadie, above
at para. 7).
• A mere
commercial interest rather than a legal interest is not sufficient to make a
person a necessary party (Ferguson, above at 784-785; Apotex Inc. v.
Canada (Attorney General) (1986), 9 C.P.R. (3d) 193 at 201 (F.C.T.D.)).
• Absent
a specific legislative provision (as in, for example, Nissho-Iwai Canada
Ltd. v. Minister of National Revenue for Customs & Excise, [1981] 2
F.C. 721 (T.D.)), when the plaintiff’s statement of claim seeks no relief
against a person and makes no allegations against them the person will not be
considered a necessary party (Shubenacadie, above at para. 6; Hall v.
Dakota Tipi Indian Band, [2000] F.C.J. No. 207 at paras. 5, 8 (T.D.) (QL); Stevens
v. Canada Hall v. Dakota Tipi Indian Band(Commissioner, Commission of Inquiry),
[1998] 4 F.C. 125 at para. 21 (C.A)).
[45]
I find these principles to
be equally applicable to the interpretation of Rule 104 for applications. I
conclude that the Prothonotary did not apply the appropriate legal principles
to the issue of a necessary party. Had he done so, I conclude that Dallevigne would not have been found to
be a necessary party, as there is no claim being made against it, nor is it
necessary that it be joined so as to bind it on the appeal. Conversely, all of
the factors identified by Justice Snider that she considered to be insufficient
to designate a necessary party, apply to Dallevigne. I conclude that the Prothonotary was clearly wrong in
determining that Dallevigne was a necessary
party to the appeal.
C.
Intervention of Dallevigne in the Appeal
[46]
In an alternative ruling,
the Prothonotary granted leave to Dallevigne to intervene in the appeal of the Registrar’s decision
expunging CBQ’s DA VINCI mark. It would appear that the Prothonotary may have
considered this conclusion as serving only to back up his principal conclusion
that Dallevigne was a proper and necessary
party. I say this because the formal Order makes no reference to an alternative
right to intervene, while the Prothonotary’s reasons on this issue are very
brief. In particular they do not provide the usual assessment and weighing of
the factors described in the jurisprudence relating to interventions.
[47]
The Prothonotary’s failure
to assess the strength of each of the individual factors and to weigh them in
an overall determination to arrive at his decision granting leave to Dallevigne to intervene, I find leaves
little choice but for the Court to undertake a de novo reassessment of
the evidence. I think it is a wrong principle not to adhere to a reasoning
process based on the assessment and weighing of the factors defined by the
jurisprudence used to decide whether to grant leave to intervene. Moreover, the
Court is unable to determine whether the Prothonotary exercised his discretion
based upon a wrong principle or upon a misapprehension of the facts without
undertaking such a review.
[48]
In addition, very shortly
after the Prothonotary’s decision, the Federal Court of Appeal handed down its
decision in Sport Maska Inc. v Bauer Hockey Corp., 2016 FCA 44 [Bauer
FCA]. This decision requires a reassessment to some degree of the Pictou
Landing decision, which the Prothonotary indicated he was applying in
concluding that Dallevigne
should be granted leave to intervene.
[49]
Finally, as justification
for the brevity of his reasons on intervention, the Prothonotary indicated that
he was relying upon the same grounds supporting his decision to add Dallevigne as a party also as grounds to
grant Dallevigne permission to intervene. I
agree with CBQ that this is problematic, given my conclusion that the wrong
principles were applied in the decision to add Dallevigne as a respondent to the appeal. Specifically, the issue of
what constitutes being “directly affected” for the purpose of an intervention
needs to be reconsidered in light of Bauer FCA. In all of the
circumstances therefore, I will conduct a de novo review of the evidence
and arguments with respect to Dallevigne’s
motion to intervene.
(1)
The Pictou Landing Factors as Reframed in
Bauer FCA
[50]
The facts in the Bauer decisions
are similar in many respects to those in this matter. The case is therefore highly
relevant, not only because of the factual application of the factors pertaining
to interventions, but also because of its refreshed statement of legal
principles applying to applications for intervention. This was required because
of the need to consider Justice Stratas’ decision sitting as a single judge in Pictou
Landing which proposed to modify the factors governing interventions found
in Rothmans, Benson & Hedges Inc. v Canada (Attorney General),
[1990] 1 FC 74 at paragraph 12, aff'd, [1990] 1 FC 90 (CA), [Rothmans,
Benson & Hedges].
[51]
In Bauer, Sport Maska
Inc., doing business as Reebok-CCM Hockey, had sought leave to intervene in
Bauer’s appeal from a decision of the Trade-marks Opposition Board which
expunged one of its trade-marks from the register. Bauer sought to intervene
because the respondent, Eastern Sports Canada Inc., indicated that it would not
participate in the appeal.
[52]
In Bauer FCA, Justice
Nadon speaking for the Court, restated somewhat the Rothmans, Benson &
Hedges factors governing intervention so as to harmonize them with the
proposed modifications advanced by Justice Stratas in Pictou Landing.
[53]
CBQ argues that the
Prothonotary therefore erred in relying on Pictou Landing to describe
the intervention factors when the Court in Bauer FCA indicated that
those traditionally relied on, and criticized by Justice Stratas, would
continue to apply. I find this to be an over- mischaracterization of Justice
Nadon’s reasons.
[54]
In comparing the factors
used to consider the suitability of intervening as described in Pictou
Landing, Justice Nadon concluded in paragraph 39 of Bauer FCA that “[t]hese differences are not, in my respectful
view, of any substance.” He
concluded that the minor differences between the Rothmans, Benson &
Hedges factors and those in Pictou Landing did not warrant changing
or modifying the Rothmans, Benson & Hedges factors, which are not
meant to be exhaustive. He emphasized that flexibility is the operative word in
dealing with motions to intervene because every intervention is different; “i.e. different facts and legal issues and
different contexts.” I find
these comments respond to a large degree to CBQ’s argument that the
Prothonotary erred in relying on Pictou Landing.
[55]
Ultimately, Justice Nadon
singled out, for overriding consideration, the fifth factor in Rothmans,
Benson & Hedges, concerning the interests of justice, stating at
paragraphs 42 and 43 as follows:
[42] … In my view, the Rothmans, Benson
& Hedges factors are well tailored for the task at hand. More
particularly, the fifth factor, i.e. “[a]re the interests of justice better
served by the intervention of the proposed third party?” is such that it allows
the Court to address the particular facts and circumstances of the case in
respect of which intervention is sought. In my view, the Pictou Landing
factors are simply an example of the flexibility which the Rothmans, Benson
& Hedges factors give to a judge in determining whether or not, in a
given case, a proposed intervention should be allowed.
[43] To conclude on this point, I would say
that the concept of the “interests of justice” is a broad concept which not
only allows the Court to consider the interests of the Court but also those of
the parties involved in the litigation.
[56]
While the Prothonotary did
not provide a description of the factors he was applying to grant Dallevigne intervenor status, I find that
the distinctions he made on the facts in Bauer implicitly focused on
factors that relate to the best interests of the litigants in coming to what I
think is the correct decision.
(2)
Intervening to Substitute for the Respondent
[57]
In Bauer FCA, Justice
Nadon pointed out the exceptional nature of these types of motions, which he
described “in reality” at paragraph 46, as not so much seeking to intervene,
but rather to substitute the intervener for the respondent. He adopted Justice
Mainville’s view, speaking for the Court in Canada (Attorney General) v
Siemens Enterprises Communications Inc., 2011 FCA 251 [Siemens] that
substitution for a party in litigation is generally not to be condoned, quoting
from paragraph 4 as follows, with his emphasis:
[4] … The rules
permitting intervention are intended to provide a means by which persons who
are not parties to the proceedings may nevertheless assist the Court in the
determination of a factual or legal issue related to the proceedings (Rule
109(2)b) of the Federal Court Rules). These rules are not to be used
in order to replace a respondent by an intervener, nor are they a mechanism
which allows a person to correct its failure to protect its own position in a
timely basis.
[58]
CBQ argues that the Prothonotary erred in
failing to take into consideration the presumption against substitution stated
in Siemens, noting that in Bauer FCA
the point was a factor militating against granting leave to intervene. I have
to agree with this submission only because the Prothonotary did not have the
benefit of Bauer FCA before him at the time of rendering his decision.
However, the strictness of the no substitutional intervention principal is
mitigated when, as noted by Justice Nadon at paragraph 49, he pointed out that “Siemens does not, per se, constitute an
absolute bar to a motion to intervene [to substitute for a respondent].”
[59]
Indeed, the Court in Siemens
cited several other grounds to dismiss the motion to intervene, (11th
hour presentation of the motion, many grounds being extensively canvassed
without challenge, and many issues being dealt with in another case). Reading
the two Court of Appeal decisions together I find that, while important, the
presumption against substituting an intervenor for the respondent does not
relieve the Court from canvassing all relevant factors and judging the case on
the totality of the evidence measured against the interests of justice. This
was the approach followed by Justice Nadon in his analysis in Bauer FCA.
[60]
On the matter of mitigating the no
substitutional intervention principal, I would also like to add what might be
considered an interpretive perspective restricted to section 45 that favours a
somewhat more liberal approach to adding respondents at the appeal level in
these matters. I do so because if the substitution for a respondent does not
create a broad precedent based upon a legislative intent of the provision
underlying the appeal, I think the natural aversion to such an order may be
more readily overcome.
[61]
With respect to the intention underlying section
45, I think it arguable that one of its purposes is to protect what I would
describe as “competitive trade-mark owners” from being economically
disadvantaged by unfair competition that arises from the abuse of a monopoly
that the government has created in establishing the regime of registered
trade-marks. A member of this group of competitive trade-mark owners would be
identified by the possible capacity of their marks, at any time including the
future, to be confusingly similar to the impugned mark as applied to the same
wares.
[62]
I am aware of the purpose of the register being
to protect the public interest and that the public interest supersedes the
interest of the parties: Hartco Enterprises Inc. v Becterm Inc, [1989]
24 FTR 69; Citrus Growers Assn Ltd. v William D. Branson Ltd, [1990] FCJ
No 43. However, the fact remains that by leaving a mark that is not used on the
register, a situation of abuse of trade-mark protection is created by the
government that is unfair to competitive trade-mark owners. In such
circumstances, it would seem to follow that by its intention of
promoting competitive fairness, Parliament has put in place the means to ensure
that its trade-mark regime is not abused. This procedure, in the form of section
45 of the TMA, is realistically intended to favour all competitive
trade-mark owners.
[63]
But in reality, Parliament's intention is
effected only by legislating a “self-interested” procedure that relies on
anyone who believes an abuse of the register is harming its interests to
request an expungement of the mark, with the knowledge that a “rem-like”
expungement order will protect all members of the competitive trade-mark group.
[64]
If section 45 is intended in part at least to
ensure fairness by removing abusive trade-mark monopolies that are unfair to competitive
trade-mark owners, the argument would seem to follow that Federal Court procedure
used on appeals under section 45 should be liberally applied to align with the intention
of the provision in the interests of justice. If there is merit in this reasoning,
it would similarly follow that the Court should allow one competitive
trade-mark owner to substitute for another at the appeal level as conducive to
best attaining Parliament’s objective, particularly if the circumstances to
substitute for a resiling respondent cannot constitute a precedent outside the
particular factual and legal parameters of a section 45 appeal.
(3)
Applying the Rothmans, Benson & Hedges
factors
(a)
Gaining a Technical Advantage
Factor 1)
Is the proposed intervener directly affected by
the outcome?
Factor 3)
Is there an apparent lack of any other
reasonable, or efficient means to submit the questions to the Court?
[65]
I consider the first and third factors together.
I do so because CBQ submits that the Prothonotary erred for failing to consider
that Dallevigne’s intervention was for the purpose of gaining a “tactical
advantage”, which the Court in Bauer FCA found was a ground to refuse
intervention applying to both factors.
[66]
When discussing the first Rothmans, Benson & Hedges factor, Justice Nadon concluded that intervening
would only afford CCM a tactical advantage of being helpful in the infringement
proceedings, which was not a sufficient basis to be “directly affected” by the
expungement decision. Similarly, concerning the third factor, he stated that a
loss of a tactical advantage did not mean that there was a lack of any other
reasonable means to submit the question to the Court.
[67]
The Prothonotary was not aware of any concept of
gaining a tactical advantage through expungement proceedings, as this point was
only set out at the Court of Appeal level in Bauer. The Prothonotary had
distinguished his own decision and that of Justice Harrington in Bauer FC on
the basis that the validity of the DA VINCI mark was not in issue in the ongoing
opposition proceedings involving CBQ and Dallevigne, whereas it was in the
infringement proceedings in Bauer FC.
[68]
In reply to this reasoning, CBQ submitted that
it was always open to Dallevigne to commence proceedings under section 57 of
the TMA to expunge its mark, rather than gaining a tactical advantage from the
section 45 proceedings.
[69]
I find the specific facts in Bauer FCA to
be important in applying Justice Nadon’s reasoning. CCM had counterclaimed
seeking a declaration that Bauer’s trade-mark was invalid for non-use. In doing
so, it had used very similar language to that submitted to the Registrar for
expungement under section 45. Justice Nadon upheld the conclusions of both the
Prothonotary and Justice Harrington that CCM should have been making its case
in the infringement proceedings. He also agreed with them that allowing CCM to
intervene would not necessarily simplify and expedite the ongoing dispute over
Bauer’s trade-mark in the infringement proceedings.
[70]
Justice Nadon found CCM’s attempt to intervene
in the section 45 proceedings was for the purpose for gaining a tactical
advantage in the infringement proceedings between Bauer and CCM. However, I do
not interpret his reasons as standing for the principle that whenever there may
be ongoing proceedings between the parties that have not put the validity of
the mark in issue, intervening is to gain a tactical advantage or that the
intervener is not affected by the results in the expungement proceedings.
Similarly, I do not find that the avenue of being able to commence future
section 57 proceedings to expunge a trade-mark for non-use, means that reasonable
alternative avenues of redress are open, and thereby the section 45 proceedings
represent a tactical advantage.
[71]
I treat the Court’s remarks as specific to the
facts in the case where CCM was seeking to advance the same submissions in two
distinct proceedings, and that it was not clear that allowing CCM to intervene
would simplify or expedite the ongoing dispute over Bauer’s mark.
[72]
In this matter, there are no other proceedings
but those before the Registrar seeking to expunge the DA VINCI mark. If the
expungement decision is upheld, it will affect the litigation between CBQ and
Dallevigne. Moreover, it would not be in the interests of justice for
Dallevigne to commence other proceedings to invalidate the trade-mark leading
to a multiplicity of proceedings. This is particularly so when the Registrar
has already concluded in the first instance that the trade-mark should be
removed from the register for non-use.
[73]
I conclude that this is not a situation where
Dallevigne is gaining a tactical advantage where similar arguments are being
advanced in other proceedings. I also find that upholding the Registrar’s
decision will have a likely effect of simplifying and expediting the opposition
proceedings.
(b)
Factor 1: Directly Affecting the Intervenor
[74]
The remaining issue concerning the first factor
is whether Dallevigne is directly affected by the outcome in the appeal
proceedings. The issue is challenging in this matter because in applying Pictou
Landing, I have found that Dallevigne would not be directly affected for
the purpose of being added as a party under Rule 303(1)(a).
[75]
However, I do find that Dallevigne would be
affected by these proceedings by their impact on Dallevigne’s appeal of the
TMOB refusal that found its mark confusing with the DA VINCI mark. The mark was
only on the register because of CBQ’s appeal of the expungement decision. In
view of the fact that the sole reason for the refusal of Dallevigne’s CANTINE
mark registration was confusion with CBQ’s DA VINCI mark, if its expungement is
upheld the issue of confusion with CBQ’s registered trade-mark disappears. That
would not bring the appeal to an end however, inasmuch as CBQ is also appealing
the decision rejecting confusion of its mark based on section 16(3)(a) of the TMA.
[76]
In Pictou Landing, Justice Stratas
concluded at paragraph 9 that for purposes of an intervention, the proposed
intervener need only have a “genuine interest” in the precise issues upon which
the case is likely to turn. He concluded that the requirement of “directly
affected” would provide full party status, which I understand refers to Rule
303(1)(a). He also pointed out that all other jurisdictions in Canada set
requirements for interveners at a lower but still meaningful level.
[77]
Justice Nadon did not comment specifically on
the issue of moderating the first factor of the
Rothmans, Benson & Hedges test from
being “directly affected” to having a “genuine interest” in the relevant
issues. As noted above, he concluded that the differences between the two
decisions were not “of any substance.” However, in Bauer FCA, when
considering the first factor, he posed the question whether CCM would be
“directly affected” by the outcome of the section 45 proceedings, which he
answered by stating that “it is affected in a
certain way,” i.e. that the results of Bauer’s
trade-mark being expunged is a conclusion that would “be helpful to CCM in Bauer’s infringement action.”
[78]
He went no further in his
analysis because he concluded that
CCM’s purpose was to gain a tactical advantage, and thereby not a factor
promoting intervention.
[79]
In considering Justice
Nadon’s carefully worded decision, I conclude that the Court of Appeal was
reluctant to adopt the “genuine interest” standard for intervention in this
matter, even though it acknowledged that there were no substantial differences
between the Rothmans, Benson & Hedges factors and those expounded by
Justice Stratas in Pictou Landing.
[80]
My expectation is that this
reluctance stems from the fact that Bauer FCA, like this case,
was not a true intervention situation as in Pictou Landing, but in
reality a request to be substituted for another party. Based upon the Siemens
decision and remarks in Bauer FCA, the Court of Appeal is demonstrating
an aversion to permit interventions in the nature of substitutions, except in
circumstances involving the interests of justice writ large which were not met
in that section 45 appeal.
[81]
In such circumstances, I am
limited in relying upon the first factor without further direction from the
Court of Appeal. Nevertheless, the logic in Pictou Landing is compelling
that in the same proceeding the same test cannot apply for adding a party as is
used as a factor for intervention, as it would render intervention redundant.
[82]
Parroting somewhat Justice
Nadon’s analysis of the first factor in Bauer FCA, I conclude that Dallevigne would be affected by the
outcome in the section 45 proceedings, but more significantly than was the case
in the Bauer FCA proceedings, as the opposition appeal appears veritably
to turn on the expungement decision if the Registrar’s decision is any
indicator. In this manner, the objective to intervene goes beyond providing Dallevigne with a mere tactical advantage in the opposition appeal.
[83]
Overall, I conclude that at
a minimum, the first Rothmans, Benson & Hedges factor should sustain
Dallevigne’s request for
intervention, if otherwise supported by the interests of justice.
(c)
Factor 3: an Apparent Lack of Any Other
Reasonable, or Efficient Means to Submit the Question to the Court
[84]
In Bauer FCA, the
Court of Appeal concluded that there was a reasonable or efficient means to
submit the question before the Court, inasmuch as it was found by all three
decision-making levels of the Court that the ongoing infringement proceeding
where the issue was in play was the preferred venue. I have already commented
on the correctness of the Prothonotary’s decision in distinguishing this fact
situation, when there is no other ongoing proceeding, where the validity of the
impugned mark is in issue.
[85]
Justice Nadon also pointed
out in Bauer FCA that CCM could have requested the Registrar to give
Bauer a section 45 Notice at any time as a further reason why Bauer had other
reasonable or efficient means to submit the question to the Court. It appears however,
that the Court did not have before it the evidence presented to the
Prothonotary pertaining to the Practice Notice indicating that the Registrar
would not likely have issued a section 45 Notice where the trade-mark
registration was already the subject of a proceeding
pending before the Registrar. Dallevigne relies on this provision. It also
points out that in CBQ’s opposition against its mark, by the time pleadings
were concluded on June 20, 2013 Smart & Biggar had already moved to expunge
CBQ’s mark.
[86]
After Bauer FCA, the application of the Practice
Notice may well have to change to allow parallel expungement requests for the
same mark. It now appears to be the only means by which another competitive
trade-mark owner may maintain rights at the appeal level to meet the
contingency of the initial party requesting expungement succeeding but not
defending the appeal. I also imagine that the Registrar would also want the
Court to allow the substitution of competitive trade-mark owners when a
successful respondent leaves the scene to ensure the best possible case being
presented to the Federal Court in order to uphold its decision.
[87]
Whatever the future impact of the Bauer FCA
decision on the future application of the Practice Notice, I conclude that
Dallevigne did not have any realistic means to file a similar section 45
request under the summary dismissal regime in force by the Practice
Notice. Accordingly, I conclude that the Prothonotary did not err in
considering the Practice Notice as an important factor in permitting an
intervention in the interests of justice when Dallevigne reasonably believed
that it had no means to protect its interest under section 45.
(d)
Factor 2: the Existence of a Justiciable Issue
and a Veritable Public Interest
[88]
It was recognized in Bauer FCA that based
on precedent there exists a justiciable issue and a veritable public interest
concerning section 45 proceedings. The public interest pervading the provision
however, does not rise to the same level of that affecting large segments of the
population or raising constitutional issues. In Bauer FCA, the Court
concluded that the public aspect to section 45 proceedings was a factor in
favour of Bauer’s intervention, but that it did not outweigh the other factors.
(e)
Factor 4: Is the Position of the Proposed
Intervener Adequately Defended by One of the Parties to the Case?
[89]
Justice Nadon similarly acknowledged that this
factor obviously favoured Bauer as there was no other party in the case to
defend the appeal.
(f)
Factor 5: Are the Interests of Justice Better
Served by the Intervention of the Proposed Intervener?
[90]
In responding to this question, I note that both
parties obviously consider the absence of a respondent in this appeal to be a
significant factor. Dallevigne sought and now defends most vigorously its right
to intervene to protect a decision which positively supports its economic
interests and which it does not wish to have jeopardized by the absence of someone
to defend the Registrar’s decision.
[91]
Conversely, CBQ resisted and continues to resist
with similar vigour its right to appeal the Registrar’s decision without having
to face a respondent challenging its arguments. However, it cannot argue that
it would be prejudiced by Dallevigne’s intervention, when under normal
circumstances Smart & Biggar would have contested the appeal in
accordance with the normal practices applying to adversarial proceedings in
Canada. I would think that the interests of justice concerning this factor are
better served by Dallevigne substituting for a successful absent respondent
than are presented by having no respondent to uphold the Registrar’s decision.
(g)
Factor 6: Can the Court Hear and Decide the
Cause on its Merits Without the Proposed Intervener?
[92]
In Bauer FCA, the Court recognized that a
respondent defending the appeal would be helpful to the Court but in the
circumstances did not find the factor would tip the scale in favour of
intervention. Diminishing the impact of this factor was related to the summary
and highly factual nature of the section 45 proceeding which the court
concluded would likely render the absence of counsel for the respondent less of
a problem based on the experience of this situation occurring on other
occasions.
[93]
Nevertheless, I do point out that whatever the
confidence of the Court in being able to determine this matter without the
assistance of a respondent, that view is clearly not shared by the parties as
is attested to by the vigour of the contest over Dallevigne’s right to
intervene.
[94]
Moreover, it is to be recalled that the
Prothonotary granted leave to Dallevigne to cross-examine Ms. Valérie
Masse on her affidavit filed with the Registrar. He also indicated that if
Dallevigne was not permitted to intervene [cross-examination is a right if
added as a party] “CBQ will be in a position to present
its expungement appeal without any potential challenge by cross examination,
or submissions from Smart & Biggar [emphasis added].” My order will
uphold Dallevigne‘s entitlement to cross-examination in the interests of
justice.
[95]
While perhaps no prejudice will be suffered by
the absence of counsel for the Respondent Smart & Biggar, I do not see how
the Court could make up for the absence of evidence that might arise from the
cross examination on CBQ’s affidavit. Missing evidence, that otherwise could be
available by permitting the intervention, would potentially prevent the Court
from hearing and deciding the case on its merits without the proposed
intervener.
(4)
Conclusion on Intervention
[96]
I find that the Prothonotary’s grounds to permit
Dallevigne to intervene are supported by the Court’s analysis of the Bauer
FCA factors governing intervention, all of which appear to support
intervention. Taking into consideration the factors the Prothonotary raised to
distinguish his decision in Bauer, they appear to apply in the interests
of justice in this matter, to wit:
1. Dallevigne would not have been able to avail itself of section 45 to
bring proceedings to expunge the impugned mark;
2. there were no other alternative means reasonably available to
challenge the mark;
3. the record presented on appeal may be deficient due to the lack of
cross examination rights that otherwise would be available by intervention;
4. Dallevigne has a genuine economic interest in the outcome and its
presence will assist the Court in determining the factual and legal issues
related to the proceeding;
5. the absence of tactical advantages to Dallevigne by intervening; and
6. no broad precedent would arise from the decision.
[97]
Although not necessary for my decision, I conclude
that the intervention of Dallevigne is further supported by the intention underlying
section 45 proceedings as including a means to ensure that Dallevigne suffers
no unfair competitive advantage by a mark determined on a prima facie basis
to be invalid remaining on the register, due to the absence of adversarial
procedures on the appeal of the Registrar’s decision expunging CBQ’s mark.
THIS COURT ORDERS that:
- CBQ’s appeal is allowed setting aside the
Prothonotary’s order adding Dallevigne as a party respondent to the
appeal, but is dismissed with respect to the Prothonotary’s alternative
grounds allowing Dallevigne to intervene in the appeal, which intervention
is hereby ordered mutatis mutandis with the other orders of the
Prothonotary dated February 5, 2016;
- The style of cause is amended to strike Dallevigne
as a Respondent, but adding it as an Intervenor; and
- Dallevigne is entitled to its costs, which if not
agreed upon by the parties, shall be 11assessed in accordance with Tariff B
of the Rules under Column III.
"Peter Annis"
APPENDIX A
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Federal Courts Act
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Loi sur les Cours fédérales
|
|
50 (1) The Federal Court of Appeal or the Federal Court may, in its
discretion, stay proceedings in any cause or matter
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50 (1) La
Cour d’appel fédérale et la Cour fédérale ont le pouvoir discrétionnaire de
suspendre les procédures dans toute affaire :
|
|
(a) on the ground that the claim is being proceeded with in another
court or jurisdiction; or
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a) au
motif que la demande est en instance devant un autre tribunal;
|
|
(b) where for any other reason it is in the interest of justice that
the proceedings be stayed.
[…]
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b)
lorsque, pour quelque autre raison, l’intérêt de la justice l’exige.
[…]
|
|
Federal Courts Rules
|
Règles des Cours fédérales
|
|
3 These
Rules shall be interpreted and applied so as to secure the just, most
expeditious and least expensive determination of every proceeding on its
merits.
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3 Les
présentes règles sont interprétées et appliquées de façon à permettre
d’apporter une solution au litige qui soit juste et la plus expéditive et
économique possible.
|
|
51 (1) An order of a prothonotary may be appealed by a motion to a judge
of the Federal Court.
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51 (1)
L’ordonnance du protonotaire peut être portée en appel par voie de requête
présentée à un juge de la Cour fédérale.
|
|
104 (1) At any time, the Court may
|
104 (1) La
Cour peut, à tout moment, ordonner :
|
|
(a) order that a person who is not a proper or necessary party shall
cease to be a party; or
|
a)
qu’une personne constituée erronément comme partie ou une partie dont la
présence n’est pas nécessaire au règlement des questions en litige soit mise
hors de cause;
|
|
(b) order that a person who ought to have been joined as a party or
whose presence before the Court is necessary to ensure that all matters in
dispute in the proceeding may be effectually and completely determined be
added as a party, but no person shall be added as a plaintiff or applicant
without his or her consent, signified in writing or in such other manner as
the Court may order.
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b) que
soit constituée comme partie à l’instance toute personne qui aurait dû l’être
ou dont la présence devant la Cour est nécessaire pour assurer une
instruction complète et le règlement des questions en litige dans l’instance;
toutefois, nul ne peut être constitué codemandeur sans son consentement,
lequel est notifié par écrit ou de telle autre manière que la Cour ordonne.
|
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109 (1) The Court may, on motion, grant leave to any person to intervene
in a proceeding.
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109 (1) La
Cour peut, sur requête, autoriser toute personne à intervenir dans une
instance.
|
|
300
This Part applies to
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300 La
présente partie s’applique :
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(a) applications for judicial review of administrative action,
including applications under section 18.1 or 28 of the Act, unless the Court
directs under subsection 18.4(2) of the Act that the application be treated
and proceeded with as an action;
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a) aux
demandes de contrôle judiciaire de mesures administratives, y compris les
demandes présentées en vertu des articles 18.1 ou 28 de la Loi, à moins que
la Cour n’ordonne, en vertu du paragraphe 18.4(2) de la Loi, de les
instruire comme des actions;
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|
(b) proceedings required or permitted by or under an Act of
Parliament to be brought by application, motion, originating notice of
motion, originating summons or petition or to be determined in a summary way,
other than applications under subsection 33(1) of the Marine Liability Act;
|
b) aux
instances engagées sous le régime d’une loi fédérale ou d’un texte
d’application de celle-ci qui en prévoit ou en autorise l’introduction par
voie de demande, de requête, d’avis de requête introductif d’instance,
d’assignation introductive d’instance ou de pétition, ou le règlement par
procédure sommaire, à l’exception des demandes faites en vertu du paragraphe
33(1) de la Loi sur la responsabilité en matière maritime;
|
|
(c) appeals under subsection 14(5) of the Citizenship Act;
|
c) aux
appels interjetés en vertu du paragraphe 14(5) de la Loi sur la
citoyenneté;
|
|
(d) appeals under section 56 of the Trade-marks Act;
[…]
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d) aux
appels interjetés en vertu de l’article 56 de la Loi sur les marques de
commerce;
[…]
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|
301
An application shall be commenced by a notice of application in Form 301,
setting out
|
301 La
demande est introduite par un avis de demande, établi selon la formule 301,
qui contient les renseignements suivants :
|
|
(a) the name of the court to which the application is addressed;
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a) le
nom de la cour à laquelle la demande est adressée;
|
|
(b) the names of the applicant
and respondent;
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b) les
noms du demandeur et du défendeur;
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|
(c) where the application is an application for judicial review,
(i) the tribunal in respect of which the application is made, and
(ii) the date and details of any order in respect of which judicial
review is sought and the date on which it was first communicated to the
applicant;
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c) s’il s’agit
d’une demande de contrôle judiciaire :
(i) le
nom de l’office fédéral visé par la demande,
(ii) le
cas échéant, la date et les particularités de l’ordonnance qui fait l’objet
de la demande ainsi que la date de la première communication de l’ordonnance
au demandeur;
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|
(d) a precise statement of the relief sought;
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d) un
énoncé précis de la réparation demandée;
|
|
(e) a complete and concise statement of the grounds intended to be
argued, including a reference to any statutory provision or rule to be relied
on; and
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e) un
énoncé complet et concis des motifs invoqués, avec mention de toute
disposition législative ou règle applicable;
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|
(f) a list of the documentary evidence to be used at the hearing of
the application
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f) la
liste des documents qui seront utilisés en preuve à l’audition de la demande.
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303 (1) Subject to subsection (2), an applicant shall name as a
respondent every person
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303 (1)
Sous réserve du paragraphe (2), le demandeur désigne à titre de défendeur :
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|
(a) directly affected by the order sought in the application, other
than a tribunal in respect of which the application is brought; […]
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a) toute
personne directement touchée par l’ordonnance recherchée, autre que l’office
fédéral visé par la demande;
|
|
Trade-marks Act
|
Loi sur les marques de commerce
|
|
9 (1)
No person shall adopt in connection with a business, as a trade-mark or
otherwise, any mark consisting of, or so nearly resembling as to be likely to
be mistaken for,
[…]
|
9 (1) Nul
ne peut adopter à l’égard d’une entreprise, comme marque de commerce ou
autrement, une marque composée de ce qui suit, ou dont la ressemblance est
telle qu’on pourrait vraisemblablement la confondre avec ce qui suit :
[…]
|
|
(n) any badge, crest, emblem or mark
[…]
|
n) tout
insigne, écusson, marque ou emblème :
[…]
|
|
(iii) adopted and used by any public authority, in Canada as an
official mark for goods or services,
in respect of which the
Registrar has, at the request of Her Majesty or of the university or public
authority, as the case may be, given public notice of its adoption and use;
|
(iii) adopté
et employé par une autorité publique au Canada comme marque officielle pour
des produits ou services,
à l’égard duquel le registraire, sur la
demande de Sa Majesté ou de l’université ou autorité publique, selon le cas,
a donné un avis public d’adoption et emploi;
|
|
16 (3) Any applicant who has filed an application in accordance with
section 30 for registration of a proposed trade-mark that is registrable is
entitled, subject to sections 38 and 40, to secure its registration in
respect of the goods or services specified in the application, unless at the
date of filing of the application it was confusing with
|
16 (3)
Tout requérant qui a produit une demande selon l’article 30 en vue de
l’enregistrement d’une marque de commerce projetée et enregistrable, a droit,
sous réserve des articles 38 et 40, d’en obtenir l’enregistrement à l’égard
des produits ou services spécifiés dans la demande, à moins que, à la date de
production de la demande, elle n’ait créé de la confusion :
|
|
(a) a trade-mark that had been previously used in Canada or made
known in Canada by any other person;
|
a) soit
avec une marque de commerce antérieurement employée ou révélée au Canada par
une autre personne;
|
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45 (1) The Registrar may at any time and, at the written request made
after three years from the date of the registration of a trade-mark by any
person who pays the prescribed fee shall, unless the Registrar sees good
reason to the contrary, give notice to the registered owner of the trade-mark
requiring the registered owner to furnish within three months an affidavit or
a statutory declaration showing, with respect to each of the goods or
services specified in the registration, whether the trade-mark was in use in
Canada at any time during the three year period immediately preceding the
date of the notice and, if not, the date when it was last so in use and the
reason for the absence of such use since that date.
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45 (1) Le
registraire peut, et doit sur demande écrite présentée après trois années à
compter de la date de l’enregistrement d’une marque de commerce, par une
personne qui verse les droits prescrits, à moins qu’il ne voie une raison
valable à l’effet contraire, donner au propriétaire inscrit un avis lui
enjoignant de fournir, dans les trois mois, un affidavit ou une déclaration
solennelle indiquant, à l’égard de chacun des produits ou de chacun des
services que spécifie l’enregistrement, si la marque de commerce a été
employée au Canada à un moment quelconque au cours des trois ans précédant la
date de l’avis et, dans la négative, la date où elle a été ainsi employée en
dernier lieu et la raison de son défaut d’emploi depuis cette date.
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(2)
The Registrar shall not receive any evidence other than the affidavit or
statutory declaration, but may hear representations made by or on behalf of
the registered owner of the trade-mark or by or on behalf of the person at
whose request the notice was given.
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(2) Le
registraire ne peut recevoir aucune preuve autre que cet affidavit ou cette
déclaration solennelle, mais il peut entendre des représentations faites par
le propriétaire inscrit de la marque de commerce ou pour celui-ci ou par la
personne à la demande de qui l’avis a été donné ou pour celle-ci.
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(3)
Where, by reason of the evidence furnished to the Registrar or the failure to
furnish any evidence, it appears to the Registrar that a trade-mark, either
with respect to all of the goods or services specified in the registration or
with respect to any of those goods or services, was not used in Canada at any
time during the three year period immediately preceding the date of the
notice and that the absence of use has not been due to special circumstances
that excuse the absence of use, the registration of the trade-mark is liable
to be expunged or amended accordingly.
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(3)
Lorsqu’il apparaît au registraire, en raison de la preuve qui lui est fournie
ou du défaut de fournir une telle preuve, que la marque de commerce, soit à
l’égard de la totalité des produits ou services spécifiés dans
l’enregistrement, soit à l’égard de l’un de ces produits ou de l’un de ces
services, n’a été employée au Canada à aucun moment au cours des trois ans
précédant la date de l’avis et que le défaut d’emploi n’a pas été attribuable
à des circonstances spéciales qui le justifient, l’enregistrement de cette
marque de commerce est susceptible de radiation ou de modification en
conséquence.
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(4)
When the Registrar reaches a decision whether or not the registration of a
trade-mark ought to be expunged or amended, he shall give notice of his
decision with the reasons therefor to the registered owner of the trade-mark
and to the person at whose request the notice referred to in subsection (1)
was given.
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(4)
Lorsque le registraire décide ou non de radier ou de modifier
l’enregistrement de la marque de commerce, il notifie sa décision, avec les
motifs pertinents, au propriétaire inscrit de la marque de commerce et à la
personne à la demande de qui l’avis visé au paragraphe (1) a été donné.
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(5)
The Registrar shall act in accordance with his decision if no appeal
therefrom is taken within the time limited by this Act or, if an appeal is
taken, shall act in accordance with the final judgment given in the appeal.
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(5) Le
registraire agit en conformité avec sa décision si aucun appel n’en est interjeté
dans le délai prévu par la présente loi ou, si un appel est interjeté, il
agit en conformité avec le jugement définitif rendu dans cet appel.
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56 (1) An appeal lies to the Federal Court from any decision of the
Registrar under this Act within two months from the date on which notice of
the decision was dispatched by the Registrar or within such further time as
the Court may allow, either before or after the expiration of the two months.
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56 (1)
Appel de toute décision rendue par le registraire, sous le régime de la
présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui
suivent la date où le registraire a expédié l’avis de la décision ou dans tel
délai supplémentaire accordé par le tribunal, soit avant, soit après
l’expiration des deux mois.
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(2)
An appeal under subsection (1) shall be made by way of notice of appeal filed
with the Registrar and in the Federal Court.
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(2)
L’appel est interjeté au moyen d’un avis d’appel produit au bureau du
registraire et à la Cour fédérale.
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(3)
The appellant shall, within the time limited or allowed by subsection (1),
send a copy of the notice by registered mail to the registered owner of any
trade-mark that has been referred to by the Registrar in the decision
complained of and to every other person who was entitled to notice of the
decision.
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(3)
L’appelant envoie, dans le délai établi ou accordé par le paragraphe (1), par
courrier recommandé, une copie de l’avis au propriétaire inscrit de toute
marque de commerce que le registraire a mentionnée dans la décision sur
laquelle porte la plainte et à toute autre personne qui avait droit à un avis
de cette décision.
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(4)
The Federal Court may direct that public notice of the hearing of an appeal
under subsection (1) and of the matters at issue therein be given in such
manner as it deems proper.
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(4) Le
tribunal peut ordonner qu’un avis public de l’audition de l’appel et des
matières en litige dans cet appel soit donné de la manière qu’il juge
opportune.
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(5)
On an appeal under subsection (1), evidence in addition to that adduced
before the Registrar may be adduced and the Federal Court may exercise any
discretion vested in the Registrar.
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(5) Lors
de l’appel, il peut être apporté une preuve en plus de celle qui a été
fournie devant le registraire, et le tribunal peut exercer toute discrétion
dont le registraire est investi.
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57 (1) The Federal Court has exclusive original jurisdiction, on the
application of the Registrar or of any person interested, to order that any
entry in the register be struck out or amended on the ground that at the date
of the application the entry as it appears on the register does not
accurately express or define the existing rights of the person appearing to
be the registered owner of the mark.
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57 (1) La
Cour fédérale a une compétence initiale exclusive, sur demande du registraire
ou de toute personne intéressée, pour ordonner qu’une inscription dans le
registre soit biffée ou modifiée, parce que, à la date de cette demande,
l’inscription figurant au registre n’exprime ou ne définit pas exactement les
droits existants de la personne paraissant être le propriétaire inscrit de la
marque.
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(2)
No person is entitled to institute under this section any proceeding calling
into question any decision given by the Registrar of which that person had
express notice and from which he had a right to appeal.
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(2)
Personne n’a le droit d’intenter, en vertu du présent article, des procédures
mettant en question une décision rendue par le registraire, de laquelle cette
personne avait reçu un avis formel et dont elle avait le droit d’interjeter
appel.
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