Date: 20010222
Docket: A-496-99
Neutral citation: 2001 FCA 36
EVANS J.A.
SHARLOW J.A.
BETWEEN:
BRAIN TUMOR FOUNDATION OF CANADA
Appellant
- and -
THE STARLIGHT FOUNDATION
Respondent
Heard at Toronto, Ontario, Thursday, February 22, 2001
Judgment delivered from the Bench at Toronto, Ontario,
on Thursday, February 22, 2001
REASONS FOR JUDGMENT PRONOUNCED BY: RICHARD C.J.
Date: 20010222
Docket: A-496-99
Neutral citation: 2001 FCA 36
EVANS J.A.
SHARLOW J.A.
BETWEEN:
BRAIN TUMOR FOUNDATION OF CANADA
Appellant
- and -
THE STARLIGHT FOUNDATION
Respondent
REASONS FOR JUDGMENT
(Delivered from the Bench at Toronto, Ontario
on Thursday, February 22, 2001)
RICHARD C.J.
| _. This is an appeal from the decision of a judge of the Trial Division upholding the decision of the Prothonotary to strike out the affidavit of the appellant in a proceeding under subsection 56(5) of the Trade-marks Act (the "Act"), R.S.C. 1985, c. T-13, which reads as follows: |
| 56. (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.
|
56. (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.
|
| _. The Prothonotary's decision was based on the ground that evidence cannot be filed under subsection 56(5) of the Act by a party to the proceeding where no evidence was filed by that party in the original proceeding before the Registrar of Trade-marks. |
| _. In Austin Nichols & Co., Inc. v. Cinnabon Inc. (1998), 82 C.P.R. (3d) 513 (F.C.A.), this Court held that the words "in addition to" do not imply that there had to be prior evidence to which further evidence could be added. |
| _. Décary J.A., writing for the Court, analysed the appeal process set out in section 56 and stated in part: |
| Section 56 is a provision of general application. The appeal process it establishes is not qualified in any way; it applies to all appeals by whatever party from any proceeding before the Registrar. It is not directed solely to decisions made under section 45 nor is it reserved to registered owners who have filed some evidence in the proceeding before the Registrar. The words used are meant to be wide enough to encompass any peculiarity associated with the particular type of proceeding at issue in the appeal. |
| The role of the court sitting in appeal of a decision of the Registrar is made abundantly clear by the last words of subsection 56(5). In giving the Court the same discretion as that "vested in the Registrar", Parliament has recognized that the Court sitting in appeal is expected to be able to decide the issues as if they were tried for the first time before the Court. This, in my view, suggests that a registered owner has in appeal the same opportunity to file evidence he had before the Registrar. |
| _. Accordingly, the appeal process in section 56 is of general application and applies to all appeals from any proceedings before the Registrar, including this proceeding. |
| _. The Austin Nichols' case involved an expungement proceeding. It was applied by McGillis J. in an opposition proceeding in Canadian Tire Corp. v. Foxco Ltd., [2000] F.C.J. No 85 (Q.L.) (T.D.). |
| _. The appeal will be allowed, the order striking out the affidavit of Sue Barnes sworn on May 28, 1999 is set aside. There will be no order as to costs. |
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| STYLE OF CAUSE: BRAIN TUMOR FOUNDATION OF CANADA |
Appellant
THE STARLIGHT FOUNDATION
Respondent
DATE OF HEARING: THURSDAY, FEBRUARY 22, 2001
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR JUDGMENT
| PRONOUNCED BY: RICHARD C.J. |
Delivered from the Bench at Toronto, Ontario on Thursday, February 22, 2001
APPEARANCES BY: Mr. Serge Anissimoff
Ms. Virginia Lam
SOLICITORS OF RECORD: Anissimoff & Associates
Barristers & Solicitors
235 North Centre Road, Suite 201
London, Ontario
| 1000 de la Gauchetière Street West, Suite 2900 |
FEDERAL COURT OF APPEAL
Date: 20010222
Docket: A-496-99
BETWEEN:
| BRAIN TUMOR FOUNDATION OF CANADA |
Appellant
THE STARLIGHT FOUNDATION
Respondent
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