[1] This is an appeal from the August 7, 2001 order of Justice Blais. He dismissed an application for judicial review of the decision of the Registrar of Trade-Marks to give public notice under subparagraph 9(1)(n)(iii) of the Trade-Marks Act, R.S.C. 1985, c. T-13, of the Crown's adoption and use of NETFILE & design as an official mark "for services: Filing of tax related information with Revenue Canada or the Canada Customs and Revenue Agency" (Trade-Marks Journal, Vol. 46, No. 2357, December 29, 1999, page 155, Registration Number 911,345). The reasons for decision of Justice Blais are reported as FileNet Corp. v. Canada (Registrar of Trade-marks) (T.D.), [2002] 1 F.C. 266, (2001) 209 F.T.R. 195, [2001] F.C.J. No. 1223 (QL), (2001) 13 C.P.R. (4th) 385.

[2] The portions of section 9 that are relevant to this case read as follows:

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 wares or services,	(iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou 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 ....	à l'égard duquel le registraire, sur la demande de Sa Majesté our de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi ....

[3] When Filenet commenced its application for judicial review, it simultaneously commenced an appeal under section 56 of the Trade-Marks Act. Justice Blais concluded that a section 56 appeal was not open to Filenet, but in any event he dismissed both the application for judicial review and the section 56 appeal. Filenet appealed both decisions.

[4] This Court subsequently held inOntario Assn. of Architects v. Assn. of Architectural Technologists of Ontario (2002), 291 N.R. 61, 19 C.P.R. (4th) 417, [2002] F.C.J. No. 813 (QL) (F.C.A.) that a decision of the Registrar under section 9 cannot be appealed under section 56 by a person in the position of Filenet. Filenet then discontinued its appeal of Justice Blais' decision on the section 56 appeal. The Court now has before it only the appeal of Justice Blais' dismissal of the application for judicial review.

[5] Filenet is the licensee of the trade-mark FILENET, which was registered in 1989 for use in association with computer hardware, software and peripherals, automated office systems for the storage, retrieval, handling and processing of business documents.

[6] The words "NETFILE" (in English) and "IMPÔTNET" (in French) designate a program operated by the Canada Customs and Revenue Agency (CCRA) to facilitate the filing of income tax returns via the Internet. The official mark that is the subject of this case consists of a logo that incorporates those words.

[7] It is now well established that the Registrar has no discretion to refuse a request under section 9 to give public notice of the adoption and use of an official mark, once the party making the request establishes that the statutory criteria have been met: Ontario Assn. of Architects (supra), Mihaljevic v. British Columbia (1988), 22 F.T.R. 59, 23 C.P.R. (3d) 80 (F.C.T.D.), affirmed (1990), 116 N.R. 218, 34 C.P.R. (3d) 54 (F.C.A.). One of the statutory criteria is that the request for a public notice under section 9 must be made by Her Majesty, a university or a public authority, depending on the circumstances. Another is that the party making the request must adopt and use the official mark.

[8] In determining whether the statutory criteria are met, the Registrar is entitled but not bound to rely on the representations submitted with the request for publication. If the Registrar decides to gives the public notice as requested, a person who seeks judicial review of the Registrar's decision may adduce evidence that the official mark was not adopted or used. In that event, the party that requested the public notice has the burden of proving that the official mark was adopted and used by the date of the public notice.

[9] In this case, Filenet properly put adoption and use in issue, and the Crown submitted evidence as to adoption and use in the form of the affidavit of a Crown employee, who was cross-examined by counsel for Filenet. Justice Blais concluded that the Crown had adopted and used the official mark prior to December 29, 1999, the date of the public notice. The use consisted of advertising the mark on the CCRA website in connection with the internet filing service. That was a sufficient use even though returns could not be filed until January 2000 and were not filed until February 2000. In my view the conclusion of Justice Blais must stand. It is correct in law and is based on facts that are supported by the evidence.

[10] I do not propose to discuss all of the arguments made in this appeal. I will, however, comment on two of them.

[11] First, there is the question of what constitutes "adoption" of an official mark. Counsel for Filenet argued that the official mark in question had never been adopted because there is no formal document in the nature of a resolution of a board of directors or government body that constitutes evidence of its formal adoption. However, he was unable to point to any law or regulation that mandates any particular procedure for the adoption of an official mark by a Minister or agency of the Crown. In my view, the question of adoption of an official mark is a question of fact. In this case, and I would expect in most cases, that fact is sufficiently proved by the request to the Registrar to give public notice under section 9 unless there is some cogent reason to believe that the request was not authorized. There is no such reason here.

[12] Second, there is the question, raised by counsel for the Crown, of whether Filenet had the status to challenge the section 9 notice. In an application for judicial review, anyone has the requisite status who is "directly affected by the matter in respect of which relief is sought" (section 18.1 of the Federal Court Act, R.S.C. 1985, c. F-7). Filenet submitted evidence on that point which Justice Blais accepted as establishing a sufficient interest to permit the matter to be heard. In my view he did not err in reaching that conclusion. However, I do not accept the argument of counsel for Filenet that, although Justice Blais did not say that the marks and names FILENET and NETFILE are confusing, he must necessarily have implied it. The evidence before Justice Blais would not have supported any such conclusion.

[13] For these reasons, this appeal should be dismissed with costs.

"K. Sharlow"

J.A.

"I agree

A.M. Linden J.A."

"I agree

J. Edgar Sexton J.A."

FEDERAL COURT OF CANADA

Names of Counsel and Solicitors of Record

DOCKET: A-589-01

STYLE OF CAUSE: FileNet Corporation v. the Registrar of Trade-Marks et al

DATE OF HEARING: October 24, 2002.

PLACE OF HEARING: Toronto, Ontario.

REASONS FOR JUDGMENT BY: Sharlow J.A.

CONCURRED IN BY: Linden, Sexton JJA

DATE OF REASONS: October 29, 2002

APPEARANCES BY:

Mr. Kenneth D. McKay For the Appellant

Ms. F.B. Woyiwada For the Respondent

SOLICITORS OF RECORD:

Sim, Hughes, Ashton & McKay

Barristers & Solicitors

Toronto, Ontario For the Appellant

Morris Rosenberg

Deputy Attorney General of Canada

Ottawa, Ontario For the Respondent

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Filenet Corp. v. Registrar of Trade Marks, 2002 FCA 418

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2002 FCA 418