Effigi Inc. v. Canada (Attorney General), 2004 FC 1000

                                                                                                                                  Date: 20040716

                                                                                                                             Docket: T-2257-03

Citation: 2004 FC 1000

Ottawa, Ontario, the 16th day of July 2004

PRESENT:      THE HONOURABLE MR. JUSTICE SHORE

BETWEEN:

EFFIGI INC.

Applicant

and

ATTORNEY GENERAL OF CANADA

Respondent

REASONS FOR JUDGMENT AND JUDGMENT

INTRODUCTION

[1]         A child is born and thus receives the gift of life; however, for the child to have official status the birth must be announced, and that requires registration.

Similarly, a work appears through its production; but to be recognized officially, a trade-mark is necessary and that requires registration.

LEGAL PROCEEDINGS

[2]         This is an appeal, pursuant to section 56 of the Trade-marks Act,^[1] of the decision of the Registrar of Trade-marks (the Registrar), dated November 14, 2003, rejecting the application for registration 1,087,282 of the mark MAISON UNGAVA under paragraph 37(1)(c) of the Act.

[3]         The applicant asks that the Registrar's decision be overturned. It is therefore asking this Honourable Court to return the matter of application 1,087,282 to the Registrar for him to approve the publication and advertisement of this application 1,087,282 in relation to the trade-mark MAISON UNGAVA in the Trade Marks Journal.

FACTS

[4]         On December 19, 2000, the applicant, Effigi Inc. (Effigi), filed an application for registration under number 1,087,282 for the trade-mark MAISON UNGAVA, with a view to the proposed use of this trade-mark in Canada in association with the following wares: bed clothes, bath linen and table linen.

[5]         On October 19, 2001, Tricorn Investments Canada Ltd. filed an application for registration for the mark UNGAVA on the basis of use of this mark in Canada since 1981 in association with the following wares: household linen, bed clothes and window coverings.

REGISTRAR'S DECISION

[6]         On May 2, 2002, the examiner in the trade-marks office (the examiner) issued an initial examination report pursuant to the filing of Effigi's application for registration dated December 19, 2000. In this report, the examiner indicated that, having regard to the provisions of section 16 of the Act, Effigi did not appear to be the person entitled to the registration of the MAISON UNGAVA mark, since the date of filing was subsequent to the date of first use, specifically October 1981, disclosed in the information pertaining to application 1,118,871, likewise pending and allegedly confusing.

[7]         On August 12, 2002, Effigi filed a reply to the examiner's report, disputing the Registrar's objection. In its reply, the applicant alleges that in Unitel International Inc. v. Canada (Register of Trade-marks),^[2] the Court of Appeal found that the alleged dates of first use in two pending applications for registration were irrelevant when applying paragraph 37(1)(c) of the Act.

[8]         On September 20, 2002, the examiner issued a second examination report. He concluded that Unitel International Inc. C.A. did not apply to Effigi's situation, stating:

[translation]

The Office thinks the Unitel decision of the Federal Court of Appeal is consistent with the longstanding practice of the Trade-marks Office in relation to paragraph 37(1)(c). Considering the facts in that case, the Court upheld the decision that, where two pending applications are confusing with each other, the application that has both a prior date of filing and a prior date of first use should be advertised, and the other one should be rejected in accordance with paragraph 37(1)(c). The judge's observation that "... the dates of first use are not a relevant consideration under paragraph 37(1)(c)" is considered obiter dicta and not binding upon the Office.^[3]

[9]         On January 16, 2003, the applicant responded to the second examination report by restating the position it had expressed on August 12, 2002.

[10]       On November 14, 2003, the Registrar rejected application for registration 1,087,282 in relation to the MAISON UNGAVA mark pursuant to paragraph 37(1)(c) of the Act. In his decision, the Registrar stated:

[translation]

... having regard to the provisions of paragraphs 37(1)(c) and 16(3)(a) of the Trade-marks Act, the applicant [Effigi] is not the person entitled to the registration of the MAISON UNGAVA trade-mark, because this trade-mark is confusing with another trade-mark for the registration of which an application is pending, namely UNGAVA (application no. 1,118,871), and because the UNGAVA trade-mark has been previously used in Canada by another person....^[4]

[11]       Insofar as the judgment in Unitel International Inc. CA. was concerned, the Registrar stated that it was "[translation] obiter dicta and not binding on the Office".^[5]

ISSUES

[12]       What is the standard of review on an appeal from the Registrar's decision?

[13]       Did the Registrar err in his interpretation and application of paragraph 37(1)(c) of the Act?

ANALYSIS

What is the standard of review on an appeal from the Registrar's decision?

[14]       The applicant submits that on an appeal from a decision of the Registrar involving a question of statutory construction, the applicable standard of review is that of correctness.^[6] In the case at bar, the issue is one of statutory interpretation and therefore the standard of review is that of correctness.

[15]       The respondent submits that, as a general rule, the standard of review of decisions of the Registrar, whether on questions of fact or questions of law, is that of reasonableness. However, when evidence is adduced in the Court, "the ... judge must come to his or her own conclusion as to the correctness of the Registrar's decision."^[7]

[16]       The respondent notes that the evidence that is adduced must have greater probative force than that of the evidence provided to the Registrar if the standard of review is to be changed.^[8] In this case, the respondent argues that the evidence does not have greater probative force than that of the evidence provided to the Registrar. The respondent further argues that the evidence adduced by the applicant concerns the files of several other applications for trade-mark registrations that have no relationship to this case.

[17]       The respondent further submits that none of the cases submitted by the applicant concerns a case in which an applicant who was first to file an application for registration had priority over another pending application for registration with a prior date of use and covering trade-marks that are confusing with each other.

[18]       The Court accepts the applicant's argument. United Grain Growers determines that in considering a question of statutory construction, the standard of review is that of correctness.

Did the Registrar err in his interpretation and application of paragraph 37(1)(c) of the Act?

[19]       Effigi argues that the Registrar erred in deciding that the provisions of subsection 16(3) of the Act supplemented those of paragraph 37(1)(c) when rejecting an application for registration at the level of the examination proceeding.

[20]       Effigi submits that the Registrar has no inherent authority, and that his jurisdiction is derived solely from the Act.^[9] More particularly, section 37 of the Act gives the Registrar the authority to decide, at the level of the examination proceeding, to reject an application for registration of a trade-mark.

[21]       In the case at bar, paragraphs 37(1)(a) and (b) are not applicable since the only issue for determination involves the interpretation of paragraph 37(1)(c). The applicant submits that the language of paragraph 37(1)(c) is clear: the Registrar shall reject an application for the registration of a trade-mark if he is satisfied that the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending.^[10]

[22]       The applicant also submits that the Court of Appeal considered this issue earlier in Unitel International Inc. C.A. The Court of Appeal, it says, held that under paragraph 37(1)(c), the only issue for determination is whether there is confusion between the applicant's mark and the mark for which an application for registration is already pending; the date at which the trade-mark was first used is irrelevant.^[11]

[23]       The respondent, on the other hand, systematically analyzes the Act and submits, as a result of this analysis, that the Registrar has authority to consider paragraph 16(3)©) of the Act when determining whether a trade-mark application should be rejected pursuant to section 37. In construing paragraph 37(1)(c), the respondent argues, it is necessary to read the paragraph according to the grammatical and ordinary sense of the words, in its context, in light of all the other relevant provisions of the Act, and harmoniously with the scheme and the object of the statute.^[12]

Grammatical and ordinary sense of the words

[24]       Paragraph 37(1)(c) reads:

[25]       The respondent argues that the word "pending" does not specify that the application filed previously must be accepted and the one filed later must be rejected. I agree with the respondent that the word "pending" does not specify how the Registrar should choose between two co-existing applications. The language of the paragraph is ambiguous, therefore.

[26]       The respondent cites the "Report of the Trade Mark Law Revision Committee"^[13] and John Osborne,^[14] who was a member of the committee, in support of his position. The report does not establish the respondent's position. Instead, it explains that the Registrar is not authorized to reject an application in favour of a trade-mark that is not registered or where an application for registration has not been filed. The report makes no mention of two co-existing applications.

[27]       One extract from John Osborne supports the respondent's submission. In R. v. Heywood,^[15] the Supreme Court of Canada, reviewing the admissibility of legislative debates, stated:

The admissibility of legislative debates to determine legislative intent in statutory construction is doubtful.... This Court has repeatedly held that legislative history is not admissible as proof of legislative intent in the construction of statutes....

It is apparent that legislative history may be admissible for the more general purpose of showing the mischief Parliament was attempting to remedy with the legislation....

Nonetheless there are persuasive reasons advanced which support the position that legislative history or debates are inadmissible as proof of legislative intent in statutory construction. Many of these same reasons are also put forward to demonstrate that such materials should be given little weight even in those cases where they are admitted. The main problem with the use of legislative history is its reliability. First, the intent of particular members of Parliament is not the same as the intent of the Parliament as a whole. Thus, it may be said that the corporate will of the legislature is only found in the text of provisions which are passed into law. ...^[16]

Judging from Heywood, the Supreme Court of Canada assigns little weight to historical evidence in the context of statutory interpretation.

Context of the statute

[28]       The respondent argues that another principle of statutory interpretation is applicable, namely that the same words should be given the same meaning in the Act as a whole.

[29]       The respondent notes that the phrase "the person entitled to registration of the trade-mark" in paragraph 37(1)(c) is also found in sections 18 and 38. Section 16 defines the phrase. Sections 16, 18 and 38 read as follows:

[30]       Section 16 of the Act sets out the conditions in which an applicant is "entitled" to the registration of a trade-mark. In particular, the trade-mark intended for registration cannot be confusing with some other trade-mark that was "previously used in Canada or made known in Canada by any other person".

[31]       Because sections 18 and 38 include the phrase "the person entitled to registration of the trade-mark", section 16 is used to interpret them.

[32]       The respondent argues that, in a similar way, paragraph 37(1)(c) includes this phrase and therefore section 16 should be used to interpret it.

[33]       I do not agree with this submission by the respondent. He is interpreting the phrase "the person entitled to registration of the trade-mark" in isolation instead of reading it in the context of paragraph 37(1)(c) of the Act. Unlike sections 18 and 38, paragraph 37(1)(c) describes the particular circumstances in which the applicant would be entitled to the registration of a trade-mark. It is therefore possible to understand paragraph 37(1)(c) without referring at all to section 16. But sections 18 and 38 are incomplete without reference to section 16.

[34]       Moreover, the purpose of paragraph 37(1)(c), like that of section 16, is to set out the conditions in which an applicant is "entitled" to the registration of a trade-mark. Consequently, section 16 does not assist in the interpretation of paragraph 37(1)(c).

[35]       Finally, section 16 itself confirms that it is applicable only after the Registrar has completed the examination process. Section 16 explains that an application for registration of a trade-mark must be rejected if the application is confusing with another trade-mark that was previously used by someone else or for which someone else has previously filed an application for registration. Subsections 16(4) and 16(5) set out the limitations on the application of subsections 16(2) and 16(3), namely, that the trade-mark of the other person must be "pending at the date of advertisement of the applicant's application in accordance with section 37". Thus subsections 16(4) and 16(5) indicate that section 16 does not apply to applications until the date of advertisement of the applicant's application. Since the examination process is conducted prior to the date of advertisement of the applicant's application, section 16 does not apply to the examination process.

Scheme and object of the Act

[36]       The respondent submits that in Canada, use is a linchpin in the acquisition, maintenance and enforcement of trade-mark rights. In the history of the common law, no right originates spontaneously in a trade-mark. It is through time and use that a trade-mark acquires sufficient value to give rise to certain rights.^[17]

[37]       The Act and its predecessors adopted from the common law use as the basis of the Act. Since the concept of use is so important in the Act, the Registrar evidently has jurisdiction to reject an application on the basis of use.

[38]       This argument is not persuasive. If that interpretation of the paragraph is correct, the Act establishes that the Registrar cannot, during the examination process, reject an application by virtue of the fact that someone else uses it. However, this becomes an important factor when there is an opposition. The Act does not overlook the issue of use, but considers it later in the process.

[39]       The applicant submits that the reason why the Registrar does not have jurisdiction to reject an application because someone else is using a trade-mark that may be confusing with the applicant's is that the Registrar does not have sufficient information to be able to determine whether the other person was using the trade-mark before the applicant filed its application.

[40]       I agree with the applicant. If the application for registration is based on use, under paragraph 30(b), the applicant, when filing the application, must explain for how long it has used the trade-mark. The applicant need not provide many particulars, however, and the Registrar is not authorized to request further information. Thus, during the examination process, the Registrar cannot make a complete decision.

[41]       The Registrar himself acknowledges this. In Unitel International Inc. v. Canada (Registrar of Trade-marks),^[18] the applicant filed an application for registration on June 14, 1990, based on a use dating back at least to July 8, 1985. The Registrar rejected this application because another company had filed an application for registration for a very similar trade-mark based on its use as early as September 19, 1977. The applicant, when communicating with the Registrar, argued that the other company had not used the trade-mark since September 19, 1977. The Registrar rejected this claim, stating:

However, during the examination process, the practice is to treat a claimed date of first use as accurate. It is considered that the proper place for challenges to claimed dates of first use to be considered is in opposition proceedings or in proceedings before the courts, which include appropriate procedures and evidentiary mechanisms for dealing with contested issues of this nature....^[19]

The examination process is not an adequate process for determining whether one trade-mark has been used prior to another.

[42]       Unitel International Inc. C.A. is consistent with my interpretation of paragraph 37(1)(c) of the Act. In Unitel International Inc. C.A., the Court of Appeal stated:

In their reasons, the Registrar and the Trial Judge referred to the alleged dates of first use in the two applications. We would observe that the dates of first use are not a relevant consideration under paragraph 37(1)(c). The only issue is whether there is confusion between an applicant's trade-mark and a trade-mark for which an application for registration is already pending.^[20]

The respondent argues that the issue before the Trial Division and the Court of Appeal was simply whether the Registrar, being persuaded that the requirements of subsection 37(1) were fulfilled, still had an obligation to have the application advertised. The Court had not yet determined the issue of the interpretation of paragraph 37(1)(c) and thus the analysis of the Court of Appeal in this regard is simply obiter.

[43]       It is true that the Court's comments in this regard are only obiter dicta, but they are also very clear and bear directly on the central issue. So even if the decision is not binding on this Court, those comments are nevertheless very persuasive.

[44]       In conclusion, it is my opinion that the Court of Appeal, in Unitel International Inc. C.A., did determine that pursuant to paragraph 37(1)(c), "The only issue is whether there is confusion between an applicant's trade-mark and a trade-mark for which an application for registration is already pending."

CONCLUSION

[45]       The appeal is allowed.

JUDGMENT

The judgment of the Court is that the decision by the Registrar, dated November 14, 2003, is overturned;

The Court returns the matter to the Registrar for him to approve the publication and advertisement of the said application for the trade-mark MAISON UNGAVA in the Trade Marks Journal;

However, in view of the circumstances and the development of the issues by both parties, there will be no disposition as to costs.

                     "Michel M.J. Shore"

                                Judge

Certified true translation

Suzanne M. Gauthier, C.Tr., LL.L.

FEDERAL COURT

SOLICITORS OF RECORD

DOCKET:                                            T-2257-03

STYLE:                                                EFFIGI INC. and ATTORNEY GENERAL OF CANADA

PLACE OF HEARING:                      MONTRÉAL, QUEBEC

DATE OF HEARING:                        JUNE 22, 2004

REASONS FOR JUDGMENT

AND JUDGMENT:                            THE HONOURABLE MR. JUSTICE SHORE

DATED:                                              JULY 16, 2004

APPEARANCES:

Barry Gamache                                     FOR THE APPLICANT

Mariève Sirois-Vaillancourt                    FOR THE RESPONDENT

Francisco Couto

SOLICITORS OF RECORD:

LEGER ROBIC RICHARD                  FOR THE APPLICANT

Advocates

Montréal, Quebec

MORRIS ROSENBERG                      FOR THE RESPONDENT

Deputy Attorney General

of Canada

Ottawa, Ontario