Piscitelli v. Ontario (Liquor Control Board), 2001 FCT 868

Date: 20010808

Docket: T-107-99

      Neutral Citation: 2001 FCT 868

BETWEEN:

      GEORGE PISCITELLI,

      carrying on business as

      MILLENNIUM WINES & SPIRITS

      Applicant

      - and -

      LIQUOR CONTROL BOARD OF ONTARIO

      and

      THE REGISTRAR OF TRADE-MARKS

      Respondents

      REASONS FOR ORDER AND ORDER

BLAIS J.

[1]    This is an application for judicial review pursuant to section 18.1 of the Federal Court Act, of the decision of the Registrar of Trade-marks (the "Registrar") to give public notice, under subparagraph 9(1)(n)(iii) of the Trade-marks Act, R.S.C.1985, c. T-13 (the "Act"), of the adoption and use by the respondent, Liquor Control Board of Ontario ("respondent" and "LCBO") of the MILLENNIUM as an official mark for wares and services,.

FACTS

[2]    The applicant owns Canadian Registration No. 495,886 for the trade-marks MILLENNIUM (the "Millennium mark"). The registration issued on June 11, 1998 covers "alcoholic beverages, namely wines".

[3]    On November 12, 1998, the respondent requested that the Registrar give public notice under subparagraph 9(1)(n)(iii) of the Act of its adoption and use of "Millennium" as an official mark (the"official mark").

[4]    On December 16, 1998, the Registrar caused notice of the adoption and use of the official mark to be published in the Trade-marks Journal.

Disputed Facts

[5]    According to the respondent, it first adopted and used the "Millennium" official mark on September 28, 1998 in an advertisement at a LCBO retail store in Toronto. The respondent first adopted and used the official mark, in connection with several alcoholic products for sale, on November 10, 1998.

[6]                 The applicant however indicates that the sign placed on September 28, 1998, which included the word millennium read as follows:

Festivities for welcoming the next century will commence shortly at LCBO stores. Look for millennium celebrations at your local LCBO store.

[7]                 The applicant also points out that the respondent, to corroborate its allegation that the sign was in fact displayed, relies on an electronic mail message apparently sent from a Ms. Randi Apple to a Ms. Fitzpatrick. Both Ms. Apple and Ms. Fitzpatrick are still employed with the LCBO, but have not given evidence in the proceeding.

[8]                 The applicant also notes that the respondent alleged that on November 10, 1998, it first adopted the official mark in association with several alcoholic products for sale. The applicant observes however that there is no direct evidence of such sales.

[9]                 The applicant also maintains that the first public display of the word "Millennium" by the LCBO is on September 11, 1999 when the LCBO Vintages Department published a catalogue which displayed the word "Millennium" on its front cover.

ISSUES

[10]            1.       Can an official mark be expunged by a court proceeding?

2.       Did the respondent adopt and use the official mark prior to November 12, 1998?

3.       Is the respondent entitled under subparagraph 9(1)(n)(iii) of the Act knowingly to adopt as an official mark the registered trade-mark of another trader in Canada?

4.       Is subparagraph 9(1)(n)(iii) of the Act contrary to section 2(e) of the Canadian Bill of Rights and therefore ultra vires the Parliament of Canada and thus inoperative?

5.       Can subparagraph 9(1)(n)(iii) be interpreted such that it does not offend the Canadian Bill of Rights or the Constitution Act, 1867?

ANALYSIS

Standard of review

[11]            In Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario, [2001] 1 F.C. 577 (F.C.T.D.), McKewon J. was of the view that the applicable standard of review would be the same regardless of whether the proceeding was an appeal or a judicial review. He further stated:

The traditional standard of review regarding trade-mark oppositions is set out by Ritchie J. in [1969] S.C.R. 192">Benson & Hedges (Canada) Limited v. St. Regis Tobacco Corporation, [1969] S.C.R. 192, at page 200:

In my view the Registrar's decision on the question of whether or not a trade mark is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly but, as was said by Mr. Justice Thorson, then President of the Exchequer Court, in Freed and Freed Limited v. The Registrar of Trade Marks et al:

...reliance on the Registrar's decision that two marks are confusingly similar must not go to the extent of relieving the judge hearing an appeal from the Registrar's decision of the responsibility of determining the issue with due regard to the circumstances of the case.

Rothstein J.A. followed this position in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), where he stated at page 168:

Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter.

[12]            The applicant relies on Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (F.C.A.) and submits that where the Court has the benefit of new evidence that would have materially affected the Registrar's decision, the standard of review is correctness. The Federal Court of Appeal in Molson Breweries stated:

I think the approach in Benson & Hedges and McDonald's Corp. are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.

[13]            The applicant argued that there is new evidence before the Court that would have materially affected the Registrar's decision. The applicant notes that before deciding to publish the official mark under subparagraph 9(1)(n)(iii) of the Act, the Registrar had no evidence of the respondent's adoption and use of the mark. The Registrar only had the respondent's November 12, 1998 request for public notice which states:

The official mark has been adopted by and used by the applicant [the respondent L.C.B.O.] in association with wares and services.

[14]            In the case at bar, in my opinion, new evidence has been submitted by the parties that would have materially affected the Registrar's findings of fact or the exercise of his discretion. Therefore, I must come to my own conclusion as to the correctness of the Registrar's decision.

1- Can an official mark be expunged by a court proceeding?

[15]            Subparagraph 9(1)(n)(iii) of the Act provides:

[16]            The respondent submits that an official mark cannot be revoked by a court proceeding.

[17]            It is true that the Act does not provide for revocation of an official mark. R.T. Hughes and T.B. Ashton in Hughes on Trade-marks (Toronto: Butterworth, 1984) explain:

It is doubtful that a section 9 mark can be revoked by an action in the courts, since there is nothing in the Act providing for revocation of such mark.

[18]            A. D. Morrow in G.F. Henderson, Trade-marks Law of Canada (Toronto: Carswell, 1993) indicates at page 388:

There is no provision in the Act for expunging, cancelling or otherwise annulling the effect of the publication of an official mark under subparagraph 9(1)(n)(iii), or any other publication which may be a condition precedent to the application of other paragraphs of the section. It has been said that section 9 "registrations" are practically invulnerable. In practice, the Registrar of Trade-marks is prepared to publish notices of retraction of section 9 official marks, but it is not known whether this practice has any legal significance.

[19]            A. D. Morrow further states:

It is probably incorrect to speak of the "validity" or "invalidity" of a section 9 official mark publication. Publication is simply one element of protectability. If, in requesting publication, a public authority had misrepresented any of the conditions precedent, such as that it is a public authority, or its adoption or use of the official mark for wares or services, the publication would be without legal effect. It is submitted that the court must have the power to make a declaration that, because of the failure of the alleged public authority to comply with the requirement of paragraph 9(1)(n)(iii), the publication has no effect to prohibit subsequent adoption, use or registration of similar marks. In that sense, the courts must have the power to control the legal effect of official marks. While there is no provision for, and no need for, "cancellation" of a publication, there should be some mechanism whereby a judgment declaring the publication to be without legal effect would be indexed and therefore discoverable by a searcher at the Trade-marks Office.

[20]            If the Registrar has been mislead regarding issues that are requirements under section 9 of the Act in order for an official mark to be given public notice, such a mark, in my view, cannot be valid as the authority seeking to retain the official mark had no right to it from the beginning. In such a case I believe that the official mark can be declared ineffective to give rise to any rights or prohibitions under sections 9 and 11 of the Act as was ordered in Canada Post Corp. v. Post Office, [2001] 2 F.C. 63 (F.C.T.D.) by Tremblay-Lamer J.:

The appeal is granted. The Registrar erred in accepting that the respondent has adopted and used the mark in Canada. The public notice of the official mark "Mailsort" is ineffective to give rise to any rights or prohibitions under sections 9 and 11 of the Act.

[21]            Also, in Hearst Communications v. The Agora Cosmopolitan National New Magazine, Inc. (May 2, 2000), File No. T-1845-99 (F.C.T.D.), in deciding a motion for default judgment, the Court declared an official mark invalid and unenforceable. As a result, a notice to that effect appeared in the Trade-marks Journal.

[22]            In my opinion, if I were to conclude that the respondent misrepresented facts regarding section 9 of the Act, remedy could be given in the form of a declaration that the official mark is ineffective to give rise to any rights or prohibitions under sections 9 and 11 of the Act.

2- Did the respondent adopt and use the official mark prior to November 12, 1998?

[23]            In Big Sisters Association of Ontario v. Big Brothers of Canada (1997), 75 C.P.R. (3d) 177 (F.C.T.D.) appeal dismissed by the Federal Court of Appeal,(1999), 86 C.P.R. (3d) 504, Gibson J. explained:

The remaining question on the issue of enforceability relates to whether or not BSAO adopted and used the mark BIG SISTERS OF CANADA before the Registrar of Trade-marks gave public notice of its adoption and use in accordance with paragraph 9(1)(n) of the Act. As indicated earlier in these reasons, in Canadian Olympic Assn. v. Donkirk International, Inc., [39] Mr. Justice Teitelbaum wrote [at p. 307]:

On the basis of the submissions made, counsel for both plaintiff and defendant agree that in order for a mark to receive the protection of section 9, the mark had to be adopted and used in Canada before the registrar gave public notice of the mark's adoption and use.

On the facts of the matter before him, Mr. Justice Teitelbaum found that the marks in issue were adopted and used before the publication of adoption and use. Impliedly, he appears to have accepted the submissions of counsel on this question. I can reach no other conclusion on the plain wording of paragraph 9(1) (n) of the Act that adoption and use as an official mark for wares and services prior to publication by the Registrar of public notice of adoption and use is a condition precedent to enforceability. The mere publication of notice of adoption and use is not, I conclude, conclusive before this Court of such adoption and use. Further, I conclude, the onus was on the Plaintiffs to establish such adoption and use in a trade-mark sense. The evidence before me fails to discharge that onus. In the result, I conclude that the mark Big Brothers and Sisters of Canada is unenforceable as against the Defendant.

[24]            As for the burden of proof, the applicant relies on Techniquip Ltd. v. Canadian Olympic Association (1998), 80 C.P.R. (3d) 225 (F.C.T.D.), where section 9 of the Act was interpreted as "imposing on a public authority the burden of providing evidence of adoption and use whenever a case of conflict occurs".

[25]            However, in Ontario Assn of Architects, supra, McKewon J. stated:

Finally, I must determine whether the respondent adopted and used its marks as required under section 9 of the Trade-marks Act. An official mark takes precedence over any provision in any Act. It is important to note the difference between a trade-mark and an official mark. An official mark is not defined under the Act. It is not a trade-mark and there is no deemed adoption or deemed use as under the trade-mark sections of the Trade-marks Act. Official marks must be actual marks and cannot be proposed marks. Accordingly, on requesting that the Registrar give public notice of the adoption and use of an official mark in association with wares or services, the applicant must actually have adopted and used the official mark in association with wares or services.

There is little evidence on this point. The request for public notice contains the bare assertion that "[t]he official marks have been adopted and used by the applicant in association with services". However, to require more would be to impose on the public authority a duty to provide evidence of actual adoption and use on requesting public notice. Such a duty is not imposed on trade-mark applicants, where all the Registrar requires is a statement of the date of first use of the trade-mark.

In my view, the onus lies on the applicant to provide some evidence to substantiate its objection. There is some evidence on the record that the respondent had adopted and used the AATO marks as of the date of the request for public notice. The Registrar did not err in finding the respondent had adopted and used the AATO marks as official marks itself and through its members as licensees.

[26]            Regarding the burden of proof, I believe that the respondent had an onus to prove adoption and use of the mark before the Registrar. However, I also agree with McKewon J. in Ontario Assn of Architects, supra, that a bare assertion that the official marks have been adopted and used is sufficient before the Registrar and that before me, the applicant has to bring evidence to substantiate his objection that the mark was not adopted or used by the respondent. On the other hand, if the applicant brings sufficient evidence to refute the applicant's bare assertion before the Registrar, then it would be in the respondent's best interest to bring further evidence than its bare assertion in order to demonstrate adoption and use.

[27]            Public notice of the adoption and use of the official mark by the respondent was published on December 16, 1998. The respondent therefore has to have adopted and used the official mark prior to that date.

[28]            The respondent filed an affidavit of Mr. Tom Wilson, Director of Vintages, the Fine Wine and Premium Spirits Division of the L.C.B.O. His evidence before me is that:

The respondent first adopted and used the official mark in an advertisement located in Toronto on September 28, 1998.

Exhibit "B" attached to the affidavit is an electronic mail message from Randi Apple to Mary Fitzpatrick, dated September 29, 1998, confirming that the official mark was first adopted and used in an advertisement on September 28, 1998. The electronic mail message states:

Mary, this is to let you know, as you had requested, that yesterday afternoon (Monday, September 28) a sign was placed on the customer service desk at store #217 with the following text on it:

"Festivities For Welcoming the Next Century Will Commence Shortly At LCBO Stores. Look For Millennium Celebrations At your Local LCBO Store."

The respondent first adopted the official mark in connection with several alcoholic products for sale on November 10, 1998.

[29]            The applicant points out that the respondent, to corroborate its allegation that the sign was in fact displayed, relies on an electronic mail message apparently sent from a Ms. Randi Apple to a Ms. Fitzpatrick. Both Ms. Apple and Ms. Fitzpatrick are still employed with the LCBO, but have not given evidence in the proceeding.

[30]            I agree with the applicant that it would have been more appropriate had the evidence been tendered by the persons who had firsthand knowledge of the matter. However, I am ready to accept that the electronic mail message tendered is evidence from the persons concerned that a sign with the word millennium was placed in the L.C.B.O. store in Toronto.

[31]            The applicant further alleges that even if the sign was displayed, the mere display of the sign does not constitute adoption or use of millennium as an official mark. Rather, the word "millennium" is used descriptively in the sign, and not as a mark or an official mark under subparagraph 9(1)(n)(iii).

[32]            The respondent submits that in adopting and using the official mark in an advertisement, the respondent used and adopted the official mark as an "official mark".

[33]            The Act does not define "official mark". On this issue, Cattanach, J. stated as follows in Insurance Corporation of British Columbia v. Registrar of Trade Marks (1979), 44 C.P.R. (2d) 1 (F.C.T.D.):

There remains the concluding word "mark" in s. 9(1)(e). It does not have similar precise connotations as do the preceding words although it does have a minor heraldic significance in that there are marks of cadency such as the Prince of Wales label to signify the first son. In common parlance however a mark is a device, stamp, label, brand, inscription, a written character or the like indicating ownership, quality and the like.

In s. 2 of the Act "trade mark" is defined as follows:

"trade mark" means

(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

(b) a certification mark,

(c) a distinguishing guise, or

(d) a proposed trade mark;

A certification mark, distinguishing guise and proposed trade mark are individually and specifically defined in the same section. The word "mark" is not and resort may therefore be had to dictionaries to ascertain the meaning of the word "mark" in its ordinary sense which is the sense in which I think the word "mark" is used in the context of s. 9(1)(n).

[...]

However since all words have specific meanings they are all particular words and must be given their respective individual meanings. The concluding word "mark" cannot be construed as a general word the meaning of which must be restricted by the words preceding. In common parlance the word "mark" can mean an "inscription" or "written characters" indicative of ownership or quality which are attributes of a trade mark.

What then is an "official" mark within the meaning of s. 9(1) (n)(iii). An official mark is not defined in the statute.

[...]

The definition in the Shorter Oxford English Dictionary is to like effect reading "4. Derived from, or having the sanction of persons in office; hence authorized, authoritative".

[...]

It was within the competence of the board of directors of the appellant to enact the by-law it did. Thus the mark was derived from and sanctioned by persons in office and hence was authorized and authorative precisely within the meaning of the word "official".

The mark was self-bestowed but that is what this particular public authority was enabled to do and similar powers are bestowed on many public authorities.

The mark so adopted falls within the dictionary meaning of the word "official" and therefore is an "official mark" within the meaning of these words.

[34]            As for the words, "adopt" and "use", in Big Sisters Assn of Ontario c. Big Brothers of Canada, supra, Gibson J. held that adoption and use should be established in a trade-mark sense.

[35]            The word "adopt" is defined as follows in section 3 of the Act:

[36]            The Act defines the word "use" as follows:

[37]            Section 4 of the Act provides:

[38]            I note that these sections of the Act relate to trade-marks and not official marks. However, it can help in the interpretation of the terms "adopt" and "use" by a public authority in subparagraph 9(1)(n)(iii) of the Act.

[39]            A. D. Morrow in G.F. Henderson, Trade-marks Law of Canada, supra, stated, at page 383, on the issue of adoption and use of an official mark:

The meaning of the word "adopt" has been discussed above. It should be noted that section 3, which states when a trade-mark is deemed to have been adopted, does not apply to official marks, except perhaps by analogy. Consequently, we may consider the general meaning of the word "adopt" as referred to above. However, to be protected, an official mark must not only be adopted, it must also be used. Section 4 of the Act assists in determining what is use in relation to a trade-mark, but it is not exhaustive, and in any event has no necessary application to official marks. In ordinary speech, the term "use" is very broad, being equated to "employ" or "avail oneself of". It is difficult to understand how a mark may be used without being adopted. Possibly use that is transient with no pretence at exclusivity is not adoption. In any event, the ambit of these words remains to be explored in the jurisprudence. On the face of it, they seem very broad, and it is arguable that whenever a public authority "employs" a mark, this will meet the requirement of adoption and use for the purposes of this section.

[40]            I agree with the applicant submissions that the display of the sign cannot constitute adoption or use of "millennium" by the respondent as an official mark because the word millennium is not distinguished in any manner from the surrounding text. The word as it appears on the sign does not serve to distinguish or identify the respondent or its wares or services and thus, display of the sign cannot constitute adoption or use of any official mark. The usage of the word millennium in the sign is merely as a generic or descriptive expression and not as a "mark" within the meaning of section 9 of the Act.

[41]            In my view, the respondent did not adopt and use the word millennium as an official mark when it used the word millennium in an advertisement located in Toronto on September 28, 1998.

[42]            The applicant also notes that the respondent alleged that on November 10, 1998, it first adopted the official mark in association with several alcoholic products for sale. The applicant observes however that there is no direct evidence of such sales and the only evidence submitted is the bald assertion of Mr. Wilson in his affidavit that the official mark was adopted and used in connection with several alcoholic beverages for sale on November 10, 1998. The applicant submits that Mr. Wilson had access to its sales records, including any records relating to sales in connection with the official mark. The applicant urges the Court to draw a negative inference from the respondent's failure to corroborate the witness' assertion.

[43]            The applicant's witness, Mr. Pino Piscitelli, stated in his affidavit that:

As part of our business, my father and I routinely read publications and catalogues of the LCBO, and in addition, we regularly visit LCBO's stores. The first time I became aware of the LCBO displaying the word MILLENNIUM was in the LCBO's September 11, 1999 Vintages catalogue. I am not aware of any adoption or use of the word MILLENNIUM by the LCBO occurring prior to that time. By reason of our regular contact with the LCBO and monitoring of its business, if such adoption or use had been made public by the LCBO prior to September 1999, I am confident it would have come to my attention.

[44]            The respondent contends that the applicant's evidence that the respondent did not adopt and use the official mark only because the applicant did not personally witness such adoption and use is insufficient evidence to support his assertion.

[45]            The question regarding this issue is whether the applicant raised sufficient doubts regarding adoption and use of the official mark by the respondent as to have the effect that the respondent's bald assertion is not enough to provide evidence that the official mark was adopted and used or whether a negative inference should be drawn from the failure of the respondent to provide further evidence.

[46]            In my view, the applicant raised enough doubts as to the adoption and use of the official mark by the respondent. The respondent's bald assertion is enough before the Registrar where it is not opposed and there is no conflict raised as to whether there was adoption and use of a mark.

[47]            However, when conflict arises, as in the case at bar, the respondent might be asked to provide more evidence than a bald assertion. An applicant can only do so much in order to provide evidence on the issue of adoption and use as they might not always be able to show that there was no use. It is easier to show use and adoption than show that there was no use and no adoption of an official mark.

[48]            For example, in the case at bar, the respondent asserts that they adopted and used the word millennium in connection with several alcoholic products for sale. We have no evidence on the circumstances of the adoption and use. We have no evidence of how the official mark was adopted and used in connection with the products nor do we have evidence of where it was adopted and used.

[49]            The applicant cannot be at every LCBO in the province of Ontario nor can he monitor precisely the adoption and use of the official mark by the respondent. The applicant can only give evidence of what he knows and saw. In such a case, where it would be so much easier for the respondent to provide particulars of the adoption and use, I believe that a bald assertion is not sufficient and that the applicant has raised serious doubts as to whether the respondent adopted and used the official mark. I cannot accept that the respondent, who has the evidence pertaining to the adoption and use of the official mark and can provide it, can just sit back and make a bald assertion as evidence of adoption and use of an official mark.

[50]            In such a case, I believe that a negative inference can be drawn from the respondent's failure to provide details pertaining to the adoption and use of the official mark.

[51]            In my opinion, the respondent did not adopt and use the word "millennium" as an official mark prior to the issuance of the public notice by the Registrar.

[52]            The applicant suggests that if the Court concludes that the respondent did not adopt and use the word "millennium" as an official mark prior to the issuance of the public notice by the Registrar, it should not address the other questions.

[53]            The respondent did not respond to that argument. In my view, it is not necessary to address the other questions. Therefore, this application for judicial review is allowed with costs. The public notice of the official mark "millenium" is ineffective to give use to any rights or prohibitions under sections 9 and 11 of the Act.

Pierre Blais                                          

Judge

OTTAWA, ONTARIO

August 8, 2001