Date: 20000407
Docket: T-854-99
BETWEEN:
WARNACO INC.
Applicant
- and -
THE ATTORNEY GENERAL OF CANADA
Respondent
REASONS FOR ORDER
HENEGHAN J.
[1] This is a matter being appealed from a decision of the Registrar of Trade-marks. It was heard on March 15, 2000. There was a preliminary issue concerning the status of the Registrar of Trade-marks, whether he was the proper Respondent in this matter having regard to Rules 300 and 303 of the Federal Court Rules, 1998. Rules 300(d) and 303 provide as follows:
| 300. This Part applies to...
| (d) appeals under section 56 of the Trade-marks Act... |
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300. La présente partie s'applique...
| d) aux appels interjetés en vertu de l'article 56 de la Loi sur les marques de commerce... |
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| 303. (1) Subject to subsection (2), an Appellant 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; or_ |
| a) toute personne directement touchée par l'ordonnance recherchée, autre que l'office fédéral visé par la demande; |
| (b) required to be named as a party under an Act of Parliament pursuant to which the application is brought._ |
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| b) toute autre personne qui doit être désignée à titre de partie aux termesde la loi fédérale ou de ses textesd'application qui prévoient ou autorisent la présentation de la demande |
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| (2) Where in an application for judicial review there are no persons that can be named under subsection (1), the applicant shall name the Attorney General of Canada as a respondent.
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(2) Dans une demande de contrôle judiciaire, si aucun défendeur n'est désigné en application du paragraphe (1), le demandeur désigne le procureur général du Canada à ce titre.
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| (3) On a motion by the Attorney General of Canada, where the Court is satisfied that the Attorney General is unable or unwilling to act as a respondent after having been named under subsection (2), the Court may substitute another person or body, including the tribunal in respect of which the application is made, as a respondent in the place of the Attorney General of Canada.
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(3) La Cour peut, sur requête du procureur général du Canada, si elle est convaincue que celui-ci est incapable d'agir à titre de défendeur ou n'est pas disposé à le faire après avoir été ainsi désigné conformément au paragraphe (2), désigner en remplacement une autre personne ou entité, y compris l'office fédéral visé par la demande.
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[2] Counsel for the Applicant advised that the Registrar had been named as the Respondent and submitted that his role was to clarify the issues and referred to the decision of this Court in Molson Companies Ltd. v. Moosehead Breweries Ltd. (1989), 24 C.P.R. (3d) 217. In that case, which also dealt with an appeal from a decision of the Registrar of Trade-marks, MacKay J. said at p. 218:
| On behalf of the Attorney General counsel submitted that he was not appearing to represent the Registrar of Trade-marks, a respondent in the matter, since there were no issues apparent relating to a need for clarification of the record or relating to the jurisdiction of the registrar, the recognized scope for representation by the registrar as the tribunal issuing the decision which was subject to appeal: per Estey J. for the court in Re: Worthwestern Utilities Ltd. and City of Edmonton (1978), 89 D.L.R. (3d) 161, [1979] 12 A.R. 449 (S.C.C.). |
[3] Furthermore, counsel for the Applicant submitted that Rule 303 was applicable only to applications for judicial review and not to statutory appeals, notwithstanding Rule 300(d) which provides that Part V of the Federal Court Rules, 1998, applies to an appeal pursuant to the Trade-marks Act, R.S.C. 1985, c. T-13.
[4] Counsel for the Respondent acknowledged that Part V of the Rules deals with applications and submitted that the combined effect of Rules 303(1)(a) and 303(2) is that the Attorney General of Canada be named as the Respondent, having regard to the fact that the within proceeding is an adversarial process and some party must be present who can argue in support of the decision of the Registrar and that it is inappropriate for the Registrar to assume this role.
[5] I do not accept the submissions of counsel for the Applicant that this appeal under section 56 of the Trade-marks Act is not governed by Part V of the Federal Court Rules, 1998. I do not accept the implied argument of the Applicant that Part V applies only to the manner in which an appeal under the Trade-marks Act is instituted, that is by way of application for judicial review rather than by the filing of a notice of appeal. The wording of Rule 300(d) is clear. There is nothing to limit the manner in which the rules set out in Part V apply to appeals under the Trade-marks Act and consequently, Rule 303 applies to the conduct of the within appeal.
[6] Since there is no person directly affected by the decision of the Registrar which is the subject of this appeal nor any person who is required to be named as a party to the appeal pursuant to the Trade-marks Act, Rule 303(2) of the Federal Court Rules must come into play. This rule is clear and provides that where there is no person directly affected by the decision in question, nor any person required to be named as a party pursuant to the Act under which the appeal is brought, it follows that the proper respondent is the Attorney General of Canada.
[7] In my view, the Attorney General of Canada should have been named as the Respondent in the beginning. Rule 303(3) provides a mechanism by which the Attorney General can make submissions to the Court as to why she should not be the Respondent. Upon receipt of such submissions, the Court may substitute another person or body including the Tribunal whose decision is the subject of the application for judicial review.
[8] The reason that the Registrar of Trade-marks should not be a party is to avoid a situation where the decision-maker is participating in a review of his or her own decision.
[9] The issue of the right of a Tribunal whose decision is under review to appear as a party in a hearing was considered by this Court in Canada (Attorney General) v. Bernard (1993), 69 F.T.R. 239 (T.D.). In Bernard, Madam Justice McGillis dealt with a request by the Canadian Human Rights Commission to obtain status as a respondent in a review of a decision made by that Commission. She refused the request, but without prejudice to the right of the Commission to seek intervener status.
[10] An appeal by the Canadian Human Rights Commission to the Federal Court of Appeal was dismissed, on the grounds that absent a provision in the Canadian Human Rights Act there is no right for the Tribunal whose decision is under review to enjoy party status in the subsequent proceeding; see Canada (Human Rights Commission) v. Canada (Attorney General), [1994] 2 F.C. 447 (C.A.).
[11] In light of the submissions and in view of the plain wording of the current rules of the Federal Court, I granted an order substituting the Attorney General of Canada for the Registrar of Trade-marks as the Respondent in the within appeal.
[12] With the preliminary issue surrounding the Registrar resolved it is necessary to consider the substance of this application.
[13] This is an appeal from a decision of the Registrar of Trade-marks made pursuant to section 56 of the Trade-marks Act, which provides as follows:
| 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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[14] The Applicant is appealing against the decision of the Registrar dated March 16, 1999, in which the Registrar refused registration of "SATIN STRIPES" as a proposed trademark on the grounds that the name was descriptive. In his decision, the Registrar found that the proposed name was suggestive of the materials used in the composition of the wares, that is bras and panties. The Registrar made the following conclusion:
| I have carefully reviewed the Appellant"s submissions and I consider that the average or everyday consumer when faced with this trade-mark used in association with bras and panties would immediately conclude as a matter of first impression, that the wares are striped with satin. |
[15] The sole ground of appeal advanced in the Notice of Application is as follows:
| (a) the Registrar erred in concluding that the mark SATIN STRIPES ("the Mark") is not registrable by reason of section 12(1)(b) of the Trade-marks Act that is, that the Mark is clearly descriptive or deceptively misdescriptive of the character or quality of wares with which it is proposed to be used, namely, intimate apparel, namely bras and panties. |
[16] The Applicant filed further evidence in relation to this appeal as permitted by section 56(5) of the Trade-marks Act. The new evidence consisted of the Affidavit of Peter A. Reich and the Affidavits of Jennifer Leah Stecyk. While the Trade-marks Act allows the introduction of additional evidence upon an appeal pursuant to section 56 and permits the Court to exercise any discretion vested in the Registrar in responding to such evidence, the mere fact that new evidence is introduced upon an appeal does not turn the proceedings into a new trial.
[17] That question was addressed by this Court in Garbo Group Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4th) 224 (F.C.T.D.). Mr. Justice Evans looked at the question in the context of the appropriate standard of review to be applied to a decision of the Registrar of Trade-marks and said at p. 232:
| Indeed, even when additional evidence is admitted on appeal, it still may be appropriate to ask whether the Registrar"s decision was wrong in the light of that evidence, rather than how the appellate court would have decided the question if it had been before the court de novo . Of course, the more significant the additional evidence the greater the scope for the court to exercise its own independent judgment on the finding of fact in question. |
[18] The present case also requires consideration of the appropriate standard of review. In Garbo, Mr. Justice Evans referred to the historic view at p. 230, as follows:
| __It is generally said that the standard of review applicable to the Registrar's decision is that of correctness, although in view of the expertise of the Registrar, and of those to whom the Registrar has delegated decision-making powers under subsection 63(3), their decisions should not lightly be set aside on findings of fact that are central to their specialized jurisdiction, such as whether confusion is likely to be caused by the proposed mark. __However, when significant evidence is adduced on the appeal that was not before the Registrar, less weight should be given to the Registrar's findings: Molson Companies Ltd. v. John Labatt Ltd. (1984), 1 C.P.R. (3d) 494 (F.C.T.D.); United States Polo Association v. Ralph Lauren Corporation, [1999] F.C.J. No. 318, (F.C.T.D.; T-1881-93; T-193-95, T-189-96; March 8, 1999). |
[19] Mr. Justice Evans went on to say that the standard of review needs to be reformulated in light of current developments in administrative law:
| __In my opinion the standard of review applied to the Registrar's findings of confusion needs to be reformulated to take account of the pragmatic and functional analysis developed in contemporary administrative law jurisprudence for selecting the standard of review appropriate for the issue in dispute. __In undertaking this exercise I am following the path already indicated by Lutfy J. in Young Drivers of Canada v. Chan, [1999] F.C.J. No. 1321, (F.C.T.D.; T-636-97; August, 30, 1999). However, the end result of the analysis may differ relatively little from the Court's established practice. |
Ibid. at 230-231.
[20] In Molson Breweries v. John Labatt Ltd., [2000] F.C.J. No. 159, (A-428-98, February 3, 2000), the Federal Court of Appeal addressed the question of the nature of an appeal under section 56 of the Trade-marks Act and the applicable standard of review. Mr. Justice Rothstein, speaking for the majority, said as follows:
| Because of the opportunity to adduce additional evidence, section 56 is not a customary appeal provision in which an appellate court decides the appeal on the basis of the record before the court whose decision is being appealed. A customary appeal is not precluded if no additional evidence is adduced, but it is not restricted in that manner. Nor is the appeal a "trial de novo" in the strict sense of that term. The normal use of that term is in reference to a trial in which an entirely new record is created, as if there had been no trial in the first instance. [See Note 12 below] Indeed, in a trial de novo, the case is to be decided only on the new record and without regard to the evidence adduced in prior proceedings. [See Note 13 below] |
Ibid. at para. 46.
[21] The first question to be considered in this appeal is the applicable standard of review. In Molson Breweries v. John Labatt Ltd., supra, Mr. Justice Rothstein commented on the appropriate standard to be applied in appeals under the Trade-marks Act and said:
| ...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. |
Ibid. at para. 50.
[22] However, additional evidence was introduced by the Applicant and it is necessary to examine this evidence and ask whether this evidence would have "materially affected" the Registrar"s finding and consequently the appropriate standard of review.
[23] The additional evidence consists of one affidavit for Peter Reich and two affidavits from Jennifer Stecyk. The affidavit of Mr. Reich was tendered as expert evidence by a linguist as to the common, everyday Canadian meaning of the words "satin stripes". The affidavits of Jennifer Stecyk contained extracts from the records maintained by the Registrar of Trade-marks going to the state of the register relative to names similar to that proposed by the Applicant, which names were accepted for registration.
[24] I find that the new evidence tendered by the Applicant is not such that it would have materially affected the Registrar"s conclusion in relation to the proposed name "SATIN STRIPES".
[25] Given that there is no new evidence which "materially affects "the findings of the Registrar, the appropriate standard of review to apply is that of reasonableness simpliciter.
[26] In Canada (Director of Investigation and Research, Competition Act) v. Southam Inc., [1997] 1 S.C.R. 748 the Court addressed the meaning of reasonableness simpliciter and said at p. 778:
| The standard of reasonableness simpliciter is also closely akin to the standard that this Court has said should be applied in reviewing findings of fact by trial judges. In [1976] 2 S.C.R. 802">Stein v. "Kathy K" (The Ship), [1976] 2 S.C.R. 802, at p. 806, Ritchie J. described the standard in the following terms: |
| ...the accepted approach of a court of appeal is to test the findings [if fact] made at trial on the basis of whether or not they were clearly wrong rather than whether they accorded with that court"s view of the balance of probability. [Emphasis added.] |
| Even as a matter of semantics, the closeness of the "clearly wrong" test to the standard of reasonableness simpliciter is obvious. It is true that many things are wrong that are not unreasonable; but when "clearly" is added to "wrong", the meaning is brought much nearer to that of "unreasonable". Consequently, the clearly wrong test represents a striking out from the correctness test in the direction of deference. But the clearly wrong test does not go so far as the standard of patent unreasonableness. For if many things are wrong that are not unreasonable, then many things are clearly wrong that are not patently unreasonable (on the assumption that "clearly" and "patently" are close synonyms). It follows, then, that the clearly wrong test, like the standard of reasonableness simpliciter, falls on the continuum between correctness and the standard of patent unreasonableness. Because the clearly wrong test is familiar to Canadian judges, it may serve as a guide to them in applying the standard of reasonableness simpliciter. |
| Putting all of the foregoing considerations into the balance and taking my cue from this Court"s decisions on the subject, including particularly relatively recent decisions, I am of the view that decisions of the Tribunal should be subject to review on a reasonableness standard. That this standard is appropriate and sensible becomes clear when one considers the complexity of economic life being regulated. It bears noting, however, that the standard I have chosen permits recourse to the courts for judicial intervention in cases in which the Tribunal has been shown to have acted unreasonably. |
| In the final result, the standard of reasonableness simply instructs reviewing courts to accord considerable weight to the views of tribunals about matters with respect to which they have significant expertise. While a policy of deference to expertise may take the form of a particular standard of review, at bottom the issue is the weight that should be accorded to expert opinions. In other words, deference in terms of a "standard of reasonableness" and deference in terms of "weight" are two sides of the same coin. In this respect, I agree with Kerans, supra, at p. 17, who has described deference to expertise in the following way: |
Experts, in our society, are called that precisely because they can arrive at well-informed and rational conclusions. If that is so, they should be able to explain, to a fair-minded but less well-informed observer, the reasons for their conclusions. If they cannot, they are not very expert. If something is worth knowing and relying upon, it is worth telling. Expertise commands deference only when the expert is coherent. Expertise loses a right to deference when it is not defensible. That said, it seems obvious that [appellate courts] manifestly must give great weight to cogent views thus articulated.
Ibid. at 778-780
[27] The standard to be applied to the Registrar"s decision is reasonableness simpliciter. This means that I must ask if the Registrar"s decision is reasonable on the basis of the material before him and whether he applied the appropriate principles in reaching his conclusion.
[28] The Registrar concluded that the proposed name "SATIN STRIPES" was descriptive of the wares, that is bras and panties. He rejected the submissions that the word "stripes" is suggestive of a collateral feature of the goods.
[29] The Registrar applied the test of first impression which is the accepted test in assessing the registerability of a proposed name; see: Drackett Co. of Canada Ltd. v. America Home Products Ltd. (1968), 55 C.P.R. 29 (Ex.Ct.); John Labatt Ltd. v. Carling Breweries Ltd. (1975), 18 C.P.R. (2d) 15 (F.C.T.D.) and Molson Cos. v. Carling O"Keefe Breweries of Canada Ltd. (1981), 55 C.P.R. (2d) 15 (F.C.T.D.). In Molson Cos. Ltd. v. Carling O"Keefe Breweries of Canada Ltd., supra, Mr. Justice Cattanach said at p. 20:
I accept the premise that the decision that a trade mark is clearly descriptive is one of first impression from which it follows that it is not the proper approach to critically analyse the words of a mark but rather to ascertain the immediate impression created by the mark in association with the product. The mark must be considered in conjunction with the wares and not in isolation.
[30] The Registrar also considered arguments relating to alleged errors in the state of the register of trade-marks. Without deciding whether such errors existed, he cited appropriate and applicable authority to the effect that even if the Registrar had erred on previous occasions in accepting similar names for registration he was not bound to perpetuate past mistakes; see Sherwin Williams Company of Canada Limited v. The Commissioner of Patents (1937), Ex. C.R. 205 (Ex.Ct.).
[31] Having regard to these factors, it appears that the Registrar assessed the evidence and arguments before him and reached a conclusion which is reasonable. Therefore, the Registrar did not err in concluding that the mark SATIN STRIPES ("the Mark") is not registerable by reason of section 12(1)(b) of the Trade-marks Act that is, that the Mark is clearly descriptive or deceptively misdescriptive of the character or quality of wares with which it is proposed to be used, namely, intimate apparel, namely bras and panties.
[32] For these reasons, the appeal is dismissed with costs.
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