Date: 20080501
Dockets: T-1570-07
T-1571-07
Citation: 2008
FC 569
Toronto, Ontario, May 1, 2008
PRESENT: The Honourable Mr. Justice Lemieux
BETWEEN:
SIMPSON
STRONG-TIE COMPANY, INC.
Applicant
and
PEAK INNOVATIONS INC.
Respondent
REASONS FOR ORDER AND ORDER
Introduction and Background
[1]
This is an
appeal by Simpson Strong-Tie Inc. (Strong-Tie) and a cross appeal by Peak
Innovations Inc. (Peak) from the March 31st 2008 decision of
Prothonotary Aalto in both of these Court files which are appeals taken by
Strong-Tie from two similar decisions of the Registrar of Trade-Marks (the
Registrar) dated June 21, 2007 dismissing Strong-Tie’s oppositions to Peak’s
applications for the registration of the mark GREYISH GREEN DECK BOARD FASTENER
in association with “fastener brackets for attaching deck boards”.
[2]
Prothonotary
Aalto decided two matters at issue in these appeals:
1. First
he dismissed Strong-Tie’s motion to amend the statement of opposition it filed before
the Registrar in order to specifically plead Peak’s applications for trade-mark
registration did not conform to paragraph 38(h) of the Trade-Mark Act (the
Act). In doing so Aalto P. relied on Justice Harrington’s decision in Sun
World International Inc. v. Parmalat Dairy and Bakery Inc. 2007 FC
861 holding the Federal Court had jurisdiction in very limited circumstances to
amend on appeal to this Court pursuant to Section 56 of the Trade-Marks Act
(the Act) a statement of opposition to add a new ground of opposition which
had not been before the Registrar. The Prothonotary ruled Strong-Tie’s proposed
amendment did not fit within the limited circumstances justifying such an
amendment.
2. Second
he dismissed Peak’s resistance to Strong-Tie’s motion for an extension of time
to file two applicant’s affidavits under Rule 306 of the Federal Courts
Rules, 1998 (the Rules).
[3]
In its
appeal Strong-Tie argues the Prothonotary erred in applying Sun World above to
the facts of this case. What is different here, counsel for Strong-Tie argues,
is that the issue whether Peak’s trade-mark application violates paragraph 30
(h) of the Act was before the Registrar who ruled on it. In the circumstances
Strong-Tie’s counsel argues, unlike Sun World, there is no new issue on appeal,
no new record (fresh evidence) on appeal is required and the Court has had the
benefit of the informed and expert views of the Registrar on the question.
Moreover, he argues the Prothotonary was wrong when he concluded that
Strong-Tie would be splitting its case.
[4]
In its
cross-appeal, Peak argues Prothonotary Aalto in granting Strong-Tie’s extension
of time to file its affidavits failed to consider relevant factors, namely the
lack of explanation by Strong-Tie for its delay in not respecting the Order of
Prothonotary Milczynski dated October 9th, 2007 which had already
extended the time for the Applicant to file its affidavits to December 27,
2007. Peak also argues the Prothonotary failed to consider the relevance of
Strong-Tie’s proposed affidavits.
Conclusions
[5]
For the
reasons expressed below Strong-Tie’s appeal and Peak’s cross appeal from
Prothotonary Aalto March 31st, 2008 decision are dismissed with
costs.
[6]
On the
standard of review I accept Strong-Tie’s argument I should review the matter de
novo because the issue whether to allow a new ground in a statement of
opposition is vital to its final resolution. With respect to the Prothotonary’s
decision to extend the time for filing affidavits, such decision is clearly a
discretionary decision which the authorities hold cannot be set aside on appeal
unless it was clearly wrong.
[7]
On the
first issue,
the refusal to allow an amendment to the Strong-Tie’s statement of opposition,
the following extract from the Registrar’s decision indicates how the section
30(h) issue arose before him:
At the oral hearing, the opponent’s agent
submitted that there is no indication in either application as to the size or
specific physical dimensions of the object shown in the drawing. However, as
noted by the applicant’s agent, neither statement of opposition includes any
pleading to that effect or a ground based on non-conformance to the
requirements of Section 30(h) of the Act. Thus, I am precluded from
considering any such ground in these proceedings. In any event, there is no
requirement for the applicant to restrict the mark claimed to a specific size.
So long as the wares are adequately described and defined, color alone can
function as a trade-mark as in the case, for example, of a single color for a
sheet of fibre glass insulation.
(Emphasis mine)
[8]
In its
notice of appeal from the Registrar’s decision dated August 27, 2007, counsel
for Strong-Tie characterized the Registrar’s error in respect of paragraph
30(h) was his holding:
“It was necessary to specifically plead
Section 30(h) of the Trade-Marks Act and that the pleading of Section 30
was not sufficient to sustain the objection.”
[9]
Counsel for Peak opposed Strong-Tie’s appeal on two grounds:
first the Federal Court had no jurisdiction to make the amendment sought and,
even if it did, the Prothotonary was correct that the limited circumstances in
which such an amendment is permissible was not present here.
[10]
I do not propose to deal with the jurisdictional bar raised by
Peak’s counsel. I entirely agreed with Justice Harrington and with Prothotonary
Aalto that the law is to the effect that only in the rarest of circumstances
necessary to render justice would this Court permit an amendment to a statement
of opposition (a pleading) to add a new ground of opposition not asserted
before the Registrar. There is an inherent unfairness to allow a litigant to
“save up” new grounds on appeal. I cannot accept counsel for Strong-Tie’s
argument no new grounds are being sought here and that no new record would be
necessary. It is clear if Strong-Tie does not convince a judge of this Court
that the Registrar erred when deciding that its statement of opposition did not
plead paragraph 30(h) the required amendment to the statement of opposition to
plead it is necessary thus adding a new grounds not there before.
[11]
Moreover his submission the evidentiary record need not be
expanded is not borne out by Strong-Tie’s motion before the Prothotonary which
seeks an order permitting it to file affidavits in support of “the more
specifically detailed ground of opposition set out in the new paragraph 1(b) of
the amended statement of opposition...”. Clearly the place to seek an amendment
to the statement of opposition was before the Registrar and not before this
Court. In these circumstances I see no basis upon which the requested amendment
sought could be granted.
[12]
On the cross-appeal by Peak the argument is that the
Prothotonary erred in not taking into account relevant factors. He relies upon
the case of Strykivsky v. Strong Mountain
Institution. [2000] F.C.J. No. 1404.
[13]
In arguments counsel for Peak conceded his issues of lack of
explanation for the delay and draft affidavits to demonstrate relevance were
put before the Prothotonary. He also concedes his cross appeal was served and
filed after Strong-Tie had filed its materials in compliance with the
Prothotonary’s Order. Simply because the Prothotonary did not specifically refer
to the factors counsel for Peak mentioned does not mean he did not consider and
weigh them. In my view he did. It is clear he gave the factor of lack of prejudice
to Peak substantial weight as he was entitled to do. He also took into account
other considerations such as the number of outstanding matters before the Court
involving the parties, the need for their coordination and the necessity for
case management which he ordered.
[14]
For these reasons, I decline to interfere with the Prothotonary’s
exercise of discretion to extend time.
ORDER
THIS COURT ORDERS that:
1. The appeal by Simpson Strong-Tie Company Inc. is
dismissed with costs.
2. The cross-appeal by Peak Innovations is dismissed
with costs.
“François Lemieux”
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