Date:
20130213
Dockets: T-332-12
T-333-12
Citation:
2013 FC 152
Ottawa, Ontario,
February 13, 2013
PRESENT: The
Honourable Mr. Justice Harrington
BETWEEN:
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CANADIANMAGICJACK.CA
LTD,
THEMAGICJACK.CA INC
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Appellants
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and
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MAGICJACK LP,
(A LIMITED
PARTNERSHIP, ORGANIZED IN DELAWARE; THE GENERAL PARTNER IS YMAX HOLDINGS
CORPORATION, ORGANIZED IN DELAWARE)
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Respondent
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REASONS FOR
ORDER AND ORDER
[1]
The
Canadian Intellectual Property Office accepted magicJack LP’s application for
registration of the trade-marks “magicJack” and “magicJack & Design”, over
the opposition of Canadianmagicjack.ca Ltd. and Themagicjack.ca Inc.
[2]
The
appellants have applied either for judicial review of those decisions or the
decision of the Trade-Marks Opposition Board striking his oppositions. As a
matter of form, the originating document should have been titled a Notice of
Appeal in accordance with section 56 of the Trade-marks Act.
[3]
In
November 2012, the Chief Justice issued a Notice of Status Review in each
proceeding in accordance with rule 380(2) as more than 180 days had elapsed
since the issuance of the originating document and no requisition for a hearing
date had been filed. The appellants’ response was deemed to be wholly
inadequate by Prothonotary Aalto who, on 20 December 2012, ordered that the two
proceedings be dismissed for delay.
[4]
This
is the appeal from those decisions.
[5]
These
proceedings have been fraught with procedural difficulties right from the
outset. To begin with, the wrong respondents were named. Although the appellants
are corporations, their Chief Executive Officer, Neil Adams, has purported to
act for them, in spite of the fact that he is not a lawyer. Rule 120 of the Federal
Courts Rules requires a corporation to be represented by a lawyer unless
the Court, in special circumstances, grants leave for it to be represented by
an officer. No such motion has successfully been filed, although Mr. Adams has
filed a motion for leave to personally intervene.
[6]
He
has consistently refused to serve the respondent’s agent, until specifically
directed to do so, and has frequently been unable to file proceedings because
they are clearly in the wrong form. In answer to the Notices of Status Review,
he said, among other things, that the appellants were still attempting to obtain
an extension of time under rule 8.
[7]
Prothonotary
Aalto’s reasons for dismissing the applications are very succinct. He said:
On
status review, the Court must be satisfied that the reasons provided for the
delay in moving the proceeding forward are justified and, in addition, that the
measures proposed by the party in default to move the case forward are
appropriate. The submissions received in response to the Notice of Status
Review are wholly inadequate for several reasons. First, no solicitor acts for
the Appellant. This is so notwithstanding that Neil Adams, who is not a
solicitor and purports to act for the Appellant, has been advised that Rule 120
requires that a solicitor represent a corporation. Second, no motion has been
brought permitting the Appellant to be represented by an agent who is not a
solicitor. The representations purported to be filed on behalf of the Appellant
should neither be received by the Court nor considered. Third, even if the
Court were to consider the submissions filed on behalf of the Appellant, those
submissions do not comply with Rule 382(1). There is no explanation why the
proceeding should not be dismissed for delay. There is no timetable to complete
the next steps to bring the matter to a hearing. Thus, in accordance with Rule
382.1(2) there is no compelling reason or any reason before the Court which
satisfies the Court as to why this proceeding should continue. Therefore, the
proceeding is dismissed.
[8]
His
decision was discretionary. Not only could it have brought an end to the
proceedings; it did bring an end to them. Therefore, I am directed by the Court
of Appeal to exercise my own discretion de novo (Merck & Co v
Apotex Inc, 2003 FCA 488, [2004] 2 FC 459, [2003] FCJ No 1925 (QL)).
[9]
At
the hearing before me, Mr. Adams was again prepared to act for his
corporations. In a mixture of representations and what in fact was testimony,
he said the corporations were impecunious. I pointed out it is not enough to
say that the corporations are impecunious, one must show that they are. Even
then, it does not automatically follow that the corporations may be represented
by an officer. Incorporating has its advantages and disadvantages. One
disadvantage is that it, unlike a person of flesh and blood, cannot represent
itself.
[10]
In
order to deal with the merits of the appeal, I gave Mr. Adams special leave to
represent the corporations solely for the purpose of appealing Prothonotary
Aalto’s orders. In the circumstances, I adjourned his motions to personally intervene
sine die.
[11]
Rule
8 of the Federal Courts Rules provides:
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8. (1) On
motion, the Court may extend or abridge a period provided by these Rules or
fixed by an order.
(2) A
motion for an extension of time may be brought before or after the end of the
period sought to be extended.
(3) Unless
the Court directs otherwise, a motion to the Federal Court of Appeal for an
extension of time shall be brought in accordance with rule 369.
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8. (1) La
Cour peut, sur requête, proroger ou abréger tout délai prévu par les
présentes règles ou fixé par ordonnance.
(2) La
requête visant la prorogation d’un délai peut être présentée avant ou après
l’expiration du délai.
(3) Sauf
directives contraires de la Cour, la requête visant la prorogation d’un délai
qui est présentée à la Cour d’appel fédérale doit l’être selon la règle 369.
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[12]
I
asked Mr. Adams what he was referring to when he cited rule 8, since the
response to the Notices of Status Review was silent on the point. In reply to
my question he mentioned directions of Prothonotary Lafrenière issued in August
2012, which he wished to appeal, but was out of time. These were directions,
not orders. Directions cannot be appealed.
[13]
To
advance the cases, it was necessary that records be filed as per rule 309 of
the Federal Courts Rules. Mr. Adams is of the view that no record need
be filed as it is self-evident from the tribunal record that the trade-mark
decisions were erroneous. That may well be self-evident to Mr. Adams, but
certainly not to me. In any event, he then said he had a record ready to be
filed.
[14]
Mr.
Adams appears to have memorized every section of the Trade-marks Act, every
section of the Federal Courts Act and every rule of the Federal
Courts Rules. However, he is unable to put them together.
[15]
In
Rosen v Canada, [2000] 2 CTC 422, [2000] FCJ No 415 (QL), (leave to
appeal to the Supreme Court of Canada refused) the Federal Court of Appeal, at
paragraph 5, outlined the factors which should be taken into consideration in
order to determine whether a proceeding should be dismissed in accordance with
Rule 382 (2)(a):
The
normal factors in support of such a motion namely the intention to take
proceedings within the prescribed time limits, the existence of an arguable
case, the cause and actual length of the delay and whether there was prejudice
caused by the delay were not deposed to.
[16]
The
appellants were required to address the reasons for their failure to move the
case forward and their proposed measures to remedy the situation. (Netupsky
v Canada, 2004 FCA 239, [2004] FCJ No 1073 (QL), at para 11: “a party in
receipt of a notice of status review is required to address two questions. (1)
Is there a justification for the failure to move the case forward? (2) What
measures does the party propose to take to move the case forward?”) This was
not done.
[17]
In
Xu v Murphy., 2010 FCA 140, [2010] FCJ No 706 (QL), at para 2, the
Federal Court of Appeal found that the omissions of the appellant, who had
failed to comply with the requirements of the status review rule and had not
taken the first step to perfect the appeal, were sufficient grounds to dismiss
the appeal.
An
appellant who must respond to a Notice of Status Review must set out the
reasons for the delay in proceeding with his appeal and propose a timetable for
the remaining steps to be taken in the appeal: see Rule 382.3(1) of the Federal
Courts Rules, SOR/98-106. In this case, Mr. Xu has done neither of these
things. In fact, he has not taken the first step to perfect his appeal, namely
to settle the contents of the appeal book, either by agreement or by motion.
These omissions are sufficient ground to dismiss the appeal on the ground of
delay.
[18]
Leaving
aside the fact that the corporations are not represented by counsel, they have
been unable to demonstrate any ability to continue the proceedings within the
prescribed time limits. As stated by Mr. Justice Hugessen in Baroud v Canada, 160
FTR 91, [1998] FCJ No 1729 (QL), a case involving a lay litigant, at para 5:
[…]
if no good reason is advanced to justify the delay, the plaintiff should be
prepared to demonstrate that he recognizes that he has a responsibility to the
Court to move his action along. Mere declarations of good intent and of the
desire to proceed are clearly not enough.
[19]
The
causes and length of the delays appear to have been brought on by Mr. Adams’ unsuccessful
struggle to understand and comply with the applicable rules.
[20]
Furthermore,
I do not see an arguable case on the merits of his opposition to the
registration of the trade-marks. On several occasions, his opposition was noted
to be incomplete or irregular. Notwithstanding that he was given time to better
his oppositions, he was unable, or unwilling, to do so. Indeed, the Trade-marks
Opposition Board deemed his oppositions to be withdrawn for failure to comply
with the rules. That decision was not unreasonable. Mr. Adams had been given
ample opportunity to rectify matters and he was even given guidance regarding
the Trade-marks Act, but simply failed to provide the evidence which was
required.
[21]
The
appeals shall be dismissed, but without costs, as the respondent did not appear
on the motions.
ORDER
FOR
REASONS GIVEN;
THIS
COURT ORDERS that:
1.
The
appeals are dismissed without costs.
2.
A
copy of these reasons for order and order are to be placed in court docket
number T-333-12 and apply there accordingly.
“Sean Harrington”
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