Date: 20041001
Docket: T-610-01
Citation: 2004 FC 1357
Ottawa, Ontario, this 1st day of October, 2004
Present: THE HONOURABLE MR. JUSTICE O'REILLY
BETWEEN:
CANADIAN REHABILITATION COUNCIL
FOR THE DISABLED DBA EASTER SEALS/MARCH
OF DIMES NATIONAL COUNCIL
Applicant
and
REHABILITATION FOUNDATION FOR THE DISABLED
DBA ONTARIO MARCH OF DIMES
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1] The applicant, the Canadian Rehabilitation Council for the Disabled, is also known as the "The March of Dimes". The respondent, the Rehabilitation Foundation for the Disabled, has also been known as the "Ontario March of Dimes". The use of the term "March of Dimes", and variants on that name, is a matter of dispute between them.
[2] In 2001, the Rehabilitation Foundation for the Disabled (which I will refer to as the "Ontario Foundation") wished to reinforce its entitlement to use the marks "March of Dimes" and "Ontario March of Dimes". It asked the Registrar of Trade-marks to issue public notices that it had adopted and used those two marks. The Registrar issued the notices under s. 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13 (relevant enactments are set out in an Annex). When the Registrar gives public notice, the applicant acquires "official marks" which are given enhanced protection under the law. The Act prohibits the use of marks that duplicate or resemble the official marks of public authorities (s. 9(1)).
[3] The Canadian Rehabilitation Council (which I will refer to as the "National Council") began this application for judicial review in an effort to overturn the Registrar's decision. It argues that any use that the Ontario Foundation made of the marks in question was under license to it and, therefore, did not give the Ontario Foundation any independent legal entitlement to them. Accordingly, it suggests that the Registrar's decision should be set aside.
[4] Based on the evidence presented to me, I agree with the National Council's position. Accordingly, I will grant this application for judicial review.
I. Issues
[5] There are three issues to consider here:
1. Is the National Council's evidence admissible in these proceedings?
2. What is the appropriate standard of review that should be applied to the Registrar's decision?
3. Should the Registrar's decision be overturned?
[6] Originally, the National Council argued that the Ontario Foundation was not a "public authority" for purposes of s. 9(1)(n)(iii) of the Act. It withdrew that issue, so it is unnecessary for me to consider it.
II. Analysis
A. Is the National Council's evidence admissible in these proceedings?
[7] Usually, courts decide applications for judicial review on the basis of the evidence before the decision-maker. There are exceptions to this general rule where new evidence shows that the decision-maker made a procedural error or an error of law, or breached the rules of natural justice.
[8] Here, the National Council wishes to tender evidence showing that the Registrar should not have granted the public notices that the Ontario Foundation had sought. Specifically, it wants to prove that the Ontario Foundation was using the marks in question under license from it and did not have any independent entitlement to them. The National Council argues that the Ontario Foundation's use of those marks should not have caused the Registrar to issue public notices under s. 9(1)(n)(iii) of the Act.
[9] In my view, in the circumstances of this application for judicial review, the National Council's evidence should be admitted.
[10] The Registrar's decision whether to issue a public notice under s. 9(1)(n)(iii) is based simply on the applicant's assertion that it is a public authority that has adopted and used the official mark in question: Piscitelli v. Ontario (Liquor Control Board), 2001 FCT 868, [2001] F.C.J. No. 1243, [2002] 1 F.C. 247 (T.D.) (QL); Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario, [2001] 1 F.C. 577; [2000] F.C.J. No. 1743 (T.D.) (QL). Typically, the applicant tenders little, if any, evidence. Those who might oppose the application have no opportunity to dispute the applicant's assertions except on judicial review (or, if a party, by way of appeal).
[11] Given the perfunctory nature of the Registrar's decision, it is appropriate to allow a party contesting the public notice an opportunity to present new evidence relating to the adoption and use of an official mark on judicial review. In turn, the original applicant may tender further proof of its own: FileNet Corp v. Canada (Registrar of Trade Marks) 2002 FCA 418, [2002] F.C.J. No. 1508 (C.A.) (QL).
[12] In addition, it strikes me that the issue here is one of mixed fact and law: whether the respondent had "adopted and used" the official marks in question. Yet, there was no evidence before the Registrar on which to decide this question. Therefore, it is appropriate that the Court receive evidence on judicial review so that the issue can be decided in a proper factual context.
B. What is the appropriate standard of review that should be applied to the Registrar's decision?
[13] The applicant argues that the Registrar's decision should be reviewed on a correctness standard; that is, that I should substitute my conclusion for the Registrar's if I find that the Registrar's decision was incorrect. The respondent argues that I should overturn the Registrar's decision only if I find that it was unreasonable.
[14] In my view, the appropriate standard of review flows from the nature of the Registrar's decision and the need to admit fresh evidence. As mentioned, the Registrar's decision to issue a public notice under s. 9(1)(n)(iii) is based on the public authority's mere assertion that it has adopted and used the official mark in question. A party wishing to challenge the notice may do so on judicial review and may tender evidence to support its position.
[15] If I conclude that the fresh evidence supplied is probative - in the sense that it would have materially affected the Registrar's decision - I must come to my own conclusion about whether the public authority had indeed adopted and used the official mark. In other words, I must decide whether the Registrar's decision to issue a public notice was correct: Piscitelli, above. On the other hand, if the new evidence would not have had any material effect on the Registrar's decision, I would have to consider whether the decision was reasonable based on the evidence before the Registrar: Magnotta Winery Corp. v. Vintners Quality Alliance, 2001 FCT 1421, [2001] F.C.J. No. 1941 (T.D.) (QL).
[16] Here, the National Council provided evidence about its relationship with the Ontario Foundation over the past five decades. I believe that this evidence would have materially affected the Registrar's decision. Therefore, I must consider whether the Registrar's decision was correct, in light of the evidence before me.
C. Should the Registrar's decision be overturned?
(1) Further Background
[17] It is important to understand the history of the relationship between the parties in order to decide whether the Ontario Foundation adopted and used the marks "March of Dimes" and "Ontario March of Dimes".
[18] The National Council is the present-day incarnation of a national organization created in 1951 called the Canadian Foundation for Poliomyelitis. Its early fund-raising campaigns took place under the banner "The March of Dimes". The Ontario Foundation was also created in 1951 as one of several provincial chapters of the national body. In 1958, the Canadian Foundation for Poliomyelitis registered the trade-mark "The March of Dimes". Four years later, it assigned its trade-mark to the newly-created National Council, a merger of the Canadian Foundation for Poliomyelitis and the Crippled Children.
[19] In 1965, the National Council entered into an agreement with the Ontario Foundation. The agreement granted the Ontario Foundation, as a licensee of the National Council, permission to use "The March of Dimes". The parties entered into a new and similar agreement in 1971. This second agreement was renewable annually. However, there is little evidence showing that the Ontario Foundation renewed it. Renewal documents exist only for the years 1988 and 1989. Still, the conduct of the parties over the years suggests that they considered themselves bound by the 1971 licensing agreement. For its part, the Ontario Foundation did not expressly terminate it. It continued to pay the fees due under it. And it continued to use the mark "The March of Dimes", which the agreement permitted it to do.
[20] The National Council proposed a new agreement in the 1990s, but the Ontario Foundation did not sign it. The parties negotiated, but failed to reach a new deal. The National Council considered the 1971 agreement to continue to be in force.
[21] In 1997, the National Council asked the Registrar to issue public notices for the marks "March of Dimes" and "The March of Dimes". The Registrar complied.
[22] The Ontario Foundation is dissatisfied with the National Council's performance as a national charity under the March of Dimes banner and does not wish to continue to pay annual licensing fees. Hence its decision in 2001 to seek public notices under s. 9(1)(n)(iii) of the Act. Public notices would give it an independent right to use and protect the marks "March of Dimes" and "Ontario March of Dimes". Since it obtained those notices in 2001, the Ontario Foundation has ceased paying annual fees to the National Council.
(2) Has the Ontario Foundation "adopted and used" the official marks in issue?
[23] The Ontario Foundation has organized fundraising efforts under the banners "March of Dimes" and "Ontario March of Dimes" for decades. It says that it has clearly "adopted and used" those marks and, therefore, was entitled to public notices for them under s. 9(1)(n)(iii) of the Trade-marks Act.
[24] The Ontario Foundation argues that it has a particularly strong claim to the name "Ontario March of Dimes" because the National Council obviously never had any entitlement to that mark. The National Council had neither registered it nor obtained public notice for it under s. 9(1)(n)(iii) of the Act, as it had for other similar marks. As such, the Ontario Foundation strenuously submits that it was entitled to seek and obtain public notice for "Ontario March of Dimes". Further, it suggests that for present purposes it is irrelevant whether this mark might be confused with the National Council's marks.
[25] I agree that the issue of confusion does not arise under s. 9(1)(n)(iii) of the Act. However, I believe I must treat the marks "March of Dimes" and "Ontario March of Dimes" equally in this proceeding, despite the Ontario Foundation's distinct and more forceful claim to "Ontario March of Dimes". Since all of the various forms of the "March of Dimes" marks used by the Ontario Foundation derived from its licensing arrangement with the National Council, I believe they merit equivalent treatment.
[26] The Ontario Foundation used various forms of the "March of Dimes" mark over the years: "March of Dimes", "The March of Dimes" and "Ontario March of Dimes". During the relevant time, the National Council specifically granted the Ontario Foundation permission to use the mark "The March of Dimes." While the Ontario Foundation also used the marks "March of Dimes" and "Ontario March of Dimes", this use derived solely from its status as a provincial licensee of the National Council and served to identify it accordingly. It had no independent legal entitlement to these marks. It had neither registered them as trade-marks nor, until 2001, sought public notice of them as official marks. The National Council no doubt tolerated all of these uses because they enured to its benefit by advancing the charitable causes to which it was devoted.
[27] In theory, then, if the National Council had insisted on the punctilio of its intellectual property rights, it could have sought remedies against the Ontario Foundation for infringement of its registered trade-marks or official marks. However, at the same time, this would have been at cross purposes with the licensing agreement between the parties and the beneficent objectives that underlay it.
[28] The Ontario Foundation argued that the National Council's trade-mark "The March of Dimes" was registered only for purposes of its campaigns to raise funds for polio patients. Therefore, it says, the National Council cannot dispute the Ontario Foundation's use of that trade-mark in relation to disabled persons generally. However, this argument ignores the fact that in 1997 the National Council had also obtained public notices for "The March of Dimes" and "March of Dimes" which prevented the Ontario Foundation, and others, from using any similar mark. The National Council's official marks were protected by s. 9(1) of the Trade-marks Act before the Ontario Foundation sought its own public notices.
[29] The Trade-marks Act provides that a licensee's use of a trade-mark is for the benefit of the licensor (s. 50). No similar provision exists for official marks. The Ontario Foundation argued that this means that licensed use of an official mark does not enure to the benefit of the licensor and, therefore, that it was entitled to seek and obtain its own public notices for the disputed marks. It cited in its favour Canada Post Corp. v. Post Office, [2001] 2 F.C. 63 (T.D.) (QL); (2000), 8 C.P.R. (4th) 289. There, Justice Danièle Tremblay-Lamer held that a licensor who sought public notice under s. 9(1)(n)(iii) could not prove adoption and use of a mark simply by showing that its licensees had used it. She noted that s. 9(2) of the Act recognizes that a public authority may permit another entity to use an official mark, but it does not equate that use with use by the public authority itself. In other words, a licensor who applies for public notice must show that it actually used the mark itself.
[30] Justice Andrew MacKay took a different approach in Magnotta Winery Corp., above. He held that licensed use of the official mark "Icewine" constituted use by the public authority, the Vintners Quality Alliance, that had obtained public notice for it.
[31] The situation in Canada Post and Magnotta Winery Corp. differs from the case before me. In those cases, the question was whether a public authority could prove use of a mark by showing that its licensees had used it. Here, the question is whether a licensee (the Ontario Foundation) can satisfy s. 9(1)(n)(iii) by showing use of a mark that is the subject of a contract with its licensor. To my mind, it is unnecessary to decide the issue in Canada Post and Magnotta Winery Corp. in order to determine whether the Ontario Foundation has proved adoption and use of the marks for which it sought public notice. In my view, it has not.
[32] If I were to accept the Ontario Foundation's argument, it would mean that a public authority that held trade-marks and obtained public notices of its official marks would risk limiting the scope of its intellectual property by entering into a licensing agreement with another public authority. A licensee would be free to obtain its own public notices and benefit from the corresponding remedies under the Trade-marks Act based solely on the rights it obtained under that agreement. I would not recognize use of an official mark under license from another public authority as constituting "adoption and use" for purposes of s. 9(1)(n)(iii) of the Act.
[33] Based on this analysis, I must grant this application for judicial review. The Registrar's decision to issue public notices for the Ontario Foundation's requested marks was incorrect and must be quashed.
JUDGMENT
THIS COURT'S JUDGMENT IS that:
1. The application for judicial review is granted.
"James W. O'Reilly"
F.C.J.
Annex
| Trade-marks Act, R.S.C. 1985, C. T-13
Prohibited marks 9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
...
(n) any badge, crest, emblem or mark
... (iii) adopted and used by any public authority, in Canada as an official mark for wares or services, In respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;
Excepted uses (2) Nothing in this section prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of any mark (a) described in subsection (1) with the consent of Her Majesty or such other person, society, authority or organization as may be considered to have been intended to be protected by this section; or (b) consisting of, or so nearly resembling as to be likely to be mistaken for (i) an official sign or hallmark mentioned in paragraph (1)(i.1), except in respect of wares that are the same or similar to the wares in respect of which the official sign or hallmark has been adopted, or (ii) an armorial bearing, flag, emblem or abbreviation mentioned in paragraph (1)(i.3), unless the use of the mark is likely to mislead the public as to a connection between the user and the organization.
Licence to use trade-mark 50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner. |
|
Loi sur les marques de commerce, L.R.C. 1985, ch. T-13 Marques interdites 9. (1) Nul ne peut adopter à l'égard d'une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit_: [...]
n) tout insigne, écusson, marque ou emblème_: [...] (iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services, à l'égard duquel le registraire, sur la demande de Sa Majesté ou de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi;
Exception (2) Le présent article n'a pas pour effet d'empêcher l'adoption, l'emploi ou l'enregistrement, comme marque de commerce ou autrement, quant à une entreprise, d'une marque_: a) visée au paragraphe (1), à la condition qu'ait été obtenu, selon le cas, le consentement de Sa Majesté ou de telle autre personne, société, autorité ou organisation que le présent article est censé avoir voulu protéger; b) composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit_: (i) tout signe ou poinçon visé à l'alinéa (1)i.1), sauf à l'égard de marchandises identiques ou de marchandises semblables à celles à l'égard desquelles ce signe ou poinçon a été adopté, (ii) les armoiries, drapeaux, emblèmes et sigles visés à l'alinéa (1)i.3), sauf si l'emploi de la marque est susceptible d'induire en erreur le public quant au lien qu'il y aurait entre l'utilisateur de la marque et l'organisation visée à cet alinéa.
Licence d'emploi d'une marque de commerce 50. (1) Pour l'application de la présente loi, si une licence d'emploi d'une marque de commerce est octroyée, pour un pays, à une entité par le propriétaire de la marque, ou avec son autorisation, et que celui-ci, aux termes de la licence, contrôle, directement ou indirectement, les caractéristiques ou la qualité des marchandises et services, l'emploi, la publicité ou l'exposition de la marque, dans ce pays, par cette entité comme marque de commerce, nom commercial - ou partie de ceux-ci - ou autrement ont le même effet et sont réputés avoir toujours eu le même effet que s'il s'agissait de ceux du propriétaire. |
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FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-610-01
STYLE OF CAUSE: CANADIAN REHABILITATION COUNCIL FOR THE DISABLED DBA EASTER SEALS/MARCH OF DIMES NATIONAL COUNCIL v. REHABILITATION FOUNDATION FOR THE DISABLED DBA ONTARIO MARCH OF DIMES
PLACE OF HEARING: TORONTO, ON
DATE OF HEARING: March 30, 2004
REASONS FOR JUDGMENT
AND JUDGMENT BY: THE HONOURABLE MR. JUSTICE O'REILLY
APPEARANCES BY:
Mr. Anthony Prenol FORTHE APPLICANT
Mr. Ronald E. Dimock FOR THE RESPONDENT
Ms. Janet M. Fuhrer
SOLICITORS OF RECORD:
BLAKE, CASSSELS & GRAYDON LLP
Toronto, Ontario FOR THE APPLICANT
RIDOUT & MAYBEE LLP
Ottawa, Ontario FOR THE RESPONDENT