Date: 20000119
Docket: T-664-99
BETWEEN:
CANADIAN TIRE CORPORATION, LIMITED
Applicant
- and -
FOXCO LTD., and
REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER
McGILLIS J.
[1] Counsel for the applicant Canadian Tire Corporation ("Canadian Tire") has brought a motion seeking, among other things, to strike out the affidavit of Aubrey W. Corey dated May 18, 1999. That affidavit was filed by the respondent Foxco Ltd. ("Foxco") in this appeal of the decision of the Registrar of Trade-marks ("Registrar") under subsection 56(5) of the Trade-marks Act, R.S.C. 1985, c. T-36 as amended.
[2] On May 6, 1993, Foxco filed an application to register a trade-mark. On November 1, 1995, its application was advertised in the Trade-marks Journal. On April 6, 1998, Canadian Tire filed a statement of opposition. Shortly thereafter, Foxco filed a counterstatement. Canadian Tire filed evidence in support of the opposition. Foxco filed no evidence. Only Canadian Tire filed a written argument, but both parties participated in the oral hearing before the Registrar.
[3] By decision dated February 16, 1999, the Registrar rejected Canadian Tire's opposition.
[4] On April 14, 1999, Canadian Tire instituted an appeal of the decision of the Registrar under subsection 56(5) of the Trade-marks Act by serving and filing an application. Canadian Tire also served and filed evidence in support of its appeal.
[5] On May 19, 1999, Foxco served and filed the affidavit of Aubrey W. Corey dated May 18, 1999 in response to Canadian Tire's materials.
[6] On the motion to strike the affidavit evidence, counsel for Canadian Tire submitted that, given Foxco's decision not to file evidence before the Registrar in the opposition proceedings, it had no right on appeal to file "additional evidence", within meaning of subsection 56(5) of the Trade-marks Act. In support of her position, counsel for Canadian Tire relied primarily on the decisions Primax Computer Corp. v. Primax Electronic (U.S.A.) Inc. (1995), 62 C.P.R. (3d) 75 (F.C.T.D.) and Starlight Foundation v. Brain Tumor Foundation of Canada, [1999] F.C.J. No. 1444, T-773-99 (September 1, 1999) (T.D.).
[7] Neither counsel brought to my attention the decision Austin Nicols & Co. v. Cinnabon, Inc. (1998), 82 C.P.R. (3d) 513 (F.C.A.), in which the Federal Court of Appeal considered the meaning of the expression "additional evidence" in subsection 56(5) of the Trade-marks Act. In that decision, Décary J.A., writing for the Court, stated, in part, as follows, at pages 518-520 and 522-525:
| [6] The very literal interpretation of the words "in addition to" ("en plus de") in subsection 56(5) of the Act proposed by counsel for the appellant is quite attractive at first blush considering the particular regime set out in section 45. |
| [7] That interpretation, however, does not withstand closer scrutiny. |
| [8] The words themselves ("in addition to", "en plus de") are not as clear as the appellant says. They do not in themselves necessarily imply that there had to be prior evidence to which further evidence could be added. The fact is that if one is added to zero, the result will be one; there was an addition although technically speaking there was nothing to add it to. I would not readily give to the word "addition" a meaning that defies the basic rules or arithmetic. |
| [9] Also, and perhaps more importantly, the proposed interpretation of the words "in addition to" does not resist an examination of the context - that of the appeal process set out in section 56 - in which they are found, nor does it resist an examination of the context - that of a proceeding under section 45 - in which they are to be applied. |
| [10] Section 56 is a provision of general application. The appeal process it establishes is not qualified in any way; it applies to all appeals by whatever party from any proceeding before the Registrar. It is not directed solely to decisions made under section 45 nor is it reserved to registered owners who have filed some evidence in the proceeding before the Registrar. The words used are meant to be wide enough to encompass any peculiarity associated with the particular type of proceeding at issue in the appeal. |
| [11] The terms of section 56 do not permit an interpretation whose practical effect would be to deprive anyone in any given case of a meaningful right of appeal. |
| To retain the literal interpretation suggested by the appellant would also allow a registered owner who files insignificant or irrelevant evidence before the Registrar to "add" evidence in appeal. The intention of Parliament could not have been to punish those who disregard the Registrar"s notice and, at the same time, to encourage the filing of insignificant or irrelevant evidence before the Registrar. |
| [13] The role of the court sitting in appeal of a decision of the Registrar is made abundantly clear by the last words of subsection 56(5). In giving the Court the same discretion as that "vested in the Registrar", Parliament has recognized that the Court sitting in appeal is expected to be able to decide the issues as if they were tried for the first time before the Court. This, in my view, suggests that a registered owner has in appeal the same opportunity to file evidence he had before the Registrar. |
| [18] While the issue of "additional evidence" does not appear to have been previously addressed, as such, by the Exchequer Court or by the Federal Court of Appeal, it was in my view implicitly decided by President Thorson in Re Wolfville Holland Bakery Ltd. (1964), 42 C.P.R. 88 (Ex. Ct). |
| [21] This Court, in Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1981] 1 F.C. 679 at 682, 53 C.P.R. (2d) 62 (F.C.A), referred with approval to the decision in Wolfville Holland Bakery Ltd. as one of the cases that "clearly and adequately expound the law" with respect to the scope and purpose of section 45 (then section 44). |
| [22] In more recent years, judges of the Trial Division have consistently allowed a registered owner to file evidence in section 45 appeals even if he had not filed any before the Registrar. The issue was squarely addressed only twice, by Strayer J. (as he then was) in Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (F.C.T.D.), and Gibson J. in Nissei Plastics Industrial Co. v. Pascal & Associates (1994), 58 C.P.R. (3d) 395 (F.C.T.D.), and both ruled in favour of the registered owner. |
| [23] In Lewis Thomson, supra, para. 22 at 485, Strayer J. found as follows: |
| In any event, I am faced with the fact that there is an appeal. It appears to me by virtue of s-s. 56(5) of the Trade Marks Act, that the court is obliged to entertain the appeal and to entertain further evidence. There is no condition laid down in the Trade Marks Act which would limit the court in the evidence it receives: that is, the Act does not limit the court to receiving only such evidence as was not reasonably available to the appellant or not known about at that time. None of these criteria is prescribed, and it appears to be open to the appellant to bring in any new evidence. The fact that this evidence was not put before the registrar, it seems to me, is a proper matter for consideration with respect to costs but not otherwise. |
| [24] In Nissei Plastics, supra, para. 22 at 401-02, Gibson J. would have adopted in literal interpretation similar to that proposed here by the appellant, but for the fact that "the objective of section 45 and thus of related appeals under s. 56" mandated "that section 56(5) should not be interpreted strictly against the [registered owner]". |
| [25] In all the other cases, the same result was reached after little if any discussion |
| [26] There is, therefore, a clear line of authority to the effect that subsection 56(5) should not be strictly construed as against the registered owner in appeals related to section 45 proceedings. A court of appeal should not without compelling reasons disturb such a clearly established trend in as practical an area as the one at issue. |
| [27] I note that a similarly consistent line of authority governs the interpretation of subsection 56(5) in the context of opposition proceedings (see Choice Hotels International, Inc. v.Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340 (F.C.T.D.), Rouleau J. (in appeal, Court File A-284-96); Assurance-Vie Desjardins v.North American Life Assurance Co. (1995), 63 C.P.R. (3d) 225 (F.C.T.D.), Dubé J.; Skydome Corp. v. Toronto Heart Industries Ltd. (1997), 72 C.P.R. (3d) 546 (F.C.T.D.), Lutfy J.; Automaxi S.A. v.U.A.P. Inc. (1993), 47 C.P.R. (3d) 158 (F.C.T.D.), Teitelbaum J., affirmed (1994), 59 C.P.R. (3d) 82 (F.C.A.)). The sole exception appears to be that of Denault J. in Primax Computer Corp. v.Primax Electronic (U.S.A.) Inc. (1995), 62 C.P.R. (3d) 75 (F.C.T.D.). [Emphasis added] |
[8] A review of that decision confirms that Foxco was clearly entitled to file affidavit evidence on the appeal under subsection 56(5) of the Trade-marks Act.
[9] The motion is dismissed. The costs of the motion are awarded to Foxco, taxable at the upper end of the scale in Column III, in any event of the cause. On consent, Canadian Tire shall serve and file its application record on or before March 17, 2000.
"D. McGillis"
J.F.C.C.
Toronto, Ontario
January 19, 2000
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| STYLE OF CAUSE: CANADIAN TIRE CORPORATION, LIMITED |
- and -
FOXCO LTD., and
| DATE OF HEARING: MONDAY, JANUARY 17, 2000 |
| PLACE OF HEARING: TORONTO, ONTARIO |
| REASONS FOR ORDER BY: McGILLIS J. |
DATED: WEDNESDAY, JANUARY 19, 2000
| APPEARANCES: Mr. Barbara Kornovski |
| For the Respondent, Foxco Ltd. |
| No One Appearing for the Respondent, Registrar of Trade-Marks |
| SOLICITORS OF RECORD: Cassels Brock & Blackwell |
| Sim, Hughes, Ashton and McKay |
| For the Respondent, Foxco Ltd. |
| Deputy Attorney General of Canada |
| For the Respondent, Registrar of Trade-Marks |
FEDERAL COURT OF CANADA
Date: 20000119
Docket: T-664-99
Between:
| CANADIAN TIRE CORPORATION, LIMITED |
Applicant
- and -
FOXCO LTD., and
Respondents
REASONS FOR ORDER