Centennial Grocery Brokers Limited (Applicant)
v.
The Registrar of Trade Marks (Respondent)
Trial Division, Heald J.—Toronto, February 28;
Ottawa, March 1, 1972.
Trade Marks—Practice—Time for filing opposition to
application for registration—Registrar of Trade Marks—
Jurisdiction to extend time—Appeal from order—Trade
Marks Act, R.S.C. 1970, c. T-10, s. 46(2).
Section 46(2) of the Trade Marks Act gives the Registrar
of Trade Marks jurisdiction to extend the time for filing a
statement of opposition to an application for registration of
a trade mark after the expiration of the one month period
fixed by s. 37(1) for the advertisement of the application if
he is satisfied that the delay was not reasonably avoidable,
and without requiring notice to anyone; and the Court
should not interfere with the Registrar's exercise of discre
tion unless he was clearly wrong.
Berback Quilting Ltd. v. Registrar of Trade Marks
[1958] Ex.C.R. 309, distinguished.
APPLICATION.
M. S. Johnston for applicant.
W. Caskie for respondent.
HEALD J.—This is an application by originat
ing notice of motion for:
(1) an order that, in this matter, the Registrar
of Trade Marks be prohibited from taking any
further proceedings under section 37 of the
Trade Marks Act, and such proceedings as
have been taken, be quashed;
(2) that an ordèr of mandamus be directed to
the Registrar of Trade Marks to allow and
register the trade mark "Erin", the subject of
application serial no. 338,800 and issue a
certificate of its registration.
The relevant facts are simple. Applicant
applied for registration of the trade mark
"Erin" under application serial no. 338,800.
Pursuant to the provisions of section 36 of the
Trade Marks Act, the Registrar directed adver
tising of said application. The said application
was advertised on August 25, 1971. The adver
tisement period expired on September 25, 1971,
a Saturday, and consequently, the due date for
the filing of a statement of opposition under
section 37(1) was Monday, September 27,
1971.
Up to that point in time, no statement of
opposition had been filed with the Registrar. On
October 8, 1971, and prior to the actual allow
ance of applicant's registration, a request on
behalf of Ireland American Candy Corporation
was made to the Registrar for an extension of
time within which to oppose applicant's applica
tion. Said application was made under the
provisions of section 46(2) of the Trade Marks
Act and the Registrar granted an extension of
time until November 25, 1971. The statement
of opposition by said Ireland American Candy
Corporation was in fact filed on November 4,
1971.
Applicant attacks the said purported exten
sion of time. The pertinent sections of the
Trade Marks Act are section 38(1) and section
46(1) and (2) which read as follows:
38. (1) When an application either has not been opposed
and the time for the filing of a statement of opposition has
expired or it has been opposed and the opposition has been
decided finally in favour of the applicant, the Registrar
thereupon shall allow it.
46. (1) If, in any case, the Registrar is satisfied that the
circumstances justify an extension of the time fixed by this
Act or prescribed by the regulations for the doing of any
act, he may, except as in this Act otherwise provided,
extend the time after such notice to other persons and upon
such terms as he may direct.
(2) An extension applied for after the expiry of such time
or the time extended by the Registrar under subsection (1)
shall not be granted unless the prescribed fee is paid and the
Registrar is satisfied that the failure to do the act or apply
for the extension within such time or such extended time
was not reasonably avoidable.
Applicant submits that under said section
38(1), the Registrar was duty bound to allow its
application at the expiration of the 30 day
advertisement period contemplated under sec
tion 37 and that accordingly, the Registrar had
no jurisdiction to grant an extension of time in
these circumstances and that, therefore, the
purported extension of time to November 25,
1971 was a nullity.
The applicant relies mainly on the case of
Berback Quilting Ltd. v. Registrar of Trade
Marks [1958] Ex.C.R. 309, where Fournier J.
said at page 312:
... It is true that, according to s. 37(1) of the Act, any
person may file a statement of opposition within one month
from the advertisement of the application. But if no state
ment of opposition is filed or no request for an extension of
time to file such a statement is made during the period of
one month from the advertisement, the Registrar is in duty
bound to follow the directions contained in s. 38(1) of the
Act.
The last words of this section—"the Registrar thereupon
shall allow it" are mandatory. The Registrar has no choice.
When the application has not been opposed and the time for
the filing of a statement of opposition has expired, he must
allow the registration.
This being so, the extension of time provided for by s.
46(1) must be applied for prior to the expiration of the time
fixed by the Act. In my opinion, the wording of the section
cannot be construed otherwise, because the moment the
time for the filing of the statement of opposition has expired
the applicant is entitled to the registration and the Registrar
shall allow the registration.
Any person, before the time fixed for filing a statement of
opposition, may apply for an extension of time. After the
expiration of the time fixed and up to the date on which a
registration is allowed, the Registrar, in his discretion, may
grant an extension of time, if he is satisfied that the circum
stances justify such an extension.
Applicant here is in effect arguing that the
combined effect of section 38(1) and (2) is that
the Registrar must allow an application immedi
ately after the time for opposition has expired
unless within that time an opposition has been
filed or a request for extension has been
received.
With deference, I cannot give effect to this
argument. First of all, I do not think the Ber -
back case (supra) decided this point. The above
views of Fournier J. were more in the nature of
obiter than anything else. Furthermore, the
comments of Fournier J. upon which the appli
cant relies were dealing with an application
under section 46(1) which must be made within
the 30 day period. In the case at bar, the
application was made outside the 30 day period
and such an application is surely contemplated
under the provisions of section 46(2). Fournier
J. would seem to agree with this view where he
says at page 313:
... After the expiration of the time fixed and up to the date
on which a registration is allowed, the Registrar, in his
discretion, may grant an extension of time, if he is satisfied
that the circumstances justify such an extension.
Dr. Fox has dealt with this question in his
Second Edition, Volume I, at page 367 as
follows:
The meaning of the word "thereupon" contained in sec
tion 38(1) and section 39(1) does not necessarily require
registration to be effected by the Registrar immediately.
Dr. Fox relied for this statement on the case of
Continental Oil Co. v. Commissioner of Patents
[1934] Ex.C.R. 244 at p. 255, where the mean
ing of the word "forthwith" in section 39 of the
Unfair Competition Act was being discussed.
Maclean J. said at page 255:
... I do not think the Act is to be construed as meaning that
applications must of necessity be disposed of forthwith, or
that, in a case of this kind, the first application is, on the
ground of priority of application, entitled to the registration.
The fact that the indexes of applications are open to public
inspection, and that upon request certified copies of an
application must be furnished to applicants, must mean that
it was intended that some time might elapse between the
date of applications and the disposition thereof, and that if
any person, upon inspection of an index or an application,
perceived grounds for objection to an application, he might
in an appropriate manner communicate his objection to the
Registrar, and if he made out a substantial case, and the
Registrar so thought, I apprehend, effect should be given to
the objection.
In the case at bar, the explanation for the delay
in filing the opposition to the registration is
contained in the letter from Messrs. Smart &
Biggar to the Registrar dated October 8, 1971.
The second paragraph of said letter states as
follows:
Our client at all times was interested in opposing registra
tion of this mark and in fact, on the 20th day of July, this
firm conducted a search in the Trade Marks Office in
respect of the word ERIN and became aware of the 338,-
800 ERIN application here in question. The writer, Mr.
Kokonis, has had telephone conversations with the principal
attorneys in New York City with respect to that application
and the fact of advertisement of said application in the
Trade Marks Journal of August 25, 1971, was made aware
to the client. Unfortunately that date was not entered into
our records and thus, when the expiry date for commencing
opposition proceedings came up, it was not brought to the
writer's attention. The principal attorney was on the tele
phone today with the writer inquiring as to the status of the
matter and confirmed instructions to oppose the said
application and to obtain an extension of time for that
purpose, if necessary.
It seems clear from this letter that somebody
forgot to properly diarize this matter and this is
the real reason the opposition was not filed
within the 30 day period.
The Registrar, at the time he made his deci
sion to grant an extension of time, had all the
circumstances before him from which he could
conclude that the error or oversight "was not
reasonably avoidable" as contemplated in sec
tion 46(2).
I should not interfere with the Registrar's
exercise of discretion unless he was clearly
wrong and I am not prepared to say that he was
clearly wrong having regard to the facts in this
case.
Applicant's second ground of attack was that
section 46(1) requires that the extension of time
contemplated therein can only be granted "after
such notice to other persons and upon such
terms as he may direct". Applicant says that
those words in section 46(1) require that notice
be given to the applicant before the extension
was given and that applicant received no such
notice in this case.
In my view, there are two answers to this
submission by the applicant. Firstly, the exten
sion given by the Registrar here was not under
section 46(1) where the words in question
appear but rather under section 46(2) where no
such words appear. In other words, there is no
requirement under section 46(2) for notice to be
given to anyone.
Secondly, even if subsections (1) and (2) of
section 46 are read together so that the notice
provisions of section 46(1) are held to apply to
applications under section 46(2), a close reading
of said notice provisions make it clear that the
Registrar has a wide and unfettered discretion
as to what persons should be given notice. The
section says "extend the time after such notice
to other persons and upon such terms as he may
direct". I think the Registrar can clearly decide,
as he did here, that it was not necessary to give
notice to anybody. He exercised his discretion
after considering the relevant facts and in my
opinion, he was acting within the power given
to him in so doing.
Applicant's final attack on the Registrar's
decision was that it had not been established
that the objector here, Ireland American Candy
Corporation, was a "person" within the mean
ing of section 37(1) of the Act. This point has
been dealt with in the English case of In re
Bodrero's Application (1938) 55 R.P.C. 185 at
pp. 188 and 189, where it was held that the
expression "any person" in the Trade Marks
Act has always been taken to mean precisely
what it says. It was further held that trade mark
matters are to be considered not only from the
points of view of an applicant and an opponent,
but also from that of the public. In the case of
In Re Havana Commercial Co. (1916) 33 R.P.C.
399, an opponent entirely without merits was
held to be entitled to bring an opposition. I
agree with these decisions and it is my view that
the expression "any person" in section 37(1) of
our Act is certainly wide enough to include the
objector here.
For all of the above reasons, I am of the
opinion that applicant's motion herein must be
dismissed with costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.