Benson & Hedges (Canada) Limited (Appellant)
v.
Kiewel-Pelissier Breweries Limited (Respondent)
and
The Registrar of Trade Marks
Trial Division, Noël A.C.J.—Ottawa, April 27
and May 1, 1972.
Trade marks—Expungement—Registrar of Trade Marks—
Appeal from decision of—Jurisdiction of Federal Court—
Trade Marks Act, 1952-53, c. 49, s. 44.
The person who instigates proceedings under section 44
of the Trade Marks Act for expungement of a registered
trade mark is entitled to appeal to the Federal Court from
the dismissal of his application by the Registrar of Trade
Marks.
Broderick & Bascom Rope Co. v. Registrar of Trade
Marks (1971) 65 C.P.R. 209, followed.
MOTION.
Rose-Marie Perry for appellant.
N. Fyfe for respondent.
NOEL A.C.J.—Respondent moves for an
order quashing the appeal made by the appel
lant, a contestant under section 44 of the Trade
Marks Act (S.C. 1952-53, c. 49), from a deci
sion of the Registrar of Trade Marks not to
expunge the respondent's trade mark and
design, Registration No. 116,574, in Canada on
the basis that this Court has no jurisdiction to
hear it.
Counsel for the respondent's submission
appears to be that:
(1) the proceedings under section 44 of the
Trade Marks Act are ex parte involving the
Registrar and the owner of the trade mark
only;
(2) the person who calls upon the Registrar
to activate the section 44 procedure is not a
party to the proceedings and therefore has no
status;
(3) if a right of appeal does exist it is only
with respect to the issue as defined in section
44(3) of the Act, based on the evidence stated
in section 44(2) of the Act;
(4) that the Attorney General alone is the
person who can do something in the event the
statement of the owner supplied as required
by section 44(2) is false.
Before dealing with the question of jurisdic
tion it may be useful to point out that the
Registrar under the procedure set down in the
above section can do one of three things. He
can
(1) accept the evidence and make a finding
not to expunge such as here;
(2) accept the evidence and amend the regis
tration. He may indeed decide that a trade
mark is being used in association with some
wares and not with others and therefore
restrict the registration to particular wares;
(3) on the evidence, decide to expunge the
registration.
In order to do this, however, he must have
before him reliable evidence on which to base
his decision. If he does not have reliable evi
dence or if the statement by the owner is false
or mistaken then he has taken a decision on the
basis of what in my view is no evidence at all
and he is in no different position than he was in
Re Wolfville Holland Bakery Ltd. (1964) 42
C.P.R. 88, where the owner of the trade mark
had failed to respond to the Registrar and
where, nevertheless, he was allowed in appeal
to put his evidence before the Court.
Respondent's submission that the party who
instigates proceedings under section 44 of the
Act, i.e., the appellant here, is not entitled to be
a party or to be heard on an appeal, cannot be
entertained in the light of the decision of Thur-
low J. in Broderick & Bascom Rope Co. v.
Registrar of Trade Marks (1971) 65 C.P.R. 209
at p. 213 who says clearly that he is so entitled
and I am of that view even if the matter of
jurisdiction was not raised in that case.
It indeed appears to me that as section 44 of
the Act clearly contemplates that such a person,
(1) may upon a written request and after paying
the prescribed fee call upon the Registrar to
initiate the proceedings provided under the sec
tion; (2) may under section 44(2) be heard or
make representations to the Registrar; and (3)
is, under section 44(4), entitled to receive notice
of the Registrar's decision and his reasons
therefor, such a person is clearly a party to the
proceedings and therefore entitled to the appeal
referred to in section 44(5) of the Act.
Section 44(5) indeed deals with the possibility
of an appeal being taken and this appeal is
restricted to no specific party or person and can
only be the appeal provided for under section
55(1) which again is unrestricted.
It follows, of course, that respondent's
motion is 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.