T-4327-80
Silverwood Industries Limited (Applicant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Collier J.—Ottawa, October 29,
1980.
Trade marks — Extension of time for opposition proceed
ings requested by McDonald's — Extension dealt with after
Registrar allowed applicant's application under s. 38(1) of
Trade Marks Act — Whether Registrar has jurisdiction to
permit opposition proceedings after allowing application —
No power to rescind or vary because of error or other reasons,
a decision previously made by the Registrar of Trade Marks
(s. 38(2)) — Trade Marks Act, R.S.C. 1970, c. T-10, s. 38.
MOTION.
COUNSEL:
Nicholas Fyfe for applicant.
Duff Friesen for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for applicant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
delivered orally in English by
COLLIER J.: The relief sought in the applicant's
originating notice of motion is allowed. I have
some sympathy for the Registrar of Trade Marks.
As I see it, the request by McDonald's for an
extension of time within which to file opposition
proceedings was, inexplicably, never dealt with
until after the Registrar "allowed", on June 12,
1980, the application under subsection 38(1)
[Trade Marks Act, R.S.C. 1970, c. T-10]. As of
that date, the situation was (a) the application had
not been opposed; (b) there had, in fact, been no
extension of time for filing a statement of
opposition.
I cannot accept the submission that a request for
an extension of time must be taken to be the
commencement of opposition proceedings. A
request of that kind may be granted or refused.
Here the request was not acted upon until far
too late. At that time subsection 38(2), unfortu
nately, came into play. There is no power, as in
some statutes such as the Unemployment Insur
ance Act, 1971 [S.C. 1970-71-72, c. 48], to rescind
or vary because of error or other reasons, a deci
sion previously made by the Registrar of Trade
Marks.
I hold the decision to allow the application was
not a nullity. It stands. The Registrar cannot now
purport to permit opposition proceedings by any
one of the letters of August 21, 1980, extending
the time. He at this stage has no jurisdiction to do
so. There will be an order in the nature of prohibi
tion forbidding him to do so.
This is also, in my view, a proper case for relief
in the nature of mandamus. The Registrar has
received the declaration of use requested. Provided
that declaration meets the Registrar's require
ments, he is required by way of mandamus to
register the applicant's trade mark, and to issue
the appropriate certificate of registration.
What is the situation as to costs in this case? It
is sort of an unusual motion.
MR. FYFE: My Lord, I always like costs. I
suppose against that position I have to say that
certainly Mr. Justice Cattanach has always taken
the view that one ought not in the normal course of
events to be entitled to collect costs from the
Registrar.
THE COURT: Certainly that is the practice in the
ordinary appeal proceedings. This is not an appeal
proceeding.
What do you say, Mr. Friesen?
MR. FRIESEN: My Lord, in my submission, the
rationale for that practice prevails in a case such
as this as well. In my submission, it simply would
not be appropriate to call for costs against the
Registrar.
MR. FYFE: If I may make one further submission
in support of a request for costs. My Lord, it has
been indicated by my learned friend that there are
a number of pending matters, at least in my
offices, seeking relief akin to this. I rather suspect,
having argued the application today, that those
will have been disposed of, and perhaps some of
which will not have to bear the full costs out of its
own pocket of saving everybody else's case as well.
THE COURT: In the circumstances, in this case
there will be no order as to costs. Thank you very
much.
I will put out a formal pronouncement. I see no
reason for me to, in effect, say anything about, or
to preserve in any way, the right of any other
persons. It seems to me the legal consequences will
flow from my order. Parties such as McDonald's
will have to seek their own advice.
Thank you very much.
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.