T-515-80
Crush International Limited (Appellant)
v.
Canada Dry Limited (Respondent)
Trial Division, Cattanach J.—Ottawa, March 4
and 18, 1980.
Practice — Extension of time — Trade marks — Notice of
appeal filed on time but service of notice on respondent not on
time — Appellant applies to extend the time within which to
serve a copy of the notice of appeal, and respondent applies to
quash the notice of appeal for failure to comply with the
provisions of the Act — Whether the provisions of subs. 56(3)
of the Trade Marks Act are obligatory or directory, and
whether the appellant is limited to the remedy specifically
requested — Application for leave to extend time to perfect
appeal allowed, and motion to quash notice of appeal refused
— Trade Marks Act, R.S.C. 1970, c. T-10, s. 56(1),(2),(3) —
Federal Court Rule 3(1)(c).
Appellant seeks leave to extend the time within which to
serve a notice of appeal from a decision of the Registrar of
Trade Marks. Respondent applies to quash notice of appeal on
the ground that the appellant failed to send a copy of the notice
of appeal to the respondent within the time required by subsec
tion 56(3) of the Trade Marks Act. The notice of appeal was
filed with the Registrar and the Court within the prescribed
time. The issues are whether the provisions of subsection 56(3)
are obligatory or directory and whether the appellant is limited
to the remedy specifically requested.
Held, appellant's application for leave to perfect its appeal is
allowed, but without costs, and respondent's motion is refused,
but respondent is entitled to costs. The provisions of section 56
of the Trade Marks Act are, on their face obligatory and
cannot, without very strong reasons, be held to be only directo
ry. No such strong reasons exist. Being obligatory it follows
that failure to strictly follow the provisions results in nullifica
tion. It is by subsection 56(1) that the time limit of two months
is prescribed, which time limitation may be extended either
before its expiry or after. There is no specific provision in
section 56 whereby the time specified in subsection 56(3) per se
can be extended which is what is requested in the appellant's
notice of motion. The premise that the appellant is restricted to
its request for an order extending the time to serve a copy of
the notice of appeal on the respondent under subsection 56(3) is
not accepted. What the appellant seeks is an order extending
the time within which to perfect its appeal, and to perfect the
appeal incidentally requires an extension of the time applicable
in subsection 56(3). That end can be accomplished by an
extension of the time to appeal under subsection 56(1). The
only manner in which the time applicable under subsection
56(3) may be extended is by an extension of the time to appeal
under subsection 56(1).
APPLICATION.
COUNSEL:
J. Guy Potvin for appellant.
Duncan Finlayson, Q.C. for respondent.
SOLICITORS:
Scott & Aylen, Ottawa, for appellant.
Kingsmill, Jennings, Toronto, for respondent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: The appellant, by notice of
motion dated February 14, 1980 made returnable
in Ottawa, Ontario on February 21, 1980, seeks
leave to extend the time within which to serve a
notice of appeal from a decision of the Registrar of
Trade Marks given on December 4, 1979 and
dispatched on that date upon the respondent.
By notice of motion also dated February 14,
1980, returnable in Toronto, Ontario on February
25, 1980, the respondent applied to quash the
notice of appeal dated February 4, 1980 and filed
in the Registry Office and with the Registrar on
that same date on the ground that the appellant
had failed to comply with the requirements of
subsection 56(3) of the Trade Marks Act, R.S.C.
1970, c. T-10.
It was agreed between counsel that both motions
should be heard in Ottawa aforesaid on March 4,
1980. Due to the fact that difficulties were
encountered by counsel in hearing the applications
simultaneously dated but returnable in different
cities on different dates the times outlined in the
appellant's notice of motion required amendment
which was also agreed upon between counsel.
It was further agreed between counsel that if the
motion by the respondent were denied and leave
was granted as requested in the appellant's
application then the order should recite that:
(I) leave be granted to file an amended notice of appeal
forthwith;
(2) the term within which to serve the respondent with an
amended notice of appeal should be extended to five days
from the date of such order;
(3) leave be granted the appellant to file and serve additional
affidavit evidence within 30 days of the date of the order;
(4) the respondent shall have 30 days from the serving of the
amended notice of appeal upon it to file its reply, and
(5) the respondent shall have a further 30 days from the
filing of its reply to file and serve further affidavit evidence.
Subsections 56(1), (2) and (3) read:
56. (1) An appeal lies to the Federal Court of Canada from
any decision of the Registrar under this Act within two months
from the date upon which notice of the decision was dispatched
by the Registrar or within such further time as the Court may
allow, either before or after the expiry of the two months.
(2) The appeal shall be made by way of notice of appeal filed
with the Registrar and in the Federal Court of Canada.
(3) The appellant shall, within the time limited or allowed by
subsection (1), send a copy of the notice by registered mail to
the registered owner of any trade mark that has been referred
to by the Registrar in the decision complained of and to every
other person who was entitled to notice of such decision.
By virtue of subsection (1) the time within
which to file the notice of appeal is two months
from December 4, 1979, that is February 4, 1980
or such further time as the Court may allow either
before or after the expiry of the two months.
By virtue of subsection (2) the appeal shall be
by way of notice of appeal filed with the Federal
Court.
The notice of appeal was filed on February 4,
1980 which was within the two-month period.
By virtue of subsection (3) the appellant shall
"within the time limited or allowed by subsection
(1), send a copy of the notice by registered mail",
in this instance to the respondent.
The notice of appeal was filed with the Federal
Court and the Registrar of Trade Marks on Febru-
ary 4, 1980 which was within the two-month
period and accordingly the two-month period pre
scribed in subsection (1) was not extended. There
was no need to do so at that time.
However a copy of the notice of appeal was not
sent to the respondent, as is required by subsection
(3), on February 4, 1980 but, by some oversight by
the clerical staff in the mailing room of the appel
lant's solicitors, the notice of appeal was sent to
the respondent on February 5, 1980 which was
beyond the prescribed time.
As I understood the submission by counsel for
the respondent in support of this motion to quash
the appeal on the ground that the appellant failed
to comply with the requirements of section 56 of
the Trade Marks Act it was, in detail, substantial
ly as I shall outline.
The requirements contained in the relevant sub
sections of section 56 which subsections are quoted
above, are:
1. that an appeal lies from the decision of the Registrar
within two months from the date upon which notice of the
decision by the Registrar was dispatched by him; (in this
instance it is agreed that the decision was dispatched on
December 4, 1979 and the two-month period expired on
February 4, 1980);
2. that the appeal shall be by way of a notice of appeal and
the notice of appeal shall be filed with the Registrar of Trade
Marks and in the Federal Court of Canada;
3. that the notice of appeal was filed with the Registrar and
the Court within the time of two months prescribed by
subsection 56(1), that is on February 4, 1980;
4. that a copy of the notice of appeal was not sent to the
respondent within two months as prescribed by subsection
56(1) and that subsection governs the time within which the
copy of the notice of appeal must be sent to the respondent
under subsection 56(3).
If the provisions of subsection 56(3) are merely
directory then that would destroy the merit of the
respondent's contention.
In my view the provisions of section 56 of the
Trade Marks Act are, on their face, obligatory
and cannot, without very strong reasons, be held to
be only directory. No such strong reasons exist.
Being obligatory it follows that failure to strictly
follow the provisions results in nullification.
The respondent's contentions are predicated
upon the circumstance that the appellant in para
graph 3 of its notice of motion seeks an order:
extending the time provided by section 56(3) of the Trade
Marks Act for service of the Notice of Appeal ... .
Following on that specific order being sought it
is the contention by the respondent that subsection
56(3) of the Trade Marks Act precludes the grant
of the application so sought by the appellant.
On that premise the contention of the respond
ent is irrefutable. It is by subsection 56(1) that the
time limit of two months is prescribed, which time
limitation may be extended either before its expiry
or after. The time fixed by subsection 56(1) gov
erns the time within which the copy of the notice
of appeal must be sent. Since it was not extended it
remains at two months. There is no specific provi
sion in section 56 whereby the time specified in
subsection 56(3) per se can be extended which is
what is requested in paragraph (3) of the appel
lant's notice of motion.
Rule 3(1)(c) of the Federal Court Rules by
which the Court may enlarge or abridge any time
appointed by the Rules cannot avail the applicant
to enlarge the time expressly provided by the
statute. The appellant's remedy, if one exists, lies
within section 56 of the Trade Marks Act.
I entertain no doubt whatsoever that the three
conditions prescribed by subsections 56(1), (2) and
(3) are conditions precedent to the validity of the
appeal.
In the circumstances of this appeal there shall
be: (1) a notice of appeal filed in the Federal
Court of Canada, (2) a notice of appeal filed with
the Registrar of Trade Marks and (3) a copy of
the notice of appeal sent to the respondent and all
of three requirements must be done on or before
February 4, 1980, the date upon which the time
limitation prescribed by subsection 56(1) had
expired and had not been extended.
As I have said before, accepting the premise
that the appellant is seeking an order to extend the
time to serve the copy of the notice of appeal on
the respondent, which for the reasons I have
expressed I do not think subsection 56(3) contem
plates or permits, the steps following on such
premise are so irrefutably logical that the conclu
sion which the respondent reaches that there is no
valid appeal, is unavoidable.
However I do not accept the premise on which
the logic following thereon is based, that is that
the appellant is restricted to its request for an
order extending the time to serve a copy of the
notice of appeal on the respondent under subsec
tion 56(3).
Viewed realistically what the appellant seeks is
an order extending the time within which to per
fect its appeal, despite the language of paragraph
(3) of its notice of motion, and to perfect the
appeal incidentally requires an extension of the
time applicable in subsection 56(3). That end can
be accomplished by an extension of the time to
appeal under subsection 56(1). That is what the
appellant, in reality, is seeking despite the inept
language adopted to secure that end in the notice
of motion. The only manner in which the time
applicable under subsection 56(3), which is the
defect sought to be cured to achieve the object of
perfecting the appeal, is by an extension of the
time to appeal under subsection 56(1). In directly
requesting the ultimate objective the appellant
neglected to specifically include the necessary
intermediate step to that ultimate objective.
I think that this omission from the notice of
appeal must be supplied by implication.
These motions by the appellant and by the
respondent while separate, were heard simultane
ously. They are so inextricably intertwined that
the two simultaneous motions can best be con
sidered as one proceeding.
That being so for the reasons and upon the basis
indicated the appellant's application for leave to
perfect its appeal (as I have interpreted the perti
nent portion of the appellant's motion to be) is
allowed and as a necessary consequence of the
appellant's motion being allowed the respondent's
motion is refused.
Despite the fact that the respondent's motion is
refused the circumstances dictate that the respond
ent shall be entitled to its costs and despite the fact
that the appellant was successful the circum
stances dictate that the appellant is not entitled to
its costs.
The formal order will implement these conclu
sions and the additional matters which counsel for
the parties have agreed upon and as were set forth
at the outset.
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.