T-2359-82
Wordex Incorporated (Appellant)
v.
Wordex and Registrar of Trade Marks (Respond-
ents)
Trial Division, Cattanach J.—Ottawa, December
2, 1982, February 2 and 17, 1983.
Trade marks — Practice — Whether Registrar's granting of
extension of time to file statement of opposition under s. 46(2)
of Trade Marks Act without notification to appellant a "deci-
sion" subject to appeal — In view of absence of requirement of
notification under s. 46(2), appellant not party to application
— Appeal premature, there being no opposition proceedings
until statement of opposition filed — Appeal dismissed —
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 37(1),(2),(3),(5),(6),
44, 46(1),(2), 56(1) (am. by Federal Court Act, R.S.C. 1970
(2nd Supp.), c. 10, s. 64(2)) — Federal Court Act, R.S.C. 1970
(2nd Supp.), c. 10, s. 28.
Without notice to the appellant, the Registrar of Trade
Marks, acting under section 46 of the Trade Marks Act,
granted the respondent a retroactive extension of time within
which to file a statement of opposition. The question is whether
this decision is subject to appeal as being a "decision" within
the meaning of subsection 56(1) of the Act.
Held, the appeal should be dismissed. Since the appellant is
not entitled to notice, it cannot be a party to application.
Furthermore, the appeal is premature, there being no opposi
tion proceedings until a statement of opposition has been filed.
The appellant will nevertheless have the right, when the opposi
tion proceedings come into being, to attack the finding of fact,
which is a condition precedent to the Registrar's decision, as to
whether the respondent's failure to apply within the time limit
prescribed "was not reasonably avoidable".
CASES JUDICIALLY CONSIDERED
APPLIED:
Centennial Grocery Brokers Limited v. Registrar of
Trade Marks, [1972] F.C. 257; 5 CPR (2d) 235 (T.D.);
Fjord Pacific Marine Industries Ltd. v. Registrar of
Trade Marks et al., [1975] F.C. 536; 20 CPR (2d) 108
(T.D.); National Indian Brotherhood, et al. v. Juneau, et
al. (No. 2), [1971] F.C. 73 (C.A.).
REFERRED TO:
Anheuser-Busch, Inc. v. Carling O'Keefe Breweries of
Canada Limited et al., [1983] 2 F.C. 71 (C.A.); Zerker
v. Jeffers et al., [1950] O.W.N. 597 (C.A.); Frederick v.
Aviation & General Insurance Co. Ltd., [1966] 2 O.R.
356 (C.A.); Denton v. Jones et al. (1977), 1 C.P.C. 65
(Ont. S.C.).
COUNSEL:
D. R. Adams for appellant.
A. J. S. Davidson for respondent Wordex.
J. A. Pethes for respondent Registrar of
Trade Marks.
SOLICITORS:
McTaggart, Adams & Martin, Ottawa, for
appellant.
A. J. S. Davidson, Ottawa, for respondent
Wordex.
Deputy Attorney General of Canada for
respondent Registrar of Trade Marks.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: The facts as set forth in the
notice of appeal are admitted.
The statement of material facts reads:
2. The appellant WORDEX INCORPORATED is a company incor
porated under the laws of the Province of Ontario and having
its principal office or place of business in Willowdale, Ontario.
The respondent WORDEX apparently, although this is not
admitted, is a California corporation, having a principal office
or place of business in Oakland, California, in the United
States of America.
3. The appellant filed application no. 456,360 on July 17th,
1980 for the registration of the trade mark WORDEX.
4. Application no. 456,360 was duly considered by the Trade
Marks Office and published for opposition purposes on March
25th, 1981.
5. Application no. 456,360 is still pending being the subject of
opposition proceedings with a third party A.M.B. DATA PROD
UCTS CANADA LTD.
6. Under cover of a letter dated January 20th, 1982, the agents
for the respondent WORDEX wrote to the Registrar of Trade
Marks and requested a late extension in time.
7. Under cover of a letter dated February 8th, 1982, without
consultation with the appellant herein, The Registrar of Trade
Marks wrote to the agents for the Respondent and advised that
a retroactive extension of time had been granted to the prospec
tive opponent WORDEX, the respondent herein, to formally
oppose the application by the appellant herein.
As stated in paragraph 4 the application was
published for opposition purposes on March 25,
1981.
Subsection 37(1) of the Trade Marks Act
[R.S.C. 1970, c. T-10] reads:
37. (1) Within one month from the advertisement of an
application, any person may, upon payment of the prescribed
fee, file a statement of opposition with the Registrar.
The respondent, Wordex, had through its trade
mark agent resident in Ottawa, Canada, applied
for the registration of the identical word, "Wor-
dex", as a trade mark on December 12, 1979.
Naturally when the appellant applied for the
registration of the same word as a trade mark on
July 17, 1980, that circumstance led to the publi
cation of the appellant's application for opposition
in the Trade Marks Journal on March 25, 1981.
The time within which to file an opposition
under subsection 37(1) expired on April 25, 1981
or thereabouts.
In support of its reply to the appellant's notice
of appeal the trade mark agent for the respondent,
Wordex, swore and filed an affidavit in which it
was sworn that from December 12, 1979, the date
of the filing of the respondent's application for the
trade mark, "Wordex", no watch of notices of
publication in the Canadian Trade Marks Journal
was maintained by the trade mark agent for the
purpose of alerting his client to applications by
others for confusing trade marks.
In explanation of this failure to maintain such a
watch the affiant had placed reliance upon a prac
tice adopted by the Registrar of providing, prior to
publication for opposition, notice of a conflicting
application both to the party making the conflict
ing application and to the party with whose
application the other application was considered to
be in conflict.
An extract from the Trade Marks Examination
Manual, a publication by the Registry for direc
tion and guidance of employees but which had
become known to and was available to practition
ers before the Trade Marks Office was exhibited
to the affidavit. It is a manual only and not
intended to, nor can it supersede the provisions of
the Trade Marks Act.
Through some administrative oversight the
practice adopted in the Trade Marks Office was
not followed in this instance.
The agent of the respondent, having been lulled
into a sense of security by the practice, did not see
the advertisement in the Trade Marks Journal
published March 25, 1981. Because of the over
sight he was not advised of the application for the
registration of the word, "Wordex", as a trade
mark by the appellant on July 17, 1980 and was
given no notice until the official action by the
Registrar on December 30, 1981.
That action was by letter of that date from the
Examiner in the office of the Registrar of Trade
Marks notifying the agent of the respondent,
Wordex, of the co-pending application for the
identical trade mark as that applied for by it by
the appellant herein and also advising that the
appellant's application for opposition was pub
lished in the Trade Marks Journal on March 25,
1981.
Now fully aware that the time within which to
file an opposition on behalf of his client forthwith
the trade mark agent bestirred himself and on
January 20, 1982 applied for an extension of time
within which to file a statement of opposition
outlining the reasons for failing to file within the
prescribed time.
This application was made under the provisions
of section 46 of the Trade Marks Act ranged
under the heading, EXTENSIONS OF TIME. Section
46 reads:
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.
By virtue of subsection 46(2) an extension shall
not be granted unless the Registrar is satisfied that
the failure to act within the prescribed time "was
not reasonably avoidable".
Apparently the Registrar must have been so
satisfied because by decision the time for opposing
the appellant's application was extended.
By paragraph 7 of the statement of facts in the
appellant's notice of appeal the appellant states
that the decision by the Registrar to extend the
time for the respondent to file its opposition was
done without notification to the appellant and
without opportunity for the appellant to oppose the
respondent's application for the extension of the
time to file an opposition.
In paragraph 4 of the Registrar's reply to the
notice of appeal it is contended that there is no
obligation upon the Registrar to give the appellant
notice of the respondent's application to extend the
time.
In paragraph 3 of the reply by the respondent,
Wordex, to the appellant's notice of appeal, it is
contended that the appellant is without status to
contest the grant of the extension of time by the
Registrar.
It was from the decision of the Registrar dated
February 8, 1982 that the appellant appealed pur
suant to subsection 56(1) of the Trade Marks Act
[as am. by the Federal Court Act, R.S.C. (2nd
Supp.), c. 10, s. 64(2)] which reads in part:
56. (1) An appeal lies to the Federal Court of Canada from
any decision of the Registrar ....
It is the decision of the Registrar to extend the
time, well after the expiry of that time, on the
unilateral and ex parte application by the respond
ent, Wordex, to do so which the appellant seeks to
appeal as being a "decision" within the meaning of
that word as it appears in the words, "any decision
of the Registrar" in subsection 56(1).
The hearing of that appeal concluded on
December 2, 1982 at which time the decision was
reserved.
As is readily apparent from the pleadings the
contention was that the appeal by the appellant
was premature, that it had no status to appeal and
that there was no lis or quasi lis between the
appellant and either of the respondents.
Immediately after the decision had been
reserved the decision of the Appeal Division in
Anheuser-Busch, Inc. v. Carling O'Keefe Brewer
ies of Canada Limited et al., dated November 22,
1982 [[1983] 2 F.C. 71] came to my attention.
The approach adopted by Heald J. who spoke
for the panel, was that the rationale for the deter
mination of what "decision" of the Registrar of
Trade Marks was subject to appeal within the
meaning of the words "any decision of the Regis
trar" as used in subsection 56(1) of the Trade
Marks Act is susceptible of coinciding with a
"decision" reviewable by the Appeal Division
under section 28 of the Federal Court Act [R.S.C.
1970 (2nd Supp.), c. 10] that is, succinctly put, to
review the "final" decision made by any federal
board, commission or tribunal other than a deci
sion of an administrative nature not required by
law to be made on a judicial or quasi-judicial
basis.
Since the question of the jurisdiction of the Trial
Division to hear the present appeal was raised and
argued as an issue and because the reasoning
adopted by the Appeal Division was equally sus
ceptible of precluding an appeal from a decision to
extend a time prescribed under subsection 46(2) to
file a statement of opposition under section 37 as
was the decision of the Registrar to grant or refuse
a stay in opposition proceedings under section 44
of the Trade Marks Act it was deemed expedient
to invite further representations in these respects
from the appellant and the respondents either
orally or in writing.
To do so is, in my opinion, the proper and
acceptable practice adopted in most courts and
considered by Megarry J. to be an abolute duty
when the decision which might influence the out
come of a matter under consideration has been
brought to the attention of the judge by counsel
for one or other of the parties or all parties or by
reason of the judge's own initiative.
The parties chose to make oral representations
and accordingly the hearing was continued on
February 2, 1983.
Counsel for the appellant advanced strong and
cogent reasons that the decision by the Registrar
to extend the time was not merely a procedural but
a substantive right and accordingly appealable and
further that the decision was not interlocutory but
final.
As authority for those contentions counsel for
the appellant relied on Zerker v. Jeffers et al.,
[1950] O.W.N. 597 [C.A.] at page 600, Frederick
v. Aviation & General Insurance Co. Ltd.,
[1966] 2 O.R. 356 [C.A.] at page 361 and Denton
v. Jones et al. (1977), 1 C.P.C. 65 [Ont. S.C.], to
the effect that a final order need not be the order
that finally determines the subject matter of the
litigation between the parties but one which dis
poses of a substantial issue affecting the substan
tive rights of the parties.
It was also contended by counsel for the
respondent, Wordex, that the decision by the Reg
istrar was purely administrative.
Because of the view I take of the matter it is not
necessary to decide either contention.
By subsection 37(1) a statement of opposition
may be filed after the advertisement of an
application.
Subsection 37(2) outlines the grounds of opposi
tion and subsection 37(3) outlines the content of
the opposition.
Under subsection 37(5) if the Registrar consid
ers that the opposition raises a substantial issue for
decision he shall forward a copy of the statement
of opposition to the applicant.
It is only when the Registrar considers the oppo
sition raises a substantial issue and forwards a
copy of the statement of opposition to the appli
cant and the applicant files a counter statement to
the statement of opposition as provided in subsec
tion 37(6) that opposition proceedings come into
being.
Until that time there is no lis or quasi lis
between the applicant and the opponent.
Thus the applicant has no status to intervene
until a statement of opposition has been received
and to do so is premature.
Subsection 46 (1) quoted above requires that
when the Registrar is satisfied that circumstances
justify an extension of time he may "extend the
time after such notice to other persons".
Subsection 46(2) applies to an extension applied
for after the time has expired (as is the case in this
instance) the Registrar shall not grant the exten
sion unless he is satisfied that the failure to act
within time "was not reasonably avoidable".
Thus the only parties to an application under
subsection 46(2) are the applicant for the exten
sion and the Registrar.
No notice is required to be sent by the Registrar
to any person advising of the receipt of the
application for the extension of time. (This is a
statutory provision and is not affected in any way
by the Trade Marks Examination Manual.)
This has been decided by Heald J. in Centennial
Grocery Brokers Limited v. Registrar of Trade
Marks, [[1972] F.C. 257]; 5 CPR (2d) 235 [T.D.]
when he said at page 261 [Federal Court Reports]:
In other words, there is no requirement under section 46(2) for
notice to be given to anyone.
Under subsection 56(1) an appeal lies from the
date upon which notice of the decision was dis
patched by the Registrar.
Under subsection 46(2) the only person entitled
to the notice of the Registrar's decision to extend
the time is the applicant for the extension.
No other person is entitled to be notified of the
grant of the extension of time.
It therefore follows that the appellant, not being
entitled to notice, cannot be a party to the decision
of the Registrar to extend the time and according
ly has no status to appeal.
I appreciate that in the Centennial case the
appeal was brought by originating notice of motion
and the relief sought was by the prerogative writ of
prohibition and mandamus which incidentally
were denied. The order sought was to prohibit the
Registrar from taking any further steps in the
opposition proceedings from which it would appear
to follow that opposition proceedings had begun.
In Fjord Pacific Marine Industries Ltd. v. Reg
istrar of Trade Marks et al., [[1975] F.C. 536];
20 CPR (2d) 108 [T.D.], an appeal was made
pursuant to section 56 of the Trade Marks Act
from the decision by the Registrar to extend the
time under subsection 46(2) within which the
respondent might oppose the appellant's applica
tion for registration of a trade mark. A statement
of opposition, not in issue in the appeal, had been
filed and a further opponent sought to join in
opposition to the application. This the Registrar
granted.
Mahoney J. cited the statement by Heald J. in
the Centennial case (supra) reading [at page 261
of the Federal Court Reports]:
The Registrar, at the time he made his decision 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 section 46(2).
I should not interfere with the Registrar's exercise of
discretion unless he was clearly wrong ....
Mahoney J. agreed with that statement of the
law and added [at page 540 of the Federal Court
Reports] :
... that where the statute prescribes a particular finding of fact
as a prerequisite to the exercise of discretion, that fact must be
found.
This is a statement of the law with which I fully
agree and I would add that the prerequisite finding
of fact must be correctly found.
That being so the validity of that finding of fact
may be put in issue, as it was before Mahoney J.
but for the reasons I have expressed above, that
decision by the Registrar cannot become an issue
available to the appellant herein to raise until the
statement of opposition has been filed and the
opposition proceeding therefrom begun.
Jackett C.J. in National Indian Brotherhood, et
al. v. Juneau, et al. (No. 2), [1971] F.C. 73 [C.A.]
pointed out that the words "decision or order" in
section 28 of the Federal Court Act is the order
that emanates from the tribunal after it has taken
such steps as it takes to reach the conclusion it is
required to make. It does not apply to the myriad
of decisions or orders the tribunal must make in
the course of the decision-making process.
However he added that any of such decisions
made may constitute a part of an attack on the
ultimate decision on the ground that there was a
breach of the rules of natural justice.
In so stating the Chief Justice does credence to
the maxim ubi jus, ibi remedium. The remedy for
the right is just postponed until the ultimate deci
sion of the tribunal is attacked for failure to grant
the intermediate right to a favourable decision to
the attacker.
In the present appeal for the reasons expressed
above the appellant has no immediate right to
appeal the decision of the Registrar to grant an
extension of time to oppose its application for the
registration of the trade mark for two reasons:
(1) first, because the statute by denying notice
of the application for extension of time to the
appellant thereby precluding the appellant from
being a party to that application, it being one
between the applicant therefor and the Regis
trar,
(2) the present appeal is premature, there being
no opposition proceedings until a statement of
opposition has been filed, the decision of the
Registrar, in the circumstances, to grant an
extension of time, being necessarily antecedent
to the commencement of those proceedings.
This is not to say that the appellant does not
have the right to attack the finding of fact which is
a condition precedent to the grant of an extension
of time applied for as not having been shown to
have been "reasonably avoidable".
In my view the appellant is not denied the
opportunity to assert and establish that right but
the opportunity is merely postponed until opposi
tion proceedings come into being.
The appeal is therefore dismissed but without an
award of costs to the appellant or to either one of
the respondents.
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.