T-1834-00
2003 FCT 518
A. Lassonde Inc. (Plaintiff)
v.
The Registrar of Trade-Marks (Defendant)
Indexed as: A. Lassonde Inc. v. Canada (Registrar of Trade-Marks) (T.D.)
Trial Division, Lemieux J.--Montréal, November 27, 2002; Ottawa, April 25, 2003.
Trade-Marks -- Practice -- Registrar of Trade-marks denying plaintiff, under Trade-marks Act, s. 47(1), further extension of time to file declaration of use of trade-mark "Oasis" as justification (failure to find suppliers, distributors) not significant -- Registrar's discretion to extend time for filing exercised within statutory framework imposing time limits for declaration of use because application for proposed trade-mark affecting priority of registration -- Requirement of significant and substantial reasons to justify extension related to Parliamentary intent in enacting s. 40(3) time limit -- No error in law, fact warranting Court's intervention -- New reasons provided by plaintiff not sufficient to affect exercise of Registrar's discretion.
Administrative Law -- Judicial Review -- Certiorari -- Plaintiff seeking to set aside Registrar's decision denying it extension of time to file declaration of use of trade-mark -- Standard of review of Registrar's decision under Trade-marks Act, s. 56 generally and where additional evidence filed in Trial Division -- Authority of Registrar to grant extension of time under Act, s. 47(1) discretionary -- Must be satisfied circumstances justify extension -- No error in law, in fact by Registrar warranting Court's intervention -- Registrar properly exercised discretion not to extend time.
This was an appeal from a decision of the Registrar of Trade-marks denying the plaintiff, under subsection 47(1) of the Trade-marks Act, an extension of time in which to file a declaration of commencement of use of its trade-mark "Oasis" for some of the wares and services covered in its application for registration. The plaintiff filed an application for registration on October 20, 1983, for the trade-mark "Oasis", which it proposed to use in association with hundreds of wares and services identified in its application. On January 31, 1997, the Registrar issued a notice allowing the plaintiff to proceed to registration of its trade-mark providing that it filed a declaration of use pursuant to subsection 40(2) of the Act. Unable to file a declaration within the prescribed time, the plaintiff sought and obtained for an extension of time until January 31, 1998. On December 23, 1997, the plaintiff filed a declaration of use but only for a small portion of the wares and services covered by the application. In January and July 1998, it again requested an additional extension of six months in order to provide the Registrar with the required declaration of use. Further extensions were granted until July 31, 1998 and January 2000. The plaintiff justified its requests on the ground that it should soon be signing some commercial agreements needed for the use of the mark. However, on February 25, 2000, the Registrar refused to extend the time in which to file a declaration of use, on the ground that the reasons provided were not sufficient to justify a further extension of time. Finally, on August 2, 2000 the Registrar refused any further extensions, stating that the failure to find suppliers and distributors for all of the wares was not a "significant and substantial reason to justify. . . an additional extension." Additional evidence was filed in this Court by the plaintiff pursuant to subsection 56(2) of the Trade-marks Act: the affidavit of Jean Gattuso, plaintiff's chief executive officer and that of Micheline Tellier, an employee of plaintiff's solicitors and trade-mark agents.
The issue was whether the Registrar wrongly exercised his discretion in refusing the requested extension of time.
Held, the appeal should be dismissed.
The Federal Court of Appeal recently held that, in the absence of additional evidence adduced in the Trial Division, decisions of the Registrar under section 56 of the Act, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Judge must come to his own conclusion as to the correctness of the Registrar's decision.
The authority given by Parliament to the Registrar under subsection 47(1) of the Act to grant an extension of time, "if . . . the Registrar is satisfied that the circumstances justify it", is discretionary. The courts should not interfere where the statutory discretion has been exercised in good faith and, where required, in accordance with the principles of natural justice, and where reliance has not been placed upon considerations irrelevant or extraneous to the statutory purpose. Section 47 of the Act vests the Registrar with broad discretion to grant a request for an extension of time if he is satisfied that the circumstances justify it. The Court may not intervene unless the Registrar has erred in law or acted on a wrong principle in exercising his discretion. Such discretion must be exercised in the interest of promoting the purpose of the Act and the statutory provision to which it is attached.
Trade-Marks Act, section 40 deals with the registration of trade-marks the application for registration for which either declares that the mark has been used or proposes its use. Under subsection 40(3) of the Act, the date for filing a declaration of use is either six months following the date of the notice of allowance or, if the date is later, upon the expiration of the three years following the filing of the application for registration in Canada. If the declaration is not received by the cut-off date, the application for registration shall be deemed to be abandoned. Parliament has expressed itself very clearly: it did not want the use of a proposed trade-mark to go on forever, because an application for registration of a proposed trade-mark, under subsection 16(3) of the Act, affects the priority of registration. It is within this statutory framework that the Registrar must exercise his discretion to extend the time for filing a declaration of use. The requirement of significant and substantial reasons to justify allowing an extension after the period of three years from the date of notice allowance is clearly related to what Parliament had in mind when, in subsection 40(3) it limited the time for filing a declaration of use. Nothing in the evidence supported the plaintiff's submission that the Registrar refused even to consider the justifications advanced. The Registrar simply considered that the reason was not significant and substantial to justify the extension. The plaintiff did not identify an error in law or in fact that would warrant the Court's intervention. The two new reasons cited by the plaintiff to justify its failure to provide the Registrar with a declaration of use of the mark within the periods provided by the Act were not sufficient to affect the exercise of the Registrar's discretion. The so-called "new" reasons in Mr. Gattuso's affidavit were not new in reality: they were vague and imprecise and lacked concreteness, considering that the application for registration covered hundreds of wares and services. These new reasons were not sufficient to justify granting some time to allow the plaintiff to file one or more declarations of use for the balance of the services and wares listed in its application for registration. The Registrar properly exercised his discretion not to extend the time.
statutes and regulations judicially considered
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 16(3), 40(1) (as am. by S.C. 1993, c. 44, s. 231), (2) (as am. idem), (3) (as am. idem), (4), (5) (as am. idem), 47, 56.
cases judicially considered
applied:
Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145; (2000), 5 C.P.R. (4th) 180; 252 N.R. 91 (C.A.); Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27; (1998), 36 O.R. (3d) 418; 154 D.L.R. (4th) 193; 50 C.B.R. (3d) 163; 33 C.C.E.L. (2nd) 173; 221 N.R. 241; 106 O.A.C. 1; Maple Lodge Farms Ltd. v. Government of Canada, [1982] 2 S.C.R. 2; (1982), 137 D.L.R. (3d) 558; 44 N.R. 354; Danjaq Inc. v. Zervas et al. (1997), 75 C.P.R. (3d) 295; 135 F.T.R. 136 (F.C.T.D.).
considered:
Maple Lodge Farms Ltd. v. R., [1981] 1 F.C. 500; (1980), 114 D.L.R. (3d) 634; 42 N.R. 312 (C.A.); Centennial Packers Ltd. v. Can. Packers Inc. (1987), 13 C.I.P.R. 310; 15 C.P.R. (3d) 103; 13 F.T.R. 241 (F.C.T.D.).
referred to:
Star-Kist Foods Inc. v. Canada (Registrar of Trade Marks) (1988), 18 C.I.P.R. 237; 20 C.P.R. (3d) 53 (F.C.A.).
APPEAL from a decision of the Registrar of Trade-marks denying the plaintiff, under subsection 47(1) of the Trade-marks Act, an extension of time in which to file a declaration of commencement of use of its trade-mark "Oasis". Appeal dismissed.
appearances:
Bruno Barrette and Pascal Lauzon for plaintiff.
Mariève Sirois-Vaillancourt for defendant.
solicitors of record:
Brouillette Charpentier Fortin, Montréal, for plaintiff.
Deputy Attorney General of Canada for defendant.
The following is the English version of the reasons for order rendered by
Lemieux J.:
A. INTRODUCTION
[1]By way of an appeal pursuant to section 56 of the Trade-marks Act [R.S.C., 1985, c. T-13] (the Act), A. Lassonde Inc. (Lassonde) is seeking to overturn the decision made by the Registrar of Trade-marks (Registrar), dated August 2, 2000, denying it, under subsection 47(1) of the Act, an extension of time in which to file a declaration of commencement of use of its "Oasis" trade-mark for some of the wares and services covered in its application for registration No. 511,133, for which the Registrar had issued a notice of allowance on January 31, 1997.
B. BACKGROUND
[2]Lassonde's appeal occurs in the following context.
[3]An application for registration (the application) was filed with the Registrar by Lassonde on October 20, 1983, for the trade-mark "Oasis", which it proposed to use in the future in association with hundreds of wares and services identified in its application. This application for registration was assigned application number 511,133.
[4]On January 31, 1997, following an internal review of the application, approval by the Registrar for purposes of publication of the application, the publication of this application, objection proceedings by third parties and settlement or withdrawal of these objections, the Registrar issued a notice of allowance to Lassonde allowing it to proceed to registration of the trade-mark "Oasis" in association with the many wares and services specified in its application but, as the Registrar mentioned in the notice of allowance, provided the following requirement was met:
Pursuant to subsection 40(2) of the Trade-marks Act, a DECLARATION of use of the Trade-mark in Canada in association with the wares and/or services specified in the application must be filed on or before July 31, 1997 failing which the application shall be deemed abandoned pursuant to subsection 40(3) of the Act. [Emphasis added.]
[5]Lassonde was unable to file a declaration of use within the time prescribed by subsection 40(2) [as am. by S.C. 1993, c. 44, s. 231] of the Act and was obliged to ask the Registrar for an extension of time, which it did through its agents by a letter dated July 28, 1997, the essential part of which reads:
[translation] The applicant respectfully requests an additional period of six months in order to be able to provide you with the required declaration of use, i.e. to January 31, 1998. [Defendant's Record, at p. 40.]
[6]On August 27, 1997, the Registrar granted the requested extension, in the following words:
In accordance with your request, you are hereby granted an extension of time until January 31, 1998, in which to comply with section 40(2) of the Trade-marks Act.
It is noted that if the declaration of use is not filed within the prescribed date, this application will be abandoned in compliance with section 40(3) of the Trade-marks Act. [Defendant's Record, page 41.] [Emphasis added.]
[7]On December 23, 1997, Lassonde filed a declaration of use but only for a small portion of the wares and services covered by the application. Furthermore, it advised the Registrar to [translation] "note that the applicant still intends to use the mark in association with the rest of the wares and services. A declaration of use will be filed at an appropriate time." (Defendant's Record, page 28.)
[8]On January 29, 1998, Lassonde was again obliged to request an additional extension of six months, telling the Registrar that it [translation] "still intends to use the mark in association with the rest of the wares and services" (Defendant's Record, page 42). On February 6, 1998, the Registrar granted an extension of time to July 31, 1998, in the same terms as those of August 27, 1997, but with the addition of a fourth paragraph which reads as follows:
You are reminded that under the conditions of Section 47(1) of the Trade-marks Act, the Registrar must be satisfied that the circumstances justify granting an extension of time fixed by this Act. [Plaintiff's Record, page 76.] [Emphasis added.]
[9]The Registrar demanded that the declaration of use filed by Lassonde on December 23, 1997, be amended, and this was done on March 19, 1998. On July 10, 1998, the Registrar notified Lassonde that the amended declaration of use [translation] "is now acceptable" and that this declaration [translation] "is therefore a partial declaration" and advised it to [translation] "take notice that if an application for an additional extension of time is not forwarded to our Office by July 31, 1998, the application will proceed to registration in association with the wares listed above". (Plaintiff's Record, page 67.)
[10]On July 13, 1998, Lassonde filed a new request for an additional six months, i.e. until January 31, 1999, in order to be able to provide the Registrar with the required declaration of use. Lassonde justified its request by telling the Registrar [translation] "in fact, the applicant should soon be signing some commercial agreements needed for the use of the mark and still intends to use the mark in association with the other wares included in the application" (emphasis added) (Plaintiff's Record, page 66). On August 11, 1998, Lassonde was granted the extension by the Registrar on the same conditions as those stated by the Registrar in his letter of February 6, 1998, with the exception that the final paragraph was in boldface type (Plaintiff's Record, page 65), i.e. the reminder that under subsection 47(1) of the Act, the Registrar must be satisfied that the circumstances justify an extension.
[11]Notwithstanding the fact that on July 10, 1998, the Registrar had accepted the partial declaration of use filed by Lassonde, he refused to issue it a certificate of registration for the wares covered by this partial declaration of use, citing a notice dated August 7, 1991.
[12]Lassonde reacted to this refusal of the Registrar in a letter to the Registrar dated November 19, 1998 (Plaintiff's Record, page 62), in which it submitted that the notice of August 7, 1991 could not justify his refusal since [translation] "this notice does not state anywhere that a certificate of registration cannot be issued for a portion of the wares following the filing of a declaration of partial use, and that a second can be issued following the filing of a second declaration of use for the balance of the wares" (emphasis added). Lassonde argues that this notice of August 7, 1991 [translation] "only states that if the wares indicated in the declaration of use are not all the wares indicated in the application, the certificate of registration will include only those wares indicated in the declaration of use", adding [translation] "moreover, nothing in the Act prevents such a procedure. On the contrary, subsection 40(2) allows this procedure. Furthermore, this procedure is consistent with the one on a request for extension of the statement of the wares."
[13]Lassonde demanded that the Registrar issue it a certificate of registration for the declarations of use it had filed (those of July 10, 1998 and November 12, 1998, attached to the letter of its agents dated November 19, 1998).
[14]After an exchange of letters, the Registrar, on May 13, 1999, granted an extension until July 31, 1999, warning Lassonde to [translation] "note that if no reply is filed within the prescribed times, this application will proceed to registration in association with the partial declaration of June 9, 1998. If applicable, when the mark is registered, you may file a request to extend the statement of the wares/services and costs of $300 will then be required." (Registrar's emphasis) (Plaintiff's Record, page 57).
[15]In the same letter, the Registrar justified his refusal to issue a certificate of registration in association with the partial declarations of use, saying [translation] "we remind you that section 40(2) of the Act clearly states that the Registrar registers a trade-mark and issues a certificate of its registration on receipt of a declaration" and that "if an extension of time is granted, the mark remains pending. It is therefore not registered."
[16]A further extension, until January 31, 2000, was granted by the Registrar on August 13, 1999, pursuant to a request dated July 29, 1999 by Lassonde, which justified this extension again on the ground that it [translation] "should soon be signing some commercial agreements needed for the use of the mark and still intends to use the mark in association with the other wares included in the application" (Plaintiff's Record, page 56).
[17]On February 25, 2000, Lassonde was met with a refusal by the Registrar to extend the time in which to file a declaration of use, pursuant to a request by Lassonde dated January 28, 2000, in which it justified the need for an extension on the same grounds it had expressed in its application of July 29, 1999, i.e. [translation] "to enable the applicant to sign the commercial agreements in relation to the use of the trade-mark in association with the other wares included in its application". Here is what the Registrar stated:
[translation]
We acknowledge receipt of your correspondence of January 28, 2000.
The reasons set out in your letter are not considered sufficient to justify a further extension of time.
You are hereby notified, therefore, that if the requirements set out in the notice of allowance issued January 31, 1997, have not been fulfilled by April 25, 2000, the application will proceed to registration in association with the other claims.
Please take notice that no further extension of time will be granted unless considerable and substantial reasons are submitted that clearly justify the granting of an additional extension of time. [Defendant's Record, page 54.]
[18]By a letter dated April 25, 2000, Lassonde raised with the Registrar the issue of the extension of time for the rest of the wares and services covered by the 1983 application. Lassonde's trade-mark agents submitted [translation] "that the applicant is entitled to obtain one or more additional six-month extension(s) of time". They referred to the notice of August 7, 1991 which, they said, "does not state anywhere that a certificate of registration cannot be issued for a portion of the wares following the filing of a declaration of partial use, and that a second can be issued following the filing of a second declaration of use for the balance of the wares following a partial extension of time". The arguments advanced by Lassonde's agents were similar to those expressed by them in their letter of November 19, 1998.
[19]The last two paragraphs of their letter of April 25, 2000, read as follows:
[translation] In view of the reasons expressed in your recent correspondence, we request a final decision by the Registrar of Trade-marks concerning the issuance of a registration for a portion of the wares pursuant to the filing of a partial declaration of use and the grant of the requested extension(s) of time concerning the filing of subsequent declarations of use for the purposes of issuing a second trade-mark registration, in order to appeal this decision to the Trial Division of the Federal Court of Canada.
The extensions of time requested by the applicant are justified by the fact that it has not yet managed to find suppliers and distributors for all the wares and services covered by this application, but the applicant maintains its intention to use the trade-mark either itself or through licensees. [Emphasis added.]
C. THE DECISION
[20]The decision of the Registrar that Lassonde is challenging is dated August 2, 2000, and was made against the background described above.
[21]On August 2, 2000, the Registrar acknowledged receipt of the letter of April 25, 2000, sent by Lassonde's agents, stating that we [translation] "have noted your observations". The balance of this letter reads as follows:
[translation] Following a detailed review of your file, we note that the application was filed on October 20, 1983. The application has been pending for seventeen years.
Please note that no further extension of time will be granted, for "the fact that the applicant has not yet managed to find suppliers and distributors for all the wares and services covered by this application" is not considered by the Registrar of Trade-marks to be significant and substantial reason to justify granting an additional extension of time.
As requested in your letter of April 25, 2000, please find attached hereto the certificate of registration issued for the wares indicated in the declarations of June 9, 1998 and April 25, 2000. [Defendant's Record, page 55.] [Emphasis added.]
D. ADDITIONAL EVIDENCE IN THIS COURT
[22]Subsection 56(5) of the Act allows additional evidence in this Court. Two affidavits were filed by Lassonde: that of Jean Gattuso, now Lassonde's chief executive officer, and that of Micheline Tellier, an employee of Lassonde's solicitors and trade-mark agents.
[23]Mr. Gattuso deposes that Lassonde has for many years been making extended use of its trade-mark "Oasis" either by itself or through various licensees in various areas, and he gives some illustrations of this. He says the "Oasis" mark has been used in association with some restaurant services, the operations of a beverage room and a restaurant, some operating services of a natural foods and distilled water distribution store, health and beauty care services, some operating services of an aesthetics and health and beauty care establishment and natural foods store, and with some valves for the operation and adjustment of a system of underground irrigation and pressure regulators for underwater diving.
[24]Mr. Gattuso deposes that Lassonde is a business that depends a lot on its "Oasis" trade-mark [translation] "which constitutes one of its major assets. As illustrated earlier in paragraph 4 of my affidavit, Lassonde has experience in establishing licences for its trade-mark in various fields. And Lassonde is serious in its intention to use the "Oasis" trade-mark with the wares and services hereinafter listed and its attempts to find suppliers, distributors and/or licensees for the marketing in particular of promotional items to be sold in the normal course of business and/or of the following wares and services covered by revised registration application No. 511,133 dated August 26, 1997". And at that point his affidavit lists again the several hundred products and services listed in the application filed in 1983.
[25]Paragraphs 6 and 7 of his affidavit read as follows:
[translation]
| 6. The delays encountered by Lassonde in relation to the marketing of the wares and services referred to earlier are occasioned in particular by the consolidation and establishment of a licensing department within Lassonde; |
| 7. Likewise, Lassonde must continue and order studies on the marketing of some of the wares and some of the services referred to earlier, which may not be profitable in view of the costs and standards prevailing in Canada; |
[26]In her affidavit, Micheline Tellier produces the application for registration dated October 20, 1983, for the trade-mark "Oasis" bearing the application number 511,133, a copy of the revised allowance for registration dated August 26, 1997, a copy of the notice of allowance and a certified copy of the review file pertaining to the registration application for the period between July 18, 1997 and August 2, 2000. She lists a number of Canadian registrations that Lassonde holds in regard to the "Oasis" trade-mark.
E. RELEVANT STATUTORY PROVISIONS AND NOTICES
[27]Sections 40 [as am. by S.C. 1993, c. 44, s. 231), 47 and 56 of the Act provide:
40. (1) When an application for registration of a trade- mark, other than a proposed trade-mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration.
(2) When an application for registration of a proposed trade-mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the trade-mark and issue a certificate of registration on receipt of a declaration that the use of the trade-mark in Canada, in association with the wares or services specified in the application, has been commenced by
(a) the applicant;
(b) the applicant's successor in title; or
(c) an entity that is licensed by or with the authority of the applicant to use the trade-mark, if the applicant has direct or indirect control of the character or quality of the wares or services.
(3) An application for registration of a proposed trade-mark shall be deemed to be abandoned if the Registrar has not received the declaration referred to in subsection (2) before the later of
(a) six months after the notice by the Registrar referred to in subsection (2), and
(b) three years after the date of filing of the application in Canada.
(4) Registration of a trade-mark shall be made in the name of the applicant therefor or his transferee, and the day on which registration is made shall be entered on the register, and the registration takes effect on that day.
(5) For the purposes of subsection (3), section 34 does not apply in determining when an application for registration is filed.
. . .
47. (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 on such terms as he may direct.
(2) An extension applied for after the expiration of the time fixed for the doing of an act 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 that time or the extended time was not reasonably avoidable.
. . .
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on 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 expiration of the two months.
(2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.
(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 the decision.
(4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper.
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar. [Underlining added.]
[28]The notice of August 7, 1991, reads:
NOTICE
When the statement of wares or services stipulated in a declaration filed pursuant to Section 40(2) is confined to part of the wares or services identified in the allowed application, the certificate of registration will automatically be confined to the wares or services identified in the declaration, as far as the proposed use is concerned. [Emphasis added.]
[29]The notice of February 4, 1998, reads:
[translation] Section 40(3) of the Trade-marks Act provides that an application for registration of a proposed trade-mark shall be deemed to be abandoned if a Declaration of Use is not received by the office before the later of six months from the date of the notice of Allowance or three years from the date of filing the application in Canada.
The office currently grants extensions of time of six months upon expiration of the time limit to file a Declaration of Use if the request is justified and the prescribed $50.00 fee is received by the office.
Effective immediately, upon the expiration of three years from the initial deadline to file a Declaration of Use provided in the Notice of Allowance, the office will require significant substantive reasons which clearly justify a further extension of time and which set out in detail the reason(s) why it is not yet possible to file a Declaration of Use. The prescribed fee of $50.00 is required for each request.
Extensions of time of one year will generally be granted upon request when an applicant is awaiting approval for a product from a Government Department.
This new practice will apply to all requests received by the Office after the publication date of this notice. [Emphasis added.]
F. POSITION OF THE PARTIES
(a) Of the plaintiff
[30]Lassonde cites a number of reasons to overturn the Registrar's decision.
(1) It attacks the Registrar's notice dated August 7, 1991, concerning the interpretation of subsection 40(2) of the Act and contends, on the one hand, that under this subsection the Registrar may issue a certificate of registration for a portion of the wares and services following the filing of a partial declaration of use and, on the other hand, that a supplementary certificate of registration may be granted following the filing of a second declaration of use for the balance of the enumerated wares and services following an extension of time granted by the Registrar pursuant to section 47 of the Act.
(2) Lassonde further contends that the Registrar could not justify his decision concerning the notice of August 7, 1991, since in doing so he is legislating although he has no authority to do this, and it cites the principle of delegatus non potest delegare.
(3) Lassonde adds that it satisfies the requirements of subsections 40(2) and 40(3) in filing declarations of use, which allows a registration to be issued for a portion of the wares and services enumerated in the application following the filing of these declarations of partial use and that an extension of time may be granted under section 47 of the Act.
(4) The Registrar wrongly exercised his discretion in refusing the requested extension of the time: (a) he considered himself bound by the February 4, 1998, guideline concerning the reasons for granting a further extension of time to allow the filing of a declaration of use; (b) he wrongly exercised his discretion in the application of the reasons set out by Lassonde to justify its request for time in which to file a declaration of use; and (c) he based himself on irrelevant considerations in the exercise of his discretion.
(b) Of the defendant
[31]The point of departure in deciding the Lassonde appeal is in subsections 40(2) and 40(3) of the Act. Subsection 40(2) applies to registration of a proposed trade-mark, which is the case in Lassonde's registration application, and this subsection establishes the conditions under which the Registrar shall register such a trade-mark and shall issue a certificate. Subsection 40(3) also applies to a proposed trade-mark and prescribes the circumstances in which an application for registration of a proposed trade-mark is deemed to be abandoned, i.e. six months after the notice of allowance or three years after the date of filing of the application, whichever is most advantageous for the applicant.
[32]The Registrar agrees that under subsection 47(1), he has the power to extend the six-month period provided in subsection 40(2) one or more times. Concerning such a request for extension, the Registrar writes in his memorandum:
[translation]
24. . . . the administrative policies of the Registrar and the authorities provide that:
| During the three years following the expiration of the 6 months of the notice of allowance, the circumstances convincing the Registrar that the extension should be granted must be given. During this period, the reasons cited do not have to be significant and substantive; however, a valid excuse must be provided; |
| Once the three years following the expiration of the 6 months of the notice of allowance, the reasons provided must be significant and substantial. The conditions for granting an extension are therefore more demanding. |
[33]The authority granted by Parliament under subsection 47(1) of the Act is a discretionary authority, his decision is purely administrative and the Court will intervene only in cases where facts have been omitted or there is a prima facie error in the case, or if there is some irregularity in the procedure that materially affects the final decision.
[34]As to the new evidence in this Court, the defendant submits that the question is whether this new evidence is sufficient to persuade it that the plaintiff is entitled to the additional extension of time that is requested. According to the defendant, the two reasons cited and the evidence submitted by Lassonde in support are not such as to persuade the Court that the granting of the additional extension of time is justified.
[35]The only evidence of the two reasons, the defendant says, consists of two very general allegations in Mr. Gattuso's affidavit, which is far from sufficient to justify Lassonde's failure to file its declaration of commencement of use within the time provided by the Act.
G. ANALYSIS
(a) Standard of review
[36]In Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145, the Federal Court of Appeal laid down the standard of review on an appeal from a decision of the Registrar under section 56 of the Act. Rothstein J.A. states, at paragraph 51 of the reasons for judgment:
I think the approach in Benson & Hedges and McDonald's Corp. are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision. [Emphasis added.]
(b) Principles of statutory construction
[37]The appropriate approach in the interpretation of a statutory provision was laid down by the Supreme Court of Canada in Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27, in which Iacobucci J., on behalf of the Court, writes at paragraphs 21, 22 and 23:
Although much has been written about the interpretation of legislation (see, e.g., Ruth Sullivan, Statutory Interpretation (1997); Ruth Sullivan, Driedger on the Construction of Statutes (3rd ed. 1994) (hereinafter "Construction of Statutes"); Pierre-André Côté, The Interpretation of Legislation in Canada (2nd ed. 1991)), Elmer Driedger in Construction of Statutes (2nd ed. 1983) best encapsulates the approach upon which I prefer to rely. He recognizes that statutory interpretation cannot be founded on the wording of the legislation alone. At p. 87 he states:
Today there is only one principle or approach, namely, the words of an Act are to be read in their entire context and in their grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament.
Recent cases which have cited the above passage with approval include: R. v. Hydro-Québec, [1997] 1 S.C.R. 213; Royal Bank of Canada v. Sparrow Electric Corp., [1997] 1 S.C.R. 411; Verdun v. Toronto-Dominion Bank, [1996] 3 S.C.R. 550; Friesen v. Canada, [1995] 3 S.C.R. 103.
I also rely upon s. 10 of the Interpretation Act, R.S.O. 1980, c. 219, which provides that every Act "shall be deemed to be remedial" and directs that every Act shall "receive such fair, large and liberal construction and interpretation as will best ensure the attainment of the object of the Act according to its true intent, meaning and spirit".
Although the Court of Appeal looked to the plain meaning of the specific provisions in question in the present case, with respect, I believe that the court did not pay sufficient attention to the scheme of the ESA, its object or the intention of the legislature; nor was the context of the words in issue appropriately recognized. I now turn to a discussion of these issues.
(c) Some principles of administrative law
[38]The authority given by Parliament to the Registrar under subsection 47(1) of the Act to grant an extension of time "if. . .the Registrar is satisfied that the circumstances justify it", is a discretionary authority. In Maple Lodge Farms Ltd. v. Government of Canada, [1982] 2 S.C.R. 2, McIntyre J., on behalf of the Court, summarizes the principles of intervention [at pages 7-8]:
It is, as well, a clearly-established rule that the courts should not interfere with the exercise of a discretion by a statutory authority merely because the court might have exercised the discretion in a different manner had it been charged with that responsibility. Where the statutory discretion has been exercised in good faith and, where required, in accordance with the principles of natural justice, and where reliance has not been placed upon considerations irrelevant or extraneous to the statutory purpose, the courts should not interfere.
[39]In this same case, Maple Lodge Farms Ltd. v. R., [1981] 1 F.C. 500, Mr. Justice Le Dain, then a judge of the Federal Court of Appeal, considered the notion of guidelines, and at pages 513 and 514 wrote:
Assuming, however, that this is a correct view of what the guidelines purport to say--that a permit will normally be issued if the Agency is unable to find a domestic source of supply of the specific product for which the applicant seeks a permit--it is not in my opinion sufficient by itself to invalidate the Minister's decision in the present case on the ground that it was based on an extraneous or irrelevant consideration. To hold otherwise would be to adopt the position that guidelines, once adopted, indicate what are to be considered to be the only relevant considerations for the exercise of a discretion. Such a conclusion would be contrary to the fundamental principle that guidelines, which are not regulations and do not have the force of law, cannot limit or qualify the scope of the discretion conferred by statute, or create a right to something that has been made discretionary by statute. The Minister may validly and properly indicate the kind of considerations by which he will be guided as a general rule in the exercise of his discretion (see British Oxygen Co. Ltd. v. Minister of Technology [1971] A.C. (H.L.) 610; Capital Cities Communications Inc. v. Canadian Radio-Television Commission [1978] 2 S.C.R. 141, at pp. 169-171), but he cannot fetter his discretion by treating the guidelines as binding upon him and excluding other valid or relevant reasons for the exercise of his discretion (see Re Hopedale Developments Ltd. and Town of Oakville [1965] 1 O.R. 259).
In the present case the Minister, acting through the Office of Special Import Policy, appears to have adopted, as the reason for refusing the supplementary import permits sought by the appellant, the considerations which are disclosed in the passages quoted above from the letters of the Agency to the appellant. These considerations relate to the quantity of eviscerated chicken available and the over-all requirements of the market. Having regard to the terms of section 5(1)a.1) of the Export and Import Permits Act and the description or definition of the product in Item 19 of the Import Control List, the proclamation establishing the Agency, and the Canadian Chicken Marketing Quota Regulations, I am unable to conclude that these considerations are clearly extraneous or irrelevant to the statutory purpose for which chicken was placed on the Import Control List and to which the exercise of the Minister's discretion must be related.
For these reasons I am of the opinion that the Trial Division did not err in dismissing the application for mandamus, and the appeal should accordingly be dismissed with costs.
(d) Application and conclusions
[40]The courts have consistently held that section 47 of the Act vests the Registrar with broad discretion to grant a request for an extension of time if he is satisfied that the circumstances justify that extension. The Court may not intervene unless the Registrar has erred in law or acted on a wrong principle in exercising his discretion (see Star-Kist Foods Inc. v. Canada (Registrar of Trade-marks) (1988), 18 C.I.P.R. 237 (F.C.A.)).
[41]In Centennial Packers Ltd. v. Can. Packers Inc. (1987), 13 C.I.P.R. 310 (F.C.T.D.), Mr. Justice Joyal stated [at pages 312 and 314]:
Section 46 [now section 47] provides flexibility in dealing with fixed periods of time for the doing of anything either under the statute or under its regulations. When an extension of time is requested and the registrar is satisfied that "the circumstances justify an extension", he may extend the time.
. . .
Section 46 is there for a purpose. That purpose is to assure that a formalistic approach to statutory delays be kept in balance with the need for some flexibility in the administration of a regulatory statute so that the purposes of the enactment be more effectively achieved.
[42]Maple Lodge, supra, is authority for the proposition that a statutory discretion must be exercised in the interest of promoting the purpose of the Act and the statutory provision to which such discretion is attached.
[43]This leads us to examine the purpose of section 40 of the Act. This statutory provision concerning the registration of trade-marks contemplates two different schemes:
(1) the registration of trade-marks where the applicant or the applicant's predecessor declares in the application for registration that the mark has been used or publicized in Canada; and
(2) the registration of trade-marks where the application for registration proposes its use.
[44]For a trade-mark used in Canada, subsection 40(1) prescribes that the Registrar shall register the trade-mark and issue a certificate of its registration when the application for registration is allowed.
[45]The situation is otherwise in the case of a proposed trade-mark. Once the application for registration is allowed, the Registrar gives notice to the applicant but cannot register the mark until he has received a declaration that the applicant or his licensee has begun to use the mark in association with the wares or services specified in the application for registration.
[46]Furthermore, Parliament provides, in subsection 40(3), a cut-off date for the filing of a declaration of use; failing receipt of the declaration by that date, the application for registration shall be deemed to be abandoned. That date is either (a) six months following the date of the notice of allowance or, if the date is later, (b) upon the expiration of the three years following the filing of the application for registration in Canada.
[47]Parliament has expressed itself very clearly, therefore. A proposed trade-mark must be used in association with the wares and services specified in the application for registration, and within a fairly limited time. Parliament does not want the use of a proposed trade-mark to go on forever, because an application for registration of a proposed trade-mark, under subsection 16(3) of the Act, affects the priority of registration.
[48]In my opinion, it is within this statutory framework that the Registrar must exercise his discretion to extend the time for filing a declaration of use.
[49]According to Maple Lodge, supra, it was permissible for the Registrar to adopt guidelines indicating the type of consideration that will generally direct him in the exercise of his power to defer the filing of a declaration of use.
[50]If I correctly grasped the argument of counsel for Lassonde, he was not saying that the requirement of significant and substantial reasons to justify allowing such an extension after the period of three years from the date of notice of allowance was an irrelevant consideration or extraneous to the exercise of his discretion.
[51]If that had been his argument, I would have rejected it, since in my opinion such a requirement is very clearly related to what Parliament had in mind when, in subsection 40(3), it limited the time for filing a declaration of use.
[52]Lassonde's complaint goes to the way in which the Registrar applied the notice of February 4, 1998. Lassonde argues that the Registrar applied it mechanically or dogmatically, which amounts to saying that the Registrar refused even to consider the justifications advanced by Lassonde, the plaintiff.
[53]This submission must be rejected, since there is nothing in the evidence that supports such a conclusion. On the contrary, the reason cited by Lassonde in its request for extension dated July 13, 1998, was that "in fact, the applicant should soon be signing some commercial agreements needed for the use of the mark," a reason that was repeated in all of its subsequent requests for extension.
[54]The Registrar considered this reason insufficient on February 25, 2000, and refused the extension that had been requested by Lassonde on January 28, 2000, but he gave Lassonde until April 25, 2000, to submit to him significant and substantial reasons that would justify the grant of an additional extension.
[55]On April 25, 2000, Lassonde's agents wrote to the Registrar that Lassonde "is entitled to obtain one or more additional six-month extension(s) of time" since "it has not yet managed to find suppliers and distributors for all the wares and services covered by this application, but the applicant maintains its intention to use the trade-mark either itself or through licensees".
[56]As we know, on August 2, 2000, the Registrar did not consider this a significant and substantial reason to justify the grant of an additional extension of time.
[57]The Registrar mentioned in his decision of August 29, 2000, that 17 years had elapsed since Lassonde filed its application for registration. Lassonde considers this mention to be an irrelevant reason. In my opinion, the Registrar was recording a simple fact that he could take into consideration in the context of the exercise of his discretion.
[58]In its submissions to me, Lassonde argued that the notice of February 4, 1998, was applied retroactively. This submission is without merit. The notice applies only to requests for extension made after the date when the notice became effective. The Lassonde request for extension rejected by the Registrar occurred two years after the date on which the notice became effective.
[59]For all these reasons, Lassonde has not managed to identify an error in law or in fact that would warrant my intervention.
[60]Lassonde's counsel attempted at some length to establish a connection between subsection 40(2) of the Act, the notice of August 7, 1991, which interprets it, and the Registrar's refusal to extend the time for filing a further declaration of use.
[61]With respect, I fail to see the relevance of this submission. Subsection 40(2) requires a declaration of use before the registration of a trade-mark, which has nothing to do with the requirement in subsection 40(3) to file a declaration of use within a certain time, a period that the Registrar may extend if he is satisfied that there are reasons to support such extension.
[62]I do not see how the partial registration of the "Oasis" mark in association with a portion of the wares and services identified in its application for registration could conflict with or reduce the requirements of subsection 40(3), in the absence of which the trade-mark is deemed to be abandoned. To allow such an argument would, in my opinion, destroy the scheme of section 40 of the Act and be contrary to the intention of Parliament.
[63]Since Lassonde has filed new evidence in this Court, I must examine it from the perspective envisaged by Rothstein J.A. in Molson Breweries, supra [at paragraph 51]: "However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision." To use the words of Lutfy J., now Associate Chief Justice, in Danjaq Inc. v. Zervas et al. (1997), 75 C.P.R. (3d) 295 (F.C.T.D.), at paragraph 5:
The restraint often exercised in reviewing the decisions of specialized tribunals may not necessarily apply where evidence, in addition to that adduced before the Registrar, is filed with this Court pursuant to subsection 56(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. Where significant new evidence which was not before the Registrar is filed, a broader scope of review will be available upon appeal. As Mr. Justice Joyal stated recently, "[t]he usual result is that the proceeding takes on the flavour of a trial de novo."
[64]As indicated, Lassonde cites two new reasons to justify its failure to provide the Registrar with a declaration of use of the mark within the periods provided by the Act:
(a) there was a delay in marketing occasioned by the consolidation and establishment of a licensing department within Lassonde;
(b) Lassonde must continue and order studies on the marketing of some of the wares and some of the services referred to in the application for registration which may not be profitable in light of the costs and standards prevailing in Canada.
[65]My assessment of these new reasons is that they are not sufficient to affect the exercise of the Registrar's discretion, as described by Rothstein J.A. in Molson Breweries, supra, or to have the significant scope contemplated by Lutfy J. in Danjaq, supra.
[66]Lassonde's application for registration dates back to 1983, and the notice of allowance of the "Oasis" mark in association with the wares and services specified in this application is dated January 31, 1997, which gave Lassonde the right to register the mark following one or more declarations of use.
[67]In substance, the new reasons cited by Mr. Gattuso in his affidavit are not new in reality. Both fall within the ambit of the reasons cited since July 13, 1998, by Lassonde: "should soon be signing some commercial agreements" and "has not yet managed to find suppliers and distributors for all the wares and services covered by this application" (letter of April 25, 2000).
[68]The reasons are vague and imprecise and lack concreteness, considering that the application for registration covers hundreds and hundreds of wares and services.
[69]Lassonde does not tell us at all how the consolidation and implementation of a licensing department occasioned a delay in the marketing of the wares and services specified in its application for registration, especially after Mr. Gattuso has listed nine examples of use of the "Oasis" mark through licensing agreements. Mr. Gattuso does not explain to us how this consolidation and establishment will, within a definite time, allow Lassonde to licence the "Oasis" mark for all of the extremely numerous wares and services covered by its application for registration.
[70]The fact that Lassonde must continue and order studies on the marketing of "some of the wares" and "some of the services" referred to in its application for registration does not enlighten us in any way but rather inclines us to ask what wares and services, and how many, are being studied and which are not and why, and, if not, what are the reasons for not filing a declaration of use within the time prescribed by subsection 40(3) of the Act.
[71]In my opinion, in the circumstances of this case, and in consideration of the purpose of section 40 of the Act, I do not think the new reasons raised by Mr. Gattuso are sufficient to justify granting some time to allow Lassonde to file one or more declarations of use for the balance of the services and wares listed in its application for registration.
[72]I uphold the exercise by the Registrar of his discretion not to extend the time.
[73]Lassonde has also asked me to declare inapplicable the notice of August 7, 1991, by the Registrar concerning the interpretation of subsection 40(2) of the Act and to declare that subsection 40(2) of the Act allows a registration of a trade-mark to be issued for a portion of the wares and services covered by an application for a trade-mark registration following the filing of a partial declaration of use and that one or more subsequent registrations be issued following the filing of more declaration of use for the balance of the wares and services following one or more partial extensions of time.
[74]As mentioned, I consider this aspect of the litigation to be extraneous to the appeal that is before me, which is addressed to the Registrar's refusal to extend the time in which Lassonde may file one or more declarations of use. In other words, I fail to see the usefulness of such declarations in the circumstances of this case and for that reason I need not rule on the thesis advanced by Lassonde.
[75]For all these reasons, Lassonde's appeal is dismissed with costs.