T-4563-75
Koffler Stores Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Addy J.—Toronto, April 13;
Ottawa, April 23, 1976.
Trade marks—Registrar rejecting appellant's opposition to
application for registration of mark "Life" re soft drinks—
Appellant owner of mark "Life Brand" re pharmaceuticals—
Whether Registrar entitled to invite comments from party
opposing before considering matter and whether such action
precludes Registrar from exercising jurisdiction under section
37(4) of the Trade Marks Act—Trade Marks Act, R.S.C.
1970, c. T-10, s. 37(4)-(8).
Appellant, owner of the mark "Life Brand" used in relation
to pharmaceuticals appealed a decision of the Registrar under
section 37(4) of the Trade Marks Act rejecting its opposition to
an application to register the mark "Life" for use in association
with carbonated soft drinks. Appellant alleged that, as soft
drinks of applicant are frequently dispensed and sold in drug
stores where appellant's wares are found, confusion would
result. The Registrar wrote to appellant inviting further com
ments, and appellant replied by adding that the word "Life"
used in respect of soft drinks was confusing with "Life Brand"
in respect of pharmaceuticals, and that the manner in which
the word "Life" in the mark "Life Brand" was actually being
used in advertisements would create confusion between its
wares and those of applicant.
Held, the matter is referred back to the Registrar to be dealt
with pursuant to section 37(5)-(8). No decision rejecting an
opposition under section 37(4) can be made by the Registrar
wherever the opposition raises a substantial issue for decision.
In spite of the word "considers" in section 37(4), where a
substantial issue is raised, the Registrar cannot assume jurisdic
tion under section 37(4) merely by considering that there is no
substantial issue when there is one. Such issue must not be
decided before giving the party raising it the chance to argue
and present evidence. If there is such an issue, the Registrar
must refrain from deciding under section 37(4), and proceed
under subsections (5)-(8). As to the practice of withholding a
section 37(4) decision and inviting comments from the opposing
party, the Court, in the Canadian Schenley case ((1974) 15
C.P.R. (2d) 1) has interpreted such action as a request to file
further and better details of opposition because of a failure to
state the grounds. Here, the invitation to submit comments
cannot be seen as an invitation to complete an otherwise
incomplete statement of opposition. Under section 37(4), the
Registrar is entitled to invite the opposing party to complete or
explain the opposition. There was no indication here that the
statement of opposition might be lacking in some statutory
requirement or be unclear, and to invite comments might be
taken as an invitation to argue the merits, which might lead to
the conclusion that the Registrar felt that an arguable case had
been raised, and wished to provide the party with the opportu
nity of advancing his arguments before deciding the case. This
is a misunderstanding of section 37(4). The Registrar must
simply decide whether an arguable case has been raised. If so,
he must then proceed under subsections (5) to (8) and allow the
person opposing to be heard.
Pepsico Inc. v. Registrar of Trade Marks [1976] 1 F.C.
202, followed. Canadian Schenley Distilleries Ltd. v. Reg
istrar of Trade Marks (1974) 15 C.P.R. (2d) 1, distin
guished. Canadian Tampax Corporation Ltd. v. The Reg
istrar of Trade Marks (Court number T-2738-75,
unreported), applied.
APPEAL.
COUNSEL:
I. Goldsmith, Q.C., for appellant.
D. Friesen for respondent.
SOLICITORS:
Goldsmith & Caswell, Toronto, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
ADDY J.: This is an appeal from a decision of
the Registrar of Trade Marks rendered pursuant
to section 37(4) of the Trade Marks Act, whereby
he rejected the appellant's opposition to an
application by Non-Alcoholic Beverage Importers
Ltd. for registration of the trade mark "Life"
which the latter proposes to use in association with
carbonated soft drinks. The appellant is the owner
of the registered mark "Life Brand" used in rela
tion to pharmaceuticals.
Section 37(4) reads as follows:
If the Registrar considers that the opposition does not raise a
substantial issue for decision, he shall reject it and shall give
notice of his decision to the opponent.
It is clear that no decision rejecting an opposi
tion pursuant to section 37(4) can be made by the
Registrar wherever the opposition raises a substan
tial issue for decision (see Pepsico Inc. v. The
Registrar of Trade Marks'). The Registrar in
such a case must instruct himself, as a judge
would, when dealing with a motion requesting that
a statement of defence be struck out and that
judgment be entered in favour of the plaintiff on
the grounds that the document does not reveal a
defence to the action. No evidence must be con
sidered in determining the issue; the Registrar
must limit his consideration to the application
itself and to the allegations contained in the oppo
sition. In spite of the word "considers" in section
37(4), where the opposition in fact raises a sub
stantial issue for decision, the Registrar is not at
liberty to consider that it is not, for he would then
be instructing himself erroneously and deciding on
a wrong principle. He cannot assume jurisdiction
under section 37(4) by merely considering that
there is no substantial issue when in fact there is
one. "Substantial issue" means an issue to be tried
or, in other words, one where the adverse party
might possibly succeed if the allegations raised
were established. Any such issue must not be
decided before giving the person who raises it the
opportunity of presenting argument and of adduc
ing evidence if he so desires. If there is in fact a
substantial issue, as above defined, then, the Reg
istrar is obliged to refrain from taking a decision
under subsection (4) of section 37 and must pro
ceed in accordance with subsections (5) to (8)
inclusively of that section.
The appellant in the case at bar raised three
grounds for opposition, namely: that the trade
mark was not registrable, that the applicant was
not the person entitled to registration and that the
mark was not distinctive. Each of these three
grounds was founded on the basic concept that the
mark, as applied for, is confusing.
The opposition specifically alleges that, as the
soft drinks of the applicant are frequently dis
pensed and sold in drugstores and in large super
market type drugstores dispensing all types of
wares where the wares of the appellant are found,
if both should use the word "Life" there would be
confusion. The Registrar of Trade Marks wrote to
the appellant inviting further comments and the
latter in his reply added to the grounds of the
[1976] 1 F.C. 202.
opposition by stating that the word "Life" used in
respect of soft drinks is confusing with "Life
Brand" in respect of pharmaceuticals and he also
submitted that the manner in which the word
"Life" in the mark "Life Brand" was actually
being used by the appellant in advertisements
would create confusion between its wares and
those of the appellant before the Registrar. When
one considers these three allegations, and especial
ly the allegation as to the use actually being made
of the word "Life" by the appellant, one must
come to the conclusion that if they were estab
lished in evidence the appellant might succeed in
his opposition. There is therefore an issue to be
tried and the appellant must succeed in his
appeal.
Counsel for both parties, at the hearing,
addressed considerable argument to the issue of
whether the Registrar was entitled to invite com
ments from the person opposing the application
before considering the matter and whether such an
action precluded the Registrar from exercising
jurisdiction under section 37(4). In the present
case, the Registrar, on receipt of the original oppo
sition, wrote to the appellant on the 1st of October,
1975. In addition to certain comments on the
merits of the case, the letter contains the following
statements:
The purpose of this letter is to advise you that I am of the
tentative view that the statement of opposition raises no sub
stantial issue for decision and should, therefore, be rejected
under subsection 37(4) of the Trade Marks Act.
I shall withhold making a final decision in this matter until
one month from the date of this letter. Any comments that you
wish to make should be submitted within that month.
The practice of withholding a decision under
section 37(4) and inviting comments from the
person opposing an application has apparently
been adopted by the Registrar as a matter of
policy.
This practice was dealt with in three recent
decisions of this Court. In the case of Canadian
Schenley Distilleries Ltd. v. Registrar of Trade
Marks 2 , where the appellant had filed an opposi
tion which in effect failed to state proper grounds
2 (1974) 15 C.P.R. (2d) 1.
for the opposition, the Registrar, after stating his
views on the application as submitted, invited com
ments. The appellant submitted an amended state
ment. My brother Heald J. made the following
comments at page 6 of the above report:
Secondly, the correspondence reveals that instead of dealing
with the matter upon receipt of appellant's first objection as he
was entitled to do under s. 37(4), the Registrar in effect
"leaned over backwards" in writing the appellant the "show
cause" letter of November 16, 1973, giving the appellant ample
opportunity to file an amended opposition after being in posses
sion of the Registrar's objections to the first opposition.
It is to be noted here that the Registrar's invita
tion for comments was interpreted by the Court as
a request to file further and better details of the
opposition because the appellant had failed to state
the grounds of the opposition. In the case of
Pepsico Inc. v. The Registrar of Trade Marks
(supra) where the Registrar had invited the party
opposing the application for an outline "in reason
able detail" of the "evidence and argument
that ... there is a substantial issue to be decided,"
the same judge made the following comments at
pages 211 and 212 of the above-cited report:
I am also of the opinion that the Registrar was wrong in
requiring the opponent, at the preliminary stage contemplated
by section 37(4), to furnish to him the evidence and argument.
Again, I refer, by analogy, to the Federal Court Rules. Rule
408(1) requires that every pleading must contain a precise
statement of the material facts on which the party pleading
relies [emphasis is mine].
In other words, a proper pleading alleges the material facts
but not the evidence which the party intends to adduce to
establish those facts. It seems to me that in imposing such a
requirement under section 37(4), the Registrar, is, in effect,
attempting to do under section 37(4) what he is required by
section 37(8) to do at the hearing on all of the evidence. In
imposing this requirement, the Registrar has, once again, in my
view, acted on a wrong principle.
In his unreported decision of the 22nd of
December, 1975 in Canadian Tampax Corpora
tion Ltd. v. The Registrar of Trade Marks', my
brother Cattanach J. had this to say, at pages 6
and 7 of his decision, about rendering a tentative
decision and then inviting comments before finally
disposing of the matter:
3 Federal Court File T-2738-75.
Mr. Justice Heald also expressed the view (in the Pepsico
case) that the Registrar was wrong in requiring the appellant,
in the case before him, to furnish evidence and argument at the
preliminary stage contemplated by section 37(4). In the case
before Heald J. the Registrar had required the opponent to
outline in reasonable detail the evidence and argument respec
tively intended to be adduced and advanced. In the appeal
before me the Registrar did not categorically demand that the
appellant furnish him with a reasonably detailed outline of the
proposed evidence and argument which would be adduced, but
rather, after expressing his views on the bare boned material
before him, he invited the comments of the solicitors for the
appellant. Although differently expressed it is tantamount to
the same thing, and more particularly it produced the same
result, that is a summary of the proposed evidence and argu
ment to be advanced was produced by the appellant. [The
words in parenthesis are mine.]
In the case at bar, an invitation to submit
comments, unlike the Schenley case (supra)
cannot on the face of it or by reason of other
comments in the Registrar's letter, be taken to
mean an invitation to complete an otherwise
incomplete statement of opposition although, in
fact, the appellant did upon such invitation add to
the grounds of his opposition.
The Registrar of Trade Marks, before disposing
of an opposition pursuant to section 37(4), is en
titled, if he so desires, to invite a person who filed
the opposition to complete it or to explain any
parts which might not be clear. The Schenley case
(supra) is authority for this proposition and I fully
agree with it. However, where there is no indica
tion that on the face of it or in the Registrar's
view, the statement of opposition might lack some
statutory requirement or might be unclear, or
might be capable of two opposite interpretations,
simply to invite "comments" may well be inter
preted as an invitation to argue the actual merits
of the case. This in turn might very well lead to the
conclusion that, and be good evidence of the fact
that the Registrar, in considering the statement of
opposition, felt that its author had in fact raised an
arguable case and wished to afford that person the
opportunity of advancing his argument on the
actual merits of the grounds advanced or raised,
before deciding the case. Commendable as this
attitude might appear to be from a judicial stand
point, it indicates a misunderstanding of the very
purpose for which section 37(4) was created. The
Registrar, under this subsection, must simply
direct his mind to the question as to whether the
statement of opposition raises an arguable case as
to the merits. If his decision is affirmative, then, he
is not entitled to invite argument and then decide
the question pursuant to section 37(4), for, once he
feels that there might be an arguable case, he can
no longer avail himself of section 37(4) but must
proceed pursuant to subsections (5) and (8) and
allow the person opposing the application to be
heard and to adduce evidence if he so desires.
For the above reasons, this matter is referred
back to the Registrar to be dealt with pursuant to
subsections (5) to (8) of section 37. There will be,
of course, no costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.