T-4223-76
McDonald's Corporation (Appellant)
v.
Deputy Attorney General of Canada (Respondent)
Trial Division, Addy J.—Ottawa, December 13,
1976 and January 5, 1977.
Trade marks — Appeal from decision of Registrar of Trade
Marks refusing registration Application for trade mark for
future use in Canada — Whether registrable under s. 12(1)(a)
Sections 30(l) and 36 not complied with Revised
application submitted to obtain benefit of s. 14(1) and avoid
strict application of s. 12 — Whether Registrar should hear
evidence of previous foreign registration — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 12(1)(a), 14(1), 16, 29(d), 30(1), 36,
46.
Appellant claims that the Registrar of Trade Marks erred in
holding that its mark was not registrable by virtue of section
12(1)(a) and in refusing to consider evidence showing that the
mark was registered in the appellant's country of origin.
Held, the appeal is allowed and the matter is referred back to
the Registrar. The Registrar did not err in finding that the
mark was not registrable within the terms of section 12(1)(a)
since the applicant did not establish that it had complied with
that section. The Registrar did err in refusing to consider
evidence that the mark was registered in the appellant's country
of origin as provided for in section 14(l). The application was
made strictly for the purpose of proposed future use in Canada
and the applicant is entitled under section 16 to ask for the
relief granted by section 14(1) against some of the strict
requirements of section 12.
APPEAL from decision of Registrar of Trade
Marks.
COUNSEL:
N. H. Fyfe for appellant.
D. F. Friesen for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, 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 whereby he refused
the appellant's application to register the trade
mark "RONALD McDONALD" as a proposed
mark for future use in conjunction with food
services.
The grounds of the appeal are twofold, namely
that the Registrar erred in holding that the mark
was not registrable by virtue of section 12(1) (a)
and that he also erred in refusing to consider
evidence filed on behalf of the appellant showing
that the mark is the subject-matter of a registered
mark in the United States of America, the country
of origin of the appellant.
At the close of the hearing before me, I stated
that I was reserving my decision on the second
ground of appeal but that in so far as the first
ground was concerned I was not prepared to hold
that the Registrar erred in deciding that the appel
lant had failed to establish that the name
"RONALD McDONALD" was not "primarily
merely the name ... of an individual who is living
or has died within the preceding thirty years."
Although there was evidence that the name was
used to identify a fictitious clown, a drawing of
which has now been registered as a mark in
Canada, the evidence in my view fell considerably
short of establishing that section 12(1 )(a) has been
complied with, especially if one applies the test
suggested by Jackett P., as he then was, in the case
of Standard Oil Co. v. The Registrar of Trade
Marks' at page 532.
The issues raised in the second ground of appeal,
however, are much more difficult to resolve. The
original application for a proposed mark was filed
on the 7th of December 1970, on the ground of
proposed future use of the word in conjunction
with restaurant services. Subsequently, that is on
the 16th of August 1972, the appellant filed a
revised application containing for the first time the
following statement:
The trade mark has been duly registered by the applicant in
the United States of America, the country of origin of the
applicant on August 12th, 1969 under No. 874,861 and the
applicant claims the benefit of Section 14 of the Act on the
basis of such registration.
The appellant, on the same date, filed an affidavit
by one Paul Schrage in support of the application.
It is important to note here that, in order to
conform to the provisions of section 36 of the
Trade Marks Act, the appellant had previously
' [1968] 2 Ex.C.R. 523.
advertised his application on the 4th of August
1971 and only filed a certified copy of the United
States registration of the mark with the Registrar
of Trade Marks on the 23rd of August 1972.
The Registrar rendered his decision on the 15th
of September 1976 and had this to say about the
amendment to the application requested by the
appellant and the effect of section 30(1) on the
amendment:
Pursuant to subsection 30(1) of the Trade Marks Act, "an
applicant whose right to registration of a trade mark is based
on a registration of such trade mark in another country of the
Union shall, before the date of advertisement of his application
in accordance with section 36, furnish a copy of such registra
tion certified by the office in which it was made, ...."
Those sections of the Trade Marks Act relating to the basis
upon which a trade mark application may be filed in Canada
include subsection 29(d) of the Trade Marks Act, which pro
vides that a trade mark application in Canada may be based
upon a trade mark that is a subject in another country of the
Union of the registration or an application for registration by
the applicant or it's predecessors in title. Subsection 30(1)
provides that the applicant must furnish a certified copy of the
registration from the other Union country before the date of
advertisement of it's [sic] application in accordance with sec
tion 36. Pursuant to subsection 30(1) the Registrar may not
accept an amendment to an application either adding or sub
stituting a basis of application based upon registration in
another Union country after the date of advertisement of the
mark applied for in Canada.
The amendment of the application claiming the additional basis
of application based upon registration of the mark RONALD
MCDONALD in the United States is rejected. The scheme of
the Act is that the basis of application be clearly determined
prior to advertisement and an amendment to an application
basing the application on registration in another Union country
after the date of advertisement is not permitted.
Under section 46 of the Act, the Registrar has
the power, if circumstances justify it, to extend the
time fixed for doing any act or fulfilling any of the
requirements of the Act or of the Regulations.
However, section 30(1) lays down in a mandatory
fashion (the word "shall" is used) that a copy of
the foreign registration must be filed before the
advertisement. These are two distinct requirements
and the Act states that one must be fulfilled before
the other. This is not a question of an extension of
a time period for doing any particular act. There is
no power given to the Registrar to waive or relieve
against any such a statutory priority as opposed to
the power to extend time.
Section 30(1) obviously applies to requests for
registration where the right to register is based on
the registration of the mark in another country of
the Union.
Counsel for the appellant argues however that
even though he requested the application to be
amended, had the amendment been granted, it still
would remain fundamentally, essentially and solely
an application based on future use and not in any
way an application based in whole or in part on
registration in another country and that, as a
result, section 30(1) does not apply.
The subject-matter of a registration under the
Act must be a mark that is registrable no matter
what the basis of the right to the registration
might be. Once a mark is registrable it may be
registered on any one of the three bases for regis
tration mentioned in section 16. Section 14 applies
only to marks registered in the country of origin of
the applicant or his predecessor in title and in such
a case relieves against some of the strict require
ments of section 12. If a name-mark has been
previously so registered, in order to be registrable
in Canada it need not be established that it is not
primarily merely the name of an individual but
proof that it is not without distinctive character
will suffice.
I can find nothing in the wording of section 14
nor in any other part of the Act including section
16, which would in any way restrict the application
of section 14 to marks which are registered on the
basis of section 16(2). On the contrary, the word
ing seems quite clear and unequivocal. If a mark is
registered in the country of origin of the applicant
or his predecessor, the benefit of the section can be
invoked to determine whether the mark is regis-
trable in Canada regardless of the basis on which
registration is sought, whether such basis be past
use in Canada, proposed use in Canada or use and
registration in the country of origin. The applicant
has in his amended application only requested to
be granted the benefit of section 14(1). He still has
not requested that the basis of his original request
for registration based on future use in Canada be
changed to an application based on previous for
eign registration nor that such additional basis be
added to the original basis. His application does
not either contain any statement similar to that
contained in paragraph 5 of Form 3 of the Rules
which deal with the registration of trade marks
registered and used abroad. The statement in
Form 3 provides that the applicant:
... requests registration of the trade mark in respect of the
services in association with which it has been registered and
used as aforesaid (i.e. in the foreign country). [The words in
parenthesis are mine.]
Paragraph 4 of the amended application on the
contrary is a verbatim reproduction of the words in
paragraph 8 of Form 1 of the Rules which is the
form for registration of a trade mark on the basis
of previous use in Canada. I cannot conclude
therefore that, in so amending his application, the
appellant has changed the basis of his application
to that of previous registration and use in his
country of origin or that he has added this last-
mentioned basis to his application. The basis of the
application remains the same. In order to obtain
registration he would still be obliged to rely on
future use in Canada and could not as in the case
of an application under section 16(2) rely merely
on registration and use in the United States.
It is interesting to note that neither the original
application nor the amended one contains the
statement provided for in paragraph 6 of Form 4
for registration of a proposed trade mark, to the
effect that "The applicant intends to use the trade
mark in Canada ...." Notwithstanding this, how
ever, neither counsel disputed the fact that the
original application was in fact and at law one that
was made on the basis of intended use in Canada.
Both the Registrar, in his reasons for judgment,
and counsel for the respondent, in his representa
tions before me, however, felt that the requested
amendment was on the additional or added basis
of foreign registration and use. On this issue, at
the outset of his reasons, the Registrar stated:
The application was based on proposed use in Canada.
When referring to the intended amendment, the
Registrar added:
... the applicant filed an amended application for the mark
RONALD MCDONALD based on proposed use in Canada and
on the additional basis of registration and use of the mark
RONALD MCDONALD in the United States.
Since no objection was taken to the form of the
application in this regard, I am therefore prepared
to agree with both parties and with the Registrar
that it was and has remained an application for
proposed use in Canada but, for the reasons previ
ously expressed, I do not agree that the proposed
amendment added to the application the additional
basis of registration and use in the United States:
it remains solely an application for registration
based on proposed use in Canada.
Since the Registrar has refused to consider the
evidence submitted by the appellant, in the light of
the wording of section 14(1) which must be
applied if there is evidence to satisfy him that
there was in fact such previous registration in the
United States, the appeal is allowed and the
matter is referred back to the Registrar to deter
mine whether there was no previous registration in
the United States and if there was, to determine
whether the mark is registrable having regard to
the provisions of section 14(1 )(b) of the Act.
Had the application been properly filed in the
first place by including the paragraph which was
eventually added by the amendment there would
have been no question of whether section 30(1)
applied or not. There will therefore be no costs
granted to the appellant.
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.