A-815-81
Anheuser-Busch, Inc. (Appellant) (Appellant)
v.
Carling O'Keefe Breweries of Canada Limited and
Registrar of Trade Marks (Respondents)
(Respondents)
Court of Appeal, Heald, Le Dain JJ. and Kelly
D.J.—Toronto, September 28; Ottawa, November
22, 1982.
Trade marks — Appeal from judgment of Trial Division
dismissing appeal from decision of Registrar of Trade Marks
staying proceedings brought by appellant under s. 44 of Trade
Marks Act — Question whether appeal lies from decision to
allow stay — Act provides for summary and expeditious
procedure under s. 44 — Principle of denying relief from
interlocutory decisions where no legal rights or obligations
flow, under s. 28 of Federal Court Act, found consistent and
compatible — Trial Division without jurisdiction to hear
appeal — Registrar without statutory power to grant stay —
Limited purpose of s. 44 respecting evidence of use undermined
by unduly lengthy procedures — Stays, and indefinite post
ponement, amount to declining jurisdiction — Appeal dis
missed without costs — Trade Marks Acts, R.S.C. 1970, c.
T-10, ss. 44 (as am. by S.C. 1980-81-82-83, c. 47, s. 46), 56(l)
— Trade Marks Act, S.C. 1952-53, c. 49, ss. 36(l), 55(1) —
Federal Court Act, R.S.C. 1970 (2nd Supp.), c. /0, s. 28.
Judicial review — Statutory appeals — Trade Marks Act,
s. 56 — Whether decision to stay s. 44 proceedings is decision
from which appeal lies under s. 56 — Meaning of "decision"
in Federal Court Act, s. 28 — Whether case law on s. 28
applicable to "decision" in s. 56, Trade Marks Act — S. 28
decisions not binding in case of statutory appeal — Rationale
of s. 28 cases explained — S. 44 procedure to be expeditious
— S. 28 rationale therefore applicable as compatible with
relevant sections of Trade Marks Act — Trial Division lacked
jurisdiction to hear s. 56 appeal — Trade Marks Act, R.S.C.
1970, c. T-10, ss. 44 (as am. by S.C. 1980-81-82-83, c. 47, s.
46), 56(l) — Federal Court Act, R.S.C. 1970 (2nd Supp.), c.
10, s. 28.
CASES JUDICIALLY CONSIDERED
APPLIED:
National Indian Brotherhood, et al. v. Juneau, et al. (No.
/), [1971] F.C. 66 (T.D.); The Noxzema Chemical Co.
of Canada Ltd. v. Sheran Mfg. et al. (1968), 38 Fox Pat.
C. 89 (Ex. Ct.).
OVERRULED:
Skipper's, Inc. v. Registrar of Trade Marks et al., Feder
al Court, T-5863-79, judgment dated August 25, 1980.
CONSIDERED:
Hoffmann-La Roche Limited v. Delmar Chemicals Lim
ited, [1966] Ex.C.R. 713; J. K. Smit & Sons Internation
al Limited v. Packsack Diamond Drills Ltd., [1964]
Ex.C.R. 226.
REFERRED TO:
The Attorney General of Canada v. Cylien, [1973] F.C.
1166 (C.A.); British Columbia Packers Limited, et al. v.
Canada Labour Relations Board et al., [1973] F.C. 1194
(C.A.); In re Anti-dumping Act and in re Danmor Shoe
Company Ltd., [1974] 1 F.C. 22 (C.A.); Richard v.
Public Service Staff Relations Board, [1978] 2 F.C. 344
(C.A.); Canadian Air Line Employees' Association v.
Wardair Canada (1975) Ltd., et al., [ 1979] 2 F.C. 91
(C.A.); Latif v. Canadian Human Rights Commission et
al., [1980] 1 F.C. 687 (C.A.); Canadian Human Rights
Commission v. British American Bank Note Company,
[198!] 1 F.C. 578 (C.A.); Smith Kline & French Inter-
American Corporation v. Micro Chemicals Limited,
[ 1968] 1 Ex.C.R. 326; Canadian Broadcasting Corpora
tion et al. v. Quebec Police Commission, [1979] 2 S.C.R.
618; Julius v. The Right Rev. the Lord Bishop of Oxford
et al. (1879-80), 5 A.C. 214 (l-I.L.); Canadian Pacific
Railway v. The Province of Alberta et al., [1950]
S.C.R. 25.
COUNSEL:
L. Morphy, Q.C. and S. Block for appellant
(appellant).
R. E. Dimock for respondent (respondent)
Carling O'Keefe Breweries of Canada Lim
ited.
R. Levine for respondent (respondent) Regis
trar of Trade Marks.
SOLICITORS:
Rogers, Bereskin & Parr, Toronto, for appel
lant (appellant).
Sim, Hughes, Toronto, for respondent
(respondent) Carling O'Keefe Breweries of
Canada Limited.
Deputy Attorney General of Canada for
respondent (respondent) Registrar of Trade
Marks.
The following are the reasons for judgment
rendered in English by
HEALD J.: This is an appeal from a judgment of
the Trial Division [Federal Court, T-2388-81,
judgment dated October 22, 1981] dismissing the
appellant's appeal from a decision of the respond
ent Registrar of Trade Marks (the Registrar). In
that decision, dated March 25, 1981, (A.B. pp.
17-21), the Registrar stayed the proceedings
instituted by the appellant under the provisions of
section 44 of the Trade Marks Act, R.S.C. 1970,
c. T-10 [as am. by S.C. 1980-81-82-83, c. 47, s.
46], pending the termination of proceedings "...
before the Federal Court of Canada between Car-
ling O'Keefe Breweries of Canada Limited and
Anheuser-Busch Inc. (Court No. T-298-80)." The
stay was granted pursuant to a preliminary motion
put forward on behalf of the respondent Carling
O'Keefe Breweries of Canada Limited (Carling)
on March 12, 1981.
The relevant facts are not in dispute and may be
summarized as follows. On September 19, 1979,
the appellant requested the Registrar to issue to
Carling, as registered owner of trade mark
No. 185/40809, the notice permitted under the
provisions of said section 44.' On October 17,
' Section 44 reads as follows:
44. (I) The Registrar may at any time and, at the written
request made after three years from the date of the registra
tion by any person who pays the prescribed fee shall, unless
he sees good reason to the contrary, give notice to the
registered owner requiring him to furnish within three
months an affidavit or statutory declaration showing with
respect to each of the wares or services specified in the
registration, whether the trade mark is in use in Canada and,
if not, the date when it was last so in use and the reason for
the absence of such use since such date.
(2) The Registrar shall not receive any evidence other than
such affidavit or statutory declaration, but may hear
representations made by or on behalf of the registered owner
of the trade mark or by or on behalf of the person at whose
request the notice was given.
(3) Where, by reason of the evidence furnished to him or
the failure to furnish such evidence, it appears to the Regis
trar that the trade mark, either with respect to all of the
wares or services specified in the registration or with respect
to any of such wares or services, is not in use in Canada and
that the absence of use has not been due to special circum-
(Continued on next page)
1979, the Registrar sent a section 44 notice to
Carling. Carling was subsequently granted an
extension of time within which to respond to the
section 44 notice by the Registrar, said extension
to terminate on April 17, 1980. On April 9, 1980,
Carling made an application to stay pending the
determination of the matters in issue in Federal
Court action T-298-80 between itself and the
appellant. This request for a stay was refused by
the Registrar but a further extension of time
within which to comply with the requirements of
section 44 was given to Carling. Subsequently, on
July 18, 1980, Carling filed its reply to the
section 44 notice which consisted of the affidavit of
Brian Edwards. At appellant's request, the Regis
trar held an oral hearing on the section 44 pro
ceedings on March 12, 1981. At the commence
ment of that hearing, Carling brought the
preliminary motion for a stay referred to supra.
The Registrar reserved on that motion and pro
ceeded to hear argument on the merits of the
section 44 proceedings. On March 25, 1981, the
Registrar granted Carling's motion to stay as
related supra. It is that "decision" to stay which
forms the subject-matter of this appeal.
It is relevant to observe that Carling has pend
ing before the Trial Division of this Court, two
actions, T-298-80 and T-4900-80, in which it
alleges that the appellant and its registered users
are infringing trade mark No. 185/40809. The
defendants in each of those actions have denied the
validity of registration No. 185/40809 on the
ground of abandonment.
(Continued from previous page)
stances that excuse such absence of use, the registration of
such trade mark is liable to be expunged or amended
accordingly.
(4) When the Registrar reaches a decision as to whether or
not the registration of the trade mark ought to be expunged
or amended, he shall give notice of his decision with the
reasons therefor to the registered owner of the trade mark
and to the person at whose request the notice was given.
(5) The Registrar shall act in accordance with his decision
if no appeal therefrom is taken within the time limited by
this Act or, if an appeal is taken, shall act in accordance with
the final judgment given in such appeal.
(6) In this section, "Registrar" includes such person as
may be authorized by the Registrar to act on his behalf for
the purposes of this section.
At the hearing of the appeal before us, counsel
for Carling as well as counsel for the Registrar
submitted that the "decision" to stay the section
44 proceedings is not a decision from which an
appeal lies under section 56 of the Trade Marks
Act. Subsection 56(1) provides that:
56. (1) An appeal lies to the Federal Court of Canada from
any decision of the Registrar under this Act within two months
from the date upon which notice of the decision was dispatched
by the Registrar or within such further time as the Court may
allow, either before or after the expiry of the two months.
In support of this submission, counsel relied on the
developing jurisprudence 2 in this Court on the
meaning of the word "decision" as it is used in
section 28 of the Federal Court Act, R.S.C. 1970
(2nd Supp.), c. 10. That jurisprudence is to the
effect that the Federal Court of Appeal has juris
diction to review under section 28 only final orders
or decisions—that is—final in the sense that the
decision or order in issue is the one that the
tribunal has been mandated to make and is a
decision from which legal rights or obligations
flow. This jurisprudence makes it clear that the
Court will not review the myriad of decisions or
orders customarily rendered on matters which nor
mally arise in the course of a proceeding prior to
that final decision. In the submission of counsel,
that jurisprudence should be applied to the word
"decision" as used in subsection 56(1) and, there
fore, since the "decision" under review does not
meet the test of the cases as summarized supra in
that it is not the one that the Registrar has been
mandated to make under section 44 and since it is
not a decision from which legal rights or obliga
tions flow, there is, accordingly, no jurisdiction in
the Trial Division to consider an appeal from that
decision under subsection 56(1). While the section
2 For example see: National Indian Brotherhood, et al. v.
Juneau, et al. (No. I), 119711 F.C. 66 (T.D.) at pp. 77-79; The
Attorney General of Canada v. Cylien, [1973] F.C. 1166
(C.A.); British Columbia Packers Limited, et al. v. Canada
Labour Relations Board et al., [ 1973] F.C. 1 194 (C.A.); In re
Anti-dumping Act and in re Danmor Shoe Company Ltd.,
[1974] 1 F.C. 22 (C.A.); Richard v. Public Service Staff
Relations Board, [1978] 2 F.C. 344 (C.A.); Canadian Air Line
Employees' Association v. Wardair Canada (1975) Ltd., et al.,
[1979] 2 F.C. 91 (C.A.); Latif v. Canadian Human Rights
Commission et al., [ 1980] 1 F.C. 687 (C.A.); Canadian
Human Rights Commission v. British American Bank Note
Company, [1981] 1 F.C. 578 (C.A.).
28 decisions may have some persuasive value, I
point out that they cannot be decisive and binding
where, as here, the word "decision" is used in a
statutory appeal. A perusal of the section 28 cases
makes it clear that an important consideration in
those decisions was the undesirable consequences
which could conceivably flow were the Court to
allow section 28 applications in respect of the
innumerable interlocutory matters arising in the
course of a proceeding. In the Juneau case
(supra), Jackett C.J. stated at page 78 of the
report:
If, however, an interested party has a right to come to this
Court under s. 28 on the occasion of every such decision, it
would seem that an instrument for delay and frustration has
been put in the hands of parties who are reluctant to have a
tribunal exercise its jurisdiction, which is quite inconsistent
with the spirit of s. 28(5).
Similar views have been expressed by the Court in
subsequent decisions on section 28. What seems
clear is that the cases on the meaning of "deci-
sion" as used in the Federal Court Act have been
decided with particular regard to the scheme of
that Act. That is the correct approach, in my view,
and is the approach which I think should be
adopted in interpreting "decision" as it is used in
the Trade Marks Act. In the case at bar, in a
proceeding under section 44 of the Trade Marks
Act, a "decision" is made which, it is said, is
appealable under subsection 56(1) of that Act. In
my view, the section 44 procedure is clearly
intended to be a summary and expeditious one.
That being so, it seems to me that a similar
rationale to that adopted in the section 28 cases,
should be applied to a "decision" under section 44
of the Trade Marks Act. However, I apply that
rationale because it is consistent and compatible
with the relevant sections of the Trade Marks Act
and not merely because it forms the rationale of
cases under the Federal Court Act. It is my opin
ion that there may well be other statutes confer
ring a statutory right of appeal where, because of
the scheme of that statute, the word "decision" as
used therein, may well have a different connota
tion which requires it to be interpreted differently.
In the context of section 44 and section 56 of the
Trade Marks Act, however, it is my conclusion
that "decision" as used therein means the final
decision of the Registrar under subsection 44(4),
that is, his final decision as to whether or not the
registration of the trade mark ought to be
expunged or amended and does not include a
"decision" such as this to stay the section 44
proceedings.
A similar approach was adopted by President
Jackett of the Exchequer Court (as he then was)
in the case of Hoffmann-La Roche Limited v.
Delmar Chemicals Limited' when considering the
Court's jurisdiction to entertain an appeal from a
"decision" of the Commissioner of Patents under
the Patent Act, R.S.C. 1952, c. 203. After consid
ering the scheme of the Patent Act, the learned
President held that the only "decision" appealable
was the ultimate decision finally disposing of the
application notwithstanding the fact that the Com
missioner necessarily in the process of exercising
his statutory powers was called upon to decide
many preliminary questions. Furthermore, Thur-
low J. (as he then was) had occasion to discuss a
similar problem in the context of the Trade Marks
Act, S.C. 1952-53, c. 49, in the case of f. K. Smit
& Sons International Limited v. Packsack Dia
mond Drills Ltd. 4 In that case, it was held that the
decision of the Registrar under subsection 36(1) to
advertise an application for registration of a mark
was not a decision from which the applicant had a
right of appeal. The words in subsection 55(1) of
that Act giving a right of appeal "... from any
decision of the Registrar under this Act ..." are
identical to the wording of the present subsection
56(1).
Accordingly, I have concluded, for the above
reasons, that the Trial Division was without juris
diction to hear subject appeal under section 56 of
the Trade Marks Act. This conclusion is sufficient
to dispose of the appeal but in view of the fact that
7 [1966] Ex.C.R. 713—Note: This decision was followed by
President Jackett in the case of Smith Kline & French Inter-
American Corporation v. Micro Chemicals Limited, [1968] 1
Ex.C.R. 326.
° [1964] Ex.C.R. 226.
the Trial Division has in this case, as well as in the
Skipper's cases (which the Registrar relied on
here) expressed the view that the Registrar has
jurisdiction to grant a stay, I consider this to be a
situation where the Court should express a firm
conclusion on that question since the only possible
form of redress for the appellant might well be an
application to the Trial Division for a writ of
mandamus and since the matter of the Registrar's
jurisdiction to order a stay was fully argued before
us.
I approach this issue initially on the basis that a
"tribunal" such as the Registrar of Trade Marks,
since it is a creature of statute, has no inherent
jurisdiction. 6 The power to grant a stay of any
proceedings before the Registrar must be found
either in the Trade Marks Act or in the Regula
tions promulgated thereunder through express lan
guage or through an "undeniable implication."'
After perusing both the Act and the Regulations, I
am unable to find any provisions which either
expressly or by necessary implication, empower the
Registrar to do what he did in this case. The
Unfair Competition Act, R.S.C. 1952, c. 274, the
predecessor to the present Trade Marks Act, con
tained no simple procedure for removing unused
trade marks from the register. Section 44 of the
present Act sets up a code of procedure vesting in
the Registrar jurisdiction to expunge from the
register those marks not in use or to restrict their
effect to those wares or services in association with
which they have been used. The section does not
contemplate a determination on the issue of aban
donment but is merely a summary procedure
whereby the registered owner of a mark is required
to provide either some evidence of use in Canada
or evidence of special circumstances that excuse
absence of use. The evidence which the Registrar
can consider is restricted by subsection 44(2) to an
affidavit or declaration from the registered owner
5 Skipper's, Inc. v. Registrar of Trade Marks et al. (Federal
Court, T-5863-79, judgment dated August 25, 1980).
6 To the same effect, see: Canadian Broadcasting Corpora
tion et al. v. Quebec Police Commission, [1979] 2 S.C.R. 618
at p. 639, per Beetz J.
' See: Reid and David, Administrative Law and Practice
(2nd ed. 1978), p. 303.
which makes it clear, in my view, that there is no
intention that the Registrar reach a decision under
section 44 as to abandonment. The sole question
the Registrar had to decide under section 44 was
whether the registered owner put forward a claim
to user in Canada or to circumstances excusing
non-user.'
President Jackett (as he then was) put the
matter succinctly in the Noxzema case (supra) at
page 97 of the reasons as follows:
... section 44 provides a means for clearing from the Registry
registrations for which the owners no longer assert that there is
any real foundation. An owner can avoid having any action
taken against his registration by either a mere declaration of
user or, if he admits non-user, by any reasonable explanation
therefor.
Based on the scheme of section 44 as set forth
supra, and on the limited purpose for which the
section was enacted, and the clear intention of
Parliament that the section 44 procedure be
simple, summary and expeditious, I am not pre
pared to imply a power in the Registrar to unduly
prolong those proceedings by the imposition of a
stay pending the outcome of Court litigation. The
imposition of a stay in these terms makes it possi
ble, and more than likely, that the stay will be
quite lengthy. In my respectful view, such a conse
quence was never intended when the section 44
procedure was added to the statute.
As noted earlier herein, the Registrar in order
ing the stay in these proceedings relied on a deci
sion of the Trial Division in the Skipper's case
(supra). The reference relied on is to be found on
page 7 of the reasons of Cattanach J. and reads as
follows:
A court has an inherent jurisdiction to stay proceedings but
the court always has a discretion whether or not to accede to an
application for a stay.
See: The Noxzema Chemical Co. of Canada Ltd. v. Sheran
Mfg. et al. (1968), 38 Fox Pat. C. 89 (Ex.Ct.) at pp. 96-97.
I accept that a like discretion is vested in the Registrar of
Trade Marks and by virtue of subsection 37(9) in an opposition
board.
As discussed supra, it is my respectful view that
the Registrar has no inherent power to grant a
stay, that such power could only be obtained
through express statutory language or by neces
sary implication from the statutory language used,
and that neither of those circumstances are present
here.
For the above reasons, it is my conclusion that
the Registrar erred in granting the stay herein. In
his reasons, the learned Trial Judge made remarks
to the effect that the Registrar was not really
granting a stay but was rather withholding his
decision under consideration pending the outcome
of the Federal Court litigation. However, the Reg
istrar himself said that he was granting a stay and
the effect of his order most certainly operated as a
de facto stay. Furthermore, if the learned Trial
Judge was correct in his characterization of what
the Registrar really did in this case, then, in my
view, those actions were improper since they
resulted in an indefinite postponement of the deci
sion required to be made under section 44 which
amounts to a declining of jurisdiction by the
Registrar. 9
In view of the conclusion reached earlier herein
that the Trial Division was without jurisdiction to
hear the appeal from the Registrar's "decision"
under section 56 of the Trade Marks Act, it
follows that this appeal must be dismissed. In light
of the circumstances, however, I would not award
any costs.
LE DAIN J.: I agree.
KELLY D.J.: I concur.
'See: Julius v. The Right Rev. the Lord Bishop of Oxford et
al. (1879-80), 5 A.C. 214 (H.L.). See also: Canadian Pacific
Railway v. The Province of Alberta et al., [1950] S.C.R. 25 at
p. 33.
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.