Date: 20010807
Docket: T-48-00
Neutral Citation: 2001 FCT 864
BETWEEN:
FileNET Corporation
Applicant
- and -
THE REGISTRAR OF TRADE-MARKS,
HER MAJESTY THE QUEEN IN RIGHT OF CANADA
AS REPRESENTED BY THE MINISTER OF NATIONAL REVENUE
Respondents
[1] This is an appeal pursuant to section 56(1) of the Trade-marks Act, R.S.C.1985, c. T-13 (the "Act"), by FileNet Corp. (the "applicant") of the Registrar of Trade-marks' ("Registrar") decision to give public notice of the Netfile & Design mark, on the grounds that Her Majesty (the "respondent" or the "Canada Custom and Revenue Agency" or the "Agency") had not adopted and used the mark Netfile & Design in association with its services prior to submitting its request to the Registrar.
[2] The applicant also filed an application for judicial review pursuant to section 18.1 of theFederal Court Act, R.S.C. 1985, c. F-7, for a declaration that the decision of the Registrar is unlawful and invalid and an order quashing the decision of the Registrar to accept for publication and to publish on behalf of the respondent, notice of the section 9(1)(n)(iii) official mark for Netfile, File No. 911,345, published in the Canadian Trade-marks Journal dated December 29, 1999, at page 155.
[3] This application for judicial review will be addressed by another decision rendered August 7, 2001 in File No. T-425-00. The parties have agreed to present their oral and written submissions in both files at the same time but two separate decisions are rendered.
FACTS
[4] The applicant is the licensee of Filenet Canada Inc., the owner of the trade-mark FILENET in Canada, which is the subject of Canadian trade-mark registration TMA352,209. FILENET was registered in 1989 for use in association with "computer hardware, software and peripherals; automated office systems for the storage retrieval, handling and processing of business documents".
[5] In 1993, the Canada Custom and Revenue Agency (then the Department of National Revenue) instituted nationally a program entitled "EFILE" (in English), which permitted taxpayers to file their tax returns electronically. In 1998, the Agency nationally instituted a similar program entitled "TELEFILE" (in English), which permitted the filing of individual tax returns via the telephone.
[6] A third similar program, permitting the filing of individual tax returns via the Internet, was scheduled by the respondent to commence in the 2000 filing season for the 1999 taxation year. The names "Netfile" (in English) and "Impôtnet" (in French) were chosen for this program about the end of May 1999.
[7] A search conducted in June 1999 did not reveal any records in the trade-marks registry identical to "Netfile" or "Impôtnet".
[8] In June 1999, the Director General of the Communications Branch of the Agency approved the use of the names "Netfile" and "Impôtnet" for the program, and from that time on, those words were used internally to refer to the project.
[9] On June 15, 1999, a news release was issued by the Agency to the public. The news release, which appeared both in print and on the respondent's website, discussed Internet filing. At that time, the word "Netfile" appeared in the "Universal Resource Locator" ("URL") for the page of the Canada Customs and Revenue Agency website containing this news release.
[10] Following internal approval of the use of the words "Netfile" and "Impôtnet" for this project, the Agency contracted with a registered trade-mark agent to do an official search in Canada of the words "Netfile" and "Impôtnet". The purpose was to establish the availability of these words for use as official marks by the Government of Canada and to provide a search report.
[11] The agent's report, provided to the respondent in July 1999, indicated that the words "Netfile" and "Impôtnet" were available for use and registration in Canada under section 9 of the Act.
[12] On August 10, 1999, the Agency sought to obtain the domain names "netfile.gc.ca" and "impôtnet.gc.ca" in order to ensure exclusive use of these words as Internet addresses.
[13] On August 11, 1999, a request was made to the Client Services Directorate of the Information Technology Branch of the Agency, asking that the proposed "Netfile" and "Impôtnet" logos be added to the Agency's existing public website.
[14] The logos were first visible on the public Agency website on August 31, 1999. By the next day, the Netfile logo on the Agency website had been accessed or used ("hit") 196 times.
[15] On August 30, 1999, the respondent submitted its request to the Registrar that public notice be given of the mark Netfile & Design pursuant to section 9(1)(n)(iii) of the Act.
[16] The request stated that the Minister of National Revenue ("MNR") had adopted and used the Netfile & Design mark in Canada in association with "filing of tax related information with Revenue Canada or the Canada Customs and Revenue Agency".
[17] On October 8, 1999, the Trade-mark Office officially accepted the Agency's applications under section 9 of the Act in respect of the logos "Netfile" and "Impôtnet". The applications were thereafter accepted for publication on November 23, 1999. The Registrar gave public notice of the Netfile & Design mark on page 155 of the Trade-marks Journal on December 29, 1999.
ISSUES
[18] 1 - Should this proceeding be brought as an appeal or a judicial review?
2 - Is the applicant affected by the notice given under subparagraph 9(1)(n)(iii) of the Act, so as to give the applicant any standing in this proceeding or to render the proceeding effective?
3 - Is the validity of a notice given under subparagraph 9(1)(n)(iii) dependent upon the adoption or use of the mark in question by the public authority?
4 - If so:
(a) At what point in time, in relation to the giving of the notice, must the adoption and use have occurred?
(b) Had the Agency adopted and used the "Netfile" mark by that point in time?
ANALYSIS
1. Should this proceeding be brought as an appeal or a judicial review?
[19] This issue was not raised explicitly by the parties. However, the applicant brought two applications, an appeal under the Act and a judicial review application of the Registrar's decision. It appears from the jurisprudence that the proper way for the applicant to bring the present proceeding was by way of judicial review.
[20] In Maple Leaf Meats Inc. v. Consorzio Del Prosciutto Di Parma (2000), 9 C.P.R. (4th) 485 (F.C.T.D.), O'Keefe J. reviewed the jurisprudence on this issue and stated:
[...] The appellant was not a party to the proceedings before the Registrar. The question now becomes - Does the appellant have a right to appeal the Registrar's decision to publish the mark pursuant to subparagraph 9(1)(n)(iii) of the Act via an appeal under section 56 of the Act?
One of the major difficulties facing the appellant is that it was not a party to the proceedings before the Registrar. This case is not about an appeal pursuant to section 56 by an applicant who was refused publication under subparagraph 9(1)(n)(iii), but is an appeal by a third party purportedly affected by the publication.
This Court has discussed the mechanisms of a review or appeal of the decision of the Registrar made pursuant to subparagraph 9(1)(n)(iii) in a number of decisions. In Canadian Olympic Association v. USA Hockey Inc. (1999) 3 C.P.R. (4th) 259 (F.C.A.) at page 260, Desjardins J.A. stated:
Whether the appropriate procedure for the appellant was an appeal or an application for judicial review need not be decided. We are satisfied that the bringing of an action to challenge the implicit decision of the Registrar that the Respondents USA BASKETBALL and USA HOCKEY INC. were "public authorit[ies]" for the purposes of subparagraph 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13, was not the correct procedure.
And in Magnotta Winery Corp. v. Vintners Quality Alliance of Canada (1999) 1 C.P.R. (4th) 68 (F.C.T.D.) Reed J. stated at pages 75 and 76:
Counsel for the VQA responded that: (1) Magnotta could not proceed understion section 57 to have the official mark expunged from the Register because it is not a mark that is on the Register; (2) Magnotta had no right to appeal the Registrar's decision under section 56 of the Trade-marks Act because it was not a party to the Registrar's decision, and in any event it was out of time to launch such an appeal; (3) Magnotta could not proceed for judicial review under section 18 of the Federal Court Act, R.S.C. 1985, c. F-7 because it did not have a legal interest in the decision at the time the decision was made, and it was in any event out of time for filing such an application.
It is not as clear whether an appeal by the applicants might lie under section 56 of the Trade-marks Act. Subsection 56(1) states:
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.
In Canadian Olympic Assn. V. USA Hockey Inc. (1997), 74 C.P.R. (3d) 348 (F.C.T.D.) At p. 350, Associate Chief Justice Jerome stated that there was no provision allowing for the revocation of an official mark, nor for rescinding a Registrar's decision to give public notice of the adoption and use of an official mark. He continued however, "any remedy which the plaintiff might have had with respect to the Registrar's decision, assuming it had standing, was to launch an appeal". A similar statement is found in Canadian Olympic Assn. V. USA Basketball, [1997] F.C.J. No. 825 (QL) (June 13, 1997) para. 7 [summarized 72 A.C.W.S. (3d) 345]. At the same time, in the text previously referred to, Hughes on Trade-marks, at pp. 453-7, note 27, it is noted that these statements are believed to be in error since there is no proceeding concerning a paragraph 9(1)(n) notice that a person other than the applicant for that notice could appeal.
And at page 79:
I return then to the question whether a judicial review application is in any event the appropriate procedure. It is my understanding that other applicants have commenced actions by appeal under section 56 (e.g. T-2127-98). As noted above, it is not clear whether this is the correct procedure. Certainly, a judicial review application is well suited to a situation in which no notice has been given to an interested party and I note that courts have implied such requirements into legislative procedures when they have not been statutorily required. Counsel for the applicants if of the view that a section 18.1 judicial review application is the more legally correct way to proceed. I have no doubt that what is correct will not be decided by this Court. It will be for the Court of Appeal to decide. There may, therefore, be merit in having applications instituted pursuant to both routes proceeding simultaneously. Insofar as the need for a legal interest to commence a judicial review application is concerned, I am not persuaded that only those who have participated in the proceeding leading to the decision that it is sought to be reviewed have such an interest. This is so at least in the situation in which the interested person has not been given notice of, nor an opportunity to participate in, that process.
The final decision which deals with the appeal or review of the decisions of the Registrar made under subparagraph 9(1)(n)(iii) is Ontario Association of Architects v. Association of Architectural Technologists of Ontario, [2000] F.C.J. No. 1743, (October 26, 2000), Docket No. T-1157-99 (F.C.T.D.) (the "Architects' case"). In that case, the applicants sought an order reversing a decision of the Registrar of Trade-marks whereby the Registrar gave public notice pursuant to subparagraph 9(1)(n)(iii) of the Act of the use and adoption by the respondent, Association of Architectural Technologists of Ontario, of certain official marks. As is obvious from the decision of McKeown J. the application, although stated at the hearing to be under section 56 of the Act, made no specific reference to section 56 in the application itself. In the end, McKeown J. ruled that the matter was before him by way of judicial review. He stated at pages 5 - 6 of the decision:
The Applicant brought this matter before the Court by way of an application. The Applicant stated in its submissions that the application was brought by way of an appeal under section 56 of the Trade-marks Act and Rule 300 of the Federal Court Rules which requires that an appeal under section 56 be brought by way of an application. However, the application itself makes no reference to an appeal under section 56.
The application seeks "an order reversing the decision of the Registrar of Trade-marks ... to give public notice of the adoption and use by the Respondent" of the official marks and further, "that the publication of the official marks ... in the Trade-marks Journal dated April 28, 1999 was void ab initio and has no force or effect."
The Applicant was not a party to the matter before the Registrar and in my view has no standing to proceed by way of appeal. However, the Applicant certainly has an interest in these official marks. Indeed, the Applicant has an interest in the Registrar's decision because section 11 of the Trade-marks Act prohibits any person from using, as a trade-mark or otherwise, any official mark. As such, where no other avenue of appeal is available, judicial review will be available. In my view, the matter is properly before me as an application for judicial review pursuant to section 18.1 of the Federal Court Act.
Although the right of appeal granted by subsection 56(1) of the Act is not limited to any person, this does not mean that any person can file a notice of appeal. As Pinard J. of this Court stated in Les Restaurants Pacini Inc. (successor in title to Groupe Resto Inc.) v. Pachino's Pizza Limited, [1994] F.C.J. No. 1607, (October 28, 1994), Docket No. T-3149-92 (F.C.T.D.) at page 4:
In my view, although the statutory appeal provided for by s. 56(1) is not expressly reserved to anyone in particular, that does not mean that any person may exercise this exceptional right. The following comments by the Supreme Court of Canada on the exceptional nature of the right of appeal are worth recalling:
We think that an appeal, which is unknown to the common law, must be given by statute in such clear and explicit language that the right to appeal cannot be doubted.
...
The right of appeal is an exceptional right. That all the substantive and procedural provisions relating to it must be regarded as exhaustive and exclusive, need not be expressly stated in the statute. That necessarily flows from the exceptional nature of the right.
I agree with the finding of McKeown J. in the Architects', supra case where he found that the appellant did not have standing to pursue an appeal under subsection 56(1) of the Act as he was not a party to the matter before the Registrar. I would therefore hold that the appellant in this case does not have the standing to pursue an appeal, under subsection 56(1) of the Act, of the Registrar of Trade-marks' decision to publish the official mark of the respondent pursuant to subparagraph 9(1)(n)(iii) of the Act.
[21] The above decision of O'Keefe J. was appealed but the appeal has not been heard yet.
[22] In light of the above decision, the relevant application in the case at bar is the application for judicial review filed by the applicant.
[23] Given the answer to question number 1, at paragraph 18, it is not necessary to address the three other issues.
[24] Therefore, the appeal pursuant to section 56(1) of the Trade-Marks Act is dismissed with costs.
Pierre Blais
Judge
OTTAWA, ONTARIO
August 7, 2001