Date: 19990115
Docket: T-1202-98
Between :
UNITEL INTERNATIONAL INC.
Applicant
- and -
REGISTRAR OF TRADE-MARKS
Respondent
REASONS FOR ORDER
PINARD, J. :
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-10, (the "Act") of a decision of the Registrar of Trade-marks (the "Registrar") dated May 22, 1998, whereby the applicant's application No. 660,367 for the registration of the trade-mark UNITEL was refused under paragraph 37(1)(c) of the Act. The applicant asks that the decision of the Registrar be set aside and that the Registrar be directed to publish the application in the Trade-marks Journal for opposition purposes.
Facts
[2] On June 14, 1990, the applicant filed application No. 660,367 in the Canadian Trade-marks Office for the registration of the trade-mark UNITEL as applied to radio/telecommunications equipment, namely, land mobile radios, and based that application on use since at least as early as July 8, 1985.
[3] On February 25, 1991, the application was examined and among other things the examiner in the Trade-marks Office reported that the applicant did not appear to be the person entitled to the registration of the trade-mark UNITEL since the claimed date of first use of July 8, 1985 was subsequent to the date of first use claimed in application No. 648,456 filed by Canadian Pacific Telecommunications Inc., the predecessor to AT & T Canada Long Distance Services Company (hereafter the AT & T trade-mark), which was in use since as early as September 19, 1977.
[4] The applicant"s trade-mark remained in a state of suspension for the next seven years. As pointed out by the Examination Section of the Canadian Intellectual Property Office (Trade-marks) in a letter dated November 14, 1997, addressed to the applicant's counsel, "most of the processing time of subject application consists of several extensions of time requested by the applicant". In the meantime, the AT & T trade-mark proceeded to publication in the Trade-marks Journal for opposition purposes on October 14, 1992 where it was opposed by the applicant herein on numerous grounds including the ground that the date of first use in September 1977 was incorrect and insupportable.
[5] Application No. 648,456 remains in opposition proceedings. Evidence has been filed by both parties and further cross-examinations are expected.
Decision Under Appeal
[6] The Registrar's decision reads in part as follows:
| Having regard to the provisions of Section 6 of the Act and particularly the criteria for determining confusion as set out in subparagraph (5) of Section 6 of the Act, I am satisfied that the subject matter of the present application UNITEL, is confusing with the mark which is the subject of application No. 648,456 UNITEL. . . . |
| Since the date of first use, July 8, 1985, claimed in the subject application, is subsequent to the date of first use, September 1977, claimed in the earlier filed application No. 648,456, the applicant is not entitled to registration in view of the provisions of paragraph 16(1)(a) of the Act. I have noted your comments with respect to the claimed date of first use for application No. 648,456. However, during the examination process, the practice is to treat a claimed date of first use as accurate. It is considered that the proper place for challenges to claimed dates of first use to be considered is in opposition proceedings or in proceedings before the courts, which include appropriate procedures and evidentiary mechanisms for dealing with contested issues of this nature. Therefore, the mark is hereby refused under paragraph 37(1)(c) of the Act. |
Issue
[7] The only issue raised by counsel for the applicant at the hearing before me is whether the Registrar owes to the applicant a duty to have its application advertised for opposition purposes prior to satisfying herself that "the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending", as stated in paragraph 37(1)(c) of the Act.
Analysis
[8] Section 37 of the Act reads as follows:
| 37. (1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that
and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed. (2) The Registrar shall not refuse any application without first notifying the applicant of his objections thereto and his reasons for those objections, and giving the applicant adequate opportunity to answer those objections. (3) Where the Registrar, by reason of a registered trade-mark, is in doubt whether the trade-mark claimed in the application is registrable, he shall, by registered letter, notify the owner of the registered trade-mark of the advertisement of the application. |
37. (1) Le registraire rejette une demande d'enregistrement d'une marque de commerce s'il est convaincu que, selon le cas_:
Lorsque le registraire n'est pas ainsi convaincu, il fait annoncer la demande de la manière prescrite. (2) Le registraire ne peut rejeter une demande sans, au préalable, avoir fait connaître au requérant ses objections, avec les motifs pertinents, et lui avoir donné une occasion convenable d'y répondre. (3) Lorsque, en raison d'une marque de commerce déposée, le registraire a des doutes sur la question de savoir si la marque de commerce indiquée dans la demande est enregistrable, il notifie, par courrier recommandé, l'annonce de la demande au propriétaire de la marque de commerce déposée. |
[9] The applicant admits that the trade-mark subject of its application No. 660,367 is confusing with another trade-mark, namely the trade-mark subject of application No. 648,456, and that the latter application was pending at the time its application No. 660,367 was filed. The applicant also admits that the requirements in subsection 37(2) of the Act were complied with by the Registrar and that indeed it was able to fully answer the Registrar's objections prior to her decision. However, in spite of those admissions, counsel for the applicant argues that the Registrar's decision to refuse application No. 660,367 ought to be set aside and the application be advertised for opposition because that refusal debarred the applicant access to the quasi-judicial process of the opposition procedure set out in the Act. I do not agree.
[10] First, subsection 37(1) of the Act clearly gives the Registrar only two options: the Registrar "shall" refuse an application if he or she is satisfied that one of the circumstances stated in paragraph (a), (b) or (c) is present, or the Registrar "shall" cause the application to be advertised in the manner prescribed if he or she is not so satisfied. In my opinion, given the structure of the provision and the plain meaning of its words, Parliament could not have intended to require the Registrar to cause the application to be advertised if he or she is satisfied that one of the circumstances stated in paragraph (a), (b) or (c) is present.
[11] Second, I am of the view that the scheme of the Act as a whole provides a person in a situation analogous to that of the applicant with sufficient guarantees of procedural fairness from the time of the filing of its application No. 660,367.
[12] As regards procedural fairness, the Supreme Court of Canada, in Attorney-General of Canada v. Inuit Tapirisat of Canada et al. (1980), 115 D.L.R. (3d) 1, at page 17, came to the following conclusion:
| While it is true that a duty to observe procedural fairness, as expressed in the maxim audi alteram partem, need not be express (Alliance des Professeurs Catholiques de Montréal v. Quebec Labour Relations Board et al., [1953] 4 D.L.R. 161, 107 C.C.C. 183, [1953] 2 S.C.R. 140), it will not be implied in every case. It is always a question of construing the statutory scheme as a whole in order to see to what degree, if any, the legislator intended the principle to apply. |
[13] In the case at bar, in the context of a refusal pursuant to paragraph 37(1)(c) of the Act, paragraph (2) of the same section already provides an applicant with an opportunity to be notified of the Registrar's objections and reasons for those objections, and to be given adequate opportunity to answer those objections prior to the Registrar's decision being made.
[14] The scheme of the legislation also permits such an applicant full opportunity to question the pending application of another person through opposition proceedings and through the Courts. Sections 38 and 39 of the Act and sections 35 to 47 of the Trade-marks Regulations, SOR/96-195, contain a comprehensive code allowing a party to properly oppose a proposal to register a trade-mark after it has been advertised, and entitling such a party to adduce evidence and make representations to the Registrar in that regard. In addition, any decision of the Registrar, including a decision to register a trade-mark, may be appealed to this Court, which also has jurisdiction to enforce any provision of the Act (sections 55 to 61 of the Act).
[15] Indeed, as mentioned above, the applicant herein has already taken and continues to take full advantage of the opportunities offered by those statutory provisions, in answering the Registrar's objections under subsection 37(2) and in opposing application No. 648,456 filed by Canadian Pacific Telecommunications Inc.
[16] Accordingly, given the evidence before me, I find that the Registrar, after having fully complied with the requirements of subsection 37(2) of the Act and having considered the applicant's objections, could properly refuse the latter's application on the basis that the information submitted in applications 648,456 and 660,367 was correct.
[17] For all the above reasons, the appeal is dismissed and the requested order of mandamus to direct the Registrar to publish application No. 660,367 in the Trade-marks Journal is denied.
JUDGE
OTTAWA, ONTARIO
January 15, 1999