Federal Court Decisions

     T-1316-96

BETWEEN:

     CANADIAN OLYMPIC ASSOCIATION -

     ASSOCIATION OLYMPIQUE CANADIENNE

     Plaintiff

     - and -

     USA HOCKEY, INC. and

     THE REGISTRAR OF TRADE-MARKS

     Defendants

     REASONS FOR ORDER

JEROME, A.C.J.:

     This is an application pursuant to Rule 419 of the Federal Court Rules for an order striking out the plaintiff's Statement of Claim, or in the alternative, to compel the plaintiff to furnish particulars of certain allegations in the Statement of Claim.

     On March 15, 1995, the Registrar of Trade-marks, pursuant to paragraph 9(1)(n)(iii) of the Trade-marks Act, gave public notice of the adoption and use by USA Hockey of the official mark USA HOCKEY.

     The plaintiff commenced this action on June 4, 1996, by way of Statement of Claim alleging the following:

7. The design shown in Schedule "A" should not have been accorded the status of an official mark and should not have been published by the Registrar pursuant to Section 9(1)(n)(iii) of the Act as HOCKEY is not and never has been a public authority within the meaning of Section 9 of the Trade-marks Act.

8. The Registrar was in error in publishing HOCKEY's mark as an official mark pursuant to Section 9(1)(n)(iii) of the Act and in accepting HOCKEY as a public authority within the meaning of the Act and the Plaintiff reasonably apprehends that it may be affected by the Registrar's act in according HOCKEY such status and the Registrar's contemplated acts similar thereto, all of which acts and contemplated acts are contrary to the Trade-marks Act. The Plaintiff qualifies as a "person interested" within the meaning of the Trade-marks Act.

     Based on these allegations, the plaintiff sought, inter alia, a declaration that the Registrar's decision to publish notice of the defendant's adoption and use of its official mark USA HOCKEY was void ab initio, and an order quashing the Registrar's decision.

     The defendant USA Hockey, Inc. now brings this application pursuant to Rule 419 for an order striking out the plaintiff's Statement of Claim on the grounds that it discloses no reasonable cause of action, is frivolous or vexatious and is an abuse of process of the Court.

     Having considered the written and oral submissions of the parties, I am satisfied that the defendant's application should be granted and the plaintiff's Statement of Claim struck.

     First, neither the Trade-marks Act, the Federal Court Act nor the Federal Court Rules accord this Court the jurisdiction to grant any of the relief sought by the plaintiff. Section 9 of the Trade-marks Act does not contain any provision for relief in the nature of revocation of an official mark, nor does it allow for a rescinding of the Registrar's decision to give public notice of the adoption and use of an official mark. Any remedy which the plaintiff might have had with respect to the Registrar's decision, assuming it had standing, was to launch an appeal. However, the time for launching such an appeal has long passed.

     The plaintiff maintains that it is entitled to seek relief in respect of USA Hockey's official mark pursuant to, or by analogy to, section 57 of the Trade-marks Act. I have serious doubts as to the merits of that argument but in any event, even if it were correct, section 57 requires the plaintiff to commence proceedings by way of an originating notice of motion and not by way of Statement of Claim. Proceedings to expunge a registration of a trade-mark under Section 57 may only be brought by way of Statement of Claim in an action claiming other relief.

     In addition, if this action is governed by the provisions of subsection 57(1), the proceeding is barred by subsection 57(2) which provides as follows:

57. (2) No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.

     Finally, the plaintiff's Statement of Claim simply does not conform to Rule 408(1) of the Federal Court Rules which states that a party must plead the material facts upon which it relies. The bare assertion of a conclusion upon which the Court is called upon to pronounce is not an allegation of material fact. Pleadings cannot be allowed to stand where it is clear that the person making the allegation has no evidence to support it.

     Here, the Canadian Olympic Association has failed to disclose any material facts to show that USA Hockey is not a public authority, that the plaintiff would be affected by the Registrar's decision to accord USA Hockey status as a public authority, or that it has any interest in the mark USA HOCKEY.

    

     In summary, there is no legislative authority for the procedure being followed by the plaintiff in commencing this action by way of Statement of Claim. The proper method was to launch an appeal. Furthermore, the Statement of Claim does not conform with the Rules which govern pleadings in this Court.

     For these reasons, the defendant's application is allowed with costs and the plaintiff's Statement of Claim is struck.

    

O T T A W A

June 13, 1997                      "James A. Jerome"

                             A.C.J.