T-24-75
Fjord Pacific Marine Industries Ltd. (Appellant)
v.
The Registrar of Trade Marks (Respondent)
and
The Oshawa Group Limited (Respondent/Interve-
nant)
Trial division, Mahoney J.—Ottawa, April 4 and
10, 1975.
Trade marks—Appeal—Registrar granting respondent/
intervenant extension of time to oppose appellant's applica-
tion—Whether an administrative action not subject to judicial
review—Whether Registrar made prerequisite determination
that failure to apply within one month from advertisement of
application not reasonably avoidable—Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 37(1), 38(2), 46(1) and (2) and 56.
Appellant appeals a decision of the Registrar of Trade Marks
granting respondent/intervenant an extension of time to oppose
appellant's application which had been filed January 31, 1972,
and advertised November 1, 1972. Respondent/intervenant
first notified the Registrar of its interest November 1, 1974.
Held, allowing the appeal, section 37(1) of the Trade Marks
Act provides a one-month time limit after advertisement of an
application for filing a statement of opposition. Under section
46(2), the Registrar was obliged to determine whether the
failure to apply within the time limit "was not reasonably
avoidable". The Court, in similar instances, has held that such
a decision was amenable to judicial review. When the statute
prescribes a particular finding of fact as a prerequisite to the
exercise of discretion, that fact must be found. Oshawa's reason
for failing to apply in November 1972 was that it had no
interest or basis for so doing. Its subsequent acquisition of an
interest in and basis for opposing should not have been con
sidered. The Registrar did not make the prerequisite determi
nation of fact; there were not before him representations of fact
which, had they been considered, could have led to the
determination.
Berback Quilting Ltd. v. The Registrar of Trade Marks
[1958] Ex.C.R. 309; Centennial Grocery Brokers Inc. v.
The Registrar of Trade Marks [1972] F.C. 257; In re
Worldways Airlines Ltd. and the Canadian Transport
Commission [1974] 2 F.C. 597, followed.
APPEAL.
COUNSEL:
W. C. Kent for appellant.
P. B. Annis for respondent.
S. Trachimovsky for respondent/intervenant.
SOLICITORS:
Burke-Robertson, Chadwick and Ritchie,
Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
Malcolm S. Johnston, Toronto, for respond-
ent/intervenant.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This is an appeal, pursuant to
section 56 of the Trade Marks Act, from a deci
sion of the respondent, the Registrar of Trade
Marks (herein called "the Registrar"), granting
the respondent/intervenant, The Oshawa Group
Limited (herein called "Oshawa"), an extension of
time, pursuant to section 46(2) of the Act, to
oppose the appellant's application Serial No.
349,856.
On January 31, 1972 the appellant filed with
the Registrar an application to register the trade
mark "Dutch Boy" which it had used in connec
tion with pickled herring since September, 1968.
The application was advertised in the Trade
Marks Journal of November 1, 1972. A statement
of opposition, not in issue in this appeal, was filed
and the ensuing year was occupied by the various
steps consequent upon that opposition leading to a
request by the appellant on November 1, 1973 that
the Registrar hold an oral hearing. The Registrar
advised that such could not be held within the next
eight or ten months. The appellant reiterated its
request for the oral hearing, paid the required fee
and, on December 14, 1973 was advised that the
hearing could not likely be held for six months. On
August 28, 1974, the appellant was advised that
"the hearing may not be held before another
period of 8 or 10 months".
On November 1, 1974—two years to the day
after the advertisement of the appellant's applica-
tion—Oshawa, for the first time, notified the Reg
istrar of its interest in the proceedings and request
ed an extension of the time allowed them to file a
statement of opposition. Oshawa had become
interested as the result of the acquisition of
another business concern which had not, itself,
opposed the application. Only after acquiring the
other concern and looking into the possibility of
itself obtaining registration of the trade mark
"Dutch Boy" did Oshawa become aware of the
application. The Registrar decided to grant
Oshawa the extension and it is that decision that is
appealed to this Court.
Relevant provisions of the Act follow:
37. (1) Within one month from the advertisement of an
application, any person may, upon payment of the prescribed
fee, file a statement of opposition with the Registrar.
38. (2) The Registrar shall not extend the time for filing a
statement of opposition with respect to any application that has
been allowed.
46. (1) If, in any case, the Registrar is satisfied that the
circumstances justify an extension of the time fixed by this Act
or prescribed by the regulations for the doing of any act, he
may, except as in this Act otherwise provided, extend the time
after such notice to other persons and upon such terms as he
may direct.
(2) An extension applied for after the expiry of such time or
the time extended by the Registrar under subsection (1) shall
not be granted unless the prescribed fee is paid and the
Registrar is satisfied that the failure to do the act or apply for
the extension within such time or such extended time was not
reasonably avoidable.
Section 37(1) provides a one-month time limit
after advertisement of an application within which
a statement of opposition may be filed. It is to be
noted that anyone at all is entitled to file a state
ment of opposition; the section does not limit
opposition to persons claiming an interest such as
would be necessary, under section 57, to give that
person status to seek to strike but or amend an
entry in the register once an application was
allowed. The only statutory bar to the grant of the
extension, that contained in section 38(2), is not in
play. In considering Oshawa's application for an
extension of time, the Registrar had clearly to
resort to subsection (2) rather than subsection (1)
of section 46. In other words he was obliged to
make, not the rather general determination that
"the circumstances justify an extension of the time
fixed" by the Act, called for by section 46(1), but
the more particular determination that, in this
case, the failure to apply for the extension within
the first month after publication "was not reason
ably avoidable", called for by section 46(2).
Counsel for the Registrar raised, but did not
press, the question of whether the decision to grant
an extension of time under section 46(2) is a
"decision" within the meaning of section 56(1).
He suggested that an application for a writ of
prohibition might, in the circumstances, have been
the appropriate procedure. No argument was pre
sented in support of this proposition. In effect, it
was raised and abandoned and I make no decision
on it.
The Registrar's fundamental proposition is that
the granting of an extension of time in such cir
cumstances is a purely administrative action not
subject to judicial review whether by appeal under
section 56(1) or otherwise. That proposition has
not, so far as I am aware, been dealt with by the
Courts; however, the clear inference to be drawn
from decisions that have considered extensions of
time in such circumstances is against it. In Ber -
back Quilting Ltd. v. The Registrar of Trade
Marks', the appellant unsuccessfully challenged
the Registrar's refusal of an extension in an appeal
such as this. In Centennial Grocery Brokers Inc. v.
The Registrar of Trade Marks 2 , the applicant,
again unsuccessfully, sought to quash an extension,
similarly granted, by prohibition. In each case, the
Court clearly considered that the Registrar's deci
sion was amenable to judicial review although it
declined, in the result, to interfere with it.
In the Centennial case, Heald J., at page 261,
held:
The Registrar, at the time he made his decision to grant an
extension of time, had all the circumstances before him from
which he could conclude that the error or oversight "was not
reasonably avoidable" as contemplated in section 46(2).
I should not interfere with the Registrar's exercise of discre
tion unless he was clearly wrong ....
' [1958] Ex.C.R. 309.
2 [1972] F.C. 257.
That is a statement of the law with which I fully
agree. It clearly recognizes the principle that
where the statute prescribes a particular finding of
fact as a prerequisite to the exercise of discretion,
that fact must be found.' The administrative au
thority must ask itself the question that the statute
says must be answered before it can proceed to
make the decision. In this case the Registrar,
before granting the extension of time, was required
to be satisfied, in other words to find as a fact, that
Oshawa's failure to apply for the extension within
a month of the advertisement of appellant's
application in the Trade Marks Journal was not
reasonably avoidable.
The circumstances upon which such a determi
nation might have been based are set forth in
Oshawa's letter to the Registrar dated October 29
and received by him November 1. There was no
other relevant material before him. The full text
follows:
Request is respectfully made on behalf of the Oshawa Group
Limited for a brief extension of the time allowed for filing a
statement of opposition to the captioned trade mark application
S.N. 349,856—DUTCH BOY—advertised in the November 1,
1972 issue of the Trade Marks Journal and presently under
opposition by Vancouver Shellfish and Fish Company Limited.
The proposed opponent, The Oshawa Group Limited, has
recently succeeded to the business and trade mark rights of The
Dutch Boy Food Market which has been in operation under the
trade name since 1954.
Upon its acquisition of the interest in this company, the
proposed opponent instructed its undersigned Trade Marks
Agent to proceed with applications for registration of the
word—DUTCH BOY—as its trade mark, not only for services
involved in the operation of supermarkets but also as its trade
mark for a long list of private-branded goods normally sold in
supermarkets.
A routine availability search made in the Canadian Trade
Marks Office on July 17 brought to light prior applications
S.N. 349,683 and S.N. 349,856 for registration of the same
trade mark. Copies of these applications were then ordered
from the Trade Marks Office on July 22 but, unfortunately,
were not received until October 1, at which time it was noted
that said trade mark application S.N. 349,856 is still under
opposition.
At the time that this application was advertised in 1972, the
proposed opponent had no interest in the trade mark—DUTCH
BOY—. However, it does have a very keen interest in such trade
' In re Worldways Airlines Ltd. and the Canadian Transport
Commission [1974] 2 F.C. 597.
mark at the present time and, moreover, in view of its substan
tial priority in that trade mark, it appears to have a very solid
and justifiable basis for opposition to the application.
In these circumstances, it is respectfully submitted that this
is an appropriate ground for granting The Oshawa Group
Limited, the proposed opponent, an extension of time for filing
opposition to application S.N. 349,856 aforesaid and request
for such extension of time is respectfully reiterated.
The applicable fee of ten dollars covering this request is
herewith remitted.
The Registrar's reply, dated November 8, sets
forth the decision that is the subject of this appeal
and the findings of fact he made in connection
with that decision; it sets them forth in full in so
far as the record discloses them.
We acknowledge receipt of your letter dated October 29, 1974.
In view of the fact that your client instructed you to proceed
with an application for the registration of DUTCH BOY in
relation to the services involved in the operation of supermar
kets as well as wares to be sold under a private brand label
DUTCH BOY, and as application number 349,356 may constitute
an impediment to such an application it is in the interest of
both parties that the rights of the parties be determined in this
opposition proceeding.
An extension of time until December 2, 1974 is granted in
which to file a Statement of Opposition in duplicate. This
extension of time in which to oppose has been granted on the
understanding that the opponent will meet all the time limits
set under the Trade Marks Act with respect to oppositions.
Oshawa had as much right to oppose the
application in November, 1972 as it had in
November, 1974. The only reason for its failure to
do so is that it had no interest in doing so nor did it
feel it had any basis for doing so. The interest in
opposing the application and the perceived basis
for opposition were acquired "recently".
I see no reasonable way of construing the
requirement of section 46(2), that the Registrar be
satisfied that the failure to apply for the extension
of time within a month of the advertisement was
not reasonably avoidable, except that he is
required to so satisfy himself with reference to
facts that existed during that month. I do not see
how a circumstance that arose after the month had
passed can, in any way, be relevant to the avoida-
bility, reasonable or otherwise, of an omission that
occurred during that month. Oshawa's subsequent
acquisition of an interest in and perceived justifi
able basis for opposing the application ought not to
have been considered by the Registrar. Likewise,
the fact of its subsequent application to register
the same trade mark is irrelevant.
If I am right in holding that it is only with
reference to facts that pertained when Oshawa
might have opposed, but omitted to oppose, the
application that the Registrar can determine that
the omission was not reasonably avoidable, then
the circumstances to which Oshawa could properly
refer the Registrar, in seeking the extension, are
either its own disinterest during the month in
question or circumstances that existed that month
of which its predecessor in title to the rights of the
Dutch Boy Food Market might have referred the
Registrar. As to the latter, there is no evidence
and, as to the former, I have no hesitation in
finding that it would be clearly wrong for the
Registrar to find that Oshawa's disinterest in the
matter, and nothing more, supported an exercise of
his discretion in favour of an extension.
The Registrar did not, expressly, make the pre
requisite determination of fact. There is nothing in
his decision that leads me to infer that he even
considered it, much less made it. I am satisfied
that there were not before him the representations
of fact on which, had he accepted them fully, he
could reasonably have arrived at that determina
tion.
Oshawa was joined as respondent/intervenant
by order granted on its own motion. That motion
was opposed by the appellant. I cannot see that
Oshawa's joinder as a party in any way affected
the costs of the appeal itself.
The appeal is allowed. The appellant is entitled
to recover its costs of the appeal from the Regis
trar. It is entitled to recover its costs, if any, with
respect to the joinder of Oshawa as respondent/
intervenant from Oshawa.
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.