T-5893-79
The New Brunswick Telephone Company, Limited
and Teldata Limited (Applicants)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Cattanach J.—Ottawa, April 3 and
10, 1980.
Practice — Parties — Trade marks — Application for leave
to join as respondents, in an originating notice of motion for an
order directing the Registrar of Trade Marks to amend the
registration of a trade mark — Applicants herein are the
defendants in a separate Federal Court action wherein the
applicants in the originating notice of motion seek to assert
their rights under the trade mark — Notice of the originating
notice of motion was served on the solicitors for the applicants
in this motion — Application granted — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 40, 57, 58, 59— Federal Court Rules
5, 319, 321, 322, 704, 705 — Federal Court Act, R.S.C. 1970
(2nd Supp.), c. 10, s. 50.
Application to join Teledata Limited and Donald M. Fergu-
son as respondents in an originating notice of motion for an
order directing the Registrar of Trade Marks to amend the
registration of a trade mark. The applicants in this motion are
the defendants in a separate Federal Court action wherein the
plaintiffs (applicants in the originating notice of motion) have
asserted their rights under the trade mark against the defend
ants. The applicants in the present motion object to the grant of
the originating notice of motion as it would alter the facts upon
which the defence of the invalidity of the registration is based.
Only the Registrar of Trade Marks is named as a respondent in
the originating notice of motion, but notice of the originating
notice of motion was served on the solicitors for the applicants
in this motion.
Held, the applicants shall be added to the originating notice
of motion as respondents. There is no prescription as to who are
necessary or proper persons to an originating motion save in so
far as it may be inferred that the persons to whom notice is
given and persons to whom notice is required to be given by the
Court under Rule 322 are entitled to be heard on the motion
and are, therefore, parties thereto. Under subsection 59(2) of
the Trade Marks Act any person upon whom a copy of an
originating notice has been served and who intends to contest
the application shall file a reply to the notice within the
prescribed time. Notice of the originating notice has, in fact,
been served on the applicants herein. Paragraph (4) of Rule
704 permits a person upon whom a notice of motion has been
served under subsection 59(2) of the Trade Marks Act to file
and serve a reply. The applicants herein were so served. Having
been served it follows that they are authorized both by the
statute and the Rules above quoted to file a reply to the
originating motion and that, therefore, constitutes them proper
parties to the motion. In the circumstance applicable to the
originating motion the applicants herein are persons to whom
notice ought to have been given. The changes sought to be
made to the particulars of the registration of the trade mark
and the ownership thereof are of utmost concern to the appli
cants. If such changes are permitted to be made, they could be
construed as having retroactive effect and thereby deprive the
applicants of the defence that they have pleaded.
APPLICATION.
COUNSEL:
R. H. Barrigar for applicants.
Leslie Holland for respondent.
R. G. McClanahan, Q.C. and J. Steinberg for
Teledata Limited and Donald M. Ferguson.
SOLICITORS:
Barrigar & Oyen, Ottawa, for applicants.
Deputy Attorney General of Canada for
respondent.
Gowling & Henderson, Ottawa, for Teledata
Limited and Donald M. Ferguson.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an application on behalf
of TELEDATA LIMITED and DONALD M. FERGU-
SON for leave, inter alia, to join as respondents
with the Registrar of Trade Marks in an originat
ing notice of motion by the applicants named in
the above style under section 57 of the Trade
Marks Act, R.S.C. 1970, c. T-10, for an order
directing the Registrar of Trade Marks to amend
the particulars of the registration of "TELDATA",
No. 191,730 as to the date of first use alleged and
the registered owner thereof.
By application dated August 3, 1972 TELDATA
LIMITED (a party to the originating notice) applied
for the registration of "TELDATA" as a trade mark
in association with communication equipment and
in association with data processing services alleg
ing the date of first use as April 1972 and Febru-
ary 1972 respectively.
On June 4, 1975 THE NEW BRUNSWICK TELE
PHONE COMPANY, LIMITED was registered as a
registered user of the trade mark "TELDATA".
The applicant in this present motion was incor
porated by federal letters patent dated January 13,
1972 under the corporate name of TELEDATA LIM
ITED and TELEDATA LIMITÉE, in the alternative,
for the purpose of carrying on business as a dealer
in electrical and electronic components and has
done so since the date of its incorporation.
Clearly the incorporation of TELEDATA LIMITED
on January 13, 1972 antedates the dates of first
use, that is February 1972 and April 1972, alleged
by TELDATA LIMITED in its application dated
August 3, 1972 for the registration of the trade
mark "TELDATA".
In the originating notice of motion it is alleged
that THE NEW BRUNSWICK TELEPHONE COM
PANY, LIMITED was the first user of the trade
mark "TELDATA", the date of first use being June
1972, and that it was the person entitled to the
registration of the trade mark, "TELDATA" and not
its wholly owned subsidiary, which was not incor
porated until March 1972 and accordingly was not
a corporate entity and could not have used the
trade mark "TELDATA" as early as February, 1972
as stated in the application for registration in
association with communications equipment.
Accordingly what the applicants, THE NEW
BRUNSWICK TELEPHONE COMPANY, LIMITED and
TELDATA LIMITED (its subsidiary) seek to achieve
by the originating notice of motion naming the
Registrar of Trade Marks as respondent is to
substitute the date of June 1972 as the date of first
use of the trade mark "TELDATA" for the date of
February 1972 by THE NEW BRUNSWICK TELE
PHONE COMPANY, LIMITED instead of TELDATA
LIMITED and to substitute THE NEW BRUNSWICK
TELEPHONE COMPANY, LIMITED for TELDATA
LIMITED as registered owner.
In Federal Court action No. T-613-78, by state
ment of claim dated February 14, 1978 and filed
on that date THE NEW BRUNSWICK TELEPHONE
COMPANY, LIMITED and TELDATA LIMITED
sought to restrain the defendants, TELEDATA LIM
ITED and DONALD M. FERGUSON from using the
word "TELEDATA" as a trade mark as part of its
corporate name in association with communica
tions equipment or services and other remedies
usual in a trade marks suit.
In short the plaintiffs have asserted rights under
the trade mark registration No. 191,730 of the
word "TELDATA" against the defendants. Natural
ly, that trade mark was asserted to be valid and
subsisting.
The defendants filed a statement of defence and
counterclaim dated May 31, 1978 amended on
November 20, 1978 asserting that the plaintiffs'
trade mark is invalid and void ab initio on the
grounds that TELDATA LIMITED, the applicant for
registration and registered owner, had not used the
trade mark since February 1972 nor at any time
prior to securing registration of the trade mark
"TELDATA" in its name. The defendants also coun
terclaim seeking a declaration under section 57 of
the Trade Marks Act that the registration be
expunged.
Counsel for the plaintiffs and applicants for the
originating notice of motion admits that the dates
of first use in the application for the registration of
the trade mark made on August 3, 1972 were
wrong and that TELDATA LIMITED was neither the
proper applicant nor entitled to be the registered
owner as the particulars of the registration reflect.
The purpose of the originating notice of motion,
he candidly admits, is to correct those flagrant
errors.
On the other hand counsel for the defendants
and applicants in the motion now before me object
vehemently to the grant of the originating notice of
motion as it is an attempt in the midstream of
litigation to alter the facts on which the defence of
the invalidity of the registration is based thereby
depriving the applicants of that defence.
It is conceded by all parties that resort cannot
be had to section 40 of the Trade Marks Act to
effect amendments to the register. The amend-
ments sought to be made are not within those set
forth in section 40.
Accordingly resort was had to section 57 which
reads:
57. (1) The Federal Court of Canada has exclusive original
jurisdiction, on the application of the Registrar or of any person
interested, to order that any entry in the register be struck out
or amended on the ground that at the date of such application
the entry as it appears on the register does not accurately
express or define the existing rights of the person appearing to
be the registered owner of the mark.
(2) No person is entitled to institute under this section any
proceeding calling into question any decision given by the
Registrar of which such person had express notice and from
which he had a right to appeal.
Subsection 59(1) of the Act provides that an
application is made under section 57 by filing an
originating notice of motion.
Subsection 59(2) reads:
59....
(2) Any person upon whom a copy of such notice has been
served and who intends to contest the appeal or application, as
the case may be, shall file and serve within the prescribed time
or such further time as the court may allow a reply setting forth
full particulars of the grounds upon which he relies.
In the originating notice of motion which is
dated December 11, 1979 only the Registrar of
Trade Marks is named as a respondent.
The Registrar of Trade Marks filed a reply. He
opposed the application to recite that the trade
mark has been used by THE NEW BRUNSWICK
TELEPHONE COMPANY, LIMITED since June 1972
in place of the registrant TELDATA LIMITED on the
grounds that to do so would be prejudicial to any
person who may have given up the right to oppose
the application based on the earlier dates of use
stated by the applicant TELDATA LIMITED at the
time of the application for registration.
It is my understanding that the counsel for the
Registrar of Trade Marks may have directed or
suggested that notice of the originating notice of
motion should be served on the defendants,
TELEDATA LIMITED and DONALD M. FERGUSON
in Federal Court action No. T-613-78.
Notice dated December 28, 1979 that a pro
ceeding by way of originating notice of motion (a
copy of which was attached) was served on the
solicitors for TELEDATA LIMITED and DONALD M.
FERGUSON, service of which was admitted by
endorsation on January 3, 1980. Service was also
admitted by the Registrar of Trade Marks and the
Deputy Attorney General of Canada on December
11, 1979.
In the motion under consideration TELEDATA
LIMITED and DONALD M. FERGUSON seek (1)
leave to intervene as party respondents to the
originating notice of motion and that this action
should be heard together with Federal Court
action No. T-613-78 or, alternatively (2) leave to
file a reply under Rules 704 and 705 or in the
further alternative (3) an order to stay all proceed
ings under the originating notice of motion until
after the determination of the issue as to the
validity of the registration of the trade mark
"TELEDATA" raised in Federal Court action No.
T-613-78.
To be added as respondents the applicants refer
to Rule 1716(2) under which "at any stage of an
action" the Court may order that any person who
ought to have been joined as a party, or whose
presence is necessary to ensure that all matters in
dispute "in the action" may be effectually and
completely determined and adjudicated upon be
added as a party.
Rule 1716 applies to "actions" only and not to
other types of proceedings and "action" is defined
in Rule 2(1) as meaning a proceeding in the Trial
Division "other than an appeal, an application or
an originating motion". Rule 1716 is not appli
cable to this proceeding which is by way of origi
nating notice under section 58 of the Trade Marks
Act.
Rule 5 provides that in any proceeding in the
Court where a matter arises not otherwise pro
vided for the practice and procedure shall be deter
mined for the particular matter by analogy to
other provisions in the Rules.
Rule 319 which provides for application by way
of motion refers to "an adverse party" and to "any
other party" but does not identify who those par
ties are.
Rule 321(1) provides for service "on all other
parties" when an ex parte application is not
permitted.
Rule 322 provides that:
Rule 322. If, on the hearing of a motion the Court is of opinion
that any person to whom notice has not been given ought to
have or to have had such notice, the Court may either dismiss
the motion or adjourn the hearing thereof, in order that such
notice may be given, upon such terms, if any, as to the Court
seem appropriate. Where the person who should otherwise be
notified is dead, the Court may direct that his personal repre
sentatives be notified in his place.
This is the procedure which the Rules prescribe
on motions, whether made in the course of an
action or otherwise. There is no prescription as to
who are necessary or proper persons to an originat
ing motion save in so far as it may be inferred that
the persons to whom notice is given and persons to
whom notice is required to be given by the Court
under Rule 322 are entitled to be heard on the
motion and are, therefore, parties thereto.
Under subsection 59(2) of the Trade Marks Act
previously quoted any person upon whom a copy of
an originating notice has been served and who
intends to contest the application shall file a reply
to the notice within the prescribed time.
Notice of the originating notice has, in fact,
been served on the applicants herein. There is no
doubt that the applicants fully intend to oppose the
originating notice of motion.
Rule 704 applies to an originating notice under
subsection 59(2) of the Trade Marks Act and
paragraph (4) of Rule 704 permits of a person
upon whom a notice of motion has been served
under subsection 59(2) of the Trade Marks Act
filing and serving a reply.
The applicants herein were so served. Having
been served it follows that they are authorized
both by the statute and the Rules above quoted to
file a reply to the originating motion and that, in
my view, constitutes them proper parties to the
motion.
In the circumstance applicable to the originating
motion herein which I have set forth in detail at
the outset I am satisfied that the applicants herein
are persons to whom notice ought to have been
given and had it not been given I would have no
compunction about requiring that notice be given
under Rule 322.
Had I not reached the conclusion that I have
then I should have thought that the originating
motion should have been stayed under section 50
of the Federal Court Act, R.S.C. 1970 (2nd
Supp.), c. 10, as being in the interest of justice to
do so.
I do not accept the contention that the appli
cants have no interest in internal housekeeping
matters in the Trade Marks Office. The changes
sought to be made to the particulars of the regis
tration of the trade mark and the ownership there
of are of utmost concern to the applicants. If such
changes are permitted to be made, they could, in
all likelihood, be construed as having retroactive
effect and thereby deprive the applicants of the
defence that they have pleaded.
For the foregoing reasons the applicants shall be
added to the originating motion as respondents
and the style shall be amended accordingly.
In the event of this conclusion counsel for the
parties were agreed that the originating motion
should be heard together with Federal Court
action No. T-613-78 for which I understand a joint
application for trial will be forthcoming shortly.
The same parties and issues are involved and I
accordingly so order.
The applicants shall have leave to file and serve
their reply to the originating notice and statement
of material facts within 30 days of the date of the
order herein and within the same period shall file
any affidavits upon which reliance is to be had on
the hearing and determination of these proceed
ings.
The costs of this application shall be costs to the
applicants in any event in the cause.
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.