T-3699-81
Sharp Kabushiki Kaisha doing business as Sharp
Corporation (Appellant)
v.
Registrar of Trade Marks and Dahlberg Electron
ics Inc. (Respondents)
Trial Division, Mahoney J.—Ottawa, December 3
and 10, 1981.
Trade marks — Appeal from Registrar's decisions deeming
the opposition proceedings abandoned and allowing the
respondent Dahlberg's application for the trade mark —
Appellant's request for an extension of the time for filing
evidence was received by the Registrar in time, but was mis-
filed and not considered by 'him — Registrar deemed the
opposition abandoned pursuant to s. 44 of the Trade Marks
Regulations and allowed Dahlberg's application without
affording the appellant an opportunity to be heard — Section
37(7) of the Act gives the opponent an opportunity to submit
evidence and an opportunity to be heard — Section 37(8)
authorizes the Registrar to make a decision "after hearing the
parties, if so required" — Whether the Registrar erred in his
decisions — Appeal is allowed — Section 44 of the Regula
tions is declared ultra vires — Trade Marks Act, R.S.C. 1970,
c. T-10, ss. 37(6),(7),(8), 38(1) — Trade Marks Regulations,
C.R.C. 1978, Vol. XVIII, c. 1559, s. 44.
APPEAL.
COUNSEL:
David J. French for appellant.
Donald Kubesh for respondent Registrar of
Trade Marks.
No one appearing on behalf of respondent
Dahlberg Electronics Inc.
SOLICITORS:
David J. French, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent Registrar of Trade Marks.
Barrigar & Oyen, Ottawa, for respondent
Dahlberg Electronics Inc.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This is an appeal from decisions
of the Registrar of Trade Marks deeming the
opposition proceedings abandoned and allowing
the respondent Dahlberg's application for the
trade mark and for refusing to withdraw the allow
ance. It arises out of a request by the appellant for
an extension of time to file evidence that was
received by the Registrar in time but was misfiled
and not considered by him. Dahlberg did not
appear on this appeal.
After obtaining a number of extensions of time,
the appellant filed its statement of opposition on
June 25, 1980. Dahlberg's counter statement was
filed September 22 after it had been granted a
number of extensions. The appellant then obtained
a series of extensions of the time for filing its
evidence in support of its opposition. The last of
these expired April 22, 1981.
On April 8, the appellant had applied by letter
under section 46(1) of the Trade Marks Act' for a
further extension to July 22. The letter was duly
received by the Registrar on April 8 but it was
misfiled and was not located until June 23. Mean
while, the Registrar had considered the application
on June 2. Section 44 of the Trade Marks
Regulations 2 provides:
44. If the opponent fails to file and serve the evidence or
statement provided for in section 43, he shall be deemed to have
abandoned his opposition, but .. .
The balance of the section is not material. On June
3, the Registrar, deeming the opposition aban
doned, allowed Dahlberg's application without
affording the appellant an opportunity to be heard.
Nowhere in the Act is there to be found authority
to make a regulation deeming an opposition to be
abandoned.
The scheme of the Act, once a statement of
opposition has been filed and forwarded to the
applicant, is found in subsections (6), (7) and (8)
of section 37 and subsection 38(1).
37....
(6) Within the prescribed time after a statement of opposi
tion has been forwarded to him, the applicant may file a
counter statement with the Registrar and serve a copy upon the
opponent in the manner prescribed, and if he does not file and
serve a counter statement within the prescribed time he shall be
deemed to have abandoned his application.
' R.S.C. 1970, c. T-10.
2 C.R.C. 1978, Vol. XVIII, c. 1559.
(7) Both the opponent and the applicant shall be given an
opportunity, in the manner prescribed, to submit the evidence
upon which they rely and to be heard by the Registrar if they
so desire.
(8) After hearing the parties, if so required, and considering
the evidence, the Registrar shall refuse the application or reject
the opposition and notify the parties of his decision and his
reasons therefor.
38. (1) When an application either has not been opposed and
the time for the filing of a statement of opposition has expired
or it has been opposed and the opposition has been decided
finally in favour of the applicant, the Registrar thereupon shall
allow it.
Subsection 37(7) affords an opponent, if he so
desires, an opportunity to submit evidence and an
opportunity to be heard. The opportunity to be
heard is not dependent on his having submitted
evidence. The Registrar is authorized by subsec
tion 37(8) to either refuse the application or reject
the opposition only "after hearing the parties, if so
required".
The provision of section 44 of the Regulations
that deems the opposition to have been abandoned
is ultra vires inasmuch as it deprives an opponent
of the right to the hearing given by the Act. The
decision allowing the application is a nullity inas
much as the appellant was denied the right to the
hearing afforded it by the Act.
JUDGMENT
IT IS ORDERED AND DECLARED THAT:
1. The decisions of the Registrar of Trade Marks
of June 2 and 3, 1981, deeming the opposition
abandoned and allowing the application are
nullities.
2. The appellant's request for a further extension
of time is referred back to the Registrar for his
consideration along with such further request as
may be based on the time elapsed since those
decisions.
3. The opposition proceedings be resumed on the
basis of the appellant being entitled to file its
evidence within the time, if any, allowed by the
Registrar on disposition of the requests referred to
in paragraph 2 above.
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.