T-3870-82
Hardee's Food Systems, Inc. (Applicant) (Oppo-
nent)
v.
Registrar of Trade Marks (Respondent)
and
Hardee Farms International Ltd. (Respondent)
(Applicant)
Trial Division, Cattanach J.--Ottawa, September
29 and 30, 1982; January 20, 1983.
Judicial review — Prerogative writs — Certiorari — Prohi
bition — Mandamus — Application for relief under s. 18 of
Federal Court Act against decision of Registrar of Trade
Marks in opposition proceedings — Respondent, Hardee,
allowed to submit amended applications to amend statement
of wares to base them not on prior but on proposed use —
Whether amendments prohibited by ss. 36 or 37 of Trade
Marks Regulations as resulting in changing date of first use
Application dismissed — Federal Court Act, R.S.C. 1970
(2nd Supp.), c. 10, s. 18 — Federal Court Rules 319, 400, 603
— Trade Marks Act, R.S.C. 1970, c. T-10, ss. 16(1),(6), 29,
37(2),(8), 40(1)(c),(2), 56, 59, 65 — Trade Marks Regulations,
C.R.C., c. 1559, ss. 35, 36, 37, 42 and Schedule II, forms 4, 7.
The respondent, Hardee Farms International Ltd., made
applications under paragraph 40(1)(c) of the Trade Marks Act
to amend its statement of wares based on prior use. Before the
Opposition Board, Hardee Farms sought to amend its applica
tions to base them on proposed use. The Chairman allowed the
amendments, concluding that changes from prior to proposed
use did not constitute change in the date of first use. The
applicant filed a notice of appeal. Hardee Farms successfully
argued that no final decision had then been reached by the
Registrar and relief under section 18 of the Federal Court Act
was available only if the Registrar is a party to the proceedings.
This application was brought under section 18 to challenge the
Registrar's decision. The question is whether an amendment to
change the applications from being based upon prior use to
proposed use is prohibited.
Held, the application is dismissed. Section 42 of the Trade
Marks Regulations limits amendments during opposition pro
ceedings but does not make specific reference to impugned
amendments. That did not, however, constitute a casus omis -
sus. The applicant relies on paragraph 37(b) of the Regulations
in arguing that an amendment after advertisement of an
application alleging prior use to proposed use is of necessity a
change in date of first use. The words "change a date of first
use" appear in both paragraphs 37(b) and 36(c) of the Regula-
tions. Paragraph 36(d) of the Regulations employs different
language indicating that a different meaning and subject
matter were intended. Paragraph 36(d) is limited to a change
in the application from proposed to prior use; paragraphs 36(c)
and 37(b), to a change in date of first use to an earlier one. The
amendment was not the subject of a specific regulation prohib
iting such change. The amendment falls within the broad
concept of section 35 of the Regulations and may be made at
any time. The Registrar is without discretion to refuse the
amendments.
COUNSEL:
J. Guy Potvin and D. Aylen for applicant
(opponent).
A. S. Fradkin for respondent Registrar of
Trade Marks.
John Allport for respondent (applicant)
Hardee Farms International Ltd.
SOLICITORS:
Scott & Aylen, Ottawa, for applicant
(opponent).
Deputy Attorney General of Canada for
respondent Registrar of Trade Marks.
Sim, Hughes, Toronto, for respondent (appli-
cant) Hardee Farms International Ltd.
The following are the reasons for order ren
dered in English by
CATTANACH J.: By an instrument incorrectly
described as an "Originating Notice Of Motion"
the solicitor for the applicant invokes the proce
dures appropriate to and consistent with an
application by way of motion pursuant to Rule 603
whereby proceedings for relief pursuant to section
18 of the Federal Court Act, R.S.C. 1970 (2nd
Supp.), c. 10, may be brought either by way of an
action under Rule 400, i.e., by statement of claim
or declaration or by way of application under Rule
319, i.e. an application by way of a motion in the
normal sense, and at the same time disregards
procedures normal and applicable to an originating
instrument.
This is a second round in these matters, the first
having been by way of notice of appeal pursuant to
sections 56 and 59 of the Trade Marks Act,
R.S.C. 1970, c. T-10, from two identical decisions
of the Registrar of Trade Marks given through the
agency of the Chairman of the Opposition Board
on August 21, 1981 in the course of opposition
proceedings at the conclusion of oral hearings but
before a final decision had been made permitting
amendments to the application for registration
being opposed in which the present applicant was
the appellant, the second named respondent herein
was the respondent to the appeal and the Registrar
of Trade Marks named as the first respondent
herein had not been named as a party in the first
matter begun by the notice of appeal.
The relief there sought, amongst other forms,
was in the nature of certiorari, prohibition and
mandamus directed to the Registrar of Trade
Marks.
The facts remain constant and accordingly it is
expedient to repeat them in the present instance.
The respondent, Hardee Farms International
Ltd. (for convenience referred to herein as the
second respondent) is the registered owner of trade
mark No. 183,067 of the word "Hardee" for use in
association with certain food products and trade
mark No. 183,068 of what was once called a
design mark featuring the word "Hardee" in asso
ciation with the like wares.
Both the word mark and the design mark were
registered on May 12, 1972.
By two applications identical in form and con
tent the second respondent applied under para
graph 40(1)(c) of the Trade Marks Act to amend
the statement of wares in respect of which the
trade marks were registered to add thereto freeze
dried and dehydrated food products.
These two applications were prepared upon form
7 of the Trade Marks Regulations, C.R.C., c.
1559, made pursuant to section 65 of the Trade
Marks Act and is the specific form designed for
use as an "Application for Amendment of a Regis
tration to extend the Statement of Wares".
These two applications to amend the statement
of wares were filed on November 28, 1975.
The applications to amend were based upon use
in Canada since "at least as early as January
1975".
By virtue of subsection 40(2) an application to
amend the trade marks register to extend the
wares has the same effect as an application for the
registration of a trade mark in respect of those
wares.
The applications were advertised in the Trade
Marks Journal on November 16, 1977.
On April 10, 1978 the applicant herein filed
similar statements of opposition to both the
applications.
On June 21, 1978 the second respondent herein
filed counter statements.
The applicant relied upon the four grounds set
forth in subsection 37(2) of the Act as its bases of
opposition to the amendments sought. Those
grounds were that:
(1) in the applications the wares are not speci
fied in ordinary commercial terms being so
phrased as to be ambiguous,
(2) the applications do not name a predecessor
in title to the alleged use of the trade mark since
January 1975, (Objections numbered (1) and
(2) are advanced as the applications not being in
compliance with section 29 of the Act (see para.
37 ( 2 )(a)).)
(3) as at the date of first use (January 1975) the
trade mark was confusing with the trade mark,
the application for which was made by the
applicants herein, the application for which was
filed on April 10, 1975 antecedent to the date of
first use alleged by the second respondent (see
paragraph 16(1)(b)), and
(4) the trade mark is not distinctive having been
used by a party other than the second respond-
ent as well as use by a registered user on wares
not approved for use by the registered user.
On February 16, 1979 the applicant herein filed
an affidavit in support of its opposition and a
further affidavit on November 16, 1979.
On January 30, 1980 the second respondent
herein advised the Registrar that it would adduce
no evidence.
In July 1980 written arguments were filed by
the parties.
An oral hearing (concurrently with respect to
both applications) was held before the Chairman
of the Opposition Board on April 3, 1981.
At the end of the hearing of representations but
before a decision counsel for the second respondent
herein requested a two-week delay within which to
file amended applications upon receipt of instruc
tions from his client to that effect.
The amendment to be sought was a change in
the allegation in the applications to extend the
wares rather than being based on prior use some
time in January 1975 (which counsel doubted
would be established) to applications being based
on proposed use.
The Chairman granted that delay subject to the
caveat that if amended applications were filed
leave would be given to the applicant herein to
oppose their acceptance.
The chronology of the events to this time can be
summarized in tabular form.
Registration No. 183,067 (word mark) May 12, 1972
Registration No. 183,068 (design) May 12, 1972
A. Original Application to extend wares based on use
Date of first use At least as early as January 1975
Filing date November 28, 1975
Advertised November 16, 1977
Opposed April 10, 1978
Counter Statement June 21, 1978
Oral hearing April 3, 1981
Following upon the grant of the delay by the
Chairman at the conclusion of the oral hearing
following which a decision had not been given the
chronology continues.
On April 16, 1981 two amended applications
were received.
These applications were prepared on form 4 to
the Trade Marks Regulations being an "Applica-
tion for Registration of a Proposed Trade Mark".
On their face these applications do not purport to
be amendments to the existing applications but
they were construed and treated as such by the
Registrar.
On April 30, 1981 the applicant herein by letter
of that date opposed the acceptance of the revised
applications from the second respondent by the
Registrar on the grounds that:
(1) the Act did not permit the Registrar to
accept the amended applications,
(2) the applications were not truly amended
applications but new and different applications
and, this being so,
(3) the Registrar should proceed to his decision
in conclusion of the opposition proceeding as
originally framed.
Counsel for the second respondent stated that
reliance was not being placed on prior use but the
applications were amended to be based on pro
posed use rather than on prior use.
Counsel for the second respondent expressed a
willingness "that if the amended applications were
not accepted for advertisement", that a decision
should be made by the Registrar on the applica
tions as originally filed under subsection 37(8).
On August 21, 1981 by the Registrar's decision
expressed in that letter the Registrar accepted the
amendments sought by the second respondent as
not being contrary to the Trade Marks Regula
tions. He concluded that the change of the bases of
the applications from prior use to proposed use did
not constitute a change in the date of first use. On
the basis that the applications had been accepted
by him as amendments he then decided that the
amended applications should be readvertised.
By notice of appeal dated and filed October 21,
1981. this decision by the Registrar (through the
Chairman of the Opposition Board) was appealed.
In the style of cause the applicant herein was
named as the appellant and the second respondent
herein was therein named as the respondent.
The Registrar of Trade Marks was not named
as a party.
At the hearing of the appeal on March 17, 1982
counsel for the respondent, the second respondent
herein, objected to the appellant's status to bring
the appeal.
The bases of that objection were threefold and
quite simple. They were:
(1) The Registrar had not come to a decision on
the Opposition proceedings,
(2) The decision of the Registrar of August 21,
1981 accepting the amended application was a
matter between the second respondent in its
capacity as an applicant before the Registrar
and the Registrar, and
(3) If resort was to relief by the remedies pro
vided in section 18 of the Federal Court Act in
the nature of certiorari, prohibition and man-
damus which was part of the relief sought in the
notice of appeal then the proper parties would
be the applicant herein in the capacity of an
appellant and the Registrar of Trade Marks as
the respondent.
For the reasons for judgment expressed on April
16, 1982 the pronouncement of the same date was
that the preliminary objection taken by the
respondent named in the style of cause in the
notice of appeal to the appeal launched was well
founded and that the appellant was not entitled to
the relief thereby sought.
It was stated in the reasons that accepting the
premise that the amendments were merely that,
then the proceedings have not been concluded but
are concluded when a final decision has been
reached and no such final decision had been
reached and, even if the amendments were the
substitution of other applications, in either event
the remedy would be by the invocation of the
appropriate prerogative writs under section 18 of
the Federal Court Act and that the proper party to
such proceedings would be the Registrar.
The reasons for judgment while stating that the
objection to the notice of appeal was well founded
continued to state that this conclusion was not to
be construed in any way as an impediment to
further proceedings against the Registrar.
Following upon the facts as recited above this is
the application by notice of motion pursuant to
Rule 603(b) as the instrument and means of seek
ing that relief.
In my view the resolution of the present applica
tion falls to be determined upon the interpretation
of sections 35, 36 and 37 of the Trade Marks
Regulations made under the authority of section
65 of the Trade Marks Act.
The validity of the pertinent sections of the
Regulations was not disputed nor put in issue.
The sections of the Regulations read:
35. Except as provided in sections 36 and 37, an application
may be amended, either before or after advertisement.
36. An application for the registration of a trade mark may
not be amended at any time
(a) to change the identity of the applicant, except after
recognition of a transfer by the Registrar;
(b) to change the trade mark except in respects that do not
alter its distinctive character or affect its identity;
(e) to change a date of first use or making known in Canada
of the trade mark to an earlier date, except on evidence
satisfactory to the Registrar that the change is justified by
the facts;
(d) to change the application from one not alleging use or
making known the trade mark in Canada before the filing of
the application to one alleging such use or making known; or
(e) to extend the statement of wares or services.
37. An application for the registration of a trade mark may
not be amended after advertisement
(a) to change the trade mark; or
(b) to change a date of first use or making known in Canada
of the trade mark.
The sections are ranged under the heading
Amendment of Applications for Registration. By
virtue of subsection 40(2) of the Trade Marks Act
an application to extend the wares in respect of
which a trade mark is registered, as the present
applications are, is to be treated as an application
for registration of a trade mark in respect of the
wares specified in the application for amendment.
Thus the present applications fall within the
sections of the Regulations ranged under the head
ing since amendments are being sought to the
applications to extend the wares.
The question which arises is whether an amend
ment to change the applications from being based
upon prior use to applications based upon proposed
use is an amendment prohibited by section 36 at
any time or section 37 after advertisement.
If not then the amendment may be made either
before or after advertisement at the discretion of
the applicant for registration and there is no dis
cretion vested in the Registrar to refuse the
amendment.
The Regulations under the heading Opposition
are silent upon the matter of amendments to
applications during the currency of opposition pro
ceedings but the language of section 35 is suf
ficiently broad in its terms to cover that time.
Specific mention is made in section 42 of amend
ments permitted in the opposition proceedings
being limited to a statement of opposition or coun
ter statement and then only by leave of the Regis
trar upon terms that may be imposed.
The failure to make specific reference to an
amendment of an application of one based on prior
use to one based upon proposed use does not, in my
view, constitute a casus omissus.
If it be an obvious omission then the words of
the sections may be read to cover the omission but
a casus omissus can in no case be supplied by a
court of law for that would be to make laws.
The question here must, in my view, be deter
mined by the cardinal rules of legal interpretation
one of which a casus omissus should not be creat-
ed by interpretation save in the case of strong
necessity.
The contention on behalf of the applicant herein
is that, predicated upon paragraph 37(b) of the
Regulations, an amendment after advertisement of
an application alleging a date of prior use to one
based upon proposed use is of necessity a change in
the date of first use.
The sound rule of construction is to give the
same meaning to the same words occurring in
different sections of a statute or regulations made
thereunder.
The words used in paragraph 37(b) of the Regu
lations are "change a date of first use".
Those same words are used in paragraph 36(c).
Provision is thereby made that no amendment
may be made at any time:
... to change a date of first use ... of the trade mark to an
earlier date ...
By virtue of paragraph 36(d) no amendment
may be made at any time:
... to change the application from one not alleging use (which
must of necessity mean an application based on proposed use)
... the trade mark in Canada before the filing ... to one
alleging such use ... (that is to one alleging prior use).
Applying the contention on behalf of the appli
cant herein to the language of paragraph (d) that
the change of an application based on proposed use
to one based upon use would of necessity result in
a change in the date of first use to an earlier date.
In an application based on proposed use the use
would follow the filing of the application but in an
application based on prior use the trade mark has
been used prior to the application. That reasoning
is tantamount to saying that paragraph 36(d) by
changing proposed use to prior use is to the same
effect as changing the date of first use.
If that be so there would be no necessity for
paragraph 36(c) which precludes a change in the
date of first use because if that were so that
circumstance would be covered by paragraph
36(d).
Prima facie different language in different para
graphs in the same section must be interpreted as
indicating a different meaning and a different
subject matter.
Thus, in my view, paragraph 36(d) is limited to
a change in the application from one based on
proposed use to one of prior use.
Paragraph 36(c) is limited to a change in the
date of first use to an earlier date.
Thus paragraph 37(b) because of the use of the
same words therein as in paragraph 36(c), "to
change a date of first use", is likewise limited to
that subject matter and does not extend to an
amendment to change the applications originally
based on prior use to applications based on pro
posed use.
Such an amendment is not the subject of a
specific regulation prohibiting such a change.
That being so the amendment here in question
falls within the broad concept of section 35 and
may be made at any time either before or after
advertisement.
Thus it follows that the amendments presently
made are at the instigation of the applicant for
registration and there is no discretion in the Regis
trar to refuse them.
Accordingly the application for the relief sought
by the applicant herein is denied.
The circumstances are such that there shall be
no award of costs in favour of the Registrar or the
second respondent. Each of the parties shall bear
its own costs.
The applications herein have been treated by the
Registrar and the second respondent as amended
applications rather than as new applications and to
have done so corresponds with the actual fact
despite the inaccurate use of terminology in sever
al instances.
That being so the argument in the opposition
proceeding having been completed by the parties I
can see no impediment to the Registrar proceeding
to his ultimate decision without the necessity for
advertising the matter anew. To do so is inconsist
ent with the applications being merely amended
and more consistent with there being two new
applications which was not the case nor were they
treated by the Registrar as new applications.
It is my understanding that all relevant submis
sions have been made by the rival parties in the
opposition proceedings although the applicant
herein has been deprived of two of the four
grounds upon which the opposition was based and
but two remain.
ORDER
The application is dismissed. There shall be no
award of costs in favour of the Registrar of Trade
Marks or the second respondent. The parties shall
each bear their own costs.
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.