A-1268-84
Lubrication Engineers, Inc. (Appellant)
(Respondent)
v.
Canadian Council of Professional Engineers
(Respondent) (Appellant)
INDEXED AS: CANADIAN COUNCIL OF PROFESSIONAL ENGI
NEERS V. LUBRICATION ENGINEERS, INC. (CA.)
Court of Appeal, Urie JA.—Ottawa, May 8 and
16, 1990.
Practice — Pleadings — Amendments — Application by
respondent for leave to adduce additional evidence and to
amend statement of opposition upon appeal from trial judg
ment holding appellant's trade mark "Lubrication Engineers"
not registrable — Seeking to adduce evidence of Trade-marks
Act, s. 9 notices published /0 years after statement of opposi
tion and 5 years after trial judgment — Also seeking to amend
statement of opposition to include s. 9 bar to registration
under s. 12 — Application dismissed — Principles governing
amendment of pleadings upon appeal reviewed — No explana
tion for lengthy delay between application for registration and
publication of s. 9 notices — Not showing new evidence could
not have been known or obtainable by reasonable diligence
before end of trial — R. /102 discretion to receive further
evidence exercised to cause least injustice — Respondent's own
dilatoriness cause of extra expense if new litigation — Appel
lant able to respond to s. 9 submissions in new litigation — No
factual foundation for amendment of statement of opposition.
Trade marks — Registration — Trial judgment holding
"Lubrication Engineers" not registrable — Application, upon
appeal, to adduce evidence of s. 9 notices post-dating state
ment of opposition and trial judgment — Application dis
missed — No explanation for /0-year delay between statement
of opposition and publication of notices — If new litigation
necessitated, caused by respondent's delay, and would permit
appellant to respond to s. 9 submissions — No factual foun
dation for amendment of statement of opposition.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Federal Court Rules, C.R.C., c. 663, RR. 1102, 1104.
Trade Marks Act, R.S.C. 1970, c. T-10. ss. 12(1)(b).
Trademarks Act, R.S.C., 1985, c. T-13, ss. 9(I)(n)(iii),
12(1)(e), 18(1)(a).
CASES JUDICIALLY CONSIDERED
CONSIDERED:
The SS "Tordenskjold" v. The SS Euphemia (1908), 41
S.C.R. 154; 6 E.L.R. 90; C.N.R. v. Muller, [1934] 1
D.L.R. 768; (1933), 41 C.R.C. 329 (S.C.C.); Kingsdale
Securities Co. Ltd. v. M.N.R., [1974] 2 F.C. 760; [1973]
CTC 230; 73 DTC 5194 (C.A.); Lamb v. Kincaid (1907),
38 S.C.R. 516; 27 C.L.T. 489; Canadian Olympic Assn.
v. Allied Corp., [1990] 1 F.C. 769 (C.A.).
REFERRED TO:
Mercer et al. v. Sijan et al. (1976), 14 O.R. (2d) 12; 72
D.L.R. (3d) 464; 1 C.P.C. 281 (C.A.); Canadian Council
of Professional Engineers v. Lubrication Engineers Inc.,
[1985] 1 F.C. 530; (1984), 1 C.P.R. (3d) 309 (T.D.).
COUNSEL:
Michael D. Manson for appellant (respond-
ent).
Elizabeth G. Elliot for respondent (appel-
lant).
SOLICITORS:
Smart & Biggar, Ottawa, for appellant
(respondent).
Macera & Jarzyna, Ottawa, for respondent
(appellant).
The following are the reasons for order ren
dered in English by
URIE J.A.: The respondent brings this applica
tion for (a) an order pursuant to Rule 1102 [Fed-
eral Court Rules, C.R.C., c. 663] permitting it to
adduce additional evidence in the appeal, and (b)
an order pursuant to Rule 1104 permitting it to
amend its statement of opposition to include a
further ground of opposition to the registration of
the appellant's trade mark "Lubrication Engi
neers".
Very briefly, the undisputed facts are these:
On January 10, 1977, the appellant filed an
application to register the trade mark "Lubrica-
tion Engineers" for wares defined as:
"thickened greases, graphited roller lubricants, gear lubricants,
wheel bearing lubricants, fibrous-type lubricants, motor oil,
diesel oil, winterized oil, cotton picker oil and steam cylinder
oil,"
based upon use of the mark in Canada since
November 8, 1965 and on use and registration of
the mark in the U.S.
The respondent opposed the application on four
grounds. The appellant filed a counter-statement.
The Registrar of Trade Marks rejected each of the
grounds of opposition.
The respondent appealed the decision of the
Registrar to the Trial Division and a decision
therefrom was returned on October 12, 1984
[[1985] 1 F.C. 530; (1984) 1 C.P.R. (3d) 309
(T.D.)]. The Trial Division held that the proposed
trade mark was clearly a descriptive or deceptively
misdescriptive of the character or quality of the
wares of the respondent and thus was contrary to
paragraph 12(1)(b) of the Trade Marks Act
[R.S.C. 1970, c. T-10] (the "Act"). The present
appeal is from that decision.
On June 21, 1989, the Registrar gave public
notice pursuant to subparagraph 9(1)(n)(iii) of the
Act [R.S.C., 1985, c. T-13] of the adoption and
use by the respondent of the following marks:
i) Engineer
ii) Ingenieur
iii) Ing.
iv) Ingenierie
NO Engineering
vi) Consulting Engineer
vii) Ingenieur Conseil
viii) Professional Engineer
ix) P. Eng.
It is the contention of the respondent that the
section 9 notices constitute a bar to the registra
tion of, inter allia, the trade mark "Engineer". As
a result, it is argued, the notices should also oper
ate as a bar to the registration of the mark
"Lubrication Engineers". Alternatively, the
respondent submitted that the existence of the
section 9 notices is pertinent to the determination
of the issue before the Court as to the registrability
of the trade mark "Lubrication Engineers" for
association with lubricants.
Subparagraph 9(1)(n)(iii) of the Act reads as
follows:
9. (1) No person shall adopt in connection with a business,
as a trade-mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for,
(n) any badge, crest, emblem or mark
(iii) adopted and used by any public authority, in Canada
as an official mark for wares or services,
in respect of which the Registrar has, at the request of Her
Majesty or of the university or public authority, as the case
may be, given public notice of its adoption and use.
Paragraph 12(1)(e) provides that:
12. (1) Subject to section 13, a trade-mark is registrable if it
is not
(e) a mark of which the adoption is prohibited by section 9
or 10.
Neither in its statement of opposition or in its
amended statement of opposition, did the respond
ent oppose the registration of the appellant's mark
on the basis of section 9 of the Act. It now seeks
leave to further amend its statement of opposition
to include the ground of opposition to the registra
tion of "Lubrication Engineers" as a trade mark
based on the bar to such registration provided by
subparagraph 9(1)(n)(iii) and paragraph 12(1)(e)
of the Act. In support thereof it also seeks leave to
adduce as evidence before the Court, the certified
copies of the section 9 notices listed above.
The principles applicable to the amendment of
pleadings at the appeal stage of litigation are well
known and were aptly summarized by Duff J. (as
he then was), in The SS "Tordenskjold" v. The
SS "Euphemia" (1908), 41 S.C.R. 154, at pages
163-164 where he said:
The principle upon which a Court of Appeal ought to act
when a view of the facts of a case is presented before it which
has not been suggested before, is stated by Lord Herschell in
The "Tasmania" (1), at p. 225, thus:
My Lords, I think that a point such as this, not taken at
the trial, and presented for the first time in the Court of
Appeal, ought to be most jealously scrutinized. The conduct
of a cause at the trial is governed by, and the questions asked
of the witnesses are directed to, the points then suggested.
And it is obvious that no care is exercised in the elucidation
of facts not material to them.
It appears to me that under these circumstances a court of
appeal ought only to decide in favour of an appellant on a
ground there put forward for the first time, if it be satisfied
beyond doubt, first, that it has before it all the facts bearing
upon the new contention, as completely as would have been
the case if the controversy had arisen at the trial; and next,
that no satisfactory explanation could have been offered by
those whose conduct is impugned if an opportunity for
explanation had been afforded them when in the witness box.
Chief Justice Duff again considered an applica
tion for leave to amend pleadings after trial in
C.N.R. v. Muller, [ 1934] 1 D.L.R. 768 (S.C.C.),
at page 777 as follows:
As a general rule a necessary amendment ought to be
allowed provided the party applying for it is acting bona fide
and that it will not prejudice the opposite party in a way that
cannot be compensated for in costs. The amendment may be
allowed at any stage but different considerations apply to
different stages. Here the application is for an amendment of
the company's own pleading, the necessity for which was
apparent long before trial, if the company desired to use the
evidence but no application therefor was made until the day
following that on which the respondent closed his evidence.
When it was made no affidavit was filed explaining the delay.
Under these circumstances I agree with the Court below in
thinking that the discretion of the trial Judge was rightly
exercised.
This Court had occasion to consider the
advancement of a submission during argument
following the trial, which had not been pleaded nor
had any evidence been adduced in support thereof
during the trial, in Kingsdale Securities Co. Ltd. v.
M.N.R., [1974] 2 F.C. 760 (C.A.). The passage
from the "Tasmania" case referred to by Duff J.
in Tordenskjold was relied on by the Court, as
well as the judgment of the Supreme Court of
Canada in Lamb v. Kincaid (1907), 38 S.C.R.
516, at page 539. At page 773 of my reasons for
judgment, concurred in by Ryan J., I had this to
say:
There are many other authorities to the same effect but
unlike those cases in which the new ground was first raised on
appeal, the alternative position was in this case raised during
argument before the learned Trial Judge. However, at that
time the cases for both parties had been closed, so that no
further evidence could have been adduced by the defendant at
that stage to rebut the argument and the same principles
should, therefore, apply. Presumably, the defendant had led
evidence which was material in defending the case pleaded
against him. Neither this Court nor the Trial Judge ought to be
put in a position of deciding whether or not all possible
evidence had been adduced to counter any argument made by
the other party unless it is satisfied beyond all reasonable doubt
that all requisite evidence had been adduced to enable the
defendant to rebut the plaintiff's new position.
It is, of course, counsel for the appellant's con
tention that permitting the proposed amendment
at this late stage of the proceedings would preju
dice the appellant since, if it had been pleaded by
the respondent in its revised notice of opposition,
counsel would have countered the allegation by
leading evidence to show that:
(a) the alleged official marks were not used or adopted by the
respondent; _
(b) the respondent has no status as a public authority; and
(c) the appellant's trade mark "Lubricating Engineers" is not
consisting of or so nearly resembling the respondent's alleged
official mark that such registration should be prohibited.
I do not propose to consider on this motion
whether or not (a) and (b) have merit since doing
so would require consideration of the contention
that once issued it is not proper for the Court to go
behind the-section 9 notice to establish its validity.
It is unnecessary for me to decide that submission
in order to dispose of this motion because submis
sion (c) is not affected by such an argument. I am
of the opinion that had it been pleaded the appel
lant would have been entitled to lead evidence
before the Registrar, if such were available, neces
sary or possible, to support its contention. That, of
course, is not possible now.
I am further of the view that the issue of
amendment of the statement of opposition ought
not to be decided before consideration of the com
panion application seeking leave to adduce as addi
tional evidence in the appeal, certified copies of
notices published in the Trademarks Journal pur
suant to section 9 of the Act. It should, perhaps, be
observed at this point that the respondent did not
make this application until February 20, 1990,
following the issuance of the judgment of this
Court in Canadian Olympic Assn. v. Allied Corp.,
[ 1990] 1 F.C. 769, in which it was held at pages
774 and 775 of the Court's reasons, in respect of
the giving of public notice pursuant to section 9 of
the Act that:
Section 9 of the Act as a whole deals with adoption, and the
prohibition against adoption is in the future tense ("No person
shall adopt"). Subparagraph 9(1)(n)(iii) therefore forbids the
adoption of a trade mark "so nearly resembling as to be likely
to be mistaken for" a mark adopted by a public authority in
respect of which the Registrar "has ... given" (past tense)
public notice. Consequently, it does not retroactively prohibit
the adoption of marks. It is only prospective in operation.
Section 12 of the Act, dealing with registration, speaks in the
present tense ("a mark of which the adoption is prohibited by
section 9"). It therefore renders unregistrable a not yet regis
tered mark the adoption of which would now run afoul of
section 9, even if that mark had been adopted and used prior to
the giving of public notice under section 9.
In sum, the formulas of the adoption and registration provi
sions are not parallel. Whatever rights to the use of a mark may
flow from its adoption are undisturbed by the subsequent
adoption and use of a confusingly similar official mark; the
right to register the mark is, however, prohibited from the time
of the giving of the public notice.
On the basis of the foregoing, the respondent
takes the position that since the notices have been
published and since the appellant's trade mark has
not yet been registered, there is a complete bar to
its registration, a fact which will be conclusive in
the disposition of the appeal. That being so, it was
said, it is in the interests of obviating future litiga
tion and the unnecessary costs involved therein
that the motion to admit in evidence the section 9
notices should be granted. The further litigation
envisaged by the respondent would be based on
paragraph 18(1)(a) of the Act which provides that
"the registration of a trade-mark is invalid if the
trade mark was not registrable at the date of
registration."
There is no question that if the submissions of
the respondent that the appellant's trade mark so
nearly resembles the respondent's official mark
that its registration will be prohibited is correct,
the section 9 notices will be conclusive and the
appellant's appeal will fail. However, it is certainly
not without doubt that this contention would pre
vail. Nor is there any question that the evidence
proposed to be adduced is credible. Those two
questions provide two prongs of the three-part test
as to the admission of new evidence at this stage of
a proceeding. (See: Mercer et al. v. Sijan et al.
(1976), 14 O.R. (2d) 12 (C.A.), at page 17.)
The third prong, viz., that the new evidence
could not have been known or obtainable by
reasonable diligence before the end of the trial is
much less clear. The appellant's date of first use of
the trade mark in Canada was November 8, 1965.
The appellant's application for registration thereof
was January 10, 1977 and it was revised on
December 12, 1978. The respondent's amended
statement of opposition, adding new grounds of
opposition to that contained in its original state
ment was February 7, 1979. The section 9 applica
tions by the respondent for publication of the
official notices were not made until ten years later
in 1989 and the notices were published on June 21,
of that year. Counsel for the respondent on the
hearing of the motion was unable to give any
acceptable explanation for her client's delay in
applying for public notice of its trade marks and
no evidence is on the record to explain it. Bearing
in mind all of the above, it cannot be said that the
respondent has satisfied the third prong of the test
earlier referred to.
Having said all that, I must bear in mind that
Rule 1102 clothes the Court with a discretion, on
special grounds to receive in evidence further evi
dence on any question of fact. I must also be
mindful that such a discretion must be exercised
having regard to the principles that the courts have
developed as earlier referred to, and, as well, that
whatever the decision, there be the least injustice
to the parties. I am of the opinion that to refuse
the application to adduce the additional evidence
would create the least injustice.
The long delays in making the request to publish
the official notices and even after the publication
to bring this application, are inexplicable and
wholly of the respondent's own doing. If, as a
result of this refusal, it is required to engage in
further litigation, the expense that it incurs will
flow directly from its own dilatoriness.
On the other hand, the appellant has by that
dilatoriness been deprived of its ability to adduce
evidence in support of its position that the section
9 notices are not a bar to the registration of its
mark. If the respondent decides to seek to advance
its argument in support of its section 9 submissions
in new litigation, as its counsel has indicated she
will, the appellant will have an adequate opportu
nity to respond to it and contest it in any way it
deems advisable and is permitted by the Court.
That, of course, may never be necessary if the
appellant fails on its appeal on the record as it
stands since the respondent having succeeded in
upholding the Trial Division judgment will not be
required to resort to its section 9 contentions.
If I dismiss the application to receive additional
evidence on the appeal, as I intend to do, the
proposed amendment to the statement of opposi
tion would not have the factual foundation neces
sary for it to succeed so that it, too, will be
dismissed.
The application is, accordingly, dismissed with
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.