Cable Control v. Electrical Safety, 2012 FC 1272

Judge:Campbell, J.
Court:Federal Court
Case Date:October 25, 2012
Jurisdiction:Canada (Federal)
Citations:2012 FC 1272;(2012), 420 F.T.R. 239 (FC)
 
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Cable Control v. Electrical Safety (2012), 420 F.T.R. 239 (FC)

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[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2012] F.T.R. TBEd. NO.030

Cable Control Systems Inc. (applicant) v. Electrical Safety Authority (respondent)

(T-1985-11; 2012 FC 1272; 2012 CF 1272)

Indexed As: Cable Control Systems Inc. v. Electrical Safety Authority

Federal Court

Campbell, J.

October 31, 2012.

Summary:

Electrical Safety Authority (ESA) applied for registration of the mark DIG SAFE (the official mark), on the basis of a single piece of documentary evidence of adoption and use. The Registrar granted the application. Cable Control Systems Inc., which had received the registration of the trademark DIG SAFE & Design, applied for judicial review of the Registrar's decision. Cable Control argued that the Registrar erred in deciding to give public notice because ESA did not meet the onus to establish that it had adopted and used the official mark in relation to its wares or services.

The Federal Court dismissed the application.

Trademarks, Names and Designs - Topic 4002

Trademarks - Prohibited marks - Marks adopted or used by public authority (official marks) - This application for judicial review concerned the quality of the evidence of use of a mark, required to be submitted to the Registrar of Trademarks in order for the Registrar to give public notice of an official mark pursuant to s. 9(1)(n)(iii) of the Trade-marks Act - Section 9(1)(n)(iii) prevented anyone from adopting as a trademark any mark likely to be mistaken for a mark adopted and used by a public authority in Canada as an official mark for wares or services - The respondent, a public authority, applied for registration of the mark DIG SAFE (the official mark), solely on the basis of its Spring 2010 Newsletter - The Registrar granted the application - The applicant had received the registration of the trademark DIG SAFE & Design - On judicial review, the applicant argued that the evidence before the Registrar, namely, the Newsletter, was the respondent's endorsement of the projects led by other organizations and did not constitute use of the official mark by the respondent - The Federal Court held that the greater context of the use of the official mark did not make the Registrar's decision unreasonable - "[T]he Registrar was not required to inquire into other parties' registrations or uses of the same mark because any such use would have been irrelevant to the decision to give public notice of the Official Mark. All that [the respondent] was required to do was satisfy the Registrar that it was a public authority and that it had adopted and used the mark in question" - See paragraph 18.

Cases Noticed:

FileNet Corp. v. Registrar of Trademarks et al., [2002] 1 F.C. 266; 209 F.T.R. 195 (T.D.), refd to. [para. 6].

Canadian Jewish Congress v. Chosen People Ministries Inc. et al., [2003] 1 F.C. 29; 219 F.T.R. 122 (T.D.), refd to. [para. 7].

See You In - Canadian Athletes Fund Corp. v. Canadian Olympic Committee (2007), 311 F.T.R. 245; 57 C.P.R.(4th) 287; 2007 FC 406, refd to. [para. 7].

Canadian Rehabilitation Council for the Disabled v. Rehabilitation Foundation for the Disabled (2004), 262 F.T.R. 104; 35 C.P.R.(4th) 260 (F.C.), refd to. [para. 7].

FileNET Corp. v. Registrar of Trademarks, [2002] F.C.A. 418; 297 N.R. 178, refd to. [para. 12].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 3 [para. 12]; sect. 4 [para. 13]; sect. 9(1)(n)(iii) [para. 6].

Counsel:

Nancy A. Miller, for the applicant;

May M. Cheng and Mimi R. Palmer, for the respondent.

Solicitors of Record:

Fogler, Rubinoff LLP, Toronto, Ontario, for the applicant;

Fasken Martineau DuMoulin LLP, Toronto, Ontario, for the respondent.

This application for judicial review was heard at Toronto, Ontario, on October 25, 2012, before Campbell, J., of the Federal Court, who delivered the following order and reasons for order, October 31, 2012.

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