See You In - Canadian Athletes Fund Corp. v. Canadian Olympic Committee, 2007 FC 406

• Judge: Phelan, J.
• Court: Federal Court (Canada)
• Case Date: April 18, 2007
• Jurisdiction: Canada (Federal)
• Citations: 2007 FC 406;(2007), 311 F.T.R. 245 (FC)

Cdn. Athletes Fund v. Cdn. Olympic Com. (2007), 311 F.T.R. 245 (FC)

MLB headnote and full text

Temp. Cite: [2007] F.T.R. TBEd. AP.032

See You In - Canadian Athletes Fund Corporation (applicant) v. Canadian Olympic Committee (respondent)

(T-2016-04; 2007 FC 406)

Indexed As: See You In - Canadian Athletes Fund Corp. v. Canadian Olympic Committee

Federal Court

Phelan, J.

April 18, 2007.

Summary:

The See You In - Canadian Athletes Fund Corp. (Fund) had used and filed trademark applications for the words "See You In Torino", "See You In Beijing" and "See You In Vancouver". Ten months later, the Canadian Olympic Committee (COC) requested that public notice be given under s. 9 of the Trade-marks Act for the identical words. The Registrar of Trademarks published notice of the official trademarks. The COC filed substantive evidence that the COC was a public authority, but no substantive evidence of the adoption and use of the official marks. The public notice precluded the Fund from registering the previously adopted and used marks. The Fund sought judicial review of the Registrar's decision to publish notice of COC's official mark.

The Federal Court allowed the application, quashed the Registrar's decision to publish notice. The Registrar erred in finding adoption and use by the COC.

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Admissibility of fresh evidence - [See Trademarks, Names and Designs - Topic 4002 ].

Trademarks, Names and Designs - Topic 988

Trademarks - Registration - Appeals or judicial review - Scope of review of decision of registrar (incl. Opposition Board) - A trademark applicant sought judicial review of a Registrar's decision to publish notice under s. 9 of the Trade-marks Act - The Federal Court, in relation to the standard of review, stated that "the standard would normally be reasonableness except where additional evidence is admitted at the Federal Court, in which event, it is correctness" - See paragraph 15.

Trademarks, Names and Designs - Topic 4002

Trademarks - Prohibited marks - Marks adopted or used by public authority (official marks) - The See You In - Canadian Athletes Fund Corp. (Fund) had used and filed trademark applications for the words "See You In Torino", "See You In Beijing" and "See You In Vancouver" - Ten months later, the Canadian Olympic Committee (COC) requested that public notice be given under s. 9 of the Trade-marks Act for the identical words - The Registrar of Trademarks published notice of the official trademarks - The COC filed substantive evidence that the COC was a public authority, but only the unsworn statement of counsel that there had been adoption and use of the official marks - The public notice precluded the Fund from registering the previously adopted and used marks - The Fund sought judicial review of the Registrar's decision to publish notice of COC's official mark - The Federal Court quashed the Registrar's decision to publish notice - First, new evidence respecting public authority status and adoption and use could be adduced by the Fund on judicial review - The COC had to establish both adoption and use and that it was a public authority - Although the evidence supported the Registrar's finding that the COC was a public authority (significant degree of public control and COC existed for public benefit), there was no evidence upon which the Registrar could have been satisfied that the COC established adoption and use of the marks - Internal discussions, memoranda, etc., was insufficient to constitute adoption and use - Some public display was required - The Registrar's decision was neither correct nor reasonable - See paragraphs 11 to 66.

Cases Noticed:

Dion Neckwear Ltd. v. Christian Dior, S.A. et al., [2002] 3 F.C. 405; 286 N.R. 336 (F.C.A.), refd to. [para. 14].

Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 291 N.R. 61; 19 C.P.R.(4th) 417 (F.C.A.), refd to. [para. 20].

FileNET Corp. v. Registrar of Trademarks (2002), 297 N.R. 178; 22 C.P.R.(4th) 328 (F.C.A.), refd to. [para. 22].

Canadian Rehabilitation Council for the Disabled v. Rehabilitation Foundation for the Disabled (2004), 262 F.T.R. 104; 35 C.P.R.(4th) 370 (F.C.), refd to. [para. 23].

College of Chiropodists (Ont.) v. Canadian Podiatric Medical Association (2004), 266 F.T.R. 219; 37 C.P.R.(4th) 219 (F.C.), refd to. [para. 23].

Piscitelli v. Liquor Control Board (Ont.) et al., [2002] 1 F.C. 247; 209 F.T.R. 247 (T.D.), refd to. [para. 37].

Canadian Olympic Association v. Registrar of Trademarks (1982), 43 N.R. 52; 67 C.P.R.(2d) 59 (F.C.A.), refd to. [para. 52].

Canada Post Corp. v. Post Office (2001), 191 F.T.R. 300; 15 C.P.R.(4th) 267 (T.D.), refd to. [para. 58].

Canada Post Corp. v. United States Postal Service (2005), 284 F.T.R. 221 (F.C.), refd to. [para. 58].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 3, sect. 4 [para. 37]; sect. 9(1)((n)(iii) [para. 11, Appendix]; sect. 56(1) [para. 12].

Counsel:

Terrance J. McManus, for the applicant;

Kenneth McKay, for the respondent.

Solicitors of Record:

Milton, Geller LLP, Ottawa, Ontario, for the applicant;

Sim, Lowman, Ashton & McKay, Toronto, Ontario, for the respondent.

This application was heard on December 12-13, 2006, at Toronto, Ontario, before Phelan, J., of the Federal Court, who delivered the following judgment on April 18, 2007.