Maple Leaf Foods Inc. v. Consorzio Del Prosciutto Di Parma et al., (2009) 357 F.T.R. 293 (FC)

• Judge: Simpson, J.
• Court: Federal Court (Canada)
• Case Date: May 05, 2009
• Jurisdiction: Canada (Federal)
• Citations: (2009), 357 F.T.R. 293 (FC);2009 FC 1035

Maple Leaf Foods v. Consorzio Del Prosciutto (2009), 357 F.T.R. 293 (FC)

MLB headnote and full text

Temp. Cite: [2009] F.T.R. TBEd. DE.006

Maple Leaf Foods Inc. (applicant) v. Consorzio Del Prosciutto Di Parma and The Registrar of Trademarks (respondents)

(T-1057-08; 2009 FC 1035)

Indexed As: Maple Leaf Foods Inc. v. Consorzio Del Prosciutto Di Parma et al.

Federal Court

Simpson, J.

October 15, 2009.

Summary:

Maple Leaf Foods Inc. produced a variety of food products, including ham, and owned trademarks for those products, including "PARMA". In 1998, a public notice was given by the Registrar of Trademarks dealing with Consorzio Del Prosciutto Di Parma's adoption and use of the PARMA Ducal Crown Design mark as an official mark. Maple Leaf appealed the notice, asserting that Consorzio was not a public authority under the Trade-marks Act. O'Keefe, J., held that Maple Leaf did not have standing to appeal the notice. However, O'Keefe, J., did not foreclose the possibility of allowing Maple Leaf to apply for an extension of time to file a judicial review application or to make a motion to convert its appeal to an application for judicial review. Maple Leaf moved for an order granting it leave to convert its appeal into a judicial review and for an extension of time to file a Notice of Application. Maple Leaf also appealed O'Keefe, J.'s decision. Maple Leaf eventually discontinued its appeal. Its motion was never brought for a hearing. In 2008, Maple Leaf applied for judicial review of the Notice.

The Federal Court dismissed the application.

Administrative Law - Topic 24

General - Abuse of process - What constitutes - Maple Leaf Foods Inc. produced a variety of food products, including ham, and owned trademarks for those products, including "PARMA" - In 1998, a public notice was given by the Registrar of Trademarks dealing with Consorzio Del Prosciutto Di Parma's adoption and use of the PARMA Ducal Crown Design mark as an official mark - Maple Leaf appealed the notice, asserting that Consorzio was not a public authority under the Trade-marks Act - O'Keefe, J., held that Maple Leaf did not have standing to appeal the notice - However, O'Keefe, J., did not foreclose the possibility of allowing Maple Leaf to apply for an extension of time to file a judicial review application or to make a motion to convert its appeal to an application for judicial review - Maple Leaf moved for an order granting it leave to convert its appeal into a judicial review and for an extension of time to file a Notice of Application - Maple Leaf also appealed O'Keefe, J.'s decision - Maple Leaf eventually discontinued its appeal - Its motion was never brought for a hearing - In 2008, Maple Leaf applied for judicial review of the Notice - The Federal Court dismissed the application as being an abuse of process - The merits of Maple Leaf's claim that the notice was invalid because a public authority under the Act had to be Canadian, could have been decided but was not, because for reasons which had not been explained, Maple Leaf chose not to proceed with its Motion to Convert - In these circumstances, the application was an abuse of process - See paragraphs 26 to 30.

Administrative Law - Topic 3342

Judicial review - General - Practice - Limitation period - Maple Leaf Foods Inc. produced a variety of food products, including ham, and owned trademarks for those products, including "PARMA" - In 1998, a public notice was given by the Registrar of Trademarks dealing with Consorzio Del Prosciutto Di Parma's adoption and use of the PARMA Ducal Crown Design mark as an official mark - Maple Leaf appealed the notice, asserting that Consorzio was not a public authority under the Trade-marks Act - O'Keefe, J., held that Maple Leaf did not have standing to appeal the notice - However, O'Keefe, J., did not foreclose the possibility of allowing Maple Leaf to apply for an extension of time to file a judicial review application or to make a motion to convert its appeal to an application for judicial review - Maple Leaf moved for an order granting it leave to convert its appeal into a judicial review and for an extension of time to file a Notice of Application - Maple Leaf also appealed O'Keefe, J.'s decision - Maple Leaf eventually discontinued its appeal - Its motion was never brought for a hearing - In 2008, Maple Leaf applied for judicial review of the Notice - The Federal Court dismissed the application as being time barred - Under ss. 18.1(1) and 18.1(2) of the Federal Courts Act, Maple Leaf had 30 days from the giving of the Notice to seek judicial review - Failing that, it was obliged to seek an extension of time - It had not done so - See paragraphs 17 to 22.

Estoppel - Topic 377

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - When applicable - Maple Leaf Foods Inc. produced a variety of food products, including ham, and owned trademarks for those products, including "PARMA" - In 1998, a public notice was given by the Registrar of Trademarks dealing with Consorzio Del Prosciutto Di Parma's adoption and use of the PARMA Ducal Crown Design mark as an official mark - Maple Leaf appealed the notice, asserting that Consorzio was not a public authority under the Trade-marks Act - O'Keefe, J., held that Maple Leaf did not have standing to appeal the notice - However, O'Keefe, J., did not foreclose the possibility of allowing Maple Leaf to apply for an extension of time to file a judicial review application or to make a motion to convert its appeal to an application for judicial review - Maple Leaf moved for an order granting it leave to convert its appeal into a judicial review and for an extension of time to file a Notice of Application - Maple Leaf also appealed O'Keefe, J.'s decision - Maple Leaf eventually discontinued its appeal - Its motion was never brought for a hearing - In 2008, Maple Leaf applied for judicial review of the Notice - The respondents argued that Maple Leaf was barred from prosecuting this application by the doctrine of res judicata - The Federal Court held that res judicata did not apply - O'Keefe, J., had not issued a final decision on the merits - See paragraphs 23 to 25.

Estoppel - Topic 381.1

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - In intellectual property proceedings - [See Estoppel - Topic 377 ].

Estoppel - Topic 386

Estoppel by record (res judicata) - Res judicata as a bar to subsequent proceedings - Issues decided in prior proceedings (incl. validity of statutes) - [See Estoppel - Topic 377 ].

Trademarks, Names and Designs - Topic 4414

Trademarks - Practice - Appeals or judicial review - [See Administrative Law - Topic 24 , Administrative Law - Topic 3342 and Estoppel - Topic 377 ].

Cases Noticed:

Canada Post Corp. v. United States Postal Service (2005), 284 F.T.R. 221; 47 C.P.R.(4th) 117 (F.C.T.D.), affd. (2007), 358 N.R. 154; 54 C.P.R.(4th) 121 (F.C.A.), leave to appeal refused (2007), 374 N.R. 394 (S.C.C.), refd to. [para. 13].

Krause et al. v. Canada et al., [1999] 2 F.C. 476; 236 N.R. 317; 86 A.C.W.S.(3d) 4 (F.C.A.), dist. [para. 19].

Ontario Association of Architects v. Association of Architectural Technologists of Ontario, [2003] 1 F.C. 331; 291 N.R. 61; 2002 FCA 218, refd to. [para. 20].

Henderson v. Henderson (1843), 3 Hare 100; 67 E.R. 313, refd to. [para. 23].

NAV Canada v. International Brotherhood of Electrical Workers, Local 2228 (2001), 267 N.R. 125; 2001 FCA 30, refd to. [para. 24].

Sauve v. Canada, [2002] F.T.R. Uned. 497; 115 A.C.W.S.(3d) 205; 2002 FCT 721, refd to. [para. 26].

Toronto (City) v. Canadian Union of Public Employees, Local 79 et al., [2003] 3 S.C.R. 77; 311 N.R. 201; 179 O.A.C. 291, refd to. [para. 28].

Counsel:

James Buchan and Laurent Massam, for the applicant;

Brian D. Edmonds and Daniel G.C. Glover, for the respondent.

Solicitors of Record:

Gowling Lafleur Henderson, LLP, Toronto, Ontario, for the applicant;

McCarthy Tétrault, LLP, Toronto, Ontario, for the respondent.

This application was heard on May 5, 2009, at Toronto, Ontario, by Simpson, J., of the Federal Court, who delivered the following judgment on October 15, 2009.