Ministry of Commerce and Industry of the Republic of Cyprus v. Producteurs Laitiers du Canada et al., 2010 FC 719

• Judge: de Montigny, J.
• Court: Federal Court (Canada)
• Case Date: April 19, 2010
• Jurisdiction: Canada (Federal)
• Citations: 2010 FC 719;(2010), 393 F.T.R. 1 (FC)

Ministry of Commerce v. Producteurs Laitiers (2010), 393 F.T.R. 1 (FC)

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[French language version follows English language version]

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Temp. Cite: [2010] F.T.R. TBEd. JL.009

The Ministry of Commerce and Industry of the Republic of Cyprus (demanderesse) v. Les Producteurs Laitiers du Canada, Agropur Coopérative Agro-Alimentaire et International Cheese Council of Canada (défenderesses)

(T-1203-08; T-1204-08; T-1205-08; 2010 CF 719; 2010 FC 719)

Indexed As: Ministry of Commerce and Industry of the Republic of Cyprus v. Producteurs Laitiers du Canada et al.

Federal Court

de Montigny, J.

June 30, 2010.

Summary:

The Ministry of Commerce and Industry of the Republic of Cyprus (the applicant) applied for registration of the certification mark HALLOUMI cheese. The Registrar of Trademarks allowed the oppositions of the respondents (les Producteurs Laitiers du Canada, Agropur Coopérative Agro-Alimentaire, and the International Cheese Council of Canada) and dismissed the applicant's application. The applicant appealed from the Registrar's decisions.

The Federal Court allowed the applicant's appeals in the les Producteurs Laitiers docket (T-1203-08) and the Agropur docket (T-1204-08). The court dismissed the applicant's appeal in the Cheese Council docket (T-1205-08). Since one ground of opposition was sufficient to have the applicant's application for registration dismissed, the application for registration could not be reinstated.

Trademarks, Names and Designs - Topic 252

Trademarks - What trademarks registrable - Certification mark - The applicant applied for registration of the certification mark HALLOUMI cheese (the mark) - The Registrar of Trademarks allowed the oppositions of the respondents and dismissed the applicant's application - The Registrar accepted that pursuant to ss. 38(2)(b), 12(1)(e) and 10 of the Trade-marks Act, the adoption of HALLOUMI as a trademark was prohibited because HALLOUMI had by ordinary and bona fide commercial usage become recognized in Canada as designating a kind or quality of cheese - The Registrar concluded that the evidence filed by the respondent International Cheese Council of Canada established that the mark had become recognized in Canada by ordinary and bona fide commercial usage as designating a type of cheese - The applicant appealed, arguing that the Cheese Council had not met its initial evidentiary burden before the Registrar - The Federal Court held that the Registrar correctly identified the respondent's burden of proof and the facts before him supported his finding that, at the date he issued his decision, the mark had become recognized in Canada as designating a type of cheese - The court stated that "the Registrar's decision was reasonable in light of the evidence before him. The Cheese Council discharged its initial burden, which consisted of establishing that the term 'halloumi' or terms so nearly resembling it as to be likely to be mistaken therefor, was used extensively in Canada by others to designate a type of cheese. On the basis of that evidence, it was open to the Registrar to find that the term 'halloumi' could not be used exclusively by one person or entity" - See paragraphs 51 to 57.

Trademarks, Names and Designs - Topic 707

Trademarks - Registration - General - Conditions precedent - Requirement of use - The Ministry of Commerce and Industry of the Republic of Cyprus (the applicant) applied for registration of the certification mark HALLOUMI cheese (the mark) - The Registrar of Trademarks found that the application did not comply with the requirements of s. 30 and s. 38(2)(a) of the Trade-marks Act - The Registrar concluded that it was the Ministry of Health in collaboration with the Department of Veterinary Services of the Ministry of Agriculture, Natural Resources and the Environment, that issued licences authorizing the use of the mark in association with the wares - Accordingly, any use of the mark in Canada could not be deemed to be use by the applicant under s. 23(2) of the Act because the evidence established that the users of the mark did not obtain their right to use the mark from the applicant but from another governmental body - The applicant appealed - The Federal Court held that additional evidence filed by the applicant on appeal showed that the laws of the Republic of Cyprus designated the applicant as the ministry responsible for monitoring the use of the certification mark Halloumi in association with cheese - However, the applicant delegated the responsibility for monitoring compliance with the manufacturing standards for Halloumi cheese to the Ministry of Health and the Department of Veterinary Services - Those entities were not legally distinct from the applicant but were all part of the Government of the Republic of Cyprus - The additional evidence justified allowing the applicant's appeal with regard to the ground of opposition based on s. 30 of the Act - The evidence was also sufficient to overturn the Registrar's finding on the distinctiveness of the mark (ss. 38(2)(d) and 2 of the Act) since that finding was based on the same lack of evidence about the authority monitoring the use of the mark - See paragraphs 43 to 46.

Trademarks, Names and Designs - Topic 712

Trademarks - Registration - General - Opposition - General - The applicant applied for registration of the certification mark HALLOUMI cheese - The Registrar of Trademarks allowed the oppositions of the respondents (les Producteurs Laitiers du Canada, Agropur Coopérative Agro-Alimentaire, and the International Cheese Council of Canada) and dismissed the applicant's application - The applicant appealed - The applicant submitted that the Registrar erred by accepting the arguments presented orally by the les Producteurs Laitiers and the Cheese Council and thus maintaining the ground of opposition based on s. 38(2)(a) and s. 30 of the Trade-marks Act in Agropur's opposition even though Agropur chose not be represented at the hearing - The applicant contended that the arguments presented by the two other parties were not before the Registrar in Agropur's opposition record and the Registrar could not consider them in making his decision - The Federal Court rejected the argument - The Registrar's decision did not rely on the evidence submitted by any of the opponents but on testimony provided by the applicant itself - See paragraphs 31 to 34.

Trademarks, Names and Designs - Topic 714

Trademarks - Registration - General - Opposition - Evidentiary burden on opponent - [See Trademarks, Names and Designs - Topic 252 ].

Trademarks, Names and Designs - Topic 715

Trademarks - Registration - General - Opposition - Grounds - The Ministry of Commerce and Industry of the Republic of Cyprus (the applicant) applied for registration of the certification mark HALLOUMI cheese - The Registrar of Trademarks allowed the oppositions of the respondents and dismissed the application - The applicant appealed - The applicant argued that the Registrar erred by considering the oral representations by two of the respondents that were to the same effect as an amendment they had tried unsuccessfully to make to their ground of opposition based on s. 2 and s. 38(2)(d) of the Trade-marks Act - The applicant submitted that if the amendment that the Registrar dismissed and the oral representations to the same effect were ignored, the grounds of opposition relied on by the respondents were not set out in sufficient detail to enable the applicant to respond - The applicant submitted that by not referring to s. 23(2) of the Act or to the mark's lack of distinctiveness based on the fact that the licences had been granted by a ministry other than the applicant, it was taken by surprise - The Federal Court stated that "the applicant cannot contend that the respondents' arguments took it by surprise. The issue of whether it had the legal authority to issue licences to use the Mark was inherent in its application for registration and in the concept of a certification mark. It was therefore not necessary to specifically mention in the grounds of opposition that the Applicant did not have the authority to issue licences to use the Mark. By maintaining that the Applicant's application for registration did not comply with section 30 of the Act because the Mark was not used as stated in the application for registration and that it was not used as a certification mark, it appears to me that the respondents complied with subsection 38(3)(a) of the Act and provided sufficient details to the Applicant to enable it to reply to this ground of opposition" - See paragraphs 35 to 42.

Trademarks, Names and Designs - Topic 981

Trademarks - Registration - Appeals or judicial review - General - The Registrar of Trademarks dismissed the applicant's application for registration of the certification mark HALLOUMI cheese (the mark) - The applicant appealed - The applicant argued that the Registrar erred by ruling that the relevant date for purposes of determining whether the mark could be registered under ss. 38(2)(b) and 12(1)(e) and s. 10 of the Trade-marks Act was the date of the Registrar's decision - While acknowledging that it had pleaded that date in its written representations before the Registrar, the applicant noted that a decision of the Federal Court issued the day after the hearing before the Registrar called into question the choice of that date - The Federal Court rejected the arguments - The applicant did not mention this ground in its notice of appeal - An applicant was precluded from making an argument that had not been pleaded in the notice of application - In any event, the applicant's argument could not succeed even if the court agreed to consider it - See paragraphs 47 to 50.

Trademarks, Names and Designs - Topic 1719

Trademarks - Licensing - Effect of use of trademark by licensee - [See Trademarks, Names and Designs - Topic 707 ].

Trademarks, Names and Designs - Topic 4414

Trademarks - Practice - Appeals or judicial review - [See Trademarks, Names and Designs - Topic 981 ].

Cases Noticed:

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91 (F.C.A.), refd to. [para. 28].

Telus Corp. et al. v. Orange Personal Communications Services Ltd. (2005), 273 F.T.R. 228; 2005 FC 590, affd. (2006), 346 N.R. 81; 2006 FCA 6, refd to. [para. 29].

Bab Holdings Inc. v. Big Apple Ltd. (2002), 216 F.T.R. 163; 16 C.P.R.(4th) 427; 2002 FCT 72, refd to. [para. 29].

AstraZeneca AB et al. v. Apotex Inc. et al. (2006), 285 F.T.R. 258; 2006 FC 7, refd to. [para. 48].

Canadian Olympic Association v. Olympus Optical Co. (1991), 136 N.R. 231; 38 C.P.R.(3d) 1 (F.C.A.), refd to. [para. 49].

Scotch Whisky Association v. Glenora Distillers International Ltd. (2008), 327 F.T.R. 32; 2008 FC 425, refd to. [para. 49].

Institut National des Appellations D'Origine v. Vincor (Québec) Inc. (2003), 32 C.P.R.(4th) 279 (T.M.O.B.), refd to. [para. 53].

Sealy Canada Ltd. v. Simmons I.P. Inc. (2005), 47 C.P.R.(4th) 296 (T.M.O.B.), refd to. [para. 54].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 57].

Canada (Attorney General) v. Rogerville (2001), 270 N.R. 260; 2001 FCA 142, refd to. [para. 59].

Rogerville v. Public Service Commission Appeal Board (Can.) - see Canada (Attorney General) v. Rogerville.

GKO Engineering v. Canada (2001), 268 N.R. 383; 2001 FCA 73, refd to. [para. 59].

Canada (Attorney General) v. Pépin (2006), 298 F.T.R. 46; 2006 FC 950, refd to. [para. 59].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 10, sect. 12(1)(e), sect. 30, sect. 38(2)(a), sect. 38(2)(b) [para. 27].

Counsel:

François Guay, for the applicant;

François Grenier and Catherine Daigle, for the respondents, Les Producteurs Laitiers du Canada and International Cheese Council of Canada.

Solicitors of Record:

Smart & Biggar, Montreal, Quebec, for the applicant;

Léger Robic Richard, LLP, Montreal, Quebec, for the respondents, Les Producteurs Laitiers du Canada and International Cheese Council of Canada;

Greg Moore, Goudreau Gage Dubuc, LLP, Montreal, Quebec, for the respondent, Agropur Cooperative Agro-Alimentaire.

These appeals were heard on April 19, 2010, at Montreal, Quebec, before de Montigny, J., of the Federal Court, who delivered the following decision on June 30, 2010.