Princess Group Inc. et al. v. Canadian Standards Association, (2009) 359 F.T.R. 177 (FC)

• Judge: Harrington, J.
• Court: Federal Court (Canada)
• Case Date: September 14, 2009
• Jurisdiction: Canada (Federal)
• Citations: (2009), 359 F.T.R. 177 (FC);2009 FC 926

Princess Group v. Cdn. Standards Assoc. (2009), 359 F.T.R. 177 (FC)

MLB headnote and full text

Temp. Cite: [2009] F.T.R. TBEd. SE.029

Princess Group Inc. and Princess Auto Ltd. (applicants) v. Canadian Standards Association (respondent)

(T-887-09; 2009 FC 926)

Indexed As: Princess Group Inc. et al. v. Canadian Standards Association

Federal Court

Harrington, J.

September 17, 2009.

Summary:

In 1982, the Registrar of Trademarks gave public notice under s. 9(1)(N)(iii) of the Trade-marks Act of the adoption and use by the Canadian Standards Association (CSA) of the mark "CSA" as an official mark for services. On April 23, 2009, CSA filed an action against Princess Group Inc., seeking a declaration that Princess had used CSA's marks without its authority, license or permission and that various sections of the Trade-marks Act had been infringed. Princess filed a statement of defence, alleging that, inter alia, the official mark should not have been accepted and published and that the registered trademark was invalid. The invalidity of the registered trademark could be raised by way of defence, but there was uncertainty as to how to deal with an official mark. The prevalent view was that it was best quashed in a judicial review application. On June 1, 2009, 38 days after service of the statement of claim, Princess filed an application for judicial review of the Registrar's 1982 decision respecting CSA's official mark. Princess applied for an extension of time in which to apply for judicial review of the Registrar's 1982 decision.

A Prothonotary of the Federal Court, in a decision not reported in this series of reports, allowed the application. CSA appealed.

The Federal Court, exercising its discretion de novo, dismissed the appeal.

Administrative Law - Topic 3342.1

Judicial review - General - Practice - Limitation period - Extension of - In 1982, the Registrar of Trademarks gave public notice under s. 9(1)(N)(iii) of the Trade-marks Act of the adoption and use by the Canadian Standards Association (CSA) of the mark "CSA" as an official mark for services - In 2007, CSA learned of alleged infractions of its mark by Princess Group Inc. (Princess) and gave notice of its registered trademark and design, but not of its official mark - On April 23, 2009, CSA sued Princess, seeking declaratory relief - Princess filed a statement of defence, alleging that, inter alia, the official mark should not have been accepted and published and that the registered trademark was invalid - The registered trademark's invalidity could be raised by way of defence, but there was uncertainty as to how to deal with an official mark - The prevalent view was that it was best quashed in a judicial review application - Thirty-eight days after service of the statement of claim, Princess filed an application for judicial review of the Registrar's 1982 decision - Princess applied for an extension of time in which to apply for judicial review of the 1982 decision - CSA asserted that Princess had been on sufficient notice in 2007 to be "directly affected" by the Registrar's 1982 decision within the meaning of s. 18.1 of the Federal Court Act and that the 30 day limitation period under s. 18.1 commenced running at that time - The Federal Court rejected the argument - The 1982 decision was first communicated to Princess by CSA on April 23, 2009, and the 30 days did not begin to run until that time - If Princess was unable to challenge the official mark, that part of CSA's action was for all intents and purposes already decided and Princess would be unable to mount a full defence - Princess's explanation for the delay was reasonable - Attacking the publication of an official mark by way of judicial review was not an obvious way to proceed - The judicial review application was filed before CSA provided the requested particulars of its statement of claim - In those circumstances, Princess could be forgiven eight days, a delay which did not prejudice CSA - There was no forbearance as it could have sued at any time during the resolution discussions - Princess had shown a continued intention to defend itself - It was fair, right and proper that Princess be given a full opportunity to defend itself - It would be unjust not to allow an extension because it took Princess's solicitors 38 days, rather than 30 days, to pick up on an arcane procedural point.

Courts - Topic 2583

Registrars and prothonotaries - Appeals from - Scope of review (incl. standard of review) - A Prothonotary granted the applicant an extension of time in which to apply for judicial review of a decision of the Registrar of Trademarks - The respondent appealed - The Federal Court stated that such orders were only to be reviewed de novo if the questions raised in the motion were vital to the final issue in the case, or if the orders were clearly wrong in the sense that the exercise of discretion was based upon a wrong principle or upon a misapprehension of the facts - Had the Prothonotary not granted the extension, the application for judicial review would have come to an end - It was what she could have done on the pleadings, not what she did, which had to be taken into consideration in determining whether the issue was vital to the outcome of the case - Since she could have denied the extension, her decision was vital and the court was obliged to exercise its discretion de novo - See paragraphs 12 and 13.

Courts - Topic 4057

Federal Court of Canada - Jurisdiction - Federal Court - Judicial review of interlocutory decisions - [See Courts - Topic 2583 ].

Courts - Topic 4071.3

Federal Court of Canada - Jurisdiction - Federal Court - Practice - Judicial review applications - Time for - [See Administrative Law - Topic 3342.1 ].

Courts - Topic 4072

Federal Court of Canada - Jurisdiction - Federal Court - Practice - Limitation periods (incl. extension of) - [See Administrative Law - Topic 3342.1 ].

Trademarks, Names and Designs - Topic 4414

Trademarks - Practice - Appeals or judicial review - [See Administrative Law - Topic 3342.1 ].

Cases Noticed:

Magnotta Winery Corp. et al. v. Vintners Quality Alliance of Canada (1999), 163 F.T.R. 93; 1 C.P.R.(4th) 68 (T.D.), refd to. [para. 6].

Canada Post Corp. v. Post Office, [2001] 2 F.C. 63; 191 F.T.R. 300; 8 C.P.R.(4th) 289 (T.D.), refd to. [para. 6].

Tall Ships Art Productions Ltd. v. Bluenose II Preservation Trust Society et al., [2003] F.T.R. Uned. 932; 32 C.P.R.(4th) 262; 2003 FC 1442, refd to. [para. 6].

Canada Post Corp. v. United States Postal Service, [2006] 3 F.C.R. 28; 284 F.T.R. 221; 2005 FC 1630, refd to. [para. 6].

Canada (Attorney General) v. Hennelly (1999), 244 N.R. 399 (F.C.A.), refd to. [para. 10].

Merck & Co. et al. v. Apotex Inc., [2004] 2 F.C.R. 459; 315 N.R. 175; 30 C.P.R.(4th) 40; 2003 FCA 488, refd to. [para. 12].

Fieldturf Inc. v. Winnipeg Enterprises Corp. et al. (2007), 360 N.R. 355; 58 C.P.R.(4th) 15; 2007 FCA 95, refd to. [para. 13].

Grewal v. Minister of Employment and Immigration, [1985] 2 F.C. 263; 63 N.R. 106 (F.C.A.), refd to. [para. 20].

Statutes Noticed:

Federal Courts Act, R.S.C. 1985, c. F-7, sect. 18.1(1), sect. 18.1(2) [para. 8].

Counsel:

Joseph Etigson and Michael Carey, for the appellant/respondent;

Peter Wells, for the respondents/applicants.

Solicitors of Record:

MacDonald Sager Manis, LLP, Toronto, Ontario, for the appellant/respondent;

Lang Michener, LLP, Toronto, Ontario, for the respondents/applicants.

This appeal was heard at Toronto, Ontario, on September 14, 2009, by Harrington, J., of the Federal Court, who delivered the following reasons for order on September 17, 2009.