Prouvost S.A. v. Munsingwear Inc., (1992) 141 N.R. 241 (FCA)

• Judge: Pratte, MacGuigan and Décary, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: March 04, 1992
• Jurisdiction: Canada (Federal)
• Citations: (1992), 141 N.R. 241 (FCA)

Prouvost S.A. v. Munsingwear Inc. (1992), 141 N.R. 241 (FCA)

MLB headnote and full text

[French language version follows English language version]

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

....................

Munsingwear Inc. (appelante) v. Prouvost S.A. (intimée)

(A-421-91; A-422-91; A-423-91; A-424-91)

Indexed As: Prouvost S.A. v. Munsingwear Inc.

Federal Court of Appeal

Pratte, MacGuigan and Décary, JJ.A.

March 31, 1992.

Summary:

Prouvost applied to register various "Pingouin" marks nominally and graphically. Munsingwear objected. The Registrar of Trademarks, responding in part to the objec­tion, rejected Prouvost's applications in respect of certain wares. Prouvost filed notices of appeal and applied for an exten­sion of time to file additional evidence it intended to put before the court on appeal. The evidence, which consisted of affidavits, was not available at the time of the exten­sion application. The extension was granted by the Senior Prothonotary and the trial judge affirmed the order in decisions not reported in this series of reports. Munsing­wear appealed.

The Federal Court of Appeal allowed the appeal in part, allowing only one of the affidavits to be filed out of time.

Courts - Topic 2583

Registrars and prothonotaries - Appeals from - Scope of review - Prouvost applied for an extension of time to file additional evidence in a trademarks appeal - The Senior Prothonotary granted the extension - The Federal Court of Canada, Trial Division, refused to disturb the deci­sion where Prouvost failed to meet the burden of proving that the prothonotary exercised his discretion on a wrong princi­ple or on a misapprehension of the facts - The Federal Court of Appeal set aside the Trial Division's decision, stating that "a judge sitting in appeal from a discretionary decision made by a prothonotary is in no way bound by the latter's opinion and, on the contrary must exercise his own discre­tion himself" - See paragraphs 1 to 18.

Practice - Topic 3680

Evidence - Affidavits - Use of - Leave to offer affidavit evidence - Extension of time - [See Trademarks, Names and Designs 4407 ].

Trademarks, Names and Designs - Topic 4407

Trademarks - Practice - Evidence - Affi­davits - Prouvost's trademark application was rejected - Prouvost appealed and applied for an extension of time to file additional evidence it intended to present on appeal (Trade Marks Act, s. 56 and Federal Court Rule 704) - The additional evidence consisted of affidavits but Prou­vost was not in a position to file the affi­davits with its motion for an extension of time - The Federal Court of Appeal held that it was inappropriate to seek an exten­sion in advance of the availability of addi­tional affidavit evidence - The court set out the proper procedure to be followed in such situations - See paragraphs 19 to 26.

Cases Noticed:

Ship Jala Godavari et al. v. Canada et al. (1991), 135 N.R. 316 (F.C.A.), folld. [para. 17].

Maxim's Ltd. v. Maxim's Bakery Ltd. (1990), 37 F.T.R. 199; 32 C.P.R.(3d) 240 (F.C.T.D), refd to. [para. 19].

DRG Inc. v. Datafile Ltd. et al. (1987), 14 F.T.R. 219; 16 C.P.R.(3d) 155 (F.C. T.D.), refd to. [para. 19].

Andres Wines Ltd. v. Canadian Marketing International Ltd. (1986), 2 F.T.R. 292; 9 C.P.R.(3d) 540 (F.C.T.D.), refd to. [para. 20].

McDonald's Corp. v. Silcorp Ltd. (1987), 10 F.T.R. 118; 17 C.P.R.(3d) 478 (F.C. T.D.), refd to. [para. 23].

Indianapolis Colts Inc. v. Forzani's Locker Room Ltd. et al. (1987), 15 C.P.R.(3d) 283, refd to. [para. 23].

Laflamme Fourrures (Trois-Rivières) Inc. et al. v. Laflamme Fourrures Inc. (1986), 3 F.T.R. 48 (F.C.T.D.), refd to. [para. 24].

Fashion Accessories v. Segal's (Michael) Inc., [1972] F.C. 53 (F.C.T.D.), refd to. [para. 24].

Statutes Noticed:

Federal Court Rules, rule 3(1)(c) [para. 24]; rule 704(3) [para. 4]; rule 704(8) [para. 19 et seq.].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 56(1) [para. 3]; sect. 56(5) [para. 22].

Counsel:

Timothy J. Sinnott, for the appellant;

Jacques Léger and Brigitte Dufour, for the respondent.

Solicitors of Record:

Rogers, Bereskin & Parr, Toronto, Ontario, for the appellant;

Léger, Robic, Richard, Montreal, Quebec, for the respondent.

This appeal was heard in Montreal, Que­bec, on March 4, 1992, before Pratte, Mac­Guigan and Décary, JJ.A., of the Federal Court of Appeal. The following decision was delivered for the court by Décary, J.A., on March 31, 1992.