Date: 20160711

Docket: T-1683-15

Citation: 2016 FC 790

Ottawa, Ontario, July 11, 2016

PRESENT:    The Honourable Mr. Justice Russell

JUDGMENT AND REASONS

I.                   INTRODUCTION

[1]               This is an application pursuant to s 18.1 of the Federal Courts Act, RSC 1985, c F-7 [Federal Courts Act] of a decision of the Registrar of Trade-marks to give public notice of the adoption and use of NOWTV as an official mark by Trinity Television Inc [Respondent], which was communicated through publication in Volume 48, No. 2434 of the Trade-marks Journal on June 20, 2001.

II.                BACKGROUND

[2]               The Applicant, Starbucks (HK) Limited, is a company based in Hong Kong.

[3]               The Respondent is (or was) a non-share corporation incorporated in Manitoba and based in Winnipeg, Manitoba. It is (or was) a registered charity and its letters patent indicate that one of its corporate objectives is (or was) producing and distributing television programs that convey Christian teachings.

[4]               The Respondent is also the holder of NOWTV, an official mark. On April 10, 2001, the Respondent filed a request pursuant to s 9(1)(n)(iii) of the Trade-Marks Act, RSC 1985, c T-13 [Trade-Marks Act], to give public notice of its claimed adoption and use of NOWTV as an official mark in association with services in Canada under serial number 913,106. The Registrar gave public notice through publication in the Trade-marks Journal on June 20, 2001 of the adoption and use by the Respondent of NOWTV as an official mark.

[5]               On October 24, 2013, the Applicant filed an application in the Canadian Intellectual Property Office to register the Trade-mark NOW TV & Design under application number 1,649,254.

[6]               On July 18, 2014, an examiner’s report noted that s 9(1)(n)(iii) prohibited registration of the Applicant’s design mark in light of the Respondent’s official NOWTV mark.

III.             DECISION UNDER REVIEW

[7]               The decision under review is the Registrar’s Decision to designate NOWTV an official mark, published in Volume 48, No. 2434 of the Trade-marks Journal on June 20, 2001. No reasons were provided in connection with the Decision.

IV.             ISSUES

[8]               The Applicant submits that the following matters are at issue in this proceeding:

1)      What standard of review applies to the Registrar’s Decision?

2)      Whether the Applicant has standing to bring this application for judicial review?

3)      Whether the Registrar’s Decision was reasonable?

4)      Whether the Court should exercise its discretion to extend the time for making this application for judicial review?

V.                STANDARD OF REVIEW

[9]               The Supreme Court of Canada in Dunsmuir v New Brunswick, 2008 SCC 9 [Dunsmuir] held that a standard of review analysis need not be conducted in every instance. Instead, where the standard of review applicable to a particular question before the court is settled in a satisfactory manner by past jurisprudence, the reviewing court may adopt that standard of review. Only where this search proves fruitless, or where the relevant precedents appear to be inconsistent with new developments in the common law principles of judicial review, must the reviewing court undertake a consideration of the four factors comprising the standard of review analysis: Agraira v Canada (Public Safety and Emergency Preparedness), 2013 SCC 36 at para 48.

[10]           The Applicant submits that the applicable standard of review is reasonableness but that a narrow margin of appreciation ought to be applied for several reasons, including that the matter is one of mixed fact and law that concerns the meaning of “public authority” under s 9(1)(n)(iii) of the Trade-marks Act, and the lack of discretion bestowed on the Registrar by the Act. The Applicant also highlights that the Federal Court of Appeal has indicated that s 9(1)(n)(iii) should not be given an expansive meaning: Ontario Association of Architects v Association of Architectural Technologists of Ontario, 2002 FCA 218 at para 64 [Ontario Association of Architects]. While I agree that reasonableness has been triggered, I am unconvinced such a narrow margin should be applied. The second and third issues brought forward by the Applicant are questions of mixed fact and law and involve the Registrar of Trade-marks’ expertise and fact-finding. The reasonableness standard will be used in the analysis of these two issues.

[11]           As regards the issue of standing, analysis will involve determining if the Applicant meets the requirements of the Federal Courts Act to bring an application for judicial review. This is a determination of mixed fact and law and therefore attracts a reasonableness standard: Schamborzki v Canada (Attorney General), 2015 FC 1262 at para 32.

[12]           Finally, in terms of the extension of time issue, as both a discretionary matter and of mixed fact and law, it will be reviewed using the standard of reasonableness: Imperial Oil Resources Ltd v Canada (Attorney General), 2016 FCA 139 at para 44; Dube v Canada (Attorney General), 2016 FC 43 at para 36; Bernard v Canada (Attorney General), 2014 FC 350 at para 12.

[13]           When reviewing a decision on the standard of reasonableness, the analysis will be concerned with “the existence of justification, transparency and intelligibility within the decision-making process [and also with] whether the decision falls within a range of possible, acceptable outcomes which are defensible in respect of the facts and law.” See Dunsmuir, above, at para 47, and Canada (Minister of Citizenship and Immigration) v Khosa, 2009 SCC 12 at para 59. Put another way, the Court should intervene only if the Decision was unreasonable in the sense that it falls outside the “range of possible, acceptable outcomes which are defensible in respect of the facts and law.”

VI.             STATUTORY PROVISIONS

[14]           The following provisions of the Trade-marks Act is applicable in this proceeding:

[15]           The following provision of the Federal Courts Act is applicable in this proceeding:

VII.          ARGUMENTS

A.                Standing

[16]           The Applicant argues that, as a result of the direct adverse impact it has suffered from the Registrar’s Decision, it clearly has the standing required under s 18.1(1) of the Federal Courts Act to bring this application for judicial review: TCC Holdings Inc v Families as Support Teams Society, 2014 FC 830 [TCC Holdings].

B.                 Reasonableness

[17]           The Applicant says that the protection granted to official marks is “exceptional” because it gives important advantages over the rights associated with an ordinary Trade-mark: Gill: Fox on Canadian Law of Trademarks and Unfair Competition, 4^th (online); Ontario Association of Architects, above, at paras 4 and 34-36.

[18]           The Registrar’s finding that the Respondent is a public authority is at odds with the evidence. While there is no definition for “public authority” in the Trade-marks Act, the Applicant submits that the Federal Court of Appeal has set out a two-part test to determine this issue. The Court must first determine whether the entity in question is subject to governmental control, and then review the extent to which the organization’s activities benefit the public: Ontario Association of Architects, above. Status as a charity is not enough for an entity to qualify: Canadian Jewish Congress v Chosen People Ministries, Inc, 2003 FCA 272 at para 4 [Canadian Jewish Congress]; TCC Holdings, above, at paras 23-24.

C.                 Extension of time

[19]           This is an appropriate case, according the Applicant, for the Court to exercise its discretion under s 18.1(2) of the Federal Courts Act to extend the time period for commencing a judicial review application period beyond 30 days: Canada (Attorney General) v Larkman, 2012 FCA 204 at paras 61-62; TCC Holdings, above. Several reasons as to why it is in the interests of justice to do so are submitted:

1.      The Applicant’s case on its merits is very strong;

2.      There is no prejudice caused to the Respondent, who has not participated at all in the judicial review application;

3.      There is a reasonable explanation for the delay, as it was only on July 18, 2014 that the Respondent’s official mark prevented the Applicant to register its Trade-mark. The application for judicial review was initiated on October 5, 2015, well within the time period for responding to the examiner’s report;

4.      The Applicant will be significantly prejudiced if disallowed from proceeding with the judicial review because of: the exceptional nature of the rights associated with an official mark; there being no other avenue to challenge the mark; and the entity requesting the official mark is normally the only party to the proceeding before the Registrar of Trade-marks;

5.      It would be unfair if a party that is not a public entity could enjoy the exceptional rights conferred on the holder of an official mark.

[20]           The Respondent has not filed a notice of appearance or otherwise participated in this proceeding.

VIII.       ANALYSIS

[21]           The Respondent has declined to participate in these proceedings. At the hearing before me in Toronto, Mr. Cotter, counsel for the Applicant, informed the Court that his office had received a voicemail message from Mr. Thiessen, a former president and director of the Respondent, indicating that the Respondent had sold its business to Rogers in 2005 and had no interest in responding to the application.

[22]           Apart from the issue of costs, I am satisfied that the Applicant has established its case for the relief sought in that:

(1)   The Applicant has standing to bring this application under s 18.1(1) of the Federal Courts Act as being a party “directly affected by the matter in respect of which the relief is sought” and has suffered “a direct adverse impact from the decision” (see Canada Post Corp v Untied States Postal Service, 2005 FC 1630 at para 12) in that the NOWTV official mark was cited against the Applicant and prevented the Applicant from registering its NOW TV and Design Trade-mark. See TCC Holdings, above, at paras 8, 9, and 19;

(2)   The Decision is unreasonable because the law is clear that status as a charity is insufficient to constitute an entity as a “public authority.” See Canadian Jewish Congress, above, at para 3;

(3)   An extension of time within which to bring this application is warranted because it is in the interest of justice to do so for the following reasons:

a)      The Applicant’s case on the merits is very strong;

b)      There is no prejudice to the Respondent who has no further interest in the official mark and has not participated in this judicial review application;

c)      There is a reasonable explanation for the delay. Although the Registrar’s Decision was made in 2001, it was only on July 18, 2014, when the Respondent’s official mark was cited in the Examiner’s Report against the Applicant in this application to register the Trade-mark NOW TV & Design. This application for judicial review was commenced on October 5, 2015, which was within the time period for responding to the examiner’s report.

d)     The Applicant will be significantly prejudiced if barred from proceedings with this judicial review application because of the following unique aspects of official marks:

                                                                                                        i.            The exceptional nature of the rights conferred on the holder of an official mark;

                                                                                                      ii.            There is essentially no other way to challenge an official mark. As noted above, once the Registrar has given public notice, and official mark is “hardy and virtually inexpungeable”;

                                                                                                    iii.            As the Federal Court of Appeal stated in Ontario Association of Architects, above, the entity requesting the official mark will normally be the only party to the proceeding before the Registrar. These are also very significant factors in the context of this case favouring the extension of time;

e)      It would be patently unfair and completely contrary to the interest of justice if an entity that is not a public authority was permitted to enjoy the exceptional rights conferred on the holder of an official mark. As was noted by the Federal Court of Appeal in Ontario Association of Architects, above, an official mark “confers very substantial benefits not available to the owners of trade-marks, and thus has the capacity to injure both existing trade-mark owners and the public.” The public interest (i.e., the potential injury to the public) is also a very significant factor in the context of this case favouring the extension of time.

[23]           The Applicant has asked for costs against the Respondent for this application but the Court feels that costs are not warranted. The Respondent has not opposed the application and the Applicant is, in effect, simply correcting the Trade-mark register so that it can proceed with its own Trade-mark application.

JUDGMENT

THIS COURT’S JUDGMENT is that

1.      Pursuant to s 18.1(2) of the Federal Courts Act, RSC 1985, c F-7, the Applicant is allowed to make this application for judicial review more than 30 days after the date that the Registrar’s Decision was communicated;

2.      The Registrar’s Decision to grant NOW TV as an official mark of the Respondent is hereby quashed and set aside; and

3.      No order is made as to costs.

THIS COURT FURTHER DECLARES that the public notice of NOWTV as an official mark given through publication in the Trade-Marks Journal of June 20, 2001, volume 48, issue number 2434 was ineffective to give rise to any rights or prohibitions under ss 9, 11, and 12 of the Trade-Marks Act, RSC 1985, c T-13.

“James Russell”

FEDERAL COURT

SOLICITORS OF RECORD

APPEARANCES:

SOLICITORS OF RECORD: