BETWEEN:
Applicant
and
LENDING TREE CORP. AND
ALEX HADITAGHI DOING BUSINESS AS LENDING TREE CORP., AND
THE MINISTER OF INDUSTRY (REGISTRAR OF TRADE-MARKS) AND
THE ATTORNEY GENERAL OF CANADA
Respondents
REASONS FOR JUDGMENT
[1] In this application for judicial review the applicant, LendingTree, LLC ("LendingTree U.S."), seeks an order quashing the decision of the Registrar of Trade-marks ("Registrar") which accepted a request that trade-mark application 1,090,803 ("application") be amended by changing the identification of the applicant from "Lending Tree Corp." to "Alex Haditaghi doing business as Lending Tree Corp.". The application for judicial review arises out of the following facts.
BACKGROUND FACTS
[2] On January 31, 2001, Lending Tree Corp. filed the application requesting registration of the trade-mark LENDING TREE. The application recited that the trade-mark was first used by Lending Tree Corp. in Canada on or before January 5, 2001. However, Lending Tree Corp. did not exist as of that day; it was not incorporated until February 2, 2001.
[3] As a result of the advertisement of the application for opposition purposes, on January 29, 2003 LendingTree U.S. filed a Statement of Opposition opposing the application. One of the grounds of opposition was that, contrary to subsection 30(b) of the Trade-marks Act, R.S.C. 1985, c. T-13 ("Act"), Lending Tree Corp. had not, and could not have, used the trade-mark in association with the services described in the application as of the alleged date of use.
[4] Subsequently, by letter dated November 4, 2004 Lending Tree Corp., through its trade-mark agent, filed a request with the Registrar that:
[...] the subject application be amended, pursuant to the provisions of Rule 30 and/or Rule 33, to correct the identification of applicant, by replacing "Lending Tree Corp." with "Alex Haditaghi doing business as Lending Tree Corp."
[5] In support of the request the affidavit of Alex Haditaghi was filed. Mr. Haditaghi swore that:
1. I filed the subject application myself without the help of a registered trade[-]mark agent.
2. At the time that I filed the application, I was carrying on business under the trade name Lending Tree Corp. As part of my business, I was using the trade[-]mark LENDING TREE for the services listed in the subject application as filed.
3. I filed the application in the name of my trade name, Lending Tree Corp., and I listed my home address as the address of the applicant. However, due to my inexperience in preparing trade[-]mark applications, I mistakenly omitted my name, "Alex Haditaghi", and the words "doing business as", from the identification of applicant.
4. As of 31 January, 2001, the filing date of the subject application, there did not exist a corporation, or other legal entity connected with me, named Lending Tree Corp.
[6] The Registrar did not seek any comments from LendingTree U.S. with respect to this request.
[7] On March 3, 2005 the Trade-marks Opposition Board ("Board") issued a letter to LendingTree U.S. stating:
The amendment to the application as set out in the applicant's letter has been accepted on behalf of the Registrar of Trade-marks.
If the opponent considers that an amendment to the statement of opposition is required, leave should be requested pursuant to Rule 40 of the Trade-marks Regulations.
[8] This application for judicial review is brought in respect of that decision to allow the amendment of the application.
THE ISSUES RAISED BY THE PARTIES
[9] In its written submissions LendingTree U.S. framed the issues to be decided as follows:
1. Did the Registrar err in law and act without jurisdiction by granting the request to change the identity of the trade-mark applicant, contrary to sections 30, 31 or 33 of the Trade-marks Regulations (1996), SOR/96-195 ("Regulations")?
2. Was LendingTree U.S. a party to the impugned decision?
3. If LendingTree U.S. was a party to be impugned decision, are there "special circumstances" warranting the exercise of this Court's jurisdiction to review the impugned decision?
4. Was the impugned decision made in a manner that was contrary to the principles of fairness and natural justice?
[10] In response, Lending Tree Corp. and Mr. Haditaghi framed the issues to be as follows:
1. Was LendingTree U.S. directly affected by the decision so as to have standing to bring this application for judicial review?
2. Even if LendingTree U.S. was directly affected, are there special circumstances that warrant judicial review of an interlocutory decision?
3. If the decision is reviewable, was it reasonable so as to be entitled to deference?
[11] During oral argument, counsel agreed that the decision of the Registrar was of an administrative nature and that LendingTree U.S. was not a party to the decision. It follows from this agreement that the second, third and fourth issues raised by LendingTree U.S. need not be decided.
RELEVANT LEGISLATIVE PROVISIONS
[12] The question at the heart of the dispute between the parties is whether the Registrar erred by amending the application in a manner that changed the identity of the applicant as prohibited by subsection 31(a) of the Regulations. Sections 30, 31 and 32 of the Regulations are set out in the appendix to these reasons. For ease of reference subsection 31(a) is set out below:
| 31. No application for the registration of a trade-mark may be amended where the amendment would change (a) the identity of the applicant, except after recognition of a transfer by the Registrar;
|
31. La modification d'une demande d'enregistrement d'une marque de commerce n'est pas permise si elle vise l'un des objectifs suivants : a) changer l'identité du requérant, sauf après reconnaissance du transfert par le registraire; |
CONSIDERATION OF THE ISSUES
[13] In my view, this application turns on whether the issue of the propriety of amendment of the application is a matter that can be raised and considered in the opposition proceedings. If the issue may be raised and considered there, LendingTree U.S. should, in the absence of special circumstances, raise the issue in that forum. See: Novopharm Ltd. v. Aktiebolaget Astra, [1996] 2 F.C. 839 (F.C.T.D.).
[14] In my view, the following jurisprudence of the Board establishes that the issue may be raised there.
[15] First, in Matsushita Electric v. Libra Importing (1986), 8 C.P.R. (3d) 512 a trade-mark applicant's name had been changed from "A Partnership of Libra Importers Limited and Keystone Importers Limited doing business as Stirling Importers" to "A Partnership of Libra Importing Co. Limited and Keystone Importers Limited doing business as Stirling Importers" by administrative act. In the pending opposition proceeding the Board concluded, "[c]ontrary to the opponent's submissions, the correction of the misnomer was not contrary to the provisions of subsection 36(a) of the [Regulations]". Subsection 36(a) was, at the time, in substance identical to what is now subsection 31(a) of the Regulations.
[16] Second, in Beauty Creations Ltd. v. Eugene-Gallia (1992), 45 C.P.R. (3d) 278, during an oral opposition hearing the trade-mark agent for the applicant noted that the applicant might wish to amend its application in order to indicate that the applicant was "une société anonyme". The Board advised that the applicant would have one week to decide whether it would be proceeding with the amendment and, if so, to file an amended application with the Board. The applicant submitted an amended application in which the identity of the applicant was amended to read "EUGENE-GALLIA, une société anonyme". Because the proposed amendment to the application did not appear to require any subsequent amendment to the statement of opposition the Board advised that it would rule upon the matter of the amended application as part of the final decision in the opposition proceedings. In its final decision the Board concluded that the amendments sought did not constitute a change in the identity of the applicant. The application to amend was therefore allowed by the Board.
[17] Third, in Mirabel Fisheries Ltd. v. HydroSerre Inc. (1994), 55 C.P.R. (3d) 567 an application was filed, signed by Mr. Luc Desrochers. The company name HydroSerre Inc. appeared above Mr. Desrochers' name as he signed the application. The trade-mark office considered the applicant to be Luc Desrochers, as evidenced by the file cover of the application and by correspondence from the trade-mark office. The application for registration was opposed on a number of grounds, including that, contrary to subsection 30(e) of the Act, the applicant did not himself intend to use the trade-mark in Canada and the applicant had not stated in its application its intent to use the trade-mark in Canada. Before the opposition hearing, an examiner allowed the identity of the applicant to be changed to HydroSerre Inc. The Board rejected the efficacy of the purported amendment and refused the application because the application failed to meet its burden with respect to the subsection 30(e) ground of opposition.
[18] This jurisprudence establishes that the Board has in the course of opposition proceedings considered the propriety of amendments made to the name of an applicant, and whether such amendment changed the identity of the applicant. While LendingTree U.S. relies upon a statement of the Board in Imperial Tobacco Ltd. v. 287332 Alberta Ltd., [1991] T.M.O.B. No. 416, that what was then Rule 36(a) of the Regulations "is not a valid ground of opposition", such statement was made in obiter, and this statement was made after the Board observed, in the following terms, that an amendment to the name of the applicant had not changed the identity of the applicant. The Board wrote:
[...] The opponent has alleged that the company presently identified as applicant was not the applicant for registration. Concerning the identity of the applicant, as explained by an officer of the applicant, the applicant company had, through inadvertence, been incorrectly identified; therefore, it would appear that the applicant for registration is and always was 287332 Alberta Ltd. Furthermore, by official letter dated December 16, 1988 the error was corrected.
[19] My conclusion that the Board may consider the propriety of amendments made to the name of an applicant, and whether such an amendment changed the identity of the applicant, is consistent with the fact that, after the amendment was allowed, LendingTree U.S. was invited to seek leave to amend its statement of opposition. This would appear to contemplate that LendingTree U.S. would have an opportunity at the hearing of the opposition to argue that the decision to allow the amendment should not have been made and should not be permitted.
[20] Having found that the propriety of the amendment may be raised by LendingTree U.S. in the opposition proceeding, and that the Board may properly consider such issue, I find an adequate alternative remedy to this proceeding to exist and to be available to LendingTree U.S. Having so found, and, for the reasons given by my colleague Mr. Justice Gibson in Novopharm, cited above, seeing no special circumstance that would justify granting relief on this application, I am satisfied that this application for judicial review should be dismissed.
[21] The respondents seek the costs of this application and there is no reason why costs should not follow the event. If not agreed, costs shall be assessed at the mid-point of column III to the table to Tariff B of the Federal Courts Rules.
Judge
APPENDIX
Sections 30, 31 and 32 of the Trade-marks Regulations (1996):
| 30. Except as provided in sections 31 and 32, an application for the registration of a trade-mark may be amended either before or after the application is advertised pursuant to subsection 37(1) of the Act.
31. No application for the registration of a trade-mark may be amended where the amendment would change (a) the identity of the applicant, except after recognition of a transfer by the Registrar; (b) the trade-mark, except in respects that do not alter its distinctive character or affect its identity; (c) the date of first use or making known in Canada of the trade-mark to an earlier date, except where the evidence proves that the change is justified by the facts; (d) the application from one not alleging use or making known of the trade-mark in Canada before the filing of the application to one alleging such use or making known; or (e) the statement of wares or services so as to be broader than the statement of wares or services contained in the application at the time the application was filed pursuant to section 30 of the Act.
32. No application for the registration of a trade-mark may be amended, after it has been advertised in the Journal, to change (a) the trade-mark in any manner whatsoever; (b) the date of first use or making known in Canada of the trade-mark; (c) the application from one alleging use or making known to one for a proposed trade-mark; (d) the application from one that does not allege that the trade-mark has been used and registered in or for a country of the Union to one that does so allege; or (e) the statement of wares or services so as to be broader than the statement of wares or services contained in the application at the time of advertisement.
|
30. Sauf dans les cas prévus aux articles 31 et 32, la demande d'enregistrement d'une marque de commerce peut être modifiée avant ou après l'annonce faite en vertu du paragraphe 37(1) de la Loi.
31. La modification d'une demande d'enregistrement d'une marque de commerce n'est pas permise si elle vise l'un des objectifs suivants : a) changer l'identité du requérant, sauf après reconnaissance du transfert par le registraire; b) modifier la marque de commerce, sauf à certains égards qui n'en changent pas le caractère distinctif ni n'influent sur son identité; c) changer pour une date antérieure la date de premier emploi ou de révélation, au Canada, de la marque de commerce, sauf s'il est prouvé que les faits justifient le changement; d) changer une demande n'alléguant pas que la marque de commerce a été employée ou a été révélée au Canada avant la production de la demande en une demande qui contient l'une ou l'autre de ces allégations; e) modifier l'état déclaratif des marchandises ou services pour étendre la portée de celui qui figurait dans la demande au moment du dépôt effectué conformément à l'article 30 de la Loi.
32. La modification d'une demande d'enregistrement d'une marque de commerce n'est pas permise après l'annonce de la demande dans le Journal, si elle vise, selon le cas : a) à modifier la marque de commerce, à quelque égard que ce soit; b) à changer la date de premier emploi ou de révélation, au Canada, de la marque de commerce; c) à modifier la demande qui allègue que la marque de commerce a été employée ou révélée en une demande alléguant qu'il s'agit d'une marque de commerce projetée; d) à modifier la demande n'alléguant pas que la marque a été employée et enregistrée dans un pays de l'Union ou pour un pays de l'Union en une demande alléguant ce fait; e) à modifier l'état déclaratif des marchandises ou services pour étendre la portée de celui qui figurait dans la demande au moment de l'annonce. |
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-588-05
STYLE OF CAUSE: LENDINGTREE, LLC
Applicant
and
LENDING TREE CORP. ET AL.
Respondents
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: DECEMBER 14, 2005
SUPPLEMENTARY WRITTEN SUBMISSIONS RECEIVED:
RESPONDENTS: JANUARY 6, 2006 and
JANUARY 20, 2006 (REPLY)
APPLICANT: JANUARY 13, 2006
APPEARANCES:
JAMES BUCHAN FOR THE APPLICANT
STEWART HAYNE
ADAM BOBKER FOR THE RESPONDENTS
SOLICITORS OF RECORD:
GOWLING LAFLEUR HENDERSON LLP FOR THE APPLICANT
TORONTO, ONTARIO
BERESKIN & PARR. FOR THE RESPONDENTS
TORONTO, ONTARIO
Date: 20060322
Docket: T-588-05
Ottawa, Ontario, March 22, 2006
PRESENT: The Honourable Madam Justice Dawson
BETWEEN:
LENDINGTREE, LLC
Applicant
-and-
LENDING TREE CORP. AND
ALEX HADITAGHI DOING BUSINESS AS LENDING TREE CORP., AND
THE MINISTER OF INDUSTRY (REGISTRAR OF TRADE-MARKS) AND
THE ATTORNEY GENERAL OF CANADA
Respondents
JUDGMENT
FOR THESE REASONS, THIS COURT ADJOURNS that:
1. The application for judicial review is dismissed.
2. The applicant shall pay the costs of this application to the respondents. If not agreed, costs shall be assessed at the mid-point of column III to the table to Tariff B of the Federal Courts Rules.
"Eleanor R. Dawson"
Judge