Federal Court Decisions

     T-1853-96

IN THE MATTER OF THE TRADEMARKS ACT, R.S. 1985,

C.T-13

AND IN THE MATTER OF an Appeal from the Decision of the Trademarks Office in respect of Trademark Application Serial No.: 599,428 IMMUNO CONCEPTS & DESIGN dated June 11, 1996

Between:

     IMMUNO CONCEPTS, INC.,

     Appellant

     (Applicant),

     - and -

     IMMUNO AG,

     Respondent

     (Opponent).

     REASONS FOR ORDER

JOHN A. HARGRAVE

PROTHONOTARY

     These reasons arise out of a motion to extend time in order to file additional evidence in an appeal under section 56 of the Trade-marks Act, R.S.C. 1995, c.T-13. The application is interesting for the vehicle by which to tender the additional evidence, the affidavits, are not attached to the motion, but are to come when the evidence has been assembled.

     The Federal Court of Appeal has expressed clear views on the late filing of affidavit evidence under what is now Rule 704(7): where an affidavit does not exist and thus cannot be tested for intrinsic worth, an extension for filing ought not to be allowed, except in special circumstances, for to do otherwise would be akin to issuing a blank cheque to the applicant, in effect, putting the applicant in a better position than might be hoped for were the affidavit material with the motion: Prouvost S.A. v. Munsingwear Inc. (1992), 141 N.R. 241 at 248 through 250. The Court went on to say that it did not rule out the possibility of filing the affidavits, not with the motion, but at a later date:

. . . In such cases, the court will have to be especially scrupulous and require that the notice of motion for leave to extend the deadlines indicate, in addition to the reasons for the delay, the purpose of the affidavits that will eventually be filed and the probable use to be made of them in court, and if it is impossible for the applicant to indicate such object and use, the reasons why it is unable to do so.

     Another decision, which is often referred to and which presupposes the existence of the affidavit material at the time of the application, is that of Mr. Justice Strayer (as he then was) in Maxim's Ltd. v. Maxim's Bakery Ltd. (1990), 37, F.T.R. 199, in which he noted:

[3]      The jurisprudence is clear that in an application for an extension of time under rule 704(8) the court should take into account both the reasons for the delay and the intrinsic worth of the affidavits (i.e., relevance, admissibility, and potential use to the court). It has been said in some of the cases that both factors must be weighed together . . . Accepting this to be the correct approach for present purposes, I understand it to mean that one must still weigh the seriousness of the delay against the potential value of the affidavits and that either may outweigh the other. Taking that approach, I believe that in this case the delay and the lack of excuse for it outweighs the potential value of these affidavits. (p. 200)

     Mr. Justice Cullen referred to the Maxim's Bakery decision in Bio-Generation Laboratories Inc. v. Pantron I Corporation (1991), 48 F.T.R. 269 at 272. He then went on to say "The applicant must show that there is a valid reason or excusable reason for the delay and secondly, relevance and admissibility, whether it will be in the interests of justice.".

     In the Bio Generation case, at the hearing before the Board, Bio Generation Laboratories had failed to file any evidence in opposition: the Board was critical and made an adverse finding because there was no evidence. As an apparent result of lack of diligence the first time around, Bio Generation had to seek and extension of time within which to obtain evidence to establish that the trade-mark "Helsinki formula" was not distinctive of the respondent, Pantron I Corporation. Mr. Justice Cullen noted Bio Generation had not sat back, collected its evidence and then moved later to file supplementary evidence, but rather had taken an early initiative in getting its motion on the list before the time for filing affidavit evidence had passed. He accepted as a valid or excusable reason for the delay that Pantron I Corporation had to secure evidence from third parties. He concluded:

The affidavit of A.F. Rush indicates to me that there may very well be evidence out there in support of the applicant's proposition and I believe that it is in the "interests of justice" that the applicant be afforded this relief. (p. 272).

     While both Maxim's Bakery and Bio Generation pre-date the Court of Appeal's decision in the Munsingwear case, they are consistent with the Court of Appeal's view and indeed the Court of Appeal, at an early point in their decision, referred to the passage from Maxim's Bakery which I have quoted above as being the test which a party must meet in seeking leave to file a document out of time. Of course, in Maxim's Bakery, the affidavits were tendered with the motion.

     When this motion came on for hearing, counsel for the Defendant did not attend, but rather sent written representations. However, I do not think there is any difference between counsel as to the principles which apply and which I have set out above. Where the parties differ is whether there are special circumstances which would allow me to grant the time extension without having the affidavit evidence in hand to test.

     The background to the appeal of the decision of the Registrar of Trade-marks, dated June 11, 1996, is set out in the Notice of Appeal and in the affidavit of Timothy Lo, to which is attached the Registrar's decision.

     The Appellant, the manufacturer of Immuno Assay Diagnostic Test Kits, had its trade-mark, which it has used in Canada for some fifteen years, refused, the Registrar taking the position that the word "Immuno" was distinctive. The Appellant, Immuno Concepts Inc., points out that the wares of the Respondent, Immuno A.G., are medicinal and pharmaceutical preparations. The Appellant contends the Respondent's trade-mark has a low degree of inherent distinctiveness for the trade-mark is highly suggestive of an immunological response. In contrast, so the Appellant's argument goes, in the field of diagnostic testing the word "immuno" is not distinctive for it describes a diagnostic test or assay depending on a reaction between antibodies and antigens and indeed it is common to the description of such diagnostic products and the names of manufacturers of those products.

     The Registrar's decision seemed to hinge on the fact that while the Appellant's searches turned up nine relevant registrations using the word "immuno" as a prefix, those registrations owned by six different owners, in the absence of evidence as to use of those marks, the Registrar had insufficient evidence to conclude that there has been a common adoption of the "immuno" prefix in the field of diagnostic testing.

     Counsel, on behalf of Immuno Concepts Inc., now intends to seek evidence pertaining to the use of trade-marks which include the prefix "immuno", or variations, used on wares similar to those of the Appellant. In that regard the lawyers for Immuno Concept propose to attempt to obtain third party affidavits from Canadian manufacturers, distributors or consumers of such wares in order to show the use of the immuno prefix in Canada. Mr. Lo, in his affidavit, says his lawyers have had insufficient time to locate and communicate with such third parties in order to obtain the sought after affidavit evidence.

     The likelihood of such evidence being available is very substantial. Attached to the affidavit of Saul I. Ship, sworn 9 August 1996, is a copy of the sixth edition of Canada's Guide to Diagnostic Kits and Instrumentation, published in 1992 by Clinical Diagnostics Today. It shows a very large number of diagnostic kits, technologies, manufacturers and applications which use the prefix "immuno" in one form or another.

     The first hurdle which the Applicant must overcome is that of showing a valid reason or an excusable reason for the delay. The Applicant had until August 10 to file its material. The tenth fell on a Saturday which, by Federal Court Rule 3(2) is deemed a holiday, thus the motion has been brought without any undue delay, the Applicant having filed its motion for an extension of time on Monday, August 12.

     The Applicant's material is a little week in that it does not set out specifically the steps the Applicant took during the two months following the Registrar's decision, other than to say the time allowed was insufficient to enable counsel to locate and communicate with the third parties who are expected to provide the necessary evidence. In this regard I would take note of the fact that during the summer it is often difficult to obtain prompt responses to enquiries by reason of it being a holiday season.

     On balance, I am satisfied there has not been enough time to enable the Applicant to assemble a reasonable amount of evidence in order to put its best case forward. I will now deal with whether there is a special circumstance which would allow the Applicant an extension for affidavits yet to come.

     The usual procedure on applying for an extension of time within which to file affidavit material, under what is now Rule 704(7), is to test the intrinsic worth of the affidavits at the time they are filed to rule on the extension at that point. In the Munsingwear case not only was the affidavit material, for which the extension was sought, not before the Court, but also there was apparently no suggestion as to what the affidavit material might contain.

     In the present instance Mr. Martin, the member of the Trade-marks Opposition Board who heard the case, clearly indicates in his reasons the nature of the evidence required. The intended evidence would show the use of the "immuno" prefix by a substantial number of manufacturers of diagnostic material, in short, a common adoption and use of the prefix in the trade. The nature of the evidence is elaborated on by Mr. Lo in his affidavit. In perusing the material attached to the affidavit of Saul I Ship, it is apparent that there is a high probability of the existence of such evidence. Indeed, the facts here are, if anything, stronger than those relied upon by Mr. Justice Cullen, in the Bio Generation case, in which he remarked that ". . . the applicant has made a valid or excusable reason for the delay, namely, it must secure evidence from a third party or parties and that there may very well be evidence out there in support of the Applicant's proposition . . .". (p. 272).

     In the present instance the granting of an extension would not be akin to providing the Applicant with a blank cheque, for it is quite clear the nature of and the need for the evidence which the Applicant's solicitors wish to assemble and present. The Applicant, in my view, comes clearly within the special circumstances suggested by the Court of Appeal in the Munsingwear case. If the evidence collected falls short of being pertinent and having intrinsic worth, the judge hearing the matter can always give lesser weight to that evidence.

     At the conclusion of argument by the Applicant and having both before and during the application considered the written argument of the Respondent, I concluded it was in the interests of justice that Immuno Concepts, Inc. receive the requested extension.

                             (Sgd.) "John A. Hargrave"

                                 Prothonotary

September 10, 1996

Vancouver, British Columbia