Date: 20000407
Docket: T-36-99
BETWEEN:
| SHOWTIME NETWORKS INC. |
Applicant
- and -
WIC PREMIUM TELEVISION LTD.
Respondent
REASONS FOR ORDER
GIBSON J.:
INTRODUCTION
[1] These reasons arise out of an application for judicial review of a decision of the Registrar of Trade-marks (the "Registrar") wherein the Registrar considered that a Statement of Opposition filed by the respondent to the applicant"s trade-mark application No. 794,289 (the "application") for registration of the Trade-mark SHOWTIME (the "Trade-mark") raised a substantial issue for decision and thus forwarded a copy of the Statement of Opposition to the applicant pursuant to subsection 38(5) of the Trade-marks Act (the "Act")1. The respondent"s Statement of Opposition was forwarded to the applicant under cover of correspondence dated the 9th of December, 1998.
THE PARTIES
[2] According to a Statement of Claim filed in this Court by the respondent on the 28th of July, 19982, the applicant is a corporation incorporated in the state of Delaware that, either itself or through others, is licensed in the United States, and not in Canada, to broadcast and authorize the decoding of encrypted subscription programming signals. The applicant makes use of a satellite or satellites located in orbital locations that have been assigned by the International Telecommunication Union to the United States which has in turn licensed the applicant or a related company to use such a satellite or satellites to provide domestic service to residents of the United States. The respondent alleges in its Statement of Claim that, by reason of the "footprint" of the applicant"s signal from the satellite or satellites, the applicant has been "poaching" in Canadian territory to the direct detriment of the respondent.
[3] The respondent is an Alberta corporation carrying on business in Western Canada and having its head office in Edmonton, Alberta. The respondent is engaged in the business of directly or indirectly broadcasting or transmitting encrypted subscription television programming signals and indirectly or directly authorizing the decoding of such signals by subscribers for a fee. The respondent"s programming includes pay-per-view and subscription programming.
THE APPLICANT"S TRADE-MARK APPLICATION
[4] The applicant filed its application for the Trade-mark on the 6th of October, 1995 for use in association with "cable television services; entertainment services namely producing and distributing a variety of programs for presentation on cable, pay and broadcast television". Pursuant to subsection 16(2) and section 14 of the Act , the application was based on use and registration of the Trade-mark in the United States.
[5] The applicant"s application for the Trade-mark was advertised in the issue of the Trade Marks Journal dated the 1st of July, 1998.
THE SCHEME OF THE TRADE-MARKS ACT RELATING TO OPPOSITIONS
[6] Subsection 38(1) of the Act provides that any person may file a Statement of Opposition with the Registrar within two months after the advertisement of an application for registration of a trade-mark. Subsection 38(2) provides four grounds of opposition: that the application does not conform to the requirements of section 30 of the Act; that the trade-mark is not registrable; that the applicant is not the person entitled to registration of the trade-mark; and that the trade-mark is not distinctive. Subsection 38(4) requires the Registrar to reject a Statement of Opposition, and give notice of the rejection to the opponent, if she "considers that" ("estime que") the opposition does not raise a substantial issue for decision. It is interesting to note, though certainly in no sense determinative, that the marginal note to subsection 38(4) is "Frivolous opposition" ("Objection futile"). Subsection 38(5) provides that the Registrar shall forward a copy of the statement of opposition to the applicant for registration of the trade-mark if the Registrar "considers that" ("est d"avis que") the opposition raises a substantial issue for decision. Forwarding of a statement of opposition to the applicant appears to formally commence the opposition proceeding. Subsection 38(7) requires that an opportunity be provided to both the applicant and the opponent to submit evidence and to make representations. Subsection 38(8) provides as follows:
(8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision.
(8) Après avoir examiné la preuve et les observations des parties, le registraire repousse la demande ou rejette l'opposition et notifie aux parties sa décision ainsi que ses motifs.
[7] Finally, subsection 56(1) of the Act provides for an appeal to this Court from any decision of the Registrar which includes a decision under subsection 38(8). Subsection 56(1) reads as follows:
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois.
THE RESPONDENT"S STATEMENT OF OPPOSITION
[8] Of the four grounds of opposition briefly described above, the respondent relies only on the first, that is to say, that the applicant"s application for registration of the Trade-mark SHOWTIME does not conform to the requirements of section 30 of the Act . More specifically, the respondent urges in its Statement of Opposition that the applicant"s application for the Trade-mark SHOWTIME does not contain "a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used and a "credible" statement that the applicant is satisfied that it is entitled to use the Trade-mark in Canada in association with the wares or services described in the application.
[9] Subsequent to the decision of the Registrar under subsection 38(5) of the Act to forward a copy of the Statement of Opposition to the applicant herein and, indeed, subsequent to the commencement of this application for judicial review, the respondent amended its Statement of Opposition to include an additional ground. Quite properly, that additional ground was not before the Court on this application for judicial review.
THE ISSUES
[10] The applicant urges that the only issue on this application for judicial review is whether the Registrar erred in law in determining ("considering") that the Statement of Opposition filed by the respondent raises a substantial issue for decision.
[11] I am satisfied that this application for judicial review raises a further and preliminary issue for determination, namely, whether in the light of the statutory scheme regarding opposition proceedings under the Trade-marks Act, this Court should entertain this application for judicial review.
ANALYSIS
[12] I am satisfied that the determination by the Registrar to consider that the respondent"s Statement of Opposition raises a substantial issue for decision would be, in the normal course of things, a reviewable decision. It is interlocutory in nature in that it does not in any sense finally dispose of the opposition proceedings before the Registrar.
[13] In Szczecka v. Canada (Minister of Employment and Immigration)3, Mr. Justice Létourneau wrote:
| ...unless there are special circumstances there should not be any appeal or immediate judicial review of an interlocutory judgment. Similarly, there will not be any basis for judicial review, especially immediate review, when at the end of the proceedings some other appropriate remedy exists. These rules have been applied in several court decisions specifically in order to avoid breaking up cases and the resulting delays and expenses which interfere with the sound administration of justice and ultimately bring it into disrepute. [emphasis added] |
[14] In Novopharm Ltd. v. Aktiebolaget Astra4, I wrote with reference to the foregoing quoted passage with the same emphasis added:
| I read the underlined words in the ...quotation from Szczecka as implying that, first, there is authority in this Court to engage in judicial review under section 18 of the Federal Court Act of an interlocutory judgment or decision and, second, that in special circumstances, it is appropriate to exercise that authority. In any other circumstances, to do so would be to risk "breaking up cases and the resulting delays and expenses which interfere with the sound administration of justice and ultimately bring it into disrepute." |
[15] The interlocutory decision that was before me on judicial review in Novopharm was a decision of the Registrar in opposition proceedings. At page 849, I wrote:
| ...if this Court were to entertain appeals [or indeed applications for judicial review] in respect of each and every preliminary decision in an opposition proceeding, each of which decisions, if it had any impact on the final decision of the Registrar, could be reviewed in the course of an appeal of the final decision [under section 56 of the Act], the process of opposition proceedings could virtually be brought to a halt by a series of appeals. That result clearly would not be consistent with the scheme of the Trade-marks Act. |
| Should then, this Court entertain applications for judicial in respect of interlocutory or preliminary decisions in the course of opposition proceedings where to do so would be to potentially achieve the result that this Court has sought to avoid by adopting a "narrow rather than a broad interpretation" of the word "decision" in subsection 56(1) of the Trade-marks Act ? I think not. |
[16] At page 851, I concluded in the following terms:
| On the facts before me, I conclude that there is an adequate alternative remedy available to the applicant, that is to say, an appeal at the end of the opposition proceeding, assuming for the moment that the opposition is not resolved in favour of the applicant herein, during the course of which the decision of the Registrar here under review could be challenged. The nature of the error on the part of the Registrar alleged by the applicant herein in effect derives from an interpretation or misinterpretation of the Trade-marks Act and the Regulations ... made thereunder. The appeal provided under the Trade-marks Act is to this Court, the same institution from which judicial review is being sought and therefore there can be no question that the appeal right might somehow be of a lesser qualitative nature. Thus, I conclude that the range of factors that should be considered in determining whether to enter into judicial review here augur[s] against entertaining judicial review. |
| In the particular circumstances of the matter before me, I conclude that I should decline to enter into the judicial review sought on behalf of the applicant. |
[17] I am satisfied that precisely the same can be said here.
[18] Subsequent to the decisions in Szczecka and Novopharm, Brown and Evans, in Judicial Review of Administrative Action in Canada5 wrote:
| The statutory provision of a right of appeal to the courts from an administrative decision prima facie indicates a legislative intention to exclude the courts" exercise of their supervisory jurisdiction. Indeed, while provision for an appeal does not necessarily preclude the exercise of discretion, some courts have stated that the existence of an appeal right in effect deprives them of jurisdiction. The primary reason for this general rule is that a statutory appeal to the courts represents a legislative judgment that it is better that the court"s consideration of a matter be based on the full administrative record with a broader scope of review, and possibly a less deferential standard of review applied. [citations omitted] |
Brown and Evans qualified the "general rule" in the following terms at pages 3 - 15 and 3- 16:
| ...the general rule does not apply if there are doubts about the availability of the appeal. Nor does it apply where the applicant is not a party to the administrative proceedings and has no right of appeal, nor where the issues would not be dealt with on appeal. [citations omitted] |
[19] I am satisfied that the foregoing statement of circumstances where the "general rule" does not apply constitutes a description of the "special circumstances" to which Mr. Justice Létourneau refers in the quotation from Szczecka which appears earlier in these reasons. The circumstances to which the applicant refers as justifying the exercise by this Court of its discretion to entertain this application for judicial review are costs, delay and the view of the applicant that the respondents" opposition is totally without merit. Such circumstances are not within the enumeration of circumstances where Brown and Evans determined the "general rule" does not apply. Nor are they, I conclude, in any sense analogous to those special circumstances.
[20] Based on the foregoing, I am satisfied that this Court should not entertain this application for judicial review and the opposition proceedings provided for in the statutory scheme of the Trade-marks Act should be allowed to run their course, which course will include a right of appeal under subsection 56(1) of the Trade-marks Act on the part of the applicant herein if it is not successful in the opposition proceedings. In the result, I will not consider the merits of arguments advanced on the judicial review itself.
CONCLUSION
[21] For the foregoing reasons, this application for judicial review will be dismissed.
COSTS
[22] At the close of the hearing of this matter, I reserved my decision and indicated to counsel that I would provide an opportunity for them to make written submissions as to costs both in respect of my decision on this application for judicial review and my decisions on preliminary motions that were heard immediately before the hearing of this application for judicial review. Counsel shall each have seven (7) days from the date of these reasons to exchange and to provide to the Court written submissions on costs. Thereafter, a further period of seven days will be allowed for any reply submissions.
A supplementary orders as to costs will thereafter issue.
_________________________________
J.F.C.C.
Ottawa, Ontario
April 7, 2000
__________________3 (1994), 116 D.L.R. (4th ) 333 at 335 (F.C.A.).
4 [1996] 2 F.C. 839 at 847 (F.C.T.D.).
5 Donald J. M. Brown, Q.C. and John M. Evans, Toronto, Canvasback Publishing, 1998, p. 3 - 14.