Date: 20001128
Docket: T-647-98
BETWEEN:
MAPLE LEAF MEATS INC.
Appellant
- and -
CONSORZIO DEL PROSCIUTTO DI PARMA
and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER AND ORDER
O'KEEFE J.
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act") from the "decision" of the Registrar of Trade-marks, rendered on February 11, 1998 wherein public notice was given of the adoption and use of the "PARMA & Design" trade-mark as an official mark by the respondent, Consorzio Del Prosciutto Di Parma ("consortium"), pursuant to subparagraph 9(1)(n)(iii) of the Act.
BACKGROUND FACTS
[2] The respondent, Consorzio Del Prosciutto Di Parma is a consortium of approximately 210 Italian ham producers from the province of Parma in Italy. The object of the consortium is to ensure that production standards concerning ham are met and to prevent unauthorized use of its designations and trade-marks, which are effectively indicia that the product originates from the Parma region and conforms to the rigorous quality controls and production standards set out by the consortium as well as by Italian law.
[3] The appellant, Maple Leaf Meats Inc. (the "appellant") is a producer of various food products, including ham products. It is the owner of the registered trade-mark PARMA, which was first used by the appellant in the 1960s.
[4] By way of background, "Parma ham" in Italy is reserved for ham having characteristics and qualities related to the geographical area of production which includes the valleys, hills and mountain areas of the province of Parma in Italy. The "Parma ham" is from the flesh of heavy, adult swine, excluding boars and sows. The growing process of the hogs, the slaughtering process and the curing process are all strictly controlled. "Parma ham" is not cooked or frozen, but is cured without smoke.
[5] The appellant is a manufacturer of meat products under the trade-mark DI PARMA in Canada. It is the owner of this trade-mark which has been registered in Canada since 1971 and it has been in use in Canada since 1958. The wares listed in the trade-mark include ham.
[6] The consortium had previously filed on August 13, 1984, applications to register the following marks as certification marks: PARMA HAM; PARMA & Design; and PROSCIUTTO DI PARMA. However, these applications were rejected by the Registrar of Trade-marks as he was of the view that the proposed certification marks would be confusing with the appellant's PARMA registered trade-mark. The consortium has attempted, without success to date, to convince the Registrar otherwise.
[7] The consortium wrote to the Registrar on September 19, 1997 requesting that he give public notice of the adoption and use of the PARMA & Design trade--mark as an official mark for services pursuant to subparagraph 9(1)(n)(iii). The Registrar requested information from the consortium; specifically, details of its characteristics and duties which would inform the Registrar as to whether the consortium could properly be held to be a "public authority" within the meaning of the Act.
[8] Upon receiving such further information, the Registrar gave the requested public notice on February 11, 1998 by publishing a notice in the Trade-marks Journal. The official mark was given a serial number: 908349.
[9] The appellant subsequently brought this appeal seeking a declaration that the consortium is not a public authority and that the public notice was void and of no force and effect. The appellant also requests that this Court order the Registrar to publish a retraction of the public notice and order that a copy of the Court's judgment be annexed to the records of the Trade-mark Office.
APPELLANT'S SUBMISSIONS
[10] The appellant submits that the only method available to the public to challenge the adoption of a mark as an official mark is by an appeal pursuant to section 56 of the Act, subsequent to the notice being published in the Trade-marks Journal. The appellant submits that the Registrar clearly erred in giving public notice of the adoption and use of the official mark in the circumstances of this case.
[11] The appellant further submits that by virtue of the considerable weight of additional evidence respecting the status of the consortium, the Court is in a position to exercise discretion de novo. The protection afforded to official marks by the Act is extraordinary and the Court should carefully consider the circumstances of the case. The evidence before the Registrar was solely that which was provided by the consortium's Canadian trade-mark agents.
[12] The appellant submits that the consortium is not a public authority within the meaning of the Act. Case law has determined factors to be considered in this assessment:
whether the body is under a duty to the public;
| whether there exists a significant degree of governmental control; and |
| whether there is any requirement to dedicate profit to public good rather than private benefit. |
[13] According to the appellant, the consortium does not meet these tests: it operates for private benefit, has no duty to the Canadian public and any governmental control is foreign governmental control. The Court should be cautious about recognizing a "foreign commercial trade organization" as a public authority.
[14] The appellant submits as well that the requirements that the mark be adopted and used in Canada by the consortium are not met in the facts of this case. The appellant submits that not only is there no showing of use in Canada, but that there is evidence that the consortium does not and has not used the mark in Canada: the mark appears on the wares of third parties.
[15] The appellant notes that the consortium has not filed any evidence in this appeal and did not cross-examine any deponents.
RESPONDENT'S SUBMISSIONS
[16] The respondent submits that the giving of public notice under section 9(1)(n)(iii) of the Act is not a "decision" of the Registrar as that term is understood within section 56. Also, an appeal lies from a final decision involving a trade-mark, not an official mark. The Act sets out no procedures to be followed by the Registrar in giving public notice of an official mark.
[17] The respondent therefore submits that the Court has no jurisdiction to hear the matter as the Registrar has made no decision from which an appeal would lie.
Any right of appeal must be explicitly found in the statutory language. Also, as the appellant was not a party to the underlying events, it has no standing to bring any appeal, assuming there was any jurisdiction. There was no decision "dispatched" by the Registrar -- merely a publication in the Trade-marks Journal.
[18] In the alternative, that the appellant has standing to bring an appeal, it has not shown that there was any improper act or error of law.
[19] The respondent submits that the consortium is a public authority and that the three part test articulated by the appellant and pronounced in the Trial Division decision in the case was not accepted by the Court of Appeal. The Court of Appeal held that to be a public authority, the body must be subject to a "sufficient degree of control exercised by
government". There is no requirement that the body be subject to control by the Canadian government. International conventions require that foreign nationals be given the same rights as Canadians. The respondent is subject to a considerable degree of control by the Italian government.
[20] The respondent also submits that the consortium has adopted and used the mark in Canada. The respondent claims that the consortium places the mark on qualifying ham in Italy and the ham is then imported into Canada.
APPLICABLE LAW
[21] The following provisions of the Trade-marks Act, R.S.C. 1985, c. T-13 have relevance to this case. Section 2:
| "use", in relation to a trade-mark, means any use that by section 4 is deemed to be a use in association with wares or services; "wares" includes printed publications; "certification mark" means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to (a) the character or quality of the wares or services, (b) the working conditions under which the wares have been produced or the services performed, (c) the class of persons by whom the wares have been produced or the services performed, or (d) the area within which the wares have been produced or the services performed, from wares or services that are not of that defined standard; |
| « emploi » ou « usage » À l'égard d'une marque de commerce, tout emploi qui, selon l'article 4, est réputé un emploi en liaison avec des marchandises ou services. « marchandises » Sont assimilées aux marchandises les publications imprimées. « marque de certification » Marque employée pour distinguer, ou de façon à distinguer, les marchandises ou services qui sont d'une norme définie par rapport à ceux qui ne le sont pas, en ce qui concerne_: a) soit la nature ou qualité des marchandises ou services; b) soit les conditions de travail dans lesquelles les marchandises ont été produites ou les services exécutés; c) soit la catégorie de personnes qui a produit les marchandises ou exécuté les services; d) soit la région à l'intérieur de laquelle les marchandises ont été produites ou les services exécutés. |
| Section 3 states the circumstances when a trade-mark is deemed to have been adopted: |
| 3. A trade-mark is deemed to have been adopted by a person when that person or his predecessor in title commenced to use it in Canada or to make it known in Canada or, if that person or his predecessor had not previously so used it or made it known, when that person or his predecessor filed an application for its registration in Canada. |
3. Une marque de commerce est réputée avoir été adoptée par une personne, lorsque cette personne ou son prédécesseur en titre a commencé à l'employer au Canada ou à l'y faire connaître, ou, si la personne ou le prédécesseur en question ne l'avait pas antérieurement ainsi employée ou fait connaître, lorsque l'un d'eux a produit une demande d'enregistrement de cette marque au Canada. |
| Section 4: |
| 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. (2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. (3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares. |
| 4. (1) Une marque de commerce est réputée employée en liaison avec des marchandises si, lors du transfert de la propriété ou de la possession de ces marchandises, dans la pratique normale du commerce, elle est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont distribuées, ou si elle est, de toute autre manière, liée aux marchandises à tel point qu'avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée. (2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l'exécution ou l'annonce de ces services. (3) Une marque de commerce mise au Canada sur des marchandises ou sur les colis qui les contiennent est réputée, quand ces marchandises sont exportées du Canada, être employée dans ce pays en liaison avec ces marchandises. |
| Section 5: |
| 5. A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with wares or services, and (a) the wares are distributed in association with it in Canada, or (b) the wares or services are advertised in association with it in (i) any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the wares or services, or (ii) radio broadcasts ordinarily received in Canada by potential dealers in or users of the wares or services, and it has become well known in Canada by reason of the distribution or advertising. |
| 5. Une personne est réputée faire connaître une marque de commerce au Canada seulement si elle l'emploie dans un pays de l'Union, autre que le Canada, en liaison avec des marchandises ou services, si, selon le cas_: a) ces marchandises sont distribuées en liaison avec cette marque au Canada; b) ces marchandises ou services sont annoncés en liaison avec cette marque_: (i) soit dans toute publication imprimée et mise en circulation au Canada dans la pratique ordinaire du commerce parmi les marchands ou usagers éventuels de ces marchandises ou services, (ii) soit dans des émissions de radio ordinairement captées au Canada par des marchands ou usagers éventuels de ces marchandises ou services, et si la marque est bien connue au Canada par suite de cette distribution ou annonce. |
| Section 9: |
| 9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, . . . (n) any badge, crest, emblem or mark (i) adopted or used by any of Her Majesty's Forces as defined in the National Defence Act, (ii) of any university, or (iii) adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use; . . . |
9. (1) Nul ne peut adopter à l'égard d'une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit_: . . . n) tout insigne, écusson, marque ou emblème_: (i) adopté ou employé par l'une des forces de Sa Majesté telles que les définit la Loi sur la défense nationale, (ii) d'une université, (iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services, à l'égard duquel le registraire, sur la demande de Sa Majesté ou de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi; |
| ISSUES |
| [22] 1. Does the appellant have a right of appeal under section 56 of the Act? |
2. If the appellant has a right of appeal under section 56 of the Act, was the Registrar in error in giving public notice of the adoption and use of the official mark by the respondent?
ANALYSIS AND DECISION
| [23] Issue 1 |
Does the appellant have a right of appeal under section 56 of the Act?
The respondent raised as a preliminary issue, whether or not the appellant had a right to appeal under this section. In proceedings under subsection 9(1) of the Act, the Registrar receives a request from an applicant to give public notice in the Trade-marks Journal of its adoption and use of an official mark, in this case, PARMA & Design. Under subparagraph 9(1)(n)(iii) of the Act, there is no opportunity for representations by persons opposed to the publication thereunder. Presumably, the Registrar reviews the request for publication and determines whether the applicant meets the requirement of the section and if it does, it then publishes the notice in the Trade-marks Journal. This is the
time when someone, such as the appellant, would become aware of the Registrar's decision to publish the mark. The appellant was not a party to the proceedings before the Registrar. The question now becomes - Does the appellant have a right to appeal the Registrar's decision to publish the mark pursuant to subparagraph 9(1)(n)(iii) of the Act via an appeal under section 56 of the Act?
| [24] One of the major difficulties facing the appellant is that it was not a party to the |
proceedings before the Registrar. This case is not about an appeal pursuant to section 56 by an applicant who was refused publication under subparagraph 9(1)(n)(iii), but is an appeal by a third party purportedly affected by the publication.
| [25] This Court has discussed the mechanisms of a review or appeal of the decision of |
the Registrar made pursuant to subparagraph 9(1)(n)(iii) in a number of decisions. In
Canadian Olympic Association v. USA Hockey Inc. (1999) 3 C.P.R. (4th) 759 (F.C.A.) at page 260, Desjardins J.A. stated:
Whether the appropriate procedure for the appellant was an appeal or an application for judicial review need not be decided. We are satisfied that the bringing of an action to challenge the implicit decision of the Registrar that the Respondents USA BASKETBALL and USA HOCKEY INC. were "public authorit[ies]" for the purposes of subparagraph 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13, was not the correct procedure.
| [26] And in Magnotta Winery Corp. v. Vintners Quality Alliance of Canada (1999) 1 |
C.P.R. (4th) 68 (F.C.T.D.) Reed J. stated at pages 75 and 76:
Counsel for the VQA responded that: (1) Magnotta could not proceed understion section 57 to have the official mark expunged from the Register because it is not a mark that is on the Register; (2) Magnotta had no right to appeal the Registrar's decision under section 56 of the Trade-marks Act because it was not a party to the Registrar's decision, and in any event it was out of time to launch such an appeal; (3) Magnotta could not proceed for judicial review under section 18 of the Federal Court Act, R.S.C. 1985, c. F-7 because it did not have a legal interest in the decision at the time the decision was made, and it was in any event out of time for filing such an application.
It is not as clear whether an appeal by the applicants might lie under section 56 of the Trade-marks Act. Subsection 56(1) states:
| 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. |
In Canadian Olympic Assn. V. USA Hockey Inc. (1997), 74 C.P.R. (3d) 348 (F.C.T.D.) At p. 350, Associate Chief Justice Jerome stated that there was no provision allowing for the revocation of an official mark, nor for rescinding a Registrar's decision to give public notice of the adoption and use of an official mark. He continued however, "any remedy which the plaintiff might have had with respect to the Registrar's decision, assuming it had standing, was to launch an appeal". A similar statement is found in Canadian Olympic Assn. V. USA Basketball, [1979] F.C.J. No. 825 (QL) (June 13, 1997) para. 7 [summarized 72 A.C.W.S. (3d) 345]. At the same time, in the text previously referred to, Hughes on Trade-marks, at pp. 453-7, note 27, it is noted that these statements are believed to be in error since there is no proceeding concerning a paragraph 9(1)(n) notice that a person other than the applicant for that notice could appeal.
And at page 79:
I return then to the question whether a judicial review application is in any event the appropriate procedure. It is my understanding that other applicants have commenced actions by appeal under section 56 (e.g. T-2127-98). As noted above, it is not clear whether this is the correct procedure. Certainly, a judicial review application is well suited to a situation in which no notice has been given to an interested party and I note that courts have implied such requirements into legislative procedures when they have not been statutorily required. Counsel for the applicants if of the view that a section 18.1 judicial review application is the more legally correct way to proceed. I have no doubt that what is correct will not be decided by this Court. It will be for the Court of Appeal to decide. There may, therefore, be merit in having applications instituted pursuant to both routes proceeding simultaneously. Insofar as the need for a legal interest to commence a judicial review application is concerned, I am not persuaded that only those who have participated in the proceeding leading to the decision that it is sought to be reviewed have such an interest. This is so at least in the situation in which the interested person has not been given notice of, nor an opportunity to participate in, that process.
| [27] The final decision which deals with the appeal or review of the decisions of the |
Registrar made under subparagraph 9(1)(n)(iii) is Ontario Association of Architects v. Association of Architectural Technologists of Ontario (October 26, 2000), Docket No. T-1157-99 (F.C.T.D.) (the "Architects' case"). In that case, the applicants sought an order reversing a decision of the Registrar of Trade-marks whereby the Registrar gave public notice pursuant to subparagraph 9(1)(n)(iii) of the Act of the use and adoption by the respondent, Association of Architectural Technologists of Ontario, of certain official marks. As is obvious from the decision of McKeown J. the application, although stated at the hearing to be under section 56 of the Act, made no specific reference to section 56 in the application itself. In the end, McKeown J. ruled that the matter was before him by way of judicial review. He stated at pages 5 - 6 of the decision:
The Applicant brought this matter before the Court by way of an application. The Applicant stated in its submissions that the application was brought by way of an appeal under section 56 of the Trade-marks Act and Rule 300 of the Federal Court Rules which requires that an appeal under section 56 be brought by way of an application. However, the application itself makes no reference to an appeal under section 56.
The application seeks "an order reversing the decision of the Registrar of Trade-marks . . . to give public notice of the adoption and use by the Respondent" of the official marks and further, "that the publication of the official marks . . . in the Trade-marks Journal dated April 28, 1999 was void ab initio and has no force or effect."
The Applicant was not a party to the matter before the Registrar and in my view has no standing to proceed by way of appeal. However, the Applicant certainly has an interest in these official marks. Indeed, the Applicant has an interest in the Registrar's decision because section 11 of the Trade-marks Act prohibits any person from using, as a trade-mark or otherwise, any official mark. As such, where no other avenue of appeal is available, judicial review will be available. In my view, the matter is properly before me as an application for judicial review pursuant to section 18.1 of the Federal Court Act.
| [28] Although the right of appeal granted by subsection 56(1) of the Act is not limited |
to any person, this does not mean that any person can file a notice of appeal. As Pinard J. of this Court stated in Les Restaurants Pacini Inc. (successor in title to Groupe Resto Inc.) V. Pachino's Pizza Limited (October 28, 1994), Docket No. T-3149-92 (F.C.T.D.) at page 4:
In my view, although the statutory appeal provided for by s. 56(1) is not expressly reserved to anyone in particular, that does not mean that any person may exercise this exceptional right. The following comments by the Supreme Court of Canada on the exceptional nature of the right of appeal are worth recalling:
| We think that an appeal, which is unknown to the common law, must be given by statute in such clear and explicit language that the right to appeal cannot be doubted. |
| . . . . . . |
| The right of appeal is an exceptional right. That all the substantive and procedural provisions relating to it must be regarded as exhaustive and exclusive, need not be expressly stated in the statute. That necessarily flows from the exceptional nature of the right. |
| [29] I agree with the finding of McKeown J. in the Architects', supra case where he |
found that the appellant did not have standing to pursue an appeal under subsection 56(1) of the Act as he was not a party to the matter before the Registrar. I would therefore hold that the appellant in this case does not have the standing to pursue an appeal, under
subsection 56(1) of the Act, of the Registrar of Trade-marks' decision to publish the official mark of the respondent pursuant to subparagraph 9(1)(n)(iii) of the Act.
| [30] That, however, is not the end of the matter as the appellant, without agreeing that |
it did not have a right of appeal under subsection 56(1) of the Act, asked me to convert its appeal into an application for judicial review should I find that no right of appeal existed. The respondent argued that I should not do so without the applicant first applying to obtain an extension of time to file its judicial review application as it is beyond the time for filing the judicial review. As well, the respondent stated that the judicial review and application for extension of time should be fully argued with proper evidence before the Court. I agree with the respondent, however, I wish to state that my decision with respect to the unavailability of an appeal does not serve to bar the appellant from making an application for an extension of time to file a judicial review application or to make a motion to convert its appeal to a judicial review. This is only fair since the appellant raised the issue of a judicial review and the conversion at the hearing before me.
| [31] Because of my disposition of the appeal, it is not necessary to deal with the other |
issues raised in the Notice of Appeal.
| [32] The respondent shall have its costs of the appeal. |
ORDER
| [33] IT IS ORDERED that the appeal is dismissed, subject to my remarks in |
paragraph 30 of this decision.
| [34] IT IS FURTHER ORDERED THAT the respondent shall have its costs of this |
appeal.
"John A. O'Keefe"
J.F.C.C.
Toronto, Ontario
November 28, 2000
FEDERAL COURT OF CANADA
TRIAL DIVISION
Names of Counsel and Solicitors of Record
| COURT NO.: T-647-98 |
| STYLE OF CAUSE: MAPLE LEAF MEATS INC. |
Appellant
- and -
CONSORZIO DEL PROSCIUTTO DI PARMA
and
THE REGISTRAR OF TRADE-MARKS
Respondents
PLACE OF HEARING: TORONTO, ONTARIO
DATES OF HEARING: THURSDAY AND FRIDAY, JUNE 22-23, 2000
REASONS FOR ORDER
| AND ORDER BY: O'KEEFE J. |
| DATED: TUESDAY, NOVEMBER 28, 2000 |
APPEARANCES:
Mr. James Buchan
Mr. Dan McKay
For the Appellant
Mr. Brian Edmonds
Ms. Kirsten Thompson
For the Respondents
SOLICITORS OF RECORD: Gowling Strathy & Henderson
| (Cont'd) Barristers & Solicitors, Patent Trade Mark Agents |
| 4900 Commerce Court West |
| P.O. Box 438, Station Commerce Court |
Toronto, Ontario
M5L 1J3
| For the Appellant |
| McCarthy Tétrault |
Barristers & Solicitors
4700 TD Bank Tower, P.O. Box 48
Station Toronto Dominion
Toronto, Ontario
M5K 1E6
| For the Respondents |
FEDERAL COURT OF CANADA
Date: 20001128
Docket: T-647-98
Between:
MAPLE LEAF MEATS INC.
Appellant
- and -
CONSORZIO DEL PROSCIUTTO DI PARMA
and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER AND ORDER