Date: 20050316
Docket: A-324-04
Citation: 2005 FCA 99
CORAM: DESJARDINS J.A.
BETWEEN:
FOOT LOCKER CANADA INC.
formerly VENATOR GROUP CANADA INC.
Appellant
(Applicant)
and
R. STEINBERG and
THE REGISTRAR OF TRADE-MARKS
Respondents
(Respondent)
Heard at Ottawa, Ontario, on March 16, 2005.
Judgment delivered from the Bench at Ottawa, Ontario, on March 16, 2005.
REASONS FOR JUDGMENT OF THE COURT BY: ROTHSTEIN J.A.
Date: 20050316
Docket: A-324-04
Citation: 2005 FCA 99
CORAM: DESJARDINS J.A.
BETWEEN:
FOOT LOCKER CANADA INC.
formerly VENATOR GROUP CANADA INC.
Appellant
(Applicant)
and
R. STEINBERG and
THE REGISTRAR OF TRADE-MARKS
Respondents
(Respondents)
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Ottawa, Ontario, on March 16, 2005.)
[1] This is an appeal from the Federal Court ((2004), 253 F.T.R. 109) involving the trade-mark WOOLWORTH (Registration No. 368206). The Hearing Officer in the Office of the Registrar of Trade-marks ("Registrar") expunged the trade-mark pursuant to section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13, because the evidence before her was insufficient for her to determine when the trade-mark was used. The appellant ("Venator") appealed to the Federal Court under section 56 of the Act. The evidence before the Federal Court judge satisfied him that the trade-mark was used at the relevant time. However, he was not satisfied that it was Venator that was using the trade-mark at that time. He therefore dismissed the appeal.
[2] Venator now appeals to this Court. Venator says the fact that it, as registrant, used the trade-mark was accepted by the Registrar and that on a reasonableness review of the Registrar's decision, there was no basis for the Federal Court judge to interfere with that finding. If that finding was left undisturbed and the judge was satisfied on the timing issue, he should have allowed the appeal and ordered Venator's WOOLWORTH trade-mark maintained on the Trade-mark Register.
[3] The parties are agreed that there was no new evidence in the Federal Court as to whether it was Venator that was using the WOOLWORTH trade-mark. In the absence of new evidence on a specific issue, the decision of the Registrar on that issue is to be reviewed on a standard of reasonableness simpliciter. See Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 at paragraph 29, and Canadian Council of Professional Engineers v. APA - The Engineered Wood Assn. (2000), 7 C.P.R. (4th) 239 at paragraphs 37-38.
[4] Before the Registrar, Venator filed the December 15, 2000, Affidavit of Ronald Stinson, Director of Finance at the Venator Group Canada Inc. He stated that he was aware of the facts he deposed to "as a result of personal knowledge or from the records of Venator Canada to which I have access". At paragraph 6 of his affidavit, he set forth the "current sales of the trade-mark WOOLWORTH in association with the retail store services" for 1999 and from February 1 to December 2, 2000.
[5] The Registrar inferred that, from the sales figures of the trade-mark WOOLWORTH in paragraph 6 of that affidavit, the retail store services were provided by Venator. At paragraph 68 of his reasons, the Federal Court judge explains why the Registrar came to that conclusion. He stated:
There is no specific mention in the Decision that the sales figures can be attributed to the registrant in some way. The Hearing Officer merely assumes that this is the case. This is probably because Mr. Stinson, in paragraph 1 of Stinson Affidavit 1, says that he is aware of the facts in the affidavit as a result of his personal knowledge and his access to the records of Venator Group Canada Inc. where he was a Director of Finance when he swore Stinson Affidavit 1 on December 15, 2000. Venator Group Canada Inc. was recorded on the register as the registered owner of the Trade-Mark at the time the Section 45 Notice was issued.
[6] Nonetheless, the judge himself found that the evidence did not connect Venator to the WOOLWORTH sales figures. He stated at paragraph 77 of his reasons:
Because the Applicant chose to demonstrate use during the relevant period by reference to a specific store at a specific location and by reference to sales figures, it was particularly crucial in this case to connect the registered owner of the Trade-Mark to those specific facts. In my opinion, the gap in the Stinson affidavits that we have to jump to connect such use with the registered owner is too great. It is such a fundamental issue that the omission to deal with it looks suspicious. It would have been so easy to place the issue beyond doubt in a context where the need to connect use with ownership is pretty elementary. I do not think this can be overlooked as a mere technicality. ...
[7] It would certainly be sound practice for registrants to be explicit in their affidavits about timing and use of a trade-mark by the registrant so that the Registrar is not put in the position of having to draw inferences on these issues. However, in this case, the Federal Court judge was conducting a reasonableness review. We are of the opinion that, while the judge stated that the standard of review he should apply was reasonableness simpliciter, he in fact reviewed the Registrar's decision on a correctness standard.
[8] In his view, the gap in the evidence between Venator and the use of the WOOLWORTH trade-mark was too great to bridge. In coming to that conclusion, he applied his own line of analysis to the evidence that was before the Registrar. That evidence did not trouble the Registrar and she expressed no concern on that issue. The judge himself explained why the Registrar was willing to attribute use of the WOOLWORTH trade-mark to Venator. Once he did that, he was obliged to defer to her decision on that point. In Law Society of New Brunswick v. Ryan, [2003] 1 S.C.R. 247, Iacobucci J. stated at paragraph 55:
A decision will be unreasonable only if there is no line of analysis within the given reasons that could reasonably lead the tribunal from the evidence before it to the conclusion at which it arrived. If any of the reasons that are sufficient to support the conclusion are tenable in the sense that they can stand up to a somewhat probing examination, then the decision will not be unreasonable and a reviewing court must not interfere (see Southam, at para. 56). This means that a decision may satisfy the reasonableness standard if it is supported by a tenable explanation even if this explanation is not one that the reviewing court finds compelling (see Southam, at para.79).
[9] The judge erred in not applying the reasonableness standard to his review of the decision of the Registrar on the issue of the connection between the trade-mark WOOLWORTH and Venator. Had he deferred to the Registrar on this issue, having satisfied himself on the evidence before him that the WOOLWORTH trade-mark was used at the relevant time, he should have allowed Venator's appeal.
[10] This appeal will therefore be allowed with costs here and in the Federal Court, the decision of the Federal Court will be set aside. The decision of the Registrar of Trade-marks will be set aside and Registration No. 368206 for the trade-mark WOOLWORTH will be maintained.
"Marshall Rothstein"
J.A.
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-324-04
APPEAL FROM AN ORDER OF THE FEDERAL COURT DATED MAY 18, 2004 (DOCKET NUMBER T-2094-02)
STYLE OF CAUSE: Footlocker Group Canada Inc. et al. v. R. Steinberg et al
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: March 16, 2005
REASONS FOR JUDGMENT
OF THE COURT: (Desjardins, Rothstein & Sexton, JJ.A.)
DELIVERED FROM THE
BENCH BY: Rothstein, J.A.
APPEARANCES:
|
Mr. Todd Burke Ms. Rose-Marie Perry, Q.C. |
FOR THE APPELLANT
|
|
Mr. Richard Uditsky |
FOR THE RESPONDENTS |
SOLICITORS OF RECORD:
|
Gowling Lafleur Henderson LLP Ottawa, Ontario |
FOR THE APPELLANT
|
|
Mendelsohn General Partnership Montreal (Quebec) |
FOR THE RESPONDENTS |