TRADE MARKS |
Practice |
Canada Post Corp. v. Epost Innovations Inc.
T-1022-99
2001 FCT 305, Hargrave P.
6/4/01
26 pp.
Main proceeding trade-marks case wherein Canada Post takes exception to use by defendant of words "Cypost" and "Epost" as trade name or domain name on basis words confusing or likely to be confused with Canada Post's official marks, trade-marks and trade names--Motion to strike part of defence and counterclaim wherein defendant using Trade-marks Act, s. 7(e) as defence and attacking constitutionality of Trade-marks Act, s. 9, on basis plain, obvious and beyond doubt pleading will not succeed--Canada Post relying on Act, s. 9(1)(n)(iii) for protection of its marks--Defendant arguing Canada Post's use of latter provision to prevent use of "Cypost" and "Epost" constituting business practice contrary to honest commercial usage in Canada, contrary to Act, s. 7(e)--Also arguing Act, s. 9(1)(n)(iii) expropriating proprietary rights of persons to use any mark, as trade-mark or otherwise, in respect of which Registrar has given public notice of adoption and use as official mark, therefore encroaching on exclusive provincial legislative jurisdiction in relation to property and civil rights in province contrary to Constitution Act, 1867, s. 92(13); contrary to freedom of speech and expression in Canadian Bill of Rights and Charter; contrary to equality provisions of Bill of Rights and Charter--Motion allowed in part--Leaving aside fact case law clear enough authority to allow Court to strike out pleas based on Act, s. 7(e), as ultra vires federal government, F.C.T.D. decision in Levi Strauss & Co. v. L.A. Jazz Ltée (1995), 61 C.P.R. (3d) 302 clear authority as to unconstitutionality of Act, s. 7(e) in all situations--Relevant paragraphs of defence and counterclaim therefore disclosing no reasonable cause of action and should be struck out--Act, s. 9(1)(n)(iii) constitutionally valid as merely rounding out trade-marks scheme--Plea not only disclosing no reasonable claim, but also bringing up immaterial aspect clearly within ambit of r. 221(1)(d)--Relevant paragraphs of counterclaim therefore struck out--As to argument grant of absolute rights in official mark limiting freedom of speech and expression under Bill of Rights and Charter, reliance on Charter, s. 2(b) arguable and indeed, in RJR--McDonald v. Canada, [1995] 3 S.C.R. 199, tobacco legislation restricting advertising struck down on grounds violated Charter, s. 2(b)--Therefore, while pleas may be difficult to establish, relevant paragraphs disclose arguable cause of action--As to argument Act, s. 9(1)(n)(iii) violating equality provisions of Bill of Rights and Charter, Canada Post unable to establish plea based on equality before law and protection of law plainly, obviously and beyond doubt will not succeed, or immaterial and may delay fair trial of action--As to argument based on enjoyment of property and due process under Bill of Rights, ss. 1(a) and 2(e), not plain and obvious pleading will not succeed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 7(e), 9(1)(n)(iii)--Constitution Act, 1867, 30 & 31 Vict., c. 3 (U.K.) (as am. by Canada Act 1982, 1982, c. 11(U.K.), Schedule to the Constitution Act, 1982, Item 1) [R.S.C., 1985, Appendix II, No. 5], s. 92(13)--Canadian Bill of Rights, S.C. 1960, c. 44 [R.S.C., 1985, Appendix III], ss. 1(a), 2(b),(e)--Canadian Charter of Rights and Freedoms, being Part I of the Constitution Act, 1982, Schedule B, Canada Act 1982, 1982, c. 11 (U.K.) [R.S.C., 1985, Appendix II, No. 44]--Federal Court Rules, 1998, SOR/98-106, r. 221(1)(d).