[2001] 1 F.C. 577
T-1157-9
Ontario Association of Architects (Applicant)
v.
Association of Architectural Technologists of Ontario (Respondent)
Indexed as: Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario (T.D.)
Trial Division, McKeown J.—Toronto, September 5; Ottawa, October 26, 2000.
Trade marks — Official marks — Application for order reversing Registrar of Trade-marks’ decision to give public notice pursuant to Trade-marks Act, s. 9(1)(n)(iii) of use, adoption by respondent of “architectural technician”, “architectural technologist”, French versions thereof as official marks — All architects licensed to practice in Ontario members of applicant, Ontario corporation — Applying combined test of control, influence, purpose to promote public good, respondent “public authority” for purposes of Trade-marks Act, ss. 9, 11 — Respondent creature of statute, controlled by legislature creating it — All monies made must be used to achieve objects, including establishment, maintenance, enforcement of strict rules of ethical conduct for members, and to foster attainment of highest standard of quality, competence — Service to profession not detracting from duty to public in regulating profession — Little evidence of actual use of official marks—To require more than bare assertion official marks adopted, used by respondent imposing duty not imposed on trade mark applicants — Some evidence respondent adopted, used marks as of date of request for public notice — No error in finding respondent adopted, used marks as official marks itself and through members as licensees.
Trade marks — Practice — Parties — Standing — Application for order reversing Registrar of Trade-marks’ decision to give public notice pursuant to Trade-marks Act, s. 9(1)(n)(iii) of use, adoption by respondent of “architectural technician”, “architectural technologist”, French versions thereof as official marks — As not party to matter before Registrar, applicant not having standing to appeal under s. 56 — But as Ontario corporation having as members all architects licensed to practice in Ontario, has interest in official marks, particularly as s. 11 prohibiting use of official mark as trade mark — Where no other avenue of appeal, judicial review pursuant to Federal Court Act, s. 18.1 available.
Federal Court Jurisdiction — Trial Division — Application for order reversing Registrar of Trade-marks’ decision to give public notice pursuant to Trade-marks Act, s. 9(1)(n)(iii) of use, adoption by respondent of “architectural technician”, “architectural technologist”, French version thereof as official marks — All architects licensed to practice in Ontario members of applicant, Ontario corporation — Applicant not having standing to appeal under Trade-marks Act, s. 56, but has interest in official marks — Where no other avenue of appeal, judicial review pursuant to Federal Court Act, s. 18.1 available.
Administrative law — Judicial review — Application for order reversing Registrar of Trade-marks’ decision to give public notice pursuant to Trade-marks Act, s. 9(1)(n)(iii) of use, adoption by respondent of “architectural technician”, “architectural technologist”, French versions thereof as official marks — Standard of review of Registrar’s decision reasonableness simpliciter.
This was an application for an order reversing a decision of the Registrar of Trade-marks to give public notice, pursuant to Trade-marks Act, subparagraph 9(1)(n)(iii) of the use and adoption by the respondent of “architectural technician”, “architecte-technicien”, “architectural technologist”, “architecte-technologue” as official marks. The respondent is a corporation continued under the Association of Architectural Technologists of Ontario Act, 1996, pursuant to which the respondent may prohibit any person not registered as a member of the respondent (with two exceptions) from using the following designations: architectural technician or architecte-technicien; architectural technologist or architecte-technologue; registered building technologist; and registered building technician. Those exceptions are holders of a licence, certificate of practice or temporary licence issued under the Architects Act; or a person who is a member of a class that is permitted to use the title “architect” or “architecte” under Architects Act, paragraph 46(8)(c). The applicant stated that the application was brought by way of an appeal under Trade-marks Act, section 56 and Federal Court Rules, 1998, rule 300 which requires that an appeal under section 56 be brought by way of application, but the application itself made no reference to an appeal under section 56.
The issues were: (1) whether a third party may request review of the Registrar’s decision to give public notice of an official mark and, if so, whether appeal or judicial review is the proper avenue for such review; (2) what is the appropriate standard of judicial review; (3) whether the respondent is a “public authority” for the purposes of Trade-marks Act, sections 9 and 11; and (4) whether the respondent adopted and used its marks as required under Trade-marks Act, section 9.
Held, the application should be dismissed.
(1) The applicant was not a party to the matter before the Registrar and had no standing to proceed by way of appeal. However, as a corporation continued under the Ontario Architects Act, having as members all architects licensed to practice in Ontario, it has an interest in these official marks, particularly since Trade-marks Act, section 11 prohibits any person from using, as a trade-mark or otherwise, any official mark. Where there is no other avenue of appeal, judicial review pursuant to Federal Court Act, section 18.1 will be available.
(2) The appropriate standard of review of the Registrar’s decision was reasonableness simpliciter.
(3) Applying the combined test of control, influence and purpose to promote the public good, the respondent is a “public authority” for the purposes of Trade-marks Act, sections 9 and 11. The respondent is a not-for-profit corporation continued pursuant to provincial legislation. It is a creature of statute and is controlled by the legislature that created it. Its enabling legislation can be amended by the Government of Ontario at any time. All monies earned by the respondent must be used to carry out its objects which include the establishment, maintenance and enforcement of strict rules of ethical conduct for its members and fostering the attainment of the highest standard of quality and competence. While the respondent may also serve its profession, such service does not detract from the duty it owes to the public in regulating its profession. Although the Association does not receive any government funding and it does act to advance its own interests, it also seeks to advance the public interest in running its affairs. Quasi-adjudicative powers which are subject to appeal have been delegated to it. As such, the Legislature has impressed upon the respondent duties of an essentially public character. The respondent is both a professional regulatory body and an advocate for the profession. Revenues spent in furtherance of the respondent’s public duty to regulate the profession do thereby benefit the public.
(4) Official marks must be actual, not proposed marks. Unlike trade marks, there is no deemed adoption or use thereof. There was little evidence of actual adoption and use by the respondent of the official marks. The request for public notice contained the bare assertion that the official marks had been adopted and used by the applicant in association with services. However, to require more would be to impose on the public authority a duty to provide evidence of actual adoption and use on requesting public notice. Such a duty is not imposed on trade-mark applicants, where all the Registrar requires is a statement of the date of first use of the trade-mark. The onus lies on the applicant to provide some evidence to substantiate its objection. There was some evidence on the record that the respondent had adopted and used the marks as of the date of the request for public notice. The Registrar did not err in finding the respondent had adopted and used the marks as official marks itself and through its members as licensees.
STATUTES AND REGULATIONS JUDICIALLY CONSIDERED
Architects Act, R.S.O. 1990, c. A.26, ss. 2(2), 46(8)(c).
Association of Architectural Technologists of Ontario Act, 1996, S.O. 1996, c. Pr20, s. 2.
Business Corporations Act, R.S.O. 1990, c. B.16.
Federal Court Act, R.S.C., 1985, c. F-7, s. 18.1 (as enacted by S.C. 1990, c. 8, s. 5).
Federal Court Rules, 1998, SOR/98-106, r. 300.
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 9(1)(n)(iii), 11, 56.
CASES JUDICIALLY CONSIDERED
APPLIED:
Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (2000), 5 C.P.R. (4th) 180; 252 N.R. 91 (C.A.); Registrar of Trade Marks v. Canadian Olympic Association, [1983] 1 F.C. 692 (1982), 139 D.L.R. (3d) 190; 67 C.P.R. (2d) 59; 43 N.R. 52 (C.A.); Anne of Green Gables Licensing Authority Inc. v. Avonlea Traditions Inc. (2000), 4 C.P.R. (4th) 289 (Ont. S.C.J.).
CONSIDERED:
Benson & Hedges (Canada) Limited v. St. Regis Tobacco Corporation, [1969] S.C.R. 192; (1968), 1 D.L.R. (3d) 462; 57 C.P.R. 1; 39 Fox Pat. C. 207.
APPLICATION for an order reversing a Registrar of Trade-marks’ decision to give public notice, pursuant to Trade-marks Act, subparagraph 9(1)(n)(iii) of the use and adoption by the respondent of the official marks “architectural technician”, “architecte-technicien”, “architectural technologist”, “architecte-technologue”. Application dismissed.
APPEARANCES:
Glen A. Bloom for applicant.
M. Virginia MacLean and Sarah M. Robertson for respondent.
SOLICITORS OF RECORD:
Osler, Hoskin & Harcourt, Ottawa, for applicant.
Cassels Brock & Blackwell, Toronto, for respondent.
The following are the reasons for order rendered in English by
[1] McKeown J.: The applicant, Ontario Association of Architects makes an application for an order reversing a decision of the Registrar of Trade-marks (the Registrar) to give public notice, pursuant to subparagraph 9(1)(n)(iii) of the Trade-marks Act, R.S.C., 1985, c. T-13, of the use and the adoption by the respondent, Association of Architectural Technologists of Ontario, of the following official marks (the AATO marks):
ARCHITECTURAL TECHNICIAN
ARCHITECTE-TECHNICIEN
ARCHITECTURAL TECHNOLOGIST
ARCHITECTE-TECHNOLOGUE
[2] The issues are: (1) whether or not a third party may request review of a decision of the Registrar to give public notice of an official mark and if so, which is the proper avenue for such review: appeal or judicial review; (2) what is the appropriate standard of review; (3) is the respondent a “public authority” for the purposes of sections 9 and 11 of the Trade-marks Act; and (4) has the respondent adopted and used its marks as required under section 9 of the Trade-marks Act?
FACTS
[3] The applicant is the Ontario Association of Architects, a corporation continued under the provisions of the Architects Act, R.S.O. 1990, c. A.26 (the Architects Act). Pursuant to subsection 2(2) of the Architects Act, the principle object of the applicant is to regulate the practice of architecture and to govern its members and holders of certificates of practice and licences to practice architecture. All architects licensed to practice in Ontario are members of the applicant.
[4] The respondent is the Association of Architectural Technologists of Ontario (AATO), a corporation without share capital continued pursuant to its enabling statute, Association of Architectural Technologists of Ontario Act, 1996, S.O. 1996, c. Pr20 (the AATO Act). According to section 2 of the AATO Act, four of the principal objects of the respondent are:
(a) to increase the knowledge, skill and proficiency of architectural technologists, architectural technicians, building technologists and building technicians and to grant accreditation and certification to such persons;
(b) to foster the attainment of the highest standard of quality and competence in the field of architectural technology;
(c) to establish, maintain and enforce strict rules of ethical conduct for members of the Association in the field of architectural technology; and
(d) to inform the public of the purposes and aims of the Association.
[5] Pursuant to the AATO Act, the respondent may prohibit any person not registered as a member of the respondent from using the following designations (the designations):
(a) architectural technician or architecte-technicien;
(b) architectural technologist or architecte-technologue;
(c) registered building technologist; and
(d) registered building technician.
[6] By way of historical background, I note that the applicant made submissions in opposition to the private member’s bill which resulted in the AATO Act. As a result, exceptions were made which limit the AATO’s power to prohibit use of the designations. These exceptions allow two classes of persons to use the designations without registering as members of the AATO, namely:
(a) A holder of a licence, certificate of practice or temporary licence issued under the Architects Act; or
(b) A person who is a member of a class that is permitted to use the title “architect” or “architecte” under paragraph 46(8)(c) of the Architects Act.
[7] On October 5, 1998, the respondent wrote to the Registrar requesting public notice of the adoption and use by the respondent of the AATO marks, pursuant to subparagraph 9(1)(n)(iii) of the Trade-marks Act. As per the respondent’s request, the Registrar gave public notice of the respondent’s adoption and use of the AATO marks by way of publication of a notice in the Trade-marks Journal on April 29, 1999.
[8] As stated, this public notice of the adoption and use of the AATO marks was done pursuant to subparagraph 9(1)(n)(iii) of the Trade-marks Act, which states:
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 …
…
(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] The applicant now makes an application for an order reversing the Registrar’s decision to issue a public notice pursuant to subparagraph 9(1)(n)(iii) of the Trade-marks Act.
ANALYSIS
[10] 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, 1998 [SOR/98-106] 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.
[11] 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.”
[12] 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 [R.S.C., 1985, c. F-7 (as enacted by S.C. 1990, c. 8, s. 5)].
[13] Having decided that the matter is before me by way of judicial review, I must decide what is the appropriate standard of review. It seems to me that the applicable standard of review would be the same regardless of whether this proceeding was an appeal or a judicial review.
[14] The traditional standard of review regarding trade-mark oppositions is set out by Ritchie J. in Benson & Hedges (Canada) Limited v. St. Regis Tobacco Corporation, [1969] S.C.R. 192, at page 200:
In my view the Registrar’s decision on the question of whether or not a trade mark is confusing should be given great weight and the conclusion of an official whose daily task involves the reaching of conclusions on this and kindred matters under the Act should not be set aside lightly but, as was said by Mr. Justice Thorson, then President of the Exchequer Court, in Freed and Freed Limited v. The Registrar of Trade Marks et al:
… reliance on the Registrar’s decision that two marks are confusingly similar must not go to the extent of relieving the judge hearing an appeal from the Registrar’s decision of the responsibility of determining the issue with due regard to the circumstances of the case.
[15] Rothstein J.A. followed this position in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), where he stated at page 168:
Having regard to the Registrar’s expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter.
Accordingly, in the case before me the appropriate standard of review of the decision of the Registrar is reasonableness simpliciter.
[16] I must now determine whether or not the respondent is a “public authority” for purposes of sections 9 and 11 of the Trade-marks Act. The test for determining this question is set out in Registrar of Trade Marks v. Canadian Olympic Association, [1983] 1 F.C. 692 (C.A.), where the Court of Appeal stated at page 699 that:
(a) [the organization must have] a duty to the public;
(b) there must be a significant degree of governmental control over the organization; and
(c) any profit earned by the organization must be for the benefit of the public and not for private benefit.
However, in applying the three-part test to the facts in the Canadian Olympic Association case, the Federal Court of Appeal did not actually apply the first branch of the test. Some cases since that time have dropped the first element of the test for public duty while others have restated it.
[17] Wilson J. of the Ontario Superior Court of Justice in Anne of Green Gables Licensing Authority Inc. v. Avonlea Traditions Inc. (2000), 4 C.P.R. (4th) 289, at page 337 applied “the combined test of control, influence and purpose to promote the public good” and concluded that the Anne authority is a public authority. I reach the same conclusion using this test in the matter before me.
[18] The Registrar initially had concerns with respect to whether or not the respondent constituted a public authority. In particular, he was concerned about whether or not the respondent was subject to a significant degree of government control. The respondent is a not-for-profit corporation continued pursuant to provincial legislation (the AATO Act), which originated as Private Member’s Bill Pr40. The respondent is a creature of statute and is controlled by the legislature that created it. Its enabling legislation is capable of being amended or repealed by the Government of Ontario at any time.
[19] Under section 13 of the AATO Act, the Association is not permitted to make a profit, and all monies that it does make must be used to carry out its objects. The objects, as stated above, include the establishment, maintenance and enforcement of strict rules of ethical conduct for its members and to foster the attainment of the highest standard of quality and competence. While the respondent may also serve its profession, such service does not detract from the duty the respondent owes to the public in regulating its profession.
[20] There are some factors which do tend to argue against finding that the AATO is subject to significant government control. For instance, the AATO does not receive any government funding and it does act to advance its own interests. However, in my view, in running its affairs, the Association also seeks to advance the public interest. The Ontario legislature has delegated to the AATO the responsibility for regulating its profession, which is essentially a public administrative function. It has been delegated quasi-adjudicative powers which are subject to appeal. As such, in my view, the Legislature has impressed upon the respondent duties of an essentially public character.
[21] The applicant attempts to argue otherwise by pointing out that the degree of government control exercised over the AATO does not differ in any significant way from that exercised over corporations under the Ontario Business Corporations Act, R.S.O. 1990, c. B.16. Therefore, the applicant argues, the AATO more closely resembles a private organization than it does a public authority. It is important to note that many organizations, public and private, share a similar relationship to the government in terms of the structure of their by-laws and governing legislation. Therefore, this argument has little relevance in terms of describing the character of the AATO. The applicant also indicated that the respondent’s decisions on membership and discipline may be appealed to the Ontario Divisional Court, and that the Attorney General, as opposed to the AATO itself, is responsible for prosecuting offences under the AATO Act. In the applicant’s view, this indicates that the AATO lacks the powers associated with a public authority. However, these factors are also present in many other cases where the authority is considered to be a public authority. These factors are of such a minor nature that they do not change my view that the respondent fulfills duties of an essentially public nature. Accordingly, I conclude that the respondent is a public authority.
[22] Many similar arguments can be made with respect to the respondent having a duty to the public. In my view, the AATO does have a duty to the public as well as to its own members. I am also satisfied that any profit earned must be for the benefit of the public and not for private benefit. The applicant submits that while members do not personally profit from the respondent’s activities, the respondent’s enabling statute does not prohibit it from retaining revenues and applying these to the benefit of its members in furtherance of its objects. However, the respondent is both a professional regulatory body and an advocate for the profession. Revenues spent in furtherance of the respondent’s public duty to regulate the profession do thereby benefit the public. Therefore, for purposes of sections 9 and 11 of the Trade-marks Act, the respondent is a public authority.
[23] Finally, I must determine whether the respondent adopted and used its marks as required under section 9 of the Trade-marks Act. An official mark takes precedence over any provision in any Act. It is important to note the difference between a trade-mark and an official mark. An official mark is not defined under the Act. It is not a trade-mark and there is no deemed adoption or deemed use as under the trade-mark sections of the Trade-marks Act. Official marks must be actual marks and cannot be proposed marks. Accordingly, on requesting that the Registrar give public notice of the adoption and use of an official mark in association with wares or services, the applicant must actually have adopted and used the official mark in association with wares or services.
[24] There is little evidence on this point. The request for public notice contains the bare assertion that “[t]he official marks have been adopted and used by the applicant in association with services”. However, to require more would be to impose on the public authority a duty to provide evidence of actual adoption and use on requesting public notice. Such a duty is not imposed on trade-mark applicants, where all the Registrar requires is a statement of the date of first use of the trade-mark.
[25] In my view, the onus lies on the applicant to provide some evidence to substantiate its objection. There is some evidence on the record that the respondent had adopted and used the AATO marks as of the date of the request for public notice. The Registrar did not err in finding the respondent had adopted and used the AATO marks as official marks itself and through its members as licensees.
[26] The applicant’s application for an order reversing the decision of the Registrar of Trade-marks is dismissed. Costs to the respondent.