Pizza Nova Restaurants Limited (Applicant)
v.
Nova Foods Limited (Respondent)
Trial Division, Collier J.—Ottawa, April 17;
Toronto, April 26, 1972.
Trade marks—Expungement—Originating notice—Condi-
tional confession of judgment—Refusal to accept—Allega-
tions established at hearing—Costs—Rule 405.
Applicant applied by originating notice for expungement
of a trade mark on the ground of prior user by applicant.
Respondent filed a confession of judgment which specifical
ly did not admit the applicant's allegations. Applicant did
not accept the confession and the matter came on for
hearing. Applicant established the truth of its allegations.
Held, the trade mark must be expunged, but the final
judgment should make no reference to the grounds therefor.
While a party may file a conditional confession of judg
ment under Rule 405, the other party may refuse to accept
it, and the Court will take these matters into consideration
in awarding costs under Rule 344.
APPLICATION to expunge trade mark.
R. G. McClenahan for applicant.
R. Barrigar for respondent.
COLLIER J.—By originating notice of motion
filed on January 5, 1972, the applicant seeks an
order that the entry on the Register of Trade
Marks, Registration number 158,782 dated
October 18, 1968, be struck out. In its state
ment of facts, filed on the same day, the appli
cant's grounds are set out in paragraph 5:
5. The entry of the trade mark PIZZA NOVA as it
appears on the Register at the Trade Marks Office,
Ottawa, Canada, under No. 158,782 does not accurately
express or define the existing rights off the Respondent as
registered owner thereof in that:
(i) as between the Applicant and the Respondent, the
Applicant was the first to use the trade mark or trade
name PIZZA NOVA in Canada in association with
restaurant services and pizza and therefore the
Respondent was not the person entitled to secure regis
tration No. 158,782 for the trade mark PIZZA NOVA.
(ii) the trade mark PIZZA NOVA registered under No.
158,782 is not at this time distinctive of the registered
owner thereof (namely, the Respondent) or its wares
because the trade names PIZZA NOVA and PIZZA
NOVA RESTAURANTS LIMITED and the trade
mark PIZZA NOVA have been used by the Applicant
in Canada in relation to restaurant services and pizza
continuously to date since May 1963, and the concur
rent use of the trade mark PIZZA NOVA by the
Applicant and of the same trade mark PIZZA NOVA
by the Respondent for the same wares as set out in
registration No. 158,782 would be likely to lead to the
inference that the wares associated with such trade
marks were manufactured and sold by the same person.
Affidavit evidence in support of those
grounds was filed at the same time.
On March 1, 1972, the respondent filed a
confession of judgment. It reads as follows:
TAKE NOTICE that the Respondent herein consents to
judgment that Trade Mark Registration No. 158,782 be
expunged from the Register.
The Respondent does not admit the validity or truth of
any grounds nor of any facts relied upon by the Application
in this action.
The applicant did not accept this confession
of judgment and took the necessary steps under
Rule 483 to obtain a date for hearing. The
respondent did not join in the application for a
hearing date, nor was it - represented at the
hearing.
In view of the confession of judgment, there
will be an order striking out Trade Mark Regis
tration number 158,782 from the Register.
Counsel for the respondent asked that I make
some kind of declaration in the formal judgment
in respect to the grounds for expungement. I do
not think it proper to do so in the formal judg
ment. For what it may be worth, I find that on
the evidence before me, the applicant has
proved the grounds set forth in its originating
motion (as set out earlier). I express no opinion
as to what effect the foregoing finding may
have between the parties, nor how binding (if at
all) it may be in any other proceedings.
There remains the question of costs. The
applicant did not accept the confession of judg
ment because it felt the confession was not
unconditional, in that it did not concede the
truth or validity of the applicant's assertions.
Rule 405 of the rules of this Court does not in
words refer to a conditional confession of judg
ment, as do articles 459 and 460 of the Code of
Civil Procedure of the Province of Quebec. I
think, however, a party can under Rule 405 file
what amounts to a conditional confession of
judgment, which can be accepted or not by the
other party. If it is not accepted, then both the
confession of judgment itself and the refusal to
accept it are matters that may be considered in
awarding costs under Rule 344.
In this case, the respondent agreed to the
precise relief the applicant sought, but made
some reservations as to the grounds.
In my opinion, the circumstances here are
somewhat novel. I think the fair solution is to
award no costs to either party in respect to the
hearing. The applicant is entitled to its costs up
to and including the filing of the confession of
judgment.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.