T-2201-86
Uniroyal Ltd. (Applicant)
v.
Registrar of Trade Marks and Sanex Inc.
(Respondents)
INDEXED AS: UNIROYAL LTD. V. CANADA (REGISTRAR OF
TRADE MARKS)
Trial Division, Rouleau J.—Toronto, October 20;
Ottawa, November 10, 1986.
Judicial review — Prerogative writs — Certiorari —
Application to quash Registrar's decision allowing registration
of mark "No-Gro" — Extension of time to file opposition
denied, request for same filed with Registrar in time but not
drawn to attention of Opposition Board Chairman until after
"No-Gro" application allowed — Registrar's decision
administrative — Duty to act fairly — Court to set aside
decision where facts overlooked, error on face of record or
procedural irregularity influencing final determination —
Certiorari and mandamus allowed.
Trade marks — Registration — Application to quash deci
sion to allow registration of mark 'No-Oro" — Owner of
mark "Slo-Gro" denied extension of time to file opposition —
Request for extension filed with Registrar in time but not
drawn to attention of Opposition Board Chairman until after
"No-Gro" application allowed — Application to quash
allowed — Duty of Registrar to act fairly — Court setting
aside decision where facts disregarded or procedure over
looked — Trade Marks Act, R.S.C. 1970, c. T-10, ss. 37(1),
38, 46(1).
The respondent filed an application to register the mark
"No-Gro". The applicant, owner of the mark "Slo-Gro",
requested an extension of time of three months to file a notice
of opposition. The request, filed within the period prescribed by
the statute, was not brought to the attention of the Chairman of
the Opposition Board until after the "No-Gro" application had
been allowed. The Chairman refused to consider the request for
extension in the belief that Federal Court decisions prevented
his considering the extension application in such circumstances.
The applicant now seeks certiorari to quash the decision of the
Registrar to allow the mark "No-Gro" and a writ of man-
damus to have the request for extension considered.
Held, the application should be allowed.
The Registrar's decision is purely administrative and he has
a duty to act fairly in exercising his powers. In so doing, he
must consider and take into account all relevant factors. In
situations where the facts have been disregarded, where there is
an error on the face of the record or where there exists a
procedural irregularity which influenced the final determina-
tion of the decision, the Court should exercise its discretion and
set aside the decision or order.
CASES JUDICIALLY CONSIDERED
APPLIED:
Sharp Corp. v. Registrar of Trade Marks, [1982] 2 F.C.
248; 61 C.P.R. (2d) 63 (T.D.).
DISTINGUISHED:
Silverwood Industries Ltd. v. Registrar of Trade Marks,
[1981] 2 F.C. 428; 65 C.P.R. (2d) 169 (T.D.).
CONSIDERED:
Nicholson v. Haldimand-Norfolk Regional Board of
Commissioners of Police, [1979] 1 S.C.R. 311; 88
D.L.R. (3d) 671; Martineau v. Matsqui Institution Dis
ciplinary Board, [1980] 1 S.C.R. 602; Minister of Na
tional Revenue v. Kruger Inc., [1984] 2 F.C. 535 (C.A.).
COUNSEL:
R. Scott Jolliffe and C. Pibus for applicant.
T. Poison Ashton for respondent Sanex Inc.
C. Bell for respondent Registrar of Trade
Marks.
SOLICITORS:
Gowling & Henderson, Toronto, for appli
cant.
Sim, Hughes, Toronto, for respondent Sanex
Inc.
Deputy Attorney General of Canada for
respondent Registrar of Trade Marks.
The following are the reasons for order ren
dered in English by
ROULEAU J.: This application was heard at
Toronto, on October 20, 1986. The applicant seeks
a writ of certiorari to quash a decision of the
Registrar of Trade Marks dated July 18, 1986
allowing the trade mark "No-Gro" and a writ of
mandamus or relief in the nature thereof to con
sider the applicant's request for an extension of
time to file a notice of opposition and opposition to
the trade mark application.
The facts may be briefly summarized as follows.
The respondent Sanex Inc. filed an application
under the Trade Marks Act [R.S.C. 1970, c.
T-10] to register the name "No-Gro" on the basis
of the proposed use in association with herbicides,
insecticides, etc. The application was advertised
May 14, 1986 in the Trade Marks Journal (Vol.
33, No. 1646).
Counsel for Uniroyal Ltd. was familiar with the
use of the trade mark "Slo-Gro" by the applicant
in association with certain wares including herbi
cides and, as a result, contacted his client and
sought instructions regarding possible opposition.
Instructions were received by counsel to first
obtain an extension of time to consider filing ma
terials in opposition to the application. On June
13, 1986, within the one-month period prescribed
by subsection 37(1) of the Trade Marks Act, a
letter was filed with the Registrar requesting an
extension of time of three months to file a state
ment of opposition.
The letter on behalf of Uniroyal dated June 13,
1986 made reference to Sanex Inc. and referred to
the serial number contained in the advertisement
which appeared in the Trade Marks Journal. This
letter was stamped as acknowledged by the
Department of Consumer and Corporate Affairs
on the same day it was written, June 13, 1986. By
letter dated August 22, 1986 the Chairman of the
Trade Marks Opposition Board acknowledged
receipt of the letter dated June 13 and wrote that
unfortunately the letter was not brought to his
attention until the "No-Gro" application had pro
ceeded to allowance. The Chairman went on to
state that in light of certain decisions of the Feder
al Court he was unable to reconsider at this stage
the request for an extension of time to file an
opposition.
As of October 1, 1986 the certificate of registra
tion for the trade mark "No-Gro" had not yet
been issued because the respondent Sanex Inc. had
not yet filed a declaration of use.
The relevant sections of the Trade Marks Act
are as follows:
37. (1) Within one month from the advertisement of an
application, any person may, upon payment of the prescribed
fee, file a statement of opposition with the Registrar.
38. (1) When an application either has not been opposed and
the time for the filing of a statement of opposition has expired
or it has been opposed and the opposition has been decided
finally in favour of the applicant, the Registrar thereupon shall
allow it.
46. (1) If, in any case, the Registrar is satisfied that the
circumstances justify an extension of the time fixed by this Act
or prescribed by the regulations for the doing of any act, he
may, except as in this Act otherwise provided, extend the time
after such notice to other persons and upon such terms as he
may direct.
In the Trade Marks Journal dated June 13,
1979 the Minister of Consumer and Corporate
Affairs issued a Practice Notice concerning oppo
sition proceedings governed by subsection 37(1)
and section 46 among others. It had determined
that extensions of time created problems within
the Office and required parties involved to submit
repeated requests for extensions. The Practice
Notice directed that when extensions of time were
requested under subsection 37(1) and section 46
an extension of up to three months would be
granted.
Counsel for the applicant submitted that, pursu
ant to the discretion granted the Registrar under
subsection 46(1), it has been customary for an
automatic extension of three months to be allowed;
that his request was made on time pursuant to
subsection 37(1); that the Registrar when making
his decision, though unaware of the intended oppo
sition, had a duty to consider the request and
pursuant to the doctrine of procedural fairness the
decision should be set aside; that the matter as it
now stood essentially divested him of a fundamen
tal right because of an administrative error.
The respondents rely on the decision of Mr.
Justice Collier in Silverwood Industries Ltd. v.
Registrar of Trade Marks, [1981] 2 F.C. 428; 65
C.P.R. (2d) 169 (T.D.). They argue that the Court
as well as the Registrar of Trade Marks is without
jurisdiction at this stage of the proceedings to alter
the decision; that in light of the Silverwood deci
sion the Registrar was compelled to proceed under
section 38 of the Act and allow the trade mark.
They further submit that the applicant is not
necessarily deprived of its fundamental rights since
expungement proceedings are available under the
Trade Marks Act and the applicant could avail
itself of this remedy; that there is no statutory
right for an extension of time; that it is purely
discretionary and still may be refused. Further,
that the letter of June 13, 1986 submitted on
behalf of the applicant should not only have
requested an extension of time but should have
described in some detail the intended opposition.
I have reviewed the decision in the Silverwood
case and I am satisfied that the facts are distin
guishable. The application heard by Mr. Justice
Collier was for mandamus requiring the Registrar
to register a mark in a situation where, within the
prescribed one-month period, no letter seeking an
extension of time had been filed nor had opposition
proceedings been initiated. In fact the request in
the Silverwood case had been made after the
Registrar had "allowed the application". Collier J.
determined that at that stage of the proceedings
the Registrar had no further discretion and was
required to register the trade mark. This decision,
in my view, does not close the door on a request for
an extension of time filed within one month as
required under subsection 37(1) and subsequently
misplaced.
I have reviewed the letter of June 13, 1986 and I
find as a fact that it disclosed sufficient detail to
adequately inform the Registrar as well as other
interested parties that the applicant was clearly
initiating an application for an extension of time
for the eventual filing of opposition.
A decision more on point was rendered by Mr.
Justice Mahoney in Sharp Corp. v. Registrar of
Trade Marks, [ 1982] 2 F.C. 248; 61 C.P.R. (2d)
63 (T.D.). In that particular case the Registrar
deemed the opposition to have been abandoned
and allowed the application because the Trade
Marks Office had misfiled a request for an exten
sion of time to file further evidence and, as a
result, the Registrar was not in a position to
consider the additional evidence before rendering
his decision. The Court declared the application to
be a nullity and ruled that the request for a further
extension of time be referred back to the Registrar
for further consideration. Similarly as in this situa
tion the letter was not located until after the trade
mark had been allowed. Justice Mahoney wrote at
pages 250 F.C.; 64 C.P.R.:
The decision allowing the application is a nullity inasmuch as
the appellant was denied the right to the hearing afforded it by
the Act.
Nicholson v. Haldimand-Norfolk Regional
Board of Commissioners of Police, [1979] 1
S.C.R. 311; 88 D.L.R. (3d) 671 has determined
that tribunals which exercise executive or adminis
trative powers are not bound by the rules of natu
ral justice as such, however, they are under a
general duty of fairness and shall provide oppor
tunities for parties to respond. The long estab
lished principle governing discretionary and pre
rogative decisions in this Court, as derived from
Martineau v. Matsqui Institution Disciplinary
Board, [1980] 1 S.C.R. 602, is succinctly summa
rized in the headnote at page 604 and it reads as
follows:
Though a duty to act fairly may not be relevant to the question
of jurisdiction under s. 28, s. 18 vests in the Trial Division of
the Federal Court the jurisdiction to grant the common law
remedy of certiorari and that remedy avails at common law
wherever a public body has the power to decide any matter
affecting the rights, interests, property, privileges or liberties of
any person. The basis for the broad reach of the remedy is the
general duty of fairness resting on all public decision-makers.
I am satisfied that the Registrar's decision in
these circumstances was purely administrative and
he had a duty to act fairly in exercising his powers.
The administrative decision-maker must consid
er and take into account all relevant factors.
Though I am satisfied that the Registrar has no
jurisdiction under the Trade Marks Act to suspend
the application for the allowance of the trade
mark, this Court has that discretionary power.
In situations where discretionary powers are
exercised without having regard to all relevant
facts or where there may be an error on the face of
the record, or there exists a procedural irregularity
which eventually had an influence on the final
determination made by the decision-maker, the
exercise of that discretion should be subject to
review by the Court in its supervisory capacity. If
the disregard for the facts or the overlooking of
some procedure was a relative factor in determin
ing the outcome, the Court should exercise its
discretion and set aside the decision or order. The
granting of a writ of certiorari by this Court is
well established and its discretion when or when
not to grant it was summarized by Pratte J. in
Minister of National Revenue v. Kruger Inc.,
[1984] 2 F.C. 535 (C.A.) where he wrote at page
544:
Violation of natural justice (in the case of judicial or quasi-
judicial decisions) and lack of procedural fairness (in the case
of administrative decisions) are merely grounds on which cer-
tiorari may issue; but it may also issue on other grounds,
irrespective of the judicial or administrative character of the
decision under attack, namely, lack of jurisdiction and error of
law on the face of the record. Once it is accepted, as it must be
since the decisions of the Supreme Court of Canada in Nichol-
son (supra) and Martineau (supra), that purely administrative
decisions are no longer immune from certiorari, it follows, in
my view, that those decisions may be quashed by certiorari not
only, in appropriate cases, for lack of procedural fairness but
also for lack of jurisdiction and error of law on the face of the
record.
It is hereby ordered and determined that:
(1) Certiorari will issue quashing the decision of
the Registrar of Trade Marks dated July 22,
1986.
(2) Mandamus will issue granting that the
extension of time be referred back to the Regis
trar for his consideration along with such fur
ther request as may be based on the time
elapsed since the decision.
(3) The opposition proceedings be resumed
within the time allowed by the Registrar.
I make no order as to costs.
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.