A-416-87
McDonald's Corporation and McDonald's Restau
rants of Canada Limited (Appellants)
v.
Registrar of Trade Marks and Gamble Foods Ltd.
(Respondents)
INDEXED AS: MCDONALD'S CORP. V. CANADA (REGISTRAR OF
TRADE MARKS) (C.A.)
Court of Appeal, Heald, Mahoney and Stone
JJ.A.—Toronto, April 24; Ottawa, May 1, 1989.
Trade marks — Practice — Appeal from refusal of
application to prohibit amendment of trade mark application
— During course of proceedings opposing registration of
"Ronald's" for use in association with food products, Regis
trar following Hardee's Food Systems, Inc. v. Registrar of
Trade Marks, 119831 1 F.C. 591 (T.D.), to allow application to
amend date of first use — Reasoning as amended date of first
use after date of application to register, amendment not
changing date of first use in application based on use, but
changing application from one based on use to one based on
proposed use — Trial Judge also following Hardee — Hardee
wrongly decided — Phrase "change date of first use" in Trade
Marks Regulations s. 37 including abandonment of use prior
to application, thereby converting application to one for regis
tration of proposed trade mark, as well as amending date —
Purpose of Regulation-to prohibit amendments after advertis
ing to put public whose interests may be affected on notice-not
to be frustrated by construction.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Federal Court Act, R.S.C., 1985, c. F-7, s. 52(b)(1).
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 16(1),(2),
(3), 30, 37(1), 38(1), 39(1).
Trade Marks Regulations, C.R.C., c. 1559, ss. 35, 36,
37.
CASES JUDICIALLY CONSIDERED
REVERSED:
McDonald's Corp. et al. v. Registrar of Trade Marks et
al., 15 C.P.R. (3d) 462 (F.C.T.D.).
OVERRULED:
Hardee's Food Systems, Inc. v. Registrar of Trade
Marks, [1983] 1 F.C. 591; 70 C.P.R. (2d) 108 (T.D.).
COUNSEL:
H. Roger Hart for appellants.
Michael W. Duffy for respondent, Registrar
of Trade Marks.
SOLICITORS:
Rogers, Bereskin & Parr, Toronto, for
appellants.
Deputy Attorney General of Canada for
respondent, Registrar of Trade Marks.
The following are the reasons for judgment
rendered in English by
MAHONEY J.A.: This is an appeal from a deci
sion of the Trial Division, 15 C.P.R. (3d) 462,
which refused the appellant's application for cer-
tiorari and prohibition in respect of a trade mark
application by the respondent, Gamble. Gamble
took no part in the proceedings in the Trial Divi
sion or here.
On September 19, 1977, Gamble filed an
application for registration of the trade mark
"Ronald's" for use in association with certain
wares on the basis that it had been so used in
Canada since February 24, 1977. After advertise
ment of the application in the Trade Marks Jour
nal, the appellants filed a statement of opposition
with the Registrar and Gamble filed a counter
statement. In the course of the opposition proceed
ings, Gamble asked to amend its application to
assert use in Canada since June 16, 1978. The
Registrar denied the application to amend by
reason of paragraph 37(b) of the Trade Marks
Regulations, C.R.C., c. 1559. The opposition pro
ceedings continued until, on July 18, 1986, the
Registrar advised Gamble of "a potential error" in
the refusal to permit the amendment because the
amended date of first use was after the date of the
application to register and, therefore, the effect of
the amendment sought would not have been to
change the date of first use in an application based
on use but rather to change the application from
one based on use to one based on proposed use.
The Registrar considered himself bound by the
decision of the Trial Division in Hardee's Food
Systems, Inc. v. Registrar of Trade Marks, [1983]
1 F.C. 591; 70 C.P.R. (2d) 108. He allowed the
amendment and offered the appellants the oppor
tunity to continue the opposition proceeding on the
amended application. The appellants sought relief
in the Trial Division. The learned Trial Judge,
following Hardee, denied that relief.
The real issue in this appeal is whether Hardee
was correctly decided. "Trade-marks" and "pro-
posed trade-mark" are distinct terms defined by
section 2 of the Trade-marks Act, R.S.C., 1985, c.
T-13. The only difference between them is that a
trade mark is in use and a proposed trade mark is
proposed to be used when the application to regis
ter is made. The registration process is authorized
by subsection 16(1) in the case of a trade mark in
use in Canada, subsection 16(2) in the case of a
trade mark in use elsewhere and by subsection
16(3) in the case of a proposed trade mark. Sec
tion 30 sets out the requirements of applications
for registration. Subsection 37(1) provides that,
unless for a specified reason, the Registrar is
required to refuse an application for registration,
the Registrar shall cause the application to be
advertised. By subsection 39(1) of the Regulations,
the advertisement is required to be in the Trade
Marks Journal. The Act provides:
38. (I) Within one month from the advertisement of an
application for the registration of a trade-mark, any person
may, on payment of the prescribed fee, file a statement of
opposition with the Registrar.
39. (1) When an application for the registration of a trade
mark 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.
As to the amendment of an application for regis
tration, the Regulations provide:
35. Except as provided in section 36 and 37, an application
may be amended, either before or after advertisement.
36. An application for the registration of a trade mark may
not be amended at any time
(a) to change the identity of the applicant, except after
recognition of a transfer by the Registrar;
(b) to change the trade mark except in respects that do not
alter its distinctive character or affect its identity;
(e) to change a date of first use or making known in Canada
of the trade mark to an earlier date, except on evidence
satisfactory to the Registrar that the change is justified by
the facts;
(d) to change the application from one not alleging use or
making known the trade mark in Canada before the filing of
the application to one alleging such use or making known; or
(e) to extend the statement of wares or services.
37. An application for the registration of a trade mark may
not be amended after advertisement
(a) to change the trade mark; or
(b) to change a date of first use or making known in Canada
of the trade mark.
The learned Trial Judge, in Hardee, construed
those Regulations, and concluded that, after
advertisement, the Registrar had no discretion to
refuse an amendment having the effect of convert
ing an application for registration of a trade mark
to one for registration of a proposed trade mark.
In my respectful opinion, Hardee was wrongly
decided. Sections 36 and 37 contemplate distinct
circumstances. The former is concerned with
amendments that are never permissible; the latter
with amendments permissible before advertising
but not after. It follows that, in construing section
37, a perceived redundancy in paragraphs 36(c)
and 36(d) if a certain construction is given the
term "change a date of first use" in paragraph
36(c) ought not dictate a construction that frus
trates the clear intention of paragraph 37(b). I do
not find it necessary, in my approach, to comment
on the validity of the perception that led to the
conclusion that there was such a redundancy. I do,
however, think that the term "change a date of
first use" does, in its ordinary sense, embrace the
abandonment of any alleged use prior to the
application, thereby converting the application to
one for registration of a proposed trade mark, as
well as a change from one date to another in an
application for registration of a trade mark.
The prohibition of amendments after advertising
set out in section 37 must be construed in light of
the purpose of the advertising. It is to put on notice
those of the public whose interests may be affected
by the registration. It is not those who have
entered into opposition proceedings, as the present
appellants, whose rights may be unfairly impaired
by the acceptance of amendments as required by
Hardee. Those persons are involved and will, as
here, have the opportunity to oppose the applica
tion as amended. Rather, it is those who con
sidered the application as advertised and decided
they had no basis upon which to oppose it. They
might have decided otherwise had they been aware
of the true basis upon which the application was
ultimately to be disposed of. The legislation con
templates only one advertisement per application.
I would allow the appeal and, pursuant to sub-
paragraph 52(b)(i) of the Federal Court Act,
[R.S.C., 1985, c. F-7], make an order prohibiting
the Registrar from dealing with the application on
the basis of a date of first use other than that
advertised and requiring that it be dealt with on
that basis. Costs were not asked for on appeal. The
award of costs in the Trial Division should be set
aside.
HEALD J.A.: I agree.
STONE J.A.: I agree.
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.