Digests

Cassels Brock & Blackwell LLP v. Canada (Registrar of Trade-marks)

T-1396-03

2004 FC 753, MacKay J.

21/5/04

13 pp.

Appeal pursuant to Trade-marks Act (Act), s. 56 from senior hearing officer's decision whereby trade-mark No. 354264 for "Daniel & Design" for use with San Daniele ham (trade-mark) maintained on register, and second proceeding pursuant to Act, s. 45 ordered--Registrar's decision made in context of s. 45 proceedings requiring respondent to show whether trade-mark in use in Canada, and if not, date when last in use and reason for absence of use since that date--Hearing officer concluding failure to use trade-marks due to special circumstances, and registration should be maintained-- Proceeded to issue second s. 45 notice concurrently with decision, requiring registered owner to show compliance with s. 45 again, because evidence vague concerning anticipated completion of certification process required for admission of product to Canada--Cases where special circumstances found to explain non-use but second notice also issued by Registrar distinguished as trade-marks therein in use before use interrupted--Here mark never in use in Canada since registration in 1989--Despite date of original registration, respondent, which acquired trade-mark in 1994, responsible only to show use or reason for non-use for period owned mark--Applicant arguing hearing officer, having determined evidence not fully satisfactory, in effect functus officio and could not also decide special circumstances existed to excuse non-use and thus, to continue registration of mark--Principle of functus officio not applying in case of exercise of discretion in administrative function performed by or on behalf of Registrar--Hearing officer not exceeding jurisdiction vested under Act by determining trade-mark registration should be continued after finding special circumstances in this case excused absence of use, pursuant to s. 45(3), and concurrently, directing further notice to respondent under s. 45(1)--Both determinations explained with reasons and each reasonable in circumstances--Direction for further notice apparently intended to acquire further information concerning prospective use--Hearing officer correct in maintaining registration of trade-mark--As to whether special circumstan-ces justifying failure to use trade-mark, criteria to consider including: length of time during which mark not used, whether reasons for non-use circumstances beyond control of trade-mark owner, and whether serious intent to resume use of mark in Canada-- Hearing officer noting inability to meet Canadian standards as special circumstance--Finding investment of time and money by respondent in factory renovations in Italy for compliance with Canadian requirements indicative of serious intention to use mark as soon as possible, when permitted by essential cooperation of others, including both governments--Such finding reasonable on evidence presented by respondent--Special circumstances excused respondent's failure to use trade-mark, and further inquiry warranted seeking evidence of steps required, and by whom, to complete arrangements for respondent to meet Canadian regulatory requirements, for sale of products and use of its registered mark in Canada--Appeal dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 45 (as am. by S.C. 1994, c. 47, s. 200), 56.