T-1115-74
Bruno Gerussi, Allan McFee and Gary Dunford,
carrying on business as Captain Canada Produc
tions Co. (Appellants)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Mahoney J.—Toronto, Septem-
ber 26; Ottawa, October 3, 1974.
Trade Marks—Application—Conflict in completion be
tween Form 1 and Form 4—Successive actions of Regis-
trar—Ultimate rejection of application—Reversed on
appeal—Trade Marks Rules, S.O.R. Consolidation 1955, p.
2838, 35, 36(d) 37(b), Sch. II, Forms 1, 4.
In their original application, on November 10, 1970, the
appellants adopted Form 1 (application for registration of a
trade mark already in use) rather than Form 4 (application
for registration of a proposed trade mark). They expressed
the intention to use the trade mark in association with
certain specified services and wares from October 7, 1970,
the date of execution of the application. The latter was
received and filed by the respondent Registrar as an applica
tion for a proposed trade mark. Subsequently, the Registrar
required the applicants to revise the application, so as to
make it an application for registration of a trade mark
already in use in Canada. Such a revision, accepted by the
Registrar as an amendment to the original application, was
in Form 1, reciting that the trade mark had been in use in
Canada in association with the specified services and wares
from October 7, 1970. The revised application was adver
tised, a statement of opposition was filed, and evidence was
filed by the appellants and their opponent. A further applica
tion was tendered by the appellants on January 22, 1974, in
Form 4, to amend the application again by characterizing it
clearly as an application to register a proposed trade mark.
This was rejected by the respondent.
Held, allowing an appeal from the rejection, the original
application, notwithstanding its defective form, which rea
sonably led to clarification, was clearly an application for
registration of a proposed trade mark. Rule 36(d) was man
datory. The amendment of the application so as to make it
one for registration of a trade mark in use in Canada, was a
nullity, as were all subsequent proceedings. Rule 37(b) was
not a bar to the amendment of January 22, 1974, even if that
amendment could be construed as changing the date of first
use, asserted in the first application.
APPEAL.
COUNSEL:
L. Morphy for appellants.
R. W. Côté for respondent.
SOLICITORS:
Rogers, B 'reskin and Parr, Toronto, for
appellants.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
delivered in English by
MAHONEY J.: This appeal arises from the
refusal of the respondent to permit an amend
ment of the application herein which would
have had the effect of converting it from an
application based on use to one based on intent
to use.
In filing the original application, the appel
lants adapted Form 1 rather than use Form 4 in
Schedule II to the Trade Marks Rules' . Form 1
is designed for use in an application to register a
trade mark already in use in Canada while Form
4 is designed for use in an application for regis
tration of a proposed trade mark. In adapting
Form 1, the appellants stated that they intended
to use the trade mark in association with certain
specified services and wares "commencing the
seventh (7th) day of October, 1970", being the
date of execution of the application. The
application was received and filed as an applica
tion for a proposed trade mark on November
25,1970.
On April 28, 1971 the respondent advised the
appellants that the application had been reached
for consideration and that:
It would appear that this application should have been
prepared in accordance with Form 1 (application for regis
tration of a trade mark in use in Canada) rather than Form 4
(application for registration of a proposed trade mark), since
applicant has given a date of first use, October 7, 1970, in
the application. The date of filing of the present application
is November 10, 1970.
Then, after dealing with another defect not ma
terial to this appeal, the respondent concluded:
A revised application is therefore required.
S.O.R., Consolidation 1955, p. 2838.
A new application, dated May 11, 1971 was
executed by the appellants and accepted by the
respondent. It was in Form 1 representing that
the trade mark "has been in use in Canada" in
association with the specified services and
wares "all of which commenced on the seventh
(7th) day of October, 1970". The new applica
tion was treated as an amendment to the original
application and was not given a new number or
filing date. The application was advertised, a
statement of opposition filed and evidence in
respect thereof filed by both the appellants and
the opponent.
This process consumed a great deal of time.
Finally, before the respondent rendered his
decision on the application and opposition, a
further application, in Form 4, was tendered by
the appellants, dated January 22, 1974. This
was intended to amend the application again
making it clear that it was an application to
register a proposed trade mark and not one in
use in Canada when the original application was
filed. It is the respondent's refusal to accept this
amendment that has led to this appeal.
The applicable provisions of the Trade Mark
Rules are:
35. Except as provided in rules 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
(d) to change the application from one not alleging use or
making known of the trade mark in Canada before the
filing of the application to one alleging such use or making
known, or
37. An application for the registration of a trade mark
may not be amended after advertisement
(b) to change a date of first use or making known in
Canada of the trade mark.
In my view, the original application, notwith
standing that its defective form reasonably led
to a need for clarification, was clearly an
application for registration of a proposed trade
mark. Rule 36(d) is mandatory. The amendment
of the application to one for registration of a
trade mark in use in Canada was a nullity as are
all proceedings consequent thereto, including
the advertisement. That being so Rule 37(b) is
not a bar to the proposed amendment of Janu-
ary 22, 1974, even if that amendment can, as
the respondent argues, be construed as changing
the date of first use asserted in the original
application.
The appeal is therefore allowed. I have come
to the conclusion that this is a proper case for
the parties to bear their own costs. The appel
lants are responsible for the initial confusion
and allowed more than three years to pass
before taking proper action to eliminate the
confusion.
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.