T-3212-82
Harlequin Enterprises Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Mahoney J.—Ottawa, June 27 and
July 8, 1983.
Trade marks — Practice — S. 56 appeal from Registrar's
decision deeming application for registration of "Harlequin
Superromance" for use in association with "printed publica
tions, namely books" abandoned for default of prosecution
pursuant to s. 35 — Appeal allowed — Appellant not in
default of prosecution of application for refusing to disclaim
right to exclusive use of word "Superromance" apart from
trade mark as required by Registrar — Registrar to resume
consideration of application on basis that his treating it as
abandoned nullity — Scheme of Trade Marks Act entitling
applicant to registration of registrable mark — Applicant
entitled as of right to decision whether trade mark registrable
— Appeal improper remedy as Registrar not having made
decision giving rise to right of appeal under s. 56 — Proper
remedy under s. 18 Federal Court Act — Court cannot reverse
Registrar's decision because would be disposition of appeal
from decision not made — S. 36(1) requiring decision of
Registrar that not satisfied trade mark not registrable, before
ordering Registrar to permit continued prosecution of applica
tion and its acceptance for advertisement in Trade Marks
Journal — Court entitled to decision of Registrar taking
account of evidence before being itself required to decide
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 12(1)(b), 34, 35,
36, 56 — Federal Court Act, R.S.C. 1970 (2nd Supp.), c. 10,
s. 18.
COUNSEL:
N. R. Shapiro, Q.C. and A. J. Finlayson for
appellant.
Y. Perrier for respondent.
SOLICITORS:
Shapiro & Cohen, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This is an appeal under section
56 of the Trade Marks Act,' from a purported
decision of the Registrar of Trade Marks in the
course of dealing with the appellant's application
to register "Harlequin Superromance" for use in
association with "printed publications, namely
books". It was heard together on common evidence
with two other appeals from identical decisions for
registration of "Harlequin Superromance" & dia
mond design and "Harlequin Superromance"
design shown as A and B respectively below. 2 The
issue is identical in each appeal and concerns the
word "Superromance".
The respondent required the appellant, pursuant
to section 34 of the Act, to disclaim the right to
the exclusive use of the word "Superromance"
apart from the trade mark in compliance with
paragraph 12(1)(b). The appellant refused to
comply with the requirement. On March 8, 1982,
the respondent rendered the following decision:
It is my opinion that the word SUPERROMANCE when used in
association with "printed publications, namely books" clearly
indicates to the prospective consumer that the subject of the
books are in the area of romance, are of the super type, and
surpass all or most others of its kind.
Since applicant has failed to comply with the requirements of
Section 34 of the Trade Marks Act, the application is deemed
to be abandoned pursuant to Section 35 of the Act.
The respondent did not refuse the application; he
deemed it to be abandoned.
The pertinent provisions of the Act are:
' R.S.C. 1970, c. T-10.
2 Court files T-3213-82 and T-3214-82.
34. The Registrar may require the applicant for registration
of a trade mark to disclaim the right to the exclusive use apart
from the trade mark of such portion of the trade mark as is not
independently registrable, but such disclaimer does not preju
dice or affect the applicant's rights then existing or thereafter
arising in the disclaimed matter, nor does such disclaimer
prejudice or affect the applicant's right to registration on a
subsequent application if the disclaimed matter has then
become distinctive of the applicant's wares or services.
35. Where, in the opinion of the Registrar, an applicant is in
default in the prosecution of an application filed under this Act
or any Act relating to trade marks in force prior to the 1st day
of July 1954, the Registrar may, after giving notice to the
applicant of such default, treat the application as abandoned
unless the default is remedied within the time specified in the
notice.
The essence of the scheme of the Trade Marks
Act is that an applicant for registration of a trade
mark is entitled, as of right, to secure that regis
tration if the trade mark is registrable. An appli
cant is entitled, as of right, to a decision whether
or not the trade mark is registrable and that
necessarily implies that he has a right to require
that the Registrar deal with the trade mark for
which registration is sought. The Registrar may
require a disclaimer but the applicant, doubtless
aware of the consequences, is entitled to refuse to
comply. He is quite within his rights to invite a
refusal of his application by declining to disclaim
and to take his chances on appeal rather than be
coerced into a disclaimer he does not wish to
make. He may thereby get the registration he
wants. If the appeal is not successful, he can
always apply again with the disclaimer. All it costs
is time and money.
The refusal by the appellant to accede to a
requirement that he disclaim was an improper
basis on which to form the opinion that it was in
default in the prosecution of its application. It was
an opinion founded on a fiction of which the
respondent was clearly aware. The appellant was
not in default in the prosecution of its application;
it was insisting, as it had every right to do, that the
respondent deal with the trade mark whose regis
tration was sought. In treating the application as
abandoned, the respondent made no decision. The
applicant's [appellant's] remedy, in the circum
stances, was properly to be found in section 18 of
the Federal Court Act,' not in an appeal under
section 56 of the Trade Marks Act.
The relief sought in this appeal is:
A. To reverse the decision of the Registrar of Trade Marks, and
hold that the word SUPERROMANCE is independently registrable
and does not offend the provisions of section 12(1)(b) of the
Trade Marks Act.
B. To order the Registrar to permit the continued prosecution
of Application No. 455,313, and its acceptance for advertise
ment in the Trade Marks Journal.
Counsel agreed to the hearing of the appeal pro
ceeding on the basis that a refusal to comply with
a request to disclaim does constitute a default
under section 35. The order that the Registrar
permit the continued prosecution of the applica
tion is tantamount to the relief the appellant would
have obtained had it proceeded under section 18 of
the Federal Court Act. I have no difficulty with it.
However, the relief sought under paragraph A
would be a disposition of an appeal from a decision
that has not been made. Likewise, advertisement
of the application in the Trade Marks Journal
requires, as a condition precedent prescribed by
subsection 36(1) of the Act, a determination by
the respondent that he is not satisfied that the
trade mark is not registrable, again a determina
tion that has not been made. While it seems clear
that the respondent would have refused the
application on the grounds set forth in the first
paragraph of his "decision" quoted above, it
remains that he did not.
I reluctantly heard counsel on the subject of the
relief sought under paragraph A. The more I
consider what I heard, the more convinced I am
that my reluctance was well founded. Regardless
of how clear the decision probably to have been
made appears, and notwithstanding the apparent
acquiescence of counsel for the respondent that
this be disposed of as if it were a proper appeal on
the registrability of "Superromance" under para
graph 12(1)(b), the decision giving rise to a right
of appeal under section 56 has not been made.
Until it is, and assuming it to be a refusal, no
appeal lies.
3 R.S.C. 1970 (2nd Supp.), c. 10.
It is axiomatic that, on an appeal, the Court will
attach considerable weight to the Registrar's deci
sion. A corollary to that proposition is that the
Registrar's decision is important to the Court in a
practical sense as well as a legal prerequisite. The
Court and public, as well as the parties, have a
stake in the ultimate decision in a system of juris
prudence where precedents are law. There is con
siderable evidence now available that was not
when the respondent indicated his intention. The
Court is entitled to his decision, taking account of
that evidence, before being required itself to
decide.
Had this been an application under section 18 of
the Federal Court Act, I should have made an
order in the nature of mandamus and awarded the
appellant its costs. As it is, the costs actually
incurred obviously bear no relationship to such a
summary application. An order will issue directing
the respondent to resume consideration of the
application on the basis that his treating it as
abandoned was a nullity. The appellant should
have the opportunity to submit such additional
material as it may be advised in support of its
application. Copies of these reasons for judgment
will be filed in and form part of the record of
actions T-3213-82 and T-3214-82.
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