T-1191-88
Wagon-Wheel Concessions Ltd. (Plaintiff)
v.
Stadium Corporation of Ontario Limited and
Dome Consortium Investments Inc. (Defendants)
INDEXED AS: WAGON-WHEEL CONCESSIONS LTD. V. STADIUM
CORP. OF ONTARIO LTD. (T.D.)
Trial Division, Giles A.S.P. — Toronto, December
5 and 15, 1988.
Federal Court jurisdiction — Trial Division — Jurisdiction
of prothonotary — Motion to strike statement of claim as not
disclosing reasonable cause of action — Stadium Corp.
requesting public notice of adoption and use in Canada by
public authority of marks "Skydome", "Skydome Design" and
"Dome" under Trade Marks Act, s. 9(1)(n)(iii) — Plaintiff
adopting mark "Skydome" and applying for registration —
Statement of claim alleging Stadium having no right to use s.
9(1)(n)(iii) and disputing constitutionality of s. 9(1)(n)(iii) —
Case against Dome based upon actions of partner, Stadium
Prothonotary having jurisdiction to hear motion involving
constitutional matters — Legislature delegating power to
appoint prothonotaries to Governor in Council (Federal Court
Act, s. 12); power to assign jurisdiction to judges (s. 46); and
power to direct when jurisdiction shall be exercised to Associ
ate Chief Justice (s. 15) — Federal Court Rules, R. 336(1)(g)
giving prothonotary power to hear and dispose of interlocutory
applications — A.C.J. acting on direct authority in making
General Direction, not authority delegated by delegate —
Automatic right of appeal from prothonotary's decision
amounting to supervision required by s. 46(1)(h) — Prothono-
tary's jurisdiction not limited to determination of fact as set
out in s. 46(1)(a)(vi), as that would render s. 46(1)(h) redun
dant, contrary to principle of statutory construction requiring
each word to be given meaning if possible — No cause of
action against Dome — For purposes of s. 9(1)(n)(iii) public
authority must act on own behalf and not as partner — Claim
struck without prejudice as possible cause of action based on
conspiracy.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Canadian Bill of Rights, R.S.C. 1970, Appendix III.
Canadian Charter of Rights and Freedoms, being Part I
of the Constitution Act, 1982, Schedule B, Canada Act
1982, 1982, c. 11 (U.K.).
Constitution Act, 1982, Schedule B, Canada Act 1982,
1982, c. 11 (U.K.).
Federal Court Act, R.S.C. 1970 (2nd Supp.), c. 10, ss.
12, 15, 46(1)(a)(vi),(b),(h).
Federal Court Rules, C.R.C., c. 663, RR. 336(1)(g),
(2),(5), 419.
Trade Marks Act, R.S.C. 1970, c. T-10, s. 9(1)(n)(iii).
CASES JUDICIALLY CONSIDERED
APPLIED:
Hill v. William Hill (Park Lane), Ld., [1949] A.C. 530
(H.L.).
REFERRED TO:
Crofter Hand Woven Harris Tweed Co., Ld. v. Veitch,
[1942] A.C. 435 (H.L.); Hamlyn v. Houston & Co.,
[1903] 1 K.B. 81 (C.A.); Hodge v. Reg. (1883), 9 App.
Cas. 117 (P.C.); Rex v. Nat Bell Liquors, [1922] 2 A.C.
128 (P.C.).
COUNSEL:
Ian J. Tod for plaintiff.
David G. Allsebrook for defendant Stadium
Corporation of Ontario Limited.
Alan S. Alexandroff for defendant Dome
Consortium Investments Inc.
SOLICITORS:
Torkin, Manes, Cohen & Arbus, Toronto, for
plaintiff.
Fasken & Calvin, Toronto, for defendant
Stadium Corporation of Ontario Limited.
Tory, Tory, Deslauriers & Binnington,
Toronto, for defendant Dome Consortium
Investments Inc.
The following are the reasons for order ren
dered in English by
GILES A.S.P.: The action in which this motion is
brought arises from the alleged fact that the
defendant, Stadium Corporation of Ontario Lim
ited, (Stadium) requested the Registrar of Trade
Marks to give public notice of the adoption and
use in Canada by a public authority of the marks
"Skydome", "Skydome Design" and "Dome",
under subparagraph 9(1)(n)(iii) of the Trade
Marks Act, R.S.C. 1970, c. T-10 at a time when
Stadium knew that the plaintiff had adopted the
mark "Skydome" and had applied for registration
of it. The plaintiff has brough action against
Stadium and Dome Consortium Investments Inc.
(Dome). The plaintiff alleges in paragraph 4 of the
statement of claim that "At all material times
Stadium was acting for and on behalf of itself and
the Defendant Dome Consortium as partners in
the construction and operation of a multi-purpose
stadium in the City of Toronto and that the part
nership is the intended beneficiary of all rights
acquired by Stadium which holds those rights in
trust for the partnership."
In paragraph 14, the plaintiff alleges that the
defendants have threatened to take action against
the plaintiffs. In the prayer for relief, the plaintiff
seeks punitive or exemplary damages presumably
from both defendants.
On their face, none of the allegations, except for
those in paragraph 14, are of actions by Dome
itself. The plaintiff's case against Dome is that the
actions alleged to have been carried out by Stadi
um were carried out by it as a partner of Dome as
alleged in paragraph 4. It was argued that Dome is
liable to the plaintiff for the action of its partner
acting as such, and that cause of action therefore
lies against Dome. As will be seen from the state
ment of claim, a copy of which is attached as
schedule "A" to these reasons, the plaintiff's case
is founded principally on the allegation that Stadi
um has no right to make use of subparagraph
9(1)(n)(iii) of the Trade Marks Act or that that
subparagraph is ultra vires, or that the subpara-
graph infringes or denies the plaintiff's rights
under the Canadian Charter of Rights and Free
doms [being Part I of the Constitution Act, 1982,
Schedule B, Canada Act 1982, 1982, c. 11 (U.K.)]
and the Canadian Bill of Rights [R.S.C. 1970,
Appendix III].
Toward the end of his introductory remarks
outlining his proposed response to the defendants'
submission, plaintiff's counsel questioned my juris
diction to hear a motion which involved constitu
tional matters.
Inasmuch as some one and a half hours had
already been spent in hearing the motion, I con
sidered that I should hear argument with respect
to my jurisdiction rather than refer the matter
under Rule 336(2) [Federal Court Rules, C.R.C.,
c. 663]. However, I directed that the matter of
jurisdiction should be argued and decided forth
with, before proceeding with the rest of the
response and the reply.
After a short adjournment, counsel for the
plaintiff submitted that the interpretation of a
constitutional matter should be left to a judge, and
that a prothonotary had only jurisdiction to deter
mine facts. In addition, counsel questioned the
authority to make Rule 336(1)(g) and the general
direction of the Associate Chief Justice purported
ly made thereunder, in the light of the law,
summed up in the maxim delegates non potest
delegare.
Plaintiff's counsel's argument started with sec
tion 12 of the Federal Court Act [R.S.C. 1970
(2nd Supp.), c. 10] which provides that the
powers, duties and functions of the prothonotaries
shall be determined by the Rules.
Counsel then referred to section 46 of the Act
which provides, in effect, that "the judges of the
Court may . .. make general rules ... providing
for the reference of any question of fact for inquiry
and report by a judge or other person as referee"
(subparagraph 46(1)(a)(vi)) and "empowering a
prothonotary to exercise any authority or jurisdic
tion, subjected to supervision by the Court, even
though such authority or jurisdiction may be of a
judicial nature" (paragraph 46(1)(h)).
Counsel questioned whether section, 46 did not
contemplate that the jurisdiction of a prothonotary
be limited to the power to determine questions of
fact either on a reference, provided for under the
authority of subparagraph 46(1)(a)(vi) or under
paragraph 46(1)(b). Counsel also questioned that
the provision of the appeal procedure in Rule
336(5) constituted "the supervision by the Court"
required by paragraph 46(1)(h). Counsel further
argued that section 46 delegated to the judges the
authority to make rules such as those under para
graph 46(1)(h) and that a delegate could not
further delegate to, for instance, the Chief Justice
or the Associate Chief Justice as the judges appear
to have done under Rule 336(1)(g).
From the Bench, I ruled that paragraph
46(1)(h) intended that Rules could be made giving
prothonotaries jurisdiction of a judicial nature
which would include the jurisdiction to interpret
statutes including the Constitution Act 1982
[Schedule B, Canada Act, 1982, 1982, c. 11
(U.K.)]. I also ruled that the appeal provided for
in Rule 336(5) provided "the supervision by the
Court", required in paragraph 46(1)(h).
With regard to the argument based on delega
tion by a delegate, I ruled that the authority of the
Associate Chief Justice was direct rather than
delegated by a delegate.
Having decided that I had jurisdiction to do so,
I proceeded to hear the remainder of the motion.
At the conclusion of the hearing, I indicated my
intention to grant the motion on the ground that a
partner may act either as a partner or on his own
behalf. That for the purpose of requesting a notice
under subparagraph 9(1)(n)(iii) of the Trade
Marks Act a public authority must act on its own
behalf and could not as a matter of law act as a
partner, therefore there was no cause of action
disclosed against Dome. Counsel for the plaintiff
pointed out, which was the case, that counsel for
Dome had not raised that argument. He also
stated that while counsel for Dome had informed
him of arguments he intended to put forward, he
had not mentioned that one. Counsel for the plain
tiff therefore requested an adjournment to another
day so that he could prepare a response on a
matter which took him by surprise. The argument
with respect to section 9 and partnership had in
fact only been made briefly by counsel for Stadi
um in the course of approximately five minutes of
argument touching on several matters. Counsel for
Stadium had not advised plaintiff's counsel of the
matters he intended to raise in argument.
I ruled that there was no requirement for
advance notice as to argument and refused an
adjournment, but permitted further argument.
Counsel for the plaintiff argued that his case was
based on the very fact that a partnership, including
a non-public authority partner could not lawfully
obtain a mark under subparagraph 9(1)(n)(iii)
and that very wrongful action was the basis of his
case against Dome. I ruled that while there might
be a cause of action in conspiracy of the type
discussed in the Harris Tweed [Crofter Hand
Woven Harris Tweed Co., Ld. v. Veitch, [1942]
A.C. 435 (H.L.)] case, such had not been pleaded.
The motion to strike would therefore be granted
but in view of the possibility of a cause of action
existing, my order would be without prejudice.
Counsel asked for written reasons both for my
order with respect to subparagraph 9(1)(n)(iii)
and my ruling with respect to the jurisdiction of a
prothonotary.
Dealing first with the sufficiency of a mere
pleading of partnership to found a cause of action
against Dome for the alleged wrongful act of its
alleged partner Stadium in obtaining a mark under
section 9, the test of responsibility of a partner for
the wrongful acts of another partner is twofold.
First, was the wrongful act done in the ordinary
course of the business of that partnership? Assum
ing the answer to that question is yes, the second
test is, could the results of the illegitimate action
have been achieved by legitimate means. If the
result could have been obtained by legitimate
means, it appears that a partner is responsible for
the wrongful act of another partner even if it was
expressly forbidden or illegal (Hamlyn v. Houston
& Co., [1903] 1 K.B. 81 (C.A.)).
In this case, there is no way in which a partner
ship including a non-official body could have
acquired a section 9 mark, therefore there can not
be a case against a partner based on the mere
existence of partnership.
Because on the facts alleged it might be possible
to plead a case based on combination or conspiracy
to damage such as those discussed, but not found
to exist, in Crofter Hand Woven Harris Tweed
Co., Ld. v. Veitch, [1942] A.C. 435 (H.L.). I
struck the claim without prejudice.
With regard to my decision on jurisdiction, the
first point to be considered is my finding that the
Associate Chief Justice acted on direct authority
rather than on authority delegated by delegates.
Section 46 gives authority to the judges to make
Rules. Section 15 gives the Associate Chief Justice
inter alla the authority to make "such arrange
ments as may be necessary or proper for the
holding of courts, or otherwise for the transaction
of business of the Trial Division". When the two
sections are considered together, it is apparent that
Rule 336(1) (g) has given the prothonotary the
power to hear and dispose of interlocutory applica
tions. But, to give effect to the authority of the
Associate Chief Justice in section 15, that power
has been necessarily limited by providing, in effect,
that the power shall only be exercised in those
matters assigned to a prothonotary by the Associ
ate Chief Justice (or the Chief Justice).
This concept of empowering delegates not only
to make rules and regulations but also to assign
duties to persons appointed to carry out rules and
regulations made by delegates is apparent in
Hodge v. Reg. (1883), 9 App. Cas. 117 (P.C.). In
the case of prothonotaries, the legislature has dele
gated the power to appoint to the Governor in
Council (section 12), the power to assign jurisdic
tion to the judges (section 46) and the power to
direct when the jurisdiction shall be exercised to
the Associate Chief Justice (section 15).
With regard to the point raised as to whether
Rule 336(5) has provided the supervision of the
Court required by paragraph 46(1)(h) of the Fed
eral Court Act, as can be seen from the cases, the
use of certiorari by a Superior Court to review the
actions of an Inferior Court or tribunal is referred
to as "supervision" by the Superior Court of the
Inferior Court (see for instance, Rex v. Nat Bell
Liquors, [1922] 2 A.C. 128 (P.C.)). Certiorari is
similar in scope and intent to an appeal. Where, as
in the case of a prothonotary's decision, there is an
automatic right of appeal to a Superior Court, it
seems to me the degree of supervision is greater
than under certiorari and that therefore the right
of appeal certainly amounts to the supervision
required by paragraph 46(1)(h).
With regard to the argument raised with respect
to the jurisdiction which could be given to a pro-
thonotary being limited to determination of fact as
set out in subparagraph 46(1)(a)(vi), it is my view
that a prothonotary would qualify under that sub-
paragraph as an "other person". If that was all
paragraph 46(1)(h) was intended to permit, it
would be redundant or a tautology. In Hill v.
William Hill (Park Lane), Ld., [1949] A.C. 530
(H.L.), at pages 546-547, Viscount Simon said:
"though a Parliamentary enactment (like parlia
mentary eloquence) is capable of saying the same
thing twice over without adding anything to what
has already been said once, this repetition in the
case of an Act of Parliament is not to be assumed.
When the legislature enacts a particular phrase in
a statute the presumption is that it is saying
something which has not been said immediately
before. The rule that a meaning should, if possible,
be given to every word in the statute implies that,
unless there is good reason to the contrary, the
words add something which would not be there if
the words were left out." Therefore paragraph
46(1)(h) means what it says and is not qualified
by subparagraph 46(1)(a)(vi) and may in fact be
amplified by it.
The foregoing are somewhat amplified and
slightly more orderly reasons than those delivered
from the Bench.
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.