BETWEEN:
Appellant
and
LENDING TREE CORP. and
ALEX HADITAGHI DOING BUSINESS AS LENDING TREE CORP., and
THE MINISTER OF INDUSTRY (REGISTRAR OF TRADE-MARKS) and
THE ATTORNEY GENERAL OF CANADA
Respondents
Heard at Toronto, Ontario, on February 12, 2007.
Judgment delivered from the Bench at Toronto, Ontario, on February 12, 2007.
REASONS FOR JUDGMENT OF THE COURT BY: SEXTON J.A.
Docket: A-172-06
Citation: 2007 FCA 70
CORAM: LÉTOURNEAU J.A.
SEXTON J.A.
EVANS J.A.
BETWEEN:
LENDING TREE, LLC
Appellant
and
LENDING TREE CORP. and
ALEX HADITAGHI DOING BUSINESS AS LENDING TREE CORP., and
THE MINISTER OF INDUSTRY (REGISTRAR OF TRADE-MARKS) and
THE ATTORNEY GENERAL OF CANADA
Respondents
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Toronto, Ontario, on February 12, 2007)
[1] This is an appeal from the decision of Dawson J. who decided that the Trade Mark Opposition Board (Board) had jurisdiction to consider the issue of whether there had been a valid amendment by the Registrar of Trade Marks changing the name of the applicant for a trade mark, and that the Board was the appropriate body to consider that issue in the circumstances.
[2] In error, Mr. Alex Haditaghi had filed his application for a trade mark in the name of “Lending Tree Corp.” which had not been incorporated as of the application date. When the Appellant filed an opposition to the application, Mr. Haditaghi realized his error and applied to amend the application by replacing the corporate name with his own name. The Appellant was given notice of the application.
[3] The Registrar of Trade Marks permitted the amendment and also informed the Appellant that if it considered that an amendment to its statement of opposition was required, it could request leave to do so.
[4] The Appellant then launched an application for judicial review of the decision of the Registrar of Trade Marks to allow the amendment.
[5] The Application’s Judge held that the issue of the propriety of the amendment of the application was a matter that could be raised and considered in the opposition proceedings and that the Appellant should, in the absence of special circumstances raise the issue in that forum.
[6] Since the issue of whether the applicant for a trade mark has used the trade mark at the time of the application is one which must be considered by the Board we see no reason to disagree with the Application’s Judge.
[7] Section 38 of the Trade Mark Act sets out the grounds on which an application for a trade mark can be opposed. One of these grounds is that the application does not conform to the requirements of Section 30.
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38. (1) Within two months after 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. (2) A statement of opposition may be based on any of the following grounds: (a) that the application does not conform to the requirements of section 30;
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38. (1) Toute personne peut, dans le délai de deux mois à compter de l’annonce de la demande, et sur paiement du droit prescrit, produire au bureau du registraire une déclaration d’opposition. (2) Cette opposition peut être fondée sur l’un des motifs suivants : a) la demande ne satisfait pas aux exigences de l’article 30;
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[8] Section 30(b) of the Trade Mark Act deals with the date from which the Applicant has used the trade mark.
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30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing
(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application;
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30. Quiconque sollicite l’enregistrement d’une marque de commerce produit au bureau du registraire une demande renfermant : b) dans le cas d’une marque de commerce qui a été employée au Canada, la date à compter de laquelle le requérant ou ses prédécesseurs en titre désignés, le cas échéant, ont ainsi employé la marque de commerce en liaison avec chacune des catégories générales de marchandises ou services décrites dans la demande; |
[9] The Appellant has already argued in its statement of opposition that Lending Tree Corp. was not and could not have been using the name Lending Tree Corp. because it did not exist at the date of alleged use.
[10] In order for the Board to consider the Appellant’s ground of opposition that the applicant for the trade mark had not and could not have used the mark on the date alleged in the application, the Board must necessarily determine whether the application was validly amended. Accordingly the Board has jurisdiction.
[11] The Appeal will therefore be dismissed with costs.
“J. Edgar Sexton”
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-172-06
(APPEAL FROM AN ORDER OF THE HONOURABLE MADAM JUSTICE DAWSON, FEDERAL COURT, DATED MARCH 22, 2006, T-588-05)
STYLE OF CAUSE: LENDING TREE, LLC
Appellant
and
LENDING TREE CORP. and
ALEX HADITAGHI doing business as LENDING TREE CORP., and THE MINISTER OF INDUSTRY (REGISTRAR OF TRAD-MARKS) and THE ATTORNEY GENERAL OF CANADA
Respondents
DATE OF HEARING: FEBRUARY 12, 2007
PLACE OF HEARING: TORONTO, ONTARIO
DATE OF HEARING: FEBRUARY 12, 2007
REASONS FOR JUDGMENT
OF THE COURT BY: (LÉTOURNEAU, SEXTON & EVANS JJ.A.)
DELIVERED FROM THE
APPEARANCES:
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Natalie de Paulsen
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For the Appellant |
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For the Respondents, Lending Tree Corp. and Alex Haditaghi c.o.b.a. Lending Tree Corp. |
SOLICITORS OF RECORD:
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Barristers and Solicitors Toronto, ON
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For the Appellant
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Barristers and Solicitors Toronto, ON
John H. Sims, Q.C. Deputy Attorney General of Canada |
For the Respondents, Lending Tree Corp. and Alex Haditaghi c.o.b.a. Lending Tree Corp
For the Respondents, Minister of Industry (Registrar of Trade-marks) and the Attorney General of Canada |