Date: 19990531
Docket: T-2851-96
In re an application to strike the following registrations of trade marks:
- TMA 138,683 for the trade mark TRE STELLE
- TMA 151,310 for the trade mark TRE STELLE & DESIGN
- TMA 151,443 for the trade mark TRE STELLE & DESIGN
these three registrations being in the name of National Cheese Company Limited
Between:
IMPORTATIONS ALIMENTAIRES STELLA INC.,
Applicant,
- and -
NATIONAL CHEESE COMPANY LIMITED,
Respondent.
REASONS FOR ORDER AND ORDER
DENAULT J.
[1] The applicant is appealing a decision by the prothonotary Lafrenière which dismissed for delay the originating motion filed on December 24, 1996 asking the Court to strike the three trade marks registered by the respondent pursuant to s. 57 of the Trade Marks Act. On February 18, 1998 the applicant had received a status review notice from this Court.
[2] In the case at bar, applying the test stated by Hugessen J.A. in Baroud v. Canada, [1998] F.C.J. No. 1729, for disposing of status review notices, the prothonotary first held that the explanation given of the delay by the applicant was unacceptable. He then questioned whether the applicant intended to proceed with the application promptly and concluded that it should be dismissed.
[3] The applicant appealed this decision by the prothonotary only as regards his conclusion on the second part of the test. Counsel for the applicant alleged that the prothonotary had improperly exercised his discretionary authority by treating as a mere proposal a formal undertaking by the applicant to proceed with the matter promptly and fully, and had done so without even referring to the argument.
[4] Though apparently persuasive, this argument cannot be accepted by the Court.
[5] It must be borne in mind that in the case at bar the applicant is not challenging the fact that the prothonotary had discretionary authority to rule that the explanation given by it for its delay was unacceptable or, essentially, that he exercised his authority properly. I feel, however, that it was at the initial stage that the applicant had to succeed, although I admit that analysis of the delay should be undertaken with greater flexibility when the status review notice concerns an application made before the new Federal Court Rules came into effect on April 25, 1998, as the old Rules allowed counsel greater latitude and provided for intervention by the Court only at the request of a party (old Rule 440). The applicant then had a duty to persuade the Court that the hearing should be continued, which could only be done by taking concrete and positive steps, such as the filing of a schedule or valid pleading to move the case forward. In analysing this second stage the Court then considers the seriousness and dispatch of the applicant in prosecuting the action and either dismisses the action or orders that it proceed pursuant to s. 382(2)(c).1
[6] In the case at bar the applicant did not challenge the first stage and only alleged, without more, that dismissal of the action would be costly and prejudicial for it. At the second stage, the prothonotary questioned whether the applicant was proceeding promptly with the action despite an undertaking by counsel for the applicant to comply with Rule 309 within six weeks, whereas the deadline mentioned in that rule is much shorter. In the circumstances it was certainly not unreasonable to question the applicant"s good intentions.
[7] I consider that the applicant has not shown any error in the prothonotary"s decision that would justify intervention by this Court.
ORDER
The application is dismissed.
PIERRE DENAULT
Judge
Ottawa, Ontario
May 31, 1999
Certified true translation
Bernard Olivier, LL.B.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT No.: T-2851-96
STYLE OF CAUSE: IMPORTATIONS ALIMENTAIRES STELLA INC.
v. NATIONAL CHEESE COMPANY LIMITED
PLACE OF HEARING: MONTRÉAL, QUEBEC
DATE OF HEARING: MAY 17, 1999
REASONS FOR ORDER AND ORDER BY: DENAULT J.
DATED: MAY 31, 1999
APPEARANCES:
FRANÇOIS GRENIER FOR THE APPLICANT
FRANÇOIS GUAY FOR THE RESPONDENT
SOLICITORS OF RECORD:
LÉGER, ROBIC, RICHARD FOR THE APPLICANT
MONTRÉAL, QUEBEC
SMART & BIGGAR FOR THE RESPONDENT
MONTRÉAL, QUEBEC
__________________1 382. (2) À l"examen de l"état de l"instance, la Cour peut : a) exiger que le demandeur ou l"appelant donne les raisons pour lesquelles l"instance ne doit pas être rejetée pour cause de retard, et, si elle n"est pas convaincue que l"instance doit être poursuivie, rejeter celle-ci; . . . c) si elle est convaincue que l"instance doit être poursuivie, ordonner qu"elle le soit à titre d"instance à gestion spéciale et rendre toute ordonnance prévue à la règle 385.
382. (2) At a status review, the Court may (a) require a plaintiff, applicant or appellant to show cause why the proceeding should not be dismissed for delay and, if it is not satisfied that the proceeding should continue, dismiss the proceeding; . . . (c) if it is satisfied that the proceeding should continue, order that it continue as a specially managed proceeding and make an order under rule 385.