Date: 19980430
Docket: 98-T-21
MONTRÉAL, QUEBEC, THE 30th DAY OF APRIL 1998
Present: RICHARD MORNEAU, PROTHONOTARY
Between:
ANNIE CHÉLIN
Moving Party
AND
PETIT FAUNE
Respondent
ORDER
The moving party"s motion is dismissed with costs.
Richard Morneau
Prothonotary
Certified true translation
Peter Douglas
Date: 19980430
Docket: 98-T-21
Between:
ANNIE CHÉLIN
Moving Party
AND
PETIT FAUNE
Respondent
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] This is a motion by the moving party under subsection 56(1) of the Trade-marks Act, R.S.C., 1985, c. T-13, to have this Court extend by four months the two-month period provided for in the said subsection for appealing a decision of the Registrar of Trade-marks (the Registrar).
[2] In a decision dated February 19, 1998, the Registrar rejected the moving party"s opposition to the respondent"s registration of the trade-mark PETIT FAUNE. The period for appealing the decision therefore expired on April 19, 1998. However, subsection 56(1) provides that:
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
Facts
[3] The record shows that since January 29, 1998, the moving party has had the benefit of a decision of the Registrar rejecting an opposition to her application for registration of the disputed trade-mark. That decision was appealed to this Court by the opponents.
[4] The moving party"s affidavit shows that for a number of years she has been dealing in France with a matter she describes as a [TRANSLATION] "cancellation of a franchise agreement and claim for damages". Certain evidence needed for her appeal book in the case at bar is apparently still in the hands of a French lawyer. The same affidavit indicates that she went to France on or about April 22, 1998 to try to retrieve this evidence. She is expected to return to Canada on May 15, 1998.
[5] The moving party also advises the Court that it was not until March 10, 1998 that she received the Registrar"s decision dated February 19, 1998 from her Canadian lawyers. Yet it was allegedly only on April 10, 1998, when she received a letter from her lawyer in France, that she realized [TRANSLATION] "the seriousness of this matter".
Analysis
[6] In Centre Ice Ltd. v. National Hockey League (1995), 63 C.P.R. (3d) 490, the Court referred to the four factors a moving party must establish in order to obtain an extension of time under subsection 56(1) of the Trade-marks Act. At page 494 of the decision, the Honourable Mr. Justice Nadon set them out as follows:
| In sum, then, there are four factors that should guide this court in determining whether a retroactive extension of time to appeal a decision of the Registrar of Trade Marks should be granted: |
| (1) the appellant must have an appeal that is at least arguable, as opposed to being frivolous or vexatious; |
| (2) there must be no prejudice to the respondent; |
| (3) there must be evidence of a genuine intention to appeal; and |
| (4) there must be a good reason for the delay. |
[7] At page 497 of the same decision, he stated that the most important of these four factors is the explanation given for failing to comply with the time limit:
| As Reed J. pointed out in Food Roll Sales, supra, the most important factor to be taken into consideration is the reason for the delay. |
[8] In the case at bar, the problem lies mainly with this factor. With respect to the first two factors, I assume that the moving party"s appeal is arguable on the face of it given her registration of the disputed trade-mark in January 1998. I believe it can also be said that the respondent, by its own admission, concedes that there is no prejudice. In any event, I would have reached the same conclusion myself regarding this factor.
[9] As for evidence of a genuine intention to appeal, I believe this can easily be answered by considering the explanations given by the moving party for her inability to bring her appeal within two months of February 19, 1998.
[10] In this respect, I consider it surprising, to say the least, that she did not fully realize the seriousness of the situation and immediately consult a lawyer the very day she received the decision, namely March 10, 1998, instead of waiting until April 14, 1998 to do so. As mentioned supra, the moving party has had the benefit of a decision of the Registrar acknowledging that she is entitled to registration of the PETIT FAUNE trade-mark since January 1998. When she received a decision to the opposite effect on March 10, should she not have jumped and taken immediate action to appeal?
[11] What is more, she says she reacted only on April 10 when she received a letter from her lawyer in France. Thus, she herself took no action in response to the situation between March 10 and April 10. One has to wonder whether she would to this day have taken any action in response to the decision of February 19, 1998 if she had not received a letter from her overseas lawyer on April 10.
[12] Nor does the moving party"s affidavit indicate the precise nature of the missing evidence she went to France to get. Since she had left for France immediately after signing her affidavit, she could not be examined on it when a request was made to this effect.
[13] In my view, these two deficiencies make it very difficult for me to depart from the four factors to be covered and to resort, as counsel for the moving party suggested, to a framework which would be more favourable to her. The case law on Rule 704(7) of the Federal Court Rules (now Rule 312 of the Federal Court Rules, 1998), and more specifically the decisions in Immuno Concepts, Inc. v. Immuno AG (1996), 69 C.P.R. (3d) 384 (F.C.T.D.), and Munsingwear Inc. v. Prouvost S.A., [1992] 2 F.C. 541 (C.A.), cannot be relied on in this way.
[14] I therefore find that the moving party did not give an adequate explanation in her affidavit for a substantial part of her initial delay, namely from March 10 to April 14, 1998, and that consequently the fourth factor in Centre Ice has not been established. For the same reasons, it must in my view be held that she did not show during the period in question that she intended to appeal the Registrar"s decision of February 19, 1998.
[15] For these reasons, I do not intend to grant the moving party"s motion for an extension of time.
[16] This is of course an unfortunate outcome for her, and one possible result is that two parties"namely the moving party and the respondent"might be entitled to registration of the same trade-mark for similar wares. That is certainly a result to be avoided. However, the way to avoid it is not with an affidavit like the one submitted by the moving party in the instant case.
[17] The motion will accordingly be dismissed with costs.
Richard Morneau
Prothonotary
MONTRÉAL, QUEBEC
April 30, 1998
Certified true translation
Peter Douglas
Federal Court of Canada
Court No. 98-T-21
BETWEEN
ANNIE CHÉLIN
Moving Party
" and "
PETIT FAUNE
Respondent
REASONS FOR ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE NO.:
STYLE OF CAUSE:
98-T-21
ANNIE CHÉLIN
Moving Party
AND
PETIT FAUNE
Respondent
PLACE OF HEARING:Montréal, Quebec
DATE OF HEARING:April 27, 1998
REASONS FOR ORDER BY RICHARD MORNEAU, PROTHONOTARY
DATE OF REASONS FOR ORDER:April 30, 1998
APPEARANCES:
Benoit Archambaultfor the moving party
Paragiota Kautsogiannis for the respondent
SOLICITORS OF RECORD:
Benoit Archambaultfor the moving party
Landreville & Ferreira
Montréal, Quebec
Paragiota Kautsogiannis for the respondent
Léger Robic Richard
Montréal, Quebec