Canada (Attorney General) v. Effigi Inc.
Federal Court of Appeal
REASONS FOR JUDGMENT
 The issue on this appeal is whether the Registrar of Trade-marks, when reviewing an application for registration under the authority conferred on him by section 37 of the Trade-marks Act, may refuse the application on the ground that it is confusing with another pending mark that was filed subsequently and cites a previous use.
 On December 19, 2000, the respondent filed an application for registration for the trade-mark MAISON UNGAVA, on the basis of proposed use. On October 19, 2001, Tricorn Investment Canada Ltd. (Tricorn) filed an application for registration for the mark UNGAVA on the basis of use of the mark in Canada since 1981. The two trade-marks are associated with the same type of wares, basically bedding products.
 On November 14, 2003, following his review under section 37 of the Act, the Registrar refused the MAISON UNGAVA trade-mark. His reasons read in part as follows:
Paragraph 37(1)(c) of the Trade-marks Act stipulates that the Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending. For the purposes of applying paragraph 37(1)(c) of the Act, it is necessary to consult the provisions of section 16 of the Act, where the dates determining entitlement are set out.
Since the present application is based on proposed use, therefore, regard must be had to the provisions of section 16(3) of the Act in order to determine entitlement. Moreover, the mark that is the subject matter of this application is confusing with a mark the application for which is based on use in Canada, the date of use being prior to the date of filing of this application; consequently the provisions of paragraph 16(3)(a) of the Act apply.
Pursuant to the foregoing and having regard to the provisions of paragraphs 37(1)(c) and 16(3)(a) of the Trade-marks Act, the applicant is not the person entitled to the registration of the MAISON UNGAVA trade-mark, because this trade-mark is confusing with another trade-mark for the registration of which an application is pending, namely UNGAVA (application no. 1,118,871), and because the UNGAVA trade-mark has been previously used in Canada by another person. Consequently, this application is refused pursuant to paragraph 37(1)(c) of the Trade-marks Act.
[Appeal Book, p. 83]
 The respondent appealed the decision under section 56 of the Act. On July 16, 2004, Mr. Justice Shore of the Federal Court of Canada allowed the appeal and ordered the Registrar to advertise the mark MAISON UNGAVA (2004 FC 1000). This is an appeal from that judgment.
 I will say at the outset that I basically subscribe to the reasons of Mr. Justice Shore.
 As there is an interaction between sections 16 and 37 of the Act in this case, it will be useful to begin by reproducing the relevant text of these provisions:
16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
(b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade-name that had been previously used in Canada by any other person.
16. (1) Tout requérant qui a produit une demande selon l’article 30 en vue de l’enregistrement d’une marque de commerce qui est enregistrable et que le requérant ou son prédécesseur en titre a employée ou fait connaître au Canada en liaison avec des marchandises ou services, a droit, sous réserve de l’article 38, d’en obtenir l’enregistrement à l’égard de ces marchandises ou services, à moins que, à la date où le requérant ou son prédécesseur en titre l’a en premier lieu ainsi employée ou révélée, elle n’ait créé de la confusion:
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne;
b) soit avec une marque de commerce à l’égard de laquelle une demande d’enregistrement avait été antérieurement produite au Canada par une autre personne;
c) soit avec un nom commercial qui avait été antérieurement employé au Canada par une autre personne.
37. (1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that
(a) the application does not conform to the requirements of section 30,
(b) the trade-mark is not registrable, or
(c) the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending,
and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed.
37. (1) Le registraire rejette une demande d’enregistrement d’une marque de commerce s’il est convaincu que, selon le cas :
a) la demande ne satisfait pas aux exigences de l’article 30;
b) la marque de commerce n’est pas enregistrable;
c) le requérant n’est pas la personne qui a droit à l’enregistrement de la marque de commerce parce que cette marque crée de la confusion avec une autre marque de commerce en vue de l’enregistrement de laquelle une demande est pendante.
Lorsque le registraire n’est pas ainsi convaincu, il fait annoncer la demande de la manière prescrite.
 The practice adhered to by the Registrar in this case is the one he has consistently followed, although it was disavowed by this Court - a mere obiter, the Registrar says - in Unitel International Inc. v. Canada (Registrar of Trade-Marks), (2000) 9 C.P.R. 127 (F.C.A.). We must therefore give some consideration to the lawfulness of this practice. The existence and duration of an administrative practice cannot frustrate the law (see Plough (Canada) Limited v. Aerosol Fillers Inc.,  1 F.C. 679 (F.C.A., pp. 683-84). Moreover, the question that is posed in this case is one of pure law, in regard to which the Registrar has no special expertise, and which may be determined independently of any evidence on the record. This case is distinguishable from Molson Breweries v. John Labatt Ltd.,  3 F.C. 145 (C.A.), where the comments by Rothstein J.A. are directed, it seems to me, to the Registrar’s conclusions in relation to the determination of distinctiveness under subsection 12(2) of the Act rather than his conclusions on the determination of the date or the relevant territory. It is the correctness standard that must be applied.
 Contrary to the Registrar’s submission, the question was indeed decided in Unitel, supra, when the Court, at paragraph 2, held that the Registrar was obliged to refuse the application for registration filed by United because it was confusing with the CP application, which had been filed earlier and was therefore "pending" within the meaning of paragraph 37(1)(c).
 Even if the Court’s remarks in Unitel were simply obiter, I would in any event have no difficulty in endorsing them. Section 37 is a complete code that governs the procedure on review of an application for registration. The Registrar is vested with considerable authority, the power to summarily refuse an application for registration. Parliament in its wisdom has put some limits on this authority, restricting it to cases where there is a breach of the requirements - more procedural than substantial - of section 30, where the mark is "not registrable" (an implicit reference to section 12) and where it is not entitled to registration, not for the reasons already set out in section 16 but solely because it is confusing with a mark that is the subject matter of a pending application. If Parliament had intended that the confusion contemplated in paragraph 37(1)(c) could also result from previous use, it could easily have repeated the language of paragraph 16(3)(c).
 The interpretation I adopt seems to me to be more logical and easier to apply than the one proposed by the Registrar. In the normal course of things, the Registrar summarily examines the applications in chronological order, beginning with the one that has the earliest date of filing. If there is no confusion with a mark that is pending when the application is filed, and if the other requirements of subsection 37(1) are fulfilled, the application is accepted for advertisement by the Registrar and anyone who claims a previous use and confusion with his own mark may file a statement of opposition under section 38. But according to the practice currently followed by the Registrar, administrative delays, which are beyond the control of a first applicant, could force him to become an objector if a subsequent applicant were to appear with an allegation of confusion and previous use. At the hearing, counsel for the Registrar was unable to cite to us any disadvantage whatsoever that might result from a "first come, first served" policy in terms of administration of the Act.
 Counsel for the Registrar relies heavily on the weight that should be given to previous use in the protection of trade-marks. This consideration is not offended by forcing a second applicant who claims previous use on the strength of a mere allegation (see Marineland Inc. v. Marine Wonderland and Animal Park Limited,  2 F.C. 558, p. 567 per Cattanach J.) to resort to the opposition procedure in order to establish, on the basis of more elaborate evidence, his right to registration on the basis of a previous use.
 I would dismiss the appeal with costs.
"Robert Décary" J.A.
"I agree. – Gilles Létourneau J.A."
"I agree. – J.D. Denis Pelletier, J.A."
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