TRADE MARKS |
Sullivan Entertainment Inc. v. Anne of Green Gables Licensing Authority Inc.
T-1634-99
2002 FCT 1321, Heneghan J.
20/12/02
34 pp.
Motion for partial summary judgment against Anne of Green Gables Licensing Authority Inc. (AGGLA), one of three defendants in proceeding--Defendant David Macdonald, descendant of Lucy Maud Montgomery; defendant Ruth Macdonald, daughter-in-law of Lucy Maud Montgomery also involved in proceeding--Lucy Maud Montgomery, author of Anne of Green Gables (AGG)--AGG publicly and popularly associated with Province of PEI--During 1980s, Sullivan and corporate affiliates produced two television mini-series entitled "Anne of Green Gables" and "Road to Avonlea" both based on book Anne of Green Gables--Both productions original works based on characters, settings from literary works authored by Lucy Maud Montgomery--Three specific issues emerge from motion for partial summary judgment: (1) status of plaintiff to bring motion; (2) whether official mark can be assigned from one public authority to another; (3) whether each of official marks in issue adopted and used within meaning of Trade-marks Act, s. 9(1)(n)(iii)-- Regarding first issue, defendant argued plaintiff lacks standing to bring motion for partial summary judgment as not person interested--Term "interested person" considered in Mihaljevic v. British Columbia (1990), 34 C.P.R. (3d) 54 (F.C.A.)-- Person interested if reasonable apprehension will suffer prejudice of some sort if trade-mark not removed from register--Record clear regarding status of plaintiff to bring action considered, pending full trial on status issue, albeit in context of motion to strike--Argument of defendant must fail--As to second issue Act, s. 9(1)(n)(iii) applying--Issue of assignability of official mark to be determined by assessing status of transferee--Status of AGGLA as public authority, or otherwise, remains undecided in present case--Proper factual context not established to support argument, accordingly, argument must fail--Regarding third issue of whether AGGLA can rely on use by licensees to show adoption, use as required by s. 9(1)(n)(iii)--In FileNET Corp v. Canada (Registrar of Trade-marks) (2002), 22 C.P.R. (4th) 328 (F.C.A.), Federal Court of Appeal said adoption question of fact--However, motion for partial summary judgment should not decide on issue of adoption and use in view of nature and volume of material submitted before Court--In Marine Atlantic Inc. v. Blyth (1994), 77 F.T.R. 97 (F.C.T.D.), Court decided inappropriate to grant summary judgment on issue impossible to separate from other pending issue in action--Same reasoning applied in present case--Motion for summary judgment dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 9(1)(n)(iii), 48, 50 (as. am. by S.C. 1993, c. 44, s. 233).