TRADE MARKS |
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Canadian Rehabilitation Council for the Disabled DBA Easter Seals/March of Dimes National Council v. Rehabilitation Foundation for the Disabled DBA Ontario March of Dimes
T-610-01
2004 FC 1357, O'Reilly J.
1/10/04
14 pp.
Judicial review of Registrar's decision to issue public notices that respondent adopted, used marks "March of Dimes" and "Ontario March of Dimes" pursuant to Trade-marks Act (Act), s. 9(1)(n)(iii)--When Registrar gives such public notice, applicant acquires "official marks" which are given enhanced protection--Applicant wanting to prove with new evidence that respondent using marks in question under licensing agreement and not having independent legal entitlement to marks--Applicant present-day incarnation of Canadian Foundation for Poliomyelitis (Canadian Foundation) created in 1951 to raise funds for polio patients under banner "March of Dimes"--Respondent also created in 1951 as one of several provincial chapters of national body--Later, Canadian Foundation registered trade-mark "The March of Dimes" and assigned trade-mark to newly-created applicant, a merger of Canadian Foundation and Crippled Children-- Applicant entered into renewable licensing agreement with respondent to use "The March of Dimes"--Parties' conduct over years suggested agreement still in force despite absence of express renewal each year--Some time later, applicant asked Registrar to issue public notices for marks "March of Dimes" and "The March of Dimes"--Registrar complied-- Respondent's dissatisfaction with applicant's performance as national charity under March of Dimes banner caused respondent to seek public notices for marks "March of Dimes" and "Ontario March of Dimes" under Act, s. 9(1)(n)(iii)-- Respondent organizing fundraising campaigns under both banners for decades--Arguing has strong claim to name "Ontario March of Dimes" since applicant never had entitlement to mark either by registration or by issuance of public notice--Registrar's decision to issue public notice under Act, s. 9(1)(n)(iii) based on assertion public authority has adopted, used official mark in question--All forms of "March of Dimes" marks used by respondent derived from licensing agreement with applicant--Respondent having no independent legal entitlement to marks--Applicant merely tolerated respondent's use of marks since advanced charitable causes to which applicant devoted--Public notices previously issued to applicant for "The March of Dimes" and "March of Dimes" prevented respondent, other public authorities from using any similar mark--Marks in question protected by Act, s. 9(1) before respondent sought own public notices--Unlike trade-marks, Act not providing that licensee's use of official mark for benefit of licensor--In prior cases before courts, public authorities successful in proving use of mark for purposes of Act, s. 9(1)(n)(iii) by showing licensees' use of mark--Facts in present case different since respondent licensee requesting public notice of mark that is subject of licensing agreement with applicant licensor--Respondent failing to prove adoption, use of mark since use of mark under licence from another public authority not constituting "adoption and use" for purposes of Act, s. 9(1)(n)(iii)--In accordance with review standard of correctness, Registrar's decision to issue public notices for respondent's requested marks incorrect and set aside--Application allowed--Trade-marks Act, R.S.C., 1985, c. T-13, s. 9(1)(n)(iii).