[2002] 2 F.C. 148
2001 FCA 296
A-329-00
AstraZeneca AB (Appellant) (Respondent)
v.
Novopharm Limited (Respondent) (Appellant)
and
Registrar of Trade-marks (Respondent) (Respondent)
A-333-00
Ciba-Geigy Canada Ltd. (Appellant) (Respondent)
v.
Apotex Inc. (Respondent) (Appellant)
and
Registrar of Trade-marks (Respondent) (Respondent)
A-334-00
Ciba-Geigy Canada Ltd. (Appellant) (Respondent)
and
Novopharm Limited (Respondent) (Appellant)
and
Registrar of Trade-marks (Respondent) (Respondent)
Indexed as: Novopharm Ltd. v. AstraZeneca AB (C.A.)
Court of Appeal, Desjardins, Sexton and Sharlow JJ.A. —Toronto, June 12; Ottawa, October 18, 2001.
Trade-marks — Practice — Registrar dismissing opposition to trade-marks for tablet/capsule design on ground pleadings in statement of opposition insufficient because not providing sufficient details for applicant to respond thereto contrary to Trade-marks Act, s. 38(3)(a) — Trial Judge allowing appeal on ground not complying with s. 30(h), trade-mark not distinctive — Not considering sufficiency of pleading in statement of opposition — Registrar’s practice of considering sufficiency of statement of opposition in conjunction with consideration of merits of opposition running risk decision on procedural matter contaminated by evidence not available when statement of opposition filed — Also ineffective as forces parties to commit time, resources to present, test evidence, argue merits regardless of sufficiency of statement of opposition — Sufficiency of pleadings should be determined on interlocutory basis — Unnecessary to decide whether Registrar’s finding on sufficiency reasonable simpliciter because by time matter heard by Judge appellant completely aware of opponent’s case — By declining opportunity to file additional evidence, appellant indicating filed all evidence wished to file — No error in Trial Judge’s assessment Registrar’s finding trade-mark distinctive, perverse in absence of evidence from consumers that colour, shape of appellant’s products distinguish them in marketplace.
Administrative Law — Statutory appeals — Standard of review — Additional evidence may be adduced before Court on Trade-marks Act, s. 56 appeal — Where additional evidence filed, standard of review correctness — Where no additional evidence filed, standard of review reasonableness simpliciter or whether Registrar clearly wrong.
These were appeals from Trial Division decisions allowing the respondents’ appeals from decisions of the Registrar of Trade-marks, rejecting opposition to trade-marks for capsule and tablet designs. While finding that the proposed trade-marks were distinctive, the Registrar found that the pleadings in the statements of opposition did not satisfy the requirements of paragraph 38(3)(a), which states that a statement of opposition shall set out the grounds of opposition in sufficient detail to enable the applicant to reply thereto. The Trial Judge allowed the appeals on the grounds that: (1) the appellants had not complied with the requirements of paragraph 30(h), which requires a drawing of the trade-mark and such number of accurate representations as shall be prescribed to accompany an application; and (2) their trade-marks were not distinctive of the wares described in the trade-mark applications. He did not consider the Registrar’s findings that the respondents’ oppositions were insufficiently pleaded.
The issue was whether the Registrar erred in finding that the statements of opposition were insufficiently pleaded pursuant to paragraph 38(3)(a).
Held, the appeals should be dismissed.
On an appeal under section 56 evidence in addition to that adduced before the Registrar may be presented and the Court may exercise any discretion vested in the Registrar. Additional evidence was filed in A-329-00 before the Trial Judge, as a result of which the standard of review on the merits was correctness. In the other two appeals, since no additional evidence was filed, the standard of review to be applied to the decisions of the Registrar was reasonableness simpliciter, or whether the Registrar was “clearly wrong”.
The Registrar seems to have adopted the practice of considering the sufficiency of the statement of opposition not as an interlocutory matter, but in conjunction with a consideration of the merits of the opposition. This practice not only runs the risk that the Registrar’s decision on the procedural matter will be contaminated by the evidence in the record that was not available at the time the statement of opposition was filed, but it also seems strikingly inefficient. By considering both matters together, the Registrar forces the parties to commit time and resources to present evidence, test that evidence and argue the merits of the opposition. If the statement of opposition turns out to have been insufficient, all of this time and expense has been for naught. The sufficiency of pleadings should be determined on an interlocutory basis. Possible amendments with leave under sections 47 and 40 may then be open to the parties prior to evidence.
It was unnecessary to decide whether the Registrar’s finding on sufficiency was reasonable simpliciter or not. By the time the matter came before the Judge, the appellant was completely aware of the opponent’s case. Subsection 56(5) permits the parties to adduce further evidence in addition to that adduced before the Registrar, so that there could have been no prejudice to the appellant when the matter came before the Trial Judge. The appellant declined to take advantage of this opportunity thus indicating that it had filed all the evidence it wished before the Registrar. This may explain why the Trial Judge simply dealt with the matter on the merits and ignored the procedural point on the pleadings.
The Judge held that the Registrar, in relying upon evidence that the appellants’ products were popular and successful in the pharmaceutical marketplace and that there were no other products interchangeable with them, failed to apply the established principles of law with respect to distinctiveness. He found that the appellants had failed to present evidence from any consumers that the colour and shape of the appellants’ products served to distinguish those products within any marketplace. He concluded that the Registrar’s findings, that the appellant’s trade-marks were, in fact, distinctive, were perverse. The Judge made no error in his assessment of the evidence on the distinctiveness issue.
STATUTES AND REGULATIONS JUDICIALLY CONSIDERED
Trade Marks Act, R.S.C. 1970, c. T-10, s. 37(3)(a).
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 30(h), 38(1) (as am. by S.C. 1992, c. 1, s. 134), (2),(3)(a),(5),(6) (as am. by S.C. 1993, c. 15, s. 66), (7) (as am. idem), 47, 54, 56.
Trade-marks Regulations (1996), SOR/96-195, ss. 39, 40, 41, 42, 43, 44, 46.
Loi sur les marques de commerce, S.R.C. 1970, ch. T-10, art. 37(3)a).
Règlement sur les marques de commerce (1996), DORS/96-195, art. 39, 40, 41, 42, 43, 44, 46.
CASES JUDICIALLY CONSIDERED
APPLIED:
Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (2000), 5 C.P.R. (4th) 180; 252 N.R. 91 (C.A.); Novopharm Ltd. v. Bayer Inc. (2000), 9 C.P.R. (4th) 304; 264 N.R. 384 (F.C.A.); Canada (Director of Investigation and Research) v. Southam Inc., [1997] 1 S.C.R. 748; (1997), 144 D.L.R. (4th) 1; 50 Admin. L.R. (2d) 199; 71 C.P.R. (3d) 417; 209 N.R. 20; Canada (Attorney General) v. Public Service Alliance of Canada, [1993] 1 S.C.R. 941; (1993), 101 D.L.R. (4th) 673; 11 Admin. L.R. (2d) 59; 93 CLLC 14,022; 150 N.R. 161; Carling Breweries Ltd. v. Molson Companies Ltd., [1984] 2 F.C. 920 (1984), 1 C.P.R. (3d) 191 (T.D.); affd (1988), 16 C.I.P.R. 157; 19 C.P.R. (3d) 129; 93 N.R. 25 (F.C.A.).
APPEALS from Trial Division decisions allowing the respondents’ appeals against decisions of the Registrar of Trade-marks, rejecting opposition to trade-marks for capsule and tablet designs (Novopharm Ltd. v. Astra Aktiebolag (2000), 6 C.P.R. (4th) 16; 187 F.T.R. 119 (F.C.T.D.); revg (1997), 83 C.P.R. (3d) 554 (T.M.O.B.); Novopharm Ltd. v. Ciba-Geigy Canada Ltd., [2000] F.C.J. No. 508 (T.D.) (QL); revg (1997), 81 C.P.R. (3d) 558 (T.M.O.B.); Novopharm Ltd. v. Ciba-Geigy Canada Ltd. (2000), 6 C.P.R. (4th) 224 (F.C.T.D); revg (1997), 81 C.P.R. (3d) 558 (T.M.O.B.)). Appeals dismissed.
APPEARANCES:
Gunars A. Gaikis and Nancy P. Pei for appellants (respondents).
Carol V. E. Hitchman and Paula M. Bremner for respondent (appellant) Novopharm Limited and respondent (respondent) Registrar of Trade-marks.
SOLICITORS OF RECORD:
Smart & Biggar, Toronto, for appellants (respondents).
Hitchman & Sprigings, Toronto, for respondent (appellant) Novopharm Limited and respondent (respondent) Registrar of Trade-marks.
The following are the reasons for judgment rendered in English by
[1] The Court: These are three appeals from decisions of the Trial Division [Novopharm Ltd. v. Astra Aktiebolag (2000), 6 C.P.R. (4th) 16; Novopharm Ltd. v. Ciba-Geigy Canada Ltd., [2000] F.C.J. No. 508 (QL); Novopharm Ltd. v. Ciba-Geigy Canada Ltd. (2000), 6 C.P.R. (4th) 224] which allowed appeals of the respondents against decisions of the Registrar of Trade-marks (the Registrar).
[2] In appeal A-329-00, the Registrar rejected Novopharm’s opposition to Astra’s trade-mark application No. 692,410 (ʹ410) for the trade-mark “Capsule Design Brown-Pink”.
[3] In appeals A-333-00 and A-334-00, the Registrar rejected, in one common decision, Apotex and Novopharm’s oppositions to Ciba-Geigy’s trade-mark applications, Nos. 630,536 (ʹ536) and 630,537 (ʹ537) for the trade-marks “Tablet Design (Pink)” and “Tablet Design”, respectively.
[4] The respondents appealed the decisions of the Registrar to the Trial Division pursuant to section 56 of the Trade-marks Act [R.S.C., 1985, c. T-13] (the Act). The Trial Judge allowed the appeals on the grounds that (1) the appellants had not complied with the requirements of paragraph 30(h) of the Act; and that (2) their trade-marks were not distinctive of the wares described in the trade-mark applications. He did not, however, consider the Registrars findings in appeals A-333-00 and A-334-00 that the respondents’ oppositions were insufficiently pleaded contrary to the requirements of paragraph 38(3)(a) of the Act.
The facts
[5] In appeal A-329-00, Astra’s ʹ410 trade-mark application f or the trade-mark “Capsule Design Brown-Pink” was based on use of the mark in Canada since at least as early as June of 1989 in association with the wares “pharmaceutical preparations, namely omeprazole”. The application included a drawing which depicted two perspectives of the mark and a verbal description which read as follows:
The design consists of the colour pink applied to the whole of the visible surface of the opaque capsule as shown in the drawings, and the colour reddish-brown applied to the cap portion of the capsule as also shown in the drawings, and in the specimens filed with this application. The drawing is lined for the colour pink and brown and is claimed as a feature. The capsule shown in the dotted outline does not form part of the trade-mark.
[6] On February 8, 1994, Novopharm filed a statement of opposition on the grounds, inter alia, that the application did not include an accurate representation of the alleged trade-mark contrary to section 30 of the Act, and that the alleged trade-mark was not distinctive in view of the two-tone pink and brown capsules of others.
[7] Astra filed a counterstatement on March 31, 1994, denying the allegations and raising the argument that the grounds of opposition were insufficiently pleaded, contrary to the requirements of paragraph 38(3)(a) of the Act. Thereafter, on March 18, 1997, both Novopharm and Astra filed written arguments and various affidavits. An oral hearing before the Registrar was held.
[8] In appeal A-333-00, Ciba-Geigy’s application to register the ʹ536 trade-m ark “Tablet Design (Pink)” for “pharmaceutical preparations, namely diclofenac sodium” was based on proposed use. The application, as revised on February 7, 1991, stated:
The trade-mark is shown in the attached drawing and consists of a light pink colour applied to the whole of the visible surface of the tablet as shown in the drawings. The drawing is lined for the colour pink. The tablet shown in the dotted outline does not form part of the trade-mark.
[9] In appeal A-334-00, Ciba-Geigy’s application to register the ʹ537 trade-mark “Tablet Design” for “pharmaceutical preparations, namely diclofenac sodium” was based on use of the mark in Canada at least as early as 1982. Ciba-Geigy later filed a revised application changing the claimed date of first use to October 1985. The application included a drawing which depicted two perspectives of the mark and a verbal description as follows:
The trade-mark is shown in the attached drawing and consists of a pink colour applied to the whole of the visible surface of the tablet as shown in the drawings and in the specimens affixed to the form of the application. The drawing is lined for the colour pink. The tablet shown in the dotted outline does not form part of the trade-mark.
[10] On October 17, 1991, Apotex and Novopharm filed statements of opposition against the ʹ536 and ʹ537 trade-mark applications, respectively. The oppositions were based on the same grounds as those stated earlier in appeal A-329-00.
[11] Ciba-Geigy filed counterstatements denying the allegations on the same grounds as those stated earlier in appeal A-329-00.
[12] Apotex, Novopharm and Ciba-Geigy filed various affidavits in support of their respective claims. At the hearing before the Registrar, Apotex’s opposition against the ʹ536 application and Novopharm’s opposition against the ʹ537 application were heard together. One decision was rendered covering both applications. Astra’s ‘410 application was addressed in a separate decision.
The Registrar’s decisions
[13] The Registrar rejected the three oppositions (see Novopharm Ltd. v. Astra Aktiebolag (1997), 83 C.P.R. (3d) 554; Novopharm Ltd. v. Ciba-Geigy Canada Ltd. (1997), 81 C.P.R. (3d) 558). He held that a trade-mark application which incorporates a drawing, which accurately depicts at least one perspective of a tablet, satisfies paragraph 30(h) of the Act so long as two conditions are met:
(1) a specimen of the tablet has been filed with the Office of the Registrar; and
(2) the written description of the mark contained in the trade-mark application refers to the specimen tablet filed with the Office of the Registrar.
(a) Appeal A-329-00 (the ʹ410 application)
[14] In appeal A-329-00, the Registrar held that the drawing included with the trade-mark application ʹ410 accurately depicted one perspective of Astra’s capsule, and criteria (1) and (2) were satisfied. Accordingly, the trade-mark application complied with paragraph 30(h) of the Act. The fact that the specimens filed by Astra were subject to deterioration over time did not alter this conclusion. Further, the fact that Astra’s capsules, as actually used, included a black “20” marking was not relevant since nothing turned on the appearance of that marking.
[15] The Registrar noted that the onus was on the appellant to show that a proposed trade-mark actually distinguishes its wares from others. The presence of this onus meant that the issue would be decided against the appellant unless a determinate conclusion could be reached on the basis of the evidence. The Registrar reviewed Astra’s evidence with respect to the heavy sales and promotion of the wares, as well as the evidence supporting the contention that doctors, pharmacists and consumers recognize medication by the colour, shape and size of a tablet and have some familiarity with the subject tablet. The Registrar held that the evidence submitted by the appellant was sufficient, on a balance of probabilities, to show that its mark was distinctive at the time of the application. He considered, however, that the pleadings in the statement of opposition were insufficient to include an allegation of non-distinctiveness based on improper trade-mark use by the appellant’s subsidiary/distributer because it had not been specifically pleaded or alluded to. He added that even if he were to interpret the opponent’s pleading broadly, he would not have found that the subject mark was not distinctive of the appellant’s product.
(b) Appeals A-333-00 and A-334-00 (the ʹ536 and ʹ537 applications)
[16] In appeals A-333-00 and A-334-00, the Registrar considered first Ciba-Geigy’s ‘537 application. He found that it included accurate depictions of the tablet from two perspectives, and that criteria (1) and (2) were satisfied. He concluded that the requirements of paragraph 30(h) had been met.
[17] The Registrar further found that the evidence established that the appearance of Ciba-Geigy’s tablet had acquired a certain measure of distinctiveness at the time of the application. The opponent could not identify any pharmaceutical product containing diclofenac, with a similar get up as the appellant’s, which has been sold in Canada by anyone other than the appellant. He added that the opponent’s evidence, relating to the desirability of allowing manufacturers of generic pharmaceuticals to market their wares in the same or similar appearance to that of the original manufacturer, was not relevant to the issue before him.
[18] As the pleadings, issues and evidence were essentially identical in both the Apotex and Novopharm oppositions, Apotex’s opposition to the ‘536 application was rejected for the same reasons as was Novopharm’s opposition to the ʹ537 application.
[19] The Registrar found, however, the pleadings in the statements of opposition to be insufficient. He said (Novopharm Ltd. v. Ciba-Geigy Canada Ltd. (1997), 81 C.P.R. (3d) 558, at page 564):
I agree with the applicant that the opponent’s pleadings do not set out sufficient details to enable the applicant to reply and that the subject opposition can be dismissed forthwith for this reason. The “pink tablets” alluded to in the statement of opposition should have been described in sufficient particulars to enable the applicant to easily and conclusively identify the “pink tablets” relied on by the opponent. The applicant should not be put in a position where it must investigate the opponent’s products, and third party products, and then decide for itself which products the opponent might be referring to. [My emphasis.]
[20] The Registrar indicated that his conclusions on the merits of the oppositions were only made in the event that he might be wrong on the sufficiency of the opponents’ pleadings.
[21] Apotex and Novopharm appealed the Registrar’s decisions to the Federal Court Trial Division.
The Trial Division
[22] All three decisions of the Trial Division are reported (see Novopharm Ltd. v. Astra Aktiebolag (2000), 6 C.P.R. (4th) 16 (F.C.T.D.), Rouleau J.; Novopharm Ltd. v. Ciba-Geigy Canada Ltd., [2000] F.C.J. No. 508 (F.C.T.D.) (QL), Rouleau J.; Novopharm v. Ciba-Geigy Canada Ltd. (2000), 6 C.P.R. (4th) 224 (F.C.T.D.) (QL), Rouleau J.). They therefore do not need to be summarized. It suffices to say that the Trial Judge did not deal with the threshold issue raised by the appellants, namely that the Registrar, in appeals A-333-00 and A-334-00 (the ‘536 and ‘537 applications), made no reviewable error in finding that the statements of opposition were insufficiently pleaded pursuant to paragraph 38(3)(a) of the Act.
[23] Prior to dealing with the merits in appeal A-329-00 (the ‘410 application) and with the threshold issue and the merits in appeals A-333-00 and A-334-00 (the ‘536 and ‘537 applications), we must determine the standard of review applicable by the Trial Division when reviewing decisions made by the Registrar.
The applicable standard of review
[24] Section 56 of the Act provides for a right of appeal from a decision of the Registrar to the Federal Court Trial Division. On an appeal under this section, evidence in addition to that adduced before the Registrar may be presented and the Court may exercise any discretion vested in the Registrar (subsection 56(5) of the Act).
[25] In Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), this Court discussed the standard of review to be applied under a section 56 appeal. An appeal under this section is not a trial de novo in the strict sense of the term. The appeal involves, at least in part, a review of the findings of the Registrar. As stated by this Court [at paragraph 51]:
Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar’s expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar’s findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar’s decision.
[26] This view has recently been reaffirmed by this Court in Novopharm Ltd. v. Bayer Inc. (2000), 9 C.P.R. (4th) 304 (F.C.A.), at pages 305-306.
[27] In appeal A-329-00 (the ‘410 application), the respondent Novopharm filed additional evidence before the Trial Judge, namely the affidavits of a patent chemist with Novopharm, Mr. McHugh, and the secretary for N.A. Search Inc., Mr. Dawson.
[28] Considering this new evidence brought before the Trial Judge, the standard of review on the merits is correctness.
[29] In appeals A-333-00 and A-334-00, no additional evidence was filed by the parties.
[30] Therefore, the standard of review to be applied with regard to the decisions of the Registrar in appeals A-333-00 and A-334-00 is reasonableness simpliciter.
[31] What is the standard of reasonableness simpliciter?
[32] In Canada (Director of Investigation and Research) v. Southam Inc., [1997] 1 S.C.R. 748, at paragraph 54, Iacobucci J., for the Court, explains that the standard as to whether the decision of a tribunal is unreasonable is more deferential than the standard of correctness but less deferential than the standard of patent unreasonableness. He further explains in paragraphs 60 and 62:
Even as a matter of semantics, the closeness of the “clearly wrong” test to the standard of reasonableness simpliciter is obvious. It is true that many things are wrong that are not unreasonable; but when “clearly” is added to “wrong”, the meaning is brought much nearer to that of “unreasonable”. Consequently, the clearly wrong test represents a striking out from the correctness test in the direction of deference. But the clearly wrong test does not go so far as the standard of patent unreasonableness. For if many things are wrong that are not unreasonable, then many things are clearly wrong that are not patently unreasonable (on the assumption that “clearly” and “patently” are close synonyms). It follows, then, that the clearly wrong test, like the standard of reasonableness simpliciter, falls on the continuum between correctness and the standard of patent unreasonableness. Because the clearly wrong test is familiar to Canadian judges, it may serve as a guide to them in applying the standard of reasonableness simpliciter.
…
In the final result, the standard of reasonableness simply instructs reviewing courts to accord considerable weight to the views of tribunals about matters with respect to which they have significant expertise. While a policy of deference to expertise may take the form of a particular standard of review, at bottom the issue is the weight that should be accorded to expert opinions. In other words, deference in terms of a “standard of reasonableness” and deference in terms of “weight” are two sides of the same coin.
[33] Accordingly, the correct test to be applied in appeals A-333-00 and A-334-00 is whether the Registrar was “clearly wrong”. (See Canada (Attorney General) v. Public Service Alliance of Canada, [1993] 1 S.C.R. 941, at page 964, where the words “clearly irrational” are equated to the standard of patent unreasonableness.)
Analysis
(a) The relevant statutory provision
[34] Ciba-Geigy, which is the appellant in both appeals A-333-00 and A-334-00, and the applicant before the Registrar, relied on paragraph 38(3)(a) of the Act to claim insufficiency in the statement of opposition. This paragraph of the Act reads thus:
38… .
(3) A statement of opposition shall set out
(a) the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and
[35] In Carling Breweries Ltd. v. Molson Companies Ltd., [1984] 2 F.C. 920 (T.D.); affirmed by (1988), 19 C.P.R. (3d) 129 (F.C.A.), Strayer J. (as he then was) referred to paragraph 37(3)(a) [R.S.C. 1970, c. T-10], now paragraph 38(3)(a), which requires that the statement of opposition set out “the grounds of opposition in sufficient detail to enable the applicant to reply thereto”. He then stated (at page 924):
It is an elementary condition of fairness that each party be adequately informed of the case it has to meet.
(b) The proceedings in opposition
[36] The respondents claim that the pleadings in a statement of opposition are not “pleadings” in an action, but are akin to a notice of application which is followed by the filing of evidence. They say the appellant understood the case against it as evidenced by the detailed written arguments it filed with the Registrar (see Appeal Book, A-333-00, vol. IV, tab 23, at page 1297, particularly at page 1366 ff.).
[37] We find it opportune to make the following observations on the proceedings in opposition.
[38] Subsection 38(1) [as am. by S.C. 1992, c. 1, s. 134] of the Act prescribes that within two months after the advertisement of an application for registration of a trade-mark, a person may, on payment of the prescribed fee, file a statement of opposition with the Registrar. The statement of opposition must be based on the grounds found in subsection 38(2) of the Act and must be in conformity with subsection 38(3). If the Registrar finds that the statement of opposition raises a substantial issue for decision, he then forwards a copy of that statement of opposition to the applicant (subsection 38(5) of the Act) who, within one month, must file a counterstatement (subsection 38(6) [as am. by S.C. 1993, c. 15, s. 66] of the Act and section 39 of the Trade-marks Regulations (1996) [SOR/96-195], (the Regulations)). The opponent must, within one month after the service of the counterstatement, file evidence by way of affidavit, statutory declaration or in accordance with section 54 of the Act and section 41 of the Regulations. The applicant must, within one month after the service of the opponent’s evidence, file his own evidence (section 42 of the Regulations). Within the month which follows, the opponent is entitled to file evidence strictly confined to matters in reply (section 43 of the Regulations). Cross-examination may be ordered (section 44 of the Regulations). Written arguments may be filed (section 46 of the Regulations). A hearing is then held (subsection 38(7) [as am. by S.C. 1993, c. 15, s. 66] of the Act and section 46 of the Regulations).
[39] Pleadings precede evidence. The evidence subsequently adduced depends on the allegations contained in the statement of opposition and in the counterstatement. The sufficiency of those allegations is, under the Act, a prerequisite to the filing of evidence.
[40] The Registrar seems to have adopted the practice of considering the sufficiency of the statement of opposition not as an interlocutory matter, but in conjunction with a consideration of the merits of the opposition. This practice not only runs the risk that the Registrar’s decision on the procedural matter will be contaminated by the evidence in the record that was not available at the time the statement of opposition was filed, but it also seems strikingly inefficient. By considering both matters together, the Registrar forces the parties to commit time and resources to present evidence, test that evidence and argue the merits of the opposition. If the statement of opposition turns out to have been insufficient, all of this time and expense has been for naught.
[41] The sufficiency of pleadings should, in our view, be determined on an interlocutory basis. Possible amendments with leave under section 47 of the Act and section 40 of the Regulations may then be open to the parties prior to evidence.
(c) The disposition of these appeals
[42] We find it unnecessary in appeals A-333-00 and A-334-00 (the ‘536 and ‘537 applications) to decide whether the Registrar’s finding on sufficiency was reasonable simpliciter or not.
[43] By the time the matter came before the Judge below, the appellant was completely aware of the opponent’s case. Subsection 56(5) of the Trade-marks Act permits the parties to adduce further evidence in addition to that adduced before the Registrar, so that there could have been no prejudice to the appellant when the matter came before the Trial Judge. The appellant declined to take advantage of this opportunity thus indicating that it had filed all the evidence it wished before the Registrar. This may explain why the Trial Judge simply dealt with the matter on the merits and ignored the procedural point on the pleadings.
[44] We turn to a consideration of the merits of the opponents’ submissions in all three appeals that the trade-marks applied for by the appellants were not distinctive.
[45] The Judge below held that the Registrar, in relying only upon evidence that the appellants’ products were popular and successful in the pharmaceutical marketplace and that there were no other products interchangeable with them, failed to apply the established principles of law with respect to distinctiveness. He found that the appellants had f ailed to present evidence from any consumers (doctors, pharmacists or patients) that the colour and shape of the appellants’ products served to distinguish those products within any marketplace. He concluded that the Registrar’s findings, that the appellant’s trade-marks were, in fact, distinctive, were perverse.
[46] In our opinion, the Judge below made no error in his assessment of the evidence available on the distinctiveness issue. We agree with his assessment.
[47] We would dismiss each of the appeals with costs.