Opposition proceeding not proper forum to challenge registered mark

In Sadhu Singh Hamdard Trust v Registrar of Trademarks (2007 FCA 335, November 2 2007), the Federal Court of Appeal (FCA) has refused to interfere with a decision of the registrar allowing the registration of a trademark.

Sadhu Singh Hamdard Trust brought a motion for an extension of time to file a notice of appeal from a decision of the registrar allowing the registration of the trademark AJIT WEEKLY. At the time of advertisement, Sadhu wrote to the registrar seeking a three-month extension to file its statement of opposition. However, for undisclosed reasons, this letter was never acknowledged by the registrar and the trademark proceeded to registration. After the mark had been registered, Sadhu brought a motion in the Federal Court for an extension of time to file a notice of appeal pursuant to Section 56 of the Trademarks Act.

The Federal Court dismissed the motion, finding that there was no decision of the registrar for Sadhu to challenge. The court noted that, although Sadhu had relied on the practice of granting an extension of time, the registrar was not bound to grant an extension. Consequently, Sadhu had simply missed the statutory filing deadline.

The FCA upheld the decision of the lower court. Before the FCA, Sadhu argued that the court had discretionary authority under Section 18 of the Federal Court Act to set aside the registration. Sadhu relied on the Federal Court decision in Ault Foods v Canada for the proposition that the court had jurisdiction to intervene in its favour even after the registration of the trademark so as to permit the registrar to exercise discretion to grant Sadhu's request for an extension of time to file its opposition.

The FCA noted that, following the decision in Ault Foods, the Trademarks Act was amended to add Subsection 39(3), which specifically permits the registrar to set aside a decision allowing registration where that decision was taken without considering a previously filed request for an extension of time to file a statement of opposition. The FCA held that:

• Subsection 39(3) provides "an adequate alternate remedy which justifies the court in declining to exercise its jurisdiction under Section 18 of the Federal Courts Act"; and
  
  
• where an extension request has not been considered, a diligent party can bring the matter to the registrar's attention prior to the issuance of a registration.

As Sadhu had failed to take advantage of a summary remedy under the Trademarks Act, it could not argue that the registrar's oversight had caused it to be put to the trouble and expense of a more onerous proceeding.

The FCA also found that Sadhu could not succeed in light of Bacardi & Co v Havana Club Holding SA, which the court cited for the proposition that "regardless of how the request is framed, an opposition proceeding is not the appropriate forum for tacit or manifest amendments to the register". The FCA noted that Sadhu, in attempting to set aside the registrar's decision, was seeking a de facto expungement of the trademark, which required Sadhu to challenge the registration on substantive grounds pursuant to Section 57 of the Trademarks Act. This could not be achieved through opposition proceedings designed to deal with disputes over proposed trademarks, which was what Sadhu sought to do by appealing the registrar's decision under Section 56 of the act.

Christina Capone Settimi, Cameron MacKendrick LLP, Toronto