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No Changing On the Fly – Court of Appeal Dismisses Substitutive Intervention in Hockey Skate Trade-Mark Dispute

SKATES EYESTAYIn 2011, Easton requested that the Registrar of Trade-marks issue a section 45 notice requiring Bauer to show that they had used the SKATES EYESTAY design trademark in the preceding three years. The next day, Bauer sued Easton for trade-mark infringement of the same trade-mark. In Late 2012,  Bauer launched a similar trade-mark action agains CCM.

The Registrar ultimately expunged Bauer’s trade-mark for lack of use. Bauer then appealed the Registrar’s decision to the Federal Court but that litigation settled between Bauer and Easton. After the settlement, CCM brought a motion pursuant to section 109 of the Federal Courts Rules to intervene in Bauer’s appeal of the Registrar’s decision to expunge the SKATES EYESTAY trade-mark. CCM’s motion was dismissed by Prothonotary Morneau, who following the Court of Appeal in Siemens held that CCM improperly sought to replace Easton as a respondent. CCM’s subsequent appeal was dismissed by Justice Harington. Bauer than appealed to the Court of Appeal.

Before the Court of Appeal, CCM argued that Justice Stratas’ decision in Pictou Landing had evolved the law of intervention over that set out by the Court of Appeal in Rothmans, Benson & Hedges v. Canada (Attorney General), [1990] 1 FC 90. The Court of Appeal disagreed holding that the decision of a judge, sitting alone, does not change the law until it is adopted by a panel of the Court. The governing case on motions for leave to intervene was Rothmans, Benson & Hedges:

[41] In my opinion, the minor differences between the Rothmans, Benson & Hedges factors and those of Pictou Landing do not warrant that we change or modify the factors held to be relevant in Rothmans, Benson & Hedges. As the Rothmans, Benson & Hedges factors are not meant to be exhaustive, they allow the Court, in any given case, to ascribe the weight that the Court wishes to give to any individual factor.

The Court of Appeal concluded that CCM was seeking to become a respondent in lieu of Easton. While agreeing with the Justice Harrington that Siemens is not an absolute bar to intervention, the Court held that a balancing of all of the relevant factors, including the ongoing trade-mark infringement/impeachment action between Bauer and CCM, did not tip the balance in CCM’s favour in its motion to intervene:

[67]           The Prothonotary was of the view that the litigation in Court File T-311-12 was a factor which had to be considered in determining whether intervener status should be given to CCM. At paragraph 15 of his reasons, the Prothonotary referred to those proceedings by saying that there was a “full debate already ongoing in File T-311-12 – a dynamic not present in Pictou Landing”. The Judge shared the Prothonotary’s view and said at paragraph 31 of his reasons that “[t]he validity of the trade-mark is in issue in the litigation between Bauer and CCM in docket T-311-12. That is the forum in which CCM should make its case”.

[68]           In my view, there was no error in so concluding on the part of the Prothonotary and the Judge. I agree with Bauer’s assertion that allowing CCM to intervene would not, in any event, necessarily simplify and expedite the ongoing dispute over Bauer’s trade-mark. However, I need not go into this in greater detail since both the Prothonotary and the Judge, exercising their respective discretions, were of the view that litigation in File T-311-12 was a relevant consideration in determining whether CCM should be allowed to intervene. I can see no basis on which I could conclude that it was wrong on their part to take the ongoing litigation between the parties as a relevant factor. Again, I am of the view that it would have been an error not to take such litigation into consideration.

A copy of the Court of Appeal’s decision may be found here.