Absent Special Circumstances, Interlocutory Trademark Decision Not Subject To Judicial Review

McDowell applied for judicial review of an interlocutory decision of the Trade-Marks Opposition Board that had refused to grant McDowell leave to amend its Statement of Opposition to add a ground of opposition that was inadvertently omitted. The amendment was sought 4 years after its Statement of Opposition, and after Automatic Princess had filed its written arguments in the opposition proceeding.

The parties agreed that an interlocutory decision can only be judicially reviewed when special circumstances exist. The policy rationale for this is to prevent a party from splitting its case in an opposition proceeding. The Court explained further that:

[21] Without special or exceptional circumstances, parties cannot proceed to the court system until the administrative process is complete. Parties must pursue all effective remedies that are available within the administrative process and only if the process is complete or there is no effective remedy, may they proceed to court (CB Powell Ltd v Canada (Border Services Agency), 2010 FCA 61). This means that special circumstances may exist if there is no other appropriate remedy (see Szczecka).

McDowell argued there were no adequate alternative remedies within its application and therefore there were special circumstances. Automatic Princess argued that McDowell’s position was basically that where an interlocutory decision is finally dispositive of a procedural issue, that fact will be a special circumstance justifying judicial review.

The Court agreed with Automatic Princess and dismissed the application, holding it was not in the interests of justice to exercise its discretion to judicially review the interlocutory decision.

The Court noted that effective remedies could be sought in an expungement proceeding under s. 57 of the Trade-marks Act. Further, even without judicial review of the decision on the request for leave, McDowell could still be successful in the opposition proceeding without amending its Statement of Opposition. Costs were awarded against McDowell in the sum of $3,500, payable forthwith.

The decision is available here.