Sullivan Entertainment Inc. v. Anne of Green Gables Licensing Authority Inc.

Sullivan Entertainment Inc. v. Anne of Green Gables Licensing Authority Inc.
Court (s) Database
Federal Court Decisions
Date
2002-12-20
Neutral citation
2002 FCT 1321
File numbers
T-1634-99
Notes
Digest
Decision Content
Date: 20021220
Docket: T-1634-99
Neutral citation: 2002 FCT 1321
BETWEEN:
SULLIVAN ENTERTAINMENT INC.
Plaintiff
(Defendant to the Counterclaim)
and
ANNE OF GREEN GABLES LICENSING AUTHORITY INC.,
DAVID MACDONALD and RUTH MACDONALD
Defendants
(Plaintiffs by Counterclaim)
REASONS FOR ORDER
HENEGHAN, J.
INTRODUCTION
[1] The Plaintiff Sullivan Entertainment Inc. ("Sullivan") brings a motion pursuant to the Federal Court Rules, 1998 for partial summary judgment against Anne of Green Gables Licensing Authority Inc. ("AGGLA"), one of the Defendants, Plaintiffs by Counterclaim, in this proceeding.
THE PARTIES
[2] Sullivan is a body corporate, incorporated under the laws of Ontario and carrying on the business of film production.
[3] Anne of Green Gables Licensing Authority Inc. is a body corporate created by Letters Patent issued by the Province of Prince Edward Island, pursuant to the Companies Act, R.S.P.E.I., 1988, Chap. C-14. Its incorporation date is May 26, 1994.
[4] David Macdonald is a descendant of Lucy Maud Montgomery and Ruth Macdonald is a daughter-in-law of Lucy Maud Montgomery.
BACKGROUND
[5] Lucy Maud Montgomery was an author who is well known for her creation of the little red haired girl known as "Anne of Green Gables". Anne of Green Gables is publicly and popularly associated with the Province of Prince Edward Island. This character continued to inspire future generations of artists and artisans, including Sullivan.
[6] In the 1980's, Sullivan and its corporate affiliates produced two television mini-series based on the book Anne of Green Gables, entitled "Anne of Green Gables" and "Anne of Green Gables-The Sequel". They also produced motion pictures and the television series "Road to Avonlea", based on the book. These productions, "Anne of Green Gables", "Anne of Green Gables-The Sequel" and "Road to Avonlea" are original works based on the characters and settings from the literary works authored by Lucy Maud Montgomery.
[7] Others, too have drawn inspiration from this creation of Lucy Maud Montgomery. David Macdonald and Ruth Macdonald filed two trade-mark applications on February 26, 1990. The first, Canadian trade-mark application number 652012, was for the trade-mark ANNE OF GREEN GABLES. The application issued to registration on February 11, 1998.
[8] The second trade-mark application was number 652011 for the trade-mark ANNE OF GREEN GABLES Design, and the application issued to registration on June 1, 1998 under number 495616.
[9] Further, the Macdonalds acquired trade-mark registration number 277120 for the trade-mark GREEN GABLES DOLL HOUSE Design and trade-mark registration number 279147 for the trade-mark GREEN GABLES TOY Design, pursuant to an assignment effective July 27, 1992.
[10] On August 27, 1992, the province of Prince Edward Island ("PEI") requested the Registrar of Trade-Marks to give further notice of its adoption and use as official marks, nine marks.
[11] On May 10, 1994, PEI requested the Registrar of Trade-Marks to give public notice of its adoption and use of ANNE'S LAND DAYTOUR as an official mark. This mark was published on July 13, 1994 under number 906728. These marks, as follows, are collectively referred to as the "PEI Marks".
MARK
NUMBER
GIRL Design
905528
ANNE OF THE ISLAND Design
905529
HOUSE Design
905530
GIRL Design
905531
GIRL Design
905532
ANNE OF GREEN GABLES
905533
GREEN GABLES HOUSE
905613
ANNE OF THE ISLAND
905614
ANNE OF THE ISLAND Design
905615
ANNE'S LAND DAYTOUR
906728
[12] On January 23, 1985, the Prince Edward Island Development Agency filed two applications with the Canadian Trade-Marks Office. On January 3, 1986, ANNE OF THE ISLAND trade-mark issued to registration under number 310178. On February 21, 1986, ANNE OF THE ISLAND design trade-mark issued to registration number 311560. These trade-marks are known as the "PEI Marks".
[13] On May 5, 1994, the Macdonalds entered into an agreement with PEI and Avonlea Productions Limited ("Avonlea"). Sullivan had created and owned the copyright in a musical stage play entitled "Anne of Green Gables-The Musical" that was based upon Lucy Maud Montgomery's book Anne of Green Gables. This agreement, described in the pleadings as the "AGGLA Agreement" provided, among other things, for the creation of a corporation to be called "Anne of Green Gables Licensing Authority". The purposes of this incorporation included various manufacturing, advertising, selling and distribution of goods and services bearing trade-marks and other symbols referring and relative to the characters, places and events described in the literary works of Lucy Maud Montgomery.
[14] The AGGLA Agreement also provided, among other things, that PEI and the Macdonalds would work together to achieve the following ends:
20. Among other things, the AGGLA Agreement provided that:
(a) AGGLA would become the sole registered owner in Canada of trade-marks associated with images or representations of Anne of Green Gables and that PEI and the Macdonalds would assign all of their rights in or claims to such trade-marks to AGGLA;
(b) PEI and the Macdonalds would use their best efforts to acquire in the name of AGGLA additional trade-marks associated with images or representations of Anne of Green Gables as they jointly agreed ought to be protected;
(c) PEI and the Macdonalds would licence and use any world wide rights related to such trade-marks only in accordance with the terms of the AGGLA Agreement;
(d) neither PEI nor the Macdonalds would authorize the use of any images or representation of Anne of Green Gables or any trade-mark associated therewith unless such use has been previously authorized by AGGLA;
(e) the affairs of AGGLA were to be conducted by a board of directors comprised of three nominees of PEI, three nominees of the Macdonalds and two persons nominated jointly by PEI and the Macdonalds, and that questions arising at any meeting of the board of directors were to be decided by a majority of the votes cast by the directors, such majority to include the votes of at least one nominee appointed solely by the Macdonalds and one nominee appointed solely by PEI; and
(f) the Macdonalds would be at liberty to continue licensing under pre-existing merchandising commitments goods or services bearing trade-marks associated with images or representations of Anne of Green Gables from any audio-visual, audio or live stage production by licensees and sublicensees authorized prior to the incorporation of AGGLA (including any films by Sullivan), such activities to be authorized by a licence from the Family Licensing Committee of AGGLA (the "Family Committee"), or in the absolute discretion of the Macdonalds, by a licence from the Macdonalds provided that AGGLA is notified.
[Paragraph 20 of the Amended Statement of Claim dated Sept. 14/99]
[15] This statement of some of the goals of the AGGLA Agreement is admitted by the Defendants-Plaintiffs by Counterclaim.
[16] In pursuit of the AGGLA Agreement, the Macdonalds assigned nunc pro tunc to AGGLA all their whole right, title and interest in and to the trade-marks registration referred to above. As well, the Macdonalds assigned to AGGLA, nunc pro tunc, all their whole right, title and interest in and to the following trade-marks:
21. Pursuant to the AGGLA Agreement:
...
(b) the Macdonalds assigned nunc pro tunc to AGGLA all of their whole right, title and interest in and to the trade-marks ANNE WITH AN "E"; RED-HAIRED ANNE/ RED HAIR ANNE; AKAGE NO ANNE; RAINBOW VALLEY; ANNE OF INGLESIDE; RILLA OF INGLESIDE; INGLESIDE; RAINBOW VALLEY; KINDRED SPIRITS; AVONLEA; ANNE OF AVONLEA; ROAD TO AVONLEA; ROAD TO YESTERDAY; ANNE SHIRLEY; MARILLA CUTHBERT; MATTHEW CUTHBERT; JOSIE PYE; GILBERT BLYTHE; RACHEL LYNDE; DIANA BARRY; ANNE COLLECTION; LAND OF ANNE/ANNE'S LAND; ANNE OF WINDY POPLARS; LAKE OF SHINING WATERS and other "Images of Anne" as defined in the AGGLA Agreement, effective the 5th day of May, 1994; and ...
These assignments were effective May 5, 1994.
[17] As well, PEI assigned nunc pro tunc to AGGLA all its whole right, title and interest in and to the PEI Marks and the PEI Trade-marks effective May 5, 1994. The Registrar of Trade-marks continues to show PEI as the party giving further notice of its adoption and use of the PEI Marks. The PEI trade-marks are now registered in the name of AGGLA.
[18] Following the incorporation of AGGLA and upon its request, the Registrar of Trade-marks gave public notice of AGGLA's adoption and use as official marks, of the following marks:
MARK
PUB. DATE
NUMBER
LAND OF ANNE
Mar. 13, 1996
907857
THE ANNE COLLECTION
Mar. 13, 1996
907535
RED-HAIRED ANNE
Jan. 15, 1997
909009
RAINBOW VALLEY
Jan. 15, 1997
909010
GILBERT BLYTHE
Jan. 15, 1997
909011
AKAGE NO ANNE
Jan. 15, 1997
909012
AVONLEA
Jan. 15, 1997
909013
MATTHEW CUTHBERT
Jan. 15, 1997
909014
ANNE WITH AN "E"
Jan. 15, 1997
909015
ANNE OF GREEN GABLES THE MUSICAL
Jan. 15, 1997
909016
MARILLA CUTHBERT
Jan. 15, 1997
909017
JOSIE PYE
Jan. 15, 1997
909018
ROAD TO AVONLEA
Jan. 15, 1997
909019
KINDRED SPIRITS
Jan. 15, 1997
909020
RILLA OF INGLESIDES
Jan. 15, 1997
909021
ANNE OF AVONLEA
Jan. 15, 1997
909022
ANNE SHIRLEY
Jan. 15, 1997
909023
DIANA BARRY
Jan. 15, 1997
909024
These marks are known as the AGGLA Marks.
[19] Other events are mentioned in the Amended Statement of Claim but they are not relevant to the issues raised in this motion for partial summary judgment. However, paragraphs 28 and 29 are relevant and provide as follows:
28. Sullivan has completed the production and will shortly be distributing "Anne of Green Gables, The Continuing Story". Sullivan is in the process of completing the animated series and planning the associated merchandising program. Sullivan states that it is a person interested in the validity of the AGGLA Trade-mark Registrations, in AGGLA's ability to rely upon the benefits conferred on AGGLA under section 9(1)(n)(iii) of the Trade-marks Act (Canada) in respect of the AGGLA Marks ...because it is concerned that the Macdonalds and AGGLA may take steps to disrupt the distribution of "Anne of Green Gables, The Continuing Story", the animated series and the associated merchandising program and oppose the Sullivan Marks, thereby causing damage to Sullivan. Sullivan is further concerned that some of the Sullivan Marks may be rejected by the Trade-marks Office because of the AGGLA Marks, PEI Marks and AGGLA Registered Trade-marks.
29. Sullivan is not at this time challenging the decision of the Registrar of Trade-marks to give public notice of the AGGLA Marks and the PEI Marks. However, Sullivan states that AGGLA is not entitled to and cannot assert the benefits conferred upon public authorities under Section 9(1)(iii) of the Trade-marks Act (Canada) in respect of the AGGLA Marks and PEI Marks because:
(a) AGGLA is not a public authority within the meaning of Section 9(1)(n)(iii) of the Trade Marks Act (Canada);
(b) AGGLA has neither adopted nor used any of the AGGLA Marks or PEI Marks; and
(c) the assignment of the PEI Marks from PEI to AGGLA is invalid and void and of no effect.
[20] The response of the Defendants-Plaintiffs by Counterclaim is found in paragraph 10 of the Amended Defence which says as follows:
10. Paragraphs 29 to 32 of the Statement of Claim are denied. AGGLA is a public authority within the meaning of section 9(1)(n)(iii) of the Trade-Marks Act, RSC 1985, c. T-13 and has been so found in a final decision of the Superior Court of Justice (Ontario) fully litigated between AGGLA and the Macdonalds as Plaintiffs and Avonlea Traditions Inc. as Defendant, Court File No. 95-CU-89192, dated March 10, 2000, now reported at (2000) 4 CPR (4th) 289. An Appeal was taken from this decision, but has been withdrawn.
[21] Paragraph 15 of the Counterclaim says as follows:
The Plaintiff by Counterclaim AGGLA is a public authority within the meaning of section 9(1)(n)(iii) of the Trade-Marks Act, R.S.C. 1985, c. T-13, as amended. It is the owner of and has adopted and used in Canada the official mark ANNE OF GREEN GABLES, of which there was given public notice in the Trade Marks Journal on November 18, 1992, and assigned to the Plaintiff by Counterclaim by a confirmatory assignment dated March 28, 1995.
[22] The status of AGGLA as a public authority is a central element of the pleadings. The alleged status as a public authority is further addressed in the Amended Reply and Defence to Counterclaim as follows:
9. As to the allegations in paragraph 10 of the statement of defence, Sullivan acknowledges that a decision was rendered in the Ontario Superior Court of Justice between AGGLA and the Macdonalds as plaintiffs and Avonlea Traditions Inc. as defendant which in part addressed AGGLA's qualifications as a public authority based upon certain evidence and submissions that were put before the Court. However, Sullivan states that not all relevant facts pertaining to AGGLA's qualities were before the Superior Court of Justice, nor did that Court address whether AGGLA had adopted and used all of the specified AGGLA Marks or PEI Marks or whether the assignment of the PEI Marks was valid. Accordingly, Sullivan states that the decision of the Superior Court of Justice is neither the final word on these issues nor is it correct or of any precedent value in respect of the issues before this Honourable Court.
...
14. As to the allegations contained in paragraph 15 of the counterclaim, Sullivan denies that AGGLA is a public authority for the reasons expressed in paragraph 30 of the statement of claim. For the reasons set out at sub-paragraph 30 (b) of the statement of claim, Sullivan states that there is no significant degree of public control over AGGLA nor was there control at the time that AGGLA claimed to be a public authority before the Registrar of Trade-marks. Further, Sullivan denies that AGGLA has adopted and used the mark ANNE OF GREEN GABLES, and states that if AGGLA has adopted and used such a mark, it had not been adopted and used by AGGLA at the time public notice was given in the Trade-marks Journal nor has it been continuously adopted and used by AGGLA since public notice was given. Sullivan further states if such a mark has at all been used, it has not been used by AGGLA but rather by a permitted licensee of AGGLA, and that use of a mark by a permitted licensee of an alleged public authority is not an adoption and use by the public authority of the mark as an official mark. Sullivan further states that the mark ANNE OF GREEN GABLES is not an official mark and at its highest is the title of a book written by Montgomery. Sullivan states that marks published under Section 9 of the Trade-marks Act cannot be assigned or conveyed and that the "confirmatory assignment" referred to in paragraph 15 of the counterclaim is invalid, void and of no effect.
[23] Now Sullivan seeks partial summary judgment in respect of paragraphs 1(a)(i), (iii), (iv) and (v) of the Amended Statement of Claim. These paragraphs provide as follows:
1. The plaintiff, Sullivan Entertainment Inc ("Sullivan") claims:
(a) a declaration that:
(i) the defendant, Anne of Green Gables Licensing Authority Inc. ("AGGLA"), is not entitled to and cannot assert the benefits conferred upon public authorities by Section 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended (the Trade-marks Act (Canada));
...
(iii) AGGLA has neither adopted nor used the following marks in respect of which the Registrar of Trade-marks, at the request of AGGLA, has given public notice (the "AGGLA Marks"):
MARK
NUMBER
LAND OF ANNE
907857
THE ANNE COLLECTION
907535
RED-HAIRED ANNE
909009
RAINBOW VALLEY
909010
GILBERT BLYTHE
909011
AKAGE NO ANNE
909012
AVONLEA
909013
MATTHEW CUTHBERT
909014
ANNE OF GREEN GABLES THE MUSICAL
909015
ANNE WITH AN "E"
909016
MARILLA CUTHBERT
909017
JOSIE PYE
909018
ROAD TO AVONLEA
909019
KINDRED SPIRITS
909020
RILLA OF INGLESIDES
909021
ANNE OF AVONLEA
909022
ANNE SHIRLEY
909023
DIANA BARRY
909024
(iv) AGGLA has neither adopted nor used the following marks in respect of which the Registrar of Trade-marks, at the request of Her Majesty the Queen in Right of the Province of Prince Edward Island as Represented by the Minister of Tourism and Parks ("PEI"), has given public notice (the "PEI Marks"):
MARK
NUMBER
GIRL Design
905528
ANNE OF THE ISLAND Design
905529
HOUSE Design
905530
GIRL Design
905531
GIRL Design
905532
ANNE OF GREEN GABLES
905533
GREEN GABLES HOUSE
905613
ANNE OF THE ISLAND
905614
ANNE OF THE ISLAND Design
905615
ANNE'S LAND DAYTOUR
906728
(v) the assignment of the PEI Marks from PEI to AGGLA is invalid and void and of no effect and does not confer upon AGGLA any benefits afforded by Section 9(1)(n)(iii) of the Trade-marks Act (Canada);
[24] Sullivan seeks the following relief:
1. (a) a declaration that the Anne of Green Gables Licensing Authority ("AGGLA") is not entitled to and cannot assert the exclusive rights conferred upon public authorities under Section 9(1)(n)(iii) of the Act in respect of the Section 9 marks identified in paragraphs 1(a)(iii) and (iv) of the statement of claim;
(b) a declaration that the Section 9 marks identified in paragraphs 1(a)(iii) and (iv) of the statement of claim are invalid, ineffective and unenforceable; and
(c) a permanent injunction restraining AGGLA and anyone acting in concert with it or at its request or instruction or under licence from it from asserting the benefits conferred upon public authorities under Section 9(1)(n)(iii) of the Act in respect of the Section 9 marks identified in paragraphs 1(a)(iii) and (iv) of the statement of claim.
2. An Order directing:
(i) AGGLA to request the Registrar of Trade-marks to withdraw its public notice of its adoption and use of the Section 9 marks identified in paragraph 1(a)(iii) of the statement of claim and to give public notice in the Trade-marks Journal that such marks are invalid; and
(ii) AGGLA and the Province of Prince Edward Island ("PEI"), to request the Registrar of Trade-marks to withdraw public notice of the adoption and use of Section 9 marks identified in paragraph 1(a)(iv) of the statement of claim and to give public notice in the Trade-marks Journal that such marks are invalid.
3. An Order that costs of this motion be awarded to the Plaintiff.
[25] Sullivan sets forth the following grounds for its motion:
The plaintiff, Sullivan Entertainment Inc. ("Sullivan") is seeking in paragraphs 1(a)(i) and (iii) through (v) of the statement of claim a declaration that AGGLA is not entitled to and cannot assert the benefits conferred upon public authorities for certain official Section 9 public authority marks for which notice to the public has been given by the Registrar of Trade-marks under Section 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended (the "Act"), because neither AGGLA nor its claimed predecessor, PEI, has adopted or used such marks (the "Section 9 Marks").
[26] As for evidence to support the motion, Sullivan relies on the affidavit of Karissa Ward, an associate with Osler, Hoskin & Harcourt LLP, the pleadings in this action and certain Orders and Reasons for Order, examinations for discovery and a schedule summarizing the evidence of adoption and use of each of the marks in dispute.
[27] AGGLA filed a Motion Record in response to this motion. It relies on the Affidavits of Louise McLean, a law clerk employed by the solicitors for AGGLA, Marian Hebb, a solicitor for the Macdonalds, and of John B. MacDonald, the Registrar of Motor Vehicles for the Province of Prince Edward Island. Several exhibits accompany the affidavits. AGGLA also relies on the pleadings filed in this action.
PLAINTIFF'S SUBMISSIONS
[28] Sullivan raises a number of arguments in support of its motion. First, it argues that certain persons in Canada who qualify as "public authorities" are entitled to benefits in relation to "official marks" pursuant to section 9(1)(n)(iii) of the Trade-marks Act, R.S.C. 1985, c. T-13, as am. (the "Act"). It says that these "official marks" are excluded from the definition of "trade-marks" and that the provisions of the Act relating to the registration, validity and enforcement of trade-marks do not apply to official marks. If a person who qualifies as a "public authority" has adopted and used a mark then requests the Registrar of Trade Marks to give public notice of its adoption and use, and the Registrar gives such notice, that person is entitled to enjoy the exclusive rights conferred by section 9. In this regard, the Plaintiff relies on Ontario Association of Architects v. Association of Architectural Technologists of Canada (2000), 9 C.P.R. (4th) 496 (F.C.T.D.) at 503, reversed on other grounds, 2002 FCA 218, [2002] F.C.J. No. 813 (C.A.)(Q.L.).
[29] Sullivan argues that the official marks listed in paragraphs 1(a)(iii) and 1(a)(iv) of the Amended Statement of Claim were not adopted and used by AGGLA before the Registrar of Trade-marks was requested to and gave notice of their adoption and use. Accordingly, AGGLA is not entitled to assert the benefits conferred under section 9(1(n)(iii).
[30] Sullivan further argues that AGGLA is not entitled to assert the benefits granted under section 9(1)(n)(iii) for marks that have been used exclusively by the licensees. Sullivan also argues that in many instances, the licensing of the official mark in Canada has only occurred after the publication dates of such marks.
[31] As well, Sullivan argues that the further notice given by the Registrar for the official marks identified above as those registered at the request of PEI, did not confer a right or asset capable of assignment by PEI. It argues that by purporting to assign all rights in such marks to AGGLA, PEI has waived whatever benefits it held pursuant to section 9(1)(n)(iii) of the Act.
[32] Sullivan further argues that once a doubt is raised that a public authority has not used an official mark, the official mark holder cannot rely on its "bald assertion" of adoption and use, and must provide evidence of such adoption and use when a doubt is raised. In this regard, Sullivan relies on Piscitelli (c.o.b. Millenium Wines and Spirits) v. Ontario (Liquor Control Board) (2001), [2002] 1 F.C. 247 (T.D.) at paras 45-47.
[33] Sullivan says that the AGGLA merely grants licences associated with Anne of Green Gables and has never engaged in the manufacture or sale of products in connection with the official marks. Consequently, it argues that AGGLA is not entitled to assert the exclusive rights conferred by section 9(1)(n)(iii).
[34] The use of a trade-mark by a licensee can be deemed to be use of that trade-mark only if the trade-mark is licensed in accordance with section 50 of the Act. However, Sullivan argues that section 50 does not apply to official marks and here relies on Canada Port Corp. v. Post Office (2000), 8 C.P.R. (4th) 289 (F.C.T.D.) at para. 52.
[35] Finally, Sullivan submits that AGGLA cannot assert the benefits conferred by section 9(1)(n)(iii) of the Act by relying on section 48 of the Act because section 48 does not apply to official marks. It argues that there is no authority to assign official marks and the purported assignment of such marks from PEI to AGGLA is null and void.
[36] Upon further direction of this Court, Sullivan and AGGLA were given the opportunity to provide further submissions on the October 29, 2002 Federal Court of Appeal judgment in FileNet Corp. v. Registrar of Trade-marks, 2002 FCA 418, [2002] F.C.J. No. 1508 (C.A.) (QL). Sullivan asserts that this decision does not change any of its submissions, as the Federal Court of Appeal upheld the decision and reasoning of Justice Blais at the Federal Court Trial Division, reported at, [2002] 1 F.C. 266 (T.D.).
[37] Sullivan argues that both levels of FileNet, supra confirm that merely posting a notice in a private office cannot constitute "use" of an official mark pursuant to section 9(1)(n)(iii). Sullivan contends that the reasoning of Justice Blais, which was upheld by the Federal Court of Appeal, supports his argument that in order for an official mark to be "used" pursuant to section 9(1)(n)(iii), the mark must have been apparent and accessible to the public. Further, neither FileNet decision addresses whether "licensee support services" may qualify as a "use" within section 9(1)(n)(iii).
[38] Sullivan also submits that the Court of Appeal decision in FileNet confirms that AGGLA has the burden of proving adoption and use, as Sullivan has adduced evidence that casts doubt on the issue of adoption and use prior to the dates of public notice of the official marks.
AGGLA'S SUBMISSIONS
[39] AGGLA raises the following issues in reference to this motion for partial summary judgment. First, the Defendant argues that the Plaintiff lacks standing to bring this notice because it is not a "person interested" since it is not in the business of distributing films and television or in selling merchandise related to Anne of Green Gables.
[40] Second, the Defendant argues that it has demonstrated adoption and use of the marks as of the publication date. In this regard, it relies on the use of the marks in tourist brochures and promotional guides for tourism in Prince Edward Island, as well as use of the marks on the Prince Edward Island licence plates.
[41] Third, the Defendant submits that, on the basis of the principles set out in Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (T.D.) at 859-60, summary judgment should only be granted where the case is so doubtful that it deserves no further consideration by the trier of fact at a future trial.
[42] The Defendant argues that statements by a deponent on discovery are not formal admissions and are subject to weight and other testimony at trial. The statements made at discovery cannot outweigh evidence at trial; here the Defendant relies on Vancouver Sheet Metal Works Limited v. The Queen, [2001] 3 C.T.C. 65 (F.C.T.D.) at paras 20-21.
[43] The Defendant argues that the Plaintiff is estopped from challenging the merchandising rights of the Macdonalds, having acknowledged those rights by letter agreements and correspondence, and here relies on Cheerio Toys and Games Limited v. Dublin, [1966] S.C.R. 206 at 220.
[44] Next, the Defendant says "adoption" and "use" of a mark can be established by placing a mark on a website or on manufactured goods. Here, the Defendant relies on FileNet Corp. v. Canada (Registrar of Trade-marks),supra (T.D.) at para 61, affirmed by 2002 FCA 418, and The Queen and Expo 86 Corp. v. Mihaljevic, et al. (1986), 10 C.P.R. (3d) 374 (B.C.S.C.) at 376.
[45] The Defendant argues that the use by a licensee of an official mark constitutes use of the official mark by the owner; see Magnotta Winery Corp. v. Vintners Quality Alliance (2001), 214 F.T.R. 137, currently under appeal to the Federal Court of Appeal.
[46] Further, the Defendant argues that "adoption and use" may be demonstrated by the Applicant or through its licensees, relying on the trial decision of Ontario Association of Architects, supra, at para. 25.
[47] In regards to AGGLA's further submissions on the Federal Court of Appeal decision in FileNet, supra, AGGLA asserts that the Court of Appeal said that "use" pursuant to section 9(1)(n)(iii) is "sufficiently proved" simply by the original request to the Registrar to give public notice of the mark's adoption and use as an official mark which can then be rebutted by a party challenging the official mark with "some cogent reason" to believe that the mark was not adopted and used by the public authority prior to public notice being given: see FileNet, (FCA) at paras 9 and 11.
[48] AGGLA submits that both levels of FileNet support its position, that AGGLA itself used certain marks in that such marks were "on display" at the offices of AGGLA in Toronto and Charlottetown prior to their respective publication dates. AGGLA also submits that it provided "licensee support services" in relation to these marks.
[49] For other official marks, AGGLA submits that if there is not evidence of use by AGGLA itself, then there is "ample evidence" of use by its licensees prior to the publication date for each mark. The Plaintiff has not demonstrated, according to AGGLA, that there is "some cogent reason" to dispute the adoption and use of the marks prior to their publication dates.
[50] The Defendant says it is unnecessary for licensing authorities, such as AGGLA, who primarily authorize third parties to use their official marks in return for a royalty, to manufacture, sell or distribute wares and services in association with the official marks in order for their official marks to be valid and enforceable. The Defendant here relies on Expo 86 Corp., supra, at page 379.
[51] Finally, relying on Bruce Trail Association v. Camp (2001), 12 C.P.R. (4th) 104 at 110-111, the Defendant says that official marks can be assigned.
ISSUES
[52] Three specific issues emerge from this motion for partial summary judgment, as follows:
1. Does the Plaintiff have standing to bring this motion?
2. Can an official mark be assigned from one public authority to another?
3. Have each of the official marks in issue been adopted and used within the meaning of section 9(1)(n)(iii)?
LEGISLATIVE PROVISIONS
[53] The relevant provisions of the Act are sections 2, 9(1)(n)(iii), 48 and 50 which provide as follows:
2. In this Act,
...
"person interested" includes any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission or contemplated act or omission under or contrary to this Act, and includes the Attorney General of Canada;
9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,
...
(n) any badge, crest, emblem or mark
...
(iii) adopted and used by any public authority, in Canada as an official mark for wares or services,
in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;
48. (1) A trade-mark, whether registered or unregistered, is transferable, and deemed always to have been transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the wares or services in association with which it has been used.
(2) Nothing in subsection (1) prevents a trade-mark from being held not to be distinctive if as a result of a transfer thereof there subsisted rights in two or more persons to the use of confusing trade-marks and the rights were exercised by those persons.
(3) The Registrar shall register the transfer of any registered trade-mark on being furnished with evidence satisfactory to him of the transfer and the information that would be required by paragraph 30(g) in an application by the transferee to register the trade-mark.
50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner.
(2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.
(3) Subject to any agreement subsisting between an owner of a trade-mark and a licensee of the trade-mark, the licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee's own name as if the licensee were the owner, making the owner a defendant.
2. Les définitions qui suivent s'appliquent à la présente loi.
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« personne intéressée » Sont assimilés à une personne intéressée le procureur général du Canada et quiconque est atteint ou a des motifs valables d'appréhender qu'il sera atteint par une inscription dans le registre, ou par tout acte ou omission, ou tout acte ou omission projeté, sous le régime ou à l'encontre de la présente loi.
9. (1) Nul ne peut adopter à l'égard d'une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu'on pourrait vraisemblablement la confondre avec ce qui suit_:
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n) tout insigne, écusson, marque ou emblème_:
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(iii) adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services, à l'égard duquel le registraire, sur la demande de Sa Majesté ou de l'université ou autorité publique, selon le cas, a donné un avis public d'adoption et emploi;
48. (1) Une marque de commerce, déposée ou non, est transférable et est réputée avoir toujours été transférable, soit à l'égard de l'achalandage de l'entreprise, soit isolément, et soit à l'égard de la totalité, soit à l'égard de quelques-uns des services ou marchandises en liaison avec lesquels elle a été employée.
(2) Le paragraphe (1) n'a pas pour effet d'empêcher qu'une marque de commerce soit considérée comme n'étant pas distinctive si, par suite de son transfert, il subsistait des droits, chez deux ou plusieurs personnes, à l'emploi de marques de commerce créant de la confusion et si ces droits ont été exercés par ces personnes.
(3) Le registraire inscrit le transfert de toute marque de commerce déposée, une fois que lui ont été fournis une preuve du transfert qu'il juge satisfaisante et les renseignements qu'exigerait l'alinéa 30g) dans une demande, par le cessionnaire, d'enregistrer cette marque de commerce.
50. (1) Pour l'application de la présente loi, si une licence d'emploi d'une marque de commerce est octroyée, pour un pays, à une entité par le propriétaire de la marque, ou avec son autorisation, et que celui-ci, aux termes de la licence, contrôle, directement ou indirectement, les caractéristiques ou la qualité des marchandises et services, l'emploi, la publicité ou l'exposition de la marque, dans ce pays, par cette entité comme marque de commerce, nom commercial - ou partie de ceux-ci - ou autrement ont le même effet et sont réputés avoir toujours eu le même effet que s'il s'agissait de ceux du propriétaire.
(2) Pour l'application de la présente loi, dans la mesure où un avis public a été donné quant à l'identité du propriétaire et au fait que l'emploi d'une marque de commerce fait l'objet d'une licence, cet emploi est réputé, sauf preuve contraire, avoir fait l'objet d'une licence du propriétaire, et le contrôle des caractéristiques ou de la qualité des marchandises et services est réputé, sauf preuve contraire, être celui du propriétaire.
(3) Sous réserve de tout accord encore valide entre lui et le propriétaire d'une marque de commerce, le licencié peut requérir le propriétaire d'intenter des procédures pour usurpation de la marque et, si celui-ci refuse ou néglige de le faire dans les deux mois suivant cette réquisition, il peut intenter ces procédures en son propre nom comme s'il était propriétaire, faisant du propriétaire un défendeur.
ANALYSIS
i) Standing
[54] The first issue to be addressed is the standing of the Plaintiff to bring this motion. Paragraph 28 of the Amended Statement of Claim provides as follows:
Sullivan has completed the production and will shortly be distributing "Anne of Green Gables, The Continuing Story". Sullivan is in the process of completing the animated series and planning the associated merchandising program. Sullivan states that it is a person interested in the validity of the AGGLA Trade-mark Registrations, in AGGLA's ability to rely upon the benefits conferred on AGGLA under Section 9(1)(n)(iii) of the Trade-marks Act (Canada) in respect of the AGGLA Marks and the PEI Marks, in which AGGLA holds copyright in the works of Montgomery, and in whether rights exist in Montgomery's fictional characters because it is concerned that the Macdonalds and AGGLA may take steps to disrupt the distribution of "Anne of Green Gables, The Continuing Story", the animated series and the associated merchandising program and oppose the Sullivan Marks, thereby causing damage to Sullivan. Sullivan is further concerned that some of the Sullivan marks may be rejected by the Trade-marks Office because of the AGGLA Marks, PEI marks and AGGLA Registered Trade-marks.
[55] The Defendant argues that the Plaintiff lacks standing to bring the motion for partial summary judgment because it is not a "person interested" as alleged in paragraph 28 of the amended statement of claim.
[56] The Defendant relies on the affidavits of Louise McLean and Marian Hebb, with attached exhibits, and paragraph 28 of the amended Statement of Claim in support of this argument.
[57] The McLean affidavit refers, among other things, to questions and answers from the discovery of Kevin Sullivan, a representative of the Plaintiff, particularly concerning paragraph 28 of the amended statement of claim.
[58] At discovery, Mr. Sullivan admitted that Sullivan Entertainment International Inc. is the entity that distributes the Plaintiff's works. AGGLA now suggests that Sullivan Entertainment Inc., not the Plaintiff, is the true "interested party" in this action.
[59] The Plaintiff argues that it does not have to establish its standing in order to challenge AGGLA's rights to the official mark in issue. It says that its challenge is brought pursuant to section 55 of the Act which provides as follows:
55. The Federal Court has jurisdiction to entertain any action or proceeding for the enforcement of any of the provisions of this Act or of any right or remedy conferred or defined thereby.
55. La Cour fédérale peut connaître de toute action ou procédure en vue de l'application de la présente loi ou d'un droit ou recours conféré ou défini par celle-ci.
[60] However, to the extent that the Plaintiff is seeking injunctive relief, section 53.2 is relevant and provides as follows:
53.2 Where a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits and for the destruction, exportation or other disposition of any offending wares, packages, labels and advertising material and of any dies used in connection therewith.
53.2 Lorsqu'il est convaincu, sur demande de toute personne intéressée, qu'un acte a été accompli contrairement à la présente loi, le tribunal peut rendre les ordonnances qu'il juge indiquées, notamment pour réparation par voie d'injonction ou par recouvrement de dommages-intérêts ou de profits, pour l'imposition de dommages punitifs, ou encore pour la disposition par destruction, exportation ou autrement des marchandises, colis, étiquettes et matériel publicitaire contrevenant à la présente loi et de toutes matrices employées à leur égard.
[61] The term "interested person" was considered in Mihalijevic v. British Columbia (1990), 34 C.P.R. (3d) 54 (F.C.A.), affirming (1988), 23 C.P.R. (3d) 80 (F.C.T.D.). The Federal Court of App