Cyprus (Commerce and Industry) v. Producteurs laitiers du Canada

Cyprus (Commerce and Industry) v. Producteurs laitiers du Canada
Court (s) Database
Federal Court Decisions
Date
2010-06-30
Neutral citation
2010 FC 719
File numbers
T-1203-08, T-1204-08, T-1205-08
Decision Content
Federal Court
Cour fédérale
Date: 20100630
Docket: T-1203-08; T-1204-08; T-1205-08
Citation: 2010 FC 719
Ottawa, Ontario, June 30, 2010
PRESENT: The Honourable Mr. Justice de Montigny
BETWEEN:
THE MINISTRY OF COMMERCE AND INDUSTRY
OF THE REPUBLIC OF CYPRUS
Applicant
and
LES PRODUCTEURS LAITIERS DU CANADA,
AGROPUR COOPÉRATIVE AGRO-ALIMENTAIRE
AND INTERNATIONAL CHEESE COUNCIL OF CANADA
Respondents
REASONS FOR ORDER AND ORDER
[1] These are three different appeals by the Applicant, The Ministry of Commerce and Industry of the Republic of Cyprus, under section 56 of the Trade-Marks Act (R.S.C. 1985, c. T-13; the “Act”) from three decisions by the Registrar of Trade-Marks (the “Registrar”) dated April 29, 2008. The decisions allowed the oppositions of the respondents les Producteurs Laitiers du Canada (“Producteurs Laitiers”), Agropur Coopérative Agro-Alimentaire (“Agropur”) and the International Cheese Council of Canada (“Cheese Council”) by dismissing the Applicant’s application for registration of the certification mark of HALLOUMI cheese (application No. 795,511, the “Mark”). On September 4, 2008, the respondent Agropur withdrew from these proceedings.
[2] In accordance with a decision by Prothonotary Richard Morneau dated August 24, 2009, these three cases were heard together. Accordingly, a copy of these reasons will be placed in each of dockets T-1203-08, T-1204-08 and T-1205-08.
I. Facts
[3] On or about October 23, 1995, the Applicant filed an application to register the Mark in association with cheese on the basis of an allegation that the Mark had been used in Canada since October 19, 1995. This application for registration was published in the Trade-marks Journal on November 28, 2001.
[4] Since a certification mark was involved, the standard for which the use of the Mark was intended was described as follows in the Trade-marks Journal:
The use of the certification mark is intended to indicate that the specific wares listed above in association with which it is used are of the following defined standard: the defined standard prescribes that the cheese is produced only in Cyprus using the historic method unique to that country, namely: traditionally, it has been produced from sheep’s and/or goat’s milk. In case of mixtures, cow’s milk is also allowed. Raw materials which are used for its production include rennin, mint leaves and salt. See file for information about quality characteristics, chemical characteristics and maturation.
[5] Following the publication of the Mark, a number of oppositions were filed. On March 8, 2002, Les Producteurs Laitiers and Agropur filed statements containing four grounds of opposition, which the Registrar forwarded to the Applicant on May 21, 2002. Then, on April 4, 2002, the Cheese Council filed a statement of opposition containing five grounds, which the Registrar forwarded to the Applicant on April 30, 2002. Since that statement essentially incorporates the other two respondents’ grounds, it is helpful to reproduce it here:
1. Pursuant to Section 38(2)(a) of the Act . . . the Application does not comply with the provisions of Section 30 of the Act, and specifically:
(a) The Application does not comply with Section 30(a), because no licensee of the Applicant has used HALLOUMI as a certification mark in Canada since the date set out in the Application, namely October 19, 1995, or, if HALLOUMI was used as a certification mark, such use has ceased;
(b) The Application does not comply with Section 30(f) of the Act, because the Application does not set out particulars of the defined standard that the use of the certification mark HALLOUMI is intended to indicate;
(c) The Application does not comply with Section 30(f) of the Act, because the Applicant cannot state that it is not engaged in the manufacture or sale of the wares in association with which the certification mark is used in Canada;
2. Pursuant to Sections 38(2)(b) and 12(1)(b) of the Act, HALLOUMI is not a registrable trade mark, because it is clearly descriptive of the character of the wares associated with the mark.
3. Pursuant to Sections 38(2)(b) and 12(1)(c) of the Act, HALLOUMI is not a registrable trade mark, because it is the name, in a language, of the goods associated with the trade mark;
4. Pursuant to Sections 38(2)(b), 12(1)(e) and 10 of the Act, the adoption of HALLOUMI as a trade mark is prohibited, because HALLOUMI has by ordinary and bona fide commercial usage become recognized in Canada as designating a kind or quality of cheese.
5. Pursuant to Sections 2 and 38(2)(d) of the Act, HALLOUMI is incapable of functioning as a certification mark in Canada, namely a mark used for the purpose of distinguishing or so as to distinguish wares of a defined standard with respect to character, quality, working conditions, class of producers or area of production, because HALLOUMI has been used in Canada prior to the Applicant's date of first use, namely October 19, 1995, and subsequently, by persons not licensed by the Applicant, to describe cheeses which do not meet the standards set out in the Application.
[6] On May 28, 2002, the Applicant filed a counter statement of opposition in support of its application for registration in which it denied each of the respondents’ grounds of opposition.
[7] On February 23, 2003, les Producteurs Laitiers and Agropur filed their opposition evidence. The Cheese Council did the same on December 24, 2002, and January 28, 2003. The Applicant filed its evidence in support of its application for registration on June 23, 2004.
[8] All of the Applicant’s and respondents’ deponents were cross-examined, and their testimony was filed with the Registrar of Trade-Marks. Each party submitted written arguments and requested a hearing, which was scheduled jointly for the three oppositions for April 2, 2008.
[9] Two weeks before the hearing, on March 18, 2008, les Producteurs Laitiers and the Cheese Council filed a motion to amend their last ground of opposition. The proposed amendment sought to add the following to the last ground of opposition:
More particularly, it was admitted by Yannakis Pittas in his June 21, 2004 affidavit filed as part of the Applicant’s evidence, that the Applicant does not itself license others to use the HALLOUMI certification mark in accordance with the defined standard but that such licenses of use are granted by third parties, namely the Minister of Health and/or the Department of Veterinary Services of the Minister of Agriculture and Natural Resources.
[translation]
Applicant’s Record (T-1205-08), tab 114.
The amendment proposed by Les Producteurs Laitiers was similar in every respect: see Applicant’s Record (T-1203-08), tab 30.
[10] The motion was put over for adjudication at the hearing, which took place on April 2 before Mr. Jean Carrière, member of the Trade-marks Opposition Board and the Registrar’s delegate under section 63(3) of the Act. The Applicant, les Producteurs Laitiers and the Cheese Council were present at the hearing and made submissions; however, Agropur was not represented.
[11] At the outset, the Registrar refused to amend the respondents’ last ground of opposition because the motion was filed late with no explanation. However, he allowed the oppositions dated April 29, 2008, in part, thereby refusing the Applicant’s application for registration.
II. Impugned decisions
[12] In the three impugned decisions, the Registrar rejected out of hand the grounds of opposition set out in paragraphs 1b) and c), 2 and 3 of the Cheese Council’s statement of opposition (see paragraph 5 of these reasons) or their equivalent in the two other statements. These grounds were dismissed because the respondents did not argue them, either in writing or orally, and thus did not discharge their initial burden of establishing the facts on which they based their opposition. The Registrar took the opportunity to specify, based on the evidence before him, that the word “halloumi” is derived from the Greek word “halmi”, which means “salty”; therefore, paragraphs 12(1)(b) and (c) were not applicable to this case.
[13] Furthermore, the opponents put forward three other arguments to support their claim that the Mark had not been used as alleged in the application and had not been used as a certification mark (ground 1a) of the Cheese Council’s statement or the equivalent in the two other statements). First, they stated that there was no evidence that the Mark had been used by licensees of the Applicant from the alleged date of first use. Second, the opponents argued that there was no evidence that the cheese sold in Canada was manufactured in accordance with the defined standards in the application. Last, they took the position that the Applicant was not the authority that issued licences to the producers of wares bearing the Mark and, therefore, could not claim that the Mark was used by these licensees.
[14] Despite the opponents’ lack of evidence on these issues, the Registrar admitted that an opponent to an application for registration may rely on the Applicant’s evidence to argue compliance issues since the information the opposing party needs to meet its initial burden of proof is in the hands of the Applicant most of the time.
[15] On the basis of the Applicant’s evidence, in particular, the affidavits of Mr. Yannos Pittas, co-owner of a dairy located in Cyprus; Mr. Eric Moscalhlaidis, owner of an American distribution company that imports cheese from Cyprus bearing the Mark and redistributes it in Canada; and various Canadian retailers, the Registrar was satisfied with the use of the Mark and the manufacturing standards applied to Halloumi cheese in Cyprus. However, he found that the Applicant did not discharge its initial burden of proving that it was in fact the authority that issued licences authorizing the use of the Mark in association with the wares. Relying specifically on Mr. Pittas’ affidavit, the Registrar concluded that it was the Ministry of Health in collaboration with the Department of Veterinary Services of the Ministry of Agriculture, Natural Resources and the Environment that issued licences authorizing the use of the Mark in association with the wares. He wrote the following in this regard:
It would appear that various Ministries of the Republic of Cyprus are involved in the supervision of the manufacture and exportation of cheese bearing the Mark and have different responsibilities depending on the stage reached in the manufacturing or exportation of the Wares. It might be that ultimately, under the parliamentary structure of the Republic of Cyprus, the Applicant delegated its authority to the Ministries of Health and of Agriculture, Natural Resources and the Environment but we have no evidence to support such [sic] hypothesis.
[16] Accordingly, the Registrar concluded that the opponents had met their initial burden and that any “use” of the Mark in Canada could not be deemed to be use by the Applicant under subsection 23(2) of the Act because the evidence established that the users of the Mark did not obtain their right to use the Mark from the Applicant itself but from another governmental body. Since the Applicant was not the Republic of Cyprus but a specific ministry, the ground of opposition 1(a) should be accepted.
[17] The second ground of opposition that the Registrar accepted dealt with the registrability of the Mark. The respondents argued that the Mark was not registrable because it had by ordinary and bona fide commercial usage become recognized in Canada as designating a type of cheese, thereby contravening section 10 and paragraph 12(1)(e) of the Act (ground of opposition (4) cited above).
[18] After stating that the relevant date of reference for determining this ground of opposition was the date of the Registrar’s decision, he noted the consensus that the particular characteristic of the cheese bearing the Mark that is manufactured in Cyprus is that it does not melt when exposed to heat during cooking. The cheese manufactured in Canada bearing a visual or phonetically similar mark such as HALLOUM, HALLOOM, HALOUMI or HALOMI does not have this characteristic.
[19] Having said that, the Registrar pointed out that no one could obtain the monopoly over a term or word under pretext that it is a certification mark if the mark has been used extensively in Canada by others prior to the relevant date such that it has become recognized in Canada as designating the kind, quality, value, or place of origin of the wares. Based on those principles, he reviewed the respondents’ evidence in this regard.
[20] The Registrar concluded that the evidence filed by les Producteurs Laitiers and Agropur did not establish that the Mark had become recognized in Canada by ordinary and bona fide commercial usage as designating a type of cheese. However, in his view, the Cheese Council’s evidence was conclusive on this point.
[21] The Cheese Council filed the packaging or photos of packaging from cheese purchased in various cities in Quebec and in Ottawa bearing inscriptions such as LE BÉDOUIN, HALLOOM, CLIC HALLOOM, DORÉ-MI or HALOUMI. The packaging indicates that these products originated from various sources: Les Produits Phoenicia Inc. of Montréal (HALLOOM); La Fromagerie Polyethnique Inc. of St-Robert, Quebec (LE BÉDOUIN HALOUMI), Clic Import Export (CLIC HALLOOM), Les Aliments Karine Inc. of Montréal (HALLOOM), Saputo Cheese Division Fromage (Canada) (DORÉ-MI) and Fromagerie Marie Kadé of Boisbriand, Quebec (HALLOOM).
[22] However, representatives from Produits Phoenicia Inc. and Fromagerie Polyethnique swore affidavits that were entered in evidence. They stated that they had been selling cheese designated as HALLOOM, HALOUMI, or LE BÉDOUIN since 1995 and filed documents from their company, some dating back to August 2002, confirming sales of cheese designated by one of those names. Other affidavits and cross-examinations showed that the name HALLOUMI is used in Canada to designate a kind of cheese.
[23] On this evidence, the Registrar found that the word HALLOUMI could not be used as a trade-mark in Canada. The Registrar rejected the argument that the evidence revealed that the words HALLOOM, HALOUMI or HALLOUM were used rather than the Mark HALLOUMI to identify a type of Mediterranean cheese, noting that section 10 of the Act is aimed at both the adoption or use
of a mark “ . . . so nearly resembling that mark as to be likely to be mistaken therefor”. He wrote the following in this regard:
There is a close resemblance between HALLOUMI on [sic] one hand and HALOUMI, HALLOUM and HALLOOM on the other hand. Moreover they all appear on cheese packaging and as mentioned above in some instances they are substituted one for the other. Under these circumstances I fail to see how the Applicant could get the exclusive use of the Mark in Canada where the evidence shows that there has been bona fide commercial usage of the Mark or similar terms such that it is recognized in Canada as designating a kind of cheese. Therefore I maintain the fourth ground of opposition.
[24] Finally, the last ground of opposition accepted by the Registrar dealt with the Mark’s lack of distinctiveness. Regarding that ground of opposition, the respondents needed only to show that, at the relevant date, i.e. the date the statement of opposition was filed, a confusingly similar trade‑mark had become sufficiently known to negate the distinctiveness of the mark applied for. The Registrar dismissed this ground in the oppositions filed by les Producteurs Laitiers and Agropur for want of sufficient evidence; however, he ruled that the Cheese Council’s evidence was more substantial and allowed this ground of opposition in that docket.
[25] The Registrar indicated that most of the Cheese Council’s evidence on the use of the term “HALLOUM” or “HALLOOM”, discussed under the registrability ground of opposition, was subsequent to the relevant date. However, the Registrar accepted this ground because of the evidence provided by the Applicant itself that the Mark had been used in Canada by entities that had not been licenced by the Applicant itself, as discussed in the review of the first ground of opposition alleging that the application did not comply with the provisions of section 30 of the Act.
[26] On August 4, 2009, the Applicant filed notices of application in this Court appealing the Registrar’s decisions in the three dockets that are the subject of this proceeding, based on the grounds of opposition that were maintained. As subsection 56(5) of the Act permits, the Applicant entered as additional evidence two affidavits of Mr. Aristos Constantine, Trade Commissioner for the Republic of Cyprus in New York, sworn November 19, 2008, and January 15, 2009. I will return to these affidavits in my analysis below.
III. Issues
[27] This appeal raises the following three issues:
A. What is the appropriate standard of review for decisions by the Registrar?
B. Did the Registrar err by finding that the application for registration did not comply with the requirements of section 30 and paragraph 38(2)(a) of the Act?
C. Did the Registrar err in his findings on the registrability of the
Mark under paragraphs 38(2)(b) and 12(1)(e) and section 10 of the Act?
IV. Analysis
A. What is the Appropriate Standard of Review for Decisions by the Registrar?
[28] There is no disagreement among the parties about the appropriate standard of review on appeal from decisions by the Registrar of Trade-marks. Generally, questions of fact or law that are within the Registrar’s expertise are reviewable against the reasonableness standard; in other words, this Court will only intervene if the Registrar’s decision is clearly wrong. However, it is different where additional evidence is filed with the Court and the evidence is relevant insofar as it fills a gap or remedies deficiencies identified by the Registrar. In that case, the Court may come to its own conclusion and will apply the standard of correctness. However, this will only occur where the fresh evidence is substantial and adds to what has already been submitted; if the fresh evidence is repetitive and does not enhance the probative value of the evidence already adduced, the standard of reasonableness will continue to apply. The following passage from the decision of Justice Marshall Rothstein for the majority in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.), at paragraph 51, summarizes the situation well:
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.
See also: Christian Dior, S.A. v. Dion Neckwear Ltd., 2002 FCA 29, [2002] F.C.J. No. 95, at para.8; Canadian Tire Corp. v. Accessoires d’Autos Nordiques Inc., 2007 FCA 367, [2007] F.C.J. No. 1555 at paras. 29-30; Shell Canada Ltd. v. P.T. Sari Incofood Corp., 2008 FCA 279, [2008] F.C.J. No. 1320 at paras. 27-29; Minolta-QMS, Inc. v. Tsai, 2006 FC 1249, [2006] F.C.J. No. 1574 at paras.25-27.
[29] On the other hand, the jurisprudence seems to recognize situations where the standard of correctness applies even in the absence of fresh evidence. This will happen where the issue is purely legal and does not involve facts or the Registrar’s expertise. By way of illustration, reference may be made to Telus Corp. v. Orange Personal Communications Services Ltd., 2005 FC 590, [2005] F.C.J. No. 722 at paragraph 41 (affirmed at 2006 FCA 6, [2006] F.C.J. No. 14) and Big Apple Ltd. v. BAB Holdings Inc., 2002 FCT 72, [2002] F.C.J. No. 89 at paragraphs 7-8, where identifying the burden of proof that the parties must meet and determining the relevant date for deciding a ground of opposition were reviewed on the correctness standard.
[30] Accordingly, with these principles in mind, I will examine the arguments raised by the Applicant as well as the fresh evidence filed in this Court.
B. Did the Registrar Err by Finding that the Application for Registration Did Not Comply with the Requirements of Section 30 and Paragraph 38(2)(a) of the Act?
[31] In its written representations, the Applicant submitted that the Registrar erred by accepting the arguments presented orally by the les Producteurs Laitiers and the Cheese Council and thus maintaining the ground of opposition based on paragraph 38(2)(a) and 30 of the Act in Agropur’s opposition even though it had chosen to not be represented at the hearing. The Applicant contended that the arguments presented by the two other parties were not before the Registrar in Agropur’s opposition record and that the Registrar could not consider them in making his decision.
[32] This argument appears to me to be without merit because the Registrar’s decision did not rely on the evidence submitted by any of the opponents but on testimony provided by the Applicant itself. As previously mentioned, the relevant paragraph in the Applicant’s application for registration states:
The applicant has granted a license to use the certification mark in association with all the specific wares listed hereafter that meet the defined standard set out below, and the certification mark has been used by the licensee in Canada accordingly in association with such wares.
[33] The exact wording of this ground of opposition in Agropur’s statement reads as follows:
[translation]
1. The opponent bases its opposition on section 38(2) of the Act, i.e. that the application for registration under opposition does not comply with the requirements of section 30 of the Act in that:
(a) The Mark was not used as stated in the application; as well, it was not used as a certification mark.
[34] It is clear that the representations made at the hearing by counsel for les Producteurs Laitiers and the Cheese Council undoubtedly supported the ground of opposition based on section 30 and paragraph 38(2)(a) by drawing the Registrar’s attention to the passages in Mr. Pittas’ affidavit stating that the Applicant was not the authority that issued the licences to use the Mark. The fact remains that the Registrar had before him all the evidence needed to make that finding. The evidence existed in all three dockets because, again, it came from the Applicant itself. In those circumstances, it was open to him (and I would even say he was required) to make the finding he did on this point in the three dockets.
[35] On the other hand, the Applicant took the position that the Registrar erred by considering the oral representations by les Producteurs Laitiers and the Cheese Council that were exactly to the same effect as the amendment they had tried unsuccessfully to make to their ground of opposition based on section 2 and paragraph 38(2)(d) of the Act. The Applicant noted that the Registrar not only agreed to hear these representations but also accepted them in his final decisions in that he maintained the grounds of opposition based on paragraphs 39(2)(a), 30(b) and 38(2)(d) and section 2 of the Act. In doing so, the Registrar prejudiced the Applicant by permitting indirectly what he had refused when he dismissed the motion to amend the grounds of opposition.
[36] If we ignore the amendment that the Registrar dismissed and the oral representations to the same effect, the Applicant continues, the grounds of opposition relied on by the respondents were not set out in sufficient detail to enable the Applicant to respond, as required by paragraph 38(3)(a) of the Act. According to the Applicant, the grounds of opposition based on paragraphs 38(2)(a), 30(b) and 38(2)(d) and on section 2 of the Act do not deal at all, even indirectly, with the substance of the amendment that the Registrar dismissed. By not referring to subsection 23(2) of the Act or to the Mark’s lack of distinctiveness based on the fact that the licences had been granted by a ministry other than the Applicant, it was taken by surprise and could not introduce before the Registrar the affidavit of Mr. Constantine that it filed in this Court.
[37] Even if the appropriate standard of review is correctness because these are questions of law that do not fall within the Registrar’s particular expertise, as the Applicant maintains, I cannot accept its arguments essentially for the reasons stated above in relation to the first ground raised by the Applicant.
[38] I would like to specify at the outset that the respondents’ argument that the amendment sought only clarified the ground of opposition based on subsections 38(2)(d) and 2(d) of the Act appears unconvincing to me. Accepting it would result in form prevailing over substance. It goes without saying that the Registrar would also have concluded that the amendment was late had the respondents tried to introduce it in their opposition based on subsections 38(2)(a) and section 30 of the Act.
[39] That being said, les Producteurs Laitiers and the Cheese Council were entitled to argue that the authority responsible for issuing the licences to use the Mark in association with cheese manufactured in accordance with the established standard was not the Applicant but another ministry of the Cypriot government, even in the absence of a formal amendment to the grounds of opposition. In deciding that the Applicant had met its burden of demonstrating that its application for registration complied with the requirements of section 30 of the Act, the Registrar was required to consider the precise wording that the opponents had used in their statement of opposition.
[40] The first ground of opposition based on subsection 38(2) and section 30 specified that the Mark had not been used “as a certification mark”. The certification mark provisions are found in sections 23 to 25 of the Act. As provided in subsection 23(1) of the Act, a certification mark may be adopted and registered only by a person who is not engaged, inter alia, in the manufacture or sale of wares with which the Mark is used. On the other hand, subsection 23(2) provides that only the owner of a certification mark may authorize others to use the mark in association with wares that meet the defined standard; in that case, the use of the mark will be deemed to be use by the owner.
[41] It is therefore clearly apparent from these two subsections of section 23 that the identity of the authority that had the power to authorize the use of the Mark in association with cheese manufactured in accordance with the established standard was at the very heart of the requisite conditions for determining whether the Mark had been used in Canada as a certification mark. The Applicant was required to establish that it or persons it had authorized had used the Mark in Canada in association with cheese manufactured in accordance with the standard. To the extent that the Applicant could not establish that it had the power to authorize certain producers to use the Mark, it could not benefit from the presumption in subsection 23(2).
[42] Accordingly, the Applicant cannot contend that the respondents’ arguments took it by surprise. The issue of whether it had the legal authority to issue licences to use the Mark was inherent in its application for registration and in the concept of a certification mark. It was therefore not necessary to specifically mention in the grounds of opposition that the Applicant did not have the authority to issue licences to use the Mark. By maintaining that the Applicant’s application for registration did not comply with section 30 of the Act because the Mark was not used as stated in the application for registration and that it was not used as a certification mark, it appears to me that the respondents complied with subsection 38(3)(a) of the Act and provided sufficient details to the Applicant to enable it to reply to this ground of opposition. This is particularly true since this flaw in the Applicant’s application was evident to the Registrar from simply reading the evidence it submitted, specifically the affidavit of Mr. Pittas; in this context, it was open to the respondents to draw the Registrar’s attention to this issue at the hearing. In doing so, they were not raising a new ground; they were only clarifying one of the grounds they had argued.
[43] That being so, the Applicant filed with this Court two uncontradicted affidavits of Mr. Aristos Constantine, Trade Commissioner for the Republic of Cyprus in New York. These affidavits clearly were intended to explain the internal operation of the Cypriot government in terms of the responsibility for monitoring the use of the Mark and thus were aimed at filling the gaps identified by the Registrar in this regard (see excerpts from the decision at paragraph 15).
[44] In my view, Mr. Constantine’s affidavits clearly constitute additional evidence that could have had an impact on the Registrar’s findings, and as such, the Court is justified in drawing its own conclusions from them as to the correctness of the Registrar’s decision. Accordingly, the standard of review on this issue is correctness.
[45] The evidence shows without any ambiguity that the laws of the Republic of Cyprus designate the Ministry of Commerce and Industry (the Ministry) as the ministry responsible for monitoring the use of the certification mark Halloumi in association with cheese. However, the Ministry delegated the responsibility for monitoring compliance with the manufacturing standards for Halloumi cheese to the Ministry of Health and the public servants in the Department of Veterinary Services. These entities are not legally distinct from the Ministry but are all part of the Government of the Republic of Cyprus. The following paragraphs from Mr. Constantine’s affidavit are, in my view, the most relevant to respond to the questions the Registrar raised in his decision:
7. The purpose of the present Affidavit is therefore to confirm that it is indeed the Ministry of Commerce and Industry of the Republic of Cyprus (hereinafter referred to as “The Ministry”) that is the authority that has been designated within the Government of Cyprus to be responsible for the supervision of the use of the certification mark HALLOUMI in association with cheese.
9. Pursuant to the Cyprus Standards and Control of Quality Laws of 1975 to 1996 (section 9), the Minister heading the Ministry was the only authority within the Government of Cyprus responsible for the designation, issuance and publication of the compulsory Standards for HALLOUMI cheese and for the appointment of officers authorized to control and/or inspect the proper implementation of said compulsory Standards. . . . As we will see hereafter, the Department of Veterinary Services of the Ministry of Agriculture, Natural Resources and the Environment (hereinafter “The Veterinary Services”) and the Public Health Services of Department of Medical and Public Health Services of the Ministry of Health (hereinafter “the Public Health Services”) were afterwards appointed by the Minister heading the Ministry, under the Cyprus Standards and Control of Quality Laws of 1975 to 1996 to monitor, only, the implementation and compliance of the compulsory Standards for HALLOUMI cheese.
22. As it can be seen from the above, both the Veterinary Services and the Public Health Services control and certify the compliance with legal requirements that apply to all food products or animal food products and not specifically to HALLOUMI cheese. One has to understand that a producer of HALLOUMI cheese could have received the relevant authorizations and licenses from the Public Health Services and/or the Veterinary Services, but would still not be entitled to use any longer the certification mark HALLOUMI because while his production facilities respect sanitary requirements and he is allowed to export his specific products, the cheese that it produces, can no longer qualify as HALLOUMI cheese because one or the other of the production criteria referred to in the Standards, is not respected.
23. As regards the compulsory Standards for the production of HALLOUMI cheese, the primary legal competence both for the issuing of the Standards and supervising the controls for compliance therewith belongs to the Minister heading the Ministry. The Veterinary Services and the Public Health Services have competences in that respect only as a result of appointments made by the said Minister, to act on his behalf.
[46] These allegations, which rely on the relevant legislation and regulations attached to Mr. Constantine’s affidavit, appear to fully respond to the questions posed by the Registrar in his reasons. Again, the respondents did not see fit to cross-examine Mr. Constantine, and therefore his testimony must be accepted as true. Consequently, I am of the view that the additional evidence justifies allowing the Applicant’s appeal in the three dockets as regards the ground of opposition based on section 30 of the Act. This evidence is also sufficient to overturn the Registrar’s finding in the Cheese Council’s docket on the distinctiveness of the Mark (sections 38(2)(d) and 2 of the Act) since this finding was based on the same lack of evidence about the authority monitoring the use of the Mark.
C. Did the Registrar Err in His Findings Regarding the Registrability of the Mark Under Paragraphs 38(2)(b) and 12(1)(e) and Section 10 of the Act?
[47] The Applicant took the position that the Registrar erred by ruling that the relevant date for purposes of determining whether the Mark could be registered under paragraphs 38(2)(b) and 12(1)(e) was the date of the Registrar’s decision. While acknowledging that the Applicant itself had pleaded this date in its written representations before the Registrar, its counsel noted that a decision of this Court issued the day after the hearing before the Registrar called into question the choice of that date. He also argued that the Court of Appeal decision that was the leading case in this matter until that decision was issued dealt with oppositions where paragraph 12(1)(e) was invoked in conjunction with section 9(1)(n)(iii), not in conjunction with section 10, as in this case.
[48] In my view, these arguments cannot succeed for a number of reasons. First, I note that the Applicant does not mention this ground at all in its notice of appeal from the Registrar’s decision. However, rule 301 clearly states in subsection (e) that the Applicant must set out a complete and concise statement of the grounds intended to be argued in support of its application, including a reference to any statutory provision or rule to be relied on. Even a careful review of the notice of application does not afford a basis for inferring this ground by implication, as the Applicant argues. In such circumstances, the jurisprudence of the Court is clear: an Applicant will be precluded from making an argument that has not been pleaded in the notice of application (see, for example AstraZeneca AB v. Apotex Inc., 2006 FC 7, [2006] F.C.J. No. 46, at paragraphs 17-18). This argument by the Applicant must therefore be dismissed on that ground alone.
[49] In any event, the Applicant’s argument could not succeed even if the Court agreed to consider it. The Court of Appeal decision that is the leading case on this point states that the relevant date is that of the Registrar’s decision and makes no distinction as to whether the ground of opposition is based on paragraph 9(1)(n)(iii) or section 10: see Canadian Olympic Assn. v. Olympus Optical Co. (1991), 38 C.P.R. (3d) 1 (F.C.A.), pp. 3-4. However, Justice Sean Harrington’s comments in Scotch Whisky Assn. v. Glenora Distillers International Ltd., 2008 FC 425, [2008] F.C.J. No. 872, which counsel for the Applicant relies on to argue that the Court of Appeal decision is no longer good law, seems much too cryptic to me to be interpreted in this way. At the very most, Justice Harrington stated that it was not necessary for him to discuss this issue to dispose of the case before him:
The additional evidence is such that it is not necessary to ponder over the relevant date for determining whether the proposed trade-mark is clearly descriptive or deceptively misdescriptive or exactly when a mark had become recognized by ordinary and bona fide commercial usage.
[50] In my view, this comment is clearly insufficient to claim that the Court of Appeal decision in Olympus Optical, above, should no longer be followed, particularly since this Court is bound by a decision of the Court of Appeal until that Court itself has re-evaluated it.
[51] On the merits, the Applicant argued that the Cheese Council had not met its initial evidentiary burden before the Registrar. Its counsel took the position that the Registrar relied only on some cheese packaging that four witnesses obtained in five retail stores in Quebec and Ottawa after asking for “halloumi” cheese, and on the sales figures of a cheese manufacturer that sells almost all its cheese to a supplier that re-sells 40% of it to only one company. The Applicant also submitted that the evidence did not establish whether the inscriptions on the packaging (LE BÉDOUIN, HALLOOM, CLIC HALLOOM, DORÉ-MI, HALOUMI) were used as a trade‑mark or a type of cheese. Last, the Applicant contended that the Registrar erred in admitting the testimony on cross-examination of two of its witnesses who stated that the term “Halloum“ or “Halloumi” describes a type of cheese; this, according to the Applicant, shows a misapprehension of section 10 of the Act and of the concept of a certification mark as defined in section 2 of the Act.
[52] First of all, it should be noted that the Applicant did not submit any additional evidence on this ground of opposition; consequently, and in accordance with the remarks made earlier in paragraph 28 of these reasons, the appropriate standard of review is reasonableness.
[53] However, it is settled law that an opponent has only an initial evidentiary burden: at most, it must introduce sufficient evidence to support a prima facie finding that there is a factual basis for the ground of opposition. Where an opponent satisfies this initial burden, it is up to the person applying to register a mark to persuade the Registrar that the grounds of opposition should not impede its application: see, for example, Institut National des Appellations D'Origine v. Vincor (Québec) Inc. (2003), 32 C.P.R. (4th) 279 (T.M.O.B.).
[54] To meet this initial burden in its opposition based on subsections 38(2)(b) and 12(1)(e) and section 10 of the Act, the Cheese Council had to demonstrate that the Mark (or any other mark “so nearly resembling that mark as to be likely to be mistaken therefor”, to use the language of section 10) was used extensively in Canada by others prior to the relevant date to designate a type of cheese, and that the Mark had an accepted definition or meaning in the industry: see Sealy Canada Ltd. v. Simmons I.P. Inc. (2005), 47 C.P.R. (4th) 296, at paragraphs 35 to 37 (T.M.O.B.).
[55] I believe that the Registrar correctly identified the respondent’s burden of proof and, after carefully reviewing the evidence, I am also of the view that the facts before him supported his finding that, at the date he issued his decision, the Mark had become recognized in Canada as designating a type of cheese. In his reasons, he pointed out that, in order to satisfy its burden of pro