2011 FCA 151, 2011 FCA 151

[2013] 1 F.C.R. 117 A-347-10 2011 FCA 151 BBM Canada ( Appellant ) v. Research In Motion Limited ( Respondent ) Indexed as: BBM Canada v. Research In Motion Limited Federal Court of Appeal, Sharlow, Dawson and Layden-Stevenson JJ.A.—Toronto, January 18; Ottawa, May 5, 2011. Practice — Commencement of Proceedings — Appeal from Federal Court decision ordering proceeding initiated by way of notice of application proceed as action under Federal Courts Rules,

Part 4 — Appellant seeking damages, declaratory, injunctive relief for trade- mark infringement, depreciation of goodwill, passing off under Trade-marks Act — Federal Court concluding no provisions in Act requiring proceedings alleging infringement, unfair competition to commence by notice of application — Whether appellant’s claim may be brought by way of application under Rules,

Part 5 or whether it may only be brought as action under

Part 4 — Issue depending upon proper scope, application of Rules, r. 300,

Part 5 of Rules — Act, s. 53.2 silent as to how proceedings contemplated therein initiated — Phrase “on application” in Act, ss. 53, 53.1, 53.2, 57 to be read in sense of formal request, not in sense of proceeding initiated by notice of application — S. 53.2 conferring broader remedial power, allowing courts to make any order considered appropriate — Purpose of Act best met by promoting expeditious, proportionate access to courts — Interpreting s. 53.2 as permitting applications or actions meeting that purpose — Such

interpretation not rendering Act, ss. 53(5), 53.1(2), 58 redundant — Appeal allowed. Trade-marks — Infringement — Commencement of proceedings — Appellant seeking damages, declaratory, injunctive relief for trade- mark infringement, depreciation of goodwill, passing off under Trade-marks Act — Issue whether claim may be brought by way of notice of application or whether action only way of proceeding — Purpose of Act best met by

interpretation promoting expeditious, proportionate access to courts — To that end, Act, s. 53.2 should be interpreted as permitting that proceedings be brought by application or by action. This was an appeal from a Federal Court decision ordering that the proceeding initiated by the appellant by way of notice of application proceed as an action under

Part 4 of the Federal Courts Rules . The appellant sought damages, declaratory and injunctive relief for trade-mark infringement, depreciation of goodwill and passing off and relied upon various sections of the Trade-marks Act . The respondent moved to dismiss the application on jurisdictional grounds, without prejudice to the right of the appellant to raise the same issues in an action. The Federal Court concluded that there are no provisions in the Act that require or permit proceedings alleging infringement and unfair competition to commence by notice of application.

The appellant submitted that when the relevant provisions of the Act and the Rules are read together, proceedings may be brought either by application or by action under

section 53.2. The respondent argued that proceedings may only be brought by application where the subject-matter of the litigation is expressly enumerated in rule 300 of the Federal Courts Rules . At issue was whether the appellant’s claim for damages may be brought by way of an application made under

Part 5 of the Rules or whether it can only be brought as an action under

Part 4. Held , the appeal should be allowed. The issue depended upon the proper scope and application of rule 300 and

Part 5. Parliament’s intent with respect to the initiation of proceedings brought under the Act must be ascertained under the heading “Legal Proceedings” (sections 52–61) of the Act.

Section 53.2 is silent as to how proceedings contemplated therein are to be initiated. Upon examination of the statutory context of sections 52–61, the phrase “on application” used throughout sections 53, 53.1, 53.2 and 57 should be read in the sense of a formal request and not in the sense of a proceeding initiated by a notice of application.

Section 53.2 also confers a broader remedial power, allowing courts to make any order considered appropriate where satisfied that “any act has been done contrary to this Act”. The purpose of the Act in general, and the “Legal Proceedings”

section in particular, is best met by an

interpretation that promotes access to the courts that is as expeditious and proportionate as possible. To that end,

section 53.2 should be interpreted as permitting proceedings to be brought either by application or by action. This would allow access in an appropriate case to the more

summary application process. Nothing in the wording of the Act precludes this

interpretation. Interpreting

section 53.2 to allow proceedings to be brought either by application or by action does not render

section 58 and subsections 53(5) and 53.1(2) of the Act redundant. The procedural choices offered in subsections 53(5) and 53.1(2) were inserted for greater certainty to ensure that in every jurisdiction an expeditious procedure would be available for urgent and time-sensitive proceedings.

Finally, not all proceedings for trade-mark infringement, depreciation of goodwill and passing off are so complex that they are not amenable to determination by application, and the fact that a litigant may generally choose to proceed by way of action or application does not mean that every case is amenable to adjudication by application. The amended order of the Federal Court was set aside and the respondent’s motion to dismiss the application for lack of jurisdiction was dismissed. STATUTES AND REGULATIONS CITED Business Corporations Act, 1982 , S.O. 1982, c. 4, s. 247.

Copyright Act, R.S.C., 1985, c. C-42, s. 34 (as am. by S.C. 1997, c. 24, s. 20). Federal Court Rules, C.R.C., c. 663, r. 702 (as am. by SOR/88-221, s. 9; 92-726, s. 7). Federal Courts Rules, SOR/98-106, rr. 1 (as am. by SOR/2004-283, s. 2), 57, 59(b), 61, 169 (as am. by SOR/2004-283, s. 37), 300 (asam. by SOR/2002-417, s. 18(E); 2004-283, s. 37), 316, 335 (as am. idem). Rules of Civil Procedure, O. Reg. 560/84, rr. 14.02 (as am. by O. Reg. 711/89, s. 13), 14.05(2) (as am. idem, s. 14). Trade-marks Act, R.S.C., 1985, c.

T-13, ss. 7(b),(c), 20 (as am. by S.C. 1994, c. 47, s. 196), 22, 52 “court” (as am. by S.C. 1993, c. 44, s.234), “duties” (as am. idem), “Minister” (as am. idem; 2005, c. 38, s. 145), “release” (as am. by S.C. 1993, c. 44, s. 234), 53 (as am.idem), 53.1 (as enacted idem), 53.2 (as enacted idem), 53.3 (as enacted idem), 54, 55, 56, 57, 58, 59, 60 (as am. idem, ss. 235, 236, 238),61 (as am. by S.C. 2002, c. 8, s. 177). CASES CITED applied: Chilian v. Augdome Corp. (1991), (ON CA), 2 O.R. (3d) 696, 78 D.L.R. (4th) 129, 49 C.P.C. (2d) 1 (C.A.). considered: Celgene Corp. v.

Canada (Attorney General), 2011 SCC 1, [2011] 1 S.C.R. 3, 327 D.L.R. (4th) 513, 89 C.P.R. (4th) 1;Pharmacommunications Holdings Inc. v. Avencia International Inc., 2008 FC 828, 67 C.P.R. (4th) 387, affd 2009 FCA 144, 79 C.P.R.(4th) 460, 392 N.R. 197; Havana House Cigar & Tobacco Merchants Ltd. v. Worldwide Tobacco Distribution Inc. (2008), 73 C.P.R.(4th) 131 (F.C.). referred to: Housen v.

Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235, 211 D.L.R. (4th) 577, [2002] 7 W.W.R. 1; Canada Trustco Mortgage Co. v.Canada, 2005 SCC 54, [2005] 2 S.C.R. 601, 259 D.L.R. (4th) 193, [2005] 5 C.T.C. 215; Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC22, [2006] 1 S.C.R. 772, 268 D.L.R. (4th) 424, 53 Admin. L.R. (4th) 1. appeal from a decision of the Federal Court (2010 FC 986) ordering that the proceeding initiated by the appellant seeking damages,declaratory and injunctive relief for trade-mark infringement, depreciation of goodwill and passing off under the Trade-marks Actproceed as an action under

Part 4 of the Federal Courts Rules. Appeal allowed. APPEARANCES Peter E. J. Wells for appellant. Trent Horne for respondent. SOLICITORS OF RECORD McMillan LLP, Toronto, for appellant. Bennett Jones LLP, Toronto, for respondent.

The following are the reasons for judgment rendered in English by [1] Dawson J.A.: The issue to be decided on this appeal is whether a claim made in the Federal Court for damages and other reliefflowing from trade-mark infringement, depreciation of goodwill and passing off may be brought by way of an application made underPart 5 [rules 300–334] of the Federal Courts Rules, SOR/98-106 [r. 1 (as am. by SOR/2004-283, s. 2)] (Rules). If not, it follows thatsuch a claim can only be brought as an action under

Part 4 [rules 169–299] of the Federal Courts Rules. The Facts [2] The appellant, BBM Canada, filed a notice of application in the Federal Court in which it claimed that the respondent, ResearchIn Motion Limited, had infringed certain registered trade-marks owned by the appellant. The appellant sought damages, declaratory andinjunctive relief for infringement, depreciation of goodwill and passing off and relied upon subsections 7(

b) and (

c) and sections 20 [asam. by S.C. 1994, c. 47, s. 196], 22 and 53.2 [as enacted by S.C. 1993, c. 44, s. 234] of the Trade-marks Act, R.S.C., 1985, c. T-13 (Act). [3] The respondent moved for an order dismissing the application on jurisdictional grounds, without prejudice to the right of theappellant to raise the same issues in an action. The respondent argued that the Federal Court lacked jurisdiction to decide the issuesraised by BBM Canada in a proceeding commenced by notice of application. [4] A judge of the Federal Court (Judge) ordered that the “proceeding shall proceed as an action” under

Part 4 of the Federal CourtsRules (2010 FC 986). He further ordered that the “notice of application is hereby amended pursuant to Rule 59(

b) and shall serve as aStatement of Claim”. Finally, the Judge set a

schedule for the filing of “an amended originating document entitled Statement of Claim”and a statement of defence, and ordered that the matter be specially managed. The Judge’s Decision [5] The hearing before the Judge proceeded in an unusual fashion. The Judge explains this, and his rationale for making the order

under appeal, in his reasons in the following way (at paragraphs 1, 5–11): These are the reasons for the Order issued in these proceedings on September 27, 2010. No reasons were provided at the time that the Order was granted since it was expected that the parties had essentially consented to the Order and would get on with the matter.

However, I have since been advised that the Applicant has filed an appeal, therefore these reasons are provided to assist the parties and the Court that may hear the appeal. … I had read the materials submitted by both parties and was satisfied that these proceedings should proceed by way of an action. Rule 61(1) of this Court provides that all proceedings shall be commenced by way of an action unless, in accordance with Rule 61(4) there is specific statutory provision that a proceeding can be commenced otherwise, for instance by way of an application.

An example of such a specific provision can be found in the Copyright Act , RSC 1985, c. C-42, section 34(4):

Summary proceedings

(4) The following proceedings may be commenced or proceeded with by way of application or action and shall, in the case of an application, be heard and determined without delay and in a

summary way: (

a) proceedings for infringement of copyright or moral rights; (

b) proceedings taken under

section 44.1, 44.2 or 44.4; and (

c) proceedings taken in respect of (

i) a tariff certified by the Board under

Part VII or VIII, or (ii) agreements referred to in

section 70.12. The Trade-Marks Act makes specific provision for an application to be made where there has been an interim seizure of wares by Customs Officers (section 53.2) [ sic ]. Proceedings to expunge a registration of a trade-mark can be commenced by way of an action, counterclaim in an action or application (section 58).

Section 55 gives the Federal Court jurisdiction to hear “ any action or proceeding ” [emphasis in original] for the enforcement of any right under the Act . This is the

section that is applicable when proceedings are instituted that allege infringement and unfair competition.

Section 55 specifically refers to an action. It also refers to a proceeding but, unlike the Copyright Act , makes no specific provision that the proceeding be commenced and conducted by way of an application. At the hearing of the motion I expressed to Counsel for the Applicant my belief that the proceeding should be taken by way of an action where pleadings could be exchanged, including a Defence and issues defined. I asked Counsel why he wanted to proceed by way of an application. No good answer was provided. Counsel simply said that he believed that he properly could proceed by way of an application.

I asked whether he believed if an application would be quicker and if so, offered to have the action case managed to see that this could be done. I asked whether he wanted an interlocutory injunction and pointed out that this could be done within an action. No response was given. Counsel for the Respondent pointed out that the Notice of Application was very detailed and could easily be re-titled as a Statement of Claim. I asked Counsel for the Respondent whether a Defence, and counter-claim if so advanced, would be filed within a fixed period of time and he agreed that it would.

At this stage I adjourned the hearing for a few minutes to allow Counsel to draft an Order consistent with these discussions. Within a few minutes the terms of an Order in handwritten form were provided to the Registrar who provided them to me in chambers. My understanding was that the parties had consented to an Order as set out therefore the Order was typed out, signed by me and issued. Later that same day the Court received a letter from Counsel for the Applicant stating that his consent was only “as to form”.

Believing that, in any event, the parties were content to proceed in the manner provided by the Order, I amended the Order to state that the consent was “as to form”. The Order is consistent with my disposition of the matter, it is most appropriate to proceed by way of an action, a fixed time limit for a Defence is provided and the matter is to be case managed. [Emphasis added.] The Standard of Review [ 6 ] The parties did not make submissions with respect to the standard of review. To determine the applicable standard of review one must first discern the basis of the Judge’s order.

Did the Judge decide the proceeding could not, as a matter of law, be commenced and continued by notice of application? Alternatively, did the Judge decide that the proceeding could be commenced either by way of application or action but that, in the exercise of his discretion, it was most appropriate for the matter to proceed by way of an action? [ 7 ] As I read the Judge’s reasons he did conclude, at paragraphs 5 and 6 of his reasons, that proceedings that allege infringement and unfair competition cannot be commenced by notice of application because no provision of the Act requires or permits this.

I reach this conclusion on the basis of the Judge’s language in paragraphs 5 and 6 of his reasons and because the motion to strike before the Judge was based solely on the ground that the Federal Court lacked jurisdiction to determine the issues before it in a proceeding commenced by notice of application. [ 8 ] The question of whether a proceeding that alleges infringement and unfair competition may be initiated by a notice of application is a pure question of law. The Judge’s decision on this question is reviewable on the standard of correctness ( Housen v.

Nikolaisen , 2002 SCC 33 , [2002] 2 S.C.R. 235, at paragraphs 8 and 9 ).

The Positions of the Parties [ 9 ] The positions of the parties may be briefly summarized as follows. [ 10 ] The appellant submits that prior to the enactment of the Federal Courts Rules in 1998, Rule 702(7) of the predecessor rules [ Federal Court Rules , C.R.C., c. 663] required a proceeding such as the present one to be commenced by way of an action. This is because rule 702 [as am. by SOR/88-221, s. 9; 92-726, s. 7] stated: Rule 702.

(1) Proceedings under

section 22 of the Industrial Design Act shall be instituted in accordance with subsection (1) of that section.

(2) Proceedings under

section 23 of the Industrial Design Act shall be instituted by originating motion.

(3) Proceedings under subsection 57(4) of the Copyright Act shall be instituted by originating motion.

(4) Proceedings under paragraph 50(10)(

c) of the Trade-marks Act shall be instituted by originating motion

(5) Proceedings under

section 56 of the Trade-marks Act shall be instituted in accordance with subsection (2) thereof.

(6) Proceedings under

section 57 of the Trade-marks Act shall be instituted in accordance with

section 58 of that Act.

(7) An application to the Court under one of the statutes referred to in this Rule other than those to which reference has been specially made in this Rule shall be instituted by statement of claim or declaration. [Emphasis added.] [ 11 ] However, the appellant argues, a new regime was implemented in 1998. When the relevant provisions of the Act and the Rules are read together, proceedings brought under

section 53.2 of the Act may be brought either by application or by action. [ 12 ] In opposition, the respondent submits that the causes of action advanced by BBM Canada may only proceed by way of action under

Part 4 of the Rules. The respondent argues that the application process is exceptional; proceedings may only be brought by application where the subject-matter of the litigation is expressly enumerated in rule 300 [as am. by SOR/2002-417, s. 18(E); 2004-283, s. 37]. Nothing in the Act , or any other Act of Parliament, requires or permits proceedings for trade-mark infringement, depreciation of goodwill or passing off to be brought by way of an application. Consideration of the Issue i.

The scheme of the Rules: actions, applications and appeals [ 13 ] Consideration of the issue begins with the overall scheme of the Rules. Rule 61 provides that there are three modes by which a proceeding may be initiated under the Rules. Proceedings may be initiated by way of an action, an application or an appeal. Rule 61 states: Actions 61.

(1) Subject to subsection (4), a proceeding referred to in rule 169 shall be brought as an action. Applications

(2) Subject to subsection (4), a proceeding referred to in rule 300 shall be brought as an application. Appeals

(3) A proceeding referred to in rule 335 shall be brought as an appeal. Exception

(4) Where by or under

an Act of Parliament a person is given the option of bringing a proceeding referred to in rule 169 or 300 as either an action or an application, the person may commence the proceeding as an action or as an application. [ 14 ] Rule 61 in turn refers to rules 169 [as am. by SOR/2004-283, s. 37], 300 and 335 [as am. idem ], which set out the circumstances in which each initiating mode is applicable. For example, rule 335, referred to in subsection 61(3), states that

Part 6 [rules 335–357] of the Rules applies to appeals to the Federal Court of Appeal from the Federal Court and the Tax Court of Canada, and also to appeals to the Court brought under

an Act of Parliament. It is common ground that

Part 6 of the Rules has no application to the present proceeding. [ 15 ] At issue in the present case is the proper application of rules 169 and 300 , which deal respectively with actions and applications. ii. Rules 169 and 300 [ 16 ] Rule 169 provides: Application 169. This Part applies to all proceedings that are not applications or appeals, including (

a) references under

section 18 of the Citizenship Act ; (

b) applications under subsection 33(1) of the Marine Liability Act ; and (

c) any other proceedings required or permitted by or under

an Act of Parliament to be brought as an action. [ 17 ] The scope of

Part 4 of the Rules is residual. Matters not properly initiated by an application or an appeal are to be initiated by an action. As will be seen, the Rules do contemplate the situation where Parliament affords a choice to a litigant of proceeding either by way of application or action. Paragraph 169(

c) clarifies that where Parliament has afforded such a choice, a proceeding may be initiated by way of an action. [ 18 ] It follows from the wording of rule 169 and the residual nature of

Part 4 of the Rules that the issue to be determined in the present case depends upon the proper scope and application of rule 300 and

Part 5 of the Rules.

[19] Rule 300 states: Application300. This Part applies to (

a) applications for judicial review of administrative action, including applications under

section 18.1 or 28 of the Act,unless the Court directs under subsection 18.4(2) of the Act that the application be treated and proceeded with as an action; (

b) proceedings required or permitted by or under

an Act of Parliament to be brought by application, motion, originatingnotice of motion, originating summons or petition or to be determined in a

summary way, other than applications undersubsection 33(1) of the Marine Liability Act; (

c) appeals under subsection 14(5) of the Citizenship Act; (

d) appeals under

section 56 of the Trade-marks Act; (

e) references from a tribunal under rule 320; (

f) requests under the Commercial Arbitration Code brought pursuant to subsection 324(1); (

g) proceedings transferred to the Court under subsection 3(3) or 5(3) of the Divorce Act; and (

h) applications for registration, recognition or enforcement of a foreign judgment brought under rules 327 to 334.[Emphasis added.] [20] For the purpose of this appeal, the only relevant portion of rule 300 is paragraph (b). This, in turn, requires determination of thefollowing question: is the proceeding at issue one that is required or permitted (“prévoit ou en autorise”) by the Act to be brought byapplication? If so, the proceeding at issue could properly be commenced by application. iii.

What does the Act require or permit? [21] Sections 52 to 61 [ss. 52 “court” (as am. by S.C. 1993, c. 44, s. 234), “duties” (as am. idem), “Minister” (as am. idem; 2005, c.38, s. 145), “release” (as am. by S.C. 1993, c. 44, s. 234), 53 (as am. idem) 53.1 (as enacted idem), 53.2 (as enacted idem), 53.3 (asenacted idem), 54, 55, 56, 57, 58, 59, 60 (as am. idem, ss. 235, 236, 238), 61 (as am. by S.C. 2002, c. 8, s. 177)] of the Act fall under theheading “Legal Proceedings.” It is from these provisions that Parliament’s intent with respect to the initiation of legal proceedingsbrought under the Act must be ascertained. [22] It is well established that statutory

interpretation requires consideration of the ordinary meaning of the words used and theirstatutory context. This was explained by the Supreme Court in Canada Trustco Mortgage Co. v. Canada, 2005 SCC 54, [2005] 2 S.C.R.601, at paragraph 10 and reiterated in Celgene Corp. v. Canada (Attorney General), 2011 SCC 1, [2011] 1 S.C.R. 3, at paragraph 21. Inthat case the Supreme Court quoted from and commented on Canada Trustco as follows: It has been long established as a matter of statutory

interpretation that “the words of

an Act are to be read in their entire context and intheir grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament”:see 65302 British Columbia Ltd. v. Canada, (SCC), [1999] 3 S.C.R. 804, at para. 50. The

interpretation of a statutoryprovision must be made according to a textual, contextual and purposive analysis to find a meaning that is harmonious with the Act as awhole. When the words of a provision are precise and unequivocal, the ordinary meaning of the words play a dominant role in theinterpretive process. On the other hand, where the words can support more than one reasonable meaning, the ordinary meaning of thewords plays a lesser role. The relative effects of ordinary meaning, context and purpose on the interpretive process may vary, but in allcases the court must seek to read the provisions of

an Act as a harmonious whole. [Paragraph 10.] The words, if clear, will dominate; if not, they yield to an

interpretation that best meets the overriding purpose of the statute. [Emphasisadded.] iv. The statutory text and context [23] The present proceeding is said to be brought pursuant to

section 53.2 of the Act.

Section 53.2 allows a court to grant relief wherethe Act has been violated. It provides: Powerofcourttograntrelief 53.2 Where a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the courtmay make any order that it considers appropriate in the circumstances, including an order providing for relief by way ofinjunction and the recovery of damages or profits and for the destruction, exportation or other disposition of any offendingwares, packages, labels and advertising material and of any dies used in connection therewith. [Emphasis added.] [24] This provision is silent as to how such proceedings are to be initiated. While the

section does refer to the “application of anyinterested person” (demande de toute personne intéressé

e) for the reasons set out below I agree with the respondent that, in this context,the word “application” is used in the sense of a formal request and not in the sense of a legal proceeding commenced by a notice ofapplication. Because

section 53.2 is silent on how proceedings contemplated by this

section are to be initiated, regard must be had to thestatutory context in order to determine Parliament’s intent. The intention to be given is the one that “best meets the overriding purpose”of the Act (Celgene, at paragraph 21). [25] Turning to the statutory context, sections 52 to 61 of the Act are set out in the Appendix to these reasons. The following pointsdescribe the statutory context provided by those provisions:

Section 52 contains

definitions applicable to sections 53 to 53.2 of the Act. “Court” is defined to mean the Federal Court or thesuperior court of a province. It follows that sections 53 to 53.2 of the Act must be read in the context that Parliament intended thatproceedings referenced in these sections could be brought in various courts, each potentially with distinct rules of procedure. None of theother defined terms are relevant to the present issue.

Section 53 allows proceedings for the interim custody of wares to be brought “on application of any interested person” where thedistribution of the wares would be contrary to the Act. Subsection 53(5) gives guidance as to how such an application is to be made. It“may be made in an action or otherwise, and either on notice or ex parte.”

Section 53.1 allows a proceeding to be brought “on application by the owner of a registered trade-mark” directing the relevant ministerto detain wares. Subsection 53.1(2) directs that such a proceeding “may be made in an action or otherwise, and either on notice or exparte, except that it must always be made on notice to the Minister.”

Section 53.2, relied upon by the appellant, allows a court to grant relief where it is satisfied that any act has been done contrary to theAct. While the provision gives a non-exhaustive list of remedies that may be awarded, the provision is silent about how such aproceeding may be initiated.

Section 55 of the Act confirms the jurisdiction of the Federal Court “to entertain any action or proceeding for the enforcement of anyof the provisions of this Act or of any right or remedy conferred or defined thereby.” This contemplates that proceedings may becommenced in the Federal Court both by action or application. It does not limit the Court’s jurisdiction to proceedings brought by anaction.

Section 56 provides for an appeal to the Federal Court from any decision of the Registrar. Subsection 56(2) specifies that any appealshall be made by notice of appeal. That said, paragraph 300(

d) states that

Part 5 of the Rules, the application procedure, applies toappeals under

section 56 of the Act.

Section 57 confirms the exclusive jurisdiction of the Federal Court to order that any entry in the register be struck out or amended.Section 58 provides that such application shall be made by way of an originating notice of motion (now known as a notice ofapplication), by counter-claim in an action for the infringement of the trade-mark or by statement of claim in an action claimingadditional relief.

This evidences an intent to allow a party seeking to strike out or amend an entry in the register to have a choice as tohow the proceeding may be initiated: on application or by action where additional relief is sought. [26] From this context, the following conclusions may be drawn: 1. The phrase “on application” used throughout sections 53, 53.1, 53.2 and 57 should be read in the sense of a formal request and not inthe sense of proceeding initiated by a notice of application. This conclusion follows from the fact that sections 53, 53.1 and 57 (whenread with

section 58) contemplate “applications” being brought by way of actions. Reading the phrase “on application” as referring to aproceeding initiated by way of a notice of application would be contrary to the express provisions of sections 53, 53.1 and 57 (when readwith

section 58). 2. This part of the Act details four specific types of proceedings that may be commenced: a. proceedings for interim custody under

section 53; b. proceedings for detention by the minister under

section 53.1; c. appeals from decisions of the Registrar under

section 56; d. proceedings to strike out or amend entries in the register under sections 57 and 58. The Act and the Rules expressly specify the routes available for instituting these four proceedings.

Section 53.2 of the Act confers a broader remedial power, allowing courts to make any order considered appropriate where satisfiedthat “any act has been done contrary to this Act”. In this case, the Act is silent as to how such proceedings are to be initiated. [27] How is such silence to be interpreted? By its silence did Parliament intend that proceedings claiming relief as a result of actionscontrary to the Act were permitted to be brought either by application or action? Alternatively, by its silence did Parliament intend thatsuch proceedings could only be brought by way of action? The

interpretation to be selected is the one that meets the overriding purposeof the statute. [28] The Act serves two purposes: to protect consumers and to facilitate the effective branding of goods (see Mattel, Inc. v. 3894207Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772, at paragraphs 21 to 23). The purpose of that portion of the Act that follows under theheading “Legal Proceedings” is to provide legal redress for violations of the Act. In my view, the purpose of the Act in general, and the“Legal Proceedings”

section in particular, is best met by an

interpretation that promotes access to the courts that is as expeditious andproportionate as possible. To facilitate expeditious and proportionate access to justice,

section 53.2 of the Act should be interpreted aspermitting proceedings to be brought either by application or by action. This would allow access in an appropriate case to the moresummary application process. Nothing in the wording of the Act precludes this

interpretation. [29] I also find support for this

interpretation in Chilian v. Augdome Corp. (1991), (ON CA), 2 O.R. (3d) 696, adecision of the Ontario Court of Appeal. At issue in Chilian was whether a proceeding seeking relief under

section 247 of the BusinessCorporations Act, 1982, S.O. 1982, c. 4 (the oppression remedy) should have been commenced by application, not action.

Section 247allowed various entities to “apply to the court for an order under this section.” The applicable rules of court were rule 14.02 (as am. byO. Reg. 711/89, s. 13) and subrule 14.05(2) (as am. by O. Reg. 711/89, s. 14) [Rules of Civil Procedure, O. Reg. 560/84] whichprovided:

14.02 Every proceeding in the court shall be by action, except where a statute or these rules provide otherwise. … 14.05 …

(2) A proceeding may be commenced by an application to the Ontario Court (General Division) or to a judge of that court, if a statute so authorizes. [ 30 ] Thus, the applicable rules before the Court in Chilian were similar to the relevant rules of the Federal Court. [ 31 ] At page 710 of its reasons the Ontario Court of Appeal concluded that “where a statute merely enables a person to ‘apply’ to a court for specified relief, the law does not mandate one particular form of proceeding — application or action.” Where neither form of proceeding is mandated, either is permitted.

Parenthetically, I note that following Chilian , proceedings for infringement can be commenced by notice of application in Ontario. [ 32 ] In reaching the conclusion that proceedings claiming relief for violation of the Act may be brought either by way of action or application I have considered the respondent’s argument that this

interpretation renders

section 58 and subsections 53(5) and 53.1(2) redundant. In my view, the specific procedural choices offered in subsections 53(5) and 53.1(2) of the Act were inserted for greater certainty so as to ensure that in every jurisdiction an expeditious procedure would be available for proceedings that may well be of an urgent and time-sensitive nature. The specific procedures detailed in subsection 56(2) and

section 58 of the Act relate to proceeding solely within the jurisdiction of the Federal Court and establish procedures relevant to specific statutory remedies for challenging decisions of the Registrar or entries in the register. Interpreting

section 53.2 of the Act to allow proceedings to be brought either by application or action does not render those provisions redundant. [ 33 ] Finally, I have considered the respondent’s submission that proceedings for trade-mark infringement, depreciation of goodwill and passing off are too complex to be determined by application. There are two responses to this submission. [ 34 ] First, not all such proceedings are so complex that they are not amenable to determination by application. This is evidenced by Pharmacommunications Holdings Inc. v.

Avencia International Inc. , 2008 FC 828 , 67 C.P.R. (4th) 387, affd 2009 FCA 144 , 79 C.P.R. (4th) 460. There, an applicant moved by way of application for a declaration and a permanent injunction in respect of its claim that the respondent had engaged in statutory passing off. The matter proceeded to conclusion without any apparent objection that the application had been improperly commenced. [ 35 ] Second, the fact that a litigant may generally choose to proceed by way of action or application does not mean that every case is amenable to adjudication by application.

In any particular case, circumstances such as the relief sought, the extent credibility is in issue or the need for discovery may make it inappropriate for a proceeding to be commenced by application. In light of this, motions may be brought challenging the appropriateness of proceeding by application. For example, without deciding the point, it may be possible to move for an order converting an application to an action. See, for example, Havana House Cigar & Tobacco Merchants Ltd. v. Worldwide Tobacco Distribution Inc. (2008), 73 C.P.R. (4th) 131 (F.C.) where an application brought under

section 34 [as am. by S.C. 1997, c. 24, s. 20] of the Copyright Act [R.S.C., 1985, c. C-42], cited in the reasons of the Judge, was ordered to proceed as an action. Motions may also be brought under rule 316. While rule 57 provides that an originating document shall not be set aside only because a different originating document should have been used, there may be, at the least, cost consequences for choosing an inappropriate originating document.

Conclusion [ 36 ] For these reasons, I would allow the appeal, set aside the amended order of the Federal Court dated September 27, 2010 (except insofar as it orders this matter to be referred to case management), and dismiss the motion of the respondent Research In Motion Limited for an order dismissing the application for lack of jurisdiction. As the appellant has not asked for costs, none should be awarded.

Because the issue of the appropriateness of this particular matter proceeding by way of application has not been addressed, I would clarify that this disposition does not preclude the respondent from later moving for such relief as may be required as a result of the proceeding being commenced by way of application. Sharlow J.A.: I agree. Layden-Stevenson J.A.: I agree. APPENDIX Sections 52 to 61 of the Trade-marks Act are as follows:

Definitions 52. In sections 53 to 53.3, “court” « tribunal » “court” means the Federal Court or the superior court of a province; “duties” « droits » “duties” has the same meaning as in the Customs Act ; “Minister” « ministre » “Minister” means the Minister of Public Safety and Emergency Preparedness;

“release” « dédouanement » “release” has the same meaning as in the Customs Act . Proceedings for interim custody 53.

(1) Where a court is satisfied, on application of any interested person, that any registered trade-mark or any trade- name has been applied to any wares that have been imported into Canada or are about to be distributed in Canada in such a manner that the distribution of the wares would be contrary to this Act , or that any indication of a place of origin has been unlawfully applied to any wares, the court may make an order for the interim custody of the wares, pending a final determination of the legality of their importation or distribution in an action commenced within such time as is prescribed by the order. Security

(2) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the wares and for any amount that may become chargeable against the wares while they remain in custody under the order. Lien for charges

(3) Where, by the judgment in any action under this

section finally determining the legality of the importation or distribution of the wares, their importation or distribution is forbidden, either absolutely or on condition, any lien for charges against them that arose prior to the date of an order made under this

section has effect only so far as may be consistent with the due execution of the judgment. Prohibition of imports

(4) Where in any action under this

section the court finds that the importation is or the distribution would be contrary to this Act , it may make an order prohibiting the future importation of wares to which the trade-mark, trade-name or indication of origin has been applied. How application made

(5) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte . Limitation

(6) No proceedings may be taken under subsection (1) for the interim custody of wares by the Minister if proceedings for the detention of the wares by the Minister may be taken under

section 53.1. Proceedings for detention by Minister 53.1

(1) Where a court is satisfied, on application by the owner of a registered trade-mark, that any wares to which the trade-mark has been applied are about to be imported into Canada or have been imported into Canada but have not yet been released, and that the distribution of the wares in Canada would be contrary to this Act , the court may make an order (

a) directing the Minister to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to detain the wares; (

b) directing the Minister to notify the applicant and the owner or importer of the wares, forthwith after detaining them, of the detention and the reasons therefor; and (

c) providing for such other matters as the court considers appropriate. How application made

(2) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte , except that it must always be made on notice to the Minister. Court may require security

(3) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, (

a) to cover duties, storage and handling charges, and any other amount that may become chargeable against the wares; and (

b) to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the wares. Application for directions

(4) The Minister may apply to the court for directions in implementing an order made under subsection (1). Minister may allow inspection

(5) The Minister may give the applicant or the importer of the detained wares an opportunity to inspect them for the purpose of substantiating or refuting, as the case may be, the applicant’s claim. Where applicant fails to commence an action

(6) Unless an order made under subsection (1) provides otherwise, the Minister shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the wares without further notice to the applicant if, two weeks after the applicant has been notified under paragraph (1) ( b ), the Minister has not been notified that an action has been commenced for a final determination by the court of the legality of the importation or distribution of the wares. Where court finds in plaintiff’s favour

(7) Where, in an action commenced under this section, the court finds that the importation is or the distribution would be contrary to this Act , the court may make any order that it considers appropriate in the circumstances, including an order that the wares be destroyed or exported, or that they be delivered up to the plaintiff as the plaintiff’s property absolutely.

Power of court to grant relief 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.

Re-exportation of wares 53.3 Where in any proceeding under

section 53.1 or 53.2 the court finds (

a) that wares bearing a registered trade-mark have been imported into Canada in such manner that the distribution of the wares in Canada would be contrary to this Act , and (

b) that the registered trade-mark has, without the consent of the owner, been applied to those wares with the intent of counterfeiting or imitating the trade-mark, or of deceiving the public and inducing them to believe that the wares were made with the consent of the owner, the court may not, other than in exceptional circumstances, make an order under that

section requiring or permitting the wares to be exported in an unaltered state. Evidence 54.

(1) Evidence of any document in the official custody of the Registrar or of any extract therefrom may be given by the production of a copy thereof purporting to be certified to be true by the Registrar. Idem

(2) A copy of any entry in the register purporting to be certified to be true by the Registrar is evidence of the facts set out therein. Idem

(3) A copy of the record of the registration of a trade-mark purporting to be certified to be true by the Registrar is evidence of the facts set out therein and that the person named therein as owner is the registered owner of the trade- mark for the purposes and within the territorial area therein defined. Idem

(4) A copy of any entry made or documents filed under the authority of any Act in force before July 1, 1954 relating to trade-marks, certified under the authority of that Act, is admissible in evidence and has the same probative force as a copy certified by the Registrar under this Act as provided in this section. Jurisdiction of Federal Court 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. Appeal 56.

(1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. Procedure

(2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court. Notice to owner

(3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trade-mark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision. Public notice

(4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper. Additional evidence

(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar. Exclusive jurisdiction of Federal Court 57.

(1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark. Restriction

(2) No person is entitled to institute under this

section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal. How proceedings instituted 58. An application under

section 57 shall be made either by the filing of an originating notice of motion, by counter- claim in an action for the infringement of the trade-mark, or by statement of claim in an action claiming additional relief under this Act . Notice to set out grounds 59.

(1) Where an appeal is taken under

section 56 by the filing of a notice of appeal, or an application is made under

section 57 by the filing of an originating notice of motion, the notice shall set out full particulars of the grounds on which relief is sought. Reply

(2) Any person on whom a copy of the notice described in subsection (1) has been served and who intends to contest the appeal or application, as the case may be, shall file and serve within the prescribed time or such further time as the court may allow a reply setting out full particulars of the grounds on which he relies. Hearing

(3) The proceedings on an appeal or application shall be heard and determined summarily on evidence adduced by affidavit unless the court otherwise directs, in which event it may order that any procedure permitted by its rules and practice be made available to the parties, including the introduction of oral evidence generally or in respect of one or more issues specified in the order. Registrar to transmit documents 60.

(1) Subject to subsection (2), when any appeal or application has been made to the Federal Court under any of the provisions of this Act , the Registrar shall, at the request of any of the parties to the proceedings and on the payment of the prescribed fee, transmit to the Court all documents on file in the Registrar’s office relating to the matters in question in those proceedings, or copies of those documents certified by the Registrar. Register of registered users

(2) The transmission of documents on which entries in the register required to be kept under paragraph 26(1)(

b) are based is subject to the provisions of subsection 50(6) of the Trade-marks Act , as it read immediately before

section 69 of the Intellectual Property Law Improvement Act came into force. Judgments to be filed 61. An officer of the Registry of the Federal Court shall file with the Registrar a certified copy of every judgment or order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada relating to any trade- mark on the register.