The applicant, the Canadian Rehabilitation Council for the Disabled, is also known as the "The March of Dimes". The respondent, the Rehabilitation Foundation for the Disabled, has also been known as the "Ontario March of Dimes". The use of the term "March of Dimes", and variants on that name, is a matter of dispute between them.

In 2001, the Rehabilitation Foundation for the Disabled ("Ontario Foundation") wished to reinforce its entitlement to use the marks "March of Dimes" and "Ontario March of Dimes". It asked the Registrar of Trade-marks to issue public notices that it had adopted and used those two marks. The Registrar issued the notices under s. 9(1)(n)(iii) of the Trade-marks Act. They then became "official marks" which are given enhanced protection under the law.

The Canadian Rehabilitation Council ("National Council") began this application for judicial review in an effort to overturn the Registrar's decision. It argues that any use that the Ontario Foundation made of the marks in question was under license to it and, therefore, did not give the Ontario Foundation any independent legal entitlement to them. Accordingly, it suggests that the Registrar's decision should be set aside.

The National Council wishes to tender evidence showing that the Ontario Foundation was using the marks in question under license from it and did not have any independent entitlement to them. The Court finds that the National Council's evidence should be admitted.

The Registrar's decision whether to issue a public notice under s. 9(1)(n)(iii) is based simply on the applicant's assertion that it is a public authority that has adopted and used the official mark in question. Those who might oppose the application have no opportunity to dispute the applicant's assertions except on judicial review (or, if a party, by way of appeal). Given the perfunctory nature of the Registrar's decision, the Court considers that it is appropriate to allow a party contesting the public notice an opportunity to present new evidence relating to the adoption and use of an official mark on judicial review.

If the Court concludes that the fresh evidence supplied is probative - in the sense that it would have materially affected the Registrar's decision - it must come to its own conclusion about whether the public authority had indeed adopted and used the official mark.

In 1965, the National Council entered into an agreement with the Ontario Foundation. The agreement granted the Ontario Foundation, as a licensee of the National Council, permission to use "The March of Dimes". The parties entered into a new and similar agreement in 1971. This second agreement was renewable annually. However, there is little evidence showing that the Ontario Foundation renewed it. Still, the conduct of the parties over the years suggests that they considered themselves bound by the 1971 licensing agreement. For its part, the Ontario Foundation did not expressly terminate it. It continued to pay the fees due under it. And it continued to use the mark "The March of Dimes", which the agreement permitted it to do.

The National Council proposed a new agreement in the 1990s, but the Ontario Foundation did not sign it. The parties negotiated, but failed to reach a new deal. The National Council considered the 1971 agreement to continue to be in force.

In 1997, the National Council asked the Registrar to issue public notices for the marks "March of Dimes" and "The March of Dimes". The Registrar complied.

The Ontario Foundation is dissatisfied with the National Council's performance as a national charity under the March of Dimes banner and does not wish to continue to pay annual licensing fees. Hence its decision in 2001 to seek public notices under s. 9(1)(n)(iii) of the Act. Public notices would give it an independent right to use and protect the marks "March of Dimes" and "Ontario March of Dimes". Since it obtained those notices in 2001, the Ontario Foundation has ceased paying annual fees to the National Council.

The Ontario Foundation has organized fundraising efforts under the banners "March of Dimes" and "Ontario March of Dimes" for decades. It says that it has clearly "adopted and used" those marks and, therefore, was entitled to public notices for them under s. 9(1)(n)(iii) of the Trade-marks Act.

The Court agrees that the issue of confusion does not arise under s. 9(1)(n)(iii) of the Act. However, the Court must treat the marks "March of Dimes" and "Ontario March of Dimes" equally in this proceeding, despite the Ontario Foundation's distinct and more forceful claim to "Ontario March of Dimes". Since all of the various forms of the "March of Dimes" marks used by the Ontario Foundation derived from its licensing arrangement with the National Council, they merit equivalent treatment.

The Ontario Foundation used various forms of the "March of Dimes" mark over the years. This use derived solely from its status as a provincial licensee of the National Council and served to identify it accordingly. It had no independent legal entitlement to these marks. It had neither registered them as trade-marks nor, until 2001, sought public notice of them as official marks. The National Council no doubt tolerated all of these uses because they participated to its benefit by advancing the charitable causes to which it was devoted.

The Trade-marks Act provides that a licensee's use of a trade-mark is for the benefit of the licensor. No similar provision exists for official marks.

If the Court were to accept the Ontario Foundation's argument, it would mean that a public authority that held trade-marks and obtained public notices of its official marks would risk limiting the scope of its intellectual property by entering into a licensing agreement with another public authority. The Court cannot recognize use of an official mark under license from another public authority as constituting "adoption and use" for purposes of s. 9(1)(n)(iii) of the Act.

Based on this analysis, the Court grants this application for judicial review. The Registrar's decision was incorrect and must be quashed. 

The Plaintiffs, Disney Enterprises Inc. ("Disney"), Buena Vista Home Entertainment Inc. ("Buena Vista"), Metro-Goldwin-Mayer Studios Inc. ("MGM"), Paramount Pictures Corporation ("Paramount"), Tristar Pictures Inc. ("Tristar"), Universal City Studios Inc. ("Universal"), Warner Bros ("Warner") and Columbia Tristar Home Entertainment Inc. ("Columbia"), are all well known American motion picture companies. After a movie is shown in theatres, they often distribute it in one fashion or another to the pay-per-view television market and then to the general public by way of videocassettes recordings, DVD and VCD. Their intellectual property is protected by law, including copyright and trade-mark.

They accuse the defendants, a Quebec company doing business under the name of Multividéo ("Multividéo") and its shareholder, Claude Rivard, of "video piracy", i.e. of having reproduced or duplicated their movies and having rented and sold these counterfeits to the general public without authorization or license.

The plaintiffs are seeking summary judgment on the basis that Multividéo pleaded guilty to three related criminal charges under the Copyright Act.

Multividéo and Rivard do not contest the validity of the intellectual property rights. Multividéo says that all it did was to repair videotapes bought by an authorized distributor. It pleaded guilty as a part of a plea bargain. Rivard denies having been personally involved. The charges against him lie fallow.

The Court is prepared to issue a summary judgment with respect to plaintiffs' intellectual property interest in all the movies, as there is no dispute over this matter. However, the Court finds that the facts are not sufficiently clear to render a summary judgment on liability and damages. There are real credibility issues.

Plaintiffs Yvon Beauchesne and Les Ateliers Val-D'Or Inc. are the owners of Canadian patent no. 1,326,048, known under the name "An Apparatus for Handling Rods". On May 25, 2004, they filed proceedings before the Superior Court alleging counterfeiting of their patent. They are asking the Court to issue an interlocutory injunction and a permanent injunction.

In July 2004, they also filed before the Canadian Intellectual Property Office a request for reexamination of the patent held by the defendants.

Defendants Hugues Marcotte and Usinage Marcotte Inc. filed a motion for dismissal on the grounds of lack of jurisdiction of the Superior Court. They allege that as owners of Canadian patent number 2,360,005, known under the name "Dispositif d'alimentation de tiges de forage", they have the exclusive right, for the duration of the patent, to manufacture, build, exploit and sell to others the object of their invention, unless a Court having jurisdiction invalidates their patent. Consequently, there cannot be counterfeiting, as they own a valid patent. Moreover, they allege that if the injunctions are issued, their effect will be to invalidate their patent. They are therefore asking the Court to dismiss the action.

The Court indicates that, under section 54 of the Patents Act, it has jurisdiction to hear a dispute of counterfeiting.

There is of course the fact that defendants also own a patent. Does this fact prevent plaintiffs from filing an action in counterfeiting before the Superior Court and oblige them to file proceedings with the Federal Court?

Base on a Supreme Court decision rendered in 1886(1), the Court concludes that plaintiffs do not have to file proceedings before the Federal Court to have defendants' patent invalidated before filing an action for damages for counterfeiting.

The motion for dismissal is dismissed.

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(1) Collette v. Lasnier [1886] 13 S.C.R., 563.

In April 1992, Valery Fabrikant («Fabrikant») filed a claim against defendants Swamy and Sankar, alleging that these 2 defendants were designated as co-authors of scientific texts published between 1981 and 1988 whereas in fact they did not contribute to those texts.

In May 1998, Fabrikant wants to add G.D. Xistris ("Xistris") and S.V. Hoa ("Hoa") as defendants. He alleges that, as Swamy and Sankar, Xistris and Hoa illegally abused him, that they threatened to dismiss him and that he had to indicate their name as co-authors notwithstanding the fact that they did not contribute to the texts.

Xistris and Hoa filed a motion for dismissal. They claim that the action is prescribed, as it was filed against them 16 years after publication. Fabrikant pleads that moral rights are different from copyright that they are not commercial and not subject to prescription.

The Court reminds that copyright is neither regulated by the rules of civil tort liability nor by right of ownership but by a legislative statute. The provisions of the Civil code pertaining to prescription do not apply.

Moral rights are distinct from economic rights of the author and the paternity right is a part of those moral rights.

The Copyright Act was amended in 1988. Were inserted in the statute a definition of moral rights, provisions pertaining to infringement of those rights, provisions regarding remedies as well as an amendment of section 41 pertaining to the prescription and various transitional provisions.

The Court indicates that, until 1988, section 41 pertained only to the prescription of the remedy for infringement of copyright. As of 1988, this section also applies to infringement of moral rights. This amendment, however, cannot lead to the loss of rights that were not subject to a limitation in time. The alleged infringements happened before the 1988 amendments, at a time when the Act did not provide for any limitation period.

The motion for dismissal is dismissed.