Kelendji v. Diplomat Fullhalter Gasellschaft Kurz &Rauchle GMBH & Co. KG

Kelendji v. Diplomat Fullhalter Gasellschaft Kurz &Rauchle GMBH & Co. KG Court (s) Database Federal Court of Appeal Decisions Date 2002-12-02 Neutral citation 2002 FCA 480 File numbers A-282-01 Notes Digest Decision Content Date: 20021202 Docket: A-282-01 Montréal, Quebec, December 2, 2002 Coram: DÉCARY J.A. LÉTOURNEAU J.A. NADON J.A. BETWEEN: FOUAD KELENDJI, doing business under the trade name DIPLOMATE WATCH OF CANADA Appellant and DIPLOMAT FULLHALTER GASELLSCHAFT KURZ & RAUCHLE GMBH & CO. KG Respondent JUDGMENT The appeal is allowed with costs, the decision of the trial judge reversed with costs to the applicant and the matter referred back to the Trial Division for re-hearing. "Robert Décary" Judge Certified true translation Suzanne M. Gauthier, C. Tr., LL.L. Date: 20021202 Docket: A-282-01 Neutral citation: 2002 FCA 480 Coram: DÉCARY J.A. LÉTOURNEAU J.A. NADON J.A. BETWEEN: FOUAD KELENDJI, doing business under the trade name DIPLOMATE WATCH OF CANADA Appellant and DIPLOMAT FULLHALTER GASELLSCHAFT KURZ & RAUCHLE GMBH & CO. KG Respondent Hearing held at Montréal, Quebec, on December 2, 2002. Judgment from the bench at Montréal, Quebec, on December 2, 2002. REASONS FOR JUDGMENT OF THE COURT: DÉCARY J.A. Date: 20021202 Docket: A-282-01 Neutral citation: 2002 FCA 480 CORAM: DÉCARY J.A. LÉTOURNEAU J.A. NADON J.A. BETWEEN: FOUAD KELENDJI, doing business under the trade name DIPLOMATE WATCH OF CANADA Appellant and DIPLOMAT FULLHALTER GASELLSCHAFT KURZ & RAUCHLE GMBH & CO. KG Respondent REASONS FOR JUDGMENT OF THE COURT (Delivered from the bench at Montréal, Quebec, on December 2, 2002) DÉCARY J.A. [1] The appellant applied to the Federal Court Trial Division pursuant to s. 57 of the Trade Marks Act to have struck from the Register the trade mark DIPLOMAT registered by the respondent on February 28, 1991 (TMA 380,351). The appellant relied on ss. 17(2) and 18(1)(a) of the Act. [2] The motions judge dismissed the motion to strike on the ground that it was made after the five-year deadline specified in s. 17(2). There was no appeal as to that conclusion. [3] However, the motions judge did not deal with the ground for striking mentioned in s. 18(1)(a), namely that the registration was invalid because the mark was not registrable on the date of registration. This ground for striking is not subject to the five-year prescription period laid down in s. 17(2) and the motions judge had a duty to consider it. The case will accordingly be referred back to the Trial Division for a decision to be rendered on the ground for striking based on s. 18(1)(a) of the Act. [4] The appellant further submitted that the motions judge should also have considered the ground for striking described in s. 18(1)(b), namely the lack of distinctiveness. That ground was not formally alleged in the motion to strike, but in the submission of counsel for the appellant it was apparent from the pleadings and the arguments made by the appellant, and the failure to expressly allege the relevant paragraph did not cause any prejudice to the respondent. In view of the conclusion at which the Court has arrived, that the matter should be referred back to the Trial Division, the appellant will have an opportunity to seek leave to amend its motion at that time. [5] The respondent did not appear at the hearing. Its counsel informed the Court in advance, but gave no explanation to justify his absence. [6] The appeal will be allowed with costs, the decision of the trial judge reversed with costs to the applicant and the matter referred back to the Trial Division for re-hearing. "Robert Décary" Judge Certified true translation Suzanne M. Gauthier, C. Tr., LL.L. FEDERAL COURT OF CANADA APPEAL DIVISION Date: 20021202 Docket: A-282-01 Between: FOUAD KELENDJI, doing business under the trade name DIPLOMATE WATCH OF CANADA Appellant and DIPLOMAT FULLHALTER GASELLSCHAFT KURZ & RAUCHLE GMBH & CO. KG Respondent REASONS FOR JUDGMENT OF THE COURT FEDERAL COURT OF CANADA APPEAL DIVISION SOLICITORS OF RECORD FILE: A-282-01 appeal from order by Trial Division on February 23, 2001 in case T-1383-97 STYLE OF CAUSE: FOUAD KELENDJI, doing business under the trade name DIPLOMATE WATCH OF CANADA and DIPLOMAT FULLHALTER GASELLSCHAFT KURZ & RAUCHLE GMBH & CO. KG PLACE OF HEARING: Montréal, Quebec DATE OF HEARING: December 2, 2002 REASONS FOR JUDGMENT OF THE COURT: DÉCARY J.A. CONCURRED IN BY: LÉTOURNEAU J.A. NADON J.A. DATE OF REASONS: December 2, 2002 APPEARANCES: Yves Paquette FOR THE APPELLANT SOLICITORS OF RECORD: Alepin Gauthier FOR THE APPELLANT Laval, Quebec Cassan Maclean FOR THE RESPONDENT Ottawa, Ontario