The recent case of BBM Canada v. Research in Motion Ltd. [2011] F.C.J. No. 1176 involves a motion to convert an application to an action and follows on the heels of a decision of the Federal Court of Appeal, holding that claims for relief arising out of violations of the Trade-marks Act may be brought by application rather than by traditional action. Of significance is the Federal Court’s further finding that a regular application for trade-mark infringement can be converted into an action, similar to an application for judicial review.

In summary, BBM Canada (BBM) filed a notice of application in the Federal Court seeking relief flowing from trade-mark infringement. Research in Motion Ltd. (RIM) moved for an order dismissing the application on the basis that the Federal Court lacked jurisdiction to decide such issues in a proceeding commenced by application and was granted the order. On appeal, the Federal Court of Appeal determined that the matter could proceed by way of application but added that without deciding the point, it may be possible to move for an order converting an application to an action. As a result, a motion was brought to convert the application to an action and was ultimately dismissed without prejudice to the right of RIM to bring a further motion to convert should there be a change in circumstances.

Both the Federal Court Rules and the Federal Courts Act are silent on the right to convert an application to an action. While the Federal Courts Act speaks to the issue of conversion, it is in respect to an application for judicial review rather than a regular application. However, the Court noted that it would only seem logical that if a judicial review application can be converted to an action, a proceeding which is inherently suited to the application process, a trade-mark infringement case commenced as an application can also be converted to an action. The Court took the position that it possesses the power to do so by virtue of its inherent jurisdiction to control its own process, including converting an application to an action where it may be “just, most expeditious and or less expensive”.

The Court addressed the basis on which an application may be converted to an action, which involves consideration of the following factors:

  • the applicant’s choice of proceeding should not lightly be interfered with;
  • whether credibility is central to determination of the issues;
  • the number and complexity of the issues;
  • the number of parties; and

•possible cross-applications or multiplicity of proceedings. At this juncture, the Court was satisfied that the evidence presented was insufficient to indicate that the application process was incorrectly chosen and emphasized that the applicant’s decision to commence the proceeding by application is not one of which it can be lightly deprived.

This decision serves as an important reminder that each case involving an application for conversion turns on its own distinct facts and circumstances and as such, it cannot be known at the outset of an application which of the above considerations might apply. In fact, it may very well be that as the application unfolds there will be complications or procedural unfairness which dictate that this proceeding would be better conducted as an action. Counsel must carefully choose the appropriate procedure to initiate proceedings for their clients in order to avoid wasting time, effort and money to re-file improper documents. With that in mind, counsel should also be aware of the fact that until there is sufficient evidence established to demonstrate that a form of proceeding is inappropriate to adjudicate the issues before a court, a party’s right to choose its form of proceeding is one with which the courts are reluctant to interfere.