No special circumstances found to allow the addition of a new ground of opposition 10 days before hearing McDowell v. Automatic Princess Holdings, LLC, 2015 FC 980

McDowell has been opposing the registration of Automatic's trademark application for HONEY B. FLY. The application was filed in 2009, and the opposition has been ongoing since. In August 2014, 10 days before hearing, McDowell sought leave to file an Amended Statement of Opposition. The amendment would add a new ground pursuant to s.12(1)(d) of the Trade-marks Act which changes the evidentiary burden needed to show the use of the registered marks. The Trademarks Opposition Board refused leave to amend, leading to this appeal.

The Court questioned whether it could intervene on this interlocutory appeal. McDowell argued that this is a special circumstance where the Court should intervene because there is no remedy available to McDowell within the administrative process. McDowell argued that she would otherwise be precluded from raising arguments based on section 12(1)(d) before the Opposition Board or on appeal. Automatic argued alternative judicial proceedings were available, either commencing an action or seeking expungement.

Ultimately the Court found that this was not a special circumstance warranting intervention and holding that the amendment would amount to “splitting the case”. In doing so, the Court distinguished the holding in Dairy Processors Association of Canada v. Dairy Farmers of Canada, 2014 FC 1054 and followed Indigo Books & Music Inc v. C & J Clark International Ltd, 2010 FC 859

Copyright Decisions

Copyright infringement claim against Walmart summarily dismissed

Miguna v. Walmart Canada et al., 2015 ONSC 5744

The Ontario Superior Court has summarily dismissed a copyright claim against Walmart in Canada and the USA, and a book dealer who supplies their stores. Miguna alleged Walmart's US website offered for sale a book he authored. Mr. Miguna alleges he is not being paid by the publisher, and therefore any copies from the publisher are unauthorized infringing copies.

The Court dismissed the claim, finding that any possible dispute Miguna has with his publisher is not an issue in the motion. Also, there was no evidence to show that Walmart had ever received or sold a copy of the book in Canada. Secondary infringement was not shown because there was no finding of primary infringement. Also, there was no finding that the author's moral rights had been infringed because the book cover on Walmart's website was an accurate depiction of the book, the description did not distort, mutilate or otherwise modify the work, and it was not used in association with a product, service, cause or institution.