Date: 20001114

     Docket: A-770-99

     (T-289-97)

                                

C O R A M:      STRAYER J.A.

         ROTHSTEIN J.A.

         SEXTON J.A.

B E T W E E N:

     BAYER INC.

     Appellant

     -- and --

     NOVOPHARM LIMITED and

     THE REGISTRAR OF TRADE-MARKS

     Respondents

Heard at Ottawa, Ontario on Tuesday, November 14, 2000

JUDGMENT delivered from the Bench at Ottawa, Ontario on Tuesday, November 14, 2000

REASONS FOR JUDGMENT BY:      STRAYER J.A.

     Date: 20001114

     Docket: A-770-99

     (T-289-97)

                                

C O R A M:      STRAYER J.A.

         ROTHSTEIN J.A.

         SEXTON J.A.

B E T W E E N:

     BAYER INC.

     Appellant

     -- and --

     NOVOPHARM LIMITED and

     THE REGISTRAR OF TRADE-MARKS

     Respondents

     REASONS FOR JUDGMENT

     (Delivered from the Bench at Ottawa, Ontario

     on November 14, 2000)

STRAYER J.A.

[1]      We are all of the view that this appeal should be dismissed and that the judgment of Evans J. should be confirmed.

[2]      The learned trial judge set aside the decision of the Registrar of Trade-Marks, who had dismissed the respondent's opposition to the registration of the appellant's trade mark for its drug nifedipine. The trade mark consists of the colour dusty rose applied to the whole of the surface of a round tablet.

[3]      Evans J. concluded that the Registrar had erred on two grounds: (1) he had wrongly held that certain deficiencies in the advertising of the proposed trade mark did not invalidate the application; and (2) he had held that the mark as applied for was distinctive.

[4]      We confirm as the applicable standard of review the following as stated in Molson v. Labatt¹

Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.

That decision had not yet been rendered when the trial judge issued his reasons.

[5]      With respect to the first issue, there was no new evidence on this subject before the trial judge. Whether the standard of review should therefore be only reasonableness simpliciter, or whether it should be correctness because of an error of law outside the Registrar's area of expertise, we are satisfied that the decision is at best unreasonable as it treats the accuracy of advertising of a trade mark application as a matter of interest only to the parties to the opposition proceeding. In this respect we agree with Evans J. that the Registrar erred in approving the application notwithstanding that the advertisement of the proposed trade mark was misleading or confusing. In the advertisement the word description of the proposed mark referred to it as the colour dusty rose, while the drawing depicted it as blue. The Registrar considered this error was overcome by the fact that the opponent itself was not confused by the mistake. Evans J. concluded that the regulations for advertising require strict compliance and mistakes cannot be waived by some test of probability of confusion. He pointed out that there is a public interest in the accuracy of the registration process. We agree.

[6]      On the second issue, that of distinctiveness, the trial judge concluded, and we agree, that he had new substantial and relevant evidence before him that was not before the Registrar. Therefore, by the test enunciated in Molson, he was obliged to apply the standard of correctness to the Registrar's findings of fact. As distinctiveness is essentially an issue of fact, it was open to the trial judge to come to his own conclusion as to whether this colour of dusty rose as applied to a pill had acquired distinctiveness. In the absence of a palpable and overriding error in the trial judge's findings of fact we should not interfere.² We are satisfied there was no such error.

[7]      The appeal will therefore be dismissed with costs.

     (s) "B.L. Strayer"

                                             J.A.

__________________

1      (2000) 5 C.P.R.(4th) 180 at 196.

2      Stein v The Ship "Kathy K" [1976] 2 S.C.R. 802 at 808.