In Sadhu Singh Hamdard Trust v. The Registrar of Trade-marks, the Federal Court of Appeal refused to interfere with a decision of the Registrar allowing the registration of a trademark, particularly where the Appellant had not exercised another more appropriate remedy.

When the trademark at issue was advertised the Appellant requested a two-month extension to file a Statement of Opposition. However, the request for an extension was overlooked by the Registrar and the trademark was allowed.

The Appellant then sought to appeal the Registrar’s decision to the Federal Court under section 56 of the Trade-marks Act. The Trial Court concluded there was no decision of the Registrar to be challenged and the Federal Court of Appeal agreed.

The Appellant had failed to invoke its right under section 39(3) of the Act which specifically provides that the Registrar may withdraw an allowance where it has failed to consider a previously filed request for an extension of time to file an opposition.

The Appellant, relying on the earlier case of Ault Foods v. Canada (Registrar of Trade-marks), argued that it was still open to the Court to rely on its discretionary power under section 18 of the Federal Court Act and set aside the registration.

However, the Court of Appeal noted that following Ault Foods, the Trade-marks Act was amended so as to add section 39(3).

The Court also noted that in seeking to set aside the Registrar’s decision the Appellant was in effect seeking expungement, which required a challenge on substantive grounds under section 57. In Bacardi & Co. v. Havana Club Holding S.A. the Court held that a registration may not be brought into question in the course of opposition proceedings, which was what the Appellant was seeking to do by appealing the Registrar’s decision under section 56.

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