• Adequate Alternative Remedies Do Not Include Different Proceedings Pursuant to Different Statutory Provisions
  • July 21, 2017 | Authors: Beverley Moore; Adrian J. Howard
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • McDowell v. Automatic Princess Holdings, LLC, 2017 FCA 126

    The Federal Court of Appeal has clarified the law relating to what constitutes an adequate alternate remedy in the context of interlocutory decisions in trademark opposition proceedings.

    This is an appeal from a decision of the Federal Court (2015 FC 980), that dismissed an application for judicial review of a decision of the Trade-marks Opposition Board (TMOB) to refuse to allow McDowell to amend her statement of opposition to the respondent’s trademark application. The Federal Court had found that McDowell had an adequate remedy available, such as an expungement proceeding.

    The Court of Appeal reviewed the jurisprudence and discussed how a prior decision of the Federal Court, Indigo Books & Music Inc. v. C. & J. Clark International Ltd., 2010 FC 859, held that an adequate alternate remedy could be one that exists outside of the framework of the opposition proceedings. This decision was expressly overturned, finding that:

    [R]ecourse to the courts before the remedies provided in the administrative process have been exhausted is not justified. There is no ambiguity on this point. The fact that a different proceeding, pursuant to a different statutory provision, might produce the same result does not engage the doctrine of adequate alternate remedy. The objective is to avoid fragmenting administrative processes that already provide for a form of review. It is not to force litigants into different proceedings to obtain redress.

    On this basis, the Court reviewed the TMOB’s decision to refuse to allow McDowell to amend her statement of opposition. That decision was not found to be reasonable. While the amendment was sought late in the proceeding, the Court held that this is only a factor to be considered and where any prejudice caused by the delay can be remedied by allowing the other party additional time, it ought not to be a determinative factor.

    The matter was returned to the TMOB with a direction that McDowell’s application to amend her statement of opposition is to be allowed on such terms as are necessary to do justice between the parties.