Date: 20000623
Docket: T-280-99
OTTAWA, ONTARIO this 23rd day of June 2000.
BEFORE: The Honorable Justice Dolores M. Hansen
BETWEEN:
SIM & McBURNEY
Applicant
- and -
MICROTEL LIMITED
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an appeal of the decision of the Associate Senior Prothonotary in which he concluded that cross-examination on an affidavit filed by the registered user of a trade-mark on an appeal of a decision of the Registrar of Trade-marks should be allowed.
[2] The applicant appealed the decision of the Registrar of Trade-marks expunging in part the respondent"s trade-mark registration number 341,159. On the appeal, the respondent filed a further affidavit to supplement the evidence that was before the Registrar of Trade-marks. No further steps were taken by the applicant until the Court issued a Notice of Status Review. In response, the applicant suggested a timetable which included cross-examination on the affidavit filed in support of the position of the registered owner of the trade-mark. The respondent raised three issues in reply only one of which is relevant to this Motion, namely, whether cross-examination under these circumstances is permissable.
[3] The Associate Senior Prothonotary ordered that the matter should continue as a specially managed proceeding. He concluded "that cross-examination in this proceeding would have been proper" but as the applicant was out of time to do so a motion for an extension of time would have to be sought.
[4] Prior to 1998, Federal Court Rules 700 to 705 governed appeals under section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13. In particular Rule 704(6) required leave of the Court to cross-examine on affidavits.
[5] With the enactment of the Federal Court Rules, 1998, appeals under section 56 of the Trade-marks Act from decisions of the Registrar of Trade-marks are now subject to the provisions of Part 5 of the Rules governing proceedings brought by way of application. Further, the right to cross-examine the deponent of an affidavit filed on an application is found in Rule 83 which provides:
| 83. A party to a motion or application may cross-examine the deponent of an affidavit served by an adverse party to the motion or application. |
83. Une partie peut contre-interroger l'auteur d'un affidavit qui a été signifié par une partie adverse dans le cadre d'une requête ou d'une demande. |
| [6] The purpose and scope of section 45 were described by Hugessen J.A. in Meredith & Finlayson v. Canada (Registrar of Trade-marks)1 as providing "... a simple and expeditious method of removing from the register marks which have fallen into disuse". In Cinnabon, Inc. v. Yoo-Hoo of Florida Corp.2 Decary J.A. reviewed the purpose and scope of section 45 proceedings, the summary nature of these proceedings and reaffirmed that an appeal to the Federal Court Trial Division pursuant to section 56 of the Trade-marks Act does not have the effect of enlarging the scope of the inquiry. He also endorsed the existing practice of the Trial Division permitting the filing of evidence by the registered owner on appeals from section 45 decisions. |
| [7] The respondent submits that to permit cross-examination on the affidavit filed on an appeal would expand the scope of the relevant evidence contemplated under section 45. Additionally, he argues that an amendment to the rules cannot "change the practice under the Trade-marks Act and that rules must be read in a manner harmonious with the underlying legislation." |
| [8] The respondent cites Osler, Hoskin & Harcourt v. United States Tobacco Co.3 in support of its position that the requesting party is not entitled to cross-examine on any further affidavit filed by the registered owner. I have concluded, however, on a review of the decision that the statement relied upon by the respondent is obiter. |
| [9] Further, in many instances in the past, the Court has granted leave to cross-examine on the affidavit filed by a registered owner of the trade-mark on an appeal in section 45 proceedings4. As stated by Mahoney J.A. in Labatt"s Ltd. v. Benson & Hedges (Canada) Ltd.5: |
| We are satisfied that the Trial Division has the jurisdiction to require the deponent of an affidavit, filed in the court, to submit to cross-examination and that the trial judge was entitled to receive the transcript of that cross-examination in evidence. The evidence of a witness given under cross-examination is as much his evidence as that given in-chief. In limiting the evidence receivable on an appeal from a decision under s. 44 of the Trade-marks Act, R.S.O. 1970, c. T-10, to that submitted by the trade-mark owner, this Court did not, in the Plough case, limit it to evidence-in-chief alone. |
| [10] In my view, an amendment to the Rules removing the leave requirement does not in any way alter the summary nature of the proceedings taken pursuant to section 45 nor does it expand the scope of evidence relevant contemplated under section 45. Indeed the new Rules governing these types of proceedings contemplate a procedure which is itself summary in nature. |
| [11] Further if there are ambiguities in the affidavit as alleged by the respondent in this matter, surely it is preferable to have clarification rather than to leave the Court speculating as to the factual situation. |
| [12] Given that cross-examination was permitted in the past, it follows that this rule change does not result in a change in the practice as argued by the respondent. |
| [13] For these reasons, the appeal is dismissed. |
| ORDER |
| IT IS HEREBY ORDERED that the appeal is dismissed. |
| "Dolores M. Hansen" |
| J.F.C.C. |
__________________
1 (1991), 40 C.P.R. (3d) 409 (F.C.A.) at 412.
3 (1997), 77 C.P.R. (3d) 475 (F.C.T.D.).
4 For example, see Admiral Sanitation Ltd. v. Big D. Industries Inc. et al. , (1989), 28 C.P.R. (3d) 538 (F.C.T.D.); Cast Iron Soil Pipe Institute v. Concourse Int"l Trading Inc. (1990), 30 C.P.R. (3d) (F.C.T.D.); Cornestone Securities Canada Inc. v. Registrar of Trade-marks et al., (1994), 58 C.P.R. (3d) 417 (F.C.T.D.).