Date: 19991019
Docket: T-1765-97
IN THE MATTER OF sections 38 and 56 of the
Trade-marks Act, R.S.C. 1985, c. T-13
AND IN THE MATTER OF an appeal from a decision
of the Registrar of trade-marks dated June 18, 1997,
relating to trade-mark application serial No. 633,941 of
the trade-mark DATASCOPE
BETWEEN:
DATASCOPE OF CANADA LIMITED
Appellant
(Opponent)
- and -
DATASCOPE CORP.
Respondent
(Applicant)
Docket: A-489-98
IN THE MATTER OF Section 38 and 56
of the Trade-marks Act, R.S.C. 1985, c. T-13
AND IN THE MATTER OF an Appeal from the Judgment
of the Honourable Mr. Justice J.E. Dubé
Dated June 18, 1998
BETWEEN:
DATASCOPE OF CANADA LIMITED
Appellant
- and -
DATASCOPE CORP.
Respondent
ASSESSMENT OF COSTS - REASONS
G.M. Smith,
Assessment Officer
[1] This is an assessment of the Bills of Costs submitted by the Respondent Datascope Corp. in each of the Trial Division and Court of Appeal proceedings. These Reasons are issued in Court file no. T-1765-97. A copy will be placed on the Court record A-489-98 in the Appeal Division as well.
[2] These proceedings stem from a Notice of Appeal launched against a June 18, 1997 decision of a Hearing Officer, a member of the Trade-marks Opposition Board, acting on behalf of the Registrar of Trade-marks, whereby the Appellant's opposition to the registration of the trade-mark DATASCOPE was rejected. Precisely one year later, on June 18, 1998, Judgment issued dismissing this appeal with costs.
[3] The Appellant then challenged the Trial Division ruling in the Court of Appeal. Judgment issued almost another year later on June 2, 1999, again dismissing the appeal with costs.
[4] The Respondent submitted its Bills of Costs on August 13, 1999. Appointments issued for the assessments to take place on September 29, 1999 at Ottawa, Ontario. The Respondent appeared at the assessment represented by its legal counsel. Although served with the Appointments on August 31, 1999, according to the affidavit of Jeannie Hart sworn September 29, 1999, no one appeared on behalf of the Appellant.
[5] Upon hearing counsel's argument and considering the factors set out in Rule 400(3), I have assessed the Respondents costs as follows. The claims in the Trial Division proceedings for the maximum under item 2 of the Tariff for preparation of its Reply to the Notice of Appeal and for preparation of its record (i.e. affidavits) will be allowed for a combined total of 7 units. The Tariff does not contemplate this item being assessed twice to a party. I also allow the maximum number of units claimed under items 13(a), 14(a) and 15.
[6] Item 14(b) was withdrawn by counsel at the assessment after realizing the Tariff's stipulation requiring the express discretion of the Court regarding costs for second counsel. I have also refused the Respondent's claim for preparation of the Joint Application for Time and Place for Hearing because, unlike Part F of the Tariff relating to Appeals to the Court of Appeal, the Tariff does not itemize costs for this step in the Trial Division.
[7] Disbursements claimed in the Trial proceedings for photocopies, facsimiles, computers searches, binding, long distance telephone and courier services are supported by excerpts from the law firm's dockets. They will be allowed as claimed.
[8] In the Appeal Bill, the Respondent claims 7 units under item 5 of the Tariff for preparation of a contested motion. I note that it is item 21(a) of the Tariff which applies to this step in the Court of Appeal and I will therefore reduce this claim to the maximum 3 units allowable under the latter item. Similarly, Respondent's counsel at the assessment also withdrew his claim under item 13(a) as this service pertains as well to the Trial Division only.
[9] Fees for appearance at the Appeal hearing will be assessed as requested at the maximum of 3 units for 2.2 hours. The Respondent's claim for travel pursuant to item 24, however, is refused in the absence of any visible exercise of the Court's discretion permitting this item.
[10] Disbursements claimed in the Appeal proceedings for photocopies, postage, long distance telephone and courier services are again supported by excerpts from the law firm's dockets. They will be allowed as claimed. However, the amount of $20.00 requested for the services of the firm's in-house messenger is disallowed as being an overhead cost which is already compensated in the fees assessed for the services of counsel.
[11] The Respondent also claims $3,351.60 for travel expenses as a result of the Appellant's choice of venue for the Appeal hearing at Edmonton. On reviewing the documentation provided by counsel at the assessment, I am unable to extrapolate the precise figures to arrive at the total claimed by the Respondent. I can nevertheless ascertain from that evidence the rate for hotel charges, approximate figures for taxis, meals and economy, rather than business class, airfare. Accordingly, I will assess the Respondent's travel expenses, including Goods and Services Taxes, in the total amount of $2,300.00.
[12] In conclusion, the costs of the Respondent are assessed and allowed in the amounts of $2,800.00 for fees and $1,154.41 for disbursements in the Trial proceedings and $1,860.00 for fees and $2,576.14 for disbursements on the appeal. Certificates of Assessment will issue for the totals of $3,954.41 and $4,436.14 in the Trial and Appeal Divisions, respectively.
Sgd. (Gregory M. Smith)
Gregory M. Smith
Assessment Officer
Ottawa, Ontario
October 19, 1999
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF SOLICITORS AND SOLICITORS OF RECORD
Docket: T-1765-97
DATASCOPE OF CANADA LIMITED
Appellant
(Opponent)
- and -
DATASCOPE CORP.
Respondent
(Applicant)
Docket: A-489-98
DATASCOPE OF CANADA LIMITED
Appellant
- and -
DATASCOPE CORP.
Respondent
DATE OF ASSESSMENT: September 29, 1999
PLACE OF ASSESSMENT: Ottawa, Ontario
REASONS BY: G.M. Smith, Assessment Officer
DATE OF REASONS: October 19, 1999
APPEARANCES:
No one appearing for the Appellant (Opponent)
Elliot S. Simcoe for the Respondent (Applicant)
SOLICITORS OF RECORD:
Robert C. Burgener
Barrister & Solicitor
Edmonton, Alberta for the Appellant (Opponent)
Smart & Biggar
Barristers & Solicitors
Ottawa, Ontario for the Respondent (Applicant)