Federal Court Decisions

 

 

Date: 20070112

Docket: T-1003-05

Citation : 2007 FC 25

Ottawa, Ontario, January 12, 2007

 

PRESENT:     The Honourable Mr. Justice Blais

 

 

BETWEEN:

 

CANADIAN TIRE CORPORATION, LIMITED

Applicant

and

 

ACCESSOIRES D’AUTO NORDIQUES INC.

Respondent

 

 

 

 

REASONS FOR ORDER AND ORDER

 

[1]               On November 27, 2006, the applicant’s statutory appeal under section 56 of the Trade-marks Act was granted and the matter was referred back to the Registrar of Trade-marks, on the basis that application No 860,710 for registration of the trade-mark NORDIC & Snowflake Design be granted. As per this Court’s order, both the defendant and the plaintiff filed submissions on costs.

 

BACKGROUND

[2]               On November 6, 1997, the applicant filed trade-mark application No. 860,710 for the trade-mark NORDIC & Snowflake Design, on the basis of proposed use in association with tires.

 

[3]               The respondent, owner of the trade-mark NORDIQUES (TMA367415) since March 30, 1990, successfully opposed this registration before the Opposition Board for the Registrar of Trade-marks (the “Registrar”).

 

[4]               The applicant then brought an application by way of statutory appeal under section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), for an order setting aside the decision rendered by the Registrar. The applicant also filed new evidence in addition to that adduced before the Registrar.

 

PERTINENT LEGISLATION

[5]               Rules 400 to 422 of the Federal Courts Rules, SOR/98-106 (the “Rules”), deal with the issue of costs. Rule 400(1) provides that the Court has full discretionary power over the amount and allocation of costs, as well as the determination as to who should pay these costs. Rule 400(4) provides that the Court may fix costs by reference to Tariff B and may award a lump sum, in lieu of or in addition to any assessed costs.

 

[6]               Rule 400(3) provides an extensive list of factors that may be considered in the exercise of the Court's discretion, although the Court is not limited to these factors. Rule 400(3) states the following:

 

ANALYSIS FOR COSTS

[7]               The applicant submits that the complexity of the issues and the detail that it was required to go into to prepare for the hearing, justify an award of costs based on the high-end of Column IV of Tariff B of the Rules. The applicant also requests that the Court award a lump sum in lieu of any assessed costs.

 

[8]               The respondent for its part suggests that each party should carry its own costs and that, in the alternative, nothing in this matter justifies that the Court derogate from the normal practice of assessing costs in accordance with Column III of Tariff B of the Rules.

 

[9]               In reaching this decision on costs, the following factors listed in Rule 400(3) were considered by this Court.

 

The result of the proceedings

[10]           The applicant was wholly successful in the statutory appeal before this Court.

 

The importance and complexity of the issue

[11]           Trade-mark appeals are, by their very nature, somewhat technical, and there is no question that the applicant needed to rely on expert evidence to demonstrate the registrability of his trade-mark.

 

Any written offer to settle

[12]           A valid offer to settle was made by the applicant on January 31, 2006, which was refused by the respondent who submitted a counter-proposal. Additionally, given the outcome of the statutory appeal, the judgment was more favourable to the applicant than the terms of the offer to settle made to the respondent, which should entitle the applicant to double party-to-party costs for all services after January 31, 2006, as per Rule 407.

 

[13]           Furthermore, given the particular circumstances of this case, the payment requested by the respondent in its counter-offer does tend to support the applicant’s claim that the respondent’s actions were motivated by an attempt to obtain financial gain, as opposed to simply protecting its own valid trade-mark.

 

Any conduct of the party that tended to shorten or unnecessarily lengthen the duration of the proceedings

 

Whether any step in the proceeding was (i) improper, vexatious or unnecessary, or (ii) taken through negligence, mistake or excessive caution

 

[14]           While the applicant submits that the respondent has, throughout the proceedings, taken technical positions with respect to admissibility of evidence filed which has increased the expenses of the applicant, I find no evidence of conduct by the respondent that would fit within the confine of paragraphs (i) or (k) of Rule 400(3). Both parties requested extensions of times to file additional material and, on one occasion, there was some confusion resulting from an order of Prothonotary Lafrenière, which had to be clarified through an order by Madam Justice Eleanor Dawson. While this may have caused additional costs for the applicant, the blame for that cannot rest on the respondent.

 

[15]           Furthermore, as a general observation, it must be noted that the respondent was entitled under the Act to oppose the applicant’s registration in order to protect its own trade-mark and indeed, the respondent was successful in this initial attempt before the Registrar. Once the applicant chose to appeal the decision of the Registrar, it was also perfectly understandable that the respondent would wish to defend its earlier victory by opposing the application. In doing so, the respondent may have taken some technical positions on admissibility of evidence, but on the whole, the respondent largely relied on its initial submissions before the Registrar and on the decision of the Registrar. It was the applicant, not the respondent, who submitted a large volume of additional evidence in support of its statutory appeal, evidence to which the respondent had to respond in its own submissions.

 

[16]           While the Act does permit the filing of additional evidence in a statutory appeal, the respondent does point out that, had the applicant submitted such evidence in a timely manner (that is to say before the Registrar), the outcome of the opposition proceedings might have been different and there might have been no need for this appeal. Since costs are not awarded under an opposition proceeding before the Registrar, the respondent submits that it would not have been liable for the extensive costs incurred by the applicant had it been diligent in submitting the necessary expert evidence at that time.

 

[17]           While there may be some validity to the respondent’s argument, it remains true nonetheless that it was not unreasonable for the applicant to seek to limit its own costs in the opposition proceedings and to anticipate a successful outcome to these proceedings with the evidence submitted. It cannot therefore be said that the applicant acted improperly or negligently in its attempt to meet its burden of proof in support of the registrability of its trade-mark before the Registrar.

 

[18]           Having regards to all of the above, I find that the applicant should be awarded its costs in accordance with the regular column of Tariff B (Column III), with the particulars to be determined by an assessment officer, within the confine of the following directions:

 

The offer to settle:  As previously discussed, the judgment of this Court was more favourable to the applicant than the terms of the offer to settle made to the respondent, which entitles the applicant to double party-to-party costs for all services after January 31, 2006, as per Rule 407.

 

Non-expert affidavit evidence: This Court directs that no disbursements should be awarded to cover non-expert affidavit evidence.

 

The travel expenses: This Court directs that travel expenses for applicant’s counsel should be included in the award for costs.

 

The bilingual articling student: The respondent was entitled to present arguments in French at the hearing and simultaneous translation was provided to facilitate communication. This Court directs therefore that the amounts claimed for the articling student, both fees and travel expenses, should not be included in the calculation of costs.

 

The preparation of written arguments: This Court directs that such costs can properly be included in the calculation, as per item 15 of Tariff B.

 

Disbursements: As already noted, those disbursements related to non-expert affidavit evidence will not be considered by the assessment officer. In addition, the disbursements related to expert evidence provided by Mr.Yves Simard, as well as those related to the services of Dr. Ruth Corbin, appear to this Court to be somewhat excessive. Therefore, the applicant will be entitled to only half of the costs of these two particular experts.

 

 

ORDER

            For these reasons,

            THE COURT ORDERS that:

1.      The applicant is awarded its costs in accordance with Column III of Tariff B.

2.      The matter is referred to an assessment officer for the determination of a specific award of costs, that should be made pursuant to the particular directions articulated in paragraph 18, specifically:

a)      The applicant is entitled to double party-to-party costs for services after January 31, 2006, as per Rule 407;

b)      No costs to be awarded for non-expert affidavit evidence;

c)      Travel expenses for applicant’s counsel should be included in the award for costs;

d)      No costs to be awarded for bilingual articling student;

e)      Costs for preparation of written arguments can be included in the calculation, as per item 15 of Tariff B; and

f)        The applicant will be entitled to only half of the disbursements related to expert evidence provided by Mr.Yves Simard and Dr. Ruth Corbin.

 

 

“Pierre Blais”

FEDERAL COURT

 

SOLICITORS OF RECORD

 

DOCKET:                                          T-1003-05

 

STYLE OF CAUSE:                          CANADIAN TIRE CORPORATION, LIMITED v. ACCESSOIRES D’AUTOS NORDIQUES INC.

 

PLACE OF HEARING:                    Ottawa, Ontario

 

DATE OF HEARING:                      October 23, 2006

 

REASONS FOR ORDER AND ORDER:  BLAIS J.

 

DATED:                                             January 12, 2007

 

APPEARANCES:

 

Mr. John S. McKeown	FOR THE APPLICANT
Me Pierre Leclerc	FOR THE RESPONDENT

 

SOLICITORS OF RECORD:

 

Cassels Brock & Blackwell Toronto, Ontario	FOR THE APPLICANT
Reinhardt Bérubé Sainte-Foy, Quebec	FOR THE RESPONDENT