Date: 20050519
Docket: T-635-02
Citation: 2005 FC 725
BETWEEN:
SARASIN CONSULTADORIA E. SERVICOS LDA
Appellant
and
ROOX'S INC.
Respondent
and
THE REGISTRAR OF TRADE-MARKS
ASSESSMENT OF COSTS - REASONS
PAUL G.C. ROBINSON
ASSESSMENT OFFICER
[1] This is an assessment of costs pursuant to the Reasons for Order and Order of the Federal Court rendered March 4, 2004, relating to the Appellant's Notice of Appeal in respect of a decision of the Registrar of Trade-marks ("Registrar") dated February 18, 2002. The Judge of the Federal Court ordered:
1. The Appellant's application to register the NOSE DESIGN mark complies with section 30(b) of the Act and should be allowed to proceed to registration.
2. The Respondent, Roox's Inc., shall pay the Appellant's costs of this Appeal.
[2] Counsel for the Appellant filed the Bill of Costs on October 20, 2004, together with a request for a notice of appointment for assessment.
[3] On November 4, 2004, directions were issued by letter setting a timetable for written submissions. The Appellant filed documentation in support of the Bill of Costs on November 22, 2004. The Respondent filed Written Submissions in response on December 15, 2004 and the Appellant filed Rebuttal Submissions on January 14, 2005.
The Appellant's Position
[4] The Appellant's Written Submissions indicate at paragraph 21 "...that the amount requested in the Bill of Costs is significantly less than the amount paid by the Appellant for professional services in connection with the appeal, ...". The Appellant refers to Sanmammas Compania Maritima S.A. v. Netuno (The) Action in rem against the Ship "Netuno", [1995] F.C.J. No. 1442 (Q.L.) at paragraphs 6 and 7 (F.C.T.D.) and the proposition that theFederal Courts Rules regarding costs are intended to bear a reasonable relationship to the actual costs of the litigation. It should be noted in this latter case, the Court awarded costs at the high end of the scale of Column IV. In addition, the Appellant at paragraph 22 of its Written Submissions relies on Van Daele v. Van Daele (1983), 45 C.P.C. 166 at 170, per McFarlane J.A. (B.C.C.A.) for the proposition that "In determining the award of costs, including disbursements, the Court seeks to establish what was reasonably necessary in the circumstances." The Appellant indicates that most of the assessable services claimed are at the mid point of Column III, Tariff B of the Federal Courts Rules with the exception of three items.
[5] With regard to the higher unit requests for these items, the Appellant notes that the result of the proceeding was in its favour and the Respondent did not file any evidence to support its case which justifies Item 14 (Counsel fee (a) to first counsel, per hour in court;) at the high end of Column III. In a similar vein, the Appellant submits although the Respondent chose to cross-examine the Appellant's affiant, as mentioned above, the Respondent did not file any evidence in support of its case. However, the scheduled cross-examination required the Appellant's solicitor to travel to Toronto and stay overnight to prepare the affiant and to attend the cross-examination. The latter two points are the Appellant's justification for an higher unit request for Item 24 (Travel by counsel to attend a trial, hearing, motion, examination or analogous procedure, at the discretion of the Court). The Appellant has requested the high end of Item 26 (Assessment of Costs) and at paragraph 26 of its Written Submissions states "The Respondent did not object or give any indication of an objection to the Bill of Costs." The Appellant outlines its attempts to settle the Bill of Costs and in the same paragraph and submits "The initiation and costs of preparing arguments for this assessment could have been avoided had the Respondent replied to any of the Appellant's letters attempting to settle the matter." For these reasons, the Appellant indicates the high end of Item 26 is justified.
[6] The Appellant indicates the disbursements for photocopies, long distance charges, facsimile costs, postage charges, translation services, transcript of the cross-examination and all disbursements with respect to the Originating documents, pleadings and the Requisition for Hearing were all reasonable expenses. The Appellant's submits this argument is supported by the facts that the Appellant was located in Italy, Appellant's counsel was located in Ottawa and Respondent's counsel was located in Toronto which justifies all of the above disbursements as reasonable costs and necessary for the appeal of this matter. In conclusion, the Appellant submits the assessable services requested and disbursements claimed are extremely reasonable considering the circumstances of this matter.
The Respondent's Position
[7] The Respondent's Written Submissions at paragraph 2 refers to the decision of the Court awarding costs to the Appellant. The Respondent points out "There is no mention...as to any reason for costs other than in the normal course. If anything, the costs should be at the low end of the scale as the Appeal was necessitated by the failure of the Appellant to file the necessary evidence before the Registrar of Trade-marks. Moreover, the proceeding was a simple appeal that dealt with a narrow issue concerning licensing." The Respondent submits that the activity in this matter does not parallel the facts of Sanmammas Compania Maritima S.A. v. Netuno, supra mentioned above and therefore, costs should be awarded at the lower end of Column III of Tariff B. The Respondent refers to the Federal Courts Rules 400(1), (3)(a), (c) and (g) and 400(5) and (6) as the pertinent Rules the Assessment Officer should be applying in this assessment of costs since there is no Direction from the Court for any higher unit scale for Column III.
Rules 400(1),(3)(a), (c), and (g), (5) and (6):
Discretionary powers of Court
400. (1) The Court shall have full discretionary power over the amount and allocation of costs and the determination of by whom they are to be paid.
Factors in awarding costs
(3) In exercising its discretion under subsection (1), the Court may consider
(a) the result of the proceeding; ... (c) the importance and complexity of the issues; ... (g) the amount of work; ... Directions re assessment
(5) Where the Court orders that costs be assessed in accordance with Tariff B, the Court may direct that the assessment be performed under a specific column or combination of columns of the table to that Tariff. Further discretion of the Court (6) Not withstanding any other provision of these Rules, the Court may (a) award or refuse costs in respect of a particular issue or step in a proceeding;
(b) award costs or a percentage of assessed costs up to and including a specified step in a proceeding; (c) award all or part of costs on a solicitor-and -client basis; or (d) award costs against a successful party.
The Respondent argues since the case was not complex, important or involved a great deal of work, the only factor in the Appellant's favour was the result of this proceeding.
[8] The Respondent outlines his concerns with regard to certain assessable services. Specifically, the Respondent argues that the Appellant should only be entitled to claim 1 unit for the Notice of Appeal as allowed by Item 17, Tariff B, Column III of the Federal Courts Rules since the Appellant did not file a Notice of Application. The Respondent also objects to the original 3 units claimed for the Appellant's Item C-8 (Preparation of Lino Fornari) in the Bill of Costs but the Appellant has reduced this item to 2 units which the Respondent has indicated in paragraph 10 of the Respondent's Written Submissions is 'fair'. The Appellant has claimed 4 units for Item G-24 (Travel by counsel to attend examination of Lino Fornari) in its Bill of Costs which the Respondent indicates is not applicable since there is no Direction of the Court authorizing travel by Counsel. Finally, the Respondent submits that only 2 units should be claimed for Item 26 (Assessment of Costs) since this was a simple assessment without complexity and done by way of written submissions.
[9] With regard to the remaining Appellant's assessable services and disbursements in the Appellant's Bill of Costs, the Respondent states his objection to the associated translation costs of C-9 (Examination of Lino Fornari held February 6, 2003 in Toronto) and G-27 (Such other services) in the Appellant's Bill of Costs. This last item was withdrawn by the Appellant as stated in paragraph 24 of the Appellant's Written Rebuttal Submissions. With regards to the associated translation costs, the Respondent submits the Appellant's affiant swore the affidavit in English, was examined in the English language and the Respondent should not be responsible to pay the related Italian/English translator fees. The Respondent submits, not withstanding the Appellant's affidavit of Barbara Gallagher, that no invoices or internal documents have been provided to verify the photocopy charges that are being claimed and adds at paragraph 8(b) of the Respondent's Written Submissions "These costs appear to be incidental to the services provided by counsel and should be part of the overhead of counsel's law firm". A similar argument is made regarding the lack of proof of the facsimile, long distance and postage/courier disbursements. For all of the above reasons, the Respondent submits the assessable services and disbursements should be reduced accordingly in the Appellant's Bill of Costs.
Assessment
[10] I have reviewed all the materials in the record and have summarized only those issues which are relevant for the disposition of this assessment.
[11] The Appellant's Amended Bill of Costs has given rise to some general and specific objections and concerns of the Respondent and to some extent, I partially share some of those concerns with specific assessable services. In reviewing these general concerns with regard to the unit amounts claimed by the Appellant, I have relied on the reasons of Taxing Officer Charles E. Stinson in Bruce Starlight et. al. v. Her Majesty the Queen, [2001] F.C.J. 1376:
... The structure of the Tariff embodies partial indemnity by a listing of discrete services of counsel in the course of litigation, not necessarily exhaustive. The Rules are designed to crystallize the pertinent issues and eliminate extraneous issues. For example, the pleading and discovery stages may involve a complex framing and synthesizing of issues leaving relatively straightforward issues for trial. Therefore, each item is assessable in its own circumstances and it is not necessary to use the same point throughout in the range for items as they occur in the litigation. If items are a function of a number of hours, the same unit value need not be allowed for each hour particularly if the characteristics of the hearing vary throughout its duration. In this bill of costs, the lower end of the range for item 5 and the upper end of the range for item 6 are possible results. Some items with limited ranges, such as item 14, required general distinctions between an upper and lower assignment in the range for the service rendered.
I will be dealing with all of the assessable services with this latter precedent in mind.
[12] The Respondent has submitted that the 5 unit claim for Item A-1 of the Appellant's Bill of Costs is without merit and the Appellant should only be entitled to 1 unit for a Notice of Appeal which is Item 17 (Preparation, filing and service of Notice of Appeal) in Tariff B of the Federal Courts Rules. I refer to the Appellant's Rebuttal Submissions at paragraph 17 which in effect submit that this Notice of Appeal must be treated as a proceeding in the Federal Court and not as a Notice of Appeal in the Federal Court of Appeal. In addition, Rules 61(2) and 300 of the Federal Courts Rules state:
Rule 61(2):
Applications
Subject to subsection (4), a proceeding referred to in rule 300 shall be brought as an application.
Rule 300:Application
This Part applies to
...
(d) appeals under section 56 of the Trade-marks Act;
For the reasons outlined above, the Appellant's claim of 5 units for Item A-1 is allowed.
[13] The Appellant has requested 5 units for Item E-15 (Preparation and filing of Memorandum of Fact and Law) in its Bill of Costs. The Appellant actually filed an Application Record containing a Memorandum of Fact and Law on August 7, 2003 which may be more appropriately itemized as an additional Item 1 (Preparation and filing of originating documents, other than a Notice of Appeal to the Court of Appeal and application records) (emphasis mine). The 5 units will be allowed for this assessable service.
[14] The Appellant in its Amended Bill of Costs has claimed 4 units for Item G-24 (Travel by counsel to attend examination of Lino Fornari) which the Respondent notes requires a prior Direction of the Court. Item 24 of Tariff B, Federal Court Rules, actually reads:
24. Travel by counsel to attend a trial, hearing, motion, examination or analogous procedure at the Direction of the Court.
I rely on the reasons of Taxing Officer, François Pilon in Beaulieu v. Canada, [2000] F.C.J. 2127 at paragraph 10:
... In item 24 of the bill of costs the respondent claimed the sum of $500 for travel by counsel. In her written submissions in reply Ms. Lavergne was prepared to reduce this amount to $100. At the same time, the appellant based her objection on the phrase "at the discretion of the Court" contained in item 24, which she submitted did not extend to the assessment officer where no specific directions to that effect had been given. The appellant is correct: only judges have the discretionary authority to compensate counsel for travel. (emphasis mine)
I have reviewed the material in the Court record and have determined that no such direction exists, therefore Item 24 is disallowed.
[15] This assessment of the Bill of Costs has proceeded by way of written submissions. It is my respectful opinion they were simple in nature and the parties did participate in the filing of materials which did assist me in the assessment of this Bill of Costs. The Appellant's remaining assessable items will be allowed since in my opinion in these circumstances they were reasonable, necessary for this appeal and have been justified by the Appellant's submissions and affidavit. However, I agree with the Respondent's submissions and I reduce Item 26 (Assessment of costs) to 2 units ($220.00) for reasons I have outlined in the first two sentences of this paragraph.
[16] As mentioned above in paragraph [9], the Respondent has some concerns with regards to the lack of proof that has been provided for certain disbursements. I refer to the Federal Courts Rules, Tariff B, subsection (4):
1(4) Evidence of disbursements - No disbursement, other than fees paid to the Registry, shall be assessed or allowed under this Tariff unless it is reasonable and it is established by affidavit or by the solicitor appearing on the assessment that the disbursement was made or is payable by the party.
The affidavit of Barbara Gallagher does outline at paragraphs 7 and 11 that she did review the Appellant's billing and disbursement file regarding this matter and the Appellant was billed for all photocopies in this proceeding. I rely on the reasons of Taxing Officer, Charles E. Stinson in Grace M. Carlile v. Her Majesty the Queen, [1997] 97 D.T.C. 5287:
... Taxing Officers are often faced with less than exhaustive proof and must be careful, while ensuring that unsuccessful litigants are not burdened with unnecessary or unreasonable costs, to not penalize successful litigants by denial of indemnification when it is apparent that real costs were indeed incurred. ...
Further, Phipson on Evidence, Fourteenth Edition (London: Sweet and Maxwell, 1990) at page 78, paragraph 4-38 states that the " standard of proof required in civil cases is generally expressed as proof on the balance of probabilities". Accordingly, the onset of taxation should not generate a leap upwards to some absolute threshold. If the proof is less than absolute for the full amount claimed and the Taxing Officer, faced with uncontradicted evidence, albeit scanty, that real dollars were indeed expended to drive the litigation, the Taxing Officer has not properly discharged a quasi-judicial function by taxing at zero dollars on the only alternative to the full amount. Litigation such as this does not unfold solely due to the charitable donation of disinterested third persons. On a balance of probabilities, a result of zero dollars at taxation would be absurd ....
In addition to the photocopies claimed above, in my opinion considering Carlile, supra, the affidavit of Barbara Gallagher and the circumstances pertaining to this proceeding, the facsimile, long distance and postage/courier charges that are requested appear reasonable and will be allowed.
[17] In paragraph [14] above, I have disallowed the units claimed for the travel of the Appellant's Counsel. The wording of Item 24, Tariff B of the Federal Courts Rules "...at the discretion of the Court" is for the assessable services that may be claimed by counsel as indemnification for travel time. I am of the opinion this does not prohibit me from allowing associated and necessary travel disbursements. Therefore, I allow the travel disbursements of Appellant's Counsel associated with the examination of Lino Fornari on February 6, 2003 in Toronto.
[18] The Appellant has requested the disbursement for translation service associated with the cross-examination of Lino Fornari which was held in Toronto on February 6, 2003. I have outlined the Respondent's objections in paragraph [9] above. At paragraph 22 of the Appellant's Submissions (Assessment of Costs), the Appellant relies on pertinent excerpts from Van Daele v. Van Daele (1993), 45 C.PC. 166 at 170, per McFarlane J.A. (B.C.C.A.) to justify this disbursement:
...
There, in my opinion, lies the error of principle into which Mr. Justice Meredith fell. The proper test, it seems to me, from a number of authorities referred to us this morning is whether at the time the disbursement or expense was incurred it was a proper disbursement in the sense of not being extravagent, negligent, mistaken or a result of excessive caution or excessive zeal, judged by the situation at the time when the disbursement or expense was incurred.
...
After reading the transcript of the cross-examination of February 6, 2003 during my review of the court file materials and after a full review of Van Deale, supra, and other associated case law, I am satisfied this was a reasonable and necessary expense in these specific circumstances. The disbursement of the translation service will be allowed in its entirety.
[19] The Bill of Costs in T-635-02 is assessed and allowed in the amount of $5,556.10 which includes assessable services, disbursements and applicable GST. A certificate is issued in this Federal Court proceeding for $5,556.10.
"Paul Robinson"
Paul G.C. Robinson
Assessment Officer
Toronto, Ontario
May 19, 2005
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-635-02
STYLE OF CAUSE: SARASIN CONSULTADORIA E. SERVICOS LDA
Appellant
and
ROOX'S INC.
Respondent
and
THE REGISTRAR OF TRADE-MARKS
ASSESSMENT OF COSTS IN WRITING WITHOUT PERSONAL APPEARANCE OF THE PARTIES
ASSESSMENT OF COSTS -
REASONS BY: PAUL G.C. ROBINSON, Assessment Officer
DATED: May 19, 2005
SOLICITORS OF RECORD:
Gowling Lafleur Henderson LLP FOR THE APPELLANT
Barristers & Solicitors
Per: Rose-Marie Perry, Q.C./S. Fred Barbieri
Ottawa, Ontario
Sim, Hughes, Ashton & MacKay LLP FOR THE RESPONDENT
Barristers & Solicitors
Per: Kenneth D. MacKay
Toronto, Ontario
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