Date: 20081001
Docket: T-2108-02
Citation: 2008 FC 1103
BETWEEN:
INTERNATIONAL TAEKWON-DO
FEDERATION and the
CANADIAN TAEKWON-DO FEDERATION
INTERNATIONAL
FEDERATION CANADIENNE DE TAEKWON-DO
INTERNATIONAL
Applicants
and
JUNG
HWA CHOI
and
HUNG HI CHOI and JUNG HWA CHOI,
A JOINT VENTURE TRADING AS I.T.F.
TAEKWON-DO
and THE REGISTRAR OF TRADEMARKS
Respondents
ASSESSMENT OF
COSTS - REASONS
Charles E. Stinson
Assessment
Officer
[1]
The
Court struck from the register two trade-mark registrations by the Respondents
with costs to the Applicants. The Respondents did not appear at the hearing or
file written argument. The Applicants properly served a notice of
appointment for a hearing of the assessment of their bill of costs. The
Respondents did not appear or file reply materials. The Respondents still had
not appeared after I delayed commencement of the hearing for one hour
consistent with superior court practice.
[2]
I
raised concerns with counsel for the Applicants on my jurisdiction to allow
certain claims notwithstanding the absence of objections from the Respondents.
I indicated that the record satisfied me on the conclusions urged by his
materials on the extent of the work required and the relevance of the
disbursements incurred. I assess the maximum in the available range for each
counsel fee item allowed.
I. Item 1 (originating documents and
application records)
A. The Applicants’ Position
[3]
Item
1 provides for preparation “and filing of originating documents … and
application records.” The Applicants claimed item 1 eight times respectively
for the notice of application, application record, book of authorities, each of
three affidavits (claimed twice for one affidavit) and the memorandum of fact
and law. The Applicants argued further to Block Parent Program of Canada
Inc. v. Edmonton Block Parent Assn., [2007] F.C.J. No.170 at para. 3 (A.O.)
[Block Parent] that an assessment officer must remain neutral and should
not challenge items on behalf of an absent litigant. The significant difference
between item 2, which provides for preparation “and filing of all
defences, replies, counterclaims or respondents’ records and materials”
[emphasis added] and item 1 is that the word “all” does not appear in the
wording for the former. Therefore, further to Flag Connection Inc. v. Canada (Minister of
Public Works and Government Services), [2006] F.C.J. No. 22
(A.O.), item 1 may be awarded for each of several discrete services.
B. Assessment
[4]
In
the absence of a full canvass of this item, the Applicants’ position is
tenuous, but arguable. I allow the various claims under item 1 (except that
item 1 is allowed only once for the Russell MacLellan affidavit), but note that
said result might have been different in the face of objections from the
Respondents.
II. Item 5 (preparation of motion) and 6
(attendance on motion)
A. Assessment
[5]
The
Applicants claimed for a dispute resolution conference under items 5 and 6
instead of under items 10 (preparation for conference) and 11 (attendance on
conference) because an order for costs resulted, asserted to be unusual
for such conferences. I think that a dispute resolution conference (a proactive
effort by the Court to broker resolution of the substantive dispute between the
parties) differs fundamentally from a motion (an attempt by one party to gain
relief on an interlocutory issue). The issuance of an order does not turn a
conference into a motion. I replace items 5 and 6 with items 10 and 11
respectively, leaving the attendance amount unchanged (ranges for items 6
and 11 are identical) but reducing the preparation amount by 1 unit ($120 per
unit) (item 10 range maximum is one less than that for item 5).
III. Items 15 (written
argument), 25 (services after judgment), 26 (assessment of costs) and 27 (such
other services as may be allowed by the assessment officer)
A. The Applicants’ Position
[6]
The
Applicants claimed item 15 for preparation of their written representations for
the assessment of costs and twice more for each of a response to notice of
status review and reply submissions to the Respondents’ materials for notice of
status review; item 25 for each of the Respondents’ motion for return of
security for costs and briefing client on the judgment; item 26 for preparation
of the bill of costs and item 27 for each of service of the notice of appointment
for assessments of costs and attendance per hour on the hearing. The Applicants
argued that directions to prepare written materials in conjunction with service
of the notice of appointment places the written argument within the parameters
of item 15 which provides for preparation “and filing of written argument,
where requested or permitted by the Court” even if I am not the “Court”. Item
15 applies to the notice of status review because the Court requested materials
in the nature of written argument.
[7]
The
Applicants argued that although the motion addressing security for costs was a
formality, work on it was still necessary and therefore I should stretch my
discretion to allow item 25. Items 4 and 27 might be alternative
categories for this work. Item 27 should be permitted for attendance on the
hearing of the assessment consistent with items such as 9, 11, 14, 21, 22 etc.
Many assessments for costs are done in writing. Item 26 does not account for
attendance on an oral hearing. Item 23 (attendance on a reference, an
accounting or other like procedure not otherwise provided for in this Tariff,
per hour) could be used as attendance on the hearing of an assessment of costs
fits its wording. The Tariff has a theme of providing for attendance fees per hour
for hearings. The Tariff does not refer to the work for service of a notice of
appointment and therefore item 27 should be used.
B. Assessment
[8]
Item
15 is positioned in the Tariff under the subheading ‘E. Trial or Hearing’.
The latter term applies to the hearing here of the substantive issues of the
lawsuit, but does not apply to assessments of costs and notices of status
review because they are interlocutory events incidental to the trial or
hearing. I allow item 27 for each piece of work associated with status review
resulting in a reduction because the maximum value in the range for item 27 is
less than that for item 15.
[9]
The
Applicants’ submissions for items 23, 26 and 27 concerning the assessment of
costs are compelling. My difficulty is that I have addressed this before: see Abbott
Laboratories v. Canada (Minister of Health), [2008]
F.C.J. No. 870 at para. 104 (A.O.) [Abbott]. As well, a preparation item
generally immediately precedes an attendance item in the Tariff. However, that
does not occur for item 23. I am reluctant to infer that there is a pattern
suggesting that attendance fees should be added additional to item 26 for
attendance on assessment of costs. I allow only item 26. The order for return
of security for costs was silent on costs. Further to para. 73 of Abbott,
I disallow the claimed costs.
IV. Second counsel (claimed throughout
the bill of costs)
A. The Applicants’ Position
[10]
The
Applicants argued further to para. 156 of Abbott that I should stretch
my discretion to permit second counsel in the circumstances here of the record
confirming necessity. The Applicants did not unreasonably inflate their bill of
costs by claiming second counsel for every item. It is clear that item 24
(travel time of counsel) requires a direction of the Court, but several other
items do not meaning I have discretion to allow second counsel.
B. Assessment
[11]
Again,
I find the Applicants’ submissions attractive in the absence of a full canvass
of the matter. I held in Block Parent that I cannot certify unlawful items,
i.e. those outside the authority of the judgment and the Tariff. To accept the
Applicants’ position, I might have to conclude that the Tariff imposed a
requirement for directions from the Court for services such as item 14(b)
(second counsel at trial) because they were deemed beyond my capacity, but
other items were within my capacity without the need for guidance from the
Court. However, I think this would require me to read too much into the Tariff.
I disallow the claims for second counsel.
[12]
I
allowed the Applicants to add before me an amount of $315.56 for disbursements
associated with the assessment of costs. The Applicants’ bill of costs,
presented at $56,803.65, is assessed and allowed at $41,936.21 together with
interest as requested from December 5, 2006 (the date of judgment) further
to s. 37 of the Federal Courts Act and s. 129 of the Courts of
Justice Act, R.S.O. 1990, c. C-43.
“Charles
E. Stinson”
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