Date: 20000412
Docket: T-437-99
BETWEEN:
NOVOPHARM LIMITED
Applicant
-and-
THE REGISTRAR OF TRADE-MARKS
Respondent
-and-
PFIZER CANADA INC.
Respondent
REASONS FOR JUDGMENT
DAWSON J.:
[1] Novopharm Limited seeks judicial review of a decision of the Registrar of Trade-Marks ("the Registrar") dated February 9, 1999, whereby the Registrar refused to grant Novopharm an order for cross-examination of affiants of the respondent Pfizer Canada Inc. in respect of an opposition proceeding brought by Novopharm.
[2] The facts giving rise to the application for judicial review may be briefly summarized.
[3] By letter dated January 21, 1999, Novopharm requested from the Registrar an order allowing it to cross-examine Pfizer's affiants. On that same day, the Registrar sent out a letter advising that written arguments could be filed by the parties within one month of January 21, 1999. Novopharm, therefore, received notice of the request for written arguments after January 21, 1999.
[4] In response to Novopharm's request of January 21, 1999, by letter dated February 9, 1999, the Registrar responded that written arguments had been called for by letter January 21, 1999, and that in view of the provisions of Rule 44(2) of the Trade-marks Regulations Novopharm's request for an order for cross-examination could not be considered.
[5] Counsel for Novopharm then made submissions requesting an extension of time for written arguments and requesting re-consideration of the Registrar's decision of February 9, 1999. Counsel argued that for the Registrar to "give" notice within Rule 46(1) of the Regulations the recipient must have received the notice. Counsel submitted that as Novopharm had not received the Registrar's notice, when it wrote seeking an order for cross-examination, the Registrar should deal with its request.
[6] In response, by letter dated March 16, 1999, the Registrar advised that since there was no error of fact or law on the face of the record, the decision of February 9, 1999, must stand. The Registrar concluded by stating that even if he had been in a position to consider Novopharm's request for cross-examination, the order would not likely have been granted given the lengthy delay by Novopharm in filing its request for cross-examination. Just over four months had passed from the time Pfizer filed its evidence to the date of Novopharm's request.
[7] The significance of the correspondance from the Registrar requesting written arguments is found in Rules 44(2) and 46(1) of the Trade-marks Regulations (1996, S.O.R./96-195) which provide:
| 44. (2) Before giving notice in accordance with subsection 46(1), the Registrar may, on the application of any party and on such terms as the Registrar may direct, order the cross-examination under oath of any affiant or declarant on an affidavit or declaration that has been filed with the Registrar and is being relied on as evidence in the opposition.
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44. (2) Avant de donner un avis aux termes du paragraphe 46(1), le registraire peut, à la demande d'une partie et aux conditions qu'il fixe, ordonner le contre-interrogatoire sous serment de l'auteur de tout affidavit ou déclaration solennelle produit au bureau du registraire à titre de preuve dans l'opposition.
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| 46. (1) Not less than 14 days after completion of the evidence, the Registrar shall give the parties written notice that they may, within one month after the date of the notice, file written arguments with the Registrar.
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46. (1) Au plus tôt 14 jours après la production de la preuve, le registraire avise par écrit les parties qu'elles peuvent, dans le mois suivant la date de l'avis, produire à son bureau des plaidoyers écrits.
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[8] Thus, after notice is given under Rule 46(1) with respect to written arguments the Registrar may not order the cross-examination of an affiant.
[9] There is no specified time limit set for the cross-examination in respect of any affidavit or statutory declaration filed in opposition proceeding. However, a Practice Notice states that where a request for cross-examination in respect of an affidavit or statutory declaration is made within two months from the completion of all the Rule 41(1) evidence, and the prescribed fee for an extension of time has been submitted, the cross-examination order will specify that the applicant will have four months from the completion of the cross-examination to file its Rule 42(1) evidence or statement.
[10] Parties in opposition proceedings cannot cross-examine on affidavits as of right. Leave by the Registrar must be given.
[11] It was common ground before me that this Court has jurisdiction under section 18 of the Federal Court Act to engage in judicial review of an interlocutory judgment or decision. In Novopharm Ltd. v. Aktiebolaget Astra1, Justice Gibson of this Court concluded, after a review of the relevant authorities, that such jurisdiction should only be exercised in special circumstances. He noted that the Court should not entertain applications for judicial review in respect of interlocutory or preliminary decisions in the course of opposition proceedings, where to do so would potentially achieve a result that this Court sought to avoid by adopting a narrow interpretation of appeal rights under subsection 56(1) of the Trade-marks Act (R.S.C. 1995, c. T-13, as amended) ("the Act").
[12] Therefore, I must determine whether "special circumstances" exist, which would justify the exercise of discretion to grant judicial review.
[13] The Registrar of Trade-Marks and Pfizer submitted that the Court should not exercise its jurisdiction because Novopharm can, if it is unsuccessful in the opposition proceeding, appeal the Registrar's final decision to this Court pursuant to subsection 56(1) of the Act. The respondents point out that section 56 of the Act provides a full right of appeal with the right to file new evidence.
[14] On such appeal, this Court may exercise any discretion vested in the Registrar. At that time, Novopharm can seek review of any error on the refusal to grant leave to cross-examine and review of any denial of fairness, which Novopharm may have suffered resulting from the Registrar's decision of February 9, 1999.
[15] Novopharm rejects that submission and states that leaving Novopharm to that remedy is not practical and raises procedural difficulties.
[16] I accept the respondent's submission. I am of the view that there is an adequate alternative remedy available to Novopharm. This exists in the form of a full right of appeal under section 56 of the Act at the end of the opposition proceeding, if Novopharm is unsuccessful in that proceeding.
[17] Therefore, I conclude that I should not enter into the judicial review sought by Novopharm.
[18] In the result, this application for judicial review is dismissed with costs payable by the applicant to the respondent Registrar of Trade-Marks and the respondent Pfizer Canada Inc.
[19] In view of the apparent absence of authority as to whether or not notice is given under Rule 46(1) of the Regulations as of the date of the notice or as of the date when the notice is received, I decline to award costs in accordance with the upper limit of column 5 of Tariff B as requested by the respondents. Instead, costs should be assessed in the usual course in accordance with column III of the table to Tariff B, plus disbursements.
OTTAWA, Ontario
April 12, 2000
"Eleanor R. Dawson"
Judge
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1 [1996] 2 F.C. 839.
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