Astrazeneca AB v. Novapharm Ltd., 2002 FCT 165

                                                                                                                                             Date: 20020213

                                                                                                                                        Docket:    T-810-00

                                                                                                                   Neutral Citation: 2002 FCT 165

Between:

                                                                ASTRAZENECA AB

                                                                                                                                                        Applicant,

                                                                              - and -

                                                            NOVOPHARM LIMITED

-and-

THE REGISTRAR OF TRADE-MARKS

                                                                                                                                                    Respondents

                                                            REASONS FOR ORDER

KELEN J.

[1]         This motion by Novopharm Limited, respondent in the originating action which was decided in Novopharm's favour on October 30, 2001, seeks an Order pursuant to Rule 400 of the Federal Court Rules, 1998, to fix the costs and disbursements awarded to the moving party in the originating action, at a certain amount set out by the moving party. In the alternative, the moving party seeks an Order pursuant to Rule 403 of the Federal Court Rules, 1998 directing the assessment officer to determine the costs and disbursements awarded to Novopharm in the originating action, according to certain criteria set out by the moving party.

[2]         The moving party also seeks an order with regards to an extension of time to file a motion for directions. The respondent Astrazeneca AB has consented to that motion.

FACTS

[3]         Novopharm was the successful respondent in the original action, which was an appeal by Astra pursuant to section 56 of the Trade-marks Act, pertaining to the appearance of yellow pharmaceutical pills. Therein Astra sought judicial review of the March 9, 2000 decision of the Registrar of Trademarks. By Order dated October 30, 2001, this Court dismissed Astra's appeal with costs to Novopharm on a party-to-party basis.

[4]         Novopharm seeks an Order fixing costs at $24,154.08, as calculated using 50% of the actual costs incurred, stated as $48,308.16;

or,

an Order fixing costs at $21,657.25, as calculated using the upper end of column III of Tariff B;

or,

that specific directions be provided to an assessment officer, as set out by the moving party in its motion record.

THE LAW ON COSTS IN THE FEDERAL COURT

[5]         Rules 400-422 of the Federal Court Rules, 1998 address costs. The discretion of this Court in regards to costs is set out in Rule 400(1):

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.

Pouvoir discrétionnaire de la Cour

400. (1) La Cour a entière discrétion pour déterminer le montant des dépens, les répartir et désigner les personnes qui doivent les payer.

[6]         This discretion extends to the actions of all assessment officers, including Registry Officers, Prothonotaries, and Judges.

[7]         Where costs are awarded to a party in an action before the Federal Court of Canada, that party files a bill of costs and a copy of the relevant Order, pursuant to Rule 406. An assessment officer then assesses the submitted costs as set out in Rule 407:

Assessment according to Tariff B

407. Unless the Court orders otherwise, party-and-party costs shall be assessed in accordance with column III of the table to Tariff B.

Tarif B

407. Sauf ordonnance contraire de la Cour, les dépens partie-partie sont taxés en conformité avec la colonne III du tableau du tarif B.

[8]         Column III of Tariff B sets out the number of units which may be claimed as costs and disbursements for various expenses incurred in the course of a proceeding before this Court. As of April 1, 2001, via the decision of Richard, C.J., each "unit" has the value of CAN$110.00.

ANALYSIS

[9]         It is the moving party Novopharm's submission that costs should be fixed at 50% of the estimated actual costs incurred. The moving party submits that the 1995 amendments to the costs provisions of the Rules were designed to compensate a successful party at litigation for at least 50% of their estimated actual costs. Further, column III of Tariff B, being the standard at which costs would be determined following Novopharm's success at the original trade-marks action, provides Novopharm with less than 50% of the actual costs of the trade-mark litigation.

[10]       The moving party points out that their alternative submission calls for the highest units of cost award in column III, whereby the total cost award would still be less than 50% of the actual costs.

[11]       As justification for an award of 50% of actual costs, Novopharm submits as follows:

·                        the case was not "ordinary";

·                        junior and senior counsel were present;

·                        Astra failed, at the trade-marks action, to show significant consumer interest;

·                        the issues in the original proceeding were important, complex and novel;

·                        the amount of work involved in preparing the case was greater than average;

·                        there was a public interest in the issue litigated;

·                        an offer to settle was made by Novopharm to Astra; and,

·                        Astra submitted additional authorities that were not relevant or used in the original proceeding.

[12]       Astra submits that Novopharm's submission for 50% of actual costs is not available to them on the grounds that the moving party is seeking costs on a solicitor-client basis when party-to-party have already been awarded, but have not made a motion for reconsideration of the existing cost Order. Only relief under Rule 403 is available to Novopharm, in Astra's submission.

[13]       Further, Astra submits that the solicitor-client costs sought by Novopharm are not supported by evidence showing that the fees claimed were actually billed, and that the total fees claimed extend beyond the time period recoverable for costs.

[14]       Astra agrees generally that costs should be fixed at the rates set in column III as submitted in Novopharm's alternative remedy. However, Astra submits that each service should be assessed separately to determine the appropriate level of units under column III.    In its motion record, Astra included item-by-item submissions disputing the amounts claimed by Novopharm in their draft bill of costs.

[15]       I direct this case to an assessment officer to determine the costs and disbursements awarded to Novopharm, based on the following criteria:

(9)                 for all Assessable Services listed in the Novopharm "Draft Bill of Costs" at page 10 of its motion record, the assessment officer shall allocate the second highest number of units under Tariff B, column III, except for items 2, 13(a), 14(a) and 14(b), where the highest number of units shall be allocated;

(10)            Novopharm shall be entitled to costs for the new evidence filed before the Court;

(11)            costs for both senior and junior counsel shall be allowed; and,

(12)            sworn evidence that the disbursements were actually incurred shall be admitted, and all reasonable disbursements incurred shall be allowed.

   "Michael A. Kelen" ______________________________

             Judge

OTTAWA, ONTARIO

February 13, 2002