Date:
20090421
Docket: T-1570-07
T-1571-07
Citation:
2009 FC 392
Ottawa, Ontario, April 21, 2009
PRESENT: The
Honourable Mr. Justice Mandamin
Docket: T-1570-07
BETWEEN:
SIMPSON
STRONG-TIE COMPANY INC.
Applicant
and
PEAK
INNOVATIONS INC.
Respondent
Docket: T-1571-07
AND BETWEEN:
SIMPSON STRONG-TIE COMPANY INC.
Applicant
and
PEAK
INNOVATIONS INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
The Applicant, Simpson Strong-Tie Company Inc.,
appealed a decision of the Registrar of Trade-marks. In the course of the
appeal proceedings, the Respondent, Peak Innovations Inc., filed certain
affidavits. The Applicant served Directions to Attend on the affiants for
cross-examination on their affidavits. The Directions sought extensive
document production by the affiants. Neither the affiants nor the Respondent
provided documents they considered beyond the scope of the affidavits. At the
cross-examination, the affiants refused to answer Simpson Strong-Tie’s
questions about the documents requested in the Notice to Attend.
[2]
Simpson Strong-Tie then brought a motion before
the case management Prothonotary for production of documents and re-attendance of
the affiants to answer refused questions. The Respondent opposed the motion.
[3]
The case management Prothonotary dismissed the
Applicant’s motion. Simpson Strong-Tie now appeals the Prothonotary’s Order
dismissing its application for production of documents sought in the Direction
to Attend and for answers to the questions refused in the cross-examination on
affidavit.
Decision Under
Appeal
[4]
The Prothonotary observed the Directions to
Attend and required the affiants to produce an extensive list of documents. He
considered the majority of the Applicant’s questions, for which answers were refused,
to be about documents which Simpson Strong-Tie sought in its Directions to
Attend. The Prothonotary considered the Applicant’s remaining questions on
cross-examination to be equally wide in scope. They were, in the
Prothonotary’s view, beyond the reach of the specific knowledge of the two affiants.
[5]
The Prothonotary noted that the Applicant’s questions
arose during cross-examination on affidavits rather than on examination for
discovery.
[6]
The Prothonotary acknowledged the Applicant’s
submissions that witnesses are required to produce documents referred to in the
Directions to Attend and that the Federal Courts Rules, SOR 98-106, contemplated
that a witness in a proceeding may be compelled to produce documents reaching
beyond the scope of the affidavit upon which they were cross-examined. However,
he agreed with the Respondent’s submission that the questions were not focussed
on the affidavits and matters deposed therein, rather to efforts to obtain
production of documents not within the possession, power or control of the affiants.
[7]
The Prothonotary considered Rule 91, and more
particularly 91(2)(c), directly applicable to the issue in the motion. That
Rule provides that a party intending to conduct an oral examination shall serve
a Direction to Attend on the person to be examined. Rule 91(2)(c) is specific
to cross-examination on affidavit and requires the documents to be produced are
those documents “in that person’s possession, power or control”
(emphasis in Prothonotary’s reasons) that are relevant to the application. He
contrasted this wording with Rule 91(2)(a) which deals with examinations for
discovery and refers to documents “in the possession, power or control of
the party on behalf of whom the person is being examined” (emphasis added).
The Prothonotary held that on a plain reading of Rule 91(2)(c) the documents to
be produced are only those in the affiant’s possession, power or control.
[8]
The Prothonotary concluded that a Direction to
Attend which seeks “all documents” in the Respondent corporation’s files are documents
not necessarily in the possession, power or control of the affiants. He
decided that in its Directions to Attend, the Applicant had overreached what
the affiants were required to produce.
[9]
The Prothonotary acknowledged that where a proper
foundation was laid in cross-examination, a party could be required to obtain
the production of additional documents. He found that the thrust of questions refused
in the Applicant’s cross-examinations on affidavit did not seek to lay a
foundation to demonstrate the documents were in the possession of the affiants.
[10]
The Prothonotary ruled the questions arising
from the Directions to Attend were not proper and need not be answered. Finally,
he decided the remaining questions refused by Peak Innovations were questions to
which argument was not directed or dealt with matters that were not relevant, were
privileged, or exceeded the scope of the affidavits. On these, the
Prothonotary decided that Simpson Strong-Tie was free to argue in the course of
the proceeding that an adverse inference could be drawn against Peak
Innovations for failing to produce those documents.
[11]
In result, the Prothonotary dismissed the Applicant’s
Motion for production of documents sought in the Direction to Attend and for
answers to the questions refused in the cross-examination on affidavit.
Issue
[12]
The issue in this appeal is whether the Prothonotary
erred in holding that on cross-examination on an affidavit the production of
documents and answers to questions thereto was governed by Rule 91(2)(c) and
that the Rule limited document production in cross-examination on affidavit to
documents in the possession, power or control of the affiants.
Standard of Review
[13]
Discretionary orders of Prothonotaries ought not
to be disturbed on appeal unless they are clearly wrong in the sense that the
exercise of discretion was based on a wrong principle or misapprehension of the
facts or that they raise questions vital to the final issue of the case. Canada v. Aqua-Gem Investments Ltd., [1993] F.C.J. No. 103 (F.C.A.)
[14]
In Merck & Co., Ltd. v. Apotex Inc., 2003 FCA 488, Justice Décary decided that a judge should first
determine whether the question is vital to the final issue. Secondly, whether
“the orders are clearly wrong, in the sense that the exercise of
discretion by the prothonotary was based upon a wrong principle or upon a
misapprehension of the facts.” Merck at para. 19.
Legislation
[15]
Rule 91 of the Federal Rules of Court
provides:
Direction to attend
91. (1) A party who
intends to conduct an oral examination shall serve a direction to attend, in
Form 91, on the person to be examined and a copy thereof on every other party.
Production for inspection at examination
(2) A
direction to attend may direct the person to be examined to produce for
inspection at the examination
(a) in respect of an
examination for discovery, all documents and other material in the possession,
power or control of the party on behalf of whom the person is being examined
that are relevant to the matters in issue in the action;
(b) in respect of the taking of
evidence for use at trial, all documents and other material in that person's
possession, power or control that are relevant to the matters in issue in the
action;
(c) in respect of a
cross-examination on an affidavit, all documents and other material in that
person's possession, power or control that are relevant to the application or
motion; and
(d) in respect of an examination
in aid of execution, all documents and other material in that person's
possession, power or control that are relevant to the person's ability to satisfy
the judgment.
[16]
Rule 94(1) provides:
Production of documents on
examination
94. (1) Subject
to subsection (2), a person who is to be examined on an oral examination or the
party on whose behalf that person is being examined shall produce for
inspection at the examination all documents and other material requested in the
direction to attend that are within that person's or party's possession and
control, other than any documents for which privilege has been claimed or for
which relief from production has been granted under rule 230.
Relief from production
(2) On motion, the Court may order that a person to be
examined or the party on whose behalf that person is being examined be relieved
from the requirement to produce for inspection any document or other material
requested in a direction to attend, if the Court is of the opinion that the
document or other material requested is irrelevant or, by reason of its nature
or the number of documents or amount of material requested, it would be unduly
onerous to require the person or party to produce it.
Analysis
[17]
The underlying proceeding is an appeal by the
Applicant, Simpson Strong-Tie, of the decision of the Registrar of Trade-marks
(Opposition Board) of the Trade-marks Office. Simpson Strong-Tie had opposed
the Respondent’s application for registration of the trade-mark at issue: No.
1,205,529. This opposition was refused by the Opposition Board and the
trademark has been registered. Simpson Strong-Tie appealed the decision
pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13, by
filing a Notice of Application in Federal Court seeking an order granting its appeal,
an order setting aside the decision of the Registrar of Trade-marks, and an
order directing the Registrar of Trade-marks to refuse the registration of the
trademark.
[18]
I begin by noting that the Prothonotary’s decision refusing Simpson
Strong-Tie’s motion relates to an interlocutory matter and not to an issue
vital to the final outcome. As such the Prothonotary’s order
ought not to be disturbed on appeal unless it is clearly wrong in the sense
that the exercise of discretion was based on a wrong principle or
misapprehension of the facts. Merck, supra.
[19]
The Applicant submits that Rule 94(1) requires that the person or party
to produce the documents required and that the onus was on the recipient to
apply under Rule 94(2) to seek relief from the Court from the production of
documents. Further the Applicant submits that Rule 91(2)(c) allows the person
issuing the Direction to Attend to ask for production of “all documents and
other material … relevant to the application or motion.” Simpson Strong-Tie
submits the Prothonotary did not deal with its submission and instead put the
onus on the Applicant contrary to Rule 94(2).
[20]
The Applicant also submits the Federal Court Rules on the
Direction to Attend provide for the production of all documents relevant to the
application. It cited the decision of Justice Snider in Sawridge Band v. Canada, 2005 FC 865, specifically:
In my view, the
most succinct statement of the current state of the law on the scope of
cross-examination on an affidavit, in the context of an interlocutory motion
such as this, is set out by Reed J. in Castlemore Marketing Inc. v. Intercontinental
Trade and Finance Corp. [1996] F.C.J. No. 201, at para. 1:
An affiant is required to answer
questions on matters which have been set out in the affidavit as well as any
collateral questions arising from his or her initial answers. In Bally-Midway
Mfg. Co. v. M.J.Z. Electronics Ltd. (1984), 75 C.P.R. (2d) 160, Mr.
Justice Dubé stated that
cross-examinations on affidavits are confined to "the issues relevant to
the interlocutory injunction and/or all allegations contained in the
affidavit". In [Weight Watchers International Inc. v. Weight
Watchers of Ontario Ltd. (No. 2) (1972), 6 C.P.R. (2d) 169 (F.C.T.D.)], Mr.
Justice Heald relied upon jurisprudence which held that a person
cross-examining on an affidavit was not confined to the area within the four
corners of the affidavit but could cover any matter relevant to the
determination of the issue in respect of which the affidavit was filed. In
addition to being relevant, the question of course must not be of such a general
nature that it cannot be intelligently answered, and the Court will exercise
its discretion and disallow any question which it considers in the nature of a
"fishing expedition".
[21]
I note that in Sawridge, Justice Snider was dealing with an
interlocutory motion by which the plaintiffs sought an order that the defendant
produce an alternative witness who was a more informed affiant than the
paralegal who prepared the affidavit that listed certain documents. Justice
Snider declined to grant the requested relief because, in addition to not
specifying questions they wished to ask, the plaintiffs appeared to propose to
cross-examine on the contents of the documents beyond the limited purpose for
which they were put forward. Justice Snider held that such cross-examination
would extend beyond the matters in respect of which the affidavit was filed.
[22]
The Applicant also refers to decisions in Bruno v. Canada, 2003
FC 1281, and Autodata Ltd. v. Autodata Solutions Co., 2004 FC 1361. Bruno
dealt with a situation where the examining party failed to specify the
production of documents in a Direction to Attend before examining a witness.
[23]
In Autodata, Prothonotary Tabib was considering an application
made in the course of an appeal under section 56 of the Trade Marks Act
which is the same type of proceeding as the instant case. She was considering
whether production and answers were required in a situation where an
undertaking to produce documents had been given. She echoed the Federal Court
of Appeal decision in Merck Frosst Canada Inc. v. Canada (Minister of
Health), [1997] F.C.J. No. 1847, where it was stated that cross-examination
is not examination for discovery in that the deponent is not a party and the
deponent can be required to produce only documents within his or her custody or
control, and the rules of relevance are more limited.
[24]
In my view, the three aforementioned decisions do not compel an
interpretation of Rule 91(2)(c) different than the interpretation settled on by
the Prothonotary. Rather, the decisions tend to support the Prothonotary’s
decision, especially Autodata. Prothonotary Tabib made the distinction
between proceedings in an action and an application, the later involving a more
restricted and summary procedure.
However, a cross-examination on affidavit is not a
discovery, and an application is not an action. An application is meant to
proceed expeditiously, in summary fashion. For that reason, discoveries are not
contemplated in applications. Parties cannot expect, nor demand, that the summary
process mandated for applications will permit them to test every detail of
every statement made in affidavits or in cross-examinations against any and all
documents that may be in the opposing party's possession. If a party is not
required to "accept" a witness' bald assertion in cross-examination,
it is however limited in its endeavours to test that assertion to the questions
it may put to the witness and the witness' answers in the course of the
cross-examination. To the extent documents exist that can buttress or
contradict the witness' assertion, production may only be enforced if they have
been listed, or sufficiently identified, in a direction to attend duly served
pursuant to Rule 91(2)(c) (see Bruno v. Canada (Attorney General),
[2003] F.C.J. 1604). I reiterate: a cross-examination on an affidavit is the
direct testimonial evidence of the witness, not a discovery of the party. (underlining
added)
[25]
The Applicant, Simpson Strong-Tie, proceeded in its appeal of the
Registrar of Trade-marks decision by way of a Notice of Application. In
choosing to proceed by application, it must observe the limitations that are
attendant on application proceedings.
[26]
I agree with the Prothonotary that Rule 91(2)(c) is directly
applicable. The language of Rule 91(2)(c) is precise with respect to
production of documents for cross-examination on affidavits and is to be preferred
over more generally worded provision of Rule 94 dealing with oral examinations.
[27]
The remaining matters the Applicant raises assume success in this
application and deal with case management questions. Given the Applicant does
not succeed in the central issue and given that case management is in the hands
of the Prothonotary, I decline to address those issues. The Applicant should
return to the case management Prothonotary for direction in respect of those
matters.
Conclusion
[28]
I conclude that the Prothonotary’s Order ought not to
be disturbed since it is not clearly wrong in the sense that the exercise of
discretion was based on a wrong principle or misapprehension of the facts.
[29]
Costs are awarded to the Respondent, Peak Innovations
Inc.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that:
1.
The application is dismissed.
2.
Costs are awarded to the Respondent.
“Leonard S. Mandamin”
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