Date: 20070112
Docket: T-1003-05
Citation : 2007 FC
25
Ottawa, Ontario, January 12, 2007
PRESENT: The Honourable Mr. Justice Blais
BETWEEN:
CANADIAN
TIRE CORPORATION, LIMITED
Applicant
and
ACCESSOIRES
D’AUTO NORDIQUES INC.
Respondent
REASONS FOR ORDER AND ORDER
[1]
On November 27, 2006, the applicant’s statutory appeal
under section
56 of the Trade-marks Act was granted and the matter
was referred back to the Registrar of Trade-marks, on the basis that
application No 860,710 for registration of the trade-mark NORDIC & Snowflake
Design be granted. As per this Court’s order, both the defendant and the
plaintiff filed submissions on costs.
BACKGROUND
[2]
On
November 6, 1997, the applicant filed trade-mark application No. 860,710 for
the trade-mark NORDIC & Snowflake Design, on the basis of proposed use in
association with tires.
[3]
The
respondent, owner of the trade-mark NORDIQUES (TMA367415) since March 30, 1990,
successfully opposed this registration before the Opposition Board for the
Registrar of Trade-marks (the “Registrar”).
[4]
The
applicant then brought an application by way of statutory appeal under section
56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), for an
order setting aside the decision rendered by the Registrar. The applicant also
filed new evidence in addition to that adduced before the Registrar.
PERTINENT LEGISLATION
[5]
Rules
400 to 422 of the Federal Courts Rules, SOR/98-106 (the “Rules”), deal with the issue of
costs. Rule 400(1) provides that the Court has full discretionary power over
the amount and allocation of costs, as well as the determination as to who
should pay these costs. Rule 400(4) provides that the Court may fix costs by
reference to Tariff B and may award a lump sum, in lieu of or in addition to
any assessed costs.
[6]
Rule
400(3) provides an extensive list of factors that may be considered in the exercise
of the Court's discretion, although the Court is not limited to these factors.
Rule 400(3) states the following:
|
400.
(3) In exercising its discretion under subsection (1), the Court may consider
(a) the result of the
proceeding;
(b) the amounts claimed and
the amounts recovered;
(c) the importance and
complexity of the issues;
(d) the apportionment of
liability;
(e) any written offer to
settle;
(f) any offer to contribute
made under rule 421;
(g) the amount of work;
(h) whether the public
interest in having the proceeding litigated justifies a particular award of
costs;
(i) any conduct of a party
that tended to shorten or unnecessarily lengthen the duration of the proceeding;
(j) the failure by a party
to admit anything that should have been admitted or to serve a request to
admit;
(k) whether any step in the
proceeding was
(i) improper, vexatious or
unnecessary, or
(ii) taken through negligence,
mistake or excessive caution;
(l) whether more than one
set of costs should be allowed, where two or more parties were represented by
different solicitors or were represented by the same solicitor but separated
their defence unnecessarily;
(m) whether two or more
parties, represented by the same solicitor, initiated separate proceedings
unnecessarily;
(n) whether a party who was
successful in an action exaggerated a claim, including a counterclaim or
third party claim, to avoid the operation of rules 292 to 299; and
(o) any other matter that it
considers relevant.
|
400. (3) Dans l’exercice de son pouvoir discrétionnaire en
application du paragraphe (1), la Cour peut tenir compte de l’un ou l’autre
des facteurs suivants :
a) le
résultat de l’instance;
b) les
sommes réclamées et les sommes recouvrées;
c)
l’importance et la complexité des questions en litige;
d) le
partage de la responsabilité;
e) toute
offre écrite de règlement;
f) toute
offre de contribution faite en vertu de la règle 421;
g) la
charge de travail;
h) le fait
que l’intérêt public dans la résolution judiciaire de l’instance justifie une
adjudication particulière des dépens;
i) la
conduite d’une partie qui a eu pour effet d’abréger ou de prolonger
inutilement la durée de l’instance;
j) le
défaut de la part d’une partie de signifier une demande visée à la règle 255
ou de reconnaître ce qui aurait dû être admis;
k) la
question de savoir si une mesure prise au cours de l’instance, selon le cas :
(i) était
inappropriée, vexatoire ou inutile,
(ii) a été
entreprise de manière négligente, par erreur ou avec trop de circonspection;
l) la
question de savoir si plus d’un mémoire de dépens devrait être accordé
lorsque deux ou plusieurs parties sont représentées par différents avocats ou
lorsque, étant représentées par le même avocat, elles ont scindé inutilement
leur défense;
m) la
question de savoir si deux ou plusieurs parties représentées par le même
avocat ont engagé inutilement des instances distinctes;
n) la
question de savoir si la partie qui a eu gain de cause dans une action a
exagéré le montant de sa réclamation, notamment celle indiquée dans la
demande reconventionnelle ou la mise en cause, pour éviter l’application des
règles 292 à 299;
o) toute
autre question qu’elle juge pertinente.
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ANALYSIS FOR COSTS
[7]
The applicant submits that the complexity of the issues and
the detail that it was required to go into to prepare for the hearing, justify
an award of costs based on the high-end of Column IV of Tariff B of the Rules.
The applicant also requests that the Court award a lump sum in lieu of any
assessed costs.
[8]
The respondent for its part suggests that each party should
carry its own costs and that, in the alternative, nothing in this matter
justifies that the Court derogate from the normal practice of assessing costs
in accordance with Column III of Tariff B of the Rules.
[9]
In reaching this decision on costs, the following factors
listed in Rule 400(3) were considered by this Court.
The
result of the proceedings
[10]
The applicant was wholly successful in the statutory appeal
before this Court.
The
importance and complexity of the issue
[11]
Trade-mark appeals are, by their very nature, somewhat
technical, and there is no question that the applicant needed to rely on expert
evidence to demonstrate the registrability of his trade-mark.
Any
written offer to settle
[12]
A valid offer to settle was made by the applicant on
January 31, 2006, which was refused by the respondent who submitted a
counter-proposal. Additionally, given the outcome of the statutory appeal, the
judgment was more favourable to the applicant than the terms of the offer to
settle made to the respondent, which should entitle the applicant to double
party-to-party costs for all services after January 31, 2006, as per Rule 407.
[13]
Furthermore, given the particular circumstances of this
case, the payment requested by the respondent in its counter-offer does tend to
support the applicant’s claim that the respondent’s actions were motivated by
an attempt to obtain financial gain, as opposed to simply protecting its own
valid trade-mark.
Any conduct of the party that tended to shorten or
unnecessarily lengthen the duration of the proceedings
Whether any step in the proceeding was (i) improper,
vexatious or unnecessary, or (ii) taken through negligence, mistake or
excessive caution
[14]
While the applicant submits that the respondent has,
throughout the proceedings, taken technical positions with respect to
admissibility of evidence filed which has increased the expenses of the
applicant, I find no evidence of conduct by the respondent that would fit
within the confine of paragraphs (i) or (k) of Rule 400(3). Both parties
requested extensions of times to file additional material and, on one occasion,
there was some confusion resulting from an order of Prothonotary Lafrenière,
which had to be clarified through an order by Madam Justice Eleanor Dawson.
While this may have caused additional costs for the applicant, the blame for
that cannot rest on the respondent.
[15]
Furthermore, as a general observation, it must be noted
that the respondent was entitled under the Act to oppose the applicant’s registration
in order to protect its own trade-mark and indeed, the respondent was
successful in this initial attempt before the Registrar. Once the applicant
chose to appeal the decision of the Registrar, it was also perfectly understandable
that the respondent would wish to defend its earlier victory by opposing the
application. In doing so, the respondent may have taken some technical
positions on admissibility of evidence, but on the whole, the respondent largely
relied on its initial submissions before the Registrar and on the decision of
the Registrar. It was the applicant, not the respondent, who submitted a large
volume of additional evidence in support of its statutory appeal, evidence to
which the respondent had to respond in its own submissions.
[16]
While
the Act does permit the filing of additional evidence in a statutory appeal,
the respondent does point out that, had the applicant submitted such evidence
in a timely manner (that is to say before the Registrar), the outcome of the
opposition proceedings might have been different and there might have been no
need for this appeal. Since costs are not awarded under an opposition
proceeding before the Registrar, the respondent submits that it would not have
been liable for the extensive costs incurred by the applicant had it been
diligent in submitting the necessary expert evidence at that time.
[17]
While
there may be some validity to the respondent’s argument, it remains true
nonetheless that it was not unreasonable for the applicant to seek to limit its
own costs in the opposition proceedings and to anticipate a successful outcome
to these proceedings with the evidence submitted. It cannot therefore be said
that the applicant acted improperly or negligently in its attempt to meet its
burden of proof in support of the registrability of its trade-mark before the
Registrar.
[18]
Having regards to all of the above, I find that the
applicant should be awarded its costs in accordance with the regular column of Tariff
B (Column III), with the particulars to be determined by an assessment officer,
within the confine of the following directions:
The offer to settle: As previously discussed,
the judgment of this Court was more favourable to the applicant than the terms
of the offer to settle made to the respondent, which entitles the applicant to
double party-to-party costs for all services after January 31, 2006, as per
Rule 407.
Non-expert
affidavit evidence: This Court directs that no disbursements should be awarded
to cover non-expert affidavit evidence.
The travel expenses: This Court directs that travel
expenses for applicant’s counsel should be included in the award for costs.
The bilingual articling student: The
respondent was entitled to present arguments in French at the hearing and
simultaneous translation was provided to facilitate communication. This Court
directs therefore that the amounts claimed for the articling student, both fees
and travel expenses, should not be included in the calculation of costs.
The preparation of written arguments: This
Court directs that such costs can properly be included in the calculation, as
per item 15 of Tariff B.
Disbursements: As already noted, those
disbursements related to non-expert affidavit evidence will not be considered
by the assessment officer. In addition, the disbursements related to expert
evidence provided by Mr.Yves Simard, as well as those related to the services
of Dr. Ruth Corbin, appear to this Court to be somewhat excessive. Therefore,
the applicant will be entitled to only half of the costs of these two particular
experts.
ORDER
For these reasons,
THE COURT ORDERS that:
1. The applicant is awarded
its costs in accordance with Column III of Tariff B.
2.
The
matter is referred to an assessment officer for the determination of a specific
award of costs, that should be made pursuant to the particular directions
articulated in paragraph 18, specifically:
a)
The applicant is entitled to double party-to-party costs
for services after January 31, 2006, as per Rule 407;
b)
No costs to be awarded for non-expert affidavit evidence;
c)
Travel expenses for applicant’s counsel should be included
in the award for costs;
d)
No costs to be awarded for bilingual articling student;
e)
Costs for preparation of written arguments can be included
in the calculation, as per item 15 of Tariff B; and
f)
The applicant will be entitled
to only half of the disbursements related to expert evidence provided by Mr.Yves
Simard and Dr. Ruth Corbin.
“Pierre Blais”
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