Date: 19980304
Docket: T-1518-97
B E T W E E N :
MAISON DES PÂTES PASTA BELLA INC.
Applicant
- and -
OLIVIERI FOODS LIMITED
Respondent
REASONS FOR ORDER
(Rendered from the Bench at Montréal, Québec
Tuesday, March 3, 1998)
HUGESSEN J.
[1] This is an appeal from a decision of the prothonotary dismissing the applicant's motion to introduce new and further evidence in these trademark expungement proceedings. The hearing of the application for trademark expungement was set by me in a telephone conference call with counsel on December 15, 1997. The hearing was set for today, March 3, 1998. The motion which was brought by the applicant before the prothonotary envisaged three broad categories of documentary evidence:
| 1) documents said to have been found, since the institution of these proceedings, by a former employee of the applicant; |
| 2) documents said to have been found, since the institution of these proceedings, by a predecessor in title to the applicant which is also an affiliated or related company; |
| 3) documents said to have been found very recently by a firm of solicitors who are solicitors for the applicant but are not its solicitors of record on this application. |
[2] Regarding categories 1) and 2) the prothonotary, Mr. Morneau, gave reasons which can be concisely summarized as falling under two heads. First he was not satisfied that the applicant had conducted a sufficiently thorough search of its records and those which it could reasonably be thought to control prior to the institution of these proceedings. Second, he was very much aware that the date of this hearing was coming on and he was of the view that the applicant had not acted with sufficient diligence after becoming aware of these documents. I might add that the motion before the prothonotary was served on the 12th of February of this year and was heard by him on the 23rd of February and dismissed the following day.
[3] I am prepared to approach this appeal on the basis that I can exercise my discretion de novo although I emphasize that I do not decide that this is a case where I should do so. I can only say that, with regard to those first two categories of documents, I am in entire agreement with the prothonotary and with the reasons which he gave and I would exercise my discretion in precisely the way in which he exercised his. To the reasons which he gave I would add this:
[4] On the cross-examination of the applicant's affiant it was revealed that these two categories of documents of which I speak were discovered and made known to the applicant and to the applicant's solicitor in early December 1997, that is to say prior to the hearing at which the date for this hearing was fixed. I find it unacceptable that time should have been allowed to run for as long as it did after the applicant knew that this hearing was fixed for this day and knew that it wanted to produce these documents. The attempt by the applicant and its counsel to invoke as an excuse for that inordinate and inexcusable delay the disastrous ice storm which struck the Montréal region on January 5, 1998 and in the days which followed is simply not acceptable. The motion should have been brought well before the ice storm took place.
[5] I turn now to the third category of documents, those which were discovered, as the applicant urges, by its solicitor (not the solicitor presently on record). In regard to that category, I must say, with due respect for the prothonotary, that I find his reasons to be somewhat obscure. However, on my own examination of the material which is before the Court, I have reached the conclusion beyond any doubt whatever that the disposition reached by the prothonotary was the correct one. In particular, I note three points:
| 1) I am not satisfied by the evidence and by the cross-examination of the applicant's affiant that the documents in issue were timely sought from the solicitors in question; |
| 2) The evidence as to the circumstances of the finding or discovery of these allegedly lost documents, which is, at best, second hand, is not satisfactory; |
| 3) In any event, the documents which are now sought to be produced from the solicitors files, which consist of an exchange of correspondence between solicitors for the two parties in the year 1990, are of very marginal relevance to these proceedings which, as I understand them, will turn on the question of first use of the trademark which is in issue. Such first use is claimed by the parties, each of them, to have occurred some time in the years 1982 or 1983. Correspondence between solicitors some seven or eight years later is of very little probative value on that question. |
[6] The appeal of the prothonotary's decision will be dismissed. I propose to make an order as to costs and would like to hear from counsel on that matter before entering the order.
[7] (Later) Having heard counsel on the question of costs, it is my view that the request by the respondent for costs on a solicitor and client scale has not been made out although I do think that this is a case where a substantial award of costs should be made. I accordingly will make an order for payment of costs in the lump sum of $3,500.00 which is to include tohe costs of the motion before the prothonotary and also the costs related to the cross-examination of the affiant on his affidavit.
"James K. Hugessen"
J.