Docket: T-2094-02
Citation: 2003 FCT 602
Ottawa, Ontario, Tuesday, this 20th May, 2003
PRESENT: MADAM PROTHONOTARY MIREILLE TABIB
IN THE MATTER OF Section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13
AND IN THE MATTER of an Appeal from a Decision of the Registrar of Trade-marks
dated October 16, 2002 to expunge Registration No. 368,206
for the trade-mark WOOLWORTH pursuant to Section 45
BETWEEN:
FOOTLOCKER GROUP CANADA INC.
formerly VENATOR GROUP CANADA INC.
Applicant
- and -
R. STEINBERG
- and -
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER AND ORDER
[1] In the context of a Notice of Application on appeal from a decision of the Registrar of Trade-Marks, the Applicant seeks an extension of time in which to file the Applicant's record.
[2] The Applicant's affidavit in support of its application was served on January 16, 2003. The Respondent neither filed an affidavit nor cross-examined the Applicant's affiant, so that the Applicant's record was due to be filed by Friday, March 28, 2003. On April 3, 2003, the Respondent advised the Applicant that the deadline had passed. On April 4, the Applicant dispatched its Application record and authorities by courier, for delivery to the Respondent on Monday, April 7, 2003. The Applicant requested the Respondent's consent to an extension of time to file the record, advising that the deadline had been missed by reason of the Applicant's counsel having inadvertently failed to enter the deadline of March 28th in his diary system. The Respondent not only denied consent, but vigorously opposes the Applicant's motion for an extension of time.
[3] The four criteria for granting an extension of time, as set out in Canada (Attorney General) v. Hennelly (1999), 244 N.R. 399 (F.C.A.) are well known:
1. A continuing intention to pursue his or her application;
2. that the application has some merits;
3. that no prejudice to the Respondent arises from the delay; and
4. that a reasonable explanation for the delay exists.
The Respondent takes issue with the Applicant's fulfilment of the second and fourth criteria of this test.
Most of the Respondent's arguments are centred on the deficiencies of an earlier motion filed by the Applicant for an extension of time, dated April 4, 2003. After the Respondent had served and filed a motion record pointing out that the Applicant had not substantially addressed those two issues, the Applicant wholly abandoned its motion and filed the motion record now before the Court. I find the Respondent's argument arising out of that earlier motion to be irrelevant and without merit. That motion may have been deficient, but it has been withdrawn without having been ruled upon. Unless a direct contradiction exists between the facts as stated in the earlier motion and the present motion, any inadequacies the former may have had has no bearing on the merits of the latter. Any grievance the Respondent may have resulting from the filing and subsequent abandonment of that motion has its remedy in the costs provision set out in Rule 402.
Turning to the merits of the motion presently before the Court, the Respondent submits that the Applicant does not meet the second criteria for an extension of time because the affidavit filed in the support of the Applicant's motion is silent on the issue of whether the application has some merit. I disagree. The affidavit of Tonia Pedro filed in support of the motion refers to and attaches the affidavits of Ronald Stinson sworn December 15 , 2000 and January 15, 2003. The written representations refer to those affidavits and submit and that they contain sufficient information showing the use of the Trade-Mark during the relevant period, such that would justify this Court in allowing the Applicant's appeal. I find that the evidence submitted on the Applicant's motion and the argument made in its written representations are amply sufficient to raise an arguable issue and to meet the second criteria of the test in Hennelly.
As regards the explanation for the delay, the Respondent urges the Court to take a strict view of this Court's decisions in Chin v. Canada (Minister of Employment and Immigration) (1993) F.C.J. No. 1033, Canada (Attorney General) v. Hennelly (1995) F.C.J. No. 320 and Canada (Minister of Citizenship and Immigration) v. Lie (2002) F.C.T. 457 and to hold that the inadvertence of counsel can never constitute a reasonable explanation for delay. I cannot agree. Inadvertence may take many forms and each must be considered on its own merits. As well, the circumstances of each case play an important role in the Court's assessment of whether an inadvertent error can be excused. I note, in particular, that in both Hennelly and Lie, the error was that of the Crown acting against self -represented individuals, a factor which appears to have weighed heavily in the Court's consideration. The present case could not be in starker contrast. Both parties are represented by sophisticated and experienced counsel, of whom one would expect a certain level of professional courtesy, and more importantly, an economy of proceeding consistent with achieving the best interest of their clients. I find that the Respondent's opposition to the Applicant's motion, for a minor delay clearly explained by a genuine inadvertence in entering the deadline in counsel's diary system, has displayed neither.
In conclusion, I find that the Applicant has met the criteria for an extension of time to file its Application Record and the Applicant's motion will be granted.
As regards the issue of costs, although Rule 410(2) would normally apply, I find that the Respondent's opposition was not justified and accordingly, there shall be no costs on the motion.
ORDER
THIS COURT ORDERS THAT:
1. The time in which the Applicant is to serve and file its Application Record is extended to seven (7) days from the date of this Order.
2. There shall be no costs on this motion.
"Mireille Tabib"
______________________________
Prothonotary
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2094-02
STYLE OF CAUSE: FOOTLOCKER GROUP CANADA INC. v.
R. STEINBERG ET AL.
MOTION DEALT WITH IN WRITING WITHOUT THE APPEARANCE OF PARTIES
REASONS FOR ORDER AND ORDER : MADAM PROTHONOTARY TABIB
DATED: MAY 20, 2003
WRITTEN REPRESENTATIONS BY:
ROSE MARIE PERRY FOR THE APPLICANT
RICHARD UDITSKY FOR THE RESPONDENT
R. STEINBERG
SOLICITORS OF RECORD:
GOWLING LAFLEUR HENDERSON LLP FOR THE APPLICANT
OTTAWA
MENDELSOHN FOR THE RESPONDENT
MONTRÉAL R. STEINBERG