Ottawa, Ontario, June 2, 2006
PRESENT: The Honourable Mr. Justice Phelan
BETWEEN:
and
REASONS FOR ORDER AND ORDER
[1] The Defendant's motion to strike all or parts of certain affidavits is brought in the context of litigation seeking an injunction to prevent the Defendant from infringing the Plaintiff's trademark CAVALIA by using the mark AVAIA. This motion was argued immediately before hearing the Plaintiff's motion for an interlocutory motion.
[2] The motion relates to (a) the affidavit of Alexandra Scott (Scott Affidavit), a registered trade mark agent in the Plaintiff's counsel's office; (b) portions of the affidavit of Steven Nowack (Nowack Affidavit), a business adviser to the Plaintiff; and (c) an exhibit purportedly part of the affidavit of Chantel Patenaude (Patenaude Affidavit), a witness for the Plaintiff.
Scott Affidavit
[3] The Scott Affidavit, prepared by a trade mark agent working in the counsel's firm, describes searches made, records the results thereof, underlines the important parts of the search results (from the Plaintiff's perspective) and then goes on to outline what is clearly her opinion of how the two marks are confusing.
11. I note that the words AVAIA and CAVALIA:
(a) sound very similar;
(b) have the same number of syllables; and
(c) have the same vowels and both contain the letter "V".
12. I also note that the styling of both the Unregistered AVAIA Mark and the CAVALIA Trade-Mark:
(a) Use stylized letters with uneven borders;
(b) Use letters embellished or decorated with a drawing (in CAVALIA's case a horse's head, in AVAIA's case - a star); and
(c) Use letters in heavy characters.
[4] The Defendant asserts that the Scott Affidavit be struck as being contrary to Rule 82:
| 82. Except with leave of the Court, a solicitor shall not both depose to an affidavit and present argument to the Court based on that affidavit. |
82. Sauf avec l'autorisation de la Cour, un avocat ne peut à la fois être l'auteur d'un affidavit et présenter à la Cour des arguments fondés sur cet affidavit. |
[5] The Defendant also relies on the Federal Court of Appeal's decision in Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada, a division of Hyundai Motor America, [2006] F.C.J. No. 539 (QL); 2006 FCA 133 where the Court required the law firm to appoint new counsel to argue an aspect of the litigation where the evidence was provided by employees of the law firm. The Court held that it is not good practice to have a law firm's employees act as investigators and to give opinions on the result of their activities.
[6] The Court of Appeal also recognized that the use of affidavits sworn by employees of the law firm may be acceptable in limited circumstances and that some of the factors to consider when determining what to do when these circumstances arise are:
a) the state of proceedings;
b) the likelihood that the witness will be called;
c) the good faith (or otherwise) of the party making the application;
d) the significance of the evidence to be led;
e) the impact of removing counsel on the party's right to be represented by counsel of choice;
f) whether trial is by judge or jury;
g) the likelihood of a real conflict arising or that the evidence will be "tainted";
h) who will call the witness if, for example there is a probability counsel will be in a position to cross-examine a favourable witness;
i) the connection or relationship between counsel, the prospective witness and the parties involved in the litigation.
[7] It might unnecessarily complicate litigation if purely objective or uncontroverted facts could not be put in evidence from an employee of a law firm. On the other hand, as here, where there is opinion evidence from the law firm employee on the very issue in dispute - the confusion between the two marks - it is not acceptable to submit evidence from that source. To be direct, it is irrelevant opinion evidence, unlikely to persuade a judge as to confusion, it could open to attack the client's solicitor-client privilege, and may adversely affect the client's claim.
[8] In the present case, paragraphs 11 and 12 fall within this objectionable evidence. They will be struck. The Defendant objects to paragraphs 7, 8 and 10 as well because they contain less than objective statements prefaced with either "I note" or "I understand". These are comments to give context to the objective evidence and I cannot conclude that they fall within the type of evidence to which Cross-Canada Auto Body Supply (Windsor) Ltd., above, was directed.
Nowack Affidavit
[9] Mr. Nowack, a business advisor to the Plaintiff, attested to the advice he gave the Plaintiff on setting up a show in the Niagara Falls area. In paragraph 7 of his affidavit, Mr. Nowack states that Sandy Castonguay (who was not an employee of the Plaintiff) "indicated to [Mr. Nowack] that he believed it was curious that the show name was so similar to CAVALIA". In paragraph 9 of the Nowack Affidavit, Mr. Nowack states that both his wife Melissa Frishling and a Rona Kayback "... both believed that show to be a CAVALIA show".
[10] The Defendant contends that these portions of the affidavit offend Rule 81(1) because they do not contain the statement that the deponent was informed and believed nor does it disclose the grounds for the belief. Therefore the Defendant asks that these portions of the affidavit be struck.
[11] The Plaintiff says that the deponent clearly believed the statements since he swore an affidavit on those facts and he discloses the source of his information - the third party. The Plaintiff says that any defect goes to evidentiary weight.
[12] I am not persuaded that the absence of the catch-words "I am informed by X and do verily believe ..." is fatal to the admissibility of the hearsay evidence. In R. v. Smith, [1992] 2 S.C.R. 915, the Supreme Court of Canada took a more pragmatic approach to the hearsay rule.
[13] In my view, the evidence is admissible but an adverse inference must be drawn by the failure of the Plaintiff to provide first-hand evidence on the critical issue of confusion. There is a real prejudice visited on the Defendant by its inability to challenge this hearsay evidence. The Plaintiff has to live with the consequences of using hearsay evidence.
[14] The litigation, or at least the build-up to it, started in March 2006. There is no evidence before the Court that satisfactorily explains why hearsay rather than direct evidence had to be used in this interlocutory proceeding.
Patenaude Affidavit
[15] Patenaude, a resident of Quebec, swore an affidavit as to her confusion between CAVALIA and AVAIA when she picked up an AVAIA brochure which she thought was CAVALIA's advertising. The copy of the brochure was inadvertently not attached to her affidavit as an exhibit. Because she lived outside Quebec City and due to the Victoria Day long weekend, there was delay in remedying this evidentiary omission. The Defendant wants the exhibit struck; the effect of which is to render the affidavit virtually meaningless.
[16] The very same brochure was contained in one of the Defendant's affidavits. While the Defendant says that when it cross-examined Patenaude, it did not have the specific brochure to which she referred, the Defendant cannot point to any real prejudice suffered. It had the document and must have known to what she was referring.
[17] This is a form over substance argument, which I dismiss.
Conclusion
[18] Therefore an order will go:
1. Striking paragraph 11 and 12 of the Scott Affidavit;
2. Dismissing the motion to strike portions of the Nowack Affidavit subject to the adverse inference to be drawn under Rule 81(1); and
3. Dismissing the motion to strike all or part of the Patenaude Affidavit, in particular Exhibit A to the affidavit.
[19] Since success is split, costs will be in the cause.
ORDER
IT IS ORDERED THAT:
1. Paragraphs 11 and 12 of the Scott Affidavit will be struck;
2. The motion to strike portions of the Nowack Affidavit, subject to the adverse inference to be drawn under Rule 81(1), will be dismissed;
3. The motion to strike all or part of the Patenaude Affidavit, in particular Exhibit A to the affidavit, will be dismissed; and
4. Costs will be in the cause.
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-830-06
STYLE OF CAUSE: VOLTIGE INC.
and
CIRQUE X INC.
PLACE OF HEARING: Toronto, Ontario
AND ORDER: Phelan J.
APPEARANCES:
| Ms. Julie Thorburn Ms. Emily Larose
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| Mr. Henry Lue Ms. Sangeetha Punniyamoorthy
|
SOLICITORS OF RECORD:
| CASSELS BROOK & BLACKWELL LLP Barristers & Solicitors Toronto, Ontario
|
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| DIMOCK STRATTON LLP Barristers & Solicitors Toronto, Ontario
|