Federal Court Decisions

Date: 20070322

Docket: T-1093-06

Citation: 2007 FC 308

Montréal, Quebec, March 22, 2007

PRESENT:     Richard Morneau, Esq., Prothonotary

BETWEEN:

BROUILLETTE KOSIE PRINCE

Applicant

and

ORANGE COVE-SANGER CITRUS ASSOCIATION

CANADIAN REGISTRAR OF TRADE-MARKS

Respondent

REASONS FOR ORDER AND ORDER

[1]               This is a motion by the Applicant for essentially an order striking out some of the affidavits submitted by the Respondent and, in the alternative, for leave to cross-examine all affiants of the Respondent. In any event, the Applicant seeks an extension of time to produce its record under rule 309 of the Federal Courts Rules (the rules).

[2]               This motion takes place in the context of a judicial application filed by the Applicant on June 30, 2006 against a decision of the Canadian Registrar of Trade-Marks by which the Registrar refused to expunge the registration of the trade-mark POM-POM whose registered owner is the Respondent.

[3]               At the end of August 2006, within the time limits prescribed by rule 307, the Respondent served and filed the affidavits of Fay O’Brien, Richard French and Lee C. Bailey to supplement the Respondent’s evidence submitted before the Registrar.

[4]               The Applicant did not request or proceed with any cross-examination on the Respondent’s affidavits within the time limit prescribed by the rules which was September 18, 2006.  Shortly after September 18, 2006, the Applicant entered into some discussions with the Respondent regarding the relevancy of the O’Brien affidavit.

[5]               During those discussions, it would appear that the Applicant only secured, through two consent orders, its right to produce up to January 5, 2007 its Applicant’s record.  This deadline was not met by the applicant due apparently to the late failure of the negotiations between the parties and the ensuing holidays of the Applicant’s counsel.

[6]               On January 26, 2007, the Respondent received a notice of motion sent by the Applicant seeking to strike the O’Brien and French affidavits.  In its alternative relief sought, the Applicant sought an opportunity to cross-examine on the O’Brien, French, and Bailey affidavits.

[7]               It would appear that said notice of motion raised for the first time the Applicant’s wish to proceed with any cross-examinations.

[8]               Said motion did not proceed as such.  The motion at bar was only received by the Respondent on March 2, 2007 through the production by the Applicant of a full motion record.

Analysis

[9]               I shall deal first with the Applicant’s request in this judicial application to strike out the French and O’Brien affidavits produced by the Respondent.

[10]           The legal test for striking out a pleading in an action is whether it is plain and obvious that the claim discloses no reasonable cause of action: Inuit Tapirisat of Canada and National Anti-Poverty Organization v. Canada (Attorney General), [1980] 2 S.C.R. 735, at 740.

[11]           In a judicial review application, which is basically the nature of the proceeding herein, the test is as stringent and has been laid out in Bull (David) Laboratories (Canada) Inc. v. Pharmacia Inc. et al. (1994), 176 N.R. 48 at pages 53 to 55.

[12]           There, it was determined that a motion to strike out in a judicial review proceeding would only be allowed in exceptional cases:

[T]he focus in judicial review is on moving the application along to the hearing stage as quickly as possible. This ensures that the objections to the originating notice can be dealt with promptly in the context of consideration of the merits of the case.

. . .

This is not to say that there is no jurisdiction in this court either inherent or through Rule 5 [now Rule 4] by analogy to other rules, to dismiss in summary manner a notice of motion which is so clearly improper as to be bereft of any possibility of success. (See e.g. Cyanamid Agricultural de Puerto Rico, Inc. v. Commissioner of Patents (1983), 74 C.P.R. (2d) 133 (F.C.T.D.); and the discussion in Vancouver Island Peace Society et al v. Canada (Minister of National Defence) et al, [1994] 1 F.C. 102 (T.D.), at 120-121; 64 F.T.R. 127 (F.C.T.D.). Such cases must be very exceptional and cannot include cases such as the present where there is simply a debatable issue as to the adequacy of the allegations in the notice of motion.

[Underlining added.]

[13]           The Applicant’s position in regard to the striking out is that in a expungement proceeding under the Trade-marks Act, R.S.C., 1985, c.T-13, the evidence of use of the impugned mark has to be sworn by the registered owner of the mark and such evidence is to be limited to the use issue.

[14]           However, the decision of the Federal Court of Appeal in Registrar of Trade Marks v. Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d) 488 suggests that use evidence is acceptable as long as the evidence is furnished by the trade mark owner.

[15]           In that regard, the French affidavit comes from an agricultural cooperative which has the Respondent as a member.  It includes an invoice which appears to support the sale of fresh citrus fruit in association with the POM-POM Registration in Canada during the period in issue through the assistance of the cooperative Sunkist.  Accordingly, I am prepared to accept that this affidavit is submitted on behalf of the Respondent by one of its distributors by virtue of their commercial relationship.  Therefore, this affidavit shall not be struck out as it is not clear and obvious that it constitutes inadmissible evidence in a section 45 proceeding before this Court.

[16]           As to the O’Brien affidavit, although it does not pertain to the use issue, it pertains nevertheless to the identity of the party who requested the Registrar to issue a notice to the Respondent.  According to Brodenick and Basecom Rope v. Registrar of Trade-marks, 1971, 65 C.P.R. 209, such issue might be relevant when a request to the Registrar is made by a solicitor or a trade-marks agent without stating the name of the party on whose behalf the request is made.  This situation could perhaps present itself here and therefore it is not clear and obvious that the O’Brien affidavit is not relevant.  Therefore, under this motion said affidavit will not be struck out.

[17]           As for the extensions of time required here by the Applicant, the test in that regard is set out in Canada (A.G.) v. Hennelly (1999), 244 N.R. 399 (hereinafter Hennelly) where MacDonald J.A. stated:

The proper test is whether the applicant has demonstrated

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.

[18]           With respect to an extension of time to proceed to the cross-examination of each of the Respondent’s affiants, the fact that the intent to proceed with cross-examination was only announced by the Applicant at best on January 26, 2007 through a notice of motion - some four (4) months therefore after the prescribed delay - brings me to conclude that the Applicant has not demonstrated a continuing intention to pursue such course of action and that there is no reasonable explanation for the delay.  The wish by the Applicant to proceed with cross-examinations appears to the Court as an afterthought which should not be condoned.  The Hennelly test is simply not met here.

[19]           In addition, although the support affidavit and the written representations filed by the Respondent allege to ambiguities in the affidavits and the need therefore to proceed with cross-examinations, these allegations are in the nature of bare and bald allegations which point to no particular ambiguities which would justify a late right to cross-examinations.

[20]           As for the extension of time for the Applicant to produce its Applicant’s record, I am satisfied here that the intention to pursue same by the Applicant has been demonstrated and that no prejudice to the Respondent arises from the delay.  Although one could argue that given the aforementioned comments, the Applicant should have seen to produce its record earlier, I am satisfied that on balance, the Applicant should benefit from a relatively short extension to serve and file its Applicant’s record.

[21]            As to costs, since the Respondent is largely successful on this motion, they will go to it.

ORDER

1.                  The Applicant shall serve and file its Applicant’s record on or before April 10, 2007;

2.                  The Applicant’s motion is otherwise dismissed;

3.                  Costs go to the Respondent.

“Richard Morneau”

FEDERAL COURT

SOLICITORS OF RECORD

DOCKET:                                         T-1093-06

STYLE OF CAUSE:                         BROUILLETTE KOSIE PRINCE

Applicant

and

ORANGE COVE-SANGER CITRUS ASSOCIATION

CANADIAN REGISTRAR OF TRADE-MARKS

Respondent

PLACE OF HEARING:                   Montréal, Quebec

DATE OF HEARING:                     March 19, 2007

REASONS FOR ORDER AND ORDER:  PROTHONOTARY MORNEAU

DATED:                                            March 22, 2007

APPEARANCES:

SOLICITORS OF RECORD: