Date: 19980708
Docket: T-2432-97
OTTAWA, Ontario, this 8th Day of July, 1998
PRESENT: THE HONOURABLE MR. JUSTICE MacKAY
IN THE MATTER OF an Appeal pursuant to Section 56
of theTrade-marks Act R.S.C. 1985, c.T-13 from a Decision
of the Registrar dated September 10, 1997, rejecting the Opposition
by Garbo Creations Inc. to Canadian Trade-mark Application
No. 708,840 for the mark GRETA GARBO & Design filed by
Harriet Brown & Company Inc.
BETWEEN:
GARBO GROUP INC.
Appellant
- and -
HARRIET BROWN & COMPANY INC. and
THE REGISTRAR OF TRADE-MARKS
Respondents
UPON motion dated the 11th day of June, 1998, on behalf of the Respondent, Harriet Brown & Company Inc. for:
1. An Order setting aside the Amended Order of Peter A.K. Giles, Associate Senior Prothonotary, dated June 1, 1998 insofar as that Order permits cross-examination on the Affidavits of Ms. Joan Harting Barham on her Affidavit sworn January 22, 1998 and Mr. Kevin O'Neil on his Affidavit sworn January 28, 1998;
2. Such further and other relief as to this Honourable Court may seem just;
3. Costs of this motion;
UPON hearing counsel for both parties in Toronto on June 22, 1998, when decision was reserved, and upon consideration of submissions then made;
O R D E R
IT IS HEREBY ORDERED THAT:
1. The application is dismissed, but the extension of time approved by the Amended Order of Giles, A.S.P., dated June 1, 1998, shall commence to run from the date of this Order.
W. Andrew MacKay
Judge
Date: 19980708
Docket: T-2432-97
IN THE MATTER OF an Appeal pursuant to Section 56
of theTrade-marks Act R.S.C. 1985, c.T-13 from a Decision
of the Registrar dated September 10, 1997, rejecting the Opposition
by Garbo Creations Inc. to Canadian Trade-mark Application
No. 708,840 for the mark GRETA GARBO & Design filed by
Harriet Brown & Company Inc.
BETWEEN:
GARBO GROUP INC.
Appellant
- and -
HARRIET BROWN & COMPANY INC. and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER
MacKAY J.:
[1] The Respondent Harriet Brown & Company Inc., ("Harriet Brown") applies for an order setting aside the Amended Order of Giles, A.S.P., dated June 1, 1998 insofar as that order permits cross-examination on the affidavits of Ms. Joan Harting Barham, sworn January 22, 1998 and the affidavit of Kevin O'Neil sworn January 28, 1998.
[2] The application arises in proceedings preparatory to the hearing of the appellant's appeal from a decision of the Trade-Marks Opposition Board which on September 10, 1997 rejected the appellant's opposition to registration of trade-marks sought by the respondent Harriet Brown. The appeal by Garbo was initiated by Notice filed November 10, 1997, with supporting affidavits.
[3] Harriet Brown, in response to the appeal, filed and served its reply and supporting affidavits of Ms. Joan Harting Barham and Kevin O'Neil, and later filed, with consent, affidavits of Marc Andre Huot and Scott Reisfield. Those affidavits were served and filed at the end of January 1998.
[4] In February 1998 counsel for Garbo indicated intention to file three further affidavits in reply and on February 27, 1998 served those affidavits and requested consent to filing those, and advised of a proposed motion to permit cross-examination on the affidavits of Ms. Harting Barham and of Mr. O'Neil.
[5] At the time the appeal by Garbo was initiated and until April 25, 1998 the Federal Court Rules then applicable permitted cross-examination on affidavits in a trade-mark appeal proceeding only with leave of the Court (then Rule 704(6)). In practice leave was restricted to cases of ambiguity in an affidavit and leave for cross-examination was limited to the matter considered ambiguous. Moreover cross-examination could not be undertaken before all affidavits of the party applying for leave to cross-examine, were filed. There was no time limit for applying for leave to cross-examine.
[6] In March, on the 12th and 27th, counsel for Garbo wrote to counsel for Harriet Brown renewing the request for consent to file the supplementary affidavits in reply but counsel for the respondent Harriet Brown advised by telephone late in March that he did not yet have instructions about the requested consent. On April 13, counsel for Garbo wrote again seeking consent and specifically requesting that it be understood delay in applying would not be pleaded in response to any application for leave to cross-examine if that were necessary when the Federal Court Rules 1998 came into force on April 25, 1998. On April 27 after the new Rules were in effect, counsel for Harriet Brown advised that consent to filing further affidavits was refused.
[7] Thereafter on May 11 Garbo filed a motion returnable on consent, on May 25, 1998, seeking an order for leave to file the three supplementary affidavits, which filing Harriet Brown had finally refused to consent to on April 27, 1998, and also seeking an order for an extension of time to cross-examine Ms. Harting Barham and Mr. O'Neil on their affidavits.
[8] Under the Rules effective April 25, 1998, there is no limitation on the right to cross-examine on affidavits filed in proceedings on appeal of a Trade-Mark Board decision. Rather, in those proceedings as in all other motions, Rule 83 permits cross-examination without the necessity for leave, to be completed within 20 days of filing of an affidavit. The Rule now provides:
83. A party to a motion or application may cross-examine the deponent of an affidavit served by an adverse party to the motion or application.
83. Une partie peut contre-interroger l'auteur d'un affidavit qui a été signifié par une partie adverse dans le cadre d'une requête ou d'une demande.
[9] Other provisions in the Rules, 1998, of relevance here include:
8. (1) On motion, the Court may extend or abridge a period provided by these Rules or fixed by an order.
(2) A motion for an extension of time may be brought before or after the end of the period sought to be extended.
8. (1) La Cour peut, sur requête, proroger ou abréger tout délai prévu par les présentes règles ou fixé par ordonnance.
(2) La requête visant la prorogation d'un délai peut être présentée avant ou après l'expiration du délai.
308. Cross-examination on affidavits must be completed by all parties within 20 days after the filing of the respondent's affidavits or the expiration of the time for doing so, whichever is the earlier.
308. Toute partie qui désire contre-interroger l'auteur d'un affidavit le fait dans les 20 jours suivant le dépôt des affidavits du défendeur ou dans les 20 jours suivant l'expiration du délai prévu à cette fin, selon celui de ces délais qui est antérieur à l'autre.
501. (1) Subject to subsection (2), these Rules apply to all proceedings, including further steps taken in proceedings that were commenced before the coming into force of these Rules.
501. (1) Sous réserve du paragraphe (2), les présentes règles s'appliquent à toutes les instances, y compris les procédures engagées après leur entrée en vigueur dans le cadre d'instances introduites avant ce moment.
[10] The appellant's motion was heard by Mr. Giles, Associate Senior Prothonotary, who, after hearing counsel, ordered that Garbo would be permitted cross-examination on the affidavits of Ms. Harting Barham and Mr. O'Neil. In his Amended Order dated June 1, 1998. Mr. Giles ordered as follows:
IT IS HEREBY ORDERED THAT: because there is patent ambiguity in the affidavit of Kevin O'Neil clarification is necessary. Under the previous procedure where there was cross-examination only with leave the cases indicated clarification by supplementary affidavit was preferred over cross-examination. Under the new Rules there is cross-examination as of right if completed in time and supplementary affidavits can be filed only with leave. In this case time has run for cross-examination.
In providing for clarification it appears to me that the intention in the Rules is to prefer cross-examination over supplementary affidavit. Therefore the time for completion of cross-examination should be extended and the motion for leave to file affidavits is dismissed. The time for cross-examination of the Respondents affidavits is extended for 21 days or such longer time not to exceed 60 days as counsel may agree.
The Issues
[11] It is urged by counsel for Harriet Brown that Mr. Giles erred in law by applying the wrong test to determine whether an extension of time should be granted. It is said that he applied the test applicable under the old Rules, that is, whether there was ambiguity in one or both of the affidavits in issue. Having found ambiguity in the affidavit of Mr. O'Neil, a matter not raised by the motion on behalf of Garbo, but not having found any ambiguity in the affidavit of Ms. Harting Barham, he then ordered leave to cross-examine on both affidavits without the limitation applicable under the former Rules in the scope of cross-examination.
[12] In the course of argument I raised with counsel for the parties what the appropriate test may be for an extension of time, where that is sought in regard to an opportunity to cross-examine. I invited counsel to address the possibility that the well established test in Grewal v. Minister of Employment and Immigration, [1985] 2 F.C. 263 (F.C.A.) might be appropriately applied. I am grateful to counsel for their helpful comments.
[13] In my opinion the new Rules are applicable in disposing of this application, as they were in the disposition of the motion for an extension of time by Mr. Giles, in accord with Rule 501(1).
[14] Under the 1998 Rules an extension of time was here necessary since the 20 days specified for cross-examination as of right on an affidavit had long since passed when the motion was filed on May 11 by Garbo. In accord with Rule 308 that time ran from the date of filing of the affidavit in issue. The limitation on the scope of cross-examination, to matters said to be ambiguous, applicable under former Rule 704(6), in my view, is no longer applicable in the case of cross-examination on affidavits in these proceedings. As in the case of any other motion, cross-examination on the affidavit is not limited by the Rules.
[15] The only real issue before the Associate Senior Prothonotary in relation to cross-examination on the affidavits in issue, was whether an extension of time should be granted for that examination. The appropriate test was not whether one or both of the affidavits was ambiguous in part, or whether under former or new Rules cross-examination was to be given preference to supplementary affidavits. If either of those can be said to be the basis of the Amended Order of Giles, A.S.P., then the reason for his order, in my respectful opinion, is in error.
[16] But that does not end the matter. If I am right, the appropriate test here applicable is the test for extending time in other matters, established by Grewal, supra. In my opinion on the facts of this case it is clear that Garbo intended to cross-examine on the affidavits in question but was not free to do so without obtaining leave, as it was required to do, prior to April 25, 1998, until it had filed all its evidence. It sought to accomplish the latter with consent, but ultimately that was denied. Garbo then applied for an extension of time to cross-examine and for leave to file supplementary affidavits.
[17] In the circumstances of this case it cannot, in fairness, be said that Garbo delayed in applying once it was clear that its desired evidence would not be filed without an order of the Court.
[18] Finally, the extension of time, in my opinion does not prejudice the interests of Harriet Brown. It is said those interests are prejudiced if an order now permits unlimited cross-examination rather than limiting it to the ambiguous matter found by Mr. Giles in the affidavit of Mr. O'Neil, but that is not prejudice in the usual sense. That difference arises solely by application of the new Rules rather than the old. Harriet Brown is in the same position as any other party affected by application of the new Rules. That is not prejudice in a legal sense. An extension of time for cross-examination is now provided for by the Rules in an appropriate case.
[19] In the result, it is my opinion that while the reason underlying the Amended Order of Giles, A.S.P., dated June 1, 1998, may be said to be in error, insofar as it is based upon finding ambiguity in one or both of the affidavits in question, the result of the Order cannot be said to be in error in the proper exercise of discretion in granting an extension of time for cross-examination. For that exercise the appropriate test is that set out in Grewal, supra. Applying that test it cannot be said that the Order in question is in error in its direction to extend the time for cross-examination.
[20] Subject only to further extending the application of that Amended Order, so that the extension of time runs from the date of the order now issued, the appeal of the Amended Order is dismissed.
W. Andrew MacKay
Judge
OTTAWA, Ontario
July 8, 1998
FEDERAL COURT OF CANADA TRIAL DIVISION
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-2432-97
STYLE OF CAUSE:Garbo Group Inc. v. Harriet Brown & Company Inc. et al.
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: June l, 1998
REASONS FOR JUDGMENT OF MACKAY, J.
DATED: July 8, 1998.
APPEARANCES:
Keri Johnston
C. Michelle Nelles FOR APPELLANT
Mark Evans FOR RESPONDENT
SOLICITORS OF RECORD:
Malcolm Johnston & Associates Toronto, Ontario
Dimock Stratton, Clarizio
Toronto, Ontario FOR APPELLANT
Smart & Biggar
Toronto, Ontario FOR RESPONDENT