Date: 19981030
Docket: T-2707-97
| IN THE MATTER of Trade-Mark Application No. 746,009 |
for the trade-mark SAMS:VANTAGE filed on January 24,
1994 by Sterling Software, Inc.
BETWEEN:
CSC CONTINUUM INC.
(Successor to Vantage Computer Systems Inc.)
Appellant
| - and - |
STERLING SOFTWARE INC. and
THE REGISTRAR OF TRADE MARKS
Respondents
REASONS FOR ORDER
EVANS J.:
[1] On the day before the scheduled hearing of an appeal by CSC Continuum Inc. ("the appellant") from a decision of the Opposition Board rejecting the appellant's opposition to the registration of a trade mark by Sterling Software Inc. ("the respondent"), the appellant gave notice that it was withdrawing its appeal in view of the amendments made by the respondent to its trade mark application. The hearing was confined to the parties' requests for their costs in this motion.
[2] The appellant's opposition to the trade mark application had been based on the fact that the respondent had not specified sufficiently precisely the wares to which the trade mark was to be attached, and that there was a likelihood of confusion between the respondent's mark and a mark of the appellant's. The amendment made to its application by the respondent met the substantive concerns raised by the appellant in its submissions of fact and law in its appeal.
[3] Counsel for the appellant contended that the appellant was entitled to its costs of this motion on the ground that the respondent's amendment to its application was a victory for the appellant, and that in exercising its discretion to award costs, the Court may have regard to "the result of the proceeding": Federal Court Rules, 1998, Rule 400(3)(a).
[4] Counsel for the respondent, on the other hand, pointed out that Rule 402 provides that, unless otherwise ordered by the Court or agreed by the parties, where an appellant discontinues an appeal, as has happened in this case, the respondent is entitled to costs forthwith.
[5] Counsel for the respondent also put in evidence a letter dated January 23, 1998 in which he had advised counsel for the appellant that the respondent was prepared to amend its statement of wares in its trade mark application provided that the appellant's appeal was discontinued. The amendment to the application that the appellant was at that time prepared to make was identical to the amendment that it subsequently made, on the basis of which the appellant this week decided to discontinue its appeal. Counsel for the respondent accordingly relied on Rule 420 of the Federal Court Rules, on the ground that the respondent had made a written offer to settle that was not revoked. Counsel for the respondent also drew my attention to Rule 400(3)(e), which provides that, in exercising its discretion to award costs, the Court may consider "any written offer to settle."
[6] Counsel for the appellant argued that the offer made in the letter of January 23, 1998, required the appellant to acknowledge that, despite having amended its trade mark application, the respondent was free to apply the trade mark to wares other than those noted in the amended application. Therefore, the offer to settle that it rejected was less favourable than the amendment subsequently made unilaterally by the respondent, and so Rule 420 does not apply.
[7] As I read that letter, the respondent was prepared to make the amendment to the application provided only that the appellant discontinued the appeal. The further statement that the respondent was not prepared to limit either its use of the trade mark to the particular wares specified in the amended application, or its marketing of those wares, was simply a statement for the record, to which the appellant was not required to agree as a precondition to accepting the respondent's offer to amend its trade mark application.
[8] I accept that the appellant has obtained from the amendment made by the respondent substantially what it was seeking when it appealed from the Opposition Board, and that "the result of the proceeding" is a factor that favours the appellant. Moreover, given the reason for the discontinuance of the appeal, I do not think that the respondent is entitled to its costs by virtue of Rule 402. Nor do I think that Rule 420 is clearly applicable in this case, because no judgment has been rendered on the appeal.
[9] However, in exercising my discretion over costs I can take into account under Rule 400(3)(e) the fact that the respondent made a written offer to settle, which the appellant did not accept, and that the appellant has discontinued its appeal after the respondent has amended its application in exactly the same way that it proposed in its letter of January 23, 1998.
[10] Consequently, neither party has made out in full its claim for costs. However, in view of the importance attached by this Court to the expeditious and cost-effective resolution of disputes, the appellant's failure to accept the respondent's written offer of January 23, 1998 weighs more heavily with me than the fact that the appellant has ultimately achieved the substance of what it sought without the need to proceed with its appeal.
[11] Accordingly, I have decided that the respondent should be entitled to some of its costs in this motion, and pursuant to Rule 400(4) I award a lump sum of $3,500.00 to the respondent in lieu of assessed costs.
"John M. Evans"
Judge
TORONTO, ONTARIO
October 30, 1998
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-2707-97
| STYLE OF CAUSE: CSC CONTINUUM INC. |
(Successor to Vantage Computer
Systems Inc.)
- and -
| STERLING SOFTWARE INC. and |
THE REGISTRAR OF TRADE MARKS
DATE OF HEARING: THURSDAY, OCTOBER 29, 1998
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR JUDGMENT: EVANS J.
| DATED: FRIDAY, OCTOBER 30, 1998 |
APPEARANCES: Mr. David Allsebrook
For the Appellant
Mr. Dan Hitchcock
For the Respondent
Sterling Software Inc.
SOLICITORS OF RECORD: Fasken Campbell Godfrey
Barristers & Solicitors
| Toronto Dominion Bank Tower |
| P.O. Box 20, Suite 4200 |
| Toronto-Dominion Centre |
| Toronto, Ontario M5K 1N6 |
For the Appellant
Riches, McKenzie & Herbert
2 Bloor Street East, Suite 2900
Toronto, Ontario M4W 3J5
For the Respondent
Sterling Software Inc.
FEDERAL COURT OF CANADA
Date: 19981030
Docket: T-2707-97
Between:
| CSC CONTINUUM INC. |
(Successor to Vantage Computer Systems Inc.)
Appellant
- and -
| STERLING SOFTWARE INC. and |
THE REGISTRAR OF TRADE MARKS
Respondents
REASONS FOR ORDER