Date: 20010111
Docket: T-1294-99
BETWEEN:
ROBERT MONDAVI WINERY
Applicant
-and-
SPAGNOL'S WINE & BEER MAKING SUPPLIES LTD.
Respondent
REASONS FOR ORDER
HENEGHAN J.
INTRODUCTION
[1] Robert Mondavi Winery (the "Applicant") appeals from the order of Associate Senior Prothonotary Giles (the "A.S.P.") made on November 20, 2000. By his order, delivered without written reasons, the A.S.P. dismissed a notice of motion seeking leave to file the affidavit of Anthony Gismondi.
[2] Spagnol's Wine & Beer Making Supplies Ltd. (the "Respondent") opposes the appeal and supports the ruling of the A.S.P.
FACTS
[3] The Applicant is a body corporate, incorporated under the laws of the State of California, United States of America ("United States"). It owns and operates five wineries in the United States. It sells its products throughout the United States and also exports its wines to many countries, including Canada. Some of the Applicant's products are labelled WOODBRIDGE.
[4] The Respondent manufactures wine and beers kits for consumer use in their homes. The Respondent's goods are not "finished" alcoholic beverages, but are kits which purchasers can use in making their own wine. One of the wine-making kits sold by the Respondent is named WOODBRIDGE ESTATES FROM OUR VINEYARD TO YOUR HOME. The Respondent sells its wine kits, including the WOODBRIDGE ESTATES FROM OUR VINEYARD TO YOUR HOME, in various retail stores across Canada.
[5] On November 24, 1999, the Applicant commenced its application for judicial review, seeking expungement of the trade-mark WOODBRIDGE ESTATES FROM OUR VINEYARD TO YOUR HOME & Design from the Trade-marks Register in Canada. The Applicant seeks an order that as of May, 1991, when the Respondent allegedly began using the trade-mark WOODBRIDGE ESTATES FROM OUR VINEYARD TO YOUR HOME & Design in Canada in association with wine-making kits, it was confusing with the Applicant's trade-mark WOODBRIDGE, which the Applicant had previously used in Canada in connection with wine.
[6] The Applicant filed the affidavit of Michael Beyer, Senior Vice-president and General Counsel of the Applicant, in support of its application. This affidavit, sworn on December 14, 1999, was filed on December 22, 1999. The Respondent filed the affidavits of Don Sproule and Keith Davis, each sworn on February 24, 2000, in response to the Applicant's affidavit evidence. These affidavits were served and filed on February 24, 2000. In his affidavit, Mr. Davis said that there was no prominent mention of the word WOODBRIDGE on the labels used by the Applicant, at least until 1992.1
[7] According to the Applicant, this position taken by the affiant of the Respondent put in issue the Applicant's use of the trade-mark WOODBRIDGE in Canada. The Applicant says that the Respondent's position on this point also put in issue the public perception in Canada of the association of the trade-mark WOODBRIDGE with the Applicant before the material date.
[8] Once the evidence had been filed by the parties, arrangements were made to conduct cross-examination on the affidavits that had been filed. In April 2000, Mr. Sproule and Mr. David, affiants for the Respondent, were cross-examined. In the course of the their cross-examination both Mr. Sproule and Mr. Davis were questioned about an article written by Mr. Anthony Gismondi, a wine critic for the Vancouver Sun. The article was published on April 26, 1989. Neither Mr. Sproule or Mr. Davis recognized the article and the line of questioning about it yielded little information.
[9] Although the Gismondi article was in the hands of the Applicant since early March, 2000, no steps were taken by the Applicant to seek leave to file a further affidavit as part of the cross-examination of the Respondent's affiants. An affidavit was obtained from Mr. Gismondi on June 24, 2000. Although the Applicant sought the consent of the Respondent to file this further affidavit, no consent was forthcoming. The Applicant then proceeded by way of notice of motion to obtain the leave of the Court to file this further affidavit.
[10] That notice of motion was heard before the A.S.P. on November 20, 2000. He dismissed the motion. Although no written reasons were provided, both parties appeared to agree on the basis for the order of the A.S.P. In the present motion, the Applicant says as follows:
| ... in exercising his discretion to dismiss the Applicant's motion, the A.S.P. stated from the bench that he was doing so because the Applicant had shown none of the following: that the Gismondi affidavit is material, there would be no prejudice to the Respondent, or that the Gismondi affidavit was not available to the Applicant prior to cross-examinations2. |
ISSUE
[11] The issue on this appeal is whether the decision of the A.S.P. to exclude the affidavit was "clearly wrong"; see Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425 at 452 (F.C.A.).
Applicant's Submissions
[12] The Applicant argues that the A.S.P. was clearly wrong in making his decision to exclude the Gismondi affidavit. At the same time, the Applicant agrees that the A.S.P. applied the correct principles and correctly understood the facts. However, the Applicant says that the A.S.P. reached the wrong conclusion and that necessarily means that he erred in law.
[13] Specifically, the Applicant says that the A.S.P. erred in failing to find that the Gismondi affidavit was material and relevant to the ultimate disposition of this application. Second, the Applicant argues that the A.S.P. erred on the issue of prejudice to the Respondent. The Applicant says there was no evidence of any prejudice to the Respondent. In light of these errors, the Applicant submits that its appeal should be treated as a hearing de novo on the merits of the original motion for leave to file the Gismondi affidavit.
Respondent's Submissions
[14] On the other side, the Respondent argues that there is no clear error in the decision of the A.S.P. and that the heart of the Applicant's argument is that the decision made on November 20, 2000 is unacceptable to the Applicant, but that is an insufficient basis for overruling the decision of the A.S.P. In the absence of a clear error of law, the Appeal Court should not interfere with the discretionary order under review.
ANALYSIS
[15] The present proceeding is an application taken under Part 5 of the Federal Court Rules, 1998. It is an expungement proceeding under the Trade-marks Act, R.S., c. T-10, s. 1 and pursuant to Rule 300(d), it proceeds by way of an application, governed by the Rules found in Part 5.
[16] The evidence on such an application is presented by way of affidavit. Rules 306 and 307 address respectively the filing of affidavits by the Applicant and Respondent. Rule 312 permits the filing of additional affidavits with leave of the Court.
[17] The conduct of this application is also subject to the Rules found in Part 3 of the Federal Court Rules, 1998. The Part 3 Rules are general rules applicable to all proceedings in the Federal Court of Canada. Rule 84(2) addresses the filing of affidavits after cross-examination has taken place and provides as follows:
| 84(2) A party who has cross-examined the deponent of an affidavit filed in a motion or application may not subsequently file an affidavit in that motion or application, except with the consent of all other parties or with leave of the Court. |
84(2) La partie qui a contre-interrogé l'auteur d'un affidavit déposé dans le cadre d'une requête ou d'une demande ne peut par la suite déposer un affidavit dans le cadre de celle-ci, sauf avec le consentement des autres parties ou l'autorisation de la Cour. |
[18] The present appeal has proceeded on the basis of the applicability of both Rules 312 and 84(2). As part of its submissions, the Applicant has argued that these Rules should be read in a manner which is mutually consistent.
[19] The Applicant submits that the general test for granting leave to file additional affidavits under Rule 312 is whether the additional material meets the following criteria:
| a. it will serve the interest of justice; |
| b. it will assist the Court; and |
| c. it will not seriously prejudice the other side. |
In that regard, the Applicant relies on the decisions of this court in Fogal v. Canada (1999), 161 F.T.R. 121 at 124 (F.C.T.D.) and Sierra Club of Canada v. Canada (Minister of Finance) (26 October 1999) Court File No. T-85-97 (F.C.T.D.) at paragraph 3.
[20] The Applicant submits that similar factors govern the exercise of discretion to grant leave to file a supplementary affidavit pursuant to Rule 84(2). The Applicant says that the additional material, sought to be filed pursuant to Rule 84(2), must meet the following test:
| a. whether it was available prior to cross-examination; |
| b. whether it is relevant to the case, and |
| c. whether it will not seriously prejudice the other side. |
The Applicant relies on the decisions in Ruggles v. Fording Coal Ltd., [1999] F.C.J. No. 906 at paragraph 6 (F.C.T.D.); Inverhuron & District Ratepayers' Assn. v. Canada (Minister of the Environment), [2000] F.C.J. No. 59 at paragraph 6; and Salton Appliances (1985) Corp. v. Salton Inc. [2000] F.C.J. No. 74 at paragraphs 17-18 (F.C.T.D.).
[21] In Salton Appliances, supra, Lemieux J. recently considered the cooperative effect of Rules 312 and 84(2). In my opinion, the two rules can work together but that does not change the fact that each rule is designed to address a different issue.
[22] Rule 312 applies when a party to an application seeks to file additional evidence in respect of that application. Rule 84(2) applies when a party seeks to file further affidavit material after cross-examination has taken place on the earlier affidavits filed. The admission of further affidavits in either case depends upon leave of the court and that leave requires consideration of the circumstances giving rise to the request. Although different tests have been recognized in relation to rules 312 and 84(2), these tests have some points in common, that is the question of prejudice and the need to serve the interests of justice.
[23] In the present case, the information sought to be introduced by way of the Gismondi affidavit was available to the Applicant prior to the cross-examination of the Respondent's affiants which took place in April 2000. The Applicant made a deliberate decision, for strategic purposes, to seek neither the consent of the Respondent to file this affidavit nor leave of the court, prior to the conduct of those cross-examinations. Instead, the Applicant chose to question the Respondent's affiants about their knowledge of the article written by Mr. Gismondi. Unfortunately for the Applicant neither of the Respondent's affiants were knowledgeable about the article. They were unable to answer any questions about it.
[24] It is reasonable to conclude that the materiality or relevance of this affidavit had been considered by the Applicant prior to making the strategic decision not to seek leave to file the affidavit prior to the cross-examinations which took place in April, 2000. There is no basis to find that the relevance of this affidavit has changed, merely because the Applicant chose not to file it at an earlier time.
[25] Notwithstanding the absence of written reasons from the A.S.P., it appears that he considered the relevance of the proposed affidavit and its role in these proceedings, and that he considered the question of prejudice to the Respondent, as well as the earlier availability of this evidence.
[26] The Respondent submits that it structured its case to meet the case put forward by the Applicant, as supported by the affidavit originally filed in support of that application. The Respondent says, in general terms, that it will suffer prejudice if the Applicant is now allowed to introduce further evidence. It appears that the A.S.P. agreed with those submissions.
[27] There is merit in the position taken by the Respondent on this appeal. There is no evidence on the record that Applicant will be prejudiced by the exclusion of this affidavit. On the contrary, it appears that the Applicant crafted its case initially without relying on the Gismondi affidavit.
[28] As a result, I am not persuaded that the A.S.P. was "clearly wrong" in the exercise of his discretion to dismiss the Applicant's motion for leave to file the Gismondi affidavit.
[29] The appeal is dismissed with costs.
J.F.C.C.
Ottawa, Ontario
January11, 2001
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1294-99
STYLE OF CAUSE: ROBERT MONDAVI WINERY v. SPAGNOL'S WINE & BEER MAKING SUPPLIES LTD.
PLACE OF HEARING: TORONTO
DATE OF HEARING: DECEMBER 11, 2000
REASONS FOR ORDER OF HENEGHAN, J.
DATED: JANUARY 11, 2001
APPEARANCES:
MICHAEL CHARLES FOR THE PLAINTIFF
ANDREW BRODKIN FOR THE DEFENDANT
SOLICITORS OF RECORD:
BERESKIN & PARR
TORONTO FOR THE PLAINTIFF
GOODMAN PHILLIPS & VINEBERG
TORONTO FOR THE DEFENDANT
__________________1 Affidavit of Keith Davis sworn February 24, 2000, Respondent's Record, page 87, paras. 25-26.