Date: 20040625
Docket: T-64-02
Citation: 2004 FC 915
Ottawa, Ontario, June 25, 2004
Present: The Honourable Mr. Justice Blais
BETWEEN:
CANADA POST CORPORATION
Applicant
and
UNITED STATES POSTAL SERVICE
Respondent
REASONS FOR ORDER AND ORDER
[1] This motion is for:
1. An order granting the applicant leave to serve and file a further amended notice of application, in terms of the draft further amended notice of application attached as schedule "A" hereto, within 7 days of the order of the Court;
2. An order granting the applicant leave to file additional affidavits in support of the new allegations raised in the further amended notice of application;
3. In the event that the applicant is granted the relief set out in paragraph (1) and (2) above, a scheduling order for the remaining steps in the application, in terms of a draft scheduling order to be submitted on agreement of the parties within 10 days of the date of the order of the Court, or failing any such agreement, in terms to be set by the Court;
4. In the event that the applicant is not granted the relief set out in paragraphs (1) and (2) above, an order providing the applicant with an extension of time for serving and filing the applicant's record in this proceeding to 30 days from the date of the order of the Court;
5. Costs of this motion in the amount of $1500 to be payable forthwith;
6. Such further and other relief as this counsel may advise and as this Honourable Court may deem just.
[2] The applicant has admitted before the Court that his proposed amendment will bring a new issue before the Court, but suggests that this is necessary, given the special circumstances of an official mark.
[3] In fact, the new issue is identified in paragraph 4 of the proposed further amended notice of application "In respect of certain of the alleged official marks as identified below, the request by the respondent for publication, and the acceptance of the alleged official marks for publication was contrary to public order, because the official marks in question were and are identical, or essentially identical, to terminology in common use by other postal authorities to describe various postal products and services, some of which have been incorporated in the documentation of the Universal Postal Union ("UPU"), an international union of postal authorities, as generic terms, all as more specifically set out as follows . . . " [my emphasis]
[4] In my view, those elements were known by the applicant when they filed their notice of application, as was admitted by counsel for the applicant, and as was also admitted through various documents filed, including Mr. Dennis Jarvis' affidavit dated January 7, 2003.
[5] I have no hesitation to conclude that there was some negligence on the part of the applicant for not having brought up this issue in the first place when the notice of application was filed on January 11, 2002.
[6] Counsel for the applicant did admit that there was no real evidence to explain why it took two years and a half to bring this amendment.
[7] It seems also clear from the jurisprudence that the "applications for judicial review are summary proceedings that should be determined without undue delay. Consequently, the discretion of the Court to permit the filing of additional material should be exercised with great circumspection", Mazhero v. Industrial Relations Board (Canada) et al. (2002), 292 N.R. 187 (FCA) paragraph 5. [my emphasis]
[8] The applicant also requested from the Court, if allowed to amend the notice of application, to also be allowed to file new affidavits. On that particular point, the Federal Court of Appeal has already mentioned that filing of new material should be addressed with a very narrow approach:
. . . [B]y exception, Rule 312 allows a party, with leave of the Court, to file additional affidavits. Under that rule, the Court may allow the filing of additional affidavits if the following requirements are met:
I) the evidence to be adduced will serve the interests of justice;
ii) the evidence will assist the Court;
iii) the evidence will not cause substantial or serious prejudice to the other side (see Eli Lilly and Co. v. Apotex Inc. (1997), 76 C.P.R. (3d) 15 (F.C.T.D.); Robert Mondavi Winery v. Spagnol's Wine & Beer Making Supplies Ltd. (2001), 10 C.P.R. (4th) 331 (F.C.T.D.)).
[9] Further, an applicant, in seeking leave to file additional material, must show that the evidence sought to be adduced was not available prior to the cross-examination of the opponent's affidavits. Rule 312 is not there to allow a party to split its case and a party must put its best case forward at the first opportunity (see Salton Appliances (1985) Corp. v. Salton Inc. (2000), 181 F.T.R. 146, 4 C.P.R. (4th) 491 (T.D.); Inverhuron & District Ratepayers' Assn. v. Canada (Minister of Environment) (2000), 180 F.T.R. 314 (T.D.)).
[10] . . . [S]econdly, it is clear that the respondent could not show that the evidence to be adduced had not been available in the past.
Lapointe Rosenstein v. Atlantic Engraving Ltd., Court File No. A-682-01, (F.C.A.), December 16, 2002.
[9] I would respond to this particular point by saying that obviously if a new issue is raised by an amendment to the notice of motion, I would agree that some material should be filed in support of this new ground. The decision of the Court of Appeal in Lapointe Rosenstein, supra, should be distinguished; the fact is, it was not possible for the applicant to submit that material because the issue was not yet part of the notice of application.
[10] In Ontario Assn. of Architects v. Assn. of Architectural Technologists of Ontario, 19 C.P.R. (4th) 417, reversing 9 C.P.R. (4th) 496 (FCA) at 430:
. . . Moreover, the Registrar may not refuse to give public notice of the adoption and use of a mark as an official mark for wares or services on the ground that it is merely descriptive, is not distinctive of the public authority's wares or services, or is liable to be confused with another's mark. Indeed, the Registrar has virtually no discretion to refuse to give notice of the adoption and use of a mark as an official mark, once the body making the request establishes that the statutory criteria have been met: Mihaljevic v. British Columbia (1988), 22 F.T.R. 59, 23 C.P.R. (3d) 80 at 88-89 (T.D.), affirmed (1990), 34 C.P.R. (3d) 54 (F.C.A.).
[11] This is probably the case that would convince me in the end that I should allow the amendment.
[12] In fact, Mr. Justice Muldoon, in this case, said:
One might differ from Mr. Justice Cattanach's views about the registrar's power of supervision if only in regard to verification of the authenticity of the putative public authority who, or which, requests the registrar to publish the notices. Again, assuming such authenticity be verified, one must think of the unthinkable. It is, no doubt, unthinkable, but if the Government of British Columbia were to seek an official mark falsely implying that west coast seafood products were processed and packed in Newfoundland, the registrar would be obliged to decline the request on a matter of public order. Again, if an official mark were so composed as to express an obscenity in the other official language, the registrar would be obliged to decline to publish the notice. Again, and always, the consideration is one of public order. In any such case, the public authority requesting a publication of such notice could apply to this court to resolve the dispute. Such is the independence of the Canadian judiciary that even The Queen (in an institutional rôle, at least) participates in litigation in her courts.
...
86 stylized by design, as in the tipped shamrock or pretzel configuration or in combination with "Expo", is equally distinctive, and was so, and is unexceptionable; but 86 in plain numerals is unregistrable and ought to be expunged. Even if plain 86 were promoted as an official mark it would go against public order to accord a monopoly even to the Sovereign or to a government over the mere numerals "86", which designate a year in the life of the world which simply must be lived or endured and cannot be avoided by the living. Too many corporations and too many models of automobiles and other machines and wares of all kinds will unavoidably need "86" in their designations and advertising to permit it to be sterilized by a trade mark monopoly. Public order demands that "86" be freely usable by all in numeral form without having to render it into the words "eight-six" or "quatre-vingt-six". Registering "86" is akin to recording a monopoly by registration of definite articles, "the" or "le" or "la", or the numeral "1", or any of the natural sequence of Arabic, if not Roman, numerals. They belong to all, the numerals and the numerical expression of the passing years. Since "86" and its companions belong to the public, it is a matter of public order that they be accessible. Since this mark was never registrable, it was clearly not registrable as of its date of registration, as asserted in para. 18(1)(a) of the Act. Trade mark "86", registration No. 307,702 shall be expunged.
[13] I already told the applicant that it seems to me somewhat negligent not to have raised this point in the first place, but nevertheless, the applicant has convinced me of the importance of raising the point of public order by reference to the jurisprudence cited above, and of the need to raise this point before the trial judge.
[14] On the other hand, I also have to consider if the respondent would suffer any harm if the application were granted.
[15] It seems that the only harm that would be suffered by the respondent is one of costs. Obviously, if the further amended notice of application is allowed, some material including affidavits will be filed, and it will be necessary to conduct cross-examination on those affidavits. Even though it is not the re-opening of the case, it means costs for both sides to get through it and some delay before the parties will be in a position to bring a request for a hearing.
[16] In his written representations, the respondent suggests that if the applicant is granted leave to file additional affidavits, the respondent should be granted leave to file further affidavit evidence in response to the applicant supplementary affidavits and to cross-examine in respect of such affidavits.
[17] Obviously, in fairness, I will allow both sides to file new affidavits and to go through the process of cross-examination.
[18] Regarding the costs, I will also take into consideration paragraph 34 of the written submissions of the respondent to determine the amount of costs that could be awarded in this case; that will also include the supplementary costs that will be borne by the respondent.
[19] The respondent also suggested and both parties, in my view, agreed with this suggestion, that a scheduling order for the remaining steps in the application in the form of a draft scheduling order should be submitted to the Court on the agreement of the parties within 10 days of the date of that order and failing such agreement, on terms to be set by the Court.
ORDER
Therefore, THIS COURT ORDERS that:
1. The motion is granted;
2. The applicant is awarded leave to serve and file the further amended notice of application, in terms of the draft further amended notice of application attached as schedule "A" hereto, within 7 days of the order of the Court;
3. The applicant is granted leave to file additional affidavits in support of the new allegations raised in the further amended notice of application;
4. The respondent is granted leave to file further affidavit evidence in response to the applicant's supplementary affidavits;
5. Both parties are allowed to cross-examine on such affidavits;
6. The applicant should file a scheduling order for the remaining steps in the applications in terms of a draft scheduling order to be submitted on agreement of the parties within 10 days of the date of the order of the Court, or failing such agreement, in terms to be set by the Court on a motion presented to the duty judge;
7. The respondent will be entitled to the costs incurred in respect of the preparation and filing of additional affidavit evidence by the respondent and the preparation of the respondent's affiants for and attendance at cross-examination, if any, which are established by the Court at $2,000 payable forthwith;
8. The respondent is also entitled to any other reasonable and related expenses and disbursements that should be assessed by the assessment officer pursuant to Rule 405 of the Federal Court Rules, 1998;
9. The respondent is also entitled to the costs of this motion established at $2,000 payable forthwith.
"Pierre Blais"
Judge
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-64-02
STYLE OF CAUSE:
CANADA POST CORPORATION
Applicant
and
UNITED STATES POSTAL SERVICE
Respondent
PLACE OF HEARING: Heard by video conference in Ottawa
DATE OF HEARING: June 24, 2004
REASONS FOR ORDER AND ORDER : The Honourable Mr. Justice Blais
DATED: June 25, 2004
APPEARANCES:
Mr. A. David Morrow FOR APPLICANT
Mr. Jeremy E. Want
Mr. Anthony Prenol FOR RESPONDENT
Mr. Antonio Turco
SOLICITORS OF RECORD:
Smart & Biggar FOR APPLICANT
55 Metcalfe Street, Suite 900
P.O. Box 2999, Station D
Ottawa, Ontario
K1P 5Y6
Blake, Cassels & Graydon LLP FOR RESPONDENT
Box 25, Commerce Court West
Toronto, Ontario
M5L 1A9