Federal Court of Appeal - Rosenstein v. Atlantic Engraving Ltd.

[1] This is an appeal of an order of the Trial Division dated November 21, 2001. Before the learned judge was an appeal by the respondent from a decision of the Registrar of Trade-marks who, on an application by the appellant under section 45 of the Trade-marks Act, ordered that the respondent's trade-mark AE & Design registered as no. 228, 684 be expunged from the register.

[2] Although satisfied that the respondent had transferred wares during the relevant period, the Registrar concluded that the respondent had failed to demonstrate the association of its trade-mark with the wares covered by the registration at the time of the transfer of the wares to its clients.

[3] The judge concluded that in respect of certain wares, namely medallions, chains, earrings, cuff links, bracelets, necklaces and brooches, the Registrar's decision was correct and that it should be maintained. However, with respect to the association of the trade-mark with the other wares, namely rings, wedding rings, stone rings, diamond rings and mountings, the judge decided to adjourn the hearing in order to allow the respondent thirty days to file a further and better affidavit.

[4] At paragraphs 6 and 7 of his reasons, the judge explains his decision to adjourn the matter in the following terms:

[6] As I reviewed the material it appeared that there may be sufficient evidence to satisfy the statutory criteria of use of the mark, and its association with the wares and did provide some notice of use to the transferee. Nevertheless, I had to conclude that the respondent's objections were valid. The affidavit of the applicant filed in support was poorly drafted and inept. Exhibits were not properly submitted.

[7] I was satisfied that had counsel for the applicant been more experienced in the field of trade-marks law, the deficiencies would not have arisen. To deprive the applicant of its trade-mark which may have been in use for twenty years, simply on a section 45 application because of ineptitude, as well, the respondent not acting for any particular commercial or competing enterprise, would be unfair.

[5] We should point out that there was no motion before the judge for leave to file a further and better affidavit. The judge, of his own volition at the end of the hearing, decided that it was in the interest of justice to adjourn the matter for the aforesaid purpose. In his view, since the respondent's failure to adduce satisfactory evidence stemmed from counsel's lack of experience in the field of trade-marks law, it was unfair to dismiss the appeal.

[6] This appeal pertains only to the judge's decision to adjourn the matter. For the reasons that follow, the appeal will be allowed.

[7] Before the judge was the affidavit of Robert Neuwirth dated May 7, 2001. The learned judge concluded that it was "poorly drafted and inept" and that the exhibits attached thereto had not been "properly submitted". As a result, the judge stated that the appellant's objections to the affidavit were valid. Hence, at the end of the hearing on November 21, 2001, there was no evidence capable of supporting an order reversing the Registrar's decision.

[8] Pursuant to rule 306 of the Federal Court Rules, 1998, an applicant has thirty days from the filing of its notice of application to file its supporting affidavits and exhibits (appeals under section 56 of the Trade-marks Act fall within Part 5 of the Rules entitled "Applications" (rules 300 to 334) and therefore must be commenced by way of a notice of application). By 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 (T.D.); Robert Mondavi Winery v. Spagnol's Wine & Beer Making Supplies Ltd. (2001), 10 C.P.R. (4^th) 331 (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. (4^th) 491 (T.D.); Inverhuron & District Ratepayers Assn. v. Canada (Min. of Environment) (2000), 180 F.T.R. 314 (T.D.)).

[10] We are satisfied, on the evidence, that there was no basis, either in fact or in law, to adjourn the matter in the way the learned judge did. Firstly, there was no motion before him for leave, under rule 312. Secondly, it is clear that the respondent could not show that the evidence to be adduced had not been available in the past. Thirdly, the basis upon which the judge relied to adjourn the matter, i.e. the lack of expertise of counsel in the field of trade-marks law, was, in our view, an improper basis. Had the judge refused to adjourn the matter as he ought to, he would have had no choice but to dismiss the appeal before him and confirm the Registrar's decision.

[11] The appeal will therefore be allowed with costs, the judgment of the Trial Division will be set aside and, giving the judgment that the Trial Judge ought to have given, the appeal by Atlantic Engraving Ltd. from the decision of the Registrar of Trade-marks will be dismissed with costs.

"Marc Nadon"

J.A.

FEDERAL COURT OF CANADA

APPEAL DIVISION

Date: 20021216

Docket: A-682-01

BETWEEN:

LAPOINTE ROSENSTEIN

Appellant

and

ATLANTIC ENGRAVING LTD.

Respondent

REASONS FOR JUDGMENT OF THE COURT

FEDERAL COURT OF CANADA

APPEAL DIVISION

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET: A-682-01

STYLE OF CAUSE: LAPOINTE ROSENSTEIN

Appellant

and

ATLANTIC ENGRAVING LTD.

Respondent

PLACE OF HEARING: Montreal, Quebec

DATE OF HEARING: December 16, 2002

REASONS FOR JUDGMENT OF THE COURT BY: NADON J.A.

CONCURRED IN BY: DÉCARY J.A.

LÉTOURNEAU J.A.

DATED: December 16, 2002

APPEARANCES:

Mr. Allen Israel

FOR THE APPELLANT

Mr. Baruch Pollack

FOR THE RESPONDENT

SOLICITORS OF RECORD:

Lapointe Rosenstein

Montreal, Quebec

FOR THE APPELLANT

Pollack, Machlovitch, Kravitz & Teitelbaum

Montreal, Quebec

FOR THE RESPONDENT