Date: 19980715
Docket: T-1458-95
IN THE MATTER of the Trade-marks Act, R.S.C. 1985,
c. T-13
| AND IN THE MATTER of the Trade-mark Registration No. 370,805 for ATP |
BETWEEN:
AIRCRAFT TECHNICAL PUBLISHERS,
Applicant,
- and -
ATP AERO TRAINING PRODUCTS INC.,
Respondent.
REASONS FOR ORDER
MR. JOHN HARGRAVE,
PROTHONOTARY
[1] The Applicant, an American company which uses the Trade-mark ATP in the business of producing and selling aviation manuals, libraries and other technical aviation material, seeks to have the Respondent's trade-mark ATP struck out in proceedings which the Applicant began in July of 1995. The Respondent filed a reply in September of 1995, but no affidavit material. The proceeding has languished since then, however the parties, since 1995, have tried to negotiate a settlement. No settlement having been reached and the matter now set to be heard at a date to be determined in September or October of 1998, the Respondent wishes both to file the affidavit of Reilly Burke and to cross-examine the Applicant's Caroline Daniels on her 10 July 1995 affidavit.
CONSIDERATION
Late Filing of the Burke Affidavit
[2] This application was filed under the pre-1998 Rules, which I will refer to as the old rules. When this motion came on for hearing the new 1998 Rules had just come into effect. While I refer to the old rules I have also applied new Rule 308, but in doing so I have applied procedure and have not curtailed any substantive rights.
[3] Old rule 1603(3) required that if the respondent chose to file any affidavits in response, the respondent had to file its affidavits within thirty days, which would have been late summer or early fall of 1995. Under the old rules a party to an application might cross-examine in a trade-mark matter only with leave (old rule 704(6)). New Rule 308, allowing cross-examination, as a right, within twenty days of the filing of the respondent's affidavits, cannot come into play unless the respondent first obtains leave to file its affidavit material, some three years late. The crux of the present issue is whether the Respondent ought to have leave to file its affidavit late: the right to cross-examine, under new Rule 308, would then follow, without need to apply for leave.
[4] Time requirements laid down by the rules of court are not merely targets to be attempted: they are rules to be observed, particularly when non-compliance with time limits might cause prejudice to one or more of the parties. But at the same time the overriding principle is that justice must be done.
[5] On this application, leave to file an affidavit late, I must consider the reasons for the delay and the intrinsic worth of the affidavit: see for example Canadian Parks and Wilderness Society v. Banff National Park (Superintendent) et al. (1994) 77 F.T.R. 218 at 222. There Mr. Justice MacKay paraphrased this requirement as one of relevance, admissibility and potential use to the court.
[6] The Court has also said that upon a request for leave to file a document out of time there must be a balancing of the seriousness of delay against the potential value of the affidavit: see for example the decision of Mr. Justice Strayer, as he was then, in Maxim's Ltd. v. Maxim's Bakery Ltd. (1991) 32 C.P.R. (3d) 240 at 242 (F.C.T.D):
| "The jurisprudence is clear that in an application for an extension of time under Rule 704(8), the court should take into account both the reasons for the delay and the intrinsic worth of the affidavits (i.e., relevance, admissibility, and potential use to the court). It has been said in some of the cases that both factors must be weighed together: see McDonald's Corp. v. Silcorp Ltd./Silcorp Ltée (1987), 17 C.P.R. (3d) 478 at pp. 479-80, 16 C.I.P.R. 107 (F.C.T.D.); Joseph E. Seagram & Sons v. Canada (Registrar of Trade Marks) (1988), 23 C.P.R. (3d) 283 at p. 284, 13 A.C.W.S. (3d) 36 (F.C.T.D.). Accepting this to be the correct approach for present purposes, I understand it to mean that one must still weigh the seriousness of the delay against the potential value of the affidavits and that either may outweigh the other.". |
[7] In Bio-Generation Laboratories Inc. v. Pantron I Corp. (1992) 48 F.T.R. 269 at 272, Mr. Justice Cullen referred to the Maxim's Bakery decision and then went on to say: "The applicant must show that there is a valid reason or an excusable reason for the delay and secondly, relevance and admissibility, whether it will be in the interests of justice". Here I would note that the Bio-Generation case involved an application for an extension of time within which to file affidavits.
[8] While time limits, as I have said, are to be observed, they are not absolutes: see for example DRG Inc. v. Datafile Ltd. and Registrar of Copyrights (1988) 14 F.T.R. 219 at 224, where Mr. Justice McNair observes, on an application for the late filing of an affidavit in a patent matter, that the court has discretion where circumstances warrant and no injustice will be occasioned and that: "one such special circumstance would be the situation where the parties themselves, as in the present case, chose to depart from the strict letter of the rule" (p. 224). Mr. Justice McNair went on to observe that "... the day is long past when an honest litigant can be tripped up and banished from the game merely by having taken a mistaken step in his litigation." (loc. cit.).
[9] The delay in this instance was to some degree mutual and here I note there were various attempts to reach a settlement. Yet the Applicant did, at several points, take steps to move the matter forward. The Applicant filed a record in July of 1996, which resulted in another attempt by the Respondent to settle. The Applicant tried twice to set the matter down for trial. Perhaps it was the most recent attempt to set the matter for a hearing which is the present concern on the part of the Respondent. The Applicant here refers to Keramchemie GmbH v. Keramchemie (Canada) Ltd. (1994) 56 C.P.R. (3d) 454 at 457 (F.C.T.D.), in which the respondent moved for late filing of an affidavit after a unilateral application for trial was filed by the applicant. The respondent had a number of excuses for the failure to file the affidavit in a timely manner: none of the excuses was of either much weight or much relevance. In the result the application for late filing was denied. In the present instance the attempts by the Respondent to reach a settlement, at various points, represent an excuse, perhaps a weak excuse, but one that I must take into account when weighing the delay against the value of the affidavit and prejudice to the Applicant.
[10] The affidavit which the Respondent seeks leave to file, being the 23 March 1998 affidavit of Mr. Burke, President of the Respondent, ATP Aero Training Products Inc. (also called the "Company") sets out the history and business of the Respondent and its acquisition of the registered ATP trade-mark in July of 1990. Mr. Burke's Company was incorporated in 1980, coming by its present name in 1988, at that time, in effect, an unregistered trade-mark. The Company's present trade-mark, as a registered trade-mark, was acquired in 1990 following the expungement of the trade-mark ATP, which had been used by a corporate enterprise, P.J.'s Aviation Services Ltd., defunct since at least 1982. The affidavit details a subsequent distributorship held by the Company with the Applicant. The Company's business is said to differ to some degree from that of the Applicant. The affidavit deals with alleged confusion. It also suggests a lengthy delay by the Applicant in doing anything about the use of the ATP trade-mark by the Company and a five year delay in challenging the Company's use of ATP as a registered trade-mark. Thus, among other points, the Burke affidavit deals with distinctiveness and confusion, although it is perhaps not as strong on these points as one might wish.
[11] Distinctiveness is an indispensable requirement for a valid trade-mark. Distinctiveness requires parties to a trade-mark dispute to associate the trade-mark with the product, to show the use of that association and to demonstrate that the association enables the owner of the trade-mark to distinguish its product from those of others: see for example Philip Morris Inc. v. Imperial Tobacco Ltd. (1986) 7 C.P.R. (3d) 254 at 270 (F.C.T.D.).
[12] Turning now to the issue of confusing trade-marks, the test is whether the use of the impugned trade-mark is likely to lead to an inference that the products or services are those of another. Mr. Burke refers directly to the issue of confusion at paragraph 10 of his affidavit and indirectly to that topic elsewhere in the affidavit. Among the factors to be considered in the context of confusion are the length of time the competing trade-marks have been in use, the nature of the goods, services or business, and the nature of the trade.
[13] Touching first on the length of time of use, we have here two trade-marks that have been used concurrently for a considerable time and evidence, in the Burke affidavit, of other similar marks in use in the given marketplace and this could well serve as good evidence that there is no likelihood of confusion: see for example The Oshawa Group Ltd. v. Registrar of Trade Marks [1981] 2 F.C. 18 at 19 and following (T.D.).
[14] Turning to the second criteria, the nature of the goods, services or business, Mr. Reilly deposes that the goods his company handles, training manuals, navigational clipboards, navigational instruments and aviation clothing, differ from those of the Applicant, the producing, updating and selling technical literature and libraries dealing with the construction, maintenance and repair of aircraft (see para. 3 of the Daniels affidavit of 29 June 1995). This concept, of comparing goods, may not be as important as it once was, given the manner in which "confusing" is defined in the Trade-marks Act, however Section 6(5)(c) still lists this as a circumstance to be considered when dealing with confusion between trade-marks.
[15] Finally, as to the nature of the trade, considerations include the overlap in the activities of the Applicant and the Respondent, are touched upon in paragraph 4 and 5 of Mr. Burke's affidavit.
[16] The Burke affidavit is critical in order for the Respondent to mount any real opposition, for the Respondent has no other material upon which to rely, except that which it might generate were it allowed to cross-examine upon the Applicant's affidavit material. The Burke affidavit may be a relatively weak affidavit, however that is for the judge hearing the application to determine: it is not a ground to deny the affidavit at this point.
[17] The Applicant submits filing ought to be denied by reason of the length of delay, the best part of three years and refers to cases in which extensions of time to file material have been denied after delays of weeks or months. Finite time spans in other cases are not usually helpful, for generally each extension of time allowed or denied depends upon its own facts. Here, both parties refer to settlement attempts, in the hope of resolving the litigation. Moreover, had the Applicant wished, it could have brought this litigation to a conclusion long ago.
[18] Finally, touching upon prejudice, I cannot see that the Applicant would be prejudiced to any extent that cannot be compensated for in costs. The Applicant submits that it is prejudiced in that it tried twice to set the matter down through a joint application and subsequently through a unilateral application. This could well be a special circumstance which might allow an award of costs under the old rules, assuming the 1998 Rules as to awarding costs of an application do not reach back beyond April of this year.
[19] The whole present difficulty goes back to the failure of the Respondent to file any affidavit material in 1995. But that is not to say that such an error should banish the Respondent from the field at this point. I have thus weighed the seriousness of the substantial delay, which is to a degree mutual and the reasons for that delay, the settlement attempts and the lack of will, from time to time, on the part of the Applicant, to press the matter forward, against the value and intrinsic worth of the affidavit material, which is material fairly critical to the Respondent and likely relevant, admissible and potentially useful to the court. Has the delay of some three years duration been serious when considered in the light of Mr. Justice Strayer's decision in the Maxim's Bakery case (supra)? I think not, for the delay is explained and is to a degree mutual delay. In this instance the potential value of the affidavit material and the reason for the delay outweigh the delay itself. The affidavit of Mr. Burke, sworn 23 March 1998, may be filed.
Cross-examination on the Daniels Affidavit
[20] Rule 308, which now provides for cross-examination on an affidavit as a right, is a change from the old rule 704(6), which was interpreted to require that the party to a trade-mark matter wishing to cross-examine show ambiguity or confusion in order to obtain leave. That the Respondent might not have been granted cross-examination under the old rules vests the Applicant with no substantive right at this point by which to contest cross-examination. However, while Rule 308 allows cross-examination as a right, it does not excuse the past default or failure to move with diligence to cross-examine Caroline Daniels in 1995 when the affidavit and recollections were fresh. This is prejudice to the Applicant, but can be rectified by an award of costs, including as to time spent by counsel to prepare Ms. Daniels and of the cost of cross-examination itself, which can only be greater at this point.
[21] Present Rule 308 provides that cross-examination on affidavits filed in support of applications must be completed within twenty days after the filing of the respondent's affidavits with the expiration of the time within which the affidavits may be filed. This Rule will come into play with the filing of the Burke affidavit, which shall be done forthwith.
CONCLUSION
[22] Considering and balancing all of the factors and notwithstanding the error on the part of the Respondent, in failing to file an affidavit when it ought to have done so, the justice of the case requires that leave to now file the Burke affidavit be granted.
[23] The costs of this motion and of the cross-examination shall be to the Applicant in any event.
(Sgd.) "John A. Hargrave"
Prothonotary
Vancouver, British Columbia
15 July 1998
FEDERAL COURT TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.: T-1458-95
STYLE OF CAUSE: Aircraft Technical Publishers,
Applicant,
-and-
ATP Aero Training Products Inc.,
Respondent.
PLACE OF HEARING: Vancouver, BC
REASONS FOR ORDER OF MR. JOHN HARGRAVE, PROTHONOTARY
dated July 15, 1998
APPEARANCES:
| Mr. Gene Fraser for the Respondent |
| Ms. Susan Beaubien for the Applicant |
SOLICITORS OF RECORD:
| Mr. Gene Fraser for the Respondent |
| Burke Tomchenko |
| Ms. Susan Beaubien for the Applicant |
| Shapiro, Cohen, Andrews, Finlayson |