Date: 19991027
Docket: T-849-98
| IN THE MATTER of an opposition by Jaguar Cars Limited to Application No. 460.209(2) to extend the wares of Registration No. 263,924 filed by Remo Imports Ltd./Les Importations Remo Ltée in respect of the trade mark JAGUAR. |
| AND IN THE MATTER of Sections 56 and 59 of the Trade-marks act, R.S.C. 1985, C.T-13 as amended. |
BETWEEN :
JAGUAR CARS LIMITED
Appellant
(Opponent)
- and -
REMO IMPORTS LTD./LES IMPORTATIONS REMO LTEE
Respondent
(Applicant)
REASONS FOR ORDER
O"KEEFE, J:
[1] The appellant Jaguar Cars Limited ("Jaguar") made a Motion to this Court on September 13, 1999 for the relief set out in Schedule "A" of the Motion.
[2] The background to this Motion can be summarized as follows:
| a) On February 24, 1998 the Registrar of Trade-Marks dismissed Jaguar"s opposition to the application of Remo Imports Ltd./Les Importations Remo Ltee ("Remo") to extend the wares in respect of Remo"s trade-mark JAGUAR to briefcases. |
| b) The amended Statement of Opposition opposed Remo"s application on six grounds. |
| c) By an appeal to the Federal Court of Canada (Trial Division) dated April 24, 1998 the appellant appealed the Registrar of Trade-Marks" decision on various grounds including the following grounds: |
| That the Registrar erred in law and in fact in holding that the appellant"s trade-mark JAGUAR for briefcases is not confusing: |
| (1) With the Respondent"s registered trade-marks JAGUAR, registration number 378,644 or JAGUAR and DESIGN, registration number 378,643 for the wares: |
| cleaning and polishing preparations for motor land vehicles; hand tools; jewellery, other than watches, and parts of and fittings for such jewellery; books, periodicals, magazines and newspapers; printed publications relating to automotive subjects namely spare parts lists and maintenance manuals; playing cards; driving license cases, wallet cases, business card holders, belts, credit card holders, key cases, address books, note books, passport holders, beauty cases, document cases, pocket wallets, parasols, umbrellas; tennis rackets, badminton rackets, squash rackets, golf balls, golf tees; and ashtrays |
| as at the date of decision (Statement of Opposition ground 3). |
| (2) With Jaguar"s trade-mark and trade-name JAGUAR used for motor vehicles and motor vehicle accessories including vehicle wallets and personal accessories as at the alleged date of first use in October 1981. (grounds 4 and 5) |
| (3) With Jaguar"s trade-mark and trade-name JAGUAR used for the wares referred to in paragraph (2) above, as at the date of the Statement of Opposition in October 1992. (ground 6) |
| d) This Court by Order dated September 23, 1998 ordered that the respondent, the Registrar of Trade-Marks be removed as a party to the appeal. |
| e) Mr. Justice McKeown of this Court by Order dated February 1, 1979 ordered in part as follows: |
| The appeal as it relates to ground 3 of the Statement of Opposition shall be determined separately. |
| f) The hearing of the appeal of ground 3 at this Court was to be heard on May 20, 1999 at Toronto, Ontario but on May 12, 1999 the parties reached an agreement as to the matter to be heard on May 20, 1999. |
| g) The settlement correspondence is contained in letters between the solicitors for the parties and are contained in the materials filed by the parties in this application. |
[3] It would appear from the material filed by counsel that both parties agree that a settlement was reached but cannot agree on the terms of a consent order to reflect the settlement.
[4] Counsel for the appellant proposed an order that would effectively dispose of the ground 3 issue plus all of the issues in the Notice of Appeal. On the other hand, counsel for the respondent proposed an order that would dispose of only ground 3 which was the subject matter of the hearing scheduled for May 12, 1999.
LAW
[5] The law relating to the use of settlement negotiations is set out in The Law of Evidence in Canada (John Sopinka, Sidney N. Lederman, Q.C. and Alan W. Bryant (Toronto: Butterworth"s Canada Limited, 1992)) at page 730:
| If the negotiations are successful and result in a consensual agreement, then the communications may be tendered in proof of the settlement where the existence or interpretation of the agreement is itself in issue. Such communications form the offer and acceptance of a binding contract, and thus may be given in evidence to establish the existence of a settlement agreement. Some courts have made the overly broad statement that once a concluded settlement is reached the privilege is lost. This suggests that it is lost for the purpose of any subsequent suit whether between the parties or strangers, no matter whether the agreement itself is put in issue in subsequent proceedings. |
| However, the better view is that the privilege applies not only to failed negotiations, but also to the content of successful negotiations, so long as the existence or interpretation of the agreement itself is not in issue in the subsequent proceedings and none of the exceptions is applicable. |
ANALYSIS
[6] The respondent"s solicitor wrote to the appellant"s solicitor in a letter dated May12, 1999 [Tab A, page 13 of the Appellant"s Motion Record] which letter stated in part as follows:
| "In connection with the hearing of this appeal which has been scheduled to take place in Toronto, Ontario on May 20, 1999, we would advise that Remo Imports Ltd. is prepared to settle the matter on the following basis" |
[7] The appellant"s solicitor wrote to the respondent"s solicitor in a letter dated May 12, 1999 [Tab B, page 16 of the Appellant"s Motion Record] which letter stated in part as follows:
| "On behalf of the Appellant Jaguar Cars Limited, we hereby accept the offer set out in your letter dated May 12, 1999." |
[8] From a review of the documentation there was only one issue to be determined by the Court on May 20, 1999 that issue being ground 3 of the Statement of Opposition filed by the appellant. This was clearly stated by McKeown, J. in his order dated February 1, 1999 (Tab A, page 51 of the Respondent"s Motion Record).
[9] After reviewing all of the material filed and the representations of counsel, I have come to the conclusion that only ground 3 of the Statement of Opposition was settled by the correspondence of the solicitors for the parties. There was only one matter to be determined by the Motion scheduled for hearing on May 20, 1999 and that was ground 3 of the Statement of Opposition as ordered by McKeown, J. in his order dated February 1, 1999.
[10] Having reached the conclusion stated above, I would therefore not grant judgment as requested by the appellant in his Motion but instead grant an Order in the form proposed by the respondent (Respondent"s Motion Record Tab B, page 78) with the deletion of the words "and the consent of the parties filed" as they appear in the third paragraph of the proposed judgment.
"John A. O"Keefe"
J.F.C.C.
Ottawa, Ontario
October 27, 1999