Date: 19990921
Docket: T-2425-98
OTTAWA, ONTARIO, THIS 21st DAY OF SEPTEMBER 1999
PRESENT: THE HONOURABLE MR. JUSTICE LUTFY
BETWEEN:
W.R. MEADOWS, INC.
| and W.R. MEADOWS OF CANADA LIMITED |
Applicants
- and -
U.S.E. HICKSON PRODUCTS LIMITED
Respondent
ORDER
UPON notice of motion on behalf of the respondent dated August 4, 1999 for:
| 1. An order extending the period provided by Rule 307 of the Federal Court Rules, 1998 for the service and filing of the respondent"s supporting affidavits and documentation to seven (7) days after the issuance of the requested order. |
| 2. An order of the Court directing the registry of the Federal Court of Canada to accept for filing the respondent"s reply and the affidavit of Mike Daniels sworn on July 31, 1999, Maral Hassessian sworn on July 29, 1999, Anick Desautels sworn on July 29, 1999, Keith Knowling sworn on July 30, 1999 and Jack Clare Burgess sworn on July 30, 1999, and Michel Chartrand sworn on August 4, 1999, (the respondent"s documentation) up to and including seven (7) days after the issuance of the requested order. |
| 3. An order that there shall be no costs to either party on this motion; |
AND UPON reading the pertinent documents and consent;
IT IS HEREBY ORDERED THAT:
1. The respondent"s supporting affidavits and documentation may be served and filed within seven (7) days of the date of this order.
2. "The Reply and Cross-application of Respondent" filed on August 5, 1999 (document 25) is to be struck and removed from the record, without prejudice to the respondent"s rights to file its material in accordance with Rules 307 and 310 and to bring a separate proceeding concerning the subject matter of its "cross-application".
"Allan Lutfy"
J.F.C.C.
Date: 19990921
Docket: T-2425-98
BETWEEN:
| W.R. MEADOWS, INC. |
| and W.R. MEADOWS OF CANADA LIMITED |
Applicants
- and -
U.S.E. HICKSON PRODUCTS LIMITED
Respondent
REASONS FOR ORDER
LUTFY J.:
| _. The respondent seeks to file a "reply and cross-application" in response to the applicants" application for the expungement of certain trade-marks, which has been brought under subsection 57(1) of the Trade-marks Act .1 |
| _. Sections 57 and 59 of the Trade-marks Act make clear that the expungement of a trade-mark is sought by way of application. Subsections 59(1) and (2) provide: |
(1) Where an appeal is taken under section 56 by the filing of a notice of appeal, or an application is made under section 57 by the filing of an originating notice of motion, the notice shall set out full particulars of the grounds on which relief is sought.
(2) Any person on whom a copy of the notice described in subsection (1) has been served and who intends to contest the appeal or application, as the case may be, shall file and serve within the prescribed time or such further time as the court may allow a reply setting out full particulars of the grounds on which he relies.
(1) Lorsqu'un appel est porté sous le régime de l'article 56 par la production d'un avis d'appel, ou qu'une demande est faite selon l'article 57 par la production d'un avis de requête, l'avis indique tous les détails des motifs sur lesquels la demande de redressement est fondée.
(2) Toute personne à qui a été signifiée une copie de cet avis, et qui entend contester l'appel ou la demande, selon le cas, produit et signifie, dans le délai prescrit ou tel nouveau délai accordé par le tribunal, une réplique indiquant tous les détails des motifs sur lesquels elle se fonde.
| _. According to Rule 300(b), Part 5 of the Federal Court Rules, 1998 concerning applications applies to "proceedings required or permitted by or under an Act of Parliament to be brought by application ..." (" aux instances engagées sous le régime d"une loi fédérale ou d"un texte d"application de celle-ci qui en prévoit ou en autorise l"introduction par voie de demande, ... "). Rules 300 and following provide the time periods for the filing of the material relevant to the application, including the parties" affidavits and application records. |
| _. The filing of the "reply setting out full particulars of the grounds on which [the respondent] relies" within the meaning of subsection 59(2) of the Trade-marks Act is, in my opinion, to be done in accordance with Rules 300 and following. More specifically, the respondent"s "reply" includes its notice of appearance pursuant to Rule 305, its affidavit material pursuant to Rule 307 and its application record pursuant to Rule 310. |
| _. The respondent has attempted to file its "reply", within the meaning of subsection 59(2), as a separate document of the type envisaged by former Rule 704. The respondent suggests that this pleading, but not the sixty-day time period contemplated by the former Rule, survives the introduction of the Federal Court Rules, 1998 . |
| _. I do not agree. With respect to an application for an expungement of trade-mark, former Rule 704 has been replaced by Part 5 of the Federal Court Rules, 1998 governing applications. The respondent cannot file its reply pursuant to subsection 59(2) as a document of the kind produced under former Rule 704. Both parties to this expungement proceeding under sections 57 and 59 of the Trade-marks Act must follow Rules 300 and following of the Federal Court Rules, 1998. |
| _. I am also of the view that the Rules do not contemplate a cross-application. In its cross-application, the respondent seeks the expungement of a trade-mark registered to one of the applicants. The proper way to seek this relief, in my view, is to file a separate application and, if appropriate, to seek the consolidation of the applicants" proceeding and the respondent"s separate proceeding under Rule 105. The respondent"s material does not justify an exception from this usual procedure. |
"Allan Lutfy"
J.F.C.C.
Ottawa, Ontario
| September 21, 1999 _. |