Date: 19980818
Docket: T-1518-97
BETWEEN:
MAISON DES PATES PASTA BELLA INC.
Applicant
- and -
OLIVIERI FOODS LIMITED
Respondent
ASSESSMENT OF COSTS - REASONS
GERALD PARLEE
ASSESSMENT OFFICER
[1] This matter began on July 16, 1997 when the applicant filed expungement proceedings against the respondent"s trade-mark registration No. 448,988 for BELLA PASTA. The respondent maintained that the BELLA PASTA mark is a significant part of it"s business and is offered for sale in most major retail outlets. Total sales, by 1995, exceeded fifteen million dollars.
[2] By letter of September 15, 1997, the respondent requested leave to extend the time for filing a reply and supporting affidavit to the originating notice of motion. The applicant consented and leave was granted September 29, 1997.
[3] On February 23, 1998, the applicant moved for leave to file further evidence. The motion was heard by the Prothonotary in Montréal on February 23 and was dismissed on February 24, 1998.
[4] The applicant"s appeal of the Prothonotary"s decision was heard and dismissed in Montréal on March 3, 1998 by the Honourable Mr. Justice Hugessen.
ORDER
| The appeal of the prothonotary"s decision is dismissed with costs fixed in the amount of $3,500 (including the costs of the hearing before the prothonotary and the cross-examination). |
[5] At the same hearing, immediately following the above order, the applicant requested leave of the Court to discontinue its originating motion without costs. The result was the following order of the Honourable Mr. Justice Hugessen which brings us to this assessment of costs presented before me at Toronto on July 16, 1998 by Mr. P. Bradley Limpert and Mr. Mark Evans appearing for the respondent and Mr. James T. Beamish for the applicant.
ORDER
| The application is, at the applicant"s request, discontinued by leave; the applicant shall pay the respondent"s costs on a solicitor and client basis to be taxed and shall not institute new expungement proceedings until such costs have been taxed and paid. |
[6] Since Mr. Beamish had only recently been retained to represent the applicant, it was agreed at the assessment that we adjourn for a half hour to allow the parties to briefly review the issues before continuing.
[7] Upon resumption, Mr. Beamish referred to his submission on the respondent"s bill of costs and withdrew paragraph 5: "Time associated with other proceedings". Four issues remain.
[8] (1) Scope of Costs Award
The applicant referred to the first order of Hugessen J. on March 30, 1998 (see paragraph ©4ª above) concerning the appeal of the prothonotary"s decision, and for further clarification also pointed out paragraph ©7ª of the Court"s reasons for that order:
| ©7ª (Later) Having heard counsel on the question of costs, it is my view that the request by the respondent for costs on a solicitor and client scale has not been made out although I do think that this is a case where a substantial award of costs should be made. I accordingly will make an order for payment of costs in the lump sum of $3,500.00 which is to include the costs of the motion before the prothonotary and also the costs related to the cross-examination of the affiant on his affidavit. |
[9] In view of this order, the applicant contends that the second order of Hugessen J., rendered forty minutes later (see paragraph ©5ª above), awards costs only for those aspects of the proceedings not covered by the first order of fixed costs. In other words, the respondent is not entitled to more than $3,500.00 in respect of all costs associated with the motion for leave to adduce further evidence.
[10] Counsel for the respondent, on the other hand, referred to the phrase "shall pay the respondent"s costs" in the second order as an indication that it was the Court"s intent to include the motion before the Prothonotary in the solicitor/client award.
[11] On the issue of the scope of costs awarded, it is my view that Hugessen J., when restricting the costs of the motion before the Prothonotary to $3,500.00, thereby excluded this part of the proceedings from his immediately subsequent order granting solicitor/client costs on the discontinuance. Specifically, Hugessen J. stated in his reasons regarding the Prothonotary"s motion that "...the request by the respondent for costs on a solicitor and client scale has not been made out...".
[12] I have therefore concluded, as submitted by the applicant, that the fees and disbursements claimed for November 6 and 7, and from December 31, 1997 to and including March 4, 1998, and relating to the motion for leave to adduce additional evidence, must be taxed off.
[13] (2) Motion to extend time for Filing Reply
| Rule 410(2) Unless the Court orders otherwise, the costs of a motion for an extension of time shall be borne by the party bringing the motion. |
The applicant, referring to Rule 410(2) of the Federal Court Rules, objected to the costs related to the respondent"s motion for an extension of time filed on consent and granted by the Court on September 29, 1997. The respondent replied that the order of Hugessen J. covers all costs, even those under Rule 410.
[14] On this issue, I agree with the applicant. There is no specific order of the Court regarding the costs for the motion to extend time. The costs must therefore be borne by the party who brought the motion; in this case the respondent. I have therefore taxed off the fees claimed for September 23 to September 26 ($1,225.00 plus G.S.T.) allowing 1.2 (preparation of application for hearing) of the 1.7 hours on September 26 for Mr. Evans conferring with Mr. Penner and for application preparation.
[15] 3. Disbursements
(a) Translation Services
Mr. Beamish, referring to Energy Absorption Systems Inc. v. Y. Boissonneault & Fils Inc. (T-2263-86, Reinhardt A.O., Assessment dated 30/01/91), submitted that an unsuccessful party should not have to bear the cost for translation of pleadings. Mr. Limpert observed that the citation was not relevant since it referred to a party and party assessment. He also noted that the document translated in the present matter was not a pleading but an attachment to the supporting affidavit of Bobby Rizzuto.
[16] Since there is no requirement by the Court for the translation of any filed documents from one official language to the other and given similar decisions of assessment officers in this Court, such as M. Reinhardt in the Energy Absorption case (supra) and J.F.D. Cousineau in Bénédictine Distillerie de la liqueur de l"ancienne Abbaye de Fécamp v. John Labatt Ltée, ©1990ª 3 F.C. D-37 (T.D.) referred to by the applicant, the $776.17 inclusive of G.S.T. claimed for translation services is taxed off the respondent"s bill (the actual invoice total was $834.60).
(b) Computer Search Charges
Counsel for the applicant, still referring to Energy Absorption Systems Inc. (supra), objected to the claim of $38.20 plus G.S.T. for computer search charges suggesting it be disallowed as overhead.
[17] In juxtaposition to Energy Absorption, assessment officer Stinson of thisCourt, in CNR v. North Pacific Steamship Co., [Q.L. 1992 F.C.J. No. 664] (T.D.), recognized the extraordinary growth of computers in the workplace and the fact that part of the fees for research have metamorphosed to disbursements.
| If this tool does represent a shift in onus for certain costs from the successful to the unsuccessful party (because fees are partially indemnified but disbursements, to the extent of reasonable necessity, are fully indemnified), it is a reality to which litigants must adjust. Unless it was apparent that the search was unnecessary, the fact that nothing of use was found should not be a critical consideration for allowance, disallowance or reduction. Rather, the critical consideration is whether the decision to incur the disbursement and to pay the amount presented was prudent representation of the client in the circumstances existing at the time and consistent with the criteria of reasonable necessity in Tariff B 1 (2) (b). |
[18] In Canastand Industries Ltd. v. The Lara S, [Q.L. 1995 F.C.J. No. 1157] (T.D.) assessment officer Stinson also allowed a Quicklaw disbursement as reasonable and necessary.
[19] Other recent Federal Court assessment officers allowing search costs include
| - Volkswagen Aktiengesellschaft v. Global Auto Service, T-1535-96, Pace T.O., Feb. 18/97 |
| - The Queen v. W. Ralston & Co. (Canada) Inc., T-3765-82, Lamy T.O., Mar. 11/97. |
[20] In view of these precedents, and acknowledging what I now accept as a change in research needs and techniques, the computer search charges, having been reasonable and necessary, at least in the present case, are allowed.
[21] (c) Facsimile Charges
Mr. Beamish submitted that the $224. plus G.S.T. for facsimile charges, which appear to be in addition to long distance charges, also form part of overhead and ought not be allowed. Although I agree with regard to some of the charges which are not identifiable, upon reviewing Mr. Evan"s affidavit, I did find two service charge slips for facsimile costs: F.2 $98.(re Carfrae affidavit) and H.2 $25 (re Mr. Guay and client) which I consider reasonable, proven and therefore allow at $123.00.
[22] 4. Law Student Charges for Deliveries etc.
Mr. Beamish submitted that the applicant should not be expected to pay the hourly rate of a law student ($396.00 plus G.S.T. 4.4 hours) for making deliveries or other clerical/ administrative matters.
[23] Concerning student charges the respondent referred to Samsonite Canada Inc. v. Les Entreprises National Dionite Inc., T-2783-93, Reinhardt, A.O., May 15, 1995, at page 19:
| Solicitor for the Plaintiff refers me instead to Apotex Inc. v. Egis Pharmaceuticals (1991), 37 C.P.R. (3d) 335 (Ont. Gen. Div.) at page 345 of the C.P.R. series in which the Court permitted full indemnity for time expended by students. This case has been endorsed by the Federal Court in Rothmans, Bensons & Hedges Inc. v. Imperial Tobacco Inc. (1993), 50 C.P.R. (3d) 59. Finally, counsel refers me to the decision in Arthur Andersen Inc. v. Toronto-Dominion Bank (1992), 36 A.C.W.S. (3d) 652 in which the reasonable costs of a law clerk were allowed. It is submitted that the recent decisions in Apotex and Arthur Anderson are more fully and properly in accordance with the principal (sic) of full indemnity in the solicitor-client context. |
[24] As well, respondent cited Re Toulany (1989), 57 D.L.R. (4th) 639 (N.S.S.C.) at 653:
| I take the submission to be that the lawyer can charge for the time spent by the clerk but it should be added to and hidden in the overhead. |
| I must first consider the logic of adding the clerk"s salary to general overhead and spreading that cost over all the clientele. That probably is an option the solicitor can consider. |
| This proposition was not explained by the appellant other than making the proposition. However, is it fair that when a clerk does substantial research no charge is made other than a general mark-up in overhead? Should one generalize? Is it not more realistic that each account be based on its facts? If research or other specialty work is done by the clerk at a minimal charge to the client should not the benefit of that go to the client? |
| The real worry as I see it is if the clerk does the work and the solicitor charges at his own rate as if he or she had done the work. |
[25] In both these situations, there is the supposition that the work performed is research or something more than clerical tasks. The charges objected to by Mr. Beamish in the presentation, however, were for secretarial or messenger duties. In fact, assessment officer Reinhardt, in the case cited above reasoned "... having finally come to the conclusion that the above-noted service ought to have been performed by secretarial or support staff, I must disallow the entire time and amount claimed on the basis that the preparation costs should be borne by the lawyer in principal (sic ) as part of the overhead of the law firm." I agree with the view taken by the applicant and therefore disallow 3.6 hours, or $324. plus G.S.T. for the services claimed for the law clerk. The 4.4 hours alluded to by Mr. Beamish included .8 hours that I have already deducted from the fees for the motion to extend time at paragraph [14] above.
[26] Costs relating to the assessment itself were set out at Tab L1 of the affidavit of Mr. Evans and in the document identified as Debit Note S194225 filed at the assessment. These totalled $6,015.00 for fees and $239.37 for disbursements.
[27] Counsel for the applicant suggested that the costs allowed for assessment should reflect my decision regarding the scope of award issue. Considering that the costs of two motions were taxed off, thereby reducing the bill by approximately 50%, I agree with the applicant that, based on the orders of Hugessen J. regarding costs, some of the preparation time was unnecessary. I therefore reduce the fees for the assessment of costs to $5,015.00. Of the $239.37 claimed for disbursements on the assessment, only $95.12 including G.S.T. is proven satisfactorily and therefore allowed.
[28] In conclusion, I have calculated the fees excluding assessment costs to be $32,167.00 rather than the $32,440.00 submitted. Therefore, the respondent"s bill of costs which was presented at $45,261.09 ($38,568.90 + $6,692.18) is assessed and allowed at $19,277.21, inclusive of G.S.T.. A certificate will issue in that amount.
"Gerald Parlee"
Assessment Officer
Ottawa, Ontario
August 18, 1998
[29] FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF SOLICITORS AND SOLICITORS OF RECORD
COURT FILE NO.: T-1518-97
BETWEEN:
| MAISON DES PATES PASTA BELLA INC. |
Applicant
- and -
OLIVIERI FOODS LIMITED
Respondents
PLACE OF ASSESSMENT: Toronto, Ontario
DATE OF ASSESSMENT: July 16, 1998
REASONS FOR ASSESSMENT DATED AUGUST 18, 1998 BY G. PARLEE, ASSESSMENT OFFICER
APPEARANCES:
James T. Beamish for the Applicant
P. Bradley Limpert
Mark Evans for the Respondent
SOLICITORS OF RECORD:
MITCHELL, GATTUSO
Montreal, Quebec for the Applicant
SMART & BIGGAR
Toronto, Ontario for the Respondent