A-421-91
A-422-91
A-423-91
A-424-91
Munsingwear Inc. (Appellant)
v.
Prouvost S.A. (Respondent)
INDEXED AS: PROUVOST S.A. v. MUNSINGWEAR INC. (CA.)
Court of Appeal, Pratte, MacGuigan and Décary
JJ.A.—Montréal, March 4; Ottawa, March 31, 1992.
Trade marks — Practice — Role of Senior Prothonotary and
trial judge in granting leave in advance for late filing of affida
vits not attached to notice of motion in appeal from decision of
Registrar — Trial Judge must exercise own discretion — Test
for leave for late filing under R. 704(8) — Procedure for late
filing — Content of notices of motion.
In the course of an appeal from the Registrar's rejection of
the respondent's applications for registration of "Pingouin",
the Trial Judge affirmed the Senior Prothonotary's orders
granting leave in advance for the late filing of certain affidavits
not attached to the notices of motion. He held that the respon
dent had not proved that the Senior Prothonotary had exercised
his discretion on a wrong principle or on a misapprehension of
the facts.
Held, the appeal should be allowed.
The orders of the Trial Judge were manifestly wrong,
although based on the practice formerly observed. The Court
of Appeal has since held that a judge sitting in appeal from a
discretionary decision of a prothonotary must exercise his own
discretion. It is not an exercise of his discretion to simply defer
to that exercised by the senior prothonotary.
Before granting leave for late filing pursuant to Federal
Court Rule 704(8), the Court must consider the reasons for the
delay and the intrinsic worth of the affidavits, i.e. their rele
vance, admissibility and potential use to the Court. The deter
mination of the "intrinsic worth" of an affidavit assumes as a
general rule that the affidavit is attached to the notice of
motion, which gives the Court an opportunity to examine it
and the opposing party an opportunity to object to its being
filed. Trade-marks Act, subsection 56(5) allows a party to
"adduce" additional evidence, and Rule 704(8) requires leave
to "file" an affidavit which is late. These provisions refer to the
filing of a document physically present in court and in such
condition that it can be formally filed once the motion is
granted. Also, a party cannot be in a better position when alle
gations of intrinsic worth cannot be checked than when they
can. Such an approach would invite a multiplicity of proceed
ings. The proper procedure would be to warn the opposing
party when an application for an extension of time to file affi
davits will be required.
In special circumstances a party may request leave to extend
the deadlines for filing a notice of motion to file affidavits late
pursuant to Rule 3(1)(c). In such cases, the notice of motion
must indicate the reasons for the delay, the purpose of the affi
davits to be filed, and the probable use to be made of them in
court, or the reasons why the applicant is unable to indicate
such object and use.
The respondent did not show exceptional circumstances
which would justify a departure from the general rule and the
notices of motion were premature. Furthermore, the notices of
motion were inadequate as they gave no details of the nature of
the evidence. The Court is unable to issue a "blank cheque" to
file "additional evidence".
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Federal Court Rules, C.R.C., c. 663, RR. 3, 704.
Trade-marks Act, R.S.C., 1985, c. T-13, s. 56.
CASES JUDICIALLY CONSIDERED
APPLIED:
Maxim's Ltd. v. Maxim's Bakery Ltd. (1990), 32 C.P.R.
(3d) 240; 37 F.T.R. 199 (F.C.T.D.); DRG Incorporated v.
Datafile Ltd. (1987), 17 C.I.P.R. 126; 16 C.P.R. (3d) 155;
14 F.T.R. 219 (F.C.T.D.); Andres Wines Ltd. v. Canadian
Marketing International Ltd. (1986), 9 C.P.R. (3d) 540; 2
F.T.R. 292 (F.C.T.D.).
NOT FOLLOWED:
Fashion Accessories v. Segal's (Michael) Inc., [1972]
F.C. 53; (1972), 5 C.P.R. (2d) 204 (T.D.).
REFERRED TO:
Jala Godavari (The) v. Canada, A-1 12-91, H ugessen
J.A., judgment dated 1 8 / 1 0/91, F.C.A., not yet reported;
McDonald's Corp. v. Silcorp Ltd./Silcorp Ltée (1987), 16
C.I.P.R. 107; 17 C.P.R. (3d) 478 (F.C.T.D.); Indianapolis
Colts Inc. v. Forzani's Locker Room Ltd. (1987), 14
C.I.P.R. 77; 15 C.P.R. (3d) 283 (F.C.T.D.); Laflamme
Fourrures (Trois-Rivières) Inc. et al. v. Laflamme Four-
rures Inc. (1986), 8 C.P.R. (3d) 315; 3 F.T.R. 48
(F.C.T.D.).
APPEAL from Trial Judge's order affirming the
Senior Prothonotary's orders granting leave in
advance for the late filing of affidavits not attached to
the notices of motion. Appeal allowed.
COUNSEL:
Timothy J. Sinnott for appellant.
Jacques Léger and Brigitte Dufour for respon
dent.
SOLICITORS:
Rogers, Bereskin & Parr, Toronto, for appellant.
Léger, Robic, Richard, Montréal, for respondent.
The following is the English version of the reasons
for judgment rendered by
DÉCARY J.A.: These appeals raise the question of
the power of the senior prothonotary and eventually
of the trial judge to allow in advance, in a case
involving an appeal from a decision of the Registrar
of Trade Marks, the late filing of affidavits not
attached to the notice of motion for an extension of
time.
The respondent, a French limited liability company
(hereinafter "Prouvost"), had applied to register vari
ous "Pingouin" marks nominally or graphically. On
December 31, 1990 the Registrar, responding in part
to an objection by the appellant, a U.S. company
(hereinafter "Munsingwear"), rejected the four regis
tration applications in respect of certain wares.
On February 22, 1991, that is, within the two-
month deadline imposed by subsection 56(1) of the
Trade-marks Act, R.S.C., 1985, c. T-13 (hereinafter
"the Act"), Prouvost filed four notices of appeal from
these decisions.
On March 6, 1991, within the fifteen-day deadline
which Rule 704(3) of the Federal Court Rules
[C.R.C., c. 663] gives an appellant for filing affida
vits it intends to put before the Court for purposes of
the appeal, Prouvost filed with the Registry in each of
the four appeals a notice of motion seeking to [TRANS-
LATION] "obtain ... an order extending to May 13 the
deadline imposed ... for filing additional evidence".
Prouvost, as was its right, had filed no evidence with
the Registrar and intended to rely on subsection 56(5)
of the Act, which allows a party to adduce on an
appeal "evidence in addition to that adduced before
the Registrar".
The notice of motion did not specify just what the
"additional evidence" was that Prouvost intended to
rely on, and reference must be made to paragraph 4
of the Carrière affidavit, attached to the notice, for a
better idea of Prouvost's intention. This paragraph
reads as follows:
[TRANSLATION] 4. The nature of the allegations in the statement
of opposition as well as the reasons for the Registrar's decision
a quo have obliged the appellant Prouvost S.A. to submit addi
tional evidence in support of its appeal, which should consist
inter alia of the affidavits of a French representative of the
appellant Prouvost S.A., of a representative of its Canadian
distributor, of an expert in graphic communications and of a
retail sales expert on the aspects of marketing and merchandis
ing in this ease.
The reasons for delay alleged in the Carrière affi
davit were, inter alia, [TRANSLATION] "the belated
instructions to file an appeal and the deadline
imposed by the rules which was too short to submit
additional evidence", the [TRANSLATION] "very hierar
chical organization of (Prouvost)", the fact that the
appeal is connected with other proceedings between
the same parties, the fact that the instructions of
counsel for Prouvost [TRANSLATION] "come from a
Paris office ... through which all communications
must pass", the fact that counsel for Prouvost must
communicate with the representative of the local dis
tributor to obtain information, and this representative
has returned from a fifteen-month stay in France and
will have to [TRANSLATION] "update his files in order
to sign his affidavit."
On March 25, 1991 the Senior Prothonotary
allowed the four motions. On April 29, 1991 the Trial
Judge affirmed the orders of the Senior Prothonotary
[T-456-91, Denault J.]. I will return to these decisions
below, but in order to understand what follows it is
important to describe the convoluted trail of this
"additional evidence" which Prouvost somehow or
other managed to collect over a period of months.
On March 6, 1991, Prouvost served on Munsing-
wear the notices of motion for extensions of time
accompanied by the Carrière affidavit. The date of
hearing was March 11, 1991.
On March 7, 1991 Mr. Gilles Robert, a profes
sional graphic artist, signed an affidavit. This is the
affidavit referred to in the Carrière affidavit as being
that "of an expert in graphic communications". This
affidavit was sent to Munsingwear the same day.
On March 11, 1991 the hearing of the motions was
postponed to March 25, 1991 at Munsingwear's
request.
On March 18, 1991 Munsingwear informed
Prouvost by electronic mail that it regarded the
notices of motion as premature since the affidavits
which they were seeking were not before the Court
and it was consequently impossible to ascertain their
"nature, admissibility and relevance".
On March 21, 1991 Mr. Alain François, general
manager of a Canadian business associated with
Prouvost, signed an affidavit. This was the affidavit
mentioned in the Carrière affidavit as that [TRANSLA-
TION] "of a representative of [Prouvost's] Canadian
distributor". On March 25, 1991, just before the
motions were heard, Prouvost served this affidavit on
Munsingwear.
On March 25, 1991, the Senior Prothonotary
allowed the motions as follows:
After listening to the arguments of both counsel, intervening
in the discussion to clarify points, reading the exhibits in the
record, and in particular the affidavit of Laurent Carrière; and
after considering Rule 704(8) and referring to the case law; in
this particular case, I consider the evidence before me to be
sufficient; it is in the interests of justice for the reasonable
extension requested to be granted in the circumstances, in par
ticular, the appellant's country of origin, the manner in which
business is handled there, the size and the scope of the busi
ness, the organization and consequent communication, and in
short, a method differing from the North American method;
motion granted, costs to follow the issue.
On April 29, 1991 the Trial Judge dismissed the
appeal and affirmed the orders of the Senior Prothon-
otary as follows:
For the reasons given at the conclusion of the hearing, the
Court is not satisfied that the Respondent met the burden of
proving that the Senior Prothonotary exercised his discretion
on a wrong principle or on a misapprehension of the facts.
Application dismissed, costs to follow the issue.
On May 10, 1991 Mr. Allan Booth, a trade mark
researcher, signed an affidavit filed in the Registry of
the Court on May 13, 1991, the last day of the exten
sion granted to Prouvost. This affidavit was not part
of the record before the Trial Judge and accordingly
does not belong in the record before this Court.
The fourth and final affidavit mentioned in the
Carrière affidavit, namely that of "a French represen
tative" of Prouvost, did not materialize.
The orders of the Trial Judge are manifestly
wrong, though at the time they were based on hith
erto observed practice, as this Court has subsequently
held that a judge sitting in appeal from a discretion
ary decision made by a prothonotary is in no way
bound by the latter's opinion and, on the contrary,
must exercise his own discretion himself.' It is not an
exercise of his discretion for him simply to defer to
that exercised by the senior prothonotary, as the
Judge in the case at bar did.
As the orders a quo are quite clearly vitiated, this
Court must in the case at bar exercise the discretion
not exercised by the Trial Judge, and it is under no
duty to defer to the opinion of the Senior Prothono-
tary.
A party asking the Court for leave to file a docu
ment out of time pursuant to Rule 704(8) must meet
the test which Strayer J. defined as follows in Max
im's Ltd. v. Maxim's Bakery Ltd. (1990), 32 C.P.R.
(3d) 240 (F.C.T.D.), at page 242:
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.
1 Jala Godavari (The) v. Canada, Hugessen J.A., judgment
dated 18/10/91, not yet reported.
and which McNair J. described as follows in DRG
Incorporated v. Datafile Ltd. (1987), 17 C.I.P.R. 126
(F.C.T.D.), at page 132:
Generally speaking, R. 704 describes a summary procedure
for trade mark cases whereby each party is required to file its
affidavits at one time and it is only by exception that additional
affidavits are permitted out of time and then only if a valid
explanation has been given for the delay and it has been
demonstrated that the facts contained therein are necessary to
enable the Court to properly adjudicate on the issue: see Hiram
Walker—Consumers Home Ltd. v. Consumers Distributing Co.
(1981), 58 C.P.R. (2d) 40 (Fed. T.D.); Bell & Arkin v. Corona
tion Knitting Mills Can. Ltd. (1986), 9 C.I.P.R. 81, 10 C.P.R.
(3d) 279 (Fed. T.D.).
The determination by the Court of the "intrinsic
worth" of an affidavit assumes as a general rule, and
this is the practice followed in the Trial Division and
before the prothonotary, that this affidavit is attached
to the notice of motion, which gives the Court an
opportunity to examine it and the opposing party an
opportunity to object to its being filed. As Joyal J.
noted in Andres Wines Ltd. v. Canadian Marketing
International Ltd. (1986), 9 C.P.R. (3d) 540
(F.C.T.D.), at page 544.
A court's discretion should not be exercised in a void as it
were.
Disregarding this general rule, Prouvost applied to
the Court in advance for an extension of time to file
affidavits which it was not in a position to file at that
point. I have serious doubts as to the validity of this
procedure.
Subsection 56(5) of the Act allows a party to
"adduce" ("apporter") additional evidence, and Rule
704(8) requires that a party which finds itself out of
time must ask the Court for leave to "file"
("déposer") an affidavit. These provisions seem to
me to refer to the filing of a document which is phys
ically present in Court and in such a condition that it
can be formally filed once the motion is granted.
Additionally, in practical terms, how can a judge
decide whether to extend deadlines for the filing of
an affidavit, and how can the opposing party dispute
such a filing, when the document in question is not in
Court? An extension of time for filing the affidavit
would then only be a matter of speculation. It is, to
say the least, paradoxical that a party is unable to file
an affidavit which is in Court without the judge deter
mining its intrinsic worth, but can obtain leave in
advance to file an affidavit which cannot be
examined by the Court. A party cannot be in a better
position when his allegations of intrinsic worth can
not be checked than when they can. The approach
suggested by Prouvost opens the door to abuses of all
kinds and invites a multiplicity of proceedings, in an
area moreover which purports to be summary and
expeditious. 2 The proper procedure would be for the
party who finds it impossible to file his affidavits at
the proper time to inform the opposing party of this
and warn the latter that it will subsequently file an
application for an extension of time when the affida
vits are available. 3
I do not rule out the possibility that in certain spe
cial circumstances a party may ask the Court pursu
ant to Rule 3(1)(c) for leave to extend the deadlines
for filing a notice of motion to file affidavits late . 4 In
such cases, the Court will have to be especially
scrupulous and require that the notice of motion for
leave to extend the deadlines indicate, in addition to
the reasons for the delay, the purpose of the affidavits
that will eventually be filed and the probable use to
be made of them in Court, and if it is impossible for
the applicant to indicate such object and use, the rea
sons why it is unable to do so. 5
2 See McDonald's Corp. v. Silcorp Ltd./Silcorp Ltée (1987),
16 C.I.P.R. 107 (F.C.T.D.), at pp. 108-109; Andres Wines Ltd.
v. Canadian Marketing International Ltd., supra, at p. 545.
3 See Indianapolis Colts Inc. v. Forzani's Locker Room Ltd.
(1987), 14 C.I.P.R. 77 (F.C.T.D.), at p. 79.
4 Laflamme Fourrures (Trois-Rivières) Inc. et al. v.
Lafamme Fourrures Inc. (1986), 8 C.P.R. (3d) 315 (F.C.T.D.).
5 In Fashion Accessories v. Segal's (Michael) Inc., [1972]
F.C. 53, a Judge of the Trial Division of this Court allowed two
affidavits to be filed which were in the possession of the appli
cant and had been given to the opposing party, but were not in
Court. The Judge said that he was unable to form any conclu
sions "as to their relevance or their admissibility" (at p. 59). In
these circumstances, I do not think that this decision should be
followed.
In the case at bar, Prouvost did not show any
exceptional circumstance that would justify a depar
ture from the general rule, and I consider that its
notices of motion were premature.
Furthermore, these notices of motion cannot be
allowed by the Court as written, since they request
only an extension of time "to file additional evi
dence", and give no further details as to the nature of
such evidence. Even if I were to agree that the con
clusion sought in the notice of motion could be com
pleted by the details contained in the Carrière affida
vit, the Court would have before it a notice of motion
asking leave to file four affidavits, "inter alia". There
is no question of the Court issuing such a blank
cheque.
Having said that, this case has dragged on long
enough already and it would be unfortunate for the
parties to be sent back to the Senior Prothonotary to
argue new motions that would not he premature and
would be correctly drafted. Accordingly I am pre
pared, in the interests of the proper administration of
justice, to consider the motions heard by the Trial
Judge on April 25, 1991 as motions for, first, leave to
file out of time the Robert and François affidavits
which were then before the Court, and second, for an
extension of time to file two affidavits which were
not before the Court.
We may dispose of the last two affidavits first. For
the reasons stated above, the Court is not in a posi
tion to assess their intrinsic worth as it has no details
regarding them in the notices of motion. The exten
sion of time must accordingly be denied.
The Robert affidavit was signed on March 7, 1991,
within the fifteen-day time limit, and was not entered
in the record until March 26, 1991, that is after the
deadlines. There was nothing to prevent Prouvost
from filing it at the proper time and no reason was
given to justify an extension of time. Moreover, I do
not see how this affidavit can contribute to the out
come of the case. The applications regarding this affi
davit must be dismissed.
That leaves the François affidavit, signed on March
21, 1991. Some clarification was given in the Car-
rière affidavit as to its "intrinsic worth" and Mun-
singwear admitted in its submission that some of its
paragraphs are relevant. I am satisfied with the intrin
sic worth of at least a part of this affidavit and need
only determine whether the delay that has elapsed is
such that the Court should still refuse to allow it to be
filed.
The delay is only two weeks, which so far as injury
to Munsingwear is concerned is hardly significant in
a case that has lasted for some eight years. Addition
ally, one of the grounds alleged in the Carrière affida
vit, namely the fact that the deponent was returning
from a fifteen-month stay in France and needed time
to bring his records up to date, seems to me to be a
legitimate excuse. I hasten to add that, unlike the
Senior Prothonotary, I would not be satisfied as an
excuse with the fact that Prouvost, because it was a
French business of some size with a particularly hier
archical organization, was subject to "a method dif
fering from the North American method". The Rules
of the Court apply equally to the parties, whoever
they may be and wherever they may come from. 6
I accordingly conclude that filing of the François
affidavit out of time should be authorized. It is true
that this affidavit only appears to be partly relevant,
but this part is worth keeping and I am not prepared
to make the determination myself, preferring to leave
this task to the judge of the merits: it would have
been his in any case, as I consider that the opinion of
a judge on the intrinsic worth of an affidavit which he
authorizes to be filed out of time is not binding on the
judge of the merits.
I would therefore allow the appeal in part, reverse
the order made by the Trial Judge on April 29, 1991
and, making the order which he ought to have made,
reverse the decision of the Senior Prothonotary on
March 25, 1991, authorize the late filing of the affi
davit signed on March 21, 1991 by Mr. Alain Fran-
çois, and dismiss in all other respects the motion for
an extension of the deadline imposed "to file addi
tional evidence".
6 Maxim's Ltd. v. Maxim's Bakery Ltd., supra, at p. 243.
In the circumstances, although the respondent
Prouvost has succeeded in part, I consider it should
be ordered to pay all costs before the Senior Prothon-
otary, the Trial Judge and this Court.
PRATTE J.A.: I concur.
MACGUIGAN J.A.: I concur.
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