Federal Business Development Bank v. C.B. Media Ltd.
T-3159-90
Giles A.S.P.
30/12/93
7 pp.
Motion for reattendance to answer questions refused on discovery -- As preliminary matter, defendant alleging plaintiff's solicitor author of written submissions and of affidavit filed in support of plaintiff's position on motion -- Doubtful party can waive impropriety-Whether affiant author of submissions in support of which affidavit filed difficult to decide as submissions ink signed in name of law firm, name of affiant as well as name of senior lawyer typed on back of submissions -- Practically, in Court where client may often be on different continent, unfamiliar with either language, solicitor's affidavits may be admissible -- Except in very exceptional circumstances, solicitor presenting motion should not rely on own affidavit -- On motion where affidavit may include information of belief and grounds therefor (i.e. hearsay evidence permissible), solicitor's affidavits seldom necessary and should be avoided even if admissible because of possibility of solicitor being cross-examined and questioning conflicting with solicitor and client privilege -- Court proceeding as if affidavit that of someone other than counsel -- Mark in question adopted and used by public authority, in Canada, as official mark in respect of which registrar has, at request of public authority, given public notice of adoption or use (Trade Marks Act, s. 9(1)(n)(iii)) -- Defendant required to prove plaintiff not public authority, mark not adopted and used, or Registrar not giving public notice at request of authority -- Examination for discovery seeking any correspondence between plaintiff and agents to secure public notice of official mark -- Any correspondence bearing on request by authority to give public notice should be produced, subject to right to claim solicitor and client privilege -- Order extending to whole file of FBDB and whole file of trade mark agent, subject to right to claim privilege for parts of file not connected to requesting as was done in Risi Stone Ltd. v. Groupe Permacon Inc., [1990] 3 F.C. 10 (T.D.) -- Question whether FBDB having any information Canadian public wants FBDB to carry out activities irrelevant to determination of whether FBDB public authority, and not required to be answered -- Question regarding studies done to assess popular support also irrelevant -- Questions concerning list of businesses to which FBDB sending promotions irrelevant and need not be produced -- Questions concerning trade mark searches not ordered answered as existence of prior trade marks irrelevant to right to adopt escutcheon or mark under s. 9 -- Questions relating to FBDB file for giving public notice of more recent mark need not be answered -- Defendant alleging relevant to show mark abandoned -- Provision for adoption of arms and marks in Trade Marks Act not intending to incorporate any more of statutory or common law applying to trade marks into law of arms than specifically made applicable by Trade Marks Act to that law -- Doubtful mark adopted under s. 9 can be abandoned -- Application for similar mark irrelevant to abandonment -- Abandonment must be determined on relevant facts, not including whether new mark properly attained -- Balance of convenience indicating place of reattendance should be Montréal as three people (two lawyers, person being examined) in Montréal, versus two people in Toronto -- Reattendance at plaintiff's expense, but limited to reasonable expenses of one counsel -- Defendant seeking solicitor and client costs as plaintiff alleging request for reattendance in Toronto spiteful -- Place of attendance depending entirely on balance of convenience -- Request for reattendance in Toronto not spiteful -- Although unsupported allegation of spite might in certain circumstances subject person alleging spite to payment of solicitor and client costs, on balance plaintiff having greater success on balance herein -- As very general submissions made in response to motion not very helpful, no costs awarded -- Federal Court Rules, C.R.C., c. 663, R. 324 -- Trade-marks Act, R.S.C., 1985, c. T-13, s. 9(1)(n)(iii).