A-309-80
Foodcorp Limited (Appellant)
v.
Hardee's Food Systems, Inc. (Respondent)
Court of Appeal, Heald and Urie JJ. and Kelly
D.J.—Toronto, January 15 and 27, 1982.
Practice — Trade marks — Expungement proceedings
instituted by respondent under ss. 57 to 59 of the Trade Marks
Act — Appeal from Trial Division ordering the filing of the
affidavits produced by appellant, the cross-examinations
thereon and the answers given to undertakings in the cross-
examinations with respect to opposition proceedings brought
by appellant, and declaring as admissible against the other
party, in the expungement proceeding, affidavits filed by either
of the parties, the cross-examinations thereon and the answers
to undertakings in the cross-examinations — Whether that
evidence is admissible — Whether Rules 474 and 704(8) apply
as held by the motions Judge — Federal Court Rules 332(1),
474(1)(b), 704(8) — Trade Marks Act, R.S.C. 1970, c. T-10,
ss. 57, 58, 59.
Home Juice Co. v. Orange Maison Ltd. [1968] 1 Ex.C.R.
163, referred to.
APPEAL.
COUNSEL:
Sheila Block for appellant.
J. Guy Potvin for respondent.
SOLICITORS:
Tory, Tory, Deslauriers & Binnington,
Toronto, for appellant.
Scott & Aylen, Ottawa, for respondent.
The following are the reasons for judgment
rendered in English by
HEALD J.: This is an appeal from an order of
the Trial Division dated April 3, 1980 [[1980] 2
F.C. 274], reading as follows:
1. Paragraphs 7 to 12 inclusive of the affidavit of John G.
Aylen, filed herein September 18, 1978, be struck out.
2. The applicant has leave, on or before April 25, 1980, to file
further affidavits in support of its originating notice of motion
herein and that proceedings be, in the meanwhile, stayed.
3. Pursuant to Rule 704(8), properly certified records of the
opposition proceedings in the Trade Marks Office in respect of
application No. 374,321 and registration Nos. 147,423 and
148,704 may be filed herein.
4. Pursuant to Rule 474, the affidavits filed by either of the
parties therein, the transcripts of the cross-examinations of
their deponents and the answers to undertakings given in the
course of such cross-examinations shall be admissible in evi
dence against that party.
Paragraphs 1 and 2 of that order are not under
appeal but paragraphs 3 and 4 thereof are
impugned and form the subject matter of this
appeal.
This is an expungement proceeding commenced
by the respondent pursuant to the provisions of
sections 57 to 59 inclusive of the Trade Marks
Act, R.S.C. 1970, c. T-10'. In those proceedings,
' Said sections read as follows:
57. (1) The Federal Court of Canada has exclusive origi
nal jurisdiction, on the application of the Registrar or of any
person interested, to order that any entry in the register be
struck out or amended on the ground that at the date of such
application the entry as it appears on the register does not
accurately express or define the existing rights of the person
appearing to be the registered owner of the mark.
(2) No person is entitled to institute under this section any
proceeding calling into question any decision given by the
Registrar of which such person had express notice and from
which he had a right to appeal.
58. An application under section 57 shall be made either
by the filing of an originating notice of motion, by counter
claim in an action for the infringement of the trade mark, or
by statement of claim in an action claiming additional relief
under this Act.
59. (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 forth full particulars of the grounds upon
which relief is sought.
(2) Any person upon whom a copy of such notice 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 forth full particulars of the grounds upon which he
relies.
(3) The proceedings shall then be heard and determined
summarily on evidence adduced by affidavit unless the court
otherwise directs, in which event it may order that any
procedure permitted by its rules and practice be made avail
able to the parties, including the introduction of oral evi
dence generally or in respect of one or more issues specified
in the order.
the respondent stated its intention to refer to ma
terial to be found in the office of the Registrar of
Trade Marks in opposition proceedings instituted
in that office by this appellant to a trade mark
application identified as application No. 374,321
made to that office by this respondent. The ma
terial sought to be used was affidavits filed by this
appellant, the cross-examinations thereon as well
as the answers given to undertakings during those
cross-examinations. The respondent also stated its
intention to refer to further material to be found in
the office of the Registrar of Trade Marks in
opposition proceedings relating to two applications
by this respondent to extend the statement of
wares in certain Canadian trade mark registra
tions. (Registration Nos. 147,423 and 148,704.)
Here again the material referred to is affidavits
filed by this appellant, the cross-examinations
thereon as well as the answers given to undertak
ings during those cross-examinations. It is para
graph 3 of the Trial Division order quoted supra
allowing certified copies of the opposition proceed
ings in the Trade Marks Office relating to applica
tion No. 374,321 and registration Nos. 147,423
and 148,704 to be filed in this expungement pro
ceeding as well as paragraph 4 (supra), wherein
the Trial Division declared as admissible against
the other party, in the expungement proceeding,
affidavits filed by the parties, the cross-examina
tions thereon and the answers given to undertak
ings in those cross-examinations which are the
subject of attack in this appeal.
Dealing initially with paragraph 3 of the Trial
Division order, the learned motions Judge permit
ted filing of the opposition proceedings in the
Trade Marks Office under the authority of Rule
704(8) which reads as follows:
Rule 704... .
(8) Except as permitted by this Rule, or by order of the
Court, no affidavit or other material shall be filed for use in
connection with the hearing and determination of the proceed
ings except by leave of the Court.
The various paragraphs of Rule 704 provide the
procedural code in respect, inter alia, of expunge -
ment applications under section 59 of the Trade
Marks Act (supra). However, paragraph (8) of
Rule 704 in so far as it permits the filing of
affidavits must be read subject to the other
requirements of the Rules of Court pertaining to
affidavits. Rule 332(1) provides:
Rule 332. (1) Affidavits shall be confined to such facts as the
witness is able of his own knowledge to prove, except on
interlocutory motions on which statements as to his belief with
the grounds thereof may be admitted.
A perusal of the affidavits made a part of the
expungement record by paragraph 3 of the Trial
Division order makes it clear that they do not
comply with Rule 332(1). They are replete with
statements made on information and belief, with
hearsay and with opinions not based on personal
knowledge. In my view, it would not be possible to
separate the admissible from the non-admissible
portions. For the same reason, it is my opinion that
the cross-examinations on the affidavits and any
admissions arising thereon, are equally inadmis
sible and should not be filed in the expungement
proceeding. For these reasons, I have concluded
that paragraph 3 of the Trial Division order
cannot be allowed to stand 2 . In view of this conclu
sion, it is unnecessary, in my view, to express a
concluded opinion on the other submission made
by counsel for the appellant in respect of para
graph 3 to the effect that subsection 59(3) is
intended to provide a mechanism for the speedy
determination of the rights of the parties and that
said paragraph 3 of the Trial Division order fails
to maintain the summary nature of the proceed
ings. Suffice it to say that were it not for the
2 The learned motions Judge appears to have relied on the
Exchequer Court case of Home Juice Company v. Orange
Maison Limited [1968] 1 Ex.C.R. 163 at page 164 as authority
for the view that the Court can, in a proper case, order the
Trade Marks Office record to be introduced in evidence. How
ever, in that case, President Jackett (as he then was) expressly
left the question of "relevancy, etc." to be decided at the
hearing. The hearing was conducted by Noël J. (as he then
was) who decided the case without deciding the relevance or
admissibility of the affidavits filed in the Trade Marks Office—
see [1968] 1 Ex.C.R. 313.
objectionable nature of the material sought to be
filed from an evidentiary point of view, I would
hesitate to find that the learned motions Judge
improperly exercised his discretion under Rule
704(8) in ordering that filing.
Turning now to paragraph 4 of the order, it is
my view that Rule 474 did not permit the learned
motions Judge, in the circumstances of this case,
to rule admissible the evidence therein described.
The relevant portion of that Rule is 474(1)(b)
which reads as follows:
Rule 474. (1) The Court may, upon application, if it deems it
expedient so to do,
(b) determine any question as to the admissibility of any
evidence (including any document or other exhibit),
and any such determination shall be final and conclusive for the
purposes of the action subject to being varied upon appeal.
My first problem with the reliance by the learned
motions Judge on Rule 474 is that it empowers the
Court "upon application" to declare certain evi
dence admissible. It is common ground between
the parties that no application under Rule 474 for
a declaration of admissibility was made in this
case. The second difficulty with paragraph 4 is
that even assuming an application by one of the
parties under Rule 474, the material declared ad
missible by paragraph 4 is clearly inadmissible
under the Rules of the Court for the reasons set
forth supra. My further difficulty is that, in my
view, Rule 474 is not intended to be used, general
ly speaking, in a section 59 expungement matter
where the code of procedure is specifically detailed
as it is in Rule 704. As it seems to me, the
admissibility or non-admissibility of material sub
mitted in an expungement proceeding would nor
mally be a matter for the Judge hearing the
expungement proceeding and should not be dealt
with in a preliminary way before the expungement
proceeding is being decided by the Court. On the
facts here present, I am not persuaded that the
learned motions Judge was justified in making a
preliminary determination of admissibility which
would be binding on the Judge finally hearing the
expungement application, thus preventing him in
the exercise of his normal function of determining
the admissibility of and the weight to be given to
the evidence before him.
For all of the above reasons, I have concluded
that the appeal should be allowed with costs
throughout to the appellant in any event of the
cause and that paragraphs 3 and 4 of the order of
the Trial Division herein dated April 3, 1980
should be struck out.
* * *
URIE J.: I concur.
* * *
KELLY D.J.: I concur.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.