CIBC World Markets Inc. v. Stenner Financial Services Ltd., 2008 FC 621

• Judge: Zinn, J.
• Court: Federal Court (Canada)
• Case Date: May 12, 2008
• Jurisdiction: Canada (Federal)
• Citations: 2008 FC 621;(2008), 329 F.T.R. 156 (FC)

CIBC World Markets v. Stenner Financial (2008), 329 F.T.R. 156 (FC)

MLB headnote and full text

Temp. Cite: [2008] F.T.R. TBEd. MY.024

CIBC World Markets Inc. (applicant) v. Stenner Financial Services Ltd. (respondent)

(T-2216-07)

Thane Stenner (applicant) v. Stenner Financial Services Ltd. (respondent)

(T-2217-07; 2008 FC 621)

Indexed As: CIBC World Markets Inc. v. Stenner Financial Services Ltd.

Federal Court

Zinn, J.

May 16, 2008.

Summary:

CIBC World Markets Inc. (CIBC) and Thane Stenner (Stenner) each filed an application against Stenner Financial Services Ltd. (Stenner Financial) to expunge the trademark STENNER (Trade-marks Act, s. 57). Lemieux, J., on consent, ordered that the two proceedings be heard at the same time, and that the evidence in each proceeding would be evidence in the other. CIBC and Stenner sought an extension of time under Federal Courts Rule 308 to conduct cross-examinations on a number of affidavits filed by Stenner Financial.

A Prothonotary of the Federal Court, in an oral judgment, granted the extension and ordered $1,000 costs payable by Stenner Financial to each of CIBC and Stenner in any event of the cause. In addition, the Prothonotary ordered that the two applications continue as specially managed proceedings. The Prothonotary later provided written reasons for judgment. See [2008] F.T.R. Uned. 490. Stenner Financial appealed.

The Federal Court dismissed the appeal, with $2,500 costs payable to each of CIBC and Stenner forthwith and in any event of the cause.

Practice - Topic 10

General principles and definitions - Extension of time under rules - CIBC and Stenner each filed an application against Stenner Financial to expunge the trademark STENNER (Trade-marks Act, s. 57) - The proceedings were ordered to be heard at the same time, with the evidence in each to be evidence in the other - CIBC and Stenner sought an extension of time under Federal Courts Rule 308 to conduct cross-examinations on a number of affidavits filed by Stenner Financial - A prothonotary granted the extension - Stenner Financial appealed, arguing that the affidavits filed by Stenner and CIBC in support of their extension applications failed to specifically set out a reason for the delay, establish that there was any intrinsic worth to the proposed cross-examinations, and establish evidence of the merits of the expungement applications - The Federal Court held that it was sufficient if the evidence was found in the documents that were attached as exhibits to the affidavit - It was not necessary to set out the obvious in the body of the affidavit - The correspondence attached as exhibits to the affidavits established Stenner's and CIBC's continuing intention to cross-examine 12 of the deponents - It was also clear that they were attempting to time those examinations in a cooperative way with Stenner Financial's counsel - The correspondence and the past history of cooperation provided the entire explanation for the delay - When advised that Stenner Financial was insistent on strict compliance, CIBC and Stenner moved quickly to bring their motions to court - See paragraphs 18 to 24.

Practice - Topic 10

General principles and definitions - Extension of time under rules - CIBC and Stenner each filed an application against Stenner Financial to expunge the trademark STENNER (Trade-marks Act, s. 57) - The proceedings were ordered to be heard at the same time, with the evidence in each to be evidence in the other - CIBC and Stenner sought an extension of time under Federal Courts Rule 308 to conduct cross-examinations on a number of affidavits filed by Stenner Financial - A prothonotary granted the extension - Stenner Financial appealed, arguing that once Stenner and CIBC had to seek leave of the court to extend the time for cross-examinations, they then had to show that there was some intrinsic worth to that process - The Federal Court rejected the argument - See paragraphs 25 to 27.

Practice - Topic 3603

Evidence - Affidavits - General - Contents of (incl. attachments) - [See first Practice - Topic 10 ].

Practice - Topic 3687

Evidence - Affidavits - Use of - Cross-examination (incl. transcripts) - [See second Practice - Topic 10 ].

Practice - Topic 6037.2

Judgments and orders - Reasons for judgment after trial or application - Giving written reasons after oral judgment - Effect of - CIBC and Stenner each filed an application against Stenner Financial to expunge the trademark STENNER (Trade-marks Act, s. 57) - The proceedings were ordered to be heard at the same time, with the evidence in each to be evidence in the other - CIBC and Stenner sought an extension of time under Federal Courts Rule 308 to conduct cross-examinations on a number of affidavits filed by Stenner Financial - A prothonotary granted the extension - Later, Stenner requested written reasons indicating that Stenner Financial intended to appeal, and that CIBC supported the request while Stenner Financial opposed it - The Federal Court held that the prothonotary did not err in providing written reasons - He was aware that an appeal was to be filed, but no appeal had yet been filed when he issued his reasons - Accordingly, he did not craft his reasons to address the grounds of appeal - The oral judgment was given on a Monday and the written reasons were given on Friday of the same week - The prothonotary's course of conduct was not unique - Perhaps he would have been well-advised to have informed the parties orally at the end of the hearing that written reasons were to follow, but it was not necessary to do so - See paragraphs 8 to 15.

Practice - Topic 6967

Costs - Definitions - Costs payable in any event of the cause - [See Practice - Topic 7364 and Practice - Topic 7369 ].

Practice - Topic 7364

Costs - Costs of interlocutory proceedings - Costs of motions or applications - The applicants each filed an application against the respondent to expunge the same trademark - The proceedings were ordered to be heard at the same time, with the evidence in each to be evidence in the other - The applicants sought an extension of time under Federal Courts Rule 308 to conduct cross-examinations on a number of affidavits filed by the respondent - A prothonotary granted the extension - He also ordered costs payable in any event of the cause where "The Respondent unreasonably refused to consent to an extension of the deadline for completing cross-examinations or to facilitate cross-examinations. It also unfairly set up procedural obstacles, under the guise of 'strict compliance with the rules', in a clear attempt to extract concessions from the Applicants. Such tactics are inappropriate and should not be condoned." - The Federal Court upheld the costs award - See paragraph 30.

Practice - Topic 7369

Costs - Costs of interlocutory proceedings - Appeals - The applicants each filed an application against the respondent to expunge the same trademark - The proceedings were ordered to be heard at the same time, with the evidence in each to be evidence in the other - The applicants sought an extension of time under Federal Courts Rule 308 to conduct cross-examinations on a number of affidavits filed by the respondent - A prothonotary granted the extension - He also ordered costs payable in any event of the cause - The respondent appealed - The Federal Court dismissed the appeal - The grounds of appeal were entirely without merit and the appeal ought not to have been brought - Accordingly, each applicant was awarded $2,500 costs of the appeal in any event of the cause, payable forthwith - See paragraph 31.

Practice - Topic 7372

Costs - Costs of interlocutory proceedings - Payment forthwith - [See Practice - Topic 7369 ].

Cases Noticed:

Bank of the West v. 26' Well Craft Scarab Ship Weldga281596 et al., [2007] F.T.R. Uned. 722; 2007 FC 1112, refd to. [para. 10].

R. v. Hawke (1975), 7 O.R.(2d) 145 (C.A.), dist. [para. 11].

Virani v. Virani (2006), 222 B.C.A.C. 178; 368 W.A.C. 178; 264 D.L.R.(4th) 524; 2006 BCCA 63, dist. [para. 14].

Ribeiro v. Vancouver (City), [2004] B.C.A.C. Uned. 178; 41 B.C.L.R.(4th) 64; 2004 BCCA 482, refd to. [para. 14].

Solvay Pharma Inc. et al. v. Apotex Inc. et al., [2007] F.T.R. Uned. 276; 2007 FC 407, refd to. [para. 19].

Canada (Attorney General) v. Hennelly (1999), 244 N.R. 399 (F.C.A.), refd to. [para. 19].

Apotex Inc. v. Wellcome Foundation Ltd. et al. (2003) 241 F.T.R. 174; 29 C.P.R.(4th) 489; 2003 FC 1229, refd to. [para 24].

President Asian Enterprises Inc. v. President Group Realty Ltd. (1997), 129 F.T.R. 229 (T.D. Protho.), affd. [1997] F.T.R. Uned 269 (T.D.), dist. [para. 25].

Kurniewicz v. Canada (Minister of Manpower and Immigration), [1974] F.C.J. No. 922, refd to. [para. 25].

Azatian v. Canada (Minister of Citizenship and Immigration), [1996] F.C.J. 932, refd to. [para. 25].

Vlahou v. Canada (Minister of Manpower and Immigration), [1977] F.C.J. No. 27, refd to. [para. 25].

Taylor Made Golf Co. et al. v. 1110314 Ontario Inc. (1998), 148 F.T.R. 212 (T.D.), refd to. [para. 25].

Fibremann Inc. v. Rocky Mountain Spring (Icewater 02) Inc. et al., [2005] F.T.R. Uned. 600 (F.C.), dist. [para. 25].

Counsel:

Bradley Freedman and Stephen Warnett, for the applicant (T-2216-07);

Andrew Morrison, for the applicant (T-2217-07);

Murray Smith, for the respondent (T-2216-07/T-2217-07).

Solicitors of Record:

Borden Ladner Gervais, LLP, Vancouver, British Columbia, for the applicant (T-2216-07);

Shields Harney, Vancouver, British Columbia, for the applicant (T-2217-07);

Smith Barristers, Vancouver, British Columbia, for the respondent (T-2216-07/T-2217-07).

This appeal was heard at Vancouver, British Columbia, on May 12, 2008, by Zinn, J., of the Federal Court, who delivered the following decision on May 16, 2008.