Court Of Appeal Distinguishes Between A Procedural And A Substantive Failure To Comply With The Code Of Conduct In Dismissing An Appeal (Intellectual Property Weekly Abstracts Bulletin (Week Of February 2nd, 2015)

Edited by Chantal Saunders , Beverley Moore and Adrian Howard

Trademark Decisions

Court of Appeal distinguishes between a procedural and a substantive failure to comply with the Code of Conduct in dismissing an appeal

Saint Honore Cake Shop Limited v. Cheung's Bakery Products Ltd., 2015 FCA 12

We previously summarized a decision (2013 FC 935) where the Federal Court had refused to allow the registration of applications for marks containing Chinese characters because they would be confusing to a prior mark. The fact that the new marks were in Chinese did not change the result because a substantial portion of the actual consumers would be able to read and understand Chinese. The Federal Court of Appeal has dismissed the appeal from that decision.

In the earlier decision, one of the originally filed expert affidavits was not found to be admissible because it was missing the signed Code of Conduct. A subsequently signed Code of Conduct was not found to have cured the defect. The Court of Appeal disagreed with this interpretation of Rule 52.2 of the Federal Courts Rules.

The Court of Appeal found that while some or all of the expert's affidavit can be excluded for failing to comply with the Code of Conduct, the same is not true for omitting to comply with the particular content requirements of an expert affidavit set forth by Rule 52.2(1). The Court of Appeal held there was no evidence that Dr. Chen had failed to comply with the Code of Conduct. Rather the only evidence before the judge was the inadvertent absence of the certificate acknowledging that Dr. Chen had read the Code of Conduct for Expert Witnesses when the Chen affidavit was sworn on November 25, 2011. The addition of the later sworn certificate cured the defect, and there was no evidence on record that the delay in providing the required certificate caused any prejudice to the respondent.

However, even after considering this evidence, the Court of Appeal did not find the affidavit to be so significant to have materially affected the decisions of the board. As a result, the appeal was dismissed.

Common law trademark exempt to the application of the Charter of the French Language

Quebec (Attorney General) c. 156158 Canada Inc. (Boulangerie Maxie's), 2015 QCCQ 354

A series of anglophone merchants in Quebec were charged with violating the Charter of the French Language. The charges included failing to respect the marked predominance of the French language on bilingual signs, not including French on signs at all, and providing goods and services over the internet only in English. While many defences were raised, we shall address the defence of the use of a trademark (starting at para. 104).

The court of Quebec noted that section 28 of the Charter of the French Language permits advertising in a language other than French when it is using a recognized trademark within the meaning of the Trade-marks Act, unless a French version has also been registered.

None of the impugned trademarks were registered. However, a prior decision of the Superior Court of Quebec had found that common law trademarks could be exempt from the Charter of the French Language. In this case, the Court found that there needed to be sufficient evidence to support the finding of a common law trade-mark. Where the evidence was found to support a common law trade-mark, the exception to the Charter of the French Language applied and the charge was dropped.

LAZARO COHIBA for rum still found to be confusing with COHIBA for tobacco

Tequila Cuervo, S.A. v. Empresa Cubana del Tabaco, 2015 FCA 15

We previously summarized a decision of the Federal Court (2013 FC 1010) that refused to register a trademark for COHIBA rum where it was found that the average consumer would likely think that the rum was associated with the tobacco of the same name. The Court of Appeal has dismissed the appeal, finding the Federal Court did not make an error in the appreciation of the evidence.

Other Decisions of Interest

Consultation with Expert Witnesses is Permissible, and Drafts and Notes will Typically be Considered Subject to Litigation Privilege

Moore v. Getahun, 2015 ONCA 55

This case deals with an appeal in a medical malpractice suit. However, central issues on the appeal relate to the use of expert reports in trials. This summary focuses on those issues. The trial judge held that it was improper for counsel to assist an expert witness in the preparation of the expert's report. The trial judge further considered the expert's reports, which were not entered into evidence, nor subjected to cross-examination, but rather were tendered as an aide memoire, to make credibility assessments. The OCA held that the trial judge had erred in both of these respects.

During trial, one of the experts testified that he sent a draft report to counsel for review, and that his final report was produced after a ninety minute telephone call with counsel. The judge asked for production of the draft reports and scrutinized the notations and changes made. The trial judge's ruling stated a strong disapproval for the practice of counsel reviewing draft expert reports, and indicated that there should be full disclosure of any changes to an experts report as a result of counsel's corrections, suggestions or clarifications. On appeal, numerous groups on all sides of court proceedings intervened. The OCA concluded that the submissions of the parties and the interveners indicated that if accepted, the trial judge's ruling would represent a major change in practice, as it is widely accepted that consultation, within limits, between counsel and experts is necessary to ensure the efficient and orderly presentation of expert evidence.

The OCA held that the amendments to the rules of civil procedure did not change the law with respect to expert witnesses, they just codified the basic common law principles. Furthermore, the changes "suggested by the trial judge find no support in the various reviews and studies on civil justice reform". Banning all "undocumented discussions between counsel and expert witnesses or mandating disclosure of written communications is unsupported by and contrary to existing authority." The OCA held that lawyers should keep the expert's need to remain objective at the front of their minds, that the ethical standards of other professional organizations also require their members to be independent and impartial when giving evidence, and cross-examination is an effective tool to deal with situations where there is a suggestion that counsel improperly influenced a witness. Furthermore, the OCA held that expert witnesses need the assistance of lawyers to ensure their reports are framed in a way that is understandable and responsive to the issues.

The OCA held that the draft reports of experts not called are privileged, as are drafts, notes and records of any consultations even when the expert is called. Disclosure may be required only in certain circumstances. Litigation privilege cannot be used to shield improper conduct; however, a factual foundation is required before a party can demand production of draft reports. Evidence of a 90 minute call plainly does not meet the threshold for an allegation of improper influence. Thus, the trial judge erred in ordering production of the drafts and notes in this case.

During the trial, the judge also asked several times for the expert reports to be made exhibits. Counsel refused these requests. The reports were only given to the trial judge as an aide memoire. Thus, the OCA held it was an error of law to consider them. The reports have no evidentiary value. If a witness was not cross-examined on inconsistencies between their testimony and their report, it was not open to the judge to place any evidence in assessing credibility on the perceived inconsistency.

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