Law Times

Page 14 April 4, 2016 • lAw Times www.lawtimesnews.com CASELAW CaseLaw is a weekly summary of notable civil and criminal court decisions by the Supreme Court of Canada, the Federal Court of Canada, and all Ontario courts. These cases may be found online in BestCase and other electronic resources from carswell.com. To subscribe, please call 1-800-387-5164. Federal Court of Appeal Industrial and Intellectual Property PATENTS Judge failed to properly con- duct analysis of interaction between s. 4 of Public Servants Inventions Act (Can.) and s. 53(1) of Patent Act (Can.) Individual plaintiff was enrolled in Canadian Forces' Regular Force and following his retire- ment, he was placed in Reserve Force. Individual plaintiff founded plaintiff company and applied for patent. Plaintiffs brought proceedings for patent infringement. Crown sought dismissal of claim on basis that individual plaintiff was mem- ber of Canadian Forces when he filed patent and breached statu- tory obligations under s. 4 of Public Servants Inventions Act (Can.) (PSIA) by failing to dis- close public servant status. Judge found that individual plaintiff was public servant for purposes of PSIA when he applied for pat- ent and did not disclose public servant status as required. Judge found that omission constituted material untrue allegation for purposes of s. 53(1) of Patent Act (Can.) (PA). Plaintiffs appealed. Appeal allowed. Judge properly concluded that individual plain- tiff was public servant within meaning of PSIA when he ap- plied for patent. For purpose of PSIA, all members of Canadian Forces were "public servants" whether they were in Regular Force or Reserve Force. Judge failed to properly conduct analy- sis of interaction between s. 4 of PSIA and s. 53(1) of PA. There was apparent conf lict and lack of consistency between Patent Rules (Can.) and Public Servants Inventions Regulations (Can.) regarding required forms. Rules did not refer to obligation to dis- close public servant status, while Regulations expressly required such disclosure. Pursuant to PA, Rules had same force and effect as if they had been enacted in PA itself but PSIA contained no similar provision and Regula- tions were considered to be sub- ordinate legislation. Rules car- ried greater weight and prevailed over Regulations. Failure to dis- close public servant status did not invalidate patent, as such dis- closure was not required under PA or Rules. Individual plaintiff had obligation to disclose public servant status under s. 4(2) of PSIA but he had no such obliga- tion under PA when he applied for patent. Judge erred in finding that individual plaintiff 's failure to disclose public servant status at time patent application was filed was untrue material allega- tion pursuant to s. 53(1) of PA. Brown v. Canada (Feb. 5, 2016, F.C.A., Wyman W. Webb J.A., Richard Boivin J.A., and Yves de Montigny J.A., A-419-14) Deci- sion at 252 A.C.W.S. (3d) 320 was reversed. 262 A.C.W.S. (3d) 717. Federal Court Administrative Law FREEDOM OF INFORMATION Parts of discussion paper were subject to solici- tor and client privilege In 2006, Service Canada received access to information request from lawyer with Nova Scotia Legal Aid seeking variety of re- cords related to Canada Pension Plan credit splitting. Request was transferred to Employment and Social Development Canada (ESDC). ESDC respondent to request but decided to exclude discussion paper from record on grounds that solicitor-client privilege exempted document pursuant to s. 23 of Access to Information Act (Can.). In 2008, lawyer complained to Office of Information Commissioner of Canada (OIC) about exemp- tions to his request. Discussions between OIC and ESDC led to disclosure of parts of discussion paper in 2014. ESDC maintained solicitor and client privilege over remaining parts of discussion paper. Lawyer authorized OIC to proceed with application for ju- dicial review. At hearing, ESDC admitted that discussion paper had not been prepared by legal advisor. Application allowed in part. After reviewing discussion paper, court found that three parts remained subject to solici- tor and client privilege. One of those parts contained policy ad- vice stemming from legal opin- ions received by ESDC. Parties agreed that another part con- taining headnote should not be disclosed. Third part contained two sentences giving details about questions which were sub- mitted to legal counsel and were privilege. Balance of discus- sion paper was to be disclosed. Canada (Information Com- missioner) v. Canada (Minis- ter of Employment and Social Development) (Jan. 12, 2016, F.C., Michel Beaudry J., T-840- 15) 262 A.C.W.S. (3d) 552. Industrial and Intellectual Property TRADEMARKS Consumer would likely be con- fused as to whether respondent's trademark originated from same source as applicant's trademark Respondent filed applications for trademarks BENJAMIN MOORE NATURA and BEN- JAMIN MOORE NATURA & Design based on proposed use in Canada in association with interior and exterior paints. Ap- plicant sold paint with BEAUTI- TONE NATURAL trademark and filed statements of opposi- tion. Trademarks Opposition Board rejected applicant's op- positions. Board rejected appli- cant's argument that respondent failed to comply with Trade- marks Act (Can.) and found that respondent's marks were distinc- tive and would not cause confu- sion. Applicant appealed. Ap- peal allowed. Applicant adduced new evidence that would have materially affected decision. New evidence was considered de novo. New evidence established that respondent learned that ap- plicant had prior rights in NA- TURA and responded by apply- ing for trademarks BENJAMIN MOORE NATURA and BEN- JAMIN MOORE NATURA & Design but did not establish non-compliance with s. 30(e) or (i) of act. There were insuf- ficient grounds to conclude that respondent did not intend to use applied for marks in Canada at time of filing. In considering whether there was likelihood of confusion, distinctiveness fac- tor slightly favoured applicant; length of use factor slightly fa- voured applicant; nature of wares factor favoured applicant; there was some overlap in channels of trade; degree of resemblance factor favoured applicant; and family of trademarks argument supported position of appli- cant. Ordinary consumer would likely be confused as to whether parties' trad-marks originated from same source, particularly marks used in association with paint. As matter of first impres- sion, casual consumer somewhat in hurry who encountered BEN- JAMIN MOORE NATURA paint, when consumer had no more than imperfect recollec- tion of applicant's BEAUTI- TONE NATURA paint, would likely be confused as to source of wares, at least at later material date when applicant's NATURA brand had acquired particu- lar distinctiveness in respect of paint. Consumer would likely be confused as to whether re- spondent's trademark originated from same source as applicant's trademark. Board's decision was set aside and respondent's trade- mark applications were refused. Home Hardware Stores Ltd. v. Benjamin Moore & Co. (Dec. 4, 2015, F.C., Robin Camp J., T-2441-14) 262 A.C.W.S. (3d) 718. Ontario Civil Cases Assignment ASSIGNABILITY Motion judge did not err in failing to construe transaction between parties as valid assignment at law Defendant was insurer and plaintiff performed automobile windshield repairs to 1,844 automobiles owned by defendant's insureds. Plaintiff claimed it obtained assignments from insured automobile owners of their right to receive direct payments for repairs from insurer by virtue of assignment clause in repair estimate. Plaintiff claimed defendant agreed to pay it for windshield repairs at market rate in industry of $100 per repair and that defendant breached contract by paying only $50 per repair. Plaintiff brought motion for summary judgment and defendant brought cross motion for summary dismissal of plaintiff 's action. Motion judge dismissed plaintiff 's motion for summary judgment and granted defendant's motion for summary dismissal. Plaintiff appealed. Appeal dismissed. Motion judge did not err in failing to construe transaction between parties as valid assignment at law. Motion judge's findings established that there was contract for repair at specified price between parties and purported assignment of right to receive proceeds of insurance was ineffective because car owners had paid nothing, had no claim against defendant and had nothing to assign. Motion judge's findings of fact that defendant made offer to repair each automobile at specified price by means of written authorization, and plaintiff accepted each offer by completing repair, were full supported by record. Motion judge properly considered duty to assess cost of damage, and doctrines of estoppel by convention and representation. Defendant gave clear notice it would not continue to pay $100 for windshield repairs. Plaintiff failed to demonstrate that defendant engaged in any unlawful conduct vis-à-vis its insureds and it breached no duties to its insureds. ResQ Auto Glass Inc. v. Co- operators General Insurance Co. (Jan. 14, 2016, Ont. C.A., Simmons J.A., LaForme J.A., and Huscroft J.A., CA C60144) Decision at 249 A.C.W.S. (3d) 572 was affirmed. 262 A.C.W.S. (3d) 726. Courts ABUSE OF PROCESS Application judge was entitled to refuse appellant's standing at hearing Order found appellant to be vex- atious litigant. Application judge denied appellant standing and ejected him from courtroom. Appellant asserted application judge failed to make allowances for his debilitating medical ill- ness. Appellant asserted appli- cation was brought in incon- venient location that prevented him from having benefit of rep- resentation. Appellant asserted he had some success in litiga- tion. Appellant appealed assert- ing he was not accorded right to be heard. Appeal dismissed. Application judge was entitled to refuse appellant's standing at hearing because he failed to comply with earlier peremptory order that unless he filed ap- pearance and responding mate- rial by specified dates, he would not have standing at hearing. Appellant repeatedly disrupted hearing and made abusive com- ments to judge. Judge was en- titled to have appellant escorted from courtroom. Appellant's illness was not relevant factor. Appellant's illness did not pre- vent him from initiating and participating in proceedings. Location was not inconvenient to appellant and argument that appellant was unrepresented because of location of hearing was unsupported by evidence. Minor and occasional success appellant enjoyed did not de- tract from his long history of in- stituting multiple and meritless proceedings and his vexatious manner of conducting them. Hodder v. Lindhorst (Jan. 8, 2016, Ont. C.A., R.G. Juriansz J.A., C.W. Hourigan J.A., and L.B. Roberts J.A., CA C60068) 262 A.C.W.S. (3d) 640. JURISDICTION Solicitors Act (Ont.) did not oust jurisdiction of small claims court respecting written retainer agreements Defendant retained plaintiff lawyer in 2009 to act for her in family law matter. She signed retainer agreement which set out hourly rate that plaintiff would charge as well as references to accounts that would be rendered. Plaintiff commenced small claims court action against defendant for outstanding accounts in amount of $8,488.33. Defendant brought motion to dismiss action on basis that small claims court had no jurisdiction to hear case. Motion dismissed. Previous decision found that Solicitors Act (Ont.) ousted jurisdiction of

• Cover