PRACTICE
Costs
Plaintiff’s expungement claim dismissed with costs as was counterclaim for passing off, trade‑mark infringement, depreciation of goodwill—Plaintiff seeking order directing assessment officer to award it costs until date of settlement offer, double costs thereafter—Also seeking order for assessment of costs at high end of Column IV, Tariff B— Federal Court Rules, 1998, r. 420(1) imposing two conditions to awarding double costs to party that made settlement offer: in writing and not revoked—These were met—Question whether offer was truly offer to settle as contemplated by rule—Defendant says it lacked element of compromise—If benefits of offer entirely one‑sided, not offer within Rules— “Offer” inviting other side to capitulate while making no concession, is one‑sided and double costs will not be awarded —But, unless benefits of offer are wholly one‑sided, rule 420 is satisfied if offer clear, unequivocal, leaving other side only to decide whether to accept or reject it—Double costs should be awarded herein—Benefits not one‑sided: in return for defendant discontinuing infringement, passing‑off counterclaim, plaintiff would abandon trade‑marks expunge-ment efforts—Not fatal that offer not including concession as to costs—Court may vary costs order providing special directions under Rules, s. 403 not inconsistent with original order—Under r. 400, costs primarily matter of discretion—But Court not of view defendant’s costs should be reduced—While defendant did delay two years before withdrawing counterclaim for injunctive, other relief, it did suggest going to trial on counterclaim alone, thereby narrowing issues for determination, saving time, expense— Plaintiff’s reliance on r. 399, Saywack v. Canada (Minister of Employment and Immigration), [1986] 3 F.C. 189 (C.A.) misplaced as offer to settle not something discovered after judgment necessitating variation of order—Under r. 422, offers may not be disclosed to Court prior to judgment, are outside type of unexpected circumstance to which r. 399 applicable—In seeking costs at high end of Column IV, Tariff B, plaintiff says case raised numerous issues as to trade‑mark rights, relationship to domain names, novel evidentiary issues regarding Internet use at trial—Defendant argued Court may not adjust costs scale from column III to IV upon r. 403 motion for special directions: comments of O’Keefe J. in Caricline Ventures Ltd. v. ZZTY Holdings Ltd., 2002 FCT 566—Court not in agreement with restrictive view of jurisdiction expressed in that case—While departure from Column III is exceptional, basic principle that Court has full discretionary power—For a summary of principles applicable on r. 403 motion, see opinion of Rothstein J.A. in Consorzio del Prosciutto di Parma v. Maple Leaf Meats Inc., [2003] 2 F.C. 451 (C.A.)—In Consorzio, while appeal was dismissed “with costs”, F.C.A. ordered lump‑sum increase— Argument Court lacks jurisdiction to entertain costs increase motion once costs order made rejected in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 FCA 278—On this point, see also: Ludco Enterprises Ltd. v. Canada, 2002 FCA 450—Logic of CCH, Ludco applicable herein: so long as moving costs from column III to IV not “inconsistent” with order appeal dismissed “with costs”, Court has jurisdiction to entertain motion—Increasing costs to certain extent, whether as lump sum or by resort to different tariff column, in line with r. 403—In AB Hassle v. Apotex Inc., 2004 FC 1582, Lemieux J. went so far as to say no jurisdictional bar to awarding costs on solicitor‑client scale after application denied with costs even though such awards reserved for rarest circumstances— Increased costs could not be granted where Court constrained by order “costs to be taxed on the ordinary scale”—In instant case, questions of law, evidentiary issues relating to Internet were novel, complex—Costs of both sides to be assessed under Column IV—Federal Court Rules, 1998, SOR/98‑106, rr. 399, 400 (as am. by SOR/2002‑417, s. 25(F)), 403, 420(1), 422, Tariff B, Column III, IV.
ITV Technologies, Inc. v. WIC Television Ltd. (T‑1459‑97, 2005 FC 744, Tremblay‑Lamer J., order dated 25/5/05, 16 pp.)