Aladdin Industries, Inc. v. Canadian Thermos Products Ltd.

LASKIN J. (in Chambers)—On August 17, 1964, proceedings were initiated by the applicant Aladdin, a competitor of the respondent, to expunge the registration of certain trade marks of the respondent, namely the use of the word “Thermos” (and in one instance “Super Thermos”) in association with various vacuum-insulated wares which the respondent manufactures and distributes throughout Canada. The original registration was in 1907 (and related mainly to vacuum-insulated bottles), there was another in Newfoundland in 1908, another in 1931 and a fourth in 1960. There had been no challenge to the use of the marks until the appellant initiated one in 1964. The expungement proceedings took a leisurely course, albeit some of the delay was the result of illness of counsel on each side and of extraordinary preparations for trial at which Aladdin produced almost 100 affidavits and more than 40,000 documents, mostly letters. The trial took 18 days in October, 1968 and judgment of dismissal was given by Kerr J. on March 11, 1969.

A notice of appeal to this Court, dated and served on the respondent on May 6, 1969, was filed on May 8, 1969. There was then silence for some 18 months, but respondent’s counsel understood that appellant was considering

[Page 847]

whom to retain as counsel to take the appeal. On or about November 24, 1970, counsel for the respondent was informed by telephone of the name of counsel who had been retained by the appellant. Of course, this counsel needed time to acquaint himself with the case, but it was not until June, 1971, that he raised the question of settling the contents of the appeal case. It was indicated to him by respondent’s solicitors that a specific proposal should be made. Three months’ silence followed, and on September 28, 1971, counsel for respondent wrote to say that if the case was not inscribed by the end of October he was instructed to have the appeal dismissed for want of prosecution.

This letter elicited a reply on October 18, 1971, in which certain proposals were made, and the letter concluded that counsel would telephone to arrange for a discussion. Respondent’s counsel answered by letter of October 21, 1971, asking for a draft agreement on the contents of the appeal case, and expressing concern about the continuing delay. A proposed agreement was forwarded by appellant’s counsel in a letter of October 28, 1971. Respondent’s counsel had different views on what the appeal case should contain and wrote on December 23, 1971 that if his views could not be met, an application should be made to settle the matter.

Opposing counsel were in touch with each other shortly thereafter but no agreement was reached. Respondent’s counsel wrote on January 19, 1972, and again on February 7, 1972, asking for action but received no reply. On March 3, 1972, he moved before the Registrar for a certificate of dismissal pursuant to Supreme Court Rule 59 and joined with it a request for an order under s. 76 of the Supreme Court Act and under Rules 9 and 59 for an order of dismissal of the appeal because of undue delay.

On March 9, 1972, appellant moved before a judge of this Court for leave on short notice to apply under Rule 108 to enlarge the time for

[Page 848]

bringing on the appeal and filing the appeal case and serving copies thereof.

In view of the nature of the appellant’s motion, and of the relief sought by the respondent under s. 76 of the Supreme Court Act, the Registrar referred the respondent’s motion to me. Both came on before me on March 10, 1972. The material disclosed that a transcript of the trial proceedings was not ordered either by the Court or by the parties, that the firm of reporters engaged for the trial disbanded in April, 1969, and that the notes taken in the case were thrown out when the offices were closed. If the appeal were to proceed, it would be without a transcript upon which the respondent places great store because, notwithstanding its success in the proceedings, it would seek to challenge certain findings of the trial judge and to argue points of admissibility of evidence. Counsel for the appellant alleges that save for certain discovery evidence, which he was prepared to omit from the appeal case, other material adduced was documentary and is available. It is only recently that counsel learned that a transcript cannot be obtained, but there is no explanation for appellant’s failure either to order a transcript earlier or to bring the matter into view earlier.

What is involved in this trade mark case is, in the main, an issue of distinctiveness in the light of the trial judge’s conclusion that the trade mark was properly registrable in 1907 but the word “Thermos” had become generic and descriptive by 1964 when the expungement proceedings were taken. The evidence adduced is important, and I do not see how the want of a transcript can be cured (especially when, in addition, the parties cannot agree on the contents of the appeal case) without this Court becoming a court of re-trial instead of hearing the case on appeal.

Regrettable though it be so to conclude, I am of the opinion that the delay in bringing on the

[Page 849]

appeal has been inordinate. There is no acceptable explanation for it, although I recognize the problem that counsel would have in being brought into the case one and one half years after notice of appeal was served and filed. This does not, however, excuse the appellant in respect of such a departure from the Rules as is disclosed here. Coupled with the fact that there is no transcript, and having regard to the nature of the main issue in the appeal, I do not think this is a case in which I should grant any indulgence as to time. I note that in his reasons for judgment, reported in [1969] 2 Ex.C.R. 80, Kerr J. suggested possible leeway to the appellant in saying this (at p. 120):

The appellant’s motion is dismissed with costs, and there will be an order on the respondent’s motion for dismissal of the appeal with costs.

Solicitors for the appellant: MacBeth and Johnson, Toronto.

Solicitors for the respondent: Ridout and Maybee, Toronto.