 | Assessment of Costs – Invitation for Submissions |
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Assessment of Costs – Invitation for Submissions as to Costs is not a Rule 400 Exercise of Discretion by the Court and Will Not Trigger Payment of Interest
Eli Lilly and Company v. Novopharm Limited and Registrar of Trade-Marks, 2009 FC 797 (Charles E. Stinson, Assessment Officer)
July 31, 2009
Scott Robertson for the Applicant, Eli Lilly and Company (“Eli Lilly”)
Paula Bremner and Robert Shapiro for the Respondent, Novopharm Limited (“Novopharm”)
This was an appeal of the decision of the Registrar of Trade-marks regarding the Statement of Opposition by the Respondent, Novopharm, to the registration by Eli Lilly of a trade-mark for a pharmaceutical (20 mg capsule dosage for Prozac) used for the treatment of depression. Judgment was rendered on July 30, 2006 (the “Decision”). By Order dated April 2007 (the “Costs Decision”) the Court ordered that costs of Novopharm were to be assessed by reference to Columns IV and V of Tariff B and that costs were to be awarded for second counsel. Otherwise, costs were to be assessed in the discretion of the assessment officer.
Of note in the assessment were the issues of double costs and the relevant date for the calculation of interest.
On the issue of double costs, Novopharm made an offer to settle which comprised of two parts, the first of which expired on the deadline for submission of the Applicant’s record and the second expired upon judgment. The second part of the offer to settle called for discontinuance by Eli Lilly and for Novopharm to secure its costs further to Rule 420 of the Federal Courts Rules excluding attendance at hearing costs. Eli Lilly argued that the settlement offer was essentially a call to capitulate with no element of compromise thereby disqualifying it as a trigger for double costs. The Assessment Officer held that the settlement offer met the technical requirements of Rule 420(2)(b) and allowed for the doubling of costs for items that occurred before judgment but not for work that occurred after judgment.
As to the relevant date for the calculation of interest, Section 129(1) of the Courts of Justice Act states that interest would run from the date of judgment. In this case, judgment was rendered on July 30, 2006. However, in the Decision there was no order that Novopharm was to get its costs, but rather the Decision invited submissions on costs by the parties. The Assessment Officer held that such an invitation for submissions was not a Rule 400 exercise of discretion for costs, which would have favored Eli Lilly or denied Novopharm. That exercise of discretion did not occur until the Costs Decision on April 23, 2007, which was held to be the applicable date pursuant to the Courts of Justice Act.
By: Rosamaria Longo, Lang Michener LLP
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