2022 FC, 2022 FC 1287

Date: 20220913 Docket: T-1049-18 Citation: 2022 FC 1287 Ottawa, Ontario, September 13, 2022 PRESENT: The Honourable Justice Fuhrer BETWEEN:RE/MAX, LLCPlaintiffandSAVE MAX REAL ESTATE INC. AND RAMAN DUADefendants ORDER AND REASONS I.

Overview [1] RE/MAX LLC brings this motion for leave to file reply expert evidence in connection with the trial of this matter currently scheduledto commence on September 21, 2022. [2] The Defendants contest the Plaintiff’s motion. [3] Having considered the parties’ motion records, and having heard their oral submissions by videoconference on September 12, 2022, Iam not persuaded that this motion should be granted. For the reasons below, I thus dismiss RE/MAX’s motion. II. Background [4] In the underlying action, RE/MAX claims trademark infringement and passing off against the Defendants.

Among its allegations,RE/MAX asserts that the Defendants have advertised, offered, and provided real estate and related services in Canada in competitionwith RE/MAX in association with infringing trademarks which are confusingly similar to the RE/MAX Trademarks (as defined in theClaim). RE/MAX further alleges that the Defendants have adopted an infringing trade dress, which compounds the likelihood ofconfusion with the RE/MAX Trademarks. RE/MAX also avers that the Defendants have contravened paragraphs 7(b), 7(

c) and 7(

d) ofthe Trademarks Act, RSC 1985, c T-13. [5] In anticipation of the trial currently scheduled to begin on September 21, 2022, RE/MAX served the Defendants with the firstaffidavit of Dr. Ruth Corbin, RE/MAX’s expert, who described the survey, including the applicable methodology, conducted to establishthe asserted likelihood of confusion, and attached the survey report as an exhibit.

The survey mandate was to measure the extent, if any,to which Save Max branded property signs would be perceived as originating with RE/MAX, or as being associated with RE/MAXthrough a franchise. [6] In response to the first Corbin affidavit, the Defendants served RE/MAX with the affidavit of Jane Armstrong, the Defendants’expert, who provides her opinion as to whether the survey was designed and/or conducted appropriately, and whether the conclusionsdrawn by Dr. Corbin from the survey are sound. RE/MAX proposes a second affidavit of Dr. Corbin in reply that is the subject of thecurrent motion for leave. III.

Analysis [7] I am satisfied that the second Corbin affidavit encompasses either disagreement with the Armstrong affidavit or information that Dr.Corbin reasonably could have anticipated would be required to explain certain elements of the survey. A. Applicable Factors/Principles to Consider [8] Rule 279 of the Federal Courts Rules, SOR/98-106 [FCR] governs the admissibility of expert evidence generally.

For expertevidence to be admitted pursuant to Rule 279, the issue must have been defined by the pleading or in an order under the FCR Rule 265;the expert must have served an affidavit or statement prepared in accordance with the FCR; and the expert must be available at the trialfor cross-examination: Merck Sharp & Dohme Corp v Wyeth LLC, 2020 FC 1087 [Merck Sharp] at para 12. [9] Further to Merck Sharp, above at para 13, it is useful to consider expert evidence within the context of the following 4-partadmissibility test developed by the Supreme Court in R v Mohan, (SCC), [1994] 2 SCR 9 at para 20:

a) It should be relevant;

b) It should be necessary to assist the trier of fact;

c) It should not be subject to any exclusionary rules; and

d) A properly qualified expert should adduce it. [ 10 ] Rule 279 does not deal explicitly with reply expert evidence. There is no dispute, however, that the following four principles apply to determining the admissibility of reply expert evidence: 1. Evidence which is confirmatory of evidence already before the court is not to be allowed. 2. Evidence which is directed to a matter raised for the first time in cross examination and which ought to have been part of the plaintiff's case in chief is not to be allowed.

Any other new matter relevant to a matter in issue, and not simply for the purpose of contradicting a defence witness, may be allowed. 3. Evidence which is simply a rebuttal of evidence led as part of the defence case and which could have been led in chief is not to be admitted. 4. Evidence which is excluded because it should have been led as part of the plaintiff’s case in chief will be examined to determine if it should be admitted in the exercise of trial judge’s discretion.

See Halford v Seed Hawk Inc, 2003 FCT 141 at para 15 ; Merck Sharp , above at para 9 . [ 11 ] In addition, the following four factors should be considered in conjunction with the above principles:

a) Whether the further evidence serves the interests of justice;

b) Whether the further evidence assists the Court in making its determination on the merits;

c) Whether granting the motion will cause substantial or serious prejudice to the other side; and

d) Whether the reply evidence was available and/or could not be anticipated as being relevant at the date of the earlier evidence led in chief. See Merck-Frosst v Canada (Health) , 2009 FC 914 [ Merck-Frosst ] at para 10 . [ 12 ] Regarding the fourth factor, Justice Zinn suggests a two-step approach to analyzing the proposed reply evidence.

First, it must do more than just repeat or reinforce the earlier evidence; in other words, it must be more than a “mere statement of counter-opinion” or “mere disagreement” and must provide “evidence that critiques, rebuts, challenges, refutes, or disproves the opposite party’s evidence”: Merck-Frosst , above at para 23 ; Janssen Inc. v Teva Canada Limited , 2019 FC 1309 at para 17 . Second, if the proposed reply evidence is responsive to the other party’s expert evidence, then the Court must consider whether its relevance could have been anticipated at the earlier date: Merck-Frosst , above at para 25 .

See also Merck Sharp , above at para 11 . B. Application of Above Factors/Principles to Plaintiff’s Proposed Reply Evidence [ 13 ] The second Corbin affidavit purports to address concerns raised in the Armstrong affidavit regarding asserted omissions and deficiencies in the first Corbin affidavit and the survey report. [ 14 ] Paragraphs 1-6 of the second Corbin affidavit are largely in the nature of overview or introductory paragraphs. [ 15 ] Paragraphs 6-9 deal with “mischaracterizations” RE/MAX says the Defendants’ expert made.

In my view, these paragraphs are inadmissible because they simply confirm or reiterate what the survey report contains or how it is structured, and further, they merely disagree with Ms. Armstrong’s assertions. [ 16 ] Paragraphs 10-12 deal with the sample derivations (i.e. the derivations of the original survey participants) the Defendants’ expert says were omitted from the survey report. More specifically, paragraphs 11-12 describe new documents and information attached as exhibits regarding the conduct of the survey that were not included in the first Corbin affidavit.

I also find these paragraphs confirmatory in nature. Further, Dr.

Corbin introduces the documents and information in a general way earlier in the affidavit at paragraph 5 with the following statement: “Other information that I now include in this affidavit I did not consider necessary to include when preparing my first affidavit, for various reasons including that such information is publicly available or routinely understood by market researchers.” At the hearing of this motion, RE/MAX’s counsel also offered the additional explanation that the Defendants’ expert does not have the requisite qualifications and they will be seeking to challenge the expert’s qualifications at trial.

I am not persuaded by either argument for at least two reasons, as I explain below. [ 17 ] First, even if the documentation is publicly available, and could have been consulted by the Defendants’ expert, in my view this overlooks the overarching purpose of expert evidence which is to assist the Court. Second, the parties’ motion records do not permit the Court to make a determination about either expert’s relevant qualifications at this point. I find that this is a matter better left for the trial where the experts’ expertise can be challenged appropriately.

The Court reminds the parties that the FCR Rule 52.5 governs objections to experts, including the manner of raising an objection. I thus conclude that Dr. Corbin ought to have anticipated the relevance to the Court of the new documents and information introduced in paragraphs 11-12 of her second affidavit; no other, satisfactory explanation has been provided as to why she could not have done so. [ 18 ] Paragraphs 13-17 answer the question of what Dr. Corbin meant by the conclusion of “statistically significant differences” challenged by Ms. Armstrong. These paragraphs provide an explanation of the methodology Dr.

Corbin utilized in analyzing statistical significance of the survey results that was not included in the first Corbin affidavit. Again, I am of the view that Dr. Corbin ought to have anticipated the relevance to the Court of this information. As I explain above, it is not a satisfactory explanation, in the circumstances

here, to assert a lack of relevant qualifications of the other side’s expert on this motion, without anything else. Further, I agree with the Defendants that this is an example of impermissible “case-splitting.” [ 19 ] Finally, paragraph 18 disputes the applicability of an analysis by “margin of error” (contrary to the statistical method for the experimental design employed in the study). Again, I find that this paragraph exemplifies mere disagreement with Ms. Armstrong’s opinion. [ 20 ] I am not convinced that it is in the interests of justice to admit the affidavit at this point.

I thus find the entirety of second Corbin affidavit inadmissible. [ 21 ] That said, this Order and Reasons is not intended to preclude RE/MAX from asking the Court to reconsider aspects of the proposed reply evidence at trial, further to the FCR Rules 280(1)(

b) and 280(1.1), and for the reasons articulated by my colleague Justice Roy in Angelcare Development Inc. v Munchkin, Inc. , 2020 FC 1185 at paras 38 and 41 . IV. Conclusion [ 22 ] For the above reasons, the Plaintiff’s motion is dismissed. I exercise my discretion to award the Defendants their costs of this motion, in the all-inclusive, lump sum amount of $1,500, payable by the Plaintiff in any event of the cause. ORDER in T-1049-18 THIS COURT ORDERS that : 1 . The Plaintiff’s motion for leave to file the proposed reply expert evidence comprised of the second affidavit of Dr.

Ruth Corbin sworn on August 26, 2022 is dismissed. 2 . The Defendants are awarded their costs of this motion, in the all-inclusive, lump sum amount of $1,500, payable by the Plaintiff in any event of the cause. "Janet M. Fuhrer" Judge FEDERAL COURT SOLICITORS OF RECORD DOCKET: T-1049-18 STYLE OF CAUSE: RE/MAX, LLC v SAVE MAX REAL ESTATE INC. AND RAMAN DUA PLACE OF HEARING: HELD VIA VIDEOCONFERENCE DATE OF HEARING: September 12, 2022 ORDER AND reasons: FUHRER J. DATED: September 13, 2022 APPEARANCES : Karen F. MacDonald Dylan Braam For The Plaintiff Gillian Olsen Daniel Cappe For The Defendants

SOLICITORS OF RECORD : Karen F. MacDonald Renaud Garon Gendron Dylan Braam Norton Rose Fulbright Canada LLP Vancouver, British Columbia For The Plaintiff Andrew Brodkin Sandon Shogilev Daniel Cappe Jordan Scopa Goodmans LLP Toronto, Ontario For The Defendants