A recent decision from the Supreme Court of Canada penned by Justice Rothstein has intrigued trade-marks lawyers who are asking to what extent it may change Canadian trade-marks law, for example by opening the door to the American “initial interest confusion” doctrine, which tolerates a degree of initial or temporary confusion that is eliminated before a purchase is made, and weakens the notion that consumers of expensive goods and services are less easily confused.
However, the more immediate impact of the decision may be apparent in procedural and evidentiary issues and even outside of trade-marks cases and may result in:
• less work for “expert” witnesses
• lower costs for litigants
• a rediscovery of “common sense” in the court room and at “expert” tribunals.
There is long discussion about expert witness evidence that was unnecessary in this case and based upon wrong legal assumptions and may therefore have “diverted the trial judge from the correct legal test to apply when judging confusion”. Justice Rothstein reminds us of the need to keep litigation costs down and that unnecessary expert evidence should not be admissible. He specially charges case management judges and prothonotaries to "assess the admissibility and usefulness of proposed expert and survey evidence at an early stage so as to avoid large expenditures of resources on evidence of little utility,"
This is very important because parties with a big litigation budget have been known to intimidate and prevail over parties with a smaller budget through the use of unnecessary (never mind non-independent and even not properly "qualified") “expert” testimony that it may be risky not to counter.
Justice Rothstein reminds us that in a case such as this, where a correct confusion analysis does not require expert evidence about “morphology, semantics, rules of grammar and conventions of expression”, judges should just use their “common sense” and exclude such evidence if it is not needed.
He also reminds us other mandatory rules of evidence when it comes to “experts” as set forth by the Supreme Court in 1994 in R. v. Mohan. These rules apply to all cases.
I would imagine that some of my colleagues who practice before the Copyright Board and, indeed the Board itself, will find this decision to be of significant interest.