Date: 20000914
Docket: T-1158-99
BETWEEN:
ANCHOR BREWING COMPANY
Plaintiff
- and -
THE SLEEMAN BREWING & MALTING CO. LTD.
Defendant
REASONS FOR ORDER
MacKAY J.
[1] The defendant appeals from a portion of the decision of July 19, 2000 by Prothonotary Roza Aronovitch whereby she declined to order the answering of certain questions asked in discovery of the representative of the plaintiff, which the plaintiff had declined to answer.
[2] The appeal arises in the context of an action for trade-mark infringement and passing off, commenced by the plaintiff's Statement of Claim filed June 23, 1999. In the action, the plaintiff seeks declaratory, injunctive and monetary relief from production, advertising, offering for sale, and sale of beer in association with the trade-mark STEAM in Canada. That activity, by the defendant, is said to infringe upon and create confusion with the plaintiff's trade-mark. The plaintiff is the owner of registered Canadian trade-mark number TMA362,494.
[3] In response to the plaintiff's Statement of Claim, the defendant elected to proceed by oral examination for discovery before serving and filing a defence, as permitted by Rule 236(2) of the Federal Court Rules, 1998. In discovery of the plaintiff's representative, most questions put by the defendant were answered, either during discovery or upon subsequent consideration. Answers to a number of others were refused and the defendant's motion to compel answers led to the decision now appealed from. That Order did direct the answering of certain questions, but the Prothonotary declined to order the answering of certain others which are the subject of this appeal.
[4] When the matter came on for hearing, in the course of argument, counsel managed between them to resolve issues about certain questions. In the result, counsel for the defendant withdrew from consideration in this matter of appeal, without qualification, questions identified as P353 - L1; P550 - L13; P553 - L18 and P555 - L24. Further, on the undertaking of counsel for the plaintiff to respond to questions identified as P508 - L2; P508 - L22 and P509 - L18, counsel for the defendant withdrew from consideration in this appeal, those questions. In the result, some 21 questions are here at issue, all said to relate generally to the plaintiff's activities in the United States, principally in relation to the application for registration, registration of the plaintiff's trade-mark, litigation and enforcement in relation to that trade-mark, in that country.
The Issue
[5] The parties are agreed that the issue before the Court is whether the learned Prothonotary clearly erred in law.
[6] Counsel agree that the test is that stated in Canada v. Aqua-Gem Investments Limited (1993), 149 N.R. 273 (F.C.A.). That is, that the Court in reviewing a prothonotary's discretionary ruling will only intervene where the Court concludes the prothonotary clearly erred in law in the sense that the decision was based on a wrong principle or a misapprehension of the facts, or it is in error and deals with a matter vital to the final issues of the case.
[7] I agree with Madam Justice Reed in James River Corp. of Virginia v. Hallmark Cards, Inc. et al (1997), 72 C.P.R. (3d) 157 (F.C.T.D.), that an order with respect to the giving of answers on discovery, an interlocutory matter in the process of preparation for trial, is generally considered as a discretionary decision.
[8] The defendant urges that the Prothonotary clearly erred in stating, in relation to the situation of the defendant commencing discovery before filing a defence:
| While no restriction is placed by the Rules on the scope of such examinations, the jurisprudence of this Court precludes the use of discoveries prior to pleading for the purposes of engaging in a fishing expedition to ground a defence and specifically in the context of the presumed validity of the mark at law. (Syntex Pharmaceuticals International Ltd. v. Apotex Inc. (1984), 2 C.P.R. (3d) 533; F.P. Bourgault Industries... v. Flexi-Coil, (1994), 55 C.P.R. (3d) 352)1 |
[9] It is said on behalf of the defendant that this statement fails to distinguish certain
qualities of trade-mark law evident in this case from the principle supported by the cases cited which concern patent infringement actions. Here, the only pleading, the Statement of Claim, is based on rights claimed not only in relation to the registered trade-mark but also trade-mark rights at common law which are also alleged to have been adversely affected by confusion created by the defendant's actions. The defendant points to paragraphs 1(d), (e) (iv), 4 and 5 and perhaps 12 of the Statement of Claim where the plaintiff claims its rights in the trade-mark STEAM, not limiting those rights to the registered trade-mark.
[10] I agree that insofar as the statement of the Prothonotary relates to the law of trade-marks it should be limited to circumstances involving registered marks, but that statement is not the basis for her decision in regard to the questions in issue in this appeal. Rather, after indicating that questions relating to the plaintiff's business volumes and notoriety with Canadians in the United States are appropriate in relation to facts pleaded that rely on that business and reputation with Canadians travelling in the United States, the Prothonotary, in regard to the questions here in issue, stated:
| . . . I do not find the above questions which relate to the plaintiff's trade-mark applications, registrations, litigation and enforcement activities in the United States to be relevant in the context of an action for infringement in Canada. The questions at issue therefore need not be answered.2 |
[11] The plaintiff urges that the questions raised by the defendant which are herein in issue, appear to arise from documents produced by the plaintiff, without regard to the necessity of establishing a nexus to the issues pleaded. It is urged there is no relevance of the questions to the issues raised by the Statement of Claim.
[12] It is agreed that the questions at issue relate to the plaintiff's trade-mark application for registration, registration, litigation, and enforcement actions in the United States. Both parties refer to decisions of this Court which have held, in a diversity of other actions, such questions to relate to evidence that was irrelevant, or alternatively, that was relevant, to the issues in the actions concerned. In this case, I agree that the defendant is entitled to ask questions in relation to the claims of confusion with the plaintiff's interests in unregistered trade-mark rights. That said, I am not persuaded by the arguments of counsel for the defendant that the questions here at issue, relating to matters concerning registration of trade-marks in the United States and activities arising therefrom, are relevant to the plaintiff's interests in unregistered trade-mark rights in Canada that the plaintiff claims. In sum, I am not persuaded that the questions at issue are relevant to the facts and issues pleaded in the Statement of Claim.
[13] In the circumstances, I am not persuaded that the July 19, 2000 Order by Prothonotary Aronovitch was clearly wrong. The defendant's application, in relation to those questions not otherwise resolved at the hearing, is dismissed. An order goes so providing, with costs to be in the cause.
(signed) W. Andrew MacKay
JUDGE
OTTAWA, Ontario
September 14, 2000
__________________1 Order - Endorsement, Court File T-1158-99, dated 19 July 2000 (F.C.T.D.), p. 3