Date: 19980402
Docket: T-2521-97
IN THE MATTER OF ss. 7, 9, 19, 20, 22, 25, 50, 52 and 53.2 of
the Trade-marks Act, R.S.C. 1985, Ch. T-13
IN THE MATTER OF ss. 3, 5, 6, 13, 25, 27, 34-39 et seq. of
the Copyright Act, R.S.C. 1985, Ch. C-42, as amended
BETWEEN:
HAVANA HOUSE CIGAR & TOBACCO
MERCHANTS LTD. and EMPRESA CUBANA DEL TABACO
trading as CUBATABACO and HABANOS S.A.
Plaintiffs
- and -
JANE DOE and JOHN DOE and
OTHER PERSONS, NAMES UNKNOWN,
WHO OFFER FOR SALE, SELL, IMPORT, MANUFACTURE, DISTRIBUTE,
ADVERTISE, OR DEAL IN UNAUTHORIZED OR COUNTERFEIT
HAVANA HOUSE MERCHANDISE, AND THOSE PERSONS LISTED
IN SCHEDULE "A" HERETO
Defendants
REASONS FOR ORDER
(Delivered from the Bench at Toronto, Ontario
Monday, March 30, 1998
ROTHSTEIN, J.:
[1] This is a motion to add 714660 Ontario Inc. t/a Copa-Habana Smoke & Cigar Shop ("Copa-Habana") as a defendant and plaintiff by counterclaim to this action. This is an Anton Piller proceeding, the plaintiffs having named as defendants "JANE DOE and JOHN DOE and OTHER PERSONS, NAMES UNKNOWN, WHO OFFER FOR SALE, SELL, IMPORT, MANUFACTURE, DISTRIBUTE, ADVERTISE, OR DEAL IN UNAUTHORIZED OR COUNTERFEIT HAVANA HOUSE MERCHANDISE", and 111627 Ontario Inc. trading as Kozy Korner's ("Kozy Korner's") and Anthony Nigro ("Nigro").
[2] Copa-Habana says that it supplied, on consignment, to the parties that the plaintiffs have named as defendants - Kozy Korner's and Nigro - the cigars that the plaintiffs allege are counterfeit, and should not be marketed in Canada. Having supplied cigars to Kozy Korner's and Nigro on consignment, Copa-Habana says it is its merchandise that is at issue and therefore Copa-Habana has a real interest in the outcome of this litigation.
[3] For some reason, the plaintiffs do not want Copa-Habana to be a defendant in this action, even though their style of cause names "OTHER PERSONS, NAMES UNKNOWN, WHO OFFER FOR SALE, SELL, IMPORT, MANUFACTURE, DISTRIBUTE, ADVERTISE, OR DEAL IN UNAUTHORIZED OR COUNTERFEIT HAVANA HOUSE MERCHANDISE". The nature of the plaintiffs action is to attempt to stop all persons from marketing what the plaintiffs call unauthorized or counterfeit Havana House merchandise in Canada, which begs the question why the plaintiffs do not want Copa-Habana as a defendant in this action.
[4] In Canadian Red Cross Society v. Simpsons Ltd., [1983] 2 F.C. 372 (T.D.); 70 C.P.R. (2nd) 19, the C.P.R. head note reads in part:
| Twentieth Century-Fox Film Corporation is directed to be joined as a defendant. It has a direct interest in the very issue to be determined. If the plaintiff succeeds, the decision will directly affect its rights and pocket-book. |
At page 21 (C.P.R.), Mahoney, J., as he then was, states:
| . . . The defendant bought the towels from such a licensee; there is no contractual relationship between Fox and the defendant. Fox has a clear and immediate interest in the outcome of the action. The plaintiff, with the obvious intent of limiting its exposure to damages in the event it obtains the interlocutory injunction but fails at trial, has elected to sue one merchandiser in respect of one item of merchandise. |
At page 22 (C.P.R.), he continues, having regard to Ontario's jurisprudence:
| . . . The conclusion was: it is not necessary that the applicant have an interest in the immediate issue; it is sufficient that determination of that issue will directly affect his rights or his pocket-book. However, even then, the court has the discretion to refuse the application if it considers his interests are already adequately represented. |
| Fox has here a direct interest in the very issue to be determined. The decision here, if the plaintiff succeeds, will directly affect Fox's rights and pocket-book. While I accept that the present defendant will defend the action, its interest in doing so is obviously not to be compared to Fox's. Fox ought not to be in the position of defending its rights vicariously. To require it to do so would entail a risk that its interests would not be adequately represented. |
This is directly applicable to the case at bar. Kozy Korner's and Nigro are retail sellers, and Copa-Habana is the distributor to them. It may well be that Kozy Korner's and Nigro will defend, but there is no reason that Copa-Habana should have to accept that its interest and its ability to market its merchandise as the original distributor to them should have to be defended vicariously. Its rights and its pocket-book would be directly affected by any order made against Kozy Korner's and Nigro and it therefore has a direct interest to protect.
[5] I accept the general proposition put forward by the plaintiffs that a plaintiff should not be required to sue defendants that it chooses not to sue. However, Federal Court Rule 1716(2)(b), C.R.C. 1978, c. 663, as amended, provides for the addition of a party ". . . who ought to have been joined as a party or whose presence before the Court is necessary to ensure that all matters in dispute in the action may be effectively and completely determined and adjudicated upon. . .". The decision as to the parties in an action is not entirely within the discretion of the plaintiffs. Whether the plaintiffs, in choosing not to sue Copa-Habana, intended to limit their exposure to damages or to exclude a person with resources from defending the action is not clear, and it is not for the Court to speculate on this question. It is obvious, however, that the action is intended to be brought against persons who are marketing counterfeit Havana House merchandise, that the plaintiffs consider Kozy Korner's and Nigro to be such persons, and that Copa-Habana says it supplied the impugned merchandise to Kozy Korner's and Nigro on consignment. Copa-Habana falls within the general description of defendants the plaintiffs seek to restrain and the plaintiffs have not offered any satisfactory explanation for not adding Copa-Habana as a defendant.
[6] Copa-Habana shall be added as a defendant and plaintiff by counterclaim. Personal service of the Statement of Defence and Counterclaim shall be made upon solicitors of record for the plaintiffs. The style of cause on all subsequent documents shall be amended accordingly. If necessary, the parties may apply to the Court for supplementary directions.
[7] Costs are in the cause.
"Marshall Rothstein"
Judge
Toronto, Ontario
April 2, 1998
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-2521-97
| STYLE OF CAUSE: |
| HAVANA HOUSE CIGAR & TOBACCO |
| MERCHANTS LTD., EMPRESA CUBANA DEL TABACO trading as CUBA TABACO and HABANOS S.A. |
- and -
| JANE DOE and JOHN DOE and |
| OTHER PERSONS, NAMES UNKNOWN, WHO OFFER FOR SALE, SELL, IMPORT, MANUFACTURE, DISTRIBUTE, ADVERTISE, OR DEAL IN UNAUTHORIZED OR COUNTERFEIT HAVANA HOUSE MERCHANDISE, AND THOSE PERSONS LISTED IN SCHEDULE |
| "A" HERETO |
DATE OF HEARING: MARCH 30, 1998
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: ROTHSTEIN, J.:
DATED: APRIL 2, 1998
APPEARANCES:
Mr. Lorne M. Lipkus
Mr. Kenneth D. McKay
For the Plaintiffs
Ms. Linda M. Wright
For the Defendants
- 2 -
SOLICITORS OF RECORD:
Mr. Lorne M. Lipkus
Kestenberg Siegal Lipkus
65 Granby Street,
Toronto, Ontario
M5G 1H8
Mr. Kenneth D. McKay
Sim, Hughes, Ashton & McKay
6th Floor
330 University Avenue
Toronto, Ontario
M5G 1R7
For the Plaintiffs
Hofbauer Associates
Barristers & Solicitors
1455 Lakeshore Road,
Suite 205N
Burlington, Ontario
L7S 2J1
For the Defendants
FEDERAL COURT OF CANADA
Date: 19980402
Docket: T-2521-97
Between:
| HAVANA HOUSE CIGAR & TOBACCO |
| MERCHANTS LTD., EMPRESA CUBANA DEL TABACO trading as CUBA TABACO and HABANOS S.A. |
Plaintiffs
- and -
| JANE DOE and JOHN DOE and |
| OTHER PERSONS, NAMES UNKNOWN, WHO OFFER FOR SALE, SELL, IMPORT, MANUFACTURE, DISTRIBUTE, ADVERTISE, OR DEAL IN UNAUTHORIZED OR COUNTERFEIT HAVANA HOUSE MERCHANDISE, AND THOSE PERSONS LISTED IN SCHEDULE |
| "A" HERETO |
Defendants
REASONS FOR ORDER