Date: 19980401
Docket: T-2745-97
BETWEEN:
MIRAJ S.A. and JORDACHE MANAGEMENT
AND DEVELOPMENT CORP.
Plaintiffs
- and -
GEROVITAL, INC., FRANCOIS VAUTOUR and
ROGERS BROADCASTING LIMITED
Defendants
REASONS FOR ORDER AND ORDER
GILES, A.S.P.:
[1] The motion before me in this file was in four parts.
| 1. Seeking an order striking the statement of claim of the plaintiff Jordache Management and Development Corp. ("Jordache") and dismissing the action of Jordache as against the defendants or, in the alternative, amending the statement of claim to remove Jordache as a party to this action. |
| 2. Seeking an order striking the statement of claim of the plaintiffs and dismissing this action as against the defendant Francois Vautour ("Vautour"), or in the alternative, amending the statement of claim to remove Vautour as a party to this action. |
| 3. an order striking the statement of claim of the plaintiffs or in the alternative: |
| (a) that the plaintiffs be required to file and serve the documents referred to in its statement of claim as specified in the defendants' demand for particulars; and |
| (b) that the plaintiffs be required to file further and better particulars of pleadings and the material facts regarding its statement of claim as specified in the defendants' demand for particulars. |
[2] The defendant argued that Jordache had no claim because its interest in the trademark was as licensee and the Act does not provide a cause of action for a licensee when the owner brings an action for infringement. Section 50(3) of the Act provides for rights of action by licensees of trademarks (as such) with respect to infringement when an owner does not bring an action for infringement. Neither that section nor any other to which I was referred denies to a licensee any right of action which may accrue to a non-licensee who has been damaged by the misuse of a trademark to cause confusion or pass-off as prohibited by section 7(b) or (c). Thus, while there may be allegations apparently surplus to the requirements for showing the causing of confusion or the passing-off of the defendants' goods, there is not a total failure to suggest an available cause of action. I will therefore not strike Jordache as a plaintiff. (That is not to say that more precision in pleading would not be desirable.)
[3] The defendant seeks to strike Vautour as a defendant on the grounds that sufficient facts are not alleged to make Vautour responsible for the acts of the corporation Gerovital, Inc. ("the corporation"). The allegation that a person is an officer or director does not make that person as such responsible for the detailed acts of the corporation. Even an allegation that a person is the sole officer and director does not. An allegation that the corporation is the alter-ego of a person, that the person is the sole employee, that the person directed the corporation to infringe, or that the person incorporated the corporation for the purpose of infringing or to protect the person from liability for infringing, may all be relevant to showing a person responsible for the actions of a corporation. However, a person who actually carries out the infringement is personally responsible for the infringement and the damage done. If he is acting for the company, the company is vicariously liable for his actions in addition.
[4] Here while the allegations with respect to share-ownership and directorship may be insufficient to show a cause of action against Vautour for the alleged infringement by the corporation and therefore be surplusage, there are also allegations that Vautour himself infringed. The allegation of personal infringement make it impossible to strike the action as against Vautour. (That is not to say that the pleading should not be tidied up.)
[5] The third and fourth parts of the motion seeking documents and particulars are parts to deal with which I should have been pleased to have affidavit evidence. Two affidavits were suggested to me by counsel for the plaintiff. The first was an affidavit filed in support of a motion for an interlocutory injunction. It is my view that an affidavit filed for one purpose cannot be deployed for another purpose without leave and that leave should not be granted without also granting a right of cross-examination. I therefore refused to consider the first affidavit.
[6] The second affidavit was filed for the purposes of this motion. Counsel for the defendants asked for an adjournment to permit cross-examination. Counsel for the plaintiff resisted an adjournment and in order to avoid adjournment, withdrew the affidavit.
[7] There was before me the statement of claim which mentioned certain documents of which the Rules would require the plaintiff to produce copies. The claim also mentioned certain agreements which might imply documents existed but did not engage Rule 407(2) as no document was specifically mentioned.
[8] Counsel for the defendants indicated that it was probable that the requested particulars might be supplied by copies of the documents. Counsel for the plaintiffs indicated that the documents and agreements were exhibited to the first affidavit which had not been studied by counsel for the defendants because the motion for an injunction had not been brought on. It would seem to me a waste of effort, paper and storage space to require the documents to be produced again should those in hand serve the purpose. Counsel for the plaintiffs indicated in which paragraphs of the first affidavit the various documents could be found or where the agreements were described. It was then approaching 8:00 p.m. and I decided to adjourn the motion sine die to give the defendants' counsel an opportunity to ascertain whether the first affidavit in fact satisfied the requests. This motion was to be brought on again, if necessary, on seven days notice but if the requested documents and particulars were provided it might not be brought on.
[9] I also agreed to order the statement of defence be filed within 15 days of service of a letter identifying the documents requested among the materials exhibited to the first affidavit and referring to the particulars requested. (The plaintiffs having requested written reasons, I reserved my decision and my order will provide for the provision of a defence within 15 days of the furnishing of the letter or of the final disposition of any appeal of this motion whichever is the later.)
ORDER
| 1. The motion to strike Jordache Management and Development Corporation as a plaintiff is dismissed. |
| 2. The motion to strike Francois Vautour as a defendant is dismissed. |
| 3. The motion for documents under Rule 307(2) and the motion for particulars are adjourned sine die and may be brought on again on seven days notice but if the requested documents and particulars are provided, the motion may not be brought on again. |
| 4. The statement of defence is to be filed within 15 days of the service of a letter identifying the documents requested among the materials submitted previously and referring to the particulars requested therein. If my decision herein is appealed, the statement of defence is to be filed within 15 days of the later of the furnishing of the letter mentioned above and the final disposition of any appeal of this motion. |
| 5. Costs of this motion are awarded to the plaintiff in any event but not payable forthwith. |
"Peter A.K. Giles"
A.S.P.
Toronto, Ontario
April 1, 1998
FEDERAL COURT OF CANADA
Date: 19980401
Docket: T-2745-97
BETWEEN:
MIRAJ S.A. and JORDACHE MANAGEMENT
AND DEVELOPMENT CORP.
Plaintiffs
- and -
GEROVITAL, INC., FRANCOIS VAUTOUR and
ROGERS BROADCASTING LIMITED
Defendants
REASONS FOR ORDER AND ORDER
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
DOCKET: T-2745-97
| STYLE OF CAUSE: MIRAJ S.A. and JORDACHE |
| MANAGEMENT AND DEVELOPMENT |
| CORP. |
-and-
| GEROVITAL, INC., |
FRANCOIS VAUTOUR and
| ROGERS BROADCASTING LIMITED |
DATE OF HEARING: MARCH 30, 1998
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER
AND ORDER BY: GILES, A.S.P.
DATED: APRIL 1, 1998
APPEARANCES: Mr. Gerald Matlofsky
For the Plaintiff
Mr. Kenneth D. McKay
For the Defendants
(Gerovital, Inc. and
Francois Vautour)
Page 2
SOLICITORS OF RECORD: Mr. Gerald Matlofsky
Barrister and Solicitor
460 Roselawn Avenue
Toronto, Ontario
M5N 1J8
For the Plaintiffs
Mr. Kenneth D. McKay
SIM, HUGHES, ASHTON, McKAY
Barristers and Solicitors
330 University Avenue
6th Floor
Toronto, Ontario
M5G 1R7
For the Defendants
(Gerovital, Inc. and
Francois Vautour)
Mr. J. Douglas Wilson
LANG, MICHENER
Barristers and Solicitors
BCE Place
181 Bay Street
Suite 2500
Toronto, Ontario
M5J 2T7
For the Defendant
(Rogers Broadcasting Limited)