OTTAWA, Ontario, June 13, 2006
PRESENT: The Honourable Mr. Justice Teitelbaum
BETWEEN:
RHODIA UK LIMITED na RHODIA INC.
Plaintiffs/Defendants by Counterclaim
and
JARVIS IMPORTS (2000) LTD. and 116038 B.C. LTD.
Defendants/Plaintiffs by Counterclaim
REASONS FOR ORDER AND ORDER
[1] This is an appeal, by way of a Notice of Motion, by the Plaintiffs for:
a. An Order setting aside in part the Order of Prothonotary Lafrenière dated March 27 2006 ordering the Plaintiffs to produce to the Defendants, within 30 days, to the extent that they may be in the possession, power or control of the Plaintiffs, copies of one invoice per year reflecting the sale in Canada of each of the following wares in association with the trade-mark PROBAN: textile fibres, yarns and woven, knitted, netted, felted and bonded fabrics; lace and embroidery, ribbons and braids; mats and matting, fireproofing preparations for the treatment and processing of textile fibres, yarns, and woven, knitted, netted, felted and bonded fabrics of all kinds, and requiring that Plaintiffs make best efforts, but not extraordinary efforts, to produce such of those invoices as they are able to prior to the commencement of the examination for discovery of the Plaintiffs scheduled to commence on April 4, 2006.
b. Costs of this motion;
c. Such further and other relief as counsel may advise and this Honourable Court may permit.
[2] The grounds for the Motion of Appeal can be found in paragraphs 1 to 13 in the Notice of Motion of Appeal, on pages 2 to 5 in Plaintiffs' Motion Record.
[3] The action of the Plaintiffs is for infringement of a registered trademark PROBAN, passing off and depreciation of goodwill.
[4] The Defendants allege in paragraph 8 of their written submission that "The allegations in issue also expressly deny use of the trademark alleged by the Plaintiffs, in addition to pleading abandonment."
[5] The Plaintiffs have argued before the Prothonotary that the invoices requested by the Defendants "are not relevant and that non-use and abandonment are distinct and separate issues".
[6] The Plaintiffs now submit in their written submissions:
The production of all invoices relating to the PROBAN trade-mark is only relevant to the issue of damages. There is a bifurcation order in this matter. The production of all invoices would not tend to prove or disprove the allegation of abandonment as abandonment is distinct from non-use. Such production is only required for the context of the damage phase of the case. The sample invoices from its licensee, Westex Inc., and the total volumes of sales in Canada establish use and non-abandonment [citation removed].
[7] Defendants submit that the Prothonotary ordered the production of one invoice per year per ware listed in the registration for the trademark in issue, and not all invoices as alleged by the Plaintiffs. They also submit that the requested documents are relevant since they were sought in support of their allegation of non-use in addition to their allegation of abandonment. Defendants also claim that it is established that intention to abandon can be inferred from the period of non-use of a trademark. The Defendants rely on Opus Building Corp., (1995), 60 C.P.R. (3d) 100 and B.F. Goodrich Co.v. J.A. & M. Côté Ltée, [1950] Ex. C.R. 221 in support of this claim.
[8] I am satisfied that the standard of review that I should apply to the review of the Prothonotary's decision is to be found in the well known case of Canada v. Aqua-Gem Investments Ltd., [1993] 2 FC 425.
[9] In the Federal Court of Appeal case of McIntosh et a. v. Society of Composers, Authors, and Music Publishers of Canada Ltd., [2004] F.C.J. No. 219, 2004 FCA 57 (QL), Court File A-193-03, at paragraph 12, Mr. Justice Létourneau, speaking for the Court states, as to the standard of review to be applied in an appeal from a Prothonotary:
The learned judge applied to the review of the Prothonotary's decision the standard of review determined by this Court in Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425, namely that a prothonotary's order ought not to be disturbed on appeal to a judge unless:
a. the questions raised in the motion are vital to the final issue of the case
b. the orders are clearly wrong, in the sense that the exercise of discretion by the prothonotary was based upon a wrong principle or upon a misapprehension of the facts.
I have used the new wording as reformulated in Merck & Co. v. Apotex Inc., [2003] F.C.J. No. 1925, 2003 FCA 488 which reverses the sequence of the propositions as originally set out and makes it clear that the "question vital to the final issue of the case" refers to the subject matter of an order issued by the prothonotary, not the effect of such order : see paragraphs 18 and 19 of that decision. As our colleague Décary J.A. pointed out, there is from time to time some confusion on this last issue because the reviewing judge puts the emphasis on the effect of the prothonotary's order itself. In the context of an amendment, the judge has to look at the amendments themselves to see if they raised a question vital to the final issue of the case, not at the decision or order of the prothonotary refusing or granting the amendments.
[10] In the case of Stevens v. Canada (Attorney General), [2002] F.C.J. No. 142, 2002 FCT 2 (QL), Court File T-2682-87, Madam Justice Heneghan at paragraphs 56 and 57, states :
The standard of review applicable to the appeal of an order made by a prothonotary is set out in Canada v. Aqua Gem Investments Ltd., supra, at 463 as follows:
...
Where such discretionary orders are clearly wrong in that the prothonotary has fallen into error of law (a concept in which I include a discretion based upon a wrong principle or upon a misapprehension of the facts), or where they raise questions vital to the final issue of the case, a judge ought to exercise his own discretion de novo.
In James River Corp. of Virginia, supra, at page 160, Justice Reed discussed the meaning of questions that are vital to the final issues in the case, as follows:
Questions that are vital to the final issues of a case are, for example, the entering of default judgment, a decision not to allow an amendment to pleadings, a decision to add additional defendants and thereby potentially reduce the liability of the existing defendant, or a decision on a motion for dismissal for want of prosecution. None of the questions raised by the present appeals with respect to the answering of questions on discovery can be characterized as vital to the final issues of the case. [Footnotes omitted]
[11] I am satisfied that the ordering of the production, "to the extent that they may be in the possession, power or control of the Plaintiffs, copies of one invoice per year reflecting the sale in Canada of each of the following wares in association with the trademark PROBAN...." as stated in paragraph 2 of the Prothonotary's Order dated March 27, 2006 is not, insofar as the Plaintiffs are concerned, "vital to the final issues of the case" as defined in the case of McIntosh (above).
[12] Therefore, a Court hearing an appeal from a Prothonotary involving a discretionary decision should be loath to substitute its opinion for that of the Prothonotary.
[13] After hearing the submissions of the Plaintiffs and after reading the written submissions, I am satisfied that the Order of Prothonotary Lafrenière is reasonable and correct.
[14] The Order requires the production of one invoice per year reflecting the sale in Canada of certain specific wares using the trademark PROBAN. If the invoice produced to show the sale of wares with the said trademark is for more than one ware in a particular year, then, of course, no other invoice is required with the specific ware.
ORDER
THIS COURT ORDERS that the appeal is dismissed with costs.
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1832-04
STYLE OF CAUSE: RHODIA UK LIMITED and RHODIA INC. v. JARVIS IMPORTS (2000) INC. and 116038 B.C. LTD.
PLACE OF HEARING: Montreal, Qc
REASONS FOR ORDER: TEITELBAUM J.
APPEARANCES:
| Hélène D'Iorio
|
Defendants by Counterclaim |
| Paul Smith
|
Plaintiffs by Counterclaim |
SOLICITORS OF RECORD:
| Gowling Lafleur Henderson LLP Montreal, Qc
|
Defendants by Counterclaim |
| Paul Smith Intellectual Property Law Vancouver, BC
|
Plaintiffs by Counterclaim |