Federal Court Decisions

     T-2234-93

OTTAWA, ONTARIO, THIS 29TH DAY OF JANUARY, 1997

BEFORE: THE HONOURABLE MR. JUSTICE PINARD

BETWEEN:

     SAKS & COMPANY,

     Plaintiff,

     - and -

     THE GOVERNOR AND COMPANY OF ADVENTURERS

     OF ENGLAND TRADING INTO HUDSON'S BAY,

     also known as HUDSON'S BAY COMPANY,

     Defendant.

     REASONS FOR ORDER and ORDER

     The Plaintiff seeks an order overturning the order of the Associate Senior Prothonotary, Peter Giles, rendered orally from the bench on December 17, 1996 and signed January 20th, 1997 to the extent that the aforementioned order ordered Elizabeth A. Chabot, the representative produced for discovery on behalf of the Plaintiff, to answer the following questions refused at her examination for discovery, at her re-attendance for further examination for discovery:

(a) Page 70, line 12 and page 93, line 10: To produce all documentation representing all sales to Canadians or at least card-holders with a Canadian billing address.

(Ruling of the Court: To be answered only with respect to card-holders with a Canadian billing address)

(b) Page 76, line 7 and page 77, line 2: To inform of the names and full addresses in the blocked out portions of plaintiff production 8.

(Ruling of the Court: To be answered)

(c) Page 104, line 15: To produce a copy of invoice 7306864 (contained in plaintiff production 7, bundle 1) in a format where the delivery address is not blanked out.

(Ruling of the Court: Document to be produced without any information blanked out)

(d) Page 120, line 2: To produce a list of the plaintiff's current credit card-holders in Canada and their addresses.

(Ruling of the Court: To be answered)

(e) Page 128, line 6: To inform if anyone in the plaintiff company considered the descriptiveness of the phrase "REAL CLOTHES".

(Ruling of the Court: To be answered)

(f) Page 128, line 10: To inform if there are any internal memoranda or letters or reports that deal with the question of descriptiveness of the phrase "REAL CLOTHES".

(Ruling of the Court: To be answered)

(g) Page 128, line 14: To inform if there was any consideration given to the use of the work "REAL" by others in the marketplace.

(Ruling of the Court: To be answered)

     In the event that any part of the order sought with respect to questions (a), (b), (c) and (d) above is not granted, the plaintiff asks that a Protective Order be granted in the form and terms of the draft Protective Order attached to the Notice of Motion as Schedule "A".

     At the hearing before me, it was decided, at the suggestion of counsel for the defendants, that the latter part of the Notice of Motion,seeking a Protective Order, be adjourned to be dealt with, if necessary, by any judge of this Court in Ottawa on Tuesday, February 4, 1997.

     Because the Prothonotary gave no reasons in support of his order, I have examined whether there is a basis in fact and in law for the impugned portion of the Prothonotary's Order and have decided to exercise my own discretion.

     Upon reading the pleadings, the affidavits and the documents filed, upon considering representations made by learned counsel for the parties, and upon exercising my own discretion, the appeal is dismissed on the following ground:

     With respect to questions (a), (b), (c) and (d), the questions are authorized by rule 458(1)(b) of the Federal Court Rules and the plaintiff has failed to satisfy me that they are unreasonable and unnecessary. Indeed, the questions focus on factual information within the knowledge of the plaintiff, all the information can be obtained, and the questions are relevant to the important issue of the plaintiff's reputation in Canada.

     With respect to questions (e), (f) and (g), the plaintiff has failed to satisfy me that they are not relevant to any unadmitted allegation of fact in any pleading filed in the action. The questions regarding descriptiveness all relate to unadmitted allegations of fact contained in paragraphs 2 and 3 of the statement of defence wherein the defendant has pleaded that the words "real clothes" are "common, every day words which are nothing more than an apt description of clothing" and are used by the plaintiff "in a descriptive sense".

     Accordingly, the appeal is dismissed. However, questions (a) (b), (c) and (d) shall not be answered before the plaintiff's application for a Protective Order, which is hereby adjourned to Tuesday, February 4, 1997, has been dealt with and disposed of by a judge of this Court, unless the parties otherwise agree.

     Costs in the cause.

                                                                          JUDGE