Date: 20000222
Docket: T-393-98
MONTRÉAL, QUEBEC, FEBRUARY 22, 2000
| Before: RICHARD MORNEAU, PROTHONOTARY |
Between:
A. LASSONDE INC.,
Plaintiff,
AND
SUN PAC FOODS LIMITED,
Defendant.
ORDER
Costs on motion
Costs to follow, in view of the divided results on the instant motion.
Counsel for the parties " and in particular for the plaintiff, toward his counterpart for the defendant " will ensure that their mutual cooperation improves in the interests of their respective clients and the harmonious trial of the action at bar. If this does not occur, it is conceivable that any party at fault may be subject to the payment of costs in the future.
Other aspects
It should be mentioned that the defendant will also submit by March 31, 2000 any other undertaking which it has made and which is not specifically covered in the reasons accompanying the instant order.
The plaintiff will also submit any undertaking it has made by March 31, 2000.
In future, the parties in the instant case will identify the defendant"s name "Sunpac" as two words, that is "Sun Pac".
For the continuance of the examinations in the case at bar and the continuance of the other subsequent stages to complete the instant record, counsel for the parties shall submit to the Court " jointly so far as possible " on or before March 20, 2000 a schedule to replace that contained in the order of this Court dated October 7, 1999.
Further, the plaintiff shall serve and file on or before February 28, 2000 its amended statement of claim, mentioned in paragraph 8 of its memorandum filed on November 29, 1999.
The questions concerning the motion under review shall be decided as follows.
Class 1
On questions 1 and 22, the defendant shall by March 31, 2000 file in accordance with the other undertakings it has given under these questions the costs and income, by product and product format, relating to the defendant"s products bearing the notation "RHAPSODIE FRUITÉE" since they were first marketed in all food markets and the food service market.
On question 2, regarding the defendant"s listings, it seems sufficient to the Court for the defendant to perform the undertaking given in respect of this question.
On question 3, it will suffice for the defendant to submit by March 31, 2000 an organization chart of its corporate structure, but only for the products at issue.
Question 50 deals with the price list of the defendant"s products. The defendant has filed such a list, although it was limited in time and confined to the food service. It shall expand this list by March 31, 2000 by filing one which includes in time the start of the marketing of the products at issue and the food markets.
However, it is not required to submit any invoices in this regard or for any other item in the motion at issue.
Class 4
An answer shall be given to the question under this heading.
Class 5
An answer shall be given to the questions under this heading.
Class 6
An answer shall be given to the questions under this heading.
Class 9
An answer shall be given to the questions under this heading.
Class 10
The defendant has given an undertaking in this regard and shall perform that undertaking by March 31, 2000.
The plaintiff"s motion is otherwise dismissed.
| Richard Morneau Prothonotary |
Certified true translation
Martine Brunet, LL.B.
Date: 20000222
Docket: T-393-98
Between:
A. LASSONDE INC.,
Plaintiff,
AND
SUN PAC FOODS LIMITED,
Defendant.
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY
[1] The Court has before it a motion by the plaintiff asking the Court to resolve in its favour certain objections made by counsel for the defendant at the examination of the defendant"s representative Lisanne Oneschuk on May 6, 1999. At the hearing of this motion both parties also asked the Court for certain directions on related matters.
[2] The plaintiff obtained a registration certificate under the Trade-marks Act, R.S.C. 1985, c. T-13 ("the Act") for the mark FRUITÉ.
[3] The defendant holds a certificate under the Act for the mark FRUIT RHAPSODY.
[4] The issue arose between the parties because the defendant used the phrase RHAPSODIE FRUITÉE (my emphasis) as the French equivalent of its mark FRUIT RHAPSODY.
[5] In the plaintiff"s submission, such a use of the trade mark infringes within the meaning of s. 20 of the Act its exclusive right to the use of FRUITÉ in conjunction with fruit juices and fruit drinks. Such use depreciates the value of the good will attaching to the said trade mark (s. 22 of the Act) and is unfair competition (s. 7(b ) and (c) of the Act).
State of law on questions asked at examination for discovery
| [6] As MacKay J. held in Sydney Steel Corp. v. Omisalj (The), [1992] 2 F.C. 193, at 197: |
| . . . the standard for propriety of a question asked in discovery . . . the appropriate standard is whether the information solicited by a question may be relevant to the matters which at the discovery stage are in issue on the basis of pleadings filed by the parties. |
[7] However, despite this broad statement of principle there are limits to the ambit of an examination for discovery, in particular that the Court should not allow far-reaching questions amounting to a fishing expedition (see Reading & Bates Construction Co. v. Baker Energy Resources Corp. (1988), 24 C.P.R. (3d) 66 (F.C.T.D.), at 72).
[8] Applying these principles, the Court must now proceed to decide the classes of questions as formulated by the plaintiff.
Class 1
[9] The purpose of the questions in this class is essentially to determine the profits made by the defendant. The plaintiff indicated some time ago that it would opt for surrender of the profits the defendant made by its marketing.
[10] On questions 1 and 22, they are designed to determine the costs and income, by product and product format, for the defendant"s products bearing the notation "RHAPSODIE FRUITÉE" since they were marketed, for all the food markets and the food service market.
[11] I consider that this is a reasonable and relevant request and the defendant will therefore have until March 31, 2000 to submit in accordance with the other undertakings given by it under these questions the information mentioned above. However, I do not consider that on the question of costs the defendant has to distinguish between direct and indirect cost. That is a differentiation which seems unnecessary, at least at this stage.
[12] On question 2, relating to the defendant"s listings, it seems sufficient to the Court for the defendant to perform the undertaking given in respect of this question.
[13] On question 3, it will suffice for the defendant to submit by March 31, 2000 an organization chart of its corporate structure, but only for the products at issue.
[14] Question 50 deals with the price list of the defendant"s products. The defendant has filed such a list, although it was limited in time and confined to the food service. It shall expand this list by March 31, 2000 by filing one including in time the start of the marketing of the products at issue and the food markets.
[15] However, it is not required to submit any invoices in this respect or for any other item in the motion at issue. This latter type of request seems to the Court to go too far.
[16] On question 51, this seems to the Court to be in the nature of a fishing expedition and it will not have to be answered.
Class 2
[17] The questions in this class deal with the possible use by the defendant of the words "RHAPSODIE DE FRUITS" instead of and in place of the phrase "RHAPSODIE FRUITÉE". These questions must not be answered here because they related to out-of-court discussions between the parties and it would not be proper to divest them of that character by contemplating an answer to them.
Class 3
[18] The questions in this class are partly intended to know from the defendant of the holders of licences granted by the plaintiff itself. This type of information does not have to be submitted since, as mentioned on June 19, 1998 in a prior decision in the case at bar, the plaintiff is presumed to know whom the licence holders are.
[19] Further, the notes to which Ms. Oneschuk referred at the discovery do not have to be filed.
Class 4
[20] Question 18 in this class concerns an allegation by the defendant that the plaintiff"s mark is falsely descriptive. That question is in fact intended to determine what the party means by this expression. That is a reasonable and relevant question and must be answered. In the circumstances, it does not amount to a question of law.
Class 5
[21] Since it is claiming exemplary damages, the plaintiff is entitled to know whether the development of the trade mark "FRUIT RHAPSODY" and the words "RHAPSODIE FRUITÉE" were the subject of a different creative process from that adopted for the defendant"s other trade marks. Questions 25 and 26 therefore appear to the Court to be relevant and they must be answered.
Class 6
[22] In my opinion, the way the question in this class is framed is incorrect. It describes the phrase "RHAPSODIE FRUITÉE" as a trade mark. That is an association which was prohibited by my decision of June 19, 1998. This question will not have to be answered.
Class 7
[23] Like several other questions initially included in the motion, the plaintiff dropped question 29 under this heading at the hearing. All these questions will therefore not have to be answered.
Class 8
[24] The purpose of questions 43 and 44 in this class is to clarify paragraph 20(1)(b) of the defendant"s defence. In my opinion, they are relevant and should not be seen as questions for an expert. They should therefore be answered.
Class 9
[25] The five questions in this class are designed to obtain an assessment by the defendant"s representative of sales of the FRUITÉ products by the plaintiff. Since the defendant is challenging the validity of the plaintiff"s registration, these questions are relevant and the defendant"s representative " the latter"s marketing director " is in a position to answer them.
Class 10
[26] This class refers to a reservation made by the defendant in reply to question 446.
[27] The defendant gave an undertaking in this regard and must perform that undertaking by March 31, 2000.
Costs on motion
[28] Although both parties claimed costs on the motion at bar, and in particular the defendant, who claimed them on a solicitor-client basis, in view of the divided outcome of the motion at bar I intend to rule that costs will follow.
[29] Counsel for the parties " and in particular for the plaintiff, toward his counterpart for the defendant " will ensure that their mutual cooperation improves in the interests of their respective clients and the harmonious trial of this matter. If this does not occur, it is conceivable that any party at fault may be subject to the payment of costs in the future.
Other matters
[30] It should be mentioned that the defendant shall also complete by March 31, 2000 any other undertaking which it has made and which is not specifically covered in these reasons and the order accompanying them.
[31] The plaintiff shall also submit any other undertaking it has made by March 31, 2000.
[32] In future, the parties in the instant case shall identify the defendant"s name "Sunpac" as two words, namely "Sun Pac".
[33] For the continuance of the examinations in the case at bar and the continuance of the other subsequent stages to complete the instant record, counsel for the parties shall submit to the Court " jointly so far as possible " on or before March 20, 2000 a schedule to replace that contained in this Court"s order dated October 7, 1999.
[34] Further, the plaintiff shall serve and file on or before February 29, 2000 its amended statement of claim mentioned in paragraph 8 of its memorandum filed on November 29, 1999.
| Richard Morneau Prothonotary |
MONTRÉAL, QUEBEC
February 22, 2000
Certified true translation
Martine Brunet, LL. B.
| Federal Court of Canada Trial Division Date: 20000222 Docket: T-393-98 Between: A. LASSONDE INC., Plaintiff, AND SUN PAC FOODS LIMITED, Defendant. REASONS FOR ORDER |
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
| COURT FILE No.: T-393-98 |
| STYLE OF CAUSE: A. LASSONDE INC., |
Plaintiff,
AND
SUN PAC FOODS LIMITED,
Defendant.
| PLACE OF HEARING: Montréal, Quebec |
| DATE OF HEARING: February 14, 2000 |
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
| DATE OF REASONS FOR ORDER: February 22, 2000 |
APPEARANCES:
| Bruno Barrette for the plaintiff |
| Keri Johnston for the defendant |
Solomon R. Avisar
SOLICITORS OF RECORD:
| Brouillette, Charpentier, Fortin for the plaintiff |
Montréal, Quebec
| Johnston, Avisar for the defendant |
Toronto, Ontario