Date: 19980303
Docket: T-1803-97
MONTRÉAL, QUEBEC, THE 3rd DAY OF MARCH 1998
PRESENT: THE HONOURABLE MR. JUSTICE NADON
BETWEEN: LES SYSTÈMES DE FORMATION
ET DE GESTION PERFORM INC.
Plaintiff
AND:
PERFORMX INC.
Defendant
Motion by the plaintiff for an order:
| A) Pursuant to Rule 415(3) of the Federal Court Rules requiring the defendant to provide satisfactory and full particulars with respect to paragraph 7(a) of its defence within thirty days of the decision resulting from the return of the instant motion; |
| B) Pursuant to Rule 403(2) of the Federal Court Rules allowing the plaintiff to file its reply to the defendant"s defence within thirty days of the date the particulars mentioned above are filed by the defendant; |
| C) Such further and other order that this Honourable Court considers just and appropriate. |
[Rules 403(2), 408 and 415(3) of the Federal Court Rules]
O R D E R
The motion is granted in part. The plaintiff is entitled to the particulars it seeks, except those relating to point (d) of its letter dated January 22, 1998. The defendant shall provide the requested particulars to the plaintiff within 45 days of the date of my order. The plaintiff will have 30 days after receiving the particulars to reply to the defendant"s defence. Costs will be in the cause.
Marc Nadon
Judge
Certified true translation
M. Iveson
Date: 19980303
Docket: T-1803-97
Between: LES SYSTÈMES DE FORMATION
ET DE GESTION PERFORM INC.
Plaintiff
AND:
PERFORMX INC.
Defendant
REASONS FOR ORDER
NADON J.
[1] In its motion filed pursuant to Rule 415(3) of the Federal Court Rules, the plaintiff seeks particulars relating to paragraph 7(a) of the defence, which reads as follows:
| Furthermore, having regard to all the surrounding circumstances, including those specified below, PERFORMX denies that the Trade-Mark and Trade-Name are confusing with the Plaintiffs Trade-Marks within the meaning of Section 6 of the Trade-Marks Act, (R.S.C. 1985, c. T-13) (the "Act") Specifically: |
| (a) the Plaintiffs Trade-marks are not inherently distinctive in association with "personnel training services" having regard to the fact that "perform" is an ordinary word and is the root of the word "performance". Furthermore, the Plaintiff's Trade-Marks have co-existed without confusion on the Trade-Mark Register and in the market place with numerous trade-marks and trade names, including those listed in Schedule "A", containing the word "perform" . . . . |
[2] The particulars sought by the plaintiff, which are set out in a letter dated January 22, 1998 from the plaintiff"s counsel to those of the defendant, are the following:
| - In view of defendant's use of the word "including", what are the other trade marks and trade names with which plaintiff's trade marks have coexisted on the Trade Mark Register and in the marketplace. |
| - For each trade mark and trade name listed in Schedule "A", please indicate: |
| a) when each trade mark and/or trade name listed was first adopted and used; |
| b) where was each trade mark and/or trade name so adopted and used; |
| c) in association with what wares and/or services was each trade mark and/or trade name so used; |
| d) produce all documents on which the defendant is relying to allege that the trade marks and trade names listed in Schedule "A" have been used on the marketplace. |
[3] According to the defendant, the plaintiff is not entitled to the requested particulars because the defence includes sufficient particulars for the preparation of a reply.
[4] In Gulf Canada Ltd. v. The Tug Mary Mackin, [1984] 1 F.C. 884, Heald J.A., speaking for the Federal Court of Appeal, adopted the reasoning of Lambert J.A. of the British Columbia Court of Appeal in Cansulex Limited v. Perry et al.1 concerning the function of particulars:
| (1) to inform the other side of the nature of the case they have to meet as distinguished from the mode in which that case is to be proved . . . . |
| (2) to prevent the other side from being taken by surprise at the trial . . . . |
| (3) to enable the other side to know what evidence they ought to be prepared with and to prepare for trial . . . . |
| (4) to limit the generality of the pleadings . . . . |
| (5) to limit and decide the issues to be tried, and as to which discovery is required . . . . |
| (6) to tie the hands of the party so that he cannot without leave go into any matters not included . . . . |
[5] I also consider the comments of Jessel M.R. in Thorp v. Holdsworth, [1876] 3 Ch.D. 637, relevant. He stated the following at page 639:
| That purpose of particulars was stated in Spedding v. Fitzpatrick (1888) 38 Ch D 410, 58 LJ Ch 139, by Cotton, L.J. at p. 413, as follows: |
| "The object of particulars is to enable the party asking for them to know what case he has to meet at the trial, and so to save unnecessary expense, and avoid allowing parties to be taken by surprise." |
| Also the particulars operate as a pleading to the extent that "They tie the hands of the party, and he cannot without leave go into any matters not included" (Annual Practice, 1960, p. 460) and they may be amended only by leave of the court (Annual Practice, 1960, p. 461). |
| When pleadings are so vaguely drawn that the opposing party cannot tell what are the facts in issue or, in the words of Cotton, L.J. in Spedding v. Fitzpatrick, supra, "what case he has to meet," then in such circumstances the particulars serve to define the issue so that the opposite party may know what are the facts in issue. In such instances the party demanding particulars is in effect asking what is the issue which the draftsman intended to raise and it is quite apparent that for such a purpose an examination for discovery is no substitute in that it presupposes the issues have been properly defined. |
[6] In my view, the defendant must provide the particulars sought by the plaintiff. First, in light of the word "including", there is reason to believe that there are other trade- marks and trade-names in addition to those listed in Schedule "A" with which the plaintiff"s trade-marks have "coexisted". It is my view that the plaintiff is entitled to this information, if it exists.
[7] As for the information requested by the plaintiff in relation to the trade-marks and trade-names listed in Schedule "A", I consider that the plaintiff is also entitled to this information for reasons similar to those expressed my colleague Mr. Justice Muldoon in Hudson Bay Co. v. Bay Rest Bedding Co. Ltd., [1996] 3 C. P. R. (3d) 370, at page 375.
[8] On the other hand, the plaintiff is not in my view entitled to the documents requested under point (d). At the hearing, I informed counsel that it was my view that the plaintiff could make this request during its examination of the defendant.
[9] Accordingly, the defendant must provide the requested particulars to the plaintiff, except for the documents under point (d). The defendant will have 45 days from the date of my order to provide the information requested by the plaintiff. The plaintiff will have 30 days after receiving the requested particulars to file a reply to the defence.
[10] Costs will be in the cause.
Marc Nadon
Judge
MONTRÉAL, QUEBEC
March 3, 1998
Certified true translation
M. Iveson
FEDERAL COURT - TRIAL DIVISION
Date: 19980303
Docket: T-1803-97
Between: LES SYSTÈMES DE FORMATION
ET DE GESTION PERFORM INC.
Plaintiff
AND:
PERFORMX INC.
Defendant
REASONS FOR ORDER
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT FILE NO.: T-1803-97
STYLE OF CAUSE: LES SYSTÈMES DE FORMATION
ET DE GESTION PERFORM INC.
Plaintiff
AND:
PERFORMX INC.
Defendant
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: March 2, 1998
REASONS FOR ORDER BY THE HONOURABLE MR. JUSTICE NADON
DATE OF REASONS FOR ORDER: March 3, 1998
APPEARANCES:
François Grenier for the plaintiff
Stéphane Garon for the defendant
Lavery de Billy
SOLICITORS OF RECORD:
Léger Robic Richard for the plaintiff
Montréal, Quebec
Blake Cassels & Graydon for the defendant
Toronto, Ontario
__________________1 Judgment dated March 18, 1982, British Columbia Court of Appeal, file C785837, unreported.