Ottawa, Ontario, September 14, 2006
PRESENT: The Honourable Mr. Justice Simon Noël
BETWEEN:
and
REASONS FOR ORDER AND ORDER
[1] This is a motion by the Defendant, Eagle Pack Pet Foods, Inc. (Defendant) for an order striking out paragraphs 8 and 10 of 38867227 Canada Inc (Plaintiff)’s Statement of Claim pursuant to Rule 221 of the Federal Practice Rules, S.O.R./1998-106, or in the alternative, an order requiring particulars with respect to paragraphs 8 and 10 of the statement of claim pursuant to Rule 181(2) of the Federal Practice Rules. Furthermore, if need be, there was also a request to grant leave to file a defence 30 days from the date of the present decision.
I. Background
[2] The Plaintiff has a right to the Canadian registered trademark no. TMA545282, registered on May 17, 2001, being the words HOLISTIC BLEND for use with the wares of pet health care products, namely pet foods, pet vitamins, minerals, herbal supplements and pet toiletries. The Plaintiff has used the words HOLISTIC BLEND in association with pet health care products since October 15, 1998. For its part the Defendant is the owner of the registered trademark no. TMA595709, being the word HOLISTIX for use in association with wares being pet food.
[3] The Plaintiff alleges that the Defendant’s registered trademark no. TMA595709 was not registrable at the date of its registration as it was confusing with the Plaintiff’s trademark and the Defendant by reason of its activities is infringing the Plaintiff’s right to its registered trademark as the Defendant is directing attention to their wares in such a way as to cause or be likely to cause confusion with the wares of the Plaintiff.
II. Motions
A. Motion to Strike
[4] The Defendant alleges that paragraphs 8 and 10 fail to plead material facts as they merely restate the Trade-marks Act, R.S.C 1985, c. T-13, and thus should be struck out. Rule 175 of the Federal Court Rules states that:
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175. A party may raise any point of law in a pleading. |
175. Une partie peut, dans un acte de procédure, soulever des points de droit. |
If pleading points of law is explicitly permitted by the Rules, I fail to see on what basis the Defendant believes the paragraphs should be struck.
[5] Moreover, it was established by the Federal Court of Appeal in Brantford Chemicals Inc. v. Merck & Co., 2004 FCA 223, that where pleadings contain enough information to allow the opposing party to know with some certainty the case to be met, the pleading should not be struck. In the case at hand, the Defendant acknowledges that the Plaintiff is making a claim for infringement and seeks to expunge the Defendant’s registered trademark no. TMA595709. Consequently, the test established in Brantford Chemicals has not been met, as the Defendant does in fact recognize the allegations that must be defended.
[6] I therefore reject the Defendant’s request to strike paragraphs 8 and 10 as the Defendant has failed to demonstrate why the pleadings in the statement of claim should be struck.
B. Motion for Particulars
[7] A motion for particulars will only be granted where the Defendant establishes that the particulars requested are both necessary for pleading and not within its knowledge (Flexi-Coil Ltd. v. F.P. Bourgault Industries Air Seeder Division Ltd. (1988), 19 C.P.R. (3d) 125n (FCTD), Tommy Hilfiger Licensing, Inc. v. 2970-0085 Quebec Inc. (2000), 6 C.P.R. (4th) 374 (FCTD), Astra AB v. Inflazyme Pharmaceuticals Inc., 61 C.P.R. (3d) 178 (FCTD)). To establish that the particulars requested are necessary for pleading and not within its knowledge, the Defendant’s affidavit in support of a motion for particulars should contain details as to what information is needed for pleading and why the Defendant, without such information, would be unable to instruct counsel for the purposes of replying to the statement of claim (Telemedia Corp v. 624654 Ont. Ltd. (1987), 17 C.P.R. (3d) 355 (FCTD)).
[8] In the case at hand, the Defendant submits that the Plaintiff is alleging two causes of action. The first being that the Defendant’s trademark should be expunged as it should never have been granted as it creates confusion with the Plaintiff’s trademark (paragraph 8 of the statement of claim) and the second being infringement, namely that the use of the Defendant’s trademark causes or is likely to cause confusion with the Plaintiff’s registered trademark (paragraph 10 of the statement of claim).
(1) Paragraph 8
[9] In what concerns the expungement of the Defendant’s registered trademark on the basis of confusion at the time of registration as alleged in paragraph 8 of the statement of claim, the affidavit supporting the motion for particulars states:
At paragraph 8 of its Statement of Claim, the Plaintiff makes an allegation that TMA595709 was not registrable at the date of its registration because it was “confusing with the Plaintiff’s trade-mark registration”. I am unaware, from a review of the Statement of Claim, of the material facts upon which the Plaintiff relies in support of that conclusion. I am unable, therefore, to instruct counsel in respect of a defence.
[Affidavit of John Hart, Defendant’s Motion Record, Tab 2, paragraph 2]
[10] The Defendant claims that the Plaintiff must at minimum provide material facts as to the specific wares, the reputation associated with the trade-mark, including market share and the circumstances of the actual confusion where the a declaration of invalidity of a trademark is sought, as per Astra AB (Astra AB, above, page 186). In reality, in Astra AB it was found that (Astra AB, above, at page 186) :
The background as to the prior and ongoing use of the plaintiffs’ trade mark, including the scheduled particulars of registration of the PULMICORT and PNEUMOCORT trade marks, and the alleged confusion between the two trademarks, leaves no doubt as to the case the defendant must meet.
In summary, there are enough particulars contained in the statement of claim and attached schedules to enable the defendant to know the nature of the case to be met. If the plaintiffs were required to give much further information, it would at least be a fishing expedition and might well touch on how the case it to be proven.
The statement of claim in issue, provides the same information as was found sufficient in Astra AB, namely it contains the background as to registration of the two trademarks, and the alleged confusion between the two trademarks can be adequately understood from the trademarked words, taking into account the wares to which they attach and where such wares are sold.
[11] Consequently, I fail to see how there are not enough material facts in the statement of claim to instruct counsel as is alleged in the affidavit in support of the motion nor why the Defendant would be unable to provide its defence given the information in the statement of claim. To order that particulars be given as to the reputation associated with the trademark, the Plaintiff’s market share or the circumstances of actual confusion would be to allow the Defendant to go on a fishing expedition to discover the scope of the evidence that might be used against him at trial, or to discover some grounds of defence as yet unknown to him, which is an impermissible use of a request for particulars (Can. Post. Corp v. Epost Innovations Inc. (1999), 2 C.P.R. (4th) 21 (FCTD)).
[12] I therefore reject the Defendant’s motion for particulars in relation to paragraph 8 of the statement of claim as the Defendant has not established that particulars are necessary to prepare its defence.
(2) Paragraph 10
[13] In what concerns infringement, as alleged in paragraph 10 of the statement of claim, the affidavit supporting the motion for particulars states:
At paragraph 10 of the Statement of Claim, the Plaintiff alleges that the Defendant has, by reason of its activities “directed public attention to its wares in such a way as to cause or to be likely to cause confusion, in Canada” between its wares and the Plaintiff’s wares. I am advised by counsel that this statement amounts to a conclusion of law. I am unaware from the reading of the Statement of Claim of the material facts upon which the Defendant relies for the assertion there is or is likely to exist confusion between the Defendant’s wares and the Plaintiff’s wares.
[Affidavit of John Hart, Defendant’s Motion Record, Tab 2, paragraph 3]
The Defendant, referring to Hudson’s Bay Co. v. Beaumark Mirror Products Inc. (1987), 15 C.P.R. (3d) 38 (FCTD), and Dolomite Svenska Aktiebolag v. Dana Douglas Medical Inc., (1994) 58 C.P.R (3d) 531 (FCTD), states that the case law on the issue demands that where infringement is alleged the Plaintiff must, at minimum, provide material facts as to who was confused, when they were confused and where they were confused. The Defendant alleges that the Plaintiff’s statement of claim does not contain such material facts and thus an order for particulars should be made.
[14] It is true that paragraph 10 does not contain materials facts as to who was confused, when they were confused and where they were confused. This being said, it is incorrect to read paragraph 10 on its own, without considering the statement of claim in its entirety. In the case at hand, although paragraph 10 does not contain the material facts sought by the Defendant, these facts are contained within the statement of fact. Moreover, as the affidavit in support of the motion is silent as to what information sought is not within the Defendant’s knowledge, I can only assume that information not contained within the statement of claim and needed for pleading is within the Defendant’s knowledge (see Telemedia Corp., above) .
[15] The information sought by the Defendant as to who was confused, when they were confused and where they were confused is contained in the statement of claim or is within the Defendant’s knowledge, as follows:
- where confusion occurred is detailed in paragraphs 6 and 9 of the statement of claim as the locations where the Plaintiff and the Defendant sold their respective wares.
- when confusion occurred is established in paragraph 9 which states that the Defendant began selling its wares under the names HOLISTIC SELECT, EAGLE PACK HOLISTIC and HOLISTIX in 2003 and paragraphs 4 and 5 which state the date the Plaintiff registered its trademark HOLISTIC BLEND and the date the Plaintiff began selling products using the now trademarked name in question.
- as for who was likely to be confused, this information is within the Defendant’s realm of knowledge, namely those purchasing pet products.
[16] Given the findings above, I reject the Defendant’s motion for particulars in relation to paragraph 10 of the statement of claim as the Defendant has not established that particulars are necessary to prepare its defence or that the information sought is not within their knowledge, as is required by the case law.
III. Costs
[17] For the reasons given above, and the conclusions reached, costs of this motion will be against the Defendant, as per Rules 400(1)(a) and 400(6) of the Federal Court Rules.
ORDER
THIS COURT ORDERS THAT:
- The Defendant’s motion to strike paragraphs 8 and 10 of the statement of claim is dismissed;
- The Defendant’s motion for particulars is dismissed;
- The Defendant is given 30 days from the date of this order to serve and file their statement of defence;
- Costs of this motion are against the Defendant;
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-891-06
STYLE OF CAUSE: 3886727 CANADA INC. -AND- EAGLE PACK PET FOODS, INC.
PLACE OF HEARING: OTTAWA, ONTARIO
DATE OF HEARING: SEPTEMBER 12, 2006
REASONS FOR ORDER: THE HONOURABLE MR. JUSTICE SIMON NOËL
APPEARANCES:
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Marcel R. Banasinski
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Jenifer Aitken
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SOLICITORS OF RECORD:
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BANASINSKI & ASSOCIATES Barristers & Solicitors Mississauga, Ontario
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BORDEN LADNER GERVAIS LLP Barristers and Solicitors Ottawa, Ontario
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