Date: 19981116
Docket: A-85-97
CORAM: STONE J.A.
McDONALD J.A.
SEXTON J.A.
BETWEEN:
SAKS & COMPANY
Appellant
(Plaintiff)
- and -
THE GOVERNOR AND COMPANY OF ADVENTURERS
OF ENGLAND TRADING INTO HUDSON'S BAY,
ALSO KNOWN AS HUDSON'S BAY COMPANY
Respondent
(Defendant)
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench at Toronto, Ontario on
Monday, November 16, 1998)
STONE J.A.
[1] The issue in this appeal is whether the learned Motions Judge erred in law in requiring the appellant to produce on discovery of its witness "all documentation representing sales to card-holders with a Canadian billing address".
[2] The appellant's action against the respondent is for passing off and for directing public attention to its wears in Canada in such a manner as to cause confusion between its wears and those of the appellant. The respondent's activities in this regard are alleged to be contrary to paragraph 7(b) and (c) of the Trade-marks Act.
[3] The motions in the Trial Division was brought by way of appeal from an earlier decision of the Associate Senior Prothonotary who had ordered the appellant to produce all documentation representing sales "to all Canadians or at least card-holders with a Canadian billing address". The judge's order under appeal had the practical effect of eliminating from that order the words "Canadians or at least". In his brief reasons for the order under appeal, the Motions Judge expressed the view that the question was authorized by former Rule 458(1)(b) and that it was both reasonable and necessary. The Motions Judge was also of the view that the question was "relevant to the important issue of the plaintiff's reputation in Canada".
[4] Although paragraph 6 of the Statement of Claim contains a general plea that the appellant has "at all material times enjoyed a substantial business in Canada and with Canadian residents" and paragraph 7 contains some details of that business, these pleas appear to us to be by way of background to the essential complaint that the harm allegedly suffered arises out of the use in Canada of the trade-mark "REAL CLOTHES" and the design mark in issue in association with the sale of its line of clothing . Moreover, the Statement of Claim seems to be limited to pleas of loss of reputation and good will attaching to the appellant's trade-mark "REAL CLOTHES" and its related design mark rather than to the appellant's general reputation in Canada. Given this focus of the litigation, we are all of the view that the order under appeal is too broad in scope and that it ought to be limited to the production of all documentation representing sales by the appellant of its "REAL CLOTHES" line of clothing to card-holders with a Canadian billing address.
[5] The appeal will be allowed and page 3 of the order of the Trial Division of December 17, 1996 will be varied by deleting the words, "Ruling of the Court: To be answered only with respect to card-holders with a Canadian billing address", and the following substituted therefor:
| "The appellant shall produce all documentation representing all sales to card-holders with a Canadian billing address of its REAL CLOTHES line of clothing" |
"A.J. Stone"
J.A.
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
DOCKET: A-85-97
| STYLE OF CAUSE: SAKS & COMPANY |
- and -
| THE GOVERNOR AND COMPANY OF ADVENTURERS OF ENGLAND TRADING INTO HUDSON'S BAY, ALSO KNOWN AS HUDSON'S BAY COMPANY |
DATE OF HEARING: MONDAY, NOVEMBER 16, 1998
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR JUDGMENT
| OF THE COURT BY: STONE J.A. |
Delivered at Toronto, Ontario
on Monday, November 16, 1998
APPEARANCES:
Mr. A. David Morrow
For the Appellant (Plaintiff)
Mr. James H. Buchan
| For the Respondent (Defendant) |
SOLICITORS OF RECORD:
Smart and Biggar
| Barristers & Solicitors |
| 900-55 Metcalfe Street |
| Ottawa, Ontario |
| K1P 5Y6 |
For the Appellant (Plaintiff)
Gowling, Strathy & Henderson
| Barristers & Solicitors |
| Suite 4900 |
| Commerce Court West |
| Toronto, Ontario |
| M5L 1J3 |
For the Respondent (Defendant)
| FEDERAL COURT OF APPEAL |
| Date: 19981116 |
| Docket: A-85-97 |
| BETWEEN: |
| SAKS & COMPANY |
| Applicant |
| -and- |
| THE GOVERNOR AND COMPANY OF ADVENTURERS OF ENGLAND TRADING INTO HUDSON'S BAY, ALSO KNOWN AS HUDSON'S BAY COMPANY |
| Respondent |
| (Defendant) |
| REASONS FOR JUDGMENT |
| OF THE COURT |