Date: 20061006
Docket: T-2125-05
Citation: 2006 FC 1199
Ottawa, Ontario, October 6, 2006
PRESENT: The Honourable Madam Justice Mactavish
BETWEEN:
FRANCO PETRILLO,
MUSCLE MEDIA ULTIMATE INC.,
CENTRE DE NUTRITION
BODY BUILDING B.N.C. INC.,
9103-7788 QUEBEC INC.,
9084-7856 QUEBEC INC.
and 9121-6606 QUEBEC
INC.
Plaintiffs
and
ALLMAX NUTRITION INC.,
HEALTHY BODY SERVICES INC.,
RICHARD GLOVER and MICHAEL KICHUK
Defendants
AND BETWEEN:
ALLMAX NUTRITION INC.
AND
HEALTHY BODY SERVICES
INC.
Plaintiffs by
Counterclaim
and
FRANCO PETRILLO,
MUSCLE MEDIA ULTIMATE INC.,
CENTRE DE NUTRITION
BODY BUILDING B.N.C. INC.,
9103-7788 QUEBEC INC.,
9084-7856 QUEBEC INC.
AND 9121-6606 QUEBEC
INC.
Defendants by
Counterclaim
REASONS
FOR JUDGMENT AND JUDGMENT
[1]
Richard
Glover and Michael Kichuk, the personal defendants in this action for
trade-mark infringement, have brought a motion for summary judgment dismissing
the Plaintiffs’ claim as against them.
[2]
The
respondents concede that there is no evidence to support the personal claim
asserted against Mr. Glover, and that summary judgment should go dismissing the
action against him. Accordingly, an order will go to that effect.
[3]
At
issue in this motion is whether a genuine issue for trial exists with respect
to Mr. Kichuk’s personal liability for the alleged infringement of the
“ISO-FLEX” trade-mark by the corporate defendants.
Background
[4]
Frank
Petrillo is the registered owner of the “ISO-FLEX” trade-mark and design
registered for use in conjunction with dietary supplements and other
nutritional products.
[5]
In
December of 2005, this action was commenced. The amended statement of claim
asserts that Mr. Petrillo is the sole shareholder and director of the corporate
plaintiffs, which have allegedly been using the ISO-FLEX mark in association
with the listed wares.
[6]
Insofar
as Mr. Kichuk is concerned, the relevant portions of the amended statement of
claim state that:
[9] Defendant MICHAEL KICHUK is a
senior manager and/or Director of Defendant H.B.S. …
[10] Plaintiffs verily believe that ALLMAX
and H.B.S. are one and the same companies …
[22] In or around the month of January
2004, Plaintiff PETRILLO personally called Defendant KICHUK to
inform him that he was the sole owner of the registered ISO-FLEX
trademark, and to stress that Defendants’ ALLMAX and H.B.S.’s use
of this mark was not authorized and, therefore, illegal. Defendant KICHUK
informed Plaintiff PETRILLO that he would get back to him, but Plaintiff
PETRILLO has never since been communicated by Defendant KICHUK or
any other representative of DEFENDANTS;
[26] In the month of March 2004,
Plaintiff PETRILLO instructed his lawyer, Me David Bounik, to draft and
send a demand letter to ALLMAX requesting that it cease and desist from
using its confusingly similar design mark in association with its products and
wares. Defendants have never responded to the demand letter, nor have they
complied with the Plaintiff’s requests contained therein…
[28] On November 7th 2005, another cease
and desist letter was sent to ALLMAX, demanding it immediately cease its
illegal use of Plaintiff PETRILLO’s registered trademark, and demanding
that a series of undertakings be sent by ALLMAX to Plaintiffs’
solicitors on or before November 17th, 2005. The undertakings requested have not
been delivered by ALLMAX or any other of the DEFENDANTS to this
date …
[30] Defendants RICHARD GLOVER
and MICHAEL KICHUK, individually and acting as officers of the Defendant
corporations ALLMAX and H.B.S., have deliberately, willfully and
knowingly pursued a course of conduct that has caused ALLMAX to adopt
the identical trade-mark owned by the Plaintiff (…) in conjunction with
the same category of wares, and have thereby demonstrated an indifference to
the risk of such infringement. Defendants MICHAEL KICHUK and RICHARD
GLOVER further incorporated H.B.S. for the purpose of distributing
and selling the wares branded with the impugned trade-mark and the confusingly
similar packaging in order to unfairly trade on the good will of the Plaintiffs
and in an attempt to shield themselves personally from any liability. At
this time, Plaintiffs are aware of no other facts regarding the behavior of
Defendants GLOVER and KICHUK; [underlining in the original]
The Evidence on This
Motion
[7]
Before
reviewing the substance of the evidence before the Court on this motion, it is
first necessary to identify precisely what that evidence is, as this was a
matter of some dispute at the hearing of the motion.
[8]
Mr.
Kichuk filed an affidavit in support of his motion for summary judgment. He
was subsequently cross-examined on that affidavit, and the transcript of that
cross-examination forms part of the evidentiary record before me.
[9]
The
respondents chose not to file any evidence in response to the motion. However,
in argument, counsel for the respondents endeavored to rely on documents that
had evidently been appended to his clients’ statement of claim and filed with
the Court in an apparent effort to comply with the requirements of Rule 206 of
the Federal Courts Rules.
[10]
This
rule requires that copies of documents referred to in a pleading be served with
the pleading, or be provided to the opposing party or parties within 10 days of
the pleading having been served.
[11]
At
the hearing of this motion, I advised counsel for the respondents that I was
not prepared to consider most of these documents, as they had not been properly
introduced into evidence, through the cross-examination of Mr. Kichuk, by way
of an affidavit from another deponent, or by some other means.
[12]
I
did, however, advise counsel that I was prepared to consider the certified copy
of the trade-mark registration for Mr. Petrillo’s “ISO-FLEX” mark, as such a
document is admissible without further proof, in accordance with the provisions
of section 24 of the Canada Evidence Act. Indeed, counsel for Mr.
Kichuk conceded that this document was properly admissible on the motion.
[13]
With
this understanding of what it is that comprises the evidentiary record, I turn
now to review what the evidence shows.
[14]
The
evidence of Mr. Kichuk establishes that he has been an Officer and Director of
Healthy Body Services Inc. (“HBS”) since it was incorporated in 1997. He is
currently the sole Director of the company, and is responsible for its overall
general management.
[15]
HBS
is involved in the distribution of nutritional and dietary supplements,
including protein powders, to retailers. The products carried by HBS are
manufactured by a variety of companies. Since 2002, one of these manufacturers
has been the defendant Allmax Nutrition Inc.
[16]
Allmax
was incorporated in November of 2002. Mr. Kichuk is also an Officer and sole
Director of this company. Allmax manufactures a line of nutritional products
and supplements, one of which is “ISOFLEX Whey Protein Isolate”.
[17]
Mr.
Kichuk is the individual who was responsible for selecting the name “ISOFLEX”
for the nutritional product that is the subject of this litigation. He began
developing this product in late 2001 and early 2002. He had originally
intended that the product would be called “ISOMAX”, however, while the product
was still under development, a similar product came on the market with the
ISOMAX name. This product was being manufactured by a competitor, who had
recently hired a former HBS employee.
[18]
Mr.
Kichuk says that he then began looking for another name for the product,
finally settling on the “ISOFLEX” name some time in 2002. This occurred prior
to the incorporation of Allmax.
[19]
Mr.
Kichuk then conducted a trade-mark search, which he says revealed 10-12
registrations, none of which related to the food industry. He swears that his
trade-mark search did not uncover Mr. Petrillo’s “ISO-FLEX” mark, which, it
should be noted, hyphenates the two syllables, unlike the Allmax “ISOFLEX”
mark, which is one word.
[20]
Mr.
Kichuk also states that prior to selecting the “ISOFLEX” name in 2002, he had
never heard of Mr. Petrillo, nor had he heard of any of Mr. Petrillo’s
companies or the products that Mr. Petrillo claims to sell.
[21]
Neither
Mr. Kichuk nor Allmax ever sought to register the “ISOFLEX” mark.
[22]
After
Allmax was incorporated in late 2002, HBS began distributing Allmax products,
including “ISOFLEX Whey Protein Isolate”.
[23]
Mr.
Kichuk acknowledges having received a letter from counsel acting on behalf of
Mr. Petrillo in March of 2004. The letter itself was one of the documents
appended to the statement of claim, and is not properly before the Court.
[24]
Mr.
Kichuk also acknoledges that sometime in the Spring or summer of 2004, he
received a phone call from Mr. Petrillo, in which Mr. Petrillo claimed to own
the “ISOFLEX” trade-mark. Mr. Kichuk says that he asked Mr. Petrillo to
provide him with a copy of the “paperwork” relating to Mr. Petrillo’s
trade-mark registration, but no such documentation was ever provided.
[25]
After
this telephone call, Mr. Kichuk says that he conducted a further search of the
“ISO-FLEX” mark, and that Mr. Petrillo’s mark still did not show up in the
search. Mr. Kichuk also says that he asked at least a dozen sales people,
retailers and trade show promoters, including those operating in the Province of Québec, if they had
ever heard of Mr. Petrillo or his products. Only one of these individuals
reported having ever heard of Mr. Petrillo, in relation to a body-building
gym. No one reported to have had any knowledge of any “ISOFLEX” products.
[26]
Finally,
counsel for Mr. Kichuk confirmed by way of answer of undertaking that neither
Allmax nor HBS has a written policy with respect to the intellectual property
of other companies.
Personal Liability of
Officers and Directors for the Infringement of Intellectual Property
[27]
As
a general rule, incorporated businesses have a legal personality separate and
distinct from those of its directors and officers, who will ordinarily enjoy
the benefits of limited liability that incorporation provides.
[28]
That
said, there will be cases where the conduct of the director or officer in
question is such that personal liability will result.
[29]
As
to when that will be, the Ontario Court of Appeal held in Normart Management
Ltd. v. West Hill Redevelopment Co., [1998] O.J. No. 391, 37 O.R. (3d) 97,
at p. 102, [1998] O.J. No. 391 that:
It is well established that the directing
minds of corporations cannot be held civilly liable for the actions of the
corporations they control and direct unless there is some conduct on the part
of those directing minds that is either tortious in itself or exhibits a
separate identity or interest from that of the corporations such as to make the
acts or conduct complained of those of the directing minds: [case references
omitted]
[30]
Similarly,
in Mentmore Manufacturing Co. Ltd. v. National Merchandising Manufacturing
Co. Inc. (1978), 89 D.L.R. (3d) 195, 22 N.R. 161, at ¶ 25, the Federal
Court of Appeal asked itself what kind of participation in the acts of a
company give rise to personal liability on the part of a corporate director or
officer. In this regard, the Court stated that:
It would appear to be that degree and
kind of personal involvement by which the director or officer makes the
tortious act his own. It is obviously a question of fact to be decided on the
circumstances of each case ... But there would appear to have been in these
cases a knowing, deliberate, wilful quality to the participation. [case
references omitted]
[31]
This
principle applies not just to large corporations, but to small, closely held
companies as well. As the Federal Court of Appeal noted in Mentmore, at
¶ 24, there is no reason why small, one or two-person companies should not have
the benefit of the same approach to personal liability as large corporations,
merely because there is generally and necessarily a greater degree of direct
and personal involvement in management on the part of its shareholders and
directors.
[32]
That
is, the mere fact that individual defendants may be sole shareholders and directors
of a company is not, by itself, enough to support an inference that the company
was their agent or instrument in the commission of acts of infringement, or
that they authorized such acts, so as to make themselves personally liable: Mentmore,
at ¶ 24.
[33]
The
necessary result of this is that not only will the particular direction or
authorization required for personal liability not be inferred merely from the
fact that a company is closely controlled: it will also not be inferred from
the general direction which those in such control must necessarily impart to
its affairs: Mentmore, at ¶ 24.
[34]
The
Federal Court of Appeal concluded in Mentmore that to attract personal
liability on the part of a corporate director or officer:
[T]here must be circumstances from which
it is reasonable to conclude that the purpose of the director or officer was
not the direction of the manufacturing and selling activity of the company in
the ordinary course of his relationship to it but the deliberate, willful and
knowing pursuit of a course of conduct that was likely to constitute
infringement or reflected an indifference to the risk of it: at ¶ 28.
[35]
Given
that the precise formulation of a test for personal liability would be
difficult, the Federal Court of Appeal in Mentmore held that a broad
appreciation of the circumstances of each case is necessary in order to
determine whether, as a matter of policy, they call for personal liability: at
¶ 28.
[36]
Finally,
it is not enough for a Plaintiff to assert personal liability on the part of an
officer or director of a company in a statement of claim, in the hope that
evidence to support the allegation will be uncovered during the discovery
process. A lawsuit is not a fishing expedition, and to do so is an abuse of
the court’s process: see Painblanc v. Kastner, [1994] F.C.J. No. 1671,
58 C.P.R. (3d) 502.
[37]
With
this understanding of the legal principles governing the personal liability of
directors and officers, it is also necessary to have an appreciation of the
principles governing motions for summary judgment in the Federal Court. This
will be considered next.
General Principles
Governing Summary Judgment
[38]
Summary
judgment in the Federal Court is governed, in part, by Rule 216 of the Federal
Courts Rules, the operative portions of which provide:
|
216. (1)
Where on a motion for summary judgment the Court is satisfied that there is
no genuine issue for trial with respect to a claim or defence, the Court
shall grant summary judgment accordingly.
…
(3)
Where on a motion for summary judgment the Court decides that there is a
genuine issue with respect to a claim or defence, the Court may nevertheless
grant summary judgment in favour of any party, either on an issue or
generally, if the Court is able on the whole of the evidence to find the
facts necessary to decide the questions of fact and law.
|
216. (1) Lorsque, par suite d’une requête en
jugement sommaire, la Cour est convaincue qu’il n’existe pas de véritable
question litigieuse quant à une déclaration ou à une défense, elle rend un
jugement sommaire en conséquence.
…
(3) Lorsque, par
suite d’une requête en jugement sommaire, la Cour conclut qu’il existe une
véritable question litigieuse à l’égard d’une déclaration ou d’une défense,
elle peut néanmoins rendre un jugement sommaire en faveur d’une partie, soit
sur une question particulière, soit de façon générale, si elle parvient à
partir de l’ensemble de la preuve à dégager les faits nécessaires pour
trancher les questions de fait et de droit.
|
[39]
It
has been suggested that there is some ambiguity between Rule 216(1), which
states that matters should proceed to trial where there is a genuine issue to
be decided, and Rule 216(3), which entitles a motions judge to decide that
issue, if the necessary facts can be found.
[40]
The
most recent pronouncement from the Federal Court of Appeal in this regard is
found in Trojan Technologies Inc. v. Suntec Environmental Inc. [2004]
F.C.J. No. 636, 2004 FCA 140, where the Court observed that this apparent
ambiguity should not result in motions for summary judgment becoming summary
trials on the basis of affidavit evidence: see ¶ 19.
[41]
A
number of other principles can be gleaned from the jurisprudence. One such
principle is that where there is an issue of credibility involved, the case
should not be decided on summary judgment under Rule 216(3) but rather should
go to trial because the parties should be cross-examined before the trial
judge: MacNeil Estate v. Canada (Indian and Northern Affairs Department)
[2004] F.C.J. No. 201, 2004 FCA 50, at ¶ 32.
[42]
Judges
hearing motions for summary judgment can only make findings of fact or law
where the relevant evidence is available on the record, and does not involve a
serious question of fact or law which turns on the drawing of inferences: see Apotex
Inc. v. Merck & Co., [2002] F.C.J. No. 811, 2002 FCA 210.
[43]
Also
relevant to this matter is Rule 215, which provides that:
|
215. A response to a motion for summary judgment shall not
rest merely on allegations or denials of the pleadings of the moving party,
but must set out specific facts showing that there is a genuine issue for
trial.
|
215. La réponse à une requête en jugement sommaire
ne peut être fondée uniquement sur les allégations ou les dénégations
contenues dans les actes de procédure déposés par le requérant. Elle doit
plutôt énoncer les faits précis démontrant l’existence d’une véritable
question litigieuse.
|
[44]
That
is, a party responding to a motion for summary judgment cannot simply rely on
allegations or denials in its pleadings. Instead, the responding party must
provide evidence, through affidavits or by other means, of specific facts
demonstrating that there is a genuine issue for trial: see Kirkbi AG v.
Ritvik Holdings Inc. [1998] F.C.J. No. 912, at ¶ 18.
[45]
According
to the Federal Court of Appeal in the MacNeil Estate case previously
cited, parties responding to a motion for summary judgment do not have the
burden of proving all of the facts in their case; rather, they have only
an evidentiary burden to put forward evidence showing that there is a genuine
issue for trial: at ¶ 25.
[46]
Although
the burden lies with the moving party to establish that there is no genuine
issue to be tried, Rule 215 does, however, require that the party responding to
the motion for summary judgment “put his best foot forward”. To do this, a
responding party must set out facts that show that there is a genuine issue for
trial: see MacNeil Estate, at ¶ 37.
[47]
This
requirement has also been described as necessitating that a responding party
“lead trump or risk losing": see Kirkbi AG, above, at ¶ 18, quoting
Horton v. Tim Donut Ltd. (1997), 75 C.P.R. (3d) 451 at 463 (Ont. Ct.
(Gen.Div.)), aff'd (1997), 75 C.P.R. (3d) 467 (Ont. C.A.).
[48]
Ultimately,
the test is not whether a plaintiff cannot succeed at trial, but whether the
case is so doubtful that it does not deserve consideration by the trier of fact
at a future trial: see Ulextra Inc. v. Pronto Luce Inc. [2004] F.C.J.
No. 722, 2004 FC 590.
[49]
In
making this determination, a motions judge must proceed with care, as the
effect of the granting of summary judgment will be to preclude a party from
presenting any evidence at trial with respect to the issue in dispute. In other
words, the unsuccessful responding party will lose its "day in
court": see Apotex Inc. v. Merck & Co., 248 F.T.R. 82, at ¶ 12,
(aff’d 2004 FCA 298).
[50]
With
this understanding of the relevant principles governing motions for summary
judgment, I turn now to consider the merits of Mr. Kichuk’s motion.
Analysis
[51]
In
determining whether there is a genuine issue for trial in this matter, as it
relates to Mr. Kichuk, it is necessary to return to consider the nature of the
allegations made against him.
[52]
The
primary paragraph in the statement of claim identifying the conduct alleged on
the part of Mr. Kichuk which is said to attract his personal liability is
paragraph 38. An examination of this paragraph discloses that the allegations
made against Mr. Kichuk are essentially of two types.
[53]
The
first type of allegation made against Mr. Kichuk is that he deliberately,
willfully and knowingly pursued a course of conduct that caused Allmax to adopt
the identical trade-mark to that owned by the Plaintiff, in conjunction with
the same category of wares, and has thereby demonstrated an indifference to the
risk of infringement.
[54]
The
second type of allegation made against Mr. Kichuk is that he incorporated HBS
for purpose of distributing and selling the wares branded with the impugned
mark, and confusingly similar packaging, in order to trade on the goodwill of
the Plaintiffs. According to the statement of claim, this was all done in an
attempt to shield Mr. Kichuk from personal liability.
[55]
I
will first consider this latter set of allegations.
[56]
First,
there is no evidence before the Court to support the Plaintiff’s contention
that Mr. Kichuk incorporated HBS for the purpose of distributing and selling
wares branded with the ISOFLEX mark, or that he did so in an effort to shield
himself from personal liability. Indeed, the evidence before the Court
indicates that HBS was in the nutritional and dietary supplement distribution
business long before Allmax and its ISOFLEX product even existed.
[57]
Mr.
Kichuk’s evidence is that HBS was incorporated in 1997. This evidence is
confirmed by the Ontario Ministry of Consumer and Business Services’ “Corporate
Profile Report”, which indicates that the company was incorporated on February
19, 1997.
[58]
Mr.
Kichuk’s uncontroverted evidence is that the Allmax “ISOFLEX Whey Protein
Isolate” product was not developed until sometime in late 2001 or 2002, and
that the ISOFLEX name was not chosen until sometime in 2002 – some five years
after HBS was incorporated.
[59]
Moreover,
the unchallenged evidence before the Court is that in the intervening five year
period, HBS was distributing nutritional and dietary supplements, including
protein powders, which had been manufactured by a variety of companies. HBS
only began distributing Allmax’s “ISOFLEX Whey Protein Isolate” some time after
Allmax was incorporated on November 12, 2002.
[60]
There
is also no admissible evidence before the Court with respect to the packaging
employed by any of the companies involved in this litigation, and thus there is
no evidence to support the Plaintiff’s allegation that Mr. Kichuk chose
confusingly similar packaging for Allmax’s “ISOFLEX” product.
[61]
Finally,
there is no evidence before the Court to support the allegation that Mr. Kichuk
chose the “ISOFLEX” mark in an attempt to trade on the goodwill of the
Plaintiffs. The uncontroverted evidence before the Court is that Mr. Kichuk
had no knowledge of the existence of any of the Plaintiffs, their products or
the “ISO-FLEX” mark at the time that he chose the “ISOFLEX” name for what would
ultimately become Allmax’s product.
[62]
The
other type of allegation made against Mr. Kichuk is that he deliberately,
willfully and knowingly pursued a course of conduct that caused Allmax to adopt
the identical trade-mark to that owned by the Plaintiff, to be used in
conjunction with the same category of wares, thereby demonstrating an
indifference to the risk of infringement.
[63]
Here,
once again, there is simply no evidence before the Court to support any of
these assertions. As was noted above, Mr. Kichuk’s uncontroverted evidence is
that at the time that he chose the ISOFLEX mark, he had no knowledge of the
Plaintiff’s mark. Thus, it cannot be said that he chose a mark similar to the
“ISO-FLEX” mark owned by the Plaintiff Petrillo “deliberately, willfully and
knowingly”, thereby demonstrating an indifference to the risk of infringement.
[64]
Moreover,
Mr. Kichuk’s unchallenged evidence is that prior to proceeding with the
“ISOFLEX” name, he used reasonable diligence by conducting a trade-mark search,
which search did not disclose the existence of the Plaintiffs’ mark. If the
Plaintiffs wanted to challenge Mr. Kichuk’s evidence in this regard, surely it
would have been a simple matter for a search of the Trade-mark Register to be
carried out, using the “ISOFLEX” name in an effort to demonstrate that the
Plaintiffs’ mark would have been uncovered by such a search, notwithstanding
the fact that the Plaintiffs’ mark hyphenates the word. Having failed to
adduce any evidence to contradict Mr. Kichuk’s evidence on this point, the
Plaintiffs must live with the consequences.
[65]
It
must further be noted that not only did the Plaintiffs not challenge Mr.
Kichuk’s evidence on this point, in argument, counsel for the Plaintiffs
actually conceded that the search engine for the Trade-mark Register may have
been deficient in not uncovering his clients’ mark.
[66]
Finally,
the Plaintiffs say that having admitted receipt of the Plaintiffs’ counsel’s
“cease and desist” letter in March of 2004, and by allowing Allmax to continue
to sell its “ISOFLEX” product after he had express knowledge of the Plaintiffs’
mark, Mr. Kichuk demonstrated an indifference to the risks of infringement,
thereby attracting personal liability.
[67]
There
are a number of difficulties with this argument. First, although the statement
of claim refers to these events, it does not rely on events post-dating the
adoption of the mark by Allmax as forming a basis for personal liability on the
part of Mr. Kichuk.
[68]
Perhaps
more importantly, the fact that Mr. Kichuk received actual notice of the
Plaintiff’s mark in March of 2004, by itself, does not provide an evidentiary
basis for a finding of personal liability.
[69]
In
coming to this conclusion, I would firstly note that while Mr. Kichuk
acknowledged that he was responsible for the overall general management of HBS,
he made no such admission insofar as Allmax was concerned. Thus any personal
liability on his part would have to flow from his position as Allmax’s sole
shareholder and director.
[70]
However,
as the Federal Court of Appeal observed in the Mentmore decision
previously cited, the mere fact that an individual defendant may be the sole
shareholder and director of a company is not, by itself, enough to support an
inference that the company was the individual’s agent or instrument in the
commission of acts of infringement, or that the individual authorized such
acts, so as to make themselves personally liable: Mentmore, at ¶ 24.
[71]
Moreover,
Mentmore teaches us that the particular direction or authorization
required for personal liability is not to be inferred from the general
direction which those in such control must necessarily impart to the company’s
affairs: see ¶ 24.
[72]
Indeed,
in order to attract personal liability on the part of a corporate director or
officer, there must be circumstances from which it is reasonable to conclude
that the purpose of the individual was not the direction of the manufacturing
and selling activity of the company in the ordinary course of his relationship
to it, but the deliberate, willful and knowing pursuit of a course of conduct
that was likely to constitute infringement or reflected an indifference to the
risk of it: Mentmore, at ¶ 28.
[73]
There
is simply no evidence before the Court that could support a finding that Mr.
Kichuk acted in the necessary tortious, deliberate, willful or knowing manner,
simply by virtue of the fact that he did not instruct Allmax to stop
manufacturing or selling the ISOFLEX product after he received the cease and
desist letter in March of 2004.
[74]
Indeed,
what evidence there is before the Court actually shows that once Mr. Kichuk
received the March, 2004 letter, he made inquiries in an effort to ascertain if
the “ISO-FLEX” mark was in fact registered, to no avail. He was similarly
unsuccessful in finding anyone in the business who had ever heard of the
Plaintiffs’ ISOFLEX products. This is inconsistent with the Plaintiffs’ allegation
that Mr. Kichuk acted in a manner that was deliberate, willful and knowing, or
that he demonstrated an indifference to the risk of infringement.
[75]
Finally,
I do not accept the Plaintiffs’ contention that this matter should be allowed
to go to trial insofar as the claim against Mr. Kichuk is concerned. Contrary
to counsel’s submission, there are no important issues of credibility that
could only be resolved through a trial. The fact is that I have only one
version of events before me, the Plaintiffs having elected, for whatever
reason, not to lead any evidence on this motion, beyond the registration
document for Mr. Petrillo’s mark. Thus the evidence of Mr. Kichuk has simply
not been challenged, there is no alternate version of events before me, and there
are no issues of credibility arising on the record that require resolution
through the trial process.
Conclusion
[76]
For
these reasons, I am satisfied that there is no genuine issue for trial insofar
as Mr. Kichuk’s personal liability is concerned, and an order will go
dismissing the action as against him.
[77]
On
the consent of the parties, an order will also go dismissing the action as
against Mr. Glover.
JUDGMENT
THIS COURT ORDERS AND
ADJUDGES that
the motion for summary judgment is granted, and this action is dismissed as
against Mr. Kichuk and Mr. Glover, with costs.
“Anne
Mactavish”
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