Date: 20031211
Docket: T-1517-01
Citation: 2003 FC 1456
Montréal, Quebec, December 11, 2003
PRESENT: RICHARD MORNEAU, PROTHONOTARY
BETWEEN:
BENISTI IMPORT-EXPORT INC.
Plaintiff/
Defendant to Counterclaim
and
MODES TXT CARBON INC.
Defendant/
Plaintiff by Counterclaim
REASONS FOR ORDER AND ORDER
[1] The case at bar concerns a motion by the defendant to decide objections raised by the plaintiff at the examination for discovery of its representative.
[2] It appeared that the plaintiff filed an action for infringement of its industrial design 92684 relating to the original design of a cloak and infringement of its trade mark 'N1.
[3] The defendant disputed the infringement and filed a counterclaim to quash the said industrial design for infringing trade mark 'N1, which it said it held, and for unfair competition and false and deceptive statements.
[4] The parties grouped the questions to be decided into four categories.
Category 1
[5] This category deals with function, and contains questions 68 and 154, which read:
[TRANSLATION]
Q. 68 IDENTIFY ON FIGURES 1, 2 AND 3 OF INDUSTRIAL DESIGN No. 92684 THE PARTS WHICH PERFORM A UTILITARIAN FUNCTION ON THE CLOAK.
Q.154 EXPLAIN TO WHAT THE DESCRIPTIONS OF EACH OF THE CLOAKS REPRODUCED IN THE PLAINTIFF'S CATALOGUES (MB-7) REFER AS COMPARED WITH THE SKETCHES OF EACH OF THE CLOAKS REPRESENTED AND THE COMPONENTS OF FIGURES 1, 2 AND 3 OF INDUSTRIAL DESIGN No. 92684.
[6] Question 68 asks that the components performing a utilitarian function be indicated. It appears that this is not the test of the validity of an industrial design.
[7] It appeared in fact that the test was whether the components performed a solely utilitarian function. This appears from section 5.1 of the Industrial Design Act, R.S.C. 1985, c. I-9, as amended:
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5.1 No protection afforded by this Act shall extend to
(a) features applied to a useful article that are dictated solely by a utilitarian function of the article; or
(b) any method or principle of manufacture or construction.
(My emphasis.)
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5.1 Les caractéristiques résultant uniquement de la fonction utilitaire d'un objet utilitaire ni les méthodes ou principes de réalisation d'un objet ne peuvent bénéficier de la protection prévue par la présente loi.
(non souligné dans l'original)
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[8] It further appeared that the plaintiff had already indicated to the defendant the features which it regarded as ornamental. Accordingly, question 68 will not have to be answered.
Category 2
[9] I intend to allow question 154 (in category 1) as well as questions 119 and 122 in category 2, which deal with originality, since although the central and ultimate test in this matter is a comparison between the plaintiff's industrial design and the defendant's product, it appeared that in order to establish its grounds for challenging validity and the possible scope of any infringement it was reasonable at this stage to allow the defendant to examine the plaintiff on the specific condition of the market. Questions 154, 119 and 122 will therefore have to be answered.
[10] The wording of questions 126 and 127 in category 2 with reference to the terms [TRANSLATION] "competing third parties" and "similar" introduces a certain degree of vagueness. These questions will not have to be answered.
[11] The very general wording of question 244 means that it is also vague and will not have to be answered.
Category 3
[12] The only question in category 3, namely question 216/217, seeks to determine the name of the person who manufactured the plaintiff's cloaks pertaining to the industrial design at issue. I think that the defendant in paragraph 20 of its written submissions presented arguments justifying the production of this information. This question will accordingly have to be answered. However, the identity of that individual and any exercise which may follow the production of this information will have to be treated confidentially and only brought to the attention of counsel for the defendant, to the exclusion of any of the latter's representatives.
Category 4
[13] The only matters still at issue in category 4 are undertakings 219 and 220. I consider that the plaintiff has given a genuine undertaking to produce them. However, it may in doing so obliterate information which it is customary to cover up in the circumstances.
[14] Consequently, the plaintiff will have to answer in writing questions 119, 122, 154 and 216/217 and undertakings 219 and 220 within 30 days of this order.
[15] Costs in the cause on this motion.
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"Richard Morneau"
Prothonotary
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Certified true translation
Suzanne M. Gauthier, C. Tr., LL.L.
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-1517-01
STYLE OF CAUSE: BENISTI IMPORT-EXPORT INC.
Plaintiff/Defendant to Counterclaim
and
MODES TXT CARBON INC.
Defendant/Plaintiff by Counterclaim
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: December 8, 2003
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATED: December 11, 2003
APPEARANCES:
Alain Y. Dussault for the plaintiff/defendant to counterclaim
Allen D. Israel for the defendant/plaintiff by counterclaim
SOLICITORS OF RECORD:
Léger, Robic, Richard for the plaintiff/defendant to counterclaim
Montréal, Quebec
Lapointe, Rosenstein for the defendant/plaintiff by counterclaim
Montréal, Quebec
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