Date: 20050830
Docket: T-2347-03
Citation: 2005 FC 1186
BETWEEN:
GUCCIO GUCCI S.P.A., GUCCI AMERICA INC. and
G. BOUTIQUES INC.
Plaintiffs
and
SHALOM LEVI A.K.A. SHALOM LEVY
FORMERLY IDENTIFIED AS JOHN DOE IN ACTION T-878-03
Defendant
REASONS FOR ORDER
HUGHES J.
[1] This proceeding arises from a summary judgment motion brought by the Plaintiffs pursuant to an Order of the case management Prothonotary dated June 7, 2005. That order required that the Plaintiffs bring such motion on a certain date and that the Plaintiffs' materials be filed a certain date before the motion and that the Defendant file his materials a certain date after that and before the motion. The Plaintiffs did as they were ordered, the Defendant did nothing. The Plaintiffs' counsel appeared on the motion, the Defendant did not appear, nor did anyone on his behalf.
[2] The action began as what is commonly called a "John Doe" proceeding to enforce certain trade-mark and copyright rights owned and licensed by the Plaintiffs in respect of counterfeit goods. The first step was the obtaining of an Anton Piller Order and as such Order was executed and Defendants identified, separate proceedings against identified Defendants were carved out of the original action. Those separate proceedings, would be case managed. This was one such proceeding.
[3] In this action a number of Canadian registered trade-marks, many of them including or being the word GUCCI were asserted as well as a number of copyrights which were registered in Canada but, because the registration system fails to disclose in any relevant manner what the subject matter of the copyright is, the copyright is essentially unidentified. Evidence was presented at the return of the summary judgment motion demonstrating that the Defendant was selling and offering for sale handbags and eyewear bearing the word GUCCI as a trade-mark. These goods were counterfeit. The Plaintiffs own one Canadian Registered Trade-Mark which comprises only the word GUCCI as a trade-mark for wares including handbags and eyewear; it is Registration No. TMA 202.555. The Plaintiffs also presented satisfactory evidence that the factual basis for the Counteraction, namely, that the Anton Piller Order was executed at the Defendant's residence, was untrue.
[4] At the end of the hearing I indicated that I would grant summary judgment in Plaintiffs' favour and dismiss the Counterclaim. I asked Plaintiffs' counsel to prepare a draft order which was done. That draft was very lengthy and went far beyond what could have been contemplated as a reasonable order. I prepared and signed a different Order together with these Reasons to explain how such an Order is to be made.
[5] Where an Order is made pursuant to summary judgment, or on consent such as by way of settlement, a proper Order must be guided at least by the following principles:
a) The relief granted is limited to that which is within the jurisdiction of the Federal Court. For instance this Court had no jurisdiction in respect of unfair competition unless it is within section 7 of the Trade-Mark Act or other federal statute. The same applies to trade secrets.
b) The relief granted is limited to the rights pleaded and relief claimed in the Statement of Claim. A draft Order is no place to amend a Statement of Claim.
c) The relief claimed is further limited to that claimed in the motion for summary judgment. If you don't ask for it you don't get it.
d) The relief given is further limited to that proven in a motion for summary judgment. If one registered trade-mark is shown to be infringed, that is the subject of the relief, not all trade-marks and all copyrights that the Plaintiffs may claim to own.
[6] It is hoped that these guidelines will assist counsel in drafting proposed orders in unopposed and consent matters.
"Roger T. Hughes"
FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2347-03
STYLE OF CAUSE: GUCCIO GUCCI S.P.A., GUCCI AMERICA INC. and
G. BOUTIQUES INC.
Plaintiffs
and
SHALOM LEVI A.K.A. SHALOM LEVY
FORMERLY IDENTIFIED AS JOHN DOE IN ACTION
T-878-03
Defendant
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: August 22, 2005
REASONS FOR ORDER: HUGHES J.
DATED: August 30, 2005
APPEARANCES:
Daniel Ovadia FOR PLAINTIFFS
Shalom Levi FOR THE DEFENDANT, ON HIS OWN BEHALF
SOLICITORS OF RECORD:
Daniel Ovadia
Montreal, Quebec FOR PLAINTIFFS
Shalom Levi
Woodbridge, Ontario FOR THE DEFENDANT, ON HIS OWN BEHALF
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