Benisti Import-Export Inc. v. Modes TXT Carbon Inc., 2004 FC 539

Date: 20040407

Docket: T-1517-01

Citation: 2004 FC 539

Montréal, Quebec, April 7, 2004

Present:           RICHARD MORNEAU, PROTHONOTARY

BETWEEN:

                                                BENISTI IMPORT-EXPORT INC.

                                                                                                                                              Plaintiff/

                                                                                                              Defendant by Counterclaim

                                                                           and

                                                     MODES TXT CARBON INC.

                                                                                                                                          Defendant/

                                                                                                                   Plaintiff by Counterclaim

                                            REASONS FOR ORDER AND ORDER

[1]                This is a motion by the plaintiff and defendant by counterclaim (the plaintiff) under rule 237(3) of the Federal Court Rules, 1998 (the Rules) for the defendant and plaintiff by counterclaim (the defendant) to produce Varda Levy for the continuation of its examination for discovery, in lieu of the defendant's designated representative, namely Mr. Zappitelli, who was initially examined by the plaintiff.

[2]                Rule 237(3) provides:

[3]                In Liebmann v. Canada (Minister of National Defence) (1996), 110 F.T.R. 284, pages 291-292, my colleague, Prothonotary Hargrave, summarized the caselaw on a motion to examine a witness other than the one selected by a party:

I believe it would be useful to reduce the essence of these cases to half a dozen points:

1.              The party being examined must put forward a proper and knowledgeable witness [ . . . ];

2.              The witness must be able to give broad discovery, including as to supplemental questions [ . . . ];

3.              The onus is on the party examining to demonstrate objectively the unsuitability of the witness in an application for a second discovery and indeed the applicant must show that the first witness is either incapable of giving evidence of his own knowledge or by informing himself or that the second witness is in a much better position to give evidence [ . . . ];

4.              Convenience may be a factor, for in some instances it is more desirable and practical to have the individual involved examined, rather than to have a witness inform herself or himself [ . . . ];

5.              The expense of a second witness is a factor [ . . . ];

6.              The circumstances of the case, including the responsiveness of the witness, the degree to which the witness has taken pains to inform herself or himself and the materiality of the evidence sought to be canvassed with the second witness are also factors [ . . . ].

[4]                This litigation pertains to the defendant's infringement of the plaintiff's trade-mark, "N1", the defendant's infringement of the plaintiff's rights in the industrial design No. 92684 as well as the validity of this design. It is therefore important that the witness selected by the defendant have extensive knowledge of the business from its incorporation in 1998 to today, with regard to the trade-marks and the design of the product at issue.

[5]                Mr. Zappitelli made 37 undertakings. A series of supplemental questions are to be asked by plaintiff's counsel after the undertakings have been submitted, but in my opinion it is obvious that, in all probability, Mr. Zappitelli will not be able to answer these questions promptly and effectively since he was not an employee of the defendant in 1998 and was not involved with the department responsible for the examination and selection of trade-marks, including the "N1" mark, or with the department responsible for creating designs and products.

[6]                It appears to me that, for the continuation of the examination for discovery of the defendant, if Mr. Zappitelli continues as the defendant's representative, he will not be able to respond through direct and personal knowledge but will again have to make undertakings and get information from Ms. Levy, in order to adequately and effectively respond to the questions which might be raised by the undertakings already provided.

[7]                It is evident that Ms. Levy's presence initially with the plaintiff's company, then with the defendant, places Ms. Levy in a unique position. Ms. Levy is said to have been employed by the plaintiff from July 5, 1988 to October 17, 1997, then later left the plaintiff and to go found the defendant company, where she was responsible at all material times for the design of the products.

[8]                It seems to me that the continuation of the examination of the defendant with Ms. Levy as its representative meets the requirements of Liebmann, stated above.

[9]                Accordingly, the plaintiff's motion is granted, costs in the cause, and, in terms of a schedule to follow, the parties should conduct themselves as follows:

1.          For the purposes of continuing the examination for discovery of the defendant, the defendant shall make Ms. Levy available to the plaintiff and the latter shall proceed to examine Ms. Levy at a date and place to be determined by the parties, but no later than May 7, 2004. Any undertaking arising out of this examination must be completed on or before May 25, 2004.

2.          Any motion pertaining to the continuation of the defendant's examination shall - if such a motion is necessary - be served and filed on or before June 9, 2004.

3.          Any further steps will be determined by a subsequent schedule to be submitted by the parties.

Certified true translation

Kelley A. Harvey, BA, BCL, LLB

                                                 FEDERAL COURT

                                         SOLICITORS OF RECORD

DOCKET:

STYLE OF CAUSE:

T-1517-01

BENISTI IMPORT-EXPORT INC.

                                    Plaintiff/defendant by counterclaim

and

MODES TXT CARBON INC.

                                    Plaintiff/defendant by counterclaim

PLACE OF HEARING:                     Montréal, Quebec

DATE OF HEARING:                       April 5, 2004

REASONS FOR ORDER BY:        RICHARD MORNEAU, PROTHONOTARY

DATE OF REASONS:                      April 7, 2004

APPEARANCES:

SOLICITORS OF RECORD: