Date : 20000406
Docket: T-238-00
BETWEEN:
WEIGHT WATCHERS INTERNATIONAL, INC.
Plaintiff
AND
VALE PRINTING LIMITED
-and-
THE CANADIAN INSTITUTE OF CULTURAL AFFAIRS
(carrying on business as ICA CANADA)
Defendants
REASONS FOR ORDER AND ORDER
BLAIS, J.:
[1] This is a motion by the Defendants for particulars of paragraphs 1(c), 1(d), 7, 8, 9, 16, 19, 28, 30(b) of the original Statement of Claim.
[2] On February 9, 2000 the Plaintiff served on the Defendants VALE PRINTING LIMITED and THE CANADIAN INSTITUTE OF CULTURAL AFFAIRS an Application for an interlocutory and permanent injunction and damages.
[3] On March 6th, 2000 the Plaintiff has presented a motion to amend its Statement of Claim and add as Defendants ONTARIOSTAR AIRCRAFT COMPANY INCORPORATED and MANFRED HUMPHRIES.
[4] That motion was opposed before this Court in Toronto before Honourable Justice Heneghan. The decision on this motion is still pending.
[5] Given that the Amended Statement of Claim has not been yet allowed the Court will rely only on the Statement of Claim filed in the Court on February 8, 2000 and only on particulars referring to paragraphs of this original Statement of Claim.
[6] Pursuant to paragraph 1(c) and 1(d) of the original Statement of Claim I am satisfied the allegations relating to damages as set out in the original Statement of Claim, are sufficient for the purpose of pleading.
[7] Pursuant to paragraph 7 of the original Statement of Claim, the Defendants request the following particulars:
| Who are the moral or physical persons owning a licence from the plaintiff and without producing a copy of such licence or licences?; |
| What are the "related wares and services"? |
| Since when WEIGHT WATCHERS or their licensees used the name as well as the mark WEIGHT WATCHERS?; |
| How did the plaintiff use the name WEIGHT WATCHERS?; |
| How did the plaintiff use the mark WEIGHT WATCHERS?; |
| Whether the plaintiff is owner of a trade mark WEIGHT WATCHERS in association with wares and services related to the operation of a website or in relation with an electronic business and, if so, without producing the registration certificates of the trade marks?; |
| In the affirmative, produce the proof of use of the said trademark?.1 |
[8] I agree with the Plaintiff that the particulars requested in a), f) and g) are not required at this stage of the proceedings.
[9] The particulars requested in b), c), d) and e) are found in the Statement of Claim at paragraphs 5 and 6, therefore, particulars are not allowed.
[10] Pursuant to paragraph 8 of the original Statement of Claim, the Defendants request particulars about the advertising and promotion of the WEIGHT WATCHERS name and mark in all media across Canada.
[11] In International Business Machines Corp. v. Printech Ribbons Inc. , Justice Teitelbaum said on page 343:
| with respect to the issue of advertising and promotion, I agree with the plaintiffs" submission that details of promotion and advertising are not necessary to enable the defendants to plead to the statement of claim. These details are more properly dealt with in the context of examinations for discovery. |
So do I.
[12] Pursuant to paragraph 9 of the original Statement of Claim, the Defendants request particulars about when the WEIGHT WATCHERS mark or name was advertised in Canada and which of the registered trade marks of the plaintiff have acquired substantial goodwill and how.
[13] It is clear from paragraph 5 of the original Statement of Claim that the trade mark WEIGHT WATCHERS has been used in Canada for over 30 years.
[14] Also pursuant to pararaphs 5, 6, 7, 8 and 9 the Plaintiff explains how it acquired substantial and valuable goodwill in Canada through extensive advertising and promotions.
[15] Then referring again to Justice Teitelbaum 2. I am of the opinion that the particulars requested are not necessary pursuant to paragraph 9 of the original Statement of Claim.
[16] The Defendants asked particulars relating to paragraph 16 of the original Statement of Claim. I am convinced that the Plaintiff shall provide particulars relating to paragraph 16 . Those particulars will be as follows:
When the Plaintiff has adopted WW as a trade mark?
How the Plaintiff has used the trade mark WW?
| Whether the Plaintiff is the owner of a trade mark registered WW in association |
| with ware and services related to the operation of a website or in relation with an electronic business and if so provide the registration certificate of the trade mark. |
[17] The Defendants request particulars pursuant to paragraph 19 of the original Statement of Claim.
[18] I am of the opinion that the particulars requested by the Defendants are known to the Defendants and also that paragraphs 10, 11 and 12 of the original Statement of Claim respond to the Defendants" questions.
[19] The Defendants failed to convince me that particulars will be necessary in that case.
[20] The Defendants request particulars pursuant to paragraph 28 of the original Statement of Claim. In my opinion the answers to the requested particulars appear in the Statement of Claim namely at paragraphs 5 to 9.
[21] The expenses in establishing goodwill in the trade mark WEIGHT WATCHERS are evidence and should be provided at the trial.
[22] The Defendants request particulars on paragraph 30(b) of the original Statement of Claim.
[23] I am convinced that the Statement of Claim at paragraphs 13 to 30 respond to the Defendants" request and the Defendants have not convinced me that particulars should be provided.
[24] As I mentioned at the hearing I will not consider the Amended Statement of Claim and I will refer only to the original Statement of Claim.
[25] For all those reasons, this Court orders that the motion by the Defendants for particulars be allowed only pursuant to paragraph 16.
[26] The Plaintiff shall provide particulars as follows:
When the Plaintiff has adopted WW as a trade mark?
How the Plaintiff has used the trade mark WW?
| Whether the Plaintiff is the owner of a trade mark registered WW in association |
| with ware and services related to the operation of a website or in relation with an electronic business and if so provide the registration certificate of the trade mark. |
[27] Costs in the cause.
Montreal, Quebec Pierre Blais
this 6th day of April 2000 Judge
FEDERAL COURT OF CANADA
TRIAL DIVISION
Date: 20000406
Docket: T-238-00
BETWEEN:
WEIGHT WATCHERS
INTERNATIONAL, INC.
Plaintiff
AND
VALE PRINTING LIMITED
-and-
THE CANADIAN INSTITUTE
OF CULTURAL AFFAIRS
(carrying on business as ICA CANADA)
Defendants
REASONS FOR ORDER
AND ORDER
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-238-00
STYLE OF CAUSE: WEIGHT WATCHERS
INTERNATIONAL, INC.
Plaintiff
AND
VALE PRINTING LIMITED
and
| THE CANADIAN INSTITUTE OF |
CULTURAL AFFAIRS
(carrying on business as ICA CANADA)
Defendants
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: April 3, 2000
REASONS FOR ORDER
| AND ORDER OF THE HONOURABLE MR. JUSTICE BLAIS |
APPEARANCES:
| Ms. Brigitte Chan for the Plaintiff |
| Mr. Jean Nicolas Delage for the Defendants |
SOLICITORS OF RECORD:
BERESKIN & PARR
| Toronto, Ontario for the Plaintiff |
BROUILLETTE, CHARPENTIER, FORTIN
| Montreal, Quebec for the Defendants |
__________________
1 Written representations of Plaintiff, par. 11, p. 04
2 ib p. 345-346
it is not always necessary to particularize the substantial goodwill that attaches to trade marks.
I agree with the plaintiffs" submission that the defendants" request relating to the nature of the goodwill and where the depreciation occurred are requests for evidence rather than particulars necessary to enable the defendants to plead.
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