Robin Hood Multifoods Inc. v. Maple Leaf Mills Inc., docket T-1898-96

     T-1898-96

BETWEEN:

     ROBIN HOOD MULTIFOODS INC.

     Plaintiff

     - and -

     MAPLE LEAF MILLS INC.

     Defendant

     REASONS FOR ORDER

CULLEN, J.:

     This motion for an Order to demand particulars regarding paragraphs 9, and 12 of the Statement of Defence, and to strike paragraph 11, came before me at a hearing in Ottawa, Ontario, on January 9, 1997. At the close of argument, I took the matter under reserve. The following are my reasons for judgment in the matter.

THE FACTS

The main action

     The plaintiff is the owner of the trade-mark RED RIVER PRODUCTS & design, and the trade-mark RED RIVER & design, both of which [hereinafter to be referred to collectively as the "Robin Hood trade-marks"] are registered for use in association with, inter alia, bread mix.

     On May 1, 1995, the plaintiff and the defendant entered into a Trade-mark License Agreement whereby the plaintiff granted to the defendant an exclusive royalty-free right, license and privilege, without the right to sublicense, to use the Robin Hood trade-marks in Canada in association with the production, distribution, sale and promotion of bread mixes packaged for sale to industrial and institutional users.

     "Industrial and institutional users" is defined in the License Agreement to include non-consumers who buy the licensed wares for further processing or incorporation into other products. The defendant submits that NGW - Loblaws falls under this definition.

     The plaintiff alleges and the defendant admits that, to promote the sale of the above bread mixes, the defendant includes, in the packages that it sells to industrial and institutional users, bags bearing the RED RIVER marks along with the actual bread mix and instructions for baking. The defendant claims that this practise has been authorized under its licenses to the use of the RED RIVER trade-marks since at least as early as 1989. The plaintiff claims that this is an unauthorized use by the defendant's customers, and thus an infringement of the Robin Hood trade-marks, in that such use is likely to lead to the inference that the wares associated with these RED RIVER marks are manufactured or sold by or under the authority of the plaintiff.

     The plaintiff submits that by supplying the aforementioned bread wrappers to its industrial and institutional users, the defendant has knowingly induced or procured its customers to infringe the Robin Hood trade-marks, contrary to section 20 of the Trade-marks Act.

     The defendant maintains that it is and, at all material times, has been, standard industry practise in Canada that bread mixes for sale to industrial and institutional users are packaged with trade-marked bread bags for use in wrapping bread made from the bread mix.

DISCUSSION

Analysis:

     Paragraph 9 of the Statement of Defence: Does Rule 415(3) require the defendant to provide particulars as to the advice that NGW - Loblaws has obtained from its legal counsel with respect to the issues raised in this action? This request to provide particulars raises issues of solicitor/client privilege with respect to a non-party to this action, issues not considered in the within motion. Nevertheless, if the information is relevant and necessary, then particulars ought to be provided. However, I fail to see the relevance of this paragraph even to the main action. It contains only irrelevant assertions made without a supporting factual base, defending a non-party. Therefore, I order that Paragraph 9 be struck from the Statement of Defence.

     Paragraph 12 of the Statement of Defence: Does Rule 415(3) require the defendant to provide particulars with respect to the facts relied upon to support the plea of estoppel? The respondent's submission regarding estoppel is vague. The respondent has plead neither the essential elements nor the facts necessary for reliance on estoppel as required by White Consolidated Industries Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 at 118 (F.C.T.D.). Accordingly, I order that Paragraph 12 be struck from the Statement of Defence.

     Paragraph 11 of the Statement of Defence: Should Rule 419 be used to strike this paragraph which asserts that the plaintiff has not approved new variations of the RED RIVER Marks proposed by the respondent, as per the License Agreement? The allegations in Paragraph 11 speak to a breach of contract, and not to trade-mark infringement. This paragraph is irrelevant to the cause of action. I, therefore, order that Paragraph 11 be struck from the Statement of Defence.

OTTAWA

     B. Cullen

January 16, 1997.

     J.F.C.C.