Date: 20090303
Docket: T-627-07
Citation: 2009 FC 223
Montréal, Quebec, March 3, 2009
PRESENT: The Honourable Mr. Justice de Montigny
BETWEEN:
GSC
TECHNOLOGIES CORP.
Plaintiff/
Defendant by Counterclaim
and
PELICAN
INTERNATIONAL INC.
Defendant/
Plaintiff by Counterclaim
REASONS FOR ORDER AND ORDER
[1]
This is an
appeal from an Order of Case Management Prothonotary Morneau dated
January 20, 2009, whereby he refused to compel the Defendant to provide
answers to some requests which were made at the examination for discovery of
the Defendant’s representative. For the reasons that follow, I have concluded
that this appeal must fail, as it has not been demonstrated that Prothonotary
Morneau made any error in exercising his discretion.
BACKGROUND
[2]
The
Plaintiff/Defendant by Counterclaim, GSC Technologies Corp., is a company that
manufactures and commercialises blow-moulded and injection moulded plastic
goods including pedal boats. As for the Defendant/Plaintiff by Counterclaim,
they have also been commercialising various models of pedal boats in Canada, including the Spray model
pedal boat introduced on the market in 2007.
[3]
The
present litigation concerns allegations by the Plaintiff that the Defendant has
committed acts of unfair competition by allegedly copying the distinctive
trade-dress of the Plaintiff’s Future
Beach line of
pedal boats with its Spray model pedal boat. The Plaintiff’s rights in its
allegedly distinctive trade-dress, if any, are common law rights which are not
registered pursuant to the Trade-marks Act or otherwise.
[4]
On
November 13, 2008, the Plaintiff filed a motion to compel answers and produce
documents in response to the refusals made during the examination for discovery
of the representative of the Defendant. On January 20, 2009, the Prothonotary
ordered that all of the questions, including the four that are the subject of
the present appeal, need not be answered and granted costs of the motion to the
Defendant.
[5]
The first
request (E-2) seeks to compel the Defendant to provide detailed technical
specifications of all of the Defendant’s pedal boat models, while the second
(E-4) seeks to compel the Defendant to provide detailed technical
specifications of the Spray model pedal boat, beyond what has already been
provided by the Defendant.
[6]
The third
(E-10) and fourth (E-14) requests seek the production of all the memos, notes,
correspondence or documentation related respectively to the conception of the
Defendant’s Spray model pedal boat and to the production of the moulds for that
same model.
ANALYSIS
[7]
It is well
established that a discretionary order of a prothonotary should only be
reviewed on appeal if the questions raised in the motion are vital to the final
issue in the case, or if the order is clearly wrong, in the sense that the
exercise of discretion by the prothonotary was based upon a wrong principle or
upon a misapprehension of the facts: Merck & Co. v. Apotex
Inc., 2003 FCA 488; Novopharm v. Eli Lilly Canada Inc., 2008
FCA 287; Astrazeneca Canada Inc. v. Apotex Inc., 2008 FC
1301. Since the issues under appeal are clearly not vital to the final
determination of the case and involve the discretionary order of a
prothonotary, the Plaintiff had to demonstrate that the prothonotary erred in
law or misapprehended the facts.
[8]
Rule 240(a)
of the Federal Courts Rules provides that a person being examined for
discovery shall answer, to the best of that person’s knowledge, information and
belief, any question that is relevant to any unadmitted allegation of fact in a
pleading filed by the party being examined or by the examining party. Rule
242(1) establishes, however, permissible objections during an examination on
discovery, for example if the question is not relevant, is unreasonable or
unnecessary or would be unduly onerous.
[9]
Moreover,
this Court has established certain limitations on the scope of discovery. In Hayden
Manufacturing Co v. Canplas Industries Ltd. (1988), 83 C.P.R.(3d) 19
(at p. 23), Prothonotary Hargrave enunciated six principles with respect
to the scope of discovery:
There
must, of course, be some limitation on general propositions allowing broad
discovery, for given the resources of courts and the concern over costs,
congestion and delay, it would be an unaffordable luxury to allow litigants to
engage in protracted and far-reaching discovery of marginal usefulness. I
return to Reading & Bates (supra) at p. 230, for six general
principles which place sensible limitations on the scope of discovery generally
and here I paraphrase:
1.
The documents to which parties are entitled are those which
are relevant. Relevance is a matter of law, not discretion. The test to apply,
in determining relevance, is whether information obtained may directly or
indirectly advance one party's case, or damage that of the other party.
2.
Questions which are too general, or which seek an opinion,
or are outside the scope of a proceeding, need not be answered.
3.
Discovery is confined to matters relevant to the facts
which have been pleaded, rather than to facts which a party proposes to prove
and thus relevance, in the context of discovery, limits questions to those that
may prove or disprove allegations of fact which have not been admitted.
4.
A court should not compel answers which, although perhaps
relevant, are not likely to advance the party's legal position.
5.
Before requiring an answer to a discovery question, the
court should weigh the probability of the usefulness of the answer against the
time, trouble, expense and difficulty which might be involved in obtaining it:
"One must look at what is reasonable and fair under the circumstances: . .
. " (loc.cit.).
6.
Fishing expeditions undertaken through far-reaching, vague
or irrelevant questions are to be discouraged.
[10]
More
recently, the Federal Court of Appeal somewhat expanded the test of “relevance”
and stressed that in determining the propriety of a particular question, one
must determine whether it is reasonable to conclude that the answer to that
question might lead the questioning party to a “train of enquiry” that may
either advance its case or damage the case of its opponent: see Brystol-Myers
Squibb Co.
v. Apotex
Inc., 2007 FCA 379.
[11]
However
the concept of relevance is defined, it cannot, in and of itself, be
determinative. It is certainly a prerequisite, but other factors such as those
listed in Rule 242(1) must also be considered. As my colleague Justice Hughes
recently wrote:
Thus, simply to say that a question is
“relevant” does not mean that it must inevitably be answered. The Court must
protect against abuses so as to ensure the just, most expeditious and least
expensive (Rule 3) resolution of the proceeding not the discovery. Relevance
must be weighed against matters such as among other things, the degree of
relevance, how onerous is it to provide an answer, if the answer requires fact
or opinion of law and so forth.
[Astrazeneca Canada Inc. v. Apotex
Inc., supra, at para. 18.]
[12]
The
Prothonotary was clearly aware of these principles. He referred in his Order to
the decision of Justice McNair in Reading & Bates, supra, as well as
to the arguments made by the parties where the legal parameters were well
summarized. As a result, his decision ought not to be disturbed unless it can
be established that he misapprehended the facts. To quote again from Justice
Hughes:
[19]
Prothonotaries of this Court are burdened, to a large extent, with motions
seeking to compel answers to questions put on discovery. Often hundreds
of questions must be considered. Hours and often days are spent on such
motions. It appears that in many cases the parties and counsel have lost
sight of the real purpose of discovery, which is directed to what a party truly
requires for trial. They should not slip into the “autopsy” form of
discovery nor consider discovery to be an end in itself.
[20]
A determination made by a Prothonotary
following this arduous process ought not to be disturbed unless a clear error
as to law or as to the facts has been made, or the matter is vital to an issue
for trial. Where there has been an exercise of discretion, such as
weighing relevance against onerousness, that discretion should not be
disturbed. The process is not endless. The parties should move
expeditiously to trial.
[Astrazeneca
Canada Inc. v. Apotex Inc., supra; see also Brystol-Myers
Squibb Co.
v. Apotex Inc., supra,
at para. 35.]
[13]
The
Prothonotary refused to compel the Defendant to provide detailed technical
specifications of all of its pedal boat models on the ground that this request
was much too broad and that the detailed technical specifications sought are
not relevant or useful to any issue at trial. The Plaintiff has demonstrated no
misapprehension of any facts or law on the part of the Prothonotary, much less
any clear error regarding same, nor has the Plaintiff provided any reason or
explanation as to how or why the information sought would be useful, much less
vital, at trial. At the hearing, counsel for the Plaintiff was candid enough to
concede that the technical specifications of previous pedal boat models commercialized
by the Defendant would not be the smoking gun in the upcoming trial. It is
therefore clear that the Prothonotary made a decision based on a proper
understanding of the facts as well as a proper application of the legal
principles at issue and arrived at a correct decision in refusing to compel the
Defendant to comply with request E-2. His decision in this regard must
therefore be upheld.
[14]
The same
is true with respect to request E-4. As noted by the Prothonotary, the
Defendant has already provided as an answer to that request the basic
specifications regarding its Spray model pedal boat. What further information
or details the Plaintiff is now seeking remains unspecified. In any event, the
Plaintiff has not established the relevance of the further detailed technical
information it is seeking. At trial, the judge will have the task of
determining what characteristics of the Plaintiff’s product, if any, are
distinctive of the Plaintiff and whether any consumer is likely to confuse the
Plaintiff’s pedal boats with the Defendant’s Spray model because of the alleged
use of any such characteristics by the Defendant among other circumstances.
Whether consumers are likely to be confused is not a question or function of
direct comparison of precise technical measurements which are not available to
consumer, but is a question of the general impression the average consumer has
regarding both the Plaintiff and the Defendant’s product at issue.
[15]
Having
considered both parties’ positions, the Prothonotary exercised his discretion
and determined that “les renseignements techniques dans le présent dossier
devraient avoir une valeur marginale vu que la Cour dans le cadre de l’action
au mérite tirera vraisemblablement ses conclusions en fonction de l’impression
visuelle générale des pédalos et non en fonction de leurs fiches techniques”. This is a decision that the Prothonotary
was entitled to make, as it is based on a proper understanding of the facts and
on a proper application of the legal principles at issue.
[16]
While the standard of
relevance on discovery is no doubt lower that at trial, there must nevertheless
be some link between the information sought and the arguments a party needs to
make in order to succeed at trial. The Plaintiff has not convinced me that the
technical specifications sought in question E-4 could in any conceivable way
advance their arguments on the merit of their claim.
[17]
Indeed, it is
noteworthy that although the Plaintiff is now challenging the decision of the
Prothonotary, it expressly states in its own Statement of Claim that the
distinctive characteristics of its pedal boats are visual and immediately
identifiable by consumers (Responding Motion Record, Tab 1, para. 6
of the Statement of Claim). For all of the foregoing reasons, the Prothonotary’s
decision in this regard ought to be upheld.
[18]
Finally, I am also of
the view that the Prothonotary made no error in concluding that the Defendant’s
requests with respect to all the memos, notes, correspondence or documentation
related to the conception of the Spray model pedal boat or to the production of
the moulds for that boat are vague and overly broad. They constitute nothing
more than a fishing expedition as the Plaintiff does not know what it is
looking for, but hopes to come across some documents among the lot requested
that may support its allegations. It was open to, and in fact proper for the
Prothonotary to consider the scope and breadth of the requests and to determine
whether or not to compel the production of such information and/or documents.
[19]
Relying on a portion
of the transcript, counsel for the Plaintiff argued that they had no choice but
to make these requests as the witness gave vague and imprecise answers to very
specific questions. While the answers may not have been as forthcoming as the
Plaintiff may have hoped, it is fair to say that the questions were not very
specific either. Be that as it may, this is not the test for relevance. The
party seeking further information must first identify with some precision,
through the questioning of a witness, those documents that may advance its
claims.
[20]
Indeed, it is not
simply because a party claims punitive damages that it is entitled on discovery
to all documents, in bulk, regarding the design and/or moulds of various
products, without knowing or providing any further detail or specificity to the
request, in the hopes of perhaps finding, amongst all the irrelevant documents
provided, some document(s) which may support its claim. Such vague, all
encompassing requests are pure fishing expeditions which the Court has
expressly warned against as improper discovery questions which should be
discouraged. In light of the foregoing, it is clear once again that the
Prothonotary made a decision based on a proper understanding of the facts and on
a proper application of the legal principles at issue, and arrived at a correct
decision in refusing to compel the Defendant to comply with requests E-10 and
E-14.
[21]
Accordingly, the
Plaintiff’s Motion to Appeal from an Order of Prothonotary Morneau dated
January 20, 2009 is dismissed, with costs.
ORDER
THIS COURT ORDERS that the Plaintiff’s appeal is
dismissed, with costs.
“Yves
de Montigny”
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