Date:
20090512
Docket: T-151-09
Citation: 2009 FC 492
Ottawa, Ontario,
May 12, 2009
PRESENT: The Honourable Mr. Justice Shore
BETWEEN:
ABERCROMBIE & FITCH CO.
ABERCROMBIE & FITCH TRADING CO.
and AFH CANADA STORES CO.
Plaintiffs/Respondents
and
GIANT TIGER STORES LIMITED, G.T. WHOLESALE LIMITED,
TORA NEWMARKET LIMITED (doing business as Giant Tiger
Store 146),
TORA MISSISSAUGA LIMITED (doing business as Giant
Tiger Store 152),
JOHN DOE and all others operating or supplying giant
tiger stores who have
sold, offered for sale, advertised or distributed
products
in association with the trade-marks of the Plaintiffs
Defendants/Appellants
REASONS FOR ORDER AND ORDER
I. Overview
[1]
6. The ambit of questions
on discovery must be restricted to unadmitted allegations of fact in the
pleadings, and fishing expeditions by way of a vague, far-reaching or an
irrelevant line of questioning are to be discouraged: Carnation Foods Co.
Ltd. v. Amfac Foods Inc. (1982), 63 C.P.R. (2d) 203
(F.C.A.); and Beloit Ltee/Ltd. v. Valmet Oy (1981), 60 C.P.R. (2d) 145
(F.C.T.D.).
(Reading & Bates Construction Co. v. Baker Energy
Resources Corp. (1988), 25 F.T.R. 226, [1988] F.C.J. No. 1025 (QL)
(F.C.T.D.);
[2]
[3] … But, before the filing of the defence, the
right of a defendant to be furnished particulars is not so broad, since it does
not have the same basis and serves a different purpose. A defendant should not
be allowed to use a request for particulars as a means to pry into the brief of
his opponent with a view to finding out about the scope of the evidence that
might be produced against him at trial, nor should he be allowed to use such a
request as a means to go on a sort of fishing expedition in order to discover
some grounds of defence still unknown to him. At that early stage, a defendant
is entitled to be furnished all particulars which will enable him to better
understand the position of the plaintiff, see the basis of the case made
against him and appreciate the facts on which it is founded so that he may
reply intelligently to the statement of claim and state properly the grounds of
defence on which he himself relies, but he is not entitled to go any further
and require more than that.
(Embee Electronic Agencies v. Agence Sherwood Agencies
Inc. (1979), 43
C.P.R. (2d) 285, [1979] F.C.J. No. 1131 (QL) (F.C.T.D.)).
II. Background
[3]
This action is for trade-mark
infringement and passing off relating to the sale of counterfeit copies of the
Respondents’ clothing products by the Appellants in Canada.
[4]
A list
of particulars of the allegations contained in a Statement of Claim was
requested by the Appellants and the Respondents did provide a detailed response
to the request (Affidavit of Kathy Paterson, Exhibits “B” to “F”, Appellants’
Motion Record, dated April 6, 2009, Tab 2B to 2F).
[5]
The
Appellants subsequently brought a motion which resulted in the Order of
Prothonotary Roza Aronovitch that is the subject of this appeal. On the motion,
the Appellants sought, inter alia, particulars “identifying the
manufacturers” referred to in paragraph 11 of the Statement of Claim, which
provides:
11. All garments to which the A & F
Trade-marks are applied are manufactured by or for Abercrombie & Fitch
under licence from Abercrombie & Fitch Trading Co. and Abercrombie &
Fitch Trading Co. controls the character and quality of said garments under
said licence.
[6]
The
Appellants filed an affidavit attaching as exhibits the Statement of Claim and
correspondence between counsel. As such, the Record before Prothonotary
Aronovitch is devoid of any evidence that the particulars requested were
necessary for the Appellants to plead and not within the knowledge of the
Appellants (Affidavit of Kathy Paterson, Appellants’ Motion Record, dated April
6, 2009, Tab 2).
[7]
Prothonotary
Aronovitch dismissed the Appellants’ motion for the particulars that are the
subject of this appeal (Order of Prothonotary Roza Aronovitch, dated April 24,
2009).
III. Analysis
[8]
The
onus is on the Appellants to establish that the Prothonotary’s decision was
clearly wrong in the sense that the exercise of discretion was based upon a
wrong principle or a misapprehension of the facts. The Appellants have not met
this onus (Canada v. Aqua-Gem Investments Ltd., [1993] 2 F.C. 425, 39
A.C.W.S. (3d) 59 at 454 & 463 (C.A.)).
[9]
Although
the Prothonotary did not provide reasons for her decision, absent the
Appellants establishing that the Prothonotary’s decision was clearly wrong, the
Court must not exercise its discretion de novo (Pharmaceutical Partners of Canada
Inc. v. Faulding (Canada) Inc., 2002 FCT 1010, 117 A.C.W.S. (3d) 221 at para. 9).
[10]
Overall,
the essence of the Appellants’ argument is that without the particulars, “the
Appellants are being asked to plead in the dark”.
[11]
The
Appellants did not adduce any evidence to support the need for the requested
particulars on the motion before Prothonotary Aronovitch. It is axiomatic that
the onus on a motion for particulars is on the moving party and particulars
will only be granted where the moving party establishes that the particulars
are both necessary for pleading and not within its knowledge. As no evidence
was adduced in this regard, the Prothonotary’s decision cannot be “clearly
wrong” (38867227 Canada Inc. v. Eagle Pack Pet Foods Inc., 2006 FC 1095,
151 A.C.W.S. (3d) 811 at para. 7).
[12]
The
Respondents have pleaded as a material fact that the products in issue were not
authorized for manufacture. The identity of the Respondents’ authorized
manufacturers is not an issue in the action unless and until the Appellants
plead material facts supporting that the impugned products are authorized. To
the extent that the Appellants believe that the products sold were authorized,
they are in a position to plead material facts supporting that allegation by
identifying the alleged authorized manufacturer(s). A request for particulars
is not a means for Appellants to go on a “fishing expedition” to discover
grounds of defence unknown to them (Reading, above; Embee Electronic Agencies, above).
[13]
The Nav
Canada v. Adacel Technologies Ltd. case referenced in the Appellants’
pleadings does not stand for the broad principle asserted and is
distinguishable on its facts. In that case, there was a vague allegation that
the copyright asserted by the Plaintiff was transferred. The specific mode of
transfer was material to the Plaintiff’s claim since the Copyright Act,
R.S., 1985, c. C-42, specifically provides that an assignment of copyright must
be in writing and at law a plaintiff is bound to plead its chain of title and
the failure to do so can be fatal to the claim. Also, the mode of transfer is
the type of information that would be within the knowledge of the Plaintiff,
not the Defendant (Nav Canada v. Adacel Technologies Ltd., 2006 FCA 227,
351 N.R. 184 at paras. 7-12).
[14]
The
Appellants’ request for particulars must also be considered in the context of
this action. The infringement allegations in this proceeding pertain to
imported counterfeit wares. The identification of all authorized
manufacturers may prejudice the Respondents due to the very nature of such
information.
[15]
In
light of the foregoing, the Appellants’ appeal is dismissed.
Costs
[16]
The
issue of costs is brought forward clearly in the affidavit of Ms. Donna
Stackaruk.
[17]
The
Appellants have not provided details in regard to sales of such garments made
in Canada or to provide
undertakings in respect of having them permanently cease selling counterfeit
copies of the Respondents’ garments.
[18]
The
Record shows that the Appellants have taken steps which delay the providing of
the above-specified information and undertakings which cause an increase to the
costs of this litigation (Affidavit of Kathy Paterson, Appellants’ Motion
Record, dated April 6, 2009; Affidavit of Donna Stackaruk, Respondent’s Motion
Record, dated April 20, 2009; Affidavit of Donna
Stackaruk,
Respondents’ Motion Record, Tab 1; J2 Global Communications Inc. v. Protus IP Solutions Inc., 2008 FC 298, 65 C.P.R. (4th) 181 at
para. 15).
[19]
In the
circumstances, a specific costs award is warranted. Accordingly, payment of the
Respondent’s costs of this appeal is calculated on the highest scale under
Column IV of Tariff B of the Federal Courts Rules payable forthwith by
the Appellants.
ORDER
THIS COURT ORDERS that
(1) the appeal be dismissed with costs.
(2) the payment of the Respondent’s costs of
this appeal be calculated on the highest scale under Column IV of Tariff B of
the Federal Courts Rules payable forthwith by the Appellants.
“Michel M.J. Shore”
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