Osmose-Pentox Inc. v. Société Laurentide Inc., 2007 FC 242

Date: 20070301

Docket: T-697-02

Citation: 2007 FC 242

Ottawa, Ontario, March 1, 2007

PRESENT:     The Honourable Mr. Justice Hugessen

BETWEEN:

OSMOSE-PENTOX INC.

Plaintiff

and

SOCIÉTÉ LAURENTIDE INC.

Defendant

REASONS FOR ORDER AND ORDER

[1]               The defendant in this trade mark infringement action moves for severance of the issues of validity and infringement from those relating to remedy.

[2]               An earlier motion to the same effect was refused by a judge of this Court more than four years ago. Since that time not only has a lot of water flowed under the bridge but the parties have engaged in almost unceasing guerilla warfare relating to interlocutory matters so that the action is still nowhere near to being ready for trial. The matter is case managed by a prothonotary and the latter, of his own motion, for reasons correctly applying the criteria which the Court has developed under Rule 107, made an Order essentially identical to that now being sought. An appeal to a judge of this Court was allowed solely on the ground that the prothonotary had exceeded his jurisdiction in varying an Order previously made by a judge. A further appeal to the Federal Court of Appeal was unsuccessful save for a matter not relevant to the present reasons.

[3]               In my view this is clearly a case for severance. The initial decision refusing such relief was made in circumstances quite different from those which obtain now and it is common ground that the refusal of severance (similarly to the granting of it) does not prevent the Court from revisiting the question as the case develops. Both the prothonotary and the judge who heard the appeal from the latter's Order were of the opinion that the circumstances were appropriate for severance. So am I. Examinations for discovery have become bogged down in matters relating to the defendant's profits from the alleged infringement. An accounting for profits is a notoriously cumbersome and lengthy procedure and it is very common for this Court in intellectual property cases to order that validity and infringement be dealt with prior to damages or profits, which will often, in any event be made the subject of a reference. The first stage of the trial may well render the second stage unnecessary and should in any event be less lengthy and costly.

[4]               There will be an Order to that effect; costs will be in the discretion of the judge who presides the first stage of the trial.

ORDER

THIS COURT ORDERS that

1.         Issues of infringement and validity are severed from issues relating to damages or profits and will be decided first.

2.         Costs to be in the discretion of the trial judge.

“James K. Hugessen”

FEDERAL COURT

NAME OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                          T-697-02

STYLE OF CAUSE:                          OSMOSE-PENTOX INC. v. SOCIÉTÉ LAURENTIDE INC.

MOTION IN WRITING PURSUANT TO RULE 369

REASONS FOR ORDER

AND ORDER:                                   HUGESSEN J.

DATED:                                             MARCH 1, 2007

WRITTEN SUBMISSIONS BY:

KEVIN O’BRIEN                                                                   FOR THE PLAINTIFF

JOSÉ BONNEAU                                                                   FOR THE DEFENDANT

SOLICITORS OF RECORD:

DUNTON RAINVILLE, LLP                                                 FOR THE PLAINTIFF

MONTREAL, QUEBEC

DAGENAIS & ASSOCIÉS                                                     FOR THE DEFENDANT

MONTREAL, QUEBEC