Date:
20080703
Docket:
T-2136-07
Citation:
2008 FC 831
[ENGLISH
TRANSLATION]
Montréal, Quebec, July 3, 2008
PRESENT:
Richard Morneau, Esq., Prothonotary
BETWEEN:
PARMALAT
CANADA INC.
Applicant/
Defendant
to the counterclaim
and
COMPAGNIE GERVAIS
DANONE S.A.
and
GROUPE DANONE S.A.
and
DANONE
INC.
Defendants/
Plaintiffs
by counterclaim
REASONS FOR ORDER AND ORDER
[1]
This
is a motion by the applicant and defendant to the counterclaim Parmalat Canada
Inc. (hereinafter Parmalat) under paragraphs 221(1)(a), (b)
and (d) of the Federal Courts Rules (the Rules) to strike
paragraph 44 of the re-amended and clarified statement of defence and
counterclaim produced by the defendants and plaintiffs by counterclaim
(hereinafter collectively Danone) on May 20, 2008 (hereinafter the
defence).
Main
background
[2]
Through
its amended statement of claim dated January 14, 2008, Parmalat seeks a
judgment declaring that its ASTRO BIOBEST VITALITE probiotic yogurt packaging
would not violate the rights of Danone’s ACTIVIA probiotic yogurt packaging.
[3]
In
its statement of defence, Danone alleges that Parmalat has violated the
provisions of the Trade-marks Act, R.S.C. 1985, c. T-13 (hereinafter the
Act). More specifically, Danone alleges that:
•
Parmalat’s
use of a mark composed of the graphic representation of a female belly
featuring the drawing of a yellow arrow pointing down on its yogurt packaging
and containers constitutes a counterfeit of the ICONE VENTRE & FLECHE
[BELLY AND ARROW ICON] design mark, subject to registration TMA710678 which is
held by Danone (hereinafter the Danone Trademark), contrary to section 20
of the Act;
•
Parmalat
uses packaging and containers (reproduced in paragraph 2 of the written
submissions in Parmalat’s motion record) in such a way as to cause or be likely
to cause consumer confusion in Canada between the parties’ products, contrary
to the provisions of subsection 7(b) of the Act,
i)
due
to the presence of the TriActiv+ mark (where the Activ+ component
is in white letters);
ii)
due
to the presence of a female belly featuring a yellow arrow pointing down;
iii)
due
to the presence of the colour green (as a backdrop)
which, in Danone’s view, constitutes an
appropriation of the distinctive appearance of Danone’s products (reproduced in
paragraph 3 of the written submissions in Parmalat’s motion record).
[4]
In
paragraph 44 of its original statement of defence, Danone alleged that it
had recently noticed Parmalat’s intention to reproduce the appearance of Danone’s
products, or even to imitate them, which would be apparent from the various
admissions contained in Parmalat’s statement of claim.
[5]
Following
this allegation, Parmalat’s lawyers sent Danone’s lawyers a letter requesting
clarification of this allegation. This request for clarification was worded as
follows: “Aside from the ACTIVIA products of the Defendants at issue, identify
all other products of the Defendants referred to.”
[6]
Taking
the opportunity to respond to Parmalat’s request for details, Danone amended
paragraph 44 of its statement of defence to have it now read as follows:
44.
Through
sustained efforts in research, development and marketing, the defendants,
Compagnie Gervais Danone S.A. and Danone Inc., have developed quality products
sold in distinctive, original packaging. However, the defendants have recently
noted that the plaintiff intends to reproduce the appearance of the defendants’
products, or even to imitate them, which is indicated in the various admissions
contained in the plaintiff’s statement (based on actions that run counter to
some provisions of the Trade-marks Act, which are referred to below in
the counterclaim and are included in the allegations of this statement of
defence). The plaintiff’s intention to reproduce the appearance of the
defendants’ products, or to imitate them, is also apparent from the repeated
actions taken in Canada by or on behalf of the plaintiff:
-
On
July 7, 2005, the defendant, Compagnie Gervais Danone S.A., filed an
application in Canada to register the L. CASEI DEFENSIS mark on the basis of
proposed use; the mark was registered on March 3, 2008, under number
TMA708683 for “non-alcoholic dairy drinks in which milk is the predominant
ingredient).” However, on October 2, 2006, approximately 15 months after
the application for L. CASEI DEFENSIS was filed, the plaintiff (then known as
Parmalat Dairy & Bakery Inc.) filed an application for registration under
number 1318594 for the MAXI DEFENSIS mark on the basis of proposed use in
association with “milk, yogurt and yogurt beverages”; today, this application
is in the plaintiff’s name. According to the defendants, on October 2,
2006, the plaintiff adopted a mark which incorporates the important element
DEFENSIS of the L. CASEI DEFENSIS mark held by the defendant, Compagnie Gervais
Danone S.A.
-
Since
at least August 2007, the defendant, Danone Inc., has been marketing a
probiotic drink in Canada under the DANACTIVE brand in a bottle whose shape has
become a major icon for this product. However, early 2008, the plaintiff has
been selling a probiotic drink (associated with the MAXIMMUNITY brand) in
Canada, in a bottle that is a reproduction of the shape of Danone Inc.’s bottle
for the product it sells under the DANACTIVE brand.
(Double underline in
the original)
Analysis
Strike
out criteria
[7]
As
partially noted in the following extract from the Federal Court of Appeal
decision in Sweet v. Canada (1999), 249 N.R. 17, at paragraph 6,
page 23, statements may be struck out under any of the paragraphs of
rule 211 only in plain and obvious cases:
[6] Statements of claim are struck out as
disclosing no reasonable cause of action only in plain and obvious cases and
where the Court is satisfied that the case is beyond doubt (see Attorney
General of Canada v. Inuit Tapirisat of Canada et al., [1980] 2 S.C.R. 735
at 740; Operation Dismantle Inc. v. The Queen, [1985] 1 S.C.R. 441 and Hunt
v. Carey Canada Inc., [1990] 2 S.C.R. 959). The burden is as stringent when
the ground argued is that of abuse of process or that of pleadings being
scandalous, frivolous or vexatious (see Creaghan Estate v. The Queen,
[1972] F.C. 732 at 736 (F.C.T.D.), Pratte J.; Waterside Ocean Navigation
Company, Inc. v. International Navigation Ltd. et al., [1977] 2 F.C. 257 at
259 (F.C.T.D.), Thurlow A.C.J.; Micromar International Inc. v. Micro Furnace
Ltd. (1988), 23 C.P.R. (3d) 214 (F.C.T.D.), Pinard J. and Connaught
Laboratories Ltd. v. Smithkline Beecham Pharma Inc. (1998) 86 C.P.R. (3d)
36 (F.C.T.D.) Gibson J.). The words of Pratte J. (as he then was), spoken in
1972, in Creaghan Estate, supra, are still very much appropriate:
[…
] a presiding judge should not make such an order unless it be obvious that the
plaintiff’s action is so clearly futile that it has not the slightest chance of
succeeding […]
(See
also Burnaby Machine & Mill Equipment Ltd. v. Berglund Industrial Supply
Co. et al. (1982), 64 C.P.R. (2d) 206, at page 210).
[8]
Although
Danone’s statement of defence contains an allegation that its trademark has
been infringed, this debate between the parties to this motion concerns the
misleading marketing cause of action instituted by Danone primarily because of
the confusion that appears to exist between its Activia yogurt packaging and
Parmalat’s Astro yogurt packaging. This cause of action, which can involve many
facets, would in this case be the cause of action known in common law as a
passing-off action.
[9]
Parmalat
contends that the conclusions of Danone’s statement of defence have never been
amended and, with respect to misleading marketing, they compare Parmalat’s
Astro yogurt packaging with Danone’s Activia yogurt packaging.
[10]
According
to Parmalat, Danone took the opportunity provided by a request for details
regarding paragraph 44 of the statement of defence to amend this paragraph
in order to introduce two other situations involving imitation that could exist
between Parmalat product packaging and certain Danone packaging.
[11]
According
to Parmalat, the two additional situations involving imitation or confusion now
alleged by Danone in paragraph 44 are irrelevant as to possible imitation
or confusion between its Astro packaging and Danone’s Activia packaging.
[12]
Parmalat
adds that if the two additional situations of confusion in paragraph 44 of
Danone’s statement of defence remain, all stages of trial preparation and the
trial itself will be greatly amplified or extended, since Parmalat will have to
defend itself not against one alleged case of confusion but against three
similar cases.
[13]
In
response to these allegations, Danone essentially contends that in the context
of a misleading marketing case, the intention or mens rea of the offender,
here Parmalat, may be relevant and demonstrated by the complainant, here
Danone, unlike the situation involving alleged infringement of a registered
trademark where the infringing party’s intention is not relevant. (See Mattel,
Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772 (hereinafter Mattel), Kirkbi
AG v. Ritvik Holdings Inc. [2005] 3 S.C.R. 302 (Ritvik) and Toyota
Jidosha Kabushiki Kaisha v. Lexus Foods Inc., [2001] 2 FC 15 (FCA)).
[14]
However,
Danone maintains that to establish this intention or mindset with respect to
the packaging at issue, it is justified, based on the judgments mentioned above
and by the decision of the Federal Court of Appeal in Remo Imports Ltd. v.
Jaguar Cars Ltd., [2008] 2 FCR 132, in referring to Parmalat packaging
other than packaging specifically mentioned in the conclusions regarding
misleading marketing in its statement of defence. According to Danone, these
other actions would provide a basis for assessing Parmalat’s mindset and
conduct in the context of this case, which involves Parmalat’s Astro yogurt
packaging and Danone’s Activia yogurt packaging.
[15]
Danone
states the following in paragraphs 22 and 23 of its written submissions
regarding the motion under consideration:
22. (…) it is respectfully submitted that the
plaintiff’s motion to strike should be dismissed since in the context of their
statement of defence and counterclaim, the defendants are entitled to refer to
actions by the plaintiff other than those mentioned in conclusions regarding
misleading marketing (under paragraph 7(b) of the Trade-marks
Act) since these other actions provide a basis for assessing the plaintiff’s
mindset and conduct toward the defendants in the context of their
misleading marketing claim.
23.
A party that alleges that another party has engaged in misleading marketing
practices under paragraph 7(b) of the Trade-marks Act through the
use of specific packaging may also refer to other practices by this party
relating to the use of other packaging or another trademark to assess the
mindset and conduct of the alleged offender; this conduct would be
dictated by its desire to influence consumers’ decision-making processes. In
the circumstances, it will be for the trial judge to determine the weight to be
given to these other actions.
[16]
Given
that a complaining party is allowed to focus on the mindset of an offending
party (see Ritvik, supra, at page 341, para. 68), and
that it is therefore necessary to consider the intent or conduct of an alleged
offender involved in a misleading marketing practice, I see no guidance in the
judgments and doctrine referred to by Danone that may lead us to find that this
study of intent may be inferred or deduced from a study of the conduct of an
alleged offender with respect to other packaging not at issue that allegedly imitates
a complainant’s packaging.
[17]
In
that sense, I cannot support the argument put forward by Danone in paragraphs
22 and 23 above, which is repeated in terms similar to paragraph 40 of
Danone’s same written submissions, which I quote:
40.
In paragraph 44, the defendants use various means to allege that the
plaintiff had this knowledge. They draw the Court’s attention to various
manifestations of the plaintiff’s desire to reproduce the appearance of the
defendants’ products, or even imitate them. This desire does not have to be
limited to ACTIVIA products alone, since the knowledge to be established by the
defendants can be demonstrated by any of the elements mentioned in these
allegations.
[18]
As
a result, the whole of paragraph 44 of the statement of defence must, in my
opinion, be struck out, since the whole of this paragraph refers to additional
situations of confusion which are, as stated in paragraphs 11 and 12 supra,
irrelevant and may interfere with the fair hearing of the action or delay it.
Thus, there is no valid cause of action or defence here on behalf of Danone. As
a result, paragraphs 221(1)(a), (b) and (d) of the
rules are triggered. I also do not consider that Parmalat is in some way barred
from seeking the striking of the whole of paragraph 44 because Parmalat first
focused on paragraph 44 through a request for clarification. This request
for clarification revealed the true scope of paragraph 44 of the statement
of defence, and there is just cause to now strike out paragraph 44.
[19]
There
is no further need to allow Danone to modify or amend this paragraph 44 of
its statement of defence for the purpose of allowing a connection between
Danone’s statement of defence and its counterclaim, since Danone’s counterclaim
can very well be included in its statement of defence without the presence of
paragraph 44.
ORDER
THIS
COURT’S JUDGMENT is therefore that:
1.
Parmalat’s
motion be allowed, with costs, and orders the striking out of paragraph 44
of the re-amended and clarified statement of defence and counterclaim filed by
the defendants and plaintiffs by counterclaim on May 20, 2008.
2.
Parmalat
will serve and file a response and statement of defence to the counterclaim
within fifteen (15) days of the date of this order.
“Richard Morneau”
Email this Content