Date: 20030430
Docket: T-916-01
Citation: 2003 FCT 538
Montreal, Quebec, April 30, 2003
Present: The Honourable Mr. Justice Lemieux
BETWEEN:
CIVES CORPORATION
Plaintiff
and
EVEREST EQUIPMENT INC.
Defendant
AND BETWEEN:
EVEREST EQUIPMENT INC.
Plaintiff by counterclaim
and
CIVES CORPORATION
Defendant by counterclaim
REASONS FOR ORDER AND ORDER
[1] In this appeal, Cives Corporation (Cives) seeks to set aside the March 12, 2003 decision of Prothonotary Morneau who permitted Everest Equipment Inc. (Everest) to amend its statement of defence and counterclaim.
[2] On May 28, 2001, Cives commenced an action against Everest claiming Everest infringed its registered trade-marks Frink and Frink and Design (the trade-marks) used in association with snow plows.
[3] On January 31, 2002, Everest filed its defence and counterclaim. It denies Cives is the valid holder for the trade-marks; alleges Cives abandoned the trade-marks and, if not, Cives or its predecessors in title have used the trade-marks in such a way as to cause loss of inherent distinctiveness. Everest also denies using the trade-marks in Canada stating that it exports all of its wares to the United States where it holds a licence to use the trade-mark Frink and Design registered in the United States. In its counterclaim, Everest seeks an order from this Court to expunge Cives' registrations.
[4] Cives filed its reply on February 4, 2002. Everest moved to amend in February of 2003. Discoveries have not been held.
[5] In his reasons, Prothonotary Morneau applied the Federal Court of Appeal's decision in Canderel Ltée v. Canada, [1994] 1 F.C. 3 noting the proceedings were in their preliminary stages.
[6] He observed Cives had consented to some of the amendments sought by Everest. He was of the view the amendments consented to by Cives taken with the amendments objected to formed an integral whole.
[7] He considered the arguments made by Cives that Everest, through its amendments, was introducing a new cause of action related to a violation of technology rights as well as arguments concerning U.S. trade-mark litigation which Cives said was irrelevant on the issue of lack of distinctiveness in Canada.
[8] He rejected those arguments not being convinced Cives' comprehension of the amendments was accurate. To him, what Everest was seeking to do was simply to add precision and detail to the basic defences it was advancing, namely, abandonment, lack of distinctiveness, no chain of title and no use in Canada.
[9] Prothonotary Morneau's order was a discretionary one which did not raise questions vital to the final issue of the case. In such circumstances, Canada v. Aqua-Gem Investments Ltd. (1993), 149 N.R. 273 (F.C.A.) tells us the Court should only intervene if the exercise of the Prothonotary's discretion was based upon a wrong principle or upon a misapprehension of facts, that is, was clearly wrong.
[10] Cives has not convinced me the Prothonotary made any error. I share Prothonotary Morneau's view that Cives' understanding of the purpose and effect of the Everest amendments is incorrect and this can be tested on discovery.
ORDER
THIS COURT ORDERS that this appeal is dismissed with costs.
"François Lemieux"
Judge
FEDERAL COURT OF CANADA
TRIAL DIVISION
Date: 20030430
Docket: T-916-01
BETWEEN:
CIVES CORPORATION
Plaintiff
and
EVEREST EQUIPMENT INC.
Defendant
REASONS FOR ORDER AND ORDER
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-916-01
STYLE OF CAUSE: CIVES CORPORATION
Plaintiff
and
EVEREST EQUIPMENT INC.
Defendant
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: April 28, 2003
REASONS FOR ORDER AND ORDER :
THE HONOURABLE MR. JUSTICE LEMIEUX
DATED: April 30, 2003
APPEARANCES:
Mr. Daniel A. Artola FOR PLAINTIFF
Mr. Ronald Fecteau FOR DEFENDANT
SOLICITORS OF RECORD:
McCarthy Tétrault FOR PLAINTIFF
Montreal, Quebec
Monty, Coulombe FOR DEFENDANT
Sherbrooke, Quebec
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