The Gillette Co. v. Dynamic toy importers Ltd., 2003 FC 956

Date: 20030806

Docket: T-975-03

Citation: 2003 FC 956

BETWEEN:

                                                         THE GILLETTE COMPANY

                                                                                                                                                         Plaintiff

                                                                                 and

DYNAMIC TOY IMPORTERS LTD.;

and CHOR Y HUNG

                                                                                                                                               Defendants

                                                            REASONS FOR ORDER

HARGRAVE P.

[1]                  The Plaintiff produces a well-known line of alkaline batteries under the Duracell trade-mark, in various registered designs, including the familiar battery with the copper upper portion and the black lower portion. The Defendants are said to produce a line of lookalike zinc-carbon batteries under the Dynacell trade-mark, some with the same copper upper portion and lower black portion. Other batteries with a distinctive trade -dress and trade-mark belonging to the Plaintiff are also said to have been copied and marketed by the Defendants.

[2]                  By the present action the Plaintiff seeks usual remedies going with trade-mark infringement and passing-off, including declaratory and injunctive relief, damages and delivery up of offending batteries. This relief is based upon breach of various portions of the Trade-marks Act. The Defendants' response, in part, is contained in paragraph 4 of defence, which alleges that the Plaintiff's trade-mark registrations are invalid, referring to section 18 of the Trade-marks Act, in that:

This wording in section 4 of the defence is identical to a portion of section 18 of the Trade-marks Act.

CONSIDERATION

[3]                  The Plaintiff by the present motion seeks particulars of the pleas of non-registerability and non-distinctiveness, which are not technical pleas. Nor is the present motion a call for evidence as to how the defence is to be proven. Rather, given the great number of possibilities going to make a trade-mark unregistrable, or not distinctive, the Plaintiff wishes to know the fact relied upon by the Defendants. Here I would note that the purposes, of the present request for particulars, fall within some of the functions for particulars set out in Gulf Canada Ltd. v. The Mary Mackin, [1984] 1 F.C. 884 at 887 - 889. There the Federal Court of Appeal referred to the English practice in the 1982 edition of the White Book and set out the functions of particulars:

[4]                  The Plaintiff's situation is on point with the issues faced by Mr Justice MacKay in Country Curtains Inc. v. Country Curtain and Gift Shoppe (1996) 69 C.P.R. (3d) 133 (F.C.T.D.) and by Mr Justice Dubé in Produits Marnier-Lapostolle v. Rene Rey Choc. Ltd. (1989), 29 C.P.R. (3d) 329 (F.C.T.D.) ("Swiss Chocolates"). In Country Curtains Mr Justice MacKay observed that a recital of general statements, parallel those in the present instance, amounted to assertions and conclusions of law, which required particulars.

[5]                  In the Swiss Chocolates case, the portions of the pleadings which were objected to, as lacking in particulars, were a reiteration of a portion of section 18 of the Trade-marks Act, as is the case in the present instance. The Defendants, in the Swiss Chocolates case, as here, alleged that the trade-mark was not registrable on the date of registration and that the trade-mark was not distinctive. The particulars were sought before the Plaintiff had either filed a reply or engaged in examination for discovery. Mr Justice Dubé wrote that pleadings must, by Rule 408, contain a precise statement of material fact relied upon; that by Rule 415(1) every pleading must contain the necessary particulars of any allegations; and that by Rule 412(2) a question of law or an expressed assertion of a conclusion of law is not a substitute for the material facts on which the conclusion of law is based. I would observe that while Swiss Chocolates was decided in October 1989 the parties and the judge were working with the old Federal Court Rules. Rule 408(1) is now Rule 174 and Rule 415(1) is now Rule 181. Former Rule 412(2) does not have any equivalent under the new Rules, except to the extent that Rule 175 permits a party to raise a point of law in its pleadings and while former Rule 412(2) specifically required the material facts on which to base the conclusion in law, this requirement is implicit in present Rule 174 which calls upon a party to plead the material facts upon which it relies. Returning to the Swiss Chocolates case Mr Justice Dubé concluded that:

He went on to consider whether the request for particulars was premature because the defendant had taken the point the examination for discovery might take place. Mr Justice Dubé pointed out that "the defence must be a pleading in accordance with the rules before the plaintiff goes ahead with the examination ... If [the defence] is not in accordance with the rules, the plaintiff may require the necessary particulars before proceeding with its examination. ". Mr Justice Dubé then referred to Bror With v. Ruko of Canada Ltd. (1976), 31 C.P.R. (2d) 3(F.C.T.D.), at page 7, for the proposition that one may not assume that examination for discovery will in fact take place. He ordered particulars.

[6]                  In the present instance, on the basis of both Country Curtains and Swiss Chocolates, the Plaintiff is entitled to particulars, subject to consideration of several points raised by counsel for the Defendants.

[7]                  I have already deposed of the Defendants' argument and what is involved is a technical matter requiring expert opinion, not particulars. This is clearly not the case, for the Plaintiff merely wishes to be pointed in the direction of whichever of the factual arguments the Defendants seek to raise as to section 18 of the Trade-marks Act, of which there are many possibilities.

[8]                  The Defendants submit, characterizing the defence as traverse, that no particulars are required. Leaving aside for the moment the presumption of validity and the burden on a party attacking a registered trade-mark, the fallacy with the traverse argument is that it is only a proper traverse which avoids having to give particulars. A traverse, in its most straightforward form, is the denial of an allegation of fact contained in a pleading. As I pointed out in Chingee v. Chingee (1998), 144 F.T.R. 156 (F.C.T.D.) at 159 (F.C.T.D.):

It is this passage upon which counsel for the Defendants relies. However, the pleas set out in paragraph 4 of the present defence constitute negatives that are pregnant with an affirmative: the pleas go beyond a mere denial and raise a number of possibilities. Thus, as pointed out by Mr Justice Astbury, in Weinberger v. Inglis, [1918] 1 Ch. 133 at 139, an attempt by the defendants, to prove an affirmative case against the plaintiff, without previous notice, would be an injustice resulting in surprise or prejudice. Here I return to the presumption of validity of the trade-mark and the onus on the Defendants to demonstrate its invalidity. The pleas in section 4 of the defence are an attack on validity, going beyond a mere traverse. Particulars are required.

[9]                  While counsel for the Defendants raises several other minor points, which I have considered and rejected out of hand, the Defendants do make a point which often will succeed: the point is that affidavit evidence is usually required to establish the need for particulars. Counsel for the Defendant was not aware of any cases which might stand for the proposition that where it is clear on the face of a pleading that particulars are lacking, particulars will be ordered, even in the absence of affidavit evidence of their need. There are a number of cases to this effect. For example, in Billow v. The Queen, an unreported 31 March 1993 decision in action T-1448-91, digested (1993) 4 W.D.C.P. (2d) 137, Madam Justice McGillis reviewed the statement of claim and found it did not reveal adequate facts. She ordered particulars, so that the defendants might not be taken by surprise, notwithstanding the failure on the part of the defendants to file a detailed affidavit explaining the need for particulars.

[10]            In Omark Industries Inc. v. Windsor Machine Co. Ltd. (1980), 56 C.P.R. (2d) 111 (F.C.T.D.) Mr Justice Mahoney observed that the argument, that the affidavit in support of the application for particulars did not allege the necessity of the particulars, was not a point well taken (page 112), for it was for the court to decide on the record and on the available facts whether the necessity for particulars existed. Certain particulars, based on a paragraph by paragraph examination of defence, were ordered.

[11]            In Contour Optik Inc. v. Hakim Optical Laboratory Ltd. (2001), 201 F.T.R. 152 (F.C.T.D.) Prothonotary Morneau, faced with the submission that the moving party's affidavit material did not establish a need for particulars, began by referring to a passage in Covington Fabrics Corp. v. Master Fabrics Ltd. (1993), 48 C.P.R. (3d) 521 (F.C.T.D.) at 522 where Associate Senior Prothonotary Giles, observing that no request for particulars had been made in advance, said:

Contour Optik is a well-reasoned and well-supported decision. There Prothonotary Morneau examined the pleading at issue to test for a need for particulars and then went on to order substantial particulars.

CONCLUSION

[12]            In the present instance it is clear from the defence, as it stands, that the Plaintiff requires the particulars sought. To hold otherwise would prejudice the Plaintiff, subject the Plaintiff to possible ambush, and waste everyone's time, for from the defence one can only guess at the direction and substance of what will be argued. Clearly the Plaintiff cannot now know, from the defence, the case to be met, cannot go about gathering evidence and organize its case in a knowledgeable way and must take the broadest possible time-wasting approach to discovery, for there is no limit on the generality of the pleas in paragraph 4 of the defence.

[13]            The particulars requested will be provided. Here I acknowledge that counsel for the Defendants, while he practises with a group, apparently has no back-up and is involved in another matter until 20 August 2003. Thus particulars are to be provided by close of business on 29 August 2003.

[14]            Costs forthwith to the Plaintiff in a lump sum, based on Tariff B, in the amount of $550.00.

(Sgd.) "John A. Hargrave"

                                                                                              Prothonotary

Vancouver, British Columbia

6 August 2003

                                                                 FEDERAL COURT

                             NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                            T-975-03

STYLE OF CAUSE:                        The Gillette Company v. Dynamic Toy Importers Ltd. et al.

PLACE OF HEARING:                   Vancouver, British Columbia

DATE OF HEARING:                      30 July 2003

REASONS FOR ORDER:            Hargrave P.

DATED:                                              6 August 2003

APPEARANCES:                          

SOLICITORS OF RECORD: