Date: 20000616
Docket: T-266-00
MONTREAL, QUEBEC, JUNE 16, 2000
BEFORE: RICHARD MORNEAU, PROTHONOTARY
Between:
BELL CANADA,
Plaintiff/
Cross-Defendant,
AND
U S WEST, INC.,
UNICAL ENTERPRISES, INC. and
SONIGEM PRODUCTS INC.,
Defendants/
Cross-Plaintiffs;
And between:
SONIGEM PRODUCTS INC.,
Plaintiff in mis-en-cause,
AND
U S WEST, INC. and
UNICAL ENTERPRISES, INC.,
Mis-en-cause.
REASONS FOR ORDER AND ORDER
RICHARD MORNEAU, PROTHONOTARY:
[1] The defendant in the case at bar, Sonigem Products Inc. ("Sonigem"), is seeking leave of the Court by a motion under s. 194(a) of the Federal Court Rules (1998) ("the Rules") to join, as it were to implead, the other two defendants listed with it in the principal action. That action concerns the infringement by the defendants of a group of trade-marks owned by the principal plaintiff, Bell Canada.
[2] Section 194(a) reads as follows:
| 194. Un défendeur peut, avec l'autorisation de la Cour, mettre en cause une personne - qu'elle soit ou non un codéfendeur dans l'action - dont il prétend: |
| a) soit qu'elle lui est ou peut lui être redevable d'une réparation, autre que celle visée à la règle 193, liée à l'objet de l'action . . . |
|
194. With leave of the Court, a defendant may commence a third party claim against a co-defendant, or against another person who is not a defendant to the action, who the defendant claims
| (a) is or may be liable to the defendant for relief, other than that referred to in rule 193, relating to the subject-matter of the action . . . |
|
[3] The remedy Sonigem is seeking against the other two defendants is based on s. 8 of the Trade-Marks Act, R.S.C. 1985, c. T-13, as amended. That section reads as follows:
| 8. Every person who in the course of trade transfers the property in or the possession of any wares bearing, or in packages bearing, any trade-mark or trade-name shall, unless before the transfer he otherwise expressly states in writing, be deemed to warrant, to the person to whom the property or possession is transferred, that the trade-mark or trade-name has been and may be lawfully used in connection with the wares. |
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| 8. Quiconque, dans la pratique du commerce, transfère la propriété ou la possession de marchandises portant une marque de commerce ou un nom commercial, ou de colis portant une telle marque ou un tel nom, est censé, à moins d'avoir, par écrit, expressément déclaré le contraire avant le transfert, garantir à la personne à qui la propriété ou la possession est transférée que cette marque de commerce ou ce nom commercial a été et peut être licitement employé à l'égard de ces marchandises.
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[4] The transfer to Sonigem of ownership in the property at issue, in this case telephones, took place pursuant to paragraph 17 of the impleading in the general circumstances that follow:
| 17. In accordance with the distribution contract between SONIGEM and UNICAL, UNICAL and U S WEST transferred the property in and the possession of the Products bearing the US WEST Mark to SONIGEM for distribution in Canada to its customers. |
[5] Since the defendant Unical - the only party to challenge the leave here sought by Sonigem - did not enter any evidence in the record to cast doubt on this transfer, it must first be recognized at this stage that the requirements of s. 8 of the Trade-Marks Act are met and under that section, s. 53.2 of that Act and s. 20 of the Federal Court Act, R.S.C. 1985, c. F-7, this Court has jurisdiction ratione materiae to hear the joinder of Sonigem.
[6] The fact that Sonigem is seeking damages pursuant to s. 8 of the Trade-Marks Act for loss of revenue and profit not made as a result of sales which it could not make does not in my opinion in any way alter the propriety of granting Sonigem the leave it is seeking.
[7] First, the damages Sonigem is claiming under s. 8 also cover injury to its reputation and goodwill. Second, it is at the time of transfer that s. 8 imposes a statutory warranty that the mark "has been and may be lawfully used". The fact that the property transferred may not have been ultimately sold by the beneficiary of the warranty to its retail customers does not in my opinion in any way prevent the warranty from applying against the warrantor under s. 8. In my view, the precedents cited by the defendant Unical under this argument cannot be used to maintain the contrary.
[8] Additionally, there is no basis in the evidence for concluding that the action against the defendants by Sonigem is primarily a matter of contract, thereby divesting this Court of any jurisdiction over the subject matter of the joinder.
[9] The Court accordingly authorizes Sonigem nunc pro tunc to join the defendants U S WEST, INC. and UNICAL ENTERPRISES, INC. pursuant to s. 194(a) of the Rules. The deadline for service and filing of the defendants' defences will begin to run from the date of this order.
[10] As indicated at the hearing, costs on this motion will follow.
Richard Morneau
Prothonotary
Certified true translation
Martine Brunet, LL. B.
|
Federal Court of Canada
Trial Division
Date: 20000616
Docket: T-266-00
Between:
BELL CANADA,
Plaintiff/
Cross-Defendant,
AND
U S WEST, INC.,
UNICAL ENTERPRISES, INC. and
SONIGEM PRODUCTS INC.,
Defendants/
Cross-Plaintiffs;
And between:
SONIGEM PRODUCTS INC.,
Plaintiff in mis-en-cause,
AND
U S WEST, INC. and
UNICAL ENTERPRISES, INC.,
Mis-en-cause.
REASONS FOR ORDER AND ORDER
|
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
STYLE OF CAUSE: Between:
Plaintiff/
Cross-Defendant,
| UNICAL ENTERPRISES, INC. and |
Defendants/
Cross-Plaintiffs;
Plaintiff in mis-en-cause,
| UNICAL ENTERPRISES, INC., |
Mis-en-cause.
| PLACE OF HEARING: Montréal, Quebec |
| DATE OF HEARING: June 12, 2000 |
| REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY |
| DATE OF REASONS FOR ORDER: June 16, 2000 |
APPEARANCES:
| James A. Woods for Sonigem Products Inc. |
C. Richter
| Jean Carrière for Unical Enterprises, Inc. |
SOLICITORS OF RECORD:
| Woods & Associés for Sonigem Products Inc. |
Montréal, Quebec
| Mendelsohn, Rosentzveig, Shacter for Unical Enterprises, Inc. |
Montréal, Quebec
| Ogilvy, Renault for Bell Canada |
Montréal, Quebec
| Baker & McKenzie for U S West, Inc. |
Toronto, Ontario
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