Date: 20000830
Docket: T-1499-98
OTTAWA, ONTARIO this 30th day of August 2000
PRESENT: The Honourable Mr. Justice Pelletier
BETWEEN:
TAG HEUER S.A.
Plaintiff
- and -
JOHN DOE AND JANE DOE
AND OTHER PERSONS UNKNOWN
TO THE PLAINTIFF, WHO OFFER FOR SALE,
SELL, IMPORT, MANUFACTURE, ADVERTISE,
OR DEAL IN COUNTERFEIT TAG HEUER
WATCHES, CLOTHING AND ACCESSORIES
AND THOSE PERSONS LISTED IN APPENDIX A
REASONS FOR ORDER AND ORDER
[1] In response to an Order which I made as part of the status review of this file, counsel has filed written submissions requesting, among other things, leave to file Notices of Discontinuance against certain defendants, and that the claim not be dismissed.
[2] The Order which I made is as follows:
| Whereas Notice of Status Review was issued with respect to this claim on May 12, 1999; and |
| Whereas no order has been made continuing the action against some of all the defendants; |
| Now therefore it is hereby ordered: |
| 1. Counsel for the plaintiff shall within 60 days provide the Court with a list of defendants against whom the plaintiff wishes to proceed ("the Active List"). |
| 2. Following receipt of the Active List, the Court will decide which defendants on the Active List will have the action against them continued as a specially managed proceeding. |
| 3. Claims against defendants who are not named on the Active List or against whom the plaintiff has not obtained a final order will be dismissed for delay. If counsel wish to make representations in that regard, such submissions should be made within 60 days. |
| 4. Counsel shall advise if there is a current Anton Piller Order in effect with regard to this Statement of Claim. |
[3] There appears to be some confusion about the intent underlying the Order as evidenced by the request that the claim not be dismissed as counterfeiting of Tag Heuer products, is a continuing problem.
[4] "Anton Piller" files are subject to status review just as other files are. The difference with Anton Piller files is that, unlike most other files, defendants are being added on a continuing basis. At any given time, proceedings against defendants are at various stages of completion. Judgments have been entered in some cases, while in others, Orders have been served upon alleged counterfeiters but they have not yet been added as defendants. Status review of these files therefore calls for consideration of the status of the proceedings as against each of the defendants individually.
[5] In some of these files where large numbers of defendants have been added over the years, there are numbers of defendants against whom no further action was taken once they were added as defendants and interlocutory injunctions obtained against them. This is contrary to the spirit of the Rules which seek to have matters disposed of in an expeditious manner (hence, the status review after one year from the issuance of the Statement of Claim).
[6] It has also been the experience of the Court with a number of Anton Piller files that the addition of defendants over a period of years has created files of such size and complexity that it is only with considerable effort that documents related to particular defendants can be located and assembled.
[7] The Court is attempting to deal with a number of these issues through the status review process. In general terms, the initial Order will ask counsel to identify the defendants against whom the plaintiff wishes to proceed. The intention is to have counsel review the defendants on a file, identify those against whom final Orders have not been obtained, and to advise the Court accordingly. The claims against all other defendants will be dismissed to the extent that they are not already the subject of final Orders. This is to bring closure to claims which have remained outstanding after the review of the execution of the Anton Piller Order. Due to the size and complexity of the Court files, the burden of burrowing through the file to determine the status of proceedings against various defendants has been shifted from the registry to the office of counsel.
[8] Once the defendants against whom no final Order has been obtained are identified, the Court will make an Order for the case management of those claims with a view to having them concluded in a reasonable time frame. Since most of these claims are resolved by default judgment or applications for summary judgment, this is generally not an onerous process.
[9] In order to limit the number of defendants on each file, the case management Order will usually provide that no new defendants are to be added to the Statement of Claim without leave of the case management judge, such leave to be obtained before the execution of the Order against a potential defendant. In general, the Court would ask plaintiffs to issue a fresh Statement of Claim every time the "old" Statement of Claim goes into status review and to apply for the issuance of a "fresh" Anton Piller Order pursuant to the "new" Statement of Claim. In addition to limiting the number of defendants in any one action, this has the advantage of allowing the winding up of the "old" Statement of Claim to proceed in an orderly fashion.
[10] Leave will be granted to add defendants to a Statement of Claim which is under status review where there is no opportunity to obtain a fresh Anton Piller Order before action must be taken against the counterfeiter. The Court would expect that these situations would be the exception rather than the rule. The failure to grant leave would simply mean that a fresh Order would have to be obtained pursuant to a fresh Statement of Claim.
[11] Some status review Orders request the plaintiffs to advise the Court if there is a current Anton Piller Order in effect with regard to the existing Statement of Claim. Once again, this is simply a means of putting the current status before the status review judge without putting him or her through the trouble of searching a multi-volume file looking for the most recent Anton Piller Order.
[12] Counsel should therefore be aware that once an Anton Piller file goes into status review, they will be expected to finalize the claims against the defendants on that file and to take steps to obtain a fresh Anton Piller Order pursuant to a new Statement of Claim.
[13] The number of defendants in this case is limited and proceedings are current. The plaintiff has obtained Orders against the defendants and now seeks to close the files by filing Notices of Discontinuance in those cases where none are on file. The Court draws counsel"s attention to the decision of the Federal Court of Appeal in Carpenter Fishing Corp. v. Canada (C.A.) , [1998] 2 F.C. 548, (1997), 221 N.R. 372, in which it was held that there should only be one final Order with respect to a matter and that judgment should not be rendered in instalments. I would take the corollary of this to be that where there is a final Order on a file, the matter is concluded and there is no jurisdiction to make further Orders, except as specifically provided by the Rules. If the plaintiff intends to seek damages, it must do so when applying for default judgment. It cannot obtain a permanent injunction by default judgment, and then, in a second application seek damages. Only one final judgment will be issued. Since there is already an Order for a permanent injunction on all the files where counsel seeks to file a Notice of Discontinuance, the matter is concluded and no Notice of Discontinuance is required.
[14] As for the question of dismissal of the action, the plaintiff would not be deprived of its remedy in the event that no further defendants were to be added to this claim. It would simply have to issue a fresh Statement of Claim and apply for the issuance of an Anton Piller Order pursuant to that claim. The leave requirement is to give more flexibility than a blanket prohibition against adding new defendants would allow. If circumstances require that a defendant be added to a claim which is under case management, an Order to that effect can be made. Otherwise the plaintiff would be expected to proceed with the issuance of a fresh Order.
[15] Since the making of the plaintiff"s representations, the plaintiff has obtained a renewal of the Anton Piller Order on this file. This does not deal with the issue of the status review.
[16] The representations filed on behalf of the plaintiff show that final orders have been obtained against all 10 defendants against whom the Order has been executed. There are therefore at this time no outstanding claims which could be subject to case management.
[17] The question is whether any useful purpose will be served by requiring the plaintiff to issue a fresh Statement of Claim and to obtain a new Anton Piller Order when the prior Order has just been renewed.
[18] The advantage is one which accrues to the Court as opposed to the plaintiff. The advantage which the Court seeks is to have all Anton Piller files conducted on the same footing so that the Court is better able to manage them. In a few cases, such as this one, the file would not require the Court"s intervention. But in the interests of putting systems in place to manage this type of file, this plaintiff will be put to a small inconvenience, one to which other plaintiffs are also being put.
[19] As a result, there will be an Order continuing this action as a specially managed proceeding and limiting the plaintiff"s right to add defendants to this claim.
ORDER
| 1- This action shall be continued as a specially managed proceeding. |
| 2- No further defendants shall be added to this claim without the leave of the Case Management Judge, such leave to be obtained prior to the execution of the Anton Piller Order upon the proposed defendant. |
"J.D. Denis Pelletier"
Judge
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