Benisti Import-Export Inc. v. 150512 Canada Inc., 2002 FCT 197

Date: 20020225

Docket: T-1878-01

Neutral reference: 2002 FCT 197

Montréal, Quebec, February 25, 2002

Before: Richard Morneau, prothonotary

BETWEEN:

BENISTI IMPORT-EXPORT INC.

Plaintiff

(cross-defendant)

and

150512 CANADA INC.

Defendant

(cross-plaintiff)

Motion by the plaintiff (cross-defendant) for:

            (a)        particulars regarding para. 11 of the defence and counterclaim, namely that the defendant (cross-plaintiff) should specify which are the principal areas in the registration of industrial design No. 92684 and which of those areas is contained in Appendix A for each of the publications;

            (b)        the striking out of the allegations contained in paras. 32 and 39 of the defence and counterclaim;

            (c)        the whole with costs, if opposed.

[Rules 181 and 221 of the Federal Court Rules (1998)]

REASONS FOR ORDER AND ORDER

[1]        The particulars sought are allowed as requested. The industrial design here is not a patent benefiting from claims. To comprehend this design and the photos appearing in Appendix A discussed in the statement of claim is not necessarily straightforward. It seems to me that identifying the principal areas is basically tantamount to identifying the substance of an invention in connection with a patent. In this regard, the precedents of this Court have held that this is feasible. It has been held that it is proper at the initial stage of a proceeding to require a party to particularize what it regards as the "substance" of its invention, even if ultimately it is for the Court to reach a final conclusion on the point (Northern Telecom Ltd. v. Reliance Electric Co. (1986), 8 C.P.R. (3d) 224, at 227).

[2]        This involves seeking an answer to a question of fact. In Northern Telecom, supra, the Federal Court of Appeal said the following at 226 in this regard:

What the "substance" of the invention is is obviously material as it is the taking of it of which the respondents complain. It is also a question of fact, not one of law. See McPhar Engineering Co. of Canada Ltd. v. Sharpe Instruments Ltd. et al. (1961), 35 C.P.R. 105 at pp. 170-1, 21 Fox Pat. C. 1, [1956-60] Ex C.R. 467 at p. 537, per Thorson P.:

And since there is infringement if the substance of the invention is taken it becomes necessary to ascertain what the substance of the invention is and that question is one of fact.

[3]        Of course such a question, along with the details sought here, to some extent requires the expression of a technical opinion. However, it does not appear in the circumstances that the aspect of a technical opinion is sufficient to deprive the details sought of their essentially factual nature. (See Risi Stone Ltd. v. Groupe Permacon Inc. (1994), 56 C.P.R. (3d) 381, at 388).

[4]        The particulars sought will therefore have to be produced within 20 days of this order.

[5]        The application to strike is also allowed and paras. 32 and 39 of the defence and counter-claim are struck out, with leave to the defendant however to serve and file, within 20 days of this order, an amended defence and counterclaim in which allegations regarding the attitude or conduct of the defendant after learning of the registration of industrial design in question are set out. At present paras. 32 and 39 of the defence and counterclaim discuss a situation which should be dealt with, if necessary, in accordance with Rules 419 to 422 of the Federal Court Rules (1998).

[6]        Costs on the instant motion are awarded to the plaintiff.

Certified true translation

Suzanne M. Gauthier, LL.L. Trad. a.

             FEDERAL COURT OF CANADA

                          TRIAL DIVISION

NAMES OF COUNSEL AND SOLICITORS OF RECORD

FILE:                                                                               T-1878-01

STYLE OF CAUSE:                                                     BENISTI IMPORT-EXPORT INC.

Plaintiff

(cross-defendant)

and

150512 CANADA INC.

Defendant

(cross-plaintiff)

PLACE OF HEARING:                                                Montréal, Quebec

DATE OF HEARING:                                                  February 11, 2002

REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY

DATED:                                                                           February 25, 2002

APPEARANCES:

Alain Y. Dussault                                                               for the plaintiff (cross-defendant)

Mark Sumbulian                                                                for the defendant (cross-plaintiff)

SOLICITORS OF RECORD:

Léger, Robic, Richard                                                        for the plaintiff (cross-defendant)

Montréal, Quebec

Sumbulian & Sumbulian                                                    for the defendant (cross-plaintiff)

Montréal, Quebec