Date: 20021129
Docket: T-70-00
Neutral citation: 2002 FCT 1244
Montréal, Quebec, November 29, 2002
Before: Richard Morneau, Prothonotary
BETWEEN:
BAUER NIKE HOCKEY INC.
Plaintiff
and
EXCELLENCE UNDERWEAR INC.
and
MANUFACTURE DE BAS CULOTTES LAMOUR INC.
also doing business under the corporate name
THE LAMOUR HOSIERY MANUFACTURING CO. INC.
Defendants
Motion by the plaintiff asking the Court to:
MAKE AN ORDER, pursuant to Rule 97 of the Federal Court Rules (1998), directing the respective representatives of the defendants to again appear at their own cost at 9 a.m. on November 15, 2002, at the offices of Smart & Biggar, at 1000 de la Gauchetière West Street, Bureau 3400, city of Montréal, province of Quebec, or at any other place and/or time which the Court shall determine, to answer the following questions and provide the following information and to answer any question resulting therefrom:
(1) questions nos. 284, 350, 826, 827 and 828 asked in the examination for discovery of Avram Shuster on June 5, 2001, to which objections were made;
(2) relevant information and documents in response to undertaking requests U-5 and U-11, to which objections were made at the time of the examination for discovery of Avram Shuster on June 5, 2001;
(3) questions nos. 275, 277, 278, 279, 280, 350, 351, 372, 374 and 618 asked in the examination for discovery of Martin Lieberman on June 5 and 6, 2001, and April 23, 2002, to which objections were made;
(4) relevant information and documents in response to undertaking requests U-2, U-4, U-5 and U-10, to which objections were made at the time of the examination for discovery of Martin Lieberman on June 5 and 6, 2001;
(5) relevant samples in response to undertaking request U-12, to which no objection was made at the time of the second round of the examination for discovery of Martin Lieberman on April 23, 2002;
MAKE AN ORDER, pursuant to s. 75(1) of the Federal Court Rules (1998), allowing the plaintiff to amend, in accordance with the reamended draft statement of claim attached to this notice of motion as Appendix A, its amended statement of claim filed on January 23, 2001, so allowing the plaintiff to file this reamended statement of claim with the Court and serve it on the defendants at the latest within ten days of the order to be made herein;
MAKE ANY OTHER ORDER which this Court shall consider useful and appropriate in the circumstances.
THE WHOLE with costs.
[Rules 75 and 97 of the Federal Court Rules (1998)]
REASONS FOR ORDER AND ORDER
[1] The Court has before it in the case at bar a motion by the plaintiff to resolve in its favour certain objections made by counsel for the defendants at the time of the examinations for discovery of their representatives, at two sessions held in June 2001 and April 2002.
[2] The plaintiff is further seeking the right to amend its amended statement of claim filed on January 23, 2001, in accordance with the draft reamended statement of claim attached to its notice of motion.
[3] This motion is made in an action for unfair competition, to strike the trade mark COOPER M.V.P. registered in the name of the defendant Excellence Underwear Inc. (hereinafter "Excellence Underwear") and for infringement of the trade marks COOPER and C & Design of the plaintiff (hereinafter referred to collectively as "the trade mark COOPER").
[4] It appeared that the parties at issue used their marks in connection with various products, and in particular hosiery and underclothing of all kinds, but relating to the practice of various sports.
State of law
[5] On the question of objections, a question requires an answer at the examination for discovery if it is relevant to the matters that are at issue between the parties, that is, if it is likely to assist the case of one party directly or indirectly or damage the case of another (see Sydney Steel Corp. v. Omisalj (The), [1992] 2 F.C. 193, 197-198).
[6] On the rules applicable to the amendment of pleadings, the following passage from Canderel Ltd. v. Canada, [1994] 1 F.C. 3 (C.A.), at 10, clearly reflects the very liberal approach which the Court must take in such a matter:
. . . while it is impossible to enumerate all the factors that a judge must take into consideration in determining whether it is just, in a given case, to authorize an amendment, the general rule is that an amendment should be allowed at any stage of an action for the purpose of determining the real questions in controversy between the parties, provided, notably, that the allowance would not result in an injustice to the party not capable of being compensated by an award of costs and that it would serve the interests of justice.
[7] In Visx v. Nidek, [1998] F.C.J. No. 1766, the Federal Court of Appeal also restated the following proposition taken from an 1886 case:
The rule of conduct of the Court in such a case is that, however negligent or careless may have been the first omission, and however late the proposed amendment, the amendment should be allowed, if it can be made without prejudice to the other side. There is no injustice if the other side can be compensated by costs; but, if the amendment will put them into such a position that they must be injured, it ought not to be made.
(My emphasis.)
Analysis
[8] First, we will deal with the objections made when the defendants' representatives were examined.
[9] On June 5, 2001, the plaintiff proceeded with the examination for discovery of Avram Shuster, in his capacity as a representative of the defendant Excellence Underwear.
[10] For the defendant Lamour, its representative Martin Lieberman was examined on June 5 and 6, 2001, and April 23, 2002.
[11] The plaintiff combined the questions to which objections were made into various categories, and it is those categories which will now be briefly considered.
[12] The first three categories of questions relate to the examination of Mr. Shuster on June 5, 2001.
[13] In this regard, the first category of questions concerns the defendant Excellence Underwear's distribution network and the stores which offer its products COOPER M.V.P. for sale.
[14] This category will have to be answered _ except for question 284 _ since it has already been answered in part and the situation should be completed.
[15] If the products of parties to the instant case overlap or are likely to overlap in the market, the plaintiff must know what the defendant's current and potential distribution network is and which stores offer the defendant's COOPER M.V.P. products for sale. If the information requested by the plaintiff is confidential in nature, the parties should make the necessary arrangements.
[16] The second category of questions concerns the communication of six (6) samples of the defendant's underwear with the word "sport" on them.
[17] I agree that despite the defendants' argument to the contrary, this undertaking request is relevant to the question of confusion which arises in the plaintiff's action for unfair competition.
[18] The reply to this undertaking request could reasonably support or undermine the plaintiff's argument that the defendant is seeking to create a connection between the plaintiff's sports products sold under the trade name COOPER and its own products, by putting the word "sport" only on products sold in association with the trade mark COOPER M.V.P. and not on the products in association with the other trade marks used by the defendant.
[19] Consequently, this category will also have to be answered.
[20] On the third category dealing with the popularity of the various trade marks used by the defendant, the remaining questions, namely questions 826 and 828, will have to be answered since they could make it possible to measure the impact of the advent of the mark COOPER M.V.P.
[21] The other categories of questions relate to the examination of Mr. Lieberman, the representative of the defendant Lamour.
[22] In this regard, the fourth category of questions deals with the defendant Lamour's licensing fees on the trade marks WILSON, DUNLOP, CCM and PENN, and the use of those trade marks.
[23] This category _ and the other category following it _ will have to be answered, so that the defendant can complete the information already provided on these points. The plaintiff pursues an argument dealing with the value of putting on well-known trade marks used in association with sporting products. The answers sought could assist the plaintiff with respect to this theory. I do not not consider that this is a fishing expedition.
[24] On undertaking U-12, the conclusion must be that this has been answered. No further answer will therefore be necessary.
[25] We must now consider the plaintiff's application to amend its amended statement of claim.
[26] In this regard the plaintiff is essentially seeking to rely on (1) its copyright in the logo COOPER, (2) its rights resulting from use by its licensees Irwin Toy Limited and Monarch-McLaren Inc. of the trade marks COOPER and the logo COOPER, and (3) the renown of its mark.
[27] The defendants did not object to the amendment dealing with the licensees. This amendment will therefore be allowed without further discussion.
[28] It can at once be seen that the defence and reply will probably have to be amended.
[29] It also would appear that, in view of the liberal approach in Canderel, the amendment on notoriety will have to be allowed. That amendment will therefore be allowed. Further, I am not at all sure that the examinations for discovery should be pursued in this connection.
[30] Finally, the amendment on the copyright, although belated, is allowed since it is ultimately supported by Canderel and Visx, supra. I am not sure that the defendants will ultimately suffer irreparable harm within the meaning of those cases. In any event, the defendants' defence will have to be amended. The defendant may also continue the examinations for discovery if necessary, at the plaintiff's expense.
[31] Further, such an amendment avoids the plaintiff bringing a new and separate action in this regard.
[32] Costs of this motion to follow.
[33] The parties will ensure within ten (10) days of this order that they submit a mutually agreed upon schedule for the final hearing of the instant case, since that contained in the order of September 16, 2002 is obsolete.
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"Richard Morneau"
Prothonotary
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Certified true translation
Suzanne M. Gauthier, C. Tr., LL.L.
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FEDERAL COURT OF CANADA
TRIAL DIVISION
Date: 20021129
Docket: T-70-00
Between:
BAUER NIKE HOCKEY INC.
Plaintiff
and
EXCELLENCE UNDERWEAR INC. and
MANUFACTURE DE BAS CULOTTES LAMOUR INC. also doing business under the corporate name
THE LAMOUR HOSIERY MANUFACTURING CO. INC.
Defendants
REASONS FOR ORDER AND ORDER
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FEDERAL COURT OF CANADA
TRIAL DIVISION
SOLICITORS OF RECORD
FILE: T-70-00
STYLE OF CAUSE: BAUER NIKE HOCKEY INC.
and
EXCELLENCE UNDERWEAR INC. and
MANUFACTURE DE BAS CULOTTES LAMOUR INC. also doing business under the corporate name THE LAMOUR HOSIERY MANUFACTURING CO. INC.
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: November 18, 2002
REASONS FOR ORDER BY: RICHARD MORNEAU, PROTHONOTARY
DATED: November 29, 2002
APPEARANCES:
François Guay for the plaintiff
Annie Cormier for the defendants
SOLICITORS OF RECORD:
Smart & Biggar for the plaintiff
Montréal, Quebec
Mendelsohn, Rosentzveig and Shacter for the defendants
Montréal, Quebec
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