Glopak Inc. v. Dupont Canada Inc., docket T-1006-98

Date: 19991130

Docket: T-1006-98

MONTREAL, QUEBEC, THIS 30^th DAY OF NOVEMBER 1999

PRESENT:      RICHARD MORNEAU, ESQ., PROTHONOTARY

BETWEEN:

     GLOPAK INC.

     Plaintiff

     AND

     DUPONT CANADA INC.

     Defendant

     ORDER

     Mr. Derrick Russell shall re-attend, at the expense of the Defendant, for additional examination for discovery in order to answer the following questions and all proper follow-up questions arising from questions 148, 394, 398 and 600 which are hereby ordered to be answered.

     As per the consent of both parties, the existing timetable for the completion of these proceedings is varied. Accordingly:

1.      re-attendances or answers to questions objected to shall be completed by both parties by January 31, 2000;

2.      settlement discussions pursuant to Rule 257 of the Federal Court Rules, 1998 shall take place by February 29, 2000;

3.      a request shall be filed by March 31, 2000, for a Case Management Conference by telephone in order to ensure that all prior steps have been completed and to schedule the filing of a Requisition for Pre-Trial Conference accompanied by a Pre-Trial Conference Memorandum, pursuant to Rule 358.

     As success is divided on this motion, no costs shall be awarded.

Richard Morneau

     Prothonotary

     Date: 19991130

     Docket: T-1006-98

Between:

     GLOPAK INC.

     Plaintiff

     AND

     DUPONT CANADA INC.

     Defendant

     REASONS FOR ORDER

RICHARD MORNEAU, ESQ., PROTHONOTARY:

[1]      This is a motion by the Plaintiff (Glopak) directed to eight (8) outstanding questions from the examination for discovery of the representative of the Defendant (DuPont)

Background

[2]      Glopak and DuPont are competitors in the sale of plastic films used to make pouches and sold to the dairy industry.

[3]      On June 26, 1996, DuPont instituted Action No. T-1525-96 against Glopak, alleging that the "Glopak film" infringed certain claims in a relevant patent (the Storms Patent).

[4]      Following the filing, on July 15, 1996, of a Notice of Motion to Strike out the entirety of DuPont's Statement of Claim in T-1525-96, but prior to the hearing of said Motion, DuPont discontinued its action.

[5]      On November 21, 1996, DuPont instituted Action No. T-2565-96 against Glopak, alleging that the "Glopak film" infringed certain claims in the Storms Patent.

[6]      At the time, the films made and sold by Glopak were identified by the code numbers GI-8 and GI-9. In its Statement of Defence, dated May 1, 1997, in Action T-2565-96, Glopak indicated that, in any event, it had discontinued all of its earlier dairy films GI-8 and GI-9 and was now manufacturing and selling only one film identified by the code number GI-911.

[7]      As alleged by Glopak, in order to put an end to DuPont's legal proceeding and to be able to freely operate, manufacture and sell its GI-911 plastic film to the dairy industry, Glopak filed, on May 21, 1997, a Motion for Summary Judgment in File T-1565-96, asking the Court to declare that Glopak's film GI-911 does not infringe the Storms Patent.

[8]      On April 23, 1998, although dismissing Glopak's Motion, Justice Muldoon held, in his reasons for judgment, that DuPont's action did not contemplate Glopak's film GI-911 because Glopak only began using this product in March 1997, months after DuPont filed its Statement of Claim. In effect, at paragraph 39 of the reasons for judgment, Justice Muldoon stated that the Motion should be dismissed "since GI-911 was never in issue in the action".

[9]      Glopak's thereafter instituted the herein proceedings on May 15, 1998 as a result of alleged misrepresentations made by DuPont to customers and potential customers of Glopak following the above-mentioned decision of Justice Muldoon on summary judgment in Action T-2565-96.

Analysis

[10]      At trial the judge of the merits might quite possibly construe the Plaintiff's claim as solely an action under section 7(a) of the Trade-marks Act for false or misleading statements made after April 23, 1998, and consequently, limit in such regard any remedy Glopak might be entitled to. However, considering that Glopak's Statement of Claim has not been subject to any motion to strike and, indeed, has been responded to by the filing of a Statement of Defence, I am prepared for the purpose of this motion to consider as disclosing relevant surrounding circumstances the paragraphs of the Statement of Claim which might not fall strickly under the ambit of section 7 of the Trade-marks Act.

[11]      With this in mind, I shall now evaluate the propriety of the questions in dispute.

Question 122

[12]      This question requests DuPont to produce a copy of the contract concluded between DuPont and Prepac, a manufacturer of milk bagging equipment.

[13]      By this question, Glopak is seeking to know whether there are any provisions in said contract to the effect that the level of service for spare parts provided to customers of Prepac equipment who also purchase DuPont film differs from the level of service provided to those customers of Prepac equipment who do not purchase their film from DuPont.

[14]      However, what could be of relevancy is DuPont's actual actions vis-à-vis its customers, not what the Prepac contract might say. In that regard, the question is in the nature of a fishing expedition and need not be answered.

Questions 148, 394 and 398

[15]      At question 148 as well as at questions 394 and 398, Glopak asked questions relating to discussions which DuPont may have had with customers concerning DuPont's patent and Glopak's alleged infringement thereof, as well as DuPont's institution of legal proceedings against Glopak and the reasons therefor.

[16]      In its Statement of Claim, Glopak alleges that statements made by DuPont to customers were made in an attempt to discredit the business of Glopak and to induce customers not to purchase Glopak film. In addition, Glopak maintains that the content of discussions between DuPont and customers is certainly relevant as it will assist Glopak in determining whether DuPont represented to customers facts that may contradict paragraph 4 of DuPont's own Statement of Defence.

[17]      Therefore, questions 148, 394 and 398 are relevant to the issues raised by the pleadings and do represent an appropriate avenue of inquiry. Consequently, they must be answered.

Question 424

[18]      This question reads as follows:

In light of the letter drafted by Mr. Russell, dated April 27, 1998, concerning Mr. Justice Muldoon's dismissal of Glopak's Motion for Summary Judgement, indicate what Mr. Russel himself understood by the sentence at the end of paragraph 39 of Mr. Justice Muldoon's Reasons to the effect that the motion for summary judgement "nevertheless should be dismissed since GI-911 was never in issue in the action".

[19]      I agree that the inner thoughts of the author of the letter is irrelevant. In addition, this question calls for Mr. Russell's legal interpretation of a Court's decision. This question need not be answered.

Question 600

[20]      Glopak asked DuPont to advise which film was the subject of the investigation carried out by DuPont, as alleged at paragraph 4 of DuPont's Statement of Defence, pursuant to which DuPont concluded that Glopak film was not a composite film and, consequently, decided to drop allegations of infringement of the composite claims in the Storms Patent in its initial action

[21]      In light of DuPont's answers to question 596-598 regarding the details surrounding the basis for which DuPont concluded that Glopak's film was not a composite film, Glopak is entitled to know on what specific Glopak film DuPont's investigations were based.

[22]      The question as to which Glopak film was analysed flows directly from DuPont's answers to previous questions and is therefore a proper inquiry.

[23]      It shall therefore be answered.

Questions 638 and 645

[24]      These questions read as follows:

In light of Glopak's claim for exemplary damages, indicate the overall figure which DuPont sales of inner pouch film to dairies represent.

Indicate the global value of the DuPont inner pouch film in Canada for the 1996-1998 period either in actual sales figures or as an overall figure indicating the size of the market in dollar value.

[25]      The parties have made an agreement to delay the issue of determining damages until after liability is determined. The Federal Court of Appeal has held that a court must first assess general damages before there can be a determination of punitive or exemplary damages. This rule is based on the grounds that a court must first assess general damages to determine if they are sufficient for punishment and deterrent purposes: Lubrizol Corp. v. Imperial Oil Ltd. (1996), 67 C.P.R. (3d) 1 (Fed. C.A.) at 20-3.

[26]      Since the parties have agreed to delay the determination of general damages, the information requested in these questions is not relevant at this point in the proceedings.

[27]      Consequently these questions need not be answered.

Other Matters

[28]      As per the consent of both parties, the existing timetable for the completion of these proceedings is varied. Accordingly:

1.      re-attendances or answers to questions objected to shall be completed by both parties by January 31, 2000;

2.      settlement discussions pursuant to Rule 257 of the Federal Court Rules, 1998 shall take place by February 29, 2000;

3.      a request shall be filed by March 31, 2000, for a Case Management Conference by telephone in order to ensure that all prior steps have been completed and to schedule the filing of a Requisition for Pre-Trial Conference accompanied by a Pre-Trial Conference Memorandum, pursuant to Rule 358.

[29]      As success is divided on this motion, no costs shall be awarded.

Richard Morneau

     Prothonotary

MONTREAL, QUEBEC

November 30, 1999

     FEDERAL COURT OF CANADA

     NAMES OF COUNSEL AND SOLICITORS OF RECORD

COURT NO.:

STYLE OF CAUSE:

T-1006-98

GLOPAK INC.

     Plaintiff

AND

DUPONT CANADA INC.

     Defendant

PLACE OF HEARING:Montreal, Quebec

DATE OF HEARING:November 22, 1999

REASONS FOR ORDER BY RICHARD MORNEAU, ESQ., PROTHONOTARY

DATE OF REASONS FOR ORDER:November 30, 1999

APPEARANCES:

Mr. Leigh D. Crestohl

for the Plaintiff

Mr. Dino P. Clarizio

for the Defendant

SOLICITORS OF RECORD:

Ogilvy Renault Mr. Leigh D. Crestohl Montreal, Quebec

for the Plaintiff

Dimock Stratton Clarizio Mr. Dino P. Clarizio Toronto, Ontario

for the Defendant