Marketing Solutions Ltd. v. Marketing Solutions Corp., docket T-1749-91

Date: 19990414

Docket: T-1749-91

BETWEEN:

     MARKETING SOLUTIONS LTD.

     Plaintiff

Defendant by Counterclaim

     - and -

     MARKETING SOLUTIONS CORP.

     carrying on business as MARKETING SOLUTIONS,

     ELAINE SIGURDSON, and DAN RICHARDS

     carrying on business as MARKETING SOLUTIONS

     Defendants

Plaintiffs by Counterclaim

     REASONS FOR ORDER AND ORDER

EVANS J.

[1]      This is a motion by the plaintiff, Marketing Solutions Ltd., for summary judgment against the defendants, Marketing Solutions Inc. and its principals, and for the dismissal of the defendants" counterclaim against the plaintiff. The motion arises from an action for trade-mark infringement instituted by the plaintiff in 1991 with respect to the name, Marketing Solutions, the registered trade-mark of the plaintiff.

[2]      The basis of the motion is that one of the personal defendants, Mr. Dan Richards, has failed to provide timely answers to questions that he took under advisement at his examination for discovery in December 1997. When no answers were forthcoming, the plaintiff obtained an order from Tremblay-Lamer J. requiring Mr. Richards to provide answers by December 7, 1998.

[3]      When Mr. Richards failed to comply with this order, and provided no explanation for his non-compliance, the plaintiff brought the motion that is now before me. However, Mr. Richards had answered all the questions by the time that the motion was heard, although, according to counsel for the plaintiff, many of his answers were so inadequate that it would be necessary to require him to re-attend for further examination.

[4]      Counsel for the defendants opposed the motion on the ground that summary judgment was far too severe a sanction for the relatively minor delay caused by Mr. Richards, especially since the plaintiff could not establish that the delay was causing it great damage. Counsel for the defendants also observed that, while the plaintiff may now wish to proceed with due diligence, for three years after the filing of the statement of claim and defence, the plaintiff lapsed into inactivity.

[5]      Moreover, the impression that I have from the material before me is that the plaintiff is by no means assured of success if it pursues its claim, even though the plaintiff appears to have been inconvenienced by the fact that the defendants are conducting their business under a name that is virtually identical to that of the plaintiff.

[6]      The significant differences in the nature of the services provided by the parties and the fact that they cannot be said to be competitors, the possible existence of other businesses using the same or very similar name, and its arguably descriptive nature, suggest that the defence to the claim may not be without merit.

[7]      For these reasons, I shall not grant the relief sought by the plaintiff, although the terms of the order are intended to reflect the apparent wilfulness of Mr. Richards" non-compliance with an order of this Court, and to ensure that this matter is disposed of without unnecessary further delay, either as a result of a settlement or by trial.

IT IS HEREBY ORDERED THAT:

1.      The motion is dismissed;

2.      Costs of this motion are awarded to the plaintiff on a solicitor-client basis out of the cause, and are payable by the defendants forthwith;

3.      Mr. Richards is to re-attend for further examination and to provide adequate answers to the plaintiff"s questions within 14 days from the date of this order; and

4.      By April 30, 1999 the parties must submit for approval by the Court a schedule for the completion of all outstanding pre-trial steps in this matter, and obtain a court date for trial.

     "John M. Evans"

     J.F.C.C.

Toronto, Ontario

April 14, 1999

     FEDERAL COURT OF CANADA

     Names of Counsel and Solicitors of Record

COURT NO:                          T-1749-91

STYLE OF CAUSE:                      MARKETING SOLUTIONS LTD.

     Plaintiff

Defendant by Counterclaim

- and -

MARKETING SOLUTIONS CORP. carrying on business as MARKETING SOLUTIONS, ELAINE SIGURDSON, and DAN RICHARDS carrying on business as MARKETING SOLUTIONS

     Defendants

Plaintiffs by Counterclaim

DATE OF HEARING:                  MONDAY, FEBRUARY 15, 1999

PLACE OF HEARING:                  TORONTO, ONTARIO

REASONS FOR ORDER AND ORDER BY:      EVANS, J.

                            

DATED:                          WEDNESDAY, APRIL 14, 1999

APPEARANCES:                      Mr. D. Allsebrook

For the Plaintiff

Defendant by Counterclaim

                             Mr. B. Stratton

For the Defendants

Plaintiffs by Counterclaim

SOLICITORS OF RECORD:              Fasken Campbell Godfrey

                             Barristers & Solicitors

                             4200 TD Bank Tower,

                             PO Box 20, Stn. Toronto Dom.

                             Toronto, Ontario

                             M5K 1N6

For the Plaintiff

Defendant by Counterclaim

                            

                             Dimock Stratton Clarizio

                             Barristers & Solicitors

                             Box 102, 3202-20 Queen St. W.,

                             Toronto, Ontario

                             M5H 3R3

For the Defendants

Plaintiffs by Counterclaim

                             FEDERAL COURT OF CANADA

                            

                                 Date: 19990414

                        

         Docket: T-1749-91

                             Between:

MARKETING SOLUTIONS LTD.

     Plaintiff

Defendant by Counterclaim

- and -

MARKETING SOLUTIONS CORP. carrying on business as MARKETING SOLUTIONS, ELAINE SIGURDSON, and DAN RICHARDS carrying on business as MARKETING SOLUTIONS

     Defendants

Plaintiffs by Counterclaim

                

                            

            

                                             REASONS FOR ORDER

AND ORDER