Date: 19990813
Docket: T-1022-99
BETWEEN:
Plaintiff
-and-
EPOST INNOVATIONS INC.,
Defendant
REASONS FOR ORDER
Mr. John A. Hargrave, Prothonotary
[1] This motion arises out of a trademark infringement action brought by Canada Post against a private corporation operating in B.C. In this motion, the Defendant, Epost Innovations Inc. ("Epost") requests of the Plaintiff, Canada Post Corporation ("Canada Post") further and better particulars for pleading pursuant to Rule 181 of the Federal Court Rules, 1998 .
BACKGROUND
[2] Much of the background is set out in the Statement of Claim. Canada Post is a Crown corporation established in 1981 pursuant to Section 4 of the Canada Post Corporation Act which changed the federal Post Office Department into the present Crown corporation. Before obtaining Crown corporation status, Canada Post had, for more than 100 years, provided various types of postal services in Canada.
[3] The objects of Canada Post are set out in Section 5 of the Act which provides in part:
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5. (1) The objects of the Corporation are |
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(a) to establish and operate a postal service for the collection, transmission and delivery of messages, information, funds and goods both within Canada and between Canada and places outside Canada; |
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(b) to manufacture and provide such products and to provide such services as are, in the opinion of the Corporation, necessary or incidental to the postal service provided by the Corporation... |
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Section 5(1)(b) of the Act would allow Canada Post certain room for expansion of the scope of its service as needed.
[4] In 1990's the Internet service has become a common commodity in businesses and households alike around the world. Canada Post also saw itself changing to accommodate this new and untapped market. As a result, on October 8, 1995, Canada Post officially became "on-line" with the domain name www.canpost.ca and started to provide postal related services on its website.
[5] The Internet services provided by the Plaintiff now include a parcel rate calculator, a list of postal codes, a postal outlet locator, and delivery confirmation of parcels sent via special or advanced services. The websites also provide forum for marketing and selling of the products manufactured by Canada Post such as stamps, prepaid stamped envelopes and shipping products.
[6] In 1996, the original domain name was changed to www.mailposte.ca. Soon afterwards a family of domain names were added: www.canadapost.ca, www.postescanada.ca, www.mailposte.net, www.mailposte.org, www.canpost.net, www.canpost.org, www.telepost.org, www.prioritypost.net, www.prioritypost.org, www.canadapost.com, www.postescanada.org and www.postescanada.net, to name a few.
[7] In relation to its business and services, Canada Post has become the owner of numerous trade-marks, trade names and official marks which make use of the word, POST. The details of Canada Post"s trademarks registered, applied for, and its official marks that are published and pending are listed in Schedules A, B and C to the Statement of Claim.
[8] Epost, whose parent company is a more recently incorporated entity, Cypost Corporation of Delaware, is a company with an operating outlet in North Vancouver, B.C., said to be carrying on research activities in relation to security software for electronic communications. On September 16, 1997, Epost filed a trade-mark application for the word, "CyPost" in respect of computer software and hardware for electronic communication and transmission of data such as fax, e-mail, and voice message. On 17 September 1997, one of the principles of Epost registered an Internet domain name www.cypost.com which prominently displays the trade-mark CyPost. The website and the trade-mark have been in use since then.
[9] On February 23, 1999, Canada Post filed a Statement of Opposition against the Epost"s trade-mark application for the trade-mark CyPost. Epost has not filed a reply to that objection: the impugned trade-mark, according to Canada Post, will soon be deemed abandoned. Canada Post alleges that Epost, despite its failure to defend its trade-mark application, has not refrained from using either the mark or its corporate name on the website.
[10] The Plaintiff says that in April, 1999, it requested that Epost stop using the website and its domain name www.cypost.com, on the basis that it is likely to be confused with or likely be mistaken for one of Canada Post"s trade-marks or official marks. The request was either denied or ignored.
[11] Having no response from Epost, Canada Post filed a Statement of Claim on June 11, 1999, seeking, among other things, declaratory and injunctive relief, assignment or delivery up of the domain name cypost.com, that Epost change its name and damages. In part Canada Post relies on sections 58 and 61 of the Canada Post Corporation Act which stipulate that usage of marks suggestive of any authorization by Canada Post is a statutory offence. Canada Post says it has suffered irreparable damage to its reputation and goodwill by reason of Epost"s activities.
[12] In response to the Statement of Claim, Epost now brings this motion for further and better particulars pursuant to Rule 181, requesting verification and confirmation of various assertions made in the Statement of Claim.
ISSUES
[13] The question here is whether Canada Post"s pleading contains adequate information to allow Epost to understand the claim in order to prepare a defence, or whether Epost is entitled a further and better particulars as to the factual circumstances of Canada Post"s claim before it is required to plead. Specifically, Epost requests particulars regarding: (1) identification of specific types of wares and services provided by Canada Post; (2) identification of the specific number of marks owned by Canada Post; (3) provision of and identification of filing date, date of first use and material date, terms which appear in Schedules to the Statement of Claim and in correspondence; (4) the scope of the term "electronic message services" as used in the Statement of Claim; and (5) the exact scope of the Plaintiff"s reputation.
ANALYSIS
Particulars in General
[14] The purpose of particulars is well established through English and Canadian jurisprudences. The decision of English Court of Appeal in Spedding v. Fitzpatrick (1888) 38 Ch D 410 delineated the scope of the object of the particulars as enabling "the party asking for them to know what cause he has to meet at the trial, and so to save unnecessary expense, and avoid allowing parties to be taken by surprise"(p. 413).
[15] The British Columbia Court of Appeal in Anglo-American Timber Products Ltd. v. B.C. Electric Company Ltd. (1960), 31 W.W.R. 604 further summarized the purpose of particulars as requiring "a party to clarify the issues he has tried to raise by his pleading, so that the opposite party may be able to prepare for trial, by examination for discovery and otherwise."(p.605) This landmark B.C. decision was approved in Cansulex Limited v. Perry et al. (March 18, 1982), Doc. Vancouver C785837 (B.C.C.A.) where Mr. Justice Lambert at page 10 referred to and applied the English Supreme Court Practice dealing with the functions of particulars. It is useful to note a relevant part of the decision:
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. . . I agree, that the functions of particulars as stated in the White Book is as applicable in British Columbia as it is under the English practice, and six points are set out there in this way: |
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(1) to inform the other side of the nature of the case they have to meet as distinguished from the mode in which that case is to be proved . . |
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(2) to prevent the other side from being taken by surprise at the trial . . . |
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(3) to enable the other side to know what evidence they ought to be prepared with and to prepare for trial . . . |
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(4) to limit the generality of the pleadings . . . |
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(5) to limit and decide the issues to be tried, and as to which discovery is required . . . |
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(6) to tie the hands of the party so that he cannot without leave go into any matters not included . . . |
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[16] The Federal Court of Appeal in Gulf Canada Ltd. v. The "Mary Mackin", [1984] 1 FC 884 at 887 referring to Spedding as well as Cansulex, adopted the six functions of particulars as codified in the English Rules:
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He (Lambert J.A.) then went on at pages 10 and 11 (of Cansulex) of his reasons to enumerate with approval the function of particulars set out in the White Book dealing with the English Practice. The Supreme Court Practice, 1982 Vol. I, page 318 details this function. |
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Because Rule 408(1) [now Rule 174] requiring ". . . a precise statement of the material facts on which the party pleading relies" and Rule 415 [now Rule 181] permitting applications for further and better particulars of allegations in a pleading are substantially similar to the corresponding sections in the English Rules, I think the above quoted six functions of particulars should apply equally to an application such as the present one under our Rules. |
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Particulars for Defence and for Trial
[17] The particulars required for defence are not as broad as particulars for trial. In Embee Electronic Agencies Ltd. v. Agence Sherwood Agencies Inc. et al. (1979) 43 CPR (2d) 285 (FCTD), Mr. Justice Marceau (as he then was) makes a sharp distinction between the particulars needed in preparation of a statement of defence and the particulars required for discovery:
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[A]s I understand the law in this regard, a distinction must be made between a request for particulars made prior to the filing of the statement of defence and one made at a later stage of the proceedings. Before trial, after the issues have been defined, a defendant is entitled to be informed of any and every surprise at trial. But before the filing of the defence, the right of a defendant to be furnished particulars is not so broad, since it does not have the same basis and serves a different purpose. A defendant should not be allowed to use a request for particulars as a means to pry into the brief of his opponent with a view to finding out about the scope of evidence that might be produced against him at trial, nor should he be allowed to use such a request as a means to go on a sort of fishing expedition in order to discover some grounds of defence still unknown to him. At that early stage, a defendant is entitled to be furnished all particulars which will enable him to better understand the position of the plaintiff, see the basis of the case made against him and appreciate the facts on which it is founded so that he may reply intelligently to the statement of claim and state properly the grounds of defence on which he himself relies, but he is not entitled to go any further and require more than that. |
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[18] Mr. Justice Teitelbaum in International Business Machines Corp. v. Printech Ribbons Inc. (1994), 55 CPR (3d) 337 adopted the proposition of Mr. Justice Marceau in Embee and stressed that "a defendant should not use particulars to find out the scope of the evidence that is going to be lead at trial." (page 340). The Counsel for Canada Post also referred to the decision in Quality Goods I.M.D. Inc. v. R.S.M. International Active Wear Inc. et al. (1996), 63 CPR (3d) 499. In that case, Mr. Justice Dubé considered the Embee decision and held both that particulars are not to be used as the proof of the allegations of a plaintiff and that a plaintiff does not have to provide particulars of facts that are already known to a defendant.
[19] With the above principles in mind, I will now deal with each of Epost"s requests for particulars in turn.
Wares and Services
[20] Epost submits that it needs particulars regarding which wares and services are at issue before it can plead. The wares and services of Canada Post and their associated trade-marks are listed in Schedules A, B and C to the Statement of Claim. More specifically, Epost seeks affirmation that Canada Post"s claim is confined to those listed in the Schedules and does not encompass other trade-marks registrations and applications.
[21] Once pleadings are closed, a party is limited to the factual assertions and claims for relief made in its pleading. On that footing, Canada Post is entitled to seek protection only for those marks listed in the Schedules to the Statement of Claim and nothing more. Counsel for Canada Post conceded this point during the course of the hearing. It is therefore pertinent to look at the Schedules to see if the further particulars are needed in respect of those wares and services.
[22] As an illustration, I would refer to a typical mark listed in the Schedule A and to the associated wares:
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MAIL POSTE & Design Wares: Briefcases, address books, business card holders; stationery, namely: envelopes, file folders, greeting cards, note cards, notebooks, stamps, desktop blotters, memo pads, notepaper, paper folders, binders, book covers, writing paper; stickers, pens, pencils, rubber stamps, rulers, paperweights, letter openers; jewellery, namely: brooches, tie pins, lapel pins; clothing, namely: uniform, men"s ties, caps, t-shirts, polo shirts, sweat shirts, sweat suits, [and so on for another four-dozen items] |
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The description of wares associated with the trade-mark MAIL POSTE & Design, while lengthy, is specific and clear. The list contains adequate information by which Epost may determine which wares are at issue.
[23] Having examined the Schedules in detail, I conclude that the wording of the Schedules, for the most part, is clear and unambiguous as to the nature of wares and services associated with each trade-mark. It is not difficult to see where Canada Post"s claim lies. Canada Post need not provide particulars because Epost already has them.
Definition of "Large" Number of Trade-Marks
[24] I now proceed to deal with the Epost"s request for clarification of the term "large" as used in relation to the number of trade-marks owned by Canada Post. Counsel for Epost argues that a range of marks Canada Post seeks to protect is overly broad.
[25] When there is a line of marks used, a plaintiff may rely on "a family of marks that give the plaintiff a very broad range of trade-marks and services": see Everex Systems, Inc. v. Everdata Computer Inc. (1992), 44 CPR (3d) 175. Mr. Justice Teitelbaum in Everex agreed with Madam Justice Reed in Kabushiki Kaisha Edwin v. S.D.B. Design Group Inc. (1986), 9 CPR (3d) 465 at page 469 as to the proposition that "where there is a family of marks, there is greater likelihood that the public would consider another word in the family as another product manufactured by the same person who produced the wares in association with the family of marks" (Everex at page 183) and, on that footing, allowed the plaintiff in that case to seek protection based on a broad range or a "family" of marks.
[26] As pointed out by the counsel for Canada Post in the present case, Epost is entitled in its defence to deny all or any allegations in respect of those marks claimed. It would be unreasonable to compel Canada Post to truncate its case before trial solely on the basis that it seeks protection of "too many" marks.
Date of First Use/Filing Date and Material Date
[27] When a trade-mark applicant relies on the use of a mark as a basis of registration, it must provide the earliest date the trade-mark was used or may be deemed to be used in relation to wares and services. Such date is called the "date of first use." This can be a very contentious area in intellectual property litigation since the length of time the trade mark has been in use affects the extent of reputation and goodwill the owner of marks has accrued and it also may be determinative of existence of confusion on the part of consumers: see for example United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 CPR (3d) 247 at 260 (per Linden J.A.)
[28] Sections 4(1) and (2) of the Trade-Marks Act deems a trade-mark to be in use "in association with wares" if the mark is displayed on the wares themselves or used in the performance of the services and notice of the association is given to the transferee of the wares or in the advertising of those services, all "in the normal course of trade." Should the owners of the trade-mark rely on this "deemed-use" provision, the earliest date of the use or the date of first use must be provided in the application for registration of the said mark.
[29] Canada Post in the present instance listed in the Schedules to the Statement of Claim either the date of first use or the filing date for its trade-mark applications pending registration. The filing date, as opposed to the claimed date of first use, is obviously a date when the Plaintiff filed application for registration of its mark. In relation to trade-mark registration, both dates are used to determine the registrability of the marks. In Part I Knitting Ltd. v. Tetra Music Ltd. (1992), 43 C.P.R. (3d) 154, one of the pertinent issues before the Trade Marks Opposition Board was whether the opponent of the mark evidenced the use of the impugned mark in relation to its wares or services before the applicant"s claimed date of first use or filing date. The opponent had to show a first-use date or a filing date that was prior in time to that of the applicant.
[30] Where the opponent"s filing date is prior to the applicant"s filing date, but is subsequent to the applicant"s claimed date of first use, the opponent has the evidentiary burden to prove that the applicant"s claimed date of first use is incorrect and that it is subsequent to either the opponent"s filing date or its claimed date of first use. See In-Wear A/S v. Pret À Porter Orly Ltée (1990), 35 C.P.R. (3d) 340. (T.M.O.B.)
[31] In the present case, Canada Post provided only one date for each mark, which could be either of the filing date or the date of first use. Epost asks Canada Post to clarify whether the dates in the Schedules to the Statement of Claim are the dates of first use or the filing dates. Counsel for Epost refers to IBM v. Printech, supra, in which Mr. Justice Teitelbaum decided that a defendant, in the trade-mark litigation, is entitled to know the date of first use. Date of first use often precedes the filing date in trade-mark registration and thus it is the earliest moment in time the mark is ever used. Epost has a right to know how long each mark has been in use so it is able to properly answer the allegations of the Plaintiff.
[32] During the hearing of this motion, counsel for Canada Post agreed to provide the date of first use. Thus, rather than issuing an order for an identification of every schedule date, Canada Post is to provide the date of first use for each mark in the Schedules.
[33] Epost also asks for a clarification of the term "material date" as used in the Statement of Claim, particularly in paragraph 14:
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In addition, Canada Post has, since well before any material date, used the trade names Canada Post Corporation, Société Canadienne des Postes, Canada Post, Poste Canada, Post Office and The Post Office in association with its business. |
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Canada Post in reply defined the material date as "the date of any possible or alleged use by Epost of "CyPost" or "Epost". This is a satisfactory answer.
Electronic Message Services
[34] Epost also raises an issue as to what Canada Post means by "electronic message services." The term, according to Epost, could mean transmission of messages by a number of different means and it is therefore too broad.
[35] The relevant portions of the term are "electronic" and "message." The Living Webster Encyclopedic Dictionary provides the following definition for these terms:
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electronic, a. Relating to or using devices operating by principles of electronics electronics, n. The branch of physics that studies the behaviour and applies the effects of the flow of electrons in vacuum tubes, gases, and semiconductors. |
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message, n. An oral, written, or signalled communication sent from a person or persons to another or others, as information, advice, tidings, direction, or the like; a telegram; an official communication, as from a chief executive to a legislative body; the point or significance of an utterance, novel, play, musical work, or the like; the business, errand, or mission of a messenger; and inspired communication to be delivered to the world; as, the message a prophet; computers, a word or words taken as single unit. |
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[36] The words, whether read together or separately, are too general and overly broad. The term "electronic message services" from the outset is not clear. It does not provide a meaningful scope of or boundary for the wares and services which Epost can rely on to understand and plead to Canada Post"s case.
[37] Canada Post, in its written arguments, provides more details for one of the marks in the Schedules, OMNIPOST. The "electronic message services" in relation to that mark includes preparation, printing, transmission and delivery of electronic messages by mail, facsimile, and through direct computer to computer communications. This is much more helpful in that the description allows Epost to know which specific "electronic message services" are at issue. But Epost may well be at a loss as to how to construe and plead to "electronic message services" in other contexts.
[38] The term "electronic message services" being too broad and ambiguous, Canada Post must provide more details in case it seeks protection of any mark in association with "electronic message services" so as to enable Epost to know which services are at issue.
Scope of Reputation
[39] Epost further requests clarification of the scope of Canada Post"s reputation. All trade-mark litigation is concerned with, to some degree, the reputation and goodwill which has accrued to the owners of the marks. Quite often the question of reputation is at the core of such litigation.
[40] In this instance clarification of scope of reputation is not needed for the purpose of pleading. The scope of Canada Post"s reputation must ultimately be decided at trial: it is not to be dealt by way of motion, for that not only borders on discovery, but also would lead to an exploration of the evidence to be used at trial.
CONCLUSION
[41] Epost"s demand for particulars in respect of identification of wares and services is denied. Sufficient particulars are provided in the Schedules to the Statement of Claim. I also deny Epost"s request for clarification of Canada Post"s reputation.
[42] Canada Post shall provide the dates of first use for each mark in the Schedules. Canada Post shall also furnish particulars for any of its trade-marks that are associated with "electronic message services."
[43] Success being mixed, costs are in the cause. I thank counsel for their work.
(Sgd.) "John A. Hargrave"
Prothonotary
August 13, 1999
Vancouver, British Columbia
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-1022-99
STYLE OF CAUSE: CANADA POST CORPORATION
v.
EPOST INNOVATIONS INC.
PLACE OF HEARING: VANCOUVER
DATE OF HEARING: July 19, 1999
REASONS FOR ORDER OF MR. JOHN A. HARGRAVE, PROTHONOTARY
DATED: August 13, 1999
APPEARANCES:
| Mr. Michael Manson for Plaintiff |
| Mr. D. Lawrence Munn for Defendant |
SOLICITORS OF RECORD:
Smart & Biggar
| Vancouver, B.C. for Plaintiff |
Clark, Wilson
| Vancouver, B.C. for Defendant |
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