Date: 200902112
Docket: T-1847-08
Citation: 2009
FC 148
Toronto, Ontario,
February
12, 2009
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
TRUDEAU
CORPORATION 1889 INC.
Plaintiff
and
PRODUCT
SPECIALTIES INC.
Defendant
REASONS FOR ORDER AND ORDER
[1]
The Defendant
has brought a motion for production of documents referred to in the Statement
of Claim and for particulars of certain allegations made therein. As a result
of an exchange of motion records by the parties the Defendant has reduced its
request to the following as set out in paragraphs 70(1)(a) through (e) of its
Reply motion record:
a) With respect to paragraphs 4 and 5 of
the Statement of Claim which state:
“4. The Plaintiff is the owner of
Design 95,727 issued 22 October 2002. A copy of this design is attached to this
declaration as Appendix A.
5. Design 95,727 covers the shape
of a corkscrew. Figures 2 and 6 of Design 95,727 are reproduced below:”
[Figures not reproduced]
The Plaintiff is (requested) to provide
particulars of:
i.
The specific
right to which the Plaintiff claims to be entitled by virtue of its ownership
of Design 95,727; and
ii.
The specific
rights in the design 95,727 which the Plaintiff alleges the Defendant has
violated.
b) With respect to paragraphs 6 and 7 of
the Statement of Claim which state:
“6. The Plaintiff is the owner of
Design 96,073 issued 22
October 2002. A
copy of this design is attached to this declaration as Appendix B.
7. Design 96,073 covers the shape
of a corkscrew. Figures 1 and 4 of Design 96,073 are reproduced on the next
page:”
[figures not reproduced]
The Plaintiff is (requested) to provide
particulars of:
i. The specific right
to which the Plaintiff claims to be entitled by virtue of its ownership of
Design 96,073; and
ii. The specific
rights in the Design 96,073 which the Plaintiff alleges that the Defendant has
violated.
(c) with respect to paragraph 12 of the
Statement of Claim, which states:
“12. The design of the FINAL TOUCH
corkscrew is substantially identical to that protected by Design 95,727 and by
Design 96,073 and the making, sale and offer for sale of this corkscrew in Canada constitutes an infringement
of Design 95,727 and Design 96,073.”
The Plaintiff is (requested) to provide
particulars of:
i.
Each of
the features in the FINAL TOUCH corkscrew which the Plaintiff alleges is
identical or substantially identical to the design allegedly protected by
Design 95,727 by providing a written description, or, by marking these features
on a photograph of the FINAL TOUCH corkscrew; and
ii.
Each of the
features of the FINAL TOUCH corkscrew which the Plaintiff alleges is identical
or substantially identical to the design allegedly protected by Design 96,073
by providing a written description, or, by marking these features on a
photograph of the FINAL TOUCH corkscrew.
(d) With respect to paragraph 13 of the Statement
of Claim, which states:
“13. The Defendant began to market
the FINAL TOUCH corkscrew in Canada, knowing full well that the
Plaintiff was already marketing the TRULEVER corkscrew which was very popular
with consumers. It should also be noted that the Defendant identifies the FINAL
TOUCH corkscrew is the only corkscrew marketed by the Defendant with a lever on
the side. Thus the Defendant knowingly intended to imitate the visual
appearance of the TRULEVER corkscrew.”
The Plaintiff is (requested) to provide
particulars of:
i.
Whether or
not the Defendant is alleging that the substantially identical feature of the Design
95,727 and the Design 96,073 is the single lever on the side; and
ii.
If the
Defendant is alleging that the features of the Designs 95,727 and 96,073 that
the Defendant has violated is something other than “a single lever on the
side”, particulars of what these features are.
(e) With respect to paragraph 9 of the
Statement of Claim which states:
“9. The Plaintiff sells in Canada a corkscrew under the
trademark TRULEVER to which the design protected by Design 95,727 is applied
(hereinafter referred to as the “TRULEVER corkscrew”). The TRULEVER corkscrew
is marketed in more than twenty (20) countries and is one of the best known
products of the Plaintiff around the world, the appearance of which is also
protected in the United States, France, Great Britain, Germany, Spain, and
Italy, and the originality and style of which have been the subject of a number
of articles in publications that specialize in tableware or wine stewardship.”
The Plaintiff is (requested) to provide
copies of all the articles and publications referred to in this paragraph.
[2]
In support
of this motion the Defendant has filed only an affidavit of a secretary in the
law firm of its solicitors which simply exhibits correspondence between
solicitors respecting the request for particulars and a copy of a European
Patent Application. That affidavit does not state that particulars are required
or why they are needed to enable the Defendant to plead to the Statement of
Claim. No other affidavit addressing such matters has been provided by the
Defendant.
[3]
The action
is a simple one alleging that the Defendant has infringed two registered
Industrial Designs which were registered in the name of the Plaintiff as
proprietor. Copies of these designs as registered were attached to the
Statement of Claim and clearly identified in the Claim. They relate to a
corkscrew. The allegedly infringing corkscrew of the Defendant is clearly
identified in the Statement of Claim by its name, FINAL TOUCH and by
photographs. There is nothing self-evident in reviewing the Statement of Claim
that would require particulars. As previously indicated, there is no affidavit
from the Defendant or a representative stating that it cannot plead over unless
the requested particulars are provided.
[4]
The
Defendant’s solicitors have made heavy weather of this matter, citing all kinds
of law, some which may well become relevant at trial. At present we are the
pleading stage, there is no reason why the Defendant cannot plead over in the
matter as it now stands. Motions of this kind without a strong evidentiary
basis to persuade the Court that the Defendant cannot plead over are to be
discouraged. The parties are better advised to go to discovery and seek information
relevant and necessary for trial. Too much of any party’s resources and the
Court’s time and resources has, in the past, been expended on unnecessary motions
of this kind. I am fully satisfied that there is no reason why a proper Defence
cannot be filed in this matter.
[5]
The Plaintiff
is entitled to costs of this motion which I fix in the sum of $1,500.00 payable
forthwith.
ORDER
For the Reasons provided:
THIS COURT ORDERS that:
1.
The motion
is dismissed.
2.
Costs are
awarded to the Plaintiff fixed in the sum $1,500.00 payable forthwith.
“Roger T. Hughes”
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