Date: 20070306
Docket: T-1132-05
Citation: 2007
FC 257
Montréal, Quebec,
March 6, 2007
PRESENT: Richard Morneau, Esq., Prothonotary
BETWEEN:
ORANGE COUNTY CHOPPERS DESIGN PROPERTIES
LLC
Plaintiff/
Defendant by Counterclaim
and
ORANGE COUNTY CHOPPERS INC.
Defendant by Counterclaim
and
TRIO
SELECTION INC.
Defendant/
Plaintiff by Counterclaim
REASONS
FOR ORDER AND ORDER
[1]
This is a
motion in writing by the plaintiff and defendant by counterclaim (OCC) for the
determination of a series of questions arising out of an examination for
discovery held on April 11, 2006 of a Mr. Lloyd Prizant, a representative of
the defendant and plaintiff by counterclaim (the defendant).
Background
[2]
This
motion takes place in the context of a trade-marks dispute between the parties.
[3]
By
statement of claim dated and served on the defendant on June 30, 2005, OCC
commenced the present action seeking a declaration that the trade-mark
registration number TMA 609,612 for the trade-mark ORANGE COUNTY registered by
the defendant on May 6, 2004 is invalid on the grounds that the trade-mark
ORANGE COUNTY was not registerable at the time it was registered by the
defendant, and that the trade-mark ORANGE COUNTY is not distinctive.
[4]
On July
29, 2005, the defendant filed a statement of defence and counterclaim, in which
it seeks damages and a permanent injunction against OCC on the grounds that the
use of the trade-mark ORANGE COUNTY CHOPPERS by OCC in association with
clothing would be likely to create confusion with defendant’s trade-mark ORANGE COUNTY.
[5]
On October
20, 2005, OCC filed a reply and defence to counterclaim where OCC alleged that
the defendant acted in bad faith in applying to register the trade-marks ORANGE
COUNTY CHOPPERS and ORANGE COUNTY CHOPPERS & Design, while these
trade-marks have been used in the United States and in Canada by plaintiff for
years before the defendant registered its trade-mark in Canada.
Analysis
Questions to answer and
records to produce on an examination for discovery: applicable general
principles
[6]
In Reading &
Bates Construction Co. and al. v. Baker Energy Resources Corp. and al.
(1988) 24 C.P.R. (3rd) 66 at
70-72 (F.C.T.D.), Mr. Justice McNair, in a general six-point review, first
defines in points 1 to 3 the parameters that determine whether a question or a
document is relevant, and then, in points 4 to 6, sets out a series of
circumstances or exceptions in which, on the off chance, at the end of the day,
a question need not be answered or a document need not be produced.
[7]
The Court states, at
pages 70 to 72:
1. The test as to what documents are required to be produced
is simply relevance. The test of relevance is not a matter for the exercise of
the discretion. What documents parties are entitled to is a matter of law, not
a matter of discretion. The principle for determining what document properly
relates to the matters in issue is that it must be one which might reasonably
be supposed to contain information which may directly or indirectly enable the
party requiring production to advance his own case or to damage the case of his
adversary, or which might fairly lead him to a train of inquiry that could have
either of these consequences: Trigg v. MI Movers Int'l Transport Services Ltd. (1986), 13 C.P.C. (2d) 150 (Ont. H.C.); Canex Placer Ltd. v. A.-G. B.C. (1975), 63 D.L.R. (3d) 282, [1976] 1 W.W.R. 644 (B.C.S.C.); and Compagnie Financiere and Commerciale du Pacifique
v. Peruvian Guano Co. (1882), 11 Q.B.D. 55 (C.A.).
2. On an examination for discovery prior to the commencement
of a reference that has been directed, the party being examined need only
answer questions directed to the actual issues raised by the reference.
Conversely, questions relating to information which has already been produced
and questions which are too general or ask for an opinion or are outside the
scope of the reference need not be answered by a witness: Algonquin Mercantile
Corp. v. Dart Industries Canada Ltd. (1984), 82 C.P.R. (2d) 36
(F.C.T.D.); affirmed 1 C.P.R. (3d) 242
(F.C.A.).
3. The propriety of any question on discovery must be
determined on the basis of its relevance to the facts pleaded in the statement
of claim as constituting the cause of action [...]
4. The court should not compel answers to questions which,
although they might be considered relevant, are not at all likely to advance in
any way the questioning party's legal position: Canex Placer Ltd. v. A.-G.
B.C., supra; and Smith, Kline & French Laboratories Ltd. v. A.-G. Can.
(1982), 67 C.P.R. (2d) 103 at
p. 108, 29 C.P.C. 117
(F.C.T.D.).
5. Before compelling an answer to any question on an
examination for discovery, the court must weigh the probability of the
usefulness of the answer to the party seeking the information, with the time,
trouble, expense and difficulty involved in obtaining it. Where on the one hand
both the probative value and the usefulness of the answer to the examining
party would appear to be, at the most, minimal and where, on the other hand,
obtaining the answer would involve great difficulty and a considerable
expenditure of time and effort to the party being examined, the court should
not compel an answer. One must look at what is reasonable and fair under the
circumstances: Smith, Kline & French Ltd. v. A.-G. Can., per Addy J. at p.
109.
6. The ambit of questions on discovery must be restricted to
unadmitted allegations of fact in the pleadings, and fishing expeditions by way
of a vague, far-reaching or an irrelevant line of questioning are to be
discouraged: Carnation Foods Co. Ltd. v. Amfac Foods Inc. (1982), 63 C.P.R. (2d) 203
(F.C.A.); and Beloit Canada Ltee/Ltd. v. Valmet Oy (1981), 60 C.P.R. (2d) 145
(F.C.T.D.).
[8]
With these principles in mind, I shall now evaluate the
propriety of the questions at stake using the three categories put forth by OCC
in its record.
Category 1: the bad faith of the
defendant
[9]
Since the defendant
was unable to approach the several questions under this category as a whole, I
am forced to approach the said questions more or less on an individual basis.
[10]
Undertaking 14, 29,
34 and 35 go to issues that are not in dispute in this case. In addition, I do
not see really how any answer under them would likely throw any light on the
issue of bad faith.
[11]
As to objection 14, I
fail to appreciate how any answer would advance OCC position.
[12]
As to questions 15,
17 and 20, I am of the opinion that said questions have been sufficiently
answered by Mr. Prizant.
[13]
As to questions 21,
24, 29 and 30, they shall be answered as I am of the opinion that they go and
are relevant to the issue of the alleged bad faith of the defendant (see par. [5]
supra).
Category 2: Document showed to Mr.
Prizant by his counsel during examination.
[14]
I am satisfied that
this document need not be produced as I evaluate with the information provided
by the defendant in its motion material that the content of said document was put
together by defendant’s counsel. Therefore, said document would be privileged.
Category 3: the distinctiveness of the
defendant Orange County
trade-mark
[15]
For the reasons
provided by the Defendant at paragraphs 28 to 30 of its written
representations, the undertakings under this third category need not be
answered.
ORDER
Mr.
Prizant shall answer questions 21, 24, 29 and 30 in writing under rule 99(3) of
the Federal Courts Rules. In that regard, Mr. Prizant’s affidavit shall
be served and filed on or before March 22, 2007.
OCC’s
motion is otherwise dismissed. As the defendant is largely successful, costs
of this motion are awarded to it.
“Richard Morneau”
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