Docket:T-290-13
Citation: 2013 FC 1051
[UNREVISED ENGLISH CERTIFIED
TRANSLATION]
Montréal,
Québec, October 18, 2013
PRESENT: Richard Morneau, Prothonotary
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BETWEEN:
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PINNACLE ESTATES INC.
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Plaintiff/Defendant by counterclaim
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and
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BEAM INC.
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and
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BEAM CANADA INC.
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Defendants/Plaintiffs by counterclaim
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and
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WHITE ROCK DISTILLERIES INC.
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Defendant
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and
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JIM BEAM BRANDS CO.
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Plaintiff by counterclaim
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REASONS
FOR ORDER AND ORDER
[1]
I have read the motion
records filed and heard counsel on a motion by various corporations (hereafter
collectively the Constellation Group) to be granted leave, under Rule 109
of the Federal Courts Rules (the Rules), to intervene, with essentially
all the rights as one of the parties, in an unfair competition action for the tort
of passing off committed by the plaintiff.
[2]
The plaintiff, the defendants/plaintiffs
by counterclaim Beam Inc. and Beam Canada Inc., and the plaintiff by
counterclaim Jim Beam Brands Co. (hereafter collectively the defendants Beam) object
to this intervention.
[3]
The defendant White
Rock Distilleries Inc. takes no position on the motion under review.
[4]
Other than the
present case before the Federal Court, the plaintiff is currently involved in
various proceedings in other fora regarding the “Pinnacle” trade-mark
(sometimes the Mark).
[5]
The following table
provides an overview of all these proceedings and the parties involved in them:
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Docket
No.
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Parties
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Proceeding
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#1
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500-17-073133-129
(Superior
Court)
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Plaintiff v
Constellation Group
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Homologation
of a transaction regarding the transfer of a right concerning the Mark
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#2
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500-17-075052-129
(Superior
Court)
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Plaintiff v
Defendants Beam
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Injunction
to prevent use of the Mark in Quebec (stayed pending a decision of the
Federal Court)
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#3
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2013 TMOB
153
(Trade-marks
Opposition Board)
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Constellation
Group v Plaintiff
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Opposition
to a registration concerning the Mark
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#4
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Present case
before Federal Court
T-290-13
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Plaintiff
v Defendants Beam and White Rock Distilleries Inc.
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Action in
passing off
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[6]
Probably because the plaintiff’s
initial statement of claim before the Federal Court contained allegations
regarding proceedings #1 and #3, above, the Constellation Group filed a motion
record to intervene in the present case on August 22, 2013.
[7]
However, on
August 29, 2013, the plaintiff amended its statement of claim by
withdrawing all of the allegations relating to proceedings #1 and #3 (the
withdrawn allegations).
[8]
The Constellation
Group maintained its motion, however, amending it to take these changes into
account.
Analysis
[9]
Rule 109 reads as
follows:
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109. (1) The Court may, on motion, grant leave to any person to intervene in
a proceeding.
(2) Notice of a motion under subsection (1) shall
(a) set out the full name and address of
the proposed intervener and of any solicitor acting for the proposed
intervener; and
(b) describe how the proposed
intervener wishes to participate in the proceeding and how that
participation will assist the determination of a factual or legal issue
related to the proceeding.
(3) In granting a motion under subsection (1), the
Court shall give directions regarding
(a) the service of documents; and
(b) the
role of the intervener, including costs, rights of appeal and any other matters
relating to the procedure to be followed by the intervener.
[Emphasis
added.]
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109. (1) La Cour peut, sur requête, autoriser toute personne à intervenir
dans une instance.
(2) L’avis d’une requête présentée pour obtenir l’autorisation
d’intervenir :
a) précise les nom et adresse de la personne qui désire intervenir et
ceux de son avocat, le cas échéant;
b) explique de quelle manière la personne désire participer à l’instance
et en quoi sa participation aidera à la prise d’une décision sur toute
question de fait et de droit se rapportant à l’instance.
(3) La Cour assortit l’autorisation d’intervenir
de directives concernant :
a) la signification de documents;
b) le rôle de l’intervenant, notamment
en ce qui concerne les dépens, les droits d’appel et toute autre question
relative à la procédure à suivre.
[Je souligne.]
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[10]
In Canadian Union
of Public Employees (Airline Division) v Canadian Airlines International Ltd,
[2000] FCJ No 220 (the CUPE decision), the Federal Court of Appeal
reiterated the relevant factors to apply when assessing any motion to
intervene, at paragraphs 8 and 9:
8 It is fair to assume that in order to grant the intervention
the motions Judge would have considered the following factors which were
advanced by both the appellants and PSAC as being relevant to her decision:
i.
Is the proposed
intervener directly affected by the outcome?
ii.
Does there exist a
justiciable issue and a veritable public interest?
iii.
Is there an apparent
lack of any other reasonable or efficient means to submit the question of the
Court?
iv.
Is the position of
the proposed intervener adequately defended by one of the parties to the case?
v.
Are the interests of
justice better served by the intervention of the proposed third party?
vi.
Can the Court hear
and decide the cause on its merits without the proposed intervener?
9 She also must have had in mind rule 109 of the Federal Court
Rules, 1998, and specifically paragraph 2 thereof which required PSAC to
show in the application before her how the proposed intervention “... will
assist the determination of a factual or legal issue related to the proceeding”.
[Footnotes omitted.]
[11]
First, it should be
noted that, even if one admitted for discussion purposes that the allegations
that were withdrawn from the initial statement of claim could be of some
interest for the ends sought by the Constellation Group, the fact remains that
these allegations no longer exist and that the Court must examine the present
dispute between the plaintiff and the defendants Beam as it stands according to
an analysis of the pleadings between these parties.
[12]
This aspect is
relevant as it is known that any intervener must take the proceeding as it
stands between the parties that are already involved. In fact, as noted in Maurice
v Canada (Minister of Indian Affairs and Northern Development) (2000), 183
FTR 45, at paragraph 11, interveners cannot, as a result of their status,
raise aspects that have not already been raised by the existing parties:
[11] It is common ground that an intervenor takes the pleadings and
record as it finds them. While an intervenor may bring new viewpoints and
special knowledge to a proceeding, the intervenor may not litigate new issues (Yale
Indian Band v. Aitchelitz Indian Band (1998), 151 F.T.R. 36 (Proth.). I am
confident that counsel for the applicant is well aware of the role that
intervenors are allowed to play, and that the applicant will not seek to expand
the parameters of the claim, which indeed, in any event, it may not do.
[13]
As pointed out by the
defendants Beam at paragraph 29 of their written submissions, the present
case before the Federal Court is limited to the following aspects:
29. The only factual and legal
issues raised by the Amended Statement of Claim are therefore whether goodwill
attaches to the Plaintiff’s DOMAINE PINNACLE & DESSIN unregistered
trade-mark, whether the Defendants have made misrepresentations to the public
through their use of the PINNACLE trade-mark in association with vodka or gin
and, in the affirmative, whether the Plaintiff has suffered damages as a
result.
[14]
The Court, like the
parties that oppose this motion, cannot see how, within a framework that solely
involves the existing parties to the case, the Constellation Group can—contrary
to and in addition to the parties already involved—concretely assist the
determination of a factual or legal issue related to the proceeding
(subsection 109(2) of the Rules).
[15]
Moreover, the
involvement of the Constellation Group in proceedings #1 and #3 (see
paragraph 5, above) is not relevant for the purposes of the present
proceeding, nor is there a risk of conflicting decisions, on the basis of the
following written submissions made by the defendants Beam at paragraphs 37
and 46:
37. Moreover, as this is an action
in passing off based on an unregistered trade-mark, it is irrelevant whether
the Plaintiff is entitled to the registration of its DOMAINE PINNACLE
& DESSIN trade-mark which is being opposed [proceeding #3] or
whether it is the owner of Canadian Trade-mark Registration No. TMA683,119
for the trade-mark PINNACLES on the basis of the alleged assignment [proceeding #1].
. . .
46. There are therefore currently
three distinct proceedings in front of three distinct tribunals for the
determination of three distinct issues. It is impossible that these tribunals
reach contradictory conclusions.
[16]
The Court therefore
concludes that the Constellation Group does not satisfy any of the factors set
out in the CUPE decision or subsection 2 of Rule 109.
[17]
More specifically,
regarding the interests of justice, the Court notes that the great majority of
the examinations for discovery have already been completed, and the scale of
the Constellation Group’s intervention may well make the case more cumbersome. It
is likely that the trial, the length of which has already been set at five (5)
days, would be extended and would have to be rescheduled for a later date if
the Constellation Group were allowed to intervene.
[18]
For these reasons,
the Constellation Group’s motion is dismissed, with costs in favour of the plaintiff
and the defendants Beam.
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