Date: 20131129
Docket: T‑290‑13
Citation: 2013 FC 1199
[UNREVISED CERTIFIED ENGLISH TRANSLATION]
Ottawa, Ontario, November 29, 2013
PRESENT: The Honourable Mr. Justice Roy
BETWEEN:
DOMAINES
PINNACLE INC.
Plaintiff/
Defendant
by counterclaim
and
BEAM
INC.
and
BEAM
CANADA INC.
Defendants/
Plaintiffs
by counterclaim
and
WHITE
ROCK DISTILLERIES, INC.
Defendant
and
JIM
BEAM BRANDS CO.
Plaintiff
by counterclaim
REASONS
FOR ORDER AND ORDER
[1]
Marques Constellation
Quebec Inc., Constellation Brands Canada Inc., Franciscan Vineyards Inc. and Constellation
Brands Inc. propose intervening in the case opposing the parties in the style
of cause. Such an intervention would require the authorization of the Court
pursuant to Rule 109 of the Federal Courts Rules, SOR/98‑106
(the Rules).
[2]
Prothonotary Morneau rendered
an order on October 18, 2013, dismissing the motion by various
corporations, collectively referred to as the “Constellation Group”, to
intervene, with essentially all the rights as one of the parties, in the action
brought by Domaines Pinnacle Inc. against the defendants Beam Inc. and Beam
Canada Inc., as well as White Rock Distilleries, Inc. The Constellation Group
is appealing this ruling under Rule 51 of the Rules.
[3]
Beam Inc., Beam Canada
Inc. and the defendant by counterclaim Jim Beam Brands Co. (hereinafter
collectively presented as “Beam”) strongly object to the intervention of the
Constellation Group, as does the defendant Domaines Pinnacle Inc. White Rock
Distilleries, Inc. did not take a position on the issue before this Court.
Since I share the prothonotary’s opinion, I must dismiss this appeal.
[4]
Many proceedings are currently
ongoing between Domaines Pinnacle Inc. and the Constellation Group.
Prothonotary Morneau referred to these in his Reasons for Order. I do not believe
it is necessary to refer to them in the present motion to intervene. It is only
necessary to know that the debates have a common denominator and all revolve
around the trademarks used by the plaintiff and the Constellation Group, in one
way or another. This is where the commonality ends.
[5]
In my opinion, the
motion to intervene under Rule 109 of the Rules must be reviewed based on
the action that was presented. That is the starting point. Paragraph 109(2)(b)
of the Rules applies, and states:
|
109. (2) Notice of a
motion under subsection (1) shall
(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.
|
109. (2) L’avis d’une requête présentée pour obtenir l’autorisation d’intervenir :
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.
|
[6]
As we will see, the
issues now before the Court are limited, and are limited to the complaint the
plaintiff is filing against the defendants’ commercial activities. This case
does not have the scope the proposed intervenors wish to grant it.
[7]
With respect, I
therefore do not believe that the proposed intervenors, the Constellation Group,
successfully explained how their participation will assist in making a
decision. In fact, all things considered, the Constellation Group is claiming
that, for its interests, its presence is required to ensure complete
instruction and settlement of the issues in question in this case. This is the
test that can be found at Rule 104 of the Rules.
[8]
But in either case,
under Rule 109 or Rule 104, the proposed intervenors must have
something to offer that could be related to the case between the parties. Here,
Domaines Pinnacle Inc. and Beam agree that the presence of Constellation Group
would not be of any assistance. I agree.
[9]
This Court must consider
the action in its amended form. In its original form, it might have been
possible to claim that the Constellation Group not only had an interest but
that its presence could have assisted the court. This is no longer the case.
[10]
The action brought by Domaines
Pinnacle Inc. has strict parameters. These parameters are determined and
limited by the findings being sought. I shall reproduce paragraphs 42, 43 and 44
of the Statement of Claim as amended on August 29, 2013:
(H) CONCLUSION
42. The
Plaintiff submits that there is confusion between the “Domaine Pinnacle” trade‑mark
and the “Pinnacle” trade‑mark;
43. The
Plaintiff submits that the Defendants actions aforesaid constitutes (sic)
unfair competition and an act of infringement of its unregistered trade‑mark
contrary to sections 7b) and 7c) of the Trade‑marks Act;
44. For
these reasons, the Plaintiff asks this Court to order the Defendants to
immediately cease to, directly or indirectly, offer for sale, market, advertise
or publicize, distribute and/or sell, any of its PINNACLE vodkas or other
alcoholic products in Canada or to otherwise infringe the Plaintiff’s trade‑mark
“Domaine Pinnacle”;
[11]
The remedies sought are
similar in nature and the plaintiff asks the defendants to “disgorge these
profits to the Plaintiff”. The case as presented is exclusively between the
parties who are fully aware of the facts and the law. This is therefore merely
a claim by a plaintiff alleging that the client volume it created because of
the trademark it has been using for a while unduly benefits a company that
wishes to commercialize a product—vodka and eventually gin—using the PINNACLE
mark. The issue is confusion, as alleged by Domaines Pinnacle Inc. between its trademark
“Domaine Pinnacle” and the one used by Beam. As expressly stated by Domaines
Pinnacle Inc. at paragraph 35 of its Amended Statement of Claim:
35. As
will be more fully described below, there is actual and likelihood of confusion
between Defendants’ “Pinnacle” branded vodkas, and Plaintiff’s “Domaine
Pinnacle” branded alcoholic products;
[12]
The issue here is the
use of the trademark by Domaines Pinnacle Inc. to develop client traffic, not
its registration. At the hearing, its burden will be to show that such traffic
was created, that the public was misled by what will be shown to be a
misrepresentation and that quantifiable damages, actual or possible, occurred.
[13]
The action presented in
this case is based on paragraphs 7(b) and 7(c) of the Trade‑marks
Act, RSC (1985), c T‑13. This has nothing to do with the
registration of the trade‑mark claimed by Domaines Pinnacle Inc. which
gives a specific privilege to the holder. In my opinion, this is a very
specific legal remedy that in no way involves the Constellation Group. The
objection of the Constellation Group before the Registrar of Trade‑marks
was dismissed on September 16, 2013, and the case was brought before this
Court. This also has nothing to do with the proceedings to approve an alleged
agreement between the plaintiff and the proposed intervenors. Domaines Pinnacle
Inc., the plaintiff, is only claiming that confusion is created by Beam and
White Rock Distilleries, Inc. when they commercialize their vodka using the
word “Pinnacle”. The trial judge shall determine whether there is such
confusion and if there is a "passing off". I shall reproduce the
provisions in question from the Trade‑mark Act for ease of
consultation:
|
7. No person shall
[…]
(b) direct public attention to his
wares, services or business in such a way as to cause or be likely to cause
confusion in Canada, at the time he commenced so to direct attention to them,
between his wares, services or business and the wares, services or business
of another;
(c) pass off other wares or
services as and for those ordered or requested;
|
7. Nul ne peut :
[…]
b) appeler
l’attention du public sur ses marchandises, ses services ou son entreprise de
manière à causer ou à vraisemblablement causer de la confusion au Canada,
lorsqu’il a commencé à y appeler ainsi l’attention, entre ses marchandises,
ses services ou son entreprise et ceux d’un autre;
c) faire
passer d’autres marchandises ou services pour ceux qui sont commandés ou
demandés;
|
[14]
The proposed
intervenors did not convince Prothonotary Morneau that they could provide
assistance to the court if they were allowed to join the debate. Such was their
burden. I am not any more persuaded. The action brought by the parties is a
targeted one that involves only the trade‑mark of Domaines Pinnacle Inc.
It is exclusively this confusion and "passing off" that is at issue.
[15]
Constellation Group’s
main focus was on paragraph 36 of the Amended Statement of Claim, which states:
36. The
Plaintiff has a common law right to the exclusive use of any brand comprising
the word “Pinnacle” in association with ciders and spirits;
[16]
In my opinion, the
parameters of the action brought can be found elsewhere than at paragraph 36.
They can be found at paragraphs 42 to 44, which I have already
reproduced. The essential elements of the claim are as I described at paragraph 12.
The plaintiff did not challenge this issue and supported the argument presented
by Beam. Therefore, the plaintiff and the defendants agree.
[17]
I therefore find the
appeal from the order rendered on October 18, 2013, by Prothonotary Morneau
must be dismissed. In my opinion, there is no doubt that the proposed
intervenors cannot assist the Court and, at any rate, they did not demonstrate
this in either their written or oral arguments, which were well presented by
their lawyers.
[18]
The parties agreed that
they may make submissions on costs in writing. I expect to receive these
arguments no later than ten days after this order and its supporting reasons
are issued.
ORDER
The motion to appeal from the order rendered by Richard
Morneau, counsel, on October 18, 2013, dismissing the motion of various
corporations to intervene, with essentially all the rights as one of the parties,
in the action brought by Domaines Pinnacle Inc. against the defendants Beam
Inc., Beam Canada Inc. and White Rock Distilleries, Inc., is dismissed.
The parties have agreed that they may make submissions
on the issue of costs in writing, within ten days after this order is issued.
Judge
Certified true
translation
Elizabeth Tan,
Translator
Email this Content