Date: 20110128
Docket: A-248-10
Citation: 2011 FCA 31
CORAM: LÉTOURNEAU
J.A.
NOËL
J.A.
TRUDEL
J.A.
BETWEEN:
OSMOSE PENTOX INC.
Appellant
and
SOCIÉTÉ LAURENTIDE INC.
Respondent
REASONS FOR JUDGMENT
LÉTOURNEAU J.A.
[1]
The
appellant seeks reversal of a decision of Martineau J. of the Federal Court
(judge) who dismissed the appellant’s motion to appeal from a decision of
Prothonotary Morneau, dated November 26, 2009.
[2]
The
appellant’s motion made to the Prothonotary, which led to his November 26, 2009
decision, was to vary, pursuant to subsection 399(2) of the Federal Courts
Rules, SOR/98-106, two previous orders rendered on December 14, 2005 and
June 5, 2008.
[3]
Among
other things, the December 14, 2005 order of the Prothonotary, who was
case-managing the proceedings, put an end to the examinations for discovery as
he was satisfied that they were essentially completed. This is the part of the
order relevant to our appeal.
[4]
The June
5, 2008 order adjourned the appellant’s motion for contempt filed on February
22, 2007 until the determination of the issues of liability, namely the
validity of the trade-mark and its infringement. The order also relieved the
parties of their disclosure obligations regarding the issue of remedy until a
final determination on the issues of liability.
[5]
In support
of its motion submitted to the judge, the appellant alleged fraud on the court
by the respondent. The respondent would have obtained the court orders by way
of deceitful means.
[6]
The
appellant raises a number of grounds of appeal, but the core of the matter
giving rise to the appellant’s motion alleging fraud on the court is the
respondent’s failure to produce a letter that it sent to its customer, Rona, in
the summer of 2001 in response to a letter sent by the appellant to Rona,
informing Rona that it held a trade-mark and that the respondent’s product was
infringing the mark. At the examination for discovery of a representative of
the respondent, counsel for the respondent undertook to produce a copy of the
response letter, but never did, notwithstanding numerous attempts by counsel
for the appellant to have counsel’s undertaking enforced.
[7]
The
appellant’s lawsuit was launched in 2002 and a flood of interlocutory
proceedings followed thereafter, all revolving around the failure to comply
with the above undertaking. From the partial record that we have on this
appeal, I counted six motions by the appellant, including a motion for contempt
that is adjourned and the motion alleging fraud, as well as six appeals by the
appellant, including the present appeal.
[8]
In Osmose-Pentox
Inc. v. Société Laurentide Inc., 2007 F.C. 242, at paragraph 2, Hugessen J.
found that the parties had been engaged in an “unceasing guerilla warfare
relating to interlocutory matters” with the result that the file has never been
able to progress beyond pre-trial procedures.
[9]
On March 1, 2007,
Hugessen J. issued an order severing the issue of remedy from the issues of
infringement and validity of the mark. The determination of liability and
infringement were to be determined first.
[10]
With respect, I think
the appellant fails to understand that the respondent’s missing letter to Rona,
even if its content was assumed to be most favorable from the perspective of
the appellant, is not relevant at the first stage of the proceedings. The
determination of the validity of the registration of the appellant’s trade-mark
entails a legal determination over which the beliefs of the respondent,
whatever the self-serving or even incriminating terms in which they have been
expressed in the response letter, carry no influence. The same holds true for
the determination of the respondent’s liability should the trade-mark be found
to be valid and to have been infringed.
[11]
The judge analyzed
the appellant’s contention that the impugned orders were obtained by a fraud
which allegedly took place during the examinations for discovery held on
January 10, 2005 and May 25, 2005: see paragraph 28 of his reasons for
judgment. He also reviewed the appellant’s request to have the suspension of its
motion for contempt against the respondent lifted: ibidem, at paragraph
29.
[12]
At paragraph 31 of
his reasons for judgment, the judge ruled that he was satisfied that it had not
been demonstrated that both the issues of fraud and contempt were relevant to a
determination of an infringement by the respondent and its liability for said
infringement. I see no error in this ruling that requires or justifies our
intervention.
[13]
Finally, the
appellant asks that the judge’s order as to costs in the amount of $3,000
payable forthwith to the respondent be set aside. A cost order is
discretionary. In the case at bar, the judge refused the respondent’s request
for solicitor-client costs. However, he reviewed the Federal Courts Rules
on costs, the circumstances leading to the appeal from the Prothonotary’s
decision and provided adequate justification for his award of costs. I cannot
say that he exercised his discretionary power contrary to the law or in an
abusive or arbitrary manner.
[14]
Before concluding, I
think it is fair to say that the debate between the parties, which so far has
been going on for at least eight years, has been acrimonious. I agree with
counsel for the appellant that counsel for the respondent at one time behaved
in a manner not expected from a colleague at the bar and, from the perspective
of the judiciary, not expected from an officer of Justice. However, he is no
longer counsel of record. The parties should understand that the time has now
come to move this case to trial without further interruption.
[15]
For these reasons, I
would dismiss the appeal with costs.
“Gilles Létourneau”
“I
agree
Marc Noël J.A.”
“I agree
Johanne
Trudel J.A.”
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