Date: 19990525
Docket: T-1473-91
MONTREAL, QUEBEC, THIS 25th DAY OF MAY 1999
PRESENT: RICHARD MORNEAU, ESQ., PROTHONOTARY
Between:
REMO IMPORTS LTD.
Plaintiff
AND
JAGUAR CANADA INC.
and
JAGUAR CARS LIMITED
Defendants
REASONS FOR ORDER AND ORDER
RICHARD MORNEAU, ESQ., PROTHONOTARY:
[1] In this case, the Court has before it two motions - one brought by each party - directed to outstanding questions from the examination for discovery of the representative of the Plaintiff (the Bassal examination) as well as of the representative of the Defendants (the Shortt examination).
Background
[2] These motions take place in the following context.
[3] Remo Imports Ltd. (Remo) instituted proceedings against Jaguar Canada Inc. (Jaguar Canada) and Jaguar Cars Limited (Jaguar U.K.) for trade mark infringement, passing off as well as for the expungement of the following wares covered by Jaguar U.K.'s Canadian registration Nos. 378,644 and 378,643 for the trade marks "JAGUAR" and "JAGUAR" & design, namely driving license cases, wallet cases, business card holders, credit card holders, key cases, address books, notebooks, passport holders, beauty cases, document cases and pocket wallets (the offending wares).
[4] Remo's action is based on the alleged unlawful use in Canada of the trade mark "JAGUAR" by Jaguar U.K. and Jaguar Canada in respect of non-automobile wares, including attaché cases, sport bags and belts, in infringement of Remo's registration No. 263,924 for the trade mark "JAGUAR" covering tote bags and baggage, as well as handbags and school bags.
[5] Remo additionally seeks that the offending wares be deleted from Jaguar U.K.'s registration No. 378,643 and 378,644 for the trade marks "JAGUAR" & design and "JAGUAR" on the basis that, inter alia, Jaguar U.K. was not entitled to the registration of such trade marks in respect of the offending wares, given the existence of Remo's prior registration No. 263,924 for the trade mark "JAGUAR" for similar wares.
[6] As appears from the Statement of Claim, Remo alleges that Jaguar U.K. was not the person entitled to obtain registration Nos. 378,643 and 378,644 for the trade marks "JAGUAR" & design and "JAGUAR" for the offending wares, because such marks were confusing with Remo's trade mark "JAGUAR" previously used in Canada by Remo since at least 1981 in association with maroquinerie.
[7] In their Statement of Defence and Counterclaim, Jaguar Canada and Jaguar U.K. seek the expungement of Remo's registration No. 263,924 for the trade mark "JAGUAR" as well as the issuance of a permanent injunction restraining Remo from selling, advertising or otherwise using in Canada in association with consumer products its trade marks "JAGUAR", "JAGUAR SPORT" or any trade mark confusingly similar to the "JAGUAR" family of trade marks owned by Jaguar U.K.
[8] As appears from the Statement of Defence, it has been alleged that:
| (a) There has been extensive use of the trade mark "JAGUAR" in Canada in respect of automobiles and consumer products. |
| (b) There has been widespread promotion and advertisement by Jaguar U.K. of its "JAGUAR" family of trade marks and products in Canada. |
| (c) The "JAGUAR" family of trade marks have long been considered famous trade marks in Canada. |
| (d) Since 1981 and on a continually expanding basis thereafter, Jaguar U.K. has sold in Canada in association with one or more of the "JAGUAR" family of trade marks a full range of consumer products, including the leather products set out in Schedule C of the Statement of Defence, namely, attaché cases, briefcases, handbags, license cases, wallets, card holders, key rings, key cases, garment bags, suitcases, flight bags and other luggage. |
| (e) Remo adopted its trade mark "JAGUAR" with full knowledge of the famous "JAGUAR" family of trade marks so as to trade on the reputation of such marks. |
| (f) Remo was not the person entitled to secure registration of its trade mark "JAGUAR" because as of the date of first use, it was confusing with the "JAGUAR" family of trade marks previously used and made known in Canada by Jaguar U.K. and that Remo adopted its trade mark with knowledge of that previous use and making known. |
The Law on Questions on Discovery
[9] As stated by MacKay J. in Sydney Steel Corp. v. Omisalj (The), (1992) 2 F.C. 193, at page 197:
| (...) [T]he standard for propriety of a question asked in discovery (...) is whether the information solicited by a question may be relevant to the matters which at the discovery stage are in issue on the basis of pleadings filed by the parties. |
[10] Despite this broad statement of principle, though, there are some limits on the ambit of an examination for discovery, one of which is that far-reaching questions in the nature of a fishing expedition are to be discouraged (see Reading & Bates Construction Co. v. Baker Energy Resources Corp. (1988), 24 C.P.R. (3d) 66 (F.C.T.D.), at page 72).
The Motions at Bar
[11] At the time the parties filed their motion records, the two motions at bar covered several hundred, if not a thousand, outstanding questions. In the course of a teleconference held a few days prior to the hearing of the motions, counsel were requested to see how the outstanding questions could be reduced to a more manageable number.
[12] Counsel succeeded to a large extent. At the beginning of the hearing, they filed with the Court a written agreement dated March 15, 1999 (the Agreement) which addresses how each category of questions shall be handled by the parties.
[13] However, counsel did not agree on all points. The Agreement leaves the Court to decide three general issues and a number of outstanding questions found in schedules A4 and B4.
[14] I shall now rule on the three general issues and evaluate the propriety of the outstanding questions in schedules A4 and B4. For the completion of the discoveries, the parties shall abide by the Agreement while taking into consideration my findings regarding the general issues and the outstanding questions.
General Issues
[15] The first issue relates to the scope which should be given to paragraph 2(3) of the Agreement.
[16] At the hearing, counsel could not agree between themselves as to whether any task under 2(3) of the Agreement should apply to both parties or solely to the Defendants. Remo argued that it had already complied with the object of 2(3). In order to solve this dispute, the wording that I shall accept below will apply to both parties. However, if one party has already complied, it will not have to comply twice.
[17] The Defendants suggest that they provide all purchase orders and invoices for the first purchase and sale by the parties or the earliest which can be located of at least each class of personal accessories.
[18] However, the Plaintiff argues that this obligation on the part of the Defendants should apply to each item. The Plaintiff advances the following wording:
| all purchase orders and invoices for the first purchase and sale by the parties or the earliest which can be located with respect to each item of personal leather accessories disclosed or illustrated in the production documents of the parties. |
[19] I agree with the position of the Plaintiff on this issue. Paragraph 11 of the Statement of Defence puts into issue the extent of the Defendants' sales. Therefore, I believe it is relevant and most important for the Plaintiff to be in a position to clearly ascertain whether the items displayed in the Defendants' brochures have indeed been sold.
[20] Consequently, it is hereby ordered that, for the purpose of paragraph 2(3) of the Agreement, the wording advanced by the Plaintiff shall prevail.
[21] The second issue relates to documents to be obtained from the Defendants' dealers and the Plaintiff's retailers.
[22] I take it that a contractual relationship must exist between the Defendants and their dealers. Therefore, it can be said that some form of connection exists between them. Consequently, for the purpose of paragraph 2(c) of the Agreement, it appears reasonable to order that the Defendants will be obliged to call upon each of the Jaguar dealers in Canada to produce representative invoices of their sales of personal leather accessories for the years 1981 to the present. Should any of the dealers fail to comply, the Defendants shall state so in an affidavit to be filed by them.
[23] I do not consider in this case that the probative value which may be offered by the documents sought would be outweighed by the time and expense in obtaining them. However, I believe that this would be the case if the Plaintiff were requested to seek the same information from its retailers. Indeed, the Defendants have eighteen dealers in total, whereas the Plaintiff appears to have over a thousand retailers. In addition, for all intents and purposes, the Plaintiff's retailers would be third parties in regard to the Plaintiff without any contractual relationship with it.
[24] The third issue pertains to paragraph 2(e) of the Agreement. There, in order to rebut the Defendants' allegation that "JAGUAR" is a famous trade mark, Remo would like the Defendants to seek circulation figures of third party books, magazines and other media.
[25] These third parties, however, are not controlled by the Defendants; no "connection" exists. In addition, the Defendants have already produced seven (7) volumes of articles and books. To request more from the Defendants in this regard would not be fair and reasonable from my point of view. Consequently, Remo's request under paragraph 2(e) of the Agreement is denied.
[26] Having disposed of the general issues, I can now turn to the individual questions in Schedules A4 and B4.
Schedule A4 Questions
[27] This schedule concerns questions objected to during the Shortt examination.
[28] In this schedule, the questions have been divided into four (4) categories. I shall deal with each category in turn.
Category A
[29] Question 581, the sole question in this category, shall be answered. At the hearing, counsel for the Plaintiff agreed to serve amended particulars in order to properly raise the three additional registrations that are the subject of the question. However, I do not think that the Defendants shall be allowed to ask questions on these three registrations since they were referred to in the Plaintiff's affidavit of documents and the Defendants did not see fit to ask questions about them during the Bassal examination.
Category B
[30] I am of the view that the questions in this category shall be answered provided that a confidentiality order is requested and obtained from this Court. These questions seek information on whether some leather products were in fact sold in Canada by the Defendants. The information requested is therefore relevant.
Category C
[31] As agreed at the hearing, question 599, the sole question in this category, shall be answered in accordance with paragraph 6 of the Agreement.
Category D
[32] In this category, the questions have been divided into four subcategories.
[33] In subcategory entitled "Part C", the questions shall be answered as agreed by counsel for the Defendants.
[34] As for subcategory entitled "Part E", the Defendants shall indicate to the Plaintiff what constitutes the Defendants' alleged "natural area of expansion".
[35] Regarding subcategory "Part I", questions 1441 and 1472 shall be answered subject to a claim of privilege to be determined later on. As to questions 1462 and 1463, these shall be dealt with in accordance with paragraph 2 of the Agreement.
[36] As for question 2910 in subcategory entitled "Supply", I am of the view that it is relevant and that it shall be answered under a confidentiality order, provided one is granted.
Schedule B4 Questions
[37] Schedule B4 had been broken down into several categories and, at the hearing, the contents of each category were further modified by counsel for the Defendants.
Category 3
[38] Considering that the Defendants know who the Directors and officers of the Plaintiff have been at all relevant times, question 1837 on the Plaintiff's shareholders need not be answered.
Category 6
[39] Questions 622, 1671 N and 16710 need not be answered on the grounds of irrelevancy since I fail to see how the names of Remo's buying agents would likely throw any light on any relevant issues including the quality of the products.
[40] Questions 1475B, 1498, 1550, 1555, 1557, 1617 and 1798 all deal with Remo's suppliers. Contrary to the conclusion reached concerning the buying agents, the suppliers may have information on the quality of the products. Therefore, said questions shall be answered provided Remo has the information.
Category 7
[41] I shall not attempt to list hereunder all questions which have been grouped in this category. However, I am satisfied that for all the questions dealing with samples of items, Remo shall abide by the following obligation:
| Remo shall make available, at Jaguar's expense, a sample of each class of personal accessory items which it sells, beyond the samples already produced at discovery or any specific style of leather products which the Defendants identifies, provided a sample of such product is within the possession of Remo. |
| Photographs of any of these items may be made by Jaguar counsel. |
Category 13
[42] As to questions 1078-1081, 1082, 1085-1087, 1229, 2036, 2280, 2281, 2291, 2301, 2309, 2310 and 1251, I am satisfied that Remo shall abide by the following obligation:
| From its representative invoices Remo will provide Jaguar with a general classification of the different type of retail outlet to which it sells its Jaguar line of products and with the name and address of a contact person for each type of retail outlet. |
[43] As to questions 1671Y and 1091 to 1094, the parties agreed that Remo shall abide by the following obligation:
| Based on the wholesale prices set out in its representative invoices, Remo will provide to Jaguar an indication of the general/average mark up of its retail customers. |
[44] As to the other questions included in this category, my understanding is that they shall all be answered in accordance with paragraph B1 of the Agreement.
Category 17
[45] As agreed at the hearing, Remo shall answer this question as soon as the Defendants have answered the question in subcategory "Part E" of category D (see paragraph 34 supra).
Category 18
[46] I agree that the question put in this category is speculative and hypothetical. In addition, the information to be elicited in category 17 shall be sufficient to clarify any query as to Remo's natural area of expansion.
Category 19
[47] Question 462 is irrelevant and need not be answered.
[48] Question 733 asks for opinions and need not be answered.
Category 21
[49] It was agreed at the hearing that the question in this category shall be dealt with in accordance with paragraph B1 of the Agreement.
Category 24
[50] I agree that by virtue of the pleadings, the quality of the Defendants' cars is an issue, and therefore question 2004 shall be answered.
Category 27
[51] It was agreed at the hearing that the question in this category shall be dealt with in accordance with paragraph B1 of the Agreement.
Timing
[52] All answers shall be provided in writing within ninety (90) days of the date of this order.
[53] Re-attendance for the continuation of the discoveries shall be at the parties' own expense within sixty (60) days after expiry of the deadline for providing written answers.
Costs
[54] As success is divided on these motions, costs shall be in the cause.
Richard Morneau
Prothonotary
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.:
STYLE OF CAUSE:
T-1473-91
REMO IMPORTS LTD.
Plaintiff
AND
JAGUAR CANADA INC.
and
JAGUAR CARS LIMITED
Defendants
PLACE OF HEARING:Montreal, Quebec
DATE OF HEARING:March 16 and 17, 1999
REASONS FOR ORDER BY RICHARD MORNEAU, ESQ., PROTHONOTARY
DATE OF REASONS FOR ORDER:May 25, 1999
APPEARANCES:
| Mr. Richard Uditsky |
for the Plaintiff |
| Mr. J. Douglas Wilson |
for the Defendants |
SOLICITORS OF RECORD:
| Mendelsohn Rosentzveig Shacter Mr. Richard Uditsky Montreal, Quebec |
for the Plaintiff |
| Lang Michener Mr. J. Douglas Wilson Toronto, Ontario |
for the Defendants |