Date: 20001211
Docket: T-2221-98
OTTAWA, ONTARIO, FRIDAY, THE 11TH DAY OF DECEMBER, 2000
PRESENT: THE HONOURABLE EDMOND P. BLANCHARD
BETWEEN:
ROLLS-ROYCE plc, ROLLS-ROYCE AND BENTLEY MOTOR CARS LIMITED,
and BENTLEY MOTORS LIMITED
Plaintiff
- and -
IAN D. FITZWILLIAMS, ROLLS-ROYCE LIMITED, ROLLS-ROYCE MOTOR CARS LIMITED, and BENTLEY MOTORS LIMITED
Defendants
REASONS FOR ORDER AND ORDER
[1] The plaintiffs, Rolls-Royce plc, Rolls-Royce and Bentley Motor Cars Limited, and Bentley Motors Limited, hereinafter Rolls-Royce plc, have brought a motion pursuant to Rules 3, 75, 76, 200, 201, 373 and 374 of the Federal Court Rules, 1998, R.S.C. 1998, SOR/98-106; Section 7(a) of the Trade-marks Act, R.S.C. 1985, C. t-13, as amended; Sections 36 and 52 of the Competition Act, R.S.C. 1985, C.c-34, for an order :
1) granting the plaintiff leave to file an amendment statement of claim in the within proceeding.
2) that the defendant, Ian D. Fitzwilliam, acting in any capacity or any persons acting under his instructions be restrained, until final disposition of a motion for interlocutory relief to be brought at a date to be specified, from:
(a) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy regarding the threatened commencement of legal proceedings against the plaintiff herein, any corporations related thereto, and any officers, employees, agents or licencees thereof;
(b) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy regarding allegations of fraud or other malfeasance on the part of the plaintiff herein, any corporations related thereto, and any officers, employees, agents or licencees thereof;
(c) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy under or in association with corporate names, trade names or domain names including the words ROLLS-ROYCE or BENTLEY or otherwise containing assertions which would imply that the originator of the communication owns any rights in the ROLLS-ROYCE or BENTLEY trade-marks, any corporations related thereto, and any officers, employees, agents or licencees thereof;
(d) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy under or in association with corporate names, trade names or domain names including the words ROLLS-ROYCE or BENTLEY or otherwise containing assertions which would imply an association between the originator of the communication and the owners of the ROLLS-ROYCE or BENTLEY trade-marks, any corporations related thereto, and any officers, employees, agents or licencees thereof;
3) that Mr. Fitzwilliam disclose to whom he has sent any such communications and that he produce copies of all such communications sent by him, any written responses and copies of any further written conversations or notes regarding oral communications relating thereto;
FACTS
[2] On or about August 22, 2000 Mr. Fitzwilliam began a campaign of sending correspondence to third parties around the world. In a letter addressed to an unrelated third party, Toyorama, he stated:
On August 20, 2000, The Rolls Royce Motor Museum [a trading style under which Mr. Fitzwilliam operates] has assumed full and complete responsibility for the world wide protection and management of the Rolls-Royce name and trade-marks in relation to classic motor cars.[1]
[3] By Order made September 19, 2000, Madame Justice Hansen ordered that:
The Defendant Ian D.Fitzwilliam, acting in any capacity, or any person acting under his instructions be restrained, for a period of fourteen days from the date of this Order, from issuing any cease and desist letters or otherwise communicating in writing or orally, with any parties in respect of his assertions of intellectual property rights in the ROLLS-ROYCE name and trade-marks.
[4] This injunction has been continued pending the determination on the merits of a motion for an interlocutory injunction seeking that the injunction be continued as an interlocutory injunction[2].
[5] However, since the issue of the injunction, Mr. Fitzwilliam has commenced a new campaign of correspondence and threatened actual legal proceedings with the plaintiffs and related and unrelated third parties.
THE PLAINTIFFS' POSITION
[6] As for the issue of amending their statement of claim, counsel for the plaintiffs submitted that the new campaign of correspondence made by Mr. Fitzwilliam may well imply to third party recipients the false and misleading impression that factions within the Rolls-Royce "family" are warring among themselves.
[7] Counsel for the plaintiffs submitted that an amendment to a pleading should be allowed, if it can be made without injustice to the other side. Counsel are seeking to amend the style of cause to reflect a change in the name of the plaintiff Rolls-Royce and Bentley Motor Cars Limited from its former name, Rolls-Royce Motor Cars Limited. Counsel for plaintiffs is also seeking to amend the statement of claim in respect of the allegations of breach by the defendants of the paragraph 7(a) of the Trade-marks Act and of sections 36 and 52 of the Competition Act.
[8] Moreover, the plaintiffs seek an interim injunction restraining the defendant Ian D. Fitzwilliam from communicating directly or indirectly with any third parties regarding threatened commencement of legal proceedings against, or regarding allegations of fraud or other malfeasance on the part of the plaintiffs, any related corporation, and their officers, employees, agents or licensees or regarding suggestions that Mr. Fitzwilliam, under any of his various trading styles, owns any rights in the trade-marks Rolls-Royce or Bentley or is in any way associated with the owners of the Rolls-Royce or Bentley trade-marks.
ANALYSIS
A. Amending a Statement of Claim
[9] Rule 75(1) of the Federal Court Rules, 1998 states that:
| 75. (1) Subject to subsection (2) and rule 76, the Court may, on motion, at any time, allow a party to amend a document, on such terms as will protect the rights of all parties.
|
75. (1) Sous réserve du paragraphe (2) et de la règle 76, la Cour peut à tout moment, sur requête, autoriser une partie à modifier un document, aux conditions qui permettent de protéger les droits de toutes les parties. |
|
[10] Although leave is discretionary, as a general rule a proposed amendment should be allowed in the absence of prejudice to the opposing party. As stated by Décary, J.A., speaking for the Federal Court of Appeal, in Canderel Ltd. v. Canada:
(... ) the general rule is that an amendment should be allowed at any stage of an action for the purpose of determining the real questions in controversy between the parties, provided, notably, that the allowance would not result in an injustice to the other party not capable of being compensated by an award of costs and that it would serve the interests of justice.[3]
[11] Furthermore, it must be noted that on a motion to amend a pleading, a party is not expected to prove its case to the required standard of proof[4]. The Court should also assume that the facts pleaded in the amendments are true[5]. Finally, in order for the amendment to be granted,
the proposed amendments must contain proper material facts upon which the party relies[6].
[12] In the case at bar, I am satisfied that these requirements are met and that no prejudice will be suffered by the defendant. More precisely, the first amendment, to amend the style of cause to reflect a change in the name of the plaintiff Rolls-Royce and Bentley Motor Cars Limited from its former name, Rolls-Royce Motor Cars Limited is necessary following the change of name of the corporation as demonstrated by way of certificate of incorporation[7]. This amendment will not in any way, cause prejudice to the defendants.
[13] As for the second requested amendment, it will also be granted based on the general rule established by Decary J.A. in Canderel. I am satisfied that the amendment contains material facts upon which the party relies, and it must be noted that the plaintiff is not expected to prove its case to the required standard of proof[8]. The defendants will not be surprised, nor will they suffer prejudice since Mr. Fitzwilliam is well aware of the factual ground of the proposed amendments. Moreover, the defendants, have not served their Affidavit of documents and will be allowed time to amend their statement of defence, accordingly to the rules of this Court.
B. The Interim Injunction
[14] In considering whether or not to issue an interim injunction, this Court must apply the tripartite test developed by the Supreme Court of Canada[9]. In other words, the plaintiff requesting an interim injunction must satisfy a 3 stage test. In the case at bar, the plaintiff had to establish that:
(1) a serious issue be tried;
(2) irreparable harm will occur;
(3) the balance of convenience favours the grant of the stay.
1) Serious Issue to be Tried
[15] The threshold to establish if a there is a serious issue is a rather low one[10]. Based on the facts before us, upon an analysis of the record and since the plaintiffs are the legal owner of all rights in Canada in respect of the Rolls-Royce name and trade-mark[11], there is certainly a serious issue to be tried.
2) Irreparable Harm
[16] On or about August 22, 2000 Mr. Fitzwilliam began a campaign of sending correspondence to third parties around the world. In a letter addressed to an unrelated third party, Toyorama, he stated:
On August 20, 2000, The Rolls Royce Motor Museum [a trading style under which Mr. Fitzwilliam operates] has assumed full and complete responsibility for the world wide protection and management of the Rolls-Royce name and trade-marks in relation to classic motor cars.[12]
[17] Such statement should not be taken lightly. As stated by professor Dawar in his September 28th, 2000 affidavit:
(...) The number of addressees to whom Mr. Fitzwilliam sent his letters is unclear, but such letters can clearly damage a brand for several reasons.
First, the tone of cease and desist letters is threatening and can damage valuable business relationship for the rightful users of the brand, particularly if the letters were sent to authorized users of the Rolls-Royce brand, or to customers of the rightful users of the brand.
Second even if the letters were sent only to unauthorized users, and the intention and effect was positive, the assertion that "Rolls Royce Motor Museum has assumed full and complete responsibility for the world wide protection and management of the Rolls-Royce name and trade-marks in relation to classic motor cars" may have been inconsistent with the desires of the owners, and therefore caused harm that is not reparable after the fact.
(...)
The payment of monetary damage will not compensate for this kind of harm.[13]
[18] Having reviewed the written submissions of the plaintiffs and the defendant, based on the arguments presented before me and upon reviewing the affidavit of Professor Nijar Dawar, I am convinced that the plaintiffs have met the requirements of the second issue in the test developed in the RJR Macdonald decision, and I find that the plaintiffs will suffer irreparable harm.
3) Balance of Convenience
[19] As the facts demonstrate, the balance of convenience clearly favours the plaintiffs. I am satisfied that on a balance of convenience, the interim injunction will provide relief to the plaintiffs without causing great prejudice to the defendants.
[20] For these reasons, the motion brought by the plaintiffs, before me is allowed.
ORDER
THIS COURT ORDERS that:
1. the plaintiff may leave to file an Amendment Statement of Claim in the within
proceeding;
2. the defendant, Ian D. Fitzwilliam, acting in any capacity or any persons acting under his instructions be restrained, until final disposition of a motion for interlocutory relief to be brought at a date to be specified, from:
(a) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy regarding the threatened commencement of legal proceedings against the plaintiff herein, any corporations related thereto, and any officers, employees, agents or licencees thereof;
(b) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy regarding allegations of fraud or other malfeasance on the part of the plaintiff herein, any corporations related thereto, and any officers, employees, agents or licencees thereof;
(c) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy under or in association with corporate names, trade names or domain names including the words ROLLS-ROYCE or BENTLEY or otherwise containing assertions which would imply that the originator of the communication owns any rights in the ROLLS-ROYCE or BENTLEY trade-marks, any corporations related thereto, and any officers, employees, agents or licencees thereof;
(d) issuing any letters or otherwise communicating in writing or orally, with any third parties, whether as addressee or by copy under or in association with corporate names, trade names or domain names including the words ROLLS-ROYCE or BENTLEY or otherwise containing assertions which would imply an association between the originator of the communication and the owners of the ROLLS-ROYCE or BENTLEY trade-marks, any corporations related thereto, and any officers, employees, agents or licencees thereof;
3. that the defendant, Mr. Fitzwilliam, disclose to whom he has sent any such communications and that he produce copies of all such communications sent by him, any written responses and copies of any further written conversations or notes regarding oral communications relating thereto to the plaintiffs by December 29, 2000;
4. Costs in the cause.
"Edmond P. Blanchard"
Judge
[1] Plaintiffs motion record, Exhibit EE.
[2] Since the initial Order of Madame Justice Hansen, granting a 14 day interlocutory injunction, such Order was renewed on October 3, 2000 by Mr. Justice Blais; on October 17, 2000 by Mr. Justice Dubé; and on October 31, 2000 by Madam Justice Hansen.
[3] [1994] 1 F.C. 3 (F.C.A.) at p. 9.
[4] Almecon Industries Ltd. v. Anchotek Ltd. (1999), 85 C.P.R. (3d) 216 (F.C.T.D.) at p. 218.
[5] Visx Inc. v. Nidek Co. (1996), 72 C.P.R. (3d) 19 (F.C.A.) at p. 24.
[6] Ibid.
[7] Plaintiffs' motion record, December 7, 2000, Exhibit HH.
[8] Almecon Industries Ltd. v. Anchotek Ltd., supra, note 4, at p. 218.
[9] RJR-Macdonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311 at pp. 332-333.
[10] Copello v. Canada (Minister of Foreign Affairs) (1998), 152 F.T.R. 110 at 111 (T.D.).
[11] Plaintiffs' motion record, October 3, 2000, Affidavit of Ernest Frost, Exhibit 3.
[12] Plaintiffs motion record, Exhibit EE.
[13] Plaintiffs' motion record, October 3, 2000, Affidavit of Niraj Dawar, Exhibit 5, at p. 50.