Date: 20030515
Docket: T-992-02
Citation: 2003 FCT 598
BETWEEN:
IRIS, LE GROUPE VISUEL (1990) INC.
Plaintiff/
Defendant by counterclaim
and
TRUSTUS INTERNATIONAL TRADING INC.
Defendant/
Plaintiff by counterclaim
REASONS FOR ORDER
RICHARD MORNEAU, PROTHONOTARY:
[1] This is a motion by the plaintiff under rule 75(1) of the Federal Court Rules, 1998 (the rules), in the context of an action in trade-mark infringement, to amend its statement of claim for the purposes:
(a) of adding to the proceeding Jack Wang, Devun Walsh and Rob Dow, personally and solidarily with the defendant;
(b) of seeking against the defendant and against the said Jack Wang, Devun Walsh and Rob Dow, personally and solidarily, an order for punitive damages in an amount equivalent to one million dollars each, plus a personal and solidary order for costs and out-of-court fees incurred by the plaintiff;
(c) of obtaining a declaration that the defendant is unlawfully using the trade-mark IRIS.
Analysis
[2] It is now conceded that the plaintiff may amend its statement of claim to include conclusion (c) above.
[3] To this effect, the parties, within twenty days of the order accompanying these reasons, shall submit to the Court - jointly - a schedule addressed to the steps to be taken subsequently in this proceeding. This schedule will cover the remedy sought by the defendant in the context of its motion concerning the filing of the plaintiff's affidavit of documents.
[4] However, in regard to conclusions (a) and (b) above, it seems to me that they must be refused, for the following reasons.
[5] Although the Court is very conscious that in matters of amendments in general, as in an application to strike out a proceeding, the amendment ought to be allowed unless it is clear and obvious that the amendment has no chance of success (see Raymond Cardinal et al. v. Her Majesty the Queen, unreported decision of the Appeal Division of this Court dated January 31, 1994, docket A-294-77, Heald, Décary and Linden JJ.A.), and in view of the observations made by this Court in Painblanc v. Kastner (1994), 58 C.P.R. (3d) 507 and the decisions cited therein, I am of the opinion that the allegations in the amended statement of claim as proposed by the plaintiff do not disclose sufficient essential facts to rightly engage the liability of Messrs. Wang, Walsh and Dow as defendants in their personal capacity.
[6] The plaintiff filed in support of its motion the affidavit of Ms. Laurin. There is no reference in this affidavit to the position held within Trustus International Trading Inc. by Messrs. Wang, Walsh or Dow.
[7] There is no evidence and Ms. Laurin testified that she had no personal knowledge in regard to the business plan of the defendant or of Messrs. Wang, Walsh and Dow in connection with the marketing of the Trustus International products.
[8] The salient points in Ms. Laurin's testimony are based on an article published in a magazine, and this article was filed by the defendant in its affidavit of documents.
[9] This article is essentially to the effect that the defendant had allegedly discovered a market among snowboarding enthusiasts who needed appropriate goggles.
[10] It should be noted that the defendant began marketing sport goggles on the West Coast of Canada during the 1997-98 season. During this period, the plaintiff's operations were confined to the province of Quebec.
[11] Although the magazine article reports that Mr. Wang stated that "The name took a while for us to decide because it required not only our collective consent but the name had to clear all trademark restrictions", this allegation, nor any of the other references to this article relied on by the defendant, does not in my opinion constitute a plea of sufficient physical facts to allow the inclusion of defendants in their personal capacity. The extract quoted above may very well mean that Mr. Wang and his colleagues conducted a search for available trade-marks.
[12] When all is said and done, I think that even for an amendment the plaintiff does not advance sufficient physical facts in the proposed amendments to support the proposition that Messrs. Wang, Walsh and Dow had knowledge of the plaintiff's trade-marks and had adopted a line of conduct that would appropriate the plaintiff's rights. Similarly, in terms of punitive damages, there is no sufficient allegation to the effect that Messrs. Wang, Walsh and Dow deliberately and intentionally infringed the plaintiff's rights.
[13] An order in accordance with the content of these reasons accompanies them. The costs are awarded to the defendant.
"Richard Morneau"
Prothonotary
Montréal, Quebec
May 15, 2003
Certified true translation
Suzanne Gauthier, C. Tr., LL.L.
FEDERAL COURT OF CANADA
TRIAL DIVISION
Date: 20030515
Docket: T-992-02
Between:
IRIS, LE GROUPE VISUEL (1990) INC.
Plaintiff/
Defendant by counterclaim
and
TRUSTUS INTERNATIONAL TRADING INC.
Defendant/
Plaintiff by counterclaim
REASONS FOR ORDER
FEDERAL COURT OF CANADA
TRIAL DIVISION
SOLICITORS OF RECORD
DOCKET: T-992-02
STYLE: IRIS, LE GROUPE VISUEL (1990) INC.
Plaintiff/
Defendant by counterclaim
and
TRUSTUS INTERNATIONAL TRADING INC.
Defendant/
Plaintiff by counterclaim
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: April 28, 2003
REASONS FOR ORDER OF MR. RICHARD MORNEAU, PROTHONOTARY
DATED: May 15, 2003
APPEARANCES:
Paul-André Mathieu for the plaintiff/defendant by counterclaim
Hélène D'Iorio for the defendant/plaintiff by counterclaim
SOLICITORS OF RECORD:
Mathieu et Associés
Montréal, Quebec
for the plaintiff/defendant by counterclaim
Gowling Lafleur Henderson
Montréal, Quebec
for the defendant/plaintiff by counterclaim