Date: 19990319
Docket: T-2627-94
BETWEEN:
THE BODY SHOP INTERNATIONAL PLC
Plaintiff
- and -
IMASCO RETAIL INC./LA SOCIÉTÉ DE DETAIL IMASCO INC.
and SHOPPERS DRUG MART LIMITED
Defendants
REASONS FOR ORDER
CULLEN J.:
[1] The plaintiff brings a motion seeking an order requiring the re-attendance of the defendants" corporate representative for the purpose of answering questions which he either refused to answer or took under advisement during his examination for discovery on December 4 and 5, 1997. The plaintiff also seeks the costs of this motion on the solicitor and client scale.
[2] This motion arises in the context of trademark and copyright infringement and passing off litigation, which was commenced by the plaintiff by way of statement of claim filed on November 1, 1994 and subsequently amended on November 4, 1994 and January 11, 1995. Briefly and by way of background, the plaintiff alleges that the defendants have adopted en masse thirteen of its trademarks, of which 10 are not registered. The plaintiff further alleges copyright infringement arising out of a comparative advertisement campaign conducted by the defendants.
[3] The plaintiff relies upon rule 240 of the Federal Court Rules, 1998, SOR/98-106 in support of this motion. The rule reads as follows:
| 240. A person being examined for discovery shall answer, to the best of the person's knowledge, information and belief, any question that (a) is relevant to any unadmitted allegation of fact in a pleading filed by the party being examined or by the examining party; or (b) concerns the name or address of any person, other than an expert witness, who might reasonably be expected to have knowledge relating to a matter in question in the action. |
240. La personne soumise à un interrogatoire préalable répond, au mieux de sa connaissance et de sa croyance, à toute question qui : a) soit se rapporte à un fait allégué et non admis dans un acte de procédure déposé par la partie soumise à l'interrogatoire préalable ou par la partie qui interroge; b) soit concerne le nom ou l'adresse d'une personne, autre qu'un témoin expert, dont il est raisonnable de croire qu'elle a une connaissance d'une question en litige dans l'action. |
This rule mandates a broad scope for examination for discovery, with relevance as the key or determinative factor. The defendants, in turn, rely on rule 242, which enumerates permitted objections to questions asked in an examination for discovery:
| 242. (1) A person may object to a question asked in an examination for discovery on the ground that (a) the answer is privileged; (b) the question is not relevant to any unadmitted allegation of fact in a pleading filed by the party being examined or by the examining party; (c) the question is unreasonable or unnecessary; or (d) it would be unduly onerous to require the person to make the inquiries referred to in rule 241. |
242. (1) Une personne peut soulever une objection au sujet de toute question posée lors d'un interrogatoire préalable au motif que, selon le cas : a) la réponse est protégée par un privilège de non-divulgation; b) la question ne se rapporte pas à un fait allégué et non admis dans un acte de procédure déposé par la partie soumise à l'interrogatoire ou par la partie qui l'interroge; c) la question est déraisonnable ou inutile; d) il serait trop onéreux de se renseigner auprès d'une personne visée à la règle 241. |
[4] In Hayden Manufacturing Co. v._Canplas Industries Ltd. (1998), 83 C.P.R. (3d) 19 (F.C.T.D.) Hargrave P. articulated six general principles which place reasonable bounds on the scope of discovery, gleaned from Reading & Bates Construction Co. v. Baker Energy Resources Co. (1988), 25 F.T.R. 226 (T.D.):
| 1. The documents to which parties are entitled are those which are relevant. Relevance is a matter of law, not discretion. The test to apply, in determining relevance, is whether information obtained may directly or indirectly advance one party"s case, or damage that of the other party. |
| 2. Questions which are too general, or which seek an opinion, or are outside the scope of a proceeding, need not be answered. |
| 3. Discovery is confined to matters relevant to the facts which have been pleaded, rather than to facts which a party proposes to prove and thus relevance, in the context of discovery, limits questions to those that may prove or disprove allegations of fact which have not been admitted. |
| 4. A court should not compel answers which, although perhaps relevant, are not likely to advance the party"s legal position. |
| 5. Before requiring an answer to a discovery question, the court should weigh the probability of the usefulness of the answer against the time, trouble, expense and difficulty which might be involved in obtaining it. |
| 6. Fishing expeditions undertaken through far-reaching, vague or irrelevant questions are to be discouraged. |
[5] At the outset of this motion, the plaintiff indicated that undertakings for two questions, which were outstanding at the time this motion was filed, have been satisfied by the defendants. The remaining questions in issue were grouped, at the direction of the Court, into 27 categories for the purpose of this motion.
| 1. Status of the Body Shop"questions 42, 47, and 65 |
[6] The questions under this category deal with the plaintiff"s reputation in Canada as a retailer of fragrances, cosmetics, skin care and hair care products. The words "leading" and "important player" are ambiguous and appear to be directed towards eliciting conclusions, as opposed to facts. Questions 43 through 46 show that the witness provided answers for the same question when the words "biggest seller" were used. This is sufficient.
[7] Question 65 is founded on the remedy sought, and not the facts pleaded, and is thus inappropriate. Therefore, no questions need to be answered in category 1.
2. The Body Shop"the Trademark"questions 58-59 and 60
[8] The questions in this category concern the strength of the reputation of the plaintiff"s trademark, "The Body Shop". The defendants object to these questions on much the same grounds as those advanced in category 1, viz . the words "famous" and "well known" are ambiguous and call for conclusions. They also argue that the plaintiff has not pleaded that its trademark is either famous or well known, only that it uses the mark.
[9] These questions are inappropriate in that they are directed toward eliciting legal conclusions which fall within the purview of the trial judge. Consequently, no questions in this category need to be answered.
| 3. White Musk"questions 161, 167, 168, 271, and 533 |
[10] The first question, 161, is overly broad; it asks whether the trademark "White Musk" is known in Canada. The issue is, more properly, whether the mark is known as such by consumers . Questions 167 and 168 ask whether the trademark is "famous" or "well known". As was stated above in regard to category 2, these words are ambiguous and call for conclusions. Consequently, neither questions 161, 167, nor 168 need to be answered.
[11] Question 271 seeks a sample of the scent referred to in paragraph 7(a) of the defendants" amended statement of defence (plaintiff"s motion record, volume 2, tab 6, p. 315). The pleading impugns the trademark "White Musk":
| (a) the alleged trade-mark was not registrable [sic] on January 31, 1992, its date of registration, on the basis that the alleged trade-mark was, when depicted, written or sounded, is [sic] either clearly descriptive or deceptively misdescriptive of the scent, and hence character or quality, of the wares specified in the registration. |
This question is directed at the plaintiff"s own product, and to which it has access. Thus, the question is unnecessary and does not need to be answered.
[12] Question 533 seeks an admission from the defendants that the name "White Pearl Musk" is "very similar" to the Body Shop"s trademark "White Musk". While the question as framed is rather vague in that it does not indicate the nature of the similarity sought to be established, the answer it seeks relates to confusion, which is a legal determination within the Court"s purview. Therefore, this question does not need to be answered.
| 4. Sales of White Pearl Musk"questions 547 and 548 |
[13] The plaintiff indicated that questions 521 and 849, originally included in this category, are no longer in issue.
[14] Questions 547 and 548 relate to expenses which the defendants intend to rely on at trial to reduce the amount of profit which the plaintiff may be entitled to, provided, of course, that it is successful in making out its claims. The defendants argue that while they are now on to their third set of accountants, they will provide answers when they become available. Given the length of time that has already gone by in this suit, an order will issue compelling the defendants to provide answers for questions 547 and 548 within 90 days from the date of the order.
| 5. Conception of the comparative advertising campaign"questions 558, 562, 574-575, and 1095 |
[15] The plaintiff indicated that questions 779 and 652, originally included in this category, are no longer in issue.
[16] The questions in this category seek the names of those persons involved with the comparative advertising campaign. The plaintiff argues that they are potential witnesses. Rule 240(b) prescribes that names and addresses of potential witnesses must be provided, and therefore, to that extent, that information will be provided in answer to these questions.
| 6. Production of the comparative advertising campaign materials"question 764 |
[17] The plaintiff indicated that questions 758-759, originally included in this category, are no longer in issue.
[18] Question 764 asks the defendants to make inquiries regarding a photograph of a Rialto product and a Body Shop product. Answers given to questions 747 and 749 are determinative of the issue. The witness indicated, in answering question 747, that no photographic work was done to reduce the relative size of the Body Shop product as compared to the Rialto product. In answer to question 749, the witness indicated that the products were photographed as they appeared on the shelf. Thus, question 764 does not need to be answered.
| 7. Use of the comparative advertising campaign "mobile" or "poster" in the stores"questions 625, 626, 880, and 882 |
[19] These questions require the defendants to make inquiries outside of their company about facts that existed three years ago regarding the location of a particular mobile or poster in some 700 stores which existed at that time. This request is clearly too burdensome. Moreover, the answers sought are not of such probative value to warrant the inquiries demanded. No answers need to be provided for the questions in this category.
| 8. Consumer reaction to the comparative advertising campaign"questions 640 and 641 |
[20] These questions require the defendants to make inquiries of approximately 700 stores regarding both personnel reaction and consumer reaction known to the personnel who worked at those stores. The reactions of the personnel regarding the advertising are irrelevant. The request for consumer reaction known to store personnel is too burdensome and not of such probative value as to warrant an order requiring the defendants to make such inquiries. Consequently, no answers need to be provided for the questions in this category.
| 9. Abandonment of the comparative advertising campaign"questions 874 and 875 |
[21] The plaintiff indicated that question 876, originally included in this category, is no longer in issue.
[22] Questions 874 and 875 ask whether the defendants decided the advertising campaign was "inappropriate" and "wrong." While the plaintiff appears to be probing into lawfulness, the words it chose to use are ambiguous. Thus, no questions in this category need to be answered.
| 10. Expenses of the comparative advertising campaign"question 606 |
[23] The defendants have not expressed an unwillingness to answer this question, but rather, are still engaged in the process of determining the information. Given the length of time that has already gone by in this suit, an order will issue compelling the defendants to provide answers for question 606 within 90 days from the date of the order.
| 11. Impact of the comparative advertising campaign on the defendants"Rialto business-question 659 |
[24] The plaintiff argues that the comparative advertising campaign had an effect on the entire line of Rialto products, and not merely the one depicted in the ad"s graphic. The plaintiff contends that it will be attempting to recover both direct and indirect profits, and that it is entitled to do so based on existing jurisprudence: Beloit Canada Ltd. v. Valmet Oy (1992), 45 C.P.R. (3d) 116 (F.C.A.). Issues pertaining to liability and damages have not been severed in the case at bar, and thus the plaintiff is entitled to have this information.
| 12. The Body Shop and POD design trademark"questions 188 and 189 |
[25] Question 279, originally included in this category, is no longer in issue.
[26] Questions 188 and 189 are concerned with whether the defendants admit that the POD design is a "famous" trademark of the Body Shop. This is ambiguous, and calls for a conclusion which lies within the Court"s purview. Thus, no questions need to be answered in this category.
| 13. Cocoa Butter lotion label"question 291 |
[27] The plaintiff indicated to the Court that this category is no longer in issue and, therefore, no adjudication is required.
| 14. The comparative advertising coupon book"questions 729-731 and 1040 |
[28] The plaintiff indicated to the Court that this category is no longer in issue and, therefore, no adjudication is required.
| 15. The defendants"press release (exhibit 134)"questions 1156, 1170, 1171, and 1172 |
[29] Answers provided for questions 1151-1154 render question 1156 unnecessary, and thus that question does not need to be answered.
[30] Questions 1170-1172 relate to laboratory research referred to in the press release (plaintiff"s motion record, volume 1, tab 2-D). The defendants acknowledge the relevance of the press release, and have already produced it. They object to producing the laboratory reports, however, because they concern the products" physical attributes, which are not in dispute. The plaintiff has not put in issue the products" physical attributes, and therefore, these questions do not need to be answered.
| 16. Cosmeticians information kit (exhibit 135)"questions 1231, 1232, and 1233 |
[31] These information kits were provided to the cosmeticians for educational purposes only and were not intended for consumers or as advertisements (plaintiff"s motion record, volume 1, tab 2-E). Therefore, this line of inquiry is irrelevant, as well as burdensome and unreasonable, and no questions need to be answered in this category.
| 17. Information piece distributed to cosmetic managers (exhibit 193)"question 1358 |
[32] Questions in this category refer to information that was not available or distributed to consumers (plaintiff"s motion record, volume 1, tab 2-F). Thus, this line of inquiry is irrelevant, and therefore, no questions need to be answered.
| 18. Globe and Mail article (exhibit 173)"question 1313 |
[33] This question asks the witness to gauge the reporter"s intent regarding whether or not she misrepresented the defendants" marketing strategy (plaintiff"s motion record, volume 1, tab 2-G). This question is improper and irrelevant, and need not be answered.
| 19. Legal advice for comparative advertising campaign"questions 283, 286, and 287 |
[34] The plaintiff indicated that it accepts the defendants" objection on the grounds of solicitor-client privilege, and were no longer pursuing these questions.
| 20. Rialto planigrams-questions 462 and 470 |
[35] These questions refer to the manner in which the defendants proposed to display their wares, and not how they actually did so. The proposed manner of display is clearly irrelevant and has no bearing on the question of consumer confusion or passing off. Consequently, no questions need to be answered in this category.
| 21. Comparison of Rialto Naturals products and Body Shop products"questions 814-815 and 1071 |
[36] These questions pertain to comparison of scents and ingredients between Rialto products and Body Shop products. The plaintiff has not specifically pleaded either the scents or other physical attributes of the products and, hence, these are irrelevant matters. Therefore, no questions need to be answered in this category.
| 22. Milk Bath"questions 1021-1022 |
[37] The plaintiff indicated that question 841, originally included in this category, is no longer in need of adjudication.
[38] Questions 1021-1022 are concerned with the similarity of the colour of the bag and the design of the milk container on the bag of both the plaintiff"s and the defendants" milk bath products. These questions require the witness to draw conclusions as to similarity. These are matters for the Court to decide, and consequently, these questions do not need to be answered.
| 23. Sales of Rialto Naturals products"questions 660, 661, 808, 1433, 1445, 1449, 1450, 1452, 1454, 1455, 1460, 1478, and 1500 |
[39] The questions in this category seek to elicit financial information pertaining to the defendants" sales of its entire line of Rialto products. As such, it is somewhat overreaching in its scope. Thus, only question 808 needs to be answered.
| 24. Costs of production of Rialto Naturals products"questions 538-542, 671-672, 808, 1452, and 1454 |
[40] The questions that must be answered in this category are questions 671-672 and 808, which relate to expenses which the defendants intend to rely on at trial. Accordingly, an order will issue directing the defendants to provide answers for these questions within 90 days of the date from the order.
| 25. Summaries prepared by Realmont (defendants"distributor) (exhibit 196-198)"questions 1488 and 1489 |
[41] The plaintiff indicated that questions 1363, 1365, 1369, 1373, 1438, 1491, and 1503, originally included in this category, are no longer in need of adjudication.
[42] Questions 1488 and 1489 require the defendants to produce copies of all purchase orders that stores placed for the Rialto line and for products specifically named in the suit. Question 1488 is too burdensome because its reach is beyond the disputed products. Question 1489, however, must be answered. Accordingly, an order will be issued ordering the defendants to provide an answer to question 1489 within 90 days of the date of the order.
| 26. Distribution centre"questions 1501 and 364 |
[43] The plaintiff indicated to the Court that this category is no longer in issue and, therefore, no adjudication is required.
| 27. Miscellaneous questions"questions 1068, 1525, 1588, and 1589 |
[44] The defendants have indicated that the information sought by question 1068 will be provided once it is found, and that it is still looking for the information requested by questions 1588 and 1589. Accordingly, an order will issue ordering the defendants to provide answers to questions 1068, 1588, and 1589 within 90 days of the date of the order.
[45] Question 1525 is a request for a non-blacked out version of exhibit D-205 (plaintiff"s motion record, volume 1, tab 2-I), which is a 1997 price list for Rialto products. Portions regarding products not at issue have been redacted by the defendants. These items are not relevant, and thus a "clean" copy of the price list does not have to be provided.
Conclusion
[46] An order will be issued ordering the defendants to answer, in writing, within 90 days from the date of the order, all of the questions for which an answer is required according to the reasons provided above. No order as to costs will be issued.
OTTAWA, ONTARIO
March 19, 1999. J.F.C.C.