Date: 20000106
Docket: T-1198-96
BETWEEN:
PROCTOR & GAMBLE INC. and RICHARDSON-VICKS INC.
Plaintiffs
-and-
JOHN DOE c.o.b. as CLARION TRADING INTERNATIONAL,
798117 ONTARIO LIMITED c.o.b. as
PRIVATE LIMOUSINE SERVICE,
MARIO RUFFO, SAMUEL NESTICO and MARTY USHER
Defendants
REASONS FOR ORDER
TEITELBAUM, J:
[1] This is a review motion on behalf of the plaintiffs for an Order reviewing the execution of the Order of Mr. Justice Dubé dated May 23, 1996 as against the defendant, Marty Usher (Usher). The grounds for the motion are as follows:
| 1) The Order of May 23, 1996 provides that the Order and the service of the Order is to be subject of a motion of review; |
| 2) Such a motion regarding the defendant Marty Usher was adjourned, at the request of the Defendant, sine die by the Order of the Honourable Associate Chief Justice date June 3, 1996 ("the Adjourning Order"); |
| 3) The defendant Marty Usher has not brought the review motion to be heard; and |
| 4) The Order of May 23, 1996, and the service of that Order ought to be reviewed as provided for in that Order. |
[2] The defendant Usher made a cross-motion to the Court seeking:
| 1) An Order to permanently stay the proceedings as against the defendant, Marty Usher; |
| 2) In the alternative, an Order prohibiting the plaintiffs from making any use in the action of the evidence obtained pursuant to the Order of Mr. Justice Dubé, dated May 23, 1996. |
FACTS
[3] The plaintiffs issued a Statement of Claim on May 22, 1996 alleging trade-mark infringement by the defendants.
[4] On May 23, 1996 Mr. Justice Dubé allowed an ex parte motion on behalf of the plaintiffs for an Anton Piller Order, permitting the plaintiffs to search the premises of the defendants" businesses, including that of Usher.
[5] The plaintiffs executed that Order on May 24, 1996 as against the defendants Mario Ruffo and On the Double ("OTD") and seized various products and documents for use as evidence at trial.
[6] The plaintiffs attempted to execute the Order as against the Clarion Warehouse at 5033 Main Gate Drive (pursuant to the terms of the Order) but everyone at that location left the building and did not return.
[7] The plaintiffs obtained a second Order from Mr. Justice Jerome, dated May 27, 1996, which permitted the plaintiffs to remove certain evidence from that location, that is, 5033 Main Gate Drive. They executed the second Order between May 27 and May 30, 1996.
[8] The plaintiffs executed the first Order as against Usher on May 29, 1996. The affidavit of Henry Lue (June 3, 1996) sets out the facts relating to the service and execution of this Order on Usher.
[9] The plaintiffs obtained and executed the Anton Piller Order as part of their action against the defendants for trade-mark infringement.
[10] According to the plaintiffs, the defendants have been manufacturing and selling counterfeit Procter & Gamble shampoo products, which are sold under the registered trademarks Pantene, Pantene Pro-V and Vidal Sassoon. The counterfeit products are packaged such that they are extremely difficult to distinguish from the real products, but they contain an inferior shampoo.
[11] The action was settled as against the defendants Samuel Nestico and 798117 Ontario Limited in the fall of 1996. Therefore, the action now has two active defendants: Mario Ruffo and Marty Usher.
[12] The Anton Piller Order was reviewed, according to its terms, as against Mario Ruffo by the Order of Mr. Justice Jerome, dated May 27, 1996. The review of the Anton Piller Order as against Marty Usher was adjourned sine die by the Order of Mr. Justice Jerome dated June 3, 1996 at the request of the defendant Usher to enable him to conduct a cross-examination of Wib Craig on his affidavit sworn in support of the first Order dated May 23, 1996.
[13] On June 28, 1996, Mario Ruffo filed a Statement of Defence, and Marty Usher filed a Statement of Defence on August 9, 1996.
[14] Following this, the plaintiffs brought a motion for an Order to permit certain material to be disclosed in response to a request made by the Peel Regional Police. This motion was refused by the Order of Mr. Giles A.S.P. dated August 20, 1996.
[15] A third party, Castlemore Marketing Inc., brought a motion to have certain material returned to it. This motion was heard on June 4, 1997 by Madame Justice McGillis and was granted.
[16] On September 22, 1997 I heard the motion to review the Anton Piller Order and gave my Reasons for Order on September 23, 1997. At that time, I dealt only with the issue of the ability of a different judge to review the Anton Piller Order of Mr. Justice Dubé. I found that a different judge could review the Order, I did not conduct the review hearing at that time.
[17] Following this hearing, the defendant Usher filed a cross-motion relating to this hearing. The hearing date for the review motion and the cross-motion was set for April 21, 1998.
[18] In early April 1998, counsel for the defendant Usher initiated settlement discussions with counsel for the plaintiffs. Consequently, the review motion was again adjourned, sine die. Settlement discussions between the plaintiffs and the defendant Usher then continued for several months.
[19] In November 1998, the parties were not moving ahead in their settlement negotiations and counsel for the plaintiffs attempted to set dates for examinations of the defendants.
[20] Counsel for the defendant Usher has maintained his position that no examination for discovery of his client will occur until the review motion has been heard.
[21] On March 4, 1999, Richard A.C.J., as he then was, notified the parties that more than 360 days had elapsed since the filing of the statement of claim in this action and that no requisition for a pre-trial conference had been filed. Therefore, the plaintiffs were required to show cause by written submissions why the action should not be dismissed for delay.
[22]
On April 6, 1999, the plaintiffs submitted their response to the status review and the response to the plaintiffs submissions was filed by the defendants on April 12, 1999.
[23] The plaintiffs then sought an Order that the action be continued as a specially managed proceeding pursuant to Rule 385 of the Federal Court Rules, 1998 and that a schedule be put in place to permit a pre-trial conference in this action to be held before the end of 1999.
[24] The defendant submits that this matter must first be decided before the plaintiffs" request to have the case specially managed.
[25] On May 26, 1999 Madame Justice Tremblay-Lamer ordered, after having considered the written submissions of the parties, that the review motion and the cross-motion be heard expeditiously and that the status review be held in abeyance until the Court has heard the review motion.
[26] Service of the Anton Piller Order on Usher is now under review.
AFFIDAVITS
[27] The following affidavits have been filed with the Court and are relied on by the parties in these two motions. These affidavits may be summarized as follows:
| Affidavit of Wim Craig (May 22, 1996): Wim Craig is the private investigator hired by the plaintiffs to obtain information about the suspected counterfeit operation. This affidavit details his investigation in Canada as well as the parallel investigation in the United States. It includes how he discovered the names and addresses of the various defendants, and how he tracked vehicles, shipments and sales of the counterfeit products between the various defendants. The defendant Usher and his business, Usher"s Wholesalers, are mentioned in paragraphs 30 to 32 and 45 to 46 in relation to certain sales of the counterfeit products. |
| Affidavit of Gregory Leeds (May 22, 1996): Mr. Leeds is Procter & Gamble"s Marketing Director. He attests to the value of the trademarks at issue and the harm to the plaintiffs" reputation caused by the counterfeit operation. |
| Affidavit of Michelle Wassenaar (May 27, 1996): Ms. Wassenaar is a solicitor for the plaintiffs. This affidavit relates the events on May 24, 1996 regarding the service and execution of the Anton Pillar Order at the OTD and Clarion warehouses on Mario Ruffo and various Clarion employees. She describes the various boxes of shampoo that were seized at the OTD warehouse. |
| Affidavit of Henry Lue (May 27, 1996): Mr. Lue is a solicitor for the plaintiffs. His affidavit relates the events on May 24, 1996 regarding the service and execution of the Anton Pillar Order at the Clarion warehouse, including his meeting with John Ruffo, Mario Ruffo"s brother. It also relates what Mr. Lue saw within the warehouse itself, which appears to be the manufacturing and bottling plant for the counterfeit shampoo. |
| Affidavit of Henry Lue (June 3, 1996): This affidavit relates the events between May 27 and May 30, 1996 regarding the execution of the Mr. Justice Jerome"s Order, as well as the service and execution of Mr. Justice Dubé"s Order on Usher. Attached to the affidavit as Exhibit A is a list of the items removed from the Clarion warehouse. Mr. Lue served on Usher a copy of Mr. Justice Dubé"s Order, as well as the statement of claim and a notice of motion returnable June 3, 1996. He advised the applicant that he could speak to a lawyer, which he initially declined but soon afterwards accepted. He telephoned his lawyer, who arrived some time later. In the meantime, Usher consented to a search of his warehouse, but no evidence was found. However, when Wib Craig explained to the applicant that the Order had also been served on Mario Ruffo and that evidence had been collected from OTD and Clarion, Usher "delivered up several documents, including invoices, copies of cheques, copies of cheque stubs and correspondence relating to a transaction which referred to "Red Shampoo & Conditioner V.S." and "Vidal Sassoon". Mr. Lue states that he was accompanied by several people during execution of this Order, but no more than eight at any one time. Police officers were present. |
| Affidavit of George Lammers (June 4, 1996): Mr. Lammers states that he never purchased any Vidal Sassoon shampoo from Usher and that "Mr. Usher made it clear to me that he does not wish to be involved in any purchase and sale of the products offered by Mario Ruffo..." ["3]. However, the applicant did give Mr. Lammers Mario Ruffo"s telephone number. Mr. Lammers states that Wib Craig was "extremely aggressive and belligerent" and threatened him during their conversation. |
| Affidavit of Wib Craig (July 31, 1996): This affidavit states when the Anton Pillar Order was served on the various defendants and executed, it was served on Usher on May 29, 1996. The affidavit also explains the difficulty in launching a criminal investigation, the reason for launching civil proceedings instead and the involvement of the police in the civil proceedings. Finally, it details Wib Craig"s continuing investigation into the defendant Clarion"s business activities, which he states is "completely apart from this action and the Orders granted in it" ["20]. Attached as Exhibit A to the affidavit is a set of notes taken by the affiant that he gave to the police. He states that he did not communicate any information to the police that he obtained as a result of the execution of the Anton Pillar Orders. |
| Supplementary Affidavit of Wib Craig (August 8, 1996): This affidavit responds to the affidavit of George Lammers, dated June 3, 1996. The affiant reiterates that the statements in his earlier affidavits are true, and he elaborates on several points. Some of his earlier statements regarding the applicant were made based on information from Mr. Bonduro and Mr. Scotti, other witnesses, which he believed and continues to believe are true. He states that he did not, however, rely on Mr. Lammers" references during an interview to "Marty" as the basis for including Usher in the lawsuit. Rather, he relied on the dealings between Scotti and Usher. The relationship between Usher and Mario Ruffo (the supplier of the counterfeit products) is supported by documents obtained as a result of the Anton Piller Order. Finally, the affiant defends against Mr. Lammers" statements that he was aggressive or threatened him, and states again that it was Mr. Lammers who originally contacted him and met him regarding another matter. |
| Affidavit of Michelle Wassenaar (August 15, 1996): This affidavit sets out the procedure with respect to the motion to review the Order of Mr. Justice Dubé as it applies to Usher. The motion was originally set for June 3, 1996, but was adjourned to June 4, 1996. It was then adjourned again, this time sine die, so that the solicitor for Usher could cross-examine Wib Craig on his affidavit. Ms. Wassenaar states that the solicitors for Usher served a Direction to Attend for August 9, 1996, and Wib Craig did attend on that day, but was not cross-examined. Instead, the parties agreed "to seek to have this Honourable Court determine whether the Plaintiffs may rely on the supplementary affidavit of Wib Craig and on any cross-examination of George Lammers." The solicitors for Usher have taken the position that the Adjourning Order prevents any cross-examination on the affidavit of George Lammers and prevents the plaintiffs from relying on the supplementary affidavit of Wib Craig. Ms. Wassenaar states that at the hearing of the motion there was no discussion relating to whether the Adjourning Order would preclude the cross-examination of Mr. Lammers. |
| Affidavit of Juliet Llewellyn (August 16, 1996): Ms. Llewellyn is a secretary for Usher"s solicitor. She states that the "terms of Associate Chief Justice Jerome"s Order do not mention any right of the plaintiffs to cross-examine George Lammers or to further supplement the record with new affidavit material" ["5]. |
| (George Lammers was cross-examined on November 22, 1996, and Wib Craig was cross-examined on December 12, 1996.) |
| Affidavit of Lois McPhee (January 22, 1997): Ms. McPhee is a secretary for Usher"s solicitor. The purpose of her affidavit is merely to attach (as Exhibit A) a copy of the transcript of the cross-examination of Wib Craig, taken on December 12, 1996. |
| Supplementary Affidavit of Wayne Kirby (June 3, 1997): Mr. Kirby is the president of Castlemore Marketing. His affidavit lists the items that were leased to Clarion pursuant to a lease agreement. The items appear to be items that could be used in the manufacture and bottling of shampoo. |
THE ORDER UNDER REVIEW
[28] The Anton Piller Order given by Mr. Justice Dubé on May 23, 1996 states the following:
| "Any Evidence delivered up to the Persons Serving this Order shall, subject to further directions or Order from the Court, be deposited for safe keeping with the Registry of the Court in Toronto or at any other Registry of the Court, and may be utilized solely for the purposes relating to this action or to actions in this Court or other Courts relating to the same subject matter." |
THE GROUNDS FOR THE DEFENDANT USHER"S CROSS-MOTION
[29] The defendant Usher argues that the plaintiffs improperly obtained the Anton Piller Order on an ex parte basis, granted by Mr. Justice Dubé on May 23, 1996, by intimidating witnesses and using other heavy handed and oppressive tactics.
[30] The defendant Usher further alleges that in improperly obtaining the Order of Mr. Justice Dubé and in executing the Order by searching the premises of the defendant Usher"s business and seizing numerous documents for use as evidence, the plaintiffs have abused the court process.
[31] Lastly, the defendant Usher submits that in improperly obtaining the Order of Mr. Justice Dubé and in executing that Order by searching the defendant"s premises and removing documents, the plaintiffs have violated the constitutional rights of the defendant, pursuant to sections 7 and 8 of the Canadian Charter of Rights and Freedoms.
ANALYSIS
Execution of the Order
[32] This is a motion to review the execution of the Order of Mr. Justice Dubé granted on May 23, 1996 to determine whether it was wrongly obtained or improperly executed. This review motion formed part of the Order itself.
[33] The business against whom the Order was executed was a manufacturing operation which was in the business of producing and selling shampoo and other similar products. It is alleged that the defendants were shipping this counterfeit product, using the plaintiffs registered trade-marks throughout the world from their place of business in Mississauga.
[34] The evidence indicates that the Order was first executed at the On Time Distribution warehouse or shipping warehouse. This is Usher"s place of business.
It is alleged by the plaintiffs that truckloads of counterfeit products with the plaintiffs" trademark were found at this location.
[35] The second place of execution was the Clarion manufacturing plant in Mississauga. Because there was no one at the scene, the plaintiffs went back to Court and obtained a second Order which permitted them to remove the material that was there to a safe location, where it remains today. This Order is not before the Court.
[36] The third and last location where the Order of Mr. Justice Dubé was executed was a manufacturing plant where materials for bottling shampoo were found. This is known as the Clarion location and the evidence indicates that thousands of bottles of product were discovered at this location.
[37] Going back to the first place of execution, the facts show that the plaintiffs" lawyer was present and indicated to Usher that he could also have his lawyer present if he so wished. Usher decided to call a lawyer who was present when the Order was executed against Usher. Numerous documents were delivered up at this time which contained the corporate name and address of Clarion Trading, which had not been previously available to the plaintiffs.
[38] Thus, it is not in dispute that lawyers for both parties were present throughout the execution of the Order and no objections were raised to the manner in which it was being served. The defendant Usher, in his written submission, argues that his rights were violated by the execution of the Order. This submission was not made by Usher"s counsel at the oral hearing.
[39] The plaintiffs submit that when the legal proceedings were served on the defendant, it was served in a manner and in accordance with the terms of the Order and completely safeguarded the defendant"s rights. It is further submitted that he had the opportunity to bring his own affidavit to the Court, to complain of the facts underlying the Order, or how it was granted, but he did not.
[40] The plaintiffs submit that the Order was properly granted as there was a complete factual foundation upon which it is based. It is argued that on the facts of this case, there is no evidence to indicate that the Order should be overturned, rather the only attack is a collateral attack by Mr. George Lammers that he was threatened by an investigator for the plaintiffs.
[41] The defendant submits that the evidence before Mr, Justice Dubé when the Order was granted was missing crucial facts which would have shown that this was not a proper case for an Anton Piller Order.
[42] Counsel for the defendant acknowledged that the Order was executed in accordance with its terms but that it was a highly invasive Order which was granted through the use of misleading evidence.
[43] It is further argued by the defendant that this is an appropriate case to raise Charter arguments on the basis that the plaintiffs were performing police-like conduct in a police-like manner. The defendant submits that the seizures were unreasonable in the circumstances of the case.
[44] In essence, the defendant is alleging that there was no basis upon which to grant this type of Order against him because the plaintiffs did not show any reason why they could not wait for an exchange of affidavit of documents to get the invoices and other documents they wanted, nor did they show that Usher was involved in the type of business where an Anton Piller Order was required.
The Case Law
[45] Anton Piller Orders are granted to ensure that documents and materials which are the subject of an action are safeguarded. The Orders are derived from KG v. Manufacturing Processes Ltd. ,[1976] 1 All E.R. 779 (C.A.) where the plaintiffs sought an Order to preserve documents evidencing the defendants" breach of copyright. In deciding that the Court had the jurisdiction to grant such an Order, Ormrud L.J. stated the following:
| First, there must be an extremely strong prima facie case. Secondly, the damage, potential or actual, must be very serious for the plaintiff. Thirdly, there must be clear evidence that the defendants have in their possession incriminating documents or things, and that there is a real possibility that they may destroy such material before any application inter partes can be made. |
[46] There are two forms of Anton Piller Orders: in one the identity of the defendant is known at the time the Order is granted and the other the identity of the defendant(s) is not known by the Court at the time of the hearing.
[47]
In Fila Canada Inc. v. Doe (T.D.) [1996] 3 F.C. 493 Madame Justice Reed considered an application for an Anton Piller Order against unknown defendants who were allegedly infringing the plaintiff"s intellectual property rights. Madame Justice Reed stated at page 499 of her reasons:
| ...before a court grants an Anton Piller order, it must be convinced that the applicant has a very strong prima facie case. This means, for example, that the copyright or trade mark rights which are asserted must be clearly identified (e.g. by production of the relevant registration documents, by photocopies of the relevant designs). |
| [...] The applicant"s rights to the intellectual property being asserted must also be clearly demonstrated. The application is ex parte . Counsel for the applicant has an obligation to explicitly call to the Court"s attention any weakness in those rights, of which he or she may be aware. This is a duty owed to the Court. A judge must be convinced that the applicant"s apprehension, that the counterfeit goods will not be available as evidence for trial if they are not seized, is well founded. If, for example, a representative item could be purchased by the plaintiff"s investigators and action proceeded with against the vendors, in the normal way, a case has not been made out for an Anton Piller order nor for the execution of it against a given defendant. |
[48] I find the comments of Mr. Justice Pelletier in Club Monaco Inc. v. Woody World Discounts [1999] F.C.J. No 1645 relevant to the motions before the Court. In that case, Pelletier J. considered numerous rolling Anton Piller Orders concerning unknown defendants. The Orders authorized the seizure of documents to be used in the action for trade-mark infringement. Mr. Justice Pelletier stated in paragraph 1 of his reasons:
| These orders are an extraordinary remedy and are extremely intrusive. Furthermore, they are generally sought (and issued) on a Canada wide basis. Because they are usually issued on an ex parte basis, the parties and counsel representing them owe the Court a greater degree of candour than may otherwise be the case in an adversarial system. The Court itself is bound to be very careful to infringe private rights no further than is necessary to protect the plaintiff"s valuable intellectual property. |
[49] Although this case dealt with rolling Anton Piller Orders, and Mr. Justice Pelletier made the following comments in regards to this type of Anton Piller Order, in my view they are generally applicable to the facts of this case. He stated at paragraph 7 of his reasons:
| 1) The affidavits should contain the personal knowledge of the affiant as to the nature and extent of the problem as it relates to the Plaintiff. It is, after all, the plaintiff"s valuable property which it is sought to protect. If the officers of the plaintiff are not in a position to testify from their own personal knowledge as to the nature and extent of the problem, doubts are raised as to the need for the remedy. While counsel who habitually practice in this area no doubt acquire expertise and insight into the practices of counterfeiters, the unusually heavy reliance upon information provided by counsel which one often sees in these matters creates a risk of putting counsel"s credibility in issue. This detracts from the independence which the Court is entitled to expect from counsel appearing before it. |
| 2) Certain elements of the proof put before the Court are general in nature and cannot be easily particularized, for example, the damage to the goodwill of the plaintiff from the existence of substandard counterfeit goods. This evidence can be given in the form of general statements of the plaintiff"s understanding of the effect of counterfeiting upon the value of their intellectual properties. |
| 3) Other elements of proof can and should be particularized, specifically the instances of counterfeiting known to the plaintiff which would justify the granting of an order. In general it would not be sufficient to simply say that the plaintiff is aware of counterfeiting in a given city or region. Since these orders are applied for ex parte and often in camera, there is no obvious justification for not giving the Court particulars of known instances of counterfeiting which would justify the issuance of the order sought, especially when the counterfeiting activity is taking place at some distance from the centre where the order is sought. |
| 4) In general, a number of instances of counterfeiting would be required to justify a "rolling" order for the simple reason that a specific instance would only justify a specific order. If the plaintiff wishes an order applicable to unlimited future instances, it is incumbent upon it to demonstrate that specific orders are not an appropriate remedy. The deponent"s unsupported testimony as to his or her belief that such an order is required would not usually be sufficient. |
| 5) In the same way, proof of a number of incidents of counterfeiting in Ontario would only justify an order which applied to Ontario. If a Canada wide order is sought, there should be some proof that the counterfeiting is not a local problem. This is not an insurmountable problem: an order tailored to the evidence submitted at the time of the hearing could be extended subsequently by amendment if further evidence of counterfeiting in other provinces or regions became available. |
| 6) Since it is the allegation of counterfeiting which justifies the extraordinary interference with existing property rights, the ground upon which it is believed that counterfeiting is occurring should be clearly stated. A simple assertion that the affiant believes the goods to be counterfeit is not sufficient. What observations or examinations support the affiant"s belief? In general terms, evidence upon information and belief as to this issue would not be particularly persuasive. This evidence goes to the heart of the application and should receive critical attention. |
| 7) In those cases where it is sought to renew an existing order, it is incumbent upon the plaintiff to demonstrate to the court the use which it has made of the order previously granted. An order which has not been enforced does not need to be renewed but the fact of enforcement does not, of itself, justify renewal of the order, though it may in some cases. As a courtesy to the Court, this information should be collated and summarized so as to enable the court to quickly review the plaintiff"s past experience. |
| 8) An assertion in an affidavit that the plaintiff agrees to be bound by an undertaking as to damages is not an undertaking as to damages just as a promise to agree is not an agreement. A separate undertaking as to damages, directed by the court, properly executed by corporate officers who have the authority to do so should accompany the application. |
[50] In summary, Mr. Justice Pelletier made these comments at paragraph 8 of his reasons:
| These requirements are not unduly onerous given the nature of the order sought and ought not to prove a barrier to plaintiffs whose valuable intellectual property is being appropriated without compensation. However, fairness to those whose property is seized under the authority of an order of this Court requires that their interests also receive consideration, at least to the extent of demonstrating objective need for the court"s intervention. |
[51] In a similar 1999 case, Nike Canada Ltd. v. Jane Doe [1999] F.C.J. No. 1523 Mr. Justice Pelletier questions the adequacy of the evidence submitted in support of the motion for an Anton Piller Order, stating the following at paragraph 5 of his reasons:
| My concern with respect to the evidence is that the recent affidavits (Akeson and Hunter) are general in nature and tend to speak of the belief of the deponents that counterfeiting will occur in the future, that evidence will be destroyed without the assistance of an order, and that an order is needed. In themselves, these affidavits do not establish specific instances of the need for an extraordinary remedy such as an order. |
| [....] This is not to put into question the right of the Plaintiffs to protect their valuable intellectual property. Because of the intrusive nature of an order, I wish to be satisfied that there is a present need for such an extraordinary remedy. I also wish to be satisfied that the evidence supports the geographical scope of the order, which in its draft form is Canada wide. |
[52] These principles were also affirmed by the Court in the 1999 case of Adobe Systems Inc. v. KLJ Computer Solutions Inc. (T-2725-97, April 27, 1999) where Richard A.C.J., as he then was, emphasized at paragraph 31 that in order to be granted an Anton Piller Order there must be a very strong prima facie case.
[53] Applying the reasoning of the above cited jurisprudence to the facts of this case, I find that the defendant has not produced any evidence to show that the allegations of fact which were before Mr. Justice Dubé when he granted the Order were misleading or that full disclosure was not made by counsel.
[54] The defendant bases his argument on the assertion by a third party, Mr. George Lammers, that he was threatened by a investigator working on behalf of the plaintiffs. The plaintiffs" investigator denies making any such threat to Mr. Lammers. Apart from the affidavit of Mr. Lammers, no evidence has been produced to support this assertion.
[55] It is trite law that an ex parte Order, such as the Order granted by Mr. Justice Dubé, can be set aside if full disclosure is not made at the time of the hearing: Midway Mfg. Co. v. Bernstein (1982), 76 C.P.R. (2d) 113 (F.C.T.D.). The issue before the Court is whether the Order should have been granted and whether it was properly executed.
[56] I have carefully reviewed the evidence which was before the Court when the Order was granted and I find that it was sufficient to determine that there was an urgent need for an Anton Piller Order on the basis that evidence which was central to the plaintiffs" action for trade-mark infringement would likely be destroyed. In my view, this was an appropriate case for this extraordinary remedy.
[57] With respect to the execution of the Order, there were two supervising solicitors in attendance at the locations where the Order was executed. The defendant"s solicitor did not raise any objections at that time in regards to how the Order was being served on his client.
[58] In summary, I find that the Order of Mr. Justice Dubé was valid and was properly executed. Having said that, there is no merit to the Charter argument raised by the defendant as the facts illustrate that the search and seizure guidelines articulated in the section 8 jurisprudence have clearly been met.
[59] For these reasons, the grant and execution of the Anton Piller Order of Mr. Justice Dubé on May 23, 1996 is upheld and the defendant"s cross-motion is dismissed.
[60] Costs are awarded to the plaintiffs on both motions, the motion to review and the cross-motion, but with only one hearing fee.
"Max M. Teitelbaum"
J.F.C.C.
Ottawa, Ontario
January 6, 2000