Date: 20010717
Docket: T-406-98
Neutral citation: 2001 FCT 804
BETWEEN:
AWARENESS CORPORATION
Plaintiff
AND
THE ENRICH CORPORATION
and
ENRICH INTERNATIONAL INDUSTRIES LTD.
Defendants
RICHARD MORNEAU, ESQ., PROTHONOTARY
[1] This is a motion by the Plaintiff directed to outstanding questions from the examination for discovery of the representatives of the Defendants.
[2] This motion takes place in the context of a claim of unfair competition under sections 7(b) and 7(c) of the Trade-marks Act.
[3] The Plaintiff, Awareness Corporation Inc. (hereinafter referred to as "Awareness"), alleges that it has been using the trade mark CLEAR in association with natural herbal food supplements since as early as March 1992.
[4] The Defendant Enrich Corporation (hereinafter referred to as "Enrich") alleges that it is the owner of Canadian trade mark registration No. TMA456,325 for the trade mark CLEAR BALANCE BUILD, which is used in association with food combinations for assisting in weight loss.
[5] The Defendant Enrich Corporation alleges also that it is the owner of Canadian trade mark registration No. TMA480,631 for the trade mark CLEARSTART, which is used in association with dietary food supplements.
[6] Plaintiff Awareness claims that Enrich's use of the trade marks CLEARSTART, CLEARPACK and CLEAR BALANCE BUILD in association with natural herbal food combination products which are destined to nutritionally and naturally support the human body's natural mechanisms for dealing with toxins, constitutes unfair competition and dilution of Awareness's CLEAR trade mark.
The Law on Questions on Discovery
[7] 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. |
(...)[L]e critère relatif au bien-fondé d'une question posée dans le cadre d'un interrogatoire préalable (...) est de savoir si les renseignements sollicités par une question peuvent être pertinents aux points qui, au stade de l'interrogatoire préalable, sont litigieux dans les actes de procédure déposés par les parties. |
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[8] 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).
[9] With this in mind, I shall now evaluate the propriety of the questions and documents requested.
[10] Questions 751 and 761 shall at this juncture receive an answer. Their ultimate relevancy is something for the judge on the merits to appreciate. Questions 799 and 144 must also be answered.
[11] Questions 146 need not be answered. Plaintiff has not justified why it needs to know precisely the day when Enrich U.S.A. started in business.
[12] Question 412 calls for a statement of a legal opinion and need not be answered.
[13] Question 425 calls for an opinion on a mixed question of fact and law. It need not be answered.
[14] Question 598 deals with an irrelevant issue and, therefore, need not be answered.
[15] Question 601 has been withdrawn.
[16] Questions 756, 758 and 759 shall be answered since strictly speaking these questions do not deal with information which is protected by client-solicitor privilege. As to question 757, it shall be answered but no privileged documentation shall be furnished.
[17] Questions 838 and 839 need not be answered by Mrs. Menser since they call for the expression of an opinion. It shall be sufficient that they be answered in the way expressed by counsel for the Defendants in his written submissions against the motion at bar.
[18] Insofar as additional financial information is warranted, the Defendants shall serve on the Plaintiff, within twenty (20) days of the date of the Order accompanying these Reasons, a copy of their catalogue discussed in Court in order to assist the Plaintiff in determining all "clear" related products. Additionally, within the same time frame, the Defendants shall serve on the Plaintiff an affidavit indicating what is included in the costs figures (stated under Tab C of the Defendants' Responding Motion Record) in terms of direct and indirect costs.
[19] The Plaintiff's motion is otherwise dismissed. Since success is divided on this motion, costs will be in the case.
Richard Morneau
Prothonotary
Montreal, Quebec
July 17, 2001
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.:
STYLE OF CAUSE:
T-406-98
AWARENESS CORPORATION
Plaintiff
AND
THE ENRICH CORPORATION
and
ENRICH INTERNATIONAL INDUSTRIES LTD.
Defendants
PLACE OF HEARING:Montreal, Quebec
DATE OF HEARING:July 9, 2001
REASONS FOR ORDER BY RICHARD MORNEAU, ESQ., PROTHONOTARY
DATE OF REASONS FOR ORDER:July 17, 2001
APPEARANCES:
| Mr. Philippe Leroux |
for the Plaintiff |
|
| Mr. James T. Beamish |
for the Defendants |
|
SOLICITORS OF RECORD:
| Brouillette Charpentier Fortin Montreal, Quebec |
for the Plaintiff |
|
| Miller Thomson Toronto, Ontario |
for the Defendants |
|