Montréal, Quebec, March 6, 2007
PRESENT: Richard Morneau, Esq., Prothonotary
BETWEEN:
ORANGE COUNTY CHOPPERS DESIGN PROPERTIES LLC
Plaintiff/
Defendant by Counterclaim
and
ORANGE COUNTY CHOPPERS INC.
and
Plaintiff by Counterclaim
REASONS FOR ORDER AND ORDER
[1] This is a motion in writing by the plaintiff and defendant by counterclaim (OCC) for the determination of a series of questions arising out of an examination for discovery held on April 11, 2006 of a Mr. Lloyd Prizant, a representative of the defendant and plaintiff by counterclaim (the defendant).
Background
[2] This motion takes place in the context of a trade-marks dispute between the parties.
[3] By statement of claim dated and served on the defendant on June 30, 2005, OCC commenced the present action seeking a declaration that the trade-mark registration number TMA 609,612 for the trade-mark ORANGE COUNTY registered by the defendant on May 6, 2004 is invalid on the grounds that the trade-mark ORANGE COUNTY was not registerable at the time it was registered by the defendant, and that the trade-mark ORANGE COUNTY is not distinctive.
[4] On July 29, 2005, the defendant filed a statement of defence and counterclaim, in which it seeks damages and a permanent injunction against OCC on the grounds that the use of the trade-mark ORANGE COUNTY CHOPPERS by OCC in association with clothing would be likely to create confusion with defendant’s trade-mark ORANGE COUNTY.
[5] On October 20, 2005, OCC filed a reply and defence to counterclaim where OCC alleged that the defendant acted in bad faith in applying to register the trade-marks ORANGE COUNTY CHOPPERS and ORANGE COUNTY CHOPPERS & Design, while these trade-marks have been used in the United States and in Canada by plaintiff for years before the defendant registered its trade-mark in Canada.
Analysis
Questions to answer and records to produce on an examination for discovery: applicable general principles
[6] In Reading & Bates Construction Co. and al. v. Baker Energy Resources Corp. and al. (1988) 24 C.P.R. (3rd) 66 at 70-72 (F.C.T.D.), Mr. Justice McNair, in a general six-point review, first defines in points 1 to 3 the parameters that determine whether a question or a document is relevant, and then, in points 4 to 6, sets out a series of circumstances or exceptions in which, on the off chance, at the end of the day, a question need not be answered or a document need not be produced.
[7] The Court states, at pages 70 to 72:
1. The test as to what documents are required to be produced is simply relevance. The test of relevance is not a matter for the exercise of the discretion. What documents parties are entitled to is a matter of law, not a matter of discretion. The principle for determining what document properly relates to the matters in issue is that it must be one which might reasonably be supposed to contain information which may directly or indirectly enable the party requiring production to advance his own case or to damage the case of his adversary, or which might fairly lead him to a train of inquiry that could have either of these consequences: Trigg v. MI Movers Int'l Transport Services Ltd. (1986), 13 C.P.C. (2d) 150 (Ont. H.C.); Canex Placer Ltd. v. A.-G. B.C. (1975), 63 D.L.R. (3d) 282, [1976] 1 W.W.R. 644 (B.C.S.C.); and Compagnie Financiere and Commerciale du Pacifique v. Peruvian Guano Co. (1882), 11 Q.B.D. 55 (C.A.).
2. On an examination for discovery prior to the commencement of a reference that has been directed, the party being examined need only answer questions directed to the actual issues raised by the reference. Conversely, questions relating to information which has already been produced and questions which are too general or ask for an opinion or are outside the scope of the reference need not be answered by a witness: Algonquin Mercantile Corp. v. Dart Industries Canada Ltd. (1984), 82 C.P.R. (2d) 36 (F.C.T.D.); affirmed 1 C.P.R. (3d) 242 (F.C.A.).
3. The propriety of any question on discovery must be determined on the basis of its relevance to the facts pleaded in the statement of claim as constituting the cause of action [...]
4. The court should not compel answers to questions which, although they might be considered relevant, are not at all likely to advance in any way the questioning party's legal position: Canex Placer Ltd. v. A.-G. B.C., supra; and Smith, Kline & French Laboratories Ltd. v. A.-G. Can. (1982), 67 C.P.R. (2d) 103 at p. 108, 29 C.P.C. 117 (F.C.T.D.).
5. Before compelling an answer to any question on an examination for discovery, the court must weigh the probability of the usefulness of the answer to the party seeking the information, with the time, trouble, expense and difficulty involved in obtaining it. Where on the one hand both the probative value and the usefulness of the answer to the examining party would appear to be, at the most, minimal and where, on the other hand, obtaining the answer would involve great difficulty and a considerable expenditure of time and effort to the party being examined, the court should not compel an answer. One must look at what is reasonable and fair under the circumstances: Smith, Kline & French Ltd. v. A.-G. Can., per Addy J. at p. 109.
6. The ambit of questions on discovery must be restricted to unadmitted allegations of fact in the pleadings, and fishing expeditions by way of a vague, far-reaching or an irrelevant line of questioning are to be discouraged: Carnation Foods Co. Ltd. v. Amfac Foods Inc. (1982), 63 C.P.R. (2d) 203 (F.C.A.); and Beloit Canada Ltee/Ltd. v. Valmet Oy (1981), 60 C.P.R. (2d) 145 (F.C.T.D.).
[8] With these principles in mind, I shall now evaluate the propriety of the questions at stake using the three categories put forth by OCC in its record.
Category 1: the bad faith of the defendant
[9] Since the defendant was unable to approach the several questions under this category as a whole, I am forced to approach the said questions more or less on an individual basis.
[10] Undertaking 14, 29, 34 and 35 go to issues that are not in dispute in this case. In addition, I do not see really how any answer under them would likely throw any light on the issue of bad faith.
[11] As to objection 14, I fail to appreciate how any answer would advance OCC position.
[12] As to questions 15, 17 and 20, I am of the opinion that said questions have been sufficiently answered by Mr. Prizant.
[13] As to questions 21, 24, 29 and 30, they shall be answered as I am of the opinion that they go and are relevant to the issue of the alleged bad faith of the defendant (see par. [5] supra).
Category 2: Document showed to Mr. Prizant by his counsel during examination.
[14] I am satisfied that this document need not be produced as I evaluate with the information provided by the defendant in its motion material that the content of said document was put together by defendant’s counsel. Therefore, said document would be privileged.
Category 3: the distinctiveness of the defendant Orange County trade-mark
[15] For the reasons provided by the Defendant at paragraphs 28 to 30 of its written representations, the undertakings under this third category need not be answered.
ORDER
Mr. Prizant shall answer questions 21, 24, 29 and 30 in writing under rule 99(3) of the Federal Courts Rules. In that regard, Mr. Prizant’s affidavit shall be served and filed on or before March 22, 2007.
OCC’s motion is otherwise dismissed. As the defendant is largely successful, costs of this motion are awarded to it.
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-1132-05
STYLE OF CAUSE: ORANGE COUNTY CHOPPERS DESIGN
PROPERTIES LLC
Plaintiff/ Defendant by Counterclaim
And
ORANGE COUNTY CHOPPERS INC.
Defendant by Counterclaim
and
TRIO SELECTION INC.
Defendant/ Plaintiff by Counterclaim
WRITTEN MOTION DECIDED IN MONTRÉAL WITHOUT APEARANCE BY PARTIES
REASONS FOR ORDER AND ORDER: PROTHONOTARY MORNEAU
Written submissions:
|
Ms. Claudette Dagenais Mr. José Bonneau
|
FOR THE APPLICANT |
|
Ms. Julie Desrosiers Mr. Hilal El Ayoubi |
FOR THE DEFENDANT |
SOLICITORS OF RECORD:
|
Dagenais Jacob Montréal, Quebec
|
FOR THE APPLICANT |
|
Fasken Martineau Dumoulin s.r.l. Montréal, Quebec
|