Date: 20000111
Docket: T-1392-99
BETWEEN:
SALTON APPLIANCES (1985) CORP.
-and-
JASCOR HOME PRODUCTS INC.
Plaintiffs
- AND -
SALTON INC.
Defendant
REASONS FOR ORDER
LEMIEUX J.:
[1] The issue in this motion made pursuant to Rule 84(2) of the Federal Court Rules, 1998, is whether the Court should grant leave to the plaintiffs to file the additional affidavit of Jerry Solomon after the defendant's affiant, Joe Cruz, had been examined on his affidavit in opposition to the plaintiffs' request for an interim and interlocutory injunction.
[2] The main proceeding between the parties is an action for trade-mark infringement; the plaintiffs assert rights to registered trade-marks "SALTON" and "MAXIM" in Canada in connection with small food related household electrical appliances. The defendant opposes the plaintiffs' action on grounds of non-use by the plaintiffs, prior use by the defendant who says he has registration for these marks in the United States.
[3] The plaintiffs' motion before the Court relates to the trade-mark MAXIM for wares described as portable electric appliances.
[4] In its written representations, the plaintiffs say the further affidavit of Jerry Solomon is required because during the cross-examination of Mr. Cruz, he stated with respect to sales of warming trays sold in Canada, the MAXIM logo appeared on the glass of the trays sold to the plaintiffs. The plaintiffs say they disagree with Mr. Cruz and wish to introduce further evidence to refute Mr. Cruz's statement that the MAXIM logo appeared on the glass of the trays sold to the plaintiffs. The plaintiffs say that Rule 84(2) allows a party who has cross-examined a deponent on an affidavit to subsequently file an affidavit with leave of the Court. The plaintiffs, in their written representations, do not refer me to decisions of this Court or other courts.
[5] As noted, the plaintiffs' request to file a supplementary affidavit is in the context of their upcoming motion for an interim and interlocutory injunction. In support of that motion, the plaintiffs filed the affidavit of Hugh A. Johnstone, President of Salton Appliances (1985) Corporation ("Salton Canada") since 1985 and Vice-President of Jascor Home Products Inc. ("Jascor") since 1987. In that affidavit, dated September 23, 1999, he stated the trade-mark MAXIM was registered in Canada based on a proposed use application filed September 23, 1988; Salton Canada has been using in Canada continuously under licence from Jascor, the MAXIM trade-mark since as early as June 26, 1996, in association with portable electric appliances, namely food choppers.
[6] The defendant filed in response several affidavits and, in particular, the affidavit of Joe Cruz dated October 29, 1999. Mr. Cruz has been the production manager since 1976 for the defendant and its predecessors for all products manufactured and sold under the trade-mark MAXIM. The thrust of his affidavit is that the defendant or its predecessors had sold into Canada for many years prior to 1990 a line of small domestic electric appliances under the trade-mark MAXIM including warming trays. He said in his affidavit that he will make available for any cross-examination and at the hearing a sample of the MAXIM electric warming tray which prominently displays the trade-mark MAXIM in the identical manner it was displayed on all such MAXIM electrical warming trays that were sold to Weil. Mr. Cruz said the trade-mark MAXIM was silk screened on the goods at the manufacturing facility and the trade-mark MAXIM was displayed on such appliances in the very same manner as it continues today. In terms of Salton Canada, Mr. Cruz said he was aware that "in around 1989, my company manufactured and sold to Salton Canada approximately 1,000 - 2,000 units of warming trays, crepe makers and brunch pans, and I am aware that the warming trays prominently displayed the trade-mark MAXIM on the goods themselves". He adds, however, that due to "corporate changes and destruction of documents outlined above, I have not been able to locate invoices or other materials concerning such extensive sales that were made of MAXIM electrical appliances to Salton Canada".
[7] The plaintiffs, in rebuttal to the Cruz affidavit, filed the reply affidavit of Hugh Johnstone dated November 10, 1999. Mr. Johnstone denied the defendant or its predecessor sold portable electric appliances under the trade-mark MAXIM in Canada; rather, the wares that were sold in Canada were sold under the trade-mark MULTICHEF through the distributorship of Weil Company Ltd. who was the owner of that trade-mark in Canada. He said none of the order forms, custom documents and invoices appended to Mr. Cruz's affidavit contains any reference to the trade-mark MAXIM. In particular, he said Mr. Cruz's affirmation the warming trays bore the MAXIM trade-mark is untrue and is contradicted by a February 25, 1991 memo by Jack Hira (an employee of the defendant) to Jerry Solomon as well as by catalogue sheets and a copy of the front panel of the carton of warming tray produced by the defendant for Salton Canada. Mr. Johnstone said the defendant removed the MAXIM logo from the glass panel of the warming trays sold to Salton Canada. The packaging which was prepared by Salton Canada and printed by the defendant bore Salton Canada's "SALTON" trade-mark and avoided any reference to the MAXIM trade-mark. The catalogue sheets of the defendant for this product bore the MAXIM logo which was intended for use in the U.S. market. The catalogue sheets of Salton Canada for this product bore the SALTON logo and was intended for use in the Canadian market.
[8] Mr. Cruz was cross-examined on his affidavit on the 30th day of November 1999.
[9] As he indicated in his affidavit, Mr. Cruz produced a food warming tray with the MAXIM logo on it and the box which contained that tray. In cross-examination, he said Mr. Hira was wrong when he said the MAXIM logo could be removed from the tray glass because the MAXIM logo was baked on the glass. Counsel for the plaintiff made the point to Mr. Cruz that Mr. Hira did not say the MAXIM logo could be removed from the glass but that the glass on the warming tray could be substituted with one without any logo on it at all to which the following exchange occurred:
| A. I never have any glasses without logo. Everything was Maxim or Multichef, no Salton logo. |
| Q .We're not saying that it was replaced by a Salton logo. The memo is quite clear, it was replaced by nothing. It was just removed. |
| A. I produce with the Maxim logo. |
[10] Jerry Solomon is President of Jascor and he has held that position since 1987. He was present when Mr. Cruz was cross-examined on November 30, 1999. His affidavit would say that Mr. Cruz's recollection was wrong when he said the warming trays sold to Salton Canada bore the MAXIM trade-mark on the glass and he and Mr. Johnstone endeavoured to locate an example of the warming trays which were purchased from the defendant and they were successful in locating two such examples. His affidavit would say that during 1991, Salton Canada purchased from the defendant approximately 1,000 warming trays and these warming trays were sold to various customers in Canada during 1991 and 1992; one of these clients was Embros Sales Limited; another was M & M Meat Shop Const. Co. Ltd. He attaches copies of invoices indicating such sales. His affidavit would say that none of the warming trays sold to Embros, M & M Meat Shops or any other customer bore a MAXIM trade-mark or trade name on the products, packaging, or instruction booklets. As evidence, he would produce as an appendix to his proposed affidavit a warming tray obtained from an employee of Embros "who I believe purchased this Hotray on or about December 10, 1991" and in confirmation of this fact would file as an appendix to his affidavit a fax transmission dated December 6, 1999, from the employee (Gierti Hermanns) which reads:
| To Whom It May Concern: |
| My name is Gierti Hermanns. I purchased this Salton Hotray (Model ET-48) at: Embros Sales Ltd., 1170 Yonge Street, Toronto, Ontario, M4W 2L9 on or about December 10, 1991. |
As a further appendix to his proposed affidavit, Mr. Solomon would file an invoice copy of a warming tray sold to M & M Meat Shops attesting this Hotray was obtained directly from M & M Meat Shops Head Office in Kitchener, Ontario. These exhibits, Jerry Solomon would say, are representative and identical to all Hotrays purchased by Salton Canada from the defendant.
DISCUSSION
[11] As background observation, I note that current Rule 84 reads:
| 84. (1) A party seeking to cross-examine the deponent of an affidavit filed in a motion or application shall not do so until the party has served on all other parties every affidavit on which the party intends to rely in the motion or application, except with the consent of all other parties or with leave of the Court. (2) A party who has cross-examined the deponent of an affidavit filed in a motion or application may not subsequently file an affidavit in that motion or application, except with the consent of all other parties or with leave of the Court. |
84. (1) Une partie ne peut contre-interroger l'auteur d'un affidavit déposé dans le cadre d'une requête ou d'une demande à moins d'avoir signifié aux autres parties chaque affidavit qu'elle entend invoquer dans le cadre de celle-ci, sauf avec le consentement des autres parties ou l'autorisation de la Cour. (2) La partie qui a contre-interrogé l'auteur d'un affidavit déposé dans le cadre d'une requête ou d'une demande ne peut par la suite déposer un affidavit dans le cadre de celle-ci, sauf avec le consentement des autres parties ou l'autorisation de la Cour. |
[12] Rule 84(2) found its place in the former Rules as Rule 332.1(6). The former Rules also contained Rule 332.1(7) (which is not contained in the current Rules) which provided that "[T]he Court may grant leave to a party to file an affidavit in a motion after the party cross-examines the deponent of an affidavit where the Court is satisfied that the party should be allowed to respond to a matter raised in the cross-examination". Current Rule 39.09(2) of the Ontario Rules of Civil Procedure is framed in terms similar to former Rule 332.1(7).
[13] I also note as background that when the new Rules came into force, Rule 312, in the context of application, now provides for additional affidavits with leave of the Court. The two new Rules 84 and 312 should, in my view, yield similar interpretations.
[14] Taking all of the factors, noted below, into account I am of the view the plaintiffs should have leave to file the further affidavit of Jerry Solomon provided that he forthwith be available for cross-examination.
[15] I am satisfied the issue of whether the defendant sold to Salton Canada warming trays with glass tops without any logo is highly relevant, is in the interest of justice and will be beneficial to the Court in determining whether an interlocutory injunction should be granted.
[16] I am satisfied Rule 84(2), read in its context and against the history of the former Rules, is designed to deal with matters that arise during cross-examination for which there is a need to address by way of further affidavit with leave of the Court.
[17] The cases decided by this Court and by the Ontario Courts recognize that relevancy of the proposed affidavit, absence of prejudice to the opposing party, assistance to the Court, and the overall interest of justice are relevant factors to be taken into account in deciding whether leave to file a further affidavit should be granted. (See Hiram Walker Consumers Home Ltd. v. Consumers Distributing Company et al., court file T-4539-80; Gingras v. Canadian Security and Intelligence Service et al. (1987), 19 C.P.R. (3d) 283; Bayer AG et al. v. Canada (Minister of Health & Welfare) et al. (1994), 83 F.T.R. 318, Eli Lilly et al. v. Apotex Inc. et al. (1997), 144 F.T.R. 189.
[18] As I view the law on the point in this Court there is the additional requirement as to the non-availability of the material in the proposed affidavit prior to cross-examination; a supplementary affidavit cannot be a substitute for putting available information to a deponent on cross-examination. A further affidavit is not designed to repair answers which cross-examining counsel wishes he did not get. Moreover, normally, parties are obliged to disclose all available information before cross-examination so as to avoid splitting the evidence.
[19] The defendant, in my view, will not be prejudiced because the motion for interlocutory injunction is to be heard only at the end of May, 2000 and there is ample opportunity for the defendant to move the Court and for the Court to act should it be in the interest of justice.
[20] Finally, I am satisfied that the plaintiffs met the test of a matter arising during cross-examination which could not reasonably be foreseen with reasonable diligence. It was only during cross-examination that Mr. Cruz identified the warming tray with the MAXIM logo sold to Weil as being identical to the warming trays sold to Salton Canada. It must also be kept in mind that Mr. Cruz had previously stated in his affidavit he did not have any backup material. In addition, it was only during cross-examination the plaintiffs learned the defendant only produced warming trays with logos. In my view, this was a new information of relevance arising during cross-examination. (See Merck Frosst Canada Inc. et al. v. Canada (Minister of Health & Welfare) et al. (1998), 229 N.R. 33 (F.C.A.).
DISPOSITION
[21] Leave to the plaintiffs to file the further affidavit of Jerry Solomon (motion record p. 1, tab 1) is granted with costs with the right of the defendant to cross-examine forthwith.
J U D G E
OTTAWA, ONTARIO
JANUARY 11, 2000