Date: 20030130
Docket: T-415-02
Neutral citation: 2003 FCT 107
Vancouver, British Columbia, Thursday, the 30th day of January, 2003
Present: THE HONOURABLE MR. JUSTICE BLANCHARD
BETWEEN:
BURBERRY LIMITED
Plaintiff
- and -
HOWARD COLTON, 546332 B.C. LTD.
and others unknown c.o.b. as
COLTON INTERNATIONAL and
THE HOWARD GROUP
Defendants
REASONS FOR ORDER AND ORDER
[1] This is a motion by the defendants, under Rule 51 of the Federal Court Rules, 1998, appealing the November 4, 2002 Order of Prothonotary Lafrenière which provided:
The Defendants are to provide the particulars as ordered in the Order dated April 17, 2002 and the Order dated July 9, 2002. Without limiting the generality of the Order dated April 17, 2002, the particulars are to include any transactions involving U.S. retailers.
The Amended Statement of Defence dated July 18, 2002 is hereby struck out.
The Defendants are precluded from filing any further pleadings without leave of the Court.
The Defendants shall provide the particulars within 30 days of the date of this Order, failing which the Statement of Defence shall be struck without further notice.
Costs of this motion shall be to the Plaintiff in any event of the cause.
[2] The defendants seek an order reversing the November 4, 2002 Order and costs of this motion and of the motion before the Prothonotary heard on October 21, 2002.
[3] This is a trade mark infringement case. In its statement of claim, the plaintiff claims that the defendants have dealt in imitation clothing and accessories bearing the plaintiff's registered trademarks BURBERRY and the BURBERRY CHECK, which the plaintiff alleges are of inferior quality to those of the plaintiff.
[4] The defendants deny doing so and plead, at paragraphs 6 and 7 of their statement of defence, that they had not engaged in any activities involving any goods bearing any trade marks of the plaintiff in Canada, and that consequently the Trade-Marks Act has no application. The defendants further plead, at paragraph 8 of the statement of defence, that "...any goods which these Defendants handled in any way that bore any trade-mark belonging to the Plaintiff were manufactured by or with the authorization of the Plaintiff".
[5] The plaintiff sought particulars of paragraphs 6, 7 and 8 of the defendants' statement of defence. By order dated April 17, 2002, Prothonotary Lafrenière ordered the defendants to provide particulars as follows:
(a) Particulars of what goods bearing the Plaintiff's trade mark that the Defendants have handled;
(b) Particulars of the manner in which the Defendants have handled the goods, the nature of the transaction(s) involving the goods, who the parties to such transactions have been and any modifications made to the goods; and
(c) Particulars of the origin of such goods, their manufacture with the authorization of the Plaintiff, by whom they were manufactured, and to whom and by whom they have been variously transferred so as to come into the hands of the Defendants.
[6] By further order dated July 9, 2002, Prothonotary Lafrenière found that the defendants had failed to comply with the April 17 Order. The Prothonotary wrote that "...In paragraph 8 of their Statement of Defence, the Defendants make cryptic reference to certain dealings with goods bearing the Plaintiff's trade-mark. The Defendants are therefore ill-placed to refuse to provide particulars with respect to those goods on the grounds of relevance, having themselves placed them at issue. Moreover, the Defendants cannot shield themselves from inquiry by unilaterally stating what facts are beyond the ambit of the pleadings or the jurisdiction of this Court". The Prothonotary granted a motion on behalf of the plaintiff for an order that the defendants provide the particulars as required by his April 17 Order.
[7] The defendants did not appeal the April 17 and July 9, 2002 Orders, but did file an amended statement of defence on July 19, 2002, which the defendants contend was filed as of right pursuant to Rule 200 of the Federal Court Rules, 1998. Rule 200 provides as follows:
Amendment as of right - Notwithstanding rules 75 and 76, a party may, without leave, amend any of its pleadings at any time before another party has pleaded thereto or on the filing of the written consent of the other parties.
[8] The defendants argue that they were entitled to amend paragraph 8 of their statement of defence which, they contend, was an alternative plea complying with their obligation under the Rules to plead matters that might defeat the claim or take the plaintiff by surprise if not pleaded. The defendants consequently argue that there was no legal or factual foundation for an order striking out the amended statement of defence.
[9] The defendants further argue that the Prothonotary erred in law, and proceeded on a misapprehension of the facts, in ordering that particulars be provided of transactions involving retailers in the United States.
[10] Discretionary orders of prothonotaries ought not to be disturbed on appeal unless they are wrong, in the sense that the exercise of the discretion was based upon a wrong principle or misapprehension of the facts, or they raised questions vital to the final issue of the matter, in which case the reviewing judge ought to exercise his discretion de novo. (Canada v. Aqua Gem Investments Ltd. [1993] 2 F.C. 425).
[11] The Prothonotary's November 4, 2002 Order could potentially be vital to the final issue of the case because if the defendants fail to provide the particulars that were ordered, then their statement of defence could be struck. I will therefore exercise my discretion de novo.
[12] I am satisfied that this appeal must fail. I am in substantial agreement with the written representations of the plaintiff, particularly paragraphs 6 through 13 thereof. The April 17, 2002 Order must be complied with. The U.S. transactions, referred to by the Prothonotary in the November 4, 2002 Order, are within the scope of his April 17, 2002 Order. Further, I am of the view that the Prothonotary did not err in refusing to receive the amended statement of defence and to provide that the statement of defence be struck should the defendants fail to comply with the court order. Orders to strike a pleading for failure to comply with a court order are regularly issued by this court.
[13] I am in complete agreement with the view expressed by the Prothonotary when he wrote in his November 4, 2002 Order, that "...The Defendants have consistently argued that transactions involving U.S. retailers are irrelevant and beyond the Court's jurisdiction. The Defendants' argument has been rejected, and the Defendants now appear to be evading compliance with the Court's previous order by back tracking from their initial position".
[14] In his July 9, 2002 Order, the Prothonotary found that the goods referred to in paragraph 8 of the statement of defence were relevant and subject to the plaintiff's investigation, since it was the defendants that placed them at issue in their pleadings. This finding has not been appealed and therefore must stand. The defendants cannot avoid compliance with a validly issued court order by simply amending its pleadings. Nor can the defendants invoke, in such circumstances, Rule 200 as a legal foundation to shield themselves from inquiry. The Court has the jurisdiction to manage its proceedings and consequently order measures that are appropriate in the circumstances. On the facts of this case, the Prothonotary's Order striking the amended statement of claim was appropriate.
[15] I have reviewed the written materials filed and have considered the submissions of counsel for the parties made at the teleconference hearing. I have considered the November 4, 2002 Order being appealed and find that, on the evidence, the Prothonotary was not clearly wrong in that he did not err in the exercise of his discretion based on a wrong principle of law or upon a misapprehension of the facts.
[16] In conclusion, I would have exercised my discretion in the same manner as did the
Prothonotary
[17] The appeal will therefore be dismissed.
ORDER
IT IS ORDERED that:
1. The appeal is dismissed with costs to the plaintiff in the cause.
(Sgd.) "Edmond P. Blanchard"
JUDGE
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-415-02
STYLE OF CAUSE: Burberry Limited. v. Howard Colton et al.
PLACE OF HEARING: Vancouver, B.C.
DATE OF HEARING: January 27, 2003
REASONS FOR ORDER: Blanchard J.
DATED: January 30, 2003
APPEARANCES:
Mr. Michael Charles FOR PLAINTIFF
Mr. Brian Samuels As Agent for DEFENDANT
SOLICITORS OF RECORD:
Bereskin & Parr FOR PLAINTIFF
Toronto, ON
Keiran Bridge FOR DEFENDANT
Barrister & Solicitor
Richmond, B.C.