Date: 19980915
Docket: T-1305-98
| Between : TOMMY HILFIGER LICENSING INC., |
| TOMMY HILFIGER CANADA INC. |
Plaintiffs
| And: YM INC. (SALES) |
Defendant
REASONS for ORDER and ORDER
DENAULT J:
[1] This is a motion by the plaintiffs for an order to strike out paragraphs 6(a), 6(b), 7, 8, 9 and 10 of the statement of defence or, alternatively, to provide particulars of the material facts relied upon to support the allegations contained in these paragraphs.
[2] The Court considers that this is not a case where these paragraphs of the statement of defence ought to be struck out. It will however consider whether these paragraphs in the statement of defence are bare allegations without sufficient actual basis and whether particulars need be provided.
[3] On a motion for particulars, it falls upon the applicant, here the plaintiffs, to establish that the particulars are both necessary for pleading and not within its knowledge, unless the pleadings are, on their face, inadequate or in violation of the rules (Windsurfing International Inc. v. Novaction Sports Inc.) (1988), 18 C.P.R. (3d) 230.
[4] The Court will consider together the motions for particulars with respect to paragraphs 6(a), 7 and 8 of the statement of defence.
[5] In paragraphs 6(a) and 7 of the statement of defence, the defendant pleads a lack of distinctiveness of the plaintiffs' trade-marks due to common use by third parties, or because the words used are common given names. The statement of defence lists the names of 29 brands of clothing. At the hearing, counsel for the plaintiffs was provided with 23 photographs of the designs listed in paragraph 6(a). By their motion, the plaintiffs seek more information as to where and when such designs or marks are alleged to have been used and the name and place of business of the owners of the listed brands.
[6] I am of the view that the particulars supplied by defendant provide enough information for the plaintiffs to understand the defendant's position, and to respond intelligently to the defendant's statement of defence. In Levi Strauss & Co. v. Woolworth Canada Inc. (1997), 72 C.P.R. (3d) 236 and Levi Strauss & Co. v. Roadrunner Apparel Inc., an unreported decision of Cullen J., March 6, 1997, affirmed by the Court of Appeal (76 C.P.R. (3d) 129), two cases very similar to the present instance, involving the same law firms on at least one of the cases, and where similar demands for particulars were made, the Court dismissed the demands for particulars in view of the defendants' pleas of lack of distinctiveness and acquiescence due to common use by third parties1; they were deemed by the Court to be sufficiently particularized to enable the plaintiffs to plead intelligently. In the instant case, defendant argues that a rectangular design used in combination with the colours red, white and blue, or that the alleged Tommy trade-marks are not distinctive of the garments of the plaintiffs, and, as stated above, has provided counsel for the plaintiffs with photographs of the listed brands of clothing. Being satisfied that defendant provides enough information in its statement of defence so that the plaintiffs are aware of the argument made against them, no further particulars need be provided.
[7] With respect to paragraph 8 of the statement of defence, where the defendant argues that the alleged trade-marks of the plaintiffs are not distinctive as the plaintiffs have acquiesced in and condoned the use of the trade-marks referred to in paragraphs 6(a) and 7, further particulars need not be provided since this allegation is intimately intertwined with paragraphs 6(a) and 7 which disclose sufficient information to the plaintiffs to know the argument made against them.
[8] In paragraph 6(b) of the statement of defence, the defendant pleads that Tommy Hilfiger Licensing Inc. has not exercised, under a license, direct or indirect control over the use of the trade-marks by Tommy Hilfiger Canada Inc. No one is in a better position but the plaintiffs to know the case to be met by this allegation by the defendant. No further particulars need be provided in that respect.
[9] In paragraph 9 of the statement of defence, the defendant denies that the plaintiffs have used the trade-marks registration numbers 432095 and 482283 as trade-marks since the alleged date of first use. It further alleges, with respect to these two trade-marks, that Tommy Hilfiger Licensing Inc., or any alleged predecessors, was not the person entitled to registration of said alleged trade-marks. Again, no one is in a better position but the plaintiffs to know the case they have to meet in view of the previous allegations in the statement of defence.
[10] At the hearing of the motion, counsel for the plaintiffs did not insist to know, with respect to paragraph 10 of the statement of defence, the identity and place of business of the manufacturer and supplier of the defendant; no particulars need to be provided.
[11] For the above reasons, I conclude that paragraphs 6(a), 6(b), 7, 8, 9 and 10 of the statement of defence are to remain as they are and that the defendant need not provide further particulars for those paragraphs.
[12] Accordingly, this application is dismissed with costs.
O R D E R
This application is dismissed with costs.
J.F.C.C.
__________________1 The Court was satisfied that the defendants had provided a statement of facts supporting this claim, as well as photocopies of numerous actual garments.