Date: 19971114
Docket: T-446-94
BETWEEN:
LEVI STRAUSS & CO.
and
LEVI STRAUSS & CO. (CANADA) INC.
Plaintiffs
AND
MANAGER CLOTHING INC.
Defendant
REASONS FOR ORDER
RICHARD MORNEAU, ESQ., PROTHONOTARY
Introduction
[1] This motion by the Plaintiffs under rule 461 of the Federal Court Rules (the rules) requires that a Nicola Cavaliere, as a representative of the Defendant corporation, reattend to answer questions and to produce documents arising out of his examination for discovery commenced on October 16 and 17, 1995.
[2] This motion takes place in the context of a trade-marks infringement action dealing essentially with jean garments bearing registered elements relating primarily to the back pocket of jeans.
[3] The outstanding questions consist of 112 questions (the number of questions outstanding at the beginning of the hearing of the motion at bar) classified in twelve categories. These categories are described in an essay which the Plaintiffs, in collaboration with the Defendant, were required to produce further to an order of this Court dated May 15, 1997.
[4] Given the large number of outstanding questions, I will attempt to adjudicate on this motion by referring to each category and avoiding where possible specific references to individual questions within each category.
[5] Before dealing with the various categories, it is necessary to have some understanding of the background and the issues at stake.
Background and Issues
[6] In their Statement of Claim, the Plaintiffs allege that the Defendant has continuously since 1990, deliberately and wilfully, directed public attention to its MANAGER brand garments in such a way as to cause confusion in Canada between the said garments and those of the Plaintiffs.
[7] In its Statement of Defence, the Defendant denies any infringement or confusion. It further asserts that it ceased any possible infringing activity on its part in previous years when requested by the Plaintiffs to stop using the pocket tab and pocket stitching designs which offended the Plaintiffs. It alleges also that there was no advantage at any given time in confusing the public since its wares are generally of a higher market category than the Plaintiffs' wares. The Defendant further argues that the Plaintiffs are not preventing the registration of numerous pocket stitching design trademarks which are allegedly far more similar to the Plaintiffs' registered trade-mark than the Defendant's trade-marks.
The Law on Questions on Discovery
[8] 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. |
[9] 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).
[10] With this in mind, I shall now evaluate the propriety of the questions and documents requested.
Category 1
[11] This category deals with advertising and promotion of the Defendant's garments. The Plaintiffs allege, rightly I must say, that the manner in which the Defendant advertises its wares may be relevant to listed surrounding circumstances in an analysis of confusion under Subsection 6(5) of the Trade-marks Act, R.S.C., 1985, c. T-13, and the allegations regarding the manner in which the Defendant directs public attention to its wares.
[12] Therefore, question A.2.16 on page 197 shall be answered. However, I believe that it is unreasonable to request the Defendant to produce its entire book of labels. Therefore, question B.2.16 need not be answered. As for the remaining questions under this category, since the Defendant has undertaken to answer them, there is no need here to compel it by order to abide by its undertakings. The same reasoning shall apply to every question undertaken to be answered by the Defendant throughout all categories, whether the undertaking had been made before or during the hearing of the motion.
[13] Similarly, all questions withdrawn by the Plaintiffs will not be referred to herein and will therefore not be adjudicated.
Category 2
[14] No adjudication is required under this category.
Category 3
[15] This category deals with the type of business in which the Defendant is generally involved.
[16] As to question A.2.16 on page 35, I am of the view that the determination of the extent of the Defendant's business in jeans is a consideration that goes beyond the scope of the issues in dispute. As a corollary, question A.2.16 on page 34 must be subjected to the same fate. Therefore, no questions need to be answered hereunder.
Category 4
[17] This category addresses the Defendant's manufacturing activity generally. Considering the existence of rule 458(1)b), considering that the Defendant would have admitted that it does not itself manufacture garments but instead uses contract manufacturers, I believe that all five questions still outstanding must be answered as I find that they relate to the identity of the Defendant's manufacturers or to specifications, cutting slips or patterns allegedly provided by the Defendant to its manufacturers.
Category 5
[18] No adjudication is required in this category.
Category 6
[19] Although I agree that the Plaintiffs are allowed to probe the design, manufacture and sales of the garments in issue, I do not believe, however, that this probe should extend to the design, manufacture and sales of all garments made by the Defendant. I would agree with the Defendant that expanded questions of that nature are beyond the scope of the proceedings in issue and lack the necessary connection with the latter.
[20] Similarly, in other cases under this category - and this is also applicable to most categories found below - some questions go into such details and would require obviously on the part of the Defendant such an exercise of research that I am not convinced that the usefulness of the answers to be provided would outweigh what is fair and reasonable to ask the Defendant in the present case (see Reading & Bates, supra, pages 71-2).
[21] Accordingly, I am of the view that under this comprehensive category, only the following questions must be answered:
| B.2.16 on page 51 B.2.16 on page 60 B.2.16 on page 87 B.2.16 on page 89 B.2.16 on page 176 B.2.16 on page 178 A.2.16 on page 233 D.2.16 on page 211 |
D.1.16 on page 228 D.2.26 on page 229 A.2.16 on page 239 A.2.17 on page 21 A.2.17 on page 28 D.2.17 on page 37 A.2.17 on page 44 A.2.17 on page 46 |
Category 7
[22] This category intends to probe the Defendant's intention with respect to the alleged use of the infringing designs. This is an issue in the debate. However, I believe that only questions B.2.16 on page 39 and B.2.16 on page 63 must be answered.
Category 8
[23] The questions under this category go to the Defendant's knowledge of the Plaintiffs. Here again, I fail to see how this line of inquiry could be considered appropriate or relevant. None of the questions have to be answered.
Category 9
[24] Although I agree with the Plaintiffs that details of the "higher market category" allegation made by the Defendant are in order, I am of the view that it is sufficient for the Defendant to provide the Plaintiffs with a more responsive answer to question C.2.16 on page 44 and to answer questions C.2.17 on page 29, C.2.17 on page 30 and C.2.17 on page 45.
Category 10
[25] I admit that when it comes to an assessment of the market category of the Defendant's garments, the quality of the garments becomes an issue. Nevertheless, under this category, only the following questions shall be answered: C.2.16 on page 167, C.2.16 on page 211 and C.2.16 on page 211 also (there are two questions on this page of the transcript).
Categories 11 and 12
[26] Under these categories, the Plaintiffs seek to better understand the Defendant's contention that the Plaintiffs are not preventing the registration of numerous pocket stitching design trade-marks which are far more similar to the Plaintiffs' registered trade-marks than the Defendant's stitching designs in issue. This in theory is an appropriate avenue of inquiry. However, under category 11, the remaining questions listed are far too argumentative in nature to be considered appropriate. As for category 12, the remaining questions are too far-reaching and vague. All these questions need not be answered.
Other matters
[27] The continuation and completion of Mr. Cavaliere's examination shall be ordered to take place before the end of December 1997, or on any further date to be agreed upon by the parties.
[28] The Defendant shall answer all proper follow-up questions arising from the questions and documents which are ordered to be answered or produced in the order of even date.
[29] The production of the documents ordered to be produced will take place at least two weeks prior to commencement of the continuation of Mr. Cavaliere's examination.
[30] As success is divided on this motion, costs will be in the cause.
Richard Morneau
Prothonotary
MONTREAL, QUEBEC
November 14, 1997
FEDERAL COURT OF CANADA
NAMES OF COUNSEL AND SOLICITORS OF RECORD
COURT NO.:
STYLE OF CAUSE:
T-446-94
LEVI STRAUSS & CO. and
LEVI STRAUSS & CO. (CANADA) INC.
Plaintiffs
AND
MANAGER CLOTHING INC.
Defendant
PLACE OF HEARING:Ottawa, Ontario
DATE OF HEARING:October 15, 1997
REASONS FOR ORDER BY:Richard Morneau, Esq.,
Prothonotary
DATE OF REASONS FOR ORDER:November 14, 1997
APPEARANCES:
Mr. Elliott Simcoe for the Plaintiffs
Mr. Guy St-Germain for the Defendant
SOLICITORS OF RECORD:
Mr. Elliott Simcoe for the Plaintiffs
Smart & Biggar
Ottawa, Ontario
Mr. Guy St-Germain for the Defendant
Sternthal, Katznelson, Montigny
Montreal, Quebec